Overnight, the US Patent and Trademark Office (USPTO) lowered many fees for small and micro entities due to a component of the Consolidated Appropriations Act signed on December 29, 2022. The component, entitled “Unleashing American Innovators Act,” addresses disparities in the US patent system and is intended to expand access to patents for underrepresented communities.

Most fees for small entities are now 40% of the un-discounted rate. Most fees for “micro” entities are now 20% of the un-discounted rate. Generally, a micro entity is a small entity that has an income below a set threshold and has been named as an inventor on few, if any, patent applications. Penalties have been added for falsely asserting or certifying that the applicant is a small or micro entity.

With respect to the costs of prosecution, the legislation expands eligibility for pro bono programs to those in households having incomes less than or equal to 4 times the Federal poverty line. In addition, a new pilot program will help first-time applicants assess the “strengths and weaknesses of a potential patent application,” presumably helping inventors avoid wasting money filing an application that will be unlikely to get allowed.

The Act makes retention of patent examiners and administrative patent judges a priority and aims to enhance economic, geographic, and demographic diversity in the personnel. Retention of new examiners has been a long-term problem at the USPTO.

In order to increase outreach, the legislation requires the USPTO to establish a satellite office in the Southeast region of the US within three years. Site selection must consider patent-intensive industries and research-intensive institutions in the local area, such as universities, as well as support by local State and local governments and business frameworks.

In addition, the USPTO is required to establish community outreach offices in other States, including at least one in the northern New England region. The offices will preferably be placed near institutions of higher education, both public and private, in areas where there are few registered patent attorneys. The offices will be located where less than 45% of “firms” are owned by women, minorities, or veterans, as defined by a 2012 Census Bureau survey of business owners. These offices are intended to educate prospective inventors about available resources, such as those in underrepresented populations, and to partner with local organizations to promote the benefits of innovation and entrepreneurship.

The USPTO is now required to undertake several studies as well. Studies due to the House and Senate Committees on the Judiciary include one regarding pro bono programs and one regarding fees.

– The USPTO must study the impact of current fees on small and micro entities to determine whether they are inhibiting patent filings and whether the fees match the costs of examination. The USPTO must consider the incentives created by using maintenance fees to cover those costs. The USPTO may raise or lower fees as a result. The results are due within the next two years.

– A study is required to gauge whether additional satellite offices will “increase participation in the patent system by individual inventors, small businesses, veterans, low-income populations, students, rural populations, and any geographic group” that is “underrepresented in patent filings.” The results are due within two years.

– A study of existing patent pro bono programs is required within a year to assess the programs as a basis for updating them. Are they sufficiently serving prospective and existing participants? Are they sufficiently funded? Are there requirements that deter prospective participants and/or attorneys? Do inventors know about the programs? Should the programs include non-attorney advocates? The results are due within the next year.

The bipartisan, bicameral legislation was supported by nonprofits such as the High Tech Inventors Alliance and Invent Together. It was also the subject of lobbying by several organizations, including information technology companies, pharmaceutical companies and their trade association Pharmaceutical Research & Manufacturers of America (PhRMA), intellectual property law organizations, university organizations such as AUTM and the Association of American Universities, National Treasury Employees Union, and American Civil Liberties Union.

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