New Post Grant Options and Associated Proposed Fees

Proposed Filing Fee for Petition for Post-Grant Opposition or Covered Business Method Patent Review: $35,800 to review up to 20 claims, $44,750 to request review of 21 to 30 claims, $53,700 to request review of 31 to 40 claims, $71,600 to request review of 41 to 50 claims, $89,500 to request review of 51 to 60 claims, and an additional $35,800 to request review of additional groups of 10 claims.

Proposed Filing Fee for a Petition for Inter Partes Review: $27,200 to review up to 20 claims, $34,000 to request review of 21 to 30 claims, $40,800 to request review of 31 to 40 claims, $54,400 to request review of 41 to 50 claims, $68,000 to request review of 51 to 60 claims, and an additional $27,200 to request review of additional groups of 10 claims.

Proposed Filing Fee for a Petition for Ex Parte Reexamination: $17,760.

Proposed Fees for Supplemental Examination: Filing Fee of $7,000; Examination Fee of $20,000.

Petition for Derivation: $400.

Third Party Submission of Prior Art in Pending Cases: $0 for up to three references with notation; $180 for up to ten.

66 thoughts on “New Post Grant Options and Associated Proposed Fees

  1. 66

    I dont know about it cant get any whorse. New Inventor slavery provisions 40 methods of theft and a 180 year old consperacy to steal all marketable invention from the worlds only four concievers.Now shutting down all human advancement. Some might say thats not good maybe they should add some integrity to the wicked ball of corruption!

  2. 65

    True there seems to be no recognition or concern about the corruption however we are supposed to have people held accountable for not correcting it when presented with the facts its called genuine justice a term thats becomming more dificult to find every day. Oh superman where are you now they even stole that comic character and television show from me and the book invention and disney just paid crooks big money for it. Is there an attorney in the house.

  3. 62

    TGA = Troll Garb@age Alert

    The apparently unemployed blog troll is that poster who posts under so many pseudonyms, that it is essentially impossible to ascertain just how many posts are his/hers.

    It’s the same merely vexatious poster with whom you went back-and-forth earlier in this thread–of course, to no avail.

  4. 61

    I agree with your general sentiment for all inventors except for the already powerful and well-heeled…and even for them, it’s not great.

    However, Michael, no matter how bad you think something is current, it can ALWAYS get worse.

    Including the patent system.

  5. 60

    Ok punches but the legal system still cant get any whorse for inventors that its supposed to be promoting.

  6. 59

    Its not my domination its they dont want to acknowledge having the information or acknowledgeing dirty deeds have been done so they dont come back to the thread is there a judge or attorney in the house

  7. 58

    Two questions, IBP, if I may:

    1. What means “TGA”

    2. I was not aware that any particular poster now owns this thread. When you write that this thread is being”dominated”, which of the many posters do you have in mind?

    Incidentally, I take it that your “unemployed” troll is somebody that not even a crazy person would actually pay to post here.

  8. 57

    Hey Mr. Turgid, I was referring to the BLOG troll, not to any sort of “patent troll”.

    This place is getting better all the time.

  9. 56

    Getting in there and diging and fighting for the stolen conception is also to dangerious for the precious comodity you call breeders normal people call invention concievers without witch the improvement of humanity doesent exist. Weve had three of the only four in history murdered and I am in peral with no concern in congress for inventor security disgusting animals hugh!Oboma is an attorney to no wonder the economy is going nowhere

  10. 55

    JJ, MM, a word on “validation”, lest there be any confusion.

    The EPO grants patents but behind each certificate of grant is a “bundle” of national patent rights. The certificate is enforceable nowhere. Only in those EPC countries where the owner has validated the EPO grant is there any extant exclusive right to enforce.

    So, validation is indeed a pure formality.

    Not so when it comes to getting a judge to enjoin an infringer. Is the accused act inside the protective scope? Is there a Doctrine of Equivalents, or not? On that question, the Enlarged Board of Appeal of the EPO has nothing to say, and the Court of Justice of the European Union has nothing to say (not yet anyway). Instead, it is the respective Supreme Courts of each EPC sovereign member State that have the final word.

    The EPO alone rules EPC-wide, on issues of validity (and here keep in mind that some of the specialist patent judges of EPC countries do also sit on the EPO Enlarged Board of Appeal). But, when it comes to what infringes, twenty or so national courts all still have the last word.

