USPTO diverting fees internally to subsidize PTAB trials

Michelle Lee speaking at PPAC, Thursday, May 4, 2017.

Michelle Lee speaking at PPAC, Thursday, May 4, 2017.

Earlier this morning Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office Director Michelle Lee gave introductory remarks to the quarterly meeting of the Patent Public Advisory Committee meeting at the United States Patent and Trademark Office. In prepared remarks Director Lee said the Office must significantly raise Patent Trial and Appeal Board (PTAB) fees in order for the PTAB to be self-sustaining on a going forward basis. On one hand the fact that Director Lee acknowledged that the PTAB is not self-funding is significant, but her comments dramatically under played what seems to be really happening at the PTAB. The reality appears to be that patent owners and patent applicants are subsidizing the PTAB.

Speaking about the fee increases the Office is seeking, Director Lee characterized them as modest with one exception: increases to PTAB trial fees. Quickly reading prepared remarks, Lee explained:

Although it is not final, I can tell you the proposed fee increases are relatively modest… There is one exception to the modest fee increase, and that is in the area of PTAB fees. We believe there should be full cost recover for all costs associated with PTAB trials as they were intended under the AIA. We have done a good job over the past several years ensuring that our fees generally covered costs, but we do need to raise the PTAB trial fees to ensure that these trials are self-funding on a going forward basis.

Saying that the Office has “generally covered costs” is obviously an admission that the PTAB has not always operated on a cost-neutral basis. But that does not seem to be true if you take a closer look at the numbers.

Before looking at the numbers, there is an obvious disconnect between what Lee actuall said and the Office asking for substantial PTAB fee increases. If the Office has charged fees high enough to generally cover costs, what is the justification for a substantial fee increase? Thus, what she said this morning does not actually support the decision to significantly raise PTAB trial fees. However, it has been known for sometime that the PTAB was operating in financially troubled waters. Therefore, the characterization that the Office has been generally able to generally cover PTAB costs with fees is, at best, a stretch. At worse it isn’t true.

In the FY 2016 Annual Report the USPTO explained that fee increased would be required so the Office could recover the aggregate costs of PTAB operations. The report said (at page 48):

On October 3, 2016, the USPTO issued a notice of proposed rulemaking (NPRM) to set or increase certain patent fees, as authorized by the AIA. The proposed fees will allow the USPTO to recover the aggregate estimated cost of Patent and Patent Trial and Appeal Board (PTAB) operations and USPTO administrative services that support Patent operations.

However, the notice of proposed rulemaking published in the Federal Register by the USPTO on October 3, 2016 seems to tell an entirely different story, but one that the reader has to put together for themselves. Not only has the Office not been covering the costs of PTAB trial operations, but the significant fee increases will still not cover the costs of PTAB trial operations. Even if the significantly increased fees were to go into effect those fees will still be below FY 2015 costs. See Table 11, which is included in the notice of proposed rulemaking but not explained by the Office.

Looking at Table 11 you will notice the proposed fee for an inter partes review (IPR) challenging up to 20 claims filed by a large entity would raise $5,000 to a total of $14,000, but according to the Office the FY 2015 costs associated with that line item were $22,165, which means for every such request the Office was running a deficit of $13,165. Even with the substantial fee increase the Office would still run a deficit of $8,165.

IPR filings have been extremely high, with 1,7137 petitions filed in FY 2015 and 1,565 petitions filed in FY 2016, making it easy to understand the significant financial woes of the PTAB. It seems the PTAB has been operating at a substantial deficit for some time and even with significant fee increases the Office continues to plan to run PTAB trials at a deficit, which means patent owners and patent applicants will be subsidizing the PTAB and infringers challenging patents moving forward. To call this outrageous is an understatement.

In order to operate the PTAB the Office has been required to divert funds from other Office operations to fund ongoing operations of the PTAB. In simple terms that means patent owners and those applying for patents have been subsidizing and will continue to subsidize the PTAB and the infringers who seek to destroy their patents in front of the PTAB death squad.

If the PTAB is in such dire financial straights why in the world is the Office refunding petition fees? The notice of proposed rulemaking published in October 2016 continues to promise that the Office will “refund the post-institution fee if the IPR proceeding is not instituted by the PTAB.” Why?

