October 2020 USPTO Fee Increases: The Clock Is Ticking

In a bit less than a month, many patent fees at the USPTO will go up across the board. While most of the fee increases are modest, the USPTO has also added a new fee important to our electronic way of life and removed some other fees.

The USPTO indicates that these fee increases are necessary to adjust to increasing costs and to provide for continued operations. Most of the changes are effective October 2, 2020. Some of the changes are discussed below. A table of all changes is available here.  

Pre-examination fees

Filing, search, and examination fees for utility applications are going up by about 5.8%.

Design Patent and Plant Patent fees are going up by about the same amount as well. Other fees, including provisional application fees, reissue fees, extra independent claim fees (in excess of three), and fees for submission of sequence listings are going up by between 4% and 7%. 

The USPTO is introducing a new surcharge for “non-DOCX” filings. In brief, the USPTO has been tossing around the idea of charging applicants extra to file applications without using the DOCX file format (an XML-based open file format) for a few years. Practitioners commonly file applications in PDF format because it ensures that metadata can be controlled and removed before submission, and enables the application to look as it was intended to look.

It appears that the USPTO has decided the inaccuracies (and the PTO’s costs) in accepting PDF files outweigh the convenience to applicants. Needless to say, numerous organizations and individuals took issue with the PTO’s decision to impose a surcharge, citing the lack of uniformity of the DOCX format, professional liability on the part of practitioners for errors in parsing such documents, and possible implications on patent scope if the USPTO renders a document incorrectly. This fee, unlike the others, does not go into effect until January 1, 2022.

Prosecution fees

Fees incurred during prosecution are also going up. For example, the cost of an RCE is going up 5%, while extensions of time are going up by up to 10%.

Some other fees, such as prioritized examination (Track One) are going up as well.

Ex parte appeal fees are rising as well.

Issuance and Post-Issuance Fees

Fees for issuing and maintaining patents are rising considerably. Issue fees for utility patents are jumping by 20%, while the first maintenance fee jumps by 25% and late fees are jumping by more than 200%:

Given these increases, early payment of these fees would be wise.

Miscellaneous Fees

Other fees, such as petition fees, fees to revive an abandoned application or for a delayed submission of a priority/benefit claim, or patent term fees, are going up, generally by around 5% as well. Non-prosecution fees, including fees for Inter Partes Review (IPR) proceedings and ex parte reexamination requests, are also going up by around 5%.

The USPTO indicated that it will not implement its long-threatened “annual active patent practitioner” fee. The new rules do require practitioners to submit a registration statement to continue active status. Failure to timely submit the statement may result in the practitioner being subject to a “delinquency fee” and administrative suspension (which may result in more fees).

Payment of fees that are due on or after October 2 prior to that time will avoid payment of the increases.