    I think that is what Harvey above was alluding to, don’t you?

    But I want to tell you, Harvey, and non-crazy readers here that the judges of these national courts convene every two years to debate cases together. Their consensus is ever-closer, as you might expect, given the Protocol on the Interpretation of Art 69, EPC. This renders hoary old poster children for European disunity (like Improver, DSS v. ECB and Spannschrauber) no guide to the level of legal certainty now and in the future. So, the position for patent owners and infringers will continue to improve unless the pols in Europe get their way this year and let the Supreme Court of the European Union loose, to savage European patent law. When that happens, SCOTUS law will appear, in comparison, a model of clarity.

  11. 54

    You know what you get, under my name


    but I don’t understand what you mean by “post in absolutes”


    I know what… “non sequitor” mean




    MaxDrei, your reply to Let me makes this easy for you is itself a nonsequitor, as you proudly state, we know what we get under your name (post[ing] in absolutes), as well as obviously purposeful ignorance. Do you really want us to believe that you do not understand what “posting in absolutes” means? Since we know what we get from you, shouldn’t you know as well?

  12. 53

    Oh yes attorneys and thugs that get cut out of the deal instead of the inventor that would be a trajedy they might have to make an honest living at reasonable wages. Making lisence plates isent likley to go over well. They can still deal in hourse trading patents after auctiion I suppose and there is still some legal work.Of course there is always work in test marketing and prototypes and patent research and prep for filing I am going to need a 100 man shop if they get it going.

  13. 52

    Breeders? Oh yes invention breeders. Yes perfect for the rest of us also to Instead of inventions falling into a blackhole of non conception there available for auction and business startups because the economic incentive to create exists instead of non exists in the present system through thefting by 40 methods and jobs creation and economic restrart occurs the way Ive restarted the economy five decades in a row now.

  14. 50

    “Remember: you, me, 6 and Ned are all … ‘crazy’ people.”

    There … fixed it for you. I’ll give you credit, you were really close.

  15. 49

    Ya Ive been dominated by every method known to crooks to cheat me of my cival rights of participating in free market capitalism I should have been a billionaire by 5 years old except for this defective crooked system. They also stole the largest estate in history from me or I never would have sold or partnershiped one patent you call it troll it actually patroling crooks.Unemployed because greedy crooked snaky faced attorneys.

  16. 47

    What do you think now? Can you manage that?

    Of course shilly/sockie can’t “manage that”, MD. Remember: you, me, 6 and Ned are all being funded by “crazy” people. By the way, I assume you got a nice bonus for last month’s work. I did. Let me know if you were left out and I’ll send a note upstairs. There’s a lot more where that came from!!!!!!!!!

    I’m so glad it’s out in the open now. I was getting tired of pretending to comment here of my own free will, without compensation.

  17. 46

    No need to filter. I’m already making it much easier for you than that. Just read the name and, when it’s mine, read no further.

    Unlike some people round here, I have been posting under the same single pseudonym for, what is it, 3, 4, 5 years now. You know what you get, under my name. If you already know you can’t abide it, then simply don’t read it. What do you think now? Can you manage that?

  18. 45

    Inventors only have the upper hand on one thing in this system. Non-fileing and non-conception means there is nothing to hog or argue about you have just all losers and no winners but at least everything is fair and equal true sickening justice a backwards black hole thats the present system

  19. 42

    “but I don’t understand what you mean by ‘post in absolutes’.”

    Let’s see … for the last 3, 4, 5 years??? you’ve been tell us, with no uncertainty that the EPO is the bestest, most special, most supercalifragilisticexpialidocious patent office in the whole wide world and anybody would be daft not to be filing all of their patents at the EPO.

    You are a shill for the EPO … plain and simple. To you, the EPO embodies everything that is right in the world, and the USPTO is the epitomy of evil.

    After years of this shilling, don’t get uppity when people get tired of your old, lame song and dance routine. If there was a way I could filter every one of your comments from this blog, I would.

  20. 41

    Except that it isn’t parallel, is it, because the CAFC doesn’t take its law from the Enlarged Board of Appeal of the USPTO. In Europe, national law under the EPC is set by the Enlarged Board of Appeal of the EPO. But you knew that already of course, didn’t you?

  21. 39

    My experience with validation is that it is a mere formality.

