Not Just Pocket Change: 5 Big Upcoming USPTO Fee Changes and What You Can Do to Mitigate Costs

Are you concerned about how upcoming USPTO fee changes are going to affect your bottom line? Read on to find out what you can do to mitigate the effects of the new fees on developing your patent portfolio.

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The USPTO recently proposed government fee changes planned to go into effect in 2025. The changes are sweeping, including across-the-board increases of around 5%.

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In addition to simply raising the costs of many fees, the changes are expected to introduce new types of fees which did not exist before.

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In this article, we will talk about some of these proposed new types of fees and how patent applicants might mitigate costs (aside from the obvious of simply filing less ??).

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At the time of writing of this article, the USPTO is currently taking public comments on the proposed fee changes. The fees are not finalized yet, but for purposes of this article we will assume that at least the proposed new types of fees will be added, even if the fee amounts are ultimately reduced before they go into effect.

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Without further ado, let’s dive into some of the proposed changes and what you might consider doing about them (or changes like them).

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One: Continuing Application Fees

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Historically, the fee for filing a continuing application such as a continuation has been the same as filing any new non-provisional application. That is, a continuation would generally have the same filing/search/examination fees, plus any fees for optional add-ons like additional claims or a Track One request, as an original non-provisional application.

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Among the new fees proposed by the USPTO are fees for filing continuations after certain amounts of time have passed. Specifically, the new fees include fees for filing applications more than 5 years after the earliest priority date and more than 8 years after the earliest priority date, respectively.

These new continuation fees are fairly steep compared to the basic filing/search/examination fees, clocking in at 2200/880/440 after 5 years and 3500/1400/700 (in USD) after 8 years for large/medium/small entities, respectively.

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The result is a potentially large increase in the costs of filing continuing applications as time goes on, and the changes are expected to hit some technology sectors harder than others.

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Many companies make the strategic decision to keep an application related to certain inventions pending at all times, which can involve filing continuations long after the earliest priority application was filed. Companies who currently employ this strategy or are considering employing this strategy may want to project their expected expenses under the new pricing scheme in order to ensure that their IP budget accounts for these new fees.

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Companies may also choose to be more selective about which applications are kept perpetually pending through continuations. Rather than filing continuations by default, these companies may request their counsel to provide targeted recommendations about legal value of different patent applications which takes into accounts the scope and number of parent applications/patents in order to decide which applications are worth investing more in.

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Additionally, companies might consider choosing to file continuations before the next level of continuation fee increase would affect their applications. That is, for applications pending now which have earliest priority dates that are 5 or more years old, companies should consider filing continuations of these applications before the fee changes go into effect.

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Once the fee changes go into effect, companies might consider filing continuations before either the 5 or 8 year anniversaries of their priority dates in order to avoid the higher continuation filing fees.

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Two: Information Disclosure Statement Size Fees

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Information disclosure statements (IDSs) can already carry fees, for example when IDSs are submitted later in prosecution. The new fees proposed for IDSs would penalize filing IDSs based on the number of references cited by the applicant during prosecution.

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Specifically, the proposed IDS fees would apply for any IDS which raises the total number of references submitted by the applicant above certain thresholds. The thresholds are 50 total references, 100 total references, and 200 total references, respectively. That is, if an IDS would cause the total number of references cited by the applicant during prosecution to surpass one of these thresholds, the corresponding IDS size fee would need to be paid.

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Due to the potential consequences on both the applicant and the practitioner for failing to cite potentially relevant references, citing high numbers of references may be unavoidable in some cases. What applicants may choose to do is elect to file fewer applications which are closely related (and therefore would have been likely to require cross-citing of references between them).

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In other words, applicants may consider potential effects of filing many applications with overlapping claim features, as such large groups of interrelated applications often trigger many IDS references to need to be cited in multiple applications (for example, every time an office action is mailed in one case, it may trigger new references to be cited in several other cases).

That said, companies seeking to dominate a market or heavily mitigate litigation risks might decide that filing large numbers of applications is still worth the additional costs. Applicants who choose to continue filing many such interrelated applications may simply choose to budget accordingly based on past history of cross-citations.

