By Dani Kass

Law360 (May 6, 2021, 8:39 PM EDT) -- The U.S. Patent and Trademark Office wants to get its hands on $1.17 billion collected before the America Invents Act, in the hopes of expanding services and limiting fee increases, the agency's chief financial officer said Thursday.

Between 1992 and 2011, the USPTO accumulated more than a billion dollars that's been sitting in an account at the Treasury Department, CFO Jay Hoffman told the Patent Public Advisory Committee at its quarterly meeting. The agency wants to work with Congress to get those funds turned over and put to use.

"These would certainly strengthen the financial position and get us to our long-term goal," Hoffman said. "Ultimately, and depending on what the long-range forecasts look like, it could probably enable us to slow down [fee increases] or lock fees in."

The funds include patent fee surcharges from 1992 through 1998, patent and trademark fees sequestered in 2013, and fees beyond what Congress appropriated that were taken in between 2002 and 2011. Hoffman said the USPTO hopes to increase services to innovators, improve its operations and limit fee increases.

The CFO added that the agency's "revenue uncertainty" tied to the pandemic "seemed to have abated" and that there's a "slight upward trend" in the revenue forecast.

"Overall, the financial position is positive and stable," he said.

When the committee's chair, Finjan Holdings Inc.'s chief intellectual property officer Julie Mar-Spinola, asked whether a possible waiver of IP rights for patents related to COVID-19 would affect the agency's revenue, Hoffman said he hasn't analyzed that yet.

Earlier in Thursday's meeting, the USPTO's temporary leader, Drew Hirshfeld, said the drop in patent filings this fiscal year won't be as significant as first predicted. He said the agency had predicted a 3.7% drop in filings from last year, given the pandemic, but it's now expected to be a 2% decline.

"I think that that is good news, and certainly filings are going in the right direction," he said. "We want people to be filing and innovating."

He compared the projection to the drop in filings after the 2008 financial crisis, when filings fell by 8.8%.

Office of Planning and Budget Director Brendan Hourigan said the agency is expected to collect more than $3.5 billion in fees this year, largely from patents, and end with $507 million in its reserves.

Hirshfeld had also noted that the agency will be issuing patent number 11 million on Tuesday, about three years after number 10 million.

"That is quite a milestone," he said.

Also during the meeting, Patent Trial and Appeal Board Judge Michael Cygan took the committee through a study of how long it takes rejected patent applications to go through the appeals process.

He said typically the time between the examiner rejecting a patent and the PTAB ruling on whether that decision is right is 23 months. If the applicant gets its brief in quickly, that cuts the time down to about 18 months, he said. Those going through the PTAB's fast-track program — which expedites appeals for a fee — get their decision in less than a year from the rejection.

When asked whether the PTAB plans to renew that fast-track pilot program, which is set to expire in July, Chief PTAB Judge Scott Boalick said it's being evaluated. He did say the program has been "pretty successful, overall."

The meeting also briefly addressed the Legal Experience and Advancement Program, which gives newer attorneys extra time at PTAB arguments to build up their experience.

Vice Chief Judge Janet Gongola said that so far there have been 46 cases in which the LEAP program was taken advantage of, two-thirds of which were America Invents Act trials, with the rest being ex parte appeals.

--Editing by Rich Mills.

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