uspto assignment recordation fee

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A license is a grant (assignment) to the licensee of various licensed rights.  The situation can be further obscured by the fact that one can assign the licensed rights from one entity to another.  Thus, the first recordation of a license may be recorded as a “license,” while the assignment of those same licensed rights to another entity may be recorded as an “assignment.”  The only way to really understand the situation is to review the actual documents, which are all readily available from the recordation branch of the patent office.

Note that the patent office sometimes refers to licenses as a species of assignment.  That is correct, because one is assigning license rights.

Not necessarily.  Assignments are only needed if you are contractually obligated, by employment or otherwise, to make the assignment.

An important corollary is that an inventor can merely license his patent rights to a company that is exploiting the invention, and keep title to those rights in his own name.  Investors are usually unhappy with that arrangement, but there can be significant advantages.  One major advantage is that the patent holder is a “necessary and indispensable” to any litigation over patent validity.  Any competitor trying to invalidate the patent must file the action in the district where the inventor resides.

Assignments of provisionals have substantially the same pros and cons as assigning formal utility and design applications.  See the previous FAQ.

Since there are costs attending the handling and recording of assignments, many inventors and companies prefer to hold off on assigning provisional applications until filing of the corresponding formal (utility or PCT) applications.  That is a dangerous strategy.  In the interim between filing the provisional and the formal applications, there are all sorts of unfortunate events that can make later assignments difficult or impossible, including death or disability of an inventor, reluctance of an inventor to file an assignment due to a separation from a company, or divorce.

It is not technically necessary to re-file assignments for divisional or straight continuation applications.  A properly worded prior assignment recorded against the original application is automatically effective because the assignment recorded against the parent application gives the assignee rights to the subject matter common to both applications.

In the case of a substitute or continuation-in-part application, a prior assignment of the original application is not applied to the substitute or continuation-in-part application because the assignment recorded against the original application gives the assignee rights to only the subject matter common to both applications.  Substitute or continuation-in-part applications require the recordation of a new assignment if they are to be issued to an assignee.

Absolutely.  Indeed, it is a very common occurrence that an inventor will assign his invention to a company, and then the company will re-assign the rights after the patent issues.

Assignment is technically free, but it costs about $100 ($40 in filing costs and about $60 in paralegal time) to record the assignment at the U.S. patent office.

Note that the office charges US$ 40 for each patent or patent application listed on the recorda­tion form.  Thus, if an assignment references a family of 5 patent applications, the recorda­tion fee is US$ 200.  Of course paralegal charges would also apply, and possibly attorney time.

Under U.S. law, assignments must be recorded to be effective as against third parties who do not have actual knowledge of the assignment.  The statute is similar to recording statutes used for recording real property.  Thus, although there is no requirement to record an assignment, it is foolish not to do so.

Note that absent some unusual circumstance, patent assignments do not have to be notarized for use within the United States.

Preparing assignments is usually a simple matter of filling in the blanks of a form.  Assignment forms (inventor to company and company to company) and guidelines for preparing such forms can be found in  Strategic Patenting .

Note also that it is important to clearly identify whether the document being recorded is an assignment, license, or other document.  The recording branch does not generally read the documents to verify the content.

The Patent office will proceed as if the signature had been procured from the inventor, but only after establishing that the entity pursuing the application has colorable rights, and only after establishing that the inventor cannot be reached.  Thus, the patent office will need a copy of the employee agreement, assignment, or other documentary evidence establishing those rights.

In the case of a deceased inventor, the patent office will insist upon a statement from the executor of the estate, or an heir if probate is finished.  Where the inventor refuses to sign, or cannot be found, the patent office will insist upon seeing the letters, emails and faxes sent to the inventor, and will need a declaration from the person trying to make contact.

One simply records a certificate of name change or other formal document with the USPTO, using the assignment recordation form.

In foreign countries, name changes can be a real problem, and can cost anywhere from several hundred to a thousand dollars (mostly in attorneys fees).

It depends on the wording of the assignment and the recordation laws of the foreign countries.  Most assignments transfer all rights, title, and interest to U.S. patents and applications, and to corresponding foreign patents and applications.  Even so, the assignments might not be legally effective in a given country until the assignment is recorded in that country.

Some countries insist on a specific assignment that expressly lists that country. Canada, for example, typically requires its own assignments.

Patent infringement damages accrue in some countries only from the date the assignment was actually recorded at the relevant patent office.  Thus, delay in registering can cost a patent holder dearly in reduced patent infringement damages.

