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Tag: patent fees

Attorney Fees not Available in Appeals from Patent Office

The Supreme Court has recently ruled, in Peter v. Nantkwest, Inc., that in appeals from proceedings at the Patent Office, the patent applicant will not be responsible for the fees of the Patent Officer’s attorneys and paralegals. This decision provides clarity in an important factor when considering how to seek review of a patent application.

A patent application is initially filed with the Patent Office. Generally, all applications are rejected, and the process of receiving and responding to rejections is called prosecution. Prosecution can take quite a bit of time, but in certain cases, an applicant can appeal an Examiner’s decision in prosecution to the Patent Trial and Appeal Board. If the Board finds against the applicant, the applicant has the opportunity to request further review of the decision, either to District Court or the Federal Circuit. When this occurs, the applicant hires an attorney on its behalf, and the Patent Office is represented by in-house attorneys who argue its case against the applicant.

Recently, a district court held that an applicant, after losing its appeal, would have to pay the attorney and paralegal fees incurred by the Patent Office. This amounted to about $80,000. The applicant, not too excited, appealed that decision to the Federal Circuit and then to the Supreme Court.

The Supreme Court denied the Patent Office, finding that it should follow the “American Rule,” which has litigants bearing their own costs whether they win or lose. While patent statutes do allow the Patent Office to recover some expenses – expert costs, travel costs, docketing fees, for example – that did not extend so far as to cover attorney and paralegal fees.

Of course, attorney’s fees can be substantial in an appeal, and so the potential imposition of those fees could present a chilling effect on the pursuit of a patent grant. The Supreme Court recognized this, noting that such a rule would limit access to methods of redress from unfavorable Patent Office decisions.

Patent Office Fees Change

We made it through the Mayan apocalypse, and to reward us, the USPTO has raised some of its fees. Beginning January 1, 2013, fees due to foreign offices under the PCT system will change according to:

    • 1701 – International filing fee (first 30 pages – filed in paper with PCT EASY zip file or electronically without PCT EASY zip file) – fee increase from $1,254 to $1,312
    • 1710 – International filing fee (first 30 pages) – filed electronically with PCT Easy zip file – fee increase from $1,152 to $1,206
    • 1702 – International filing fee (first 30 pages) – fee increase from $1,356 to $1,419
    • 1703 – Supplemental fee (for each page over 30) – fee increase from $15 to $16
    • 1704 – International Search (EPO) – fee decrease from $2,426 to $2,419
    • 1712 – International Search (IPAU) – fee increase from $2,254 to $2,282
    • 1709 – International Search (KIPO) – fee increase from $1,101 to $1,167
    • 1714 – International Search (Rospatent) – fee increase from $211 to $217
    • 1705 – Handling Fee – fee increase from $204 to $213
    • 1706 – Handling Fee – 90% reduction, if applicants meets certain criteria – fee increase from $20.40 to $21.30


Patent Office Action Response Deadlines

When the Patent Office sends you an Office Action, you typically have a few deadlines for response.  The OA will indicate the deadline on its front page: 3 months, but that time can be extended up to 6 months with fees.

If you respond before the 3-month anniversary of the mail date on the OA, you don’t have to pay any fees.  If you respond by the 4-month anniversary, you have to pay a one-month extension fee.  If you respond by the 5-month anniversary, you owe a more-expensive two-month extension fee.  And if you respond by the 6-month anniversary, a most-expensive 3-month extension fee is due.  The fees are all cut in half if you are legally considered a small entity.  Your application is abandoned, retroactively, on the 3rd month if you fail to respond by the 6-month mark with the appropriate extension fee.  You’ll then have to file a petition to revive and an additional petition fee.

The date on which you respond not only affects how much, if any, you pay in fees, but it can also affect the life of your patent when it issues.  The term of a patent is 20 years from the filing date.  However, because the Patent Office can sometimes take 2, 3, 4 years or more to process the application into a patent, the patent term is sometimes adjusted to make up for some of that delay.  If you responded after the 3-month deadline to an OA, you do not get that delay back – so if you respond 3 months and 12 days after the Office Action was mailed, and your patent issues and is eligible for patent term adjustment, you will not get those 12 days back.