New Patent Fee Increases Set to Take Effect in Early January

The USPTO has announced final rules for implementing its proposed fee increases. The fee increases will take effect on January 19, 2025. The final rules were shaped by public feedback regarding the proposed fees. Ultimately, as detailed in the table below, the USPTO declined to move forward with certain targeted proposals but decided to proceed with other fee changes.

Implemented	Not Implemented
Upward adjustment of the timing thresholds for continuing applications	New fee for After Final Consideration Pilot 2.0 requests
Substantial reduction to the adjusted patent term extension fee ($2,500)	Targeted increase to the patent term adjustment fee
Elimination of the proposed new tier for third and subsequent requests for continued examination, and corresponding adjustments to the existing fee for second and subsequent requests	Terminal disclaimer tiered fees

The fee increases introduce additional aspects to consider when making decisions regarding filing and response strategies for US patent applications. The following examples list fees at the undiscounted (large entity) rate.

The final rules impose a surcharge for filing continuing applications based on new timing thresholds, which are as follows:

$2,700 for applications filed 6-9 years after earliest benefit date; and
$4,000 for applications filed more than 9 years after earliest benefit date.

With these new rules, you might consider accelerating the filing of continuing applications.

Further, the final rules limited the tiers for Request for Continued Examination (RCE) fees to two levels (instead of the initially proposed three tiers). The fee for the first will be $1,500 (+10% over current fee), and the fee for the second and each subsequent RCE will be $2860 each (+43% over current fee). In light of these fees, applicants might consider more aggressive prosecution or addition of dependent claims when responding to the first or second Office Actions, to avoid the need to file an RCE. Applicants might also consider appealing earlier and more often. While adding claims is a useful strategy, the substantial increase in fees for dependent claims over 20 ($200/claim) and for independent claims in excess of three ($600/claim) may decrease the frequency of this approach.

For more information on these fee adjustments, please see the Federal Register notice, visit the fee setting section of the USPTO website, or reach out to your Buchanan patent team member.