Show Me The Money ' USPTO Fee Proposals Include Fee Provisions To Impact Applicant Behavior

• Published date: 21 June 2023
• Subject Matter: Intellectual Property, Patent, Trademark
• Law Firm: Oblon, McClelland, Maier & Neustadt, L.L.P
• Author: Mr Richard D. Kelly

The USPTO has opened the discussion on its fees to be effective in 2025. While the PTO is to be applauded for getting ahead of the fee curve, unfortunately some proposed fees are not only outrageous but beyond the PTO's fee setting authority. The PTO in its fee setting objectives listed as one objective to "Promote efficient operations and efficient filing behaviors." [Emphasis added]. The PTO's executive summary quoted in this post is found here along with other supporting documentation. The PTO's fee setting authority is not unbounded but restricted by several laws. First, the House Report describes the fees in 35 U.S.C. ' 41 as the reference point for future adjustments. It provides in part for these fees for over 3 independent claims with a column added for 45% inflation since 2011¹:

However, the proposal is for $200 for each claim over 20 or a 100% increase and a $600 fee for each independent claim over 3 or a 25% increase. The PTO did not, in its submissions, provide any cost data for FY 2022 or any other previous FY. In its executive summary the PTO described the objective to "Encourage applicants to be more efficient in the number of claims filed." There is nothing in the PTO's fee setting authority to use it to influence applicants' habits. The fee setting provision of the AIA provides:

(a) FEE SETTING.'
(1) IN GENERAL.'The Director may set or adjust by rule any fee established, authorized, or charged under title 35, United States Code, or the Trademark Act of 1946 (15 U.S.C. 1051 et seq.), for any services performed by or materials furnished by, the Office, subject to paragraph (2).
(2) FEES TO RECOVER COSTS.'Fees may be set or adjusted under paragraph (1) only to recover the aggregate estimated costs to the Office for processing, activities, services, and materials relating to patents (in the case of patent fees) and trademarks (in the case of trademark fees), including administrative costs of the Office with respect to such patent or trademark fees (as the case may be). [Emphasis added]

Despite the PTO's ill-fated attempt to reduce the filing of continuation applications in 2007 it is trying again in the proposals. See Tafas v Doll, 559 F.3d 1345, (Fed. Cir. 2009). The PTO is proposing:

Note that the second and, especially, subsequent requests would...