The USPTO has commenced a fee-setting process for fee adjustments it expects to implement in January 2021. While many fee changes are modest (~5%), the USPTO proposes significant increases to patent trial fees and two new USPTO fees that will impact all applicants and practitioners.
USPTO Fee-Setting Process
Under the Leahy-Smith America Invents Act (AIA) the USPTO fee-setting process is a multi-step process that requires input from the Patent Public Advisory Committee (PPAC), a public hearing, and a public notice and comment period. That explains why the USPTO does not expect to implement the proposed fee adjustments until the January 2021 time frame.
Proposed Fee Adjustments
Detailed information on the proposed fee adjustments are available on the USPTO’s Fee-Setting web page. The information below is taken from the PPAC Detailed Appendix.
Higher Patent Trial Fees
The petition fees for patent trials would increase by about 25%.
Higher 3.5 Surcharge For Late Maintenance Fees
The surcharge for late maintenance fees would increase by 525%.
New Surcharge To Encourage DOCX Application Format
The USPTO would impose a new $400 surcharge for not filing a utility application in DOCX format.
This fee raises a number of concerns, including concerns about the integrity of DOCX files when used for such an important legal document as a patent application and the justification for penalizing applicants who may not have access to the software required to prepare a patent application in DOCX format.
New Annual Practitioner Fee
Another new USPTO fee category is an annual fee for registered practitioners.
Provide Your Feedback
As set forth in this August 1, 2018 Federal Register Notice, PPAC will hold a public hearing on the proposed fee adjustments on September 6, 2018, at the USPTO’s Alexandria, Virginia campus. (Public comments also may be submitted to firstname.lastname@example.org.) While there will be other opportunities to submit public comments, providing comments early in the process will help the USPTO understand the ramifications of these proposed fee adjustments.
This blog is made available by Foley & Lardner LLP (“Foley” or “the Firm”) for informational purposes only. It is not meant to convey the Firm’s legal position on behalf of any client, nor is it intended to convey specific legal advice. Any opinions expressed in this article do not necessarily reflect the views of Foley & Lardner LLP, its partners, or its clients. Accordingly, do not act upon this information without seeking counsel from a licensed attorney.
This blog is not intended to create, and receipt of it does not constitute, an attorney-client relationship. Communicating with Foley through this website by email, blog post, or otherwise, does not create an attorney-client relationship for any legal matter. Therefore, any communication or material you transmit to Foley through this blog, whether by email, blog post or any other manner, will not be treated as confidential or proprietary.
The information on this blog is published “AS IS” and is not guaranteed to be complete, accurate, and or up-to-date. Foley makes no representations or warranties of any kind, express or implied, as to the operation or content of the site. Foley expressly disclaims all other guarantees, warranties, conditions and representations of any kind, either express or implied, whether arising under any statute, law, commercial use or otherwise, including implied warranties of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Foley or any of its partners, officers, employees, agents or affiliates be liable, directly or indirectly, under any theory of law (contract, tort, negligence or otherwise), to you or anyone else, for any claims, losses or damages, direct, indirect special, incidental, punitive or consequential, resulting from or occasioned by the creation, use of or reliance on this site (including information and other content) or any third party websites or the information, resources or material accessed through any such websites.
In some jurisdictions, the contents of this blog may be considered Attorney Advertising. If applicable, please note that prior results do not guarantee a similar outcome. Photographs are for dramatization purposes only and may include models. Likenesses do not necessarily imply current client, partnership or employee status.