Fox Rothschild LLP
The USPTO also included “targeted adjustments” for fees that will increase by significantly greater percentages, including some new fees that have never been charged before. In addition, the USPTO included certain “targeted adjustments” for fees that will increase by significantly greater percentages, including some new fees that have never been charged before.
Applicants should be aware of the increases and consider acting in advance as appropriate.
The sample fee increases listed below are based on “undiscounted” status, which applies to most for-profit organizations with more than 500 employees. The “small” entity discount is 60%. “Micro” entity status provides an 80% discount.
Some of the new targeted adjustments:
Continuing application surcharge.
For the first time, the USPTO will charge an additional fee of $2,700 if a continuing application (e.g., continuation or divisional) is filed more than 6 years after its earliest priority date, or $4,000 if the continuing application is filed more than 9 years after the earliest priority date. This is a major shift in U.S. Patent practice, as applicants have previously been able to file a continuation application at the same price as a regular one. It will reduce the number of continuing applications filed in serial. It may also encourage the filing of continuation and divisional applications earlier.
- Information Disclosure Statement. Another new fee is based on the size of an Information Disclosure Statement (IDS). The first time, applicants are charged based on how many citations they initiate. If the total exceeds 50, a new $200 fee will be assessed. If the total number is greater than 100, a new $500 fee will be assessed. If the total number is greater than 200, a new fee will be charged of $800 — less any previous amounts paid. The USPTO will increase the cost of filing a design application by over 25%. This will bring the total to $1,300. The design issue fee is increasing by 75% to $1,300.
- Excess claims fees. The USPTO is increasing the fee for extra independent claims (after three) by 25%, to $600. The USPTO is also doubling the fee per claim (after 20), to $200. Even a modest application with 30 claims and 4 independent claims would require an additional outlay of $2,600 in excess claim fees. Request for Continued Examination Fees.
- In a previous round, the USPTO instituted a fee surcharge on Requests for Continued Examination that are the second or subsequent ones filed in a particular case. The fee for filing the first RCE increased modestly, from $1,360 up to $1,500. The fee for filing a subsequent RCE, or a second RCE, has increased by over 40%, from $2,000 up to $2,860. This may discourage protracted prosecutions.The Final Rule applies to patent fees submitted on or after January 19, 2025. According to its rulemaking authority the USPTO has the right to set fees in order to recover their estimated costs for providing services related to patents. The USPTO expects to receive about 600,000 new patent applications in the current fiscal, which is a 2% rise from the previous fiscal year. The fee increases are likely to reduce the strategy of serial filing of continuing applications.
