USPTO Updates: Proposed New Fees and Fee Increases

By James Carlson 


On July 31, 2019, the USPTO published a federal register notice[1] regarding changes to various USPTO fees.   In particular, the USPTO proposes three new fees: (1) a surcharge fee of $400 for filing a nonprovisional application in a non-DOCX format; (2) pro hac vice admission fees of $250; and (3) an annual patent practitioner fee ranging from $70 to $340.

For the proposed surcharge fee, this fee will be charged to utility applications filed under 35 U.S.C. 111 that are submitted in a format other than DOCX.  The DOCX formatting requirement would apply to specifications, claims, and abstracts in a nonprovisional application.  Under the proposed rule, drawings could still be filed using a PDF format without receiving the surcharge fee.  Paper application filings would also incur this surcharge in addition to the existing non-electronic filing fee.  However, this surcharge does not appear to apply to national stage applications under 35 U.S.C. 371.  Bypass continuation applications likely would incur this surcharge though.  More information on using the DOCX format for USPTO filings can be found at the USPTO’s website.[2]

For the proposed pro hac vice admission fee, a legal practitioner without a USPTO registration number would be required to pay an admission fee in addition to submitting a motion to the USPTO to appear before the Patent Trial and Appeal Board.  Previously, in an AIA trial proceeding, an attorney could submit a motion under 37 CFR § 42.10 showing sufficient good cause warranting pro hac vice admission. If this new fee is implemented, legal practitioners would need to pay an admission fee for each USPTO proceeding where they would participate.   The USPTO intends to use the pro hac vice admission fee to shift the cost of processing these requests from the overall AIA trial fees to the requesting, non-USPTO registered counsel.

For the proposed annual patent practitioner fee, different fees would apply to different patent practitioners.  For example, the USPTO would charge separate fees based on whether a patent practitioner completed continuing legal education (CLE) requirements.   Another fee would be applied to inactive patent practitioners.  Currently, the costs of Office of Enrollment and Discipline (OED) for disciplinary and other functions are paid by patent applicants and owners.  However, the USPTO would like registered patent practitioners to pay these costs and hopes the new fees will fund these operations.  However, trademark attorneys practicing before the USPTO would not be charged any such fee, and thus the USPTO intends that any money received from the new fees would be limited to patent-related operations at the OED.

In addition to the new fees highlighted above, the federal register notice also includes proposed fee increases to patent maintenance fees, issue fees, requests for expedited examination of a design patent application, and utility application filing and search fees.  The federal register notice also includes fee changes for AIA trial proceedings, such as increases to the requesting fee and the post-institution fee.