52780 Federal Register / Vol. 82, No. 218 / Tuesday, November 14, 2017 / Rules and Regulations 

DEPARTMENT OF COMMERCE 

Patent and Trademark Office 

37 CFR Parts 1, 41, and 42 

[Docket No. PTO–P–2015–0056] 

RIN 0651–AD02 

Setting and Adjusting Patent Fees 

During Fiscal Year 2017 

AGENCY: United States Patent and 

Trademark Office, Department of 

Commerce. 

ACTION: Final rule. 

SUMMARY: The United States Patent and 

Trademark Office (Office or USPTO) 

sets or adjusts patent fees as authorized 

by the Leahy-Smith America Invents 

Act (Act or AIA). The USPTO operates 

like a business in that external and 

internal factors affect the demand for 

patent products and services. The fee 

adjustments are needed to provide the 

Office with a sufficient amount of 

aggregate revenue to recover its 

aggregate cost of patent operations 

(based on current projections), while 

maintaining momentum towards 

achieving strategic goals. 

DATES: This rule is effective on January 

16, 2018. The changes to § 1.18(b)(1) 

shall apply to those international design 

applications under the Hague 

Agreement having a date of 

international registration on or after 

January 16, 2018. 

FOR FURTHER INFORMATION CONTACT: 

Brendan Hourigan, Director of the Office 

of Planning and Budget, by telephone at 

(571) 272–8966; or Dianne Buie, Office 

of Planning and Budget, by telephone at 

(571) 272–6301. 

SUPPLEMENTARY INFORMATION: This rule 

was proposed in a notice of proposed 

rulemaking published at 81 FR 68150 

(Oct. 3, 2016) (hereinafter NPRM). 

Table of Contents 

I. Executive Summary 

II. Legal Framework 

III. Rulemaking Goals and Strategies 

IV. Fee Setting Methodology 

V. Individual Fee Rationale 

VI. Discussion of Comments 

VII. Discussion of Specific Rule 

VIII. Rulemaking Considerations 

I. Executive Summary 

A. Purpose of This Action 

The Office issues this final rule under 

Section 10 of the AIA (Section 10), 

which authorizes the Director of the 

USPTO to set or adjust by rule any 

patent fee established, authorized, or 

charged under title 35 of the United 

States Code (U.S.C.) for any services 

performed, or materials furnished, by 

the Office. Section 10 prescribes that 

fees may be set or adjusted only to 

recover the aggregate estimated costs to 

the Office for processing, activities, 

services, and materials relating to 

patents, including administrative costs 

of the Office with respect to such patent 

fees. Section 10 authority includes 

flexibility to set individual fees in a way 

that furthers key policy factors, while 

taking into account the cost of the 

respective services. Section 10 also 

establishes certain procedural 

requirements for implementing or 

revising fee regulations, such as public 

hearings and input from the Patent 

Public Advisory Committee (PPAC) and 

Congressional oversight. 

This rulemaking represents the 

second iteration of patent fee 

rulemaking by the USPTO to set fees 

under the authority of the AIA; the first 

AIA patent fee setting rule was 

published in January 2013. This current 

rulemaking is a result of the USPTO 

assessing its costs and fees, as is 

consistent with federal fee setting 

standards. Following a biennial review 

of fees, costs, and revenues that began 

in 2015, the Office concluded that 

targeted fee adjustments were necessary 

to continue to fund patent operations, 

enhance patent quality, continue to 

work toward patent pendency goals, 

support the Patent Trial and Appeal 

Board (PTAB)’s continued efforts to 

deliver high quality and timely 

decisions, fund general support costs 

necessary for patent operations (e.g., 

rent, utilities, legal, financial, human 

resources, and other administrative 

services), invest in strengthening the 

Office’s information technology (IT) 

capability and infrastructure, and 

achieve operating reserve targets. 

Further, in several instances, the fee 

change proposals offered during the 

biennial fee review process were 

enhanced by the availability of cost and 

workload data (e.g., the number of 

requests for a service) that was not 

available in 2013. As a result, the 202 

fee adjustments outlined in this rule 

align directly with the Office’s strategic 

goals and four key fee setting policy 

factors, discussed in detail in Part III. 

B. Summary of Provisions Impacted by 

This Action 

This final rule sets or adjusts 202 

patent fees for large, small, and micro 

entities (any reference herein to ‘‘large 

entity’’ includes all entities other than 

those that have established entitlement 

to either a small or micro entity fee 

discount). The fees for small and micro 

entity rates are tiered, with small 

entities at a 50 percent discount and 

micro entities at a 75 percent discount. 

Small entity fee eligibility is based on 

the size or certain non-profit status of 

the applicant’s business. Micro entity 

fee eligibility is described in Section 

10(g) of the Act. There are also 42 new 

fees being introduced or replacing one 

of the 14 fees that are being 

discontinued. This final rule applies 

small entity discounts to two additional 

fees and applies micro entity discounts 

to six additional fees. 

In summary, the routine fees to obtain 

a patent (i.e., filing, search, 

examination, and issue fees) increase 

slightly under this final rule relative to 

the current fee schedule. Applicants 

who meet the definition for small or 

micro entity discounts will continue to 

pay a reduced fee for the fees eligible for 

a discount under Section 10(b) of the 

Act. Additional information describing 

the fee adjustments is included in Part 

V. Individual Fee Rationale section of 

this rulemaking and in the ‘‘Table of 

Patent Fees—Current, Final Rule and 

Unit Cost’’ (hereinafter ‘‘Table of Patent 

Fees’’) available at http://

www.uspto.gov/about-us/performanceand-planning/fee-setting-and-adjusting. 

C. Summary of Costs and Benefits of 

This Action 

The final rule is significant and 

results in a need for a Regulatory Impact 

Analysis (RIA) under Executive Order 

12866 Regulatory Planning and Review, 

58 FR 51735 (Oct. 4, 1993). The Office 

prepared a RIA to analyze the costs, 

benefits, and transfer payments of the 

final rule over a five-year period, FY 

2017–FY 2021. The RIA includes a 

comparison of the final rule fee 

schedule to the current fee schedule 

(baseline) and to two other alternatives. 

The Office of Management and Budget 

(OMB) has determined that this rule 

involves a transfer payment from one 

group to another that does not affect the 

total resources available to society. The 

costs and benefits that the Office 

identifies and analyzes in the RIA are 

strictly qualitative. Qualitative costs and 

benefits have effects that are difficult to 

express in either dollar or numerical 

values. Monetized costs and benefits, on 

the other hand, have effects that can be 

expressed in dollar values. The Office 

did not identify any monetized costs 

and benefits of the rulemaking, but 

found that the final rule has significant 

qualitative benefits with no identified 

costs. 

The qualitative costs and benefits that 

the RIA assesses are: (1) Fee schedule 

design—a measure of how well the fee 

schedule aligns to the Office’s key fee 

setting policy factors—and (2) securing 

aggregate revenue to cover aggregate 


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cost—a measure of whether the 

alternative provides adequate revenue to 

support the core mission and strategic 

priorities described in the final rule and 

FY 2018 Budget. For these costs and 

benefits, the fee schedule in this final 

rule offers the highest benefits, with no 

costs identified. As described 

throughout this document, the final rule 

fee schedule maintains the existing 

balance of setting entry fees (e.g., filing, 

search, and examination) below the 

costs to the Office to perform those 

services and setting maintenance fees 

above the cost to the Office, as one 

approach to foster innovation. Further, 

as detailed in Part V, the fee changes are 

targeted in support of one or more fee 

setting policy factors. Lastly, the final 

rule secures the aggregate revenue 

needed to achieve the strategic priorities 

encompassed in the rulemaking goals 

and strategies (see Part III). In summary, 

the benefits of the final rule clearly 

outweigh those of the baseline and the 

other alternatives considered in the RIA. 

Table 1 summarizes the RIA results. 

TABLE 1—FINAL PATENT FEE SCHEDULE COSTS AND BENEFITS, CUMULATIVE FY 2017–FY 2021 

Qualitative costs and benefits 

Costs: 

None identified ................... Neutral. 

Benefits: 

Secure Aggregate Revenue to Cover Aggregate 

Cost.

Significant. 

Fee Schedule Design ........ Significant. 

Net Benefit/Cost ................ Significant 

Benefit. 

Additional details describing the costs 

and benefits are available at http://

www.uspto.gov/about-us/performanceand-planning/fee-setting-and-adjusting. 

II. Legal Framework 

A. Leahy-Smith America Invents Act— 

Section 10 

The Leahy-Smith America Invents Act 

was enacted into law on September 16, 

2011. See Public Law 112–29, 125 Stat. 

284. Section 10(a) of the Act authorizes 

the Director of the Office to set or adjust 

by rule any patent fee established, 

authorized, or charged under title 35, 

U.S.C., for any services performed by, or 

materials furnished by, the Office. Fees 

under 35 U.S.C. may be set or adjusted 

only to recover the aggregate estimated 

cost to the Office for processing, 

activities, services, and materials related 

to patents, including administrative 

costs to the Office with respect to such 

patent operations. See 125 Stat. at 316. 

Provided that the fees in the aggregate 

achieve overall aggregate cost recovery, 

the Director may set individual fees 

under Section 10 at, below, or above 

their respective cost. Section 10(e) of the 

Act requires the Director to publish the 

final fee rule in the Federal Register and 

the Official Gazette of the Patent and 

Trademark Office at least 45 days before 

the final fees become effective. Section 

10(i) terminates the Director’s authority 

to set or adjust any fee under Section 

10(a) upon the expiration of the sevenyear period that began on September 16, 

2011. 

B. Small Entity Fee Reduction 

Section 10(b) of the AIA requires the 

Office to reduce by 50 percent the fees 

for small entities that are set or adjusted 

under Section 10(a) for filing, searching, 

examining, issuing, appealing, and 

maintaining patent applications and 

patents. 

C. Micro Entity Fee Reduction 

Section 10(g) of the AIA amended 

chapter 11 of title 35, U.S.C., to add 

Section 123 concerning micro entities. 

The Act provides that the Office must 

reduce by 75 percent the fees for micro 

entities for filing, searching, examining, 

issuing, appealing, and maintaining 

patent applications and patents. Micro 

entity fees were implemented through 

the previous patent fee rule, and the 

Office will maintain this 75 percent 

micro entity discount for the 

appropriate fees and implement micro 

entity fees for additional services as 

appropriate. 

D. Patent Public Advisory Committee 

Role 

The Secretary of Commerce 

established the PPAC under the 

American Inventors Protection Act of 

1999. 35 U.S.C. 5. The PPAC advises the 

Under Secretary of Commerce for 

Intellectual Property and Director of the 

USPTO on the management, policies, 

goals, performance, budget, and user 

fees of patent operations. 

When adopting fees under Section 10 

of the Act, the Director must provide the 

PPAC with the proposed fees at least 45 

days prior to publishing the proposed 

fees in the Federal Register. The PPAC 

then has at least 30 days within which 

to deliberate, consider, and comment on 

the proposal, as well as hold public 

hearing(s) on the proposed fees. The 

PPAC must make a written report 

available to the public of the comments, 

advice, and recommendations of the 

committee regarding the proposed fees 

before the Office issues any final fees. 

The Office considers and analyzes any 

comments, advice, or recommendations 

received from the PPAC before finally 

setting or adjusting fees. 

Consistent with this framework, on 

October 20, 2015, the Director notified 

the PPAC of the Office’s intent to set or 

adjust patent fees and submitted a 

preliminary patent fee proposal with 

supporting materials. The preliminary 

patent fee proposal and associated 

materials are available at http://

www.uspto.gov/about-us/performanceand-planning/fee-setting-and-adjusting. 

The PPAC held a public hearing in 

Alexandria, Virginia, on November 19, 

2015. Transcripts of the hearing are 

available at http://www.uspto.gov/sites/

default/files/documents/PPAC_

Hearing_Transcript_20151119.pdf. 

Members of the public were invited to 

the hearing and given the opportunity to 

submit written and/or oral testimony for 

the PPAC to consider. The PPAC 

considered such public comments from 

this hearing and published all 

comments on the Fee Setting Web site, 

available at http://www.uspto.gov/

about-us/performance-and-planning/ 

fee-setting-and-adjusting. The PPAC 

also provided a written report setting 

forth in detail the comments, advice, 

and recommendations of the committee 

regarding the preliminary proposed fees. 

The report regarding the preliminary 

proposed fees was released on February 

29, 2016, and is available at http://

www.uspto.gov/sites/default/files/ 

documents/PPAC_Fee%20_Setting_

Report_2016%20%28Final%29.pdf. 

The Office considered and analyzed all 

comments, advice, and 

recommendations received from the 

PPAC before publishing the NPRM. 

Likewise, before issuing this final rule, 

the Office considered and analyzed all 

comments, advice, and 

recommendations received from the 

public during the 60-day comment 

period. The Office’s response to 

comments received is available in Part 

VI. Discussion of Comments. 

III. Rulemaking Goals and Strategies 

A. Fee Setting Strategy 

The overall strategy of this final rule 

is to establish a fee schedule that 

generates sufficient multi-year revenue 

to recover the aggregate cost to maintain 

USPTO operations and accomplish the 

USPTO’s strategic goals in accordance 

with the authority granted to the USPTO 

by AIA Section 10. A similar strategy 

guided the initial AIA patent fee setting 

in 2013. The overriding principles 

behind this strategy are to operate 

within a sustainable funding model to 

avoid disruptions caused by 

fluctuations in available financial 

resources, and to continue strategic 


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improvements, such as progress on 

patent quality initiatives, continued 

reduction of the patent application 

backlog and pendency, continued 

delivery of high quality and timely 

PTAB decisions, and continued 

investment in modernization of IT 

systems and infrastructure. 

In addition to the overriding 

principles outlined above, the Office 

also assesses alignment with the four 

key fee setting policy factors: Foster 

innovation, align fees with the full cost 

of products and services, set fees to 

facilitate the effective administration of 

the patent and trademark systems, and 

offer application processing options for 

applicants. Each factor promotes a 

particular aspect of the U.S. patent 

system. Fostering innovation is an 

important policy factor to ensure that 

applicants can access the U.S. patent 

system without significant barriers to 

entry, and innovation is incentivized by 

granting inventors certain short-term 

exclusive rights to stimulate additional 

inventive activity. Aligning fees with 

the full cost of products and services 

recognizes that as a fully fee-funded 

entity, the Office must account for all of 

its costs even as it elects to set some fees 

below, at, or above cost. This factor also 

recognizes that some applicants may use 

particular services in a much more 

costly manner than other applicants 

(e.g., patent applications cost more to 

process when more claims are filed). 

Facilitating effective administration of 

the patent system is important to 

influence efficient patent prosecution, 

resulting in compact prosecution and 

reduction in the time it takes to obtain 

a patent. Finally, the Office recognizes 

that patent prosecution is not a one-sizefits-all process and therefore, where 

feasible, the Office endeavors to fulfill 

its fourth policy factor of offering patent 

processing options to applicants. 

B. Fee Setting Considerations 

The balance of this sub-section 

presents the specific fee setting 

considerations the Office reviewed in 

developing the final patent fee schedule. 

Specific considerations are: (1) 

Historical costs of patent operations and 

investments to date in meeting the 

Office’s strategic goals; (2) projected 

costs to meet the Office’s operational 

needs and strategic goals; and (3) 

sustainable funding. Additionally, the 

Office carefully considered the 

comments, advice, and 

recommendations offered by the public 

and PPAC during the public comment 

period for the NPRM. Collectively, these 

considerations informed the Office’s 

chosen rulemaking strategy. 

(1) Historical Cost. To ascertain how 

to best align fees with the full cost of 

products and services, the Office 

considers Activity Based Information. 

Using historical cost data and forecasted 

application demands, the Office can 

align fees to the costs of specific patent 

products and services. The document 

entitled USPTO Setting and Adjusting 

Patent Fees during Fiscal Year 2017— 

Activity Based Information and Patent 

Fee Unit Expense Methodology, 

available at http://www.uspto.gov/ 

about-us/performance-and-planning/

fee-setting-and-adjusting, provides 

detail on the Office’s costing 

methodology in addition to historical 

cost data. Part IV of this rulemaking 

details the Office’s methodology for 

establishing fees. Finally, Part V 

describes the reasoning for setting some 

fees at cost, below cost, or above cost 

such that the Office recovers the 

aggregate cost of providing services 

through fees. 

The Office has made significant 

progress towards its strategic priorities 

for patent quality, backlog, pendency, 

and IT system modernization for several 

years now. For more information about 

the Office’s performance record and 

progress towards its strategic goals, see 

the FY 2016 Performance and 

Accountability Report, available at 

http://www.uspto.gov/sites/default/files/

documents/USPTOFY16PAR.pdf. 

(2) Projected Costs. The costs 

projected to meet the Office’s strategic 

goals can be found in the FY 2018 

President’s Budget, which provides 

additional detail about the following 

performance and modernization efforts, 

among others: (a) Quality, backlog, and 

pendency for Patents and PTAB and (b) 

investing in modernizing the USPTO IT 

systems and infrastructure. 

(a) Quality, Backlog, and Pendency. 

The Office developed the strategic goal 

of optimizing patent quality and 

timeliness in response to feedback from 

the intellectual property community 

and in recognition that a sound, 

efficient, and effective intellectual 

property system is essential for 

technological innovation and for patent 

holders to reap the benefits of patent 

protection. In addition to timeliness of 

patent protection, the quality of 

application review is critical to the 

value of an issued patent. Issuance of 

quality patents provides certainty in the 

market and allows businesses and 

innovators to make informed and timely 

decisions on product and service 

development. Under this final rule, the 

Office will continue to improve patent 

quality through ongoing efforts related 

to the three quality pillars: (1) 

Excellence in work products; (2) 

excellence in measuring patent quality; 

and (3) excellence in customer service. 

In addition to quality, the USPTO 

continues to focus on backlog and 

pendency reduction. First action and 

average total pendency in FY 2016 were 

16.2 months and 25.3 months 

respectively compared to 21.9 months 

and 32.4 months in FY 2012. The patent 

application backlog was reduced from 

608,283 in FY 2012 to 537,655 at the 

end of FY 2016. This rulemaking aims 

to produce revenues adequate to 

continue the USPTO’s progress towards 

attaining its strategic goals for patent 

backlog and pendency. 

Similarly, the PTAB manages 

pendency and inventory for appeals. In 

the past few years, the Office has made 

great strides in reducing the backlog and 

pendency for ex parte appeals. Appeal 

inventory reached over 27,000 (in 2012) 

and by the end of FY 2016 was about 

17,000. As of the end of fiscal year 2016, 

the average pendency for decided ex 

parte appeals was 25.5 months (as 

measured from appeal number 

assignment to decision date). The Office 

aspires to reach an appeals pendency 

goal of 12 months by the end of FY 2018 

and to further reduce the existing 

inventory. This rulemaking will help 

the PTAB to maintain the appropriate 

level of judicial, legal, and 

administrative staff needed to provide 

high quality and timely decisions for 

reexamination appeals; and ex parte 

appeals. 

(b) Information Technology. Revenue 

generated from the final fee structure 

will enable the USPTO to continue 

investing in modernizing the USPTO IT 

systems and infrastructure. Some 

current systems remain obsolete and 

difficult to maintain, leaving the USPTO 

vulnerable to potential disruptions in 

patent operations. However, the Office’s 

efforts on PE2E, the large-scale patent IT 

improvement and modernization 

program, have already delivered value 

to examiners and customers alike. To 

date, the Docket & Application Viewer 

(DAV), a case management tool for 

examiners, was first released in March 

2015. By the end of FY 2016, 100 

percent of patent examiners were using 

DAV. The eDAN legacy system was 

retired in December 2016, as its full 

functionality was replaced by DAV. 

Other PE2E releases include pilots for 

Official Correspondence (replaces Office 

Action Correspondence System 

(OACS)), an authoring and workflow 

solution that offers DAV integration, 

and Examiner Search (replaces 

Examiner’s Automated Search Tool 

(EAST)), which supports modern, 

scalable enterprise searches; both 

represent significant advances in how 


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the Office manages workload and 

delivers results to customers. PE2E 

relies on flexible, scalable, modern 

technology that is optimized to 

eliminate repetitive tasks and support 

analytics and automated processing. In 

April 2016, the USPTO released 

Financial Manager, its new online fee 

payment management tool. Financial 

Manager allows USPTO customers to 

store and manage payment methods 

online and generate custom transaction 

reports at any time. Modern IT tools 

benefit both USPTO employees and 

stakeholders by facilitating the effective 

administration of the patent system 

through effective application 

processing, better examination quality, 

and the ability to provide greater 

services via a nationwide workforce. 

(3) Sustainable Funding. A major 

component of sustainable funding is the 

creation and maintenance of a viable 

patent operating reserve that allows for 

effective management of the U.S. patent 

system and responsiveness to changes 

in the economy, unanticipated 

production workload, and revenue 

changes. As a fee-funded agency, 

spending levels and revenue streams 

create volatility in patent operations and 

threaten the Office’s ability to meet its 

designated performance levels (e.g., 

quality, backlog, and pendency for 

Patents and PTAB). 

The USPTO’s annual budget 

delineates prospective spending levels 

(aggregate cost) to execute core mission 

activities and strategic initiatives. In the 

FY 2018 President’s Budget, the USPTO 

estimated that its aggregate patent 

operating cost for FY 2017, including 

administrative costs, would be $2.986 

billion. After evaluating relevant risk 

factors, the Office determined that a 

minimum balance of $300 million in the 

operating reserve was adequate for FY 

2017 and FY 2018, which is below the 

optimal balance of three months 

operating expenses, or about $746 

million in FY 2017. Based on the latest 

estimates as shown in the FY 2018 

President’s Budget, the spending 

requirement would exceed projected fee 

collections and other income of $2.876 

billion and draw $110 million from the 

patent operating reserve, leaving a $245 

million balance in the patent operating 

reserve, or $55 million less than the 

desired minimum of $300 million. This 

is partially due to the fact that these fee 

adjustments will only be in place for the 

last month of FY 2017. In FY 2018, 

when the fee adjustments will be fully 

implemented, the operating reserve is 

projected to rise above the desired 

minimum, with an end-of-year balance 

of $343 million. In FY 2019, budgetary 

requirements are projected to exceed 

income, taking the operating reserve 

down to $341 million. Then the 

operating reserve is projected to 

continue growing, to $418 million at the 

end of FY 2020 and $501 million at the 

end of FY 2021. This exceeds the 

desired minimum, but falls short of the 

optimal level of $841 million in FY 

2021. The operating reserve is not 

projected to reach its optimal level 

within the next five years. 

Fee setting authority allows the Office 

to align the fee schedule with the four 

fee setting policy factors discussed 

earlier in this document (i.e., foster 

innovation, align fees to full cost, set 

fees to facilitate the effective 

administration of the patent and 

trademark system, and offer application 

processing options). This rule assumes 

that the USPTO will retain the 

important business tool of fee setting 

authority to respond to environmental 

and operational factors in the out-years. 

The USPTO will continue to assess the 

patent operating reserve balance against 

its target balance annually, and at least 

every two years, the Office will evaluate 

whether the target balance continues to 

be sufficient to provide the funding 

stability needed by the Office. Per the 

Office’s operating reserve policy, if the 

operating reserve balance is projected to 

exceed the optimal level by 10 percent 

for two consecutive years, the Office 

will consider fee reductions. The ability 

to implement such fee adjustments is 

based on the assumption that the 

USPTO’s fee setting authority under the 

AIA will be renewed or made 

permanent after it expires in 2018. 

Under the new fee structure, as in the 

past, the Office will continue to 

regularly review its operating budgets 

and long-range plans to ensure the 

USPTO uses patent fees prudently. 

C. Summary of Rationale and Purpose 

of the Final Rule 

The Office estimates that the final 

patent fee schedule will produce 

aggregate revenue to recover the 

aggregate cost of the USPTO, including 

for the implementation of its strategic 

and management goals, objectives, and 

initiatives in FY 2017 and beyond. 

Using the strategic goals (optimizing 

patent quality and timeliness and 

providing domestic and global 

leadership to improve intellectual 

property policy, protection, and 

enforcement worldwide) and the 

management goal of organizational 

excellence as a foundation, the final rule 

should provide sufficient aggregate 

revenue to recover the aggregate cost of 

patent operations, including improving 

patent quality, reducing the patent 

application backlog, decreasing patent 

application pendency, delivering high 

quality and timely PTAB decisions, 

investing in modernizing the patent 

business IT capability and 

infrastructure, and implementing a 

sustainable funding model. 

IV. Fee Setting Methodology 

The Office carried out three primary 

steps in developing the final fee 

schedule: 

Step 1: Determine the prospective 

aggregate cost of patent operations over 

the five-year period, including the cost 

of implementing new initiatives to 

achieve strategic goals and objectives. 

Step 2: Calculate the prospective 

revenue streams derived from the 

individual fee amounts (from Step 3) 

that will collectively recover the 

prospective aggregate cost over the fiveyear period. 

Step 3: Set or adjust individual fee 

amounts to collectively (through 

executing Step 2) recover projected 

aggregate cost over the five-year period, 

while furthering key policy factors. 

These three steps are iterative and 

interrelated. The following is a 

description of how the USPTO carries 

out these three steps. 

Step 1: Determine Prospective Aggregate 

Cost 

Calculating prospective aggregate cost 

is accomplished primarily through the 

annual USPTO budget formulation 

process. The Budget is a five-year plan 

(that the Office prepares annually) for 

carrying out base programs and new 

initiatives to implement the strategic 

goals and objectives. 

The first activity performed to 

determine prospective aggregate cost is 

to project the level of demand for patent 

products and services. Demand for 

products and services depend on many 

factors, including domestic and global 

economic activity. The USPTO also 

takes into account overseas patenting 

activities, policies and legislation, and 

known process efficiencies. Because 

filing, search, and examination costs are 

the largest share of the total patent 

operating cost, a primary production 

workload driver is the number of patent 

application filings (i.e., incoming work 

to the Office). The Office looks at 

indicators such as the expected growth 

in Real Gross Domestic Product (RGDP), 

the leading indicator to incoming patent 

applications, to estimate prospective 

workload. RGDP is reported by the 

Bureau of Economic Analysis 

(www.bea.gov) and is forecasted each 

February by the OMB (www.omb.gov) in 

the Economic and Budget Analyses 

section of the Analytical Perspectives 

and each January by the Congressional 


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Budget Office (CBO) (www.cbo.gov) in 

the Budget and Economic Outlook. A 

description of the Office’s methodology 

for using RGDP can be found in 

Appendix I—Multi-year Planning by 

Business Line and Cost Containment of 

the FY 2018 President’s Budget 

(Congressional Justification). The 

expected change in the required 

production workload must then be 

compared to the current examination 

production capacity to determine any 

required staffing and operating cost 

(e.g., salaries, workload processing 

contracts, and publication) adjustments. 

