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By Tony Dutra
Nov. 2 — Fees for filing petitions challenging issued patents before the Patent Trial and Appeal would be significantly increased under a new fee schedule proposed Oct. 30 by the U.S. Patent and Trademark Office.
The request for inter partes review—a popular patent validity challenge option for alleged infringers facing charges in federal court—would cost at least $14,000 compared to the current $9,000. Covered business method challenges would rise from $12,000 to $16,000 at minimum.
The total fee for an IPR or CBM petition includes a premium for contesting more than 20 patent claims, and the “excess claim” rate for each would increase by 50 percent.
Basic patent application fees would rise by $20 under the proposal, with excess claim surcharges as well. For example, an application with five independent claims and 25 dependent claims would see a 16 percent increase in filing fees, from $1,920 to $2,220.
The proposal would not increase that maintenance fees, due at 3.5, 7.5 and 11.5 years after patent issuance, that a patent owner must pay to keep a patent in force.
Fee schedule proposal
The America Invents Act of 2011 set up the new IPR and CBM proceedings and also gave the PTO, for the first time, the authority to set its own fees rather than be subject to Congress's preferences.
The PTO is obligated only to set fees to recover its costs in the aggregate. Therefore, it can set particular fees higher than its costs for any reason in order to balance out other fees that are set low for policy reasons.
In general, patent application fees are set artificially low—that is, priced well below costs—to encourage filings, while maintenance fees are high, despite costing the PTO little.
The AIA calls for the Patent Public Advisory Committee to conduct hearings and provide recommendations to the agency's leadership before the proposed changes can take effect.
In line with that procedure, the PTO will host a Nov. 19 hearing at its headquarters in Alexandria, Va., to gather feedback on the proposal from stakeholders (2015 PTD 203, 10/21/15).
The proposed PTAB petition filing fee is likely not a case of above-cost setting. When the PTO set its fee schedule for the first time in 2012 (26 PTD, 2/9/12), the agency had no experience running IPR and CBM trials. It acknowledged at the time that its projected costs were estimates.
Now with three years of experience, the office appears to have determined that it has not been covering its costs for procedures, which involve the work of three administrative patent judges from beginning to end.
Though the PTO has more than tripled the number of APJs on the board since the AIA took effect, they are stretched thin. The PTAB still has a hefty backlog of pre-AIA challenges through ex parte reexaminations.
The proposal gives those filers one of the few price breaks: write the petition in less than 40 pages, and the cost will be $6,000 instead of $12,000.
The patent application fee increase appears to be largely focused on the excess-claim filer.
The basic fee increase is 7 percent for utility patent applicants, but costs beyond the basic claim count add up quickly. For instance, filing 50 claims—10 of which are independent—would result in a 20 percent increase from the current charge.
The PTO would also increase its search and examination fees by $100 total— a 7.5 percent increase.
Applicants who are initially rejected by examiners—a rate that currently runs at more than 50 percent—would face a higher appeal hurdle, with the charge for appealing the rejection to the PTAB rising by 25 percent, from $800 to $1,000.
In each case, small entity and “micro entity” filers get 50 and 75 percent off by statute.
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