Promote the Progress

Remember the USPTO proposal that would require patent practitioners to pay an annual fee to maintain their license? The practitioner maintenance fee surfaced in November of 2008 when the outgoing Dudas administration pulled it from the shelf – it was published in draft form nearly five years earlier – and fast-tracked it to final form. At the time, the sudden appearance of the final rule in the waning days of the administration looked like a desperate move to put a new regulation on the books as the ill-fated continuation rules remained in limbo (and in litigation).

The saga took a turn in July of this year when the post-Dudas Office attempted to clarify the status of the rule for 2009, indicating that no due date had been announced and that “[n]o decision has been made to collect the fee in FY2009.”

So the rule is officially in limbo, and practitioners don’t know if or when the fee will become due. More importantly, the position of the new Kappos administration on the annual fee and other aspects of the rule remains less than clear.

Now it looks like the Office still considers the rule alive and kicking. On Friday, the Office published a Federal Register Notice [.pdf] that references the “Annual Practitioner Registration Fee” and various other fees related to the rule (voluntary inactive status, USPTO CLE fees, etc.). The Notice is labelled a “continuing information collection” that relates to various aspects of practitioner registration. There is no mention of a due date, and the fee is mentioned alongside several other fees and forms relating to practitioner registration.

The Notice is certainly not a direct indication that the Kappos administration supports the requirement for an annual registration fee. The inclusion of the fee in this “continuing information collection” does, though, seem to indicate that the Office intends to require payment of the fee at some point in the future, perhaps in fiscal year 2010.

The Office is soliciting comments on its “continuing information collection” and will presumably accept comments that address the substance of the proposed annual fee. You can send your input by email to Susan.Fawcett@uspto.gov. Comments must be submitted on or before February 9, 2010.

I have previously offered my support for imposition of the annual fee, with a few important concerns.

The United States Patent and Trademark Office today published a Final Rule in the Federal Register that levies a ‘practitioner maintenance fee’ on attorneys and agents recognized to practice before it in patent cases.  The new rule requires all registered patent practitioners to pay an annual fee to maintain their professional association with the agency.

You can view and/or download a .pdf of the rule here.

The rule will become effective on December 17, 2008.  The Office will provide “adequate notice” to practitioners in advance of the due date.  The fee for maintaining active status is, currently, $118.  The fee for voluntary, inactive status (for “practitioners who have retired or are unable to continue their practice, but still desire to maintain a recognized professional association with the USPTO”) is, currently, $25.

I’ll write more about the rule once I have time to ponder it a bit more, but my initial thought is this: it’s about time.

Lest anyone think the monies collected by the new Rule will be applied to the issue/maintenance fee shortfall, the Office ensures the bar that they will be used “to enable the Office to maintain a roster of registered practitioners and, consequently, better protect the public from unqualified practitioners.”

I do have two questions following my brief review of the rule

• could the Office have picked a worse name for this new fee?  ”The Practitioner Maintenenace Fee?”  Seriously.  How about “Annual dues?”
• Why did it take five years to take this rule from draft (published on December 12, 2003) to final (published today)?

Hat tip to the Filewrapper blog.