The Office uses a patent pendency 

model that estimates patent production 

output based on actual historical data 

and input assumptions, such as 

incoming patent applications and 

overtime hours. An overview of the 

model, including a description of 

inputs, outputs, key data relationships, 

and a simulation tool is available at 

http://www.uspto.gov/patents/stats/ 

patent_pend_model.jsp. 

The second activity is to calculate the 

aggregate cost to execute the 

requirements. In developing its Budget, 

the Office first looks at the cost of status 

quo operations (the base requirements). 

The base requirements are adjusted for 

anticipated pay raises and inflationary 

increases for the budget year and four 

out years (detailed calculations and 

assumptions for this adjustment can be 

found in the FY 2018 President’s 

Budget). The Office then estimates the 

prospective cost for expected changes in 

production workload and new 

initiatives over the same period of time 

(refer to ‘‘Program Changes by SubProgram’’ sections of the Budget). The 

Office reduces cost estimates for 

completed initiatives and known cost 

savings expected over the same five-year 

horizon. Finally, the Office estimates its 

three-month target operating reserve 

level based on this aggregate cost 

calculation for the year to determine if 

operating reserve adjustments are 

necessary. 

The FY 2018 President’s Budget 

identifies that, during FY 2017, patent 

operations will cost $2.986 billion, 

including $2.002 billion for patent 

examination activities; $180 million for 

IT systems and support contributing to 

direct patent operations; $87 million for 

activities related to patent appeals and 

AIA trial proceedings; $27 million for 

activities related to intellectual property 

protection, policy, and enforcement; 

and $688 million for general support 

costs necessary for patent operations 

(e.g., rent, utilities, legal, financial, 

human resources, other administrative 

services, and Office-wide IT 

infrastructure and IT support costs). In 

addition, the Office transfers $2 million 

to the DOC Inspector General to conduct 

audits of USPTO programs. The Office 

also estimates collecting $24 million in 

other income associated with recoveries 

and reimbursable agreements (offsets to 

spending). Since operations costs are 

projected to exceed collections, the 

Office estimates that $110 million will 

be withdrawn from the operating 

reserve during FY 2017. 

Table 2 below provides key 

underlying production workload 

projections and assumptions from the 

Budget used to calculate aggregate cost. 

Table 3 presents the total budgetary 

requirements (prospective aggregate 

cost) for FY 2017 through FY 2021 and 

the estimated collections and operating 

reserve balances that would result from 

the adjustments contained in this final 

rule. 

TABLE 2—PATENT PRODUCTION WORKLOAD PROJECTIONS—FY 2017–FY 2021 

Utility, plant, and reissue (UPR) FY 2017 FY 2018 FY 2019 FY 2020 FY 2021 

Applications * ........................................................................ 614,253 627,274 634,934 639,878 636,580 

Growth Rate ......................................................................... 0.7% 2.1% 1.2% 0.8% ¥0.5% 

Production Units ................................................................... 647,700 663,200 667,700 660,700 626,100 

Unexamined Patent Application Backlog ............................. 485,300 430,000 378,200 338,200 329,600 

Examination Capacity ** ....................................................... 8,375 8,300 8,097 7,812 7,540 

Performance Measures (UPR): 

Avg. First Action Pendency (Months) ........................... 14.8 15.1 11.0 10.7 9.9 

Avg. Total Pendency (Months) ..................................... 24.8 23.0 22.7 19.5 19.0 

* In this table, the patent application filing data includes requests for continued examination (RCEs). 

** In this table, Examination Capacity is the UPR Examiners On-Board at End-of-Year, as described in the FY 2018 President’s Budget. 

The USPTO continuously updates 

both patent fee collections projections 

and workload projections based on the 

latest data. Patent production workload 

projections have been updated since the 

NPRM was published in October 2016. 

The most recent projections are shown 

in Table 2. UPR filings growth 

projections were revised downward 

during the FY 2018 budget formulation 

process due to revised RGDP estimates 

and more conservative estimates of out 

year growth. 

Over the five year planning horizon 

budgetary requirements increased 

compared to the prior NPRM outlook 

projections. The primary drivers of the 

requirements variance are investments 

to modernize IT systems and 

infrastructure and updated assumptions 

about the resources necessary to meet 

production commitments in the Patent 

Pendency Model and PTAB models. The 

FY 2018 Budget is based on a 

framework of continuous and 

comprehensive budget reviews designed 

to ensure that all operational and 

administrative costs are reviewed and 

funds are reallocated when necessary to 

focus on high-priority and effective 

programs—primarily core mission 

activities—and mitigate risk by retaining 

minimum operating reserve balances. In 

addition, the USPTO operates similarly 

to a business in that the Office makes a 

determined effort to monitor and adjust 

spending in response to changes in 

workload, income, and operating 

reserve balances. These activities are 

carried out as regular parts of the budget 

execution and budget formulation 

processes. 


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TABLE 3—PLANNED OPERATING REQUIREMENTS—FY 2017–FY 2021 

Patent aggregate cost estimate 

Dollars in millions 

FY 2017 FY 2018 FY 2019 FY 2020 FY 2021 

Patent Planned Operating Requirements ............................ 2,986 3,176 3,231 3,273 3,365 

Less: Planned Patent Fee Collections ......................... 2,852 3,250 3,205 3,326 3,423 

Less: Other Income ...................................................... 24 24 24 24 24 

To (¥)/From (+) Operating Reserve ................................... ¥110 98 ¥2 77 82 

EOY Operating Reserve Balance ........................................ 245 343 341 418 501 

Step 2: Calculate Prospective Aggregate 

Revenue 

As described in ‘‘Step 1,’’ the 

USPTO’s FY 2017 requirements in the 

FY 2018 President’s Budget include the 

aggregate prospective cost of planned 

production, anticipated new initiatives, 

and a contribution to the patent 

operating reserve required for the Office 

to realize its strategic goals and 

objectives for the next five years. The 

aggregate prospective cost becomes the 

target aggregate revenue level that the 

new fee schedule must generate in a 

given year and over the five-year 

planning horizon. 

To calculate the aggregate revenue 

estimates, the Office first analyzes 

relevant factors and indicators to 

calculate or determine prospective fee 

workload (e.g., number of applications 

and requests for services and products), 

growth, and resulting fee workload 

volumes (quantities) for the five-year 

planning horizon. Economic activity is 

an important consideration when 

developing workload and revenue 

forecasts for the USPTO’s products and 

services because economic conditions 

affect patenting activity, as most 

recently exhibited in the recession of 

2009 when incoming workloads and 

renewal rates declined. 

The Office considers economic 

activity when developing fee workloads 

and aggregate revenue forecasts for its 

products and services. Major economic 

indicators include the overall condition 

of the U.S. and global economies, 

spending on research and development 

activities, and investments that lead to 

the commercialization of new products 

and services. The most relevant 

economic indicator that the Office uses 

is the RGDP, which is the broadest 

measure of economic activity and is 

anticipated to grow approximately two 

percent for FY 2017 based on OMB and 

CBO estimates. 

These indicators correlate with patent 

application filings, which are a key 

driver of patent fees. Economic 

indicators also provide insight into 

market conditions and the management 

of intellectual property portfolios, 

which influence application processing 

requests and post-issuance decisions to 

maintain patent protection. When 

developing fee workload forecasts, the 

Office considers other influential 

factors, including overseas activity, 

policies and legislation, court decisions, 

process efficiencies, and anticipated 

applicant behavior. 

Anticipated applicant behavior in 

response to fee changes is measured 

using an economic principle known as 

elasticity, which for the purpose of this 

action measures how sensitive 

applicants and patentees are to changes 

in fee amounts. The higher the elasticity 

measure (in absolute value), the greater 

the applicant response to the relevant 

fee change. If elasticity is low enough 

(i.e., demand is inelastic or the elasticity 

measure is less than one in absolute 

value), a fees increase will lead to only 

a relatively small decrease in patent 

activities, and overall revenues will still 

increase. Conversely, if elasticity is high 

enough (i.e., demand is elastic or the 

elasticity measure is greater than one in 

absolute value), a fee increase will lead 

to a large enough decrease in patenting 

activities that overall revenues will 

decrease. When developing fee 

forecasts, the Office accounts for how 

applicant behavior will change at 

different fee amounts for the various 

patent services. Additional detail about 

the Office’s elasticity estimates is 

available in ‘‘USPTO Setting and 

Adjusting Patent Fees during Fiscal 

Year 2017—Description of Elasticity 

Estimates,’’ available at http://

www.uspto.gov/about-us/performanceand-planning/fee-setting-and-adjusting. 

Aggregate Revenue Estimate Ranges 

When estimating aggregate revenue, 

the USPTO prepares a high and a low 

range of fee collection estimates. This 

range accounts for the inherent 

uncertainty, sensitivity, and volatility of 

predicting fluctuations in the economy 

and market environment; interpreting 

policy and process efficiencies; and 

developing fee workload and fee 

collection estimates from assumptions. 

The Office estimates a range for all its 

major workload categories including 

application filings, extensions of time, 

PTAB fees, maintenance fees, PCT 

filings, and trademark filings. 

Additional detail about how the Office 

calculates aggregate revenue is 

discussed in the document entitled, 

‘‘Setting and Adjusting Patent Fees 

during FY 2017—Aggregate Revenue 

Estimating Methodology.’’ Details about 

projected workloads for each of the fee 

setting alternatives considered are 

available in the aggregate revenue tables 

for each alternative. All of these 

documents are available at http://

www.uspto.gov/about-us/performanceand-planning/fee-setting-and-adjusting. 

Summary 

Patent fees are collected for patentrelated services and products at 

different points in time within the 

patent application examination process 

and over the life of the pending patent 

application and granted patent. 

Approximately half of all patent fee 

collections are from issue and 

maintenance fees, which subsidize the 

cost of filing, search, and examination 

activities. Changes in application filing 

levels immediately impact current year 

fee collections, because fewer patent 

application filings means the Office 

collects fewer fees to devote to 

production-related costs, such as 

additional examining staff and overtime. 

The resulting reduction in production 

activities creates an out year revenue 

impact because less production output 

in one year results in fewer issue and 

maintenance fee payments in future 

years. 

The USPTO’s five-year estimated 

aggregate patent fee revenue (see Table 

3) is based on the number of patent 

applications it expects to receive for a 

given fiscal year, work it expects to 

process in a given fiscal year (an 

indicator for workload of patent issue 

fees), expected examination and process 

requests for the fiscal year, and the 

expected number of post-issuance 

decisions to maintain patent protection 

over that same fiscal year. Within the 

iterative process for estimating aggregate 

revenue, the Office adjusts individual 

fees up or down based on cost and 

policy decisions (see Step 3: Set 


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Specific Fee Amounts), estimates the 

effective dates of new fee rates, and then 

multiplies the resulting fees by 

appropriate workload volumes to 

calculate a revenue estimate for each 

fee. To calculate the aggregate revenue, 

the Office assumes that all fee rates will 

become effective on September 1, 2017. 

Using these figures, the USPTO sums 

the individual fee revenue estimates, 

and the result is a total aggregate 

revenue estimate for a given year (see 

Table 3). 

Step 3: Set Specific Fee Amounts 

Once the Office finalizes the annual 

requirements and aggregate prospective 

cost for a given year during the budget 

formulation process, the Office sets 

specific fee amounts that, together, will 

derive the aggregate revenue required to 

recover the estimated aggregate 

prospective cost during that time frame. 

Calculating individual fees is an 

iterative process that encompasses many 

variables. One variable that the USPTO 

considers to inform fee setting is the 

historical cost estimates associated with 

individual fees. The Office’s ActivityBased Information (ABI) provides 

historical cost for an organization’s 

activities and outputs by individual fee 

using the activity-based costing (ABC) 

methodology. ABC is commonly used 

for fee setting throughout the Federal 

government. Additional information 

about the methodology, including the 

cost components related to respective 

fees, is available in the document 

entitled ‘‘USPTO Setting and Adjusting 

Patent Fees during Fiscal Year 2017— 

Activity-Based Information and Patent 

Fee Unit Expense Methodology’’ 

available at http://www.uspto.gov/ 

about-us/performance-and-planning/

fee-setting-and-adjusting. The USPTO 

provides data for FY 2013–FY 2015 

because the Office finds that reviewing 

the trend of ABI historical cost 

information is the most useful way to 

inform fee setting. The underlying ABI 

data are available for public inspection 

at the USPTO. 

When the Office implements a new 

process or service, historical ABI data is 

typically not available. However, the 

Office will use the historical cost of a 

similar process or procedure as a 

starting point to estimate the full cost of 

a new activity or service. 

V. Individual Fee Rationale 

The Office projects that the aggregate 

revenue generated from the new patent 

fees will recover the prospective 

aggregate cost of its patent operations 

including contributions to the operating 

reserve per the strategic objective of 

implementing a sustainable funding 

model. As detailed previously, the 

PPAC supports this approach, stating 

that it ‘‘agrees that the Office should set 

its fees to establish an adequate revenue 

stream over a sustained period to fund 

the people and infrastructure essential 

for a high quality, low pendency 

examination process, and to fund its 

operating reserve.’’ It is important to 

recognize that each individual fee is not 

necessarily set equal to the estimated 

cost of performing the activities related 

to the fee. Instead, as described in Part 

III. Rulemaking Goals and Strategies, 

some of the fees are set at, above, and 

below their unit costs to balance the 

four key fee setting policy factors 

discussed in Part III. 

For some fees in this final rule, the 

USPTO does not maintain individual 

historical cost data for the service 

provided, such as maintenance fees. 

Instead, the Office evaluates the policy 

factors described in Part III to inform fee 

setting. By setting fees at particular 

levels, the USPTO aims to: (1) Foster an 

environment where examiners can 

provide and applicants can receive 

prompt, quality interim and final 

decisions; (2) encourage the prompt 

conclusion of prosecuting an 

application, resulting in pendency 

reduction and the faster dissemination 

of patented information; and (3) help 

recover costs for activities that strain the 

patent system. 

The rationale for the fee changes are 

grouped into three major categories, 

discussed below: (A) Fees where large 

entity amounts stayed the same or did 

not change by greater than plus or 

minus 10 percent or 20 dollars; (B) fees 

where large entity amounts changed 

from the current amount by greater than 

plus or minus 10 percent and 20 dollars; 

and (C) fees that are discontinued or 

replaced. The purpose of the 

categorization is to identify large fee 

changes for the reader and provide an 

individual fee rationale for such 

changes. The categorization is based on 

changes in large entity fee amounts 

because percentage changes for small 

and micro entity fees that are in place 

today would be the same as the 

percentage change for the large entity, 

and the dollar change would be half or 

one quarter of the large entity change. 

Therefore, the only time there will be a 

small or micro entity fee change that 

meets the greater than plus or minus 10 

percent or 20 dollars criteria without a 

similar change for the large entity fee 

will be for those instances when the 

Office is introducing new small and 

micro entity fees where there was 

previously only a large entity fee. These 

types of changes are discussed 

separately. 

The Table of Patent Fees includes the 

current and final rule fees for large, 

small, and micro entities as well as unit 

costs for the last three fiscal years. Part 

VII. Discussion of Specific Rule contains 

a complete listing of fees that are set or 

adjusted in the final rule patent fee 

schedule. 

A. Fees With Changes Less Than Plus or 

Minus 10 Percent or 20 Dollars 

The Office is adjusting slightly (i.e., 

less than plus or minus 10 percent or 20 

dollars) several fees not discussed in 

sections B or C below. The Table of 

Patent Fees demarcates which fees meet 

the dollar change and percent change 

thresholds. Fees are rounded to the 

nearest five dollars by applying 

standard arithmetic rules. For fees that 

have small and micro entity fee 

reductions, the large entity fee will be 

rounded to the nearest 20 dollars by 

applying standard arithmetic rules. The 

resulting fee amounts will be 

convenient to patent users and permit 

the Office to set small and micro entity 

fees at whole dollar amounts when 

applying the applicable fee reduction. 

The slight increase in these fees helps 

the Office to recover higher costs of 

performing such services due to 

increased aggregate cost of doing 

business. The fee adjustments in this 

category are listed in the Table of Patent 

Fees. 

B. Fees With Changes of Greater Than 

Plus or Minus 10 Percent and 20 Dollars 

For those fees changing by greater 

than plus or minus 10 percent and 20 

dollars, the individual fee rationale 

discussion is divided into three 

categories, including: (1) New and 

significant fees; (2) patent enrollment 

fees; and (3) fees adjusted and amended 

to include discounts for small and micro 

entities. Note: Three fees in this section 

have fee changes less than 10 percent 

but are included here because they met 

this criteria in either the NPRM (i.e., 

Plant Issue and Inter Partes Review 

Post-Institution Fee—Up to 15 Claims) 

or preliminary proposed fees (i.e., 

Request for Continued Examination 

(RCE)—1st Request). 

New and significant fees are further 

divided into subcategories according to 

the function of the fees, including: (a) 

Mega-sequence listing filing; (b) design 

and plant search, examination, and 

issue; (c) request for continued 

examination (RCE); (d) information 

disclosure statements; (e) certificate of 

correction; (f) request for ex parte 

reexamination; (g) appeals; (h) AIA 

trials; (i) PCT—International Stage; and 

(j) reissue patent maintenance rule. 


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As discussed above, for purposes of 

comparing amounts in the individual 

fee rationale discussion, the Office has 

included the current fees as the baseline 

to calculate the dollar change and 

percent change for new fees. 

(1) New and Significant Fees 

The following fees fall under the 

category of new and significant. A 

discussion of the rationale for each fee 

follows. 

a) Mega-Sequence Listing Filing 

TABLE 4—MEGA-SEQUENCE LISTING FILING—FEE CHANGES AND UNIT COST

Fee description 

Current fees Final rule fees Dollar change Percent change 

FY 2015 unit 

Large (Small) cost 

[Micro] Entity 

Large (Small) 

[Micro] Entity 

Large (Small) 

[Micro] Entity 

Large (Small) 

[Micro] Entity 

Submission of sequence listings of 300 MB to 800 

MB.

new $1,000 

($500) 

[$250] 

+$1,000 

(+$500) 

[+$250] 

n/a 

(n/a) 

[n/a] 

n/a 

Submission of sequence listings of more than 800 

MB.

new $10,000 

($5,000) 

[$2,500] 

+$10,000 

(+$5,000) 

[+$2,500] 

n/a 

(n/a) 

[n/a] 

n/a 

The Office sets two new fees to 

manage handling of sequence listings of 

300 MB or more. Pricing for this fee is 

divided into two tiers with Tier 1 for file 

sizes 300 MB to 800 MB and Tier 2 for 

file sizes greater than 800 MB. 

The level of effort associated with the 

handling of mega-sequence listings is 

significant, because the Office’s systems 

require extra storage and special 

handling for files beyond 300 MB. The 

Office has not yet collected actual cost 

data for sequence listings with file sizes 

of 300 MB or greater. However, based on 

historical data, on average, less than 10 

applications per year contained 

sequence listing files greater than 300 

MB. Based on previously filed 

applications with lengthy sequence 

listings, the Office determined that some 

applications disclosed sequence data 

that met the length thresholds for being 

included in the sequence listing but that 

was neither invented by the applicants 

nor claimed. Mega-sequence listings, in 

particular, often included sequences 

that were available in the prior art, were 

not essential material, and could have 

been described instead, for example, by 

name and a publication or accession 

reference. Further, claims 

accompanying such applications were 

frequently directed to the manipulation 

of sequence data rather than the 

substance of the sequences themselves. 

Submission of a mega-sequence listing 

in these applications would not have 

been necessary to complete the 

application if applicants limited the 

number of sequences that were 

described in such a way as to be 

required in a sequence listing. The fee 

should encourage applicants to draft 

their specifications such that sequence 

data that is not essential material is not 

required to be included in a sequence 

listing. The fee would also apply to the 

submission of mega-sequence listings 

received in national stage applications 

under 35 U.S.C. 371, including megasequence listings received by the Office 

pursuant to PCT Article 20. A reduced 

number of mega-sequence listings will 

benefit the Office and the public by 

reducing the strain on Office resources, 

thus facilitating the effective 

administration of the patent system. 

(b) Design and Plant Search, 

Examination, and Issue 

TABLE 5—DESIGN SEARCH, EXAMINATION, AND ISSUE AND PLANT SEARCH AND ISSUE FEES—FEE CHANGES

Fee description 

Current fees Final rule fees Dollar change Percent change 

FY 2015 

Large (Small) unit cost 

[Micro] Entity 

Large (Small) 

[Micro] Entity 

Large (Small) 

[Micro] Entity 

Large (Small) 

[Micro] Entity 

Design Search Fee .................................................... $120 

($60) 

[$30] 

$160 

($80) 

[$40] 

+$40 

(+$20) 

[+$10] 

+33% 

(+33) 

[+33] 

$397 

Plant Search Fee ....................................................... $380 

($190) 

[$95] 

$420 

($210) 

[$105] 

+$40 

(+$20) 

[+$10] 

+11 

(+11) 

[+11] 

1,773 

Design Examination Fee ............................................ $460 

($230) 

[$115] 

$600 

($300) 

[$150] 

+$140 

(+$70) 

[+$35] 

+30 

(+30) 

[+30] 

608 

Design Issue Fee ....................................................... $560 

($280) 

[$140] 

$700 

($350) 

[$175] 

+$140 

(+$70 

[+$35] 

+25 

(+25) 

[+25] 

314 

Plant Issue Fee .......................................................... $760 

($380) 

[$190] 

$800 

($400) 

[$200] 

+$40 

(+$20) 

[+$10] 

+5 

(+5) 

[+5] 

314 

In the NPRM, the Office proposed a 

design issue fee of $800 and a plant 

issue fee of $1,000. In this final rule, 

after carefully considering comments 

from the PPAC and the public, the 

Office sets the design issue fee to $700 

and the plant issue fee to $800, 13 

percent and 20 percent less than the fees 

proposed in the NPRM respectively. 

Design and plant patents are unlike 

utility patents in that they do not pay 

maintenance fees after the patent has 

been granted. Under the current utility 

fee structure, entry costs (filing, search, 

and examination fees) are intentionally 


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set below the full cost of performing this 

service as a means to foster innovation. 

Then, the full cost of examination is 

recovered through the payment of issue 

and maintenance fees. Given the lack of 

maintenance fees and the fact that the 

majority of design applicants are small 

and micro entities who are eligible to 

pay reduced fees, the Office currently 

does not recover the costs to examine 

design and plant patent applications 

solely from design and plant application 

fees. Instead, these costs are being 

subsidized by other application types 

(e.g., utility) and processes. The revised 

fees better align the fees with costs by 

bringing both application types closer to 

aggregate cost recovery while 

maintaining some subsidization. 

(c) Request for Continued Examination 

(RCE)—First and Second and 

Subsequent Request 

TABLE 6—REQUEST FOR CONTINUED EXAMINATION (RCE) FEE CHANGES

Fee description 

Current fees Final rule fees Dollar change Percent change 

FY 2015 

Large (Small) unit cost 

[Micro] Entity 

Large (Small) 

[Micro] Entity 

Large (Small) 

[Micro] Entity 

Large (Small) 

[Micro] Entity 

Request for Continued Examination (RCE)—1st Request (see 37 CFR 1.114) ..................................... $1,200 

($600) 

[$300] 

$1,300 

($650) 

[$325] 

+$100 

(+$50) 

[+$25] 

+8 

(+8) 

[+8] 

$2,187 

Request for Continued Examination (RCE)—2nd 

and Subsequent Request (see 37 CFR 1.114) ..... $1,700 

($850) 

[$425] 

$1,900 

($950) 

[$475] 

+$200 

(+$100) 

[+$50] 

+12 

(+12) 

[+12] 

1,540 

The moderate increases to RCE fees 

support the fee setting policy factor to 

align fees with costs. The increase 

would more closely align the fee rates 

with the cost of processing RCEs, as 

calculated using the most recently 

available cost data (FY 2015). 

Specifically, the Office is increasing the 

first RCE fee rate from $1,200 to $1,300 

for large entities, a $100 increase (8 

percent). The FY 2015 cost to examine 

a first RCE was $2,187 with the increase 

in the first RCE fee rate significantly 

below FY 2015 unit cost, this service 

will continue to recover only a portion 

of the total cost in the future. 

The Office is increasing the second 

and subsequent RCE fee rate from 

$1,700 to $1,900 for large entities, a 

$200 increase (12 percent). The FY 2015 

cost to examine a second and 

subsequent RCE was $1,540. When 

combined, first and second and 

subsequent RCE fees collected 62.5 

percent of the examination costs. In 

order to approach cost recovery and 

limit the increase to the first RCE fee 

rate, the Office sets the second and 

subsequent RCE fee rate with a slightly 

larger increase. Had this fee structure 

been in place in FY 2015, the Office 

would have recovered 68.6 percent of 

RCE costs as opposed to the 62.5 

percent that was realized. In FY 2015, 

the Office collected fees for 112,634 first 

RCEs and for 57,931 second and 

subsequent RCEs. 

While this fee structure will not 

achieve full cost recovery for RCEs, it 

will bring collections closer to cost and 

therefore reduce the subsidy for RCE 

filings currently provided by other 

patent fees. In addition to the fee 

adjustments, the USPTO is committed 

to focusing on initiatives that will 

reduce the need for RCEs. Examples of 

initiatives the Office has already 

implemented to reduce the need for 

RCEs include the Quick Path 

Information Disclosure Statement 

(QPIDS) pilot program (http://

www.uspto.gov/patent/initiatives/quickpath-information-disclosure-statementqpids) and the After Final Consideration 

Pilot 2.0 (AFCP 2.0) (http://

www.uspto.gov/patent/initiatives/afterfinal-consideration-pilot-20). 

Additionally, the Enhanced Patent 

Quality Initiative (http://

www.uspto.gov/patent/initiatives/ 

enhanced-patent-quality-initiative-0) 

evaluates and strengthens work 

products, processes, and services at all 

stages of the patent process. 