Patent owners are getting completely screwed. PTAB statistics are ridiculous (see here, here, and here for example). Petitioners are allowed to file challenge after challenge after challenge against the same patent and patent owners. If challenges are not instituted they get a refund, and the patent owner continues to get legal bills and harassed. Then on the fifth petition when the Office institutes the PTAB claims that the institution rate over those five challenges is only 20%. NO! The institution rate was 100%. The patent was eventually instituted after the patent owner was harassed, the petitioner had money refunded all along the way, and patent owners and applicants subsidized the challenge because the Office doesn’t charge enough to kill that patent that they issued, the statute presumes is valid, but the Office refuses to stand behind.

It is hard to believe a tribunal like the PTAB is actually operating in the United States of America. Truly astonishing!


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Join the Discussion

50 comments so far.

  • [Avatar for Anon]
    May 9, 2017 07:46 am

    I was drawing the distinction between there and here, and the mistaken notion that Mr.Quinn silences those in opposition. The editorial controls here are just not so constructed or applied.

    Having an opinion is great.
    Being informed is even better.
    But if one chooses to stay uninformed and engage in what amounts to be propaganda (refusing to take one’s uninformed opinion and adjust for the information of actual law and actual facts), then one is (justifiably) given a much shorter leash here.

    I cannot count the number of times when this site’s editorial control is (purposefully) misconstrued as “shaming” or “creating a bubble” or any such labels, when what is happening is that the anti-patent side simply cannot use their arsenal of MISinformation here.

    The contrasts in fostering dialogues versus selecting monologues is rather stark – even as one forum is routinely accused of what in essence is happening at the other forum.

  • [Avatar for Anon]
    May 9, 2017 07:37 am

    And yet again, Night Writer, is the finer point that I am making: the perception is created that the blog itself is in service to a pre-selected (and certainly not objective) narrative.

    I have in no uncertain terms informed the blog owner there that such actions likely remove any protections afforded to a true “neutral” Internet forum provider (protections that may be called upon if a case against one of the “paid bloggers” is ever pursued, and the blog is called by a court to provide identities). And make no mistake, those whom you label as paid bloggers are indeed personally** known by the editor there.

    **in the sense that their actual identities and full contact information are known.

    My point being is that it is beyond your own characterization of “paid bloggers drowning you out,” and extends (at the very least in perception – but even further than that with the application of the editorial controls) to the blog itself.

    Much like your disdain for academics publishing in vanity forums, the “paid bloggers” seek their own vanity forum where no one speaks up against their propaganda. The “Heckler’s Veto” line comes in when you choose silence rather than making points (and counter points) that should be welcome in a dialogue. That the perception is created that the Heckler enjoys special treatment makes the situation infinitely worse.

  • [Avatar for Night Writer]
    Night Writer
    May 8, 2017 11:00 pm

    @47 Anon. No. The blog owner is responsible not the paid bloggers. They are everywhere on the Internet now.

  • [Avatar for Anon]
    May 8, 2017 05:22 pm

    Night Writer – the Heckler’s Veto…?

  • [Avatar for Night Writer]
    Night Writer
    May 8, 2017 03:49 pm

    @45 Anon: well, that other blog has changed a lot from when I started on it some 12 years ago. I would suggest limiting your time on it.

  • [Avatar for Anon]
    May 8, 2017 01:02 pm

    Night Writer,

    The latest version of editorial control appears to “kick in” (for some, but not for others) when a certain number of posts have been made, or if an “oops” (some unidentified) mistake is inadvertently made in one comment, the ability to comment elsewhere in that thread (and to a completely different person) is denied.

    So not only do you have the problem of the totally irrelevant ad hominem drown-outs, you now have what dialogues may develop becoming artificially truncated.

    It creates the perception that only selective drive-by views have been given carte blanche, and that those dialogues that actually develop and show the shortcomings of the (more favored) narrative are now significantly stymied.

  • [Avatar for Night Writer]
    Night Writer
    May 8, 2017 08:19 am

    @42 Eric Berend: I agree with you. I think the justices think the Constitution is a joke. They do whatever they want.

