New Patent Fees Enacted on December 8, 2004; New Forms Also Available

According to a December 8, 2004 Notice from the USPTO, the new patent fees are now effective and will remain in effect during the remainder of fiscal year 2005 and during fiscal year 2006:

H.R. 4818, the Consolidated Appropriations Act, 2005 (Consolidated Appropriations Act) was signed by the President and enacted into law on December 8, 2004. The Consolidated Appropriations Act revises certain patent application and maintenance fees; provides separate fees for a basic filing fee, a search fee, and an examination fee; and requires an additional fee for any patent application whose specification and drawings exceed 100 sheets of paper (application size fee).

The patent maintenance fee changes apply to any maintenance fee payment made on or after December 8, 2004, regardless of the filing or issue date of the patent for which the fee is submitted. The revised maintenance fees took effect on December 8, 2004. Thus, any maintenance fee paid at any time on (or after) December 8, 2004 is subject to the revised maintenance fee amounts set forth in the Consolidated Appropriations Act.

If you are paying via the USPTO’s Internet Web site, there will likely be a delay in updating the maintenance-fee information on the USPTO’s Office of Finance On-Line Shopping Web page. Therefore, if paying on-line, please refer to the updated fee schedule to ensure that you include the appropriate updated fee amount. 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 apply to national patent applications (other than provisional applications) filed on or after December 8, 2004, and to international patent applications in which the basic national fee is paid on or after December 8, 2004. The new provisional application filing fee applies to any provisional application filing fee paid on or after December 8, 2004. 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 under the Consolidated Appropriations Act is paid on or after December 8, 2004, the USPTO will issue a notice requiring any balance of the search fee and the examination fee (but no surcharge).

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 December 8, 2004, regardless of the filing date of the application for which the fee is submitted.

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.

The USPTO forms website has also posted the following new materials in conjunction with the fee schedule changes:

• "Patent Application Fee Determination Record" Form PTO/SB/06 (same as PTO-875).
• "Provisional Application for Patent Cover Sheet" Form PTO/SB/16 (last updated 2004/12)
• "Fee Transmittal" Form PTO/SB/17
• "Petition for Extension of Time under 37 CFR 1.136(a)" Form PTO/SB/22
• "Maintenance Fee Transmittal" Form SB45 (last updated 2004/12)