The USPTO has recently reported fee increases to take effect on October 2, 2020 relating to the filing and prosecution of patent applications and the maintenance of patents. These fee increases were explained by the USPTO as necessary to fund the USPTO’s operating reserves, address rising costs, and to support efforts to increase patent examination speed and quality. For instance, some of the additional fee revenue will go to investments in existing IT infrastructure and new IT systems. Additionally, while the USPTO will raise most fees by an average of 5%, certain fees will have a greater increase to incentivize patent applicants to streamline prosecution. The fees discussed below reflect utility patent application fees for large entities. The discounted fees charged to small and micro entities will be increased by similar percentages.

A few key highlights of these changes:

(A) Beginning with filing, the basic fees for a utility patent application (filing fee, search fee, and examination fee) will increase 6%, from $1,720 to $1,820. Notably, a surcharge of $400 will eventually be imposed for filing patent applications in file formats other than DOCX. This is one way for the USPTO to advance its IT systems to streamline prosecution. However, unlike the other fee increases, this surcharge will not be in effect until January 1, 2022. We have been working closely with the USPTO and have been testing this system since the inception of the idea of submitting DOCX file formats and are well positioned to do so when it becomes necessary.

(B) Some fees will increase by the average 5%, yet the absolute amounts of these fees are important to note. For instance, the fee for a multiple dependent claim will increase from $820 to $860. While this is only a 5% increase, the overall cost remains substantial which is why we have and will continue to suggest removing such multiple dependent claims at the time of filing the patent application.

(C) The Request for Continued Examination (RCE) fees increase on average 5%. There have been two RCE fees for some time where the second and subsequent RCE fee is considerably higher than the first. In the soon to be effective new fees, that structure will remain such that the first RCE fee will increase from $1,300 to $1,600 and the second RCE fee will increase from $1,900 to $2,000. The USPTO is using these fee differentials to incentivize quicker prosecution and reducing pendency. Therefore, where possible, we suggest putting the claims into the best form consistent with U.S. practice so that the first examination can be as targeted as possible. We also recommend discussing the application with PTO Examiners early and often to facilitate speedier prosecution. .

(D) The one-month extension of time fee will increase 10% from $200 to $220, and the two-month and three-month extensions of time will increase by 7% and 6%, respectively (final costs of $640 and $1,480, respectively). Besides potentially impacting any patent term adjustment that may be available due to USPTO delays in prosecution, these fees become quite considerable into the second and third months.

(E) The issue fee will increase 20%, from $1,000 to $1,200. The first maintenance fee, due at 3.5 years following patent issue, will increase from $1,600 to $2,000, an increase of 25%. The second and third maintenance fees will have smaller percentage increases: The second maintenance fee, due at 7.5 years, will increase 4%, from $3,600 to $3,760. The third and final maintenance fee, due at 11.5 years, will increase 4%, from $7,400 to $7,700. The USPTO may be trying to adjust its fee structure with the understanding that some patents are not maintained beyond the first maintenance fee payment, hence the larger percentage increase in the first maintenance fee. However, the USPTO has significantly increased the financial incentive for the timely payment of those maintenance fees. The surcharge for paying any maintenance fee late and within 6 months after its due date will increase 213%, from $160 to $500.

The existing fee structure at the USPTO has highlighted the need for a carefully-planned prosecution strategy. The future fee increases coming this October have further emphasized the importance of having such a strategy to reduce the costs and length of time for obtaining a patent.

Please view a short YouTube video about the adjusted fees from Oblon Managing Partner, Philippe Signore, here.