Fees Rising: USPTO Proposes New Fees in Search of New Revenue

The USPTO has issued a notice of proposed rulemaking (NPRM) on patent and PTAB fees with the goal of raising revenue in order to improve patent quality and examination timeliness. Public comments are due by December 2, 2016.

The proposal includes:

  • Major increase in inter partes review fees – from $23,000 to $30,500 (petition + institution).  Similar increases for PGR and CBM.
  • Large fee increase for patent applications with > 3 independent claims or > 20 dependent claims
  • Large fee increase for design patent search, examination, and issue fees — hopefully the PTO will increase its quality on that front.
  • New fee for sequence listing submissions of > 300 MB ($1000) and > 800 MB ($10,000).
  • Ex parte appeals +25% (up to $3,500)
  • Standard fees for utility applications are relatively steady => only about 10% increase.


Read More and Comment:

75 thoughts on “Fees Rising: USPTO Proposes New Fees in Search of New Revenue

  1. 10

    I don’t get it.

    The PTO charges people to examine their patent applications. During prosecution, the PTO often makes spurious rejections, forcing applicants to waste time and money. Eventually it grants patents. Then it charges other people even more money so it can say, “oops, we shouldn’t have granted that patent”, without an apology or refund to the hapless applicant/patentee. And now it wants to raise fees to engage in both of these activities, while patting itself on the back for “improving patent quality”, whatever that’s supposed to mean. What a racket.

    1. 10.1

      the hapless applicant/patentee

      Maybe we should allow the applicant the freedom to review the art and figure out what was new and then draft the claims before the application is even examined.

      Oh wait …

      1. 10.1.1

        You really did miss the point there Malcolm.

        This certainly has nothing to do with your misdirection of applicants themselves being able to search the prior art. That has always been the case and is certainly a worthwhile (even if NOT required, which it is not) best practices item.

        No one is arguing otherwise.

        The point here though is very different.

        Maybe you want to try again and see if you can figure out just what that point is.


          The point is that if you engage in best practices, understand the prior art, and draft good claims that take the art into consideration, then you’re not hapless.

          If you spend your money on fees and draft junk claims and you get junk claims out, then you are certainly hapless.

          The PTO isn’t there to write your claims for you.

          Of course, if you’re incompetent and have no clue about the law or where the law is heading and you can’t write a decent claim to save your life, then you (or your client) get pretty much what you deserve from the patent system.

          I recommend going to a real expert like you or Gene Quinn. You know, someone who can’t tell you whether the First Amendment applies to the patent system.



            That is not the point, Malcolm.

            Try again.

            (this might be really hard for you – but the point is not the point that YOU want to make here – put your ego aside for just a moment)

  2. 9

    Once all the “do it on a computer” junk is expunged from the system, the PTO might have a chance at getting itself into better shape.

    But as long as the Office remains committed to examining “new logic” without any remotely thoughtful paradigm set up for that task, it will always be on the losing end.

    A fraction of players within the PTO, of course, might have to look for other jobs …

    1. 9.1

      Not a surprising comment if it comes from someone that has never been in the position of arguing for patentability in view of the subjective standards of Alice (“abstract”) or KSR (“ordinary creativity”). I have no idea whether this comment applies to you or not. But, to be so far in the corner of Alice and KSR decisions without actual experience with their application sounds a lot like Trump arguing that he knows how to govern.

      1. 9.1.2

        In response to iit, KSR is plainly relevant to everyone who prosecutes. Alice less so, but Alice is just Mayo applied to information-related patents “on a computer”.

        The rest of your comment was unintelligible so I’m not going to respond to it.

      2. 9.1.3

        Now, that’s an astute comment!

        By the way, I don’t think KSR gets the time it should, for being one of the worst decisions ever written. I don’t think it’s possible to win a 103 argument these days, and KSR is the reason why.


          I don’t think KSR gets the time it should, for being one of the worst decisions ever written.

          Too true. The SCotUS so thoroughly “jumped the shark” in Mayo/Alice that people have been allowed to forget how truly awful is the “reasoning” of KSR. That whole opinion is riddled with rookie level mistakes of patent law that probably have both Judge Rich and Commissioner Federico still spinning in their graves.

          One more thing to add to the list of needed statutory revisions for Congress to take up.

