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USPTO Small Entity Compliance Guide – Setting and Adjusting Patent Fees during Fiscal Year 2020

Small Entity Compliance Guide

 

Setting and Adjusting Patent Fees during Fiscal Year 2020

United States Department of Commerce

United States Patent and Trademark Office

August 3, 2020

 

USPTO-F-1

 

Section 10(a) of the Leahy-Smith America Invents Act (Act or AIA) as amended by the Study of Underrepresented Classes Chasing Engineering and Science Success Act of 2018 (SUCCESS Act), Pub. L. 115-273, 132 Stat. 4158, authorizes the director of the United States Patent and Trademark Office (Office or USPTO) to set or adjust by rule any patent fee established, authorized, or charged under 35 U.S.C. for any services performed, or materials furnished, by the Office. The SUCCESS Act extends the USPTO fee setting authority until September 16, 2026. Section 10 of the AIA prescribes that fees may be set or adjusted only to recover the aggregate estimated cost to the Office for processing, activities, services, and materials related to patents, including administrative costs of the Office with respect to such patent fees. Section 10 authority includes flexibility to set individual fees in a way that furthers key policy factors, while taking into account the cost of the respective services. Section 10(e) of the AIA sets forth the general requirements for rulemakings that set or adjust fees under this authority. The Office sets or adjusts 296 patent fees in total, including four fees that will be discontinued and five new fees, under section 10 of the AIA in the Final Rule, “Setting and Adjusting Patent Fees during Fiscal Year 2020,” 85 FR 46932 (August 3, 2020). The Final Rule sets or adjusts patent fees for large, small, and micro entities (any reference herein to “large entity” includes all entities other than those that have established entitlement to either a small or micro entity fee discount). For certain fee categories, small and micro entity fee rates are tiered, with small entities at a 50 percent discount and micro entities at a 75 percent discount. Small entity fee eligibility is based on the size or certain non-profit status of the applicant’s business and that of any other party holding rights in the invention. Micro entity fee eligibility is described in section 10(g) of the Act. Additionally, the Final Rule also provides for patent practitioners to periodically submit registration statements electronically, in order to maintain the accuracy of the practitioner directory by the Office of Enrollment and Discipline (OED). There is no fee associated with the registration statement.

 

The Office prepared this Compliance Guide in accordance with the requirements of section 212 of the Small Business Regulatory Enforcement Fairness Act of 1996 (Pub. L. 104-121). The Office intends this Guide to serve as an introduction to the provisions of the Final Rule and more specifically the changes in patent fees most relevant to small entities (as defined in 37 CFR 1.27) and micro entities (as defined in 37 CFR 1.29), including independent patent applicants and holders.

 

This Guide is organized as follows:

 

  • Definitions
  • Fee Changes
  • Biennial Registration for Patent Practitioners
  • How to Pay Fees
  • Effective Dates
  • Available Resources

 

This Guide does not supersede the Final Rule or any existing regulations or guidance issued in other agency regulations. The Final Rule remains the official record of the Office’s section 10 fee and procedural changes. For the full text of the Final Rule, see 85 FR 46932 (August 3, 2020).

 

The contents of this document do not have the force and effect of law and are not meant to bind the public in any way. This document is intended only to provide clarity to the public regarding existing requirements under the law or agency policies.

 

1.   Definitions

 

The Final Rule does not alter the definition of a small entity established prior to the enactment of the AIA, nor does it alter the definition of a micro entity established in the AIA. An overview of each definition is presented below.

 

Small Entity

The Office’s definition of a small entity for the purpose of paying small entity patent fees is established in 37 CFR 1.27, which is entitled “Definition of small entities and establishing status as a small entity to permit payment of small entity fees; when a determination of entitlement to small entity status and notification of loss of entitlement to small entity status are required; fraud on the Office.” Any party (person, small business concern who meets the size standard in

13 CFR 121.801 through 13 CFR 121.805, or nonprofit organization) that is entitled to small entity status in accordance with the definitions set forth in 37 CFR 1.27(a) is entitled to a 50 percent discount on eligible fees. For the purpose of paying reduced fees under the authority of section 10, this definition does not change.

 

Micro Entity

The Office’s definition of a micro entity for the purpose of paying micro entity patent fees was created by section 10(g) of the AIA. 125 Stat. at 318-19; see also 35 U.S.C. 123. The definition of micro entity established in the AIA includes limitations based on the number of previously filed applications, gross income, and ownership interests, as well as a separate provision concerning institutions of higher education. For the purpose of paying reduced fees under the authority of section 10, the Final Rule primarily tracks the eligibility requirements set forth in the law. With the implementation of micro entity fees in 2013, the Office set forth rules of practice pertaining to how an applicant can qualify for micro entity discounts. See Changes to Implement Micro Entity Status for Paying Patent Fees, 77 FR 75019 (Dec. 19, 2012).

 

Fee Reductions

 

Small Entities: The AIA provides that fees set or adjusted under section 10(a) “for filing, searching, examining, issuing, appealing, and maintaining patent applications and patents shall be reduced by 50 percent” with respect to the application of such fees to any “small entity” (as defined in 37 CFR 1.27) that qualifies for reduced fees under 35 U.S.C. 41(h)(1). 125 Stat. at 316-17. 35 U.S.C. 41(h)(1), in turn, provides that certain patent fees “shall be reduced by 50 percent” for a small business concern, as defined in section three of the SBA, and for any independent inventor or nonprofit organization, as defined in regulations described by the director. Of the 86 small entity fees affected in the Final Rule, 84 are adjusted, and two new small entity fees are established.

 

Micro Entities: Section 10(b) of the Act provides that the fees set or adjusted under section 10(a) “for filing, searching, examining, issuing, appealing, and maintaining patent applications and patents shall be reduced … by 75 percent with respect to the application of such fees to any micro entity as defined in [35 U.S.C.] 123.” 125 Stat. at 315-17. Of the 84 micro entity fees affected in the Final Rule, 83 are current fees that are adjusted, and one is a newly established micro entity fee set at a reduction of 75 percent from the large entity fee amounts.

2.   Fee Changes

The Final Rule sets or adjusts patent fees consistent with section 10 authority and the Office’s rulemaking goals. The Final Rule does not implement any changes to the process of paying fees, nor does it introduce any new regulations by which entities eligible for fee reductions must comply.

 

See the Table of Patent Fee Changes appended to this Guide for the full list of current and prior fee amounts as well as the dollar change in large entity fees. The table lists “Current Fees” for large, small, and micro entities and the “Final Patent Fee Schedule Fees” set in the Final Rule.

 

This section of the Guide offers an overview of both new and restructured fee changes as well as a specific discussion of changes for small and micro entities.

 

New and Restructured Fees

 

The Final Rule introduces five new fees, discontinues four fees, and revises all patent fees not covered by the targeted adjustments. An overview of the new fees created in the Final Rule is below.

 

Surcharge – Non-DOCX Filing: The Office is implementing a new fee for utility non-provisional applications filed under 35 U.S.C. 111 and submitted in a format other than DOCX (structured text). This surcharge applies to filings that are submitted in an electronic document, such as a PDF, that is not saved in the DOCX format. It also applies to filings that are submitted non-electronically, in addition to the existing paper filing surcharge. The surcharge is being introduced for specifications, claims, and abstracts. This surcharge will be effective on January 1, 2022. The large entity fee is $400, and the small and micro entity fees are set to $200 and $100 respectively.

 

Pro Hac Vice Admission: The Office is implementing a fee to appear pro hac vice in an AIA trial proceeding. The non-registered practitioner fee is for each proceeding that a non-registered practitioner requests admission to practice. If a non-registered practitioner requests admission to multiple AIA trial proceedings, multiple requests and fees will be required, one for each proceeding. Once a request is granted, the counsel is admitted for the entire duration of a proceeding, which may extend for several years (e.g., when an inter partes review proceeds to final written decision and, after appeal to the Federal Circuit, is remanded back to the Patent Trial and Appeal Board for further proceedings). The fee is $250. This fee is not eligible for small or micro entity discounts.

 

 

Small and Micro Entity Fee Changes

 

As noted above, all fees set or adjusted in the Final Rule are included in the Table of Patent Fee Changes appended to this Guide. The table lists “Current Fees” for large, small, and micro entities and the “Final Patent Fee Schedule Fees” set in the Final Rule.

 

Fee Increases: Of the 86 small entity fees affected by the Final Rule, 84 fees were increased. Of the 84 micro entity fees affected in the Final Rule, 83 fees were increased.

