Posts Tagged: "patent fees"

I’m a fairly new/young patent attorney. I work at a firm where I am the only patent attorney, of several attorneys. I am trying to figure out how to set my fees and fee structure for patent prosecution and trademark registration work. Friends from law school in the Dallas area suggested using a flat-fee for prosecution, rather than an hourly rate. My concerns are, because I’m relatively new to prosecution, I’m not sure how to accurately estimate the time involved from an inventor’s initial disclosure so I set a flat-fee that won’t grossly underpredict the amount of time required. Of course, I also want to set my fee to be market competitive. I’m located in the Greater Nashville Area.

Ever since March 19, 2013, I have been feeling slightly uncomfortable asking one question to some of my new clients. What is that question you ask? It is: “What was your household income in the preceding calendar year?” So, why am I asking a question that makes this Registered Patent Attorney sound more like a Certified Public Accountant? Answer: The AIA.

The final rules on patent fees will publish in the Federal Register on Friday, January 18, 2013. Fees are going up for most, but not as much as feared. It will be more expensive to file a utility patent application, except for micro-entity applicants (see Utility Filing Fees Table), but it will be less to pay the issue fee once you get a Notice of Allowance (see Issue Fee Table). It will cost 29% more to file the first RCE for large and small entities (see First RCE Fees Table), and 83% more for subsequent RCE filings for large and small entities (see Subsequent RCE Fees Table). The ex parte reexaminations fees are much lower, down 32% and 66% respectively for large and small entities (see Reexam Fees Table), but are still much higher compared to where they were prior to them being raised over 600% recently. Of course, cutting ex parte reexamination fees means the overall cost is still roughly 250% higher for small entities and 500% higher for large entities than this time last year.

The United States Patent and Trademark Office (USPTO) is revising the rules of practice in patent cases to implement the micro entity provision of the Leahy-Smith America Invents Act (AIA). Certain patent fees set or adjusted under the fee setting authority in the AIA will be reduced by seventy-five percent for micro entities. The USPTO is revising the rules of practice to set out the procedures pertaining to claiming micro entity status, paying patent fees as a micro entity, notification of loss of micro entity status, and correction of payments of patent fees paid erroneously in the micro entity amount.

Kappos on final rules to implement the AIA: “We put together a good set of rules, but they are by no means a perfect set of rules.” Kappos explained that typically in Washington administrative rules are written and may be changed some time in the future, but not very quickly. That was not the USPTO approach. “Our approach was different,” he explained. The USPTO approach is one of continuing improvement. “We are already talking about convening the state holder community again after a few months when there is data to discuss.” The goal is to get feedback and make any necessary changes to continually improve the rules.

The recurring theme will be decreased fees for those who qualify for micro-entity status, but increased fees for everyone else. That is great, but micro-entity status will not even apply to all independent inventors, but only a subset of independent inventors who are at the lowest end of the income scale and who have had very few patents or patent applications. Thus, even the professional garage inventor will be a small entity and will pay more — in some cases substantially more — than they pay now. Not to mention the small businesses that are the engine of the U.S. economy. These fees will be a real and substantial impediment to the patent process for those individuals and businesses that we need to be encouraging and incentivizing the most.

The proposed fees are at least 22 percent lower for a routine patent process—i.e., filing, search, examination, publication, and issue fees—than the current fee schedule. The current proposed fees also are lower than those originally proposed by the USPTO in February. The USPTO is opening a 60-day comment period in which the public can provide input on the latest proposal. Following the comment period, the Office will prepare the final fee-setting rule, which would go into effect no less than 45 days after it is published in the Federal Register.

The amend to the rules of practice in patent cases is for the purpose of implementing the micro entity provision of the Leahy-Smith America Invents Act (AIA). If an applicant qualifies as a micro entity, then the applicant is eligible to pay reduced patent fees once the USPTO exercises its fee setting authority under the AIA. The fee setting provision in the AIA sets the micro entity discount at 75% of the fees set or adjusted for filing, searching, examining, issuing, appealing, and maintaining patent applications and patents.

These proposed fees will undoubtedly be commented on, and the early criticism, which seems quite valid, asks how the addition of a single additional claim to be reviewed can add such large amounts to the cost. For example, if you file a petition for post-grant review and want 30 claims reviewed the fee will be $53,700. If you want 31 claims reviewed the fee will be $71,600, so that extra claim reviewed will cost you $17,900. Of course paying that $17,900 entitles you to bring challenges to 9 other claims, which would be free once you paid for the 31st claim. Essentially, with rigid segmentation of fees it is difficult, if not impossible, to see a cost of recover implementation at work. It would be far more in keeping with the statutory authority to have additional claim fees akin to what happens during prosecution when you go beyond three independent claims or 20 total claims.

Having spent time as a litigator I know exactly what goes into taking a case on a contingency basis and you only take cases on a contingency when you know beyond a shadow of a doubt that there WILL be money ACTUALLY recovered. That is why it is perfect for personal injury attorneys. They can tell with great certainty, if they are being honest, if money will be recovered. So you need to be 100% sure when you take the case that money will be obtained because as it turns out cases can and do take on a life of their own and even when you are 100% certain at the outset you make mistakes. If you are not 100% certain at the beginning you pretty much never recover anything.

Let’s first consider one of the “bread and butter” components of patent prosecution, the utility application filing fee. Actually, this basic fee comprises three components: the filing fee, the search fee, and the examination fee. In the proposed fee changes, this utility application filing fee will increase from $1250.00 to $1840.00 (or from $625.00 to $920.00 for those qualifying as “small entities,” which get a 50% reduction in this fee). The biggest portion of this increase is reflected in the examination component, which has increased from $250.00 to $780.00 (or from $125.00 to $390.00 for those qualifying as “small entities”). Excess claim fees (total claims in excess of 20 and independent claims in excess of 3) have also gone up significantly, from $60.00 to $100.00, and from $250.00 to $460.00, respectively. (I’ll let you do the math for those qualifying as “small entities.”)

Under the America Invents Act (AIA), the United States Patent and Trademark Office (USPTO), for the first time in its history, was given the authority to work with IP stakeholders to set fees through the regulatory process. The agency took a first step towards that end this week when it published proposed fees for all of the patent services it provides.

The United States Patent and Trademark Office (USPTO) is proposing rules of practice in patent cases to implement the supplemental examination provisions of the America Invents Act. The USPTO is also proposing to adjust the fee for filing a request for ex parte reexamination and to set a fee for petitions filed in ex parte and inter partes reexamination proceedings to more accurately reflect the cost of these processes. The USPTO published these proposed rules in the Federal Register on January 25, 2012.