Patent Fees

Biotech industry welcomes legislation to modify fees

On 4 March 2004, the US House of Representatives approved legislation that would amend certain user fees related to the filing of patent and trademark applications with the Patent and Trademark Office (PTO)¹. According to the Biotechnology Industry Organization (Bio), if the legislation is enacted, it will provide the user fees necessary to issue strong, enforceable patents that underpin the biotechnology industry².

Bio has recently expressed concern that the PTO is ‘severely under-funded’ and that current user fees are diverted to unrelated government programmes, which could result in the office not being able to meet the demands of the biotech industry's future innovation³. Carl Feldbaum, president of Bio, has stated that this legislation will end the diversion practice and enable the PTO to hire and train additional examiners needed to process applications. The new fees would come into effect on the later of 1 October 2004 or the date of the law's enactment. Table 1 outlines the bill's key provisions.

Table 1. Key provisions of the United States Patent and Trademark Fee Modernization Act of 2004, as passed by the House of Representatives on 3 March 2004

1. The legislation reduces the filing fee for an application for:

- an original patent from $690 to $300;

- an original design patent from $310 to $200;

- an original plant patent from $480 to $200; and

- reissue of a patent from $690 to $300.

 

2. The legislation establishes a basic national fee of $300 for each international application filed (previously the fee varied depending upon the circumstances).

 

3. The legislation prescribes examination application fees for:

- an original patent at $200;

- an original design patent at $130;

- an original plant patent at $160;

- the national stage of each international application at $200; and

- reissue of a patent at $600.

 

4. The legislation increases fees for issuing each:

- original patent from $1,210 to $1,400;

- original design patent from $430 to $800;

- original plant patent from $580 to $1,100; and

- reissue patent from $1,210 to $1,400.

 

5. The legislation requires the Under Secretary of Commerce for Intellectual Property and the Director of the PTO to charge fees for the search of each patent application (except for provisional applications).

 

6. The legislation establishes a Patent and Trademark Fee Reserve Fund in which excess fees for a given fiscal year will be deposited, and exempts such funds from the appropriations process, allowing the PTO to collect such funds and use them for PTO operations until expended.

 

7. The legislation applies the fees to all patents and to all patent applications (with limited exceptions).

 

8. The legislation introduces a fee of $325 for filing an electronic application for the registration of a trademark. The PTO is authorised to reduce this fee to $275.

 

9. The legislation increases the trademark application fee to $375 for a paper application.

 

References

1. H.R. 1561, United States Patent and Trademark Fee Modernization Act of 2004, Sponsor Rep Lamar Smith, as passed by House of Representatives on 3 March 2004, http://thomas.loc.gov

2. Bio news release, 4 March 2004, www.bio.org

3. The Regulatory Affairs Journal - Pharma, 15(3), 216-217