Petitioners may soon need to check their account balances, as the United States Patent and Trademark Office (“USPTO”) is raising patent fees across the board, effective January 19, 2025. 89 Fed. Reg. 91898.
Background:
Section 10(a) of the AIA provides the USPTO Director with rulemaking authority to set and adjust patent fees arising under 35 U.S.C. The USPTO is putting that authority to good use; based on a review that began in FY 2021, the USPTO has concluded that fee adjustments to over 400 patent fees are necessary to continue effective administration of the U.S. patent system.
Fee Increases:
The cost of AIA proceedings at the Patent Trial and Appeal Board (“PTAB”) have increased by ~25% as seen in the USPTO’s table below.
And as shown in its table, the USPTO proposes a new fee for parties requesting Director Review of the PTAB’s (1) decision to institute trial, (2) final written decision, or (3) decision granting a request for rehearing.
PTAB Fee Comments & Responses:
During the commentary period following the USPTO’s notice of proposed rulemaking for this fee increase, the USPTO received several comments directed to AIA proceedings.
In response to a comment that raising fees for AIA trial runs counter to Congress’s intent to make AIA proceedings cost-efficient, the USPTO responded that the fee increases better align the fee rates charged to petitioners with the actual costs borne by the USPTO in providing these proceedings. Id. at 91954.
The USPTO was also unable to provide additional information on the historical costs associated with Director Review “because it is a new fee code with no historical cost data.” Id. at 91545. The cost for rehearing is $0, and one commenter stated that Director Review should be free as an alternative to seeking rehearing. The USPTO noted that AIA proceedings already account for the cost of handling rehearing requests, but do not account for the costs of Director Review. Id. Moreover, in USPTO’s view, no refund is legally authorized, even if the Director grants a review.
Takeaway: The USPTO is raising many fees, including those related to AIA proceedings. The new fee for Director Review received some pushback from commenters, but the USPTO ultimately decided to proceed with it.
