By Noah Flaks
On November 20, 2024, the USPTO announced new rules including fee increases for fiscal year 2025. The new rules and fees will take effect on January 19, 2025. The USPTO’s announcement can be accessed here: Patent fee changes to take effect on January 19 | USPTO.
The End of AFCP 2.0
The USPTO rule changes follow a proposal and request for comment earlier this year. While most of the proposed changes will be implemented, there are some notable changes. Negative public feedback has led the USPTO to cancel proposed changes to Terminal Disclaimer practice. And, instead of implementing new fees for AFCP 2.0 the USPTO announced that AFCP 2.0 will end on December 14, 2024. More information regarding the end of AFCP 2.0 can be found here: USPTO To End AFCP 2.0 – Xsensus IP Law.
USPTO Rule Changes
The changes to the USPTO fee schedule are extensive and not all changes can be covered in this article. But, some significant changes are as follows (note: all fees listed below are for large-entities. The percentage fee increase small and micro entities is the same as for large entities):
- “Across-the-board” fee increase: The USPTO announcement addresses many fees specifically. All fees not specifically addressed in the announcement will be increased by 7.5%.
- Application filing fee increase: The basic filing, search and examination fees will be increased by almost 10% from a total of $1820 to $2000.
- New continuation application fees: The USPTO will impose a new additional fee for continuation applications claiming more than six years of priority. In particular, new applications claiming priority more than six years after an earliest benefit date* will require a new fee of $2700. And, new applications claiming priority more than nine years after the earliest benefit date will require a new fee of $4000. Note, these fees are in addition to the filing, search and examination fees required to file the application.
*Earliest benefit date is defined as a US non-provisional filing date/US national stage filing. The earliest benefit date is not a foreign priority date and is not a provisional application filing date. - Excess claim fee increase: The fee for independent claims in excess of 3 will increase by 25% from $480 to $600. The fee for total claims in excess of 20 will increase by 100% from $100 to $200.
- RCE fee increase: The fee for a first RCE will increase by 10% from $1360 to $1500. The fee for a second and subsequent RCE will increase by 43% from $2000 to $2860.
- Inter partes review fee increase: The fees for inter partes review will increase by 25% across-the-board.
- New IDS fees: The USPTO will impose new additional fees for the submission of IDS items which cause a cumulative number of Applicant-provided items to exceed thresholds of 50, 100 and 200 items. In particular, the USPTO will charge:
- $200 fee for submission of IDS items that cause the cumulative number to exceed 50 items but less than 100 items,
- $500 fee (less amount previously paid) for submission of IDS items that cause the cumulative number to exceed 100 items but less than 200 items, and
- $800 (less amount previously paid) fee for submission of IDS items that cause the cumulative number to exceed 200 items
Takeaway
The USPTO fee changes are significant and will be here soon, taking effect on January 19, 2025. Therefore, it is important for companies to plan ahead. Xsensus will work closely with our clients to develop strategies to navigate these fee changes.
If possible, new applications should be filed before the fee changes take effect in order to avoid the 10% fee increase. And, as much as $4000 may be avoided for each continuation application having an early benefit date. Companies should consider reviewing their continuation application filing strategies, claim count and claim type policies and IDS submission procedures to determine whether any of the new fees and fee increases may be avoided.