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Three: New Request for Continued Examination (RCE) fee for 3rd or Subsequent RCE

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In addition to fees for RCEs increasing across-the-board, the USPTO has proposed a new stage for RCE fees. Currently, the first RCE filed in a given application has one fee, and each subsequent RCE beginning with the second RCE filed in that application is subject to a higher fee.

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The proposed fee changes would introduce a new stage for the 3rd RCE. The result is that a first RCE in a given application would be subject to the lowest RCE fee, the second RCE would be subject to a middle RCE fee, and each RCE beginning with the third would be subject to the highest RCE fee.

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The overall effect of this new RCE fee stage would be to increase the cost of continuing prosecution after the second round (with a round often including a non-final rejection and a final rejection).

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Applicants looking to avoid excessive RCE fees may place more emphasis on wrapping up prosecution quickly. Alternatively, applicants may consider appealing sooner when it appears that arguments with the examiner have reached an impasse. More frequent examiner interviews may help inform practitioners about the likelihood of reaching an agreement with an examiner soon.

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Four: Terminal Disclaimer Fees Based on Timing

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A common solution to overcome a non-statutory double patenting rejection is to file a terminal disclaimer. Currently, there is a fee for filing any terminal disclaimer, but the amount of the fee does not change during prosecution.

The proposed fee change would increase the amount of the terminal disclaimer fee depending on the stage of prosecution as defined with respect to different kinds of office actions, appeal, or allowance.

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Because the terminal disclaimer fee historically did not change over time, many practitioners previously requested the patent office to simply hold the double patenting rejection in abeyance. This would essentially be asking to set the double patent rejection aside until the claims are otherwise allowable.

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With the terminal disclaimer fees now increasing as prosecution continues, applicants might consider whether they should submit terminal disclaimers earlier in the process rather than hold double patenting rejections in abeyance.

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Also, reducing the number of interrelated applications which claim similar subject matter, including continuations whose claims are close to their parent applications, can have an impact on reducing the amount of terminal disclaimer fees applicants are charged.

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Five: After Final Consideration Pilot (AFCP) 2.0 Fee

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The AFCP program, which the USPTO says is designed to enhance communication between the Office and patent applications, has historically been free. The program can help applicants decide whether to appeal or lock up an allowance when the application is already close to being allowable.

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Now, the USPTO is proposing to charge a fee for AFCP requests. The fee would be 500/200/100 (large entity/small entity/micro entity, in USD). Especially with the increases to RCE fees (which we covered earlier in this article), this new AFCP request fee is still significantly lower.

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That said, for many applicants, the allure of the AFCP program rested in the price of entry (free). The AFCP program always had a hidden cost in that an AFCP request does not toll the time period for responding to a final office action. If an examiner does not respond to an AFCP request before the 3 month deadline, then applicant would also need to pay fees for extensions of time on top of the new AFCP request fees.

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Because of the hidden costs and because examiners frequently say that the changes “require further search and consideration” (which effectively means that the AFCP request did not yield new information), I suspect that applicants will be increasingly critical about the value of submitting AFCP requests going forward.

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Going forward, it may be helpful to interview examiners prior to submitting AFCP requests and asking if they believe an AFCP request would be likely to yield more information or an allowance. If so, then an AFCP request may be useful despite the cost. Otherwise, the applicant may want to consider simply filing a Request for Consideration (RCE) or Notice of Appeal rather than spend resources on an AFCP request.

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Conclusions

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As an overall takeaway, the proposed new targeted fees share a common theme of tending to increase costs more the longer that prosecution continues and the more interrelated applications an applicant files.

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Applicants who pursue strategies that reduce the time during which applications are pending, as well as applicants who file fewer applications claiming similar subject matter, may be able to reduce the impact of these fee changes.

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By carefully balancing smart cost-saving moves against legal needs and business priorities, applicants can continue maximizing the value of their patent portfolio despite the challenges posed by these fee changes.

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If you liked the article, follow the author Ryan McCormick and #PatentProTips for more content like this!

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#uspto #patentprosecution

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This article is for educational purposes only, is not legal advice, and does not form an attorney-client relationship. Any decisions to save on costs should be weighed carefully against the legal consequences of such decisions, and should take into account an individual’s or organizations particular situation. The opinions expressed in this article belong to the author only and do not necessarily reflect the opinions of the author’s employer or any organizations to which the author belongs. Do not take legal advice from LinkedIn articles.