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Issue 24 | July 9, 2002
How The Proposed 2003 USPTO Fees
Will Hit Your Budget
 In mid-June, 2002, the USPTO proposed new fee legislation to Congress, under the innocuous title of the U.S. Patent and Trademark Office Reauthorization Act, for Fiscal Year 2003. This proposal is not like the annual CPI increase that the patent community has come to expect. Instead, it is designed, by the PTO's own admission, to fundamentally modify the behavior of applicants. Most professionals who have read the act believe that it is ill conceived, unduly expensive, and places undue discretion in the hands of the PTO.

The first part of the proposed legislation sets up a system in which the basic application filing fees are only $300, and in which applicants must pay an additional fee of $1250 when examination is requested (within 18 months of the earliest effective filing date). The normal small entity rules do not appear to apply to this fee; the PTO may allow such fees only for inventors who have income below some level to be specified.

Claim fees for claims in excess of 20 total and 3 independent have become exorbitant, with each additional independent claim more expensive than the previous claim (e.g., $160 for the fourth, $320 for the fifth, $640 for the sixth, and so on). Additional fees are to be charged for applications having more than 50 pages of text and drawings.

Applicants will not be able to avoid these charges simply by filing more applications with similar claims, however. The PTO will be charging a fee (starting at $10,680) and increasing at an exponential rate) if it determines that an application contains claims that are "patentably indistinct" from claims in other commonly assigned patents or applications. The PTO proposal states that the purpose of these fees is to modify applicant behavior. This is a subjective standard for assessing huge penalties, which will apparently be left up to the whim of the examiners. Even worse, this provision would apply to all applications filed or pending on October 1, 2002, meaning that applicants would likely be forced to review and prune their pending applications, many of which were filed years ago, in order to minimize the risk of having such fees imposed on previously filed applications.

Additional fees (starting at $1,000) will be imposed for the filing of more than three continuation applications. Maintenance fees have been increased to $900, $3000, and $5000, respectively.

In summary, the proposed legislation appears to be a policy-laden bill cloaked in the form of a standard fee increase. If it passes in its present state, patent applicants will have to substantially change their filing strategies, and many corporate patent budgets will have to be substantially altered.

To discuss this topic further, please contact the author, Bruce Bernstein, at Greenblum Bernstein P.L.C.. The information contained in this email is provided for informational purposes only and does not represent legal advice. Neither the APLF nor the author intends to create an attorney client relationship by providing this information to you through this message.

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