Coping with the 2005 USPTO Fee Increases: Strategic Approaches

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On December 8, 2004, President Bush signed the Consolidated Appropriations Act of 2005. A portion of the omnibus spending bill revised regulatory fees at the U.S. Patent & Trademark Office (USPTO). The bill increased the effective filing fee for filing a new non-provisional application and dramatically increased extra claims fees associated with filing new applications with more than the standard 3 independent and 20 total claims provided with the filing fee. The bill also increased costs of Appeal as well as costs associated with the filing of reissue applications.

The most significant changes are for excess patent claim fees. Fees for excess patent claims more than doubled, and new fees were instituted for the search and examination of utility patents and for excess pages in lengthy applications. Additionally, the excess patent claims fees were applied to reexaminations, which had previously not required payment of excess claims fees.

The basic filing fee has now been split into three separate fees all payable at the time of application: (1) the filing fee is $300, (2) a new search fee is $500, and (3) a new examination fee is $200. Certain of these fees may be refunded based upon whether the application was filed under the Patent Cooperation Treaty (PCT) naming the USPTO as the International Searching Authority.

While not yet implemented, according to the USPTO's Office of Patent Legal Administration, the USPTO has authority to implement rules in regard to refunds of certain fees including: 1) applications which are withdrawn before entering the search and examination phases may become eligible for a refund of at least the search and examination fees; 2) any excess claims fees for claims cancelled prior to examination on the merits (i.e., prior to a first Office Action); and 3) the search fee for a search report meeting the requirements of the Director. These refund provisions are forthcoming.

Previously, utility patent applications were not subject to page count restrictions and some applications would reach hundreds of pages long. In order to more closely reflect the costs associated with these large specifications (and possibly to discourage lengthy specifications), the patent office now charges a utility application size fee of $250 for each additional 50 pages in excess of 100 pages. The total page count includes not only the specification, but the drawings and any computer or sequence listings.

Previously, the cost of filing a patent application was set at $790. This single filing fee covered an application of unlimited length, including up to twenty claims, of which three could be independent claims. Claims in excess of twenty were previously subject to an $18 per claim fee, and independent claims in excess of three cost $88 each. An example of the impact of this increase in fees is as follows:

Example 1: For Application With 10 Independent Claims And 40 Claims Total

Old Fee Schedule (Prior to December 8, 2004)

7 extra independent claims x $88 per claim = $616

20 extra total claims x $18 per claim = $360

Excess claims surcharge = $976

Total filing fee = $790 + $976 = $1766

New Fee Schedule (Effective December 8, 2004)

7 extra independent claims x $200 per claim = $1400

20 extra total claims x $50 per claim = $1000

Excess claims surcharge = $2400

Total filing fee = $1000 + $2400 = $3400

Example 2: For Application With 5 Independent Claims And 40 Claims Total Old Fee Schedule (Prior to December 8, 2004)

2 extra independent claims x $88 per claim = $176

20 extra total claims x $18 per claim = $360

Excess claims surcharge = $536

Total filing fee = $790 + $536 = $1326

New Fee Schedule (Effective December 8, 2004)

2 extra independent claims x $200 per claim = $400

20 extra total claims x $50 per claim = $1000

Excess claims surcharge = $1400

Total filing fee = $1000 + $1400 = $2400

Another significant increase was made to Appeal fees. Filing the Notice of Appeal is $500; filing an appeal brief is $500; and requesting an oral hearing is now $1000. Previously the fees were $340 for filing the Notice of Appeal; $340 for filing the Appeal Brief and $300 for requesting an oral hearing. Thus, the raise in fees substantially increases the cost of appeals, and especially the cost of conducting an oral hearing, and will likely have an effect in discouraging at least the routine requests for oral hearings.

While these changes raise the cost of filing and prosecuting a patent application in the United States, an applicant may be able to minimize the impact of the fee structure changes using the following strategies.

• During prosecution after a Restriction Requirement, consider canceling the claims withdrawn by the restriction, and replacing the same number of cancelled claims with new claims drawn to the elected invention. In this way, the extra claims fees previously paid for are not lost merely due to the issuance of a Restriction Requirement.

• Further, where a Restriction Requirement is likely, consider splitting the applications to stay within or near the standard fee claim limits for each of the new applications in order to reduce the extra claims fees as well as the costs associate with responding to Restriction Requirements.

• Carefully consider when to redraft dependent claims in independent form because this may create excess claim fees without obtaining substantial desired coverage. Further, since making claims independent does not necessarily prevent the assertion of prosecution history estoppel, making claims independent does not necessarily maintain coverage available under the doctrine of equivalents.

• Avoid oral hearings unless necessary. For complex cases, an Oral Hearing can be useful to clarify the issues. However, Oral Hearings are often discouraged by the Administrative Law Judges on the Board of Patent Appeals and Interferences in at least their public speeches on the subject, while doubling the amount of appeal fees ($1000 vs. $2000).

• An applicant should use more dependent claims when extra claims are needed to obtain coverage of the invention. One extra independent claim has the same cost as four extra dependent claims, while potentially having the same literal coverage. As evidenced in Examples 1 and 2 above, the reduction of independent claims can substantially reduce the costs associated with filing an application.

However, since the protection offered by a patent is entirely dependent on the scope of the claims and since the Doctrine of Equivalents is providing less coverage than historically provided, applicants should not reduce the number of claims (or their scope) solely to reduce the costs associated with filing the application.

James G. McEwen, Partner, received a Bachelor of Science degree in Aerospace Engineering from the University of Texas, and J.D. with honors from George Washington University National Law Center in 1996. Mr. McEwen is admitted to practice law in the Commonwealth of Virginia and the District of Columbia, and is registered to practice law before the U.S. Patent and Trademark Office.

Stein, McEwen & Bui, LLP is a full service intellectual property law firm with an emphasis on intellectual property creation and maximization. For more information, please visit http://www.smbiplaw.com

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