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Recently, the United States Patent and Trademark Office set forth a final rule that adjusts patent-related fees starting on January 19, 2025. A link to the notice in the Federal Register is available <a href="https://www.federalregister.gov/documents/2024/11/20/2024-26821/setting-and-adjusting-patent-fees-during-fiscal-year-2025#print" target="_blank" rel="noopener">here</a>. By itself, it is not notable that the U.S. Patent Office has adjusted fees. In this instance, the changes to various fees are not consistent on a percentage basis. Rather, the increases are intended to align the fees with the services provided, including consideration of the following:

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(1) historical cost of providing individual services,

(2) the balance between projected costs and revenue to meet the U.S. Patent Office’s operational needs and strategic goals,

(4) the Patent Public Advisory Committee’s (PPAC's) comments, advice, and recommendations on the U.S. Patent Office’s initial fee setting proposal and the public comments received in response to the April 2024 Notice of Proposed Rulemaking.

Collectively, these considerations informed the updated fee schedule.

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While many will fees increase in 2025, there are some fee increases will have a significant impact for some entities. For example, the fees for a design application – from filing, searching, examination, and issue – increase by approximately 48%. Patent applications with more than 20 total claims will double to $200. The fee for a first-time Request for Continued Examination (RCE) increases to $1,500, and the fee for a second-time RCE (and subsequent RCEs) increases to $2,860 (a 43% increase).

Applicants also should be particularly aware of a new surcharge filing fee that applies to filing continuing patent applications in a patent family that claims the benefit of, or priority to, a non-provisional patent application with a much earlier filing date (earliest benefit date, or EBD). Continuing patent applications include continuation, divisionals, and continuation-in-part applications, and a new continuing application filing fee of $2,700 (undiscounted, large entity fee; the fee for small entities will be $1,080, and the fee for micro entities will be $540) applies when a continuing application is filed and claims priority to an earlier non-provisional application with an EBD that is more than six years earlier. This filing fee increases to $4,000 (undiscounted, large entity fee; the fee for small entities will be $1,600; and the fee for micro entities will be $800) when a continuing application is filed claiming an EBD that is more than nine years earlier. The U.S. Patent Office explains in the Federal Register notice (the “Notice”) setting forth the final rule:

<em>For the hypothetical patent family shown in figure 1, Child D would incur the § 1.17(w)(1) fee because it was filed 7.5 years after its EBD. The § 1.17(w)(2) fee applies when the later-filed application's EBD is more than nine years earlier than its actual filing date and is $4,000 for undiscounted applications, $1,600 for applications receiving a small entity discount, and $800 for applications receiving a micro entity discount. For the hypothetical patent family shown in figure 1, Child E would incur the § 1.17(w)(2) fee because it was filed 10 years after its EBD.</em>

To save costs, Applicants should consider whether to file design or utility patent applications before January 19, 2025. If a continuing application may be desired in a patent family that has an EBD going back six or more years ago, Applicants should strive to have the application filed before the new fees take effect. Importantly, Applicants should consider filing continuing applications with as many claims as may be desired, even with the cost of excess claims fees, to potentially minimize the need for further continuing applications.

The U.S. Patent Office states that the new continuing application fee is unlikely to disproportionately impact small or micro entities because 70% of continuing applications filed more than six years after the EBD, historically speaking, have been filed by undiscounted entities. The U.S. Patent Office also notes that only 19.7% of all continuing applications filed would incur the new fee structure. These numbers are based on legacy U.S. Patent Office data. Moving forward, the actual impact of this new fee structure remains to be seen.

Contact your patent counsel for more information or to discuss your patent strategies – whether it relates to yet-to-be-filed applications or managing a pending patent family.

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Technical mechanical drawings featuring detailed line diagrams and measurements.

USPTO Updates Fee Schedule – Notable Increases

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