USPTO Increases Patent Fees on October 2, 2020; It Is Unclear When the Increase of Trademark Fees Will Go Into Effect (But It Will)

Patent Fees. On August 3, 2020, the United States Patent and Trademark Office (Office or USPTO) issued a Final Rule to set or increase certain patent fees. The “fee adjustments” are needed to provide the Office with a sufficient amount of aggregate revenue to recover the aggregate cost of patent operations in future years and to allow the Office to continue progress toward achieving its strategic goals. As explained in the Federal Register Notice, the fee changes are designed to “provide the USPTO sufficient financial resources to facilitate the effective administration of the U.S. IP system,” including its efforts to improve patent quality and timeliness, support the work of the Patent Trial and Appeal Board (PTAB), and improve the “quality, efficiency, and productivity of patent operations” and the USPTO’s IT systems. The new patent fees are set to take effect October 2, 2020.

https://www.uspto.gov/about-us/performance-and-planning/fee-setting-and-adjusting#tmfee-info

Sputnik Blog® bottom line: Inventors and potential patent holders (“applicants”) who are in a position to file new patent applications or pay fees in pending applications, and patent holders eligible to pay maintenance fees on issued patents, should do so before October 2, 2020, to avoid paying higher fees.

Trademark Fees. On June 19, 2020, the USPTO issued a notice of proposed rulemaking to set or increase certain trademark fees. The proposed “fee adjustments” are needed to provide the Office with a sufficient amount of aggregate revenue to recover the aggregate cost of Trademark and Trademark Trial and Appeal Board (TTAB) operations in future years and to allow the Office to continue progress towards achieving strategic goals. It is unclear when the new trademark fees will go in effect, but they definitely will.

Under the proposal, the cost for filing a Trademark Electronic Application System (TEAS) “standard” application will rise from US $275 to US $350 per class. The cost for filing a Section 8 declaration of use to maintain the registration after the fifth anniversary from the registration or renew it every ten years (or Section 71 affidavit for Madrid registrations) through TEAS will change from US $125 to US $225 per class. The cost to file a petition for cancellation or notice of opposition will increase from US $400 to US $600 per class.

A full schedule of the proposed adjustments can be found on the USPTO website. see also attached file below.

The proposal also includes new fees for actions currently taken at no cost. For example, deletion of goods, services, and/or classes from a registration will generally cost US $250 when the deletion is requested after submission but prior to acceptance of a Section 8 or Section 71 affidavit. This includes paying this fee when trademark owners delete goods, services, and/or classes in response to a post-registration office action. (Since 2017 and introduction of post-registration audits, such post-registration office actions became more frequent.)

The proposal also includes a significant increase in the fee required to file a request for reconsideration (issued after a final office action). Under the proposal, there is no cost for filing a request for reconsideration within three months of issuance of a final office action. However, a request for reconsideration filed between three and six months after the issuance of a final office action will cost US $400.

Whether this proposal will be implemented (with or without modifications) and when, we will know in the Final Rule to be issued soon. It is certain that the trademark fees will be increased, just like the patent fees.

Sputnik Blog® bottom line: Trademark owners who consider the filing of new applications or those who are in the statutory period already to maintain or renew their existing registrations, they should act now to potentially save on official fees.

Text © 2020 Maxim A. Voltchenko
* This piece is not intended to be a review of U.S. law or USPTO practice. This posting may not necessarily represent the views of the author’s employing law firm. Although every effort has been made to verify the accuracy of items in the Sputnik Blog®, readers are urged to check independently on matters of specific concern or interest.

• Copy of Table_of_Trademark_Fee_Adjustments.xlsx