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December 05, 2016

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U.S. Patent and Trademark Office Announces Changes to Most Patent Fees

The America Invents Act provides the U.S. Patent and Trademark Office (PTO) with the authority to set its own fees in order to recover the PTO’s costs. The PTO recently announced its new fee schedule, including many changes that will take effect on March 19, 2013. The most significant changes are summarized below.

  • Total filing fees for utility applications will increase from $1,260 to $1,600;
  • Filing fees for design application will increase from $530 to $760;
  • Maintenance fees will increase substantially:
    • 4th year fee – increasing from $1,150 to $1,600;
    • 8th year fee – increasing from $2,900 to $3,600;
    • 12th year fee – increasing from $4,810 to $7,400;
  • The fee for filing a Request for Continued Examination (RCE) will increase from $930 to $1200, plus a surcharge of $500 for each subsequent RCE;
  • The fee for filing an appeal will decrease from $1,260 to $800, although there is a new fee of $2,000 for forwarding the appeal to the Patent Trial and Appeals Board;
  • Cost of ex parte reexamination will decrease from $17,750 to $12,000; inter partes review will cost $23,000, while post-grant review will cost $30,000;
  • Claim fees will increase from $250 to $420 for each independent claim in excess of three, and from $62 to $80 for each claim in excess of twenty; and
  • The fee for requesting prioritized examination will decrease from $4,800 to $4,000.

Furthermore, most fees will be reduced by 50% for small entities and by 75% for micro-entities, which include universities.

In addition, a couple of changes will go into effect on January 1, 2014:

  • Issue fees for utility patents will decrease from $1,770 to $960;
  • Issue fees for design patents will decrease from $1,010 to $560; and
  • Recording an assignment electronically will be free (reduced from $40).

In light of the impending fee increases, most applicants will likely wish to file new applications before the changes take effect. However, there are some circumstances in which it may be desirable to delay filing an application or a new request, particularly if no new subject matter will be disclosed.



About this Author

Richard Kaiser, Michael Best Friedrich, intellectual property attorney, patent prosecution lawyer, inter partes review legal counsel, patents law

Richard Kaiser is a partner in our Intellectual Property Practice Group, focusing on patent prosecution for the mechanical arts and having extensive experience with both utility and design patents. Mr. Kaiser works closely with clients to provide meaningful and practical guidance on both U.S. and foreign patent strategies. He is proficient with all steps of the patenting process, from initial patentability searching and analysis, to patent application drafting, and finally with the nuances of prosecuting the pending patent applications before the various patent offices....

Brian Marstall, Michael Best Friedrich, intellectual property attorney, drafting freedom-to-operate legal counsel, manufacturing processes lawyer, mechanical design law, patent application representation

Brian Marstall is a member of the Intellectual Property Practice Group in the Washington, D.C. office. His practice includes preparation and prosecution of U.S. and foreign patent applications, drafting freedom-to-operate and invalidity opinions, and counseling clients with respect to patent enforcement and avoiding infringement of others’ patents.  Mr. Marstall manages patent matters for various technologies including underground and surface mining machines, power tools, manufacturing processes, solar panel mounting systems, and hydraulic actuators.

Prior Work Experience

Before law school, Mr. Marstall worked for a global mining and construction equipment manufacturer, primarily in the areas of mechanical design and hydraulics, and later in patent analytics.  Mr. Marstall is a co-inventor of the invention described in U.S. Patent No. 7,614,843.