The America Invents Act included two separate fee provisions with early effective dates. A 15% surcharge on many USPTO fees took effect on September 26, 2011. Next, a surcharge on patent applications that are not filed electronically will take effect on November 15, 2011.

The "Electronic Filing Incentive" Fee

The America Invents Act (AIA) calls the new application filing fee surcharge an "Electronic Filing Incentive." It appears in section 10 of the AIA:

(h) ELECTRONIC FILING INCENTIVE.— (1) IN GENERAL.—Notwithstanding any other provision of this section, an additional fee of $400 shall be established for each application for an original patent, except for a design, plant, or provisional application, that is not filed by electronic means as prescribed by the Director. The fee established by this subsection shall be reduced by 50 percent for small entities that qualify for reduced fees under section 41(h)(1) of title 35, United States Code. All fees paid under this subsection shall be deposited in the Treasury as an offsetting receipt that shall not be available for obligation or expenditure. (2) EFFECTIVE DATE.—This subsection shall take effect upon the expiration of the 60-day period beginning on the date of the enactment of this Act.

As summarized in the USPTO's Federal Register Notice, the $400/$200 surcharge applies to all non-reissue applications except for design, plant, or provisional applications, that are not filed electronically.

No Exception When EFS Is Not Operational

The language in the AIA does not address circumstances when the USPTO's electronic filing system ("EFS-Web") is not operational. The USPTO has indicated that it does not understand the law to permit exceptions when EFS-Web is not operational. If you have to file a U.S. patent application when EFS-web is down, you will have to pay the surcharge.

The USPTO provides several guidance documents on the use of EFS-web and offers customer support through its Electronic Business Center page.

A True Tax On Innovation

I wrote previously that the 15% surcharge that took effect on September 26, 2011 was a tax on innovation because Congress did not increase the USPTO's spending authority to account for the increased revenue from these higher fees. As a result, that money was diverted from the USPTO into the general fund of the United States Treasury. Congress can abolish this "tax" by appropriating funds equal to the USPTO's collections, or by excepting the USPTO from the appropriations process altogether.

The "electronic filing incentive" fee is more problematic. The very language of the AIA provides that "[a]ll fees paid under this subsection shall be deposited in the Treasury as an offsetting receipt that shall not be available for obligation or expenditure." As explained on the USPTO's AIA Implementation (Fees) website:

Once collected by the USPTO, the fee must be deposited in the Treasury and is not available to the USPTO for spending.

This new fee truly is nothing more than a tax on patent applicants that goes straight to the United States Treasury!