Matthew C. Moldovanyi

The USPTO published its final rule concerning changes to the patent fee structure, which take effect on January 19, 2025. The goal of the new fee structure is to ensure sufficient funding for the patent system to offset forecasted increases in aggregate costs, promote innovation strategies, align fees with the full costs of products and services, facilitate effective administration of the U.S. patent system, and offer application processing options. Because of the general increase in fees, it is strongly recommended, especially for continuation application filings, to act before the effective date. 

Impact on Patents Holders and Best Practice Recommendations  

Given the general fee increases the USPTO has implemented for the patent prosecution process, it is now more important than ever that patent owners work together with their patent attorneys to ensure budgets are aligned with spending on US patent applications.

• Act before January 19: To minimize costs, plan to make filings affected by the fee increases before the effective date. These include new continuation applications, requests for continued examinations, and information disclosure statements, among the others listed above.  

• Looking ahead, patent owners should anticipate an increased patent budget in the coming new year, as they can affect all phases of the patent application process.   

Extension of Time Fees

It’s not all bad news. The fee structure implements a standalone extension of time (EOT) fee structure for provisional applications in which fees are decreased from current amounts by an average of 81%.

Design Application Fees

The fee structure has increased the aggregate total of filing fees, search fees, examination fees, and issue fees for a design application or design continued prosecution application (CPA) from $1,760 to $2,600 for undiscounted applications, from $704 to $1,040 for applications receiving a small entity discount, and from $352 to $520 for applications receiving a micro entity discount.

Later-Filed Continuation Application Filing Fee

The fee structure creates a new fee for later-filed continuation applications filed a certain amount after the Earliest Benefit Date (EBD) for the application. An application that is pending prior to the effective date of this final rule will not incur the fee under the new structure based on any benefit claims that were properly presented prior to the effective date.

Request for Continued Examination Fee

In addition to sunsetting the After Final Consideration Pilot Program on December 14, 2024, the new fee structure increases the cost for requests for continued examinations (RCE).

Excess Claims Fees

There is an overall increase in fees for excess claims. The excess claims fees apply to reissues and reexaminations as well.

Information Disclosure Fee

The fee structure creates new fees when filing an Information Disclosure Statement (IDS) that causes the cumulative number of applicant or patent owner provided items to exceed a certain threshold.

Patent Term Extension Fee

The fee structure increases the fees for fling applications for patent term extensions (PTE) and applications for interim extensions and creates a new fee for requesting a supplemental redetermination of the PTE in a pending PTE application.

America Invents Act (AIA) Trial Fees and Request for Review of PTAB Decision by Director

The fee structure has increased the existing fees for AIA trial proceedings by 25%. Additionally, the fee structure creates a new fee of $452 for parties requesting Director Review in AIA trial proceedings.

Unintentional Delay Petition Fees

To incentivize timely filing of petitions based on unintentional delays include petitions seeking revival of an abandoned application, acceptance of a delayed maintenance fee payment, and acceptance of a delayed priority or benefit claim, the fee structure increases fees by 43% for petitions filed for unintentional delays over two years.

You can find a full listing of the fee changes HERE. Renner Otto is here to assist you in navigating these changes efficiently and effectively. Feel free to reach out to the above-listed author, your normal Renner Otto attorney or contact us for more information.