USPTO Increases IPR Filing Fees by $6,500 in Final Rule on Fee Adjustments

By Steve Brachmann
November 20, 2017

“Money, Dollars, Success, Business” by Maklay62. Public domain.

On Tuesday, November 14th, the U.S. Patent and Trademark Office published a press release to announce that it had issued a final rule to set or adjust certain patent fees as the agency is authorized to do under the America Invents Act (AIA) of 2011. The fee increases, which include some significant increases to petitioners filing for inter partes review (IPR) proceedings, are ostensibly meant to cover costs for USPTO operations, Patent Trial and Appeal Board (PTAB) operations and administrative services as the USPTO attempts to achieve strategic goals including backlog reductions and “patent quality enhancements.”

The USPTO stated that the increased costs for AIA trial petitioners filing at the PTAB are meant to better alignment with the agency’s costs, providing it with the resources necessary to meet statutory deadlines laid out in the AIA. Request fees for IPR petitions challenging up to 20 claims will increase under the new rule up to $15,500, a $6,500 raise over the previous level. IPR post-institution fees for petitions challenging up to 15 claims increases by a more modest $1,000 up to $15,000. The agency notes that trial fees and associated costs still remain considerably less than court proceedings “for most stakeholders.”

Section 10(e)(1)(B) of the AIA requires the USPTO Director to include “the specific rationale and purpose for the proposal, including the possible expectations or benefits resulting from the proposed change.” The USPTO’s notice on the fee increases published in the Federal Register indicates that the Office of Management and Budget (OMB) determined that the new rule “involves a transfer payment from one group to another that does not affect the total resources available to society.”

The OMB’s determination of the new fees as a “transfer payment” means that the rule isn’t subject to the requirements of Executive Order 13771, titled Reducing Regulation and Controlling Regulatory Costs and signed on January 30th of this year. This executive order was signed by President Donald Trump to “manage the costs associated with the governmental imposition of private expenditures required to comply with Federal regulations.” This is the order by which President Trump sought to use to eliminate regulations by charging federal agencies to identify two regulations for elimination every time one new regulation is issued.

Patent owners will probably be somewhat pleased to hear that the costs for filing a petition for IPR proceedings at the PTAB have increased by thousands of dollars given the high percentage of challenged patents which are rendered defective by AIA trials. However, the “transfer payment” rationale seems to give the USPTO the freedom to increase fees using its AIA fee setting authority in a way that escapes the larger notice of the White House. Further, it gives the agency the freedom to pass the new fees without explaining the economic impacts of the new fees. Instead, patent system stakeholders are assured that the new fees will not “affect the total resources available to society.” Of course, those resources include the PTAB, whose activities cost legitimate patent owners attempting to protect their property millions of dollars, so it seems suspect that those available resources are actually a benefit to society at large.

The final fee setting rule issued by the USPTO differs from the fee proposals laid out in the agency’s notice of proposed rule making (NPRM) in a few key ways. The agency reduced the increases to patent applicants filing for plant or design patents although large entity plant patent application filing fees do increase by $40 up to $800 and large entity design patent applications increase by $140 up to $700. Small and micro entity fee reductions are available for both plant and design patent application filings. Also, in response to stakeholder feedback following the NPRM, the USPTO declined to increase notice of appeal fees, which will remain at $800. The USPTO also reduced the fee increase for forwarding an appeal to the PTAB to $240, leaving large entity appeal filing fees at $2,240 instead of the proposed $2,500.

The Author

Steve Brachmann

Steve Brachmann is a writer located in Buffalo, New York. He has worked professionally as a freelancer for more than a decade. He has become a regular contributor to IPWatchdog.com, writing about technology, innovation and is the primary author of the Companies We Follow series. His work has been published by The Buffalo News, The Hamburg Sun, USAToday.com, Chron.com, Motley Fool and OpenLettersMonthly.com. Steve also provides website copy and documents for various business clients.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 6 Comments comments. Join the discussion.

  1. anonymous November 20, 2017 2:03 pm

    This increases the safety of the patents of large corporations from being challenged by small startups and does little to protect the patents of small startups from being challenged by large corporations

  2. Anon November 20, 2017 2:34 pm

    Otherwise known as “Sport of Kings.”

    Something our original patent system had explicitly tried to avoid.

  3. Poesito November 20, 2017 10:33 pm

    Off topic but this turned up on my Google feed earlier today. Thanks Google! Congrat’s to Paul Morinville and U.S. Inventor for making waves.

    https://www.reuters.com/article/us-usa-patent-ptab/u-s-patent-review-board-becomes-conservative-target-idUSKBN1DK0EB

  4. Steven Moore November 21, 2017 7:51 am

    There is no doubt these increases are being pushed by large corporations who wish to squelch any challenges by small companies. It’s working.

  5. Bemused November 21, 2017 9:03 am

    Poesito@3: Here’s one more of Paul Morinville and U.S. Inventor making waves:

    https://www.washingtontimes.com/news/2017/nov/9/inventors-patent-office-favors-big-tech/

  6. Poesito November 21, 2017 10:14 pm

    Bemused@5: Even better!

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