 

Notable fee increases for small and micro entities include:

  • Maintenance fee surcharge increases by 213 percent for all stages and all entity types. The Office sets the surcharge for a late maintenance fee payment within six months following the due date at $250 for small entities and $125 for micro entities (fee codes 2554, 3554, 2555, 3555, 2556, 3556). It is the responsibility of the patentee to ensure maintenance fees are paid timely to prevent expiration of a patent. If a maintenance fee is not paid within the first six months of the year in which it can be paid, a maintenance fee reminder notice is sent to the fee address or correspondence address on record. At this point, a surcharge is required in addition to the maintenance fee in order to maintain a patent.
  • Request for expedited examination of a design application fee increases by 78 percent. Fee codes 2802 and 3802 increase to $450 and $225 respectively.
  • Both the utility and reissue issue fees increase by 20 percent. Utility issue fee codes 2501 and 3501 increase to $600 and $300 respectively. Reissue issue fee codes 2511 and 3511 increase to $600 and $300 respectively.
  • First stage maintenance fees increase by 25 percent. Fee codes 2551 and 3551 increase to $1,000 and $500 respectively.
  • AIA trial fees, while not eligible for entity type discounts, are increasing. The following fee rates are increasing:
    • Inter partes review request fee – Up to 20 claims (23 percent)
    • Inter partes review post-institution fee – Up to 20 claims (50 percent)
    • Inter partes review request of each claim in excess of 20 (25 percent)
    • Inter partes post-institution request of each claim in excess of 20 (25 percent)
    • Post-grant or covered business method review request fee – Up to 20 claims (25 percent)
    • Post-grant or covered business method review post-institution fee – Up to 20 claims (25 percent)
    • Post-grant or covered business method review request of each claim in excess of 20 (27 percent)
    • Post-grant or covered business method review post-institution request of each claim in excess of 20 (27 percent)

3.   Biennial Registration for Patent Practitioners

Every two years, registered patent practitioners, as well as individuals granted limited recognition under 37 CFR 11.9(b), will be required to file a registration statement with the OED director. Adequate notice will be provided and sent to patent practitioners in advance of the due date for electronically filing of the registration statement through the USPTO’s online system. The registration statement takes the place of the practitioner survey, which is currently administered on paper.  The USPTO anticipates that patent practitioners will first be required to submit a registration statement in the spring of 2022.  Practitioners will not be required to pay any fee at the time the registration statement is filed.  Patent practitioners will have the opportunity to certify that they have voluntarily completed a certain amount of continuing legal education (CLE).  CLE remains voluntary, but the OED director will be authorized to publish the CLE status of patent practitioners.

4.   How to Pay Fees

As noted above, the Final Rule does not change the way an applicant or other patent stakeholder pays patent fees to the USPTO.

 

Any fee adjusted by the Final Rule that is paid on or after the effective date of the Final Rule, except for the amendment to § 1.16(u)—which is effective on January 1, 2022—is subject to the new fee amount. The amount of the fee to be paid for a given item will be determined by the time of filing of that item with the Office. The time of filing will be determined either according to the date of receipt in the Office (37 CFR 1.6) or the date reflected on a proper Certificate of Mailing or Transmission, where such a certificate is authorized under 37 CFR 1.8. Use of a Certificate of Mailing or Transmission is not authorized for items that are specifically excluded from the provisions of 37 CFR 1.8. Items for which a Certificate of Mailing or Transmission under 37 CFR 1.8 is not authorized include, for example, filing of national and international applications for patents. See 37 CFR 1.8(a)(2).

 

Patent-related correspondence delivered by the “Priority Mail Express®” Post Office to Addressee service of the United States Postal Service (USPS) is considered filed or received by the USPTO on the date of deposit with the USPS. See 37 CFR 1.10(a)(1). The date of deposit with the USPS is shown by the “date accepted” on the “Priority Mail Express” label or other official USPS notation.

 

Applicants should continue to follow the guidance issued by the USPTO concerning fee payment processes and procedures. See the learning and resources section of the USPTO website for more information.

 

5.   Effective Dates

The fees set in the Final Rule are effective on October 2, 2020, except for the non-DOCX filing surcharge—the amendment to § 1.16(u)—which is effective on January 1, 2022.

6.   Available Resources

 

Setting and Adjusting Patent Fees during Fiscal Year 2020, 85 FR 46932 (August 3, 2020)

Setting and Adjusting Patent Fees during Fiscal Year 2017, 82 FR 52780 (Nov. 14, 2017)

Changes to Implement Micro Entity Status for Paying Patent Fees, 77 FR 75019 (Dec. 19, 2012) Setting and Adjusting Patent Fees, 78 FR 4212 (Jan. 18, 2013)

 

USPTO Fees & payment FAQs

USPTO Quick Start Guide: EFS-Web Fee Payment

USPTO Fees and Budgetary Issues

USPTO Inventor and entrepreneur resources

USPTO Fees and payment

 

Appendix A

USPTO Section 10 Fee Setting – Table of Patent Fee Changes

 

 

