New PTO Fee Structure Coming Feb. 7; Public Hearings in Alexandria, Sunnyvale

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By Tony Dutra  

The Patent and Trademark Office will publish a proposed new fee structure for patent applications and maintenance Feb. 7 and conduct two corresponding public hearings, Feb. 15 in Alexandria, Va., and Feb. 23 in Sunnyvale, Calif., according to a Jan. 20 Federal Register notice. 77 Fed. Reg. 4,509.

The America Invents Act (Pub. L. 112-29) gave fee-setting authority to the PTO, but the procedure the agency must follow includes public hearings held by the Patent Public Advisory Committee. The PPAC will publish a set of questions on its website once the fees are made public.

Written comments will be accepted as well, to be submitted no later than Feb. 29.

AIA Gives PTO Authority

Under Section 10 of the AIA, the PTO has the authority to adjust fees “to recover the aggregate estimated costs to the Office for processing, activities, services, and materials relating to patents.” Use of the word “aggregate” allows the agency to set an individual activity fee without necessarily tying it to the costs of performing that fee.

The office recently published proposed rates for AIA-based procedures that will take effect in September that, in fact, exactly reflected the estimated costs. But the justification for those rates did not fall under AIA Section 10.

In fact, PTO officials have said that the agency may set some fees so as to “incentivize” patent applicant and owner behavior (234 PTD, 12/6/11). For example, the agency said, it might make sense to increase the maintenance fees at the seven- and 12-year marks to force patent owner decisions on whether it is economically viable to maintain patent protection on an invention that has not been successful in the market.

Other components of the procedure for implementing the new fee structure are:

• PPAC must prepare a written report on the proposed fees.

• The PTO must consider the report before finally setting or adjusting the fees.

• The PTO must publish its proposed fees and supporting rationale in the Federal Register and give the public 45 days to comment.

• The PTO will then publish its final rule setting or adjusting fees.

The agency previously said that it anticipates the entire process to be completed in the first quarter of 2013.

The Feb. 15 hearing is at the agency's headquarters in Alexandria, Va. The west coast meeting Feb. 23 will be held at the Sunnyvale Public Library.

For More Information

Notice at http://pub.bna.com/ptcj/PTOhearingsFR4509Jan30.pdf

PPAC questions will be posted at http://www.uspto.gov/about/advisory/ppac/