The President signed into law the United States Patent and Trademark Office Reauthorization Act, Fiscal Year 1999 (H.R. 3723, Pub. L. 105-358) on November 10, 1998. It provides for new fee amounts under 35 U.S.C. 41(a) and (b). To assist our customers, an interim PTO fee schedule provides a comparison of the old and the new patent fees. These fee provisions are effective as of November 10, 1998. ¹

Public Law 105-358 was enacted without much advance warning, and many customers, not yet aware of the changes in the fee amounts, will overpay. Many of the fee reductions made by Public Law 105-358 are $25 or less. Normally, because of the costs associated with processing refunds, PTO refunds fee overpayments of $25 or less only upon request. The PTO, however, will automatically refund all overpayments of these fees paid after November 10 for a limited period of time.²

With two exceptions, any fee amount that is paid on or after November 10, 1998 is subject to the new fee amounts. The two exceptions are the filing fee required for a patent application filed under 35 U.S.C. 111 and the national fee for an application entering the national stage under 35 U.S.C. 371.³

The PTO will publish a final rule in the Federal Register and the Official Gazette of the Patent and Trademark Office amending the rules of practice in patent cases to indicate the new patent fee amounts. The final rule and the new PTO fee schedule will be posted on the PTO’s Web site in the near future.

If you have any questions about the new patent fees, please contact the Patent Assistance Center at (703) 308-4357 or (800) PTO-9199.

(1) The effective date for the amendments to the fee amounts in 37 CFR 1.17(r) and (s), and 1.21(a)(6)(ii) will be the date of publication in the Federal Register.

(2) For the period from November 10, 1998 through January 10, 1999, if there is an overpayment of twenty-five dollars ($25.00) or less, the PTO will waive the requirement of 37 CFR 1.26(a) and automatically refund the overpayment.

(3) Exception #1. The filing fee for applications filed under 35 U.S.C. 111 and 37 CFR 1.53. If the filing fee for an application filed under 35 U.S.C. 111 is received when the application is filed, the filing fee required is the filing fee in effect on the filing date assigned the application. If the PTO receives the filing fee on a date later than the filing date assigned the application, the filing fee required is the higher of:
     (1) the filing fee in effect on the filing date assigned the application; or
     (2) the filing fee in effect on the date the PTO receives the filing fee.
The filing fee includes the basic fee, excess claims fees (if any), and the multiple dependent claim fee (if any), for claims present on filing (unless the excess or multiple dependent claims are canceled before the filing fee is paid). Of course, if the basic filing fee is received on a date later than the filing date assigned the application filed under 35 U.S.C. 111, a surcharge as set forth in § 1.16(e) is also required.

Exception #2. The fees for international applications entering the national stage under 35 U.S.C. 371 and 37 CFR 1.494 or 1.495.

35 U.S.C. 371 provides for the national stage filing of a patent application under the Patent Cooperation Treaty. The basic national fee for an international application entering the national stage is due not later than the expiration of 20 months from the priority date in the international application (or 30 months from the priority date if the United States was elected prior to the expiration of 19 months from the priority date). The amount of the basic national fee that is required to be paid is the basic national fee in effect on the date the full fee is received. The excess claim fees or the multiple dependent claim fee is the higher of:
     (1) the excess claims fees and the multiple dependent claim fee in effect on the
     date the PTO receives the basic national fee; or
     (2) the excess claims fees and the multiple dependent claim fee in effect on the
     date the PTO receives (any of) these fees.
In this respect, the practice for determining the fees due for excess claims and any multiple dependent claim when entering into the national stage is analogous to the practice for applications filed under 35 U.S.C. 111.

Fees for claims which are added after entry into the national stage are determined by the fees in effect (for excess claims and multiple dependent claim) on the date the PTO receives the fee(s).