On November 14, 2017, the USPTO issued its final rule on new fees for Fiscal Year 2017.[1] There are some marked increases, several moderate increases, some nominal increases, a few new fees, and some fees which have been eliminated altogether. The new fee schedule reflects a strategic goal for aligning fees to their associated costs for administration at the USPTO.
One set of significantly higher fees involves fees for inter partes reviews. Rationale for the marked increase in the Patent Trial and Appeal Board (PTAB) proceeding fees are to align the USPTO costs of administering the PTAB trial processes with the AIA statutory requirements. Specific fee increases include:
- Inter Partes Review Request (up to 20 claims): $15,500, or a 72% increase.
- Inter Partes Review Post-Institution Fee (up to 15 claims): $15,000, or a 7% increase.
- Inter Partes Review Request, excess claims over 20: $300, or a 50% increase.
- Inter Partes Post-Institution Request, excess claims over 15: $600, or a 50% increase.
- Post-Grant or Covered Business Method Review Request: $22,000, or a 33% increase.
- Post-Grant or Covered Business Method Review Post-Institution Fee: $22,000, or a 22% increase.
- Post-Grant or Covered Business Method Review Request, excess claims over 20: $375, or a 50% increase.
- Post-Grant or Covered Business Method Review Post-Institution Request, excess claims over 15: $825, or a 50% increase.
None of these higher fees have an adjustment for different entity sizes, so small and micro entities must pay the same amounts as large entitites.[2]
Another set of significantly high fees affects biotech applications, specifically those that file sequence listings. New fees for mega-sequence listings between 300 and 800 MB of data are $1,000/$500/$250 at large entity/small entity/micro entity rates. New fees for sequence listings over 800 MB of data are $10,000/$5,000/$2,500 at at large entity/small entity/micro entity rates. The USPTO points out that the vast majority of sequence listings fall below the 300 MB threshold, and there are additional burdens on administrative storage and handling of sequence listings over 300 MB.[3]
Design and plant prosecution fees have also increased moderately. Design search fees are up 33%, at $160/$80/$40 at large entity/small entity/micro entity rates, while design examination fees are up 11%, at $600/$300/$150 at large entity/small entity/micro entity rates. Plant search fees are up 11%, at $420/$210/$105 at large entity/small entity/micro entity rates. Finally, design issue fees are up 25%, at $700/$350/$175 at large entity/small entity/micro entity rates, while plant issue fees are up 5%, at $800/$400/$200 at large entity/small entity/micro entity rates. Rationale for these moderate increases is a balance between maintaining a relatively stable fee structure for design and plant applications, while at the same time recovering USPTO costs for prosecution, especially given the fact designs and plants do not have to pay maintenance fees upon issuance.[4] While the fees have increased, the overall effect on SMEs and startups should be minimal.
Information disclosure statements (IDSs) are not immune from fee increases. Rationale for these new fees are meant to encourage earlier disclosure of IDSs in prosecution, complying with 1.97(b). The increased fees for filing an IDS outside of 1.97(b) are $240/$120/$60 at large entity/small entity/micro entity rates. This represents a 33% increase.[5]
A new fee for a petition for ex parte reexamination under §1.510 has been introduced. The fees are $6,000/$3,000/$1,500 at large entity/small entity/micro entity rates.[6]
Office of Enrollment and Discipline (OED) fees have also increased between 100% – 300%.[7]
On the upside for SMEs and startups with limited budgets, new small entity and micro entity rates were established for the following:
- Petition for Delayed Payment of Maintenance Fee: $1,000/$500, at small entity/micro entity rates.
- Petition for Revival of an Abandoned Application: $1,000/$500, at small entity/micro entity rates.
- Petition for Delayed Submission of a Priority Claim: $1,000/$500, at small entity/micro entity rates.
- Hague International Design Application Transmittal Fee: $60/$30, at small entity/micro entity rates.[8]
The new patent fee schedule takes effect January 16, 2018.
[1] 82 Fed. Reg. 52780 (Nov. 14, 2017).
[2] Id. at 52790.
[3] Id. at 52787.
[4] Id. at 52787-88.
[5] Id. at 52788.
[6] Id. at 52789.
[7] Id. at 52791.
[8] Id. at 52793.