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Archived updates for Tuesday, March 01, 2005

USPTO Proposes New Rules for Patent Applications Fees

On February 28, 2005, the United States Patent and Trademark Office published a Notice of Proposed Rulemaking concerning the Office's practice for handling patent applications filed without the appropriate filing, search, and examination fees. Written comments must be received on or before March 30, 2005. No public hearing will be held.

The examination fee and search fee are currently due on filing in an application filed under 35 U.S.C. 111(a) or on commencement of the national stage in a PCT international application, but may be paid at a later time if paid within such period and under such conditions (including payment of a surcharge) as may be prescribed by the Director. The Office is proposing to: (1) Require the surcharge under Sec. 1.16(f) in any application filed under 35 U.S.C. 111(a) in which the search fee or examination fee is paid on a date later than the filing date; and (2) require the surcharge under Sec. 1.492(h) in any application filed under the PCT in which the search fee or examination fee is paid on a date later than thirty months from the priority date.

The Office is also proposing to eliminate the processing and retention fee (Sec. 1.21(l)) practice. The processing and retention fee practice permits an applicant to file an application without the basic filing fee (which formerly covered the cost of the initial processing of an application and part of the cost of the search and examination of an application) and pay only the processing and retention fee set forth in Sec. 1.21(l) in order for the application to be used as a basis for foreign filing and benefit claims under 35 U.S.C. 120 and Sec. 1.78(a). Under the revised patent fee structure set forth in the Consolidated Appropriations Act, the basic filing fee covers only the cost of the initial processing of an application. Thus, the Office is proposing to require payment of the basic filing fee (rather than just the current processing and retention fee set forth in Sec. 1.21(l)) to retain the application. Since the Office must retain an application to permit benefit of the application to be claimed under 35 U.S.C. 120 and Sec. 1.78 in a subsequent nonprovisional or international application, the Office is also proposing to require payment of the basic filing fee (rather than just the current processing and retention fee set forth in Sec. 1.21(l)) to permit benefit of the application to be claimed under 35 U.S.C. 120 and Sec. 1.78 in a subsequent nonprovisional or international application.

Finally, the Office is proposing that each two kilobytes of content submitted on an electronic medium shall be counted as a sheet of paper for purposes of the application size fee specified in 35 U.S.C. 41(a)(1)(G) (Sec. 1.16(s) and Sec. 1.492(j)).

One commentator has already referred to these proposed rule changes as a "naked attempt to gain more fees [in order] to pay the freight at the new Taj Mahal of government complexes in Alexandria."
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