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Widerman Malek, P.L.
Melbourne, Florida

The United States Patent and Trademark Office (USPTO) has released a Notice of proposed rulemaking (NPRM) that would increase many USPTO Fees. The stated purpose of the fee increases is to recover the costs incurred by the USPTO in carrying out its mandate. The USPTO performed a Regulatory Impact Analysis that “did not identify any monetized costs and benefits of the proposed rule, but found that the proposed rule has significant qualitative benefits with no identified costs.” No identified costs to the USPTO, presumably. The fee increases can be summarized generally as follows:

Maintenance fee surcharge increase of 213% (Large entity: $160 to $500; Small entity: $80 to $250; Micro entity: $40 to $125)

Request for Expedited Examination of Design Applications increase of 122% (Large entity: $900 to $2,000; Small entity: $450 to $1,000; Micro entity: $225 to $500)

Issue and Maintenance fee increases, as follows:

Fee description Current fees Large (small) [micro] entity Proposed fees Large (small) [micro] entity Dollar change Large (small) [micro] entity Percent change Large (small) [micro] entity
Utility Issue Fee $1,000 ($500) [$250] $1,200 ($600) [$300] +$200 (+$100) [+$50] +20% (+20%) [+20%]
Reissue Issue Fee $1,000 ($500) [$250] $1,200 ($600) [$300] +$200 (+$100) [+$50] +20% (+20%) [+20%]
For Maintaining an Original or Any Reissue Patent, Due at 3.5 years $1,600 ($800) [$400] $2,000 ($1,000) [$500] +$400 ($800) [$400] +25% (+25%) [+25%]
For Maintaining an Original or Any Reissue Patent, Due at 7.5 years $3,600 ($1,800) [$900] $3,760 ($1,880) [$940] +$160 ($80) [$40] +4% (+4%) [+4%]
For Maintaining an Original or Any Reissue Patent, Due at 11.5 years $7,400 ($3,700) [$1,850 $7,700 ($3,850) [$1,925] +$300 ($150) [$75] +4% (+4%) [+4%]

To be certain, these increases will have non-trivial effects on multiple approaches to patent prosecution and maintenance. The Design Patent Application Rocket Docket is certainly not the bargain it once was, and it seems the USPTO has grown weary of receiving maintenance fee payments at the last possible moment. Patent owners should pay special attention to the tremendous increase in the maintenance fee surcharge in deciding when to pay maintenance fees.

Also of note is the introduction of a new fee for filing non-provisional patent documents in any file type other than DOCX of $400 for those filing as a large entity, $200 for a small entity, and $100 for micro entity. The language of the NPRM suggests two things. First, that this only applies to the specification, claims, and abstract, such that the drawings, Application Data Sheet, and any other documents that might be filed alongside a non-provisional application may still be filed in another file type, such as a PDF. Second, that this fee could be applied per document, such that if you filed the specification, claims, and abstract in one or more PDF files, the total assessed fee could be $1,200. Further instructions from the USPTO could clarify this ambiguity. This new fee also applies to paper filings.

On the whole, I support this new fee. Adopting the DOCX file type will allow the USPTO to more efficiently process new applications, thereby reducing the costs incurred per application. This fee neatly requires those consuming larger amounts of USPTO resources to pay for that larger consumption.