U.S. Patent and Trademark Office plans to raise royalties

Nanjing Hua Xun US Patent News In a Notice of Proposed Rule Making (NPRM) issued on October 3, 2016, the US Patent and Trademark Office (USPTO) plans to increase a number of patent fees. The announcement mainly relates to the increase of $120 in invention application fees for large entities (invention application, search, and review rate plans to increase to $300 (up $20), $660 (up $60), and $760 (up $40), respectively). The design patent application fee for large entities increased to US $340 (the appearance application, search, and examination fees are planned to increase to US $200 (up US $20), US $160 (up US $40), and US $600 (up US $140), respectively). For large entities, the continuous review request fee increased by US $100 for the first request and US $200 for the second request.

Costs related to the Patent Trial and Appeal Board (PTAB) and the America Inventions Act will also increase significantly.

● Both parties retrial request fee-up to 20 claims, the fee increases to $14000 (up $5000).

● Both parties review post-commencement costs-up to 15 claims, with costs increased to $16500 (up $2500).

● Post-authorization retrial or covered business method retrial request fee-up to 20 claims, the fee increases to $16000 (up to $4000).

:: Post-authorization reconsideration or coverage of post-commencement costs of business methods-up to 15 claims, with costs increasing to $22000 (up to $4000).

The NPRM public consultation period is 60 days (formal comments can be submitted for https://www.federalregister.gov/documents/2016/10/03/2016-23093/setting-and-adjusting-patent-fees-during-fiscal-year-2017 through the link below). This consultation is likely to be implemented in the second quarter of 2017. The USPTO's last significant fee increase, in 2013, is intended to improve patent quality (e. g., higher-quality review) and reduce wait times before issuing review opinions. The USPTO expects to reduce the average publication time of the first review opinion to 10.2 months and the total publication time to 19.1 months in 2021.

Accordingly, applicants may need to expedite their U.S. patent applications before the price increases (we will issue an update if there is progress on fee increases), especially for design patents. The cost increase of design may be higher than that of invention patents (the invention patent in the United States is called utility patents, similar to the invention patent in China (invention patent), please do not be confused with the utility model in China), because the design patent does not need to maintain the fee, so in terms of the life cycle of a patent, the USPTO generates less revenue on the design than the invention patent.

Furthermore, the applicant should consult whether he or she has small entity or micro-entity status. If so, there will be 50% and 75% fee discounts for small entities or micro-entities, respectively. To qualify as a small entity, the applicant must be an independent inventor, not for profit (e. g., universities, charities, etc.), and/or a small business (e. g., a business with less than 500 employees), and not be licensed or assigned to any entity that does not qualify as a small entity. Small entities do not need to be in the United States.

Nanjing Huaxun experts: to have micro-entity qualification, the applicant must meet the requirements of small entities, and

1. The applicant and all inventors are listed as inventors in the previously filed U.S. non-divisive patent applications, and the number of non-divisive patent applications must be less than four (Chinese applications and U.S. divisive applications are not included).

Applicants and all inventors must each have a total income equal to, or less than, three times the median U.S. household income. Currently, the median household income in the United States is $160971 (the income is updated annually on the http://www.uspto.gov/patent/laws-and-regulations/micro-entity-status-gross-income-limit below).

3. The applicant and all inventors in the patent application have not assigned, nor are they obliged to assign, a license or other ownership interest to an entity whose gross income does not meet the above criteria.

In addition, applicants can also obtain a micro-entity qualification if they meet the following conditions. 1. the applicant is a small entity, 2. the applicant's employer is a higher education institution, and the applicant receives the majority of the applicant's income from the employer; or the applicant has assigned, authorized, communicated, or is obliged by contract or law to assign, grant, or communicate to the higher education institution.

Small and micro-entities can receive significant discounts, especially on maintenance costs, which can be as high as $7400 for the third and final maintenance of large entities. Applicants should therefore verify whether they are eligible for fee waivers.