  • [Avatar for Night Writer]
    Night Writer
    May 8, 2017 08:17 am

    @Anon. I didn’t know that the other blog edited so heavily in the comment section. I find that when I post there that the paid bloggers drown out (intentionally) anything I post, so I have largely stopped posting there and it has been a long time since one of my posts has been deleted.

  • [Avatar for Eric Berend]
    Eric Berend
    May 8, 2017 05:16 am

    I have nothing to add to comment #41 by ‘angry dude’, as I agree with every word. Any notion as to rule of law or proper Constitutionality is nearly completely delusional, at this point. The snide and condescending manner of Justice Gorsuch’s responses at his confirmation hearings, only serve to emphasize this deplorable trend.

  • [Avatar for angry dude]
    angry dude
    May 7, 2017 06:31 pm

    jbavis @39

    It’s worse than you think

    Perhaps I was smoking weed when I decided to go patent route as opposed to trade secret route – fully realizing the difficulties of enforcing my patent against corporate infringers
    But.. that was in 2002 and injunctions were routinely issued.
    boy.. how times have changed…

    It’s not really pro-patent vs anti-patent

    It’s pro big multinational corporations vs small biz – keeping existing monopolies in place whatever it takes.
    They’ll keep patent system for themselves and ruin it for everybody else, pass whatever scotus decisions they need raping US Constitution along the way – they just don’t care

    They’ll do whatever their corporate masters tell them to do. Period.

    In that sense Night Writer is correct: it’s treason

    P.S. some time ago google has their so-called palooza – buying patents from anyone.
    alas, just like everything else google does it did not benefit any true inventors with valid patents
    I think they just bought a bunch of junk patents with potentially troublesome claims at bottom feeding prices

    P.P.S. I believe that it’s better to abolish US patent system than to keep it the way it is – for googles of this world and no one else

  • [Avatar for Anon]
    May 7, 2017 01:59 pm


    You presume too much in that you think that Google would not engage in actions that would harm their own war chest.

    That just has not been the case, and the reason why is that obliterating that war chest is every bit as fine with them so long as patents over all are obliterated. Such would merely force competition to other factors. factors that favor landed incumbents.

    Further, there is something disquieting in thinking that the mechanisms that most of us learned in patent law that do not like the mechanisms would be “fine” with using those same mechanisms to reach a desired End state.

    Bluntly, the Ends do not justify the Means, no matter if the Ends are a “taking down” (and to me, merely a purported “taking down”) of Google.

    The Means being “bad,” mean that they are bad for everyone – even Google. Sorry, but the fault that I have with them transcends the aim to which you would see them put. Doing such wrong – even in the name of some good End – is still doing wrong.

    Sir Thomas More and the devil come to mind…

  • [Avatar for jbavis]
    May 7, 2017 11:41 am

    angry dude @ 29:

    You are underestimating the number of patents that Google has (either created themselves or purchased). At some point, they will realize they have this immensely valuable treasure chest and will change their current opinion. Only a matter of time. It is YOU that needs to “stop smoking the weed” and realize that right now there is a huge window of opportunity to accelerate Google’s change of opinion – namely by showing them how vulnerable they’ve made themselves. In their fight against Uber, over technology that is going to significantly contribute to future revenue streams – every pro-patent person can contribute to invalidating the patents Google is using against Uber. You don’t have to a friend of Uber – or even like them – all you have to do is think about whether you want Google to continue funding anti-patent activities or do you want them to stop and maybe possibly even switch sides and use some of that funding to undo the massive mess they have created.

    So, I’ll repeat myself – how many IPR’s would it take to invalidate those 3 or 4 Google/Waymo patents? That cost seems small compared to lobbying Washington – and faster. Use IPR’s to affect change 🙂

  • [Avatar for Anon]
    May 7, 2017 11:04 am

    Alas, Night Writer, you appear to miss my finer point in that the “other blog” has created the perception that it is complicit with the “paid bloggers,” and that the editorial controls are not objectively applied.

    Yes, this does extend to the publishing and postings of academies there, but such publishing and posting – in and of themselves – are not a problem, or at least would not BE a problem if a full and inte11ectually honest dialogue concerning those posts would be aimed for. Often, with the publishing and postings of the academics, it is in the comment section that the weaknesses (and biases) are exposed, and one desiring to critically review the discourse has an opportunity to see the academic viewpoint as well as the attendant weaknesses so exposed. But when the editing slants those comments and limits them in a non-objective and viewpoint dependent manner, the editor has imprinted their desired narrative on the whole of the endeavor, and at a minimum, destroys any sense of objectiveness and defeats the service of the comments; and at a maximum, may in fact bring into question certain internet forum protections into doubt (such as related to libel, slander and the ability to shield information that the editors have from lawsuits).

