Understanding the Fees Associated with the Options for Challenging Issued Patents

While the fees for filing inter partes review (IPR) or post grant review (PGR) proceedings (including the transitional program for covered business method patents (CBM TPGR)) initially seemed prohibitive for cost conscious third party challengers, the USPTO has recently decreased the total fees for filing these proceedings. The final fee schedule, identified in the Federal Register on January 18, 2013 (Federal Register/ Vol. 78, No. 13/ January 18, 2013/ Part II/ 37 CFR Parts 1, 41, and 42 – Setting and Adjusting Patent Fees; Final Rule), became effective on March 19, 2013, and can be found here: www.aiablog.com/ptab-filing-fees/

The fee for filing IPR proceedings, which was $27,200, is now divided into a $9,000 filing fee and a $14,000 post institution fee, for a total of $23,000. On the other hand, the fee for filing PGR (or covered business method review) proceedings, which was $35,800, is now divided into a $12,000 filing fee and an $18,000 post institution fee, for a total of $30,000. As pointed out in the final fee schedule, the filing and institution fees increase if the number of claims challenged exceeds 20 (for filing) and 15 (upon institution).

While these fees are significantly greater than the fee for filing an ex parte reexamination (recently decreased from $17,750 to $12,000), the USPTO will refund the institution fee if the IPR or PGR proceedings are not instituted by the PTAB. The potential for this refund may encourage cost conscious third parties to consider filing a request for IPR or PGR, if available, rather than a request for ex parte reexamination, depending on the nature of the patent being challenged.