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Fees for PTAB Post Grant Proceedings to Jump in January

  • Inter Partes Review Request Fee to Jump 72%
  • Post-Grant or Covered Business Method Review Request Fee to Jump 33%

The U.S. Patent & Trademark Office (“USPTO”) announced a new fee structure set to take effect on January 16, 2018.  Notably, fees for PTAB proceedings will increase significantly.  The USPTO explains that the fee increases are necessary to keep up with demand, continue to provide high-quality decisions within the statutory time limits, and close the gap between the cost and the fees for performing these services.

The Leahy-Smith America Invents Act (“AIA”) was enacted into law on September 16, 2011. See Public Law 112-29, 125 Stat. 284. Section 10(a) of the Act authorizes the Director of the Office to set or adjust by rule any patent fee established, authorized, or charged under title 35, U.S.C., for any services performed by, or materials furnished by, the Office. Fees under 35 U.S.C. may be set or adjusted only to recover the aggregate estimated cost to the Office for processing, activities, services, and materials related to patents, including administrative costs to the Office with respect to such patent operations. See 125 Stat. at 316. Provided that the fees in the aggregate achieve overall aggregate cost recovery, the Director may set individual fees under Section 10 at, below, or above their respective cost.

After enactment of the AIA, the Office had to estimate what the costs would be without the benefit of historical cost information. Now that the trials have been in place for three fiscal years, the Office has actual historical cost data available to more accurately set these fees and recover costs. In this final rule, the Office has revised the fees for AIA trials upwards as follows:

The Office explains that it is revising the fee levels to more closely align fees and costs to the Office for performing these services. Unit costs for inter partes review requests have consistently outpaced the unit costs for inter partes review post-institutions.  Notably, AIA trial fees are not eligible for small entity or microentity discounts.

While the number of petitions filed has hovered around 1500 in FY2015-FY2017, the institution rate has decreased each year.

Source: USPTO

In view of the decreasing number of institutions, it makes sense that the USPTO is demanding significantly higher fees at the petition stage, while moderately increasing fees for post-institution requests.  Accordingly, as fees are set to rise significantly, prospective petitioners can avoid paying the higher petition fees by filing before January 16, 2018.