This alert clarifies that the increased issue fee does not affect applications that are allowed before October 2, 2020, and provides additional information regarding the changes in fees made by the U.S. Patent and Trademark Office.
The U.S. Patent and Trademark Office (USPTO) recently set and adjusted Patent fees and Patent Trial and Appeal Board fees (PTAB fees) for the first time in nearly three years as part of its biennial review process. With limited exception, the new fees are effective on October 2, 2020.
Most fees that are impacted have been increased by approximately 5 percent. In general, the USPTO policy is that the increase in fees takes effect on October 2. In addition to increases in costs related to filing patent applications and reissue applications, the USPTO has increased the issue fee for allowed applications. The issue fee is set by the USPTO based on the sum specified on the Notice of Allowance communication, and the Manual of Patent Examining Procedure overrides the general USPTO policy regarding effective dates for fee changes. As such, any application that is allowed before October 2 will pay the current issue fee. For any allowance on or after October 2, a large entity will pay an additional $200 for the issue fee. Small entities will pay an additional $100 for the issue fee, and micro entities will pay an additional $50.
Fees related to extensions of time, requests for continued examination, maintenance of patents, and other post-issuance fees (e.g., ex parte reexamination fees and inter partes review fees, etc.) also will go up. For an international design application that designates the U.S., the issue fee is based on the international registration date. Therefore, the increased issue fee for an international design application only applies to applications that have an international registration date on or after October 2.
If you have an application with an issue fee payment deadline on or after October 2, consider filing potential continuation or divisional applications before October 2 to save money on the filing costs. While this may expedite your analysis given the typical timing of roughly four to six weeks between payment of the issue fee and grant, it can soften the impact of the increased fees. The same strategy can save money for any application that you anticipate may be ready to file around October 2.
Contact your patent counsel to discuss your IP strategy – whether it relates to yet-to-be-filed applications, PTAB actions being considered, or anything between – and how the fee increases may affect implementation of your strategy.