The Patent Office’s Director recently notified the Patent Public Advisory Committee (PPAC) of the Office’s intent to set or adjust several fees that patent applicants, patent owners, and those challenging patents in AIA trials must pay. For applicants, this includes fee increases for filing applications and tiered fees for filing terminal disclaimers. This also includes tiered fees for filing continuation applications more than three or seven years after the earliest claimed benefit application was filed. Part of those fees are to offset the lost maintenance fees that patents issuing from those applications would otherwise incur had they been filed and issued earlier—obtaining revenue from maintenance fees purportedly helps reduce examination costs.
For those challenging patents in AIA trials, the fees would increase substantially if the Office’s proposal became a final rule. As justification for the proposed increases, the Director explains that the Office’s costs associated with administering these trials have continued to increase because of recent court cases and higher operating costs caused, in part, by inflation. The increased fee revenue would thus support a cost recovery for the Office’s operations. The Office therefore proposes to increase most AIA trial fees by 25%.
The Patent Office also proposes to raise fees in instances where petitioners choose to exceed the allotted space (i.e., number of words) to present their patentability challenges in a single petition. Petitioners are permitted 14,000 words in an inter partes review petition and 18,700 words in a post-grant review petition. The Office would permit more words, for a fee, and thereby potentially reduce the number of petitions filed on the same patent.
Lastly, the Patent Office proposes to charge a fee to parties that ask the Director to review an institution decision or final written decision from the Patent Trial and Appeal Board. The proposed fee ($400) would match the fee currently imposed on parties that petition the Board’s Chief Administrative Patent Judge to review Board panel decisions.
The Patent Office has been administering AIA trials for ten years. Over that period, more than 8,500 patents have been challenged in these trials. Some claims have been canceled in 2,700 trials, and all claims have been canceled in nearly 900 trials. The popularity of these trials has survived past fee increases and may well survive these too.
The process for finalizing this proposal, according to the Office’s below graphic, is at an early stage.
Details on how, when, and to whom to offer comments are set out at this Patent Office website link.