Effective Jan. 19, 2025, the U.S. Patent and Trademark Office’s (USPTO) patent fees will see about a 7.5 percent across-the-board increase. 89 Fed. Reg. 91898 (Nov. 20, 2024). Some patent fees will see significantly steeper increases, up to 100 percent of those in the last fee adjustment in October 2020. These adjustments are part of the USPTO’s efforts to ensure sufficient funding for its operations in view of inflationary increases, enhance patent examination quality and achieve its patent pendency goals. Below are some of the most notable fee changes to keep in mind:
- Filing Fees: The undiscounted fee for filing, searching and examining utility patent applications will rise from $1,820 to $2,000. The undiscounted fee for filing, searching and examining design patent applications will increase from $1,120 to $1,300.
- RCE Fees: The undiscounted fee for a first Request for Continued Examination (RCE) will increase from $1,360 to $1,500. The undiscounted fee for a second and subsequent RCEs will see a 43 percent increase, from $2,000 to $2,860.
- New Continuing Application Fees: New fees have been introduced for applications claiming the benefit of priority more than six and nine years after the earliest benefit date (EBD). The undiscounted fee is $2,700 if more than six years after the EBD and $4,000 if more than nine years after the EBD.
- Issue Fees: The undiscounted issue fee for a utility patent application will increase from $1,200 to $1,290. The undiscounted issue fee for a design patent application will see a 76 percent increase, from $740 to $1,300.
- Excess Claim Fees: The undiscounted fee for each independent claim in excess of three will increase from $480 to $600. The undiscounted fee for each claim in excess of 20 will see a 100 percent increase, from $100 to $200.
- Extension for Filing a Response: The undiscounted fee for the first month of extension to file a response will increase from $220 to $235. The undiscounted fee for a second month of extension to file a response will increase from $640 to $690. The undiscounted fee for a third month of extension to file a response will increase from $1,480 to $1,590.
- New Information Disclosure Statement (IDS) Fees: Filing an IDS where the cumulative number of items/references exceeds 50 but does not exceed 100 will include an additional fee of $200; an additional fee of $500 will be charged when the number of items exceeds 100 but does not exceed 200; and an additional fee of $800 will be charged when the number of items exceeds 200.
- AIA Trial Fees (uniform 25 percent hike on all fees): The undiscounted fee for requesting inter partes review for up to 20 claims will increase from $19,000 to $23,750, and the undiscounted inter partes review post-institution fee for up to 20 claims will increase from $22,500 to $28,125. The undiscounted fee for a post-grant or covered business method review request for up to 20 claims will increase from $20,000 to $25,000, and the undiscounted post-grant or covered business method review post-institution fee for up to 20 claims will increase from $27,500 to $34,375.
Clients and their outside counsel should engage early in their portfolio planning activities for 2025 – and beyond. Importantly, clients should update their operating budgets to account for the USPTO’s hefty government fee increases. Doing so will ensure adequate funds are available for legal spend in helping strategically identify, file, prosecute and maintain valuable patent assets for the company. For any green-lighted projects in the near future, clients could save money by filing applications and RCEs and paying issue and maintenance fees before the fee increase takes effect.
Clients should embrace compact prosecution strategies, including examiner interviews, to reduce the likelihood of requiring a second and subsequent RCE. Unless absolutely required to fully protect a technology, clients should consider filing 20 or fewer claims and no more than three independent claims to prevent heavy excess claim fees. As for continuing applications, it will be important to monitor the six- and nine-year deadlines from the EBD to avoid incurring additional fees. Further, clients and outside counsel should explore whether any eligible discounts can be leveraged by the applicant claiming small-entity or micro-entity status. However, any changes in entity status (e.g., small to large) should be monitored and updated with the USPTO to avoid any risks of a patent being found unenforceable for inequitable conduct.
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