USPTO Publishes Final Rule Setting Patent Fees

By Donald Zuhn --

Last Friday, the U.S. Patent and Trademark Office published a final rule in the Federal Register (78 Fed. Reg. 4212) setting and adjusting certain patent fees pursuant to the Office's fee-setting authority under § 10 of the Leahy-Smith America Invents Act.  The publication of the 80-page final rule (nearly) culminates a process that began last February when the Office submitted a proposed fee schedule to the Patent Public Advisory Committee (PPAC).  PPAC the held two public hearings on the proposed schedule, and in September issued a report on that schedule.  Following consideration of PPAC's report, the published a notice of proposed rulemaking setting and adjusting certain patent fees, which initiated a 45-day comment period that ended in November.  Although the AIA allows the new fee schedule to take effect 45 days after publication (i.e., March 4, 2013), in order to give Congress an opportunity to review the schedule, the notice indicates that the final rule will take effect on March 19, 2013, except for the following amendments, which will take effect on January 1, 2014:

§ 1.18(a)(1), (b)(1), (c)(1), and (d)(1) – patent issue and publication fees
§ 1.21(h)(1) – fee for recording a patent assignment electronically
§ 1.482(a)(1)(i)(A), (a)(1)(ii)(A), and (a)(2)(i) – international application filing, processing and search fees)
§ 1.445(a)(1)(i)(A), (a)(2)(i), (a)(3)(i), and (a)(4)(i) – international application transmittal and search fees

In September, we posted several tables listing the fees for large entities that were proposed to change (see "More on USPTO's Proposed New Fees - Part II").  One table sorted the fees as they might be paid during the course of prosecution, another sorted the fees by amount, and a third table sorted the fees by dollar and percent change.  Because only seven of the patent fees for large entities changed from the notice of proposed rulemaking to the final rule, the table below lists the fees as they might be paid during the course of prosecution, with the current fee, proposed fee, final fee, and dollar change from the proposed fee to the final fee (click on table to enlarge):

Comments

[EG]

Don,

Nice job on compiling the table of fees. Our clients are just going to love hearing about all these fees and how most are going UP.

[Cynical Cy]

Thanks Don. I especially like the 2nd RCE fee - it's like the US equivalent of EPO renewal fees that have to be paid while the EPO sits on its hands not examining the application. What if half the cost of the second RCE came out of the examiner's salary? I think that would put an end to poor examination. But God forbid the PTO admit that some (many) of its examiners are incompetent, deliberately unhelpful, rude, or just plain sadists.

[Courtenay Brinckerhoff]

I love how the fees beign set on a below cost basis are going up. How can that be if the PTO had money for Congress to pilfer in the past? Is it because they are spending more to increase capacity/reduce the backlog and develop a reserve? I wrote about their "justifications" for charging high fees for RCEs and Appeals ....

[Jack D. Layman]

I expect this RCE price increase is related to how companies may try to extend patent coverage times with RCEs -- see Exelixis v. Kappos. Seems sensible to me.