On August 3, 2020, the U.S. Patent and Trademark Office (USPTO) announced that many of their official patent fees will be increasing effective Friday, October 2, 2020.¹  While some fees are not being changed, the ones that are being changed are being increased between 4% and 213% with a median change of 5% and with an average change of 9%.  The changed fees impact application filing, prosecution, and post-issuance, as well as post-grant proceedings.

On July 31, 2019, the USPTO published a Notice of Proposed Rulemaking,² in which the USPTO proposed a number of increased fees and solicited comments.  Based on this prior Notice, the USPTO promulgated these new fee increases.³

While fees have not increased fees in over three years, the USPTO stated that fee increases were necessary to adjust to increasing costs and to provide adequate patent resources.  In particular, fees were increased to enhance the quality of examinations, achieve optimal examination times, and modernize IT systems.⁴

The fee adjustments promulgated by the USPTO fall generally into four categories: across-the-board increases, miscellaneous increases, new fees, and discontinued fees.  The across-the-board increases include increases by approximately 5% and represent most fee changes.  The miscellaneous increases include increases by an amount different from 5% and represent a small number of fees.  New fees include a non-DOCX filing surcharge fee and a pro hac vice admission fee to appear before the Patent Trial and Appeal Board.  Discontinued fees include various patent service fees related to reports and recovery of lost credentials.⁵

The following three tables summarize several of the large entity fees that affect many patent portfolios and are divided into application filing fees, application prosecution fees, and post-issuance fees.  The tables include the fee description, the current fee, the fee effective October 2, 2020, the fee change in dollars, and the fee change in percentage.

 

Table 1. Application Filing Fees

Application Filing Fees	USPTO Fee
	Current	Effective October 2, 2020	$ Change	% Change
Filing Fee – Utility or National Stage	$300	$320	$20	7%
Search Fee – Utility	$660	$700	$40	6%
Search Fee – National Stage – USPTO was the ISA	$140	$140	$0	0%
Search Fee – National Stage – ISR Provided	$520	$540	$20	4%
Examination Fee – Utility or National Stage	$760	$800	$40	5%
Filing Fee – Provisional	$280	$300	$20	7%
+ Each Independent Claim in Excess of 3	$460	$480	$20	4%
+ Each Claim in Excess of 20	$100	$100	$0	0%
Surcharge for Late Declaration	$160	$160	$0	0%

 

Table 2. Application Prosecution Fees

Application Prosecution Fees	USPTO Fee
	Current	Effective October 2, 2020	$ Change	% Change
Information Disclosure Statement	$240	$260	$20	8%
Terminal Disclaimer	$160	$170	$10	6%
Extension of Time – First Month	$200	$220	$20	10%
Extension of Time – Second Month	$600	$640	$40	7%
Extension of Time – Third Month	$1,400	$1,480	$80	6%
RCE – 1st Request	$1,300	$1,360	$60	5%
RCE – 2nd and Subsequent Request	$1,900	$2,000	$100	5%
Notice of Appeal	$800	$840	$40	5%
Forwarding an Appeal to the Board	$2,240	$2,360	$120	5%
Issue Fee – Utility	$1,000	$1,200	$200	20%

 

Table 3. Post-Issuance Fees

Post-Issuance Fees	USPTO Fee
	Current	Effective October 2, 2020	$ Change	% Change
Certificate of Correction	$150	$160	$10	7%
Maintenance Fee – 3.5 Years	$1,600	$2,000	$400	25%
Maintenance Fee – 7.5 Years	$3,600	$3,760	$160	4%
Maintenance Fee – 11.5 Years	$7,400	$7,700	$300	4%
Surcharge for Late Payment of Maintenance Fee	$160	$500	$340	213%

 

In addition, the USTPO has included a new fee effective January 1, 2022, if an application is not filed in the DOCX text format.⁶  Currently, many applications are filed in the PDF format.  However, beginning on January 1, 2022, if an application is not filed in the DOCX text format, the USPTO will assess a surcharge fee.  While this effective date is well over a year away, planning should be undertaken to avoid incurring this surcharge fee. 

 

Table 4. DOCX Fees

Application Filing Fees	USPTO Fee
	Current	Effective January 1, 2022
Surcharge for Non-DOCX Filing	$0	$400

 

The USPTO is also increasing numerous fees associated with post-grant proceedings.  The table below summarizes some of the large entity fees that affect many proceedings.  For the Inter Partes Review Post-Institution Fee, the USPTO changed the claim threshold from 15 claims to 20 claims.  Further, the USPTO has included a new fee for pro hac vice admission of an attorney who is not a registered to practice before the USPTO.

 

Table 5. Post-Grant Proceedings Fees

Post-Grant Proceedings Fees	USPTO Fee
	Current	Effective October 2, 2020	$ Change	% Change
Inter Partes Review Request Fee – Up to 20 Claims	$15,500	$19,000	$3,500	23%
+ Each Claim in Excess of 20	$300	$375	$75	25%
Inter Partes Review Post-Institution Fee – Up to 20 Claims	$15,000 (Up to 15 Claims)	$22,500 (Up to 20 Claims)	$7,500	50%
+ Each Claim in Excess	$600 (in Excess of 15 Claims)	$750 (in Excess of 20 Claims)	$150	25%
Pro Hac Vice Admission Fee	$0	$250	$250	n/a

 

In conclusion, the USPTO is increasing fees across the board effective October 2, 2020.  The increased fees affect application filing, prosecution, and post-issuance, as well as post-grant proceedings.  With the new fee increases, planning should be undertaken to complete USPTO filings by the effective date to avoid the increased costs.

 

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