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

 

The rights granted by a U.S. patent extend only throughout the territory of the United States and have no effect in a foreign country. An inventor who wants patent protection in other countries must apply for a patent in each of the other countries or in regional patent offices. U.S. businesses and stakeholders who are encountering difficulties in protecting or enforcing intellectual property rights in a foreign country are encouraged to consult the IP Attaché pages of the USPTO website.

A patent for an invention is a grant of property rights by the U.S. Government through the U.S. Patent and Trademark Office. The patent grant excludes others from making, using, or selling the invention in the United States. A utility or plant patent in force on June 8, 1995, is subject to either the 17 year term from grant or the 20 year term from earliest effective U.S. filing date, whichever is longer. A design patent term is 14 years from patent grant. The right conferred by the patent grant extends throughout the United States. The terms “Patent Pending” and “Patent Applied For” are used to inform the public that an application for a patent has been filed. Patent protection does not start until the actual grant of a patent. Marking of an article as patented, when it is not, is illegal and subject to penalty.

A patent cannot be obtained on a mere idea or suggestion. Patent applications are examined for both technical and legal merit. Prior to filing a patent application, a search of existing patents can be conducted at the USPTO Patent Search Room or at a Patent and Trademark Depository Library in your area. For additional information on patents, you may visit the USPTO Web site at www.uspto.gov/main/patents.htm.

The role of Licensing and Review (L&R) is to administer the Patent Secrecy Act as defined by 35 U.S.C. 181-186 and 37 CFR part 5. The primary function of this Act is to prevent publication of an application as a patent or a patent application publication where such disclosure would be detrimental to U.S. national security. Additionally, the Act provides for the licensing of applications for export for the purposes of filing for patents abroad.

The duties of L&R include:

• Reviewing all applications for patent (provisional, utility, design, PCT (where the U.S. is the receiving office)) to determine whether a foreign filing license may be granted;
• Managing all existing secrecy orders pursuant to 35 U.S.C. 181 and 37 CFR part 5;
• Treating all petitions for expedited foreign filing licenses pursuant to 37 CFR 5.12-5.14; and
• Policing the property rights of the National Aeronautics and Space Administration (NASA) and the Department of Energy (DOE) by administering a portion of the NASA Act as provided for in 42 U.S.C. 2457, and a portion of the Atomic Energy Act as provided for in 42 U.S.C. 2181-2182.

If applicant has a patent application on file, the request for an expedited license may be filed as a follow-on paper to that application. An expedited request for a license where there is no pending application on file cannot be filed thru EFS-Web at this time.

• If an expedited decision is not needed, the mere filing of a provisional, design, utility or PCT (in the US receiving office) is considered a petition for a foreign filing license. See 37 CFR 5.12(a).
• If expedited processing is required, then a separate petition must be submitted to L&R pursuant to 37 CFR 5.12(b).

Licensing and Review (L&R) strives to process petitions for expedited license within three business days of receipt and all petitions are treated in the order in which they are received. In limited instances, licenses may be processed quicker upon a showing that a bar date is imminent. It is suggested that after filing the petition, applicant alert L&R to the need for special handling.

Yes, a license for the USPTO is not country specific. However, applicant must also abide by the various regulations and restrictions related to sending information to certain countries. For more information, please contact the Bureau of Foreign Assets at the Department of Treasury, the Bureau of Industry and Security at the Department of Commerce, or both.

The USPTO does not compare the contents of a provisional application with a later-filed nonprovisional application for security review purposes. If applicant obtains a new license on a later-filed application, applicant needs to make a determination of which license controls. That is, if the subject matter of the nonprovisional application does not change the general nature of the invention of the provisional application such that it would have been made available to a defense agency, then the license date of the provisional application would control. In the instance described above, the latter license would control if the documents were not identical because an implied license is under the provisions of 37 CFR 5.15(b). 37 CFR 5.15(b) does not allow for additional subject matter beyond what was originally submitted.

No, 35 U.S.C. 184 merely requires applicant to obtain a license from the USPTO prior to filing in a foreign country. This may be done in accordance with 37 CFR 5.13.