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TAKEAWAY: Applicants in a position to file new patent applications or pay fees in pending applications, and patentees eligible to pay maintenance fees on issued patents, should do so before October 2, 2020, to avoid paying higher fees.

The U.S. Patent and Trademark Office (USPTO) has announced fee adjustments that will come into effect on October 2, 2020. Most USPTO fees are set to increase by about 5% for large, small, and micro-entities alike, with larger increases related to AIA trials and patent maintenance. The primary reasons given by the USPTO for the fee adjustments are to enhance the quality and timeliness of examination, invest in modernizing IT infrastructure, and provide stability to USPTO operations, even in uncertain economic times.

Notable Fee Changes:

  • Examination:
    • A request for expedited examination of a design application for large entities will increase from $900 to $1,600.
    • The issue fee for large entities will increase from $1,000 to $1,200.
  • Maintenance fees:
    • The maintenance fee surcharge for large entities will increase from $160 to $500.
  • Post-grant
    • The inter partes review (IPR) request fee will increase from $15,500 to $19,000, and the post-institution fee will increase from $15,000 to $22,500 (up to 20 claims).
    • The post-grant review (PGR) and covered business method (CBM) request fee will increase from $16,000 to $20,000, and the post-institution fee will increase from $22,000 to $27,500 (up to 20 claims).

The USPTO will impose a new surcharge of $400 (large entity) for filing utility nonprovisional applications in a format other than DOCX, beginning on January 1, 2022. Implementation of this new fee was delayed in response to public comments and to allow applicants to transition to the new filing process.

Additional information regarding the USPTO’s new fee schedule can be found here. The USPTO’s Final Rule regarding the new fee schedule was published in the Federal Register on August 3, 2020, and can be viewed here.