USPTO Announces First Ever Fee Increases Under the AIA

On October 3, 2016, the United States Patent and Trademark Office (USPTO) issued a notice of proposed rulemaking (NPRM) to set or increase certain patent fees. The goal of this directive is to cover funding shortfalls, or specifically to “recover the estimated costs of the patent operation and USPTO administrative fees that support patent operations.” A full disclosure of the NPRM, as well as several summaries, can be found here. Public comments on the notice are due by December 2, 2016.

It appears that a major reason for these fee increases is to cover the costs of Patent Trial and Appeal Board (PTAB) operations. The USPTO reports that the current ex parte appeals fees cover only around 58% of the cost per appeal, and that the PTAB is insufficiently staffed to deal with both the appeals backlog and the AIA review proceedings that come before it. The USPTO expects that increasing the fees that it takes in will allow the PTAB to hire more judges and reduce the appeals backlog.

The proposal includes the following fee increases:

  • The current large entity fee rates for utility applications will be increased by approximately 6%. This extends to utility filing fees, search fees, examination fees, and issue fees for large entities. Maintenance fees are proposed to remain unchanged.
  • Excess claim fees will be increased, with the fee for claims in excess of 20 being increased by the most significant amount (25%, to $100 per claim). However, the USPTO is considering offering refunds for claims canceled in response to a restriction requirement, if the initial number of claims was over 20.
  • The large entity fee for filing an information disclosure statement is increased by 33%.
  • RCE and appeal fees are each increased, with RCE fees being increased by approximately 10% and appeal fees being increased by approximately 25%.
  • The current large entity fee rates for design applications will be increased by approximately 33%. This extends to design filing fees, search fees, examination fees, and issue fees for large entities.
  • Inter partes review fees will be increased significantly, going from $23,000 to $30,500 (the combined total for petition and institution). Likewise, the fees associated with other post-grant proceedings (post-grant review and covered business method patent review) will also be increased, from $30,000 to $38,000.

The USPTO has also proposed imposing fees on the following:

  • Very large genetic sequence submissions. The USPTO is proposing to impose fees aimed at dissuading applicants from submitting unnecessary large sequence listings that put undue burden on the Office’s information systems. Sequences of over 300MB will be subject to a $1000 fee, and sequences of over 800MB will be subject to a $10000 fee.
  • A late fee will be imposed for sequence listings in international applications.
  • A number of OED fees will be created for practitioners seeking reinstatement.
  • A number of service fees will be created for various services performed by the USPTO. For example, a fee will be created for bulk weekly downloading of patent grants and applications.

Finally, the USPTO has proposed reducing or eliminating fees on the following:

  • The transmittal fee for international design applications under the Hague Agreement will be reset for small and micro entities. The fee rate for large entities will remain the same ($120).
  • A new “streamlined reexamination” process, having a fee of half the existing rate for a request for reexamination (that is, $6000 instead of $12000) will be created.
  • Several disused service fees have been eliminated.

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