Fee Code 37 CFR Description Current Fees Final Patent Fee Schedule Increase/(Decrease) Percentage Change
Large Entity Fee Small Entity Fee Micro Entity Fee Large Entity Fee Small Entity Fee Micro Entity Fee Large Entity Fee Small Entity Fee Micro Entity Fee Large Entity Fee Small Entity Fee Micro Entity Fee
Patent Application Filing Fees                        
1011/2011/3011 1.16(a) Basic Filing fee – Utility (paper filing also requires non-electronic filing fee under 1.16(t)) $300 $150 $75 $320 $160 $80 $20 $10 $5 7% 7% 7%
4011 1.16(a) Basic filing fee – Utility (electronic filing for small entities) n/a $75 n/a n/a $80 n/a n/a $5 n/a n/a 7% n/a
1012/2012/3012 1.16(b) Basic Filing Fee – Design $200 $100 $50 $220 $110 $55 $20 $10 $5 10% 10% 10%
1017/2017/3017 1.16(b) Basic Filing Fee – Design (CPA) $200 $100 $50 $220 $110 $55 $20 $10 $5 10% 10% 10%
1013/2013/3013 1.16(c) Basic Filing Fee – Plant $200 $100 $50 $220 $110 $55 $20 $10 $5 10% 10% 10%
1005/2005/3005 1.16(d) Provisional Application Filing Fee $280 $140 $70 $300 $150 $75 $20 $10 $5 7% 7% 7%
1014/2014/3014 1.16(e) Basic Filing Fee – Reissue $300 $150 $75 $320 $160 $80 $20 $10 $5 7% 7% 7%
1019/2019/3019 1.16(e) Basic Filing Fee – Reissue (Design CPA) $300 $150 $75 $320 $160 $80 $20 $10 $5 7% 7% 7%
1051/2051/3051 1.16(f) Surcharge – Late Filing Fee, Search Fee, Examination Fee, Inventor’s Oath or Declaration, or Application Filed Without at least One Claim or by Reference $160 $80 $40 no change no change no change
1052/2052/3052 1.16(g) Surcharge – Late Provisional Filing Fee or Cover Sheet $60 $30 $15 no change no change no change
1053/2053/3053 1.17(i)(1) Non-English Translation $140 $70 $35 no change no change no change
1201/2201/3201 1.16(h) Each Independent Claim in Excess of Three $460 $230 $115 $480 $240 $120 $20 $10 $5 4% 4% 4%
1204/2204/3204 1.16(h) Each Reissue Independent Claim in Excess of Three $460 $230 $115 $480 $240 $120 $20 $10 $5 4% 4% 4%
1202/2202/3202 1.16(i) Each Claim in Excess of 20 $100 $50 $25 no change no change no change
1205/2205/3205 1.16(i) Each Reissue Claim in Excess of 20 $100 $50 $25 no change no change no change
1203/2203/3203 1.16(j) Multiple Dependent Claim $820 $410 $205 $860 $430 $215 $40 $20 $10 5% 5% 5%
1081/2081/3081 1.16(s) Utility Application Size Fee – for Each Additional 50 Sheets That Exceeds 100 Sheets $400 $200 $100 $420 $210 $105 $20 $10 $5 5% 5% 5%
1082/2082/3082 1.16(s) Design Application Size Fee – for Each Additional 50 Sheets That Exceeds 100 Sheets $400 $200 $100 $420 $210 $105 $20 $10 $5 5% 5% 5%
1083/2083/3083 1.16(s) Plant Application Size Fee – for Each Additional 50 Sheets That Exceeds 100 Sheets $400 $200 $100 $420 $210 $105 $20 $10 $5 5% 5% 5%
1084/2084/3084 1.16(s) Reissue Application Size Fee – for Each Additional 50 Sheets That Exceeds 100 Sheets $400 $200 $100 $420 $210 $105 $20 $10 $5 5% 5% 5%
1085/2085/3085 1.16(s) Provisional Application Size Fee – for Each Additional 50 Sheets That Exceeds 100 Sheets $400 $200 $100 $420 $210 $105 $20 $10 $5 5% 5% 5%
New Fee Code 1.16(u) Surcharge – Non-DOCX Filing n/a n/a n/a $400 $200 $100 $400 $200 $100 n/a n/a n/a
New Fee Code 1.16(u) Surcharge – Non-DOCX Filing – (electronic filing for small entities) n/a n/a n/a n/a $200 n/a n/a $200 n/a n/a n/a n/a
1091/2091/3091 1.21(o)(1) Submission of sequence listings of 300MB to 800MB $1,000 $500 $250 $1,060 $530 $265 $60 $30 $15 6% 6% 6%
1092/2092/3092 1.21(o)(2) Submission of sequence listings of more than 800 MB $10,000 $5,000 $2,500 $10,500 $5,250 $2,625 $500 $250 $125 5% 5% 5%
Patent Search Fees                          
1111/2111/3111 1.16(k) Utility Search Fee $660 $330 $165 $700 $350 $175 $40 $20 $10 6% 6% 6%
1112/2112/3112 1.16(l) Design Search Fee $160 $80 $40 no change no change no change
1113/2113/3113 1.16(m) Plant Search Fee $420 $210 $105 $440 $220 $110 $20 $10 $5 5% 5% 5%
1114/2114/3114 1.16(n) Reissue Search Fee $660 $330 $165 $700 $350 $175 $40 $20 $10 6% 6% 6%
Patent Examination Fees                          
1311/2311/3311 1.16(o) Utility Examination Fee $760 $380 $190 $800 $400 $200 $40 $20 $10 5% 5% 5%
1312/2312/3312 1.16(p) Design Examination Fee $600 $300 $150 $640 $320 $160 $40 $20 $10 7% 7% 7%
1313/2313/3313 1.16(q) Plant Examination Fee $620 $310 $155 $660 $330 $165 $40 $20 $10 6% 6% 6%
1314/2314/3314 1.16(r) Reissue Examination Fee $2,200 $1,100 $550 $2,320 $1,160 $580 $120 $60 $30 5% 5% 5%
Patent Post-Allowance Fees                        
1501/2501/3501 1.18(a)(1) Utility Issue Fee $1,000 $500 $250 $1,200 $600 $300 $200 $100 $50 20% 20% 20%
1511/2511/3511 1.18(a)(1) Reissue Issue Fee $1,000 $500 $250 $1,200 $600 $300 $200 $100 $50 20% 20% 20%
1502/2502/3502 1.18(b)(1) Design Issue Fee $700 $350 $175 $740 $370 $185 $40 $20 $10 6% 6% 6%
1503/2503/3503 1.18(c)(1) Plant Issue Fee $800 $400 $200 $840 $420 $210 $40 $20 $10 5% 5% 5%
n/a 1.18(d)(1) Publication Fee for Early, Voluntary, or Normal Publication $0 $0 $0 no change no change no change
1505/2505/3505 1.18(d)(3) Publication Fee for Republication $300 $320 $20 7%
Patent Extension of Time Fees                        
1251/2251/3251 1.17(a)(1) Extension for Response Within First Month $200 $100 $50 $220 $110 $55 $20 $10 $5 10% 10% 10%
1252/2252/3252 1.17(a)(2) Extension for Response Within Second Month $600 $300 $150 $640 $320 $160 $40 $20 $10 7% 7% 7%
1253/2253/3253 1.17(a)(3) Extension for Response Within Third Month $1,400 $700 $350 $1,480 $740 $370 $80 $40 $20 6% 6% 6%
1254/2254/3254 1.17(a)(4) Extension for Response Within Fourth Month $2,200 $1,100 $550 $2,320 $1,160 $580 $120 $60 $30 5% 5% 5%
1255/2255/3255 1.17(a)(5) Extension for Response Within Fifth Month $3,000 $1,500 $750 $3,160 $1,580 $790 $160 $80 $40 5% 5% 5%
Patent Maintenance Fees                          
1551/2551/3551 1.20(e) For Maintaining an Original or Any Reissue Patent, Due at 3.5 years $1,600 $800 $400 $2,000 $1,000 $500 $400 $200 $100 25% 25% 25%
1552/2552/3552 1.20(f) For Maintaining an Original or Any Reissue Patent, Due at 7.5 years $3,600 $1,800 $900 $3,760 $1,880 $940 $160 $80 $40 4% 4% 4%
1553/2553/3553 1.20(g) For Maintaining an Original or Any Reissue Patent, Due at 11.5 years $7,400 $3,700 $1,850 $7,700 $3,850 $1,925 $300 $150 $75 4% 4% 4%
1554/2554/3554 1.20(h) Surcharge – 3.5 year – Late Payment Within 6 Months $160 $80 $40 $500 $250 $125 $340 $170 $85 213% 213% 213%
1555/2555/3555 1.20(h) Surcharge – 7.5 year – Late Payment Within 6 Months $160 $80 $40 $500 $250 $125 $340 $170 $85 213% 213% 213%
1556/2556/3556 1.20(h) Surcharge – 11.5 year – Late Payment Within 6 Months $160 $80 $40 $500 $250 $125 $340 $170 $85 213% 213% 213%
1558/2558/3558 1.17(m) Petition for the Delayed Payment of the Fee for Maintaining a Patent in Force $2,000 $1,000 $500 $2,100 $1,050 $525 $100 $50 $25 5% 5% 5%
Miscellaneous Patent Fees                          
1801/2801/3801 1.17(e)(1) Request for Continued Examination (RCE) – 1st Request (see 37 CFR 1.114) $1,300 $650 $325 $1,360 $680 $340 $60 $30 $15 5% 5% 5%
1820/2820/3820 1.17(e)(2) Request for Continued Examination (RCE) – 2nd and Subsequent Request (see 37 CFR 1.114) $1,900 950 $475 $2,000 $1,000 $500 $100 $50 $25 5% 5% 5%
1817/2817/3817 1.17(c) Request for Prioritized Examination $4,000 $2,000 $1,000 $4,200 $2,100 $1,050 $200 $100 $50 5% 5% 5%
1819/2819/3819 1.17(d) Correction of Inventorship After First Action on Merits $600 $300 $150 $640 $320 $160 $40 $20 $10 7% 7% 7%
1830/2830/3830 1.17(i)(1) Processing Fee, Except in Provisional Applications $140 $70 $35 no change no change no change
1808/2808/3808 1.17(i)(2) Other Publication Processing Fee $130 $140 $10 8%
