Why this change to USPTO’s credit card limit?

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Sometimes the USPTO does things and I cannot immediately figure out the reason why.  Here is one of them, brought to my attention by alert reader Dana M. Stangel.  Today I logged in to pay an Issue Fee, and this big brightly colored banner appeared at the top of the USPTO web page.  It says:

Temporary Increase to Credit Card Daily Limit
The daily limit per credit card account has increased from $24,999.99 to $99,999.99. The temporary increase will remain effective through June, 1, 2020.

Well in one sense of course I know exactly why the USPTO did this.  It must be the novel coronavirus.  Any time in Spring of 2020 that any government agency or large organization does any really big thing that is temporary and makes no apparent sense, the explanation is coronavirus.  I get that.  

But what exactly is going on here?  How did the USPTO pick “times four” as the amount of the increase?  How did USPTO pick June 1?  Why was there ever a limit in the first place?  

Upon some reflection I realized I know the answer.  It has to do with credit card commissions, which government agencies generally intensely dislike having to pay.

Normally if you make an arrangement to be able to take credit cards as a mode of payment, the contract that you will have to sign will contain language forbidding you from charging the commission through to the customer.  Saying this differently, the contract will contain language that requires you to absorb the commission.  Our firm uses Stripe to process most of our credit card payments, and the commission that we incur is 2.9% plus 30¢ per transaction.  And the standard Stripe contract requires us to absorb that commission.

Years ago many states passed laws giving special bargaining power to government agencies.  They were able to force the credit card companies to modify the standard contract so that a government agency would be able to charge the commission back to the customer.  You run into this every time you pay for a license plate for your car using a credit card, and you get dinged a “convenience fee” for the transaction.  

When I was first in practice, the USPTO did not accept credit cards.  The usual payment mechanism was the “deposit account”.  You would send a check for five or six figures of money every few weeks to some address in Chicago and the USPTO would credit the money to your deposit account, and you would draw upon the deposit account when paying fees in patent and trademark cases.  This worked okay for high-volume filers but was of course completely unworkable for pro se filers.

After many years of foot-dragging, the USPTO finally ceded to the inevitable and started accepting credit cards as a mode of payment.  I imagine there was debate within the USPTO as to whether or not to charge convenience fees.  The problem of course is that if on some particular day the USPTO were to start accepting credit cards without charging convenience fees, it would be completely predictable that some of the high-volume filers that used to use deposit accounts would switch to credit cards.  This would instantly cut the USPTO’s revenues by a very predictable amount. 

In recent times a typical year of fee collections might add up to around $3 billion.  There are plenty of dinosaur corporations and law firms that continue to use deposit accounts as their chief way of paying USPTO fees.  But many filers choose to collect the frequent flyer benefits or purchasing points or rebates that can be gotten by using particular credit cards to pay USPTO fees.  I imagine that at least half of the fees paid to the USPTO are paid by credit card, or at least $1.5 billion annually.  I assume the USPTO negotiates a better commission than the standard Stripe commission, but still it would be at least 2%.  So the USPTO loses perhaps $30 million annually in credit card commissions.  

This discussion helps to explain why there was this $24,999.99 limit in the first place.  The point of the limit was to try to divert some fee payments away from credit cards (where the USPTO incurs commissions) and over to other payment modes such as deposit accounts and ACH transfers (where the USPTO does not incur such commissions).  

I will tell you that at our firm, at least, the $24,999.99 has never actually diverted any of our USPTO spending away from credit cards!  Whenever we smack up against that limit on a particular credit card at the USPTO, we simply move on and use another credit card.  We have multiple credit cards set up in USPTO’s Financial Manager system for this purpose.

But anyway, yes, it is clear that USPTO’s announcement that this limit will temporarily be increased from $24,999.99 to $99,999.99 is basically the USPTO’s way of saying “due to the novel coronavirus we are willing to absorb more commissions than usual”.

Get Patents Fast

Recently I posted that I plan to offer quite a few webinars in the next few weeks.  I have just now picked the date and time for Get Patents Fast.  This is a new and improved version of the previous webinar which was on February 5, 2019.  Just as in the previous webinar it discusses:

  1. Patent Prosecution Highway (my favorite)
  2. Track I (prioritized examination)
  3. Accelerated Examination (not my favorite)
  4. Petition to make special based upon age of an inventor
  5. Petition to make special based upon poor health of an inventor
  6. Full First Action Interview Pilot Program

The discussions of those six initiatives are updated to the present day.  And new to this version are two more ways to get patents fast:

7.  Collaborative Search Pilot (CSP)
8.  Expedited Examination (Design Applications Only)

This webinar will take place Thursday, April 16, 2020 from 10:00 AM to 11:45 AM Mountain Time.  To find out more, or to register, click here.

Learning to be paperless with PCT (Covid-19 issues) – slides and recording

Hello faithful readers.  On March 30 WIPO announced that it was ceasing the mailing of paper relating to PCT applications due to the work-from-home challenges from Covid-19.  On that day I announced that I would be presenting a webinar on how to become paperless with PCT.  The webinar took place.  There was a lot of very helpful audience participation and I think the webinar went well as a consequence.

You can download the slides here and you can view a recording of the webinar here.

Please post comments below.

