English
USPTO Post Grant Fees Cut on March 19th
Fee Setting Authority Decreases Post Grant Costs
Based upon the fee setting authority provided in Section 10 of the America Invents Act (AIA), the USPTO post grant filing fees will be downwardly adjusted for both patent reexamination and the patentability trial proceedings of the Patent Trial & Appeal Board (PTAB). The new fees are discounted from the rates that became effective last September 16th, and take effect tomorrow, March 19th. (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 only. The trial portion of the fees corresponds to the cost of conducting the trial. The fees for patent reexamiantion will decrease for all filers, but will drop by 60-80% for those requesters qualifying as small and micro entities.
A more detailed explanation of the fee changes is provided below.
First, the filing fee for patent reexamination will decreases as follows:
Previous fee for all parties $17,750
3/19 Fee (large entity) to $12,000
3/19 Fee (small entity) $6000 (note that small entity and micro entity discounts are now being offerred for the first time)
3/19 fee (micro entity) $3000
The filing fees for supplemental examination is likewise decreased.
Turning now to the apportionment of post grant fees, to date, post grant fees have been all inclusive. For Inter Partes Review (IPR) the filing fee was set at $27,200, 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). These fees were also adjusted down, and apportioned to allow for refunds should the PTAB decline to institute trial.
The new fee for IPR is: $23,000
The new fee for PGR is: $30,000
As to IPR/PGR fee apportionment for refunds, using IPR as an example, the first fee component is the cost of reviewing the petition. The IPR fee for petition review is a flat $9000 (up to 20 claims). The second fee component is a $200 surcharge per claim for each claim in excess of 20. If the IPR is not instituted, neither fee is refundable as the USPTO performs this review to decide the petition (it is unclear if this fee is refundable for a pre-institution settlement).
The third and fourth fee components are trial institution fees,and are refundable if trial is not instituted. The third is $14000 for an IPR trial of up to 15 claims. The fourth fee is a $400 surcharge per claim for each claim over 15. In the example above, if the trial is not instituted at all, components 3 and 4 are refunded. If trial is not instituted as to all requested claims, the claim surcharge is refunded on a pro-rata basis.
There are no small entity or micro entity discounts for PTAB proceedings.
The introduction of small/micro-entity discounts for post-grant requesters raises questions I haven’t fully thought through. Previously, small entity status was entirely defined with respect to an entity’s rights in an *application* (or patent)–i.e., whether or not the application had been assigned, plus other factors.
But a TPR by definition has no interest in the patent for which post-grant proceedings are requested. With respect to ex parte reexam in particular, in which disclosure of the real party in interest isn’t required, what’s to prevent a party from creating a small entity and filing the request through that entity?
Although the PTO repeatedly warns of the perils of committing fraud on the Office by improperly claiming small entity status, it’s not clear to me that it would be strictly improper to do so under the rules that predicate small entity status on the status of a patent or application. And I don’t immediately see how this rule package changes that.
Tony,
Yes, that occurred to me as well. Misrepresentation as a small entity was guarded by inequitable conduct for patent owners…not so for challengers.
For example, what would stop a requester from just claiming micro entity status and filing anonymously to save $9000? I guess the short answer is their registration # would….registered practitioners are unlikely to pull that kind of stunt. Still, for those requests for reexam submitted by the public (few as they are), are much more difficult to police.
As to creating shell organizations, that is a long way to go to save a few thousand bucks. I don’t worry about that one as much.