The USPTO remains firmly committed to the principle of charging fees for
services based primarily on the cost incurred in providing these services. USPTO
fees have been organized for many years within a structure that is familiar
to our customers and that has been proven to be workable and equitable. Still,
while generally acceptable, this fee structure can be improved in various
ways. Under the USPTO proposal and consistent with the existing structure,
patent fees would continue to be primarily assessed for filing, searching,
and examining an application, for patent grant, and for maintenance of the
continuing benefit of patent rights. In addition, fee discounts would be
adopted to support practices reducing Office burden, while, together with
additional fees and services, increasing customer choice. Small entity
discounts would be maintained. The trademark fee system would also be
modified to offer customers a greater range of choice.
These fee proposals more closely align applicant payment and USPTO revenue
with actual cost, reduce the incentives for applicant's to pursue wasteful
examination, and recover the USPTO cost of operations more directly. The
net effect is to elicit a level of participation from applicants and third
party searchers that provides economies in examination while maintaining
and improving timeliness and quality. These benefits arise from a proposed
structure that is similar to the existing structure, that better aligns
fees with the value provided, that minimizes additional administrative
complexity,
and that retains the financial incentives for inventors of less financial
means
[*].
Patent Application Filing, Search and Examination Fees
Although the proposed patent fee structure remains essentially the same
as the current system, with a single fee paid at filing, separation of
this fee into filing, search, and examination components, together with a
system
of refunds will create a more optimal alignment of fees with services.
Existing practice bundles filing, search, and examination into a composite,
inseparable
fee, as though the applicant only received value for the combination of
services. The
result has been to encourage applicants to pursue prosecution until final
disposition once the filing fee has been paid, irrespective of re-evaluations
of the commercial utility of the invention throughout the prosecution period. Instead
of this simplistic model, under which substantive examination invariably
follows filings in lockstep, a more flexible procedure would recognize
that applicants have differing needs that can be satisfied with different
levels
of service, as determined by the applicant.
In the proposed new system, the current single-track examination process
is replaced with an examination process that provides multiple examination
tracks (See Pendency 2 (P-01)) with differing fee outcomes. For all tracks,
the initial fee payment would consist of three components; a filing fee,
a search fee, and an examination fee, all due on filing (or within the period
specified by the USPTO under the current “missing parts” practice provided
for in 37 CFR 1.53(f)). The revised patent fee statute will authorize
the USPTO to refund a portion of the excess claims, search, and examination
fees
if the application is expressly abandoned prior to an examination on the
merits, and to refund a portion of the search fee if there is a qualified
search report that the USPTO can exploit from a patent office with which
the USPTO has a bilateral search exchange agreement.
Such practice would vary depending upon the track utilized:
· First
track: Applicant pays the filing, search, and examination fee on
filing, but has the option of expressly abandoning the application before
the search
and examination and obtaining a refund on a portion of the fees paid
for excess claims, search and examination.
· Second track: Applicant
pays the filing, search, and examination fee on filing, and has the option
of expressly abandoning the application after
seeing the results of the search report performed by a Contractor Search
Service (CSS). The
patent fee structure would provide that the USPTO could refund a portion
of the examination fee if the application is expressly abandoned after
seeing the search results. The USPTO would initially pilot any plan to
examine an application primarily on the basis of a search report acquired
from a CSS. Once examination of applications primarily on the basis of
CSS search reports is proven successful, the utilization of this process
would increase over time and eventually predominate. The USPTO will
continue to conduct in-house searches of most applications in the near
term.
· Third
track: Applicant pays the filing, search, and examination fee on filing,
but may receive a refund of a portion of the search fee if there is a qualified
search that the USPTO can exploit from a patent office with which the USPTO
has a bilateral agreement.
· Fourth
track: An examination fee set to recover the cost for contracted
searches and their review during the International Stage will be charged. This
fee will likely exceed the comparable European Patent Office fee.
· Fifth
track: Applicant pays the National Stage filing, search, and examination
fee on filing, but a refund of the search fee may be provided if the international
search report/international patent examination report (ISR/IPER) is prepared
by the USPTO, or if an international patent office with which the USPTO
has a bilateral search exchange agreement has done an ISR/IPER that can
be exploited by the USPTO.
The multi-track examination
process contemplates the USPTO exploiting prior searches, and therefore
avoiding duplication of the time-consuming task of searching for prior art. Exploitation
of searches from other sources would be tested and piloted in a step-by-step
process to ensure proof of concept. To the extent such exploiting of prior
searches can identify issues of patentability directly, it will reduce
the effective demand for examination services and the time examiners spend
between
reviewing an application and rendering opinions as to patentability.