The main disadvantage to recording assignments is that many countries (including most or all of Europe) consider assignment of a patent or application to be a taxable transfer, and charge VAT (Value Added Tax) on the estimated value of the application or patent.  Since the value is often low in the early days, and can rise considerably during the life of the patent, the disadvantage of recordation can be mitigated by registering early.

Assignments records at the USPTO are available for  public inspection , but only for patents and published applications.  One can search by reel/frame number, patent or publication number, and assignor or assignee name.

The underlying documents are not available for download, but can be ordered from the assignment branch.  Paper mail requests can take months, but faxed requests are usually filled within a day or two.

No.  One should never rely upon the designation of “assignee” as set forth on the face of a patent.  First, the patent office obtains the “assignment” information directly from the issue fee transmittal form, and there is no verification whatsoever that such information is, or even ever was, correct.  The entry could well have been an error on the part of an attorney, paralegal, or secretary, and the issue fee transmittal form even warns that designation of an assignee of that form does not, in and of itself, affect an assignment.  Second, the patent is never altered after it is published.  Information that was correct at one point in time may well be superseded down the road.  Third, even if the “assignee” information is correct, one cannot know from the face of the patent what rights were assigned.  It might well be that only licensed rights were assigned, or that such rights are subject to a reversion.

Yes. But there can be real problems with multiple owners of a patent. Unless there is some other agreement restricting what an entity can do with its ownership interest, a co-owner of any portion of a patent, (whether 99% or 1% or .0001%), can make use of the patent however they want.  For example, a .0001% owner of a patent could license out its rights, and keep 100% of the license fee.  Absent an agreement to the contrary, there is no duty of a co-owner of the patent to share license fees with any of the other co-owners.

One of the big problems with two entities owning portions of a given patent is that the two entities can compete with each other with respect to license fees. For example, if co-owner A offers to license the patent rights for 7%, co-owner B might choose to undercut the previous offer by offering to license the same rights for 5%.  But then co-owner A comes back and offers to license the rights for 2%. Pretty soon the value of the license rights goes to zero.  Also, if co-owner A gets upset with co-owner B, co-owner A could unilaterally abandon the patent, which would make it worthless to everyone.

Even if co-owners agree to share license fees 50-50, there can be problems.  For example, co-owner A could decide to license out its patent rights for one dollar a year to a licensee that co-owner A owns, has an interest in, or perhaps has a relative with an interest in.  Of course co-owner A would be happy to share $0.50 of its annual license fee with co-owner B, but co-owner B would be pretty upset.

Still further, if there is a chain of patents, for example with a parent and a child patent in the same family, the ownership of both patents has to remain to the same at all times.  If, for example, both a parent patent and a child patent are 100% owned by A, assignment of some or all of the child patent to B will immediately invalidate the child patent.  Even if such an assignment is made, and the parties realize the mistake, reassigning the child patent back A would not cure the mistake. The child patent would remain abandoned.

Bottom line, co-ownership of a patent is really problematic.

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USPTO Trademark Assignment: Everything You Need To Know

USPTO trademark assignment is the process of assigning a trademark you have registered with the U.S. Patent and Trademark Office to a third party. 3 min read updated on February 01, 2023

Updated November 25, 2020:

USPTO trademark assignment is the process of assigning a trademark you have registered with the U.S. Patent and Trademark Office to a third party. A trademark is a symbol, word, device, phrase, or combined elements that represent your business or brand. When this mark is associated with the quality of your services, it is a valuable form of intellectual property (IP). Because this is considered an asset, it can be assigned. Assignment means to transfer the ownership rights of your trademark to a third party in exchange for profit or benefit. Registered and pending trademarks, as well as patents and patent applications, can be assigned. You must file an assignment agreement with the USPTO. Business reorganization, acquisition, and other circumstances may result in a trademark assignment.

Steps in Assigning a Trademark

• Draft an assignment agreement and have it signed by both parties. Name the person or company buying the trademark as the assignee and the current trademark owner as the assignor. Clearly identify both these parties as well as the trademark in question. Establish terms such as the cost of the trademark, how disputes about the assignment will be settled, and who will pay the transfer fee.
• Fill out the Recordation Form Cover Sheet, which can be completed online. You'll need to include the name and address of a registered agent to receive official USPTO information.
• Submit both the agreement and the cover sheet to the USPTO's Assignment Recordation unit. This can be done online, by fax, or through standard mail. The latter two options require you to establish a deposit account to pay the USPTO recording fee. Mailed forms can be submitted with a money order or check payable to the USPTO director.
• If your trademark is state-registered, you must also record the transfer with the applicable state.
• The USPTO Patent and Trademark Database will be automatically updated for assignments as well as name changes and mergers. When filling out your form, check one of those boxes for the nature of conveyance to ensure that records are updated. Do not select other, which will not update the record. The records will also not be updated if you file multiple documents with the same execution date, the application is in a blackout period, or you have exceeded the allowed number of ownership changes. In these cases, you must make a written request to have the database updated.
• Choose the correct conveyance type, either assignment of part of the interest or assignment of the entire interest along with the associated goodwill.

