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.© MICHAEL BEST & FRIEDRICH LLP