    Prosecution in the U.S. is the most unpredictable amongst the leading patent offices, although the JPO and SIPO are running neck and neck in a very close second. EPO, IP Australia, IPONZ, CIPO are fairly predictable. I don’t have any experience with KIPO.

  22. 38

    that minority is routinely routed.

    LOL, shilly. I’m sure the Patriots won the most recent Super Bowl on your planet, too.

  23. 37

    I don’t

    Open your eyes then. It’s the reason you keep on not learning and the reason why so many dead horses are piled up (even perhaps in fetal positions) around the full trough of water you have.

    Does that make us as bad as each other?

    I have no idea what you are trying to say with this comment. Veracity is not a popular opinion item.

  24. 36

    It appears that you disagree in error MaxDrei. You being wrong, go figure.

    “At least until” seems to acknowledge your point that up to that national point, the EPO is consistent and certain. It is after that point that the international nature takes over and you lose that consistency and certainty.

    The direct parallel would be if the US granted a first patent and then each state were to grant variations on the patent within the domain of each state.

    In that sense, the CAFC would appear to serve as a “model” of consistency (compared to let’s say the regional circuits, since we don’t actually have patent law decided in the state courts). In fact, that’s the very reason for the creation of the CAFC. A small fact worth considering.

  25. 35

    OK. We will have to differ. You keep on seeing me “shot down in flames”. I don’t. Does that make us as bad as each other? Readers will decide.

  26. 34

    Never mind any actual original point. MM’s comments are practically guaranteed to be infused with tall dried reeds of vegitation.

  27. 33

    I disagree. P was referring to the point where “the patent goes national”. That for me was crystal clear, patent not international patent application, and so post-issue, you know, the so-called validation process for EPO patents, that so irks so many in the USA.

  28. 32

    Big megaphones don’t always win.

    No kidding.

    Look at this blog. 60% of the posts come from a tiny minority and that minority is routinely routed.

    rest of us educated people

    You overestimate yourself.

    That’s why I don’t lose much sleep over the ultimate fate of [oldstep+[newthought] claims

    You sure? You sure do post that often enough.

    I need to cash this giant check

    The Shilling is not always done for money.

  29. 31

    P Harvey’s original point was that prosecution in each individual country in Europe is less predictable than prosecution in the EPO, not that EPO prosecution is less predictable than US prosecution.

    I haven’t experienced any such unpredictability, however.

  30. 30

    if you can hog the conversation, you “win.”

    LOL — did sockie tell you that, shilly?

    Big megaphones don’t always win. Remember when the Discovery Institute spent millions and millions of dollars trying to persuade everyone that “intelligent design” was a scientific explanation for life on earth? Man, it was fun watching that ship sink. Not for you, of course, shilly. But for most of the rest of us educated people it was daxn funny.

    Correct me if I’m wrong, but I think the Momos just got their bxtts handed to them by the 9th circuit as well. The truth prevails in the face of b.s. quite often, shilly. That’s why I don’t lose much sleep over the ultimate fate of [oldstep+[newthought] claims. Endless sockie ranting and folks sticking their heads in the sand doesn’t change anything. The facts are the facts.

    Now if you’ll excuse me I need to cash this giant check that George Soros sends me each month to encourage me to comment here. LOL!

  31. 29

    Other than shillywilly, are there any practitioners doing international prosecution who find prosecution in the EPO to be less predictable than in the US? Just curious. I’ve never heard anyone suggest this until shilly did just now.

    the vaunted benefits of the EPO

    Consistent application of the law is both a feature and a bug, shilly, depending on where you stand with respect to the law.

  32. 28


    Anything “cost-driven” that relates to behavior is inimical to certain types of players, especially when comparing deep-pockets to start-ups. When the driver is set at “who has the money,” the landed and established players have an automatic advantage.

    Money talks, and if you can hog the conversation, you “win.”

  33. 27

    to regular folk whose fault it isn’t

    Fault? How did fault get into the picture?

    Oh wait, it is the Professor injecting his value position into the conversation. I should have recognized the anti-patent holder bias right from the start. My fault.

    Back to the Tower with you.

  34. 26

    “Petition for Derivation: $400”? Is that that the only indicated fee for this new proceeding?
    A derivation proceeding may well be hard to even get started, that is to get enough evidence with no discovery available at that point. But once it does get started it could get as messy and expensive as a present interference derivation proceeding, much more so than an ex parte reexamination. So I do not understand the huge disparity between those respective new fees, when both are supposed to be based on PTO cost burdens?

