Bodman
The changes include new or significant increases to several targeted fees, a 10% increase to all filing fees, and an approximately 7.5% increase to all other patent fees not covered by those targeted adjustments. The changes include new or significant increases to several targeted fees, a 10% increase to all filing fees, and an approximately 7.5% increase to all other patent fees not covered by those targeted adjustments.
Patent applicants should be aware of the proposed changes and in particular to the targeted adjustments beyond 7.5% which may impact patent protection strategies. Applicants are recommended to consider filing new or continuing applications and other prosecution documents which are affected by the increased fees before the changes are set to take effect to take advantage of cost-saving strategies.
Several of the targeted increases of which applicants should be aware are described below.
Targeted Increases Impacting Patent Filings
For continuation applications that claim priority to an earlier filing date that is more than 6 years prior or more than 9 years prior, the USPTO has added a new filing fee on top of the ordinary filing, search, and examination fees due at filing. Applications that claim priority between 6 and 9 year prior dates will be charged an extra $2,700 if the entity is not discounted. For applications which claim priority to a date more than 9 years prior, an additional $4,000 will be charged.
- Applicants filing design patent applications will see a significant increase in combined fees. The combined total of filing fees, search fees, examination fees, and issue fees for a design patent is set to increase from $1,760 to $2,600 for undiscounted entities.
- Where non-provisional applications are filed with more than 20 claims, the USPTO has proposed a 100% increase to the fee (increasing to $200 for each excess claim). Where the application is filed with more than three independent claims, the USPTO has proposed a 25% increase (increasing to $600 for each excess claim).
- Targeted Increases Impacting Prosecution
The USPTO also announced surcharges for filing Information Disclosure Statements (IDS) based on the cumulative number of applicant-provided items submitted to the USPTO. For applications with 50 to 100 references, applicants will be charged $200; for 101 to 200 references, applicants will be charged $500; and for more than 201 references, applicants will be charged $800.
- Applicants who choose to continue prosecution where a final office action has been mailed will also see an increase in fees. The fee for a first request of continued examination (RCE) has been increased by 10% (to $1,500). The fee for a second or later RCE will increase by 43% (to $2,860). If upcoming deadlines are affected by higher fees, applicants might want to expedite their filings before January 19th 2025 in order to avoid the increased fees.
