David L. Odom
Partner
dodom@shackelford.law
The USPTO is setting or adjusting certain patent fees for Fiscal Year 2020. The new fees become effective on October 2, 2020 and will be the first fee increase in almost three years. Also included are newly established fees of $400 for non-DOCX filings. However, the implementation of DOCX filings has been delayed until January 2022. According to the USPTO, a primary justification for the increased fees is to provide the USPTO with sufficient financial resources to maintain operation at effective and reliable levels, especially in times of financial fluctuations and economic uncertainly. The overall takeaway of the fee increases is that any Applicants in a position to file new patent applications or pay fees in pending applications, and patentees eligible to pay maintenance fees on issued patents, should do so before October 2, 2020, to avoid paying higher fees.
We note from the USPTO’s Table of Patent Fee Adjustments, that the filing, search, and examination fees for utility applications are going up by approximately 5.8%. Several other key fees are also increasing by more than 5%, including the following, which reflect the large-entity rates:
- Extension of time fees: up to 10% increase
- RCE fees: approximate 5% increase
- Issue Fee: 20% increase to $1,200
- Reissue Fee: 20% increase to $1,200
- First (3.5 year) Maintenance Fee: 25% increase to $2,000
- Second (7.5 year) Maintenance Fee:approx. 5% increase to $3,760
- Third (11.5 year) Maintenance Fee: approx. 4% increase to $7,700
- Late Maintenance-Fee Payment Surcharge: 213% increase to $500
- Expedited Examination of Design Patent Application: 78% increase to $1,600
- The ~5% increases to the utility patent filing, search and examination fees will add up to $100 more, for a total of $1820.The increases to the PCT application transmittal and search fees will add up to $120 more, for a total of $2,440.
Issue Fees Exception
Please note that any issue-fee amount listed on a Notice of Allowance issued before October 2, 2020 will not be changed by this increase in fees. There is therefore no need to pay issue fees early in order to avoid the fee increases that will go into effect on October 2.
Miscellaneous Fees
Other fees, such as petition fees, fees to revive an abandoned application or for a delayed submission of a priority/benefit claim, or patent term fees, are going up, generally by around 5% as well. Non-prosecution fees, including fees for Inter Partes Review (IPR) proceedings and ex parte reexamination requests, are also going up by around 5%.
The USPTO also indicated that it will not implement its long-threatened “annual active patent practitioner” fee. The new rules do require practitioners to submit a registration statement to continue active status. Failure to timely submit the statement may result in the practitioner being subject to a “delinquency fee” and administrative suspension (which may result in more fees).
Patent Fee Increases Effective October 2, 2020
The following chart provides a sample of some of the most familiar patent fees and reflects the amounts that go into effect October 2, 2020. For a full listing of all patent fees, see https://www.uspto.gov/learning-and-resources/fees-and-payment/uspto-fee-schedule-effective-october-2.
Patent Application Filing Fees |
|||||
|
Fee Code |
37 CFR |
Description |
Fee |
Small Entity Fee |
Micro Entity Fee |
|
1011/2011/3011 |
1.16(a) |
Basic filing fee – Utility (paper filing also requires non-electronic filing fee under 1.16(t)) |
300.00 |
150.00 |
75.00 |
|
1.16(a) |
Basic filing fee – Utility (electronic filing for small entities) |
n/a |
75.00 |
n/a |
|
|
1012/2012/3012 |
1.16(b) |
Basic filing fee – Design |
200.00 |
100.00 |
50.00 |
|
1017/2017/3017 |
1.16(b) |
Basic filing fee – Design CPA |
200.00 |
100.00 |
50.00 |
|
1013/2013/3013 |
1.16(c) |
Basic filing fee – Plant |
200.00 |
100.00 |
50.00 |
|
1005/2005/3005 |
1.16(d) |
Provisional application filing fee |
280.00 |
140.00 |
70.00 |
|
1014/2014/3014 |
1.16(e) |
Basic filing fee – Reissue |
300.00 |
150.00 |
75.00 |
|
1019/2019/3019 |
1.16(e) |
Basic filing fee – Reissue (Design CPA) |
300.00 |
150.00 |
75.00 |
|
1051/2051/3051 |
1.16(f) |
Surcharge – Late filing fee, search fee, examination fee, inventor’s oath or declaration, or application filed without at least one claim or by reference |
