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The U.S. Patent and Trademark Office (USPTO) has proposed a significant increase in patent fees, including the implementation of entirely new fees and revamped fee structures. The USPTO has indicated that the fee proposal is expected to be implemented around January 2025.

Here is how applicants would be affected:

• Utility patent application — initial filing fees increase from $1820 to $2000 for large entities (500 or more employees)
• Design patent application — initial filing fees increase from $1020 to $1300 for large entities
• Extra claims — double from $100 to $200 for each claim beyond 20 total claims
• Information Disclosure Statement (IDS) submissions — new tiered fees once total number of cited references exceeds 50, 100, and 200 references
• After Final Consideration Pilot Program submissions — entirely new fee
• Request for Continued Examination (RCE) — new tiered fees for first, second, and third and subsequent RCE filings
• Continuation (CON) applications — new tiered fees for CONs with benefit claims beyond three years and seven years
• Across-the-board increases of 5% for most fees
• Terminal disclaimers — new tiered fees based on timing of filing a disclaimer
• Patent Trial and Appeal fees — increase of 25% to request review

Increased Fees for New Application Filings

Under the USPTO's proposal, the initial filing fees (filing/search/examination) for a new utility patent application will increase from $1,820 to $2,000 for large entities. The percentage increase is higher for a new design patent application, which would increase from $1,020 to $1,300 for large entities. According to the USPTO's Executive Summary of the Patent Fee Proposal, the current fees "do not sufficiently recover the cost of examination of design patents and are subsequently subsidized by utility applicants."

Extra Claims Fees Disproportionately Impacted

When a utility application is filed with, or amended to include greater than 20 total claims, or greater than three independent claims, extra claims fees are assessed. Under the USPTO's proposal, the fee for each independent claim will increase from $480 to $600 for large entities, an increase of 25%. The fee for each total claim beyond 20 claims would double from $100 to $200 for large entities. The USPTO's rationale for such large increases is "[b]etter alignment with the cost of examining an application with excess claims," and encouraging "applicants to be more efficient in the number of claims filed," according to its Executive Summary. For example, for a new utility patent application with a sizable, but not unusually large, claim set of 40 claims (including five independent claims), the initial filing cost would increase from $4,780 currently to $7,200 under the new proposal – an increase of more than 50%.

IDS Practice: New Tiered Fee Structure

Currently, a fee is charged for submission of an Information Disclosure Statement (IDS) only at certain times, for example, if the IDS is filed after issuance of a Final Office Action. The USPTO is seeking to impose an entirely new tiered fee structure in which fees will be assessed once the cumulative number of cited references exceeds 50, 100, and 200, respectively. These fees will be up to $300 for each tier.

New Fee for Filing an After Final Consideration Pilot (AFCP 2.0) Request

The AFCP 2.0 program has been in effect for nearly a decade, and has proven to be an effective tool for promoting compact prosecution. By filing an AFCP 2.0 request, an applicant can expedite prosecution once an application is under a Final Office Action. Until this fee proposal, which seeks to institute a $500 fee for large entities, the USPTO has never included an additional charge for filing the AFCP 2.0 request. According to the USPTO's Executive Summary, the fee is needed for cost recovery of examination time. However, any such charge is likely to discourage filing of an AFCP 2.0 request, which may lead to an increase in RCE filings.

Request for Continued Examination (RCE) Practice: Increases for Serial Filings

The USPTO's current fee structure includes a fee of $1,360 for a first RCE filing and $2,000 for a second or subsequent RCE filing. Under the USPTO's proposal, an additional tier would be created, thus resulting in a total of three tiers:

• First RCE will increase from $1,360 to $1,500
• Second RCE will increase from $2,000 to $2,500
• Third or subsequent RCE will increase from $2,000 to $3,600 – an increase of 80% for this additional tier

According to the USPTO, about 9% of RCEs are third or subsequent RCEs. However, imposing an additional tier may be counterproductive by encouraging applicants to file appeals, instead of resolving outstanding issues in prosecution.

Continuation Applications: New Fee Structure Based on Priority Date

The USPTO has proposed a significant change in how fees are charged for continuation (CON) applications by tying the fee amount to the earliest priority date. If a CON application is filed more than three years after the earliest priority date, then a surcharge of $1,500 would be incurred (large entity), in addition to the filing fees. If the CON application is filed more than seven years after the earliest priority date, then a surcharge of $3,000 would be incurred (large entity). According to the USPTO, the proposed new fee structure is intended to "partially offset maintenance fee revenue resulting from later-filed continuing applications." In view of the proposed changes to RCE and CON filings, applicants may want to adopt prosecution strategies that avoid the need for multiple RCEs, while being mindful of the dates on which the CON surcharges would be assessed.

Terminal Disclaimers

In another fee proposal that departs significantly from past practice, the USPTO has proposed an entirely new fee structure for filing a terminal disclaimer. Currently, a flat fee of $170 is required for submission of a terminal disclaimer. Under the new fee structure, the timing for filing the terminal disclaimer would become relevant. The flat fee of $170 would be replaced by a tiered fee structure, with a total of four tiers:

• Before a first Office Action, $200
• Before a Final Office Action, $500
• After the Final Office Action or a Notice of Allowance, $800
• After a Notice of Appeal, $1,100

In addition, a terminal disclaimer filed in an issued patent would result in a charge of $1,400. The USPTO notes that 90% of terminal disclaimers are filed after issuance of a first Office Action, and they would like to encourage earlier filing of terminal disclaimers "to reduce unnecessary examination costs" and provide "greater certainty for the public." However, what is best for the USPTO may not be advisable for applicants, and this proposal bears further watching.

America Invents Act (AIA) Trial Fees to Increase by 25%

The USPTO has proposed increasing AIA trial fees by 25%, including fees associated with Inter Partes Review (IPR), post-grant review and covered business method review.

Timing and Considerations

As stated above, the USPTO has indicated that the fee proposal is expected to be implemented on or about January 2025. After completing a comprehensive patent fee review, the USPTO has determined that fees must be increased to increase aggregate revenue. According to the USPTO, implementation of the Unleashing American Innovators Act (UAIA) in December 2022, which increased small entity discounts to 60% and micro entity discounts to 80% as compared to large entity rates, resulted in lost fee revenue, and when combined with overall increases in inflation, has increased the USPTO's operating costs. However, the USPTO has considerable discretion to change individual fees, so feedback from the public may result in changes. A public hearing before the Patent Public Advisory Committee (PPAC) is scheduled for May 18, 2023.

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