Every 2-4 years, the U.S. Patent and Trademark Office (USPTO) updates its schedule of fees in patent and trademark matters. On April 20, 2023, the USPTO published its latest fee change proposals which includes both increases to existing fees and some notable new fees. The fees in the proposal are subject to change until a final rule is published in the fall of 2024. Currently, the new and increased fees are expected to take effect in January 2025.
This article highlights some of the significant fee changes with a focus on the fees for large entities. However, Applicants qualifying for small entity or micro-entity status benefit from a 60% reduction and an 80% reduction, respectively, of these fees.
A full listing of the patent fee changes can be found here.
Most patent fees are being increased by between 5% and 10%. For example, the aggregate of the filing fee, search fee, and examination fee for utility patent applications is increasing by 10% (from 1,820 USD to 2,000 USD). Each maintenance fee for issued patents is increasing by 5%. All extension of time fees are expected to increase by 5%, and the fee for the first Request for Continued Examination (RCE) will increase by 10% (from 1,360 USD to 1,500 USD).
RCE fee is increasing by 25% (from 2,000 USD to 2,500 USD). The aggregate of the filing, search, and examination fees for design patent applications is increasing by over 27% (from 1,020 USD to 1,300 USD).
In the US, an applicant may file a utility patent application including up to twenty (20) claims of which three (3) may be independent claims without payment of excess claim fees. Excess fees must be paid when more than three (3) independent claims, more than twenty (20) claims, and any multiple dependent claims are filed. For this reason, multiple dependent claims, which are commonplace in European patent practice, are usually removed when filing an application originating in Europe at the USPTO.
Below are the proposed fee increases for excess claims:
Each independent claim in excess of three: From 480 USD to 600 USD (25% increase)
Each claim in excess of twenty: From 100 USD to 200 USD (100% increase)
Multiple dependent claim: From 860 USD to 905 USD (5% increase)
Thus, applicants are discouraged from filing excess claims, especially given that these excess claim fees are not refundable if claims are later canceled due to a Restriction Requirement.
Finally, the fee for filing an application for Patent Term Extension (PTE) in connection with the Food and Drug Administration / U.S. Department of Agriculture approval process is increasing by 468% (from 1,180 USD to 6,700 USD). According to the USPTO, the current fee covers only a small percentage of the actual costs incurred by the complex and lengthy process of reviewing a PTE application. The increased fee will allegedly redistribute the costs of this review to only those applicants requesting this service.
Fee for Information Disclosure Statement based on number of references cited
Unlike the European Patent Office, the USPTO imposes a duty of candor and good faith on all individuals associated with the filing and prosecution of a patent application. This duty requires these individuals to disclose to the USPTO all information known to be material to patentability. This information is submitted by filing an Information Disclosure Statement (IDS). The fee for filing an IDS is increasing by 6% (from 260 USD to 275 USD). Therefore, as always, it is advisable to collect and submit all necessary information together in a single IDS filed early during the U.S. examination process to minimize payment of multiple IDS fees. It is also important to remember that a patent granted in connection with a violation of this duty of disclosure through bad faith or intentional misconduct may be rendered unenforceable based on a finding of inequitable conduct.
The USPTO intends to charge new fees based on the cumulative number of references submitted, which some U.S. patent practitioners believe conflicts with the duty of disclosure. A fee will be owed to the USPTO at the first instance filing an IDS causes the cumulative number of applicant-provided citations (e.g., citations by the examiner appear to be excluded) to exceed a threshold of 50, 100, or 200 references as set forth in the charge below.
First time filing an IDS that causes the cumulative number of applicant-provided citations to exceed 50
First time filing an IDS that causes the cumulative number of applicant-provided citations to exceed 100
First time filing an IDS that causes the cumulative number of applicant-provided citations to exceed 200
These fees are cumulative such that, if an initial IDS is filed with 250 references, the fee for filing of an IDS must be paid along with 800 USD based on the number of references cited. Given the devastating consequences of failing to abide by the duty of disclosure, Applicants should not allow themselves to be discouraged from submitting information to the USPTO based on these added costs.
