IPO Submits Comments on Proposed Fees

by McDonnell Boehnen Hulbert & Berghoff LLP
Contact

[author: Donald Zuhn]

IPO #2In September, the U.S. Patent and Trademark Office published a notice of proposed rulemaking in the Federal Register (77 Fed. Reg. 55028) presenting its proposal for setting and adjusting patent fees.  According to the notice, the Office's proposal would set or adjust 352 patent fees.  Given that the notice was one of proposed rulemaking, the Office invited the public to submit comments regarding the proposed new fees, with such comments due by November 5, 2012.  The Intellectual Property Owners Association (IPO) recently published its letter providing comments on the Office's proposed fee schedule.

The IPO notes that after reviewing the proposed fee schedule, the organization "generally agree[s] with the PTO's overall objectives and goals," and that the proposed fee schedule "includes a number of improvements over the PTO's preliminary fee setting proposal that was published in the Federal Register on January 30, 2012" (see "USPTO Proposes Fees Changes").  The IPO also noted that it had reviewed the Patent Public Advisory Committee's (PPAC) Fee Setting Report (see "PPAC Issues Report on USPTO Patent Fees Proposal"), and that the group "concur[red] with many of the PPAC's findings and recommendations."

Despite agreeing with the Office's overall objectives and goals in proposing the new schedule -- in particular, the letter notes that the "IPO continues to support the PTO's goals for lower pendency and improved quality" -- the letter states that "[t]he fee increases being proposed will cost our members hundreds of millions of dollars and will require difficult spending choices within many companies."  Although the Office's notice of proposed rulemaking suggests that "the routine fees to obtain a patent (i.e., filing, search, examination, publication, and issue fees) will decrease by at least 22 percent relative to the current fee schedule," the IPO points out that:

The effects of the Fee Schedule would be very different for a patent owner who paid the routine fees to obtain a patent plus the three maintenance fees to keep the patent in force for its full term.  We calculate that a patent owner who paid all of those fees would face an overall fee increase of 26.3 percent at the fee levels proposed for 2013.

As a result, the IPO "urge[s] the PTO to reduce the proposed fee levels as much as possible without sacrificing its pendency and quality goals," and "questions whether applicants should pay such a significant percentage of collected fees to build an operating reserve at the same time that applicants are paying increased fees to achieve the PTO's pendency and quality goals."  The organization argues that "[t]he pursuit of all of these initiatives at the same time imposes a heavy fee burden on IPO members, especially during difficult economic times that continue to include work-force reductions."

In the latter half of its letter, the IPO offers comments on nine classes of fees that "warrant reevaluation."  These classes (with some of the IPO's comments) include:

• Maintenance fees -- The IPO is "concerned . . . that the Fee Schedule raises maintenance fees so high that too many patent owners will be unable or unwilling to pay the fees."  In addition, the IPO "urge[s] the Director to  . . . eliminate the 75 percent micro entity discount for maintenance fees," stating that "[m]icro entities that successfully license or otherwise commercialize a patented invention should be expected to pay a fair share of maintenance fees, which are not due until 3-1/2 years and later after they obtain their patent."

• Appeal fees -- The IPO notes that "[a]ccording to recent PTO statistics, almost 50 percent of the decisions on appeal reverse an examiner's final rejection," which "suggests that a significant number of appeals are pursued to correct improper final rejections."  The IPO argues that the 242% increase for appealing a final rejection therefore "fails to take into account the practical realities facing applicants."

• Post-grant and inter partes review fees -- Noting that "no historical cost information exists" for these new proceedings, the IPO expresses the "hope[] that the cost calculations for these proceedings will be reevaluated when information from actual proceedings becomes available."

• Supplemental examination fees -- The IPO "encourage[s] the PTO to consider further reducing supplemental examination fees so that the procedure will be used by stakeholders."

• Ex parte reexamination fees -- The IPO notes that "[t]he Fee Schedule proposes a fee of $15,000 for ex parte reexamination, which is almost six times more than the fee for the same proceeding at the beginning of 2012," and declares that "[i]n comparison to other examination fees, IPO believes the proposed ex parte reexamination fee is far too high."  The IPO suggests that "an ex parte reexamination generally requires the same PTO resources as a typical patent application," and notes that "[a]ccording to the Federal Register notice, in 2011 the estimated total cost to examine an application was $3,569."

• Excess claims fees -- Noting that cost of independent claims rises by almost 70% under the Office's proposal, the IPO points out that "[w]hile many independent claims directed to different inventions in one application would increase an examiner's burden, such claims would be removed from the application through restriction."

• Fees for correction of inventorship -- The IPO "questions whether this fee is warranted in all cases," noting that "[i]n cases where claims are limited by restriction after the first action on the merits or by amendments during examination, inventors are almost always removed from the application."  As a result, the IPO "believes this fee should be eliminated, or at least reduced, and apply only in situations where an inventor is added to the application after the first action on the merits."

• Fee reductions delayed until 2014 -- The IPO "suggest[s] that the PTO consider implementing these reductions [i.e., for patent issuance, publication, and electronic assignment recordation] earlier."

• RCE fees -- The IPO states that it "do[es] not believe raising filing fees is the solution to the RCE problem."  According to the IPO, the proposed RCE fees "are unduly high and, like appeal fees, fail to take into account prosecution realities."

