Proposed USPTO Fee Increases and New Annual Patent Practitioner Fee

By Joseph Herndon --

On August 8, 2018, Director Iancu issued a letter to the Patent Public Advisory Committee notifying of proposed fee increases at the U.S. Patent and Trademark Office, and institution of new annual fee for active patent practitioners.

The Director stated that the fee increases are needed to ensure commitment to fiscal responsibility, financial prudence, and operational efficiency.

This is a patent fee proposal open for comment at this stage, and the Director stated that it is anticipated that the fee adjustments resulting from this effort will not be implemented until the January 2021 timeframe.  Generally, there are across the board fee increases, and the USPTO stated that given the nearly three-year gap between the implementation of the last fee adjustments and the anticipated effective date of this fee setting effort, a five percent increase to fees is similar to fees rising by 1.6 percent annually.

In addition to the across the board increase in fees that will help raise revenue, this proposal includes introduction of new fees, targeted adjustments to existing fees, and discontinuation of some fees.

New Fees

1.  One proposed new fee is a surcharge for filing in a non-DOCX format.  This will be a $400 fee, and will encourage applicants to use the DOCX format, and is intended to improve Office efficiency and future search capabilities.

2.  Another proposed new fee is an annual active patent practitioner fee of $340 (if filed electronically).  This will be similar to the annual fees charged by the vast majority of state and territorial bars, and will allow the costs associated with the services the Office of Enrollment and Discipline (OED) provides practitioners in administering the disciplinary system and roster maintenance to be recovered directly from those practitioners.  Further, a discount will be offered to those who certify completion of continued legal education (CLE), reducing the fee to $240.

3.  A fee for non-registered practitioners to appear before the PTAB is proposed.

Adjustments to Existing Fees

1.  A significant increase (525%) to the surcharge for late payment of maintenance fees in order to encourage timely payment.  The fee is currently $160, but will be increased to $1000 for large entities.

2.  An increase to the fee to request expedited examination of a design application, to help the Office manage staffing for these services (e.g., from $900 to $2000).

3.  Issue and maintenance fees will be restructured under this proposal in order to recover initial search and examination costs earlier in the patent lifecycle.  The Office noted that as technology lifecycles grow shorter, it is important that USPTO not rely too heavily on fees paid late in the life of a patent.  As a result, some of these fees are proposed to increase by various amounts higher or lower than the five percent mentioned above.  The current large entity maintenance fees are $1600 (3.5 years), $3600 (7.5 years), and $7400 (11.5 years), and the proposal increases to $2000 (3.5 years), $3760 (7.5 years), and $7700 (11.5 years).

4.  Fees for America Invents Act (AIA) trials are proposed to increase by roughly 25% due to a variety of factors, including the Supreme Court decision in SAS Institute Inc. v. Iancu.  The Office noted that the PTAB will no longer be able to institute on less than all claims challenged in a petition, leading to significant additional work for a given instituted inter partes review (IPR).

Discontinuation of Fees

Finally, the USPTO is proposing to discontinue three patent service fees, and instead provide those services, in a slightly modified form, for free.  Namely, these include fees related to obtaining copies of Patent Grant and Patent Application Publication TIFF Images or Full-Text W/Embedded Images.  These service fees will be eliminated and the Office will instead provide these services, in a slightly modified form (i.e. electronic), for free.

Details of the proposal can be found here including a full spreadsheet of all fees and proposed changes (spreadsheet also available here).  Below is a summary table of the common fees for a large entity to illustrate some of the proposed changes.

As seen below, total filing costs for a patent application (large entity) are currently $1720 and are proposed to increase to $1820.

Comments

[Atari Man]

My rewritten version of the PTO's explanations regarding some of the fee increases, this time complying with truth-in-advertising laws:

We want to raise the RCE fee AGAIN - we want to continue to reward bad examiners for doing a bad job, and penalize the applicants who are stuck with those examiners by charging them more money to file the RCEs that they'll inevitably need to get past these examiners. That sure beats the alternative, namely ensuring that the examiners understand that their role is not to just say "no" but to work with applicants to identify patentable stuff in their applications. POPA would oppose that.

And while we're at it, we want to encourage the submission of things in .docx format - what could possibly go wrong? Everyone knows we never make a mess of things filed in .pdf format, and how different could .docx possibly be? Yes, we know, it's possible to file searchable .pdf files, which could help us search, but we're really keen on this .docx thing.

And the practitioner registration fee: that definitely "will allow the costs associated with the services the Office of Enrollment and Discipline (OED) provides practitioners in administering the disciplinary system and roster maintenance to be recovered directly from those practitioners". Maintaining that roster is a really costly enterprise, one that needs to be spread over the entire group of 30,000 or more active practitioners to the tune of several hundred dollars a year each. And we all know the OED provides great services to practitioners, that's why every practitioner looks forward to an encounter with the OED.

[Mark Summerfield]

While I would not dispute cynicism with regard to fee increases, there are sound technical reasons for preferring DOCX (or, more precisely, ISO/IEC 29500 Office Open XML) over PDF. Indeed, the problems that pretty much anyone who accepts PDF submissions invariably has are all the evidence needed in support of a change.

In theory, PDF is also an open standard (ISO 32000). In practice, however, for most of its existence it has been open only due to the largesse of Adobe since the early 90s in publishing a Reference Book. To this day, there are almost as many quirky PDF file variations floating around the internet as there are implementations of the 'standard'. Which is why any organisation that receives thousands of PDF files every week will have problems with a certain percentage of them.

Changing to OOXML will be a good move, regardless of whether you use MS Office, or any other application of your choice, to generate it. No doubt there are many reasons to criticise the USPTO, but this is not one of them.