More on USPTO’s total system crash on May 14

Most readers of this blog were affected one way or another by USPTO’s total crash of all patent-related e-commerce systems on Wednesday, May 14.  I blogged about the crash here and here.  I faxed a letter to Acting Director Lee on May 17 about the crash.  In my letter, among other things I asked her to do whatever was necessary to waive the $400 penalty that would normally be imposed on a filer that failed to e-file on May 14 and instead was forced by USPTO’s crash to file by postal service or by hand carry to the USPTO.

More than a month came and went, with no word from Acting Director Lee in response to my faxed letter.  This despite my having telephoned Acting Director Lee’s office once a week or so since May 17, asking if someone could at least confirm receipt of the fax and maybe tell me who had been given the task of responding to the fax.

A few days ago I decided to work out how exactly Acting Director Lee could accomplish the waiver of the penalty. The usual approach where a mere rule is concerned would be for the Acting Director to sign an order suspending the rule in the particular case of a paper-filed application on May 14.  But with a bit of clicking around I found the place on the USPTO web site where USPTO asks and answers an FAQ on this subject.  The web site says:

Section 10(h) of the AIA provides for an additional fee of $400 ($200 for small entities) fee to be paid for each application for an original patent that is not filed by electronic means (i.e., mailed or hand delivered).

If the web site could be believed, because this fee is statutory (rather than rule-based), the USPTO’s hands are tied and it is not within the power of the USPTO to waive this fee.  With a bit more clicking around, however, I realized that USPTO failed to quote the Act accurately.  Section 10(h) of Public Law 112-29, Sept. 16, 2011 (the Leahy-Smith America Invents Act) actually says something different:

Notwithstanding any other provision of this section, an additional fee of $400 shall be established for each application for an original patent, except for a design, plant, or provisional application, that is not filed by electronic means as prescribed by the Director.

(Emphasis added.)  The alert reader will see what USPTO omitted when supposedly quoting this part of the Act on its web site — “as prescribed by the Director.”

So it is easy to see that it is indeed fully within the power of the Director to waive this fee for filings made on May 14.  The Director could simply sign an order saying something like this:

I hereby prescribe that the term “filed by electronic means” as for patent filings and national-stage entries carried out on Wednesday, May 14, 2014 includes paper filings.  I am directing the Office of Patent Application Processing and the DO/EO/US not to impose fee codes 1090, 2090, 1690, and 2690 for any patent application or national-stage entry filed on May 14, 2014.  I am further directing these Offices to withdraw any Notice imposing these fee codes for any patent application or national-stage entry filed on May 14, 2014, and I am directing these Offices to refund any payments already made for these fee codes in any patent application or national-stage entry filed on May 14, 2014.

Today there was a bit of encouraging news.  Today a detailee in the office of the Commissioner for Patents (Peggy Focarino) returned my (fourth) telephone call about this fax.  She is going to look into the matter and will get back to me.  I pointed out to her the statutory language that gives the Director the power to “prescribe” what counts as “electronic means”, so as to waive the $400 penalty.  I will report back in this blog with any news.

Oh and one more thing that will be of interest to some readers.  A couple of days ago I served a FOIA request upon the USPTO.  The request basically asks how many times the USPTO imposed the $400 penalty on May 14 as compared with May 13 and May 15.

Two business days have passed and USPTO has not even given out a FOIA tracking number for this request.  It will be interesting to see how long it will take for USPTO to give out a tracking number for the request, and it will be interesting to see how long it will take USPTO to actually provide the information requested.