Patent Office Fee Changes – Two Opposite Approaches

Proposed Changes in the USPTO

In 2009, the USPTO faced both an 8% budget decrease from the previous year ($1.43 billion vs. $1.31 billion) and the pressure of reducing an ever-growing backlog of applications.   

In response, the USPTO has three proposed plans to increase its funding.

  • a 15% increase for nearly all fees,

  • allow the USPTO to set its own fees, and

  • allow the USPTO to retain and spend all its collected fees even if it is over-budget, rather than diverting a portion to the general budget.

Currently, these proposed plans are set forth in President Obama’s $2.3 billion budget request for the U.S. Patent Office for the 2011 fiscal year. 

Deferred Examination Fee Payment at the JPO

In contrast to the USPTO’s proposed fee increase plans for 2011, the Japanese Patent Office has instituted a policy which delays the initial financial impact for patent applicants.   Aimed at increasing the number of patent applications filed during this time of economic distress, applicants now have the option of filing a request to defer payment of the examination fee by a period of one year.  Since examination fees in the Japanese Patent Office can average well over $2000 US, many applicants are embracing this opportunity to avoid payment, at least for the time being.   

This new policy went into effect on April 1, 2009 and applies to all applications with examination fees due up to March 31, 2011.  Furthermore, payment of the deferred examination fee is not required should the applicant choose to abandon the application during this initial year.

So What’s Next?

So far, it appears that Japan’s deferred exam fee policy measure, at least in part, has stimulated the number of patent filings in the JPO.  While nearly all other countries have observed decreases in patent filings in the last year, applications filed in the JPO have increased by 3.6% since 2008.  But will this growth continue through the policy’s final year? 

As for the proposed USPTO changes, whether or not they will be able to increase revenue remains to be seen.  It has been suggested that any potential increase in revenue based on higher fees would actually be negated by a decrease in filed applications and continued prosecution.  As an unspoken side benefit, increased fees would likely reduce the backlog of pending cases, as fewer applications are filed and pending cases are abandoned.  However, the benefit of reducing backlog through higher fees (rather than through improving efficiency and hiring more Examiners, which is also proposed) is questionable, at best. 

Needless to say, the next few years should be interesting as patent offices around the world struggle to balance the need to increase their revenue and efficiency with their duty to encourage patent filing and foster innovation.  


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