USPTO Fees Increasing on January 19, 2025: Key Changes to Note
The United States Patent and Trademark Office (USPTO) announced an increase in patent fees to take effect on January 19, 2025. The final rule (Rule) was published on November 20, 2024, and is mandated by the Leahy-Smith America Invents Act (AIA) and amended by the SUCCESS Act, which aims to ensure the USPTO has sufficient revenue to cover its operating costs.
The Rule sets or adjusts 433 patent fees for undiscounted, small, and micro entities and introduces 52 new fees. Routine prosecution fees (filing, search, examination, and issue) are increased but across-the-board discounts for small and micro-entity filers remain in place.
Here are some significant changes to be aware of:[1]
New Continuing Application Fees
New fees are introduced for continuing applications filed more than six years and separately nine years, after their effective filing date (EBD). The fees will be applied to all continuing applications, which include continuation, divisional, and continuation-in-part applications. The new fees do not apply to an application pending prior to January 19, 2025, based on any benefit claims that were properly presented prior to January 19, 2025. However, if a benefit claim is presented on or after the effective filing date of the Rule, payment of the fee will be required.
A benefit claim to a provisional application filed under 35 USC § 119(e) is not considered in determining the effective filing date. However, if the benefit claim to a provisional application is under 35 USC § 120 will be considered in determining the effective filing date. Thus, patent applicants are encouraged to claim priority under 35 USC § 119(e), not only to possibly eliminate the payment of the new fee, but also the possibility of enjoying a longer patent term.
If a priority claim to an application having an EBD greater than six or nine years, the continuation fee is due upon the filing of the updated Application Data Sheet (ADS). The continuation fee will also be due if the claim is requested upon the filing of the petition for acceptance of an unintentionally delayed benefit claim and the petition fee.
Excess Claims Fees
Claims for excess independent and total claims are increased by 25% to recover additional costs associated with the increased complexity of applications with large claim numbers. Similar to current practice, excess claim fees will be due for each independent claim in excess of three and each total claim in excess of twenty.
New Size Fees and Requirements for Large Information Disclosure Statements (IDSs)
New fees are introduced for large IDS submission (over 50, 100, and 200 cumulative items of information). Generally, each item listed by an applicant will count toward the cumulative number of items of information. If an applicant erroneously lists the same item twice, either in the same or separate submission, each listing of the item will count toward the cumulative total. However, if a particular item on an IDS is not considered because it was not compliant with USPTO guidelines, the second corrected submission of the item of information will not be counted again.
The cumulative count is determined for each application, i.e., the count from a parent application does not carry over to any continuing applications, reissue applications, or any post-issuance proceeding. In addition, an item of information that was cited in parent application will not count in a child application unless it is resubmitted.
It is important to note that cumulative totals are not reset at zero for RCEs (request for continuing examination) because the filing of an RCE is not the filing of a new application.
The USPTO also is amending 37 CFR § 1.98(a) to include a new content requirement for an IDS to facilitate implementation of the IDS size fee. The USPTO will require that an IDS contain a clear written assertion by the applicant that the IDS is accompanied by the appropriate IDS size fee or that no IDS fee is required. No specific language is required but the statement must clearly convey the applicable IDS size fee by specifying the paragraph of 37 CFR § 1.17(v)[2] that applies.
Applicant will be responsible for tracking the cumulative number of items of information that are submitted and provide the written assertion of the applicable IDS fee. If an IDS is filed without the written assertion or the necessary IDS fees, the IDS will be placed in the file but not considered. Applicant can refile the IDS with the fee and/or assertion, but the filing date of the IDS will be the date the fee, assertion and documents are received by the office.
Abolishment of the After Final Consideration Pilot Program 2.0
The Rule also confirmed that the After Final Consideration Pilot Program 2.0 (AFCP 2.0) has not been renewed. The program is set to expire on December 14, 2024, and allows applicants to engage with examiners after final rejections, and its expiration may affect strategies for responding to final office actions.
Looking Ahead
The Rule represents a comprehensive adjustment to the USPTO’s patent fee structure, aiming to balance the need for financial sustainability with the promotion of innovation and access to the patent system for all stakeholders. The implementation of new fees and substantial increases in others reflect the USPTO’s efforts to balance the evolving workload demands of examiners and staff with continued access to the USPTO for all potential applicants.
Applicants are encouraged to thoroughly review the comprehensive rule changes before the January 19, 2025, effective date. Applicants still have time before the January 19, 2025, effective date of the new fees to file continuing applications that claim the benefit of applications having an effective an EBD greater than six or nine years to avoid payment of the new fee and/or file an IDS with more than 50, 100 or 200 items of information.
Additional Information
Please also refer to my colleague Courtenay Brinkerhoff’s summary and insights for additional information on the fees and their implications. The USPTO’s summary is available here.
[1] Trademark, Design and after examination fees also are increased per the Rule. Practitioners are encouraged to review the Rule and USPTO summary for more information on these increased fees.
[2] 37 CFR § 1.7(v) sets forth the size fees for IDS submissions.