1803/2803/3803 1.17(i)(2) Request for Voluntary Publication or Republication $130 $140 $10 8%
1802/2802/3802 1.17(k) Request for Expedited Examination of a Design Application $900 $450 $225 $1,600 $800 $400 $700 $350 $175 78% 78% 78%
1818/2818 1.17(o) Document Fee For Third-Party Submissions (see 37 CFR 1.290(f)) $180 $90 no change no change no change
1806/2806/3806 1.17(p) Submission of an Information Disclosure Statement $240 $120 $60 $260 $130 $65 $20 $10 $5 8% 8% 8%
1807/2807/3807 1.17(q) Processing Fee for Provisional Applications $50 no change no change no change
1809/2809/3809 1.17(r) Filing a Submission After Final Rejection (see 37 CFR 1.129(a)) $840 $420 $210 $880 $440 $220 $40 $20 $10 5% 5% 5%
1810/2810/3810 1.17(s) For Each Additional Invention to be Examined (see 37 CFR 1.129(b)) $840 $420 $210 $880 $440 $220 $40 $20 $10 5% 5% 5%
Post Issuance Fees                          
1811/2811/3811 1.20(a) Certificate of Correction $150 $160 $10 7%
1816 1.20(b) Processing Fee for Correcting Inventorship in a Patent $150 $160 $10 7%
1831/2831/3831 1.20(c)(1) Ex Parte Reexamination (§ 1.510(a)) Streamlined $6,000 $3,000 $1,500* $6,300 $3,150 $1,575* $300 $150 $75 5% 5% 5%
1812/2812/3812 1.20(c)(2) Ex Parte Reexamination (§ 1.510(a)) Non-Streamlined $12,000 $6,000 $3,000* $12,600 $6,300 $3,150* $600 $300 $150 5% 5% 5%
1812/2812/3812 1.20(c)(7) Refused request for ex parte Reexamination $3,600 $1,800 $900* $3,780 $1,890 $945* $180 $90 $45 5% 5% 5%
1821/2821/3821 1.20(c)(3) Each Reexamination Independent Claim in Excess of Three and Also in Excess of the Number of Such Claims in the Patent Under Reexamination $460 $230 $115 $480 $240 $120 $20 $10 $5 4% 4% 4%
1822/2822/3822 1.20(c)(4) Each Reexamination Claim in Excess of 20 and Also in Excess of the Number of Claims in the Patent Under Reexamination $100 $50 $25 no change no change no change
1814 1.20(d) Statutory Disclaimer, Including Terminal Disclaimer $160 $170 $10 6%
1826/2826/3826 1.20(k)(1) Request for Supplemental Examination $4,400 $2,200 $1,100 $4,620 $2,310 $1,155 $220 $110 $55 5% 5% 5%
1827/2827/3827 1.20(k)(2) Reexamination Ordered as a Result of Supplemental Examination $12,100 $6,050 $3,025 $12,700 $6,350 $3,175 $600 $300 $150 5% 5% 5%
1828/2828/3828 1.20(k)(3)(i) Supplemental Examination Document Size Fee – for Nonpatent Document Having Between 21 and 50 Sheets $180 $90 $45 no change no change no change
1829/2829/3829 1.20(k)(3)(ii) Supplemental Examination Document Size Fee – for Each Additional 50 Sheets or a Fraction Thereof in a Nonpatent Document $280 $140 $70 $300 $150 $75 $20 $10 $5 7% 7% 7%
* Third-Party Filers Are Not Eligible for the Micro Entity Fee.
Patent Trial and Appeal Fees                        
1405/2405/3405 41.20(a) Petitions to the Chief Administrative Patent Judge Under 37 CFR 41.3 $400 $420 $20 5%
1401/2401/3401 41.20(b)(1) Notice of Appeal $800 $400 $200* $840 $420 $210 $40 $20 $10 5% 5% 5%
n/a 41.20(b)(2)(i) Filing a Brief in Support of an Appeal $0 $0 $0 no change no change no change
1404/2404/3404 41.20(b)(2)(ii) Filing a Brief in Support of an Appeal in an Inter Partes Reexamination Proceeding $2,000 $1,000 $500* $2,100 $1,050 $525 $100 $50 $25 5% 5% 5%
1403/2403/3403 41.20(b)(3) Request for Oral Hearing $1,300 $650 $325* $1,360 $680 $340 $60 $30 $15 5% 5% 5%
1413/2413/3413 41.20(b)(4) Forwarding an Appeal in an Application or Ex Parte Reexamination Proceeding to the Board $2,240 $1,120 $560* $2,360 $1,180 $590* $120 $60 $30 5% 5% 5%
1406/2406/3406 42.15(a)(1) Inter Partes Review Request Fee – Up to 20 Claims $15,500 $19,000 $3,500 23%
1414/2414/3414 42.15(a)(2) Inter Partes Review Post-Institution Fee – Up to 15 Claims $15,000 n/a n/a n/a
1414 42.15(a)(2) Inter Partes Review Post-Institution Fee – Up to 20 Claims n/a $22,500 n/a n/a
1407 42.15(a)(3) Inter Partes Review Request of Each Claim in Excess of 20 $300 $375 $75 25%
1415 42.15(a)(4) Inter Partes Post-Institution Request of Each Claim in Excess of 15 $600 n/a n/a n/a
1415 42.15(a)(4) Inter Partes Post-Institution Request of Each Claim in Excess of 20 n/a $750 n/a n/a
1408/2408/3408 42.15(b)(1) Post-Grant or Covered Business Method Review Request Fee – Up to 20 Claims $16,000 $20,000 $4,000 25%
1416/2416/3416 42.15(b)(2) Post-Grant or Covered Business Method Review Post-Institution Fee – Up to 15 Claims $22,000 n/a n/a n/a
1416 42.15(b)(2) Post-Grant or Covered Business Method Review Post-Institution Fee – Up to 20 Claims n/a $27,500 n/a n/a
1409 42.15(b)(3) Post-Grant or Covered Business Method Review Request of Each Claim in Excess of 20 $375 $475 $100 27%
1417 42.15(b)(4) Post-Grant or Covered Business Method Review Post-Institution Request of Each Claim in Excess of 15 $825 n/a n/a n/a
1417 42.15(b)(4) Post-Grant or Covered Business Method Review Post-Institution Request of Each Claim in Excess of 20 n/a $1,050 n/a n/a
1412 42.15(c)(1) Petition for a Derivation Proceeding $400 $420 $20 5%
1411 42.15(d) Request to Make a Settlement Agreement Available and Other Requests Filed in a Patent Trial Proceeding $400 $420 $20 5%
New Fee Code 42.15(e) Pro Hac Vice Admission Fee n/a $250 $250 n/a
* Third-Party Filers Are Not Eligible for the Micro Entity Fee.
Patent Petition Fees                          
1462/2462/3462 1.17(f) Petitions Requiring the Petition Fee Set Forth in 37 CFR 1.17(f) (Group I) $400 $200 $100 $420 $210 $105 $20 $10 $5 5% 5% 5%
1463/2463/3463 1.17(g) Petitions Requiring the Petition Fee Set Forth in 37 CFR 1.17(g) (Group II) $200 $100 $50 $220 $110 $55 $20 $10 $5 10% 10% 10%
1464/2464/3464 1.17(h) Petitions Requiring the Petition Fee Set Forth in 37 CFR 1.17(h) (Group III) $140 $70 $35 no change no change no change
1453/2453/3453 1.17(m) Petition for Revival of an Abandoned Application for a Patent, for the Delayed Payment of the Fee for Issuing Each Patent, or for the Delayed Response by the Patent Owner in any Reexamination Proceeding $2,000 $1,000 $500 $2,100 $1,050 $525 $100 $50 $25 5% 5% 5%
1454/2454/3454 1.17(m) Petition for the Delayed Submission of a Priority or Benefit Claim $2,000 $1,000 $500 $2,100 $1,050 $525 $100 $50 $25 5% 5% 5%
1783/2783/3783 1.17(t) Petition to Convert an International Design Application to a Design Application Under 35 U.S.C. Chapter 16 $180 $90 $45 no change no change no change
1784/2784/3784 1.17(m) Petition to Excuse Applicant’s Failure to Act Within Prescribed Time Limits in an International Design Application $2,000 $1,000 $500 $2,100 $1,050 $525 $100 $50 $25 5% 5% 5%
1455/2455/3455 1.18(e) Filing an Application for Patent Term Adjustment $200 $210 $10 5%
1456/2456/3456 1.18(f) Request for Reinstatement of Term Reduced $400 $420 $20 5%
1824/2824/3824 1.20(c)(6) Petitions in a Reexamination Proceeding, Except for those Specifically Enumerated in 37 CFR 1.550(i) and 1.937(d) $1,940 $970 $485* $2,040 $1,020 $510 $100 $50 $25 5% 5% 5%
1457/2457/3457 1.20(j)(1) Extension of Term of Patent $1,120 $1,180 $60 5%
1458/2458/3458 1.20(j)(2) Initial Application for Interim Extension (see 37 CFR 1.790) $420 $440 $20 5%
1459/2459/3459 1.20(j)(3) Subsequent Application for Interim Extension (see 37 CFR 1.790) $220 $230 $10 5%
* Third-Party Filers Are Not Eligible for the Micro Entity Fee.
PCT Fees – National Stage                          
1631/2631/3631 1.492(a) Basic National Stage Fee $300 $150 $75 $320 $160 $80 $20 $10 $5 7% 7% 7%
n/a 1.492(b)(1) National Stage Search Fee – U.S. was the ISA or IPEA and All Claims Satisfy PCT Article 33(1)-(4) $0 $0 $0 no change no change no change
1641/2641/3641 1.492(b)(2) National Stage Search Fee – U.S. Was the ISA $140 $70 $35 no change no change no change
