The United States Patent and Trademark Office (USPTO) has announced significant changes to the patent fee schedule which will take effect on January 19, 2025. The final rule does not include some of the new fee structures proposed in April 2024, but still could have a significant impact on design patent practice, continuing application practice, and Information Disclosure Statement practice.

The changes include new or significant increases to several targeted fees, a 10% increase to all filing fees, and an approximately 7.5% increase to all other patent fees not covered by those targeted adjustments.

Applicants who are considering filing new or continuing applications and other prosecution documents which are affected by the increased fees may want to consider making such filings before January 19, 2025 to take advantage of cost-saving strategies.

Detailed information on the proposed fee adjustments are available on the USPTO’s Fee-Setting web page. Several of the targeted increases are described below.

Increases Impacting Patent Filings

• For continuation applications that claim priority to an earlier filing date that is more than 6 years prior or more than 9 years prior, the USPTO has added a new filing fee in addition to the ordinary filing, search, and examination fees due at filing. Applications which claim priority to a date between 6 and 9 years prior will be charged an additional $2,700 for undiscounted entities. For applications which claim priority to a date more than 9 years prior, an additional $4,000 will be charged. The Federal Register Notice estimates from current data that about 20% of continuing applications (about 6.5% of all applications) would incur a continuing application fee, with about 11% incurring the first surcharge and about 9% incurring the second surcharge.

• Applicants filing design patent applications will see a significant increase in combined fees. The combined total of filing fees, search fees, examination fees, and issue fees for a design patent is set to increase from $1,760 to $2,600 for undiscounted entities, a 48% increase.

• For non-provisional applications filed with more than 20 claims, the USPTO has proposed a 100% increase to the fee (increasing to $200 for each excess claim for undiscounted entities). When the application is filed with more than three independent claims, the USPTO has proposed a 25% increase (increasing to $600 for each excess claim for undiscounted entities).

Increases Impacting Prosecution

• The USPTO also announced new surcharges for filing Information Disclosure Statements (IDS) based on the total number of applicant-provided items submitted to the USPTO during the life of the application. For applications with 50 to 100 references, applicants will be charged $200; for 101 to 200 references, applicants will be charged $500 (less any amount previously paid); and for 201 or more references, applicants will be charged $800 (less any amount previously paid). Each IDS must “contain a clear written assertion” that the IDS is accompanied by the appropriate IDS size fee or that no IDS size fee is required.  There are no discounts for these fees based on entity status.

• Requests for Continued Examination (RCE) fees will increase for both first and subsequent RCEs. For applicants submitting a first request for continued examination (RCE), a marginal 10% increase in fee has been announced (increased to $1,500 for undiscounted entities).  However, for those applications where a second or subsequent RCE is filed, applicants will be charged a 43% higher fee (increased to $2,860 for undiscounted entities).

PTAB Trial Fees

• Petition fees for PTAB trials will increase by about 25%.

• There will be a new $452 fee for a Request for Director review of a PTAB decision.

Anyone considering filing new or continuing applications with the USPTO should consider accelerating their timelines to get documents filed before Jan. 19, 2025 before the new fees go into effect. Contact the IP attorneys at Panitch Schwarze for assistance in capitalizing on these cost-saving strategies.