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USPTO Update October 2012

As part of our continuing effort to keep you updated regarding patent related developments in the US, we take this opportunity to report that the USPTO has recently proposed new rules relating to their fee setting and adjusting authority, as authorized by Section 10 of the American Invents Act (AIA). The proposed new rules can be found at 77 Fed. Reg. 55028, published on September 6, 2012. Some of the more interesting provisions proposed include the following:

Drop in Total Fees 

The USPTO indicates applicants will see a 22% drop in fees for “routine patent processes”. Accordingly, the average applicant would see a substantial reduction of fees as long as no Requests for Continued Examination (RCE), Petitions for Extension of Time, etc. are submitted.

Excess Claims Fees 

To partially pay for this 22% drop in fees, the fees for submitting excess claims are proposed to be substantially increased. Under the proposed rules, each independent claim in excess of three independent claims will cost $420, in contrast to the current $250. Additionally, the multiple dependent claim fee is proposed to increase from $450 to $780.

Basic Filing Fees 

Similarly, the USPTO is proposing to increase the total filing, search, and examination fees due with a new utility application filing from $1,250 to $1,600.

RCE Fees 

Under the proposed rules, the filing fee for a first RCE will increase to $1,200, in contrast to the current $930 fee. However, the filing fee for a second or subsequent RCE submission in a single application will cost $1,700, in contrast to the current $930 fee.

Appeal Fees 

The USPTO is proposing to change the fee structure involved with Appeals. Under the current structure, two different $620 fees are due to be paid, the first with the filing of the Notice of Appeal, the second with the filing of the Appeal Brief, for a total of $1,240. The USPTO instead is now proposing a $1,000 Notice of Appeal fee and a $0 fee when filing the Appeal Brief. However, a new $2,000 fee is proposed to forward the appeal file, containing the Appeal Brief and the Examiner’s Answer, to the PTAB for review after the Examiner’s Answer has been received. This fee structure will allow the appellant to reduce the amount invested in the appeal until after receipt of the Examiner’s Answer.

Issue Fees 

In a positive change for applicants, the USPTO is proposing to decrease a utility patent application Issue Fee from the current $1,740 to $960.

Assignment Fees 

In another positive change for applicants, the USPTO is proposing to eliminate the current $40 fee for recordation of an Assignment.

Change in Inventorship 

According to the USPTO, significant additional Examiner work is involved with a change of inventorship. Accordingly, the USPTO is proposing to institute a new $1,000 fee for submitting a petition to change inventorship during examination where it had not been provided before examination started.

Decreased Pendency 

The USPTO estimates that the proposed rules will raise sufficient additional revenue to enable a decrease in total patent pendency by 12 months. In other words, patents will still be granted years after an application is filed.

The proposed rules provide a 60-day comment period. Accordingly, any comments to the proposed rules must be submitted to the USPTO by November 5, 2012. We remain available to gather everyone’s comments and to submit a reply while keeping your name confidential.

On another note, the USPTO has released a new online version of the Manual of Patent Examination Procedures (MPEP). The new website should facilitate online access to the relevant rules and regulations. The new version of the MPEP can be found at http://mpep.uspto.gov.

We remain available at your convenience to discuss how you may wish to revise or update your patent estate and/or future patent strategies based on these proposed rules, as well as whether you wish to submit any comments thereto. If you have any questions, or if there is any way we might be of assistance, please do not hesitate to let us know. 

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Alexandria, VA 22314
Tel: (703) 548-6284

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Princeton, NJ 08542
(By appointment only)

Email: ip@nathlaw.com