USPTO Updates Patent Fee Schedule Following Enactment of America Invents Act

by Brian Fletcher on September 22, 2011

15 Percent Surcharge on Certain Patent Fees Effective September 26, 2011

The United States Patent and Trademark Office (USPTO) announced its revised patent fee schedule on September 16, 2011 following the enactment of the Leahy-Smith America Invents Act (Public Law 112-29), which was signed into law by President Barack Obama on September 16, 2011. The enactment of the legislation places a 15 percent surcharge on certain patent fees effective September 26, 2011. For a full list of fee changes, please click here.

There have been a number of inquiries regarding the fees due when payments are made by postal mail just prior to the effective date of the 15 percent surcharge (September 26, 2011). The fee due is the fee in effect on the date the document is timely filed. The USPTO postal mailing options are outlined below:

Certificate of Mailing or Transmission: Certain fees (e.g., issue and maintenance fees) may be paid through the postal mail using a certificate of mailing or transmission. See 37 C.F.R. 1.8. Correspondence will be considered as being timely filed on the date of transmission that appears on the certificate. Fees paid by postal mail with the properly filed certificates of mailing or transmission dated prior to September 26, 2011, will not be subject to the 15 percent surcharge.

Filing by Express Mail: Correspondences will be considered as being timely filed on the date the correspondence is deposited with a U.S. post office, if the express mail procedures described in 37 CFR 1.10 are followed. Therefore, fees paid by using the express mail will not be subject to the 15 percent fee increase when deposited with a U.S. post office, under the provisions of 37 CFR 1.10, prior to September 26, 2011.

The USPTO accepts check, money order, credit card authorization or deposit account authorization. Electronic payment methods are also available. Additional information on the currently accepted methods of payment is available here.

Micro Entities

At this time the USPTO may not offer the micro entity discount (75%) on any fees. As provided for in the Leahy-Smith America Invents Act (Public Law 112-29), these fees will be adjusted under the fee setting authority provided for in Section 10 of the AIA. The AIA continues to provide a small entity discount (50%) under 35 U.S. C. § 41(h)(1).

Once the USPTO sets these new fees, it is anticipated that the new fees will include a 50% reduction for small entities and a 75% reduction for micro entities for “filing, searching, examining, issuing, appealing, and maintaining patent applications and patents.” Applicants qualifying for a small entity discount (50%) will be those who meet the current definition in 35 U.S. C. 41(h)(1) while applicants qualifying for a micro entity discount (75%) will be those who meet the definition outlined in AIA Section 11(g).

For more frequently asked questions on AIA implementation please click here.

The current and revised USPTO fee schedules are available here.

{ 1 comment }

patent litigation October 16, 2011 at 6:41 pm

At least the fee hike should help the USPTO realize its plan to open a long-promised patent office in Detroit. I wonder, though, how long it will take before Congress once again starts siphoning fees (now increased) from the USPTO.

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