USPTO Releases Patent Fees NPRM

September 5, 2012. The U.S. Patent and Trademark Office (USPTO) released a notice [213 pages in PDF] to be published in the Federal Register (FR) on September 6, 2012, that announces, describes, and recites proposed rules to adjust patent fees, pursuant to Section 10 of the America Invents Act.

This notice states that "In all, the routine fees to obtain a patent (i.e., filing, search, examination, publication, and issue fees) will decrease by 22 percent under this NPRM relative to the current fee schedule. Also, despite increases in some fees, applicants who meet the new micro entity definition will pay less than the amount paid for small entity fees under the current fee schedule for 88 percent of the fees eligible for a discount under section 10(b)." (Parentheses in original.)

Also on September 5, the USPTO published a notice in the FR that announces, describes, recites, and sets the effective date for, its rules changes that adjust certain patent fees for fiscal year 2013 to reflect fluctuations in the Consumer Price Index (CPI). The effective date is October 5, 2012. See, FR, Vol. 77, No. 172, September 5, 2012, at Pages 54360-54367.

The "Leahy-Smith America Invents Act", or AIA, was HR 1249 [LOC | WW]. President Obama signed it into law on September 16, 2011. It is now Public Law No. 112-29.

Section 10 of the bill gives the USPTO fee setting authority. It provides that the USPTO "(1) ... may set or adjust by rule any fee established, authorized, or charged under title 35".

It also provides that "(2) ... Fees may be set or adjusted under paragraph (1) only to recover the aggregate estimated costs to the Office for processing, activities, services, and materials relating to patents (in the case of patent fees) and trademarks (in the case of trademark fees), including administrative costs of the Office with respect to such patent or trademark fees (as the case may be)." (Parentheses in original.)

It also provides that certain fees "shall be reduced by 50 percent with respect to the application of such fees to any small entity that qualifies for reduced fees under section 41(h)(1) of title 35, United States Code, and shall be reduced by 75 percent with respect to the application of such fees to any micro entity as defined in section 123 of that title".

It also provides for this rule making proceeding.

David Kappos (at right), head of the USPTO, stated in a release that "We are complying with Congress' mandate to set fees at a level that enables the USPTO to recover the actual costs of the services it provides, while enabling us to implement all of the provisions of the Act. The result will be a patent system that will further fuel innovation across our economy and our society."

This notice states that this rule will provide "a new 75 percent fee reduction for micro entities, and expand the availability of the 50 percent fee reduction for small entities as required under section 10, providing small entities a discount on more than 25 patent fees that do not currently qualify for a small entity discount."

It also states that the new fees maintain "the current fee setting philosophy of keeping front-end fees below the cost of application processing and recovering revenue from back-end fees".

So, for example, while routine fees to obtain a patent will decrease, excess claims fees will increase sharply, fees for first requests for continued examination (RCEs) will increase, and fees for second or subsequent RCEs will increase sharply. (See, pages 94, 62, and 105.)

And, this notice asserts that these changes will reduce the patent application backlog, decrease patent pendency, and improve patent quality.

This notice, and the USPTO release, state that comments will be due within 60 of publication of the notice in the FR. Comments are due by Monday, November 5, 2012.

The USPTO will also host a series of public meetings which it titles "AIA Roadshows". See, schedule of events and agenda for each event.