The US Patent and Trademark Office (USPTO) recently released a notice of proposed rulemaking regarding proposed USPTO fee adjustments. As authorised by the Leahy-Smith America Invents Act 2011, an upward adjustment of many fees will happen, likely sometime in 2017. On the bright side, most fees that are commonly associated with standard patent prosecution will see only modest increases. Small and micro-entity designations still apply, allowing for at least a 50% reduction in the cost of fees depending on each application's circumstances. The USPTO welcomes the public's comments on these changes via email (fee.setting@uspto.gov) and will review and respond to all emails submitted during the public comment period, which expires on December 2 2016 (for more detailed information, please see the USPTO website).

A complete table of the existing fees, the proposed fees, the increase or decrease and the percentage change can be found here. The following are of relevance to most applicants:

  • The cost of filing a provisional patent application will increase by $20 for a large entity – an increase of 8%.
  • The filing, search and examination fees associated with a large entity utility application will increase by a combined $100 – an increase of approximately 7% on the previous costs.
  • The fees for a first request for continued examination will increase by $100 for a large entity and $200 for each subsequent request for continued examination – increases in fees of 8% and 12%, respectively.
  • The fee for filing an information disclosure statement will increase by $60 for a large entity – an increase of 33%.
  • Post-issuance maintenance fees remain unchanged.

The largest proposed increases are for post-grant challenges of patents, such as inter partes review requests (an increase of $5,000 or 56%) and post-grant review requests (an increase of $4,000 or 33%). As each of these represents relatively new practices enacted by the America Invents Act, the USPTO relied on estimated data to establish the fees for such challenges. Now, with more than three years of data, the USPTO has a better insight into the resources required to provide such services, allowing it to align fees more appropriately.

With the additional revenue provided by the proposed fee increases, the USPTO aims to continue progress towards the goals and objectives of its most recent strategic plan, such as:

  • reaching its target pendency and backlog levels;
  • furthering its enhance patent quality initiative;
  • enhancing its operational processes and customer service experience;
  • increasing staff numbers to deliver high-quality and timely decisions; and
  • achieving a minimum operating reserve balance.

Kevin Dietz

This article first appeared in IAM. For further information please visit www.iam-media.com.