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Monday Oct 03, 2016

USPTO Proposes Patent and PTAB Fee Adjustments

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

The Patent and Patent Trial and Appeal Board (PTAB) organizations continue to identify ways to deliver increasing value to the global intellectual property community. The USPTO has 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). While great progress has been made, there is still much to be accomplished.

Today, the USPTO issued a notice of proposed rulemaking (NPRM) using the fee setting authority of the AIA to strategically change certain patent and PTAB fees. The targeted fee increases proposed in the NPRM are projected to produce approximately 5% more patent revenue each fiscal year once fully implemented. With the added funding, we aim to:

  • Continue progress towards the goals and objectives of the USPTO FY 2014 – 2018 Strategic Plan including reaching target pendency and backlog levels
  • Build upon the success of the Enhanced Patent Quality Initiative (EPQI) 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 hire 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


After consultation with the Patent Public Advisory Committee (PPAC), several key Patent organization fees have only modest increases, e.g., utility filing, search, examination, and issue fees; others have slightly larger increases, e.g., design filing, search, examination, and issue fees. Small and micro entity fees remain in place to foster innovation among small businesses and independent inventors. Maintenance fees remain unchanged. We propose to increase slightly the request for continued examination (RCE) fees to better align them with our costs. Other fee proposals affect excess claims, information disclosure statement (IDS) submissions, and Office of Enrollment and Discipline (OED) fees among others. A full list of fee change proposals is available on the USPTO’s Fee Setting and Adjusting 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 backlog, which reached over 27,000 (in 2012), to under 17,000 (in August 2016). Additional fee revenue from higher appeal fees will support further backlog and pendency reductions.

The PTAB has significantly strengthened capacity in recent years to manage its growing workload. The PTAB received more than 4,700 petitions for AIA trial proceedings since 2012 and has met every deadline set by Congress for such trials.  In the last iteration of patent fee setting, we had to estimate both demand (e.g., workload) and cost with little data available for the Inter Partes Reviews (IPRs), Post Grant Reviews (PGRs), and Covered Business Method Reviews (CBMs).  Now, with three years of historical cost data, we have better insights into the full cost of services and can better estimate demand, which enables the USPTO to align fees more appropriately. Still, compared to their FY 2015 unit cost, all of the trial fees remain at or below our cost to deliver the service and offer a lower-cost alternative to costly litigation.

Given our goal to support the global intellectual property community, we take fee setting very seriously and thoroughly analyze the effects of proposed fee changes on our stakeholders. Following the last AIA patent fee setting that became effective in March 2013, this current rulemaking is the result of a comprehensive biennial fee review that began in 2015 and concluded with a recommendation for additional, targeted fee adjustments to help us achieve the aims delineated above.

In keeping with the AIA fee setting process, the results of the comprehensive biennial fee review were presented to the PPAC in October 2015 as an initial fee setting proposal. The PPAC conducted a hearing in November 2015 and accepted public comments before preparing a written report in response to the initial proposal. The USPTO considered the PPAC report (released in February 2016) and as a result made several revisions to the initial proposal to arrive at the package of fee adjustments contained in the NPRM.

A 60-day public comment period has now opened, and we welcome feedback from our stakeholders. After reviewing the comments, we plan to prepare a final rule for publication during the summer of 2017.  The NPRM can be accessed here.  Comments on the fee proposals are due by December 2, 2016.


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