Comments on USPTO Proposed Fee Changes

The USPTO has proposed a major set of patent fee revisions. One purpose of the new fees is to raise revenue. It is also clear that the proposal is designed to shift patent applicant behavior along certain fronts.  You can read more at the following links. Note, that the PPAC will be holding a public hearing Thursday, May 18, 2023, from 1-3 p.m. ET.

I submitted a brief comment arguing that before any fee shifting occurs, it is essential to conduct an economic analysis to forecast the impact on USPTO revenue and on innovator behavior.  In the commentary, I outline four general categories of fees, including (1) fees designed to raise money for the USPTO, (2) fees that create a costly screen, (3) fees that shift behavior without substantially shifting rights or raising overall costs, and (4) fees that discourage certain behaviors that result in a loss of rights for users. Each of these categories has potential major impacts, but categories 2 and 4 raise special concerns.

In the commentary, I identify eight specific proposed fee changes that require special attention by the USPTO chief economist or other economic experts. These include new and increased fees for AIA Trial filings, new large costs for terminal disclaimers, and substantial increases in fees for additional claims, among others.

Read it here: ltr.20230510.FeeShifting

38 thoughts on “Comments on USPTO Proposed Fee Changes

  1. 10

    Has anyone reviewed the USPTO budget or done a FOIA request to see how much they are paying for activities outside their primary authorized scope of examining patent applications?
    It seems that they could cut superfluous tasks like making children’s playing cards and sponsoring Nascar before asking applicants to pay more in fees. Perhaps those “services” are part of the 100+ million budgeted for “Mission Support” informational resources (compared with Trademark IR at 60 million and Patent IR at 150 million. (See budget at: file:///C:/Users/user/Downloads/USPTO-FY2024-Congressional-Budget-Submission-1.pdf; USPTO sponsoring Nascar at: link to; & Nascar sponsorship cost estimates of 300,000 to 10,000,000 per year at: link to

  2. 8

    The USPTO is corrupt & I have been saying this for years! They replaced the ‘super-secret’ SAWS program, with an ‘unwritten’ & ‘unspoken’ of new policy that simply denies broad claims & patents to anyone but especially ‘upstarts’, ‘competitors’ & independent inventors, who could use such patents to ‘force’ licensing by large corporations & monopolies!

    The USPTO is now ‘protecting’ their preferred (full paying) customers from new technologies that could greatly impact them or cost them money! They are PROTECTING the profits of those companies, while ensuring there will be no dilution of their wealth! They do this by actually SABOTAGING the patents of small entities! How? By forcing patents to be as narrow as possible, so that they can easily be overcome, or found to be invalid later!

    After all, those companies & monopolies PAID FOR & WROTE the AIA! But it now turns out the AIA wasn’t enough. The ‘big guys’ don’t want ANY competition from ANYONE. They don’t like innovation they can’t control & own. They want to finish the job they started with the AIA, by just making small entity and independent inventors EXTINCT – once & for all!

    Soon, the ‘innovation economy’ will ONLY benefit them – no one else! It’s already is the case with many drug companies! Inventions won’t level the playing field anymore. Inventions won’t ‘spread the wealth’, like they used to 100+ years ago! The innovation economy will only benefit the ‘already successful’ & ‘already wealthy’ companies! This should be obvious by now! How many rich & famous ‘independent inventors’ does America have now (compared to 100+ years ago)? Know any? I don’t!

    1. 8.2

      “with an ‘unwritten’ & ‘unspoken’ of new policy that simply denies broad claims & patents to anyone but especially ‘upstarts’”

      Disagree with you on that. It’s very spoken that fantasy claims, like the ones you’re referring to, quite often get rejected. If nobody told you yet, you can give me your number and I’ll tell you explicitly over the phone. And I also disagree with you that they’re doing it specifically to upstarts. Upstarts have their own problems in the patenting process, the PTO is not usually explicitly against them, nor as an organization are against them. If anything it’s “for them”.

  3. 7

    Dennis, your survey in the immediately-below blog says: “The USPTO and Courts have made clear that AI-created inventions are outside of the scope of US patent law.” I think that may confuse some lay readers, and that it would be more accurate to say that it is clear that AI-created inventions cannot be patented naming AI rather than real persons as inventors?

    1. 7.1

      I was thinking the same thing. Subject matter of AI inventions can quite literally be in any subject matter category.

      It is not the “scope” of the invention that draws the Naruto-like exception.

      It’s kind of like people (still) insisting that inventions exist without there being an inventor to the invention.

    2. 7.3

      But then AI can also be used to deny patents based on 103 arguments generated by AI, since it would have all the same knowledge (and prior art) used to claim a ‘new’ invention. If the AI could come up with it, then it basically PROVES it’s not a ‘human creation’ & therefore not novel. ANY AI could have come up with it! So instead of POSITA, we could now add COSITA (‘Computer of Ordinary Skill In The Art’). Just giving a computer a few prompts, wouldn’t be enough anymore. We’d have to go back to ‘spark of genius’ again, like in the old days. AI can’t have a ‘spark of genius’ (yet).

      1. 7.3.1

        We’d have to go back to ‘spark of genius’ again, like in the old days.

        You do realize that the term that you have glommed onto is from the opposite of the good old days – the era from which the Supreme Court self-described with “the only valid patent is one that has not yet appeared before us” and the era that finally prompted Congress to wake up and pass the Act of 1952.

