In the October 3, 2016, Federal Register, the Patent Office published a notice of proposed rulemaking to adjust various fees the Office charges for its services, including 18% to 56% increases for AIA trial fees (as shown below).
According to the notice, the Patent Trial and Appeal Board has received more than 4,700 AIA trial petitions since 2012, and it received over 1,900 in the fiscal year that ended September 30, 2016. In setting the fee structure for administering those trials, the Patent Office had to estimate the demand and workload based on limited data from its administration of inter partes reexamination and interference proceedings. The Patent Office now has three years of data and, therefore, an insight into the costs of administering AIA trials and estimating the demand for these proceedings. And the notice explains that the fee adjustments the Patent Office proposes are meant to align more appropriately with this insight and estimate.
The notice acknowledges a February 2016 Patent Public Advisory Committee (PPAC) report that supports fee adjustments. That report noted that “[e]ffectively filing and defending these proceedings is realistically an expensive proposition,” regardless of the Patent Office fees. The PPAC commented that it may be “sensible to subdivide the fees more finely (pay as you go) so that there might be savings if there is no oral argument or even a refund if a case settles.” The PPAC concluded that these trials remain new and contain sufficiently significant uncertainties that “it may be necessary to raise the fees and wait for more data that permits more finely drawn costs assessments.” Consistent with that conclusion, the Patent Office has proposed to raise all AIA trial fees.
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See, “USPTO Patent Fee Proposal,” at 13 (Sept. 2016). The notice invites comments from the public by December 2, 2016. Following consideration of those comments, the Patent Office may be expected to submit a report containing the final rules to Congress and the Government Accountability Office, before issuing the final rule, sometime in 2017.