Certain official fees charged by the United States Patent and Trade Mark Office ("USPTO"), for the filing and prosecution of various applications, are set to decrease on January 1, 2014.

These proposed changes have an effect on PCT International Stage fees, Post-Allowance fees and fees for recordal of assignments.

The following are examples of some of the official fee savings which may affect our clients after the 1 January 2014:

  1. Issue fees for Patent applications/Utility model applications will decrease by almost 50%;
  2. Issue fees for Design applications will also decrease by almost 50%;
  3. Publication fees for voluntary, early or normal publication have been scrapped; and
  4. The fees for recording a patent assignment, agreement or other paper, electronically, will also be totally eliminated.

 (these fees are subject to whether the entity qualifies as a large entity, a small entity or a micro entity. An applicant will qualify for small entity status if it is a single inventor and the invention hasn't been licensed to a large entity. Small entities are granted approximately 50% reduction in fees. An applicant will qualify for micro entity status if (1) the inventor has not been named as the inventor or a joint inventor on more than four previously filed U.S. patent applications, (2) the inventor had a gross income in the year prior to filing of less than US $150,000, and (3) the inventor is not under an obligation to assign, grant, or convey a license or other ownership to another entity with the gross income in the year prior to filing of more than US $150,000. Micro entities are granted approximately 75% reduction in fees. All other entities will qualify as large entities.)

Of possible interest to Small Entity and Micro Entity clients, may be the option of filing a PCT application in the USA, due to the fact that the following fees will be substantially reduced:

  • The transmittal fee to the International Bureau as the receiving office;
  • Search fees;
  • Supplemental search fees;
  • Preliminary examination fees; and
  • Late payment fees.

(Large entities will not be granted these fee reductions)

  Various applicants, who have received notices of allowance on or after 1 October 2013, will benefit from substantial cost savings as the payment of the issue fee for their applications will be due after the 1 January 2014.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.