Points To Remember

All trademark transfers must also include the mark's associated goodwill . This includes the earning power created by customer recognition of the mark. Trademark assignment may be found invalid if the goodwill does not accompany the transfer of the mark.

Failing to follow the ownership transfer procedures can result in liability if the assignee infringes on a third-party trademark. If you buy a trademark and the original owner does not transfer ownership, a dispute could result.

Check the database to determine whether the updates have been made. Click ownership to display the current owner or assignment to display the entire chain of title.

Do not use assignment if you simply need to change your name as the trademark owner. Instead, record the name change through the USPTO Assignment Recordation Branch .

Patent and Trademark Ownership

When it comes to a patent, owning the patent gives you the exclusive right to sell, manufacture, and use the invention in question. Patents last for 20 years while trademark registration lasts for 10 years and can be renewed. The term ownership references the current holder of a trademark or patent. If you own a registered trademark, no one else can use that mark on their products or services, and imports carrying an infringing mark may be blocked from entry by U.S. Customs and Border Protection.

Assignment Fees

While trademark assignment once carried a $25 fee and a $40 fee was required for trademarks, the USPTO recently discontinued this fee for patents and not for trademarks. That's because trademarks are rarely assigned while the assignment is quite common in the fast-paced world of patents.

If you need help with USPTO trademark assignment, you can post your legal need on UpCounsel's marketplace. UpCounsel accepts only the top 5 percent of lawyers to its site. Lawyers on UpCounsel come from law schools such as Harvard Law and Yale Law and average 14 years of legal experience, including work with or on behalf of companies like Google, Menlo Ventures, and Airbnb.

Hire the top business lawyers and save up to 60% on legal fees

Content Approved by UpCounsel

• Trademark Assignment Recordation
• Trademark Transfer: Everything You Need To Know
• How Long Does a Trademark Last
• Trademark Law
• Selling Trademarks
• Trademark Checklist
• Are All Trademarks and Names Legally Protected
• Available Trademarks
• What does Trademark Mean
• Purpose of Trademark

Which Significant USPTO Fee Increases Might We See in 2025?

If the U.S. Patent and Trademark Office (USPTO) is going to implement fee changes in January 2025, we should see a Federal Register Notice detailing the proposed fees soon. The USPTO started this round of fee-setting in April 2023, publishing its initial proposed fee schedule and supporting information for consideration by the Patent Public Advisory Committee (PPAC). The PPAC’s feedback on the proposed fee changes may provide insight as to which new fees are likely to be implemented and which may be shelved.

The USPTO Fee-Setting Process

The USPTO fee-setting process is a multi-step process that requires input from the PPAC, a public hearing, and a public notice and comment period. The fee changes that took effect in October 2020 began their journey in August 2018, with a Notice of Proposed Rulemaking (NPRM) issued in July 2019 and the final fees published in August 2020. If the USPTO is going to implement fee adjustments in January 2025, it is leaving much less time for consideration of public comments on any NPRM issued in the coming months.

PPAC Comments On Proposed Fee Adjustments

I summarized the most significant proposed fee adjustments in this article — the full proposed fee schedule and justifications are available on the USPTO’s  Fee-Setting web page . Here, I review the PPAC’s comments on the proposed adjustments as stated in the PPAC Fee Setting Report — which increases did PPAC support and which did it disagree with?

(Any fees noted below are at the Large Entity rate)

Mixed Support for Across the Board Fee Increases

The PPAC supported the proposed 5% across-the-board fee increase justified as an inflation adjustment, but opposed the second 5% across-the-board fee increase “designed to front load fees in order to reduce the reliance on maintenance fee renewals.” The PPAC found that would place “an undue burden on individual inventors and small businesses.” 

The PPAC also did not support the significantly increased fees for design patent applications and suggested the USPTO instead consider seeking legislative changes that would impose maintenance fees for design patents.