  • [Avatar for angry dude]
    angry dude
    May 7, 2017 10:56 am

    The current scotus is well known for catering to big business and sucking up to their corporate overlords in all areas, not just patents
    Just look at some of their outrageous decisions like Kelo or Citizens United
    At least there is no argument here

  • [Avatar for Night Writer]
    Night Writer
    May 7, 2017 10:16 am

    @31 angry dude: They know what they are doing. Bork, who I know isn’t the most is not a great person since he backed up Nixon, discussed this type of action by the SCOTUS during his confirmation hearings with Biden as the grand inquisitor. The Justices know very well how to play this game. Although, your statements are true too.

    Anon: there is an objective reality to the world. The biggest problem with the other blog is that it allows paid bloggers to drown out any discourse. Moreover, the other blog has a constant stream of professors posting who are anti-patent judicial activist.

    From what I’ve seen, this blog supports an open dialogue as long as there is tie to the trust in what is posted. The reality is that most of what the anti-patent judicial activist publish/post has no tie to reality and rife with ethical problems.

  • [Avatar for Anon]
    May 7, 2017 09:54 am

    But all that aside, one must seriously ask as to at what point and at what level of willingness to place the Supreme Court above the law and above the Constitutional delegation of writing law to a different branch does such action subvert that Constitution or give “aid or comfort” to a knowingly subverting action

    (and in reply to angry dude, the sum total of the actions are FAR MORE than what mere “ignorance” permits, and the fact of “being on a payroll” carries with it the choice of knowingly being on that payroll – no “pass” for “ignorance” is possible here).

    I have posted an extreme measure that Congress could very well take in their own Constitutional power (that of jurisdiction stripping the Supreme Court of the non-original jurisdiction of patent appeals), and quite frankly, this comes from the seemingly lack of response from attorneys who have taken state oaths to protect the Constitution, and in fact only seem eager to subvert the Constitution by placing the Supreme Court above the Constitution when doing so aligns with a particularly desired Ends. This comes as I am fully aware of the possible “chilling” effect of the charge that treason brings – and rightly so, but nonetheless believe that the level of subversion related to patents has come to a truly unnatural and unsustainable level.

  • [Avatar for Anon]
    May 7, 2017 09:51 am

    Of course, there is very real difference, as here the editorial control rests on the premise that misstatements of law and fact are not tolerated. ANY poster, who in good faith provides a viewpoint based on such error is a given clear warning, and it is only after being warned and informed, that the choice of the poster to persist in holding to an uninformed and misleading view is dealt with. This blog even goes out of its way to attempt to interview and invite “opposing viewpoints.”

    I have never seen this blog attempt to control content by squelching dialogue and promoting monologues outside of the control of misinformation.

    Sadly, this is not true of “that other blog.”

  • [Avatar for Anon]
    May 7, 2017 09:50 am

    Which leads to a separate thought on blog writing, editorial controls, and when those controls cross the line to be in effect, a measure of shaping content on that blog.

    That other blog continues to struggle mightily with its own attempts at handling comments and this creates the very real perception (if not fact) that deviations from a desired narrative receive an untoward level of repression. This of course can (and should) be compared and contrasted with the editorial controls existing on this blog.

    The accusations that this blog squelches opposing views rings out quite often, and I do suppose that to those who believe deeply that the ends justify the means and that the patent system is (or even selective arts within the patent system are) “e v i l,” the treatment of opposing views on this blog arrive at that same point of “squelching.”

  • [Avatar for Anon]
    May 7, 2017 09:47 am

    In pieces, as something is tripping the “page has moved” response:

    Well Night Writer,

    On that other blog the word “treason” was also recently used to describe the actions of not only those Justices who would knowingly circumvent (and seek to subvert) protections of the Constitution in order to establish a desired “Ends,” but also was used to describe attorneys who advocate those same “Ends” and who support that same corruption of the delicate balance of the separation of powers and the elevation of one branch in particular (as embodied by the Supreme Court) to be above the Constitution.

