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USPTO Seeks Public Input on Proposed Fees

Written by U.S. Patent and Trademark Office
Posted: February 8, 2012 @ 2:34 pm
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Begins process mandated by the America Invents Act’s fee setting provisions to deliver on promises to the IP community and achieve long term financial stability

Washington – Under the America Invents Act (AIA), the United States Patent and Trademark Office (USPTO), for the first time in its history, was given the authority to work with IP stakeholders to set fees through the regulatory process. The agency took a first step towards that end this week when it published proposed fees for all of the patent services it provides. See Table of Patent Fee Changes and Executive Summary: Patent Fee Proposal.

“The new fee setting authority provided by the Leahy-Smith America Invents Act (AIA) has presented the USPTO with a tremendous opportunity to continue improving our nation’s intellectual property (IP) system,” said Under Secretary of Commerce for Intellectual Property and Director of the USPTO David Kappos. “We take this responsibility very seriously. The fee schedule we have published represents only an initial proposal and is far from final. We invite feedback and recommendations from the public and look forward to a meaningful dialogue over the coming months as we work to set these fees at the optimal levels,” he continued.

Throughout the fee setting process, the USPTO will be guided by two overriding principles:

First, the agency must operate within a more sustainable funding model than it has in the past to avoid disruptions in agency operations caused by fluctuations in the economy. Doing so requires that the fees charged for services more closely reflect the actual cost of delivering those services. This cost must responsibly account for both planned expenses and unanticipated events.

Second, the USPTO is adhering to the strategic imperative set by its user community to dramatically reduce patent pendency and the backlog of unexamined patent applications in accord with the USPTO 2010 – 2015 Strategic Plan.

The USPTO has published a proposed patent fee schedule and related supplementary information for public viewing at www.uspto.gov/americainventsact. A Federal Register Notice was published on January 30, 2012 announcing the dates and logistics for two Patent Public Advisory Committee (PPAC) public hearings regarding the proposed patent fees to be held February 15 and 23, 2012 in Alexandria, Virginia and Sunnyvale, California, respectively. Transcripts of the hearings will be available at www.uspto.gov/americainventsact shortly after the hearings.

The USPTO invites feedback and recommendations and encourages stakeholders to examine the methodology and highlight any areas where the Agency’s calculations, assumptions, or methods may be improved. This open dialogue will enhance the final product and help to ensure that the end result represents the best path forward for the U.S. patent system.

5 comments
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  1. To all:

    Definitely get yourself a copy of the Executive Summary from the link posted under this announcement. The Summary of Significant Changes in the fee structure is at page 11 of this Summary. See also page 16 for what the USPTO might do because of the greatly increased cost of RCEs in terms of after final practice. It will be very interesting how this proposed fee structure ends up after the USPTO receives comments and how it might alter patent prosecution as we know it. Also, the fee structuring for appeals could really create some interesting dynamics. Keep you fingers crossed as the proposed fee structures moves forward.

  2. The links in the first paragrach seem to be broken.

  3. Anyone know whether these drastically raised fees will be retroactive (apply to apps filed prior to ?); e.g. higher fees for RCEs, appeals, etc on apps filed . . . before the AIA’s enactment . . . before the effective date(s) of these new fees . . . or ?

  4. To all:

    Here’s what I sent to the PTO Relations-Patents Committee of the AIPLA:

    I’ve reviewed the Table of Patent Fee Changes being proposed by the USPTO. What I see in several instances is shocking. While I was opposed to the AIA for many reasons, the USPTO fee setting provision of Section 10 of the AIA was one I was very much opposed to. What I see in these proposed fee changes only intensifies my opposition to this fee setting provision. Frankly, the AIPLA should regret its support of the AIA.

    In terms of the utility application fee, what’s being boosted the most is the examination component (from $250.00 to $780.00). Excess claim fees (independent and total) are also being boosted significantly (from $250.00 to $460.00 and from $60.00 to $100.00, respectively). The RCE fee almost doubles (from $930.00 to $1700.00). Maintenance fees for the 3.5 year and especially 11.5 year point have been boosted significantly. In terms of appeals, the potential fees (not including requesting an oral hearing are being boosted from $1340.00 (Notice of Appeal and Appeal Brief) to $4000.00.

    What is mind-boggling are the “astronomical” fees being proposed for post-grant review, ex parte reexam, and supplemental examination. The post-grant review fee and how it escalates depending on how claims are involved (potentially upwards of $100k or more) is truly mind-boggling. Only one conclusion can be drawn from such “astronomical” fees: the USPTO is trying to discourage such procedures from being used. Why I was basically opposed to such post-grant review procedures (which I hear are coming with around 3000 pages of proposed rules which is also mind-boggling), the proposed fees for these procedures will potentially make them illusory and cost-prohibitive.

    There are already questions being raised as to how at least some of these proposed fee changes comply with the fee setting provisions of Section 10 of the AIA. I also wouldn’t be surprised if these fee changes draw a court challenge, similar to what happened with the Tafas/GSK suit over the proposed claim/continuation rules.

    Believe me, I want the USPTO to be funded appropriately to carry out its primary mission which is examination of patent applications. But given that Section 22 of the AIA on “fee diversion” was so watered down (and promises from Congress to not divert fees are meaningless to me), I find the suggested justification for some of these proposed fee changes to be completely inadequate, and subject challenge by the OMB, the RFA, and the PRA, to name a few. Also, these proposed fee changes may impose such significant cost burdens on those trying to use the patent examination process that patenting activity is effectively discouraged. That’s not good for innovative American businesses.

    My 2 cents for what it’s worth.

  5. EG-

    One thing that has me pretty concerned is that there seems to be an effort to influence the behavior of applicants with their proposed fee structure. I like the idea of charging what their efforts and expenses seems to require to be able to keep the office solvent and moving forward, but some of the fees seem almost punitive to sectors of their *customers*. Like $27,300 to file an exparte` re-examination? Time to start talking to the PTO diligently about our concerns and very soon, so that they won’t have undue negative consequences on the future of innovation here in the US at least. The PPAC take on the fee setting should be interesting to witness, but I can’t help but wonder Who is on the Committee these days, and how they were selected.

    Colour me somewhat skeptical I guess.

    Stan~