July 17, 2018

July 16, 2018

Subscribe to Latest Legal News and Analysis

Updated USPTO Patent Fee Schedule Includes Significant Increases and Additions

The U.S. Patent and Trademark Office (USPTO) last week established an updated patent fee schedule, effective January 16, 2018. The updated schedule provides for a modest increase for most fees—but also more significant increases and additions that could have a major impact on patent prosecution budgets and filing strategies. Below we provide an overview of the most significant takeaways from the updated fee schedule.    

Utility Patent Application Filing, Search, Examination, and Issue Fees

Utility patent fees have increased by between 4% and 10%. The late declaration surcharge also has increased from $140 ($70 for small entities) to $160 ($80 for small entities).   

More significantly, the USPTO has increased excess claim fees (for each claim over 20) by 25%, from $80 per claim ($40 for small entities) to $100 ($50 for small entities).

For those filing applications that require sequence listings, applicants should take note that the USPTO has created new fees associated with filing sequence listings of 300 MB or more, some quite significant. For large entities, the fee for filing a sequence listing between 300 MB and 800 MB will be $1,000 ($500 for small entities), while the fee for those greater than 800 MB will be $10,000 ($5,000 for small entities). 

Design Patent Application Filing, Search, Examination, and Issue Fees

Design patent fees will increase more substantially than utility patent fees. While the basic filing fee is up only 11%, the search and examination fees have increased by 33% and 30%, respectively. Thus, the combined filing fees for a design application now total $960 ($480 for small entities), up from $760 currently ($380 for small entities).

Additionally, the design patent issue fee has increased from $560 ($280 for small entities) to $700 ($350 for small entities).

Extension-of-Time Fees

Current extension-of-time fees will not change under the updated fee schedule.

Maintenance Fees

Current maintenance fees will not change under the updated fee schedule.

Patent Trial and Appeal Board Fees

Current appeal fees will not change under the updated schedule. However, fees associated with Inter Partes Review (IPR) and Post-Grant Reviews (PGR) or Covered Business Method (CBM) Reviews or proceedings have increased significantly. 

In one of the most significant increases, the fee for requesting an IPR has jumped by $6,500, to $15,500. The IPR excess claim fee (for each claim over 20 in the request) has increased from $200 to $300. 

Similarly, the new fee for requesting a PGR or CBM review has increased from $12,000 to $16,000, and the PGR/CBM excess claim fee (for each claim over 20 in the request) has increased from $250 to $375.

Copyright © by Ballard Spahr LLP


About this Author

Scott Marty, Ballard Spahr Law Firm, Atlanta, Intellectual Property Litigation Attorney

Scott D. Marty focuses on various aspects of biotechnology patent prosecution and patent litigation, including Post-Grant Proceedings under the AIA. He is the leader of the Patent Group's biotechnology practice team, and a member of the pharmaceutical practice team.

Dr. Marty has experience in all aspects of domestic and international patent prosecution, client counseling, prelitigation analysis, and litigation relating to the biotechnical, chemical, and pharmaceutical fields. He also has experience working with clients in reviewing, analyzing,...

Wendy Choi, Ballard Spahr Law Firm, New York, Atlanta, Intellectual Property Attorney

Wendy A. Choi is a member of the biotechnology, chemical, pharmaceutical, and medical technology practice teams and Practice Leader of the firm's Patents Group. Ms. Choi focuses on complex patent prosecution and counseling and on IP strategy. She has more than 20 years of experience representing clients in the chemical, pharmaceutical, nanotechnology, biotechnology, cleantech, and medical device/diagnostic industries, ranging from start-up companies to large corporations in both domestic and international patent matters. She has a particular emphasis in Asia, energy, and biosimilars.

Ms. Choi advises clients on potential patent infringement issues and prepares invalidity and non-infringement opinions. Ms. Choi also represents companies in licensing negotiations, patent reissue, reexamination, and interference proceedings, and analyzes patents in litigation. She manages IP portfolios and the alignment of business strategies and has conducted extensive due diligence for IP transactions, licensing, and litigation support. In addition, she counsels clients on patentability, validity, and freedom-to-operate opinions; inventorship determinations; and trade secret protection.

Joseph Anderson, Ballard Spahr Law Firm, Atlanta, Intellectual Property Attorney

Joseph P. Anderson III is a member of the Mechanical Technologies (including Medical Device and Ornamental Design) Team in the firm's Patents Group. He has particular experience in advising clients on infringement risks, and design changes in advance of large-scale product launches, in the industrial, consumer product, and medical device technology sectors. Mr. Anderson also has extensive experience in opinion preparation, client counseling, and patent portfolio analysis. Mr. Anderson is licensed to practice before the U.S. Patent and Trademark Office.