    From: **:

    This word imports a betraying, treachery, or breach of allegiance.

    The Constitution of the United States, Art. III, defines treason against the
    United States to consist only in levying war against them, or in
    adhering to their enemies, giving them aid or comfort. This offence is
    punished with death. By the same article of the Constitution, no person shall
    be convicted of treason, unless on the testimony of two witnesses to the
    same overt act, or on confession in open court.

    ** (any number of other sources will provide a similar definition – although I will note that Black’s Law does contain the notion of actions being for a foreign power, the related definition of “sedition” includes the notion of subversion of the constitution).

    Now “levying war” is a serious act, and the notion of “foreign” causes pause as it is well known that those taking oaths to protect this country broaden the phrase of “enemy” to include those both foreign and domestic.

    To wit, it is a fair question to ask if “treason” does indeed extend to “Appreciating [and turning around and further advocating] what amounts to treason (and how else would you classify the subjugation of the proper designations of authority of the Constitution).”

    Unfortunately, the editorial controls on that other blog now appear to stifle any dialogue and while the questioning – as proper as that is – has been allowed, answers to that questioning have been blocked and remain blocked (while other comments have been “moderated” through – so it is not a matter of timing, but of content).

  • [Avatar for angry dude]
    angry dude
    May 7, 2017 09:35 am

    Night writer @30

    You give too much credit to those morons
    “Treason” is a high word
    Just a bunch of ignorant morons on google payroll
    Same with congress critters and obama folks

  • [Avatar for Night Writer]
    Night Writer
    May 7, 2017 07:49 am

    I know there is a lot of arrogance about the SCOTUS. There are all these people that think they are super smart and in tune with the SCOTUS and that patent attorneys know nothing about the SCOTUS.

    But, believe it or not there really is an argument that Alice is treasonous. Imagine if this were real property and the Justices came up with some case where district judges could seize your real property like your house based only on one opinion from the SCOTUS, at summary judgement stage and with the judge making up the facts themselves with no regard to reality. That is what Alice is.

    You know, I predicted Alice. Ten years ago I said the SCOTUS was going to come up with some case where judges could invalidate claims at the SJ stage and without facts. And they did.

    It is treasonous as it circumvents our Constitution and there is clear intent. Just watch. If things keep the way they are going, I won’t be the only one saying that. (I know all you little beanie heads think you are smarter than me and yet you can’t predict the outcome of cases like I can and can’t predict what the SCOTUS is going to do five years out like I did with Alice.)

  • [Avatar for angry dude]
    angry dude
    May 6, 2017 12:02 am

    jbavis @28


    stop smoking weed, please..

    google will never be on “our” side

    just read Karl Marx

    the rich get richer, the poor stay poor

    (but this should not preclude any of us from kicking the back of the almighty google…)

  • [Avatar for jbavis]
    May 5, 2017 10:45 pm


    We can’t fight Google, instead we need to get Google to switch sides. Use IPR’s to attack their patents in play against their now arch nemesis Uber.

    How many IPR’s would it take to knock out those 3 or 4 patents? A half dozen? A full dozen? 20?

    And given that because Google has invested so heavily in this moonshot (driverless car technology) that if they saw their top weapon against Uber being attacked and possibly invalidated – that they might possibly reverse course?

    Sure you could argue this is Uber’s fight – and you’d be right – but wouldn’t 3rd parties attacking their patents possibly motivate Google to see the light?

    Imagine a world where Google is on OUR side for once.

  • [Avatar for Anon]
    May 5, 2017 05:03 pm

    It is not correct to say that the Office has power to move funds where they want to.

    The movements noted here are decisions approved by Congress. Not the Office.

    There is a huge difference. Also, please note the other restrictions as I have laid them out.

  • [Avatar for Paul Morinville]
    Paul Morinville
    May 5, 2017 11:29 am

    Pay… not pat.

  • [Avatar for Paul Morinville]
    Paul Morinville
    May 5, 2017 11:16 am

    Prior to the AIA, maintenance fees were used to pat for examination so the initial cost of to the inventor would be lower. This helped encourage disclosure. Now a not insubstantial portion of that money is diverted to the PTAB. Stating that examination money is being transferred to the PTAB is indeed accurate.

