Patent Fee Changes at the USPTO: What You Need to Know

Newsletter

The United States Patent and Trademark Office (USPTO) has issued a final rule substantially adjusting patent fees. The new fee structure will take effect on January 19, 2025. 

In addition to a general across-the-board fee adjustment of 7.5%, there are a number of new fees and targeted fee adjustments that are intended to encourage compact prosecution, and decrease the burden on Examiners. Significant fee changes include new fees for continuing applications, increased fees on requests for continued examination (RCEs), and increased fees for excess claims. New fees are also required for information disclosure statements including more than fifty references. Fees for new design applications have also been increased substantially.

Applicants should consider their current prosecution portfolios and consider filing design patent applications, continuing applications, RCEs or large information disclosure statements before these fees take effect. Applicants and patent prosecutors will also want to consider how to adjust their current practices to minimize cost.

A summary of the more important fee adjustments is found below.

Continuing Application Fees

The final rule adds significant new fees for continuing applications filed more than six years after the earliest benefit date (EBD), and an additional higher fee for an application filed more than nine years after the EBD:

  • Continuing applications filed six or more years after the EBD: $2700
  • Continuing applications filed nine or more years after the EBD: $4000

The EBD is the earliest filing date for which benefit is claimed under 35 U.S.C. § 120, 121, 365(c), or 386(c), and therefore includes the filing date for the earliest US nonprovisional application, PCT application designating the US, or international design application for which a benefit claim is made in the subject continuing application. The EBD does not include the filing date of a foreign application or the filing date of a provisional application to which benefit is claimed under 35 U.S.C. 119(e). The EBD is therefore equivalent to the patent term filing date, the date from which patent term is calculated.

Continuing applications subject to the new surcharge fees include continuation applications, continuation-in-part (CIP) applications, divisional applications, and PCT bypass continuations filed on or after January 19, 2025.

Information Disclosure Statement Size Fees

The new fee for information disclosure statements will apply when the cumulative number of references cited by the applicant or patent owner in a given patent application exceeds 50 references, with fees escalating with the cumulative number of references, as shown in the chart below:

Applicants can avoid some additional fees by not citing references cited in a parent case in a child application. The USPTO will automatically consider references that were considered in the parent application, and these references will not be counted for the purpose of IDS size fee calculations in the child case. 

Request for Continued Examination Fees

The final rule increases the first RCE fee to $1500 from $1360. For second and subsequent RCE’s, the fee has been more substantially increased to $2860 from $2000.

Excess Claim Fees

To discourage the filing of extra claims, excess claims fees have been increased at a higher rate than the general fee increase. Each independent claim in excess of three will, after the rule takes effect, cost $600 as opposed to $480. The fee for excess claims over 20 has also been increased to $200, double the previous fee of $100.

Design Application Fees

The USPTO has also significantly raised the aggregate cost of the filing, search, examination, and issue fees for design patent applications to $2600 from $1760.

Patent Term Extension Fees

The fee for patent term extensions, which enable owners of patents to reclaim term lost for products subject to premarket regulatory review, has been increased to $2500 from $1180.

Unintentional Delay Petition Fees

Since 2020, the USPTO has required additional information to support a petition for unintentional delay in seeking revival of an abandoned application, acceptance of a delayed maintenance fee payment, and acceptance of a delayed priority or benefit claim. The USPTO has substantially increased the fee for filing a petition for unintentional delay of more than two years. These fees have, therefore, been increased by 43%. 

America Invents Act Trial Fees and Review of a PTAB Decision by the Director

The USPTO is increasing existing fees for AIA trial proceedings by 25%. Further, a new fee of $452 is required for requesting Director Review in an AIA trial proceeding.

This summarizes some of the fee changes enacted by the USPTO which will take effect on January 19, 2025.

Full details are available here. 

For tailored advice concerning factors relevant to your patent practice, please contact your Quarles attorney or:

END NOTES

1 Less any amount previously paid.

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