USPTO Sets/Adjust Fees

The U.S. Patent and Trademark Office has released their final rule for new fees based upon its fee-setting authority under the Leahy-Smith America Invents Act (AIA). This new rule has set fees to change on March 19, 2013, in most cases. A few fees will not change until January 1, 2014.

Below we provide a summarized version of the most common fees with related comments.

The entire final rule can be found at U.S. Government Printing Office web site. Also, a complete version of the Fee Changes can be found at U.S. Patent and Trademark Office web site.

New Applications*

The total basic filing, search and examination fees will increase from approximately $1,260 to $1,600, an increase of $340.

The total National phase filing, search and examination fees will increase from approximately $1140 - $1270 to $1480 - $1600, an increase of $330 - $340.

If filing a US application, you may consider filing prior to the effective date to avoid the higher fees.

Large Entity Example Present Fee New Fee Effective Date
Utility Basic Filing Fee $390 $280

March 19, 2013

Utility Search Fee $620 $600
Utility Examination Fee $250 $720
Basic PCT National Stage Fee $390 $280
National Stage Search Fee (ISR provided) $500 $480
National Stage Search Fee $630 $600
National Stage Exam Fee $250 $720
Application Size Fee - For each Additional 50 Sheets that Exceed 100 sheets $320 $400
Independent Claims in Excess of 3 $250 $420
Claims in Excess of 20 $62 $80
Multiple Dependent Claim Fee $460 $780
Design Basic Filing Fee $250 $180
Design Search Fee $120 $120
Design Examination Fee $160 $460


Extensions of Time*

Large Entity Example Present Fee New Fee Effective Date
Extension for Response within 1st Month $150 $200

March 19, 2013

Extension for Response within 2nd Month $570 $600
Extension for Response within 3rd Month $1290 $1400
Extension for Response within 4th Month $2010 $2200
Extension for Response within 5th Month $2730 $3000


Request for Continued Examination (RCE)*

The RCE fee will increase an additional $270 to $770, depending on whether a first RCE is being filed or a second and subsequent RCE is being filed. Therefore, we recommend that all instructions to file RCEs be received prior to the effective date to avoid the increase in fees.

Large Entity Example Present Fee New Fee Effective Date
First RCE $930 $1200 March 19, 2013
Second and Subsequent RCE $930 $1700


*Because we expect to receive a large number of filing instructions prior to March 18, 2013, we cannot guarantee we will complete your request unless we receive and acknowledge your instructions one week in advance of the effective date. Please note that we will make every attempt to file your request in a timely manner.

Appeals

Large Entity Example Present Fee New Fee Effective Date
a) Notice of Appeal $630 $800

March 19, 2013

b) Filing a Brief in Support of an appeal in Application or Ex Parte Reexamination Proceeding $630 $0
Appeal Forwarding Fee for Appeal in Examination or Ex Parte Reexamination Proceeding or Filing a Brief in Support of an Appeal in Inter Partes Reexamination (NEW) (n/a) $2000


Ex Parte Reexamination

If filing a Request for Ex Parte Reexamination, you may consider filing on or after March 19, 2013, to take advantage of the decreased fees.

Large Entity Example Present Fee New Fee Effective Date
Ex Parte Reexamination $17750 $12000 March 19, 2013


Inter Partes Review

Large Entity Example Present Fee New Fee Effective Date
Inter Partes Review Request - Up to 20 Claims (Per Claim Fee for Each Claim in Excess of 20 is $200) (NEW) n/a $9000 March 19, 2013
Inter Partes Review Post Institution Fee - Up to 15 Claims (Per Claim Fee for Each Claim in Excess of 15 $400) (NEW) n/a $14000


Post Grant Review

Large Entity Example Present Fee New Fee Effective Date
Post-Grant Review or Covered Business Method Patent Review Request - Up to 20 Claims (Per Claim Fee for Each Claim in Excess of 20 is $250) (NEW) n/a $12000 March 19, 2013
Post-Grant Review or Covered Business Method Patent Review Post Institution Fee - Up to 15 Claims (Per Claim Fee for Each Claim in Excess of 15 is $550) (NEW) n/a $18000


Issue & Publication Fees

Issue and Publication Fees will drastically reduce after January 1, 2014. Thus, when the Notice of Allowance is mailed on or after October 1, 2013, you may wish to delay paying the Issue and Publication Fees until January 1, 2014. Note, however, that delayed payment of the Issue Fee may delay issuance of the patent.

Large Entity Example Present Fee New Fee Effective Date
Utility Issue Fee $1770 $960 January 1, 2014
Publication Fee (Early, voluntary or normal publication) $300 $0


Electronic Recordation of Assignment Documents

Large Entity Example Present Fee New Fee Effective Date
Electronic Recordation of Assignments $40 $0 January 1, 2014


Correcting Inventorship after First Action on the Merits (NEW)

Large Entity Example New Fee Effective Date
Correcting Inventorship after First Action on the Merits $600 March 19, 2013