USPTO Increases Patent Fees
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.
1 Summary of FY 2020 Final Patent Fee Rule, United States Patent and Trademark Office, https://www.uspto.gov/about-us/performance-and-planning/summary-fy-2020-final-patent-fee-rule (last visited Aug. 18, 2020) [hereinafter “Summary of FY 2020”].
2 84 Fed. Reg. 37,398 (July 31, 2019).
3 85 Fed. Reg. 46,932 (Aug. 3, 2020).
4 Summary of FY 2020, supra note 1.
5 Id.
6 File Patent Applications with DOCX Documents, United States Patent and Trademark Office, https://www.uspto.gov/patent/docx (last visited Aug. 18, 2020) (discussing the DOCX text format).
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