IP Spotlight

This week will be an active one for changes to U.S. patent filing procedures.  In addition to the new first-to-file law taking effect on March 16, significant patent fee changes will take effect on March 19, 2013.  The changes include:

• utility patent application total filing, search and examination fees:  $1,600 (increase of $340)
• provisional application filing fee:  $260 (increase of $10)
• issue fee:  $960 (decrease of $780)
• request for continued examination:  $1,200 for the first one (increase of $270), and $1700 for the second one.
• maintenance fees:  increased by $450 at the first stage, $700 at the second stage, and $2,590 at the third stage.

Applicants who don’t mind delaying the examination process can defer some of the initial fees by filing a basic filing fee of $280, and deferring the search and examination fees to a later date.

The 7.5-year and 11.5-year maintenance fees may spur some patent holders to abandon non-business critical patents:  patent holders who wish to maintain a patent must pay $3,600 at the 7.5-year point, and $7,400 at the 11.5-year point.  The new maintenance fees total over $12,000 for the life of a patent.

Applicants who qualify as either a small entity or a micro-entity will be entitled to reductions in the standard fees listed above.

The new fees also establish hefty charges for the new post grant patent review proceedings that are available under the America Invents Act:

• Ex parte reexamination:  $12,000
• Inter partes review:  $23,000
• Post grant review:  $30,000

Some charges will go down for applicants who follow procedures that are more efficient for the USPTO.  For example, an applicant can avoid the $2,000 Appeal Brief fee if the applicant can settle the case with the Examiner before forwarding the Appeal Brief to the Patent Trial and Appeals Board for review.  In addition, recording assignments will now be free if filed electronically.

A summary of the fee increases is available at the USPTO website via this link.

[Photo credit:  401(k) 2013]

The USPTO has published its long-awaited first-to-file rules and examination guidelines, which will take effect March 16, 2013.   The new rules will convert U.S. patent law from a “first-to-invent” system to a “first-to-file” system.  In its simplest form, this means that if two people  separately invent the same invention, and if both file patent applications for the invention, the first person who filed his or her application will receive the patent.

However, as one might expect when the final rule requires 35 pages in the Federal Register and the examination guidelines require another 29 pages, the rule has more than a few caveats and nuances.  Highlights of the new rule include: Continue reading →