Upcoming webinars

Here are some webinars that I plan to offer in the next few weeks. If you want to be sure to hear about it when I schedule a particular webinar, please be sure to subscribe to this blog.  To hear about upcoming PCT-related webinars, be sure to subscribe as well to the PCT listserv.

  • Get Patents Fast
  • Don’t end up like the owner of that CRISPR patent
  • Docketing PCT
  • Picking a PCT Searching Authority
  • Picking a PCT Receiving Office
  • Making smart use of PCT Declarations
  • National phase or bypass continuation?
  • Sequence listings

Maybe there are other topics you would also like to see. If so, post a comment below or drop me an email.

 

Learning to be paperless with PCT (Covid-19 issues)

(Followup:  You can download the presentation slides and you can view a recording of the webinar.  For more information see this blog article.)

Many readers of this blog are already set up to be paperless in all of their PCT activities.  This blog article is directed specifically to those who had not, until now, gotten set up to be paperless with PCT.  Such filers are affected by this announcement today from WIPO:

Due to the effects of the COVID-19 pandemic on the operations of the International Bureau and of postal systems worldwide, the International Bureau, also in its function as receiving Office, has suspended the sending of PCT documents (e.g. PCT Forms, letters) on paper.

If you are a filer who has not, until now, gotten set up to be paperless with PCT, then I strongly urge you to attend two free webinars which will take place on Wednesday, April 1 and Thursday, April 2.  In these webinars, you will:

  • Learn how to get a WIPO user ID and password for access to ePCT, the electronic system for PCT applications.
  • Learn why each person in your office must have his or her own WIPO user ID and password (no sharing)
  • Learn how to set up two-factor authentication on your WIPO user ID and password (what WIPO calls “strong authentication”).
  • Learn how to do e-handshakes with colleagues in your office so that you can give each other access to files.

In your existing and pending PCT applications, maybe you have not already provided an email address which WIPO and the International Searching Authority and the International Preliminary Examining Authority can use to send you correspondence electronically rather than on paper.  In this webinar, learn how to provide such an email address to WIPO for this purpose for your existing and pending PCT applications.

The ePCT system has a function that is similar to Private PAIR in that it permits you to see the content and status of your pending PCT applications even if they have not yet been published, just as Private PAIR lets you see the content and status of your pending US application.  In this webinar, learn how to gain access to your pending PCT applications in ePCT.  In other words, learn how to use the feature of ePCT that is similar to Private PAIR with your existing and pending PCT applications.

When you file a new PCT application tomorrow or next week, you simply must file it in such a way that you will be able to see it in the part of ePCT that is similar to Private PAIR.  In this webinar, learn what you need to do when you are filing a new PCT application so that you will be able to see it in the part of ePCT that is similar to Private PAIR.   

Going forward, you absolutely need to not send anything on paper to WIPO.  In this webinar, learn how to use the DAS system to send electronic certified copies of priority applications to WIPO (instead of physical certified copies).  Learn how to use ePCT to send other communications to WIPO.  Learn the difference between “ePCT actions” and “ePCT uploads” and learn which is better for you to use.

  • To register for the free-of-charge Part-1 webinar, click here
  • To register for the free-of-charge Part-2 webinar, click here.

Please understand that the Part-1 webinar is an absolute prerequisite for the Part-2 webinar.  You absolutely must attend Part 1 if you are going to attend Part 2.

Your presenter is Carl Oppedahl.  Carl has lectured frequently about Best Practices for e-filing of PCT applications.  

In the US, does an employer own an invention made by an employee?

A very bright European patent practitioner asked this in the EFS-Web listserv:

From I know and have been taught, there are no provisions in the US law stipulating that an employer automatically becomes the owner of an invention made by an employee (which is why we have to make sure that assignments are signed and recorded).

Could anyone direct me to the relevant statute in the US law?

His question inspired the blog article that follows. Continue reading “In the US, does an employer own an invention made by an employee?”

Time of day at RO/IB returns to normal for US filers

On March 8 I blogged that US filers filing documents at the International Bureau needed to pay extra close attention to what time it is in Switzerland.  The reason is that in the US, Daylight Saving Time happened on March 8.  But did not happen on that day in Switzerland.  This meant that for the past three weeks, a US-based filer in (for example) the Mountain Time zone would be able to e-file in the IB as late as 5PM and still get a same-day filing date.  This differed from the usual drop-dead time of 4PM.

Today (March 29, 2020) is the day that Daylight Saving Time happens in Switzerland. Continue reading “Time of day at RO/IB returns to normal for US filers”

AIPLA spring meeting is canceled

(Updated to include cancellation of the ABA-IPL annual meeting.)

Well it’s official.  The American Intellectual Property Law Association has announced the cancellation of its spring stated meeting which was scheduled for May 6-8 in San Antonio, Texas.

This comes after the cancellation of USPTO Design Day which was scheduled for April 23 in Alexandria, Virginia.  And it comes after the cancellation of the annual meeting of the International Trademark Association which had been set for Singapore in April and then had been shifted to happen in the US in May or June, and has now been rescheduled for November at some unspecified date and city.  

I don’t know whether AIPLA’s decision to pull the plug on its spring meeting was influenced by my report of the results of a survey of meeting attendees about their plans.

The American Bar Association has likewise canceled the American Bar Association Intellectual Property Law section annual meeting, scheduled for April 1-3 in Washington, DC.