USPTO Fee Increase – January 16, 2018

The USPTO increased fee schedule, which sets or adjusts 202 patent fees for large, small, and micro entities, goes into effect January 16, 2018.¹ The final rule was published in the Federal Register on November 14, 2017 and is authorized by Section 10 of the Leahy-Smith America Invents Act (AIA).²

The increased fees are broken down into two groups: (a) “fees with changes less than plus or minus 10 percent or 20 dollars” and (b) “fees with changes of greater than plus or minus 10 percent and 20 dollars.”³ The majority of prosecution fees fall under category (a) and are increased by around 10 percent. The increased fees in category (b) are divided into three categories: (1) new and significant fees; (2) patent enrollment fees; and (3) fees adjusted and amended to include discounts for small and micro entities.⁴ The “new and significant fees” are divided into 10 subcategories, each of which will be described briefly below, starting with the more substantial fee changes.⁵

1. AIA trials (Inter Partes Review and Post-Grant or Covered Business Method Review)

To close the gap between the cost and the fees for AIA trial filings, the fees for Inter Partes Review, Post-Grant or Covered Business Method are substantially increased.

Inter Partes review request (up to 20 claims) and post-institution (up to 15 claims) fees are increased 72% (to $15,500) and 7% (to $15,000), respectively, making the total fee for the Inter Partes review (request and post-institution) $30,500.⁶ The fees for each claim in excess of 20 (request) or 15 (post-institution) were increased 50%, to $300 and $600, respectively.

The fees for Post-Grant or Covered Business Method review request (up to 20 claims) and post-institution (up to 15 claims) were increased 33% (to $16,000) and 22% (to $22,000), respectively. The fees for each claim in excess of 20 (request) or 15 (post-institution) were increased 50%, to $375 and $825, respectively.⁷

2. Mega-sequence listing filings

To encourage applicants to draft their specifications such that non-essential sequence data is not included in the sequence listing, the final rule includes two new fees for sequence listings of 300 MB or more: Tier 1 sets a new fee of $1,000 for sequence listings having a file size from 300 MB to 800 MB and Tier 2 sets a new fee of $10,000 for sequence listings having a file size greater than 800 MB.⁸

3. Sequence Listings filed during the PCT-International Stage

A new late fee of $300 will be assessed for sequence listings filed in international applications in response to an invitation to provide a missing or corrected sequence listing to encourage timely filing of sequence listings.⁹

4. Request for ex parte reexamination

The new fee schedule provides a reduced fee ($6,000) for smaller, streamlined reexamination requests having (i) 40 pages or less; (ii) lines that are double-spaced or one-and-a-half spaced; (iii) text written in a non-script type font such as Arial, Times New Roman, or Courier; (iv) a font size no smaller than 12 point; (v) margins which conform to the requirements of 37 CFR 1.52(a)(1)(ii); and (vi) sufficient clarity and contrast to permit direct reproduction and electronic capture by use of digital imaging and optical character recognition.¹⁰ (See, 37 C.F.R. 1.20(c)(1). Otherwise, the fee for filing a request for ex parte reexamination remains $12,000.

5. Design and plant search, examination, and issue

To help cover the cost to examine design and plant patent applications, the USPTO has increased the search, examination and issue fees for design and plant patents up to 33% to compensate for the fact that neither design nor plant patents are required to pay maintenance fees after the patent has been granted.¹¹

6. Request for continued examination (RCE)

The final rule increases the cost to file a first RCE from $1,200 to $1,300 and the second and subsequent RCE from $1,700 to $1,900, 8% and 12%, respectively.¹²

7. Information disclosure statements

The submission fee for an Information Disclosure Statement (IDS) is increased 33%, from $180 to $240, to encourage early submission.¹³

8. Certificate of correction

The fee for a Certificate of Correction is increased by 50%, from $100 to $150.¹⁴

9. Appeals

Based on the feedback on the notice of proposed rulemaking (“NPRM”),¹⁵ the proposed increase to the fee to file a Notice of Appeal was not implemented (the fee to file a Notice of Appeal remains $800) and the appeal forwarding fee proposed in the NPRM was reduced from $2,500 to $2,240.¹⁶

10. Reissue patent maintenance rule

For each issued patent, the Office may grant one or more reissue patents.¹⁷ Previously, only one maintenance fee was required for all of the reissue patents from a single patent. Under the final rule, maintenance fees will be required for each reissue patent.¹⁸