The USPTO has published non-final versions of its proposed rules for the new “contested cases” created by the America Invents Act (Inter Partes Review, Post Grant Review and Derivation proceedings) on its AIA Implementation website. According to the USPTO, the official Federal Register Notices will be published later this week, on February 9 and 10. Written comments will be due by April 9 or April 10, depending on the exact publication date of the proposed rule at issue. 

The USPTO also has published its proposed patent fee schedule for the fees it plans to charge under its new fee-setting authority. The USPTO is holding PPAC Fee Setting Hearings on February 15 (at the UPSTO’s Alexandria campus) and February 23 (in Sunnyvale, California).

The Proposed Rules

The proposed rules are divided into seven separate rules packages:

Proposed Rules for Trials before the Patent Trial and Appeal Board (aka Proposed Umbrella Rules) 
(169 pages, comments due by April 9)

Practice Guide for Proposed Trial Rules
(59 pages, comments due by April 9)

Proposed Rules for Post Grant Review
(94 pages, comments due by April 10)

Proposed Rules for Inter Partes Review
(89 pages, comments due by April 10)

Proposed Rules for the Transitional Program for Covered Business Methods
(68 pages, comments due by April 10)

Proposed Rules for the Definition of Technological Invention
(62 pages, comments due by April 10)

Proposed Rules for Derivation
(59 pages, comments due by April 10)

I will be reviewing the proposed rules packages over the next several days and weeks, although I will leave the “covered business methods” to my colleagues!

The Proposed Patent Fees

The USPTO prepared us for higher fees when it announced a proposed fee of $17,750 for ex parte reexamination. (Either I misread that notice or the price already has gone up, because it is now listed as $17,760!) I highlight other notable changes below, with reference to the large entity fees.

Examination Fees

  • Examination Fees will more than triple—the Utility Examination Fee will go from $250 to $780
  • Filing an inventor’s oath/declaration up to the time of the notice of allowance will cost $3000
  • Correcting inventorship during examination where the inventor’s oath/declaration was not filed will cost $1700
  • The Request for Continued Examination Fee will nearly double, from $930  to $1700, which is more than the proposed search and examination fees (combined) for a new application!

Appeal Fees

The fees for appeals during ex parte prosecution will be restructured, with $1500 due at the time of filing a Notice of Appeal, nothing further due with the filing of an Appeal Brief, and $2500 due if the applicant wants to appeal the Examiner’s Answer! This is a new paradigm, and I had to dig into the “Detailed Appendices” for an explanation of this new “Appeal Fee” (see slide 64). Perhaps the USPTO officials who drafted this proposal are not aware that an Examiner’s Answer often is a verbatim copy of the final Office Action—why should applicants pay twice to appeal the same rejections?  

Maintenance Fees

  • Maintenance fees will increase about 40%, 25% and 60%, respectively

Post-Patent Proceedings

  • A Request for Ex Parte Reexamination will cost $17,760
  • A Request for Supplemental Examination will cost $7,000
  • A Supplemental Examination proceeding will cost $20,000
  • A Request for Inter Partes Review of 20 or fewer claims will cost $27,200
  • A Request for Inter Partes Review of 61-70 claims will cost $95,200
    (intermediate fees are set for IPR of other numbers of claims)
  • A Request for Post Grant Review (including Covered Business Methods) of 20 or fewer claims will cost $35,800
  • A Request for Post Grant Review (including Covered Business Methods) of 61-70 claims will cost $125,300
    (intermediate fees are set for PGR of other numbers of claims)

The proposed fee schedule includes micro entity fees (a 75% discount), but we are still waiting for the USPTO’s proposed regulations to determine who will be entitled to pay fees at the micro entity rate.

According to the USPTO, the proposed fee schedule is designed to achieve two main goals:

First, the agency must have a more sustainable funding model than it has had in the past to avoid disruptions in agency operations due to economic fluctuations.

Second, the agency seeks to reduce the backlog of unexamined patent applications and reduce patent application pendency in accordance with the USPTO 2010-2015 Strategic Plan.

I imagine that the patent community will have strong reactions to these dramatic fee increases and the significant fees for the new contested case proceedings. Although the USPTO has given us a lot of information to sift through, it is important that we take the time to review its proposals and consider whether there are alternative approaches that might better balance the interests of the USPTO and stakeholders.