Everything may become more expensive under the USPTO’s newly proposed Patent Fee Schedule

“… including a drastic 525% increase in the fee for maintaining a patent if paid during the so-called maintenance fee grace period …”

by: Adam Saxon | August 15, 2018

In a sign that the USPTO is not immune from the U.S. government’s increased funding needs going forward, the Office recently laid out a two-year procedure for setting new fees by publishing a proposed fee schedule that increases fees across the board, including a drastic 525% increase in the fee for maintaining a patent if paid during the so-called maintenance fee grace period (the 6-month period beginning at 3.5, 7.5 and 11.5 years after patent issuance).  While the Office frames all of this as “Investing in the Future” (see the PPAC Executive Summary available at https://www.uspto.gov/about-us/performance-and-planning/fee-setting-and-adjusting), it would appear that patent applicants of more limited means may bear the brunt of these fee increases given that fees applicable to all applicants (e.g. the Issue Fee and 3.5 year Maintenance Fee, to use but two examples) are slated for increases.

Other notable fee increases include those identified below, and a full listing of all proposed fee adjustments is available at the USPTO’s Fee Setting and Adjusting web page (see URL above).

  • 20% increase in the Issue Fee for utility and reissue patents
  • 25% increase in the maintenance fee due at 3.5 years
  • 122% increase in the fee for requesting Expedited Examination of a Design Application
  • 25%-27% increase in several Inter Partes Review (IPR) fees

The Office’s proposed fee schedule is subject to review and comment by the Patent Public Advisory Committee (PPAC), and the Office has also invited the public to submit written comments by September 13, 2018.  Based on these comments, the Office will revise the fee schedule and publish it in a notice of proposed rulemaking (NPRM) by the end of summer 2019.  Additional comments may be submitted in the 60-day comment period following publication of the NPRM.  The final fee schedule will be published in the spring or summer of 2020 and is expected to be implemented in January 2021.

Given the rather drastic increase in some of the proposed fees (e.g. the 525% increase in maintenance fees paid during the 6-month grace period), and the fact that those fees are applicable to all patent applicants, small and large alike, it will be interesting to see the range of public comments formally submitted regarding these fee increases.  Many patent applicants and owners (collectively patentees), especially those seeking patents on software-based inventions, have developed a bunker mentality over the last few years given developments including subject matter eligibility doctrine post-Alice and the rise (some might say weaponization) of the Inter Partes Review process, thus it would not be surprising to see these patentees voice opposition to the proposed fee increases given their collective feeling that patent rights in the U.S. have been under assault and weakened since at least 2011 following passage of the America Invents Act.  One would think that this dynamic, which should not come as a surprise to anyone working in the patent space over the last few years, should trigger the Office to exhibit a greater effort in making its case to patentees that the proposed fee increases will directly result in decreased patent pendency and increased patent quality, which is in the interest of everyone involved and would be an overall direct benefit to the U.S. patent system and thus the U.S. economy.  Time will tell how this plays out and IPWire will continue to monitor developments over the coming months.

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