Along with the post grant rule packages released Tuesday, the USPTO published proposed rules for adjusting all of its fees under its new fee setting authority set forth in the America Invents Act (AIA).
As explained last week, the new USPTO fee setting authority will permit the USPTO to revise the fees set by Congress under 35 U.S.C. §§ 41 (a) and (b) based on the aggregate costs of funding the USPTO. This essentially will permit the USPTO to incentivize and disencentivize applicant, patent owner and third party behavior by setting the fees at low or high levels to encourage certain activities while discouraging others.
When reviewing the newly proposed fees for RCEs, a practice the USPTO tried to all but outlaw a few years back, it can be argued that the Office is purposefully pursuing a cost prohibitive control. The current RCE fee (large entity) is $930. The Office now proposes to raise this fee, near doubling it, to $1700.
The newly proposed fee schedule is found (here)
Surely, the Office may be able to legitimately make the case that, cost wise, this is what the agency must charge to recover its expenses. Yet, with the Office consistently collecting a surplus of fees over the years it is hard to imagine that this degree of escalation is necessary, aside from providing a punitive control mechanism designed to influence applicant behavior.
This same shifting of fees to extreme levels is found in another unpopular practice internal to the Office, namely, appeals. While an ex parte appeal can presently be pursued for $1240 (large entity), the Office now proposes to add an altogether new fee $2500 on top of the current expense, for a total of $4000 to pursue an appeal. (The new $2500 fee would become due should an applicant desire to continue the appeal beyond the Examiner Answer).
Many would argue that the increasing rate of RCE filings as well as that of appeals are a direct reflection of other inefficiencies in the patent examination process that are beyond the control of applicants. As such, pursuing these avenues during prosecution have become necessary evils. Punishing applicants with increased fees for availing themselves of these mechanisms seems to indicate an intention of the Office to simply kill the patient rather than remedy their disease.