PTAB Post-Grant Fees Slated To Increase
The USPTO recently announced a proposed new fee schedule in a Notice of Proposed Rulemaking (NPRM) in search of revenue to recover its projected $3 billion aggregated operating costs for the 2017 fiscal year. If enacted, it would be the Office’s most significant fee adjustment since March 2013. The Office is proposing to increase 205 existing patent and PTAB fees. There are also 42 new fees being introduced or replacing one of the 14 fees that are being discontinued. The proposed changes will likely take effect October 1, 2017, the beginning of the Office’s next fiscal year. The Office is accepting public comments until December 2, 2016.
The proposed adjustments include fees associated with patent application filing, search and examination, RCE, PTAB appeals, ex parte reexamination, IPRs, PGRs, and CBMs. Among the 205 adjusted items, increases associated with utility patent prosecution are the smallest, with most increases being less than 10%.
On the other hand, the proposed adjustment in PTAB fees is more significant. For IPRs, the fee tied to the filing of a petition would see a 58% increase from the original $9,000 to $14,000 per case (up to 20 claims). Meanwhile, the post-institution IPR fee would increase an additional 18% from the original $14,000 to $16,500 per case (up to 15 claims). For an instituted IPR, the overall fees would thus rise from $23,000 to $30,500 for the standard number of claims.
Petition fees are also proposed to rise for PGR and CBM filings as well, albeit by a smaller percentage than IPRs. However, the post-institution fee for PGR and CBM proceedings would be raised by a higher percentage, 22% from the original $18,000 to $22,000 per case (up to 15 claims).
The Office indicates that the proposed fee adjustments are in furtherance of its goal of supporting the PTAB’s continued efforts to recruit staff and deliver high quality decisions within the AIA time frame. The Office further indicates that even with the proposed fee increases, the charges are still generally at or below the Office’s current costs (see Table 11 below). The Office currently reviews fee levels on at least a biennial basis. Further adjustment is possible down the road.
From stakeholders’ perspective, while these proposed fee increases are not insignificant, they still represent a relatively small fraction of the overall cost that petitioners may incur in such proceedings, which may reach several hundred thousand dollars through trial. Even with the proposed fee increases and other costs, AIA trials remain considerably less expensive than traditional patent litigation. Thus, any chilling effect is expected to be small, although it would not be surprising to see the number of filings rise just prior to the fee increases taking effect.
Wenhua Yu is co-author of this article.