(d) Information Disclosure Statements 

(IDS) 

TABLE 7—DS—FEE CHANGES AND UNIT COSTS

Fee description 

Current fees Final rule fees Dollar change Percent change 

FY 2015 

Large (Small) unit cost 

[Micro] Entity 

Large (Small) 

[Micro] Entity 

Large (Small) 

[Micro] Entity 

Large (Small) 

[Micro] Entity 

Submission of an Information Disclosure Statement $180 

($90) 

[$45] 

$240 

($120) 

[$60] 

+$60 

(+$30) 

[+$15] 

+33 

(+33) 

[+33] 

n/a 

The Office is increasing the 

submission fee for an Information 

Disclosure Statement (IDS) from $180 to 

$240. The adjustment is an effort to set 

the fee optimally to encourage early 

submission of an IDS when possible 

while keeping the fee low enough to 

encourage timely filings during the time 

period (and under the conditions) when 

the fee would be required. 

(e) Certificate of Correction Fees 


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TABLE 8—CERTIFICATE OF CORRECTION FEES—FEE CHANGES AND UNIT COSTS

Fee description 

Current fees Final rule fees Dollar change Percent change 

FY 2015 

Large (Small) unit cost 

[Micro] Entity 

Large (Small) 

[Micro] Entity 

Large (Small) 

[Micro] Entity 

Large (Small) 

[Micro] Entity 

Certificate of Correction ............................................. $100 $150 +$50 +50 $93 

The Office is increasing the fee for a 

certificate of correction by $50 to $150. 

This adjustment will encourage 

applicants to submit accurate 

information initially, while at the same 

time not increasing the rate too much 

above unit cost recovery, which could 

discourage disclosure of needed 

corrections when an error has been 

identified. Whenever a mistake of a 

clerical or typographical nature, or of 

minor character, which was not the fault 

of the USPTO, appears in a patent and 

a showing has been made that such 

mistake occurred in good faith, the 

Director may, upon payment of this fee, 

issue a certificate of correction, if the 

correction does not involve such 

changes in the patent as would 

constitute new matter or would require 

reexamination. 

(f) Request for Ex Parte Reexamination 

Fees 

TABLE 9—REQUEST FOR EX PARTE REEXAMINATION FEES—FEE CHANGES AND UNIT COSTS

Fee description 

Current fees Final rule fees Dollar change Percent change 

FY 2015 unit 

Large (Small) cost 

[Micro] Entity 

Large (Small) 

[Micro] Entity 

Large (Small) 

[Micro] Entity 

Large (Small) 

[Micro] Entity 

Ex Parte Reexamination (§ 1.510(a)) Streamlined .... new $6,000 

($3,000) 

[$1,500] 

+$6,000 

(+$3,000) 

[+$1,500] 

n/a n/a 

The Office is establishing a new fee 

for smaller, streamlined reexamination 

filings. The streamlined filings will 

reduce the cost to the USPTO, allowing 

the Office to pass on the cost savings to 

applicants. This fee will apply to ex 

parte reexamination requests having: (i) 

40 pages or less; (ii) lines that are 

double-spaced or one-and-a-half spaced; 

(iii) text written in a non-script type font 

such as Arial, Times New Roman, or 

Courier; (iv) a font size no smaller than 

12 point; (v) margins which conform to 

the requirements of 37 CFR 

1.52(a)(1)(ii); and (vi) sufficient clarity 

and contrast to permit direct 

reproduction and electronic capture by 

use of digital imaging and optical 

character recognition. The following 

parts of an ex parte reexamination 

request are excluded from (i) through (v) 

above: (a) The copies of every patent or 

printed publication relied upon in the 

request pursuant to 37 CFR 1.510(b)(3); 

(b) the copy of the entire patent for 

which reexamination is requested 

pursuant to 37 CFR 1.510(b)(4); and (c) 

the certifications required pursuant to 

37 CFR 1.510(b)(5) and (6). Completed 

forms such as the Request for Ex Parte 

Reexamination Transmittal Form (PTO/ 

SB/57) or the information disclosure 

statement form (PTO/SB/08), or their 

equivalents, will also be excluded from 

(i) through (v). Claim charts will be 

considered part of the request and will 

be included in the page limit. Any paper 

containing argument directed to the 

patentability or unpatentability of the 

claims, such as an affidavit or 

declaration, will be included in the page 

limit and subject to the above 

requirements. If only a portion of the 

paper contains argument, the entire 

paper will be included in the page limit. 

The Office deems conclusions and/or 

definitions to be argumentative. For 

example, a request that includes 40 

pages of argument and a 41st page that 

includes conclusions or definitions 

would be deemed to be a request having 

greater than 40 pages. A page that 

consists solely of a signature will not be 

included in the page limit. The 

determination of whether a paper 

contains argument will be within the 

sole discretion of the Office. 

Note that micro entity status is only 

available to patent owner requesters, not 

to third party requesters. The change is 

consistent with the USPTO’s fee setting 

policy factors to align fees to costs, offer 

additional processing options, and 

facilitate the effective administration of 

the patent system, and is also consistent 

with the requirements of 35 U.S.C. 123. 

(g) Appeal Fees 

TABLE 10—APPEAL—FEE CHANGES AND UNIT COSTS

Fee description 

Current fees Final rule fees Dollar change Percent change 

FY 2015 unit 

Large (Small) cost 

[Micro] Entity 

Large (Small) 

[Micro] Entity 

Large (Small) 

[Micro] Entity 

Large (Small) 

[Micro] Entity 

Forwarding an Appeal in an Application or Ex parte 

Reexamination Proceeding to the Board. 

$2,000 

($1000) 

[$500] 

$2,240 ($1,120) 

[$560] 

+$240 (+$120) 

[+$60] 

+12% (+12%) 

[+12%] 

$4,815 

Based on feedback on the NPRM, the 

Office has eliminated the proposed 

increase to the notice of appeal fee. The 

Notice of Appeal fees will remain at 

current rates (e.g., $800 for a large 

entity), and the Office has lowered the 

appeal forwarding fee from the 

proposed $2,500 (large entity) in the 

NPRM to $2,240 (large entity). At the 

current fee rate, the fees paid for an ex 

parte Notice of Appeal and Forwarding 

an Appeal only cover 58 percent of the 


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Office’s cost for an appeal. The fee 

increase for Forwarding an Appeal will 

result in the combined ex parte appeal 

fees covering 63 percent of the Office’s 

cost to conduct an ex parte appeal. 

In the past few years, the Office has 

made great strides in reducing the 

backlog and pendency for ex parte 

appeals. The Office aspires to reach an 

appeals pendency goal of 12 months by 

the end of FY 2018 and to further 

reduce the existing inventory. As 

mentioned in Part III, the PTAB is 

working to reduce inventory via two 

pilot programs, EPAP and the Small 

Entity Pilot Program. The adjustment 

would allow the Office to better align 

fees to costs by reducing the gap 

between the amount paid by an 

appellant and the fully burdened cost of 

reviewing appeals by the Board. The 

additional revenue supports continued 

improvements to pendency and 

inventory via enhanced technology. 

(h) AIA Trials 

TABLE 11—AIA TRIALS—FEE CHANGES AND UNIT COSTS

Fee description 

Current fees Final rule fees Dollar change Percent change 

FY 2015 unit 

Large (Small) cost 

[Micro] Entity 

Large (Small) 

[Micro] Entity 

Large (Small) 

[Micro] Entity 

Large (Small) 

[Micro] Entity 

Inter Partes Review Request Fee—Up to 20 Claims. $9,000 $15,500 +$6,500 +72% $22,165 

Inter Partes Review Post-Institution Fee—Up to 15 

Claims. 14,000 15,000 +1,000 +7% 12,674 

Inter Partes Review Request of Each Claim in Excess of 20. 200 300 +100 +50% n/a 

Inter Partes Post-Institution Request of Each Claim 

in Excess of 15. 400 600 +200 +50% n/a 

Post-Grant or Covered Business Method Review 

Request Fee—Up to 20 Claims. 12,000 16,000 +4,000 +33% 16,213 

Post-Grant or Covered Business Method Review 

Post-Institution Fee—Up to 15 Claims. 18,000 22,000 +4,000 +22% 23,060 

Post-Grant or Covered Business Method Review 

Request of Each Claim in Excess of 20. 250 375 +125 +50% n/a 

Post-Grant or Covered Business Method Review 

Post-Institution Request of Each Claim in Excess 

of 15. 550 825 +275 +50% n/a 

The AIA established two new trial 

proceedings: inter partes review and 

post-grant review. Inter partes review is 

a trial proceeding created by the AIA 

that allows the Office to review the 

patentability of one or more claims in a 

patent only on a ground that could be 

raised under 35 U.S.C. 102 or 103, and 

only on the basis of prior art consisting 

of patents or printed publications. The 

inter partes review process begins with 

a third party filing a petition. An inter 

partes review may be instituted upon a 

showing that there is a reasonable 

likelihood that the petitioner would 

prevail with respect to at least one claim 

challenged. If the proceeding is 

instituted and not dismissed, a final 

determination by the Board will be 

issued within one year (extendable for 

good cause by six months). The Office 

is adjusting all four separate fees for 

inter partes review, which are due upon 

the filing of a petition. The USPTO will 

refund the post-institution fee if the 

inter partes review proceeding is not 

instituted by the PTAB. 

Post-grant review is a trial proceeding 

created by the AIA that allows the 

Office to review the patentability of one 

or more claims in a patent on any 

ground that could be raised under 35 

U.S.C. 282(b)(2) and (b)(3) in effect on 

September 16, 2012. The post-grant 

review process begins when a third 

party files a petition within nine months 

of the grant of the patent. A post-grant 

review may be instituted upon a 

showing that it is more likely than not 

that at least one challenged claim is 

unpatentable or that the petition raises 

an unsettled legal question that is 

important to other patents or patent 

applications. If the trial is instituted and 

not dismissed, the Board will issue a 

final determination within one year of 

institution. This period can be extended 

for good cause for up to six months from 

the date of one year after instituting the 

review. 

In FY 2016, the PTAB received nearly 

1,700 AIA trial filings and the Office 

expects that number to grow in the 

coming fiscal years. In order to keep up 

with demand and continue to provide 

high quality decisions within the 

statutory time limits, the Office needs to 

close the gap between the cost and the 

fees for performing these services. When 

the fees for these services were initially 

set, the Office had to estimate what the 

costs would be without the benefit of 

historical cost information. Now that the 

trials have been in place for three fiscal 

years, the Office has actual historical 

cost data available to more accurately 

set these fees and recover costs. In this 

final rule, the Office is setting the Inter 

Partes Review Request Fee—Up to 20 

Claims at $15,500 and the Inter Partes 

Review Post-Institution Fee—Up to 15 

Claims at $15,000. The total for the inter 

partes review (request and postinstitution) fees is $30,500. These 

individual fee rates have changed from 

the rates proposed in the NPRM, 

although the total remains the same. 

The fee rates proposed in the NPRM 

were $14,000 for the Inter Partes Review 

Request Fee—Up to 20 Claims and 

$16,500 for the Inter Partes Review PostInstitution Fee—Up to 15 Claims. The 

Office is revising the fee levels to more 

closely align fees and costs to the Office 

for performing these services. Unit costs 

for inter partes review requests have 

consistently outpaced the unit costs for 

inter partes review post-institutions. See 

the Table of Patent Fees. 

(i) Patent Cooperation Treaty (PCT)— 

International Stage 


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TABLE 12—PATENT COOPERATION TREATY (PCT)—INTERNATIONAL STAGE—FEE CHANGES AND UNIT COSTS

Fee description 

Current fees Final rule fees Dollar change Percent change 

FY 2015 unit 

Large (Small) cost 

[Micro] Entity 

Large (Small) 

[Micro] Entity 

Large (Small) 

[Micro] Entity 

Large (Small) 

[Micro] Entity 

Late Furnishing Fee for Providing a Sequence Listing in Response to an Invitation Under PCT Rule 

13ter.

new $300 

($150) 

[$75] 

+$300 

(+$150) 

[+$75] 

n/a n/a 

The Office sets a new fee to encourage 

timely filing of sequence listings in 

international applications as another 

way to facilitate the effective 

administration of the patent system. 

When an applicant does not provide a 

sequence listing in searchable format 

with the international application or 

provides a defective sequence listing, 

the United States, acting as International 

Searching Authority (ISA/US) or as 

International Preliminary Examining 

Authority (IPEA/US), must issue an 

invitation to the applicant to provide 

the missing or corrected sequence 

listing. This additional process creates a 

delay in the issuance of the 

International Search Report (ISR) or 

International Preliminary Report on 

Patentability (Chapter II). The most 

recent data shows that the ISA/US 

issues ISRs within 16 months of the 

priority date for 75 percent of all 

international applications searched by 

the ISA/US. However, when the ISA/US 

issues an invitation to provide a 

sequence listing, the ISA/US issues ISRs 

within 16 months in only 28 percent of 

those international applications. The 

time limit for issuance of the ISR under 

PCT Rule 42 in most circumstances is 

16 months from the priority date. This 

new fee will help compensate the Office 

for the extra work associated with 

issuing the invitation and handling the 

response, while better positioning the 

Office to meet applicable treaty 

timeframes. The fee is similar in size 

and scope to fees charged by other 

international intellectual property 

offices. 

(j) Maintenance Fee Payments—Reissue 

Patent Rule 

For each issued patent, the Office may 

grant one or more reissue patents. 

However, current practice dictates that 

only one maintenance fee is required for 

all of the possible reissue patents 

granted from a single patent. This 

change of practice would require 

payment of maintenance fees for each 

reissue patent, instead of a single 

maintenance fee payment for the group 

of reissue patents. The large majority of 

reissue patents are granted after the first 

stage maintenance fee payment has 

already been paid on the initial patent. 

Over the last six years, approximately 

150 reissue patents per year would have 

been subject to additional fees due to 

this rule change. This is a significantly 

higher level than the Office experienced 

prior to FY 2010. For example, between 

FY 2003 and FY 2009, the average was 

27 per year. The Office expects this 

change in practice to encourage patent 

owners to prioritize which reissue 

patents they want to maintain. If an 

owner wishes to maintain all reissue 

patents in force, he or she may do so by 

paying the appropriate maintenance 

fees. For reissue patents that are not 

maintained, subject matter previously 

covered by the patent would become 

available in the public domain to 

improve upon and further foster 

innovation. 

(2) Office of Enrollment and Discipline 

Fees and Patent Practitioner Enrollment 

Fees 

The following fee adjustments are 

comprised of Office of Enrollment and 

Discipline (OED) fees and other patent 

practitioner enrollment fees. In addition 

to the fee rate changes, there are four 

new fees introduced in this section. The 

purpose of amending the fees in this 

section is to better align fees with actual 

costs. During the previous patent fee 

setting effort, historical cost information 

for these activities was not available. 

Since then, the Office has developed 

cost information to more appropriately 

make these fee adjustments. No 

enrollment or disciplinary fees have 

been increased since 2008, and only two 

fees were adjusted that year. All other 

enrollment and discipline fees were last 

changed much earlier, specifically, 

between 1991 and 2004. In fact, one 

OED fee has been unchanged since 

1982. As time passes, the difference 

between the fee charged by the Office 

and the cost to the Office to perform the 

service increases, resulting in greater 

subsidies by other patent fees. The 

increases to these fees will help to close 

the gap between the fee charged and the 

cost to perform the service. A discussion 

of the rationale for each fee change 

follows. 

TABLE 13—OED AND PATENT PRACTITIONER ENROLLMENT—FEE CHANGES AND UNIT COSTS

Fee description 

Current fees Final rule fees Dollar change Percent change 

FY 2015 

Large (small) unit cost 

[micro] entity 

Large (small) 

[micro] entity 

Large (small) 

[micro] entity 

Large (small) 

[micro] entity 

Application Fee (Non-Refundable) ............................ $40 $100 +$60 +150% $225 

On Registration to Practice Under § 11.6 .................. 100 200 +$100 +100% 493 

Certificate of Good Standing as an Attorney or 

Agent, Standard ..................................................... 10 40 +$30 +300% 39 

Certificate of Good Standing as an Attorney or 

Agent, Suitable for Framing ................................... 20 50 +$30 +150% 49 

Review of Decision by the Director of Enrollment 

and Discipline Under § 11.2(c) ............................... 130 400 +$270 +208% 2,044 

Review of Decision of the Director of Enrollment 

and Discipline Under § 11.2(d) ............................... 130 400 +$270 +208% 1,827 

Administrative Reinstatement Fee ............................. 100 200 +$100 +100% 940 


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TABLE 13—OED AND PATENT PRACTITIONER ENROLLMENT—FEE CHANGES AND UNIT COSTS—Continued 

Fee description 

Current fees Final rule fees Dollar change Percent change 

FY 2015 

Large (small) unit cost 

[micro] entity 

Large (small) 

[micro] entity 

Large (small) 

[micro] entity 

Large (small) 

[micro] entity 

On Grant of Limited Recognition Under § 11.9(b) ..... new $200 +$200 n/a n/a 

For USPTO-Assisted Recovery of ID or Reset of 

Password for the Office of Enrollment and Discipline Information System ..................................... new 70 +$70 n/a n/a 

For USPTO-Assisted Change of Address Within the 

Office of Enrollment and Discipline Information 

System ................................................................... new 70 +$70 n/a n/a 

For USPTO-Administered Review of Registration 

Examination ............................................................ new 450 +$450 n/a 515 

The Office increases the application 

fee for admission to the examination for 

registration to practice from $40 to $100, 

about half of the historical cost of this 

service. 

The fee for registration to practice or 

for a grant of limited recognition under 

§ 11.9(b) or (c) is currently set at $100, 

and both transactions have the same fee 

code. This rule creates a new fee code 

for On Grant of Limited Recognition, 

allowing for a separate accounting of 

registration to practice or for a grant of 

limited recognition. Both Registration to 

Practice and Grant of Limited 

Recognition are increasing to $200, 

which is still below the estimated cost 

of performing these services. The Office 

is eliminating the reference to § 11.9(c) 

in the current provision. The Office 

does not presently impose a fee for an 

unregistered individual to prosecute an 

international patent application in the 

manner described in § 11.9(c). The 

Office is using the existing fee code for 

Registration to Practice fees and creating 

a new fee code for Grant of Limited 

Registration. 

The Office is increasing the fee for the 

delivery of a certificate of good 

standing. A practitioner may also 

request a certificate of good standing as 

an attorney or agent that has been 

authentically signed by the Director of 

OED and crafted for framing. The Office 

is increasing the fee for both of these 

services to cost recovery, $40 and $50, 

respectively. 

The Office is increasing the fees for 

petitions to the OED Director regarding 

enrollment or recognition. However, the 

new fees are still significantly below 

cost recovery. Any petition from any 

action or requirement of the staff of OED 

reporting to the OED Director shall be 

taken to the OED Director accompanied 

by payment of the $400 fee. 

The Office is adjusting the fees for a 

review of the OED Director’s decision 

regarding enrollment or recognition. A 

party dissatisfied with a final decision 

of the OED Director regarding 

enrollment or recognition may seek 

review of the decision upon petition to 

the USPTO Director accompanied by 

payment of the new $400 fee. This is an 

increase from the current fee but is still 

set significantly below cost recovery. 

The Office is setting the fee for 

administrative reinstatement at $200. 

Reinstatement fees are imposed on 

practitioners seeking to be reinstated to 

active status. Raising the fee, while still 

set far below cost recovery, helps to 

close the gap between the fee and the 

cost for performing this service. 

The Office is creating a fee for 

USPTO-assisted reset of user IDs and 

passwords for an OED Information 

System—Customer Interface (OEDIS–CI) 

account set at $70. The enhancement of 

the OEDIS–CI was implemented in FY 

2015. With this enhancement, 

customers are now able to perform this 

process on-line as a self-service option 

free of charge. This fee would only be 

charged if it was requested that the 

USPTO perform this task instead of the 

self-service option. 

The Office is creating and setting the 

fee for USPTO-assisted roster 

maintenance (change of address) in an 

OEDIS–CI account at $70. With the 

OEDIS–CI enhancement, customers are 

now able to perform this process on-line 

as a self-service method free of charge. 

This fee would only be charged if it was 

requested that the USPTO perform this 

task instead of the self-service option. 

The Office is setting the fee for a 

registration examination review session 

at $450. Setting this fee at cost recovery 

relieves the administrative and cost 

burden of providing the review sessions. 

A private commercial entity currently 

provides this service to the public at a 

lower cost than the USPTO. The 

availability of the private-sector option 

has reduced demand for the USPTOprovided sessions and therefore 

increased the cost per registrant of 

USPTO-provided sessions. 

The Office is setting the fee for 

changing a practitioner’s registration 

status from agent to attorney. The Office 

currently charges $100 for this service. 

The fee would remain unchanged; 

however, 37 CFR 1.21(a)(2)(iii) would 

specifically provide for this fee. 

(3) Fees Amended To Include Discounts 

for Small and Micro Entities 

Within this section, where new micro 

entity fees are set, it is expected that an 

applicant or patent holder would have 

paid the current small entity fee (or 

large entity in the event there is not a 

small entity fee) and dollar and percent 

changes are calculated from the current 

small entity fee amount (or large entity 

fee, where applicable). The following 

table lists fees where new small and/or 

micro entity fees are provided. 

Providing these fee reductions for small 

and micro entity innovators continues 

the Office’s efforts to foster innovation 

across all patent system users. 


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TABLE 14—AMENDED FEES TO INCLUDE DISCOUNTS FOR SMALL AND MICRO ENTITIES—FEE CHANGES AND UNIT COSTS

Fee description 

Current fees Final rule fees Dollar change Percent change 

FY 2015 

Large (small) unit cost 

[micro] entity 

Large (small) 

[micro] entity 

Large (small) 

[micro] entity 

Large (small) 

[micro] entity 

Petition for the Delayed Payment of the Fee for 

Maintaining a Patent in Force ................................ $1,700 

($850) 

[$850] 

$2,000 

($1,000) 

[$500] 

+$300 

(+$150) 

[¥$350] 

+18 

(+18) 

[¥41] 

$121 

Petition for Revival of an Abandoned Application for 

a Patent, for the Delayed Payment of the Fee for 

Issuing Each Patent, or for the Delayed Response 

by the Patent Owner in any Reexamination Proceeding ................................................................... $1,700 

($850) 

[$850] 

$2,000 

($1,000) 

[$500] 

+$300 

(+$150) 

[¥$350] 

+18 

(+18) 

[¥41] 

244 

Petition for the Delayed Submission of a Priority or 

Benefit Claim .......................................................... $1,700 

($850) 

[$850] 

$2,000 

($1,000) 

[$500] 

+$300 

(+$150) 

[¥$350] 

+18 

(+18) 

[¥41] 

244 

Petition to Excuse Applicant’s Failure to Act Within 

Prescribed Time Limits in an International Design 

Application .............................................................. $1,700 

($850) 

[$850] 

$2,000 

($1,000) 

[$500] 

+$300 

(+$150) 

[¥$350] 

+18 

(+18) 

[¥41] 

n/a 

Petition to Convert an International Design Application to a Design Application Under 35 U.S.C. 

Chapter 16 ............................................................. $180 

($180) 

[$180] 

$180 

($90) 

[$45] 

$0 

(¥$90) 

[¥$135] 

0 

(¥50) 

[¥75] 

n/a 

Hague International Design Application Fees— 

Transmittal Fee ...................................................... $120 

($120) 

[$120] 

$120 

($60) 

[$30] 

$0 

(¥$60) 

[¥$90] 

0 

¥50 

¥75 

n/a 

C. Discontinued or Replaced Fees 

This section describes fees that are 

being discontinued and replaced with 

new fees. The purpose of this action is 

to simplify the fee schedule, more 

clearly inform customers of costs 

upfront, and align with the Office’s new 

financial software for which fixed fee 

rates, not variable (e.g., at cost) are 

preferred. This section also includes 

fees that are being discontinued because 

of disuse. The Office does not capture 

historical cost information for these 

discontinued or new fees. 

(a) Discontinued and Replaced 

TABLE 15—DISCONTINUED FEES WITH NEW FEE REPLACEMENTS

Fee description 

Current fees Final rule fees Dollar change Percent change 

FY 2015 

Large (small) unit cost 

[micro] entity 

Large (small) 

[micro] entity 

Large (small) 

[micro] entity 

Large (small) 

[micro] entity 

Copy of Patent-Related File Wrapper and Contents 

of 400 or Fewer Pages, if Provided on Paper.

$200 discontinue ....... ¥$200 n/a n/a 

Additional Fee for Each Additional 100 Pages of 

Patent-Related File Wrapper and (Paper) Contents, or Portion Thereof.

$40 discontinue ....... ¥$40 n/a n/a 

Copy Patent File Wrapper, Paper Medium, Any 

Number of Sheets.

new $280 ................. +$280 n/a n/a 

Copy of Patent-Related File Wrapper and Contents 

if Provided on a Physical Electronic Medium as 

Specified in § 1.19(b)(1)(ii).

$55 discontinue ....... ¥$55 n/a n/a 

Copy of Patent-Related File Wrapper and Contents 

if Provided Electronically.

$55 discontinue ....... ¥$55 n/a n/a 

Additional Fee for Each Continuing Physical Electronic Medium in Single Order of 

§ 1.19(b)(1)(ii)(B).

$15 discontinue ....... ¥$15 n/a n/a 

Copy Patent File Wrapper, Electronic Medium, Any 

Size or Provided Electronically.

new $55 ................... +$55 n/a n/a 

Computer Records .................................................... at cost discontinue ....... at cost n/a n/a 

Copy of Patent Grant Single-Page TIFF Images (52 

week subscription).

new $10,400 ............ +$10,400 n/a n/a 


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TABLE 15—DISCONTINUED FEES WITH NEW FEE REPLACEMENTS—Continued 

Fee description 

Current fees Final rule fees Dollar change Percent change 

FY 2015 

Large (small) unit cost 

[micro] entity 

Large (small) 

[micro] entity 

Large (small) 

[micro] entity 

Large (small) 

[micro] entity 

Copy of Patent Grant Full-Text W/Embedded Images, Patent Application Publication Single-Page 

TIFF Images, or Patent Application Publication 

Full-Text W/Embedded Images (52 week subscription).

new $5,200 .............. +$5,200 n/a n/a 

Copy of PTMT Patent Bibliographic Extract and 

Other DVD (Optical Disc) Products.

new $50 ................... +$50 n/a n/a 

Copy of U.S. Patent Custom Data Extracts ............. new $100 ................. +$100 n/a n/a 

Copy of Selected Technology Reports, Miscellaneous Technology Areas.new $30 ................... +$30 n/a n/a 

Labor Charges for Services, per Hour or Fraction 

Thereof.

