WASHINGTON - The US Department of Commerce’s United States Patent and Trademark Office (USPTO) issued a notice of proposed rulemaking (link is external) (NPRM) proposing to set or adjust certain patent fees, as authorized by the Leahy-Smith America Invents Act (AIA). According to the USPTO, the proposed fees are projected to recover the aggregate estimated cost of the USPTO’s patent operations, Patent Trial and Appeal Board (PTAB) operations, and administrative services.

 

The last major patent fee setting using AIA authority became effective in March 2013. As part of the USPTO’s continued commitment to fiscal responsibility, financial prudence and operational efficiency, the Office comprehensively reviews fee levels on at least a biennial basis. The fee review process incorporates a thorough evaluation of the existing fee schedule as well as research and analysis on potential revisions to the schedule.

The Office conducted a fee review in FY 2015 to assess the effectiveness of the existing fee schedule. From the fee review, the Office developed several fee change proposals, which were consolidated and presented to the Patent Public Advisory Committee (PPAC) in October 2015 as an initial fee setting proposal. The PPAC conducted a public hearing in November 2015 and accepted public comments before preparing a written report in response to the initial proposal. The Office considered the PPAC report (released in February 2016) when it developed the NPRM.

Some key proposals included in the NPRM are:

• Large entity utility filing, search, and examination fee rates are proposed to increase to $300 (+$20), $660 (+$60), and $760 (+$40) respectively. Small and micro entity discounts remain available.

• Large entity design filing, search, and examination fee rates are proposed to increase to $200 (+$20), $160 (+$40), and $600 (+$140). Design patents do not pay maintenance fees, and the majority of design applicants are eligible for small and micro entity fee reductions.

• The large entity fee for the first RCE request is proposed to increase to $1,300 (+$100). The large entity fee for a 2nd and subsequent RCE is proposed to increase to $1,900 (+$200). In response to concerns raised by the PPAC last fall upon review of an earlier proposal, the USPTO reduced the fee increases proposed for both of these fees.

• Increases to the PTAB AIA trial fees aimed at better aligning these fees with the USPTO’s costs and aiding the PTAB to continue to meet required AIA deadlines. Even with the proposed fee increases, which are generally at or below the Office’s costs, AIA trials will remain considerably less expensive than traditional litigation.

o Inter Partes Review Request Fee – up to 20 Claims increases to $14,000 (+$5,000)

o Inter Partes Review Post-Institution Fee - Up to 15 Claims increases to $16,500 (+$2,500)

o Post-Grant or Covered Business Method Review Request Fee - Up to 20 Claims increases to $16,000 (+$4,000)

o Post-Grant or Covered Business Method Review Post-Institution Fee - Up to 15 Claims increases to $22,000 (+$4,000)

• Restructuring service fees to provide additional transparency

• Expanding the number of services eligible for small and micro entity fee discounts

With the additional revenue projected from the proposed fee schedule, the Office aims to:

• Continue progress towards the goals and objectives of the USPTO FY 2014 – 2018 Strategic Plan

• Maintain the current trajectory to reach target pendency and backlog levels

• Maintain momentum for the Enhanced Patent Quality Initiative (EPQI)

• Advance Patents End-to-End (PE2E) and PTAB End-to-End (PTAB E2E), technology solutions that will enhance operational processes and the customer service experience

• Support the PTAB’s continued efforts to recruit and hire staff to deliver high quality and timely decisions, particularly for AIA trials and reexamination and ex parte appeals

• Achieve a minimum operating reserve balance and work towards an optimal reserve balance

The Office welcomes comments on both the individual patent fee proposals and the rulemaking goals and objectives. Comments should be sent by email addressed to:  fee.setting@uspto.gov(link sends e-mail).  Comments may also be sent by email to the Federal eRulemaking Portal at http://www.regulations.gov(link is external). The Office will consider and respond to all comments received, during the public comment period, in the final rule, which the Office expects to publish in 2017.