New Proposed Changes to U.S. Patent and Trademark Office Maintenance Fees

Friday, September 7, 2012 by Catherine Clodfelter

The U.S. Patent and Trademark Office (USPTO) announced changes to its fee system on Wednesday, reducing patent maintenance fees. This change is a part of a reform of the U.S. patent system that USPTO maintains is the “most significant of the U.S. patent system in more than a century.” View the full press release here.

The Leahy-Smith America Invents Act (AIA) gives USPTO authority to adjust fees for the next seven years.  A previous round of proposed changes came out in February of this year. Those previous changes included greater increases in some filings. The increased revenue was necessary, said USPTO, to reduce backlog and pay for AIA required changes. The increases were also proposed as a way to create a three month reserve so USPTO could continue to run smoothly even when there were dramatic changes in the economy. For a full discussion of the differences between the first and second proposals, view here.

The changes are hesitantly preferred over February changes, but experts argue decreases leave the process a bit more attractive to abusers.

Lowering patent maintenance rates allow for the ease of a routine patent process. The fees relate to filing, search, examination, publication, and issue of patent. In this economy, individual start-ups and entrepreneurships are increasingly popular, and making patent applications more accessible is encouraging. Additionally encouraging are the proposed 75% savings on patent fees for micro entities, mostly benefiting individuals and small businesses.

Maintenance fees, a topic of analysis for a number of years, are used at different stages of the patenting process. Fees also serve the purpose of keeping patents from expiring and are a way for the USPTO to get revenue. Experts speculate that there is also a large downside of lowering patent rates, and that lowering rates will not actually encourage business but abuse. Lower barriers to the patent system and allowing patents to stay in the application phase longer for cheaper might increase the likelihood that people will abuse the patent system by constantly keeping patent applications and adjusting them to include new technologies being developed.  For a full discussion of the pros and cons, see here.

Thursday’s changes still show an increase in fees for those circumstances in which USPTO will institute a challenge to a patent. There is some uncertainty whether users will prefer USPTO proceedings or litigation in court.

Adhering to agency rulemaking requirements, the public has 60 days to submit comments before the final rules are set.  More information about the proposed fees may be found here.