The America Invents Act is expected to be signed into law on Friday, September 16, 2011.

While some major changes - such as first inventor to file priority, and the new post grant and inter partes procedures - will not be effective for 12 to 18 months, Patent and Trademark Office fees will increase almost immediately.

The Act provides for a 15% surcharge on almost all fees, including maintenance fees, effective 10 days after the Act's signing. Specifically, the Act states: There shall be a surcharge of 15% on all fees charged or authorized by subsections (a), (b), and (d)(1) of section 41, and section 132(b), of title 35, United States Code. This language can be found on page 108, here. [Link to 35 USC 41 – which outlines all of the fees subject to the 15% surcharge.]

The anticipated effective date for the surcharge on fees begins on Monday, September 26, 2011.

Patentees seeking to avoid 15% surcharges may want to accelerate some filings and payments, before surcharges take effect. Contact your Fish & Richardson attorney to help evaluate whether early filing and payment makes strategic sense for you.

Fees subject to the surcharge include:

35 USC 41(a) General fees

Filing fees

Excess claims fees

Exam fees

Issue fees

Extension fees


35 USC 41(b) Maintenance fees

35 USC 41(d)(1) Patent search fees

35 USC 132(b) Reexam fees

Assignment fees ($40) are exempt from the 15% surcharge.