The United States Patent and Trademark Office (USPTO) will be raising fees for patents this October. Earlier this summer, it published a proposed rule to raise trademark fees as well.
Patents
The patent fee adjustments were proposed before COVID-19 to grow the patent operating reserve, and most will take effect October 2, 2020.
The most significant fee increases relate to America Invents Act (AIA) trial fees, which, generally speaking, relate to disputes over the invalidity or infringement of patents.
• Petition and institution fees for an Inter Partes Review (IPR) before the PTAB increase from $30,500 to $41,500;
• Petition and institution fees for a Post-Grant Review (PGR) or Covered Business Method (CBM) Review increase from $38,000 to $47,500;
• There’s a new $250 fee for certain attorneys participating in AIA trials; and
• Fees for challenging more than 20 claims (the threshold is currently 15 claims) go up by about 25%.
Filing, issue, and related registration fees, which vary based on the type of applicant (large, small, or micro entity) and type of patent, are going up as well, though the percentage increase is smaller. Most fees increase in an amount of 4% to 10%, though some issue fees increase by 20%, and the fee for expedited design patent applications is increasing by 78%.
Take advantage of lower fees by filing now, if possible. You should also pay maintenance fees on issued patents before the new fees take effect on October 2, 2020, if you’re eligible to do so. These fees go up by between 4% and 25%, with late fees going up by 213%.
Effective January 1, 2021, there will be a new surcharge of up to $400 for filing application materials in non-DOCX format.
Not every fee increase is mentioned here. For more information, see the USPTO website.
Trademarks
Earlier this summer, the USPTO published proposed adjustments to some trademark fees. The USPTO anticipates the final rule could take effect as early as this October.
The USPTO is proposing this increase due to the slowdown in trademark filings because of the COVID-19 pandemic.
Application fees are proposed to increase from $275 to $350 per class for electronic applications filed using the TEAS system, from $225 to $250 for TEAS Plus applications, and from $600 to $750 for paper applications.
A new fee for filing a request for reconsideration after a final office action is being proposed. Currently an applicant has six months to respond, and there’s no fee to do so, but if the proposed rule takes effect, a request filed after three months will incur a fee of $400 ($500 for paper filing).
Maintenance fees are expected to go up as well. The USPTO has proposed a fee increase from $125 to $225 for declarations of use filed under Section 8 and Section 71.
A penalty of $250 per class ($350 per class for a paper filing) will be charged if goods and services are deleted from a registration in response to an audit or post-registration office action (but not if goods or services are deleted voluntarily before acceptance of a Section 8 or Section 71 declaration).
Trademark Trial and Appeal Board (TTAB) fees are proposed to increase as well.
• Fees to cancel or oppose a mark increase from $400 a class to $600 a class (from $500 to $700 for a paper submission);
• New fees are proposed: $200 per class to file an appeal brief, $500 for requesting an oral hearing, and $50 to file a letter of protest;
• Fees for requests for extensions are tiered and are proposed to be $100 for the first request and $200 for the second request ($200 and $400 for paper submissions); and
• The per-class fee to file an ex parte appeal goes up from $200 to $225 (from $300 to $325 for a paper submission).
Given the proposed fee increases, it’s a good idea to file applications now and pay maintenance fees if you’re eligible to do so.
The above discussion covers only some of the proposed fee increases. See the proposed rule for more information.
Copyrights
While the Copyright Office recently had a fee adjustment take effect, with the economic slowdown, it’s likely it will be forced to raise fees as well. For this reason, consider promptly submitting applications for copyright registration of any works you’ve been procrastinating on.
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