In financing transactions, such as loans or securitizations, lenders will typically take a security interest in the borrower's assets pledged as collateral, including any United States intellectual property ("US IP") assets, against the borrower’s compliance with its obligations under the loan agreement and security documentation. As discussed in a previous post, in order to perfect a security interest in US IP, a secured creditor should (i) file a UCC-1 financing statement with the state in which the debtor has its place of business or its executive office if it has more than one place of business, and (ii) record a related short-form IP security agreement with the United States Patent and Trademark office ("USPTO") and/or the United States Copyright Office ("USCO"), as applicable. We often receive questions about the fees associated with recording such short-form IP security agreements. This post provides a general summary of the current recording fees imposed by the USPTO and USCO.
As of January 1, 2014, there is no charge for recording an IP security agreement (relating to property in a patent or application) that is submitted electronically, regardless of the number of patents or patent applications to which it relates and which are identified on the required cover sheet. Prior to January 1, 2014, the fee for recording such an agreement that was submitted electronically was $40 per property. If an IP security agreement is not submitted electronically, the current cost is $40 per property. For example, if somebody wants to record an IP security agreement submitted to the USPTO electronically today, and the recordation request identifies ten (10) issued patents and (5) patent applications, there would be no cost imposed by the USPTO for the recordation. If however, the request for recordation will not be submitted electronically, then the cost imposed by the USPTO would be $40 multiplied by fifteen (15) total properties, which amounts to $600.
The cost for recording an IP security agreement with the USPTO relating to the property in a trademark registration and/or trademark application is forty dollars ($40) for the first property, and $25 for each additional property in the same document. For example, if an IP security agreement includes twelve (12) registered trademarks and six (6) trademark applications, then the cost imposed by the USPTO would be $40 for the first of the eighteen (18) properties, plus $25 multiplied by the remaining seventeen (17) properties or $425, for a total cost of $465.
The fee to record a short-form IP security agreement with the USCO depends on the number of copyright titles included in the document. The basic recording fee is $105 if only one title is included. The $105 fee covers the first title included in a document, but there is a charge of $35 for each set of ten (10) or fewer titles beyond the first title. For example, if there are a total of eleven (11) copyright titles identified in the short-form IP security document that is being recorded, the fee would be $35 plus $105 for a total of $140. If there are a total of twenty-one (21) titles, the fee would be $70 (because there are two sets of ten titles beyond the first title) plus $105 for a total of $175.
The fees for recording short-form IP security agreements can change periodically, so it is best to check the current fee schedules prior to recording an agreement. The current fee schedule for patent and trademarks is available through the USPTO’s website under the "Office of Finance" section (http://www.uspto.gov/about/offices/cfo/finance/fees.jsp) and the current fee schedule for copyrights is accessible by clicking "current fees" on the home page of the USCO website (http://www.copyright.gov/docs/fees.html).
1 - 37 C.F.R. § 1.21(h)(1).
2 - 37 C.F.R. § 1.21(h)(2).
3 - 37 C.F.R. § 2.6(b)(6)(i)-(ii).
4 - U.S. Copyright Office, Calculating Fees for Recording Documents and Notices of Termination in the Copyright Office (2014), available at http://www.copyright.gov/fls//sl04d.pdf.