February 1, 2023

Volume XIII, Number 32


February 01, 2023

Subscribe to Latest Legal News and Analysis

January 31, 2023

Subscribe to Latest Legal News and Analysis

January 30, 2023

Subscribe to Latest Legal News and Analysis

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.

©2023 MICHAEL BEST & FRIEDRICH LLPNational Law Review, Volume III, Number 25

About this Author

Richard Kaiser, Michael Best, patent prosecution lawyer, inter partes review legal counsel,

Rich has a strong track record in intellectual property law, specializing in all stages of the patenting process for mechanical arts and technologies. He helps clients build patent portfolios, avoid or invalidate competitor patents, and defend against infringement claims.

Through his extensive experience with utility and design patents, Rich has become a trusted, long-term business partner to producers and manufacturers. Rich works closely with clients, providing meaningful guidance on their U.S. and international patent strategies. Clients...

Brian Marstall, Michael Best Law Firm, Intellectual Property and Patent Attorney

Brian’s practice is dedicated to obtaining robust patent protection for his clients’ innovation and developing strategies to minimize their patent infringement risk.

Brian has significant experience counseling clients with respect to a wide range of intellectual property issues, including patentability, clearance, and invalidity of utility and design patents. He regularly represents clients in the mining and heavy manufacturing industries, and he has significant experience in technologies including underground and surface mining machines, ...