    Also, I don’t understand why some people above think that the new post-grant proceeding fees being set so high is bad for small inventors. If anything those high fees [and other limitations and dangers] may help discourage the use of those PTO post-grant proceedings against small inventor’s patents [unless the small inventors are actually threatening or starting lawsuits]. Small inventors who want to fix their own patents will still have lower cost reissues available.

  35. 25

    How about equal time for a “Dislike”?

    Inthe meantime:


    MaxDrei, if Speak Like A Lawyer is gobbledygook to you, then it is quite possible that you just don’t get this whole lawyer thing.

    It seems clear to me that once again here you are pushing the vaunted benefits of the EPO and someone makes a point that shoots your position down in flames.

    Seems to happen with quite some regularity. Why do you think this is so? Tell. Do.

  36. 24

    Mine is the perfect system. We need to specialize inventors into concieving if thats what there best at. Immediate novelty checks and lockering and novelty patent awarding. Then a pto funded consumer acceptance trial for top marketable inventions followed by auctions to corperations perfect no trials at all!

  37. 23

    No I’m going to try to get at least 70 claims issued per case, to make sure it costs at least ~$100K to ask for an opposition.

    (Ex parte reexam will only be ~$20K, but you do what you can.)

    Question for everybody: Do we know how “business methods” is being defined? (I.e., which cases will be eligible for the “business methods” post-grant review?)

  38. 22

    The only way to equilize this system is for a theft petition to issue any time two parties claim the same invention giving the indegent small entity the money to continue the court battle.

  39. 21

    These fees are very high, but still much cheaper than arguing invalidity issues in a district court. When Kappos came to speak at Cornell last year, I spoke to him about reexamination and his plans to shorten the time frame for review. He said reexamination was a major goal and he was working on a plan to get the reexamination process to be under a year. I think we are seeing that plan. Raise fees to keep the number of reexams down and hopefully have funding to do reexams well. If these fees accomplish the goal of a complete reexam in a year, I would say this is a major benefit to smaller companies facing litigation against bogus patent enforcement. I am involved in several situations at the moment where it is the large companies that are behaving like NPEs trying to force my clients with a superior product from the market on ridiculous interpretations on their patents. My clients would jump at the chance to resolve the issue for under 100K vs. several million. Likewise on the enforcement side, we typically face all sorts of ridiculous prior art arguments on the way to trial. My smaller clients would much prefer to have the PTO pass judgment on the validity than argue the issues before a judge. The current delay in the system makes it impossible to strategically seek reexamination of your own patent.

  40. 20

    It’s probably good policy that examination should pay for itself in the aggregate (including maintenance fee collections), and primarily litigation-driven post-grant and adversarial proceedings should pay for themselves in the aggregate.

    Still, at these prices the PTO could outsource the post-grant functions to a prestigious law firm and still realize a tidy profit. What’s really astonishing is the incremental cost of ten more claims in an application already being reviewed – anywhere from about $7k to nearly $35k.

    These proceedings definitely don’t have to be this expensive to pay for themselves, and people aren’t exactly filing them for fun as it is, and no cost is any real deterrent to any party already in the thick of litigation, so why not make them accessible to regular folk whose fault it isn’t that the patentee came away with 150 issued claims?

  41. 19

    First laugh of the day. Thanks bb.

    Pre 1978, European countries including Germany and the UK used to offer “opposition” pre-grant. In UK, opposition after issue was termed “belated opposition”. Your canny competitors would oppose, and thereby delay your issue indefinitely, thereby delaying the day when you could finally assert your issued claims against them.

    So, when the EPC came in, it provided issue first (and with it the right to assert and enjoin) and, only after issue, the chance to oppose.

  42. 16

    What is a post-grant opposition? Is that some hybrid proceeding where you challenge the patent in the US (post grant review) and in the EPO (opposition). No wonder its so priocey.

  43. 15

    Justice for sale to the wealthy corperations Kapos and Oboma the door. Shut down the system until then this wont work kapos is increasing the complexity of the proceedings to drive up the costs intentionally

  44. 14

    If your gobbledygook “unavailing to your position” and “Such is a non sequitor” is anything to go by, I don’t want to “learn to argue like a lawyer” thank you very much. I know what “counterpoint” and “non sequitor” mean but I don’t understand what you mean by “post in absolutes”.

