America Invents Act: Increases in US Patent Office Fees

Our most recent news bulletin reported on the forthcoming changes to U.S. Patent Law and focused on substantive law changes. The America Invents Act also includes provisions regarding the fees charged by the U.S. Patent and Trademark Office (USPTO).

Sections 10 and 11 of the new law in addition to transferring fee-setting authority to the Director of the Patent and Trademark Office make some changes in fees that will come into effect ten (10) days after the President signs the new law. Those who claim to know say that signature will probably occur this coming Thursday, September 15. The fee changes that will come into effect ten days after this are as follows:

1) A 15% surcharge on all patent fees charged by the USPTO which will remain in effect until the Director decides on a new fee schedule. The adoption of the new fee schedule will require the Director to publish proposed fees and allow for public comment before they are put into effect.

2) On the same day the procedure for requesting prioritized examination, that was proposed earlier in the year but subsequently delayed in implementation for budgetary reasons, will come into effect. The fee for requesting prioritized examination will be $4,800. The fee for requesting prioritized examination will be reduced by 50% for small entities. To request prioritized examination the application must contain or be amended to contain no more than 30 claims no more than four of which may be independent and comply with other conditions imposed by regulations. These regulations have not yet been published.