On August 8, 2018, Director Iancu issued a letter to the Patent Public Advisory Committee notifying of proposed fee increases at the U.S. Patent and Trademark Office, and institution of new annual fee for active patent practitioners.
The Director stated that the fee increases are needed to ensure commitment to fiscal responsibility, financial prudence, and operational efficiency.
This is a patent fee proposal open for comment at this stage, and the Director stated that it is anticipated that the fee adjustments resulting from this effort will not be implemented until the January 2021 timeframe. Generally, there are across the board fee increases, and the USPTO stated that given the nearly three-year gap between the implementation of the last fee adjustments and the anticipated effective date of this fee setting effort, a five percent increase to fees is similar to fees rising by 1.6 percent annually.
In addition to the across the board increase in fees that will help raise revenue, this proposal includes introduction of new fees, targeted adjustments to existing fees, and discontinuation of some fees.
New Fees
1. One proposed new fee is a surcharge for filing in a non-DOCX format. This will be a $400 fee, and will encourage applicants to use the DOCX format, and is intended to improve Office efficiency and future search capabilities.
2. Another proposed new fee is an annual active patent practitioner fee of $340 (if filed electronically). This will be similar to the annual fees charged by the vast majority of state and territorial bars, and will allow the costs associated with the services the Office of Enrollment and Discipline (OED) provides practitioners in administering the disciplinary system and roster maintenance to be recovered directly from those practitioners. Further, a discount will be offered to those who certify completion of continued legal education (CLE), reducing the fee to $240.
3. A fee for non-registered practitioners to appear before the PTAB is proposed.
Adjustments to Existing Fees
1. A significant increase (525%) to the surcharge for late payment of maintenance fees in order to encourage timely payment. The fee is currently $160, but will be increased to $1000 for large entities.
2. An increase to the fee to request expedited examination of a design application, to help the Office manage staffing for these services (e.g., from $900 to $2000).
3. Issue and maintenance fees will be restructured under this proposal in order to recover initial search and examination costs earlier in the patent lifecycle. The Office noted that as technology lifecycles grow shorter, it is important that USPTO not rely too heavily on fees paid late in the life of a patent. As a result, some of these fees are proposed to increase by various amounts higher or lower than the five percent mentioned above. The current large entity maintenance fees are $1600 (3.5 years), $3600 (7.5 years), and $7400 (11.5 years), and the proposal increases to $2000 (3.5 years), $3760 (7.5 years), and $7700 (11.5 years).
4. Fees for America Invents Act (AIA) trials are proposed to increase by roughly 25% due to a variety of factors, including the Supreme Court decision in SAS Institute Inc. v. Iancu. The Office noted that the PTAB will no longer be able to institute on less than all claims challenged in a petition, leading to significant additional work for a given instituted inter partes review (IPR).
Discontinuation of Fees
Finally, the USPTO is proposing to discontinue three patent service fees, and instead provide those services, in a slightly modified form, for free. Namely, these include fees related to obtaining copies of Patent Grant and Patent Application Publication TIFF Images or Full-Text W/Embedded Images. These service fees will be eliminated and the Office will instead provide these services, in a slightly modified form (i.e. electronic), for free.
Details of the proposal can be found here including a full spreadsheet of all fees and proposed changes (spreadsheet also available here). Below is a summary table of the common fees for a large entity to illustrate some of the proposed changes.
As seen below, total filing costs for a patent application (large entity) are currently $1720 and are proposed to increase to $1820.