1642/2642/3642 1.492(b)(3) National Stage Search Fee – Search Report Prepared and Provided to USPTO $520 $260 $130 $540 $270 $135 $20 $10 $5 4% 4% 4%
1632/2632/3632 1.492(b)(4) National Stage Search Fee – All Other Situations $660 $330 $165 $700 $350 $175 $40 $20 $10 6% 6% 6%
n/a 1.492(c)(1) National Stage Examination Fee – U.S. was the ISA or IPEA and All Claims Satisfy PCT Article 33(1)-(4) $0 $0 $0 no change no change no change
1633/2633/3633 1.492(c)(2) National Stage Examination Fee – All Other Situations $760 $380 $190 $800 $400 $200 $40 $20 $10 5% 5% 5%
1614/2614/3614 1.492(d) Each Independent Claim in Excess of Three $460 $230 $115 $480 $240 $120 $20 $10 $5 4% 4% 4%
1615/2615/3615 1.492(e) Each Claim in Excess of 20 $100 $50 $25 no change no change no change
1616/2616/3616 1.492(f) Multiple Dependent Claim $820 $410 $205 $860 $430 $215 $40 $20 $10 5% 5% 5%
1617/2617/3617 1.492(h) Search Fee, Examination Fee or Oath or Declaration After the Date of Commencement of the National Stage $140 $70 $35 $160 $80 $40 $20 $10 $5 14% 14% 14%
1618/2618/3618 1.492(i) English Translation After Thirty Months From Priority Date $140 $70 $35 no change no change no change
1681/2681/3681 1.492(j) National Stage Application Size Fee – for Each Additional 50 Sheets That Exceeds 100 Sheets $400 $200 $100 $420 $210 $105 $20 $10 $5 5% 5% 5%
PCT Fees – International Stage                        
1601/2601/3601 1.445(a)(1)(i)(A) Transmittal Fee $240 $120 $60 $260 $130 $65 $20 $10 $5 8% 8% 8%
1602/2602/3602 1.445(a)(2)(i) Search Fee – Regardless of Whether There is a Corresponding Application (see 35 U.S.C. 361(d) and PCT Rule 16) $2,080 $1,040 $520 $2,180 $1,090 $545 $100 $50 $25 5% 5% 5%
1604/2604/3604 1.445(a)(3)(i) Supplemental Search Fee When Required, per Additional Invention $2,080 $1,040 $520 $2,180 $1,090 $545 $100 $50 $25 5% 5% 5%
1621/2621/3621 1.445(a)(4)(i) Transmitting Application to Intl. Bureau to Act as Receiving Office $240 $120 $60 $260 $130 $65 $20 $10 $5 8% 8% 8%
1605/2605/3605 1.482(a)(1)(i) Preliminary Examination Fee – U.S. Was the ISA $600 $300 $150 $640 $320 $160 $40 $20 $10 7% 7% 7%
1606/2606/3606 1.482(a)(1)(ii) Preliminary Examination Fee – U.S. Was Not the ISA $760 $380 $190 $800 $400 $200 $40 $20 $10 5% 5% 5%
1607/2607/3607 1.482(a)(2)(i) Supplemental Examination Fee per Additional Invention $600 $300 $150 $640 $320 $160 $40 $20 $10 7% 7% 7%
1619 1.481 Late Payment Fee variable no change no change no change
1627/2627/3627 1.445(a)(5) and 1.482(c) Late Furnishing Fee for Providing a Sequence Listing in Response to an Invitation Under PCT Rule 13ter $300 $150 $75 $320 $160 $80 $20 $10 $5 7% 7% 7%
Hague International Design Application Fees                        
1781/2781/3781 1.1031(a) Hague International Design Application – Transmittal Fee $120 $60 $30 no change no change no change
1791/2791/3791   International Design Application First Part U.S. Designation Fee $960 $480 $240 $1,020 $510 $255 $60 $30 $15 6% 6% 6%
1792/2792/3792   (Part II Designation Fee) Issue Fee Paid Through the International Bureau in an International Design Application $700 $350 $175 $740 $370 $185 $40 $20 $10 6% 6% 6%
Patent Service Fees                          
8001 1.19(a)(1) Printed Copy of Patent W/O Color, Delivery by USPS, USPTO Box, or Electronic Means $3 no change no change no change
8003 1.19(a)(2) Printed Copy of Plant Patent in Color $15 no change no change no change
8004 1.19(a)(3) Color Copy of Patent (Other Than Plant Patent) Containing a Color Drawing $25 no change no change no change
8005 1.19(a)(1) Patent Application Publication (PAP) $3 no change no change no change
8007 1.19(b)(1)(i)(A) and (ii)(A) Copy of Patent Application as Filed $35 no change no change no change
8010 1.19(b)(1)(i)(D) Individual Application Documents, Other Than Application as Filed, per Document $25 no change no change no change
8051 1.19(b)(1)(i)(B) Copy Patent File Wrapper, Paper Medium, Any Number of Sheets $280 $290 $10 4%
8052 1.19(b)(1)(ii)(B) Copy Patent File Wrapper, Electronic Medium, Any Size or Provided Electronically $55 $60 $5 9%
8013 1.19(b)(3) Copy of Office Records, Except Copies of Applications as Filed $25 no change no change no change
8014 1.19(b)(4) For Assignment Records, Abstract of Title and Certification, per Patent $35 no change no change no change
8904 1.19(c) Library Service $50 no change no change no change
8017 1.19(f) Copy of Non-U.S. Document $25 no change no change no change
8020 1.21(e) International Type Search Report $40 no change no change no change
n/a 1.21(h)(1) Recording Each Patent Assignment, Agreement or Other Paper, per Property – if Submitted Electronically $0 no change no change no change
8021 1.21(h)(2) Recording Each Patent Assignment, Agreement or Other Paper, per Property – if Not Submitted Electronically $50 no change no change no change
8022 1.21(i) Publication in Official Gazette $25 no change no change no change
8026 1.21(n) Handling Fee for Incomplete or Improper Application $130 $140 $10 8%
8053 1.21(p) Additional Fee for Overnight Delivery $40 no change no change no change
8054 1.21(q) Additional Fee for Expedited Service $160 $170 $10 6%
8057 1.19(j) Copy of Patent Technology Monitoring Team (PTMT) patent bibliographic extract and other DVD (optical disc) $50 discontinue n/a n/a
8058 1.19(k) Copy of U.S. patent custom data extracts $100 discontinue n/a n/a
8059 1.19(l) Copy of selected technology reports, miscellaneous technology areas $30 discontinue n/a n/a
Patent Enrollment Fees                          
9001 1.21(a)(1)(i) Application Fee (Non-Refundable) $100 $110 $10 10%
9003 1.21(a)(2)(i) On Registration to Practice Under §11.6 $200 $210 $10 5%
9026 1.21(a)(2)(ii) On Grant of Limited Recognition Under §11.9(b) $200 $210 $10 5%
9005 1.21(a)(4)(i) Certificate of Good Standing as an Attorney or Agent, Standard $40 no change no change no change
9006 1.21(a)(4)(ii) Certificate of Good Standing as an Attorney or Agent, Suitable for Framing $50 no change no change no change
9010 1.21(a)(1)(ii)(A) For Test Administration by Commercial Entity $200 $210 $10 5%
9011 1.21(a)(1)(ii)(B) For Test Administration by the USPTO $450 $470 $20 4%
9012 1.21(a)(5)(i) Review of Decision by the Director of Enrollment and Discipline Under §11.2(c) $400 $420 $20 5%
9013 1.21(a)(5)(ii) Review of Decision of the Director of Enrollment and Discipline Under §11.2(d) $400 $420 $20 5%
9014 1.21(a)(10)(i) On Petition for Reinstatement by a Person Excluded or Suspended on Ethical Grounds, or Excluded on Consent from Practice before the Office $1,600 $1,680 $80 5%
9004 1.21(a)(9)(ii) Administrative Reinstatement Fee $200 $210 $10 5%
9020 1.21(a)(9)(i) Delinquency Fee $50 no change no change no change
9024 1.21(k) Unspecified Other Services, Excluding Labor at cost no change no change no change
9025 1.21(a)(2)(iii) On Change of Registration From Agent to Attorney $100 $110 $10 10%
9027 1.21(a)(6)(i) For USPTO-Assisted Recovery of ID or Reset of Password for the Office of Enrollment and Discipline Information System $70 discontinue n/a n/a
9028 1.21(a)(6)(ii) For USPTO-Assisted Change of Address Within the Office of Enrollment and Discipline Information System $70 no change no change no change
9029 1.21(a)(1)(iii) For USPTO-Administered Review of Registration Examination $450 $470 $20 4%
General Service Fees                          
9202 1.21(b)(2), (b)(3) or 2.6(b)(11) Service Charge for Below Minimum Balance $25 no change no change no change
9101 1.21(m) or 2.6(b)(10) Processing Each Payment Refused or Charged Back $50 no change no change no change

