If the USPTO wants the post-grant procedures of the AIA widely adopted, it must reduce the proposed PTO fees. Consistent with USPTO budgetary policy, the PTO does not need to charge the actual cost of a post-grant procedure. Instead, the PTO needs to only ensure that the total in user fees cover the aggregate of fees. It's just too expensive to ask that a third party pay $38,000 to petition for post-grant review of a patent with 20 claims. Worse, if the patent contains 41 claims, the petition to start post-grant review is $71,600. This way of structuring PTO fees only encourages patent attorneys to file more claims. It may become conventional wisdom: if you want to greatly increase the cost of challenging your patent, you should file more claims! Of course, more claims, means more work for examiners and attorneys, and more waiting while the examiners examine the additional claims.
The USPTO attempts to explain its fees and budgetary issues on the PTO web site here but I don't think many companies will spend the time to read it. So how much should the post-grant procedure cost? Perhaps inter partes reeexamination fees (prior to passage of AIA) can guide on setting the fee for inter partes review, and post-grant review might be a factor of three larger.
Copyright © 2012 Robert Moll. All rights reserved.