IMPORTANT PATENT FEE INFORMATION

On October 1, 1998, the patent fee surcharge established in the Omnibus Budget Reconciliation Act of 1990 will expire. As a result, until Congress acts to set new patent fees, the patent statutory fees authorized under 35 U.S.C. §§ 41(a) and (b), will fall automatically to pre-surcharge levels plus Consumer Price Index (CPI) adjustments on October 1, 1998.

Both houses of Congress have initiated action to set new patent fees. The Senate has passed an appropriations bill, S. 2260, and the House has passed an authorization bill, H.R. 3723, both of which would reduce patent fees from their current level, but not by as much as the fees would decline in the absence of Congressional action. Also, if no PTO appropriations legislation passes before October 1, 1998, Congress may enact a continuing resolution which could affect the patent fee schedule. Any of these legislative actions may occur at any time before, on or after October 1, 1998.

Anticipating the possibility that Congress might not act by October 1, 1998, the PTO published a final rule in the Federal Register establishing a fee schedule to take effect on October 1, 1998. This fee schedule appeared in the Federal Register on July 24, 1998, in Volume 63, Number 142, pages 39731 to 39737, and in the Official Gazette of the Patent and Trademark Office on August 18, 1998, in Volume 1213, pages 153 to 160.

See Appendix A at the end of the Federal Register and Official Gazette final rule notices for an easy to follow schedule of the new fees.

The Federal Register notice, including Appendix A, may be found on the PTO’s Web site as explained below. The final rule would reduce patent fees to reflect the expiration of the surcharge plus fluctuations in the CPI, and assumes no Congressional action prior to October 1, 1998. The fee levels that would be established should either S. 2260 or H.R. 3723 be enacted may also be found in the third (H.R. 3723) column of the previously mentioned Appendix A.

Under normal circumstances, patent fees are set forth in 37 C.F.R. §§ 1.16 through 1.21 and 1.492. As discussed above, however, it is possible that legislation will be enacted that supersedes the patent fees specified in 37 C.F.R. §§ 1.16 through 1.21 and 1.492. If this happens, the fees in effect are those fees set forth in the enacted legislation (and not the fees specified in 37 C.F.R. §§ 1.16 through 1.21 and 1.492). Therefore, it is also possible that there will be a gap in time during which 37 C.F.R. §§ 1.16 through 1.21 and 1.492 do not accurately set forth the patent fees in effect. When legislation is enacted to reset patent fees, the PTO will publish in the Federal Register and in the Official Gazette an official notice setting forth the patent fee schedule to be followed and also post it on the PTO’s Web site.

With respect to submitting correspondence on or after October 1, 1998, in general, the amount of a fee due is determined by the patent fees in effect on the date on which the fee is received. An exception to the general rule will be that the filing fee for a new patent application will be the higher of the filing fee in effect on the filing date assigned to the application or the filing fee in effect on the date the filing fee is received. Notice shall be published in the Official Gazette setting forth the details of how the PTO intends to implement the October 1, 1998 adjustment in patent fees.