By Donald Zuhn —

In 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