Lawyers explain costly impact of USPTO outage
Patent lawyers have told WIPR that they have been left with costly alternative filing options after the US Patent and Trademark Office’s (USPTO) systems have been offline since Wednesday, August 15.
Andrei Iancu, director of the USPTO, said the agency has been undergoing “emergency IT maintenance” in a statement issued on Friday, August 17.
Ariel Reinitz, partner at FisherBroyles’ New York office, explained that the USPTO’s database “failed” at some point on Wednesday.
He said that web portals for patent submissions and application status updates went down with “no warning”.
The USPTO said the maintenance relates to a problem with the agency’s PALM database, which supports systems such as the Electronic Filing System (EFS), Patent Review Process System, and Patent Application Information Retrieval (PAIR) System.
Kevin Holbeche, owner of Canadian firm Holbeche Law, explained: “Tons of people—firms and companies, included—use the USPTO's Private PAIR and EFS web systems on a daily basis. So, service outages can affect a lot of us.”
The USPTO has invited people to use alternative methods of filing in the meantime, such as sending in applications, documents, and fees via priority mail.
However, fees associated with filing international applications by post, including Patent Cooperation Treaty applications, are subject to a “non-electronic filing fee” of $400.
The same application made via the electronic filing system costs $240.
“While these surcharges are intended to encourage electronic filing, currently (while systems are down) they are unavoidable,” Reinitz noted.
Iancu said the agency is examining how best to address the cost concerns.
Holbeche said that in other instances of widespread service interruptions, the USPTO opted to extend time periods for reply or provided other relief for those affected.
Section 21(a) of 35 USC gives the director of the USPTO the ability to postpone filing deadlines during emergencies, and Reinitz said this action should have been taken immediately when the systems failed.
But in his statement, Iancu said that “we do not plan to extend deadlines”, given the availability of alternative methods of filing.
“Since deadlines must be met (despite the outage), the USPTO is effectively penalising applicants even though paper filings are the only option,” Reinitz said.
Holbeche added that lawyers may have to pay higher fees to meet deadlines in the meantime.
Reinitz noted that a similar system outage occurred over four days in December 2015, and another failure “of this magnitude is a real embarrassment for the USPTO”.
Updates on the status of the PALM maintenance can be found here.
The latest update, made at 4pm ET yesterday, said that people are working “around the clock” to restore PALM, but it is “unlikely” that the work will be complete by the start of the working week (today).
None of the USPTO’s trademark systems are affected by the emergency maintenance, according to the agency.
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