21Aug 2020

In the Federal Register Notice published August 3, 2020, the USPTO notified the final rule on fee changes.  This final rule is effective from October 2, 2020, except for the surcharge for non-DOCX filings, which is effective from January 1, 2022.  As detailed in the Table of Patent Fee Adjustments the final rules includes three types of patent fee adjustments:

  1. Across-the-board adjustment to patent fees: The USPTO applied an approximately five percent increase to most fees impacted by the rule. This represents an approximate two percent annual increase to help the USPTO keep up with inflation in order to achieve strategic goals.
  2. Other adjustments to existing fees: As discussed below, to encourage the effective administration of the IP system and to permit cost recovery for certain services, the USPTO adjusted certain existing fees by an amount other than five percent.
  3. New fees: As discussed below, to encourage the effective administration of the IP system and to permit cost recovery for certain services, the USPTO introduced a new fee for non-DOCX filings, though the fee will not be effective immediately, and a new fee for pro hac vice admission.
  4. Discontinued fees: The USPTO discontinued four fees. Three patent service fees were discontinued to help streamline the patent fee schedule while also focusing USPTO workforce efforts on producing products that benefit the general public rather than producing outputs for individual customers. The Office of Enrollment and Discipline (OED) USPTO-assisted recovery of ID or reset of password fee was discontinued in consideration of public comments and modernization of the patent practitioner directory.

For a complete listing of all fees see the  Table of Patent Fee Adjustments.

Adjustment to existing fees:

Maintenance fee surcharge—late payment within six months (3.5, 7.5, 11.5 years)

  • Final patent fee schedule large entity fee rate: increased from $160 to $500 
  • Description: Maintenance fees are due 3.5, 7.5, and 11.5 years after the date of issue and can be paid during the six months before the due date. Maintenance fees may also be paid with a surcharge during a six-month “grace period” following the due date. Increasing the maintenance fee surcharge encourages timely maintenance fee payments, which improves the public’s understanding of which patents remain in force and which patent rights have been allowed to lapse.

Issue and Maintenance fees

  • Utility issue fee
    • Final patent fee schedule large entity fee rate: increased from $1,000 to $1,200
  • Reissue issue fee
    • Final patent fee schedule large entity fee rate: increased from $1,000 to $1,200
      • For maintaining an original or any reissue patent, due at 3.5 years (first–stage maintenance)
    • Final patent fee schedule large entity fee rate: increased from $1,600 to $2,000
      •  For maintaining an original or any reissue patent, due at 7.5 years (second–stage maintenance)
    • Final patent fee schedule large entity fee rate: increased from $3,600 to $3,760 
      • For maintaining an original or any reissue patent, due at 11.5 years (third–stage maintenance)
    • Final patent fee schedule large entity fee rate: increased from $7,400 to $7,700 

Description: Historically, issue and maintenance fees have played an important role in fostering innovation; by setting these fees above cost, the USPTO is able to set filing/search/examination fees below cost, keeping barriers to entry into the patent system low. As certain technology lifecycles grow shorter, it is important that the USPTO not rely too heavily on fees paid late in the life of a patent. The proposed adjustments will permit the USPTO to recover costs for examining an application earlier in the patent lifecycle. These adjustments will mark the first time maintenance fees have changed since 2013.

AIA trial fees

  • Inter partes review request fee—up to 20 claims
    • Final patent fee schedule large entity fee rate: increased from $15,500 to $19,000
  • Inter partes review post-institution fee—up to 20 claims*
    • Final patent fee schedule large entity fee rate: increased from $15,000 to $22,500
  • Inter partes review request of each claim in excess of 20
    • Final patent fee schedule large entity fee rate: increased from $300 to $375
  • Inter partes post-institution request of each claim in excess of 20*
    • Final patent fee schedule large entity fee rate: increased from $600 to $750 
  • Post-grant or covered business method review request fee—up to 20 claims
    • Final patent fee schedule large entity fee rate: increased from $16,000 to $20,000 
  • Post-grant or covered business method review post-institution fee—up to 20 claims*
    • Final patent fee schedule large entity fee rate: increased from $22,000 to $27,500 
  • Post-grant or covered business method review request of each claim in excess of 20
    • Final patent fee schedule large entity fee rate: increased from $375 to $475 
  • Post-grant or covered business method review post-institution request of each claim in excess of 20*
    • Final patent fee schedule large entity fee rate: increased from $825 to $1,050 

