By Donald Zuhn --
In anticipation of yesterday's implementation of the 15% surcharge on certain patent fees pursuant to § 11 of the Leahy-Smith America Invents Act, the U.S. Patent and Trademark Office issued a press release and Federal Register notice (76 Fed. Reg. 59115) last week regarding the patent fees changes. In the Federal Register notice, the Office indicated that a revised fee schedule had been made available (as we noted last week), and that the revised fee schedule included the 15% surcharge, prioritized examination fee, and additional fee for applications not filed electronically that are set forth in the AIA (the latter fee does not take effect until November 15, 2011). The Office's press release indicates that "[a]t this time the USPTO may not offer the micro entity discount (75%) on any fees." The Office notes that "these fees will be adjusted under the fee setting authority provided for in Section 10 of the AIA," and that "[o]nce the USPTO sets these new fees, it is anticipated that the new fees will include a 50% reduction for small entities and a 75% reduction for micro entities for 'filing, searching, examining, issuing, appealing, and maintaining patent applications and patents.'" Thus, applicants should note that while the establishment of micro entities took effect on the date of enactment of the AIA, the 75% reduction in fees afforded to such micro entities must await the Office's fees rulemaking.
Don,
Yeah, there was quite a bit of "trumpeting" about the new micro entity provision being effective when Obama signed the AIA on September 16, 2011. But when I read Sections 10 and 11 which relate to the micro entity provision and the new fee setting authority, it didn't look like the discount applied until the fee setting authority was excerised. The USPTO FAQ on their AIA web page confirmed my interpretation. (BTW, the AIA web page is a very useful source of info.)
Let's face it, the AIA is a mess, and implementation won't be easy. Be prepared for "hiccups" during the rulemaking that will follow to implement this monstrosity. And my nightmares about the impact of the AIA continue unabated.
Posted by: EG | September 28, 2011 at 06:11 AM
Don,
There's been a very good suggestion that all us patent practitioners should read the AIA multiple times. Like 10 times. Not a bad idea.
Posted by: EG | September 28, 2011 at 06:13 AM
Looking over the fee-setting provisions, it will take a miracle for the PTO to be able to propose and set fees within a given fiscal year--it has to go through the PAC, notice and comment, and then Congressional review!
Posted by: Courtenay Brinckerhoff | September 28, 2011 at 08:00 AM
There's been a very good suggestion that all us patent practitioners should read the AIA multiple times. Like 10 times. Not a bad idea.
Posted by: pharmajobs UK | September 29, 2011 at 04:05 AM