If the Office's proposed fees for supplemental patent examination and reexamination are any indication, getting patents reviewed through the new USPTO procedures rather than settling or ending up in court may not be an option for smaller entities.
The Office published rules to implement the supplemental examination provision and to revise fees for ex parte and inter partes reexamination last week. But the rules package everyone is waiting for – those to implement the inter partes review and post grant review procedures – is due out next week, about two weeks later than planned.
Many were surprised by how high the Office has proposed to make the supplemental examination and reexamination fees. The present fee for requesting ex parte patent reexamination is $2,520 and the proposed new fee is $17,750. The fees for filing a petition for ex parte or inter partes reexamination is being raised from between $200 and $400 to $1,932.
The fee for filing a request for supplemental examination, which will allow a patent owner to ask the USPTO to "consider, reconsider or correct information believed to be relevant to the patent", is proposed to be set at $5,180. If the Office determines that there is a substantial new question of patentability, the patent owner will have to pay $16,120 for an ex parte reexamination. That amounts to more than $21,000 up front, though the fee for ex parte reexamination will be refunded if no substantial new question of patentability is found.
Additional fees for documents in excess of 20 and 50 pages have also been set at $166 and $282, respectively.
The fees are based on estimates of the Office's FY 2013 costs. "The analysis of the Office's ex parte and inter partes reexamination costs also revealed that the Office's current ex parte and inter partes reexamination fees are not set at amounts that recover the Office's costs for these processes or services," said the Federal Register Notice.
"Fees are very high - an indication that high fees are likely to come for post-grant review and inter partes review," said Scott McBride of McAndrews Held & Malloy. "This is a big deal, and I am not sure that people were prepared for this large an increase."
Scott McKeown of Oblon Spivak McClelland Maier & Neustadt said that the patent bar has been preparing itself for fees in the range of $40,000-$50,000 for inter partes review and post-grant review proceedings, because those are adjudicative proceedings requiring discovery and akin to litigation. "The rules this past week were a bit more surprising," said McKeown. "It's a significant jump."
In a blog post, McKeown predicted last week's fees may signal even higher fees than predicted for post-grant review and inter partes review: "Looking at these revisions to patent reexamination filing fees, one can expect higher fees for these more labor intensive office proceedings," he wrote.
The Office is likely to receive criticism from small businesses and independent inventors, as no micro-entity fees have been set.
Although the Office said in its Federal Register Notice that it considered lowering some fees for small entities, it ultimately concluded that doing so would be counterproductive to the intentions of the America Invents Act.
The Notice said: "With respect to the proposed rules to adjust the fee for filing a request for ex parte reexamination, and to set a fee for petitions filed in reexamination proceedings, the alternative of not adjusting or setting the fees would have a lesser economic impact on small entities, but would not accomplish the stated objectives of applicable statutes. In addition, a decision to forego this fee adjustment and fee setting would have a negative impact on Office funding, which in turn would have a negative impact on the ability of the Office to meet the statutory mandate to conduct reexamination proceedings with special dispatch."
The proposed rules on supplemental examination and reexamination fees are open for public comment until March 26.
Proposed rules on post grant review and inter partes review are expected by Wednesday.