Opposed New Assignment Recordation Fees

The PPAC opposed the proposed new fees (US$40/US$60) for assignment recordation, which the USPTO had justified to discourage “frivolous” submissions. The PPAC noted that “ensuring transparency of ownership is key to patent data integrity,” and so does not recommend “a fee that would provide an impediment to keeping assignment data up to date.”

Support for Increased Excess Claim Fees

The PPAC supported the proposed increases in excess claim fees (doubling to US$200 for each claim over 20 and increasing 25% to US$600 for each independent claim over 3), but agreed with public comments that the increased fees should be “spent on examination and/or giving the Examiners additional time to evaluate such cases.”

It would be interesting if the USPTO adopted a fee structure that would provide at least a partial refund of excess claim fees if claims are canceled in response to a restriction requirement. That would permit applicants to benefit from the divisional application protections of 35 USC § 121 without having to pay inordinate excess claim fees for claims that are not examined on the merits.

Support for New Escalating IDS Fees

The PPAC supported the proposed new escalating Information Disclosure Statement (IDS) fees, which would be based on the cumulative number of references cited (>50 items: US$200; >100 items: US$300; >200 items: US$300), but suggested “the additional money should go towards allowing Examiner’s [sic] more time to consider the additional references.”

With regard to the IDS burden, the PPAC also stated:

[I]f Congress would reform inequitable conduct rules, this by itself may largely affect applicant behavior. With current inequitable conduct case law, there is undue pressure on practitioners to cite every possible reference or risk the practitioners right to practice or the enforceability of the case. The PPAC recommends a legislative proposal to change this pressure.

I find this comment interesting because it is the USPTO that has not revised the contours of “materiality” set forth in 37 CFR § 1.56 since the Federal Circuit adopted a “but for” standard for inequitable conduct in 2011 . The USPTO’s own rule and guidance require disclosure of more information than current inequitable conduct case law .

Opposed New Escalating Terminal Disclaimer Fees

The PPAC opposed the proposed new escalating Terminal Disclaimer fees, which would increase from US$200 to as much as US$1,400 depending on when the Terminal Disclaimer is filed. The PPAC noted that the proposal would “place an unfair burden to filers with limited resources” who would face “pressure…to give up patent term in exchange for a less expensive more compact prosecution while those with more resources can wait to see if they need to file a terminal disclaimer.”

Conditional Support for New After-Final Consideration Program Fee

The PPAC opposed the proposed US$500 fee for the after-final consideration program unless applicants are guaranteed an examiner interview, or unless the fee is only collected if an interview is granted.

If the USPTO adopts this approach, it should implement safeguards requiring a meaningful interview. In my experience, some examiners conduct two-minute AFCP “interviews” that only advise the applicant that the proposed amendments are being denied entry under the program because they require a new search or more than the allotted time to consider. 

Support for Revised RCE Fee Structure

The PPAC supported the revised fee structure for Requests for Continued Examination (RCEs), with a new higher tier for third and subsequent RCEs (1st RCE: US$1,500; 2nd RCE: US$2,500; 3rd RCE: US$3,600).

Before the USPTO adopts this new structure, it should consider the impact of its IDS rules on RCE filings. For example, the rule that permits filing of an IDS after a final Office Action or Notice of Allowance only applies to IDSs filed to submit items cited by a “ foreign patent office in a counterpart foreign application” or items not previously known to any individual encompassed by the duty of disclosure. It does not apply to IDSs filed to submit items recently cited in a co-pending U.S. application, even if the co-pending U.S. application is a parent or child of the application at issue. To obtain consideration of such an IDS after a final Office Action or Notice of Allowance requires an RCE.

Mixed Support for New Continuing Application Fees

The PPAC opposed the proposed new fee for filing a continuing application between three and seven years after the initial application but supported the proposed new US$3,000 fee for filing a continuing application after seven years or more.

If the USPTO adopts this surcharge, divisional applications should be excluded. Imposing an additional fee for filing a divisional application could be inconsistent with 35 USC § 121, which offers protection to divisional applications filed any time before issuance of the application in which a Restriction Requirement was made.

Conditional Support for Increased Patent Term Adjustment Reconsideration Fee

The PPAC supported the proposed increase in the fee for requesting reconsideration of a patent term adjustment (PTA) award from US$210 to US$300, but only if the USPTO did not make an error in its PTA calculation. I agree with the PPAC’s comment that “[i]f the USPTO made the adjustment mistake, then the applicant shouldn’t have to pay.”

