• Subscribe

    Subscribe to the RSS feed Subscribe to the blogs's ATOM feed
    Add to your Google Home Page or Google Reader Add to your My Yahoo!
    Add to your My MSN Add to your My AOL
    Subscribe to the Comments RSS feed Add to your Bloglines
    Email Subscription



  • The opinions, commentary and characterizations provided to this online forum by the authors and moderators are provided for encouraging discussion, thought and debate on important post grant issues. These postings are in no way representative of the opinions of Oblon Spivak et al., or its clients.

Archive for September 5th, 2012

USPTO Proposes Revising Fees for Post Grant Patent Proceedings

Posted On: Sep. 5, 2012   By: Scott A. McKeown
USPTO-Post grant fees_Proposal Apportions Post Grant Patent Trial Fees Into Petition & Trial Phases

As I predicted in early August, the USPTO has announced a proposal to apportion the filing fees for the new post grant proceedings of the Patent Trial & Appeal Board (PTAB) across petition and trial phases; primarily as a mechanism to facilitate refunds. A portion of the proposed fees would correspond to the cost of considering the petition filing, the second portion would correspond to the cost of conducting the trial. This proposed fee structure is set pursuant to Section 10 of the America Invents Act (AIA), and provides revised fees not only for the new post grant patent proceedings, but also for ex parte application prosecution as well. The Notice of Proposed Rulemaking (NPRM) will be published in the Federal Register on Thursday. (advanced reading room copy here)

Aside from the post grant fee apportionment (discussed in detail below, which actually provides a slight fee reduction), notable fee increases include a change to the RCE filing fee for ex parte prosecution. The RCE fee based upon the number of previously filed RCEs. For example, the cost of an RCE moves from the current $930 for large entitites to $1200 for the first RCE, and $1700 for the second and subsequent RCEs. You may recall that initially the USPTO was seeking a change to $1700 for all such filings. The Office has now recognized that since 70% of applicants file at least one RCE, it seems some modest additional time is required to resolve most issues, hence the difference in pricing between the first and second RCE filing.

As to fee decreases, the following are noteworthy: Read the rest of this entry »