  • [Avatar for angry dude]
    angry dude
    May 5, 2017 10:17 am

    I am (was) willing to pay 10K to USPTO (on top of 20K I paid to my patent attorney) to get a solid title to my IP which I could then use to sue any infringer of my choosing, large or small, without fear of being dragged into multiple IPRs sucking 300K or more out of me

    But alas, this is just a crooked game run by google (via PTO’s Lee) where they entice you with some “micro-entity” filing fees costing less then a dinner for two, only to bankrupt you later…
    How clever
    I’m out

  • [Avatar for Gene Quinn]
    Gene Quinn
    May 5, 2017 10:13 am

    Yolanda Turner-

    As I pointed out above, saying that we can’t complain about the PTAB unless we are willing to pay double or triple isn’t fair. Nice try thought.

    I’d be more than happy to talk about raising filing fees if the Patent Office stops charging issue fees and stops charging extension fees. The statute says applicants get 6 months, but the Patent Office says the applicant gets 2 or 3 months and must pay to get the extra 3 or 4 months they are entitled to under the statute. So if you want to look at the total amount of fees paid by applicants let’s do that, but focusing on filing fees alone is disingenuous.

    You also say: “The AIA requires cost recovery in total. Not for each individual activity.”

    If you look at Table 11 you will notice that there is no way that there can be cost recovery with this math. The only fees that would be greater than the cost are the post institution IPR fees, but it is moderately less expensive to conduct moving forward than the cost of the fee. Even under the new much higher fee structure, For every IPR petition not instituted the Office loses over $8,000. For every IPR instituted the Office will lose over $4,300 (when you combine fees and costs for institution and post institution). I know schools teach funny math, but you cannot make up on volume when you are losing on every step in the process.

    It is outrageous that patent owners are subsidizing infringer challenges to their patents.

  • [Avatar for Gene Quinn]
    Gene Quinn
    May 5, 2017 09:39 am

    Shannon Zhang-

    I think there is certainly a big reason to fuss, as you put it, although you do raise a good point. But don’t forget that the issue fee is nearly $1,000 and there are plenty of fees collected for simply allowing the applicants to exercise the statutory right to take the full 6 months to respond (both of which require no work from the USPTO).

    Still, over 40% of USPTO revenues does come from maintenance fee payments. That is why the article says that the PTAB is being subsidized by patent applicants and patent owners. What you are pointing out, however, is that it may be more accurate to point out that the PTAB is subsidized by patent owners and not as much (or at all) by applicants. The fact that the patent death squad is being subsidized by patent owners is no less outrageous.

    If the USPTO wants to encourage infringers to challenge patents fine. It is a stupid idea in my opinion, but that is the policy of the USPTO. But there is no justification that I can think of to incentivize infringers to attempt to take out patents issued by the USPTO, particularly when that incentive is a monetary incentive (i.e., substantially lower than cost fees).


  • [Avatar for Yolanda Turner]
    Yolanda Turner
    May 5, 2017 01:42 am

    Folks, all patent Application fees are “subsidized” by maintenance fees. There is cross subsidation all over the place. Don’t complain about PTAB fees unless you are willing to pay double or triple your FSE fees to fund actual cost recovery. The AIA requires cost recovery in total. Not for each individual activity.

  • [Avatar for Shannon Zhang]
    Shannon Zhang
    May 5, 2017 12:00 am

    Why all the fuss? The PTO is entirely fee funded. There is no “lockbox” mechanism to apportion fees according to their purpose.

    The table at page 65 of the referenced 2016 Report shows the cost per patent production unit to be about $4000. No one’s paying $8000 to file a patent application. Rather, the bulk of patent revenue is maintenance fees as shown on page 40. That the Office pools all revenue to fund the agendas of the political wing is business as usual.

  • [Avatar for Anon]
    May 4, 2017 10:32 pm

    I addition (or as an emphasis) to my post above, the “in the aggregate” not only caps the agency fee levels (cannot be run as a profit center), but importantly also must contain the calculations (tied to the agency budget) that are directly impacted by both the fee levels set and any actual shortage and/or overages that occur during the year (for example, a huge drop in maintenance fees if patent holders en mass opt out).

