Final Rule: Setting and Adjusting Patent Fees during Fiscal Year 2020
The United States Patent and Trademark Office (USPTO) is setting or adjusting patent fees for Fiscal Year 2020, which is the first fee increase in almost three years. This Final Rule is effective on October 2, 2020, except for the surcharge for non-DOCX filings, which is effective on January 1, 2023.
Why the USPTO is changing our Patent and Patent Trial and Appeal Board (PTAB) fees
Consistent with federal fee-setting standards, in 2017, the USPTO began its biennial review of fees, costs, and revenues, and found that fee adjustments are necessary to adjust to increasing costs and to provide necessary resources for Patent operations, including implementing the USPTO 2018-2022 Strategic Plan.
In 2018, the Patent Public Advisory Committee (PPAC) held a public hearing in Alexandria, Virginia, inviting members of the public to submit written and/or oral testimony on fee adjustments. PPAC considered the public comments from this hearing and made them available on the USPTO website. Later, PPAC provided a written report setting forth the comments, advice, and recommendations of the public and the committee regarding the preliminary proposed fees.
The USPTO considered and analyzed all comments, advice, and recommendations received from PPAC and then, on July 31, 2019, published a Notice of Proposed Rulemaking regarding Setting and Adjusting Patent Fees during Fiscal Year 2020. The USPTO received and considered comments from four IP organizations and 40 individuals, attorneys, law firms, corporations, and other associations. Responses to the comments are included in the Final Rule.
More recently, the USPTO has considered the state of the U.S. economy, the operational needs of the agency, and the comments and advice received from the public during the 60-day comment period in determining when to implement the rule. The USPTO made adjustments to the timing of the Final Rule based on all of these considerations, specifically to delay publishing the Final Rule from April, with a July effective date, to August, with an October effective date. This approach is consistent with the USPTO’s many other efforts to provide various types of relief to stakeholders, including deadline extensions and fee postponements. Ultimately, the goal of the USPTO is to ensure not only that businesses and entrepreneurs can weather the economic downturn, but that they can hit the ground running as it passes.
The overall strategy of the Final Rule is to establish a fee schedule that generates sufficient multi-year revenue to recover the aggregate costs of maintaining USPTO patent-related operations and accomplishing the USPTO’s patent-related strategic goals.
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.
After consideration of public comments to the NPRM, the USPTO has decided not to implement the annual active patent practitioner fee at this time. Biennially, registered practitioners, as well as individuals granted limited recognition under 37 CFR 11.9(b), will be required to file a registration statement with the OED director. The USPTO will continue to recognize the value in completion of continuing legal education (CLE) and will issue proposed CLE guidelines, addressing the types of CLE that may qualify for recognition as well as the form of recognition, for public comments. CLE remains voluntary.
For simplicity, this summary discusses standard “large entity” fee rates. However, small and micro entity discounts will continue to be available for most fees. For a full listing of fee changes, see the Table of Patent Fee Adjustments. The Final Rule includes four general types of patent fee adjustments:
- Across-the-board adjustment to patent fees: The USPTO applied an approximately 5 percent increase to most fees impacted by the rule. This represents an approximate 2 percent annual increase to help the USPTO keep up with inflation in order to achieve strategic goals.
- Other adjustments to existing fees: As discussed below, 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 percent.
- New fees: As discussed below, to encourage the effective administration of the IP system and to permit cost recovery for certain services, the USPTO introduced a new fee for non-DOCX filings, though the fee will not be effective immediately, and a new fee for pro hac vice admission.
- Discontinued fees: The USPTO discontinued four fees. Three patent service fees were discontinued to help streamline the patent fee schedule while also focusing USPTO workforce efforts on producing products that benefit the general public rather than producing outputs for individual customers. The Office of Enrollment and Discipline (OED) USPTO-assisted recovery of ID or reset of password fee was discontinued in consideration of public comments and modernization of the patent practitioner directory.
Across-the-board adjustment to patent fees
- For a complete listing of all fees see the Table of Patent Fee Adjustments.
Other adjustments to existing fees
Maintenance fee surcharge—late payment within six months (3.5, 7.5, 11.5 years)
- Final patent fee schedule large entity fee rate: increased from $160 to $500
- Description: Maintenance fees are due 3.5, 7.5, and 11.5 years after the date of issue and can be paid during the six months before the due date. Maintenance fees may also be paid with a surcharge during a six-month “grace period” following the due date. Increasing the maintenance fee surcharge encourages timely maintenance fee payments, which improves the public’s understanding of which patents remain in force and which patent rights have been allowed to lapse.
Request for expedited examination of a design application
- Final patent fee schedule large entity fee rate: increased from $900 to $1,600
- Description: Expedited examination is available to design applicants who first conduct a preliminary examination search, file a request for expedited treatment, and pay the requisite fee. Increasing the request for expedited examination of a design application fee will allow the USPTO to better manage demand for this service and better align the fee with the benefit received from an expedited examination. This is the first time this fee has been increased since its inception in November 2000.
Issue and Maintenance fees
- Utility issue fee
- Final patent fee schedule large entity fee rate: increased from $1,000 to $1,200
- Reissue issue fee
- Final patent fee schedule large entity fee rate: increased from $1,000 to $1,200
- For maintaining an original or any reissue patent, due at 3.5 years (first–stage maintenance)
- Final patent fee schedule large entity fee rate: increased from $1,600 to $2,000
- For maintaining an original or any reissue patent, due at 7.5 years (second–stage maintenance)
- Final patent fee schedule large entity fee rate: increased from $3,600 to $3,760
- For maintaining an original or any reissue patent, due at 11.5 years (third–stage maintenance)
- Final patent fee schedule large entity fee rate: increased from $7,400 to $7,700
Description: Historically, issue and maintenance fees have played an important role in fostering innovation; by setting these fees above cost, the USPTO is able to set filing/search/examination fees below cost, keeping barriers to entry into the patent system low. As certain technology lifecycles grow shorter, it is important that the USPTO not rely too heavily on fees paid late in the life of a patent. The proposed adjustments will permit the USPTO to recover costs for examining an application earlier in the patent lifecycle. These adjustments will mark the first time maintenance fees have changed since 2013.
