The United States Patent and Trademark Office (USPTO) has recently announced new rules that will result in across-the-board fee adjustments effective October 2, 2020. As a result, the USPTO has made four general types of fee adjustments:
1. Across-the-board increase in patent fees: The USPTO applied an approximately 5 percent increase to most fees impacted by the rule.
2. Other adjustments to existing fees: The USPTO adjusted certain existing fees (e.g., issue fee, 3.5 year maintenance fee, maintenance fee late payment surcharge, expedited examination of design applications, inter partes review request, post grant review request) by an amount greater than 5 percent.
3. New fees: The USPTO introduced a new fee for non-DOCX filings (not implemented until January 2022) and a new fee for pro hac vice admission.
4. Discontinued fees: The USPTO discontinued four fees. Three patent service fees and the Office of Enrollment and Discipline USPTO-assisted recovery of ID or reset of password fee were discontinued.
Changes to Maintenance Fees
|Fee Type||Current Fee||New Fee||Percent Increase|
|3.5 year maintenance fee||$1,600||$2,000||25%|
|7.5 year maintenance fee||$3,600||$3,760||4.4%|
|11.5 year maintenance fee||$7,400||$7,700||4.1%|
|Late payment surcharge (within 6 months)||$160||$500||212.5%|
|Petition for delayed payment of the maintenance fee (reinstatement after 6 months)||$2,000||$2,100||5%|
One area that will see a major revision is in the fee for maintenance of patents. Maintenance fee payments alone can add up significantly for medium to large patent portfolios. These fees may be paid up to six months in advance of the due date. If companies act now, they can save a substantial amount of money by paying the maintenance fees before the fee increases come into effect.
Patent owners can save substantial amounts by paying before October 2, 2020 any maintenance fee that is currently in the ‘window open’ or ‘surcharge’ period.
As an illustrative example, a large US-based technology company with over 35,000 in-force patents was evaluated under the new and current rules. Under the current fee structure, the company would pay about $12,700,000 to maintain approximately 3,000 patents that are up for renewal between October 2020 and March 2021. Under the new fee schedule the company would have to pay about $13,500,000 to maintain the same patents. In other words, if they pay before the fee changes there is a savings of over $800,000. The breakdown of the fees by the renewal period (3.5Y/7.5Y/11.5Y) is shown below.
Other Notable Fee Increases
|Fees||Current Fee||New Fee||Percent Increase|
|Expedited Examination of Design Patent Application||$900||$1,600||78%|
|Inter Partes Review Request||$15,500||$19,000||23%|
|Post Grant Review Request||$16,000||$20,000||25%|
These and other fees are increasing by approximately 5% to 78%. Applicants should take advantage of the current fee schedule and pay wherever possible before the fees increase.
Companies can leverage Maxval’s cost-effective IP renewal services to renew their patents before Oct 2020 and take advantage of these substantial savings. Further, by continuing with us you get the following benefits:
- Ease of use – Set ‘Auto-renew’ instructions and never miss a deadline.
- Take control – Portal to view assets coming up for renewals and the associated costs.
- Operate globally – Leverage our vast network of international agents to renew all your patents.
- Track and approve – Fully configurable workflow to manage the approval process, including portfolio pruning.
- Manage budget – Financial dashboard allows you to view your renewal cost by jurisdiction, expiry date and identify potential assets for pruning.
- Eliminate risk – Our Rules team of attorneys and specialists monitors country law in 175 countries (and growing) to ensure that renewal rules are always current.
- Reduce cost – Competitive, transparent, flat service fee that lowers your annuity service cost. No extra management fees, subscription fees, sign-up fees, or reporting fees.