Patent Application Contract Search Fees
The proposed fee structure allows the search fee, as a separate component
of the three-part filing fee transaction, to be set to recover the cost
of searching. As noted above in the second track, the USPTO plans to pursue
the feasibility of contracting the search to CSS organizations. The fee
structure provides the USPTO the ability to adjust the search fee to recover
the average cost to the Office of searches.
Patent Application Claims Fees
An increase in the fees for claims in excess of three independent claims
and 20 total claims is proposed to reflect the additional burden that excess
numbers of claims place on the Office. Applicants sometimes need the added
protection obtained from many more claims than the norm, primarily as insurance
against adverse claim construction in subsequent litigation, and to obtain
the breadth of protection to which they are entitled where there is no clear
shorthand manner of drafting such claims. This added protection, reflected
in excess numbers of claims, comes at a cost in examination resources. In
particular, excess numbers of independent claims place additional demands
on examination because of their complexity and the interplay of distinction
and commonality that must be unraveled among them. The proposal also provides
that a refund of a portion of the excess claims fees may be given for claims
that are canceled before an examination on the merits.
Patent Application Extension of Time Fees
An increase is proposed for extension of time fees to reflect the impact
such extensions of time have on the pendency of the application’s prosecution
in the Office. Extensions of time are given to patent applicants for replying
to Office communications or meeting patent prosecution requirements. Applicants
frequently would like the opportunity for additional time to more fully consider
and prepare the requirement or reply. To accommodate this desire, extensions
of time are provided, but at a price to minimize excessive delays. As pendency
to issuance has deteriorated, however, these extensions of time are adding
to the already lengthy delays in prosecution. To mitigate against such
delays, increased fees would reduce the extent of such extensions, which
in turn,
would help reduce overall patent pendency.
Patent Application Appeals Fees
The existing fees for appeal, including the fees due at the time of filing
the notice of appeal, and at the time of filing an appeal brief, are proposed
to be increased to more closely reflect the cost of appeal. Existing appeal
fees are set very low to support a policy of low cost appeals required to
balance examiner discretion in rejecting claimed subject matter. This policy
accepted appeal as a component of the patent examination process, generally
funded from the application filing, issue and maintenance fees, but with
minimal fees to deter totally frivolous appeals. The proposed policy direction
of more precisely aligning fees with Office costs argues for increasing
appeal fees on its own merits.
Patent Application Specification Fees
The USPTO proposes to charge additional fee amounts based on the size
of the specification presented for examination in a patent application. The
fee is related to the additional processing related to managing large paper
application files. This would exclude sequence listings and computer program
listings that are filed in an electronic format.
Patent Maintenance Fees
Fees for maintenance of patents will be increased at each of the three
time stages, to reflect the increased value of patents over a full term. The
legislative policy in setting maintenance fees has been to partially fund
patent examination operations from patent owners who continue to receive
value from their patent rights. The recent trends toward intellectual
property-driven economic growth have dramatically increased the value received
by patent
owners, and maintenance fees should reflect this trend to more fairly apportion
the cost of the examination process to those receiving the greatest benefit.
Patent Recertification and Reinstatement Fees
The USPTO plans to require periodic computer-based confirmation of the
currency of a patent practitioner’s legal knowledge by re-certifying registered
practitioners
for continued authorization to participate in the patent application examining
process. Only those confirming their legal knowledge using a paper, as opposed
to the computer-based confirmation, system will be charged a fee for additional
incurred costs. Both the computerized and paper delivered system assure
a high level of quality, and provide registered practitioners additional
currency of legal knowledge addressing more issues in greater detail and
the opportunity to obtain additional certification of expertise. The USPTO
also plans to establish procedures for reinstating practitioners who have
been administratively suspended, referring registered attorneys and agents
found to have engaged in inequitable conduct, who continue to practice before
the Office despite being administratively suspended, or who allegedly provide
frivolous replies to Office actions. These procedures will be accompanied
by a new set of fees to offset expenses.
TRADEMARK FEES
The USPTO intends to fully implement significant changes in trademark operations
to create a market-based system consistent with the 21st century
economy. In short, the USPTO will seek to offer services applying a market-based
concept that will allow applicants to choose among three filing options that
will affect speed of service and the nature of the applicant’s communications
with the USPTO. The proposed options will establish different fees for filing
applications based on the resources that the Office is required to expend
to process and examine the application. Lower fees would apply to applications
and other documents that are filed electronically, whereas fees for paper
filings would be set at a higher rate to recover the costs of handling paper
for those who would continue to file on paper. Applicants who file “complete”
applications electronically, and agree to conduct all communications electronically,
will pay the lowest filing fees and receive expedited services from the Office. Ideally,
trademark applicants would have sufficient information to select the filing
and examination option that best suited their needs and budget with costs
controlled by the options that the fee structure would provide.
