Post-Grant Alert: New PTO Fees Effective March 19, 2013

Updated March 22, 2013 - New PTO Fees Effective March 19, 2013, for Ex Parte Reexamination, Inter Partes Review, Post-Grant Review, and Covered Business Method Review

The alert below is updated from the March 20 release. Please note the updated IPR hypotheticals and updated fee structure for PGR/CBM.

On March 19, 2013, new fees for a variety of PTO procedures went into effect. Inex parte reexamination(EPRx),inter partes review(IPR),post-grant review(PGR), andcovered business method review(CBM), the fees generally are lower than the fees previously associated with each of these procedures. The following alert summarizes the new fees from the USPTO fee schedule and, in the case of IPR, illustrates their application with several hypotheticals.

EPRx Fees: 37 CFR 1.20(c)(1)

There are now three different filing fees for EPRx, depending on the status of the requester:

• $12K: Large Entity
• $6K: Small Entity
• $3K: Micro Entity

The same fee applies regardless of how many claims are the subject of the request.

IPR Fees: 37 CFR 42.15(a)(1)-(4)

Unlike EPRx, there is a single fee structure for IPR:

• $9K: Inter partes review request fee - Up to 20 claims
• $14K: Inter partes review post-institution fee - Up to 15 claims
• $200/claim: Inter partes review request of each claim in excess of 20
• $400/claim: Inter partes post-institution request of each claim in excess of 15

The post-institution fees represent fees that are paid upfront but are refunded in the event that the petitioner's request for IPR is denied. The following hypotheticals illustrate calculation of the fees:

1. Petition includes 20 claims. Petition is granted as to all claims. Total fee: $9K (request fee) + $14K (post-institution fee) + $2K (5 x $400 post-institution request fee for claims in excess of 15) = $25K.
2. Petition includes 25 claims. Petition is granted as to all claims. Total fee: $9K (request fee) + $14K (post-institution fee) + $4K (10 x $400 post-institution request fee for claims in excess of 15) + $1K (5 x $200 request fee for claims in excess of 20) = $28K.
3. Petition includes 20 claims. Petition is completely denied. Total fee paid upfront = $25K, as calculated for hypothetical (1). Refund = $14K (post-institution fee) + $2K (5 x $400 post-institution request fee for claims in excess of 15) = $16K. Therefore, net total fee = $9K.
4. Petition includes 25 claims. Petition is completely denied. Total fee paid upfront = $28K, as calculated for hypothetical (2). Refund = $14K (post-institution fee) + $4K (10 x $400 post-institution request for claims in excess of 15) = $18K. The $1K (5 x $200 request fee for claims in excess of 25) is not refunded. Therefore, net total fee = $10K.
5. Petition includes 20 claims. Petition is granted as to 10 claims but denied as to 10 claims. Total fee paid upfront = $25K, as calculated for hypothetical (1). Refund = $2K (5 x $400 post-institution request fee for claims in excess of 15). Therefore, net total fee = $23K.
6. Petition includes 25 claims. Petition is granted as to 10 claims but denied as to 15 claims. Total fee paid upfront = $28K, as calculated for hypothetical (2). Refund = $4K (10 x $400 post-institution request for claims in excess of 15) = $4K. The $1K (5 x $200 request fee for claims in excess of 25) is not refunded. Therefore, net total fee = $24K.

PGR/CBM: 37 CFR 42.15(b)(1)-(4)

As with IPR, there is a single fee structure for PGR/CBM:

• $12K: Post-grant review/covered business method request fee - Up to 20 claims
• $18K: Post-grant review/covered business method post-institution fee - Up to 15 claims
• $250/claim: Post-grant review/covered business method request of each claim in excess of 20
• $550/claim: Post-grant review/covered business method post-institution request of each claim in excess of 15

As in IPR, the post-institution fees represent fees that are paid upfront but are refunded in the event that the petitioner's request for PGR/CBM is denied.

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