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  • 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.

Post Grant Patent Challenge Fees Set to Drop on March 19th

Posted On: Jan. 22, 2013   By: Scott A. McKeown
USPTO-Post grant fees_USPTO Exercises Fee Setting Authority to Decrease Patent Reexamination and Post Grant  Trial Fees

Based upon the fee setting authority provided in Section 10 of the America Invents Act (AIA), the USPTO has now issued final rules to reduce fees for patent reexamination and post grant proceedings of the Patent Trial & Appeal Board (PTAB). The new fees are discounted from existing rates, and take effect on March 19, 2013. (final rules here)

The fees for PTAB proceedings will be broken up into petition and trial phases. The apportionment enables the office to more precisely calibrate costs so that refunds may be provided, where appropriate. The petition portion of the fees correspond to the cost of considering the petition filing. The trial portion of the fees corresponds to the cost of conducting the trial.

A more detailed explanation of the fee changes is provided below.

The filing fee for patent reexamination will decreases from the $17,750 (effective today) to $12,000. This decrease is even greater than that originally proposed ($15,000). Corresponding changes are made for small entity and micro entities. The filing fees for supplemental examination is likewise decreased.

Turning now to the apportionment of post grant fees, currently, the base post grant fees are all inclusive, $27,200 for Inter Partes review (IPR) and $35,800 for Post Grant Review (PGR) and Covered Business Method Patent Challenges (CBM). These all inclusive fees are non-refundable (excess claim fees may also apply). The USPTO will, in March, begin allocating the specific costs of post grant proceedings into four discrete fees.

Using IPR as an example, the first fee component is the cost of filing an IPR petition, which is set to a flat $9000 (for up to 20 claims). If the IPR is not instituted, this fee is not returned. The second fee component is a $200 surcharge per claim for each claim in excess of 20. The second fee component is refundable if an IPR is not instituted. The third and fourth fee components are trial institution fees. The third is $15000 for an IPR trial of up to 15 claims. This fee is refundable if the trial is not instituted. The fourth fee is a $400 surcharge per claim for each claim over 15.  This fee would be returned if the IPR is not instituted.

Following the above guidelines, the USPTO has provided an example for an IPR seeking a trial on 52 claims. The petitioner would pay $44,200 ($9,000 plus 32 (52-20) x $200= $15,400); this is the first and second fee components. The third and fourth fee components would be calculated as ($14,00 plus (52-15) x $400=$28,800.  $15,400+$28,800 = $44,200

The USPTO reasons that 25% of petitioned claims will not be reviewed for trial (hence the 20 claim and 15 claim difference in fee calculations). Under the current all inclusive fee structure the same IPR would cost $46,400. ($27,200 + (32 x $600))

Those considering filing a post grant patent challenge in the coming weeks might want to delay the filing to fall under the new, discounted fee structure, if possible.

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