Final Rules for USPTO Patent Fee Changes Expected in Summer of 2017

The period for stakeholder comments on the latest proposal of fee changes by the USPTO concluded on December 2, 2016. Per USPTO officials, a set of Final Rules is expected to be published in the Summer of 2017. The proposed rules include some significant increases, some of which are included below. A full list of the proposed changes can be found here.

Post-Grant Procedures:

• Inter Partes Review Request Fee (up to 20 claims) has a proposed increase to $14,000, an increase of $5,000;
• Inter Partes Review Post-Institution Fee (up to 15 claims) has a proposed increase to $16,500, an increase of $2,500;
• Post-Grant or Covered Business Method (CBM) Review Request Fee (up to 20 claims) has a proposed increase to $16,000, an increase of $4,000; and
• Post-Grant or Covered Business Method Review Post-Institution Fee (up to 15 claims) has a proposed increase to $22,000, an increase of $4,000.

Utility and Design Filings:

• Large entity utility filing, searching, and examination fee rates are proposed to increase to $300 (+$20), $660 (+$60), and $760 (+$40) respectively.
• Large entity design filing, searching, and examination fee rates are proposed to increase to $200 (+$20), $160 (+$40), and $600 (+$140), respectively.
• Discounts for small and micro entities will remain available.

RCE Fees:

• The large entity fee for the first RCE request has a proposed increase to $1,300, an increase of $100.
• 2^nd and subsequent RCEs have proposed increases to $1,900, an increase of $200.

Information Disclosure Statement Filings:

• Large entity fees are proposed to increase to $240, an increase of $80.

PTAB-Related Appeals:

• The large entity cost of filing a Notice of Appeal has increased $200 to $1,000.
• Forwarding an Appeal in an Application or Ex Parte Reexamination to the PTAB Board has increased $500 to $2,500 for large entities.

Fish will provide updates as further information is made available by the USPTO and the Final Rules are released.