By Donald Zuhn —

Last week, the U.S. Patent
and Trademark Office published a notice of proposed rulemaking in the Federal
Register (77 Fed. Reg. 55028)
presenting its proposal for setting and adjusting patent fees.  In proposing new fees, the Office is exercising
the fee setting authority conferred upon it by § 10 of the Leahy-Smith America
Invents Act.  The 59-page notice states
that:

The proposed fees
will provide the Office with a sufficient amount of aggregate revenue to
recover its aggregate cost of patent operations, while helping the Office implement
a sustainable funding model, reduce the current patent application backlog,
decrease patent pendency, improve patent quality, and upgrade the Office’s
patent business information technology (IT) capability and infrastructure.

The notice also states that
"[t]he proposed fees also will further key policy considerations,"
pointing to multipart and staged fees for requests for continued examination
and appeals, which the notice indicates "aim to increase patent prosecution options for applicants" (emphasis
in notice).

As the Office's notice is one of proposed rulemaking, the Office is soliciting comments from the
public regarding the proposed new fees. 
Written comments must be submitted by November 5, 2012 to be
considered.  Comments can be sent by
e-mail to fee.setting@uspto.gov; by regular mail to Mail Stop — Office of the Chief
Financial Officer, Director of the United States Patent and Trademark Office,
P.O. Box 1450, Alexandria, VA 22313–1450, marked to the attention of
"Michelle Picard"; or via the Federal eRulemaking Portal.

Pursuant to § 10 of the AIA,
the Director is allowed to set or adjust any fee established, authorized, or
charged under Title 35 (but "only to recover the aggregate estimated costs
to the Office for processing, activities, services, and materials relating to
patents").  AIA § 10 specifies that
the Director submit proposed fee changes to the Patent Public Advisory
Committee (PPAC) not less than 45 days before publishing the proposed fees in
the Federal Register (which the Office did last February; see "USPTO Proposes Fees Changes"),
after which the PPAC shall have 30 days to deliberate, consider, and comment on
the proposal as well as hold a public hearing on the proposal (the Office held
two public hearings on fees in February). 
Pursuant to § 10, the Director shall then consider and analyze PPAC's
comments, advice, or recommendations before setting or adjusting the fee (which
last week's notice of proposed rulemaking does).  AIA § 10 also requires that the Director
provide the public with a 45-day period in which to comment on any fee change
(thus the November 5, 2012 deadline to submit comments), and specifies that fee changes shall not
become effective until 45 days after the final rule regarding such change is
published in the Federal Register (in order to give Congress an opportunity to
enact a law disapproving of the fee change).

With regard to the impact
of the proposed fees on patent pendency, the notice states that:

The Office estimates that the additional
aggregate revenue derived from the proposed fee schedule will enable a decrease
in total patent pendency by 12 months for the five-year planning horizon (FY
2013–FY 2017), thus permitting a patentee to obtain a patent sooner than he or
she would have under the status quo fee schedule.

The notice also indicates
that implementation of the Office's proposed fee structure would mean that
"for all applicants the routine fees to obtain a patent (i.e., filing, search, examination,
publication, and issue fees) will decrease by at least 22 percent relative to
the current fee schedule."

The proposed fees in the
current notice differ from the fee increase proposed last week to reflect
fluctuations in the Consumer Price Index (CPI) under 35 U.S.C. § 41(f) (see "USPTO Proposes New Patent Fees
and CPI Adjustments to Certain Fees"),
and fee proposals made earlier this year for new patent-related services that must
be in place one year from the AIA's enactment (the Office notes that such fees
could not be in place by September 16, 2012 given the requirements under § 10).  With respect to the CPI-based increase, the
notice explains that it "is planned as a bridge to provide resources until
the instant section 10 rulemaking (this NPRM) becomes final (at which time the anticipated
section 10 fees would supersede the fees in the CPI rulemaking)."  The fee proposals made earlier this year are
also viewed by the Office as being "needed on a temporary basis, from
September 16, 2012, until this rulemaking becomes final."

In the last week's notice,
the Office sets or adjusts 352 patent fees, 94 of which apply to large
entities, 94 to small entities, 93 to micro entities, and 71 of which are not
entity-specific.  The Office notes that
there were three primary steps involved in setting or adjusting fees:

Step 1: Determine
the prospective aggregate costs of patent operations over the five-year period
[FY 2013-FY 2017], including the cost of implementing new initiatives to achieve
strategic goals and objectives.
Step 2: Calculate the
prospective revenue streams derived from the individual fee amounts (from Step
3) that will collectively recover the prospective aggregate cost over the five-year
period.
Step 3: Set or adjust
individual fee amounts to collectively (through executing Step 2) recover
projected aggregate cost over the five-year period, while furthering key policy
considerations.

Patent Docs will provide additional analysis of the Office's proposed new
fees — including a list of the highest proposed utility fees, the utility fees
that would increase the most under the proposed fee structure, and a comparison
with the fees proposed last spring — in a subsequent post.