Big Changes in USPTO’s Proposed New Patent Fee Schedule

With the passage of the America Invents Act (AIA), the USPTO can set or adjust patent fees pursuant to its Section 10 fee setting authority. At the end of October, the USPTO announced fee proposals as a result of its biennial fee review. According to the Office, the fee proposals, which would not take effect until January 2017, are intended to better align fees with costs, allow the Office to continue its efforts to improve patent quality, and promote efficiency of USPTO operations. 

Notable changes in fees are found in the following categories: Basic Filing, Search, and Examination and Excess Claims, with large rate increases in these categories for design applications, Mega Sequence Submissions, Requests for Continued Examination (RCE), Information Disclosure Statements (IDS), Issue Fees, Maintaining Multiple Reissue Patents, Streamlined Re-examinations, Late Filing of Sequence Listings in an International Application, PTAB: Appeal, Inter-Partes Review, Post-Grant Review, and Covered Business Methods, Hague Agreement Fees, Office of Enrollment and Discipline (OED) Fees, and Petition and Administrative Fees. To support the proposal, the Office provided a detailed Table of Patent Fees - Current, Proposed and Unit Cost and a Patent Fee Proposal Slide Deck, which provides background information on a number of the changes.

The Patent Public Advisory Committee (PPAC) held a public hearing regarding the USPTO proposed patent fees on November 19, 2015. Comments made at the hearing raised issues including the high cost associated with filing one or more RCEs, the large increase in the Notice of Appeal and Appeal Forwarding Fees, the new structure for filing an IDS and the increasing costs associated with doing so during later stages of prosecution, and segregation of individual fees for PTAB Trials.

At the hearing, the PPAC urged members of the public to provide comments on the proposed fees—via the fee.setting@uspto.gov email address—as soon as possible. Following the public hearing, the PPAC will provide a written report setting forth the comments, advice, and recommendations of the committee.

Additional information regarding the USPTO’s fee setting and adjusting proposal can be found here.