While Congress is trying to pass a tax reform bill that would cut corporate taxes, USPTO patent fees will increase effective January 16, 2018. The 72% jump in the Inter Partes Review request fee has gotten the most attention, but a number of prosecution fee increases are notable. As stakeholders consider the impact these higher USPTO fees will have on their intellectual property budgets, they can try to be thankful that the fees did not take effect with the new fiscal year on October 1, 2017.
Setting And Adjusting Patent Fees
Although the new fees take effect in early 2018, the title of the November 14, 2017 Federal Register Notice is "Setting and Adjusting Patent Fees in 2017." The fees originally were published as proposed fees on October 3, 2016, and build on a 2015 proposal to the Patent Public Advisory Committee (PPAC).
According to the Notice:
The fee adjustments are needed to provide the Office with a sufficient amount of aggregate revenue to recover its aggregate cost of patent operations (based on current projections), while maintaining momentum towards achieving strategic goals.
The "Slight" Patent Fee Increases
The USPTO characterizes fee increases of less than 10% or less than $20 as "slight" increases. These include filing, search and examination fees (which will increases by a total of $120 for a large entity), excess claim fees (which will rise to $460 for each excess independent claim and $100 for each excess dependent claim), and issue fees (which will go up by $40 to $1000).
The "Signficant" Patent Fee Increases
The Federal Register Notice provides more explanation for "significant" fee increases, which include RCE and patent trial fees. According to the Notice, the patent trial fees are higher than proposed because they now reflect three years of historic costs.
Public Comments Keep Appeal Fees Down
In contrast to the higher patent trial fees, the Notice reports lower increases to ex parte appeal fees than originally proposed. According to the Notice:
One commenter specifically expressed concern over passing a large portion of the appeal unit costs as increased fee rates borne by an appellant. .... Another commenter questioned whether increasing appeal fees would discourage meritorious appeals, noting that, the reversal rate by the PTAB indicates that a large number of appeals are pursued to correct invalid rejections.
In response, the USPTO decided not to increase the notice of appeal fee and reduced the proposed increase to the appeal forwarding fee to $2,240 for a large entity instead of $2,500. According to the Notice, current appeal fees cover 58% of the USPTO's appeal costs, while the increased fees will cover 63% of its costs.
Should The USPTO Balance The Incentives For Allowance?
Stakeholders often lament the fact that examiners have little incentive to allow an application. The same credit towards performance goals ("counts") is awarded for allowance or abandonment, but examiners face more performance review consequences for allowing an application that should not have been allowed than for rejecting an application inappropriately. On the other hand, according to this Notice, "[a]pproximately half of all patent fee collections are from issue and maintenance fees, which subsidize the cost of filing, search, and examination activities." If the USPTO relies on post-allowance fees to balance its budget, shouldn't it ensure that examiners are appropriately motivated to allow allowable cases?
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