Don’t Get Sticker Shock - New USPTO duties go into Effect

The U.S. Patent and Trademark Office (USPTO) has increased most of its patent fees, with the changes taking effect on October 2, 2020.

The U.S. Patent and Trademark Office (USPTO) has increased most of its patent fees, with the changes taking effect on October 2, 2020. The fees have increased between 4 percent and 25 percent, with the uptick averaging around 5 percent.

As explained by the USPTO, the agency began its biennial review of fees, costs, and revenues in 2017. It concluded that fee adjustments are necessary to adjust to increasing costs and to provide necessary resources for its patent operations. In light of COVID-19, the USPTO delayed the effective date of the fee increases from July to October 2020.

USPTO’s Updated Patent Fees

The USPTO has largely increased fees by five percent across the board. However, the agency further increased certain existing fees and established new surcharges. Below are several key changes:

• Request for expedited examination of a design application: increased from $900 to $1,600
• Utility issue fee: increased from $1,000 to $1,200
• Reissue issue fee: increased from $1,000 to $1,200
• Maintaining an original or any reissue patent, due at 3.5 years (first–stage maintenance): increased from $1,600 to $2,000
• Maintaining an original or any reissue patent, due at 7.5 years (second–stage maintenance): increased from $3,600 to $3,760
• Maintaining an original or any reissue patent, due at 11.5 years (third–stage maintenance): increased from $7,400 to $7,700
• Inter partes review request fee—up to 20 claims: increased from $15,500 to $19,000
• Inter partes review post-institution fee—up to 20 claims: increased from $15,000 to $22,500
• Inter partes review request of each claim in excess of 20: increased from $300 to $375
• Inter partes post-institution request of each claim in excess of 20: increased from $600 to $750 
• Post-grant or covered business method review request fee—up to 20 claims: increased from $16,000 to $20,000 
• Post-grant or covered business method review post-institution fee—up to 20 claims: increased from $22,000 to $27,500 
• Post-grant or covered business method review request of each claim in excess of 20: increased from $375 to $475 
• Post-grant or covered business method review post-institution request of each claim in excess of 20: increased from $825 to $1,050 

The USPTO will also impose a new surcharge for “non-DOCX” filings. The surcharge is for utility nonprovisional filings submitted in a format other than DOCX (structured text) and will be imposed for specifications, claims, and abstracts. However, the new fee will not begin until January 1, 2022. 

For a complete listing of all fees see the Table of Patent Fee Adjustments.

Start-Ups and Other Small Businesses Eligible for Discounted Patent Fees

The fees listed above are standard “large entity” fee rates. However, the USPTO does provide discounted patent fees for start-ups and other small businesses. In most cases, small entities pay 50 percent of the standard fee, while micro-entities pay 25 percent in examination fees, and maintenance fees are similarly reduced for small businesses.

To qualify for discounted patent fees, small entities must meet the definition of “small business concern” under section 3 of the Small Business Act (generally they must not have more than 500 employees). Applicants must also confirm that they have not assigned, granted, conveyed, or licensed, and are under no obligation under contract or law to assign, grant, convey, or license, any rights in the invention to any person, concern, or organization which would not qualify for small entity status.

To qualify as a micro-entity, an applicant must meet all of the following criteria:

• Qualify as a USPTO-defined small entity;
• Not be named on more than four previously filed applications;
• Not have a gross income more than three times the median household income in the previous year from when the fee(s) is paid (currently $206,109); and
• Not be under an obligation to assign, grant, or convey a license or other ownership to another entity that does not meet the same income requirements as the inventor.

There are other strategies available to reduce the cost of pursuing a patent. To determine the best course of action for your business, it is essential to work with an experienced intellectual property attorney.

If you have questions, please contact us

If you have any questions or if you would like to discuss the matter further, please contact me, Libby Varghese, or the Scarinci Hollenbeck attorney with whom you work, at 201-896-4100.