The U.S. Congress passed a bill raising patent-filing fees in the Consolidated Appropriations Act, 2005 enacted on December 8, 2004.  The new system’s basic filing fee, search fee and examination fee add up to more costs for applicants, but the most significant change may be the fee hike for each claim beyond the first 20 claims.  The increase from $18 to $50 for each additional claim will particularly hit biotechnology patent applications since even run-of-the-mill applications are now filed with 100-200 pages and as many as 100 claims.

The maintenance fees during the patent’s lifetime have also increased substantially.  This, on top of current efforts by the U.S. Patent and Trademark Office to step up pressure on applicants to reduce the number of claims and pages.  This does not address the fact the one broad claim can cause more searching work for an Examiner than 50 relatively straight-forward and focused claims.  It is worth noting here that what is disclosed in a patent but not claimed is dedicated to the public.  To get around this limitation in the case of applications having both broad scope and broad disclosure, a patentee will need to file additional applications with terminal disclaimers subjecting themselves to multiple maintenance fees.

Of course, the big issue for patentees is that a lot of the money is going into the general government fund and not staying at the patent office to improve efficiency and the quality of prosecution. According to the Intellectual Property Owners Association in Washington, D.C., the federal government has diverted three-quarters of a billion dollars in fees from the patent office since 1992.

The AIPLA has this nice desciption here.

More from the USPTO here.

  Print This Post Print This Post  

Comments are closed.