Any patent applicants receiving a Notice of Allowance from the U.S. Patent Office mailed after Oct. 1, 2013, should consider whether or not they want to take advantage of upcoming USPTO fee reductions. Starting Jan. 1, 2014, numerous USPTO fees will be drastically reduced. Utility issue fees will be reduced from $1,780 to $960, and publication fees ($300) will be eliminated. For large entities, delaying payment of the issue fee identified in the Notice of Allowance to on or after Jan. 1, 2014, could add up to nearly $1,120 in USPTO fee savings.
Before instructing counsel, patent applicants should also consider the drawbacks to delaying issue fee payment. Some risks associated with protracting the time between allowance and patent grant include: (1) greater possibility for the U.S. Patent Examiner to unexpectedly discover new prior art and rescind the Notice of Allowance (see M.P.E.P. §1308(II)); (2) a protracted duty of disclosure to the USPTO (see M.P.E.P. §609.04(b)(III)-(IV)); and (3) potentially reduced damages from an infringer resulting from the delayed patent grant date (35 USC §154).
The full Federal Register Notice with more details about fee changes can be found here.
Posted: October 29, 2013
