U.S. Patent and Trademark Office Proposes New Fees and Significant Fee Increases That Will Change Future Patent Practices

In a recent Notice of Proposed Rule Making, the United States Patent and Trademark Office (USPTO) has unveiled a series of proposed patent fee changes that are set to take effect in fiscal year 2025. It was announced that these changes aim to better align the agency’s fee structure with the costs associated with processing patent filings.  Many of these proposed fee changes are negligible; however, some proposed changes include significant increases to filing fees and appeal fees as well as new fees that will likely influence applicant strategy at the drafting, filing, and prosecution stages of the application process.

While the complete details of the proposed fee changes can be examined in full at the Federal Register’s website, here are some of the significant updates to patent fees that you should be aware of:

Escalating fees for a benefit claim made in continuing applications based on “age.” These new fees would apply to “later-filed” divisional (DIV), continuation (CON), and continuation-in-part (CIP) patent applications that have an actual filing date more than five years, or more than eight years, later than the earliest filing date for which benefit is claimed under 35 U.S.C. 120, 121, 365(c), or 386(c), and § 1.78(d) (the “Earliest Benefit Date” (EBD)).  For a large entity, the fees would be $2200 and $3500, respectively.

  • Stated rationale: Increasing number of continuing applications slows the time to examination of “new” applications. In addition, shorter patent terms result in fewer maintenance fees that lessen ability for USPTO to recoup costs.
  • ·Impact on practitioners and applicants: May spur the filing of multiple continuing applications simultaneously at an earlier date rather than in a “string” of filings.  Applicants with large portfolios that typically leave an application pending in order to capture the implemented technology may be unlikely to change their practices.  May deter many applicants from pursuing a continuing application due to financial constraints, even in instances in which the USPTO is at fault for the lengthy prosecution of the progenitor application.  

New Fee for Requests to Participate in After Final Consideration Pilot (AFCP) Program. The USPTO is proposing a new $500 fee for large entities without any guarantee that the request will be granted.

  • Stated rationale: The popularity of the AFCP Program (over half of after-final responses) makes the program expensive to run.
  • Impact on practitioners and applicants: It is noted that an interview is (still) not guaranteed with the program, even with the new fee, which may deter applicants from utilizing the program even in situations where the Final Office Action is objectively deficient.  The existence of a fee to participate is likely to cause more interviews to occur after the Non-Final office action.  Some Applicants may choose to simply “take” allowed scope or proceed to an RCE rather than pay the fee.

New Information Disclosure Statement (IDS) Fees based on number of references. The proposed IDS size fee sets forth: (1) a first amount ($200) for a cumulative number of cited items of information in excess of 50; (2) a second amount ($500) for a cumulative number of cited items of information in excess of 100, but not exceeding 200, less any amount previously paid; and (3) a third amount ($800) for a cumulative number of cited items of information in excess of 200, less any amounts previously paid.

  • Stated rationale: A large number of IDS references in a small percentage of the applications filed is taking too many agency resources for review.  The PTO reiterates that best practice is for Applicants and patent owners to avoid filing large IDS submissions by eliminating citations that are clearly irrelevant, marginally relevant, or contain cumulative information.
  • Impact on practitioners and applicants: Some Applicants may be more discerning of whether a reference can be considered cumulative and therefore not submitted.  However, some may be leery of taking on any risk that a reference not submitted could be successfully argued as having “but for” relevance during litigation and may still lean toward large IDSs.

Increases in Excess Claim Fees.  For a large entity, excess claim fees increase from $400 to $600 for each independent claim over three, and from $100 to $200 for each claim over 20.

  • Stated rationale: To help recover the costs associated with examining a greater number of claims and to also avert a drive to increased claim counts resulting from the proposed increase in continuing application fees based on age of the benefit claim.  “Under the USPTO’s proposed fee rates, an application with double the 20 total claim-count threshold would require an excess claims fee payment that equals the combined proposed fee amounts for filing, search, and examination. In other words, a double-sized application (three independent claims and 40 claims total) would require double the combined total in applicable fees for filing, search, and examination.”
  • Impact on practitioners and applicants: This will likely drive more scrutiny as to which claims will “make the cut.”  Some practitioners may turn to using alternative or “and/or” language within a claim to reduce claim count.

It’s essential for Applicants and practitioners to stay informed about these proposed fee changes and note their likely implementation date of October 1, 2024.  It is also imperative that Applicants and their counsel plan ahead to avoid any surprises or loss of rights that could result from failing to account for these fee changes.