 

Categories
Trademark FAQ

USPTO Trademark Status Codes

Table updated 12/10/2019

Table 1 Trademark Status Codes

Code Live/Dead/Indifferent Code Definition
000 Indifferent UNKNOWN
400 Dead/Cancelled IR CANCELLED; APPLICATION PENDING TRANSFORMATION
401 Dead/Cancelled IR CANCELLED – NO TRANSFORMATION FILED
402 Dead/Abandoned IR CANCELLED; US APPLICATION ABANDONED
403 Dead/Cancelled IR CANCELLED; REGISTRATION PENDING TRANSFORMATION
404 Dead/Cancelled IR CANCELLED; US REGISTRATION CANCELLED
405 Dead/Cancelled IR CANCELED; APPLICATION TRANSFRMED
406 Dead/Cancelled IR CANCELLED; REGISTRATION TRANSFORMED
410 Live/Pending IR RESTRICTED; US APP.  ABANDONED, PENDING TRANSFORMATION
411 Dead/Abandoned IR RESTRICTED; US APP. ABANDONED; NO TRANSFORMATION FILED
412 Dead/Abandoned IR RESTRICTED; US APPLICATION ABANDONED
413 Live/Pending IR RESTRICTED; US REG. CANCELLED PEND TRANSFORMATION
414 Dead/Cancelled IR RESTRICTED; US REG. CANCELLED; NO TRANSFORMATION FILED
415 Dead/Cancelled IR RESTRICTED; US REGISTRATION CANCELLED
416 Dead/Abandoned IR RESTRICTED; US APP ABANDONED; US APP TRANSFORMED
417 Dead/Cancelled IR RESTRICTED; US REG CANCELLED; US REG TRANSFORMED
600 Dead/Abandoned ABANDONED – INCOMPLETE RESPONSE
601 Dead/Abandoned ABANDONED – EXPRESS
602 Dead/Abandoned ABANDONED-FAILURE TO RESPOND OR LATE RESPONSE
603 Dead/Abandoned ABANDONED – AFTER EX PARTE APPEAL
604 Dead/Abandoned ABANDONED – AFTER INTER-PARTES DECISION
605 Dead/Abandoned ABANDONED – EXPRESS AFTER PUB
606 Dead/Abandoned ABANDONED – NO STATEMENT OF USE FILED
607 Dead/Abandoned ABANDONED – DEFECTIVE STATEMENT OF USE
608 Dead/Abandoned ABANDONED – AFTER PETITION DECISION
609 Dead/Abandoned ABANDONED – DEFECTIVE DIVIDED APPLICATION
612 Dead/Abandoned PETITION TO REVIVE-RECEIVED
614 Dead/Abandoned ABANDONED PETITION TO REVIVE-DENIED
616 Live/Pending REVIVED – AWAITING FURTHER ACTION
618 Dead/Abandoned ABANDONED FILE – BACKFILE
620 Live/Pending BACKFILE APPLICATION ADDED TO DATA BASE – STATUS NOT RECORDED
622 Indifferent MISASSIGNED SERIAL NUMBER
624 Live/Registered REGISTERED – BACKFILE
625 Live/Registered REGISTRATION ADDED TO THE DATA BASE-STATUS UNCLEAR
626 Dead/Cancelled REGISTERED – BACKFILE CANCELLED OR EXPIRED
630 Live/Pending NEW APPLICATION – RECORD INITIALIZED NOT ASSIGNED TO EXAMINER
631 Live/Pending NEW APPLICATION – DIVIDED – INITIAL PROCESSING
632 Dead INFORMAL APPLICATION
638 Live/Pending NEW APPLICATION – ASSIGNED TO EXAMINER
640 Live/Pending NON-FINAL ACTION COUNTED – NOT MAILED
641 Live/Pending NON-FINAL ACTION – MAILED
642 Live/Pending INVENTORIED AS REJECTED
643 Live/Pending PREVIOUS ACTION/ALLOWANCE COUNT WITHDRAWN
644 Live/Pending FINAL REFUSAL COUNTED – NOT MAILED
645 Live/Pending FINAL REFUSAL – MAILED
646 Live/Pending EXAMINERS AMENDMENT COUNTED – NOT MAILED
647 Live/Pending EXAMINERS AMENDMENT – MAILED
648 Live/Pending ACTION CONTINUING FINAL COUNTED – NOT MAILED
649 Live/Pending ACTION CONTINUING FINAL – MAILED
650 Live/Pending SUSPENSION INQUIRY COUNTED – NOT MAILED
651 Live/Pending SUSPENSION INQUIRY – MAILED
652 Live/Pending SUSPENSION LETTER COUNTED – NOT MAILED
653 Live/Pending SUSPENSION LETTER – MAILED
654 Live/Pending REPORT COMPLETED SUSPENSION CHECK – CASE STILL SUSPENDED
655 Live/Pending EXAMINER’S AMENDMENT/PRIORITY ACTION COUNTED NOT MAILED
656 Live/Pending EXAMINER’S AMENDMENT/PRIORITY ACTION MAILED
657 Live/Pending PRIORITY ACTION COUNTED NOT MAILED
658 Live/Pending PRIORITY ACTION MAILED
659 Live/Pending SUBSEQUENT FINAL REFUSAL COUNTED NOT MAILED
660 Live/Pending SUBSEQUENT FINAL MAILED
661 Live/Pending RESPONSE AFTER NON-FINAL ACTION – ENTERED
663 Live/Pending RESPONSE AFTER FINAL REJECTION – ENTERED
664 Live/Pending INVENTORIED AS AMENDED
665 Live/Pending NOTICE OF UNRESPONSIVE AMENDMENT – COUNTED
666 Live/Pending NOTICE OF UNRESPONSIVE AMENDMENT – MAILED
667 Live/Pending REFUSAL WITHDRAWL LETTER – COUNTED
668 Live/Pending REFUSAL WITHDRAWL LETTER – MAILED
672 Live/Pending REINSTATED – AWAITING FURTHER ACTION
680 Live/Pending APPROVED FOR PUBLICATION
681 Live/Pending PUBLICATION/ISSUE REVIEW COMPLETE
682 Live/Pending ADDITIONAL REVIEW COMPLETED – RETURNED TO PUB CYCLE
686 Live/Pending PUBLISHED FOR OPPOSITION
688 Live/Pending NOTICE OF ALLOWANCE – ISSUED
689 Live/Pending NOTICE OF ALLOWANCE – WITHDRAWN
690 Live/Pending NOTICE OF ALLOWANCE – CANCELLED
692 Live/Pending WITHDRAWN BEFORE PUBLICATION
693 Live/Pending WITHDRAWN FROM ISSUE-JURISDICTION RESTORED
694 Live/Pending WITHDRAWN BEFORE ISSUE
700 Live/Registered REGISTERED
701 Live/Registered SECTION 8-ACCEPTED
702 Live/Registered SECTION 8 & 15-ACCEPTED AND ACKNOWLEDGED
703 Live/Registered SECTION 15-ACKNOWLEDGED
704 Live/Registered PARTIAL SECTION 8 ACCEPTED
705 Live/Registered PARTIAL SECTION 8 & 15 ACCEPTED AND ACKNOWLEDGED
706 Live/Registered SECTION 71 ACCEPTED
707 Live/Registered PARTIAL SECTION 71 ACCEPTED
708 Live/Registered PARTIAL SECTION 71 & 15 ACCEPTED AND ACKNOWLEDGED
709 Dead/Cancelled CANCELLED – SECTION 71
710 Dead/Cancelled CANCELLED – SECTION 8
711 Dead/Cancelled CANCELLED – SECTION 7
712 Dead/Cancelled CANCELLED BY COURT ORDER (SECTION 37)
713 Dead/Cancelled CANCELLED – SECTION 18
714 Dead/Cancelled CANCELLED – SECTION 24
715 Indifferent/Cancelled CANCELLED – RESTORED TO PENDENCY
717 Live REGISTERED – AWAITING DIVISIONAL FEE
718 Live/Pending REQUEST FOR FIRST EXTENSION – FILED
719 Live/Pending REQUEST FOR SECOND EXTENSION – FILED
720 Live/Pending REQUEST FOR THIRD EXTENSION – FILED
721 Live/Pending REQUEST FOR FOURTH EXTENSION – FILED
722 Live/Pending REQUEST FOR FIFTH EXTENSION – FILED
724 Live/Pending EXTENSION REQUEST REFUSAL – COUNTED
725 Live/Pending EXTENSION REQUEST REFUSAL – MAILED
730 Live/Pending FIRST EXTENSION – GRANTED
731 Live/Pending SECOND EXTENSION – GRANTED
732 Live/Pending THIRD EXTENSION – GRANTED
733 Live/Pending FOURTH EXTENSION – GRANTED
734 Live/Pending FIFTH EXTENSION – GRANTED
739 Live/Registered Section 71 & 15 – ACCEPTED AND ACKNOWLEDGED
740 Live/Pending POST REGISTRATION PAPER FILED – ASSIGNED TO PARA-LEGAL
744 Live/Pending STATEMENT OF USE – FILED
745 Live/Pending STATEMENT OF USE – INFORMAL-LETTER MAILED
746 Live/Pending STATEMENT OF USE – INFORMAL-RESPONSE ENTERED
748 Live/Pending STATEMENT OF USE – TO EXAMINER
752 Live/Pending SU – EXAMINER STATEMENT COUNTED – NOT MAILED
753 Live/Pending SU – EXAMINER STATEMENT – MAILED
756 Live/Pending EXAMINER STATEMENT COUNTED – NOT MAILED
757 Live/Pending EXAMINER STATEMENT – MAILED
760 Live/Pending EX PARTE APPEAL PENDING
762 Live/Pending EX PARTE APPEAL TERMINATED
763 Live/Pending EX PARTE APPEAL-REFUSAL AFFIRMED
764 Live/Pending EX PARTE APPEAL DISMISSED AS MOOT
765 Live/Pending CONCURRENT USE PROCEEDING TERMINATED-GRANTED
766 Live/Pending CONCURRENT USE PROCEEDING TERMINATED-DENIED
771 Live/Pending CONCURRENT USE PROCEEDING PENDING
772 Live/Pending INTERFERENCE PROCEEDING PENDING
773 Live/Pending EXTENSION OF TIME TO OPPOSE PROCESS – TERMINATED
774 Live/Pending OPPOSITION PENDING
775 Live/Pending OPPOSITION DISMISSED
777 Live/Pending OPPOSITION TERMINATED-SEE TTAB RECORDS
778 Live/Registered CANCELLATION DISMISSED
779 Live/Pending OPPOSITION SUSTAINED
780 Live/Registered CANCELLATION TERMINATED – SEE TTAB RECORDS
790 Live/Registered CANCELLATION PENDING
794 Live/Pending JURISDICTION RESTORED TO EXAMINING ATTORNEY
800 Live/Registered REGISTERED AND RENEWED
801 Live/Pending OPPOSITION PAPERS FILED
802 Live/Pending REQUEST FOR EXTENSION OF TIME TO FILE OPPOSITION
803 Live/Pending AMENDMENT AFTER PUBLICATION
804 Live/Pending APPEAL RECEIVED AT TTAB
806 Live/Pending SU – NON-FINAL ACTION COUNTED – NOT MAILED
807 Live/Pending SU – NON-FINAL ACTION – MAILED
808 Live/Pending SU – FINAL REFUSAL COUNTED – NOT MAILED
809 Live/Pending SU – FINAL REFUSAL – MAILED
810 Live/Pending SU – EXAMINER’S AMENDMENT COUNTED – NOT MAILED
811 Live/Pending SU – EXAMINER’S AMENDMENT – MAILED
812 Live/Pending SU – ACTION CONTINUING FINAL COUNTED – NOT MAILED
813 Live/Pending SU – ACTION CONTINUING FINAL – MAILED
814 Live/Pending SU – RESPONSE AFTER NON-FINAL ACTION – ENTERED
815 Live/Pending SU – RESPONSE AFTER FINAL REJECTION – ENTERED
816 Live/Pending SU – NOTICE OF UNRESPONSIVE AMENDMENT – COUNTED
817 Live/Pending SU – NOTICE OF UNRESPONSIVE AMENDMENT – MAILED
818 Live/Pending SU – STATEMENT OF USE ACCEPTED – APPROVED FOR REGISTRATION
819 Live/Pending SU – REGISTRATION REVIEW COMPLETE
820 Live/Pending SU-EXAMINER’S AMENDMENT/PRIORITY ACTION COUNTED NOT MAILED
821 Live/Pending SU – EXAMINER’S AMENDMENT/PRIORITY ACTION MAILED
822 Live/Pending SU – PRIORITY ACTION COUNTED NOT MAILED
823 Live/Pending SU – PRIORITY ACTION MAILED
824 Live/Pending SU – SUBSEQUENT FINAL REFUSAL WRITTEN
825 Live/Pending SU – SUBSEQUENT FINAL MAILED
900 Dead/Expired EXPIRED
901 Dead DEAD INVENTORIED AS REJECTED
969 Live/Pending NON REGISTRATION DATA
970 Indifferent RECORD CREATED DUE TO ASSIGNMENT REQUEST
973 Live/Pending PENDING PETITION/COURT DECISION

 

 

Categories
Intellectual Property

IP Rights and Internal IP Audits

Speak to you on how to enforce your IP Rights.

