Dennis Crouch's Patently-O: 2 new topics, including “Maintenance Fees 2015” |  |
- Maintenance Fees 2015
- Biologics Price Competition and Innovation Act: Refusal to Dance
- Patentlyo Bits and Bytes by Anthony McCain
| Posted: 21 Jul 2015 05:14 PM PDT By Dennis Crouch A substantial percentage of the USPTO budget arrives in the form of maintenance fee payments. This is “easy money” for the USPTO because the Office has already done the work of examination. A patent’s term runs 20-years from the effective filing date, not counting provisional or foreign national priority filing and with the addition of any patent term adjustment. They typical result is a term of 17 years post-issuance, give or take. During that time, a patent applicant must continue to pay maintenance fees at regular intervals: due 3 ½, 7 ½, and 11 ½ years from issuance (with an additional six-month grace-period added on). The chart below shows the percentage of patents whose maintenance fees have been paid at each of the three stages. You’ll see that the vast majority of applicants pay the first maintenance fee (currently set at $1,600 for large entities); More patents drop out as the second maintenance fee is due ($3,600), and fewer than half of the cases see the third maintenance fee paid ($7,400). I expect that a number of factors drive the apparent trends in maintenance fee payments, including the ever-rising cost, the perceived value of future patent right, patent term remaining, general economic outlook, and current access to funds, for example. The current fees were put into place in March 2013. It is not surprising that the increased price resulted in the diminished number demanded as shown in the chart. Importantly, however, the drop in maintenance fee payments was slight in comparison to the size of fee increase (3rd Fee increased by 50%).
In addition to the revenue generated, a number of folks (often non-patent-holders) see maintenance fees as a costly-screen configured to weed-out relatively worthless patents so as to ease any freedom-to-operate search.  |
| Biologics Price Competition and Innovation Act: Refusal to Dance Posted: 21 Jul 2015 08:25 AM PDT By Dennis Crouch The 2009 Biologics Price Competition and Innovation Act (BPCIA) was created as the Hatch-Waxman Act for Biologics – a mechanism for both protecting innovator investment and for encouraging third-party follow-ons albeit through “biosimilars” rather than “generics.” While parallel in theory to Hatch-Waxman, BPCIA includes many complicating twists that on the already complex innovator-generic dance. In recent oral arguments, Judge Lourie stated that Congress might be awarded “the Pulitzer Prize for complexity or uncertainty” based upon its drafting of the BPCIA. Amgen v. Sandoz (Fed. Cir. 2015) offers the Federal Circuit a case of first-impression regarding an important element of the BPCIA – what happens when the biosimilar applicant refuses to play? Under the BPCIA, the ‘patent-dance’ is kicked-off by the filing of a biosimilar application. Under, the statute, that applications “shall” include a set of disclosures. 42 U.S.C. § 262(l)(2). In a three-way split decision, the Federal Circuit holds that an applicant is not actually required to make the disclosure (i.e., not a “must” requirement) but instead that failure to make the disclosure merely results in the penalty defined by statute – permitting the “reference product sponsor” but not the biosimilar applicant to bring an action of declaratory judgment for infringement based merely upon the filing of the application. My University of Missouri Law School colleague Erika Lietzen was deeply involved in the legislative negotiations and believes that the decision here is “inconsistent with the intent at the time.”
Judges Lourie, Newman, and Chen all filed separate opinions. Undoubtedly, the case will receive a petition for en banc rehearing as well as a petition for writ of certiorari. Read the Decision: http://patentlyo.com/media/2015/07/AmgenSandoz.pdf  |
| Patentlyo Bits and Bytes by Anthony McCain Posted: 21 Jul 2015 06:46 AM PDT
Get a Job doing Patent Law Upcoming: Eligibility Discussion: Christal Sheppard will be visiting the University of Missouri System on Thursday, July 23 at the University of Missouri Kansas City (UMKC) Law School Campus. Sheppard is Director of the Detroit Patent Office. Sheppard along with Prof Chris Holman, Michael Cygan from the PTO’s OPLA, Crissa Cook (Hovey Williams), and Jason Mudd (Erise IP) will be discussing the PTO’s new approach to subject matter eligibility and may delve into the expected new examiner guidance. Pre-register here.
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