Patent Filing : Various Kinds of Fees

Patent Filing: A Patent is a legal document granted by the government giving an inventor the exclusive right to make, use, and sell an invention for a specified period of time (generally 20 years). During this tenure, an applicant can enjoy an exclusive monopoly to make, sell, and license its granted invention to any third party. But during the whole life cycle of a patent, there are various fees charged by the respective patent office which an applicant needs to pay. If the maintenance fees are not paid before the window closes, the patent expires as of the end of the grace period. Patent Filing

Thus, it is important for applicants to know various kinds of fees that are ought to be paid by them to keep their patents alive. This article is an attempt to list some of the important fees that an application should keep under consideration during patent filing.

Related Article: Cost of Patent Registration in India

Important fees to be considered during patent filing

Patent Application Filing Fees: In the United States jurisdiction, Patent application filing fees are set in accordance with 35 U.S.C. 41 and the Fee Setting Authority set forth in section 10 of Public Law 112-29, September 16, 2011 (the Leahy-Smith America Invents Act). Every applicant intending to file a patent application is obliged to pay this fee for a patent application to be prosecuted. However, the payable amount may vary depending upon the nature of the invention.

Patent Examination Fees: Applications are examined only when the examination fees are paid by the Applicant; otherwise, the applications are deemed to be abandoned. Examination fee needs to be paid within a period of 48 months from the priority date or filing date. It is to be kept in mind that earlier payment of fees entitles earlier examination, thus hastening the patent procedure.

Patent Search Fees: A patent search is a search of issued patents and published patent applications for inventions that might be considered important “prior art” references when applying for a patent. Prior art is anything in the public domain, patented or not patented, that may determine whether an invention is novel or not. Patent offices like the USPTO are obliged to do a thorough patent search before granting a patent right to an invention. This search involves searching various patent databases and non-patent databases to determine if the intended invention is novel.

Patent Post-Allowance Fees: A notice of allowance means an invention is being considered for patent grant. In other words, we can say is that a Notice of Allowance is issued by the United States Patent & Trademark Office to indicate that it believes an invention qualifies for a patent.

If an application is subject to publication under 37 CFR 1.211, the Notice of Allowance will require both the issue fee and the publication fee.  A “Notice of Allowance and Fee(s) Due” (PTOL-85) will be mailed to the correspondence address of record. The form includes the amount of any required publication fee, as provided in 37 CFR 1.211(e) and 1.311. The form includes an indication that the publication fee is due, if the application was subject to publication and the publication fee has not already been paid. Part B of the form (PTOL-85B) must be returned to the Office with the payment of the issue fee. Applicants are reminded to transmit an extra copy of the PTOL-85B when payment of the issue fee is by way of authorization to debit a Deposit Account.

Patent Extension of Time Fees: The time for taking any action by a patent owner in an inter parties reexamination proceeding will be extended only for sufficient cause and for a reasonable time specified. Any request for such extension must be filed on or before the day on which action by the patent owner is due, but in no case will the mere filing of a request effect any extension. Any request for such extension must be accompanied by the petition set forth in § 1.17(g). See § 1.304(a) for extensions of time for filing a notice of appeal to the U.S. Court of Appeals for the Federal Circuit.

Patent Maintenance Fees: Maintenance fees or renewal fees are fees that are paid to maintain a granted patent in force. A maintenance fee may be paid with the surcharge on the same date (anniversary date) the patent was granted in the 4th, 8th, or 12th year after grant to prevent the patent from expiring. Maintenance fees for a reissue patent are due based upon the schedule established for the original utility patent.

Miscellaneous Patent Fees: As the term implies these are those fees that are charged for other than administrative activities by the USPTO. This may include fees for test administration by the USPTO, on registration to practice or grant of limited recognition under § 11.9(b) or (c). This fees also include fees for certificate of good standing as an attorney or agent, fees for review of a decision by the Director of Enrollment and Discipline under § 11.2(c): $130.00, delinquency fee, and administrative reinstatement fee.

While doing a patent filing it is important for an applicant to consider these above-mentioned fees that an applicant will require to pay before grant, during prosecution, or after the grant of a patent.

Also Read: How to file Patent in India

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