160.00 |
80.00 |
40.00 |
|
1052/2052/3052 |
1.16(g) |
Surcharge – Late provisional filing fee or cover sheet |
60.00 |
30.00 |
15.00 |
|
1201/2201/3201 |
1.16(h) |
Each independent claim in excess of three |
460.00 |
230.00 |
115.00 |
|
1204/2204/3204 |
1.16(h) |
Each reissue independent claim in excess of three |
460.00 |
230.00 |
115.00 |
|
1202/2202/3202 |
1.16(i) |
Each claim in excess of 20 |
100.00 |
50.00 |
25.00 |
|
1205/2205/3205 |
1.16(i) |
Each reissue claim in excess of 20 |
100.00 |
50.00 |
25.00 |
|
1203/2203/3203 |
1.16(j) |
Multiple dependent claim |
820.00 |
410.00 |
205.00 |
|
1081/2081/3081 |
1.16(s) |
Utility Application Size Fee – for each additional 50 sheets that exceeds 100 sheets |
400.00 |
200.00 |
100.00 |
|
1082/2082/3082 |
1.16(s) |
Design Application Size Fee – for each additional 50 sheets that exceeds 100 sheets |
400.00 |
200.00 |
100.00 |
|
1083/2083/3083 |
1.16(s) |
Plant Application Size Fee – for each additional 50 sheets that exceeds 100 sheets |
400.00 |
200.00 |
100.00 |
|
1084/2084/3084 |
1.16(s) |
Reissue Application Size Fee – for each additional 50 sheets that exceeds 100 sheets |
400.00 |
200.00 |
100.00 |
|
1085/2085/3085 |
1.16(s) |
Provisional Application Size Fee – for each additional 50 sheets that exceeds 100 sheets |
400.00 |
200.00 |
100.00 |
|
1090/2090/3090 |
1.16(t) |
Non-electronic filing fee — Utility (additional fee for applications filed in paper) |
400.00 |
200.00 |
200.00 |
|
1053/2053/3053 |
1.17(i)(1) |
Non-English translation |
140.00 |
70.00 |
35.00 |
|
1091/2091/3091 |
1.21(o)(1) |
Submission of sequence listings of 300MB to 800MB |
1,000.00 |
500.00 |
250.00 |
|
1092/2092/3092 |
1.21(o)(2) |
Submission of sequence listings of more than 800MB |
10,000.00 |
5,000.00 |
2,500.00 |
Patent Search Fees |
|||||
|
Fee Code |
37 CFR |
Description |
Fee |
Small Entity |
Micro Entity |
|
1111/2111/3111 |
1.16(k) |
Utility Search Fee |
660.00 |
330.00 |
165.00 |
|
1112/2112/3112 |
1.16(l) |
Design Search Fee or Design CPA Search Fee |
160.00 |
80.00 |
40.00 |
|
1113/2113/3113 |
1.16(m) |
Plant Search Fee |
420.00 |
210.00 |
105.00 |
|
1114/2114/3114 |
1.16(n) |
Reissue Search Fee or Reissue (Design CPA) Search Fee |
660.00 |
330.00 |
165.00 |
Patent Examination Fees |
|||||
|
Fee Code |
37 CFR |
Description |
Fee |
Small Entity |
Micro Entity |
|
1311/2311/3311 |
1.16(o) |
Utility Examination Fee |
760.00 |
380.00 |
190.00 |
|
1312/2312/3312 |
1.16(p) |
Design Examination Fee or Design CPA Examination Fee |
600.00 |
300.00 |
150.00 |
|
1313/2313/3313 |
1.16(q) |
Plant Examination Fee |
620.00 |
310.00 |
155.00 |
|
1314/2314/3314 |
1.16(r) |
Reissue Examination Fee ormReissue (Design CPA) Examination Fee |
2,200.00 |
1,100.00 |
550.00 |
Patent Post-Allowance Fees |
|||||
|
Fee Code |
37 CFR |
Description |
Fee |
Small Entity |
Micro Entity |
|
1501/2501/3501 |
1.18(a)(1) |
Utility issue fee |
1,000.00 |
500.00 |
250.00 |
|
1511/2511/3511 |
1.18(a)(1) |
Reissue issue fee |
1,000.00 |
500.00 |
250.00 |
|
1502/2502/3502 |
1.18(b)(1) |
Design issue fee |
700.00 |
350.00 |
175.00 |
|
1503/2503/3503 |
1.18(c)(1) |
Plant issue fee |
800.00 |
400.00 |
200.00 |
|
n/a |
1.18(d)(1) |
Publication fee for early, voluntary, or normal publication |
0.00 |
0.00 |
0.00 |
|
1505/2505/3505 |
1.18(d)(3) |
Publication fee for republication |
300.00 |
300.00 |
|
|
* Third-party filers are not eligible for the micro entity fee. |
|||||
Patent Extension of Time Fees |
|||||
|
Fee Code |
37 CFR |
Description |
Fee |
Small Entity |
Micro Entity |
|
1251/2251/3251 |
1.17(a)(1) |
Extension for response within first month |
200.00 |
100.00 |
50.00 |
|
1252/2252/3252 |
1.17(a)(2) |
Extension for response within second month |
600.00 |
300.00 |
150.00 |
|
1253/2253/3253 |
1.17(a)(3) |
Extension for response within third month |
1,400.00 |
700.00 |
350.00 |
|
1254/2254/3254 |
1.17(a)(4) |
Extension for response within fourth month |
2,200.00 |
1,100.00 |
550.00 |
|
1255/2255/3255 |
1.17(a)(5) |
Extension for response within fifth month |
3,000.00 |
1,500.00 |
750.00 |
The post U.S. Patent and Trademark Office (USPTO) <br> Final Patent Fee Changes Become Effective October 2, 2020 appeared first on Shackelford, Bowen, McKinley & Norton, LLP.