    Also important to note for the fee setting phase is that an increase in one area – for example the identified area of the PTAB – must be accompanied by fee reductions elsewhere so that the previously projected intake levels stay at the budget-approved levels.

    In other words, the Office authority regarding fees does NOT include any type of “blanket-we-missed-therefore-we-are-going-to-increase-across-the-board” actions.

    It is critical then to be able to see the calculations of the Office in order to make sure that the Office is stating within the limits granted by Congress.

    Any such fee escalations that result in an increased intake amount not in accord with the prior-approved budget are effectively against the law.

  • [Avatar for patent leather]
    patent leather
    May 4, 2017 07:16 pm

    A related (and very serious) problem is the PTAB is now too buried in IPRs to decide appeals from examiner rejections (which was their original mission in the first place). Appealing a rejection to the PTAB can now take around three years of waiting. Petition fees should definitely NOT be refunded in order to discourage IPR filing. The USPTO definitely needs to hire more ALJs.

  • [Avatar for Anon]
    May 4, 2017 07:13 pm


    Yes, I am aware of the treatment that the Office has engaged in (and not only FOIA items – I followed with great interest Ron Katznelson’s attempt to move the White House to remove (or at least substantiate) the “Tr011” propaganda – alas, to no great success).

    That being said, a plainly worded, direct, and without the “easy outs” FOIA request could be made, and the non-compliance then could be an additional piece of evidence against the Office.

  • [Avatar for The Time Is Now To Act]
    The Time Is Now To Act
    May 4, 2017 05:19 pm

    Dear Secretary Ross,

    How are the interviews for the new USPTO Director coming along?

    Kindly ignore the Efficient Infringer petition to further retain Director Lee. They speak only for themselves.


  • [Avatar for Gene Quinn]
    Gene Quinn
    May 4, 2017 05:18 pm

    PTO Watcher-

    I agree with you. But if my memory is correct the refunding of fees to petitioners was done as an incentive to get more challenges. The Patent Office seems to want more and more challenges to patents, not fewer challenges.


  • [Avatar for PTO Watcher]
    PTO Watcher
    May 4, 2017 05:03 pm

    By this logic, if an IPR is instituted and all claims are lost, shouldn’t the PTO refund all of the original patent application fees to the patent owner? If they are giving back money, it should flow both ways…

  • [Avatar for IPdude]
    May 4, 2017 04:48 pm

    I’d rather have Lee in the private sector, where she can no longer damage small business while serving the greed of the Googles of the world. We should all pull for her to cash out with Google instead of heading science and tech at the White House or, worse, get a seat as a circuit court judge.

  • [Avatar for Gene Quinn]
    Gene Quinn
    May 4, 2017 04:22 pm


    Your suggestion of using FOIA to get information from the USPTO is cute. The USPTO has over the past several years disclosed nothing of consequence under FOIA. They claim attorney work product and other truly absurd privileges. What they turn over is heavily redacted, sometimes to the point where dozens (if not hundreds) of pages are blank. The PTO has made a mockery out of FOIA.


  • [Avatar for angry dude]
    angry dude
    May 4, 2017 03:46 pm

    Night Writer @9

    My bet would be on her becoming a senior partner with one of those high-profile national law firms, Wilson Soncini maybe ? (with Google and its lackeys directly or indirectly being major clients)

    sort of a-la dudas thing…but worse, much worse…
    at least dudas didn’t do anything
    but honestly she deserves to go to jail

  • [Avatar for Night Writer]
    Night Writer
    May 4, 2017 02:27 pm

    @6 You know Lee knew this all along. She permitted the conflicts; she permitted the subsidizing; and, she permitted over filing of IPRs against one patent.

    I will still bet that Google will pay her off when she leaves the USPTO. She will get somewhere between $5 and $50 million from Google in the first three years after leaving the PTO. I’d bet on it.

  • [Avatar for IPdude]
    May 4, 2017 02:18 pm

    Wilbur Ross needs to act quickly and appoint a responsible director who is not hell-bent on destroying our patent system. Irreparable harm is being done by Lee. We’ve switched roles with China. Unbelievable.

  • [Avatar for SV Inventor]
    SV Inventor
    May 4, 2017 01:57 pm

    The real troll has been unveiled. It is USPTO.