  4. 6

    OT, but since such a high percentage of patent suits have been filed in Waco EDTX to get Judge Albright, assuming that is always advantageous to patent owners, it is not always. In Canopy Growth Corp. v. GW Pharma Ltd. and GW Research Ltd. Judge Albright construed the sole disputed claim such that the parties stipulated to non-infringement, avoiding trial on that and all other issues. On April 24, 2023, the Federal Circuit that claim construction and entry of a final judgment of non-infringement.

    1. 6.1

      I have not looked at the case but I’m going to go out on a limb and predict that the claims are drawn to a non-abstract invention and both parties actually engage in non-abstract commercial activities in Texas.

      1. 6.1.1

        Considering both companies dabble in THC and CBD related products, it’s a safe assumption that they practice their respective crafts in Texas (and most other States for that matter).

  5. 5

    I took the DocX webinar today and it was an eye-opener to be sure. Most of my clients are small entity so it may be worth it for the risk management aspect to file pdf and pay the $160 surcharge ($400 for large entity).

    1. 5.1

      Agreed. My fellow small (and micro) entities:

      Pay the extra fee (whether pro se or not).

      Do not — and do not let your atty — file DocX.

      Don’t be penny wise and pound foolish.

    2. 5.2

      Just forget about patents all together now (especially if fees will go WAY up now)! Patents are worthless now, anyway! When was the last time and independent inventor won a case against Apple or ANY of the big monopolies out there?! The USPTO won’t LET THEM! The PTAB won’t LET THEM – ever!

      1. 5.2.1

        When was the last time and independent inventor won a case against Apple or ANY of the big monopolies out there?

        Approximately one year ago, in Kaufman v. Microsoft Inc., 34 F.4th 1360 (Fed. Cir. 2022).


          Not sure why a hidden link to housing rates of Texas in comparison to California need be “hidden” (or even provided)….

  6. 4

    The PTO employs several economists as economists. I have no personal knowledge on the matter, but it is completely implausible that these fee changes were designed without their input.

    Perhaps a better request would be for the PTO to release the analyses they already did regarding these fee changes.

  7. 3

    [B]efore any fee shifting occurs, it is essential to conduct an economic analysis to forecast the impact on USPTO revenue and on innovator behavior.

    This should be true even where fee shifting is not occurring. The PTO should commission periodic studies to determine the revenue-maximizing prices for each of the fees, and then set the prices accordingly.

  8. 2

    The AIA provided limited fee setting ability to the administrative agency of the Executive Branch, AND that agency remains under the Tafas case Court ruling.

    What Prof. Crouch asks for is at best a minimum, and I would posit that many of the items in the current “request” remain beyond the power of the administrative agency.

  9. 1

    Bravo Dennis. Important analysis across the board.

    No changes should be made that make it harder — especially for independent and small company inventors — to obtain (and hold on to) critically important, innovation-protecting patents.

    1. 1.1

      Clearly the answer is to freeze fees for “small inventors” with (lol) “critically important” patents forever.

      Very serious stuff here, folks.

      Meanwhile, here on earth the PTO gives big discounts to micro entities so if you actually have a “critically important” patent (narrator voice: nobody knows what this means) you should be just fine.

      1. 1.1.1

        Every new break for micro or small entities means that all other applicants will have to pay more to subsidize them to meet PTO costs.



          But also factor in the “costs” of such things as maintenance fees, which are pure gravy.


            Paul: Given the very small percentage of patents and patent apps by such independent and small company inventors, any “subsidization” is at most de minimis.

            Furthermore, with (as anon points out) all the free money maintenance fees the PTO rakes in for doing nothing, this de minimis is even further . . . de minimis.


              I expect that micro entities are fairly characterized as de minimis. Not so for small entities, however, which account for ~20–30% of patents and an even larger share of applications.


              From Vidal letter:
              “Our patent fee review included an evaluation of the financial outlook under the existing fee schedule, as well as significant research and analysis on proposed revisions to certain fees. The financial outlook has two dominant themes. First, the Unleashing American Innovators Act (UAIA) of 2022, signed into law December 29, 2022, reduced barriers to entry into the patent system by increasing small and micro entity discounts. As a consequence of new, higher discounts, the USPTO will collect significantly less fee revenue going forward relative to baseline estimates.”

              “The USPTO’s fee review concluded that applicants who have certified micro entity status in provisional applications are more than twice as likely to request EOT as compared to other applicants. Thus, we are proposing reduced EOT fees for provisional applications by an average of 81% to reduce financial and entry barriers and foster inclusive innovation.”

              Almost all of her internal emails include something about DEI. This Director is monomaniacal on DEI to the detriment of the overall system


                What — if any -/ causal connection be there between DEI and innovation?

                Equity is simply not a patent policy.


            Maybe IPGuy and Pro Say can correct me here, but I suspect micro inventors are primary discouraged by large initial filling fees (on top of large legal fees), particularly given that they have to pay before they even know whether they have a viable business.

            Once they get actual claims and have actual revenue, it’s easier to decide whether a few more years is worth the cost.

            Question: would micro inventors benefit by a deferred examination system? More than fee discounts??


          Yes, Paul, but these small inventors drive the US economy and indeed they are responsible for every good thing (and only the good things) that happens in America so it’s totally worth subsidizing them (we like to call it “small inventor welfare” or “government handouts for tiny Edisons”).

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