United States: New Patent and Trademark Fees Under the 2005 Consolidated Appropriations Act

On December 8, 2004, President Bush signed the 2005 Consolidated Appropriations Act, by which the patent fees for the remainder of 2005 and during 2006 were significantly increased. For utility patent applications, the fees were increased except for the publication fee, which remained unchanged, and the first maintenance fee was actually reduced. The following table illustrates some of the changes in the fees for utility patent applications for large and small entities.

The fees for design patent applications were similarly structured (i.e., the three-part fee) and increased as shown in the following table.

The most significant changes in the fee schedule for utility patent applications include the new three-part fee structure, a filing fee discount for small entities when filing a utility patent application electronically, and a relatively large fee increase for claims in excess of the maximum number allowed with the filing fee.

Applicants must now pay a three-part filing fee, a search fee and an examination fee when filing a utility or design patent application. The Patent Office will first apply a payment enclosed with a filing of a patent application to the filing fee. If there is any deficiency after paying the filing fee, the patent applicant will receive a notice that sets a time period for payment of the remaining fees. The time period is extendable under the current Patent Office practice with the appropriate surcharge.

The excess claim fee and parts of the three-part fee may be refundable. The excess claim fee may be refunded if the excess claims are cancelled before an examination on the merits. The search fee may be refunded if (1) the applicant files a written declaration of express abandonment before an examination of the application has been made, or (2) if the applicant provides a search report that meets the conditions prescribed by the Director. A search report that meets the conditions prescribed by the Director is a "qualified search report." The latter condition of getting a refund of the search fee suggests that an applicant may be able to submit a "qualified search report" to forgo paying the search fee. However, such a procedure may not be an option in the near future, as a "qualified search report" is defined as one that may not be from a commercial entity unless "the Director conducts a pilot program of limited scope, conducted over a period of not more than 18 months, which demonstrates that searches by commercial entities of the available prior art relating to the subject matter of inventions claimed in patent applications" are accurate and "meet or exceed the standards of searches conducted by and used by" the Patent Office. Therefore, whether an applicant can submit a previously obtained "qualified search report" to forgo paying the search fee is currently uncertain.

The trademark fees were also increased but will not go into effect until January 31, 2005, for reasons that are explained below. The new trademark fees are shown in the following table.

The 2005 Consolidated Appropriations Act also provided for increased trademark fees, but the fee increase for trademarks did not go into effect on December 8, 2004, for two reasons. First, trademark owners can lose a filing date when the correct fee is not included with the trademark application. Unlike the Patent Office, the Trademark Office does not offer a remedy for submitting a deficient filing fee with a trademark application. Second, because the electronic filing procedure with TEAS was not fully operational, the electronic filing discount could not have been implemented by December 8, 2004. In support of the fee increase, the Patent Office reported to Congress that, without additional resources, applicants will soon have to wait over four years on average before their applications for patent issue. Accordingly, the government increased the patent and trademark fees to provide the Patent Office additional resources to generally reduce the processing time of patent applications. The increased revenue generated from the increased fees will provide the Patent Office with additional staff for processing applications, accelerate the full realization of various electronic document filing and processing programs, and provide surplus funds for engaging in pilot programs to improve various procedures. Additionally, the government discounted the electronic filing fees for patent applications filed by small entities and trademark registration applications in order to provide an incentive to applicants to file electronically.

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