2011-26157. Request for Comments and Notice of Public Hearings on the Study of International Patent Protection for Small Businesses

The United States Patent and Trademark Office (USPTO) is interested in gathering information on international patent protection for small businesses for purposes of preparing a report on the subject as required by the America Invents Act. To assist in gathering this information, the USPTO is holding a public hearing at which interested members of the public are invited to testify on this topic. In addition, members of the public may submit written comments.

Public Hearing: The USPTO will hold two hearings in support of the study of international patent protection for small businesses. The first public hearing will be held on October 27, 2011, beginning at 1 p.m. Eastern Daylight Time (EDT) and ending at 4 p.m. EDT. The first public hearing will be held at the USPTO in the Madison Auditorium on the concourse level of the Madison Building, located at 600 Dulany Street, Alexandria, Virginia 22314. The second public hearing will be held on November 1, 2011, beginning at 9 a.m. Pacific Daylight Time (PDT) and ending at 12 p.m. PDT. The second public hearing will be held at the University of Southern California in the Gould School of Law, located at 699 Exposition Boulevard, Los Angeles, California 90089.

Those wishing to present oral testimony at the hearing must request an opportunity to do so in writing by e-mail to [e-mail] no later than October 20, 2011, for the first public hearing, and no later than October 25, 2011, for the second public hearing. Requests to testify at the hearing must indicate the following information: (1) The name of the person desiring to testify; (2) the person's contact information (telephone number and electronic mail address); (3) the organization(s) the person represents, if any; and (4) a preliminary written copy of their testimony. Based on the requests received, an agenda of scheduled testimony will be sent to testifying respondents, and posted on the USPTO Internet Web site (address: http://www.uspto.gov/​americainventsact).

Speakers selected to provide testimony at the hearing should provide a final written copy of their testimony for inclusion in the record of the proceedings no later than October 21, 2011.

The USPTO plans to make the public hearing available via webcast. Webcast information will be available on the USPTO's Internet Web site (address: http://www.uspto.gov/​americainventsact) before the public hearing.

Written Comments: Written comments should be sent by e-mail to [e-mail]. Comments may also be submitted by postal mail addressed to: Saurabh Vishnubhakat, Attorney Advisor, Office of Chief Economist, United States Patent and Trademark Office, Mail Stop External Affairs, P.O. Box 1450, Alexandria, VA 22313-1450. Although comments may be submitted by postal mail, the USPTO prefers to receive comments via e-mail. The deadline for receipt of written comments for consideration by the USPTO is November 8, 2011. Written comments should be identified in the subject line of the e-mail or postal mailing as “International Patent Protection for Small Businesses.”

Because comments will be made available for public inspection, information that is not desired to be made public, such as an address or phone number, should not be included in the comments.

Availability of Hearing Transcript and Written Comments: A transcript of the hearing and the written comments will be available for public inspection at the Office of Chief Economist, located in the Madison West Building, Tenth Floor, 600 Dulany Street, Alexandria, Virginia 22314. In addition, the hearing transcript and the comments from the public will also be available via the USPTO Internet Web site (address: http://www.uspto.gov/​americainventsact).

Contact: Saurabh Vishnubhakat, Office of Chief Economist, by telephone [phone]; by e-mail at [e-mail]; or by postal mail addressed to: Saurabh Vishnubhakat, Office of Chief Economist, United States Patent and Trademark Office, Madison West Building, Tenth Floor, 600 Dulany Street, Alexandria, Virginia 22314.

The America Invents Act, Section 31, charges the Director of the United States Patent and Trademark Office (USPTO), in consultation with the Secretary of Commerce and the Administrator of the Small Business Administration, with delivering a study no later than 120 days after the enactment of the Act (i.e., by January 14, 2012) on how the USPTO, in coordination with other Federal departments and agencies, can best help small businesses with international patent protection. The USPTO therefore broadly seeks comments on how to address the issue of international patent protection for small businesses and whether a revolving fund loan program or a grant program should be established to pay for the costs of filing, maintaining, and enforcing international patent protection.

Issues for Testimony and/or Written Comment: Interested members of the public are invited to submit testimony and/or written comments on issues that they believe relevant to international patent protection for small businesses. The questions enumerated below are a preliminary guide for gathering comments on the potential legislative strategies that the USPTO should recommend to Congress. The public is invited to answer any or all of these questions. The tenor of the following questions should not be taken as an indication that the USPTO has taken a position or is predisposed to any particular views.

1. Overall, how important is international patent protection to small business?

2. At what point, if ever, in the growth of small companies does international patent protection become important?

3. What challenges, if any, interfere with the growth and competitiveness of small companies if international patent protection is not sought early in the innovation process?

4. What specific role does international patent protection play in the successful internationalization strategies (such as franchising, exporting, or foreign-direct-investment) of small businesses? Does this role differ by industry or sector?

5. How can the USPTO and other Federal agencies best support small businesses regarding international patents:

(a) In obtaining international patent rights?

(b) In maintaining international patent rights?

(c) In enforcing international patent rights?

6. What role should the Federal Government play in assisting small businesses to defray the costs of filing, maintaining, and enforcing international patent protection?

7. In order to help small businesses pay for the costs of filing, maintaining, and enforcing international patent applications, how effective would it be to establish a revolving fund loan program to make loans to small businesses to defray the costs of such applications, maintenance, and enforcement and related technical assistance?

(a) Under what specific circumstances, if at all, would such a fund be effective at helping small businesses?

(b) If such a fund would be effective, should the fund be maintained by the Federal Government, and if so, through what mechanism?

(c) What criteria should be used to decide upon recipients of funding?

(d) Could the private sector be meaningfully involved in maintaining and implementing such a fund?

8. In order to help small businesses pay for the costs of filing, maintaining, and enforcing international patent applications, how effective would it be to establish a grant program to defray the costs of filing applications, paying maintenance fees, and conducting enforcement and to provide related technical assistance?

(a) Under what circumstances, if at all, would such a program be effective at helping small businesses?

(b) If such a grant program would be effective, should the program be maintained by the Federal Government, and if so, through what mechanism? What type of grant program, covering what specific costs, would be most effective?

(c) What criteria should be used to decide upon recipients of grants?

(d) Could the private sector be meaningfully involved in maintaining and implementing such a program?

9. If the Federal Government is limited to providing either (i) A revolving fund loan program or (ii) a grant program described above, but not both, which of these options would be more effective in accomplishing the outcome of helping small businesses pay for the costs of filing, maintaining, and enforcing international patent applications?

10. Are there circumstances under which the Federal Government should not consider establishing any of these programs?

Dated: October 4, 2011.

David J. Kappos,

Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office.