On March 16, 2013, the U.S. Patent and Trademark Office (USPTO) is changing from a First-to-Invent system to a First-Inventor-to-File system under the America Invents Act for all patent applications that have a priority date of or after that date.
One major change is the scope of what is considered to be prior art. For example, sales and public uses which occur in the U.S. are currently considered prior art. As of March 16, 2013, sales and public uses anywhere in the world can act as prior art.
Another change under the AIA is the increased authority the USPTO will have to set and change the fees it charges in order to cover its expected costs of providing services. These fees published as Patent Fees Final Rule (78 Fed. Reg. 4212, January 18, 2013) will take effect on March 19, 2013.
Highlighted Fee changes:
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Fee Description
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Current Fee
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March 16, 2013
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Application Filing Fees – increase
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Independent Claims in Excess of 3
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$250
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$420
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Track I – reduction
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|
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Request for Prioritized examination or Track I
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$4,800
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$4,000
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Request for Continued Examination (RCE) – increase
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Second and Subsequent RCE
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$930
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$1,700
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Ex Parte Reexamination – reduction
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Ex Parte Reexamination
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$17,750
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$12,000
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Maintenance Fees – increase
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Due at 3.5 years
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$1,150
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$1,600
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Due at 7.5 years
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$2,900
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$3,600
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A patent application filed before March 16, 2013 can be used as a parent application/priority application for filing continuation applications after March 16, 2013. The continuation application(s) will be examined under the "first-to-invent" and pre-AIA rules. Therefore, you may wish to file any applications by March 15, 2013.
The AIA rule changes can be confusing and we want to provide you information to help guide you through the numerous new rules. If you have any questions about any of these changes, please contact us at your convenience.