The U.S. Patent and Trademark Office (USPTO) has announced its final rule on patent fees, which will take effect on January 19, 2025. While some proposals from the earlier 2024 draft were scaled back, the new fee structure introduces significant changes that could impact design patents, continuing applications, and Information Disclosure Statements (IDS), among other areas.
The final rule outlines several notable fee increases and new charges, summarized below at the large entity (undiscounted) rate:
Substantial Fee Increases
Design Patents:
The total filing, search, examination, and issue fees for design patents will increase by approximately 48%.
Excess Claim Fees:
Each claim over 20: US$200 (double the current fee).
Each independent claim over three: US$600 (a 25% increase).
Request for Continued Examination (RCE):
First RCE: US$1,500 (10% increase).
Second and subsequent RCEs: US$2,860 (43% increase).
Unintentional Delay Petitions:
For delays exceeding two years: US$3,000.
Patent Term Extension (PTE) Applications:
PTE application fee: US$2,500 (more than double the current fee but less than the initially proposed US$6,700).
New fee for supplemental PTE redetermination: US$1,440.
New Continuing Application Surcharge
The USPTO will impose surcharges for filing continuing applications late in the 20-year patent term. The charges are based on the filing date relative to the earliest benefit date:
Filed ≥ 6 years after the earliest benefit date: US$2,700.
Filed ≥ 9 years after the earliest benefit date: US$4,000.
This applies to divisional applications and other continuing applications. According to the USPTO, about 20% of continuing applications may incur this surcharge. For reference, the current fee for a standard continuation application filing is about $1,820.
The term "earliest benefit date" is defined as the earliest priority date claimed under 35 USC §§ 120, 121, 365(c), or 386(c), and 37 CFR § 1.78(d), also known as the “patent term filing date,” which serves as the starting point for calculating the 20-year patent term, excluding priority claims to provisional applications.
New Information Disclosure Statement (IDS) Size Fees
The USPTO will now charge fees based on the number of references cited in an IDS:
> 50 items: US$200.
> 100 items: US$500 (less any previously paid amount).
> 200 items: US$800 (less any previously paid amount).
Applicants must include a clear written assertion specifying the applicable IDS size fee or confirming that no fee is required. This assertion must be explicitly linked to the fee "by specifying the particular paragraph in § 1.17(v) that applies ( e.g., 'the fee due under 1.17(v)(2)')", and general authorization to charge a deposit account is insufficient.
PTAB Fees
Petition fees for Patent Trial and Appeal Board (PTAB) trials will increase by about 25%.
A new fee of US$452 will apply for a Request for Director review of a PTAB decision.
Preparing for the Changes
With the new fees set to take effect on January 19, 2025, stakeholders should review their patent portfolios and act strategically to minimize costs. Consider these steps:
RCE Filings: If planning to file an RCE—especially a second or subsequent one—file before January 19 to avoid the higher fees.
Issue Fees and Continuing Applications: Pay any pending issue fees early and file any continuing applications before the deadline to avoid surcharges or higher fees.
Design Applications: File new design patent applications before January 19 to save 48% on filing, search, examination, and issue fees.
IDS Compliance: Patent practitioners should establish procedures to comply with the new IDS size fees and certification requirements.
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