$40 discontinue ....... ¥$40 n/a n/a 

Additional Fee for Overnight Delivery ...................... new $40 ................... +$40 n/a n/a 

Additional Fee for Expedited Service ....................... new $160 ................. +$160 n/a n/a 

There are currently pairs of fees for 

copying patent-related file wrappers: a 

base fee and an excess fee. For both 

paper copies and electronic copies, 

these pairs are replaced with a single fee 

irrespective of size. A single fee allows 

customers to more easily budget and 

plan expenses for this service. 

The catch-all fee of ‘‘Computer 

Records’’ currently priced ‘‘at cost’’ is 

being replaced by five fees that 

encompass the work currently 

performed using this code: Copy of 

Patent Grant Single-Page TIFF Images 

(52 week subscription); Copy of Patent 

Grant Full-Text W/Embedded Images, 

Patent Application Publication SinglePage TIFF Images, or Patent Application 

Publication Full-Text W/Embedded 

Images (52 week subscription); Copy of 

Patent Technology Monitoring Team 

(PTMT) Patent Bibliographic Extract 

and Other DVD (Optical Disc); Copy of 

U.S. Patent Custom Data Extracts; and 

Copy of Selected Technology Reports, 

Miscellaneous Technology Areas. 

Explicitly stating the service and fee at 

the start provides customers clearer 

information to aid decision making. 

These specific fees recover the 

USPTO’s costs for processing, 

validating, packaging, and shipping of 

these products to customers worldwide. 

For the copy of Patent Grant Single-Page 

TIFF Images, when a customer orders 

this service, the customer is sent 

expedited weekly packages (one for 

each Tuesday in the Calendar Year) via 

United Parcel Service. Each package 

contains at a minimum one Blu-ray and 

one DVD optical disc. For the other 

three services listed for $5,200, the 

expedited weekly packages (one for 

each Tuesday or Thursday in the 

Calendar Year) typically contain either 

a single Blu-ray or DVD optical disc. As 

an alternative to requesting and paying 

for these services, the USPTO has 

provided customers the ability to 

download this information at no cost 

since June 2010. This information is 

currently provided in the two locations 

referenced earlier, BDSS and PDD since 

October 2015 and June 2013 

respectively. 

Similar to the single fee for copying 

Patent-Related File Wrappers, the 

‘‘Labor Charge’’ per hour with its 

variable charges is replaced with a 

single fee for ‘‘Expedited Service.’’ 

Following the same theme, shorter than 

standard shipping is currently billed 

under a catch-all code but is now 

replaced with a set fee for ‘‘Overnight 

Delivery.’’ 

(b) Discontinued 

TABLE 16—DISCONTINUED FEES

Fee description 

Current fees Final rule fees Dollar change Percent change 

FY 2015 

Large (small) unit cost 

[micro] entity 

Large (small) 

[micro] entity 

Large (small) 

[micro] entity 

Large (small) 

[micro] entity 

Self-Service Copy Charge, per Page ....................... $0.25 ................ discontinue ....... ¥$0.25 n/a n/a 

Establish Deposit Account ........................................ $10 ................... discontinue ....... ¥$10 n/a n/a 

Uncertified Statement Re: Status of Maintenance 

Fee Payments.

$10 ............................................................................ discontinue ....... ¥$10 ............... n/a n/a $10 

Petitions for documents in form other than that provided by this part, or in form other than that generally provided by Director, to be decided in accordance with merits.at cost .............. discontinue ....... at cost n/a n/a 

Copy of Patent-Related File Wrapper Contents That 

Were Submitted and are Stored on Compact 

Disk or Other Electronic Form (e.g., Compact 

Disks Stored in Artifact Folder), Other Than as 

Available in § 1.19(b)(1); First Physical Electronic 

Medium in a Single Order.

$55 ................... discontinue ....... ¥$55 n/a n/a 

Additional Fee for Each Continuing Copy of PatentRelated File Wrapper Contents as Specified in 

§ 1.19(b)(2)(i)(A).

$15 ................... discontinue ....... ¥$15 n/a n/a 


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TABLE 16—DISCONTINUED FEES—Continued 

Fee description 

Current fees Final rule fees Dollar change Percent change 

FY 2015 

Large (small) unit cost 

[micro] entity 

Large (small) 

[micro] entity 

Large (small) 

[micro] entity 

Large (small) 

[micro] entity 

Copy of Patent-Related File Wrapper Contents That 

Were Submitted and are Stored on Compact 

Disk, or Other Electronic Form, Other Than as 

Available in § 1.19(b)(1); if Provided Electronically 

Other Than on a Physical Electronic Medium, per 

Order.

$55 ................... discontinue ....... ¥$55 n/a n/a 

To comply with Presidential 

Executive Order 13681, Improving the 

Security of Consumer Financial 

Transactions, current self-service 

copiers will be discontinued and the 

USPTO will enter into a ‘‘No Cost’’ 

contract with a vendor who will keep all 

payments collected in exchange for 

providing this service. 

The USPTO’s new Financial Manager 

system allows users to create their own 

deposit accounts so the Office is retiring 

the ‘‘Establish Deposit Account’’ fee. 

The fee associated with ‘‘Uncertified 

Statement Re Status of Maintenance Fee 

Payments’’ is discontinued due to lack 

of use. Customers have had the ability 

to do this online for more than 10 years. 

The fee associated with ‘‘Petitions for 

documents in form other than that 

provided by this part, or in form other 

than that generally provided by 

Director, to be decided in accordance 

with merits’’ is also discontinued due to 

lack of use. 

The remaining fees pertaining to 

Patent-Related File Wrapper copies have 

never been used since their inception 

many years ago and therefore are being 

discontinued. 

VI. Discussion of Comments 

Comments and Responses 

The USPTO published a proposed 

rule on October 3, 2016 soliciting 

comments on the proposed fee 

schedule. In response, the USPTO 

received comments from five 

intellectual property organizations, one 

federal agency, and nineteen individual 

commenters representing law firms, 

corporations, or themselves. These 

comments are posted on the USPTO’s 

Web site at https://www.uspto.gov/ 

about-us/performance-and-planning/ 

fee-setting-and-adjusting. 

General Fee Setting Approach 

Comment 1: Two commenters 

expressed general support for the 

increases, and another expressed 

understanding of the fee increases and 

asked how a change will affect his 

particular patenting situation. 

Response: The USPTO appreciates the 

endorsement from the commenters, and 

is committed to achieving the goals 

developed in consultation with the 

stakeholder community as set forth in 

the Strategic Plan. 

Comment 2: Three commenters 

objected to any increase in fees, as they 

believed such increases placed 

hardships on individual filers, smallbusiness owners, and federal agencies 

or, due to the resulting growing 

operating reserve, makes the USPTO an 

easy target for fee diversion. A United 

States Federal agency objects to the 

proposed fee increases citing a direct 

and negative impact on its ability to 

apply for, obtain, and maintain patents 

on its inventions due to flat annual 

budgets. In the opinion of the Federal 

agency, the proposed fee increases will 

limit its patenting activity thus making 

it more difficult to attract commercial 

licensees. 

Response: The USPTO appreciates the 

concern about rising fees, but points out 

the necessity of adjusting fees to recover 

the aggregate estimated cost to the 

Office for processing, activities, 

services, and materials relating to 

patents, including administrative costs 

of the Office with respect to such patent 

fees. As noted in the NPRM, FY 2018 

President’s Budget, and the FY 2016 

Performance and Accountability Report 

(PAR) among other publications, the 

USPTO has made significant progress 

towards financial sustainability as a 

result of the initial AIA fee setting effort, 

including building towards a threemonth optimal operating reserve for 

patents. The Office acutely recognizes 

that fees cannot simply increase for 

every improvement the Office deems 

desirable. Instead, for this rulemaking 

effort, the Office focused on prioritizing 

spending and gradually building the 

operating reserve in order to build 

resiliency against financial shocks. For 

small businesses and individual filers, 

the fees for small and micro entity rates 

are tiered, with small entities at a 50 

percent discount and micro entities at a 

75 percent discount. This final rule 

applies small entity discounts to two 

additional fees and applies micro entity 

discounts to six additional fees. 

Comment 3: One commenter cites 

operating reserve level estimates from 

the FY 2017 President’s Budget, as 

referred to in the NPRM, noting that the 

operating reserve level is estimated to 

exceed the optimal level in out years 

and that overfunding the operating 

reserve is unfair to applicants and could 

be a target for fee diversion. 

Response: In the intervening months 

since the FY 2017 President’s Budget, 

the Office’s budgetary requirements and 

fee collection estimates have evolved. 

The USPTO continuously updates both 

patent fee collections projections and 

workload projections based on the latest 

data. Since the NPRM publication in 

October 2016 there is a revised 

understanding of expected incoming 

fees and projected spending. 

Over the five year planning horizon 

budgetary requirements increased 

compared to the prior NPRM outlook 

projections. The primary drivers of the 

requirements variance are investments 

to modernize IT systems and 

infrastructure and updated assumptions 

about the resources necessary to meet 

production commitments in the Patent 

Pendency Model and PTAB model. In 

addition, UPR filings growth projections 

were revised downward during the FY 

2018 budget formulation process due to 

revised RGDP estimates and more 

conservative estimates of out year 

growth. With the FY 2018 President’s 

Budget, and under the fee rates included 

in this final rule, the operating reserve 

level estimates do not reach the optimal 

level of three months of expenses in the 

five year budget horizon. 

As described in Part III. B. of the final 

rule, which summarizes the USPTO’s 

operating reserve policy, the USPTO 

will continue to assess the patent 

operating reserve balance against its 

target balance annually, and at least 

every two years, the Office will evaluate 

whether the target balance continues to 

be sufficient to provide the funding 

stability needed by the Office. A key 

assumption is that the USPTO will 


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retain fee setting authority to adjust fee 

rates in the future as assumptions about 

the out years might change. For 

example, if the operating reserve 

balance is projected to exceed the 

optimal level by 10 percent for two 

consecutive years, the Office would 

consider using fee setting authority to 

reduce fees, per the operating reserve 

policy. Under the new fee structure, as 

in the past, the Office will remain a 

prudent steward of patent fees. 

The USPTO continues to 

communicate the importance of 

continued access to all fees collected as 

a critical component of sustainable 

funding strategy to the public, 

lawmakers, and the executive branch. 

While fee diversion remains a 

possibility without an explicit law 

eliminating the possibility, the Office 

will continue its educational efforts in 

this area. 

The financial outlook presented in 

this final rule reduces the trajectory of 

the estimated optimal operating reserve 

level because of changes in fees made in 

response to stakeholder feedback and in 

recognition of a changing outlook for 

Office operations and finances. 

PTAB Fees 

The Office received five comments 

regarding the proposed increases in 

PTAB fees, including two comments 

about fees for AIA trial proceedings. 

Comment 4: One commenter noted 

that the work performed by the PTAB in 

AIA trial proceedings is time 

consuming, and the commenter 

supports the increase in fee rates in 

those proceedings to ensure high quality 

decisions continue. 

Response: The Office appreciates the 

commenter’s general support for fee 

increases in AIA trial proceedings. The 

USPTO is committed to maintaining the 

PTAB’s ability to provide timely and 

high quality decisions. The AIA 

significantly affected the operations of 

the PTAB by establishing new types of 

trial proceedings. The AIA trial 

proceedings in the PTAB have been 

immensely popular (over 5,500 AIA trial 

proceedings filed through FY 2016) 

because they provide a less expensive 

and faster alternative to district court 

litigation. As a result, the PTAB 

workload has increased significantly. To 

accommodate the sudden growth in 

workload, the PTAB expanded its 

workforce and has continued to enhance 

its resources to meet the 12-month 

statutory requirement for completing 

each AIA trial proceeding. The fee rates 

in this final rule are the result of 

considering and analyzing historical 

data on the aggregate cost for 

conducting AIA trial proceedings, now 

that the proceedings have been in place 

for three fiscal years. The increase in 

AIA trial proceeding fees will help the 

PTAB maintain the level of judicial, 

legal, and administrative staff necessary 

to sustain the quality and timeliness of 

PTAB decisions, and close the gap 

between the costs and the fees 

associated with AIA trial proceedings. 

Comment 5: One commenter sought 

small and micro entity discounts for 

AIA trial proceeding fees, and requested 

expansion of pro bono representation to 

small entities in AIA trial proceedings. 

Response: The authority to reduce 

fees or to charge additional fees for 

small and micro entities under the 

USPTO’s rulemaking authority is 

limited by the AIA to providing 

discounts to the six categories under 

Section 10(b) of the Act. AIA trial 

proceeding fees are outside of the six 

categories; therefore, absent a change in 

statutory authority, those fees are not 

eligible for discounts. The Office further 

notes that, in many cases, AIA trial 

proceedings serve as an alternative to 

more expensive litigation in the district 

court. 

The patent pro bono programs are 

individually run as regional programs 

available to assist inventors and small 

businesses in their state or region. Each 

program sets the standards for 

participation, performs the intake 

function, screens potential clients, 

screens potential volunteer patent 

attorneys, and attempts to match the 

client with the volunteer attorney. 

These programs may be comprised of 

bar associations, non-profits, 

universities, or others. The USPTO, as a 

federal agency, does not direct the pro 

bono activities of these programs, but 

rather, provides resources and expertise 

to help establish and expand the reach 

of the programs. 

Comment 6: Three commenters 

opposed the increase to appeal fees. One 

commenter specifically expressed 

concern over passing a large portion of 

the appeal unit costs as increased fee 

rates borne by an appellant. Thus, the 

commenter suggested eliminating, or 

substantially reducing, the notice of 

appeal fee. Another commenter 

questioned whether increasing appeal 

fees would discourage meritorious 

appeals, noting that, the reversal rate by 

the PTAB indicates that a large number 

of appeals are pursued to correct invalid 

rejections. 

Response: The Office appreciates the 

commenters’ concerns and, based on 

that feedback, has eliminated the 

proposed increase to the notice of 

appeal fee and reduced the proposed 

increase to the appeal forwarding fee. 

Thus, in this final rule, the Notice of 

Appeal fees will remain at current rates 

(e.g., $800 for a large entity), and the 

Office has lowered the appeal 

forwarding fee from the proposed 

$2,500 (large entity) in the NPRM to 

$2,240 (large entity). The Office believes 

that those fees strike the appropriate 

balance between the expressed concerns 

and the Office’s need to recover the 

costs for conducting an appeal. The 

Office notes that, even with the increase 

to the appeals forwarding fee, the true 

cost of an appeal is subsidized 

significantly. At the current rate, fees 

paid for an appeal cover 58 percent of 

the Office’s cost for conducting the 

appeal. The increase to the appeal 

forwarding fee, which occurs after an 

examiner’s answer, will result in total 

appeal fees covering approximately 63 

percent of the cost for an appeal. Given 

the high cost of the appeals process to 

the Office, the appeal forwarding fee 

adjustment is necessary to decrease the 

gap between the total fees charged and 

the total costs in the aggregate for the 

appeals process. 

The Office recognizes that applicants 

may in some cases need to appeal an 

examiner’s decision. The appeal 

process, however, results in a high cost 

to the Office irrespective of whether the 

PTAB affirms or reverses the rejected 

claims on appeal because the PTAB 

must process, review, and decide the 

appeal on the merits. In addition, Office 

data show that more than 65 percent of 

the appeals decided on the merits by the 

PTAB result in an affirmance of at least 

some of the rejected claims (September 

2016 Appeals and Interferences 

Statistics). The data demonstrate that 

the PTAB is affirming a larger 

percentage of rejected claims than it 

reverses. 

The fee increase also will allow the 

PTAB to continue to reduce the appeals 

inventory and improve pendency for 

appeals. Additionally, the Office notes 

that the notice of appeal fee provides an 

appellant two months to file a brief, and 

to have that brief reviewed by two 

examiners and a supervisor with a 

subsequent conference regarding the 

rejection, the brief, and whether the 

appellant will forward the case to the 

PTAB for consideration of the appeal on 

the merits. If the examiner decides to 

reopen the case or allow it, the cost to 

an appellant for filing the notice of 

appeal would be less than the appellant 

would incur in filing an RCE, which is 

the other option available when facing 

rejection. The Office considered the 

relationship between the options of an 

appeal, on the one hand, and requesting 

an RCE, on the other, when determining 

the appropriate fee rates in this 

rulemaking. 


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Comment 7: A commenter suggested 

that the Office consider suspending the 

appeal forwarding fee until an 

application is taken up for review by 

PTAB, given the appeal backlog and the 

current state of flux of patent subject 

matter eligibility. 

Response: In the future, the USPTO 

may consider changes to the timing of 

appeal fee payments. However, the 

general rule is that fees payable to the 

USPTO are required to be paid in 

advance; that is, at the time of 

requesting any action by the Office (37 

CFR 1.22). 

Comment 8: One commenter 

proposed a refund to an applicant for 

reversals by the PTAB. 

Response: At this time, the USPTO 

does not have the statutory authority to 

issue refunds on the basis of ex parte 

appeal outcome. 

Comment 9: One commenter 

expressed interest in seeing the 

increased fee data versus decrease in 

response time to determine if the fee 

increase resulted in increased 

productivity of the USPTO and PTAB. 

Response: The Office appreciates the 

suggestion to compare data regarding 

increases in fee versus decrease in 

response time. The Office will continue 

to explore whether and how such 

comparative data fit within the overall 

fee setting strategy of allowing the 

Office to recover the aggregate cost of 

patent operations, while implementing 

key strategic initiatives, including 

decreasing pendency. The Office notes 

that the PTAB has made significant 

strides in reducing the appeals 

inventory and pendency of appeals over 

the past several years. Appeal inventory 

reached over 27,000 in 2012 (prior to 

the last fee setting rule), and the PTAB 

reduced that inventory to about 17,000 

by the end of FY 2016. Thus, the PTAB 

has maintained a high level of 

productivity despite an increase in 

workload. The additional fees set forth 

in this rule will provide funds necessary 

to allow the PTAB to continue to 

maintain the appropriate level of 

judicial and administrative resources 

needed to provide high quality and 

timely decisions for ex parte appeals. 

Between 2012 and 2016 the PTAB 

also received more than 5,500 petitions 

for AIA trial proceedings, and met all 

statutory deadlines in those 

proceedings. Despite the high demand 

for these services, the PTAB has 

continued to meet all AIA statutory 

deadlines. By targeting a fee increase to 

the AIA trial fees, the Office is 

addressing the subsidization of these 

proceedings in order to allow the PTAB 

to continue to maintain the appropriate 

level of judicial and administrative 

resources to provide high quality and 

timely decisions for AIA trial 

proceedings. 

Examination Fees 

Comment 10: A commenter questions 

the USPTO’s statement that pendency 

has improved, noting that in the opinion 

of the commenter, at least a portion of 

the improvement is due to reduced 

quality. Specifically, the commenter 

questions whether examiners are 

properly incentivized to conduct 

adequate examinations; the comment 

describes several examples of rejections 

that allegedly illustrate poor quality 

examinations. The commenter closes by 

proposing that if the PTAB or the Court 

of Appeals reverses an examiner 

rejection, the fees paid or a multiple 

thereof would be refunded to the 

applicant and deducted from the bonus 

payments of the examiners who signed 

off on the rejection. 

Response: As part of its current 

strategic plan, the Office has a goal to 

optimize patent quality and timeliness. 

The aim of the Office’s processes for 

examiner oversight, review, and 

rewards, including the bonus payment 

program, is to provide high quality and 

timely examination at a reasonable cost. 

The Office continually assesses its 

operational strategies with respect to 

these processes to take into account 

changing circumstances, and the 

Office’s efforts to reduce pendency have 

resulted in first action and average total 

pendency dropping from a high of 21.9 

months and 32.4 months, respectively, 

in FY 2012 to 16.2 months and 25.3 

months today. As pendency continues 

to decline, the Office’s ability to test 

programs that may further enhance 

quality grows stronger, as demonstrated 

by the establishment of the Enhanced 

Patent Quality Initiative (EPQI) (https:// 

www.uspto.gov/patent/initiatives/ 

enhanced-patent-quality-initiative-0) in 

FY 2015. 

As part of the EPQI, the USPTO 

solicited stakeholder feedback through 

various outreach efforts and used this 

feedback to develop and refine multiple 

programs to improve quality. One of 

these programs is the Increasing Clarity 

and Reasoning in Office Action program 

in which the Office included tips and 

techniques for drafting clear Office 

actions as part of examiner training. For 

example, as part of the Office’s training 

on 35 U.S.C. 101, the USPTO not only 

taught the relevant changes in the law, 

but also included examples on how to 

write clear rejections as well as tips for 

responding to arguments. As a result of 

this training, there was a statistically 

significant improvement in the 

correctness and clarity of 35 U.S.C. 101 

rejections. As part of the Quality Metrics 

program, the Office overhauled its 

quality metrics for work products and 

for examination processes. With respect 

to work products, the Office used data 

from the new Master Review Form to 

create clarity and correctness metrics on 

a per statute basis, which will allow the 

Office to better assess how to improve 

Office action quality. With respect to 

examination processes, the Office is 

evaluating certain types of transactions, 

such as rework and reopenings, to 

identify trends and examiner behaviors 

indicative of either best practices or 

potential quality concerns. Rather than 

setting targets for the particular 

transactions, the Office is conducting a 

root-cause analysis to allow for 

reopenings and rework where 

appropriate while providing training to 

ensure examiners have the necessary 

skills and resources to be as efficient as 

possible. These programs highlight only 

a couple of the programs that the Office 

is currently implementing to improve 

quality. 

While providing refunds or deducting 

base or bonus pay from examiners is 

beyond the scope of this rulemaking, the 

Office continues to review new and 

revised approaches to determine what 

approaches may better incentivize the 

patent workforce to achieve its strategic 

goals. 

Comment 11: One commenter 

expressed concerns regarding the 

proposed increased fee rates for excess 

claims in reexaminations. 

Response: The large entity fee for a 

reexamination with unlimited pages is 

set at $12,000. The unit cost for 

performing this service was $23,288 in 

FY 2015. When fewer claims are filed, 

the time required for the assigned 

reexamination specialist to review the 

request and examine the requested 

claims is reduced, which translates to a 

reduced overall cost of conducting the 

proceeding. The excess claims fees 

charges help to subsidize the overall 

cost for performing a reexamination. 

Comment 12: One commenter 

suggested that the Office should 

consider expanding the situations for 

which a portion of reexamination fees 

may be refunded. For example, a partial 

refund of the reexamination fees may be 

merited where a reexamination is 

ordered, but an examiner does not make 

any new art-based rejections. 

Response: The USPTO is required to 

go through the entire reexamination 

process and the costs are calculated on 

the time an examiner spends on the 

reexamination. Whether the examiner 

makes a new rejection or not does not 

factor into how the Office calculates the 

cost of a reexamination proceeding. The 


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addition of claims by patent owner 

during an ex parte reexamination 

ordered pursuant to 35 U.S.C. 303 

require the examiner to examine those 

claims during the proceeding, which 

includes making decisions which may 

be either adverse or favorable to 

patentability. Thus, even when the 

examiner does not make new art based 

rejections to new claims (e.g. makes a 

decision favorable to patentability with 

respect to the new claims to newly 

added claims), the addition of new 

claims by patent owner during the 

proceeding necessarily requires 

additional time by the examiner to fully 

search and examine those new claims. 

Further, even when the art cited by 

requester under 35 U.S.C. 301 is 

applicable to the newly added claims 

presented by the patent owner during 

the proceeding, the examiner will still 

need to search and examine the new 

claims to ensure the best art is presented 

with respect to those new claims. Thus, 

the time and cost of completing a 

reexamination proceeding is not 

necessarily predicated on whether or 

not new art based rejections are made by 

the examiner during the proceeding, but 

rather the amount of time needed to 

make decisions as to patentability. 

Accordingly, relating a fee refund to 

whether additional art rejections are 

made during the proceeding is not 

necessarily merited. 

Design Fees 

Comment 13: The Office received 

three comments concerning the increase 

in design patent issue fee rates. 

Commenters noted that design patent 

issue fees were being increased by a 

large percentage and significantly more 

than utility patent issue fees were being 

increased. 

Response: As discussed in Part V. B., 

the increase to the design patent issue 

fee has been lowered twice from the 

initial proposal made in October 2015 

based on stakeholder feedback. The 

final design patent issue fee is $700, an 

increase of $140 (25 percent) for large 

entities. The minimum required fees to 

obtain a design patent (filing, search, 

examination and issue) are set to 

increase slightly beyond cost recovery 

for large entities ($1,660 versus $1,596 

in FY 2015) to subsidize the substantial 

number (almost half in FY 2015) of 

small and micro entity applicants who 

pay lower fee rates despite similar costs 

to the Office. 

Further, given the lack of 

maintenance fees to subsidize front-end 

costs for design patents, the new fee 

rates aim to more closely align designrelated fees with their costs. Even with 

the increased fee rates, design 

application processing costs will 

continue to be subsidized by non-design 

specific fee revenues. Still, the Office 

believes the moderate fee rate increases 

in filing, search, examination, and issue 

are more appropriately aligned to costs 

and support the policy factor to foster 

innovation. 

Comment 14: Two commenters 

suggest that the increase of design 

patent fee rates are comparatively 

greater than similar fees charged by 

other national/regional IP offices. 

Response: Substantive examination of 

design patent applications are 

conducted at the USPTO whereas most 

other national/regional IP offices do not 

conduct substantive examination of 

design patent applications. Substantive 

examination of design patent 

applications requires significant time 

from a highly trained patent examiner. 

Additionally, most other national/ 

regional IP offices require design patent 

holders to pay renewal fees to maintain 

their property rights. As previously 

noted, in the United States, design 

patents are not subject to renewal fees. 

Comment 15: Two commenters 

suggested allowing applicants to submit 

design patent applications with 

multiple designs per application instead 

of a single design per application, as 

required under current practice. 

Response: Changes to design 

application practice are beyond the 

scope of the Office’s fee setting 

authority. Currently, more than one 

embodiment of a design may be claimed 

so long as such embodiments involve a 

single inventive concept according to 

the obviousness-type double patenting 

practice for designs. 

Comment 16: Three commenters 

questioned the calculation of the costs 

of filing, search, examination, and 

issuance of design patents. 

Response: For detailed information 

about how the Office calculates these 

costs please see the appendix entitled 

‘‘Activity Based Information and Patent 

Fee Unit Expense Methodology,’’ 

available at https://www.uspto.gov/sites/ 

default/files/documents/ 

ABI%20Cost%20Supplement.docx. 

Comment 17: Three commenters 

pointed out that the costs of filing and 

issuance are the same for design patent 

applications as they are for utility, 

plant, and reissue patent applications. 

