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: