USPTO Fee Structure to Discourage Conduct?
It is expected that the rules to implement post-grant review (PGR), inter partes
review (IPR) and transitional business methods post-grant review (TBMP)
proceedings will be printed in the Federal Register this coming
Tuesday. Included in the new rules will be the filing fees associated
with these new proceedings. By statute these filing fees must be set to
recover the average actual costs to the USPTO to conduct these
As demonstrated in last week's rule package for supplemental examination, the average aggregate cost can be significantly higher than present fee levels.
The proposed rules issued last week set a fee of $ 5,180 to request
supplemental examination and another $16,000 for the resulting ex parte
reexamination should the supplemental examination request raise a
substantial new question of patentability (SNQ). It is expected that
Tuesday's rule package for PGR, IPR and TBMP will set fee levels in
excess of $ 40,000. But, such fee levels may have an unfortunate
chilling effect on those interested in using these new post grant patent
Interestingly, in February 2012, the USPTO
will be publishing proposed rules for adjusting all of its fees under
its new fee setting authority set forth in the America Invents Act
(AIA). The new USPTO fee setting authority
will permit the USPTO to revise the fees set by Congress under 35 U.S.C.
§§ 41 (a) and (b) based on the aggregate costs of funding the USPTO.
This will permit the USPTO to incentivize and disencentivize applicant,
patent owner and third party behavior by setting the fees at low or high
levels to encourage certain activities while discouraging others. For
example, filing, issue and first stage maintenance fees may be set low
to encourage innovation while excess claim, extension of time,
continuation application, and second stage and third stage maintenance
fees may be set higher to subsidize the costs of patent examination.
However, if the USPTO were to set at punitive rates fees for requests
for continued examination (RCE) and appeals, this will be not received
favorably by the patent user community. RCE and appeals are not
activities that applicants relish. If these are necessary to pursue
because of poor patent examination it would be unjust to force
applicants to pay excessive fees to achieve justice when the patents
should have been granted at an earlier stage of examination.
Correction of improvidently issued patents
by post grant proceedings is in the public's interest. Therefore, if the
USPTO were to impose excessively high fees to request ex parte
reexamination, IPR, PGR and TBMP, such will be inconsistent with sound
public policy. Ideally, if these patents should have not have issued,
then the maintenance fees paid by the patent owners who have benefited
by obtaining defective patents should be used to subsidize the costs of
the proceedings. It is especially unfair for third parties adversely
affected by such patents to have to pay the full costs of their
correction. It is hoped that when the USPTO does its fee redesign in
February that they will correct the problem created by Congress by
resetting these post-grant patent proceedings fees at lower rates to
increase participation rates to desired levels.
Finally, the patent user community is
concerned that the new proposed rules for adjusting fees will be boosted
above the 15% surcharge rate effective in September 2011 to build a
revolving reserve fund above the collections level needed to achieve
Congressional budget levels assigned by Congress. If fees collected
exceed appropriation levels then they become subject to fee diversion by
Congress. Until the fee diversion problem is resolved the patent user
community will remain skittish about the money infused into a revolving
fund with a future hope, but no guarantee, that the USPTO will have full
access to the fees.
Today, by Federal Register Notice (here),
the USPTO has scheduled public hearings on fee setting with the Patent
Public Advisory Committee (PPAC). Interested members of the public may
present their views and comments by coordinating in advance with the
View more from Patents Post-Grant.
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