The new inter partes review proceeding may have just gotten even more attractive to potential patent challengers in light of a revised fee structure implemented by the Patent Office, effective January 18, 2013. In general, the Patent Office has lessened the risk of filing an inter partes review by breaking the costs associated with such a filing into two discrete segments – one fee for filing, and another fee to be paid only if an inter partes review trial is instituted.
More specifically, under the original rules, the Patent Office fee to file a petition seeking inter partes review was $27,200 for up to 20 claims (with a $250 per claim fee for each claim in excess of 20 claims). That fee was due upon filing of the petition and no refund is provided if the inter partes review proceeding was not ultimately instituted.
The fees charged by the Patent Office were originally calculated with an eye toward covering the actual costs the Office anticipated incurring in handling an inter partes review – both in terms of administrative costs, as well as the time the Administrative Patent Judges would have to spend on each filing. To better align the costs to be incurred with inter partes review practice, however, the Office apparently recognized that there will be instances in which petitions are not granted, lessening the anticipated burden on the Office. That cost savings will now be passed along to the patent challenger.
Under the new rules, when a petition seeking inter partes review is filed, the cost is broken up into two parts:
- Filing Fee: $9,000 for up to 20 claims ($200 per claim for each claim in excess of 20)
- Institution Fee: $14,000 for up to 15 claims ($400 per claim for each claim in excess of 15 claims made part of the inter partes review trial)
This change will, if anything, further incentivize use of the IPR process because the risk has been lessened for patent challengers. They only risk a $9,000 filing fee with their petition, instead of the full $27,200 fee required under the old rules. This continues a trend – making these proceedings as easily accessible as possible to provide an effective, inexpensive option to district court litigation for patent challengers.