How the New Patent Fees Will Affect Your Patent Strategy

As part of the new American Invents Act (AIA), the United States Patent and Trademark Office (USPTO) is changing many patent prosecution fees. This article outlines the most important changes, and provides our comments on how these changes will impact patent prosecution strategies. These changes apply to all applications filed after March 19, 2013 (except where otherwise indicated).

The first set of changes affects the filing an application. The Examination Fee for all new utility patent applications has increased while the Filing and Search Fees have decreased. The net result is an increase in the basic fees for filing a new utility patent application, from $1,260 to $1,600 for large entities.

This set of changes also includes increases to excess claim fees. The fee for each independent claim in excess of three will rise from $250 to $420, and the fee for each claim in excess of twenty will rise from $62 to $80. These changes are meant to further discourage applicants from filing applications with an excessive number of claims. As such, it continues to be important to limit the number of claims in new applications.

The second set of changes affects fees incurred during prosecution. Specifically, the USPTO is increasing fees for Requests for Continued Examination (RCEs). Fees for the first RCE during prosecution will rise from $930 to $1,200 for large entities. In a new change, large entity fees for any RCE after the first RCE will rise from $930 to $1,700. These changes are part of a policy to discourage the filing of RCEs in order to reduce the backlog of applications being processed by the USPTO. With these changes, it is more important than ever to efficiently present arguments during prosecution, and to work with an Examiner to insure those arguments are understood.

This set of changes also includes changes to appeals fees. First, the USPTO is dropping the separate fee for filing an Appeal Brief. Thus, the total fees for filing an Appeal Brief drop from $1,260 to $800 for large entities. However, the Office is implementing a new fee for forwarding an appeal to the board. This fee is $2,000 for large entities, and is incurred after the Examiner’s Answer has been received. This fee is due with the filing of a reply brief by the applicant. The result of this change is that applicant’s will be able to receive and review an Examiner’s Answer for less money, and will then have to seriously consider whether it is prudent to forward the appeal to the board, or whether to reopen prosecution.

The last set of changes affects fees incurred after prosecution. The total fees due for issuance of a patent are lowered from $2,070 to $960 for large entities. These lower fees take effect on January 1, 2014. In addition the USPTO has increased maintenance fees due for issued patents: from $1,150 to $1,600 at 3.5 years; $2,900 to $3,600 at 7.5 years; and $4,810 to $7,400 at 11.5 years.

The combination of the higher excess claim fees, increased RCE fees and increased appeal fees make the USPTO’s Interview Before First Office Action program more attractive. A utility application applying for this program must have a maximum of twenty claims, at most three of which may be independent and it must be filed electronically. A request to use this program must be made before issuance of the first Office Action on the merits. In response to the request, the examiner will perform a search and issue a Pre-Interview Communication, which is essentially a search report. Applicant must respond within one month by requesting an telephonic or personal interview. This request must include a proposed amendment or argument. After the interview the examiner will issue the first Office Action. The response period for this Action is one-month instead of the usual three months. After considering this response, the examiner may issue a Notice of Allowance or a second Office Action, which may be a Final Action. Applicants using this program have an opportunity to explain the invention to the examiner and narrow the issues before the First Office Action. In addition, Applicants receive three Office Actions before they would need to file an RCE. There are no additional fees for participating in this program.

If you would like additional information regarding the fee changes occurring under the AIA or the Interview Before First Office Action Program, or you have any questions about the above information, please feel free to contact us at 610.407.0700.

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