      1. 9.2.1


        KSR! Boo hoo hoo! Alice! Boo hoo hoo! Rogue judge! Boo hoo hoo! Rogue examiners! Boo hoo hoo! Star Chamber! Boo hoo hoo!

        Get off the high horse, “anon.” Oh, and if you want a good laugh, check out your mentor’s cry-fest. Just be sure not to bring your “A-game”.


  3. 8

    Hopefully these fee increases will allow the PTO to max out its current practice of reject, reject, reject based on Alice and Bilski decisions – the classic 1-2 punch. Rejections are now easier than ever to issue, yet fees keep increasing.

  4. 7

    Don’t know about the impeachment stuff – wasn’t in my posts.

    So love though the same old Malcolm and the choice of the word “sycophant”

    Yay ecosystem – Malcolm being Malcolm

    1. 7.1

      Don’t know about the impeachment stuff

      LOL Of course you don’t remember that! It only went on for about three years.

      But it looks like Dennis didn’t like my exposing everybody’s favorite shill for the hypocrite know-nothing that he is (again). At least not in this thread.

      How odd, “anon”, that you aren’t objecting to the “perception of bias” that flows from such editing. That was a favorite activity of yours once upon a time. I wonder what changed?


      1. 7.1.1

        By “I don’t remember it” o mean to say that you are barking up the wrong tree attempting to impugn me with someone else’s views.

        Yes, I am well aware that you like to lump anyone who doesn’t agree with you into the same (bottomfeeder) bucket, and that this is because of your massively over-sized ego and equally undersized-mental prowess, but I simply don’t remember the details to which you were referring to.


          Because nobody can remember you and Eric endlessly high-fiving each other with your “Royal Nine” weeping and moaning.

          It’s almost as if you guys think nobody is aware that you perform your Bobbsy Twin routine at every other patent blog on the Internets, 7 days a week.

          Tell us a funny story about “rogue” Judge Mayer and how he should be “punished”, “anon.” Did you write to your Congressman yet?


            The “Royal Nine” label goes to a different concept.

            You really need to not lump everyone who disagrees with you into one giant “other” bucket.


              The “Royal Nine” label goes to a different concept.

              Oh, and I’m sure it’s a very very serious concept, too.


                Whether or not it is a “very serious” concept is quite beside the point that your “lump them altogether” mindset is “seriously” deficient.

                Just occam again showing that you really don’t give a rats arse about any dialogue.

                Yay ecosystem!

                1. Whether or not it is a “very serious” concept is quite beside the point

                  The fact that you two are patently unserious cl0wns who are wrong about pretty much everything is precisely the point.

                  In that regard, Eric has the edge on your because he at least knows that the Supremes are going to unanimously flip that wretched Promega v. Lifetech decision.

                2. patently unserious cl0wns who are wrong about pretty much everything

                  LOL – in your mind – but that STILL does not mean that your type of drive-by, empty ad hominem and unwillingness to treat issues and what people actually post with inte11ectual dishonesty is the proper means to getting what you desire.

                  Move the goal posts back, please, and address (as that term actually means) what I have actually written.

                  Not sure where you think Promega comes into the discussion. What is it that you think that I have said about that case that fits this discussion here and now?

  5. 6

    All fee increases should be opposed as an innovation tax until Congress agrees to end fee diversion and never again use the USPTO as a cookie jar.

    1. 6.2

      I agree. The devil in all of this is congressional fee diversion or sequestration during the budget and appropriations process. The PTO can collect all the user fees it wants, but won’t be allowed to spend it for user services beyond the fiscal year limits provided for in the appropriations bill. Anything collected over and above that amount is effectively a tax on innovation. Fees should be capped such that the total amount collected doesn’t exceed the amount appropriated for spending.

    2. 6.3

      Agreed. I also think the USPTO needs to be reformed.

      More accountability, more efficiency and improved quality.

      The lack of quality within the USPTO costs industries and applicants huge amounts of money and time.

  6. 5

    A surprise proposed PTO fee reduction among all these fee increases was noted by Scott McKeown on his post-grant blog. A “streamlined” ex parte reexamination with a 50% fee reduction.
    At only $3,000. for small entities and $1,500 for micro entities [and no deposition or other trial expenses] this would provide a low cost way for a small business or startup in particular to challenge [or threaten to challenge] a patent being asserted against it, if they have solid patent or publication prior art. Very much less expensive than an IPR or CBM [albeit typically at least a year or more slower and with no opportunity to challenge patent owner arguments].

      1. 5.1.1

        Anon, this special reexamination is a reexam of a limited number of claims, and like all reexams, will be examined by examining corps CRU examiners, not Board APJs. Also, the present regular reeexam fee had been a huge increase from the prior reexam fee when it was adopted. What can really run up PTO reexamination costs and delays is the virtually unlimited opportunity for the patent owner to add any number of new [narrower] claims, which have to be examined and responded to solely by the PTO reexam examiner. It was never fair to make the reeexam requester pay for that increased cost.


          I believe you Paul – My point is to something different, and I merely noted onto your post because you provided an example of costs going down.

    1. 5.2

      PM: At only $3,000. for small entities and $1,500 for micro entities [and no deposition or other trial expenses] this would provide a low cost way for a small business or startup in particular to challenge [or threaten to challenge] a patent being asserted against it

      Just to be clear: it’s not necessary that any patent actually be asserted before it can be thrown into this re-exam program.

      1. 5.2.1

        Good point [only a CBM has that requirement]. Very few patent claims are attacked in any post-grant proceeding by someone not having a product or proposed product they feel threatened by, or a hope to avoid a potential interference. E.g., 85% of IPRs are filed by defendants already actually sued for infringement, and several of the other 15% have customers of their products that are being being sued.

  7. 4

    A fee for USPTO-Assisted Recovery of ID or Reset of Password and USPTO-Assisted Change of Address? Service is really going to the dogs. I hope, at least, that with that money, they will invest in better hold music.

    1. 4.1

      OMG. First they make it very difficult to do business with them without computers, internet and passwords and certificates. Now they want to charge people who have trouble with their every changing system, password and certificates?!?! OUTRAGEOUS!

      1. 4.1.1

        Now they want to charge people who have trouble with their every changing system, password and certificates?!?!

        Thank goodness we have a patent system to promote all these awesome improvements in password-secured access. Otherwise they’d never happen.


          You do realize that the retort of “otherwise it would never happen” misses the mark of “promote,” right?

    2. 4.2

      Bless you for noting the on-hold music which hasn’t changed in at least 16 years, probably four times that, and the audio tape is badly worn making the sound quality atrocious. No doubt no one in the Office has any idea how to change it, let alone any authority or will to do so.

  8. 3

    If the PTO could demonstrate that fee increases improve patent quality, it would be some justification for this money grub. Since there is no evidence of even a correlation between fees and quality, let’s just call it business as usual.

  9. 2

    I am not an accountant, but wasn’t part of the fee setting power a stipulation that any changes in fees (in the aggregate) match the budgeted or allotted total that the Office has been designated to work with?

    If so, this 5% net increase needs to have a corresponding 5% net decrease somewhere else, since I do not see where any of this has been tied to any total budget increase.

    If not, then where is the control or tie to (and why bother) with a sanctioned budget? There would be NO restraint (or aim for efficiency) and the Office could then hike fees beyond the budget (another tax on innovators).

  10. 1

    Large fee increase for patent applications with > 3 independent claims or > 20 dependent claims

    How large are we talking here? Extra dependent claims in the U.S. are insanely cheap ($40/claim for a small entity). If that were to double, for example, it would still be fairly inexpensive.

    Nevertheless, I have long thought that it was only fair that extra dependent claims are inexpensive in the U.S., because the USPTO is so persnickity about multiple dependencies. Meanwhile, in Europe they will charge you through the nose for an extra claim, but on the other hand the EPO is quite willing to examine your dozen different multiply dependent claims. In other words, both systems are fair in their own way. If the U.S. were to charge EPO prices for extra claims, however, then this really would not be fair.

    1. 1.1

      Extra claim fees are a complete waste of money as the PTO does not provide what is paid for, i.e. “extra examining resources for extra claims.”

      Nobody should be paying extra claim fees.

      1. 1.1.1

        I disagree. You do get more examination in return for your extra fees. Not a lot of extra examination, but for only $40, what else should one expect?


          “I disagree.”

          You’re free to. You’re free to be wrong, too.

          ” You do get more examination in return for your extra fees. ”

          No you do not. The amount of time the examiner gets to examine the case is fixed. It is not adjusted (i.e. increased when extra claim fees are paid.

          You should know this.


            AAA JJ,

            I think that the “amount of time” is a bit of a misnomer.

            That is an internal Office metric.

            What “should be known” is that what is paid for – in the end – does not really change: a full and a complete examination under the law to provide one with a vested (personal) property right, or a valid rejection with sufficient explanation as to why the application fails to meet the legal requirements.

            The “fee” for extra claims is more like a surcharge, than a fee for services (since as I mentioned, the sum total service remains the same).

            Granted, the Office does not really do the situation justice by creating the impression that extra resources would be aligned with the extra charges.

            But at the end of the day, let’s not let the Office imprecision in the extra charges area confuse what the actual deal (contract) between the Office and the applicant is.


              “I think that the ‘amount of time’ is a bit of a misnomer.”

              I don’t think so. The GS-12 expectancy (i.e. hrs/BD) for every class is fixed. If the expectancy for a case classified in class/subclass ABC/XYZ is 20 hrs/BD, the examiner gets 20 hours to “dispose” of the case, whether it has 20 claims, 30 claims, 40 claims, 100 claims, 1,000 claims, 5,000 claims, or 10,000,000,000 claims.

              Of course the 20 hours is the “amount of time” they get “credit” for. So if they get 20 hrs/BD, in an 80 hour examining bi-week they need 8 “counts.” I prefer to have an examiner spend his 10 hrs/count examining my application with 20 claims, not 30, not 40, not 100, not 1,000, and certainly not 10,000,000,000.

              I guess Greg’s “point” is that you get “more examination” because you got 30, 40, etc. claims examined. If that’s what you think is worth paying for, I’m not going to stop you.


                AAA JJ,

                While all the details that you provide may be true, all of those details are still internal metrics and do not change the end of the day bargain that an applicant and the Office have struck.

                You will note that nowhere in the fee schedule is the designation that your fees only entail you to a sum total number of hours of examination. Instead, you pay to have the application examined – and that means fully, and competently examined in order to provide you either of the two things I mentioned above.

                My point is expressly different than Greg’s and should not be confused with whatever point that he is trying to make.

                1. “While all the details that you provide may be true…”

                  They are. I was an examiner. And I have many friends who are examiners. I know exactly how the production system works.

                2. That’s nice AAA JJ (you should note that I am not challenging that point) – but please read on beyond that point and arrive at the larger item.


            40 claim applications will probably receive more time from the average examiner. But as they get no extra time, it will be far from a proportional increase. So even if you are getting more total time, you are reducing you examining time per claim.


              …and this is the type of “bad math” that is generated by confusing internal metrics and the real deal.

              Ben, please do not confuse the measurement of the work with the work itself.


              Or you pay for 40 claims, and then after the restriction requirement and species election you’re left with four. Cheaper to file two applications with 20 claims each and get 8 claims examined.


                Cheaper, maybe, but it is frequently worth the extra cost to get the restriction requirement first. That way you get the benefit of the 121 safe harbor from double patenting attack.


            So, a case with 1,000 claims gets the same time for the Examiner as does a case with 20 claims? If so, that’s freaking insane. Why even have extra fees for claims then?


              When I was an Examiner, I believe the ad hoc rule in my Art Unit was that you get 1 hour of “other time” for every 10 claims over 50…or something like that. So no, not the same time for 1000 claims as for 20, but that fact was completely detached from the the excess claims fee paid by applicants that was ostensibly designed to pay for the extra examination.


                That’s not in the examiners’ PAP I don’t think. Any “other time” that is granted for extra claims would be at the discretion of the SPE.

                1. It wasn’t. But even if it was, the system would be inequitable, because applicants don’t pay for excess claims beyond 50 or in chunks of 10 claims, and instead pay for every single claim beyond 20. Moreover, excess claims adjustment should not be made by providing “other time,” because it is in fact time spent examining, not doing something else.

                  AAA JJ, if it wasn’t clear from my last post, I’m in 100% agreement with you on this issue.

    2. 1.2

      Also, instead of “20 dependent claims”, doesn’t it mean “20 TOTAL claims”? Or is it now dependent claims?