  • [Avatar for Anon]
    May 4, 2017 01:54 pm

    The USPTO was granted unprecedented fee setting authority with the passage of the America Invents Act.

    That authority, however, did not come without conditions.

    One of the conditions was that fees set in conjunction with the authority could not – in the aggregate – exceed the Office budget parameters. In other words, the Office explicitly could not be a profit center.

    So whether or not the Office has been subsidizing the PTAB “at the expense” of innovators paying into the system in order to have their applications examined, and if proper under the law, granted, is a little bit of a “mis-direction.”

    The better focus would be on the details, and exactly who is made aware of those details.

    Clearly, the Office itself cannot be the one watching itself in order to make sure that it is not improperly changing and charging the fees under its (new) authority.

    And just as clearly, someone has to be watching the books.

    This then would make perhaps the best Freedom Of Information Act request: turn over not only all of the books, but also all of the materials that support any suggest fee levels.

    For a bonus, also request all paperwork outlining the monetary controls (who does what) that have been put into place to ensure that the Office complies with the necessary restrictions of its AIA-augmented fee setting power.

    With great power comes great responsibility- including the responsibility of ensuring that responsibility itself is maintained.

  • [Avatar for jj]
    May 4, 2017 01:53 pm

    You know, maybe if the PTO but more resources into the examination of the original filed application less patents would be invalidated after issued and issued patents would be valued more highly as they would be more likely than not be held valid when put under additional scrutiny.

    The PTO isn’t singly at fault for this though. Companies don’t want to pay higher search/examination fees to get a more robust patent, they just want another piece of paper to add to their war chest. Additionally, attorneys are also partially to blame as they should also be trying to get the best patent for their clients that would actually hold up under further scrutiny and not flood examiners with ridiculous arguments and additional unrelated claim language that just obfuscates the actual invention.

  • [Avatar for angry dude]
    angry dude
    May 4, 2017 01:45 pm

    Run your private store like PTAB and you get shot and your store gets burned down first night.. before you have a chance to be be arrested and go to jail

    But this is our government…

    “Fool me once – shame on you, fool me twice – shame on me”
    thanks but no thanks

  • [Avatar for Night Writer]
    Night Writer
    May 4, 2017 01:09 pm

    @3 Ternary : nicely put.

  • [Avatar for Ternary]
    May 4, 2017 12:58 pm

    This starts to read like a Kafka novel, and not in a funny way. A patent in the US is obtained by an applicant using strict rules from a Rule Book, but from a Body using its own arbitrary interpretation of the Rule Book.

    Money spent by Applicants to obtain patents, then finances a Byzantine Court, wherein not a single defendant has ever been acquitted permanently. This Court applies its own opaque rules and procedures, to invalidate the costly patents. This to assure that a Patent Owner is never, ever certain what is owned in a patent. In fact the Court let it be known that likely a Patent Owner owns nothing in a Patent but has received a Body Favor that can be rescinded at any time.

  • [Avatar for Curious]
    May 4, 2017 12:16 pm

    This just goes to show how anti-patent owner the PTAB and IPRs are. File an IPR, which the patent owner has to defend and it doesn’t get instituted, then then IPR requester gets their fees back? The patent owner, however, gets screwed out of tens of thousands of attorney’s fees that they cannot recoup.

    Also, anytime you subsidize an activity (i.e., you pay less than than what the service actually costs), this means you are incentivizing that activity. In essence, the USPTO is telling the world “we want you to invalidate the patents that we issued.” Its also telling potential patent holders “we want you to not only pay us to grant your patents but also pay us extra to invalidate those same patents.”

    Google really got their money’s worth in lobbying the Obama administration.

  • [Avatar for Night Writer]
    Night Writer
    May 4, 2017 12:02 pm

    >It is hard to believe a tribunal like the PTAB is actually operating in the United States of America. Truly astonishing!

    Control by the large corporations. I guess it is good news the fees are going up. Not sure really. It just means that the more complex and expensive things are the more it favors the Googles. A couple of million is nothing to them.

    It is control of our government by the large corporations that are monopolies. Just look at the amount of money they have in the bank. Google is at $80 billion and rising.

    They are crushing innovation.

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