News Archives

• USPTO fee increases effective September 26, 2011

  Part of the implementation of the new Patent Reform Act of 2011 is a 15% surcharge on fees charged by the US Patent and Trademark Office, starting on September 26, 2011. For cost conscious filers, the increase is significant. For example, the fees for electronically filing a regular patent application by a small entity, (including the basic, search, and examination fees) will be raised from $462 to $530; the issue fees will be raised from $755 to $870; and fees for a Request for Continued Prosecution (RCE) will be raised from $405 to $465. Even fees for filing a provisional patent application by a small entity will be raised from $110 to $125, and an additional $50 processing fee will be incurred, raising to total cost to $175. (Go here to see the full USPTO fee schedule.

  Commentary by author: let’s hope that this increase in fees means that the USPTO will have the resources to improve their services and decrease the backlog of applications. However, for many years, Congress has been diverting the fees the USPTO collects to fund other budgetary items, a process called “fee diversion”. Although the newly enacted Patent Reform Act does not include an end to fee diversion, Director Kappos has apparently been assured that patent office will be allowed to spend the fees it collects. Let’s hope this is true. Otherwise, the fee diversion and fee increases will be a poorly disguised tax on innovation.

  20 September 2011

• Priority Examination (Track 1) Now Available

  Applicants can now request Prioritized Examination when filing a non-provisional patent application (called “Track 1”). Under prioritized examination, an application will be accorded “special status” and placed on the examiner’s special docket until a “final disposition” is reached. The goal is to provide a final disposition within twelve months of prioritized status being granted. Any of the following would constitute a final disposition:(1) mailing of a notice of allowance; (2) mailing of a final office action; (3) filing of a notice of appeal;
  (5) filing of a request for continued examination (RCE); and (6) abandonment of the application.

  To qualify for Prioritized Examination, a non-provisional patent application must be electronically filed via EFS-Web with: (1) a Request for Prioritized Examination; (2) executed oath or declaration; (3) no more than four independent claims and no more than 30 total claims, and no multiple dependent claims; and
  (4) all required fees paid.

  Assuming 30 claims and 4 independent claims are filed, the filing fee for prioritized examination would be $5330 for a large entity and $3785 for a small entity.

  Your application will lose its prioritized status if you either amend your application to contain more than four independent claims or more than 30 total claims or file a request for an extension of time to reply to an office action.

  For the current fiscal year, the USPTO will only grant prioritized status to 10,000 applications. Depending on the performance of this program, the USPTO may expand this examination track.

  Prioritized examination is currently not for available for international applications, design applications, reissue applications, provisional applications, reexamination applications, or national phase applications. It is available for continuation and divisional applications, however, prioritized examination status will not be automatically given.

  Prioritized examination provides a way for an applicant to fast track the examination of an important invention. The need for fast tracking your application must be weighed with the additional costs.

  If you wish to learn more about prioritized examination, or are determining whether this is a good option for you, we invite you to give us a call.

  28 September 2011

• Micro-entity fees won't be immediately available

  The Leahy-Smith America Invents Act creates a new “micro-entity” fee status. Small inventors and universities may qualify for a 75% discount on certain USPTO fees. An inventor/applicant may be a “micro-entity” if: (1) she qualifies as a small entity; has not been named as an inventor on more than 4 previously filed US non-provisional patent applications (not including inventions assigned based upon prior employment); (3) does not have an income of more than 3x the median US household income ($50k for 2009); and (4)has not conveyed or contractually promised to convey rights or to an entity that has an income of more than 3x the median US household income.

  However, the USPTO has interpreted the relevant sections of the Act to mean that it cannot permit micro-entity status until it has gone through the required Federal Register notice-and-comment procedure, which could take a number of months.

  Stay tuned.

  04 October 2011

• USPTO Fees to go UP

  The America Invents Act granted the PTO the right, for the first time, to set its own fees. Previously, PTO fees were set by Congress. The PTO has now published its proposed fee schedule. Not surprisingly, the fees are going up. The PTO seeks to increase its funding to deal with backlog issues in applications and appeals.

  The proposed new fees significantly increase the current fees:

  • *Basic filing, search, and exam fee: $1,840 from $1,250 (up 47%);
  • *More than 3 independent claims: $460 each, from $250 (up 84%);
  • More than 20 toal claims: $100 each, up from $60 (up 67%);
  • *Request for Continued Examination (RCE): $1,700 from $930 (up 83%);
  • Notice of Appeal: $1,500 from $620 (up 142%), but the PTO proposes to waive the issue fee if the examiner withdraws the final rejection;
  • *Proceeding with appeal: $2,500 after examiner’s answer to move to board; there is no longer any fee for filing an appeal brief (was $620);
  • *Issue and Publication fees: $960 from $2,040 (DOWN 53%);
  • *Maintenance fees: $1,600, $3,600, $7,600 from $1,130, $2,850, $4,730 (up 42%, 26%, 61%, respectively).

  The above stated fees are for large entities. Small entities (companies with less than 500 employees) will pay 50% of the stated amount.
  Micro-entities receive a 75% discount on the stated fees.

  The PTO has sent the proposed fee structure to the Patent Public Advisory Committee (PPAC) and they will begin a series of public hearings. PPAC will hold hearings, gather feedback from the public and prepare a report to the PTO. After the hearings, the PTO will publish the final proposed rules on fees in the Federal Register, probably in June. This will begin a 60-day comment period on the rules which they hope to implement by fall.
  See the USPTO press release.

  16 February 2012

• USPTO proposed new fee schedule

  The USPTO has proposed a new fee schedule which will significantly increase some fees. Fees that will increase include the current filing, search, examination fees for utility applications (by 28%), fees for excess independent claims (by 68%), and requests for continued examination (RCE). RCE fees will increase from $930/$465 to $1200/$600 for the first RCE, and $1700/$850 for subsequent RCE’s. Maintenance fees will also be significantly increased by 45%. Comments on the proposed fee schedule will be accepted through early November. For more information on the proposed fees, please visit: http://www.uspto.gov/aia_implementation/Proposed_Fee_Schedule.pdf.

  06 September 2012

• PPAC Report on PTO Fee Proposal

  Good article by Inventive Step summarizing the report of the Patent Public Advisory Committee’s (PPAC) on the U.S. Patent and Trademark Office’s (USPTO) fee proposal published earlier this month. The USPTO proposes to significantly raise the costs of filing Requests for Continued Examinations (RCE) and appeals. Read the posting.

  The Public Advisory Committees for the USPTO advises the Under Secretary of Commerce for Intellectual Property and Director of the USPTO on the management of the patent and the trademark operations. The Advisory Committees consist of citizens of the United States chosen to represent the interests of the diverse users of the USPTO. The Advisory Committees reviews the policies, goals, performance, budget, and user fees of the patent and trademark operations, respectively, and will advise the Director on these matters. Appointments to the Advisory Committee are made by the Secretary of Commerce. Learn more about USPTO public advisory committees.

  28 September 2012