AIA Monitor

Yesterday evening, the proposed patent fee schedule became available online.   It is accompanied by a USPTO transmittal letter, PPAC hearing executive summary, and appendices totalling about 100 pages providing the USPTO’s explanation of how it arrived at its proposals.  These documents can be readily downloaded from the USPTO AIA microsite.

Even though the USPTO was rather late in published the proposed fees, the due date for requesting participation in the hearings is still TODAY.  See the side bar for contact information.

The USPTO proposes two alternatives.  One is a “nice to have” proposal seen from the USPTO’s perspective which the USPTO claims would end the backlog of patent applications awaiting examination or a decision on appeal.  The other would maintain the status quo at present levels, which the USPTO assesses will lead to backlogs that are worse than they are today.  The outcome may turn out to be a compromise between these two extremes.

For information and comments regarding the USPTO’s “nice to have” proposal, see today’s post by Courtenay Brinckerhoff in the PharmaPatents blog.  That post provides a nice summary of the most dramatic proposed increases.

The proposed new fees for inter partes review, post grant review, reexamination, supplemental examination have been, or soon will be, proposed under the USPTO’s pre-AIA rulemaking authority, which requires that the fees be no greater than necessary for recovering the cost of services tied to the specific fee.  As mentioned in the previous post, those fees cannot subsidize costs associated with other services, nor can they be used to subsidize other services.  Challenging those fees means challenging the USPTO’s estimate of the cost for providing those services.

The fees proposed under Section 10 of the AIA may be challenged on the ground that the proposed amounts are contrary to desired policy objectives, such as promoting the use of the patent system by small businesses and individual inventors or certain desired behavioral objectives.

Here are some examples based on the current “nice to have” proposal:

The USPTO proposes that the national stage search and examination fees for a PCT application entering the US national phase should be the same as the fee charged in the absence of the PCT unless the USPTO was involved in the international stage.  This seems unwarranted when one considers that the USPTO receives the benefit of the international search report and written opinion when a PCT application enters the US national phase.  Charging the same fee fails to acknowledge efforts to coordinate the work of the major patent offices and the effort made by Congress to harmonize US patent law with patent law outside the US.  That effort should be allowed to bear fruit for the applicant.

The USPTO also proposes to raise the fee for multiple dependent claims from $450 to $860 in addition to raising the excess claim fees which, contrary to international practice, are applied based on the number of dependencies in multiple dependent claims.  Such fees practically prohibit the use of multiple dependent claims in the US — a result which is contrary to practice in the rest of the world.  Substantial efforts are wasted converting claims between the US and the rest of the world.  Since the dependent claims will generally be found to comply with novelty, nonobviousness and enablement if the independent claims from which they depend are found compliant, examination of multiple dependent claims should not require significant additional examiner time.

The USPTO proposes to charge $3,000 for postponing filing the inventor declaration until the notice of allowance.  This fee appears to be rather arbitrary, since the USPTO can require identification of the inventors when their identity is necessary for search and examination purposes.  Postponing the inventor declaration may actually increase efficiency for the Office, since inventorship can be more readily determined by the applicant when examination has been concluded and the subject matter of the claims has become fixed, so that the applicant need not replace or supplement an earlier declaration, cutting declaration processing in half in those instances.

The USPTO proposes a substantial increase in the fee for filing a request for continuing examination (RCE).  Such a fee increase would likely discourage the use of a procedure intended to simplify the formal aspects of filing a continuation application, so that applicants may revert to pursuing continuations by refiling the entire application.  That result would be contrary to the statutory paperwork reduction requirement.

The USPTO also proposes to increase the fees for appealing a decision by the USPTO.  Appeals are generally filed because the applicant or patentee considers that the USPTO’s decision was erroneous.  As a matter of public policy, challenges to potentially erroneous decisions should be promoted as a way to help regulate the USPTO’s duty as an administrative agency to properly administer the law, particularly at this stage when there will be a lack of court precedent under the AIA for the near future.

These are just some policy issues which come to mind.  I welcome your comments regarding any policy issues you consider important in relation to the fees.