For additional information regarding this topic, please see:

• "PPAC Issues Report on USPTO Patent Fees Proposal," October 9, 2012
• "More on USPTO's Proposed New Fees - Part II," September 19, 2012
• "More on USPTO's Proposed New Fees," September 11, 2012
• "USPTO Proposes New Patent Fees and CPI Adjustments to Certain Fees," September 6, 2012
• "USPTO News Briefs," September 5, 2012
• "USPTO Posts Comments on Proposed Fees Changes," March 19, 2012
• "A Glimpse under the Hood: How the USPTO Proposes to Adjust Patent Fees," March 14, 2012
• "USPTO Proposes Fees Changes," March 1, 2012
• "USPTO News Briefs," February 20, 2012
• "PPAC to Hold Public Hearings on Proposed Fee Schedule," February 1, 2012

 

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

© McDonnell Boehnen Hulbert & Berghoff LLP | Attorney Advertising

Written by:

McDonnell Boehnen Hulbert & Berghoff LLP
Contact
more
less

McDonnell Boehnen Hulbert & Berghoff LLP on:

Readers' Choice 2017
Reporters on Deadline

"My best business intelligence, in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:
Sign up using*

Already signed up? Log in here

*By using the service, you signify your acceptance of JD Supra's Privacy Policy.
Privacy Policy (Updated: October 8, 2015):
hide

JD Supra provides users with access to its legal industry publishing services (the "Service") through its website (the "Website") as well as through other sources. Our policies with regard to data collection and use of personal information of users of the Service, regardless of the manner in which users access the Service, and visitors to the Website are set forth in this statement ("Policy"). By using the Service, you signify your acceptance of this Policy.

Information Collection and Use by JD Supra

JD Supra collects users' names, companies, titles, e-mail address and industry. JD Supra also tracks the pages that users visit, logs IP addresses and aggregates non-personally identifiable user data and browser type. This data is gathered using cookies and other technologies.

The information and data collected is used to authenticate users and to send notifications relating to the Service, including email alerts to which users have subscribed; to manage the Service and Website, to improve the Service and to customize the user's experience. This information is also provided to the authors of the content to give them insight into their readership and help them to improve their content, so that it is most useful for our users.

JD Supra does not sell, rent or otherwise provide your details to third parties, other than to the authors of the content on JD Supra.

If you prefer not to enable cookies, you may change your browser settings to disable cookies; however, please note that rejecting cookies while visiting the Website may result in certain parts of the Website not operating correctly or as efficiently as if cookies were allowed.

Email Choice/Opt-out

Users who opt in to receive emails may choose to no longer receive e-mail updates and newsletters by selecting the "opt-out of future email" option in the email they receive from JD Supra or in their JD Supra account management screen.

Security

JD Supra takes reasonable precautions to insure that user information is kept private. We restrict access to user information to those individuals who reasonably need access to perform their job functions, such as our third party email service, customer service personnel and technical staff. However, please note that no method of transmitting or storing data is completely secure and we cannot guarantee the security of user information. Unauthorized entry or use, hardware or software failure, and other factors may compromise the security of user information at any time.

If you have reason to believe that your interaction with us is no longer secure, you must immediately notify us of the problem by contacting us at info@jdsupra.com. In the unlikely event that we believe that the security of your user information in our possession or control may have been compromised, we may seek to notify you of that development and, if so, will endeavor to do so as promptly as practicable under the circumstances.

Sharing and Disclosure of Information JD Supra Collects

Except as otherwise described in this privacy statement, JD Supra will not disclose personal information to any third party unless we believe that disclosure is necessary to: (1) comply with applicable laws; (2) respond to governmental inquiries or requests; (3) comply with valid legal process; (4) protect the rights, privacy, safety or property of JD Supra, users of the Service, Website visitors or the public; (5) permit us to pursue available remedies or limit the damages that we may sustain; and (6) enforce our Terms & Conditions of Use.

In the event there is a change in the corporate structure of JD Supra such as, but not limited to, merger, consolidation, sale, liquidation or transfer of substantial assets, JD Supra may, in its sole discretion, transfer, sell or assign information collected on and through the Service to one or more affiliated or unaffiliated third parties.

Links to Other Websites

This Website and the Service may contain links to other websites. The operator of such other websites may collect information about you, including through cookies or other technologies. If you are using the Service through the Website and link to another site, you will leave the Website and this Policy will not apply to your use of and activity on those other sites. We encourage you to read the legal notices posted on those sites, including their privacy policies. We shall have no responsibility or liability for your visitation to, and the data collection and use practices of, such other sites. This Policy applies solely to the information collected in connection with your use of this Website and does not apply to any practices conducted offline or in connection with any other websites.

Changes in Our Privacy Policy

We reserve the right to change this Policy at any time. Please refer to the date at the top of this page to determine when this Policy was last revised. Any changes to our privacy policy will become effective upon posting of the revised policy on the Website. By continuing to use the Service or Website following such changes, you will be deemed to have agreed to such changes. If you do not agree with the terms of this Policy, as it may be amended from time to time, in whole or part, please do not continue using the Service or the Website.

Contacting JD Supra

If you have any questions about this privacy statement, the practices of this site, your dealings with this Web site, or if you would like to change any of the information you have provided to us, please contact us at: info@jdsupra.com.

- hide
*With LinkedIn, you don't need to create a separate login to manage your free JD Supra account, and we can make suggestions based on your needs and interests. We will not post anything on LinkedIn in your name. Or, sign up using your email address.