IP practitioners are well aware of the new rules heralded by the America Invents Act (“AIA”). Section 10 of the AIA authorizes the Director of the USPTO to set or adjust any patent fees under Title 35 or Title 15 of the United States Code to “recover the aggregate estimated costs to the Office for processing, activities, services, and materials relating to patents… and trademarks…, including administrative costs of the Office with respect to such patent or trademark fees.” Beginning on March 19, 2013, new fees will be instated, as published Friday, January 18, 2013, in the Code of Federal Registration, 37 C.F.R. Parts 1, 41, and 42 (“CFR”).

The new fees are a significant increase over the fees originally signed in to law a little over a year ago, September 16, 2011. Of note, the new fee schedule includes:

  • A 27% increase in total utility application filing fees ($1260 → $1600);
  • A 29% increase in the first Request for Continued Examination ($930 → $1200);
  • A new Second and Subsequent RCE fee that represents an 83% increase over the prior fee ($930 → $1700);
  • A 122% increase in total Appeal Fees ($1260 → $2800);
  • A 39% / 24% / 54% increase in the 3.5 / 7.5 / 11.5 year maintenance fees respectively ($1150 → $1600 / $2900 → $3600 / $4810 → $7400);
  • A 68% increase in the independent claim in excess of 3 fee ($250 → $420) and 29% increase in the total claims in excess of 20 fee ($62 → 80); and
  • A new correction of inventorship after the first Office action fee: $600.

Fortunately, many of the new fees are reduced from those published in the proposal last September. See 77 Fed. Reg. 55028, Sept. 6, 2012.

The Patent Public Advisory Counsel noted that the fees were correlated to reducing pendency, and set goals of 10 months to the first Office action by 2016 and 20 months of total pendency by 2017. The Office is forecasting a reduced backlog and inventory of approximately 335,000 patent applications by 2016. Additionally, the new final filing fees appear to be a continued effort on the part of the USPTO to generate sufficient revenues to recover its costs while furthering key policy considerations, namely: “(1) fostering innovation; (2) facilitating effective administration of the patent system; and (3) offering patent prosecution options to applicants.”

The new rules are also ushering in a new class of fees for micro entities. While previously the Patent Office provided fees for large entities and small entities, the AIA added a third category of fees for micro entities. The Act defines a micro entity as: (1) an applicant that would otherwise qualify as a small entity, (2) that has not been a named inventor on 4 previously filed utility application, (3) that has a gross income that is less than 3 times the median household income, and (4) has not assigned the application to an entity with a gross income that is greater than 3 times the median household income. While the previous law provided that small entities shall have their fees reduced by 50%, the AIA reduced micro entity fees by 75%. These rules provide for the first time fees to be paid by applicants that qualify as micro entities.

The current fee schedule, for comparison purposes, is available here.

Christopher H. Strate is an Associate in the Gibbons Intellectual Property Department. Jillian A. Centanni, a former Associate in the Gibbons Intellectual Property Department, co-authored this post.