Coping With The 2005 USPTO Fee Increases: Strategic Approaches

By Steven W. Crabb & James G. McEwen

On December 8, 2004, President Bush signed the Consolidated Appropriations Act of 2005. A portion of the omnibus spending bill revised regulatory fees at the U.S. Patent & Trademark Office (USPTO). The bill increased the effective filing fee for filing a new non-provisional application and dramatically increased extra claims fees associated with filing new applications with more than the standard 3 independent and 20 total claims provided with the filing fee. The bill also increased costs of Appeal as well as costs associated with the filing of reissue applications.

The most significant changes are for excess patent claim fees. Fees for excess patent claims more than doubled, and new fees were instituted for the search and examination of utility patents and for excess pages in lengthy applications. Additionally, the excess patent claims fees were applied to reexaminations, which had previously not required payment of excess claims fees.