In the November 14, 2017, Federal Register, the Patent Office issued its final rule setting and adjusting the fees the Office charges for its products and services, including relatively substantial increases for standard AIA trial fees (as shown below). As a simple example, a petitioner challenging all claims of a patent containing 30 claims will pay 37% more in fees for inter partes review ($42,500 v. $31,000), and 33% more in fees for post grant or covered business method review ($54,125 v. $40,750). These AIA trial fees become effective on January 16, 2018.
Setting and Adjusting Patent Fees During Fiscal Year 2017, 82 Fed. Reg. 52780, 52790 (Nov. 14, 2017) (to be codified at 37 C.F.R. pt. 42). The Patent Office is also raising by 50% the fees for seeking institution and trial on claims in excess of the 20/15 claims that are part of the standard fees. With that increase and the 72% increase in the pre-institution inter partes review standard fee, the Patent Office will recover some monies it otherwise foregoes whenever the PTAB denies inter partes review.
The commentary accompanying the fee increases states: "AIA trial proceedings in the PTAB have been immensely popular (over 5,500 AIA trial proceedings filed through FY2016) because they provide a less expensive and faster alternative to district court litigation." Id. at 52796. As the PTAB's workload has increased, so too has its size. Further, the Office invested resources to ensure the PTAB satisfies its statutory obligation to complete the proceedings within one year. Accordingly, the Patent Office considered and analyzed historical data on its aggregate cost for administering the proceedings, and determined the increases are necessary to "maintain the level of judicial, legal, and administrative staff necessary to sustain the quality and timeliness of PTAB decisions, and close the gap between the costs and the fees associated with AIA trial proceedings" Id.
The final rule regarding these fees generally tracks the fees the Patent Office proposed in its notice of proposed rulemaking published in October of 2016 (discussed here). The final rule makes no changes to the standard fees the Patent Office proposed for post grant and covered business method patent reviews. The final rule changes, however, the standard fees the Patent Office proposed for inter partes review "to more closely align fees and costs to the Office for performing these services." Id. at 52790. Relative to the standard fees the Patent Office proposed for inter partes review, the aggregate amount of the two fees ($30,500) remains the same, but the Office will receive $1,500 more for each inter partes review petition the PTAB denies.
Attorneys' fees for AIA trial proceedings, according to the 2017 Report of the Economic Survey published by the American Intellectual Property Law Association, are up to $400,000, whereas those fees to litigate patent validity and infringement in federal court can be five times as much (or even more when the accused has in excess of $10 million at risk). Thus, while the Patent Office fee increases are relatively substantial, they should not affect the popularity of AIA trial proceedings, much less their fate, which the Supreme Court will address in its forthcoming Oil States decision.
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