The USPTO proposes charging a new fee of 1,500 USD for filing a continuing application more than three (3) years after the earliest benefit date and a new fee of 3,000 USD for filing a continuing application more than seven (7) years after the earliest benefit date. This fee would be in addition to the filing fee, examination fee, and search fee paid for any patent application.
Even though this will have to be confirmed, this new fee seems to concern continuations and continuation-in-part applications, as well as divisional applications.
At present, various U.S. professional organizations have requested that the USPTO elaborate on how these fees might apply to applications claiming priority to foreign (i.e., non-US) applications and to U.S. national stage entries of PCT applications. Given that a U.S. national stage application is usually filed 30 months after its priority date and given that examination of such applications is unlikely to occur within 36 months of the priority date, European applicants utilizing the PCT system may be more likely to pay these surcharges compared to U.S.-based applicants that first file at the USPTO for continuing applications.
Fee for After Final Consideration Program (AFCP) 2.0 Request
The AFCP 2.0 Program was created in 2014 to allow U.S. Examiners additional search time to consider claim amendments after the issuance of a Final Office Action with the goal being that an Examiner is able to issue a Notice of Allowance without requiring the applicant to pay for an RCE.
Historically, there is no charge to applicants for filing an AFCP 2.0 Request. The USPTO proposes to add a fee of 500 USD for an AFCP Request. Given that U.S. Examiners can unilaterally deny these Requests without much explanation and given that the USPTO has not presently stated whether or not the fee is refundable if the Request is denied, Applicants may wish to be more selective in filing AFCP 2.0 Requests. For instance, it may be advisable to file an AFCP 2.0 Request in those cases in which the examination process seems to be nearly completion and where relatively minor claim amendments are likely to overcome all remaining rejections.
Fee for three or more RCEs
The USPTO does not restrict the number of RCEs that an applicant may file. Thus, applicants can theoretically file an unlimited number of RCEs in order to reach a Notice of Allowance. The USPTO proposes a new fee for a third RCE and any subsequent RCEs in the amount of 3,600 USD, which is an increase of 80% compared to the 2,000 USD previously paid for two or more RCEs. In view of these increased costs, applicants may be encouraged to pursue an appeal rather than an RCE or encouraged to abandon applications from a cost-benefit perspective.
Fees for Terminal Disclaimers Based on State of Examination
Applicants frequently overcome obviousness-type double patenting rejections by filing a Terminal Disclaimer. Obviousness-type double patenting rejections arise when claims of a pending application are considered to be an obvious variation of claims in a patent or application having some commonality of inventorship or ownership. Such pending claims are subject to changes in scope when claim amendments are filed during the examination process. Thus, applicants in certain industries, such as the life sciences industry, are hesitant to file these Terminal Disclaimers which may result in significant loss of patent term. Such applicants are encouraged to argue against obviousness-type double patenting rejections until the final claim scope is known toward the end of the examination process.
Historically, a fee of 170 USD was paid with the filing of a Terminal Disclaimer irrespective of when the Terminal Disclaimer was filed. The USPTO now proposes to varying the fee for Terminal Disclaimer based on when the Terminal Disclaimer is filed set forth below:
Before a first Office Action on the merits: 200 USD
Before a Final Office Action: 500 USD
After the Final Office Action or a Notice of Allowance: 800 USD
After Notice of Appeal: 1,100 USD
Some U.S. professional organizations have commented to the USPTO that this tiered fee scheme would penalize applicants for defending their patent rights while the scope of the final scope of the claims is still uncertain.
As previously stated, the above proposals are subject to changeand will not be implemented until 2025. Thus, applicants have time to consider how these proposals will affect their patent strategies in the United States. For more information and further updates to the fee change process, the USPTO publishes fee setting and adjusting information here.
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