Month: September 2012

New Patent Fees – Effective October 5, 2012

The USPTO has announced the new patent and trademark fee schedule effective October 5, 2012.  Below is a listing of common USPTO patent fees currently being paid and the fees effective October 5, 2012.

Fee Type

Current Fee

New Fee
Provisional Filing Fee

$125

$125
Utility Filing Fee

$95

$98
Utility Search Fee

$310

$310
Utility Exam Fee

$125

$125
1 Month Extension

$75

$75
2 Month Extension

$280

$285
3 Month Extension

$635

$645
RCE

$465

$465
Terminal Disclaimer

$80

$80
Issue Fee

$870

$885
1st Maintenance Fee

$565

$575
2nd Maintenance Fee

$1,425

$1,450
3rd Maintenance Fee

$2,365

$2,405

7 Provisions of America Invents Act (AIA) Implemented Today

Seven provisions of the AIA and USPTO implementing final rules for these provisions went into effect on September 16, 2012:

  • Inventor’s oath or declaration;
  • Preissuance submissions;
  • Supplemental examination;
  • Citation of patent owner claim scope statements;
  • Post grant review;
  • Inter partes review; and
  • Covered business method review

Third-Parties Can Now Submit Prior Art Documents to USPTO

Effective September 16, 2012 under the AIA, third-parties can now submit prior art documents for a pending patent application at the USPTO.  35 U.S.C. 122(e) specifies the following for third-party prior art submissions:

(e) PREISSUANCE SUBMISSIONS BY THIRD PARTIES.–

(1) IN GENERAL.–Any third party may submit for consideration and inclusion in the record of a patent application, any patent, published patent application, or other printed publication of potential relevance to the examination of the application, if such submission is made in writing before the earlier of–

     (A) the date a notice of allowance under section 151 is given or mailed in the application for patent; or

     (B) THE LATER OF.–

          (i) 6 months after the date on which the application for patent is first published under section 122 by the Office, or

          (ii) the date of the first rejection under section 132 of any claim by the examiner during the examination of the application for patent.

(2) OTHER REQUIREMENTS.–Any submission under paragraph (1) shall–

     (A) set forth a concise description of the asserted relevance of each submitted document;

     (B) be accompanied by such fee as the Director may prescribe; and

     (C) include a statement by the person making such submission affirming that the submission was made in compliance with this section.

U.S. Patent Law Changes for Corporate Entities

Effective September 16, 2012 under the AIA, the following important changes take effect for corporate entities applying for patent protection:

  1. Allowed to be “Patent Applicant”.  Corporate entities can now file patent applications in their own name instead of the name of the inventors as previously required.  Basically, any corporate entity that can show a proprietary interest in the patent rights will be able to apply for patent protection as the “patent applicant”.
  2. Must be Filed by Registered Patent Attorney.  Included within the new changes are requirements that corporate entities cannot file patent applications pro se(including provisional patent applications) and now must file patent applications via a U.S. Registered Patent Attorney. 

A good discussion regarding the new rule changes is located at Patenty-O.