By: Nayyer Siddiqi
The United States Patent and Trademark Office (“USPTO”) recently announced a new fee structure for patent fees, set to take effect on January 19, 2025. The new fee structure will undoubtedly have a significant impact on the patent application landscape. The USPTO maintains that the fee adjustments are needed to provide the USPTO with sufficient revenue to recover the aggregate costs of patent operations.
A brief summary of the major changes is presented below. The fee changes include an across-the-board adjustment to patent fees, an adjustment to front-end fees, as well as targeted fees. All patent fees that are not covered by the targeted adjustments are being increased by approximately 7.5%. A link to the full publication in the Federal Register discussing the changes is available here: https://www.govinfo.gov/content/pkg/FR-2024-11-20/pdf/2024-26821.pdf; see also Setting and Adjusting Patent Fees During Fiscal Year 2025. The monetary amounts quoted herein are for undiscounted, large entity fees. Small and micro entities are generally subject to the same percentage increase as the large entity fees, however, the fees will be lower.
Continuing Application Fees
A new distinction has been set up for continuing applications that are filed later in the patent term. Continuing applications include continuation, divisional, and continuation-in-part applications. For continuing applications filed more than six years after the earliest benefit date, the fee will be $2,700. For continuing applications filed more than nine years after the earliest benefit date, the fee will increase to $4,000. This approach appears designed to discourage multiple patent family filing strategies. 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.
RCE and Excess Claim Fees
For a first Request for Continued Examination (“RCE”), the fee will increase by $140 to $1,500. For the second and subsequent filed RCEs, the fee will increase by $860 to $2,860 for each RCE filed. These increases may incentivize patent applicants toward alternative strategies, such as appeals. For applications with more than three independent claims, the excess claims fee will increase by $120 to $600 for each excess independent claim. For excess claims over 20, the fee will jump from $100 to $200 for each excess claim.
Design Application and IDS Fees
Design patent applications will see an ample fee increase, rising from $1,760 to $2,600 for undiscounted entities. The publication in the Federal Register states that, while the USPTO has raised design fees twice in the last 10 years, those increases were not sufficient to eliminate the shortfall over the long term. Additionally, per the report, design application costs are being subsidized by other fees, primarily utility patent maintenance fees.
Another noteworthy change involves information disclosure statements (“IDS”), with the introduction of a new tiered fee system: $200 for an IDS with over 50 citations, $500 for over 100 citations, and $800 for over 200 citations. Additionally, a new $1,440 fee will be charged for terminal disclaimers filed after receiving notice of final determination in patent term extension cases.
Other Changes and Proposals Rejected
Patent term extension request fees will increase from $1,320 to $2,500. Extension of time fees (for patent applications other than provisional applications) and issue fees will also increase slightly compared to previous fees. The USPTO is implementing an extension of time fee structure for provisional applications in which fees will be decreased. Inter partes review trial fees will increase by 25%, with request fees rising to $23,750. The USPTO justifies these increases as aligning the fees with actual proceeding costs. Additionally, there were three proposed changes that were ultimately rejected: a new fee for After Final Consideration Pilot 2.0 requests, a targeted increase to the patent term adjustment fee, and tiered fees for terminal disclaimers. The After Final Consideration Pilot 2.0 program expired on December 14, 2024.
Takeaways
The approach reflects a policy shift towards a front-end recovery, i.e., recovering more costs earlier in the patent lifecycle rather than relying as heavily on maintenance fees that are paid much later, and in some cases, not at all. During fiscal year 2023, maintenance fees collected for utility patents accounted for 54.9% of the generated patent revenue. Additionally, while the USPTO maintains that these increases are required to align fees with actual costs incurred, and were shaped by public feedback, some of the changes appear to be constructed to influence applicant behavior.
For patent stakeholders, a prudent step would be an evaluation of patent portfolios 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, or pending issue fees, applicants may pay the RCE fee and issue fees prior to January 19, 2025, to avoid the fee increases. Additionally, patent applicants may consider filing any continuation applications that may be subject to the new later-filing fee, e.g., applications with a priority date that is greater than six years.
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Nayyer Siddiqi is a shareholder and patent attorney at Quinn IP Law who combines her passions for science and law into innovative strategies. Nayyer’s experience analyzing technical information as a scholar of atmospheric and medical physics, as well as her extensive legal experience, help her provide comprehensive and creative solutions to her clients.