USPTO Releases Proposed Patent Fee Schedule and Proposed Contested Case Rules

by Brian Fletcher on February 15, 2012

The United States Patent and Trademark Office (USPTO) has released its proposed patent fee schedule and proposed contested case rules related to the implementation of the America Invents Act (AIA).  Specifically, the agency has assembled the following documents about proposed patent fees:

The agency states that it followed two principles in its fee setting process. First, the agency must have a more sustainable funding model than it has had in the past to avoid disruptions in agency operations due to economic fluctuations (Congressional fee diversion, well that’s another story we hope is in the past). Second, the agency seeks to reduce the backlog of unexamined patent applications and reduce patent application pendency in accordance with the USPTO’s 2010-2015 Strategic Plan. The proposed fees were set or adjusted under Section 10 of the America Invents Act (AIA) to accomplish these principles. The USPTO is holding PPAC Fee Setting Hearings on February 15 (at the UPSTO’s Alexandria campus) and February 23 (in Sunnyvale, California).

Here are some of the highlights of the proposed fees (these are the large entity fees, so get ready for some sticker shock!):

Examination Fees

  • Examination Fees will more than triple – the Utility Examination Fee will go from $250 to $780
  • Filing an inventor’s oath/declaration up to the time of the notice of allowance will cost $3000
  • Correcting inventorship during examination where the inventor’s oath/declaration was not filed will cost $1700
  • The Request for Continued Examination (RCE) Fee will nearly double, from $930 to $1700

Appeal Fees

The fees for appeals during ex parte prosecution will be restructured, with $1500 due at the time of filing a Notice of Appeal. If the appellant wishes to appeal the examiner’s answer, a $2,500 fee will be required to file an appeal.  According to the USPTO, this fee payment structure allows the appellant to reduce the amount invested in the appeal process until receiving the examiner’s answer (of course, this doesn’t take into account the “investment” in attorney fees used for the Appeal Brief, which can run several thousand dollars). If the examiner withdraws the final rejection prior to filing an appeal, the applicant will be permitted to pay a $0 combined PGPub/issue fee – making the net payment to the office for the NOA, brief, and publication/issue only $540 ($1,500 ‐ $960). (See the Detailed Appendices: Patent Fee Proposal, slide 64).

Maintenance Fees

Maintenance fees will increase about 40%, 25% and 60%, respectively

Post-Patent Grant Proceedings

  • A Request for Ex Parte Reexamination will cost $17,760
  • A Request for Supplemental Examination will cost $7,000
  • A Supplemental Examination proceeding will cost $20,000
  • A Request for Inter Partes Review of 20 or fewer claims will cost $27,200
  • A Request for Inter Partes Review of 61-70 claims will cost $95,200 (intermediate fees are set for IPR of other numbers of claims)
  • A Request for Post Grant Review (including Covered Business Methods) of 20 or fewer claims will cost $35,800
  • A Request for Post Grant Review (including Covered Business Methods) of 61-70 claims will cost $125,300 (intermediate fees are set for PGR of other numbers of claims)
  • The proposed fee schedule includes micro entity fees (a 75% discount), but we are still waiting for the USPTO’s proposed regulations to determine who will be entitled to pay fees at the micro entity rate

Proposed Contested Case Rules

Separately, the USPTO released its proposed rules for the contested case provisions, i.e., inter partes review, post grant review, the transitional program for covered business methods, and derivation. Publication of the proposed rules in the Federal Register will begin the sixty-day public comment period for the proposed rules.

{ 1 comment }

patent litigation February 26, 2012 at 7:08 pm

If it will help reduce patent pendency, open satellite offices, hire examiners, and upgrade the patent office’s infrastructure — all while giving a substantial discount to micro-entities — then the USPTO’s fee hike is a welcome turn of events, as far as I am concerned. Some have complained about the increases, but these benefits don’t come free, after all; you can’t have your cake and eat it too.

Previous post:

Next post: