New USPTO Fees

The USPTO has finalized a new set of fees: Final Rules.  Some of the changes:

  • Inter Partes Reviews: (request + post-institution) $30,500 (up from $21,000).
  • Application Filing (Filing + Search + Examination) $1,720 (up from $1,600).
  • Provisional Applications: $280 (up from $260).
  • Extra independent claims: $460 (up from $420).
  • Extra dependent claims: $100 (up from $80).
  • Submission of 800mb of Sequences: $10,000.

These go into effect Jan 16, 2018.

93 thoughts on “New USPTO Fees

  1. Based on Ben’s comment below about reading the comment section to the published rule change, I was struck with the (apparent) nonsense of the response to comment 31 (seeking more elasticity information).

    In other words, “elasticity” is the expected response to the changes in fee levels. You know, the whole point of the Office applying fee changes in order to change (promote or provide deterrence) certain actions.

    Instead of actually sharing any “elasticity” portions of the “in the shadows” fee setting process, the Office instead supplied the following answer:

    In this rule, the Office assumes that the fee rate adjustments are not substantial enough to create a significant and measureable change in demand for existing products and services regardless of entity size.

    If that were indeed true, then the Office has just then removed the basis for making the changes in the first place. You cannot make changes (based on allowed policy drivers) and then turn around and deny that the desired policy impacts are even obtainable.

    By the by, the link provided by the Office contains this outright L I E: “At this point in time, three years post implementation of the January 2013 Final Rule, the elasticity estimates themselves cannot be isolated to be fully evaluated

    (not to be a total ingrate, the link is at least a start to the level of transparency needed under the law – but it is a far cry from this stuff being out in the open where it should be)

  2. March 2013 to January 2018, so 58 months. The total basic utility examination fee increase amounts to a 1.51% annual increase. The CPI increased 1.5, 1.6, 0.1, 1.3, and ~2.1 over those 5 years. Looks like at least the basic utility fees are closely tracking inflation.

    1. Just looking at one portion of the fees is not meaningful.

      1. I think it is meaningful that the most commonly paid fees are increasing only with inflation.

        1. “the most commonly paid fees” ?

          The important thing is how much does it cost from filing through maintenance fees. What is this? A bait and switch?

          1. Maintanence fees appear to have not changed. And as I explained, total basic utility filing fees (i.e., filing +search+exam) have matched inflation.

            Since maintenence is so much more expensive than filing+search+exam, the total real (i.e., inflation adjusted) price of “how much does it cost from filing through maintenance fees” is lower today than 2013.

            1. Do you mean lower (on an inflation adjusted basis)?

              Because on a pure number basis, your statement is not supportable.

              1. Yes. Which is why I used the term “real” followed by “i.e., inflation adjusted”.

            2. Maintenance fees went way up prior to 2013. So, how does it look from 2010 to now?

          2. Maintenance fees are highly time progressive, and more than half of all U.S. patents do NOT have all three maintenance fees paid. Usually because by one of those three dates after issue the patent is considered basically worthless due to technical obsolescence, cheaper alternatives, or other non-commercialization reasons.

  3. How many more “examining resources” are applicants and examiners getting with these increased extra claim fees?

    1. The response to Comment 26 all but states that excess claim fees are used for deterrence purposes.

      1. Maybe POPA can help you examiners out with that.

        Deterrence may drop the number of applicants taking that path, but after paying that (deterrent) amount, you guys are still stuck in a one-size-fits-all widget mentality zone.

        Of course, AAA JJ is slightly off here in that what is paid for is the examination and NOT a “time for” examination.

        Flat rate or otherwise, the fee (and the service to which that fee is paid for) just is no the same as the internal metric of the administrative agency.

        Thinking otherwise is just an ongoing fallacy.

        1. Some day you will get it. You are not paying the Examiners. The Examiners are not tasked by law to do everything the way you want it done. The Commissioner is the one tasked with all the things you want. Your complaint is with him/her. It is the Commissioner who has failed (in your view) to properly assign and monitor the examination tasks. Examiners may as well be called “search and writers.”

          Because at it’s core, your complaint is about where the line should be drawn for the level of quality and detail in examination. No examination can be 100% perfect, there is way too much art in the world. So the Commissioner has decided that the best balance of price and quality is where we are now, and has allotted a certain amount of time to Examiners to do their part of the job within that framework and balance deemed acceptable by the Commissioner. If you want the Commissioner to fix it, focus your efforts there.

          1. Sorry exer, but you could not be more incorrect.

            No one ever said, least of all me, that applicants are “paying the examiner.” We pay the Office. And we pay for a service. How long the examiner takes – or not – I really just don’t care.

            YOU continue to confuse the job you have with the metrics of that job.

            .”

            Because at it’s core, your complaint is about where the line should be drawn for the level of quality and detail in examination.

            At its core my position is simple: The Office needs to provide the service paid for. HOW it goes about its internal business (YOUR metrics) is the Office business and should not effect the service received for the money provided.

            ANY “that’s all the time I have” is simply NOT providing the service paid for.

            My focus is entirely reasonable – and accurate.

            Which in viewing your second sentence is fairly ironic, as it is YOU that is acting as if applicants ARE paying the Examiners.

            1. The Office pays examiners to perform certain tasks in a certain amount of time on average.

              You pay the Office for examination.

              If the Office isn’t structuring its workforce and management to get you a result you want (perfect examination), that is NOT the examiners’ fault.

              I 100% understand your frustration/concern with the examination not being as good as you feel it should be. But that doesn’t fall on the examiners, unless they are not doing what management asks of them.

              1. You don’t get it: what management “asks if you” is between you and management.

                Quite aside from that, a service paid for is what is expected.

                Period.

                That service does NOT come with a “clicking tock” INTERNAL string.

            2. “No one ever said, least of all me, that applicants are “paying the examiner.” We pay the Office. And we pay for a service.”

              Sure.

              But when you drift into “Do your Job” territory, you’re engaging a mirror of that the same misunderstanding. The job of the examiner is whatever the office pays for. End of story.

              1. But when you drift into “Do your Job” territory, you’re engaging a mirror of that the same misunderstanding.

                Pure BS.

              2. Ben, you are obviously a result of KSR and Alice. The applicant certainly has a right to tell you your job. I tell examiners all the time to do their job properly, which about 20 percent do not.

                I use the MPEP and tell them to follow the MPEP or I am going to your SPE.

                And, beyond that, of course the applicant has a say in what your job is as part of your job is engage with the applicant and try to further prosecution.

                You sound so arrogant Ben. You shouldn’t be working in a service oriented job.

                1. When anon acts like an Examiner’s job is not defined by the time constraints that the office imposes, he is effectively telling Examiners that what their employer define as the job is not the job. That is absurd.

                2. There is nothing absurd in understanding the difference between your job and the metrics of that job.

                  Quite the contrary, it is absurd to pretend otherwise.

          2. Some day you will get it. You are not paying the Examiners.

            This is probably correct, but the problem is more fundamental than this. The applicant is not a “customer” of the PTO, paying for a “service.” Examination may incidentally benefit the applicant, but it is not really being done for the applicant’s benefit. The service is being done for the public‘s benefit. When someone shows up at the PTO expecting to “get what he paid for,” he is missing the point of what is supposed to happen at the PTO.

            Of course, precisely because the public is the intended beneficiary of patent examination, it probably makes more sense for the public to pay for most of it. It might also make more sense for the public to pony up enough funds to see that examiners have more time per application to search and examine each application more thoroughly.

            1. Dozens,

              Your views are also incredibly wrong. The Quid Pro Quo indicates that TWO parties are involved.

      2. “The response to Comment 26 all but states that excess claim fees are used for deterrence purposes.”

        Yeah? So? What’s your point? Regardless of whether it’s for “deterrence” or not, what is the reason for not providing what was paid for when applicant decides applicant doesn’t want to be deterred and pays the fee?

        1. likely the confusion between the service paid for and some internal metric of that service….

          1. I think that made that icon for you anon.

        2. I was aware that excess claim fees are an issue of yours, and I thought you might not know that the office’s policy isn’t that excess claim fees pay for excess examination.

          I agree that the policy is despicable.

  4. It still confounds me that the PTO is not tax payer funded and depends solely on user fees. How can you guarantee that it’s going to be objective when there’s a moral hazard? It charges relatively far less for regular examination in comparison to an IPR: doesn’t this create the incentive to issue as much low quality patents as possible so that they can increase the revenue with IPR filings to fix their own mistakes? Why is the system setup this way?

    1. How would tax payer funding resolve that issue?

      I do not see that where the money is coming from as being the driver of the “moral dilemma”

      1. True, the funding source is not the driver of the “moral dilemma.” Instead it is the way the Office structures its metrics. If examiners get more “credit” for “riding the RCE gravy train” then there will be those that do that, regardless who foots the bill.

        1. Instead it is the way the Office structures its metrics.

          Well, at least we agree on that.

      2. As I understand, PTO does not get any fees if the patent is rejected. However, it gets maintenance fees if the patent issues. It’s evident that PTO cannot survive financially without the maintenance fees since the examination fees clearly cannot cover the cost of examination by itself. Thus, one would expect PTO to issue as many patents as they can to pay the bills. This might be what led to the number of low quality patents that we are seeing. This dilemma would not happen if PTO was tax payer funded because there won’t be an incentive to issue patents just to pay the bills. Apparently, there was a time when PTO was a “rejection” office. Did PTO have fee shortage and change any process to increase the number of issuance to what it is now? There are lots of questions involving moral hazard stemming from the way this system is setup.

    2. I don’t have a problem with a user-funded patent system, so long as the fees are reasonable (which I think that they are).

      Government-funded systems get rationed. Remember the RCE limit that Jon Dudas was proposing? Imagine the gamesmanship arising from that kind of system – examiners could just tread water and wait out the clock. (Of course, that happens to an extent now – but I think that it would be much worse in that kind of system.)

      If you want to take issue with costs, consider the enormous disparity between prosecution and litigation. There’s something strange about a patent system where most applicants can afford to win a patent, but only extremely-well-funded patentees can afford to enforce it.

      I believe that it’s no coincidence that nearly every “patent reform” effort –
      IPR, venue-shifting, fee-shifting, and the morass of 101 law – increases the financial risk and/or inaccessibility of patent enforcement. It’s become the sole domain of big players, and it has insulated them from lawsuits by individuals and startups. That is a serious problem, and also widely unrecognized.

      1. That is because David there has been a concerted effort to provide a different narrative, not only on this blog, but nearly universally throughout academia and “friends of the court” – as well as the well-monied Infringers Rights crowd, who would rather compete on (established) non-innovation factors.

        More than one “philosophy” have waged their campaigns against patents.

        1. Yes, I agree.

          I find it interesting that academia and business are operating with nearly contrary agendas – academia wants to constrain patent rights into a “flash of genius” test, and practically eliminate patent rights for disfavored technologies like software; business wants strong patents rights for their inventions and avoidable patent rights for everyone else.

          Despite this conflict, these contrary agendas coincide in one respect: taking patent enforcement out of the realm of feasibility for individual inventors an small business – which is unsurprising given the absence of any voice advocating for these parties in the discussion and among the stakeholders pulling the levers. It’s a regrettable state of affairs without a hint of improvement on the horizon.

      2. “Remember the RCE limit that Jon Dudas was proposing?”

        The PTO could still implement that. Why don’t they? (That’s a trick question, BTW.)

    3. “doesn’t this create the incentive to issue as much low quality patents as possible so that they can increase the revenue with IPR filings to fix their own mistakes?”

      That issue pre-dates IPRs as maintenance fees subsidize examination fees. Do you also want to get rid of that incentive loop?

      1. Ben,

        The two vectors point in opposite directions.

        Further, with the examination fees set in their tiered structure, the “policy” objective of pushing for “use it or lose it (or at least pay more for not using it)” is not nearly as distasteful as the “you lose it if someone else sees value” resultant of the IPR system.

        The biggest joke of the IPR system is that it is STILL being “pushed” as some type of “quality” program.

        Anyone – and I do mean anyone – with any real world experience at all can quickly tell you that a “close the gate after the horse are gone” POST-GRANT “warranty” type of program – with ZERO tie to the actual examination process, will not (and cannot) provide any sense of the “quality” that is being sold.

  5. You know, typically, the IP department of corporations have a budget that includes all these fees. So, the fees going up at the PTO typically puts more pressure on the fees the corporations pay for OAs, applications, etc.

    The way to think about it is the patent has a certain value and the corporations are willing to pay so much for the patent. The more inefficient the PTO is the less attorneys/agents get paid.

  6. If practitioner billing rates go up every year, then it seems only reasonable that PTO fees do as well. The IPR fee increase could warrant closer scrutiny, but it’s probably still a great deal for many petitioners.

    1. I don’t know about the logic of that. The billing rates of attorneys is not something the PTO should be citing to justify a rate increase.

      1. What world do you live in? Most non-big law firms have rates that haven’t changed in 10 years. Patent applications are a commodity and the prices are going down not up. Litigation maybe, but transactional work like prep and pros are not increasing every year.

        1. This is right. And, the price is about 60% of what it used to be 10 years ago and there continues to be downward price pressure.

          And, when the PTO raises fees, it comes out of the same budget.

          1. Sport of Kings (much to the Infringers Rights peeps delight)

          2. Bingo BB & NW.
            And lets not forget that large entities pay most of these fees, and that a substantial portion of their fees are fully subsidizing the very large fee reductions for small entities and micro entities.
            IPR PTAB trials and decisions are vastly more time consuming and thorough than ex parte appeals and their decisions. But still incomparably cheaper than the costs of patent litigation even to the suing patent owner triggering the IPR, much less the defendant requesting it. This $30,500. PTO IPR fee would only buy 38 billing hours of an $800./hr trial lawyer. That would not even scratch the surface of the work required just to figure out before suit some of the problems with patents being written and prosecuted on the cheap these days.

            1. Paul, good point about the subsidy. Consider what the system would look like if it were like the (socialist) income tax we have: the top 1% of filers would have to pay 50% of all fees; the bottom 50% would pay nothing.

              Let’s all wave our red flags, dance a jig, and cheer Rousseau and Marx.

          3. Old-timers have amazing stories about what patent work used to cost.

            And on the other hand, the quality of work product was awful. Early in my practice, I remember seeing a lot of office action replies like this:

            > Examiner’s arguments are moot because the claims are currently amended. Reconsideration is requested.

            …full stop. The entire office action reply, other than the claims, was 2-3 pages long.

            I presume that the rise of boutiques, the increased attention and sophistication of clients, and the focus on usable patents (rather than stockpiling a defensive arsenal) has applied some needed pressure to the field. And while prices fluctuate, I think that they’re much closer now to the actual skill, attention, and time that good work requires.

            1. I don’t know David Stein. Probably that response that the OA is moot because of the claim amendments is sufficient if the attorney believes that the new art will be found. I am not sure that is bad response.

              What I have seen after doing this for close to 14 years is that there are two main types of prosecutors. There are those that write short concise OAs that deal with the substance of why the claims are patentable, and OAs that are filled with lots of boilerplate language and do not make a lot of sense.

              The problem is that the giant boilerplate OAs often get allowed almost as often as the substantive OAs.

              From what I’ve seen there are these people in management positions at law firms that just bloat an OA and don’t care that much about the substance and meaning. Often, I have found the OAs to be incomprehensible.

              I blame these people on the USPTO for poor examination. The fact is that few OAs need to be more than two pages of comments. The rest is just obfuscation and the reason it is there is because it gets allowed.

              I once looked through our portfolio for a large client and was amazed at the number of allowances that made no sense. The OA was gibberish with boilerplate nonsense, and yet allowed.

              1. I always wonder if 6 is collecting all the bits of information about me to unmask me.

        2. So….

          To follow JCD’s advice, the Office should be charging less….

          Hmmm.

        3. That’s a fair point with respect to prosecution fees, although there is an argument that IPRs are closer to litigation than prosecution, which would suggest fee increases might be more expected.

        4. Do firms really not adjust costs with inflation?

          1. Firms really do not adjust PRICE with inflation. Price is adjusted based on DEMAND. And right now, demand is for lower cost prosecution. If a firm raises price, they will lose customers, because there are fewer people willing to pay higher prices for prosecution.

            There are some firms that are uniquely specialized that might be able to command higher rates, but that is not the case for prosecution as a whole.

  7. As usual (and seemingly the only one that appears to notice), the USPTO fee setting authority as provided by the AIA is NOT unlimited, and requires that any fee setting be shown to be neutral in the aggregate.

    Let’s see the Office calculations for these fee changes (a 50% increase in IPRs… wow) and how the levels chosen are in accord with the law.

    1. Remember, folks: “anon” and his bros are all about “patent quality.”

      Sure they are.

      1. Your ad hominem is (once again) mindless and off-kilter.

        Or is a Federal Agency running amuck and not following the law somehow your idea of “quality”…..?

    2. We knew from previous data that the IPRs weren’t paying for themselves. So, the IPR increase is not a surprise.

      1. I am curious as to the support for “not paying for themselves.”

        Be that as it may, I would still love to see the supporting basis for these and any fee justifications as required by the AIA.

        1. It can be noted that the particular relatively high increase for IPRs may include two “subtle” indicators:

          1) see this courts? There’s no need to take this tool from us as we are trying to reduce “gaming” by making this really expensive.

          2) see Infringers Rights peeps, by making this really expensive (a la Sport of Kings), the tool is less likely to be used by innovative start-ups, leaving this in the domain of those would rather compete on the established business factors that staid incumbents have more of.

          We really need to take away the Kool-aid that “patents are b a d.”

          1. The evidence was that other post sometime ago about the rest of the fees subsidizing the IPRs.

            I agree that this appears to be a signal to the SCOTUS that we are trying to get this more fair.

            1. If that be true, then that is even more reason why the inside ‘books’ and (required) NET justifications need to be scrutinized.

          2. Liquidated damages are not sufficient to offset the disparity of risk between a single patent holder and the world of serial IPR filers (remembering that the stage one forum purposely does not have a Standing requirement).