    3. 1.3

      Greg I’m glad to read what you say, that both systems are “fair in their own way”. But I have the feeling that not a few US patent attorneys do not understand how to draft economically a set of claims for everywhere in the world except the USA, namely with “multiple dependency”.

      Such a claims set is a geometrical progression of claimed combinations of technical features. A set of 5 multiple dependent claims has as many feature combinations as a set of 120 singly dependent claims.

      And then there is the issue of what constitutes a single invention. At the EPO you can have 15 claims, all independent, all directed to different aspects of a single inventive concept, all going to issue in a single patent, with never a cent of official claims fees having been paid, at any time from filing to grant. Not bad, eh?

      1. 1.3.1

        with never a cent of official claims fees having been paid, at any time

        You mean not including the annual fees that hit even while examination has not completed, right?

        (“never a cent” does not seem to fit)


          You are worried about annual maintenance fees at the EPO? You think they are burdensome? Would you then rather get fast to issue, whereupon you find yourself paying the annuities in anything up to 38 national Patent Offices of the EPC Member States?

          Most Applicants, most of the time, are content for grant by the EPO to be as late as possible. That way, the competitors don’t know i) how wide is the scope they will have to design around and ii) how many divisionals you will file when you see their device.

          And if somebody starts showing signs of infringement, even while you EPO case is still pending? Press the PACE button and zoom to issue quick sharp, and then on the day of issue ask the court for interlocutory injunctive relief from the infringement.

          Don’t you like the principle of “You pays your money and you takes your choice (fast track or slow)” or what?


            Neither worried nor necessarily burdensome, MaxDrei.

            You did not read my post closely enough and seem to want to jump to a quick assumption one way or another.

            I merely pointed out that your “never a cent” is neither “never” nor “just a cent.”


              Oh, so claims fees are payable to the EPO on a set of 15 or fewer claims, are they? Is that what you are asserting?


                I am asserting exactly what I stated.

                First you jump to wrong conclusions, now you want to try to be confused by what I stated….

                What I stated is clear, simple and direct. Why are you confused?

      2. 1.3.2

        I have the feeling that not a few US patent attorneys do not understand how to draft economically a set of claims for everywhere in the world except the USA…

        A few responses:

        (1) I broadly agree.

        (2) That said, I would quibble with “everywhere in the world except the USA… .” An EPO-optimal claim set is not necessarily Canada-optimal or Mexico-optimal, or even China-optimal.

        (3) In fairness to us Americans, I would also note that I have worked with quite a few EP attorneys who do not know how to draft a US-optimal claim set, and who really do not understand that multiple dependency does not work the same way here that it does under EP claim construction standards. This is as much as to say that we U.S. attorneys should rely on the expertise of our EP colleagues for EP matters, and EP attorneys should rely on our expertise for U.S. matters. A lot of headaches come from the far-too-common expectation that it should work the same way “there” that it does “here.” It might well be a better world (at least for our clients) if we would harmonize standards more, but such is not the case yet.

        (4) Getting back to my broad agreement of point #1, however, I can certainly remember more than a few occasions where I was prosecuting an application that I did not draft, and where the client was frustrated that they were either going to have to (1) live with less thorough protection in Europe or (2) pay a fortune in extra claim fees to include all of the dependent claims that they wanted to include. I have had to bite my tongue to stop myself from saying “you could have saved yourself a lot of money now if you had been willing to pay a little more up front to get someone who knew what they were doing to draft the support necessary to use multiple dependency in your EP regional phase.”



          I broadly agree with your broad agreement.

          Where the (typical) MaxDrei slippage is at is in thinking that EP ist uber alles, and that each and every sovereign is still sovereign (there is NO “One World Order.”


          (2) Agreed, Greg, countries like Canada, Mexico and, yes, China, are at least as heavily influenced by the USA as they are by “Europe”. I would add Japan to that list. That country is always trying to reconcile American and European requirements, lamenting there is still no global claim-drafting standard.

          (3) Agreed. Cobblers and lasts come to mind.

          (4) Agreed too on the imperative of good quality drafting. It’s imperative in any jurisdiction that is First to File (as patent people in the USA will soon be finding out).


            Good quality drafting is imperative in ALL jurisdictions, First to File and otherwise.

            The attempt to distinguish this is misaimed.

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