Calculating USPTO Patent Filing Fees

When calculating patent filing fees, it’s important to check the current table of USPTO patent fees. For this post, we’ll take a look at fees for filing a U.S. non-provisional utility application, because this is the typical type of filing.

However, the patent fees table can be difficult to work with. For example, missing one of the required fees at the time of filing can add another fee called “Surcharge – Late filing fee, search fee, examination fee, inventor’s oath or declaration, or application filed without at least one claim or by reference” for $180, $80, or $40 (at the time of this post) based on your entity size. Determining your entity size under U.S. patent law can be a good start to calculating the proper fees for filing.

Determining Entity Size Eligibility

There are three possible entity sizes: Regular Entity, Small Entity (37 CFR 1.27), and Micro Entity (37 CFR 1.29). Small Entity fees are roughly half of regular entity fees. Similarly, Micro Entity fees are roughly half of Small Entity fees. Note that these are basic guidelines – check with an attorney for certainty in your particular situation.

Micro Entity

Micro Entity status became available on March 19, 2013 and has the most difficult threshold for qualification. The requirements are that the applicant cannot:

  • Be named on more than four previously filed applications.*
  • Have a gross income more than three times the median household income in the previous year from when the fee(s) is paid. The USPTO keeps an updated page for the gross income limit.
  • Be under an obligation to assign, grant, or convey a license or other ownership to another entity that does not meet the same income requirements as the inventor.

*Previous provisional applications, applications that must be assigned to an employer or university, or foreign applications in which the national stage fees were not paid don’t count toward this total.

However, simply choosing to pay the Micro Entity status fees does not establish entitlement to Micro Entity status. The applicant must further file a Certification of Micro Entity Status. Otherwise, the USPTO may send a notification of a missing fee with the additional surcharge stated above.

As a further caveat, Micro Entity Status must be re-asserted every time a fee is paid to the patent office. The applicant must re-verify the entire checklist with each fee payment. When enforcing a patent, the opposing counsel will likely argue that the patent is unenforceable due to falsification of the Micro Entity Status. This can bring in the applicant’s employment history, tax and marital records, and outside patent portfolio into the court room for each period in which a fee was paid.

Small Entity

In order to qualify for Small Entity status, an applicant can be either:

  • an individual person;
  • a small business concern (an entity that employees less than 500 persons, including affiliates, under 13 CFR 121.802); or
  • a 501(c)(3) nonprofit organization or a university or other institution of higher education.

However, the entity cannot be obligated to assign the patent or application to another entity that does not qualify for Small Entity status.

Small Entity status is easier to claim because the USPTO provides a checkbox to claim Small Entity Status when filing. Even if this checkbox is missed, the USPTO will automatically grant Small Entity status upon exact payment of small entity fees.

Assertion of Small Entity status is also simpler; it occurs at filing and upon payment of the issue fee.

Regular Undiscounted Entity

The highest fees are for the Regular Entity. These undiscounted patent filing fees must be paid when an entity does not qualify for Micro Entity or Small Entity status.

Typical Patent Filing Fees

A typical U.S. non-provisional utility patent application is filed with less than 100 pages, 20 claims or less, 3 independent claims or less, and usually no multiple independent claims. We are also assuming that the application is complete with:

  • proper fees paid;
  • an inventor’s oath or declaration for each inventor;
  • the application is in English with no translation necessary;
  • a complete specification;
  • at least one claim; and
  • drawings, if necessary to explain the invention.

The normal filing fees include the basic utility application filing fee (which can differ for electronic or paper filing), the utility search fee, and the utility examination fee. Let’s assume a hypothetical small entity electronic filing. At the time of this post, the electronic basic application utility filing fee is $75; the utility search fee is $330; and the utility examination fee is $380. Therefore, the total for our hypothetical is $785 in government fees to file. Note that this does not include attorneys’ fees or draftsperson fees for official drawings that comply with USPTO rules. Government fees can be much higher as well, if the application does not comply with the myriad of cited regulations on the USPTO fees page. For example, non-electronic filing requires an additional $400 or $200 fee listed at the bottom of the first table, in addition to the basic filing fees.

If you need help with your patents, trademarks, copyright, or trade secrets, please contact us.

Jeremy I. Maynard
Registered U.S. Patent Attorney
Troutman & Napier, PLLC
4740 Firebrook Blvd.
Lexington, KY 40513
Tel: 859-253-0991
Web: Troutman & Napier, PLLC
Originally Published at: Maynard.Law
Originally Published by: Maynard.Law

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