Changes to Patent Fees Under the Consolidated Appropriations Act, 2005

AGENCY:

United States Patent and Trademark Office, Commerce.

ACTION:

Notice.

SUMMARY:

If enacted in its present form, the Consolidated Appropriations Act, 2005 (Consolidated Appropriations Act), will revise patent fees in general, including maintenance fees, and will provide for a search fee and examination fee that are separate from the filing fee, during fiscal years 2005 and 2006. This notice provides advance notice to the public of the changes to patent fees in the Consolidated Appropriations Act. In particular, with respect to maintenance fees, this notice advises the public to remain vigilant as to the effective date of the Consolidated Appropriations Act and to consider paying maintenance fees early or taking other appropriate steps to ensure that their patents remain in force.

FOR FURTHER INFORMATION CONTACT:

The Office of Patent Legal Administration, Office of the Deputy Commissioner for Patent Examination Policy, by telephone at (571) 272-7701 or by electronic mail message over the Internet at PatentPractice@USPTO.gov.

SUPPLEMENTARY INFORMATION:

H.R. 4818, the Consolidated Appropriations Act, 2005 (Consolidated Appropriations Act) would, upon enactment, revise certain patent application and maintenance fees; provide separate fees for a basic filing fee, a search fee, and an examination fee; and require an additional fee for any patent application whose specification and drawings exceed 100 sheets of paper (application size fee).

The new patent fees become effective on the date the President signs the Consolidated Appropriations Act. The fees will remain in effect during the remainder of fiscal year 2005 and during fiscal year 2006. The USPTO expects the Consolidated Appropriations Act to be signed by the President in December.

The patent maintenance fee changes apply to any maintenance fee payment made on or after the date of enactment of the Consolidated Appropriations Act, regardless of the filing or issue date of the patent for which the fee is submitted. The revised maintenance fees take effect on the date the Consolidated Appropriations Act is signed by the President. For example, if the President signs the Consolidated Appropriations Act at noon on December 8, 2004, any maintenance fee paid at any time on December 8, 2004, or thereafter, would be subject to the revised maintenance fee amounts set forth in the Consolidated Appropriations Act, regardless of whether the President signs the Consolidated Appropriations Act before or after the payment is made. For this reason, persons paying the second and third maintenance fees may want to consider: (1) Authorizing payment of any deficiency from a deposit account; or (2) paying the maintenance fee with sufficient time remaining in the payment window to allow for a timely payment of any fee deficiency due to the enactment of the Consolidated Appropriations Act. This is especially important if paying via the USPTO's Internet Web site since there may be some delay in updating maintenance fee information on the USPTO's Office of Finance On-Line Shopping Web page and maintenance fees must be timely paid in the appropriate amount to avoid expiration of a patent.

The new basic filing fee (or national fee), search fee, examination fee, and application size fee will apply to national patent applications filed on or after the date of enactment of the Consolidated Appropriations Act and to international patent applications in which the basic national fee is paid on or after the date of enactment. The filing fee (or national fee), search fee, and examination fee are due on filing. If the filing fee (or national fee) is paid on filing, but the search fee and/or examination fee is missing, the USPTO will issue a notice requiring that any missing search fee and examination fee (but no surcharge until further notice) be paid within a specified period of time in order to avoid abandonment. Thus, if at least the full basic filing fee in effect on the date of enactment of the Consolidated Appropriations Act is paid on or after the date of enactment of the Consolidated Appropriations Act, the USPTO will issue a notice requiring any balance of the search fee and the examination fee (but no surcharge).

Since the changes to the patent fees take effect on the date the Consolidated Appropriations Act is signed by the President, there will be applications filed on or after the effective date that may not include the revised fees set forth in the Consolidated Appropriations Act. For example, if the President signs the Consolidated Appropriations Act at noon on December 8, 2004, any application filed (before or after noon) on December 8, 2004, or thereafter, would be subject to the basic filing fee, search fee, examination fee and the revised patent application fees set forth in the Consolidated Appropriations Act.

The remaining patent application fee changes, including the excess claims fees, extension of time fees, and appeal fees, apply to any fee payment made on or after the date of enactment of the Consolidated Appropriations Act, regardless of the filing date of the application for which the fee is submitted.

The USPTO will post additional information on its Internet Web site ( http://www.uspto.gov ) as soon as possible after enactment of the Consolidated Appropriations Act. USPTO customers should monitor the USPTO's Internet Web site frequently for current patent fee information.

Payments from foreign countries must be payable and immediately negotiable in the United States for the full amount of the fee required.