Response: The pre-examination and 

issuance processing for all of these 

patent application types are similar, and 

vary little between types. Therefore, the 

costs for these services are the same 

among the different patent types. 

Comment 18: Two commenters noted 

that the cost of search and examination 

of design patent applications is 

relatively high compared to other 

national/regional IP offices. 

Response: As mentioned previously, 

this is because a substantive 

examination is required under U.S. 

statute, which is a costly process. 

Substantive examination of design 

patents is not common in other 

national/regional IP offices. 

Plant Fees 

Comment 19: The Office received ten 

comments from persons concerned with 

the increase in plant patent issue fee 

rates. These comments generally 

touched on the many years of 

development that go into new plant 

varieties, and noted that the resulting 

products are not sold in high volumes 

nor at high costs per unit, and therefore 

it can be difficult to recuperate costs. 

Response: As first discussed in Part V. 

B., the increase to the plant patent issue 

fee has been lowered from the rate 

proposed in the NPRM based on 

stakeholder feedback. The final plant 

patent issue fee is $800, an increase of 

$40 (5 percent) for large entities. In both 

the current and final rule fee structure, 

front-end fees are set below the Office’s 

costs to foster innovation, per the fee 

setting policy factor. In the case of 

utility patents, the Office recovers these 

costs at the end of the process through 

maintenance fees. Similar to design 

patents (discussed earlier), plant patent 

holders are not required to pay 

maintenance fees. Additionally, similar 

to design patents, a significant 

proportion of applicants are provided 

small or micro entity discounts. While 

the fee rates in this rule will allow plant 

patent fees to recover a greater share of 

plant patent related costs, the balance 

will continue to be subsidized by other 

types of patent fees. However, in 

response to stakeholder concerns, 

specifically those regarding the 

potential impacts on small entities and 

individual inventors, the Office 

determined that a smaller fee rate 

increase was acceptable. For more 

information on costs please see the 

Regulatory Impact Analysis, Table of 

Patent Fees, and Activity Based 

Information and Patent Fee Unit 

Expense Methodology, all available at 

https://www.uspto.gov/about-us/ 

performance-and-planning/fee-settingand-adjusting. 

Request for Continued Examination 

(RCE) Fees 

Comment 20: Four commenters had 

concerns about the proposed increased 

fees for RCEs, though two of these 

commenters did express appreciation 

that the proposed rates were lower than 

the original October 2015 proposal. One 


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commenter believed that an examiner 

should be familiar with the application, 

prior art, and issues when handling an 

RCE, and interpreted the increase of 

RCE fee rates as an attempt to dissuade 

applicants from filing RCEs, rather than 

a means to recoup costs. 

Response: The Office appreciates the 

comments related to RCE costs. In 

setting the fee rates, the Office’s goal is 

not to dissuade RCE filings, but to more 

closely align the fee rates with the cost 

of processing RCEs, as calculated using 

the most recently available cost data (FY 

2015). The first RCE fee ($1,300 for large 

entities) has been set at a rate lower than 

both the cost of performing the services 

associated with an RCE ($2,187) and the 

fees for filing a continuing application 

($1,720 for large entities), as well as 

much lower than the average historic 

cost of services associated with 

examining a new patent application 

($4,255). Because the Office set the fee 

for the first RCE below the cost to 

process, the Office must recoup the 

costs elsewhere. Since most applicants 

that file one or more RCE resolve all 

remaining issues with a first RCE, the 

Office determined that applicants that 

file more than one RCE are using the 

patent system more extensively than 

those who file none or only one RCE. 

The fee set for the second and 

subsequent RCE ($1,900 for large 

entities) is above the cost of the Office 

processing those RCEs ($1,540). 

However, this does not fully recoup the 

costs associated with the first RCE, and 

the Office still must recoup the costs 

elsewhere for large entity applicants 

filing more than one RCE ($3,200 in RCE 

fees, $3,727 in costs). 

Comment 21: Another commenter 

believed the process used to arrive at 

the unit cost estimates for RCE 

processing is opaque and unreliable, 

citing inconsistencies in reported data. 

This commenter also questioned the use 

of a survey to allocate expenses. The 

commenter believed that a more focused 

look at the unit cost estimates is 

necessary before increasing fee rates. 

Response: The differences in the 

reported RCE costs from the initial 

proposal to PPAC and the NPRM are 

due to an improvement in the costing 

methodology. The approach was 

updated in FY 2015, and the data in 

more recent documents reflect the 

improved methodology, including 

updated historical data. Previously, the 

RCE cost was determined using the 

Total Activity Unit Expense Adjusted 

for Frequency of Occurrence approach, 

which based the cost of the RCE on 

activities performed only during the 

RCE process and summed the unit costs 

to obtain a final unit cost of an RCE. The 

updated methodology, the Incremental 

Expense approach, improves upon this 

by also capturing the increased cost of 

search and exam activities that occur 

prior to RCE filings. For those 

applications that reach an RCE, the 

initial cost of getting to that stage is 

greater than for an application that does 

not reach an RCE. When calculating the 

historical cost of standard search and 

examination fees, the Office uses the 

cost of only applications that do not 

undergo an RCE. By using the 

incremental costing approach, the 

increased initial cost for applications 

that reach an RCE is captured within the 

RCE fee expense number. The patent 

examiner survey captures an average 

level of effort for the various 

examination activities. However, the 

survey does not isolate RCEs and 

therefore does not capture the level of 

effort specific to an RCE. Year-to-year 

variations in results have been small, 

but because survey data is applied to 

approximately $2 billion worth of 

expense, very small changes in the 

survey responses could result in large 

dollar changes to various activity costs. 

The survey instrument and the 

associated burdening and factoring of 

workloads is the Office’s best estimate 

for costs given available information. 

The $411 increase in the RCE expense 

shown from FY 2014 to FY 2015 comes 

from an increase in cost for RCE specific 

work. Total Adjusted Activity expense 

for the activities ‘Prepare All 

Subsequent Actions’ and ‘Perform 

Subsequent Search’ increased the most 

for applications with RCE activities both 

before and during the RCE itself. No 

material changes were made in 

overhead allocations; however, 

overhead costs increased, specifically 

related to investment in Information 

Technology associated with the Patent 

End to End System. 

Comment 22: A commenter expressed 

appreciation for the Office’s efforts to 

reduce the need for RCEs, but noted that 

many RCE filings are due to the current 

final rejection and after final practices, 

and urged the Office to eliminate these 

policies. The commenter argued that 

allowing every response to be entered 

will improve quality and lower 

pendency. The commenter believes that, 

before increasing RCE fee rates, the 

Office should determine the cost of after 

final responses and advisory actions. 

Response: The Office appreciates the 

comments on the various efforts to 

reduce the need for RCEs. These 

comments are outside the scope of this 

rulemaking, however, the Office looks 

forward to working with stakeholders as 

it continues efforts related to the 

Enhanced Patent Quality Initiative and 

any potential revisions to final rejection 

and after final policies. The AFCP 2.0— 

extended through September 30, 2017— 

is part of the USPTO’s on-going efforts 

towards compact prosecution and 

increased collaboration between 

examiners and stakeholders. Regarding 

the cost of after final responses and 

advisory actions, the estimated the cost 

of these activities are calculated and 

included in the unit cost of other 

associated activities provided by the 

Office. For detailed information about 

how the Office calculates these costs 

please see the appendix entitled 

‘‘Activity Based Information and Patent 

Fee Unit Expense Methodology’’ 

available at https://www.uspto.gov/sites/ 

default/files/documents/ 

ABI%20Cost%20Supplement.docx. 

Comment 23: Another commenter 

also interpreted the fee rate increase as 

a way to discourage RCEs, but stated 

that the applicant community views 

RCEs as a necessity due to inefficiencies 

in the examination process. This 

commenter cited the Alice Corp. v. CLS 

Bank International and the Mayo 

Collaborative Services v. Prometheus 

Laboratories, Inc. decisions, and argued 

that RCEs allow applicants more time to 

await court decisions that may assist the 

applicant’s case. Therefore the 

commenter believes RCEs should be 

encouraged, not discouraged. The 

commenter worries that small 

businesses and independent inventors 

would be unable or unwilling to pay 

increased RCE fees, and instead would 

abandon their patent applications. 

Response: While the Office recognizes 

that recent court decisions have 

impacted patent-eligibility 

requirements, it disagrees with the 

commenter that the Office should 

incentivize RCE filings through lower 

fee rates. This would be in direct 

conflict with the current compact 

prosecution goals and would in effect 

increase the RCE subsidy. The Office 

would almost certainly need to charge 

higher issue and/or maintenance fees to 

offset the cost of processing increased 

RCEs at lower fee rates. Increasing the 

issue and/or maintenance fees to offset 

decreased cost recovery of RCEs would 

also cause filers who do not seek RCEs 

to more heavily subsidize services 

provided to the filers who seek RCEs. 

The Office does not believe such 

subsidization would be an optimal 

result. The Office also notes that small 

and micro entity fee discounts are 

available for RCEs. 

Application Filing Fees 

Comment 24: A commenter suggested 

that the Office consider specific 

increases only for continuation 


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applications filed late enough that third 

stage maintenance fees would not be 

applicable, due to the end of the patent 

term. 

Response: In the future, the Office 

will evaluate the feasibility and 

potential impacts of implementing a 

change to continuation fees based on 

associated patent terms. 

Information Disclosure Statement Fees 

Comment 25: A commenter believes 

the Office should not increase the 

Information Disclosure Statement (IDS) 

submission fee rate until the issues 

raised in 81 FR 59197 (Aug. 29, 2016) 

‘‘Request for Comments and Notice of 

Roundtable Event on Leveraging 

Electronic Resources To Retrieve 

Information From Applicant’s Other 

Applications and Streamline Patent 

Issuance’’ have been considered and 

implemented. The commenter further 

suggested that the Office consider 

lengthening the time period set in 37 

CFR 1.97(e)(1) for communications 

received from a foreign patent office in 

a counterpart application from three 

months to five months. 

Response: In the future, the Office 

will continue to pursue efforts to 

improve IDS practice including the 

leverage of electronic resources to both 

increase Office efficiency and to provide 

additional services to applicants. 

Changes to 37 CFR 1.97(e)(1) are outside 

the scope of this rulemaking. 

Excess Claims Fees 

Comment 26: A commenter expressed 

concern with the increases for excess 

claim fee rates and questioned the fee 

set for excess claims. Additionally, this 

commenter recommended a refund 

system in which excess claim fees are 

returned when claims are canceled in 

response to a restriction requirement or 

when claims are canceled by an 

applicant before examination. 

Response: There is excess burden 

associated with examining excess 

claims. The number of claims impact 

the complexity of the request and 

increases the demands placed on the 

examiner. The excess claims fee rates 

are aimed to permit applicants to 

include excess claims when necessary 

to obtain an appropriate scope of 

coverage for an invention, while 

deterring applicants from routinely 

presenting a copious number of claims 

for merely tactical reasons. Filing 

applications with the most prudent 

number of unambiguous claims will 

enable prompt conclusion of application 

processing, because more succinct 

applications facilitate faster 

examination with an expectation of 

fewer errors. Therefore, the Office is 

increasing excess claim fee rates to 

facilitate an efficient and compact 

application examination process, which 

benefits the applicant and the USPTO 

through more effective administration of 

patent prosecution. In addition to 

helping the Office meet its policy goals 

of reducing application processing time, 

application pendency, and examination 

burden, the increase in excess claims fee 

rates is also justified because fees paid 

by applicants filing a large number of 

claims will help establish the EPQI 

based on stakeholder feedback to 

provide better services and products as 

well as enhance customer service, and 

continue to provide patent examiners 

detailed training in efficient interview 

techniques and in compact prosecution. 

The revenue from excess claim fees also 

supports the front-end subsidies built 

into the fee rates for filing, search, and 

examination. The Office already has a 

practice to refund excess claim fees 

when the application is abandoned 

prior to examination. See 37 CFR 

1.138(d) and MPEP 607.02, Subsection 

V & 711.01, Subsection III. However, as 

noted in the NPRM, the Office is 

committed to undertaking a study to 

determine the feasibility of a refund 

program in which excess claim fees are 

returned when claims are cancelled in 

response to a restriction requirement. 

However, cancelling claims on 

restriction impacts applicants rights to 

rejoinder. In addition, letting applicants 

obtain a refund if they cancel claims 

after rejoinder is considered requires the 

Office to consider rejoinder as to the 

withdrawn claims which can be costly. 

Mega-Sequence Listings Fees 

Comment 27: One commenter 

expressed concern with the proposed 

mega-sequence fees without historical 

cost information and suggests non-fee 

alternatives. 

Response: The proposed fee for megasequence listings is based on data 

available at this time. The Office will 

collect activity based cost information if 

needed and will share this information 

with the public when available. The 

final rule fee is structured to fulfill the 

AIA authority to set fees so that 

aggregate revenue from patent fees 

recovers the aggregate estimated cost of 

patent operations. 

Streamlined ex parte Reexamination 

Fees 

Comment 28: One commenter favors 

the reduced fee for streamlined 

reexamination proceedings but 

questions the forty page limit. 

Response: The streamlined ex parte 

reexamination option has been created 

to promote efficiency and cost 

reduction, while making it financially 

less burdensome for requesters with 

limited resources and encouraging 

focused submissions from all 

petitioners. As part of the Office’s FY 

2015 fee review process, the length of ex 

parte reexamination requests were 

studied. It was determined that, in many 

cases, clear, concise and focused 

requests can be written in fewer than 

forty pages (including claim charts). 

Further, the study demonstrated that 

when requests were less than forty 

pages, on average, the time required for 

the assigned Reexamination Specialist 

to review the request and examine the 

requested claims was reduced, which 

translates to a reduced overall cost of 

conducting the proceeding. 

Disciplinary Proceeding Fees 

Comment 29: One commenter 

applauds the USPTO for dropping the 

previously proposed new fee code for 

imposing costs of disciplinary 

proceedings on practitioners. 

Additionally this commenter states that 

disciplinary fees should not be imposed 

on practitioners when OED determines 

that no disciplinary action is warranted. 

If the USPTO were to attempt to assess 

a disciplinary fee again in the future, the 

commenter suggests that that fee should 

be outcome-dependent. 

Response: The Office would like to 

clarify that Pursuant to 37 CFR 

11.60(d)(2), the OED Director is 

currently authorized to recover 

expenses from a disciplined practitioner 

who seeks reinstatement. The purpose 

of listing this fee in § 1.21 is simply to 

establish a new fee code by which to 

account for the receipt of these 

reimbursements. The fee is only 

imposed on practitioners who seek 

reinstatement after having been 

suspended or excluded. Thus, there 

should be no concern that a practitioner 

would be subject to this fee if he or she 

has been investigated and cleared, or 

has been disciplined but not suspended 

or excluded. 

Broader Comments 

Comment 30: One commenter notes 

that the FederalRegister.gov search 

query did not categorize the rule as 

significant, and therefore it may have 

been overlooked. 

Response: OMB is responsible for 

making significance determinations for 

rulemakings pursuant to Executive 

Order 12866. OMB determined this rule 

to be ‘‘Economically Significant,’’ a 

subset of ‘‘Significant,’’ pursuant to the 

EO, and this designation was reflected 

in the preamble to the proposed rule. 

While the Office of the Federal Register 

provides a convenient source for the 


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public to search and identify pending 

rules that have been deemed Significant 

under EO 12866, the primary Web site 

designated by OMB for identifying such 

rulemakings is at Reginfo.gov, which is 

jointly maintained by OMB/U.S. 

General Services Administration (GSA). 

An entry for the proposed rule was 

posted on that Web site (https://

www.reginfo.gov/public/do/eo

Details?rrid=126564), as well as 

published in the United Agenda of 

Regulatory and Deregulatory Actions 

properly designated as an 

‘‘Economically Significant’’ rule 

(https://www.reginfo.gov/public/do/ 

eAgenda

ViewRule?pubId=201610&RIN=0651- 

AD02). 

Comment 31: Two commenters sought 

more elasticity information. One 

commenter suggested that the 

assumption that demand for patent 

services is inelastic may be less true for 

design patents and another commenter 

noted that the elasticity supplement 

does not address elasticity separately for 

large, small, and micro entities. 

Response: In this rule, the Office 

assumes that the fee rate adjustments 

are not substantial enough to create a 

significant and measurable change in 

demand for existing products and 

services regardless of entity size. For 

more information please refer to the 

Elasticity Supplement, available at 

https://www.uspto.gov/sites/default/

files/documents/ 

Elasticity%20Supplement.pdf. 

Comment 32: One commenter notes 

that the Regulatory Impact Analysis 

(RIA) should have included more costs 

to the American economy. Specifically, 

the commenter suggested that patent 

applications, patent issues, and 

maintenance fees would decrease, all of 

which would lead to lost jobs, lost 

wages, and an increased trade deficit. 

Response: The Office appreciates the 

attention paid to the costs and benefits 

detailed in the RIA. The OMB Office of 

Information and Regulatory Affairs has 

indicated that it considers the final rule 

to be a transfer rule, concerning 

payments from one group to another 

that does not affect the total resources 

available to society. The Office 

recognizes that innovation has become a 

principal driver of the modern economy 

by stimulating economic growth and 

creating high-paying jobs. However, 

monetizing and quantifying certain 

impacts of patent fees on the economy 

and the rate of innovation are inherently 

difficult due to the number of variables 

involved, the difficulty in predicting 

economic activity, and the availability 

of data, especially data on private sector 

behavior. The Office does provide some 

quantitative and qualitative data in the 

RIA to assist the reader in measuring the 

cost and benefits of the rulemaking. The 

Office follows the guidance set forth in 

Circular A–4 in determining which data 

to provide in this final rule. 

Comment 33: One commenter 

suggested that the rule should be 

resubmitted under the current 

presidential administration. 

Response: The USPTO recognizes the 

timing of the rule and confirms that the 

final rule has undergone review, 

discussion, and feedback from the 

current presidential administration via 

the Office of Management and Budget. 

This final rule has the approval of the 

current administration. 

Comment 34: One commenter 

recommended that the USPTO increase 

fees from foreign firms that file in the 

United States. 

Response: Charging higher fees to 

foreign applicants would likely be 

contrary to the USPTO’s treaty 

obligations including those under 

Article 3 of the Agreement on TradeRelated Aspects of Intellectual Property 

Rights (TRIPS) and Article 2 of the Paris 

Convention. The USPTO has a strong 

commitment to the global IP 

community. The USPTO engages in 

international patent cooperation 

through various treaties, agreements, 

and programs to increase the certainty 

of IP rights while reducing stakeholder 

costs and moving towards a harmonized 

global patent system. By providing 

discounted fees for small businesses and 

independent inventors regardless of 

national origin, the USPTO takes an 

impartial fee setting approach that 

supports innovation by even the 

smallest economic interests. This 

promotes strong global IP rights which, 

in turn, helps American businesses. 

Comment 35: One commenter sought 

more information about support for 

independent inventors. 

Response: To support small and 

medium sized enterprises (SMEs), the 

USPTO has offered discounts for many 

patent fees since 1982. Initially, the 

discount was fifty percent of eligible 

patent fees. The AIA expanded the 

number of fees eligible for small entity 

discounts and created a sub-class of 

small entities, ‘‘micro entities’’, that are 

eligible for even greater discounts— 

seventy five percent. Fees set or 

adjusted for filing, searching, 

examining, issuing, appealing, and 

maintaining patent applications and 

patents are subject to this discounting. 

The fee adjustments in this final rule 

include the expansion of the micro 

entity discount to greater numbers of 

fees. Additionally, the USPTO offers 

other assistance to SMEs, such as: The 

patent Pro Bono program, the patent Pro 

Se Assistance program, various outreach 

programs, the Inventors Assistance 

Center, the Patent and Trademark 

Resource Centers, and partnerships with 

law firms. More information about these 

programs are available at https://

www.uspto.gov/learning-and-resources/ 

inventors-entrepreneurs-resources. 

VII. Discussion of Specific Rule 

In this section the Office provides 

tables of all fees set or adjusted in the 

final rule. 

Section 1.16: The changes to the fee 

amounts indicated in § 1.16 are shown 

in Table 17. 

TABLE 17—CFR SECTION 1.16 FEE CHANGES

CFR section Fee code Description 

Current fees 

(dollars) 

Final rule fees 

(dollars) 

Large Small Micro Large Small Micro 

1.16(a) ............ 1011/2011/ 

3011.

Basic Filing Fee—Utility (paper filing also requires non-electronic 

filing fee under 1.16(t)).

280 140 70 300 150 75 

1.16(a) ............ 4011 ............... Basic Filing Fee—Utility (electronic 

filing for small entities).

n/a 70 n/a n/a 75 n/a 

1.16(b) ............ 1012/2012/ 

3012.

Basic Filing Fee—Design ................ 180 90 45 200 100 50 

1.16(b) ............ 1017/2017/ 

3017.

Basic Filing Fee—Design (CPA) ..... 180 90 45 200 100 50 

1.16(c) ............ 1013/2013/ 

3013.

Basic Filing Fee—Plant ................... 180 90 45 200 100 50 


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TABLE 17—CFR SECTION 1.16 FEE CHANGES—Continued 

CFR section Fee code Description 

Current fees 

(dollars) 

Final rule fees 

(dollars) 

Large Small Micro Large Small Micro 

1.16(d) ............ 1005/2005/ 

3005.

Provisional Application Filing Fee ... 260 130 65 280 140 70 

1.16(e) ............ 1014/2014/ 

3014.

Basic Filing Fee—Reissue .............. 280 140 70 300 150 75 

1.16(e) ............ 1019/2019/ 

3019.

Basic Filing Fee—Reissue (CPA) ... 280 140 70 300 150 75 

1.16(f) ............. 1051/2051/ 

3051.

Surcharge—Late Filing Fee, Search 

Fee, Examination Fee, Inventor’s 

Oath or Declaration, or Application Filed Without at Least One 

Claim or by Reference.

140 70 35 160 80 40 

1.16(h) ............ 1201/2201/ 

3201.

Independent Claims in Excess of 

Three.

420 210 105 460 230 115 

1.16(h) ............ 1204/2204/ 

3204.

Reissue Independent Claims in Excess of Three.420 210 105 460 230 115 

1.16(i) ............. 1202/2202/ 

3202.

Claims in Excess of 20 ................... 80 40 20 100 50 25 

1.16(i) ............. 1205/2205/ 

3205.

Reissue Claims in Excess of 20 ..... 80 40 20 100 50 25 

1.16(j) ............. 1203/2203/ 

3203.

Multiple Dependent Claim ............... 780 390 195 820 410 205 

1.16(k) ............ 1111/2111/ 

3111.

Utility Search Fee ............................ 600 300 150 660 330 165 

1.16(l) ............. 1112/2112/ 

3112.

Design Search Fee ......................... 120 60 30 160 80 40 

1.16(m) ........... 1113/2113/ 

3113.

Plant Search Fee ............................ 380 190 95 420 210 105 

1.16(n) ............ 1114/2114/ 

3114.

Reissue Search Fee ........................ 600 300 150 660 330 165 

1.16(o) ............ 1311/2311/ 

3311.

Utility Examination Fee ................... 720 360 180 760 380 190 

1.16(p) ............ 1312/2312/ 

3312.

Design Examination Fee ................. 460 230 115 600 300 150 

1.16(q) ............ 1313/2313/ 

3313.

Plant Examination Fee .................... 580 290 145 620 310 155 

1.16(r) ............ 1314/2314/ 

3314.

Reissue Examination Fee ............... 2,160 1,080 540 2,200 1,100 550 

Section 1.17: The changes to the fee 

amounts indicated in § 1.17 are shown 

in Table 18. 

TABLE 18—CFR SECTION 1.17 FEE CHANGES

CFR section Fee code Description 

Current fees 

(dollars) 

Final rule fees 

(dollars) 

Large Small Micro Large Small Micro 

1.17(e) ............ 1801/2801/ 

3801.

Request for Continued Examination 

(RCE) (1st request) (see 37 CFR 

1.114).

1,200 600 300 1,300 650 325 

1.17(e) ............ 1820/2820/ 

3820.

Request for Continued Examination 

(RCE) (2nd and subsequent request).

1,700 850 425 1,900 950 475 

1.17(m) ........... 1453/2453/ 

3453.

Petition for revival of an abandoned 

application for a patent, for the 

delayed payment of the fee for 

issuing each patent, or for the 

delayed response by the patent 

owner in any reexamination proceeding.

1,700 850 850 2,000 1,000 500 

1.17(m) ........... 1454/2454/ 

3454.

Petition for the Delayed Submission 

of a Priority or Benefit Claim.

1,700 850 850 2,000 1,000 500 

1.17(m) ........... 1784/2784/ 

3784.

Petition to Excuse Applicant’s Failure to Act Within Prescribed Time 

Limits in an International Design 

Application.

1,700 850 850 2,000 1,000 500 


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TABLE 18—CFR SECTION 1.17 FEE CHANGES—Continued 

CFR section Fee code Description 

Current fees 

(dollars) 

Final rule fees 

(dollars) 

Large Small Micro Large Small Micro 

1.17(m) ........... 1558/2558/ 

3558.

Petition for the Delayed Payment of 

the Fee for Maintaining a Patent 

in Force.

1,700 850 850 2,000 1,000 500 

1.17(p) ............ 1806/2806/ 

3806.

Submission of an Information Disclosure Statement.180 90 45 240 120 60 

1.17(t) ............. 1783/2783/ 

3783.

Petition to convert an international 

design application to a design application under 35 U.S.C. chapter 

16.

180 180 180 180 90 45 

Section 1.18: The changes to the fee 

amounts indicated in § 1.18 are shown 

in Table 19. 

Section 1.18(b)(3) is being amended to 

provide that the issue fee for issuing an 

international design application 

designating the United States, where the 

issue fee is paid through the 

International Bureau, is the amount 

established in Swiss currency pursuant 

to Hague Agreement Rule 28 as of the 

date of mailing of the notice of 

allowance (§ 1.311). The amendment 

would facilitate processing of the issue 

fee by the International Bureau and 

would maintain parity in the treatment 

of the amount of the issue fee due 

whether paid directly to the USPTO or 

through the International Bureau in the 

event the issue fee changes after the 

mailing of the notice of allowance. 

TABLE 19—CFR SECTION 1.18 FEE CHANGES

CFR section Fee code Description 

Current fees 

(dollars) 

Final rule fees 

(dollars) 

Large Small Micro Large Small Micro 

1.18(a)(1) ....... 1501/2501/ 

3501.