Qualified Support for Increased Patent Term Extension Application Fee

The PPAC supported increasing the fee for an application for FDA review-based patent term extension (PTE), but suggested the USPTO reconsider the magnitude of the increase (from US$1,180 to US$6,700) given its potential impact on “start-up companies [who] may be resource constrained.”

Mixed Support for PTAB Trial Fees

The PPAC supported the increased petition fees for PTAB trials, but opposed proposed fixed fees for exceeding prescribed page limits because they would favor “well-resourced petitioners.”  The PPAC also opposed the proposed new US$440 fee for requesting Director review of a PTAB decision, noting that “[ d]irector review should be encouraged to ensure that all PTAB decisions are consistent,” and that imposing a fee “may adversely affect individual inventors and small company applicants.”

Will These Fees Change Applicant Behavior?

Many of the new fees and significantly higher fees are intended to change applicant behavior, but will they do so in a manner that promotes the grant of reliable patent rights and supports innovation and investment in new technologies?

Courtenay C. Brinckerhoff

Related insights, new ids requirement in uspto fee-setting proposal, uspto aims to mow down patent thickets, uspto issues updated guidance on obviousness.

OFFICIAL GAZETTE of the UNITED STATES PATENT AND TRADEMARK OFFICE

Aia trial proceedings filed before the patent trial and appeal board.

SUMMARY OF DECISIONS ISSUED BY THE TRADEMARK TRIAL AND APPEAL BOARD April 29, 2024 – May 3, 2024  

(1) EX=Ex Parte Appeal; OPP=Opposition; CANC=Cancellation; CU=Concurrent Use; (SJ)=Summary Judgment; (M)=Motion Decision; (R)=Request for Reconsideration; (ACR)=Accelerated Case Resolution (2) *=Opinion Writer; (D)=Dissenting Panelist

Which Significant USPTO Fee Increases Might We See In 2025?

Contributor.

If the U.S. Patent and Trademark Office (USPTO) is going to implement fee changes in January 2025, we should see a Federal Register Notice detailing the proposed fees soon. The USPTO started this round of fee-setting in April 2023, publishing its initial proposed fee schedule and supporting information for consideration by the Patent Public Advisory Committee (PPAC). The PPAC's feedback on the proposed fee changes may provide insight as to which new fees are likely to be implemented and which may be shelved.

The USPTO Fee-Setting Process

The USPTO fee-setting process is a multi-step process that requires input from the PPAC, a public hearing, and a public notice and comment period. The fee changes that took effect in October 2020 began their journey in August 2018, with a Notice of Proposed Rulemaking (NPRM) issued in July 2019 and the final fees published in August 2020. If the USPTO is going to implement fee adjustments in January 2025, it is leaving much less time for consideration of public comments on any NPRM issued in the coming months.

PPAC Comments On Proposed Fee Adjustments

I summarized the most significant proposed fee adjustments in this article — the full proposed fee schedule and justifications are available on the USPTO's Fee-Setting web page . Here, I review the PPAC's comments on the proposed adjustments as stated in the PPAC Fee Setting Report — which increases did PPAC support and which did it disagree with?

(Any fees noted below are at the Large Entity rate)

Mixed Support for Across the Board Fee Increases

The PPAC supported the proposed 5% across-the-board fee increase justified as an inflation adjustment, but opposed the second 5% across-the-board fee increase "designed to front load fees in order to reduce the reliance on maintenance fee renewals." The PPAC found that would place "an undue burden on individual inventors and small businesses."

The PPAC also did not support the significantly increased fees for design patent applications and suggested the USPTO instead consider seeking legislative changes that would impose maintenance fees for design patents.

Opposed New Assignment Recordation Fees

The PPAC opposed the proposed new fees (US$40/US$60) for assignment recordation, which the USPTO had justified to discourage "frivolous" submissions. The PPAC noted that "ensuring transparency of ownership is key to patent data integrity," and so does not recommend "a fee that would provide an impediment to keeping assignment data up to date."

Support for Increased Excess Claim Fees

The PPAC supported the proposed increases in excess claim fees (doubling to US$200 for each claim over 20 and increasing 25% to US$600 for each independent claim over 3), but agreed with public comments that the increased fees should be "spent on examination and/or giving the Examiners additional time to evaluate such cases."

It would be interesting if the USPTO adopted a fee structure that would provide at least a partial refund of excess claim fees if claims are canceled in response to a restriction requirement. That would permit applicants to benefit from the divisional application protections of 35 USC § 121 without having to pay inordinate excess claim fees for claims that are not examined on the merits.

