The America Invents Act signed into law last week by Pres. Obama changes a number of things about fees charged by the PTO.
First, 10 days after the Act’s effective date, certain PTO fees will by subject to a 15% surcharge. This means that starting on Monday, September 26, many PTO fees will be increasing. These include virtually all patent fees at the PTO other than international stage PCT-related fees. This surcharge will remain in effect until the PTO sets fee levels pursuant to Section 10 of the Act, discussed below.
Section 10 of the Act provides the PTO will fee-setting authority. Rather than waiting for Congress to determine how much it should charge for various filings and services, the PTO will be able to use the notice-and-comment rulemaking procedure under the Administrative Procedure Act to set fees at the level that it believes is necessary to perform the services required. The PTO will propose certain fee amounts and the public will have the opportunity to comment on the fees prior to their enactment. The PTO will then be able to take the comments into account, or not, prior to setting the final fee amounts.
The PTO plans to use additional fee revenue to undertake a massive hiring program for examiners and other personnel required to undertake the various aspects of the America Invents Act.
This all sounds great. What is the downside?
First, small inventors and universities were to get some relief in the form of the new micro-entity status that will permit them to pay certain PTO fees at a 75% discount. Unfortunately, the micro-entity provisions of the Act are contained in Section 10 which also grants the PTO fee-setting authority. Thus, the PTO has interpreted this to mean that it cannot permit micro-entity status until it has enacted fees pursuant to this section. This could take a number of monts to go through the required Federal Register notice-and-comment procedure.
Perhaps more importantly, Congress no longer passes a federal budget. Instead, the government continues to operate (just barely) on short term continuing resolutions. Despite congressional promises to the contrary during pendency of the America Invents Act, these continuing resolutions typically do not contain the promised language ending fee diversion. They permit and sometimes encourage Congress to continue to raid PTO fees. Thus, the 15% surcharge becomes a 15% tax on inventors to fund the government generally, rather than the PTO specifically.
The Act mandates a number of new obligations by the PTO, but doesn’t guarantee funding to pay for them.