The U.S. Department of Commerce’s United States Patent and Trademark Office (USPTO) issued, November 14, 2017, a final rule, “Setting and Adjusting Patent Fees during Fiscal Year 2017” to set or adjust certain patent fees, as authorized by the Leahy-Smith America Invents Act (AIA). The revised fee schedule is projected to recover the aggregate estimated cost of the USPTO’s patent operations, Patent Trial and Appeal Board (PTAB) operations, and administrative services. The additional fee collections will support the USPTO’s progress toward its strategic goals like pendency and backlog reduction, patent quality enhancements, technology modernization, staffing optimization, and financial sustainability.
In response to feedback from patent stakeholders, the USPTO altered several of the fee proposals presented in the Notice of Proposed Rule Making (NPRM). The key differences between the NPRM and the final rule are:
• In response to stakeholder concerns, the USPTO reduced both plant and design issue fees from the levels proposed in the NPRM. Still, the large entity plant issue fee increases to $800 (+$40) and the large entity design issue fee increases to $700 (+$140). Plant and design patents do not pay maintenance fees, and the majority of plant and design applicants are eligible for small and micro entity fee reductions, which remain available.
• Stakeholder feedback suggested that increased appeal fees could discourage patent holders’ access to increasingly important USPTO appeal services. In response, the USPTO elected to maintain the existing Notice of Appeal fee at $800 instead of increasing it to $1,000 as proposed in the NPRM. Likewise, the fee for Forwarding an Appeal to the Board increases to $2,240 (+$240) instead of $2,500 as proposed in the NPRM. The revised fees still do not fully recover costs, but taken together should allow continued progress on reducing the backlog of ex parte appeals. Since the 2013 patent fee rulemaking, ex parte appeal fees have enabled the PTAB to hire more judges and greatly reduce the appeals backlog, from nearly 27,000 in 2012 to just over 13,000 at the end of FY 2017. Additional appeals fee revenue will support further backlog and pendency reductions.
• Increases to the PTAB AIA trial fees are aimed at better aligning these fees with the USPTO’s costs and aiding the PTAB to continue to meet required AIA deadlines. The Office’s costs for Inter Partes Review requests are consistently outpacing the fees collected for this service. These fee adjustments seek to more closely align fees and costs. Trial fees and associated costs still remain significantly less than court proceedings for most stakeholders.
• Inter Partes Review Request Fee – up to 20 Claims increases to $15,500 (+$6,500)
• Inter Partes Review Post-Institution Fee - Up to 15 Claims increases to $15,000 (+$1,000)
Other fee changes proposed in the NPRM remain the same.
For the full list of the patent fees that are changing and more information on fee setting and adjusting at the USPTO, please visit: