USPTO Publishes Final Fee Setting Rule

The U.S. Patent and Trademark Office recently released its Final Rule for Setting and Adjusting Patent Fees, as authorized under the America Invents Act. In announcing the new patent fees, the agency highlighted that its primary goals were to “optimize patent timeliness and quality; and
implement a sustainable funding model for operations.”

For some patent applicants, the new patent fees will result in cost savings, for others the costs will rise. As noted by the USPTO, the routine fees to obtain a patent (i.e., filing, search, examination, publication, and issue fees) will decrease by at least 23 percent relative to the current fee schedule. In addition, applicants who meet the new micro entity definition will pay less than the amount paid for small entity fees under the current fee schedule for 87 percent of the fees eligible for a discount.

The fee for Requests for Continued Examination will increase 29 percent to $1,200. Second and subsequent RCEs will cost $1,700. Fees for extensions of time, large applications, and excess claims will also go up, with excess claim fees seeing the biggest jump.

Finally, current patent holders will also see fees rise. Maintenance fees will go up from 39 to 54 percent, depending upon the stage. For instance, First Stage Maintenance fees (3.5 Years) will now be $1,600.

With a few exceptions, the new rule went into effect on March 19, 2013.

However, this isn’t the last time fees will increase.  The USPTO now has fee setting authority.  Where the organization previously had to ask Congress to raise or lower fees, that authority now sits with the Director of the PTO.

How Can I Help?

If you, or someone you know, need help with any Intellectual Property issue, from filing a patent, trademark or copyright, or just advice regarding how best to protect your ideas and your brand, contact me for a free 30 minute consultation at nvantreeck@usip.com or call TOLL FREE at 1-855-UR IDEAS (1-855-874-3327) and ask for Norman.

– Ex astris, scientia –

I am and avid amateur astronomer and intellectual property attorney in Pasadena, California and I am a Rising Star as rated by Super Lawyers Magazine.  As a former Chief Petty Officer in the U.S. Navy, I am a proud member of the Armed Service Committee of the Los Angeles County Bar Association working to aid all active duty and veterans in our communities. Connect with me on Google +

Norman

Should You Wait To File A Patent Applicataion?

If you qualify under the new America Invents Act (AIA) as a micro entity, the answer might be yes.  Micro entities are entitled to receive a 75% discount on fees.  That can be a significant savings.  However, you must first qualify.

“Micro Entity” must certify that, among other things, that neither the applicant nor the inventor nor any joint inventor has been named as the inventor on more than four previously filed patent applications.

Also, neither the applicant nor the inventor nor any joint inventor had, in the calendar year preceding the calendar year in which the applicable fee is being paid, a gross income (as defined by the IRS) exceeding  three times the median household income for that preceding calendar year. The income level is initially set to $150,162, will entitle an applicant to “Micro Entity” status.

Additionally, the applicant has not assigned, granted, or conveyed, and is not under an obligation by contract or law to assign, grant, or convey, a license or other ownership interest in the application concerned to an entity that would not meet income level discussed above.

“Micro Entities” also include applicants who certify that:

(1) the applicant’s employer, from which the applicant obtains the majority of the applicant’s income, is an institution of higher education as defined in section 101(a) of the Higher Education Act of 1965 (20 U.S.C. 1001(a)); or

(2) the applicant has assigned, granted, conveyed, or is under an obligation by contract or law, to assign, grant, or convey, a license or other ownership interest in the particular applications to such an institution of higher education.

The USPTO also requires that any applicant claiming Micro Entity status must also qualify as a “Small Entity”.  This is intended to prevent Large Entities from qualifying for “Micro Entity” fees by granting some rights to an institution of higher learning.

How Can I Help?

I can help you figure out if you qualify as a micro entity and determine if you can wait for the fee reductions to come into play.  So if you are ready to file a patent application, or know someone that can use my help, please contact me for a free 30 minute consultation by sending me an email or call TOLL FREE at 1-855-UR IDEAS (1-855-874-3327) and ask for Norman.

– Ex astris, scientia –

I am and avid amateur astronomer and intellectual property attorney.  As a former Chief Petty Officer in the U.S. Navy, I am a proud member of the Armed Service Committee of the Los Angeles County Bar Association working to aid all active duty and veterans in our communities.  Connect with me on Google +

Norman

Higher Fees Are On The Way, Happy New Year.

The U.S. Patent and Trademark Office will increase its patent fees for fiscal year 2013.  Although these fee increases generally take place every year, they may particularly harder to swallow given that the current fees reflect a 15% increase that occurred in September 2011, as required by the America Invents Act.

Section 41(f) of Title 35 of the United States Code authorizes the USPTO to adjust certain statutory patent fees to reflect fluctuations during the preceding twelve months in the Consumer Price Index (CPI). The purpose of this provision is to allow the USPTO to recover higher costs of providing services as reflected by the CPI.

Since the USPTO has not yet exercised its new fee-setting authority under the AIA, the USPTO proposes that this CPI increase be implemented on October 1, 2012. According to the USPTO, “The interim increase in fees is necessary to allow the USPTO to meet its strategic goals within the time frame outlined in the FY 2013 President’s Budget. The interim fee increase is a bridge to provide resources until the USPTO exercises its fee-setting authority and develops a new fee structure that will provide sufficient financial resources in the long term.”

Assuming an increase of 2.9%, below are several examples of possible fee adjustments:

  • Utility patent application basic filing fee: $390 (increase of $10)
  • Utility patent examination fee: $260 (increase of $10)
  • Provisional application filing fee: $260 (increase of $10)
  • Maintenance fees: increased $30 at the first stage, $80 at the second stage, and $140 at the third stage.

Of course, these are not the last of the fee changes. As the USPTO notes, “[AIA] Section 10 fee-setting will be addressed in a future proposal.”

How Can I Help?

I can help you figure out the best, most cost efficient strategy for protecting you intellectual property, or know someone that can use my help, please contact me for a free 30 minute consultation by sending me an email or call TOLL FREE at 1-855-UR IDEAS (1-855-874-3327) and ask for Norman.

– Ex astris, scientia –

I am and avid amateur astronomer and intellectual property attorney.  As a former Chief Petty Officer in the U.S. Navy, I am a proud member of the Armed Service Committee of the Los Angeles County Bar Association working to aid all active duty and veterans in our communities.  Connect with me on Google +

Norman