Patent Office To Implement Substantial Fee Increases For Post-Grant Review Proceedings

In a final rule issued November 14, 20171, the United States Patent and Trademark Office (USPTO) has revised its fee schedule, effective January 16, 2018. The agency justified its fee increases as needed to "support the USPTO's progress toward its strategic goals like pendency and backlog reduction, patent quality enhancements, technology modernization, staffing optimization, and financial sustainability."2

Most fees levied by the USPTO will increase by around 10 percent. There are, however, some notable exceptions. Fees associated with the USPTO's popular post-grant and inter partes review proceedings will increase dramatically. For instance, the petition fee for a typical inter partes review will increase from $9,000 to $15,500 (+$6,500), and the post-institution fee will rise from $14,000 to $15,000 (+$1,000), for a total increase of $7,500. Citing a lack of maintenance fee revenue, the USPTO will significantly increase the large-entity fees associated with prosecuting design and plant applications. Search fees for design and plant patents will both see increases of 33 percent. Design application examination fees will rise from $460 to $600 (+$140), and design application issue fees will go from $560 to $700 (+$140). The large-entity fee for gaining consideration of an Information Disclosure Statement will increase from the current charge of $180 to $240 (+$60).3

Dentons' lawyers were active participants in the processes undertaken to implement the new fees, and advocated for a reasonable and measured approach by the USPTO in setting its fees. Many of the final fees are notably less than those initially proposed by the agency.

Those transacting business with the USPTO, particularly those contemplating filing a post-grant review...