*The post-institution threshold for paying claims fees will increase from 15 to 20, bringing it in sync with the PTAB’s request threshold and reflecting the fact that, following SAS Institute Inc. v. Iancu, 138 S. Ct. 1348 (2018) (SAS), the PTAB is required to institute all claims or none. The threshold for post-institution excess claims fees is currently 15 claims.

Description: As required by the SAS decision, the PTAB will institute a trial as to all claims or none. Previously, the PTAB instituted a trial on just some claims. This has increased the amount of time spent per case post-institution. The Office has also modified its pre-institution practice to take into account the impacts of the SAS decision. For example, prior to SAS, the PTAB did not generally address all arguments at institution. Post-SAS, for purposes of deciding whether to institute trial on a petition, the Office’s policy is to provide details to the parties to the extent practicable, including responding to arguments in a patent owner’s preliminary response that were not the basis for the decision whether or not to institute. This has increased the amount of time spent per case pre-institution. These changes related to the SAS decision have increased the average cost to conduct each proceeding. Other implementations, such as providing automatic sur-replies and pre-hearing conferences, were made to help provide additional fairness and certainty to the parties and public while continuing the PTAB’s practice of rendering high-quality decisions within the statutory time limits applicable to AIA trial proceedings; however, these changes, too, have increased the average cost of conducting each proceeding. Inter partes review request and post-institution fees were adjusted from the NPRM based on updated unit cost data. The USPTO will continue to evaluate data, as it becomes available, to better understand the long-term impact of SAS. 

New fees

Non-DOCX filing surcharge

  • Final patent fee schedule large entity fee rate: $400

Description: This surcharge is for utility non-provisional filings submitted in a format other than DOCX (structured text). The surcharge is being introduced for specifications, claims, and abstracts. The surcharge will not go into effect until January 1, 2022. In the interim, the Office will continue with its outreach efforts, addressing customer concerns and providing ample time for applicants to transition to this new process.

  • Filing via DOCX increases efficiencies and accuracy in the examination process.
  • Encouraging applicants to use DOCX will improve examination quality and lower processing costs.
  • Applications filed using DOCX will be more accessible in future searches of publication materials.

Consistent with federal fee-setting standards, in 2017, the USPTO began its biennial review of fees, costs, and revenues, and found that fee adjustments are necessary to adjust to increasing costs and to provide necessary resources for Patent operations, including implementing the USPTO 2018-2022 Strategic Plan.

According to the USPTO, the state of the U.S. economy, the operational needs of the agency have been considered together with the comments and advice received from the public during the 60-day comment period in determining when to implement the rule. The USPTO made adjustments to the timing of the Final Rule based on all of these considerations, specifically to delay publishing the Final Rule from April, with a July effective date, to August, with an October effective date. This approach is consistent with the USPTO’s many other efforts to provide various types of relief to stakeholders, including deadline extensions and fee postponements. Ultimately, the goal of the USPTO is to ensure not only that businesses and entrepreneurs can weather the economic downturn, but that they can hit the ground running as it passes.

The overall strategy of the Final Rule is to establish a fee schedule that generates sufficient multi-year revenue to recover the aggregate costs of maintaining USPTO patent-related operations and accomplishing the USPTO’s patent-related strategic goals.


Please contact me at silvia@salvadorilaw.com with questions or comments.

Silvia Salvadori, PhD

Silvia Salvadori, PhD

www.salvadorilaw.com

silvia@salvadorilaw.com