    Nice that we agree though, that:

    “the CAFC is not a model of consistency or legal certainty”.

    P Harvey, are you there? Share with us your experience in real patent infringement and validity cases in EPC-land, do.

  45. 12


    When you post in absolutes, all one needs is a single example to prove the counterpoint.

    The fact that the CAFC is not a model of consistency or legal certainty likewise is unavailing to your position. Such is a non sequitor.

  46. 11

    You “get to deal with” it do you, P Harvey? That’s great, because my experience of this inconsistency is so thin. Would you be so kind as to divulge to us more of your valuable experience?

    Or is it that you are an assiduous readers of those few notorious cases, like Spannschrauber, in which courts of different EPC countries (some with discovery and cross-examination, some with none) disagree with each other on the facts found.

    And what are you using as your benchmark of consistency within one jurisdiction? The CAFC perhaps?

  47. 10

    We could have guessed this sort of thing would happen when very big business put their man in the Director’s seat.

    Let’s not put all the blame there. Especially when we can voice our displeasure with our votes.

    Don’t you think that this result was known apriori by Congress when Congress granted this authority? I know that I personally called my representatives and explained this (and its ramifications).

    All I recieved was a polite nod and a “We’re going to do this anyway.”

  48. 9

    and the EPO insists upon consistency and legal certainty

    At least until the point that the patent goes national. Then you get to deal with each country’s decisively nonconsistent legal uncertainty.

  49. 8

    Mortimer, people are the same everywhere but, at the EPO, it is not so easy as in certain other Patent Offices for incompetence to survive and prosper. Rather, it soon gets weeded out because every EPO case is allocated to a “Division” of three people.

    Suppose a rogue Examiner is handling a case. It doesn’t get signed off (allowed or refused) till the other two members of the Division have added their signatures to that of the “first member”. Thus, the amount of harm a bad egg first member can do is severely limited.

    Of course, in the supra-national EPO, it has to be examination by committee, because each individual Examiner could be from any one of 40 different EPO Member States, and the EPO insists upon consistency and legal certainty.

  50. 7

    “…the competent deciders at the review instance within the Office do actually understand the content of the claim under review.”

    Sadly, all too often that’s not the state of affairs at the USPTO, where alongside many competent examiners are many incompetent ones. BTW, Max, it’s not like the EPO is immune to the problem, it just occurs there with far less frequency – the percentage of incompetent examiners is much lower.

  51. 6

    With an official fee of about USD 1k to run an opposition through to an EPO Decision, and then (if the decision is not to revoke the patent in full) less than USD 2k to take it to a final decision by the Board of Appeal, and bearing in mind that the full EPO opposition file, in English, will be instantaneously available online, I’m thinking that:

    1. Americans might in future be filing more oppositions at the EPO; and

    2. the EPO will soon be raising its fee for i) filing an opposition and ii) filing an appeal.

    But surely not to these exalted heights.

    What can explain the sheer size of these new USPTO fees? As ever, the Presumption of Validity, as it is understood in the USA.

    Mind you, the notion of the PTO as the authoritative arbiter of claim validity (rather than any court or juryman) is in principle a good thing. If it’s anything like at the EPO, parties to the dispute will see that the competent deciders at the review instance within the Office do actually understand the content of the claim under review.

  52. 5

    This is what happens when you ignore the PTO’s role as an instrument of the public in acting as an ostensibly neutral arbiter of patentability, and instead define the PTO’s role as serving its “customers”, impose lots of additional burdens on the PTO, and then tell the PTO to fund all of its own activities PLUS those of a few other pet agencies of certain members of Congress. (Sound like Pharaoh telling the slaves to make their own bricks.) For comparison, imagine the outcry if the fees to file suit against someone in court were raised like this.

    So it turns the AIA was just a ruse to give the PTO the statutory authority to raise fees through the roof in order to reduce the backlog and ensure patents for the rich only – the same authority that Dudas didn’t have when he tried to do the same thing. Back then I never thought I’d someday think we had it good under Dudas…

  53. 4

    Who cares? None of my clients could afford these fees at even 50% reduction.

    Patent protection for the rich and only the rich.

    We could have guessed this sort of thing would happen when very big business put their man in the Director’s seat.


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