Higher US Patent Fees On The Horizon

18 October 2016 PharmaPatents Blog
Author(s): Courtenay C. Brinckerhoff

The USPTO has published a proposed fee schedule for patent fees likely to take effect October 1, 2017–the start of the USPTO’s next fiscal year. The proposed fee schedule makes “slight” changes to many fees, and more “significant” changes to RCE, ex parte appeal, and patent trial fees (among others). Written comments are due by December, 2, 2016.

The USPTO’s Fee-Setting Authority

Section 10 of the America Invents Act gave the USPTO fee-setting authority, but sets forth a multi-step process the USPTO must follow when setting fees. As the first step of that process, the USPTO published a preliminary patent fee proposal in October 2015, the primary purpose of which was to obtain input from the Patent Public Advisory Committee (PPAC), as required by the AIA. PPAC provided its feedback in February 2016, and now the USPTO has published its (final) proposed fee changes in the Federal Register, as also required by the AIA. According to an article on the Director’s Blog, the USPTO plans to publish a final rule “during the summer of 2017.” Given that timing, the fees likely would take effect October 1, 2017, the start of the USPTO’s next fiscal year.

The “Slight” Patent Fee Increases

The USPTO characterizes fee increases of less than 10% or less than $20 as “slight” increases. These include filing, search and examination fees (which will increases by a total of $120 for a large entity), excess claim fees (which will rise to $460 for each excess independent claim and $100 for each excess dependent claim), and issue fees (which will go up by $40 to $1000).

The “Signficant” Patent Fee Increases

The Federal Register Notice provides more explanation for “significant” fee increases, which it proposes for items including RCEs, ex parte appeals, and patent trials. Thanks to PPAC, some of these increases are less than originally proposed.




Information Disclosure Statements

In its preliminary fee proposal, the USPTO floated the idea of completely revamping procedures for submitting Information Disclosure Statements by replacing the current fee/certification framework with an escalating fee framework. (I wrote about the proposed new IDS framework in this article.) According to the Federal Register Notice, PPAC raised concerns that the proposed changes might “discourage applicants from filing promptly when new prior art is discovered.” Thus, the USPTO has abandoned that proposal, and instead proposes a 33% increase in the “late” IDS fee to $240 for a large entity.

Public Comment Period

As noted above, the public comment period for the proposed fee changes runs until December 2, 2016. While the USPTO already has revised its proposal based on input from PPAC, it is important that stakeholders weigh in as well. Comments can be sent by email to fee.setting@uspto.gov

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