On July 31, the United States Patent and Trademark Office (USPTO) issued a Notice of Proposed Rule Making (NPRM) outlining proposed increases in patent fees in a number of categories. In particular, America Invents Act (AIA) fees are subject to a 26% increase, substantially more than the 5% increase in across-the-board fees. Acting Chief Financial Officer of the USPTO Sean Mildrew explained in a blog post that “the proposed fee adjustments in the NPRM increase certain patent fees where there are specific needs and increase the remaining needs at a set percentage to address rising expenses.”
The NPRM proposes to raise the fees for inter partes review (IPR) proceedings challenging up to 20 claims from $15,500 to $19,500, and post-institution fees from $15,000 to $18,750, for a total cost of $38,250. In addition, for each claim in excess of 20 a fee of $375.00 for submission and $750.00 for review would apply. The notice justified the increase stating that the average expense of IPRs for the Patent Trial and Appeal Board (PTAB) has increased by more than 20% following the U.S. Supreme Court’s decision in SAS Institute Inc. V. Iancu (SAS) in 2018. In SAS, the Court mandated that the PTAB institute a trial pertaining to all claims or none, when previously the PTAB had the option of instituting on less than all of the claims. The USPTO also modified its pre-institution practice based on the SAS ruling requiring that all arguments raised by the petitioner be addressed in the PTAB’s institution decision. The NPRM stated that this “has increased the amount of time spent per case,” both pre- and post-institution and thus “will increase the average cost to conduct each proceeding.”
The USPTO is currently welcoming feedback on the proposed changes in a 60-day public comment period. Mildrew predicts that “after reviewing and considering the public comments, we expect to prepare a final rule for publication during the summer of 2020”.