U.S. Patent Office Punishes Applicants For Long Examinations
The new fee proposals from the U.S. Patent & Trademark Office have one thing in common: encouraging applicants to have quick examinations and avoiding strategies to stretch out patent filings over time. For example:
- 25-80% increase for second and third requests for continued examination (RCE), which are requests to keep examining a patent application that has been rejected
- Surcharge of US$2,200 for filing a continuation application more than 5 years from the priority date and a surcharge of US$3,500 for applications filed more than 8 years from the priority date
- US$500 fee to use the After Final Consideration Program (AFCP) program, which allows an interview with the examiner after a final rejection
- 100% increase in fees for claims in excess of 20
- Fees for large information disclosure statements (IDS): US$200 for >50 references, US$500 for >100 references, and US$800 for >200 references
- 25% in fees for Inter Partes Review and Post Grant Review proceedings to challenge patents after grant
The U.S. PTO clearly signals the behavior it wants to discourage: long prosecution with several continuation filings. The fees for submitting more references is interesting. Will examiners get more time to review larger numbers of references? Will the increased fees keep applicants from filing any references that are “material to patentability”? Probably not.
These increased fees mean that applicants should take even more care to work with attorneys having plenty of experience navigating the complexities of the Patent Office.
If an applicant files a continuation application more than five years after the earliest claimed priority or benefit date, they will be subject to a surcharge $2,200 fee. This fee increases to $3,500 if the continuation application is filed more than eight years after the earliest benefit date. These fees are clearly designed to discourage applicants from filing continuation applications long after the original priority date, pushing them to pursue more focused and timely prosecution.
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