Utility Issue Fee ............................... 960 480 240 1,000 500 250 

1.18(a)(1) ....... 1511/2511/ 

3511.

Reissue Issue Fee .......................... 960 480 240 1,000 500 250 

1.18(b)(1) ....... 1502/2502/ 

3502.

Design Issue Fee ............................ 560 280 140 700 350 175 

1.18(c)(1) ....... 1503/2503/ 

3503.

Plant Issue Fee ............................... 760 380 190 800 400 200 

Section 1.19: The changes to the fee 

amounts indicated in § 1.19 are shown 

in Table 20. 

TABLE 20—CFR SECTION 1.19 FEE CHANGES

CFR section Fee code Description 

Current fees 

(dollars) 

Final rule fees 

(dollars) 

Large Small Micro Large Small Micro 

1.19(b)(1) 

(i)(A) and 

(ii)(A).

8007 ............... Copy of Patent Application as Filed 20 20 20 35 35 35 

1.19(b)(1) 

(i)(B).

........................ Copy of Patent File Wrapper, Paper 

Medium, Any Number of Sheets.

n/a n/a n/a 280 280 280 

1.19(b)(1) 

(ii)(B).

........................ Copy Patent File Wrapper, Electronic Medium, Any Size or Provided Electronically.n/a n/a n/a 55 55 55 

1.19(b)(4) ....... 8014 ............... For Assignment Records, Abstract 

of Title and Certification, per Patent.

25 25 25 35 35 35 

1.19(i) ............. ........................ Copy of Patent Grant Single-Page 

TIFF Images (52 week subscription).

n/a n/a n/a 10,400 10,400 10,400 

1.19(j) ............. ........................ Copy of Patent Grant Full-Text W/ 

Embedded Images, Patent Application Publication Single-Page 

TIFF Images, or Patent Application Publication Full-Text W/Embedded Images (52 week subscription).

n/a n/a n/a 5,200 5,200 5,200 


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TABLE 20—CFR SECTION 1.19 FEE CHANGES—Continued 

CFR section Fee code Description 

Current fees 

(dollars) 

Final rule fees 

(dollars) 

Large Small Micro Large Small Micro 

1.19(k) ............ ........................ Copy of PTMT Patent Bibliographic 

Extract and Other DVD (Optical 

Disc) Products.

n/a n/a n/a 50 50 50 

1.19(l) ............. ........................ Copy of U.S. Patent Custom Data 

Extracts.

n/a n/a n/a 100 100 100 

1.19(m) ........... ........................ Copy of Selected Technology Reports, Miscellaneous Technology 

Areas.

n/a n/a n/a 30 30 30 

Section 1.20: The changes to the fee 

amounts indicated in § 1.20 are shown 

in Table 21. 

TABLE 21—CFR SECTION 1.20 FEE CHANGES

CFR section Fee code Description 

Current fees 

(dollars) 

Final rule fees 

(dollars) 

Large Small Micro Large Small Micro 

1.20(a) ............ 1811 ............... Certificate of Correction .................. 100 100 100 150 150 150 

1.20(b) ............ 1816 ............... Processing Fee for Correcting 

Inventorship in a Patent.

130 130 130 150 150 150 

1.20(c)(1) ....... ........................ Ex Parte Reexamination 

(§ 1.510(a)) Streamlined.

n/a n/a n/a 6,000 3,000 1,500 

1.20(c)(2) ....... 1812/2812/ 

3812.

Ex Parte Reexamination § 1.510(a)) 

Non-Streamlined.

12,000 6,000 3,000 12,000 6,000 3,000 

1.20(c)(3) ....... 1821/2821/ 

3821.

Reexamination Independent Claims 

in Excess of Three and also in 

Excess of the Number of Such 

Claims in the Patent Under Reexamination.

420 210 105 460 230 115 

1.20(c)(4) ....... 1822/2822/ 

3822.

Reexamination Claims in Excess of 

20 and Also in Excess of the 

Number of Claims in the Patent 

Under Reexamination.

80 40 20 100 50 25 

Section 1.21: The changes to the fee 

amounts indicated in § 1.21 are shown 

in Table 22. 

TABLE 22—CFR SECTION 1.21 FEE CHANGES

CFR section Fee code Description 

Current fees 

(dollars) 

Final rule fees 

(dollars) 

Large Small Micro Large Small Micro 

1.21(a)(1)(i) .... 9001 ............... Application Fee (non-refundable) .... 40 40 40 100 100 100 

1.21(a)(1)(ii)(A) 9010 ............... For Test Administration by Commercial Entity.200 200 200 200 200 200 

1.21(a)(1)(ii)(B) 9011 ............... For Test Administration by the 

USPTO.

450 450 450 450 450 450 

1.21(a)(1)(iii) .. ........................ For USPTO-Administered Review 

of Registration Examination.

n/a n/a n/a 450 450 450 

1.21(a)(2)(i) .... 9003 ............... On Registration to Practice Under 

§ 11.6.

100 100 100 200 200 200 

1.21(a)(2)(ii) ... ........................ On Grant of Limited Recognition 

under § 11.9(b).

100 100 100 200 200 200 

1.21(a)(2)(iii) .. 9025 ............... On change of registration from 

agent to attorney.

100 100 100 100 100 100 

1.21(a)(4)(i) .... 9005 ............... Certificate of Good Standing as an 

Attorney or Agent, Standard.

10 10 10 40 40 40 

1.21(a)(4)(ii) ... 9006 ............... Certificate of Good Standing as an 

Attorney or Agent, Suitable for 

Framing.

20 20 20 50 50 50 


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TABLE 22—CFR SECTION 1.21 FEE CHANGES—Continued 

CFR section Fee code Description 

Current fees 

(dollars) 

Final rule fees 

(dollars) 

Large Small Micro Large Small Micro 

1.21(a)(5)(i) .... 9012 ............... Review of Decision by the Director 

of Enrollment and Discipline 

under § 11.2(c).

130 130 130 400 400 400 

1.21(a)(5)(ii) ... 9013 ............... Review of Decision of the Director 

of Enrollment and Discipline 

under § 11.2(d).

130 130 130 400 400 400 

1.21(a)(6)(i) .... ........................ For USPTO-Assisted Recovery of 

ID or Reset of Password for the 

Office of Enrollment and Discipline Information System.

n/a n/a n/a 70 70 70 

1.21(a)(6)(ii) ... ........................ For USPTO-Assisted Change of 

Address Within the Office of Enrollment and Discipline Information System.

n/a n/a n/a 70 70 70 

1.21(a)(9)(ii) ... 9004 ............... Administrative Reinstatement Fee .. 100 100 100 200 200 200 

1.21(a)(10) ..... 9014 ............... On petition for reinstatement by a 

person excluded or suspended 

on ethical grounds, or excluded 

on consent from practice before 

the Office.

1,600 1,600 1,600 1,600 1,600 1,600 

1.21(h)(2) ....... 8021 ............... Recording Each Patent Assignment, Agreement or Other Paper, 

per Property if not Submitted 

Electronically.

40 40 40 50 50 50 

1.21(o)(1) ....... ........................ Submission of sequence listings 

ranging in size of 300 MB to 800 

MB.

n/a n/a n/a 1,000 1,000 1,000 

1.21(o)(2) ....... ........................ Submission of sequence listings exceeding 800 MB.n/a n/a n/a 10,000 10,000 10,000 

1.21(p) ............ ........................ Additional Fee for Overnight Delivery.n/a n/a n/a 40 40 40 

1.21(q) ............ ........................ Additional Fee for Expedited Service.n/a n/a n/a 160 160 160 

Section 1.445: The changes to the fee 

amounts indicated in § 1.445 are shown 

in Table 23. 

TABLE 23—CFR SECTION 1.445(a)(5) FEE CHANGES

CFR section Fee code Description 

Current fees 

(dollars) 

Final rule fees 

(dollars) 

Large Small Micro Large Small Micro 

1.445(a)(5) ..... ........................ Late furnishing fee for providing a 

sequence listing in response to 

an invitation under PCT Rule 

13ter.

n/a n/a n/a 300 150 75 

Section 1.482: The changes to the fee 

amounts indicated in § 1.482 are shown 

in Table 24. 

TABLE 24—CFR SECTION 1.482(C) FEE CHANGES

CFR section Fee code Description 

Current fees 

(dollars) 

Final rule fees 

(dollars) 

Large Small Micro Large Small Micro 

1.482(c) .......... ........................ Late furnishing fee for providing a 

sequence listing in response to 

an invitation under PCT Rule 

13ter.

n/a n/a n/a 300 150 75 


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Section 1.492: The changes to the fee 

amounts indicated in § 1.492 are shown 

in Table 25. 

TABLE 25—CFR SECTION 1.492 FEE CHANGES

CFR section Fee code Description 

Current fees 

(dollars) 

Final rule fees 

(dollars) 

Large Small Micro Large Small Micro 

1.492(a) .......... 1631/2631/ 

3631.

Basic PCT National Stage Fee ....... 280 140 70 300 150 75 

1.492(b)(2) ..... 1641/2641/ 

3641.

PCT National Stage Search Fee— 

U.S. was the ISA.

120 60 30 140 70 35 

1.492(b)(3) ..... 1642/2642/ 

3642.

PCT National Stage Search Fee— 

Search Report Prepared and Provided to USPTO.

480 240 120 520 260 130 

1.492(b)(4) ..... 1632/2632/ 

3632.

PCT National Stage Search Fee— 

All Other Situations.

600 300 150 660 330 165 

1.492(c)(2) ..... 1633/2633/ 

3633.

National Stage Examination Fee— 

All Other Situations.

720 360 180 760 380 190 

1.492(d) .......... 1614/2614/ 

3614.

PCT National Stage Claims—Extra 

Independent (over three).

420 210 105 460 230 115 

1.492(e) .......... 1615/2615/ 

3615.

PCT National Stage Claims—Extra 

Total (over 20).

80 40 20 100 50 25 

1.492(f) ........... 1616/2616/ 

3616.

PCT National Stage Claims—Multiple Dependent.780 390 195 820 410 205 

Section 1.1031: The changes to the fee 

amounts indicated in § 1.031 are shown 

in Table 26. 

Section 1.1031 is being amended by 

adding paragraph (f) concerning the 

designation fee for the United States. As 

§ 1.1031 concerns international design 

application fees, the Office believes it 

appropriate to include a provision 

therein regarding the U.S. designation 

fee. The amendment is consistent with 

the U.S. designation fee currently in 

effect. See ‘‘Individual Fees under the 

Hague Agreement,’’ available on the 

WIPO Web site at http://www.wipo.int/ 

hague/en/fees/individ-fee.html, and 

§ 1.18(b). 

TABLE 26—CFR SECTION 1.1031(a) FEE CHANGES

CFR section Fee code Description 

Current fees 

(dollars) 

Final rule fees 

(dollars) 

Large Small Micro Large Small Micro 

1.1031(a) ........ 1781/2781/ 

3781.

International Design Application 

Transmittal Fee.

120 120 120 120 60 30 

Section 41.20: The changes to the fee 

amounts indicated in § 41.20 are shown 

in Table 27. 

TABLE 27—CFR SECTION 41.20 FEE CHANGES

CFR section Fee code Description 

Current fees 

(dollars) 

Final rule fees 

(dollars) 

Large Small Micro Large Small Micro 

41.20(b)(4) ..... 1413/2413/ 

3413.

Forwarding an Appeal in an Application or Ex Parte Reexamination 

Proceeding to the Board.

2,000 1,000 500 2,240 1,120 560 

Section 42.15: The changes to the fee 

amounts indicated in § 42.15 are shown 

in Table 28. 


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TABLE 28—CFR SECTION 42.15 FEE CHANGES

CFR section Fee code Description 

Current fees 

(dollars) 

Final rule fees 

(dollars) 

Large Small Micro Large Small Micro 

42.15(a)(1) ..... 1406 ............... Inter Partes Review Request Fee ... 9,000 9,000 9,000 15,500 15,500 15,500 

42.15(a)(2) ..... 1414 ............... Inter Partes Review Post-Institution 

Fee.

14,000 14,000 14,000 15,000 15,000 15,000 

42.15(a)(3) ..... 1407 ............... In Addition to the Inter Partes Review Request Fee, for Requesting Review of Each Claim in Excess of 20.200 200 200 300 300 300 

42.15(a)(4) ..... 1415 ............... In addition to the Inter Partes PostInstitution Fee, for Requesting 

Review of Each Claim in Excess 

of 15.

400 400 400 600 600 600 

42.15(b)(1) ..... 1408 ............... Post-Grant or Covered Business 

Method Patent Review Request 

Fee.

12,000 12,000 12,000 16,000 16,000 16,000 

42.15(b)(2) ..... 1416 ............... Post-Grant or Covered Business 

Method Patent Review Post-Institution Fee.

18,000 18,000 18,000 22,000 22,000 22,000 

42.15(b)(3) ..... 1409 ............... In Addition to the Post-Grant or 

Covered Business Method Patent 

Review Request Fee, for Requesting Review of Each Claim in 

Excess of 20.

250 250 250 375 375 375 

42.15(b)(4) ..... 1417 ............... In Addition to the Post-Grant or 

Covered Business Method Patent 

Review Post-Institution Fee, for 

Requesting Review of Each 

Claim in Excess of 15.

550 550 550 825 825 825 

VIII. Rulemaking Considerations 

A. America Invents Act 

This final rule sets and adjusts fees 

under Section 10(a) of the AIA. Section 

10(a) of the AIA authorizes the Director 

of the USPTO to set or adjust by rule 

any patent fee established, authorized, 

or charged under Title 35 of the United 

States Code (U.S.C.) for any services 

performed, or materials furnished, by 

the Office. Section 10 prescribes that 

fees may be set or adjusted only to 

recover the aggregate estimated cost to 

the Office for processing, activities, 

services, and materials relating to 

patents, including administrative costs 

of the Office with respect to such patent 

fees. Section 10 authority includes 

flexibility to set individual fees in a way 

that furthers key policy factors, while 

taking into account the cost of the 

respective services. Section 10(e) of the 

AIA sets forth the general requirements 

for rulemakings that set or adjust fees 

under this authority. In particular, 

Section 10(e)(1) requires the Director to 

publish in the Federal Register any 

proposed fee change under Section 10, 

and include in such publication the 

specific rationale and purpose for the 

proposal, including the possible 

expectations or benefits resulting from 

the proposed change. For such 

rulemakings, the AIA requires that the 

Office provide a public comment period 

of not less than 45 days. 

The PPAC advises the Under 

Secretary of Commerce for Intellectual 

Property and Director of the USPTO on 

the management, policies, goals, 

performance, budget, and user fees of 

patent operations. When proposing fees 

under Section 10 of the Act, the Director 

must provide the PPAC with the 

proposed fees at least 45 days prior to 

publishing the proposed fees in the 

Federal Register. The PPAC then has at 

least 30 days within which to deliberate, 

consider, and comment on the proposal, 

as well as hold public hearing(s) on the 

proposed fees. The PPAC must make a 

written report available to the public of 

the comments, advice, and 

recommendations of the committee 

regarding the proposed fees before the 

Office issues any final fees. The Office 

considers and analyzes any comments, 

advice, or recommendations received 

from the PPAC before finally setting or 

adjusting fees. 

Consistent with this framework, on 

October 20, 2015, the Director notified 

the PPAC of the Office’s intent to set or 

adjust patent fees and submitted a 

preliminary patent fee proposal with 

supporting materials. The preliminary 

patent fee proposal and associated 

materials are available at http://

www.uspto.gov/about-us/performanceand-planning/fee-setting-and-adjusting. 

The PPAC held a public hearing in 

Alexandria, Virginia, on November 19, 

2015. Transcripts of the hearing are 

available at http://www.uspto.gov/sites/ 

default/files/documents/PPAC_

Hearing_Transcript_20151119.pdf. 

Members of the public were invited to 

the hearing and given the opportunity to 

submit written and/or oral testimony for 

the PPAC to consider. The PPAC 

considered such public comments from 

this hearing and made all comments 

available to the public via the Fee 

Setting Web site, available at http://

www.uspto.gov/about-us/performanceand-planning/fee-setting-and-adjusting. 

The PPAC also provided a written 

report setting forth in detail the 

comments, advice, and 

recommendations of the committee 

regarding the preliminary proposed fees. 

The report regarding the preliminary 

proposed fees was released on February 

29, 2016, and is available at http://

www.uspto.gov/sites/default/files/ 

documents/PPAC_Fee%20_Setting_

Report_2016%20%28Final%29.pdf. 

The Office considered and analyzed all 

comments, advice, and 

recommendations received from the 

PPAC before publishing the NPRM on 

October 3, 2016 (81 FR 68150). The 

public was then provided a 60-day 

period during which to provide 

comments to be considered by the 

USPTO. The NPRM comment period 


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closed on December 2, 2016. Section 

10(e) of the Act requires the Director to 

publish the final fee rule in the Federal 

Register and the Official Gazette of the 

Patent and Trademark Office at least 45 

days before the final fees become 

effective. Pursuant to this requirement, 

this rule is effective on January 16, 

2018. 

B. Regulatory Flexibility Act 

The USPTO publishes this Final 

Regulatory Flexibility Analysis (FRFA) 

as required by the Regulatory Flexibility 

Act (RFA) (5 U.S.C. 601, et seq.) to 

examine the impact of the Office’s rule 

to implement the fee setting provisions 

of the Leahy-Smith America Invents Act 

(Pub. L. 112–29, 125 Stat. 284) (the Act) 

on small entities. Under the RFA, 

whenever an agency is required by 5 

U.S.C. 553 (or any other law) to publish 

an NPRM, the agency must prepare and 

make available for public comment an 

Initial Regulatory Flexibility Analysis 

(IRFA), unless the agency certifies under 

5 U.S.C. 605(b) that the rule, if 

implemented, will not have a significant 

impact on a substantial number of small 

entities. 5 U.S.C. 603, 605. The Office 

published an IRFA, along with the 

NPRM, on October 3, 2016 (81 FR 

68150). The Office received no 

comments from the public directly 

applicable to the IRFA. 

1. A Statement of the Need for, and 

Objectives of, the Rule 

The objective of the rule is to 

implement the fee setting provisions of 

Section 10 of the Act by setting or 

adjusting patent fees to recover the 

aggregate cost of patent operations, 

including administrative costs, while 

facilitating effective administration of 

the U.S. patent system. In setting fees 

under the Act, the Office seeks to secure 

a sufficient amount of aggregate revenue 

to recover the aggregate cost of patent 

operations, including for achieving 

strategic and operational goals, such as 

enhancing patent quality, optimizing 

the timeliness of patent processing 

(through reducing patent backlog and 

pendency), delivering high quality and 

timely PTAB decisions, invest in 

modernizing the Patent business IT 

systems and infrastructure, and 

implementing a sustainable funding 

model. Additional information on the 

Office’s strategic goals may be found in 

the Strategic Plan, available at https://

www.uspto.gov/about-us/performanceand-planning/strategy-and-reporting. 

Additional information on the Office’s 

goals and operating requirements may 

be found in the annual budgets, 

available at https://www.uspto.gov/ 

about-us/performance-and-planning/ 

budget-and-financial-information. 

2. A Statement of the Significant Issues 

Raised by the Public Comments in 

Response to the Initial Regulatory 

Flexibility Analysis, a Statement of the 

Assessment of the Agency of Such 

Issues, and a Statement of Any Changes 

Made in the Final Rule as a Result of 

Such Comments 

The Office did not receive any public 

comments in response to the IRFA. The 

Office received comments about fees in 

general as well as particular fees. Details 

of those comments are discussed and 

analyzed above in Part VI. Discussion of 

Comments. 

3. The Response of the Agency to Any 

Comments Filed by the Chief Counsel 

for Advocacy of the Small Business 

Administration in Response to the 

Proposed Rule, and a Detailed 

Statement of Any Change Made to the 

Proposed Rule in the Final Rule as a 

Result of the Comments 

The Office did not receive any 

comments filed by the Chief Counsel for 

Advocacy of the Small Business 

Administration in response to the 

proposed rule. 

4. A Description of and an Estimate of 

the Number of Small Entities To Which 

the Rule Will Apply or an Explanation 

of Why No Such Estimate Is Available 

SBA Size Standard 

The Small Business Act (SBA) size 

standards applicable to most analyses 

conducted to comply with the RFA are 

set forth in 13 CFR 121.201. These 

regulations generally define small 

businesses as those with less than a 

specified maximum number of 

employees or less than a specified level 

of annual receipts for the entity’s 

industrial sector or North American 

Industry Classification System (NAICS) 

code. As provided by the RFA, and after 

consulting with the SBA, the Office 

formally adopted an alternate size 

standard for the purpose of conducting 

an analysis or making a certification 

under the RFA for patent-related 

regulations. See Business Size Standard 

for Purposes of United States Patent and 

Trademark Office Regulatory Flexibility 

Analysis for Patent-Related Regulations, 

71 FR 67109 (Nov. 20, 2006), 1313 Off. 

Gaz. Pat. Office 60 (Dec. 12, 2006). The 

Office’s alternate small business size 

standard consists of the SBA’s 

previously established size standard for 

entities entitled to pay reduced patent 

fees. See 13 CFR 121.802. Unlike the 

SBA’s generally applicable small 

business size standards, the size 

standard for the USPTO is not industry 

specific. The Office’s definition of a 

small business concern for RFA 

purposes is a business or other concern 

that: (1) Meets the SBA’s definition of a 

‘‘business concern or concern’’ set forth 

in 13 CFR 121.105; and (2) meets the 

size standards set forth in 13 CFR 

121.802 for the purpose of paying 

reduced patent fees, namely, an entity: 

(a) Whose number of employees, 

including affiliates, does not exceed 500 

persons; and (b) which has not assigned, 

granted, conveyed, or licensed (and is 

under no obligation to do so) any rights 

in the invention to any person who 

made it and could not be classified as 

an independent inventor, or to any 

concern that would not qualify as a 

nonprofit organization or a small 

business concern under this definition. 

See Business Size Standard for Purposes 

of United States Patent and Trademark 

Office Regulatory Flexibility Analysis 

for Patent-Related Regulations, 71 FR 

67109 (Nov. 20, 2006), 1313 Off. Gaz. 

Pat. Office at 63 (Dec. 12, 2006). If a 

patent applicant self-identifies on a 

patent application as qualifying as a 

small entity for reduced patent fees 

under the Office’s alternative size 

standard, the Office captures this data in 

the Patent Application Location and 

Monitoring (PALM) database system, 

which tracks information on each patent 

application submitted to the Office. 

Small Entities Affected by This Rule 

Small Entity Defined 

The Act provides that fees set or 

adjusted under Section 10(a) ‘‘for filing, 

searching, examining, issuing, 

appealing, and maintaining patent 

applications and patents shall be 

reduced by 50 percent’’ with respect to 

the application of such fees to any 

‘‘small entity’’ (as defined in 37 CFR 

1.27) that qualifies for reduced fees 

under 35 U.S.C. 41(h)(1). 125 Stat. at 

316–17. 35 U.S.C. 41(h)(1), in turn, 

provides that certain patent fees ‘‘shall 

be reduced by 50 percent’’ for a small 

business concern as defined by Section 

3 of the SBA, and to any independent 

inventor or nonprofit organization as 

defined in regulations described by the 

Director. 

Micro Entity Defined 

Section 10(g) of the Act creates a new 

category of entity called a ‘‘micro 

entity.’’ 35 U.S.C. 123; see also 125 Stat. 

at 318–19. Section 10(b) of the Act 

provides that the fees set or adjusted 

under Section 10(a) ‘‘for filing, 

searching, examining, issuing, 

appealing, and maintaining patent 

applications and patents shall be 

reduced by 75 percent with respect to 


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the application of such fees to any micro 

entity as defined by 35 U.S. Code 

§ 123.’’ 125 Stat. at 315–17. 35 U.S.C. 

123(a) defines a ‘‘micro entity’’ as an 

applicant who certifies that the 

applicant: (1) Qualifies as a small entity 

as defined in 37 CFR 1.27; (2) has not 

been named as an inventor on more 

than four previously filed patent 

applications, other than applications 

filed in another country, provisional 

applications under 35 U.S.C. 111(b), or 

Patent Cooperation Treaty (PCT) 

applications for which the basic 

national fee under 35 U.S.C. 41(a) was 

not paid; (3) did not, in the calendar 

year preceding the calendar year in 

which the applicable fee is being paid, 

have a gross income, as defined in 

Section 61(a) of the Internal Revenue 

Code of 1986 (26 U.S.C. 61(a)), 

exceeding three times the median 

household income for that preceding 

calendar year, as most recently reported 

by the Bureau of the Census; and (4) has 

not assigned, granted, conveyed, and is 

not under an obligation by contract or 

law, to assign, grant, or convey, a 

license or other ownership interest in 

the application concerned to an entity 

exceeding the income limit set forth in 

(3) above. See 125 Stat. at 318. 35 U.S.C. 

123(d) also defines a ‘‘micro entity’’ as 

an applicant who certifies that: (1) The 

applicant’s employer, from which the 

applicant obtains the majority of the 

applicant’s income, is an institution of 

higher education as defined in Section 

101(a) of the Higher Education Act of 

1965 (20 U.S.C. 1001(a)); or (2) the 

applicant has assigned, granted, 

conveyed, or is under an obligation by 

contract or law, to assign, grant, or 

convey, a license or other ownership 

interest in the particular applications to 

such an institution of higher education. 

Estimate of Number of Small Entities 

Affected 

The changes in the rule apply to any 

entity, including a small or micro entity 

that pays any patent fee set forth in the 

final rule. The reduced fee rates (50 

percent for small entities and 75 percent 

for micro entities) apply to any small 

entity asserting small entity status and 

to any micro entity certifying micro 

entity status for filing, searching, 

examining, issuing, appealing, and 

maintaining patent applications and 

patents. The Office reviews historical 

data to estimate the percentages of 

application filings asserting small entity 

status. Table 29 presents a summary of 

such small and micro entity filings by 

type of application (utility, reissue, 

plant, design) over the last five years. 

