Publication
Patent Fee Updates
On November 20, 2024 the USPTO published its final rule for adjusting patent fees in 2025. The fee adjustments will begin on January 19, 2025. Details related to the fee increases for selected items are provided below. All fees detailed below refer to the undiscounted, large entity fees. For small and micro entities, the fees will be lower, but are generally subject to the same percentage increase as the large entity fees. If you wish to review the full USPTO publication discussing the changes, it can be found here: Setting and Adjusting Patent Fees During Fiscal Year 2025.
Late Term Continuation/Divisional Fees
The USPTO has introduced new fees for continuation and divisional (together, “continuing”) applications that are filed late in the patent term. More specifically, the USPTO will charge a $2,700 fee when filing a continuing application more than six years after the earliest benefit date. For filing a continuing application more than nine years after the earliest benefit date, the USPTO will charge a $4,000 fee. These fees will be in addition to the filing, search, and examination fees. The filing fee is increasing by $30 to $350, the search fee is increasing by $70 to $770, and the examination fee is increasing by $80 to $880.
Design Application Fees
The basic filing fee for a design application is increasing by $80 to $300. The design search fee or design CPA search fee will nearly double, increasing $140 to $300. The design issue fee is increasing by $560 to $1,300.
Request for Continued Examination (RCE) Fees
RCE fees will be increasing, with higher fees for subsequent requests. For the first RCE, the RCE fee will be increasing by $140 to $1,500. However, for the second and subsequent RCEs, the fee will be increasing by $860 to $2,860, for each RCE filed.
Excess Claim Fees
The fees for submitting excess claims will also be increasing. For claims with an excess of three independent claims, the fee will be increasing by $120 to $600 for each excess independent claim. For excess claims over 20, the fee will be increasing by 100% – a $100 increase to $200 for each excess claim.
Information Disclosure Statement (IDS) Fees
The USPTO has introduced new IDS size fees. With the new fees, applicants will be charged a fee of $200 if the total number of applicant-initiated citations exceed 50. For applicant-initiated citations over 100, a $500 fee will apply, and for initiated citations over 200, an $800 fee will apply, less any amount previously paid.
After Final Consideration Pilot Program 2.0 (AFCP)
The AFCP program will be terminating December 14, 2024.
Other Fee Increases
The USPTO is implementing a large increase in patent term extension request fees – an increase of $1,320 to $2,500. There will be a 25% increase in fees for inter partes review (IPR) and post grant review (PGR) requests (IPR: up $4,750 to $23,750; PGR: up $5,000 to $25,000). Additionally, in general, extension and issue fees will also increase slightly compared to previous fees.
How might this impact patent strategy decisions?
Patent stakeholders should review their patent portfolios (including designs) to determine if there are any pending actions that may incur an increased fee if completed after January 19, 2025. For example, if there is a pending final office action requiring an RCE, the stakeholder may wish to file the RCE prior to January 19, 2025. Similarly, stakeholders may wish to pay any pending issue fees prior to January 19, 2025, to avoid the increased fees.
Stakeholders may also consider filing any continuation applications that may be subject to the new “late term” fee prior to the January date. However, stakeholders should weigh the downside of the increased cost of the fees with any potential benefits of waiting to file, such as allowing more time to determine if relevant prosecution of similar claims in a foreign jurisdiction suggests that such claims may face rejections that are difficult to overcome (in such case, perhaps a continuing application is not warranted). Note that placeholder continuations filed with complete priority claims prior to January 19, 2025, without a fee, and thus receiving a Notice of Missing Parts, will still pay the fees under the old structure even if responding to the Notice of Missing Parts after January 19, 2025. Adjustments to a priority claim after the new rules are in place, even if the priority date remains prior to January 19, 2025, will trigger fees under the new fee schedule.
Strategic claim drafting should be considered to attempt to minimize excess claims fees and similarly, strategic Office Action Response strategy should be considered to reduce repeated RCEs. You may wish to consult with your legal counsel regarding a forward-looking strategy for IDS filings.
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