The USPTO has published a proposed fee schedule for patent fees
likely to take effect October 1, 2017–the start of the
USPTO's next fiscal year. The proposed fee schedule makes
"slight" changes to many fees, and more
"significant" changes to RCE, ex parte appeal,
and patent trial fees (among others). Written comments are due by
December, 2, 2016.
The USPTO's Fee-Setting Authority
Section 10 of the America Invents Act gave the USPTO fee-setting
authority, but sets forth a multi-step process the USPTO must
follow when setting fees. As the first step of that process, the
USPTO published a preliminary patent fee proposal in October
2015, the primary purpose of which was to obtain input from the
Patent Public Advisory Committee (PPAC), as required by the AIA.
PPAC provided its feedback in February 2016, and now the USPTO has
published its (final) proposed fee changes in the Federal Register, as also required by the AIA.
According to an article on the Director's Blog, the USPTO plans to
publish a final rule "during the summer of 2017." Given
that timing, the fees likely would take effect October 1, 2017, the
start of the USPTO's next fiscal year.
The "Slight" Patent Fee Increases
The USPTO characterizes fee increases of less than 10% or less
than $20 as "slight" increases. These include filing,
search and examination fees (which will increases by a total of
$120 for a large entity), excess claim fees (which will rise to
$460 for each excess independent claim and $100 for each excess
dependent claim), and issue fees (which will go up by $40 to
The "Signficant" Patent Fee Increases
The Federal Register Notice provides more explanation for
"significant" fee increases, which it proposes for items
including RCEs, ex parte appeals, and patent trials.
Thanks to PPAC, some of these increases are less than originally
Information Disclosure Statements
In its preliminary fee proposal, the USPTO floated the idea of
completely revamping procedures for submitting Information
Disclosure Statements by replacing the current fee/certification
framework with an escalating fee framework. (I wrote about the proposed new IDS framework in this
article.) According to the Federal Register Notice, PPAC raised
concerns that the proposed changes might "discourage
applicants from filing promptly when new prior art is
discovered." Thus, the USPTO has abandoned that proposal, and
instead proposes a 33% increase in the "late" IDS fee to
$240 for a large entity.
Public Comment Period
As noted above, the public comment period for the proposed fee
changes runs until December 2, 2016. While the USPTO already has
revised its proposal based on input from PPAC, it is important that
stakeholders weigh in as well. Comments can be sent by email to
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Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C.
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