Changes to Patent Fees Under the Consolidated Appropriations Act, 2005 H'R' 4818 enacted December 8,

1
Changes to Patent Fees Under the Consolidated
Appropriations Act, 2005 (H.R. 4818) (enacted
December 8, 2004)

• Christopher J. Fildes
• Fildes Outland, P.C.

2
Changes to Patent Fees Under the Consolidated
Appropriations Act(H.R. 4818)

• The Consolidated Appropriations Act (CAA) (H.R.
  4818) became effective on December 8, 2004, the
  date of enactment.
• The patent fee structure provided for in CAA
  (H.R. 4818) is in effect during the remainder of
  fiscal year 2005 and during fiscal year 2006
  (sunset provision). Thereafter, the new fee
  structure will revert to the pre-CAA structure
  unless extended by Congress.

3
Changes to Patent Fees Under CAA (H.R. 4818)

• Changes to the fees and fee structure are a
  result of the Revised 21st Century Strategic
  Plan.
• Goals of the Strategic Plan
• Enhance quality
• Reduce pendency
• Implement e-Government
• The new fees and fee structure attempt to meet
  these goals.
• The new fees and fee structure are also intended
  to be incentive driven.

4
Changes to Patent Fees Under CAA (H.R. 4818)

• Anti-fee diversion provisions were proposed but
  not included in the final bill as found in the
  CAA.

5
Changes to Patent Fees Under CAA (H.R.
4818)Effective Date

• Upon enactment on December 8, 2004, CAA (H.R.
  4818)
• Effectively revised patent fees in general and
• Provided for separate fees, as follows
• Application (basic) filing fee,
• Search fee,
• Examination fee, and
• Application size fee (an additional fee for any
  patent application whose specification and
  drawings exceed 100 sheets of paper).

6
Changes to Patent Fees Under CAA (H.R.
4818)Fees for Nonprovisional Applications

• The following fees are required for
  nonprovisional applications filed under 35 USC
  111(a) on or after December 8, 2004
• Basic filing fee (35 USC 41(a)(1))
• 300 for a utility application (non-small entity)
• Examination fee (35 USC 41(a)(3))
• 200 for a utility application (non-small entity)
• Search fee (35 USC 41(d)(1)) and
• 500 for a utility application (non-small entity)
• Application size fee (35 USC 41(a)(1)(G))
• If the specification and drawings exceed 100
  sheets of paper, 250 (non-small entity) for each
  additional 50 sheets of paper or fraction thereof.

7
Changes to Patent Fees Under CAA (H.R.
4818)Fees for International Applications
Entering the National Stage

• The following fees are required for international
  applications entering the national stage under 35
  USC 371 for which the basic national fee was not
  paid before December 8, 2004
• Basic national fee (35 USC 41(a)(1)(F))
• 300 (non-small entity)
• Examination fee (35 USC 41(a)(3)(D))
• 200 (non-small entity)
• Search fee (35 USC 41(d)(1)) and
• 500 (non-small entity)
• Application size fee (35 USC 41(a)(1)(G))
• If the specification and drawings exceed 100
  sheets of paper, 250 (non-small entity) for each
  additional 50 sheets of paper or fraction thereof.

8
Changes to Patent Fees Under CAA (H.R.
4818)Fees for Provisional Applications

• The following fees are required for provisional
  applications filed under 35 USC 111(b) in which
  the filing fee was not paid before December 8,
  2004
• Basic filing fee (35 USC 41(a)(1)(D)) and
• 200 (non-small entity)
• Application size fee (35 USC 41(a)(1)(G))
• If the specification and drawings exceed 100
  sheets of paper, 250 (non-small entity) for each
  additional 50 sheets of paper or fraction thereof.

9
Changes to Patent Fees Under CAA (H.R.
4818)Search and Examination Fees

• The search fee and examination fee are due
• On filing of an application filed under 35 USC
  111(a) or
• On commencement of the national stage of a PCT
  international application.
• Applicant may pay the search fee and examination
  fee on a date later than the filing date or the
  date of commencement in the interim.
• The USPTO will issue a notice requiring that any
  missing search fee and examination fee be paid
  within a specified period of time in order to
  avoid abandonment.
• No surcharge is required if the basic filing fee
  or national fee and an executed oath or
  declaration were filed upon filing of the
  application.

10
Changes to Patent Fees Under CAA (H.R. 4818)

• Other revised patent fees include
• Excess claims fees
• Extension of time fees
• Appeal fees
• Revival fees and
• Patent maintenance fees.
• Any payments of these fees made on or after
  December 8, 2004 must be made in the revised fee
  amounts.
• The filing date of the application for which the
  fee is submitted, or the date of filing of the
  paper that necessitated the fee, is not relevant.

11
Changes to Patent Fees Under CAA (H.R.
4818)Excess Claims Fees

• The revised excess claims fees
• (35 USC 41(a)(2)) are
• 200 (non-small entity) for each claim in
  independent form in excess of 3
• 50 (non-small entity) for each claim (whether
  dependent or independent) in excess of 20 and
• 360 (non-small entity) for each application
  containing a multiple dependent claim.

12
Changes to Patent Fees Under CAA (H.R.
4818)Excess Claims Fees

• The revised excess claims fees apply to those
  claims that are in excess of the number of claims
  that were previously paid for before December 8,
  2004, after taking into account claims that have
  been canceled.
• For example, in an application that contains 6
  independent claims and 30 total claims for which
  the excess claims fee was previously paid,
• If the applicant cancels 10 claims, 2 of which
  are independent, and adds 11 claims, 3 of which
  are independent,
• Revised excess claims fees for a 7th independent
  claim (200) and a 31st claim (50) would be due.

13
Changes to Patent Fees Under CAA (H.R.
4818)Additional Provisions

• For nonprovisional applications, the basic filing
  fee for small entities is reduced by 75 (i.e.,
  to 75) if the application is filed
  electronically.
• The Director may provide for refund of any part
  of the search fee if an application is expressly
  abandoned before exam, or a search report is
  provided that meets conditions prescribed by the
  Director.

14
Changes to Patent Fees Under CAA (H.R.
4818)Additional Provisions

• Director may provide for a refund of excess
  claims fees for any claims canceled before
  examination on the merits.
• The CAA also contains detailed provisions
  relating to outsourcing the search of
  applications to qualified search authorities.
  (See 35 U.S.C. 41(d)(1)(E), as amended by H.R.
  4818)