U.S Patent Office Increased Government Fees: How To Avoid Or Minimize This Increase?

Adler Pollock & Sheehan P.C.

Adler Pollock & Sheehan P.C.

The United States Patent and Trademark Office (“USPTO”) adjusted patent fees affecting all facets of patent practice, as published in a Final Rule.   The Final Rule sets or adjusts 296 patent fees for large, small, and micro entities. The fee rates for small and micro entities are tiered, with small entities receiving a 50% discount on certain patent fees and micro entities receiving a 75% discount.

In light of the significant increase in U.S. Patent Office government fees, we strongly recommend the following actions:

  • Review your historical spend on government fees for your patent portfolio and request a forecast of your specific patent portfolio to identify budget trends and minimize government fees going forward;
  • Conduct an annual audit of your patent portfolio to cull or reduce non-revenue generating patent assets – especially mushrooming annuities and maintenance fees;
  • Avoid unnecessary extensions of time or surcharges by providing earlier instructions to your patent practitioner; and
  • Consistently interview cases before patent examiners with oral arguments first to decrease the length of time between patent application and issuance.

Summarized on the USPTO’s fee-setting page, the Final Rule affects four general types of patent fee adjustments:

  1. Across-the-board adjustments to patent fees. The USPTO applied an approximately 5% increase to most fees impacted by the Final Rule. This represents an approximately 2% annual increase to aid the USPTO’s efforts to keep up with inflation in order to achieve its strategic goals. A complete listing of all fees can be found here. This includes increases to the following: basic, search, and examination filing fees for non-provisional applications, extension of time fees, provisional applications for patent fee, and requests for continued examination (RCE).
  2. Other adjustments to existing fees. To encourage the effective administration of the IP system and to permit cost recovery for certain services, the USPTO adjusted certain existing fees by an amount other than 5%. This includes increases to the following: maintenance fees and maintenance fee surcharges; requests for expedited examination of design applications; issue fees; ex parte reexamination, inter partes review (IPR), and PCT fees.
  3. New fees. Though not effective until January 1, 2022, the Final Rule includes a new fee for non-DOCX filings to “encourage the effective administration of the IP system and to permit cost recovery for certain services.”

Moreover, the Final Rule will benefit the intellectual property (IP) community by enabling the USPTO to continue to enhance the quality of patent examinations, achieve optimal examination times, invest in modernizing patent information technology (IT) systems and infrastructure, and provide stability to USPTO operations, even in times of financial fluctuations.

For a complete listing of all fee adjustments, please reference the Table of Patent Fee Adjustments.  

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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