The USPTO recently published a Request for Comments which announced an proposed procedure to allow patent applicants the opportunity to delay payment of certain fees in patent applications.
Currently, a formal (nonprovisional) patent application must be filed with an oath, the basic filing fee ($330), a search fee ($540), an examination fee ($220), and fees for extra claims, if any. (Note: these fees are halved for any applicant who qualifies for “small entity” status.) If any of the fees are omitted, the USPTO issues a Notice of Missing Parts, and the applicant then has two months to pay the omitted fees.
Under the new proposal, an applicant will have 12 months (instead of two) to pay the search, examination, and extra claims fees in response to a missing parts notice. Thus, applicants will be able to defer $760 of the total fee, plus any extra claims fees, for 12 months if the proposal is implemented.
The USPTO states that its proposal will “effectively provide a 12-month extension to the 12-month provisional patent application period.” However, it will be important that applicants remember that if adopted, the proposal will only extend the time within which fees must be paid. The application still must be complete — with a full written description and an enabling disclosure — as the 12-month extension will not introduce an opportunity to amend or add new material to the application. In addition, the application must be in a format that is suitable for publication, which may include formal drawings.
The extension can have trade-offs. For example, the notice indicates that applicants who take advantage of this extension may lose up to 9 months of potential patent term adjustment benefits. In addition, the 12-month period will only apply if the applicant has also filed a provisional application. Nonprovisional applications that have no priority claim to an earlier-filed provisional application will not be eligible for this extension.
Nonetheless, if adopted, the proposal can provide benefits to applicants who take advantage of it. Deferring fee payments for another year can be critical for startups and other applicants who are still evaluating the market opportunities for an invention. In addition, the USPTO is considering offering an optional search report (of the type currently provided in in PCT applications) during the 12-month extension period.
The USPTO is accepting comments on the proposal through June 1, 2010. The full notice was published in the Federal Register on April 2, 2010.