    3. I would also like to see that, in accord with the law. There have been reports that the AIA IPR budget is heavily subsidized from money that should be going to examining. Which means that Applicants get to (1) pay more for examination than it actually costs, and then (2) have that extra money go towards APJs later cancelling their patents. They get to pay to get and cancel their own patents!

  8. What we need is liquidated damages to be paid by an IPR petitioner to the patent owner in the event that a petition is denied or that any challenge claim is sustained. I suggest the damages begin at 1 million, and that the IPR petitioner be required to post a bond.

    1. Well that would fix it.

    2. Ned, are you kidding or serious? I really can’t tell. $1 million?!

      1. patent leather, the patent owner is losing term while the IPR is being conducted. One million seems low, but it is at least something.

        1. Re: “the patent owner is losing term while the IPR is being conducted.”
          ? The patent infringement damages recoverable from the defendant in the patent suit triggering the IPR are still accumulating even if the suit was stayed, and in almost all cases the IPR will be concluding before the trial date for the suit even it was not stayed. Nor does the existence of a pending IPR preclude filing additional patent suits.

          1. Paul, a straw man argument if every there was one. One has to actually file suit in order to preserve damages. Against everyone else, the lack of enforceability means that damages are lost as they pass beyond the limitations period.

            1. Who’s straw man? Waiting to file suit until after an IPR decision is the opposite of what I was talking about, and the opposite of the normal IPR situation. Back damages are only barred from recovery for delaying filing suit and only for infringements that occurred more than six years before suit, absent a marking violation. An IPR does not change the term of a patent or its period of enforceability or prevent suits from being filed unless and until it concludes with removed claims.

              1. Paul, what you are saying is that patent owners have to actually file suit to preserve damages while the IPR plays out. Infringers have no reason either to settle or to stop infringement before the IPR is final.

                1. …not to mention the “cloud of title” that can be perpetuated by nonstop serial filing (of anybody without standing) against the single patent owner (not to mention, as this is already mentioned above at 5.2.1.1.2)

  9. Looks like an RCE goes up to $1300 (+$100) and the appeal forwarding fee goes up to $2,240 (+$240) large entity.

    1. The appeal fees go up, but not nearly as much as originally proposed and proportionately not as much as RCE fees. The USPTO appeared to find AIPLA and IPO’s comments persuasive. link to anticipat.wordpress.com

  10. $10,000 buys a lot of 800mb thumb drives.

    1. I am really scratching my head about that $10000 penalty fee for large sequence listings. Sequence listings are not really much use to the applicant. For the most part, the only reason we assemble the things is that the PTO makes us to do so. The reason why they make us to do so is because they are using our sequence listings to build a searchable gene & protein database for examination of future applications. In other words, the sequence listings are for the PTO’s benefit, not the applicant’s. You might think that they would be pleased to get really large listings, because that constitutes a large chunk of data for their database.

      I could understand the surcharge if it were technologically difficult to handle all of that data, but as you note, the equivalent amount of storage technology can be purchased for ~0.1% of what they are charging. Why so large a surcharge?

      1. The good news is that these things are submitted as TXT files, so to reach 800 Mb, you really a monumental amount of sequence data. I went and looked in my files, and I cannot see that I have ever submitted a sequence listing larger than 66 Mb, so my clients are unlikely to run into that surcharge any time soon.

        1. Yes, I think those particular fee increases are meant as a deterrent. The PTO points out that the apps citing those mega-sequences aren’t claiming the sequences but rather methods of searching/manipulating sequence data. The PTO seems to believe that mega-sequences don’t need to be submitted for that purpose. Hence the deterrent.

      2. The Notice notes that less than 10 applications a year exceed 300MB.

        1. And with that few numbers . . . it might actually cost $100,000 to implement a storage and search features for such large files, so if 1,000 applicants filed them, each would pay only $100, but if only 10 file them, the Office still needs to cover thatn $100,000 expense.

  11. Allowed dependent claims should not count as independent claims; if rewritten into independent form.

    1. And if they restrict the claims, they should refund the money for the claims that are restricted (assuming there are more than 3, 20).

      1. I’d prefer a hard cap at 3/20 (or less) at filing, but an unlimited amount of dependent claims could be added without fee once a claim is allowed.

    2. I’m for this. It could also ease examination if we could focus on what Applicant actually wants allowed, and then after allowance, they can add as many dependent claims or independent claims with overlapping features as Applicant wants.

      1. These are good ideas. Seems insane to charge extra for a claim that’s allowed (a dependent claim written into independent form).

    3. Ahmen brother. I’ve been singing that song for quite a while. Welcome to the choir.

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