United States: USPTO Plans To Hike Patent Fees

The USPTO has published proposed changes to patent fees that it says will "slightly" increase patent prosecution fees–even though several common fees will increase by 10% to 25%. The proposed changes to the Information Disclosure Statement (IDS) fees reflect a planned restructuring of the IDS rules that could benefit applicants, but the other changes seem to simply require applicants to pay higher fees for the promise of enhanced patent examination quality and improved patent examination efficiency. The USPTO hopes to implement the new fees before January 20, 2017, when a new administration will take office. 

The images in this article are taken from the USPTO's "Executive Summary" prepared for the Patent Public Advisory Committee (PPAC), which you can download from the USPTO Fee Setting and Adjusting page.

Proposed Increases To Patent Prosecution Fees

The USPTO proposes to make significant increases to filing/search/examination/issue fees, RCE fees, and appeal fees.

According to the USPTO, the current filing/search/examination/issue fees "only recover one quarter of the cost of filing, search, and examination of a utility application."

The "Detailed Appendix" prepared for PPAC includes this bullet point on the RCE fee increases:

  • Better alignment of fee rates and cost in order to implement other programs aimed at reducing the need to file RCEs such as consideration of amendments and IDS filed after final action.

Does this mean that the USPTO is raising RCE fees to "implement" AFCP 2.0? If so, will an applicant have any recourse when it believes an examiner has unreasonably refused to enter an amendment after final?

The USPTO also says this about the high fee for 2nd and subsequent RCEs:

  • The higher than cost recovery fee for the 2nd and subsequent RCE partially recovers the loss in average issue and maintenance fee collections that would be have been recovered by examination of original applications.

If I am not able to attend the November 19th meeting, can someone ask them what this means? 

The "Detailed Appendix" prepared for PPAC includes this bullet point on the appeal fee increases:

  • More closely aligns fees with cost in order to continue making progress towards decreasing the backlog of ex parte appeals.

Does this mean that the USPTO plans to use the additional revenue to hire more APJs to review ex parte appeals, or hopes to reduce the backlog by discouraging appeals through higher fees?

Proposed Changes To IDS Fees

The proposed changes to the IDS fees reflect a planned restructuring of the IDS rules that I will address in a separate article. This slide from the "Executive Summary" hints at the proposed new framework:

Proposed New Sequence Listing Fees

The proposed changes include new sequence listing fees:

  • a new fee for the "late" submission of a Sequence Listing in a PCT application ($300/150/75)
  • a new size fee for 300-800 MB Sequence Listings ($1000/500/250)
  • a new size fee for >800 MB Sequence Listings ($10000/5000/2500)

The USPTO justifies the size fees on the basis of the "handling" and "storage" costs associated with "mega" sequences listings, and indicates that its wants to discourage the submission of "sequence data that is neither invented by the applicants nor claimed." However, the Sequence Listing rules themselves require the submission of "sequence data that is neither invented by the applicants nor claimed," since they require any amino acid sequence of four or more residues and any nucleotide sequence of ten or bases that is set forth in the specification or drawings to be included in a Sequence Listing, regardless of whether it was known in the art or recited in the claims. Applicants often refer to prior art or unclaimed sequences in order to fully describe and enable their inventions, and likely would welcome more flexibility in what has to be provided in a Sequence Listing, and certainly would prefer that to choosing between robust written description/enablement and a $10,000 fee!

Proposed Increases To PTAB Trial Fees

The proposed fee changes include significant increases to many of the fees for patent trial proceedings, which I review on Foley's PTAB Trial Insights blog.

Provide Feedback On The Proposed Fees

Stakeholders concerned about their patent budgets should review the proposed fee changes–and the USPTO's justifications–and submit written comments by the November 25, 2015 deadline. Those with significant concerns should consider participating in the hearing scheduled for November 19, 2015, and submit a request to do so by November 12, 2016. More details on how to participate and/or comment can be found in this October 20, 2015 Federal Register Notice.

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.

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