• Patent and Trademark Office Announces No Increase in Fees October 1
  • August 12, 2003
  • Law Firm: Perkins Coie LLP - Seattle Office
  • Under current law, the Patent and Trademark Office (PTO) is entitled to increase its fees annually to keep pace with inflation. In May, the PTO published a proposed fee increase to take effect 1 October 2002. Since then, the PTO has sought Congressional approval for a fundamental restructuring of the PTO and its fees. Congress has not reached a final decision, though, and the PTO announced last Friday, 27 September, that the current fee structure will remain unchanged until further notice.

    21st Century Strategic Plan

    In early June, the PTO published its "21st Century Strategic Plan" (the "Plan") outlining Director Rogan's vision of a revamped PTO. By the end of June, the PTO had proposed legislation to implement this vision. The fee increases in this legislation met strident opposition from the business community and the patent bar, though. Under the Plan, all filing fees would have at least doubled; filing fees for many applications would have increased by an order of magnitude or more and many applications common today would have incurred filing fees in excess of $100,000.

    Congress never formally introduced Director Rogan's proposed legislation. Nicholas Godici, the Commissioner for Patents, recently acknowledged that the fee structure was untenable and the legislation would not be formally introduced without significant revision. Commissioner Godici held out hope that Congress would enact a new fee structure, though he said such legislation was rather unlikely before the elections in November.

    Current Legislation

    On Thursday, 26 September, the House of Representatives passed a Department of Justice appropriations bill that includes several provisions pertinent to the PTO. The Senate has not voted on this bill, but it is expected to pass in the Senate, as well. In addition to making some technical changes to the patent statute (e.g., revising 35 U.S.C. ยง102(e) and modifying reexamination procedures), this bill states that the PTO will get to keep all fees paid by applicants over the next five years. Congress has diverted hundreds of millions of dollars in user fees from the PTO's coffers to the general fund, so this would increase PTO funding substantially with no filing fee increase. Congress retains the prerogative to change its mind annually during appropriations, but it is certainly a move in the right direction.

    Future Fee Adjustments

    The PTO is still pursuing compromise on its fee proposals and hopes Congress will enact new fee legislation before the end of the current term. In their announcement last week, the PTO said they would revise their fees if new fee legislation is enacted. If no new fee legislation is enacted, the PTO still has the right to increase the fees commensurate with inflation simply by publishing a new fee schedule; such an increase seems likely, but probably would not take effect until next year.