The USPTO recently implemented a pilot program that allows patent applicants to delay payment of certain patent application fees for up to 12 months. Applicants who take advantage of the program should carefully consider its pros and cons to ensure that the financial savings are justified in view of the program’s other conditions.
Currently, a formal (nonprovisional) patent application requires a basic filing fee ($330), a search fee ($540), an examination fee ($220), and fees for any extra claims. These fees are halved for an applicant that qualifies for “small entity” status. If any of the fees are not submitted with the application, the USPTO will issue a Notice of Missing Parts, and the applicant will then have two months to pay the omitted fees.
Under the new pilot program, 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, the applicant still must pay the basic filing fee at the outset, but the remaining fees may be deferred for as much as one year.
Patent applicants must be aware that this pilot is only a fee deferral program. The application still must be complete — with a full written description and an enabling disclosure — as the 12-month extension does not open a window for the applicant 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. Further, the program does not extend any foreign filing deadlines if the applicant desires patent coverage outside of the United States.
Also, although the program provides some relief when it comes to paying fees, the program is not without “cost”. For example, applicants who use 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 application claims priority to a provisional application that was filed within the past 12 months. Further, an applicant who defers fees may not file a non-publication request.
Nonetheless, the pilot program can provide a financial benefit to startups, applicants who are still testing an invention, and others who are still evaluating the market opportunities for an invention.
The USPTO proposed this program in April 2010, and it implemented the program as a twelve-month pilot in a Federal Register notice on December 8, 2010.
This program could help a few inventors at the margins, though generally I can’t see that it effects significant change for innovators. It could, however, help the USPTO with its backlog, if enough inventors opt to drop patent prosecution during the additional 12-month pendency period. This initiative, along with David Kappos’s other programs like the “green” patent fast-track and the 3-track patent plan, can conceivably help to whittle down the patent office’s burdensome backlog.