The question we’ve posed in the agenda is “Who is responsible for enforcing my IP rights?” The answer is you are, as the owner of the IP.

In a sense, IP rights are no different than regular property rights. As a property owner you are responsible in protecting your own personal property. The government can help you, and when transgressions against those rights occur, just as in the case of real property, the government can step in and provide solutions. Thus we have our title “Enforcement of IP Rights Private Responsibilities and Government Solutions.”

Actually, we will look at this as a three step process:

  1. is to identify your IP. In other words, locate or find out what you have to protect.
  2. once you have found the IP, then claim it as your own.
  3. is enforcing the IP rights. That is once we’ve identified it, claimed it and have rights in it, how do we enforce it and stop others from taking it away or using it without our permission.

Following this presentation, we will be answering the question “Where Can I Go For Help Locally?”

I will touch on this issues, but in the upcoming presentation will discuss in more depth, what resources we as the government can provide to help you enforce those rights that you have acquired.

Again, three step process. Will cover—

  1. How to identify your IP.
    a. How to locate and identify your IP assets (IP audit)
  2. How to secure your IP?
    Strategic and Operational Measures a. Tips to prevent the theft of your intellectual property before it happens (Contracts with employees, conducting due diligence before transaction, etc.)
  3. How to enforce your IPR?
    Legal Measures To Remedy Theft Understanding options if your intellectual property is stolen

In order to protect your company’s IP, you will first need to identify your company’s IP.

Earlier today you learned of the different forms of IP. Now, we will have to apply that knowledge and analyze the various components of your business.

  1. there are materials for which the business already may have protection (things that are already registered or are in the process of being registered, such as pending applications)
  2. then the analysis turns to determining what can be afforded protection.

First- Assessment
What Trademarks do you own or Potentially have?
Anything capable of identifying/distinguishing your business

Registered marks (domestic and foreign)
Pending applications
Business names
Logos
Slogans
Domain names

Trade Dress:
Product packaging or configuration
Website Design

Remember: Anything used to identify or distinguish the source of goods

Next- Evaluate your copyrights
Determine what you have that you have copyrighted or can protect via copyright

Copyrights:

Registered Copyrights
Written Materials
Photographs
Illustrations
Computer Software
Music/Film
Website Content

Next- What can you patent
Look for potential patentable items:
e.g.
Mechanical Device
Chemical Composition/Process
Computer-Based Business Process (aka Business method patents or software patent)

Generally, there are three broad categories of patentable subject matter: processes, machines and articles of manufacture and use.

A process could be a method for making something, a method for using something, or a method for doing something. Processes include business methods, most software, medical techniques, Machines include devices and apparatuses. Articles of manufacture include mechanical devices, electrical/electronic devices and compositions of matter such as chemicals, medicines, biotech.

Next step in the Audit is examine business to determine what trade secrets you have to protect.
Next, determine if there are any Trade Secrets. Generally it is any information that is kept secret and provides a business with a competitive advantage.

Most business probably already have some that are protectable

Most common form of IP for a businesses. Can have an indefinite life, unlike patents

Unlike TM and patents, where federal law defines it, trade secret are covered by state law, so must look to the relevant state. But 44 states have adopted the Uniform Trade Secrets Act, so they have similar definitions.
It defines a trade secret as…(“… means information, including a formula, pattern, compilation, program, device, method, technique, or process, that:

  1. derives independent economic value, actual or potential, from not being generally known to, and not being readily ascertainable by proper means by, other persons who can obtain economic value from its disclosure or use, and
  2. is the subject of efforts that are reasonable under the circumstances to maintain its secrecy.”

For example

Customer Lists
Pricing/Cost Data
Customer Information and Sales Practices
Business Plans
Financial Data/Forecasts
Manufacturing Techniques
Design Manuals
Production Processes/Specifications
Survey/Research Data (including negative R&D)
Computer source code
Employee Knowledge (inevitable disclosure theory)
——-Anything that that you have that if your competitor found out would give him an advantage

Once identified and determined what’s important, you can take steps to secure your IP

1.CONFIRM YOU OWN THE IP

Review all documents and filings affecting title to IP to confirm a complete chain of title.
Review licenses and any contractual assignments.
Security interests, releases of security interests, changes of name

Review financing agreements, how is IP tied in?
Compare against information available to the public at the U.S. Patent and Trademark Office and the U.S. Copyright Office.

Have employees (or other parties) signed over the rights if they were involved making the IP?
Work-for-hire doctrineThe general rule is that the person who creates a work is the author of that work. There is an exception to that principle called “works made for hire.” If a work is “made for hire,” the employer, and not the employee, is considered the author. The employer may be a firm, an organization, or an individual. Look to certain factors that characterize an “employer-employee” (Control over employee, status, (benefits, taxes) The closer an employment relationship comes to regular, salaried employment, the more likely it is that a work created within the scope of that employment would be a work made for hire.

Once you have identified it- Prioritize IP to be pursued and protected

  1. Those that provide real competitive advantage
  2. Those have value in licensing, including cross-licensing
  3. Those that enhance asset base of business
  4. Those that can be used defensively to block competitors (specific for patents)

Evaluate benefits of protection vs. costs in getting protection
Patent filings are costly (financially and time-wise)
Consider maintaining as trade secret, instead of publicly filing for a patent.

2. REGISTER YOUR IP

Register your trademark with USPTO
File application for patent protection with USPTO

  1. maybe only a provisional patent applications (to lock in date of invention)
  2. maybe maintain invention as a trades secret and do not file for patent.
    Register your copyrights with the U.S. Copyright Office at the Library of Congress Can also file trademark at state level
    Register with Customs (discuss later as part of administrative enforcement)

3. MAINTAIN YOUR IP

  1. Pay Maintenance fees and renewal fees,
    **esp. for domain names
  2. Protect Confidential Trade Secret Info. from disclosure (only considered a trade secret if business takes steps to keep the information confidential.

2.A. Internal measures to maintain secrecy
2.B. External measures to maintain secrecy.

How to Protect trade secrets –
Implement protective measures-
Company policies and Employee Policies are very important

For Sensitive information be careful about:
Marking – “confidential” – everyone on notice that it is valuable information
Protection – physically secure the information
Storage – limit distribution
Transmission – be careful on how easily distributed case. Growing threat is use of small transportable USB/flash drives to store company data. Likely that the ease of which these can be lost, high risk of compromising trade secret info.
Destruction – shred and make sure documents are returned (e.g. failed mergers, departing employees, etc.).

If you don’t implement protective measures you jeopardized your trade secrets.

Implement Internal Measures to safeguard trade secrets.

  1. Non-Disclosure Agreement aka Confidentiality Agreement

A contract where a party promises that information conveyed will be maintained in secrecy. Trade secrets- only recognized if you keep them secret. Can also protect information that is not necessarily a trade secret. Can be used for non-employees also, such as in negotiations with 3rd parties to protect your IP/ confidential information.

2. Non-Compete Agreement
A contract where an employee agrees not to work for a direct competitor for a certain amount of time after leaving your company. Rule of reason (i.e. 1 year, limited geographically). Be sure to check state jurisdiction, b/c governed by state law. California has state laws that heavily restrict).

  1. IP Assignment
    Assigns ownership of that is created to employer/business.

EMPLOYEE MANUAL
Enact policy and procedures regarding treatment of confidential information. Distribute to new employees. May courts consider terms within as if it’s a contract with the new employee. Explains-

  1. Marking things confidential, limiting distribution, using passwords…
  2. For science-related business, where publications and speeches are popular explains when employees can make speeches and publications. Implements a review process for trade secrets
  3. Procedure for submission of ideas and new patents; explains Invention Disclosure Statements; how to maintaining an Inventors Notebook (important to identify date of creation for patents)

FOR DEPARTEING EMPLOYEES- Conduct an Exit interviews
Return and account for all confidential information.
Provide them copy of their NDA or non-compete
Remind them of their obligations –
Have them execute an “Acknowledgement” a document where that recognize their continuing obligations
Make sure exit process is uniform (1 person in HR do it) for consistency.

OTHER POLICIES
Cultivate an awareness of IP among employees
Screen new employees for high ethical standards
Train employees and managers on safeguarding IP

In addition to Internal Controls you need External Controls For many companies, the way they acquire their IP is through a 3rd party transaction.

