The USPTO is set to implement changes to its Fee Schedule on October 2, 2020. Per the USPTO announcement, this update is “necessary to adjust to increasing costs and to provide necessary resources for Patent operations, including implementing the USPTO 2018-2022 Strategic Plan.” The changes include an approximate 5% increase of fees across the board.
Certain fees were increased by substantial more than 5%. Most significant were AIA request and post-institution fees which were increased by up to 50%, with most coming in at 20-25% increases. This substantially affects the costs for PTAB post grant practice for petitioners and those considering their options for IP disputes.
This process began in 2017 in accordance with federal fee setting requirements. The process has included a public forum at the USPTO headquarters in Alexandria, Virginia, comments, and extensive review by the Patent Public Advisory Committee (PPAC). The fees were initially planned to be announced and come into effect earlier this summer but were delayed due to the state of the U.S. economy and the ongoing pandemic.
Notable changes include the addition of two new fees (for pro hac vice admission and effective January 1, 2021 a fee for non docx format submissions), four discontinued fees, and increases to most existing fees.
Further, it is especially important to note the following fee increases for PTAB proceedings:
- Inter Partes Review Request Fee: This fee will increase from $15,000 to $19,000.
- Inter Partes Review Post-Institution Fee: This fee will increase from $15,000 to $22,500
- Total Fees for an instituted IPR increase from $30,000 to $41,500
- Post Grant Review Request Fee: This fee will increase from $16,000 to $20,000
- Post Grant Review Post-Institution Fee: This fee will increase from $22,000 to $27,500
- Total Fees for an instituted PGR increase from $38,000 to $47,500
- Additional fees may be incurred for each claim in excess of 20.
The full fee schedule table is available for download here and the USPTO announcement is available here. In the meantime, filing cases before the October 2nd increase could provide significant cost savings and should be considered.