TABLE 29—NUMBER OF PATENT APPLICATIONS FILED IN LAST FIVE YEARS * 

FY 2016 ** FY 2015 FY 2014 FY 2013 FY 2012 Average *** 

Utility ................................. All ...................................... 607,753 578,121 579,873 564,007 530,915 572,134 

Small ................................. 147,076 142,796 133,930 136,490 132,198 138,498 

% Small ............................ 24.2 24.7 23.1 24.2 24.9 24.2 

Micro ................................. 30,995 28,906 18,553 7,896 N/A 21,588 

% Micro ............................ 5.1 5.0 3.2 1.4 N/A 3.7 

Reissue ............................. All ...................................... 1,072 1,087 1,207 1,074 1,212 1,130 

Small ................................. 258 246 280 229 278 258 

% Small ............................ 24.1 22.6 23.2 21.3 22.9 22.8 

Micro ................................. 19 12 24 9 N/A 16 

% Micro ............................ 1.8 1.1 2.0 0.8 N/A 1.4 

Plant .................................. All ...................................... 1,180 1,119 1,123 1,318 1,181 1,184 

Small ................................. 589 673 581 655 576 615 

% Small ............................ 49.9 60.1 51.7 49.7 48.8 52.0 

Micro ................................. 9 4 22 3 N/A 10 

% Micro ............................ 0.8 0.4 2.0 0.2 N/A 0.9 

Design ............................... All ...................................... 40,406 37,735 36,254 35,065 32,258 36,344 

Small ................................. 16,890 14,981 14,740 15,814 15,806 15,646 

% Small ............................ 41.8 39.7 40.7 45.1 49.0 43.3 

Micro ................................. 4,364 4,000 3,622 1,683 N/A 3,417 

% Micro ............................ 10.8 10.6 10.0 4.8 N/A 9.1 

* The patent application filing data in this table includes RCEs. 

** FY 2016 application filing data are preliminary and will be finalized in the FY 2017 Performance and Accountability Report (PAR). 

*** The micro entity average is from FY 2013 to FY 2016. All other averages are for all time periods shown. 

Because the percentage of small entity 

filings varies widely between 

application types, the Office has 

averaged the small entity filing rates 

over the past five years for those 

application types in order to estimate 

future filing rates by small and micro 

entities. Those average rates appear in 

the last column of Table 29. The Office 

estimates that small entity filing rates 

will continue for the next five years at 

these average historic rates. 

The Office forecasts the number of 

projected patent applications (i.e., 

workload) for the next five years using 

a combination of historical data, 

economic analysis, and subject matter 

expertise. The Office estimates that 

utility, plant, and reissue (UPR) patent 

application filings will grow by 0.7 

percent in FY 2017, 2.1 percent in FY 

2018, 1.2 percent in FY 2019, 0.8 

percent in FY 2020, and decline by 0.5 

percent in FY 2021. The Office forecasts 

design patent applications 

independently of UPR applications 

because they exhibit different behavior. 

Using the estimated filings for the 

next five years, and the average historic 

rates of small entity filings, Table 30 

presents the Office’s estimates of the 

number of patent application filings by 

all applicants, including small and 

micro entities, over the next five fiscal 

years by application type. 

The Office has undertaken an 

elasticity analysis to examine if fee 

adjustments may impact small entities 

and, in particular, whether increases in 

fees would result in some such entities 

not submitting applications. Elasticity 

measures how sensitive patent 

applicants and patentees are to fee 

changes. If elasticity is low enough 

(demand is inelastic), then fee increases 

will not reduce patenting activity 

enough to negatively impact overall 

revenues. If elasticity is high enough 

(demand is elastic), then increasing fees 

will decrease patenting activity enough 

to decrease revenue. The Office 

analyzed elasticity at the overall filing 

level across all patent applicants 


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regardless of entity size and determined 

that, as none of the fee changes are large 

enough to create a sizable change in 

demand for products and services, 

elasticity impacts are negligible and 

therefore not included in this iteration 

of fee adjustments. Additional 

information about elasticity estimates is 

available at http://www.uspto.gov/ 

about-us/performance-and-planning/ 

fee-setting-and-adjusting in the 

document entitled ‘‘USPTO Setting and 

Adjusting Patent Fees during Fiscal 

Year 2017—Description of Elasticity 

Estimates.’’ 

TABLE 30—ESTIMATED NUMBERS OF PATENT APPLICATIONS IN FY 2017–FY 2021 

FY 2017 

(current) FY 2018 FY 2019 FY 2020 FY 2021 

Utility ............................................. All .................................................. 612,255 625,296 632,975 637,937 634,657 

Reissue ......................................... All .................................................. 818 823 829 834 840 

Plant .............................................. All .................................................. 1,180 1,155 1,130 1,107 1,083 

Design ........................................... All .................................................. 41,218 43,548 46,013 48,620 51,379 

Total ....................................... All .................................................. 655,471 670,822 680,947 688,498 687,959 

The USPTO continuously updates 

both patent fee collections projections 

and workload projections based on the 

latest data. The estimated number of 

patent applications have been updated 

since the NPRM was published in 

October 2016. UPR filings growth 

projections were revised downward 

during the FY 2018 budget formulation 

process due to revised RGDP estimates 

and more conservative estimates of out 

year growth. The most recent 

projections are shown in Table 30. 

5. A Description of the Projected 

Reporting, Recordkeeping and Other 

Compliance Requirements of the Rule, 

Including an Estimate of the Classes of 

Small Entities Which Will Be Subject to 

the Requirement and Type of 

Professional Skills Necessary for 

Preparation of the Report or Record 

When implemented, this rule will not 

change the burden of existing reporting 

and recordkeeping requirements for 

payment of fees. The current 

requirements for small and micro 

entities will continue to apply. 

Therefore, the professional skills 

necessary to file and prosecute an 

application through issue and 

maintenance remain unchanged. This 

action is only to adjust patent fees and 

not to set procedures for asserting small 

entity status or certifying micro entity 

status, as previously discussed. 

The full fee schedule (see Part VII. 

Discussion of Specific Rule) is set forth 

in the final rule. The fee schedule sets 

or adjusts 202 patent fees in total. This 

includes 14 fees that are discontinued 

and 42 new fees, including small entity 

discounts to two additional fees and 

micro entity discounts to six additional 

fees. 

6. A Description of the Steps the Agency 

Has Taken To Minimize the Significant 

Economic Impact on Small Entities 

Consistent With the Stated Objectives of 

Applicable Statutes, Including a 

Statement of the Factual, Policy, and 

Legal Reasons for Selecting the 

Alternative Adopted in the Final Rule 

and why Each one of the Other 

Significant Alternatives to the Rule 

Considered by the Agency Which Affect 

the Impact on Small Entities Was 

Rejected 

The USPTO considered several 

alternative approaches to this rule, 

discussed below, including full cost 

recovery for individual services, an 

across the board adjustment to fees, and 

a baseline (current fee rates). The 

discussion here begins with a 

description of the fee schedule adopted 

for this final rule. 

i. Alternative 1: Final Rule Fee 

Schedule—Setting and Adjusting Patent 

Fees During Fiscal Year 2017 

The USPTO chose the patent fee 

schedule in this final rule because it 

will enable the Office to achieve its 

goals effectively and efficiently without 

unduly burdening small entities, 

erecting barriers to entry, or stifling 

incentives to innovate. The alternative 

selected here achieves the aggregate 

revenue needed for the Office to offset 

aggregate cost, and is therefore 

beneficial to all entities that seek patent 

protection. Also, the alternative selected 

here benefits from improvements in the 

design of the fee schedule. 

This alternative offers small entities a 

50 percent fee reduction and micro 

entities a 75 percent fee reduction. 

Under this selected alternative, small 

and micro entities will pay some higher 

fees than under some of the other 

alternatives considered. However, the 

fees are not as high as those initially 

proposed to PPAC or in the NPRM. 

In summary, the fees to obtain a 

patent will increase slightly. For 

example, fees for both tiers of RCEs will 

increase slightly. Maintenance fee rates 

remain unchanged at all three stages; 

however, all reissue patents are now 

subject to maintenance fee payments if 

the patent owner wishes to maintain 

them. In an effort to continue reducing 

the inventory of ex parte appeals and 

help recapture a portion of the cost of 

providing these services, fees will 

increase for forwarding an appeal, but 

not as high as proposed in the NPRM. 

The fee increase proposed in the NPRM 

for notice of appeal has been removed. 

Two of the fees for inter partes reviews 

have changed from the NPRM. The Inter 

Partes Review Request Fee—Up to 20 

Claims Final Rule rate is $15,500; the 

NRPM rate was $14,000. The Inter 

Partes Review Post-Institution Fee—Up 

to 15 Claims Final Rule rate is $15,000; 

the NPRM rate was $16,500. These 

adjustments are made to better align 

AIA trial fee rates and costs. ABI costing 

data since the inception of AIA trial fees 

shows that the unit costs to the Office 

for Inter Partes Review requests have 

consistently outpaced unit costs for 

Inter Partes Review post-institutions. 

Fee increases for both post-grant 

reviews and covered-business-method 

reviews are based on FY 2015 cost data 

and resources needed to sustain 

compliance with AIA deadlines. 

Finally, in response to feedback from 

members of the public, the design and 

plant issue fees are increasing by less 

than proposed in the NPRM. Design 

issues will increase to $700 instead of 

$800 and plant issues will increase to 

$800 instead of $1,000. 

The final fee schedule for this rule, as 

compared to existing fees (labeled 

Alternative 1—Final Rule Fee 

Schedule—Setting and Adjusting Patent 

Fees during Fiscal Year 2017) is 

available at http://www.uspto.gov/ 

about-us/performance-and-planning/ 


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fee-setting-and-adjusting, in the 

document entitled ‘‘USPTO Setting and 

Adjusting Patent Fees during Fiscal 

Year 2017—FRFA Tables.’’ Fee changes 

for small and micro entities are 

included in the tables. For the 

comparison between final fees and 

current fees, as noted above, the 

‘‘current fees’’ column displays the fees 

that were in effect as of January 14, 

2017. 

ii. Other Alternatives Considered 

In addition to the fee schedule set 

forth in Alternative 1, above, the Office 

considered several other alternative 

approaches. 

a. Alternative 2: Unit Cost Recovery 

The USPTO considered setting most 

individual large entity fees at the 

historical cost of performing the 

activities related to the particular 

service in FY 2015. This alternative 

continues existing and offers new small 

and micro entity discounts where 

eligible under AIA authority. Aside 

from maintenance fees, fees for which 

there is no FY 2015 cost data would be 

set at current rates under this 

alternative. The Office no longer collects 

activity based information for 

maintenance fees, and previous year 

unit costs were negligible. This 

alternative sets maintenance fees at 

approximately half of the amount of 

current maintenance fee rates. For the 

small number of services that have a 

variable fee, the aggregate revenue table 

does not list a fee. Instead, for those 

services with an estimated workload, 

the workload is listed in dollars rather 

than units to develop revenue estimates. 

Fees without either a fixed fee rate or a 

workload estimate are assumed to 

provide zero revenue to the Office. Note, 

this alternative bases fee rates for FY 

2017 through FY 2021 on FY 2015 

historical costs. The Office recognizes 

that this approach does not account for 

inflationary factors that would likely 

increase costs and necessitate higher 

fees in the out years. 

It is common practice in the Federal 

government to set individual fees at a 

level sufficient to recover the cost of 

that single service. In fact, official 

guidance on user fees, as cited in OMB 

Circular A–25: User Charges, states that 

user charges (fees) should be sufficient 

to recover the full cost to the Federal 

government of providing the particular 

service, resource, or good, when the 

government is acting in its capacity as 

sovereign. 

Alternative 2 would not generate 

enough aggregate revenue to sufficiently 

cover the aggregate cost of patent 

operations and support the Office’s 

strategic priorities to optimize the 

quality and timeliness of patent 

processing, deliver high quality and 

timely PTAB decisions, continue 

investing in modernizing the USPTO IT 

systems and infrastructure, or 

implement a sustainable funding model 

for operations (this alternative produces 

enough revenue to meet the minimum 

patent operating reserve level by the end 

of FY 2019, but does not keep building 

towards the optimal patent operating 

reserve level). It is important for the 

Office to balance accomplishing the 

priorities together so that it has 

sufficient resources to maintain them. 

Both the current and final fee 

schedules are structured to collect more 

fees at the back-end (i.e. issue fees and 

maintenance fees), where the patent 

owner has the best information about a 

patent’s value, rather than at the frontend (i.e. filing fees, search fees, and 

examination fees), when applicants are 

most uncertain about the value of their 

art, even though the front-end services 

are costlier to the Office. This 

alternative presents significant barriers 

to those seeking patent protection, 

because if the Office were to 

immediately shift from the current 

front-end/back-end balance to a unit 

cost recovery structure, front-end fees 

would increase significantly, nearly 

tripling in some cases (e.g., search fees), 

even with small and micro entity fee 

reductions. 

The Office has not attempted to 

estimate the quantitative elasticity 

impacts for application filings (e.g., 

filing, search, and examination fees) or 

maintenance renewals (all stages) due to 

a lack of historical data that could 

inform such a significant shift in the 

Office’s fee setting methodology. 

However, the Office suspects that the 

high costs of entry into the patent 

system could lead to a significant 

decrease in the incentives to invest in 

innovative activities among all entities 

and especially for small and micro 

entities. Under the current fee schedule, 

maintenance fees subsidize all 

applications, including those 

applications for which no claims are 

allowed. By insisting on unit cost 

payment at each point in the application 

process, the Office is effectively 

charging high fees for every attempted 

patent, meaning those applicants who 

have less information about the 

patentability of their claims may be less 

likely to pursue initial prosecution (e.g., 

filing, search, and examination) or 

subsequent actions to continue 

prosecution (e.g., RCE). The ultimate 

effect of these changes in behavior are 

likely to stifle innovation. 

Similarly, the Office suspects that 

renewal rates could change as well, 

given significant fee reductions for 

maintenance fees at each of the three 

stages. While some innovators and firms 

may choose to file fewer applications 

given the higher front-end costs, others, 

whose claims are allowed or upheld, 

may seek to fully maximize the benefits 

of obtaining a patent by keeping those 

patents in force for longer than they 

would have previously (i.e., under the 

current fee schedule). In the aggregate, 

patents that are maintained beyond their 

useful life weaken the intellectual 

property system by slowing the rate of 

public accessibility and follow-on 

inventions, which is contrary to the 

Office’s policy factor of fostering 

innovation. In sum, this alternative is 

inadequate to accomplish the goals and 

strategies as stated in Part III of this 

rulemaking. 

The fee schedule for Alternative 2: 

Unit Cost Recovery is available at http:// 

www.uspto.gov/about-us/performanceand-planning/fee-setting-and-adjusting, 

in the document entitled ‘‘USPTO 

Setting and Adjusting Patent Fees 

during Fiscal Year 2017—FRFA 

Tables.’’ For the comparison between 

unit cost recovery fees and current fees, 

the ‘‘current fees’’ column displays the 

fees that are in effect as of January 14, 

2017. 

b. Alternative 3: Across the Board 

Adjustment 

In years past, the USPTO used its 

authority to adjust statutory fees 

annually according to increases in the 

consumer price index (CPI), which is a 

commonly used measure of inflation. 

Building on this prior approach and 

incorporating the additional authority 

under the AIA to set small and micro 

entity fees, Alternative 3 would set fees 

by applying a one-time 5.0 percent, 

across the board inflationary increase to 

the baseline (current fees) beginning in 

FY 2017. Five percent represents the 

change in revenue needed to cover 

budgetary requirements. 

As estimated by the Congressional 

Budget Office, projected CPI rates by 

fiscal year are: 2.17 percent in FY 2017, 

2.39 percent in FY 2018, 2.38 percent in 

FY 2019, and 2.42 percent in both FY 

2020 and FY 2021. The Office elected 

not to apply the estimated cumulative 

inflationary adjustment (9.96 percent), 

from FY 2017 through FY 2021, because 

doing so would result in significantly 

more fee revenue than needed to meet 

the Office’s core mission and strategic 

priorities. Under this alternative, nearly 

every existing fee would be increased 

and no fees would be discontinued or 

reduced. Given that all entities (large, 


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small, and micro) would pay 

unilaterally higher fees, this alternative 

does not adequately support the Office’s 

policy factor to foster innovation for all. 

The fee schedule for Alternative 3: 

Across the Board Adjustment is 

available at http://www.uspto.gov/ 

about-us/performance-and-planning/ 

fee-setting-and-adjusting, in the 

document entitled ‘‘USPTO Setting and 

Adjusting Patent Fees during Fiscal 

Year 2017—FRFA Tables.’’ For the 

comparison between across the board 

fees and current fees, the ‘‘current fees’’ 

column displays the fees that are in 

effect as of January 14, 2017. 

c. Alternative 4: Baseline (Current Fee 

Schedule) 

The Office considered a no-action 

alternative. This alternative would 

retain the current fee schedule, meaning 

that the Office would continue the small 

and micro entity discounts that 

Congress provided in Section 10 of the 

Act and maintain fees as of January 14, 

2017. 

This approach would not provide 

sufficient aggregate revenue to 

accomplish the Office’s rulemaking 

goals, as set forth in the FY 2018 

President’s Budget or the Strategic Plan. 

Optimizing patent quality and 

timeliness, delivering high quality and 

timely PTAB decisions and investing in 

modernizing the USPTO IT systems and 

infrastructure would continue, but at a 

slower rate due to funding limitations. 

Sustainable funding would not be 

achieved. Without a fee increase, the 

USPTO would draw the operating 

reserve down to nothing by FY 2020, 

and have to cut expenditures. 

iii. Alternatives Specified by the RFA 

The RFA provides that an agency also 

consider four specified ‘‘alternatives’’ or 

approaches, namely: (1) Establishing 

different compliance or reporting 

requirements or timetables that take into 

account the resources available to small 

entities; (2) clarifying, consolidating, or 

simplifying compliance and reporting 

requirements under the rule for small 

entities; (3) using performance rather 

than design standards; and (4) 

exempting small entities from coverage 

of the rule, or any part thereof. 5 U.S.C. 

604(c). The USPTO discusses each of 

these specified alternatives or 

approaches below and describes how 

this rule is adopting these approaches. 

Differing Requirements 

As discussed above, the changes in 

this rule would continue existing fee 

discounts for small and micro entities 

that take into account the reduced 

resources available to them as well as 

offer new discounts when applicable 

under AIA authority. Specifically, micro 

entities would continue to pay a 75 

percent reduction in patent fees and 

non-micro, small entities would 

continue to pay 50 percent of the fee. 

This rule sets fee levels but does not 

set or alter procedural requirements for 

asserting small or micro entity status. To 

pay reduced patent fees, small entities 

must merely assert small entity status to 

pay reduced patent fees. The small 

entity may make this assertion by either 

checking a box on the transmittal form, 

‘‘Applicant claims small entity status,’’ 

or by paying the small entity fee exactly. 

The process to claim micro entity status 

is similar in that eligible entities need 

only submit a written certification of 

their status prior to or at the time a 

reduced fee is paid. This rule does not 

change any reporting requirements for 

any small or micro entity. For both 

small and micro entities, the burden to 

establish their status is nominal (making 

an assertion or submitting a 

certification) and the benefit of the fee 

reductions (50 percent for small entities 

and 75 percent for micro entities) is 

significant. 

This rule makes the best use of 

differing requirements for small and 

micro entities. It also makes the best use 

of the redesigned fee structure, as 

discussed further below. 

Clarification, Consolidation, or 

Simplification of Requirements 

This rule does not take any actions 

beyond setting or adjusting patent fees; 

therefore, there are no clarifications, 

consolidations, or simplifications 

subject to discussion here. 

Performance Standards 

Performance standards do not apply 

to the current rule. 

Exemption for Small and Micro Entities 

This rule maintains a 50 percent 

reduction in fees for small entities and 

a 75 percent reduction in fees for micro 

entities. The Office considered 

exempting small and micro entities from 

paying patent fees, but determined that 

the USPTO would lack statutory 

authority for this approach. Section 

10(b) of the Act provides that ‘‘fees set 

or adjusted under subsection (a) for 

filing, searching, examining, issuing, 

appealing, and maintaining patent 

applications and patents shall be 

reduced by 50 percent [for small 

entities] and shall be reduced by 75 

percent [for micro entities]’’ (emphasis 

added). Neither the AIA nor any other 

statute authorizes the USPTO simply to 

exempt small or micro entities, as a 

class of applicants, from paying patent 

fees. 

7. Identification, to the Extent 

Practicable, of All Relevant Federal 

Rules Which May Duplicate, Overlap, or 

Conflict With the Rule 

The USPTO is the sole agency of the 

United States Government responsible 

for administering the provisions of title 

35, United States Code, pertaining to 

examining and granting patents. It is 

solely responsible for issuing rules to 

comply with Section 10 of the AIA. No 

other Federal, state, or local entity has 

jurisdiction over the examination and 

granting of patents. 

Other countries, however, have their 

own patent laws, and an entity desiring 

a patent in a particular country must 

make an application for patent in that 

country, in accordance with the 

applicable law. Although the potential 

for overlap exists internationally, this 

cannot be avoided except by treaty 

(such as the Paris Convention for the 

Protection of Industrial Property, or the 

PCT). Nevertheless, the USPTO believes 

that there are no other duplicative or 

overlapping rules. 

C. Executive Order 12866 (Regulatory 

Planning and Review) 

This rule has been determined to be 

significant for purposes of Executive 

Order 12866 (Sept. 30, 1993), as 

amended by Executive Order 13258 

(Feb. 26, 2002) and Executive Order 

13422 (Jan. 18, 2007). The Office has 

developed a RIA as required for 

rulemakings deemed to be significant. 

The complete RIA is available at http:// 

www.uspto.gov/about-us/performanceand-planning/fee-setting-and-adjusting. 

D. Executive Order 13563 (Improving 

Regulation and Regulatory Review) 

The Office has complied with 

Executive Order 13563 (Jan. 18, 2011). 

Specifically, the Office has, to the extent 

feasible and applicable: (1) Made a 

reasoned determination that the benefits 

justify the costs of the rule; (2) tailored 

the rule to impose the least burden on 

society consistent with obtaining the 

regulatory objectives; (3) selected a 

regulatory approach that maximizes net 

benefits; (4) specified performance 

objectives; (5) identified and assessed 

available alternatives; (6) involved the 

public in an open exchange of 

information and perspectives among 

experts in relevant disciplines, affected 

stakeholders in the private sector, and 

the public as a whole, and provided online access to the rulemaking docket; (7) 

attempted to promote coordination, 

simplification, and harmonization 

across government agencies and 


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identified goals designed to promote 

innovation; (8) considered approaches 

that reduce burdens and maintain 

flexibility and freedom of choice for the 

public; and (9) ensured the objectivity of 

scientific and technological information 

and processes. 

E. Executive Order 13771 (Reducing 

Regulation and Controlling Regulatory 

Costs) 

This final rule is not subject to the 

requirements of Executive Order 13771 

(82 FR 9339, February 3, 2017) because 

this rule involves a transfer payment. 

F. Executive Order 13132 (Federalism) 

This rule does not contain policies 

with federalism implications sufficient 

to warrant preparation of a Federalism 

Assessment under Executive Order 

13132 (Aug. 4, 1999). 

G. Congressional Review Act 

Under the Congressional Review Act 

provisions of the Small Business 

Regulatory Enforcement Fairness Act of 

1996 (5 U.S.C. 801–808), prior to issuing 

any final rule, the USPTO will submit 

a report containing the final rule and 

other required information to the U.S. 

Senate, the U.S. House of 

Representatives, and the Comptroller 

General of the Government 

Accountability Office. The changes in 

this final rule are expected to result in 

an annual effect on the economy of $100 

million or more, a major increase in 

costs or prices, or significant adverse 

effects on competition, employment, 

investment, productivity, innovation, or 

the ability of United States-based 

enterprises to compete with foreignbased enterprises in domestic and 

export markets. Therefore, this final rule 

is expected to result in a ‘‘major rule’’ 

as defined in 5 U.S.C. 804(2). 

H. Unfunded Mandates Reform Act of 

1995 

The changes in this rule do not 

involve a Federal intergovernmental 

mandate that will result in the 

expenditure by state, local, and tribal 

governments, in the aggregate, of $100 

million (as adjusted) or more in any one 

year, or a Federal private sector mandate 

that will result in the expenditure by the 

private sector of $100 million (as 

adjusted) or more in any one year, and 

will not significantly or uniquely affect 

small governments. Therefore, no 

actions are necessary under the 

provisions of the Unfunded Mandates 

Reform Act of 1995. See 2 U.S.C. 1501– 

1571. 

I. Paperwork Reduction Act 

This rule involves information 

collection requirements that are subject 

to review by the Office of Management 

and Budget (OMB) under the Paperwork 

Reduction Act of 1995 (44 U.S.C. 3501 

et seq.). The collection of information 

involved in this rulemaking has been 

reviewed and previously approved by 

OMB under control numbers 0651– 

0016, 0651–0024, 0651–0031, 0651– 

0032, 0651–0033, 0651–0059, 0651– 

0064, and 0651–0069. 

Notwithstanding any other provision 

of law, no person is required to respond 

to nor shall a person be subject to a 

penalty for failure to comply with a 

collection of information subject to the 

requirements of the Paperwork 

Reduction Act unless that collection of 

information displays a currently valid 

OMB control number. 

List of Subjects 

37 CFR Part 1 

Administrative practice and 

procedure, Courts, Freedom of 

information, Inventions and patents, 

Reporting and record keeping 

requirements, Small businesses. 

37 CFR Parts 41 and 42 

Administrative practice and 

procedure, Inventions and patents, 

Lawyers. 

For the reasons set forth in the 

preamble, 37 CFR parts 1, 41, and 42 are 

to be amended as follows: 

PART 1—RULES OF PRACTICE IN 

PATENT CASES 

■ 1. The authority citation for part 1 

continues to read as follows: 

Authority: 35 U.S.C. 2(b)(2), unless 

otherwise noted. 

■ 2. Section 1.16 is amended by revising 

paragraphs (a) through (f) and (h) 

through (r) to read as follows: 

§ 1.16 National application filing, search, 

and examination fees. 

