While most stakeholders are focused on the first-inventor-to-file changes to U.S. patent law that take effect on March 16, 2013, some applicants could realize significant cost savings by taking certain actions by March 18, 2013, to avoid the new USPTO fees that take effect on March 19, 2013. Applicants in the process of preparing Appeal Briefs will be interested to know that the USPTO will waive the new appeal fee if an Appeal Brief and fee are filed before March 19, 2013.
The New Appeal Fee Structure
Under the current USPTO fee schedule, Large Entity Applicants pay the following fees for appeals:
- Notice of Appeal fee: $630
- Appeal Brief fee: $630
- Oral Hearing fee: $1260 (optional)
Beginning March 19, 2013, Large Entity Applicants will face the following appeal fees:
- Notice of Appeal fee: $800
- Appeal Brief fee: $0
- Appeal Forwarding fee: $2000 (due after Examiner’s Answer)
- Oral Hearing fee: $1300 (optional)
Large Entities in ex parte reeaxamination proceedings will face the following appeal fees:
- Notice of Appeal Fee: $800
- Appeal Brief Fee: $2000
- Appeal Forwarding Fee: $2000
- Oral Hearing Fee: $1300
The USPTO has announced that it will waive the new fee for forwarding an appeal to the Patent Trial and Appeal Board in any application or ex parte reexamination where the appellant has filed an Appeal Brief and Appeal Brief fee by March 18, 2013.
As noted by the USPTO:
This waiver avoids the payment of extra fees that would otherwise result when an applicant paid both a fee to file an appeal brief by March 18,2013, and would also be required to pay the fee to forward an appeal on or after March 19,2013.
Thus, Applicants who are in a position to file their Appeal Briefs by March 18, 2013 could save $1370 in USPTO fees by doing so.