USPTO News: USPTO Announces Proposed Additional Fee Increases for PCT Applications Filed with US/RO

    By Christopher P. Singer --

As we reported on Tuesday, the Patent Cooperation Treaty (PCT) has published an amended fee schedule for application filings that is due to take effect on July 1, 2008.  In a Federal Register Notice that was published on Wednesday, June 18, 2008, the U.S. Patent and Trademark Office will announce its intention to amend 37 C.F.R. § 1.445(a)(1)-(3) to increase the application transmittal fee (to $415 from $300) and the search fee (to $2,225 from $1,800).  The fee associated with a supplemental search would also increase to $2,225 from $1,800.  These proposed fee increases follow the recent rate hike of November 2007 (FY 2008), where the search and supplemental search fees were increased to $1,800 from $1,000.

In the Notice, the Office argues that these fee increases are being made to merely offset the estimated average costs to the PTO associated with PCT application processing and preparation of international search reports and written opinions.  The Notice states that the estimated average cost of PCT application processing "is slightly over $415.00" while search reports and written opinions have an estimated average cost of "slightly over $2,225.00 for each invention."  The Notice also clarifies that this fee increase will impact all PCT applicants filing with the U.S. Receiving Office (US/RO) as the PCT does not account for small entity fee discounts.

Any written comments to this Notice must be received on or before 60 days after publication of the Federal Register Notice (June 18, 2008).  Comments should be sent by electronic mail message over the Internet addressed to [email protected].  While the PTO prefers comments submitted via the internet, comments may also be submitted by mail addressed to:  Mail Stop Comments--Patents, Commissioner for Patents, P.O. Box 1450, Alexandria, VA, 22313-1450, or by facsimile to (571) 273-0459, marked to the attention of Boris Milef, Office of the Deputy Commissioner for Patent Examination Policy.  Comments may also be sent by electronic mail message over the Internet via the Federal Rulemaking Portal.  Please see the Federal eRulemaking Portal website for additional instructions on providing comments via the Federal eRulemaking Portal.

Comments

[Federally Circuitous]

I haven't read the proposed fee increases yet, but I assume there is no provision for refunding the search and/or examination fee when the search or examination isn't performed on time. I wonder if you or any of your readers have any statistics on how frequently this occurs with PCT application for which the US is the RO or ISA - from my own experience, it's fairly frequent, but I can't provide numbers. I don't see a reason to increase a fee for a service that will not be performed on time, or may even performed so late as to be useless (such as a WOISA issued at 29.9 months or an IPRP issued after 30 months). Also, any idea how the PTO calculates its cost? Does this tell us how much time is allocated to PCT searches, or just how much it costs to outsource PCT searches? If the PTO were willing to suck up and refund the money when PCT services aren't timely provided, the proposed fee increases would be much more palatable.

[anonymousAgent]

The extra fees for the service not performed can be used to fund illegal "new rules" and other Dudas adventures.
Dudas collects these fees today, and by the time the 3rd-world-quality outsorcing search firm gets around to actually doing the work (and late at that) Dudas will be loooong gone, at a cushy job at one of the CPF firms.

[Chris Singer]

Dear Circuitous-
You raise a valid question (to me, at least). In fact, I just filed a US National Phase today off of a PCT that did not yet have the ISR/IPER performed/completed, so I could not file it with the application. In a strange twist (but a bit of a fiscal windfall for the PTO), I think it cost the Applicant "extra" to file this application, as the fee for filing without a search report is more than filing with a search report.

The Federal Register Notice refers to estimated average costs for the searching and ISR/IPER preparation as well as initial processing, but does not get too detailed. It has to be based on the general amount of time PTO personnel spend on searching and related database costs (I don't think they outsource completely (yet)).

In any case, I do not think that the PCT Rules provide explicitly for a fee refund if a ISR/IPER is not timely completed. Many of the administrative procedures are left to the discretion of the individual Receiving Offices (i.e., their national rules). Last I checked, the CFR wasn't too chock-full of refund options. -- It looks like anonymous Agent has a working theory...

Thanks for the comments.

Chris