Word Count Fees, Inflationary Bump, & Director Review
As I discussed earlier this week, the USPTO has released a laundry list of proposed practice changes for consideration — some, good, some bad, some ugly. One of the better ideas is allowing petitioners, for a commensurate expanded word count fee, to exceed the standard word count limit for a single petition such that larger claim sets can be addressed in a single filing. This avoids the current practice of splitting a single patent challenge across multiple petition filings.
The fees for the above proposal will be considered at a hearing next month, and are targeted to become effective for FY 2025. Additionally, existing PTAB filing fees are proposed to increase by 25%, justification for which is explained as a reaction to inflation and additional work resulting from Arthrex. And, finally, there is a new fee proposed for seeking Director Review.
Here’s the breakdown of the proposed increases and newly added fees:
Below is the fees proposed for AIA trial proceedings starting in FY 2025
As to the fees for expanded word count, it seems there are two options. Buying a half a petition of additional space, or a full petition.
Note that the added fees are split (as our current fees) to account for work done on the preliminary proceeding, and later trial (if necessary). You can find the executive summary of the complete fee proposal (including prosecution fees) (here)
Finally, the PTAB is proposing a $440 fee for Director Review. The agency set this fee is in line with what it costs to consider such filings. That said, a better idea would be to increase this by an order of magnitude to dissuade these filings since most border on frivolous. Unfortunately, the agency doesn’t have the power to do such a thing (sigh).
Those seeking to provide input to the agency on these proposals, as well as the multitude of prosecution fee proposals should be sure to participate in the upcoming hearing (info here). Given that these fees are proposed for FY2025, a lot can change between now and then.