The USPTO has announced its Notice of Proposed Rulemaking (NPRM) for raising fees in 2025.  The NPRM retains most of the fee adjustments that were first proposed in 2023, with only a few changes made in response to input from the Patent Public Advisory Committee (PPAC).  The fees are significant and can greatly impact some patent filing and prosecution strategies.  The changes in the USPTO fees are briefly described below.

Examples of Significantly Higher Fees

  • A 75% increase in design application issue fees.
  • A 27% increase in design application filing fees.
  • A 10% increase in utility application filing fees.
  • Requests for Continued Examination
    • $1,500 for a first RCE (10% increase)
    • $2,500 for a second RCE (25% increase)
    • $3,600 for a third RCE (80% increase)
  • Excess claims fees
    • $200 for each claim over 20 (100% increase)
    • $600 for each independent claim above 3 (25% increase)
  • $6,700 for Patent Term Extension applications (468% increase)

Examples of New Fees That Could Impact Filing and Prosecution Strategies

  • A $500 fee to participate in the After Final Consideration Pilot Program
  • Continuation Application Surcharges
    • $2,200 for Continuations filed more than 5 or more years after the earliest effective priority date
    • $3,500 for Continuations filed more than 8 or more years after the earliest effective priority date
  • Escalating Terminal Disclaimer Fees
    • $200 to file a Terminal Disclaimer before a first Office Action on the merits
    • $500 to file a Terminal Disclaimer before a final Office Action
    • $800 to file a Terminal Disclaimer after a final Office Action or Allowance
    • $1,100 to file a Terminal Disclaimer on or after filing a Notice of Appeal
    • $1,400 to file a Terminal Disclaimer after patent grant
  • Escalating Information Disclosure (IDS) Fees (Based on Cumulative Number of References)
    • $200 for more than 50 references
    • $300 for more than 100 references
    • $300 for more than 200 references

The NPRM does respond to feedback provided by the PPAC in 2023, but the fee increases generally remain unchanged.  Although the USPTO is required to accept and respond to properly submitted comments from various stakeholders through the Federal eRulemaking Portal by June 3, 2024, we would expect that the USPTO is unlikely to make any significant changes given the minimal changes that were made in response to feedback from the PPAC.

The new and increased fees are likely to impact patent filing and prosecution strategies for all of our clients.  However, different clients will be impacted in different ways.  We invite all of our clients to arrange for a discussion with us on how to reduce or minimize the impact of the increased and new fees on their budgets.