USPTO's new trademark fees reward electronic filers

The US Patent and Trademark Office (USPTO) has announced new filing fees that will become effective on January 31. The current fee for filing an application is $335 per class, regardless of the method by which the application is transmitted to the USPTO. Under the new rules, the fee for filing an application on paper is being raised to $375, while the fee for filing an electronic application is being decreased to $325 per class. This new advantage for electronic filers comes in addition to the immediate benefit of the same day filing date, whereas paper applications are considered filed on the date of receipt.

The new rules also pertain to responses to office actions in which extra classes are added to the application. In order to pay the reduced fee of $325 per class, the response to the office action must be filed electronically. Responses filed on paper that include a request to add a class will be subject to the $375 per class official fee.

The USPTO's earlier notice of these fee changes, which was issued after Congress passed an omnibus appropriations bill - HR 4818 on November 20 2004, indicated that a further reduced fee of $275 would be applied to electronically filed applications "meeting certain additional requirements to be prescribed by the director". No new information on these additional requirements has been announced and thus the further reduced fee will not be put in place at this time. Earlier announcements by the USPTO had suggested that applications employing pre-approved identifications of goods and/or services would be given special treatment, including possibly reduced fees. It remains to be seen, however, whether and when this further price reduction will take place.

For now, it is clear that the USPTO is strongly encouraging the use of electronic filing methods, for both applications and responses.

Karin Segall, Darby & Darby, New York

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