Turn the grill off, the sausage is done

Posted by J. Matthew Buchanan

November 22, 2004

The lame duck 108th Congress passed the omnibus appropriations bill (H.R. 4818) over the weekend. The bill funds government agencies for the next fiscal year (which has already begun), and includes major changes to the fee system of the United States Patent and Trademark Office. In classic sausage-making legislation, Congress ripped some provisions from the Patent and Trademark Fee Modernization Act (H.R. 1561) and dumped the remainder into the Appropriations bill.

The result…a spicy little gem of a sausage that includes broad-based and significant PTO fee increases (IPO estimates that the bill increases fees by an average of 15 to 25 percent) and a restructuring of patent fees. Under the bill, extra fees are incurred for excess specification pages and separate fees are charged for filing and examination. All fees are payable on filing, but are Requests for Examinations far behind?

This treatment of the Modernization Act is generally bad news. The Act enjoyed broad support by PTO stakeholders despite its significant fee increases. Why? Because the Act was supposed to end the diversion of PTO fees to other government programs, and PTO has promised that patent quality and pendency will improve once diversion ends. Unfortunately, the appropriations bill includes the fee increases but does not end fee diversion.

There is good news, though. Under the bill, small entities will get a 75% reduction in fees when an application is filed electronically, and the Director can conduct a pilot study evaluating the outsourcing of prior art searches. There might even be more good news…I’m still reviewing the bill….

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