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USPTO's Fee Schedule Effective March 19, 2013

March 19, 2013 – The United States Patent and Trademark Office (USPTO) published its first Fee Schedule (click here to view) under the America Invents Act (AIA) that will be effective March 19, 2013. The only fees that will take effect later on January 1, 2014, are the issue and publication fee changes. Under the AIA, the USPTO has broad authority to set fees with the caveat that the set fees recover the total costs of the USPTO. The USPTO indicated that they are striving to set the individual fees to correspond to the associated costs. Thus, while the majority of fees went up, a few have decreased. Some of the most noteworthy changes are the following.

Significant maintenance fee increases will take effect. The first maintenance fee at 3.5 years will go up from $1,150 to $1,600, the second maintenance fee at 7.5 years will go up from $2,900 to $3,600, and the third maintenance fee at 11.5 years will go up from $4,810 to $7,400. Thus, some savings may be achieved by paying prior to March 19, 2013, in cases where such a fee is due.

Request for Continued Examination (RCE) fees will also be increasing. The USPTO set the first RCE fee in an application to $1,200, while any subsequently filed RCEs in the same application will cost $1,700. Previously all RCEs, irrespective of the number thereof in an application, were $930. This corresponds to the publically voiced efforts of the USPTO to lower the number of RCEs filed, and is said to encourage applicants to put the claims in condition for allowance or the record in the desired state for an appeal at an early stage of prosecution.

The Appeal fees will significantly change, including the fee structure thereof. Previously a $630 fee was due at the time of the filing of a Notice of Appeal (NOA), and another $630 fee was due at the time an Appeal Brief was filed. Under the new fee structure, an $800 fee will be due when the NOA is filed, and no fee will be due when an Appeal Brief is submitted. However, if the Examiner does not reconsider the rejection(s) on appeal upon reviewing the Appeal Brief, and the case is forwarded to the Patent Trial and Appeal Board (PTAB), a $2000 fee will be charged. Thus, in cases where the case is resolved with the Examiner, the total costs for an appeal will go down, while in cases where the PTAB's resources will be invoked, the costs will go up. This new fee structure more clearly reflects the efforts of the USPTO than the previous fee structure, where the appeal costs were the same irrespective of whether the Board was involved or not in the resolution of a case. In cases where an Appeal Brief is filed with a fee before March 19, 2013, the fee for forwarding the Appeal Brief to the PTAB will be waived. This avoids the possibility of having to pay a fee when filing an Appeal Brief, and also when the Appeal Brief is forwarded. Thus, if one wishes to avoid the possibility of a $2000 fee, an Appeal Brief may be filed before March 19, 2013 with the current fee.

While filing fees and search fees will be decreasing somewhat, the examination fees will be increasing more significantly. Thus, total fees associated with the filing of an application will be increasing about 15%.

Extra claim fees will also be increasing, thus, making it desirable to avoid or minimize them where appropriate. Claims in excess of 20 will cost $80 each, which is up from $62, and independent claims in excess of 3 will cost $420 each, which is up from $250. The multiple dependent claim fee will increase to $780, which is a one-time fee in an application, which is up from $460. As before, each multiple dependent claim will be counted as the number of claims from which it depends for fee purposes in addition to the multiple dependent claim fee. Since there is no legal benefit to having multiple dependent claims over the corresponding number of singly dependent claims, only an associated cost, we recommend not having multiple dependent claims.

Extension fees are also increasing somewhat, i.e., by about 10%.

Also noteworthy is the establishment of micro entities, which allows for the reduction of a majority of fees by 75% for certain applicants, for which the qualifying requirements are not set forth herein. Universities qualify as micro entities.

As mentioned earlier, the only fees that will go into effect later on January 1, 2014, are the reduction of issue fees and the elimination of the publication fee. For a utility application, the issue fee of $1,770 will be reduced to $960, and the $300 publication fee will be eliminated, i.e., it will go down to $0.

Numerous post issuance activities will have decreased fees and/or fee structure changes not set forth herein in detail, e.g., all of inter partes review, post grant review, ex-parte reexamination, supplemental examination and reexamination as a result of supplemental examination fees will be decreasing from those previously published. However, these are still expensive.

Since most fees impacting new applications and pending applications will be increasing, where feasible, action before March 19, 2013, may be financially advantageous.

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