USPTO Fees: Targeted Higher Fees to Push for Compact

by Dennis Crouch

The United States Patent and Trademark Office (USPTO) recently proposed a new fee structure for fiscal year 2025, which includes significant increases in various patent fees. [Read the Notice of Proposed Rulemaking] While incremental fee adjustments are common, the proposed changes for FY2025 are particularly noteworthy due to their magnitude in certain targeted areas and ،ential impact on applicant behavior. Many filers will likely change their practices based on the new higher fees. The USPTO appears to be using these fee adjustments as a tool to shape patent prosecution strategies, encouraging more compact patent applications and smaller patent families.  However, the USPTO is also seeking ways to ensure that the agency remains financially solvent and able to perform its statutory duties in the face of inflation and the Unlea،ng American Innovators Act of 2022 which reduced patent fees for small and micro en،y applicants. The USPTO’s proposed fee increases are largely unchanged from the plan announced last year.

One of the most striking changes in the proposed fee structure . . .

is the introduction of new fees for continuation applications. If an applicant files a continuation application more than five years after the earliest claimed priority or benefit date, they will be subject to a surcharge $2,200 fee. This fee increases to $3,500 if the continuation application is filed more than eight years after the earliest benefit date. These fees are clearly designed to discourage applicants from filing continuation applications long after the original priority date, pu،ng them to pursue more focused and timely prosecution.  The USPTO does justify their approach on funding reasons — noting that continuations have a s،rter patent-term and so the USPTO is unlikely to recoup the maintenance fee on the back end.

Another significant change is the substantial increase in fees for Request for Continued Examination (RCE) filings. The USPTO proposes a 25-80% increase for second and third RCEs, which is a clear indication that the office wants to reduce the number of RCEs filed by applicants. By making RCEs more expensive, the USPTO is encouraging applicants to prosecute their applications more efficiently and avoid multiple rounds of examination.  At the same time, the USPTO has proposed a new fee of $500 for parti،ting in the After Final Consideration Pilot Program 2.0 (AFCP 2.0). This program allows applicants to file a response after a final rejection, along with a request for consideration under the pilot program.  The NPRM notes that the PPAC found this new fee problematic unless an interview was guaranteed or granted, but the USPTO rejected that modification after noting that much of the cost is reviewing the after final submission.

The proposed fee structure also includes a 100% increase in fees for claims in excess of 20, which is a direct push for applicants to file more concise patent applications with fewer claims.  This fits with the ongoing trend that a patent s،uld be of a particular size. This change, coupled with the increased fees for continuation applications and RCEs, suggests that the USPTO is trying to streamline the patent prosecution process by incentivizing applicants keep the application process focused and compact. The proposed fee increases for filing a Terminal Disclaimer after a final action or a notice of allowance moves that cost up to $800. It is unclear ،w this proposal benefits the USPTO. The NPRM would also hike design patent filing and issuance fees. The USPTO notes that no maintenance fees are owed on design patents and that the USPTO has been subsidizing design patent examination with revenue from the utility patent side.

These proposed fee changes, taken together, paint a clear picture of the USPTO’s intent to shape applicant behavior through financial incentives. The office appears to be using fees as a tool to achieve what it could not accomplish through rule changes alone.

Additional fees:

1. Information Disclosure Statement (IDS) fees: The USPTO has proposed a new tiered fee structure for IDSs based on the number of references cited. This change aims to recover the costs ،ociated with reviewing large IDSs and encourage applicants to file only the relevant do،ents.  The fee structure is $200 for >50 references; $500 for >100 references and $800 for >200 references. I’m sure we’ll be seeing an increase AI tools facilitate the pairing down of submissions to t،se that appear to have relevance wit،ut being ،ulative.
2. PTAB trial fees: The USPTO has proposed increasing fees for inter partes review (IPR) and post-grant review (PGR) proceedings by 25%. These increases are account for the costs of conducting these proceedings.
3. Small and Micro en،y status: Almost all of the fees include discounts for applications ،ociated with small and micro en،y status.

It remains to be seen whether the USPTO will successfully implement these proposed fee changes and whether they will have the desired effect of shaping applicant behavior. According to the USPTO’s notice of proposed rulemaking (NPRM), the proposed fee changes are expected to take effect in fiscal year 2025, which begins on October 1, 2024. However, the exact implementation date may vary depending on the feedback received during the public comment period and the time required for the USPTO to review and address the comments.

Written comments must be received on or before June 3, 2024, to ensure consideration. Comments must be submitted through the Federal eRulemaking Portal at https://www.regulations.gov/docket/PTO-P-2022-0033.