Annual Fee for Registered Practitioners May Be Delayed - UPDATED

    By Christopher P. Singer --

As previously reported on Patent Docs, the U.S. Patent and Trademark Office (USPTO) had planned to institute an annual fee for all registered practitioners (73 Fed. Reg. 67750).  The fee was intended to be required for practitioners to maintain active status to practice before the Office, and was thought to be due in fiscal year 2009 (i.e., by September 30, 2009).

However, in a series of e-mail newsletters sent by Hal Wegner (at left) on Monday, the USPTO may not make the fee due this year.  According to Mr. Wegner's newsletter, "[a] reliable source today reports a conversation with the OED Director who 'said they are not collecting the fee this year.  He was unable to say whether or not they would be publishing a notice or saying anything further publicly.'"  While this is certainly welcome news to the practicing patent bar, Mr. Wegner urged the Office to post an announcement in order to clarify the status of this annual fee noting that, "[n]o practitioner should rely upon second hand oral representations but should await a published notice on the Office website rescinding the $ 118 fee."

We thank Mr. Wegner for his vigilance in monitoring the status of this rule.  Patent Docs will post additional information regarding the status of this fee as we become aware of it.

UPDATE:  On Tuesday morning, Hal Wegner provided an update in his e-mail newsletter regarding the potential enforcement of the annual practitioner registration fee.  Mr. Wegner advises that USPTO Office of Enrollment and Discipline (OED) Director Harry Moatz has explained that the USPTO has not decided whether it will enforce the $118 fee this year, and could make it payable after September 30, 2009, but as a retroactive fee for financial year 2009.

From Hal Wegner's e-mail:

Mr. Moatz explains that "[t]he Final Rules...do not specify the date by which the annual fee, if collected, must be paid.  Further, the Rule requires that adequate notice be 'published and sent to practitioners in advance of the due date.'  The Rule contemplates that the Office, not someone else, publish and issue the notice.  37 CFR 11.8(d)."

"The Office has not issued a notice to pay the annual practitioner maintenance fee for FY2009.  The Office has not required payment of the fee by September 30, 2009.  No decision has been made to collect the fee in or for FY2009."

So, it seems the take-home message is "stay tuned" and have your checkbook ready.

Comments

[Patrick]

Now all we need is for the Federal Circuit to similarly wake up, and then I shall be a relatively happy camper again!

[General Admission]

I guess we will need to wait and see what constitutes "adequate [published] notice...in advance of the due date" for this potential fee. The November 2008 Federal Register Notice seems rife with potential landmines.

Hopefully if the PTO does enact some retroactive fee, it will clarify that the "delinquency fee penalty set forth in 11.11(b)(1),[$50] and further financial penalties and administrative suspension as set forth in 11.11(b)(2) ['Rule to Show Cause why his or her registration...should not be administratively suspended, and he or she no longer be permitted to practice before the Office in patent matters or in any way hold himself or herself out as being registered or authorized to practice before the Office in patent matters.'] and (b)(3) [administrative reinstatement procedures are involved and have an associated fee of $100]" will be waived, or at least a clear deadline set.

Seems like nothing could possibly go wrong...