(a) Basic fee for filing each application 

under 35 U.S.C. 111 for an original 

patent, except design, plant, or 

provisional applications: 

By a micro entity (§ 1.29) .................. $75.00 

By a small entity (§ 1.27(a)) ............... 150.00 

By a small entity (§ 1.27(a)) if the application is submitted in compliance with the Office electronic filing system (§ 1.27(b)(2)) ................. 75.00 

By other than a small or micro entity 300.00 

(b) Basic fee for filing each 

application under 35 U.S.C. 111 for an 

original design patent: 

By a micro entity (§ 1.29) .................. $50.00 

By a small entity (§ 1.27(a)) ............... 100.00 

By other than a small or micro entity 200.00 

(c) Basic fee for filing each application 

for an original plant patent: 

By a micro entity (§ 1.29) .................. $50.00 

By a small entity (§ 1.27(a)) ............... 100.00 

By other than a small or micro entity 200.00 

(d) Basic fee for filing each 

provisional application: 

By a micro entity (§ 1.29) .................. $70.00 

By a small entity (§ 1.27(a)) ............... 140.00 

By other than a small or micro entity 280.00 

(e) Basic fee for filing each application 

for the reissue of a patent: 

By a micro entity (§ 1.29) .................. $75.00 

By a small entity (§ 1.27(a)) ............... 150.00 

By other than a small or micro entity 300.00 

(f) Surcharge for filing the basic filing 

fee, search fee, examination fee, or the 

inventor’s oath or declaration on a date 

later than the filing date of the 

application, an application that does not 

contain at least one claim on the filing 

date of the application, or an 

application filed by reference to a 

previously filed application under 

§ 1.57(a), except provisional 

applications: 

By a micro entity (§ 1.29) .................. $40.00 

By a small entity (§ 1.27(a)) ............... 80.00 

By other than a small or micro entity 160.00 

* * * * * 

(h) In addition to the basic filing fee 

in an application, other than a 

provisional application, for filing or 

later presentation at any other time of 

each claim in independent form in 

excess of 3: 

By a micro entity (§ 1.29) .................. $115.00 

By a small entity (§ 1.27(a)) ............... 230.00 

By other than a small or micro entity 460.00 

(i) In addition to the basic filing fee 

in an application, other than a 

provisional application, for filing or 

later presentation at any other time of 

each claim (whether dependent or 

independent) in excess of 20 (note that 

§ 1.75(c) indicates how multiple 

dependent claims are considered for fee 

calculation purposes): 

By a micro entity (§ 1.29) .................. $25.00 

By a small entity (§ 1.27(a)) ............... 50.00 

By other than a small or micro entity 100.00 

(j) In addition to the basic filing fee in 

an application, other than a provisional 

application, that contains, or is 

amended to contain, a multiple 

dependent claim, per application: 

By a micro entity (§ 1.29) .................. $205.00 

By a small entity (§ 1.27(a)) ............... 410.00 

By other than a small or micro entity 820.00 

(k) Search fee for each application 

filed under 35 U.S.C. 111 for an original 


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patent, except design, plant, or 

provisional applications: 

By a micro entity (§ 1.29) .................. $165.00 

By a small entity (§ 1.27(a)) ............... 330.00 

By other than a small or micro entity 660.00 

(l) Search fee for each application 

under 35 U.S.C. 111 for an original 

design patent: 

By a micro entity (§ 1.29) .................. $40.00 

By a small entity (§ 1.27(a)) ............... 80.00 

By other than a small or micro entity 160.00 

(m) Search fee for each application for 

an original plant patent: 

By a micro entity (§ 1.29) .................. $105.00 

By a small entity (§ 1.27(a)) ............... 210.00 

By other than a small or micro entity 420.00 

(n) Search fee for each application for 

the reissue of a patent: 

By a micro entity (§ 1.29) .................. $165.00 

By a small entity (§ 1.27(a)) ............... 330.00 

By other than a small or micro entity 660.00 

(o) Examination fee for each 

application filed under 35 U.S.C. 111 for 

an original patent, except design, plant, 

or provisional applications: 

By a micro entity (§ 1.29) .................. $190.00 

By a small entity (§ 1.27(a)) ............... 380.00 

By other than a small or micro entity 760.00 

(p) Examination fee for each 

application under 35 U.S.C. 111 for an 

original design patent: 

By a micro entity (§ 1.29) .................. $150.00 

By a small entity (§ 1.27(a)) ............... 300.00 

By other than a small or micro entity 600.00 

(q) Examination fee for each 

application for an original plant patent: 

By a micro entity (§ 1.29) .................. $155.00 

By a small entity (§ 1.27(a)) ............... 310.00 

By other than a small or micro entity 620.00 

(r) Examination fee for each 

application for the reissue of a patent: 

By a micro entity (§ 1.29) .................. $550.00 

By a small entity (§ 1.27(a)) ............... 1,100.00 

By other than a small or micro entity 2,200.00 

* * * * * 

■ 3. Section 1.17 is amended by revising 

paragraphs (e), (h), (m), (p) and (t) to 

read as follows: 

§ 1.17 Patent application and 

reexamination processing fees. 

* * * * * 

(e) To request continued examination 

pursuant to § 1.114: 

(1) For filing a first request for 

continued examination pursuant to 

§ 1.114 in an application: 

By a micro entity (§ 1.29) .................. $325.00 

By a small entity (§ 1.27(a)) ............... 650.00 

By other than a small or micro entity 1,300.00 

(2) For filing a second or subsequent 

request for continued examination 

pursuant to § 1.114 in an application: 

By a micro entity (§ 1.29) .................. $475.00 

By a small entity (§ 1.27(a)) ............... 950.00 

By other than a small or micro entity 1,900.00 

* * * * * 

(h) For filing a petition under one of 

the following sections which refers to 

this paragraph (h): 

By a micro entity (§ 1.29) .................. $35.00 

By a small entity (§ 1.27(a)) ............... 70.00 

By other than a small or micro entity 140.00 

§ 1.84—for accepting color drawings 

or photographs. 

§ 1.91—for entry of a model or 

exhibit. 

§ 1.102(d)—to make an application 

special. 

§ 1.138(c)—to expressly abandon an 

application to avoid publication. 

§ 1.313—to withdraw an application 

from issue. 

§ 1.314—to defer issuance of a patent. 

* * * * * 

(m) For filing a petition for the revival 

of an abandoned application for a 

patent, for the delayed payment of the 

fee for issuing each patent, for the 

delayed response by the patent owner in 

any reexamination proceeding, for the 

delayed payment of the fee for 

maintaining a patent in force, for the 

delayed submission of a priority or 

benefit claim, for the extension of the 

twelve-month (six-month for designs) 

period for filing a subsequent 

application (§§ 1.55(c) and (e), 1.78(b), 

(c), and (e), 1.137, 1.378, and 1.452), or 

for filing a petition to excuse applicant’s 

failure to act within prescribed time 

limits in an international design 

application (§ 1.1051): 

By a micro entity (§ 1.29) .................. $500.00 

By a small entity (§ 1.27(a)) ............... 1,000.00 

By other than a small or micro entity 2,000.00 

* * * * * 

(p) For an information disclosure 

statement under § 1.97(c) or (d): 

By a micro entity (§ 1.29) .................. $60.00 

By a small entity (§ 1.27(a)) ............... 120.00 

By other than a small or micro entity 240.00 

* * * * * 

(t) For filing a petition to convert an 

international design application to a 

design application under 35 U.S.C. 

chapter 16 (§ 1.1052): 

By a micro entity (§ 1.29) .................. $45.00 

By a small entity (§ 1.27(a)) ............... 90.00 

By other than a small or micro entity 180.00 

■ 4. Section 1.18 is amended by revising 

paragraphs (a), (b), and (c) to read as 

follows: 

§ 1.18 Patent post allowance (including 

issue) fees. 

(a)(1) Issue fee for issuing each 

original patent, except a design or plant 

patent, or for issuing each reissue 

patent: 

By a micro entity (§ 1.29) .................. $250.00 

By a small entity (§ 1.27(a)) ............... 500.00 

By other than a small or micro entity 1,000.00 

(2) [Reserved] 

(b)(1) Issue fee for issuing an original 

design patent: 

By a micro entity (§ 1.29) .................. $175.00 

By a small entity (§ 1.27(a)) ............... 350.00 

By other than a small or micro entity 700.00 

(2) [Reserved] 

(3) Issue fee for issuing an 

international design application 

designating the United States, where the 

issue fee is paid through the 

International Bureau (Hague Agreement 

Rule 12(3)(c)) as an alternative to paying 

the issue fee under paragraph (b)(1) of 

this section: The amount established in 

Swiss currency pursuant to Hague 

Agreement Rule 28 as of the date of 

mailing of the notice of allowance 

(§ 1.311). 

(c)(1) Issue fee for issuing an original 

plant patent: 

By a micro entity (§ 1.29) .................. $200.00 

By a small entity (§ 1.27(a)) ............... 400.00 

By other than a small or micro entity 800.00 

(2) [Reserved] 

* * * * * 

■ 5. Section 1.19 is amended by revising 

paragraphs (b) introductory text and 

(b)(1), removing and reserving 

paragraph (b)(2), revising paragraphs 

(b)(4) and (c), removing and reserving 

paragraphs (d) and (e), revising 

paragraph (f), removing and reserving 

paragraph (g), and adding paragraphs (h) 

through (l) to read as follows: 

§ 1.19 Document supply fees. 

* * * * * 

(b) Copies of Office documents to be 

provided in paper, or in electronic form, 

as determined by the Director (for other 

patent-related materials see § 1.21(k)): 

(1) Copy of a patent application as 

filed, or a patent-related file wrapper 

and contents, stored in paper in a paper 

file wrapper, in an image format in an 

image file wrapper, or if color 

documents, stored in paper in an 

Artifact Folder: 

(i) If provided on paper: 

(A) Application as filed: $35.00. 

(B) File wrapper and contents: 

$280.00. 

(C) [Reserved] 

(D) Individual application documents, 

other than application as filed, per 

document: $25.00. 

(ii) If provided on compact disc or 

other physical electronic medium in 

single order or if provided electronically 

(e.g., by electronic transmission) other 

than on a physical electronic medium: 

(A) Application as filed: $35.00. 

(B) File wrapper and contents: $55.00. 


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(C) [Reserved] 

(iii) [Reserved] 

(iv) If provided to a foreign 

intellectual property office pursuant to 

a bilateral or multilateral agreement (see 

§ 1.14(h)): $0.00. 

* * * * * 

(4) For assignment records, abstract of 

title and certification, per patent: 

$35.00. 

(c) Library service (35 U.S.C. 13): For 

providing to libraries copies of all 

patents issued annually, per annum: 

$50.00. 

* * * * * 

(f) Uncertified copy of a non-United 

States patent document, per document: 

$25.00. 

* * * * * 

(h) Copy of Patent Grant Single-Page 

TIFF Images (52 week subscription): 

$10,400.00. 

(i) Copy of Patent Grant Full-Text W/ 

Embedded Images, Patent Application 

Publication Single-Page TIFF Images, or 

Patent Application Publication FullText W/Embedded Images (52 week 

subscription): $5,200.00. 

(j) Copy of Patent Technology 

Monitoring Team (PTMT) Patent 

Bibliographic Extract and Other DVD 

(Optical Disc) Products: $50.00. 

(k) Copy of U.S. Patent Custom Data 

Extracts: $100.00. 

(l) Copy of Selected Technology 

Reports, Miscellaneous Technology 

Areas: $30.00. 

■ 6. Section 1.20 is amended by revising 

paragraphs (a) through (c) and (e) 

through (g) to read as follows: 

§ 1.20 Post issuance fees. 

(a) For providing a certificate of correction for applicant’s mistake 

(§ 1.323) ........................................... $150.00 

(b) Processing fee for correcting 

inventorship in a patent (§ 1.324) 150.00 

(c) In reexamination proceedings: 

(1)(i) For filing a request for ex parte 

reexamination (§ 1.510(a)) having: 

(A) Forty (40) or fewer pages; 

(B) Lines that are double-spaced or 

one-and-a-half spaced; 

(C) Text written in a non-script type 

font such as Arial, Times New Roman, 

or Courier; 

(D) A font size no smaller than 12 

point; 

(E) Margins which conform to the 

requirements of § 1.52(a)(1)(ii); and 

(F) Sufficient clarity and contrast to 

permit direct reproduction and 

electronic capture by use of digital 

imaging and optical character 

recognition. 

By a micro entity (§ 1.29) .................. $1,500.00 

By a small entity (§ 1.27(a)) ............... 3,000.00 

By other than a small or micro entity 6,000.00 

(ii) The following parts of an ex parte 

reexamination request are excluded 

from paragraphs (c)(1)(i)(A) through (F) 

of this section: 

(A) The copies of every patent or 

printed publication relied upon in the 

request pursuant to § 1.510(b)(3); 

(B) The copy of the entire patent for 

which reexamination is requested 

pursuant to § 1.510(b)(4); and 

(C) The certifications required 

pursuant to § 1.510(b)(5) and (6). 

(2) For filing a request for ex parte 

reexamination (§ 1.510(b)) which has 

sufficient clarity and contrast to permit 

direct reproduction and electronic 

capture by use of digital imaging and 

optical character recognition, and which 

otherwise does not comply with the 

provisions of paragraph (c)(1) of this 

section: 

By a micro entity (§ 1.29) .................. $3,000.00 

By a small entity (§ 1.27(a)) ............... 6,000.00 

By other than a small or micro entity 12,000.00 

(3) For filing with a request for 

reexamination or later presentation at 

any other time of each claim in 

independent form in excess of three and 

also in excess of the number of claims 

in independent form in the patent under 

reexamination: 

By a micro entity (§ 1.29) .................. $115.00 

By a small entity (§ 1.27(a)) ............... 230.00 

By other than a small or micro entity 460.00 

(4) For filing with a request for 

reexamination or later presentation at 

any other time of each claim (whether 

dependent or independent) in excess of 

20 and also in excess of the number of 

claims in the patent under 

reexamination (note that § 1.75(c) 

indicates how multiple dependent 

claims are considered for fee calculation 

purposes): 

By a micro entity (§ 1.29) .................. $25.00 

By a small entity (§ 1.27(a)) ............... 50.00 

By other than a small or micro entity 100.00 

* * * * * 

(e) For maintaining an original or any 

reissue patent, except a design or plant 

patent, based on an application filed on 

or after December 12, 1980, in force 

beyond four years, the fee being due by 

three years and six months after the 

original grant: 

By a micro entity (§ 1.29) .................. $400.00 

By a small entity (§ 1.27(a)) ............... 800.00 

By other than a small or micro entity 1,600.00 

(f) For maintaining an original or any 

reissue patent, except a design or plant 

patent, based on an application filed on 

or after December 12, 1980, in force 

beyond eight years, the fee being due by 

seven years and six months after the 

original grant: 

By a micro entity (§ 1.29) .................. $900.00 

By a small entity (§ 1.27(a)) ............... 1,800.00 

By other than a small or micro entity 3,600.00 

(g) For maintaining an original or any 

reissue patent, except a design or plant 

patent, based on an application filed on 

or after December 12, 1980, in force 

beyond twelve years, the fee being due 

by eleven years and six months after the 

original grant: 

By a micro entity (§ 1.29) .................. $1,850.00 

By a small entity (§ 1.27(a)) ............... 3,700.00 

By other than a small or micro entity 7,400.00 

* * * * * 

■ 7. Section 1.21 is revised to read as 

follows: 

§ 1.21 Miscellaneous fees and charges. 

The Patent and Trademark Office has 

established the following fees for the 

services indicated: 

(a) Registration of attorneys and 

agents: 

(l) For admission to examination for 

registration to practice: 

(i) Application Fee (non-refundable): 

$100.00. 

(ii) Registration examination fee. 

(A) For test administration by 

commercial entity: $200.00. 

(B) For test administration by the 

USPTO: $450.00. 

(iii) For USPTO-administered review 

of registration examination: $450.00. 

(2) On registration to practice or grant 

of limited recognition: 

(i) On registration to practice under 

§ 11.6 of this chapter: $200.00. 

(ii) On grant of limited recognition 

under § 11.9(b) of this chapter: $200.00. 

(iii) On change of registration from 

agent to attorney: $100.00. 

(3) [Reserved] 

(4) For certificate of good standing as 

an attorney or agent: 

(i) Standard: $40.00. 

(ii) Suitable for framing: $50.00. 

(5) For review of decision: 

(i) By the Director of Enrollment and 

Discipline under § 11.2(c) of this 

chapter: $400.00. 

(ii) Of the Director of Enrollment and 

Discipline under § 11.2(d) of this 

chapter: $400.00. 

(6) Recovery/Retrieval of OED 

Information System Customer Interface 

account by USPTO: 

(i) For USPTO-assisted recovery of ID 

or reset of password: $70.00. 

(ii) For USPTO-assisted change of 

address: $70.00. 

(7) [Reserved] 

(8) [Reserved] 

(9)(i) Delinquency fee: $50.00. 

(ii) Administrative reinstatement fee: 

$200.00. 

(10) On application by a person for 

recognition or registration after 


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disbarment or suspension on ethical 

grounds, or resignation pending 

disciplinary proceedings in any other 

jurisdiction; on application by a person 

for recognition or registration who is 

asserting rehabilitation from prior 

conduct that resulted in an adverse 

decision in the Office regarding the 

person’s moral character; and on 

application by a person for recognition 

or registration after being convicted of a 

felony or crime involving moral 

turpitude or breach of fiduciary duty; on 

petition for reinstatement by a person 

excluded or suspended on ethical 

grounds, or excluded on consent from 

practice before the Office: $1,600.00. 

(b) Deposit accounts: 

(1) [Reserved] 

(2) Service charge for each month 

when the balance at the end of the 

month is below $1,000: $25.00. 

(3) Service charge for each month 

when the balance at the end of the 

month is below $300 for restricted 

subscription deposit accounts used 

exclusively for subscription order of 

patent copies as issued: $25.00. 

(c) [Reserved] 

(d) [Reserved] 

(e) International type search reports: 

For preparing an international type 

search report of an international type 

search made at the time of the first 

action on the merits in a national patent 

application: $40.00. 

(f) [Reserved] 

(g) [Reserved] 

(h) For recording each assignment, 

agreement, or other paper relating to the 

property in a patent or application, per 

property: 

(1) If submitted electronically, on or 

after January 1, 2014: $0.00. 

(2) If not submitted electronically: 

$50.00. 

(i) Publication in Official Gazette: For 

publication in the Official Gazette of a 

notice of the availability of an 

application or a patent for licensing or 

sale: Each application or patent: $25.00. 

(j) [Reserved] 

(k) [Reserved] 

(l) [Reserved] 

(m) For processing each payment 

refused (including a check returned 

‘‘unpaid’’) or charged back by a 

financial institution: $50.00. 

(n) For handling an application in 

which proceedings are terminated 

pursuant to § 1.53(e): $130.00. 

(o) The submission of very lengthy 

sequence listings (mega-sequence 

listings) are subject to the following 

fees: 

(1) Submission of sequence listings in 

electronic form ranging in size from 300 

MB to 800 MB: 

By a micro entity (§ 1.29) .................. $250.00 

By a small entity (§ 1.27(a)) ............... 500.00 

By other than a small or micro entity 1,000.00 

(2) Submission of sequence listings in 

electronic form exceeding 800 MB in 

size: 

By a micro entity (§ 1.29) .................. $2,500.00 

By a small entity (§ 1.27(a)) ............... 5,000.00 

By other than a small or micro entity 10,000.00 

(p) Additional Fee for Overnight 

Delivery: $40.00. 

(q) Additional Fee for Expedited 

Service: $160.00. 

■ 8. Section 1.362 is amended by 

revising paragraph (b) to read as follows: 

§ 1.362 Time for payment of maintenance 

fees. 

* * * * * 

(b) Maintenance fees are not required 

for any plant patents or for any design 

patents. 

* * * * * 

■ 9. Section 1.445 is amended by adding 

paragraph (a)(5) to read as follows: 

§ 1.445 International application filing, 

processing and search fees. 

(a) * * * 

(5) Late furnishing fee for providing a 

sequence listing in response to an 

invitation under PCT Rule 13ter: 

By a micro entity (§ 1.29) .................. $75.00 

By a small entity (§ 1.27(a)) ............... 150.00 

By other than a small or micro entity 300.00 

* * * * * 

■ 10. Section 1.482 is amended by 

revising the section heading and adding 

paragraph (c) to read as follows: 

§ 1.482 International preliminary 

examination and processing fees. 

* * * * * 

(c) Late furnishing fee for providing a 

sequence listing in response to an 

invitation under PCT Rule 13ter: 

By a micro entity (§ 1.29) .................. $75.00 

By a small entity (§ 1.27(a)) ............... 150.00 

By other than a small or micro entity 300.00 

■ 11. Section 1.492 is amended by 

revising paragraphs (a), (b)(2) through 

(4), (c) introductory text, (c)(2), and (d) 

through (f) to read as follows: 

§ 1.492 National stage fees. 

* * * * * 

(a) The basic national fee for an 

international application entering the 

national stage under 35 U.S.C. 371: 

By a micro entity (§ 1.29) .................. $75.00 

By a small entity (§ 1.27(a)) ............... 150.00 

By other than a small or micro entity 300.00 

(b) * * * 

(2) If the search fee as set forth in 

§ 1.445(a)(2) has been paid on the 

international application to the United 

States Patent and Trademark Office as 

an International Searching Authority: 

By a micro entity (§ 1.29) .................. $35.00 

By a small entity (§ 1.27(a)) ............... 70.00 

By other than a small or micro entity 140.00 

(3) If an international search report on 

the international application has been 

prepared by an International Searching 

Authority other than the United States 

International Searching Authority and is 

provided, or has been previously 

communicated by the International 

Bureau, to the Office: 

By a micro entity (§ 1.29) .................. $130.00 

By a small entity (§ 1.27(a)) ............... 260.00 

By other than a small or micro entity 520.00 

(4) In all situations not provided for 

in paragraph (b)(1), (2), or (3) of this 

section: 

By a micro entity (§ 1.29) .................. $165.00 

By a small entity (§ 1.27(a)) ............... 330.00 

By other than a small or micro entity 660.00 

(c) The examination fee for an 

international application entering the 

national stage under 35 U.S.C. 371: 

* * * * * 

(2) In all situations not provided for 

in paragraph (c)(1) of this section: 

By a micro entity (§ 1.29) .................. $190.00 

By a small entity (§ 1.27(a)) ............... 380.00 

By other than a small or micro entity 760.00 

(d) In addition to the basic national 

fee, for filing or on later presentation at 

any other time of each claim in 

independent form in excess of 3: 

By a micro entity (§ 1.29) .................. $115.00 

By a small entity (§ 1.27(a)) ............... 230.00 

By other than a small or micro entity 460.00 

(e) In addition to the basic national 

fee, for filing or on later presentation at 

any other time of each claim (whether 

dependent or independent) in excess of 

20 (note that § 1.75(c) indicates how 

multiple dependent claims are 

considered for fee calculation purposes): 

By a micro entity (§ 1.29) .................. $25.00 

By a small entity (§ 1.27(a)) ............... 50.00 

By other than a small or micro entity 100.00 

(f) In addition to the basic national 

fee, if the application contains, or is 

amended to contain, a multiple 

dependent claim, per application: 

By a micro entity (§ 1.29) .................. $205.00 

By a small entity (§ 1.27(a)) ............... 410.00 

By other than a small or micro entity 820.00 

* * * * * 

■ 12. Section 1.1031 is amended by 

revising paragraph (a) and adding 

paragraph (f) to read as follows: 

§ 1.1031 International design application 

fees. 

(a) International design applications 

filed through the Office as an office of 

indirect filing are subject to payment of 

a transmittal fee (35 U.S.C. 382(b) and 

Article 4(2)) in the amount of: 


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By a micro entity (§ 1.29) .................. $30.00 

By a small entity (§ 1.27(a)) ............... 60.00 

By other than a small or micro entity 120.00 

* * * * * 

(f) The designation fee for the United 

States shall consist of: 

(1) A first part established in Swiss 

currency pursuant to Hague Rule 28 

based on the combined amounts of the 

basic filing fee (§ 1.16(b)), search fee 

(§ 1.16(l)), and examination fee 

(§ 1.16(p)) for a design application. The 

first part is payable at the time of filing 

the international design application; 

and 

(2) A second part (issue fee) as 

provided in § 1.18(b). The second part is 

payable within the period specified in a 

notice of allowance (§ 1.311). 

PART 41—PRACTICE BEFORE THE 

PATENT TRIAL AND APPEAL BOARD 

■ 13. The authority citation for part 41 

continues to read as follows: 

Authority: 35 U.S.C. 2(b)(2), 3(a)(2)(A), 21, 

23, 32, 41, 134, 135, and Public Law 112–29. 

■ 14. Section 41.20 is amended by 

revising paragraph (b)(4) to read as 

follows: 

§ 41.20 Fees. 

* * * * * 

(b) * * * 

(4) In addition to the fee for filing a 

notice of appeal, for forwarding an 

appeal in an application or ex parte 

reexamination proceeding to the Board: 

By a micro entity (§ 1.29 of this 

chapter) ........................................... $560.00 

By a small entity (§ 1.27(a)) of this 

chapter) ........................................... 1,120.00 

By other than a small or micro entity 2,240.00 

PART 42—TRIAL PRACTICE BEFORE 

THE PATENT TRIAL AND APPEAL 

BOARD 

■ 15. The authority citation for part 42 

continues to read as follows: 

Authority: 35 U.S.C. 2(b)(2), 6, 21, 23, 41, 

135, 311, 312, 316, 321–326; Pub. L. 112–29, 

125 Stat. 284; and Pub. L. 112–274, 126 Stat. 

2456. 

■ 16. Section 42.15 is amended by 

revising paragraphs (a) and (b) to read 

as follows: 

§ 42.15 Fees. 

(a) On filing a petition for inter partes 

review of a patent, payment of the 

following fees are due: 

(1) Inter Partes Review request fee: 

$15,500.00. 

(2) Inter Partes Review PostInstitution fee: $15,000.00. 

(3) In addition to the Inter Partes 

Review request fee, for requesting 

review of each claim in excess of 20: 

$300.00. 

(4) In addition to the Inter Partes PostInstitution request fee, for requesting 

review of each claim in excess of 15: 

$600.00. 

(b) On filing a petition for post-grant 

review or covered business method 

patent review of a patent, payment of 

the following fees are due: 

(1) Post-Grant or Covered Business 

Method Patent Review request fee: 

$16,000.00. 

(2) Post-Grant or Covered Business 

Method Patent Review Post-Institution 

fee: $22,000.00. 

(3) In addition to the Post-Grant or 

Covered Business Method Patent 

Review request fee, for requesting 

review of each claim in excess of 20: 

$375.00 

(4) In addition to the Post-Grant or 

Covered Business Method Patent 

Review Post-Institution fee, for 

requesting review of each claim in 

excess of 15: $825.00. 

* * * * * 

Joseph Matal, 

Associate Solicitor, performing the functions 

and duties of the Under Secretary of 

Commerce for Intellectual Property and 

Director of the United States Patent and 

Trademark Office. 

[FR Doc. 2017–24390 Filed 11–13–17; 8:45 am] 

BILLING CODE 3510–16–P 


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