Support for New Escalating IDS Fees

The PPAC supported the proposed new escalating Information Disclosure Statement (IDS) fees, which would be based on the cumulative number of references cited ()50 items: US$200; )100 items: US$300; )200 items: US$300), but suggested "the additional money should go towards allowing Examiner's [sic] more time to consider the additional references."

With regard to the IDS burden, the PPAC also stated:

[I]f Congress would reform inequitable conduct rules, this by itself may largely affect applicant behavior. With current inequitable conduct case law, there is undue pressure on practitioners to cite every possible reference or risk the practitioners right to practice or the enforceability of the case. The PPAC recommends a legislative proposal to change this pressure.

I find this comment interesting because it is the USPTO that has not revised the contours of "materiality" set forth in 37 CFR § 1.56 since the Federal Circuit adopted a "but for" standard for inequitable conduct in 2011 . The USPTO's own rule and guidance require disclosure of more information than current inequitable conduct case law .

Opposed New Escalating Terminal Disclaimer Fees

The PPAC opposed the proposed new escalating Terminal Disclaimer fees, which would increase from US$200 to as much as US$1,400 depending on when the Terminal Disclaimer is filed. The PPAC noted that the proposal would "place an unfair burden to filers with limited resources" who would face "pressure...to give up patent term in exchange for a less expensive more compact prosecution while those with more resources can wait to see if they need to file a terminal disclaimer."

Conditional Support for New After-Final Consideration Program Fee

The PPAC opposed the proposed US$500 fee for the after-final consideration program unless applicants are guaranteed an examiner interview, or unless the fee is only collected if an interview is granted.

If the USPTO adopts this approach, it should implement safeguards requiring a meaningful interview. In my experience, some examiners conduct two-minute AFCP "interviews" that only advise the applicant that the proposed amendments are being denied entry under the program because they require a new search or more than the allotted time to consider.

Support for Revised RCE Fee Structure

The PPAC supported the revised fee structure for Requests for Continued Examination (RCEs), with a new higher tier for third and subsequent RCEs (1st RCE: US$1,500; 2nd RCE: US$2,500; 3rd RCE: US$3,600).

Before the USPTO adopts this new structure, it should consider the impact of its IDS rules on RCE filings. For example, the rule that permits filing of an IDS after a final Office Action or Notice of Allowance only applies to IDSs filed to submit items cited by a " foreign patent office in a counterpart foreign application" or items not previously known to any individual encompassed by the duty of disclosure. It does not apply to IDSs filed to submit items recently cited in a co-pending U.S. application, even if the co-pending U.S. application is a parent or child of the application at issue. To obtain consideration of such an IDS after a final Office Action or Notice of Allowance requires an RCE.

Mixed Support for New Continuing Application Fees

The PPAC opposed the proposed new fee for filing a continuing application between three and seven years after the initial application but supported the proposed new US$3,000 fee for filing a continuing application after seven years or more.

If the USPTO adopts this surcharge, divisional applications should be excluded. Imposing an additional fee for filing a divisional application could be inconsistent with 35 USC § 121, which offers protection to divisional applications filed any time before issuance of the application in which a Restriction Requirement was made.

Conditional Support for Increased Patent Term Adjustment Reconsideration Fee

The PPAC supported the proposed increase in the fee for requesting reconsideration of a patent term adjustment (PTA) award from US$210 to US$300, but only if the USPTO did not make an error in its PTA calculation. I agree with the PPAC's comment that "[i]f the USPTO made the adjustment mistake, then the applicant shouldn't have to pay."

Qualified Support for Increased Patent Term Extension Application Fee

The PPAC supported increasing the fee for an application for FDA review-based patent term extension (PTE), but suggested the USPTO reconsider the magnitude of the increase (from US$1,180 to US$6,700) given its potential impact on "start-up companies [who] may be resource constrained."

Mixed Support for PTAB Trial Fees

The PPAC supported the increased petition fees for PTAB trials, but opposed proposed fixed fees for exceeding prescribed page limits because they would favor "well-resourced petitioners." The PPAC also opposed the proposed new US$440 fee for requesting Director review of a PTAB decision, noting that "[ d]irector review should be encouraged to ensure that all PTAB decisions are consistent," and that imposing a fee "may adversely affect individual inventors and small company applicants."

Will These Fees Change Applicant Behavior?

Many of the new fees and significantly higher fees are intended to change applicant behavior, but will they do so in a manner that promotes the grant of reliable patent rights and supports innovation and investment in new technologies?

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

Intellectual Property

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