Takeaways:

• Patent owners must now fund review of information disclosed to Office in reexamination and reissue.
• The new fees do not appear to apply to third-party reexamination requesters.

According to recent U.S. Patent and Trademark Office (Office) data, the Office receives a burdensome number (13%) of information disclosure statements (IDSs) having in excess of 50 total items of information. 89 Fed. Reg. 91,898, 91,924 (Nov. 11, 2024). Of this number, about 5% have 51-100 items of information and 4% contain more than 200 items of information. Id. The Office states that large IDSs cost the agency $10M annually. Id. The Office also opines that:

“[i]n many instances, these large IDS submissions contain clearly irrelevant, marginally relevant, or cumulative information. It is onerous for examiners and hinders the USPTO’s statutory obligation to timely examine applications under 35 U.S.C. 154 to consider large numbers of clearly irrelevant, marginally relevant, or cumulative information.” Id.   

For at least the above-noted reasons, the Office has enacted new IDS fees based upon the total number of items of information submitted by patent applicants/owners for review in all examined files, including reissue applications and reexamination proceedings. The new fees start at $200 for a cumulative number of applicant-provided or owner-provided items of information in excess of 50 items, and steeply increase to $500 for 101-200 items and $800 (less any amounts previously paid) for a cumulative number of items in excess of 200.

As practitioners in the reexamination and reissue space know, many of the underlying patents involved in these post-grant activities are involved in litigation proceedings that generate the need for large IDS submissions. According to Office historical reexamination statistics, at least of 37% of all reexaminations were known to be in litigation during their proceeding. The authors are aware of litigation generated reexamination IDS submissions that included thousands of documents. And while the Office may opine that these large submissions contain “clearly irrelevant, marginally relevant, or cumulative information,” 37 C. F. R. §§ 1.56 and 1.555 define materiality in a manner that requires Office review because it is the Office’s role to determine “a prima facie case of unpatentability of a claim.” Further, the Office has twice punted on updating their materiality standard to the higher “but for” materiality standard of Therasense, Inc. v. Becton, Dickinson & Co., 649 F.3d 1276 (Fed. Cir. 2011) (en banc), which would necessarily reduce the volume of items of information submitted on IDSs. See, e.g., 76 Fed. Reg. 43631 (Sept. 19, 2011) and 81 Fed. Reg. 74987 (Dec. 27, 2016).

Beginning January 19, 2025, the effective date of the Office’s new fees, applicants and owners will be subject to these new fees for IDSs submitted during reissue and reexamination prosecution. Yet because the new fee rule applies to “applicants and patent owners,” it does not appear that third-party requestors will be subject to the fees when filing a request for reexamination including an IDS listing the documents relied upon in the request. However, it is not known whether a request’s IDS items of information will count in the cumulative total of items of information submitted, thereby triggering higher IDS fees to patent owners later in the reexamination proceeding. The rulemaking notice is silent on this point.