AIA trial fees
- Inter partes review request fee—up to 20 claims
- Final patent fee schedule large entity fee rate: increased from $15,500 to $19,000
- Inter partes review post-institution fee—up to 20 claims*
- Final patent fee schedule large entity fee rate: increased from $15,000 to $22,500
- Inter partes review request of each claim in excess of 20
- Final patent fee schedule large entity fee rate: increased from $300 to $375
- Inter partes post-institution request of each claim in excess of 20*
- Final patent fee schedule large entity fee rate: increased from $600 to $750
- Post-grant or covered business method review request fee—up to 20 claims
- Final patent fee schedule large entity fee rate: increased from $16,000 to $20,000
- Post-grant or covered business method review post-institution fee—up to 20 claims*
- Final patent fee schedule large entity fee rate: increased from $22,000 to $27,500
- Post-grant or covered business method review request of each claim in excess of 20
- Final patent fee schedule large entity fee rate: increased from $375 to $475
- Post-grant or covered business method review post-institution request of each claim in excess of 20*
- Final patent fee schedule large entity fee rate: increased from $825 to $1,050
*The post-institution threshold for paying claims fees will increase from 15 to 20, bringing it in sync with the PTAB’s request threshold and reflecting the fact that, following SAS Institute Inc. v. Iancu, 138 S. Ct. 1348 (2018) (SAS), the PTAB is required to institute all claims or none. The threshold for post-institution excess claims fees is currently 15 claims.
Description: As required by the SAS decision, the PTAB will institute a trial as to all claims or none. Previously, the PTAB instituted a trial on just some claims. This has increased the amount of time spent per case post-institution. The Office has also modified its pre-institution practice to take into account the impacts of the SAS decision. For example, prior to SAS, the PTAB did not generally address all arguments at institution. Post-SAS, for purposes of deciding whether to institute trial on a petition, the Office’s policy is to provide details to the parties to the extent practicable, including responding to arguments in a patent owner’s preliminary response that were not the basis for the decision whether or not to institute. This has increased the amount of time spent per case pre-institution. These changes related to the SAS decision have increased the average cost to conduct each proceeding. Other implementations, such as providing automatic sur-replies and pre-hearing conferences, were made to help provide additional fairness and certainty to the parties and public while continuing the PTAB’s practice of rendering high-quality decisions within the statutory time limits applicable to AIA trial proceedings; however, these changes, too, have increased the average cost of conducting each proceeding. Inter partes review request and post-institution fees were adjusted from the NPRM based on updated unit cost data. The USPTO will continue to evaluate data, as it becomes available, to better understand the long-term impact of SAS.
Non-DOCX filing surcharge
- Final patent fee schedule large entity fee rate: $400
Description: This surcharge is for utility nonprovisional filings submitted in a format other than DOCX (structured text). The surcharge is being introduced for specifications, claims, and abstracts. The surcharge will not go into effect until January 1, 2023. In the interim, the Office will continue with its outreach efforts, addressing customer concerns and providing ample time for applicants to transition to this new process.
- Filing via DOCX increases efficiencies and accuracy in the examination process.
- Encouraging applicants to use DOCX will improve examination quality and lower processing costs.
- Applications filed using DOCX will be more accessible in future searches of publication materials.
Pro hac vice admission
- Final patent fee schedule large entity fee rate: $250
Description: This fee is for counsel who are not registered practitioners to be granted admission in limited circumstances (e.g., where a practitioner is an experienced litigator who is familiar with the subject matter involved in a proceeding) to appear before the Patent Trial and Appeal Board.
- This fee shifts the cost of the services the PTAB provides in processing requests by counsel who are not registered practitioners from the overall trial fees to the requesting counsel.
- Once a request is granted, the counsel is admitted for the entire duration of a proceeding, which may extend for several years (e.g., when an inter partes review proceeds to final written decision and, after appeal to the Federal Circuit, is remanded back to the PTAB for further proceedings).
- If a non-registered practitioner requests admission to multiple AIA trial proceedings, multiple requests and fees will be required, one for each proceeding.
Patent service fees
- Copy of Patent Technology Monitoring Team (PTMT) patent bibliographic extract and other DVD (optical disc)
- Final patent fee schedule large entity fee rate: discontinued, previously $50
- Copy of U.S. patent custom data extracts
- Final patent fee schedule large entity fee rate: discontinued, previously $100
- Copy of selected technology reports, miscellaneous technology areas
- Final patent fee schedule large entity fee rate: discontinued, previously $30
Description: These service fees will be eliminated, and the USPTO will instead provide these services in a slightly modified form (electronic) for free.
OED service fees
- For USPTO-assisted recovery of ID or reset of password for the Office of Enrollment and Discipline Information System
- Final patent fee schedule large entity fee rate: discontinued, previously $70
Description: Upon consideration of public comments, the fee for USPTO-assisted recovery of ID or reset of password for the OED Information System is being discontinued. This fee is being removed because it is unnecessary.
85 FR 46932 Final Rule – Setting and Adjusting Patent Fees during Fiscal Year 2020
USPTO Fee Setting and Adjusting
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