FUTURE FEE ADJUSTMENTS
The current USPTO
fee legislation proposal incorporates most, but not all, fee changes
that are considered necessary for the future efficient operation of the U.S.
intellectual
property protection system. Additional fees and fee-related changes,
such as those discussed below, will be addressed by the Office in future
legislative or regulatory proposals.
Patent Application Accelerated Examination Fees
Accelerated examination or expedited patent application processing alters
the relative timing among applications by assigning high priority for a
fee. Examination
accelerates for priority applications, ensuring prompt attention, expediting
the steps of the entire prosecution process, and achieving a final disposition
within a guaranteed 12-month period. The value to the applicant from this
service is in obtaining the economic value of patent rights early, in minimizing
the risks to the inventors, investors, producers and users, associated
with an unknown ultimate scope of patent rights and an unknown length of
time
to obtaining those rights, and in maintaining momentum and knowledge throughout
the prosecution process which keeps the applicant and examiner resources
focused.
The specific search
and examination services performed do not differ from normal prosecution,
so an accelerated examination fee is not aimed at direct cost recovery. Instead,
it is a fee for assigning a preferential priority to an application. Because
there is no significant incremental cost associated with the fee, the fee
helps offset the costs for all applications. The fee must be set sufficiently
high to discourage all but the most urgent cases. If a majority, or even
a substantial minority of applicants apply for accelerated examination designation,
then those applicants will not receive the expected service because examiners
will simply have multiple applications that come to the head of their docket. The
expected service will only be received when each affected examiner has only
one or, at most, a few such applications. This implies the fee, and other
requirements, must be sufficiently high to limit “rocket docket” applicants
to only a few percent of the total.
Post-Grant Opposition Fees
Another fee-related proposal is post grant opposition
proceedings to provide for streamlined inter partes review of
issues material to patentability. The fees proposed depend on the cost of such
proceedings and the extent to which they should be financed by direct fees. Cost
estimates would attempt to take into account the proportion of proceedings
that would be expected to terminate prior to a final decision after full
hearing on the merits, a factor that would be influenced by the precise
design of the procedure. The degree to which the process should be financed
by direct fees imposed on complainants depends both on the value to third
parties of such a proceeding relative to litigation, and the extent to
which a system for canceling improper claims can be regarded as an overhead
cost of the patent system as a whole.
Patent Application Electronic Filing Fees
The USPTO proposes to charge more for filing patent applications and follow-on
documents in paper than electronically for those submissions for which
electronic delivery is available. This proposal would allow applicants the choice to
file in a way that is less efficient for USPTO operations, but that would
capture the additional cost. Over time, the proportion of fees generated
by this differential should decrease, as patent practitioners switch to electronic
filing. The additional fees generated over this period, however, would
help the USPTO finance its transition to full electronic processing of
applications.
E-filing-related fees are charges for the service of
accepting an applicant's submission in anything other than a properly
formatted electronic medium. These fees are premised on the USPTO use of electronic
file wrappers in which all prosecution documents are maintained in electronic
form. USPTO will realize many administrative efficiencies with electronic
file wrappers, including enhanced speed and security, and less expensive
organization and storage, which argue for universal adoption of electronic
file wrappers for all applications. Thus, fees related to e-filing would
reflect any services the applicant required in converting information
to or from the requisite electronic form.
Patent Practitioner Registration Fees
The USPTO plans to require annual registration of registered practitioners
and persons granted limited recognition. Costs for maintaining the roster
of registered practitioners through changes of address, protecting the
public and practitioners by conducting investigations to determine whether
there
has been a violation of the disciplinary rules, and protecting the public
by developing and maintaining current registration examination questions
would be borne by registered practitioners renewing their registration
in the form of an annual fee.
[*] Section
4204 of the American Inventors Protection Act of 1999 (AIPA) directed
the USPTO to “conduct a study of alternative fee structures that could be
adopted
[by the Office] to encourage maximum participation by the inventor community
in the United States.” See Pub. L. No. 106-113, 113 Stat. 1501, 1501A-555
(1999). The study undertaken pursuant to section 4204 has been concluded
and this proposed revision of patent and trademark fees is being submitted
to Congress in fulfillment of the Section 4204 requirement.
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