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Thursday Nov 16, 2017

Revised Patent Fee Schedule Finalized

Guest blog by Commissioner for Patents Drew Hirshfeld and Chief Judge of the Patent Trial and Appeal Board David Ruschke

The USPTO is celebrating the culmination of a multi-year effort to secure the financial security of the Patent and Patent Trial and Appeal Board (PTAB) organizations in order to better serve the United States economy We have made tremendous progress reducing overall patent pendency, reducing our inventory of unexamined applications, enhancing patent examination quality, reducing the ex parte appeal inventory, and implementing the post-grant review proceedings established by the America Invents Act (AIA). These are all vital to ensure steady domestic job growth. While great progress has been made, there is still much to be accomplished, which requires additional funding. After years of preparation, deliberation, analysis, and consideration of stakeholder opinion, the USPTO issued a final rule, “Setting and Adjusting Patent Fees during Fiscal Year 2017,” using the fee setting authority of the Leahy-Smith America Invents Act (AIA) to strategically change certain patent and PTAB fees.

The revised fee schedule is projected to produce approximately 4% more patent revenue each fiscal year once fully implemented. With the added funding, we aim to:

• Continue progress towards strategic goals and objectives including reaching target pendency and backlog levels
• Build upon the success of quality efforts and continue to strengthen the work products, processes, and services at all stages of the patent process
• Advance our multi-year effort to update our critical information technology infrastructure via solutions like Patents End-to-End (PE2E) and PTAB End-to-End (PTAB E2E)—modern, enterprise solutions designed to improve efficiency, enhance accountability, and provide greater stakeholder satisfaction during interactions with our organizations
• Support the PTAB’s continued efforts to recruit and retain staff to deliver high quality and timely decisions, particularly for AIA trials and reexamination and ex parte appeals
• Work towards an optimal reserve balance, which will enable the USPTO to maintain service delivery when faced with immediate and temporary changes in economic conditions and/or operating circumstances

The final rule is responsive to feedback gathered from stakeholders during the 60-day public comment period following the publication of the Notice of Proposed Rulemaking (NPRM) in September 2016 and was developed after extensive review and consultation with the current administration to ensure alignment with key priorities. Compared to the financial outlook presented in the NPRM, the revised financial outlook of the final rule is more moderate due to revised fee change proposals. Specifically, the USPTO opted to reduce the proposed increase in design and plant issue fees after stakeholders raised concerns about accessibility. Next, the notice of appeal fee remains at its current level ($800) instead of a proposed $200 increase. Further, the fee to forward an appeal to the Board increases only moderately. Finally, the final rule increases the Inter Partes Review (IPR) request and post-institution fees to better align them to their unit costs. The total combined fee ($30,500) is significantly greater than the current combined fee ($23,000) but these fees remain accessible compared to the costs required to pursue court proceedings. The other fees proposed in the NPRM remain the same in the final rule. A full list of fee change proposals is available on the Fee Setting and Adjusting page of the USPTO website.

For the PTAB organization, since the initial AIA patent fee rulemaking in 2013, ex parte appeal fees have enabled the PTAB to hire more judges and greatly reduce the appeals inventory, which reached over 26,500 (in 2012), to just over 13,000 (in September 2017). Additional fee revenue from higher appeal fees will support further inventory and pendency reductions.

The USPTO takes its fee setting authority very seriously and continues to invest significant resources and time in developing proposals, working with our stakeholders, and analyzing potential effects of proposed changes on fee payers. When first conceived, this final rule was to take effect in fiscal year 2017, but significant consultation, analysis, and consideration of multiple stakeholder perspectives led us to delay the implementation date. Given the pending sunset of the USPTO’s fee setting authority, barring an action by Congress to extend or make it permanent, this particular fee setting effort took on greater significance. We at the USPTO strive to be good stewards of our financial resources and we continue to welcome feedback and accountability from our many stakeholders.


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