How does the US government shutdown effect Australian patent holders and Australian patent attorneys

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The US government shutdown has been well publicised by Australian media outlets and many readers may have strong views on the underlying reasons for the shutdown. Even though the political fallout from the US government shutdown does not directly affect Australians.

I don’t hold strong political views particularly when it comes to US politics. However, as an Australian patent attorney who mainly works with small and medium Australian businesses and universities who file US patents, the continued US government shutdown can have some serious implications for Australian patent filers and their patent attorneys.

Like all patent offices around the world, the US Patent and Trade Mark Office (USPTO) is also funded by user fees paid by Australian patent filers who file into the USA. The USPTO operates like a business by fulfilling requests from around the world for IP products and services in exchange for fee payments. In many instances, these requests with fees are received in one fiscal year and fulfilled in a subsequent year, requiring a multi-year planning and budgeting process. The USPTO effectively collects fees and transfers the fees to the Treasury for each year. The treasury budgets an appropriate amount and a set amount is budgeted every year. Detailed budget information for the USPTO can be viewed at https://www.uspto.gov/about-us/performance-and-planning/budget-and-financial-information.

Publicly available information indicates that the USPTO has collected excess fees in fiscal years prior to the current fiscal year, and is currently operating off that reserve account. When the shutdown began, the USPTO announced that:

“…the agency has access to prior-year fee collections, which enables the USPTO to continue normal operations for a few weeks. Should the USPTO exhaust these funds before a partial government shutdown comes to an end, the agency would have to shut down at that time, although a small staff would continue to work to receive new applications and any other examination, post-examination, post-issuance, and PTAB or TTAB filings; receive payments related to such filings; and maintain IT infrastructure, among other functions.”

The above announcement indicates that once the funds are exhausted, the USPTO will not issue any new Office Actions (examination reports) and it’s not clear whether it will issue patents either, even where the issue fees have been paid.

Many Australian patent and trade mark applications rely on the USPTO processes to achieve granted patents and trade marks. The lack of progress in achieving granted IP rights in the USA will only create more uncertainty for Australian filers of US patents and trade marks. As an Australian patent attorney assisting clients to pursue US patent and trade mark rights, we could still continue working on new applications and preparing instructions for replies to existing Office Actions. However, if new Office Actions do not issue it may mean that not only will Australian attorneys with clients having large US patent portfolios have less work coming in, but more concerning, it may delay or jeopardise the rights of IP owners seeking protection in the US.

 

Andy Mukherji

Written by Andy Mukherji, Principal



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