USPTO News: Annual Fee Announced for Registered Practitioners

    By Christopher P. Singer --

In a Notice published in the Federal Register (73 Fed. Reg. 67750) on Monday, November 17, 2008, the U.S. Patent and Trademark Office announced a new rule that would institute an annual fee for all registered practitioners.  The fee will be required for practitioners to maintain active status to practice before the Office.  As other commentators have mentioned, and as the Notice informs, the rule change is based on a prior Notice published on December 12, 2003 which discussed proposed amendments to 37 C.F.R. § 11 that include an annual practitioner fee (see, e.g., Patently-O, "Patent Practice: Annual Practitioner Maintenance Fee").  The Office rationalizes the motivation for the rule change based on an interest in "maintaining a roster of registered practitioners, including affording practitioners due process, protecting the public, preserving the integrity of the Office, and maintaining high professional standards" as well as protecting the general public interest in having an up-to-date roster of registered patent attorneys and agents.  The fee is currently scheduled to be $118 per year, and as Hal Wegner, a partner at Foley & Lardner LLP and professor at George Washington University Law School, noted in a Monday newsletter to his e-mail subscribers "since the final rules are effective in the new fiscal year (in December) the payment is due September 30, 2009."

The rules describe the protocol the Office plans to implement regarding notifying registered practitioners when the fee is due, as well as consequences for non-payment (administrative suspension) and how practitioners who are suspended, if suspended in good faith, can be placed back on active status.  These fees, according to the Notice, are designed to recover the Office's estimated annual cost of maintaining the active practitioner roster, which includes additions and removals from the roster, updating contact information, conducting investigations regarding allegations of practitioner misconduct, and conducting disciplinary proceedings against practitioners.

Perhaps what is most disturbing about this Notice is that it comes on the heels of the USPTO's recent announcement that the recent rule changes to Markush claims and IDS practice will not go into effect under the current administration (see "PTO Announces No IDS or Markush Rules During Bush Administration").  Hopefully, this action will prove to be the single exception to the current Administration's stated intention of not making any further changes to the patent rules and regulations.

Comments

[Patrick P. Zaretski]

I hadn't realized that maintaining the attorney/agent roster was such a financial burden over the past century or so that a fee should have been required all along to maintain good standing, sigh. At this point in the complete incompetence of the USPTO, I hope that soon I won't be charged per call to Alexandria...not that I get much assistance there anyway, assuming I am lucky enough to have someone answer their line!

[EG]

Chris,

What I find astounding about this new fee is that notice of it isn't posted on the USPTO web site (or at least not in an easily visible place). Also, as others have remarked, this fee is based on a proposed Rule that is 5 years old. Do we now have to worry that, out of the blue, "ancient" proposed Rules may nonetheless become final without starting the process over again? Isn't there some sort of "sunset" provision here?

[Chris Singer]

Patrick - I am also a bit skeptical about the costs associated with maintaining the roster, although the Notice says that adding/deleting names from the roster is a daily activity. It also notes, though, that those funds will be used to investigate misconduct complaints and disciplinary proceedings. Again, I have no idea how many investigations happen over the course of a year, or how much a typical investigation/proceeding costs (nor do I ever want to know). To me, this fee is just one more date I'd rather not have to think about.

Chris

[Chris Singer]

EG - I was just able to find the Notice posted on the USPTO's News page (http://www.uspto.gov/main/homepagenews/2008nov18.htm). It lists its date as Nov. 18, (Tuesday) but I don't remember seeing it up on that date. Shenanigans, perhaps...

I am particularly fond of the provision that allows one to become "voluntarily inactive" ("unable to represent others or practice before the Office in patent cases") for the bargain-basement price of $25. What a sweet deal...all the benefits of administrative suspension, but with the added perk of being out $25.

I'm going to look into the timing issue about this rule and the original Federal Register notice, because that is something that could very well be an issue. Also, there could be similar issues of proper compliance with the requirements of the Paperwork Reduction Act and certain Executive Orders, which David Boundy and Richard Belzer have brought to everyone's attention, regarding other proposed "final" rule changes.

[EG]

Chris,

Thanks for your additional thoughts. Yeah, what David Boundy and Richard Belzer, as well as others, have pointed out about how the USPTO manipulates the rule-making process has made us all suspicious of what's going on here. Some have even said that this fee is "retaliation" for the GSK/Tafas suit, as well as efforts by the patent bar and others to derail the rule packages on appeals, IDSs, and Markush groups. That's unfortunately the "toxic" atmosphere we now have between the USPTO hierarchy and the patent bar.

[EG]

Chris,

I now see the posting for the fee on the USPTO web site. It definitely wan't there early yesterday.

[Chris Singer]

EG - After some digging, I think I've determined that the original approval from the OMB for the entirety of the Federal Register Notice (Dec. 2003) expires on December 31, 2010. A wide window to say the least. By the way, that Notice is 122 pages in length and introduces a number of additional changes -- notably a mandatory CLE requirement for any practitioner in "Active Status." I don't recall the potential for mandatory CLE getting any discussion this past week, but I may have missed it. Maybe the Office will be announcing that change next Friday while we're all still in turkey-coma.

You may be asking, "But what is the buttercream icing on that delicious cake of a rule change?" My answer is found in 11.12 as proposed: The mandatory CLE must be completed, "as required from time-to-time by the USPTO Director...[who] will announce each fiscal year whether an education program will be required, and the dates for the program." No more than 1 per year, no fewer than 1 every 3 years. Further, "[o]nly continuing education programs pre-approved by the OED Director...will be deemed eligible to satisfy the requirements...".

Chris

[EG]

Chris,

Thanks for digging this up. My gosh, a 7 year window! And now we've got the spector of CLE (or as I believed it's called Continuing Education Requirement (CER))on the potential horizon. To allow a 7 year window on a proposed Rule is nonsense. So much can change in that time as to make the factual support for proposed Rule obsolete (but when did factual support ever matter to the USPTO?). Allowing such Rules to be buried in a 100+ page document also isn't very comforting.