Tech Governance

USPTO Publishes Proposed Patent Fee Schedule for FY 2017

  • USPTO published proposed FY 2017 patent fee schedule in the Federal Register.

  • Purpose of fee increases:

    • Recover operational costs.

    • Improve patent quality and timeliness.

    • Strengthen international IP policy and enforcement.

  • 205 patent fees proposed for increase.

  • Most increases are incremental.

  • Largest increases apply to AIA Trial (PTAB) proceedings.


AIA Trials (PTAB Proceedings)

Background

  • Established under the America Invents Act (AIA):

    • Inter Partes Review (IPR)

    • Post-Grant Review (PGR) / Covered Business Method (CBM)

  • Fees originally based on cost estimates.

  • USPTO now proposes increases based on 3 years of actual cost data.

  • Over 1,900 AIA Trial filings in FY 2015.

  • Goal: Align fees with actual costs and maintain quality within statutory deadlines.

Proposed Fee Increases (Large Entity)

Inter Partes Review (IPR)

  • Request Fee:

    • $9,000 → $14,000 (+$5,000)

    • USPTO cost: $22,165

  • Post-Institution Fee:

    • $14,000 → $16,500 (+$2,500)

    • USPTO cost: $12,674

  • Excess claims fees increased.

Post-Grant / CBM Review

  • Request Fee:

    • $12,000 → $16,000 (+$4,000)

    • USPTO cost: $16,213

  • Post-Institution Fee:

    • $18,000 → $22,000 (+$4,000)

    • USPTO cost: $23,060

  • Excess claims fees increased.

Small entities receive 50% reduction; micro-entities receive 75% reduction.


Other Notable Fee Changes

New Fee Types

  • Streamlined Ex Parte Reexamination

    • ≤ 40 pages: $6,000 (half of standard fee).

  • Mega-Sequence Listings

    • 300MB–800MB: $1,000

    • Over 800MB: $10,000

    • Justification: Extra storage and handling costs.

    • Fewer than 10 such applications per year.

Increased Common Fees

  • Notice of Appeal:

    • $800 → $1,000 (+$200)

  • Appeal Forwarding Fee:

    • $2,000 → $2,500 (+$500)

  • Petitions (late priority / revival after unintentional abandonment):

    • $1,700 → $2,000 (+$300)


Use of Increased Fees

1. Reduce Backlog & Pendency

  • Unexamined applications reduced:

    • 608,283 (FY 2012) → 553,221 (FY 2015)

  • First Action Pendency:

    • 21.9 months → 17.3 months

  • Total Pendency:

    • 32.4 months → 26.6 months

2. Improve Patent Quality

  • Focus on Enhanced Patent Quality Initiative (EQPI):

    • Public engagement.

    • Improved search procedures.

    • Examiner training.

    • Better applicant-examiner interaction.

  • Implementation of new IT tools:

    • Patents End-to-End (PE2E) software system.

3. Build Operating Funds Reserve

  • Goal: 3-month operating reserve by FY 2020.

  • Purpose:

    • Maintain operations during:

      • Government shutdowns.

      • Temporary decreases in patent filings.


Key Takeaway

  • USPTO seeks to align fees with actual costs.

  • Major impact on PTAB/AIA proceedings.

  • Fee increases tied to backlog reduction, quality improvement, and financial sustainability.

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