Editor’s Note: Chad D. Tillman is a patent attorney for Morris Manning & Martin, LLP .

CHARLOTTE …The United States Patent & Trademark Office (USPTO) has proposed a comprehensive plan for reform referred to as the “21st Century Strategic Plan.” James E. Rogan, Director of the USPTO, recently appeared on July 18th before a House of Representatives Subcommittee to facilitate passage of legislation to implement a new fee structure under the plan. The USPTO is pushing Congress to pass the legislation for an effective date of Oct 1, 2002.

The legislation establishes an “incentive-based” fee structure that strongly encourages the filing of short patent applications with limited claims, and discourages the filing of long patent applications with many claims.

Under U.S. patent law, an independent claim defines the invention for which patent protection is sought. Dependent claims are included to further refine the initial definition of the invention found in the base independent claim.

Utilizing this incentive-based fee structure, the USPTO effectively will force inventors to abandon the traditional pursuit of varied and independent definitions of their inventions. Instead, inventors will be forced to define selectively their inventions using relatively few independent and dependent claims.

‘Shockingly expensive’

An application that can be filed today relatively inexpensively will be shockingly expensive under the new plan. The filing fees for an application having 50 claims with five being independent currently is about $1,400. Under the new fee structure, the same application would incur fees in excess of $17,000. More significantly, the current filing fees for such an application having 100 claims with five being independent is about $2,300, and the fees under the new fee structure would be about $225,000. Even for the simplest of applications having only twenty claims three at most being independent, the fees more than double to $1,550.

Traditionally, many independent claims are included in a patent application to present varied and independent definitions of the invention, thereby providing broader and more diverse patent protection. This is especially true for an invention directed to complex technologies. For example, U.S. Patent No. 6,400,595 covering dynamic random access memory issued June 4, 2002 with 374 claims. According to the Association of Patent Law Firms (APLF), which opposes the legislation, the application resulting in this patent cost over $8,000 to file. Under the new fee structure, APLF calculates that the application would have incurred fees in excess of $47 billion, i.e., almost 6,000,000 times $8,000.

The legislation being advocated by the USPTO applies both to original U.S. nonprovisional patent applications as well as to U.S. national stage filings under the Patent Cooperation Treaty. Patent applications in process should be accelerated to ensure filing prior to any effective date of the legislation. Furthermore, the mere filing of a provisional application before the effective date will not avoid the excessive fees that will be incurred for a related nonprovisional patent application that is filed after the effective date. In order to avoid the excessive fees, the related nonprovisional patent application must be filed before the effective date.

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