U. S. Patent and Trademark Office Sets or Adjusts Patent Fees as Authorized by the Leahy-Smith America Invents Act

Further to a notice of proposed rulemaking published on September 6, 2012, the final rule regarding U.S. Patent Fees was published on January 18, 2013 (please visit http://www.gpo.gov/fdsys/pkg/FR-2013-01-18/pdf/2013-00819.pdf to view this new rule in its entirety). This rule is effective on March 19, 2013, except for certain sections which will be effective on January 1, 2014.

As noted by the U.S. PTO, these fee adjustments are authorized under Section 10 of the Leahy-Smith American Invents Act and “will recover the aggregate estimated costs of the Office while achieving strategic and operational goals, such as implementing a sustainable funding model, reducing the current patent application backlog, decreasing patent application pendency, improving patent quality, and upgrading the patent IT business capability and infrastructure”. The notice further indicates the Office’s expectation that this fee structure will “enable a decrease in total patent application pendency by 11.3 months during the five year planning horizon (fiscal year (FY) 2013 – (FY) 2017)”. The Office anticipates that the aggregate effect of this rule will be to decrease by at least 23 percent relative to the current fee schedule, the routine fees to obtain a patent (i.e., filing, search, examination, publication and issue fees).

In its discussion of the qualitative benefits of this final fee schedule, the Office noted several items, including the continuation of incentives and disincentives to engage in those activities that “facilitate effective administration of the patent system and help reduce the amount of time it takes to have a patent application examined”. Also discussed are the expected rate of reduction to the current unexamined application backlog (608,300 in inventory as of the end of FY 2012) as well as the improvement of the average time to a first action to an expected 10 months in FY 2016 (as opposed to the FY 2012 average of 21.9 months) and the reduction of patent application pendency to 20 months by 2017 (down from 32.4 months at the end of FY 2012).

Preservation of the quality of application review is also an integral part of this final fee structure which will enable the Office to continue its efforts in hiring and training examiners. The Office further notes that it will “continue to encourage interviews…to help clarify allowable subject matter early in the examination process and to encourage interviews later in prosecution to resolve outstanding issues”. The Oblon, Spivak firm has long held this position and continues to encourage clients to allow us to make personal examiner interviews a priority in order to facilitate successful and economical prosecution.

It should also be noted that the Office is setting multi-part and staged fees for RCEs, appeals and contested proceedings. The Office expects this to provide applicants with “flexible and cost-effective options for seeking patent protection”. In this context, the Office has reviewed the pilot programs designed to address the need for multiple RCEs. Specifically, the QPIDS program which allows for the filing of an IDS after payment of the issue fee, and the After Final Consideration Pilot Program which authorizes a listed amount of non-production time for examiners to consider responses filed after a final rejection.

The Office has also staged fees due for Supplemental Examination as noted in Table 19 of the rule and introduces new fees associated with Inter Partes Review in Table 21.

Table 4 of this final rule on Patent Fee Changes segregates those items which have fee changes by greater than plus or minus 5 percent and 10 dollars. A complete comparison table of all Patent Fee Changes is available at:

http://www.uspto.gov/aia_implementation/AC54_Final_Table_of_Patent_Fee_Changes.pdf.

Many fees are being adjusted upward or are being newly added, but it is to be noted that as of January 1, 2014, Utility Issue Fees are decreasing by 46% and there will no longer be any recordation fee for assignment instruments submitted electronically (which the Oblon Spivak firm has done since the inception of EPAS). The Office will also do away with the PG Pub fee as of January 1, 2014. However, while this and issue fees will decrease, maintenance fees are slated to increase (see Table 29 of the Final Rule) as of March 19, 2013 to $1,600, $3,600 and $7,400 respectively for the first, second and third stage maintenance fees. In addition, extension of time, application size and excess claim fees are all set to increase as well (see Tables 32 and 33).

In this final rule, the Office takes the position that once effective, all of these changes will result in a net decrease in costs when compared with the total fees paid for the same services under the current fee schedule (see Table 38) or will only slightly increase costs for cases with two RCEs (see Table 39). For a comparison of Final Patent fee to the Current Fees, Life of Patent, please see Table 41. For a complete table of fee changes in this final rule, please see tables 42, 43, 44, 45 and 46.