Fee Setting Authority
In Section 10 of the America Invents Act, Congress gives authority to the USPTO to set or adjust fees to recover costs associated with patent examination and validation.
Before the America Invents Act, the Director had limited authority to set fees as provided by 35 U.S.C. § 41. This authority was limited to fee setting only to recover the estimated average costs to the Office, and could not be used to set fees for new Office proceedings.
Under the America Invents Act, the Director can set or adjust fees for any services performed by or materials furnished by the Office, including new Office proceedings. The fees may be altered to recover the aggregate costs to the Office for activities, services, and materials relating to patents, including administrative costs. This allows the Office to recover all costs related to patents and enables the Director to adjust fees to encourage or discourage applicants or third parties from utilizing particular services.
Upcoming Events/Key Dates
While the Office was granted this authority on September 16, 2011, it needs to establish rules implementing such authority. This will be done in two phases. The first phase will establish fees for new proceedings that become effective on September 16, 2012. The second phase will establish a procedure for setting other fees. The Office plans to finish the first phase by October 5, 2012, and the second phase by February 2013. The proposed rules for setting and adjusting fees were published on September 6, 2012. Comments on this subject must be submitted to the USPTO for consideration by November 5, 2012.