By Dennis Crouch
The USPTO has released a new notice of proposed rulemaking (NPRM). In the press release, the USPTO indicates a 22% drop in fees for “routine patent processes.” Thus, a patent applicant will see a reduction in costs so long as it does not file any appeals; RCEs; petitions; extensions-of-time; excess claims; etc.
Two big kickers are that excess claim fees and the fees for second or subsequent RCEs are significantly increased. Adding a fourth independent claim will cost $420 (up from about $220 on year ago) to encourage applicants to file only “a prudent number of unambiguous claims.” A second or any subsequent request for continued examination will cost $1,700. That increase is seen as a mechanism for discouraging multiple RCE filing.
The USPTO has already finalized the fee structure for new services being offered beginning on September 16 of this year. (e.g., See 8-things to know about September 16). However, this NPRM also suggests that the post grant fees be adjusted (marginally) downward. That change would take place only after these rules are finalized.
The NPRM is scheduled to be published on Thursday 9/6/12 and the public is given 60-days to comment from that date. Comments go to firstname.lastname@example.org. (ATTN: Michelle Picard).
I would expect that the PTO will make some additional changes to this fee structure in response to comments from patent applicants (and others). The final fee structure will likely be implemented in early 2013. Importantly, the micro-entity fees cannot begin until these rules are finalized.
Note: Regarding the $800 surcharge for second or subsequent requests for continued examination (RCE) filing, the PTO would characterize the change as stopping the subsidy of those filings. Up to now, the low RCE fee has not covered the cost of actually performing the re-examination required in the process. The total cost was subsidized from other fees – primarily maintenance and issue fees. Based upon a rudimentary calculation of costs, the USPTO estimates that the new $1,700 fee is set at a point that simply recovers the cost. Thus, with a bit of sophistry, one could argue that the change in fee is not intended to discourage multiple RCE filings but instead is only intended to stop unduly encouraging the filings.