Important with any business transaction to conduct due diligence
Transaction can be:

Acquisition
Merger
Licensing
Joint-Venture
Sale
Out-sourcing

Transactional Due Diligence- (obvious questions, but must be methodical) Identify the IP

What is it?
– Do they/ have authority to buy/sell/license the IP?
Identify IP Owner
Are there proper assignments agreements? …with proper consideration … exclusive or non-exclusive…
Carefully review esp. in start-ups (ex. Employee invents something, company assumes it is theirs, files for patent, wants to license it… did employee sign a contract signing over invention?)
That’s why IP Assignments very important when hire new employees find out the policies they have to protect IP (ex. confirm NDAs are in place).

Any 3rd Party claims? Threats of lawsuits?
Examine the 3rd party – whether it’s a potential partner, vendor, outside contractor, consultant, licensor.
Want to know with whom you’re dealing. Do not share tech. and business secrets too readily

External Measures to Safeguard IP
Before you enter into the transaction and reveal anything valuableEnter into NDA/Confidentiality Agreement – Protects your information in case deal doesn’t go through Conduct IP Review of Transaction: Assess the TransactionIf it’s a licensing agreement- is it

Exclusive or non-exclusive?
Can you sublicense?
What the scope?
What territory?
What time frame?
What field of use?

How will you make sure your IP is protected by the licensor?
Indemnification Clause in K- in case you get sued because the licensor didn’t really own the IP or because it may infringe some other IP
These are things to consider when entering into any IP transaction.

Constantly Police your IP

Periodic review of market in key areas
Have employees monitor and report on new developments
Review competitors’ filings and registrations
Monitor internal controls to maintain secrecy safeguards.
Monitor and audit licensee’s to ensure compliance with licensing agreements

If infringement noticed. Take action, otherwise you risk waiver,
or barred by statute of limitations,
or court may consider consented.

Now that we have gone through and identified your intellectual property, and we have taken steps to secure rights in the intellectual property.
Need to enforce those rights…

How to enforce your IPR?

Legal Options To Remedy Theft:
Civil
Criminal
Administrative

Outlines the Legal options – if your intellectual property is stolen

Civil System– File Lawsuit in State or Federal Court Consider Alternative Dispute Resolution (ADR)

Criminal System – Have criminal proceedings brought U.S. Department of Justice

Administrative System – Seek administrative assistance U.S. Customs (Border Enforcement) U.S. Patent & Trademark Office

Enforcing IP Through the Civil Court System:
First must determine whether your IP has been taken or copied
Need to make an infringement determination or if its trade secret whether its been misappropriated
Discuss Later in detail on the elements of infringement

If Infringed, Send Cease and Desist Letter
Negotiate or Enter into Licensing Agreement
File Claim By Court System or ADR (such as mediation or arbitration)
IP Litigation gets expensive very quickly, so considering ADR or entering into licensing agreement are important options

If you determine that your IP has been stolen, what next steps do you take?

Contact other party and negotiate/ enter into licensing agreement (should be an option throughout the process)
Send out a Cease and Desist Letter
Consider ADR
File Lawsuit

Now we will consider Criminal System to Enforce your IP
US DOJ does criminal prosecution and investigation of IP related-crimes.

Criminal Division: Computer Crime & Intellectual Property Section – prosecutor
U.S. Attorney’s Office: Computer Hacking and Intellectual Property Units (CHIPS) – prosecutors
Specialized CHIPS units in CA, FLA, MO, NJ, NY, PA, TX, VA, WA
FBI – investigators
US Immigration & Customs Enforcement

The National Intellectual Property Rights Coordination Center (IPR Center)
IPR Center- multi-agency Center responsible for coordinating a unified U.S. Government response regarding IPR enforcement issues
They have an online form you can inform them of piracy and counterfeiting you may know of.

Briefly Compare Civil vs. Criminal Enforcement of IP

Majority of IP enforcement actions in U.S. are civil not criminal
Burden of proof is more difficult in criminal cases
-beyond reasonable doubt and willful (criminal)
–preponderance of evidence (civil)

Higher thresholds for liability- felony copyright infringement more at least 10 copies valued at at least $2.5K w/in 180 days. (crim) civil infringement (no minimums)

Criminal remedies can include prison term Factors evaluating whether to charge criminally:
Organized crime involvement
Public health and safety concerns
Commercial nature
Amount of loss and harm

Next look to how your can enforce your IP by the US Administrative System

U.S. Customs System
Provides protection for federally registered copyrights and trademarks that are also recorded with U.S. Customs. (separate from registering with PTO or Copyright Office)
Involved in the Detention, Seizure and Forfeiture of Fake Merchandise
Right to act on its own called Ex officio authority – random examinations, warehouse sweeps
Also, enforces exclusion orders issued by US International Trade Commission resulting from unfair import investigations (patents).

To get protection, must record your trademark and copyright with Customs.

  • copyright or trademark must first have been be registered with USPTO or Copyright Office. (separate procedure)
  • Patent not covered because would have to make legal determination of patent infringement (scope of claims, etc.)

Owners may provide U.S. Customs with information on suspected infringers:

Manufacturer, country of origin, entry ports, suspected dates, any other information they may have.

Once you record your IP, US Customs puts your info into their database accessible by CBP officers across the country and at all ports of entry. Customs can then seize infringing goods, and can start administrative proceedings against seized goods.

Record your registered trademarks and copyrights with them:
Trademarks are recorded for a term of years to run concurrently with the underlying registration.
Copyrights are recorded for 20 years, unless the copyright registration expires before that time.

The U.S. Customs Trademark/Copyright Recordation
To enable US Customs to monitor your IP you must record your registered trademarks and copyrights with them:
Can be done online under Intellectual Property Rights e-Recordation System Or can file Application Recordation form is available on internet site: http://www.cbp.gov

Next, if considering to distribute your IP abroad also be aware of the
Office of the U.S.Trade Representative

“Special 301”
Procedure used to identify countries that deny adequate protection for intellectual property rights.
Countries may be placed on the “Watch List” depending on level of IP protection.
May be subject to sanctions.
Review conducted each year, but also OCR (out-of-cycle) if needed.
Can be initiated by industry.

Ex. Ukraine was PFC, just taken off, Brazil subject to OCR

When entering a Foreign Market you should:
Determine the IP climate and seek local support to protect your IP
Contact the local trade associations for your industry
Contact local American Chamber of Commerce
Contact local officials who enforce IP

Hire a lawyer in the foreign market
Should work jointly with your U.S. lawyer providing local expertise
Take steps to protect and enforce your IP, based on local law
Under TRIPS we are seeing some of the same procedures such a the Customs and Border Enforcement issues I discussed.
The tips I mentioned before on protection and enforcement in the U.S. are just as applicable and should be considered here.

Lastly I would like to remind everyone about the STOP initiative.
Established in October 2004
It is the most comprehensive initiative ever advanced to combat piracy and counterfeiting.
It is designed to crack down on counterfeit and pirated goods
And also help small and mid-sized businesses in protecting their IP rights

We maintain a telephone hotline at 1-866-999-HALT
where IP experts are available to answer any questions you may have related to IP enforcement issues.

Recap- three step process.

I hope you have found this presentation helpful and I thank you for your time.

Categories
Trademark FAQ

Rule 2.142(b)(3) specifies that citation to evidence in briefs should be to the electronic record. Can you provide examples?

Yes. For ex parte appeals, a suggested format is “October 10, 2015 Office Action at 2.” For inter partes appeals, the suggested format is “1 TTABVUE 2.”

Categories
Trademark FAQ

Do the Jan. 14, 2017, rule changes apply to pending cases?

Yes, the rule changes apply to all proceedings, including those pending on Jan. 14, 2017. This also includes proceedings instituted prior to 2007 that are still pending.

Categories
Trademark FAQ

Did all of the rule changes come into effect on Jan. 14, 2017?

Yes, all of the rule changes came into effect on the same date, Jan. 14, 2017.

Categories
Trademark FAQ

Where can I find TTAB decisions?

On our website, you can access TTAB decisions from 11/19/1996 to the present. You can access these decisions through the TTAB homepage under “Board receipts & issued decisions,” or by clicking the Search and view TTAB’s decision summaries and final decision link.

Categories
Trademark FAQ

Where can I find more information on how the TTAB conducts proceedings?

You can refer to the Trademark Trial and Appeal Board Manual of Procedure “TBMP”. The TTAB also follows the Federal Rules of Civil Procedure.

Categories
Trademark FAQ

Will you fax or email me a copy of a paper from the file?

No, we do not fax or email papers to parties or other persons requesting copies. You can review or print papers from a file through TTABVUE.

Categories
Trademark FAQ

Can I look at a case file that is pending before the TTAB?

Case files are public records and are open to the public for review, except for certain documents filed under a claim of confidentiality. The easiest way to review a file is through the electronic system, TTABVUE.

To look at a file, you can review or print it out yourself using TTABVUE. TTAB records submitted prior to approximately 2001 are kept in paper.  An individual who wishes to inspect or copy one of the paper files is directed to the National Archives and Records Administration, www.archives.gov/research.