Issue 05/27 | July 11, 2005
USPTO Fees Update
 USPTO Fee Diversion Not Unconstitutional

In Figueroa v. United States (June 28, 2005), the Court of Federal Claims concluded that Congress’ practice of using money generated from patent application fees paid to the United States Patent and Trademark Office (“USPTO”) for purposes other than supporting USPTO operations did not violate the Intellectual Property Clause of the Constitution.

According to the opinion, inventor Miquel Figueroa's central point of argument was that that charging inventors fees that are not entirely used solely for the purpose of supporting the operations of the patent system is "an irrational, unconstitutional burden on innovation that does not promote the progress of useful arts." However, the court was not persuaded:

  In sum, during the past fourteen fiscal years, USPTO has taken in billions of dollars cumulatively in fees and has provided billions of dollars worth of services, most of which involved issuing more than 2 million patents. USPTO appropriations have increased by a factor of thirteen during that timespan. Congress is, thus, funding USPTO operations, and funding them generously, with money assessed in the form of patent fees, although Congress has not dedicated all of the fees to that particular purpose, choosing instead to spend 4.4 percent of those fees on other priorities. Congress’ determination of federal spending priorities and how the patent system fits into national economic development goals is an eminently rational exercise of its power.

Congress is entitled to great deference under the Necessary and Proper Clause when it legislates under its Intellectual Property power. Any intellectual property law Congress passes need only survive the limited scrutiny of the rational basis test as to whether it promotes the progress of science and the useful arts. Plaintiff may well be correct that the current patent fee regime is misguided and creates the wrong incentives, but such policy determinations are for Congress, and not the courts, to make. Plaintiff has not carried his burden of showing that Congress has behaved irrationally.

In other USPTO fee news, starting July 1, 2005, the application size fee for electronically filed utility and provisional patent applications will be based on 75% of the number of pages for the paper size equivalent of the specification (including claims) and drawings, and any external tables. In Congress, the United States Patent and Trademark Fee Modernization Act of 2005 ("HR 2791"), which is now before the House Committee on the Judiciary, would create a "Patent and Trademark Fee Reserve Fund" for refunding excess fee collections to persons who paid patent or trademark fees during that fiscal year.

If you are interested in staying current with the latest USPTO happenings, contact William F. Heinze (bill.heinze@tkhr.com) at Thomas, Kayden, Horstemeyer & Risley LLP in Atlanta, Georgia USA.

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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