USPTO fee increases set for January 19, 2025 – Key changes and strategies to consider

The United States Patent and Trademark Office (USPTO) has finalized an increase in patent prosecution fees, scheduled to take effect on January 19, 2025.¹

These fee changes are designed to help the USPTO stabilize its finances by addressing forecasted increases in operating costs. While most of the increases are nominal, several notable exceptions could have a significant impact on your patent filing and prosecution strategies.

Summary of key fee changes

The fee increases are mainly modest, but certain fee structures are subject to more significant hikes, including fees for excess claims and RCEs, and some new fees have been implemented, as outlined below.

• Basic filing, search and examination fees will all increase by 10 percent.
• Excess claim fees: Excess claim fees will double for each claim in excess of 20—from US$100 to US$200. Fees for each independent claims in excess of three will increase by 25 percent, from US$480 to US$600.
• RCE fee increases: RCE fees will rise substantially. The fee for a first RCE will increase from US$1,200 to US$1,500, and the fee for second and subsequent RCEs will jump from US$2,000 to US$2,860—an increase of 43 percent. The dramatic rise in RCE fees—especially the 43 percent increase for second and subsequent RCEs—could significantly increase the cost of prosecution.
• New fees for later-filed continuing applications: The USPTO is introducing new fees for continuing applications (continuations, divisionals and CIPs) filed six or nine years after the earliest-claimed non-provisional parent case. According to the USPTO, this change is designed to account for maintenance fees not paid on later-filed continuing applications, effectively making these fees an up-front payment toward maintenance costs.
• New IDS fees: The USPTO is introducing new fees for filing an IDS that causes the cumulative number of applicant-provided or patent owner-provided items of information to exceed certain tiered thresholds. These fees are due when an IDS is filed that brings the running total of references filed by applicants or patent owners beyond 50, 100 and 200.

Rationale behind the fee increases

The USPTO has stated that the fee increases are necessary to stabilize its finances, addressing projected increases in the costs of operations. The USPTO is attempting to balance its fee structure to maintain access to the patent system while ensuring sustainability. Some later fees, such as maintenance fees, are set deliberately high to offset costs, while other upfront fees are kept lower to reduce barriers to entry for inventors. This motivation is also reflected in that fees remain lower for smaller and micro entities.

The last time that the Patent Office raised fees was November of 2020. Since that time, inflation has caused the cost of many goods and services to rise. On average, the increases in fees largely appear to track inflation rates, with many fees being raised about 25 percent. In many cases, changes to basic required fees, like the 10 percent increase for initial basic filing and examination fees, are still less steep than the rate of inflation.

The USPTO stated that the new later-filed continuing application fees are not designed to, or expected to, change applicant behavior. Rather, these new fees are aimed at recapturing the large amount of money it misses out on from a lack of maintenance fees from later-filed continuing applications, which represents a significant portion of the continuing applications filed, and from the costs associated with prosecuting applications with excess claims.

The USPTO stated that IDS size fees have been implemented because large IDS submissions are a significant burden to process. Submitting large numbers of references can increase examination complexity and uses more Patent Office resources. The USPTO considers it particularly onerous when large IDS submissions contain irrelevant, marginally relevant or cumulative information.

Strategies to consider

As you consider your patent plans in light of the upcoming changes to the USPTO’s fee schedule, here are some potential strategies to keep in mind.

• File before the increases take effect: If possible, file RCEs and applications with excess claims or early priority dates before January 19, 2025, to avoid the higher fees.
• File continuations earlier or in parallel: When continuation applications factor into patent portfolio strategy, consider filing them sooner, or even filing them in parallel, rather than waiting until each application is allowed before filing the next. This approach can help reduce the risk of higher upfront fees for later-filed continuations. Assess continuation strategy at years five and eight from the earliest-claimed non-provisional priority date to enable filing continuations prior to years six and nine to avoid higher upfront filing fees.
• Consolidate claims to minimize fees: Where possible, consider drafting applications with fewer claims to reduce the number of excess claim fees. Consolidating claims may also streamline the prosecution process, helping to avoid the large increases in RCE fees. Because excess claim count costs are doubling and excess independent claims costs will also increase, it may make more sense to file a second application to target additional subject matter and claims rather than filing a single application with ten additional claims or with three additional independent claims.

Conclusion

The upcoming USPTO fee increases represent an important shift in the cost structure of patent prosecution. While most of the increases are incremental, the higher fees for excess claims, later-filed continuing applications and RCEs may lead to higher costs for some applicants. By considering proactive filing strategies and drafting robust patent applications, you can minimize the financial impact of these changes.