Everything You Need to Know About the Updated Information Disclosure Statement (IDS) Fee Structure

The USPTO has introduced significant changes to the information disclosure statement (IDS) filing process, effective January 19, 2025. These changes introduce a new fee structure that significantly impacts how patent practitioners manage their IDS submissions. Navigating these requirements may seem challenging, so here is a guide to help you manage your IDS filings effectively.

The New IDS Size Fee System

The centerpiece of these changes is the introduction of the IDS size fee – a new fee category that scales with the total number of references cited in an application. The key principle is simple: every unique reference cited in an IDS contributes to a running total that determines your fee.

The IDS size fee accounts for all references cited throughout the application’s lifecycle, including those disclosed in previous IDS filings and any new references submitted with the current IDS. However, there are important considerations to remember:

• References listed in 892 forms are excluded from the cumulative total.
• References rejected by the Examiner in 1449 and later cited in an IDS are counted only once.
• For applications with a Request for Continued Examination (RCE), the cumulative count starts from the initial IDS before the RCE, covering all references cited before and after the RCE, counted only once.

Each time you file an IDS, you must include an “IDS size fee assertion” stating whether you’ve paid the appropriate size fee or that none is required. This is separate from the standard IDS fee, which may still apply depending on your prosecution stage. Importantly, the new size fee applies equally to all applicants. In contrast, standard IDS fees offer discounts for small and micro entities.

By understanding these basics, you can better manage your reference submissions and control costs. The key is maintaining accurate records of your cumulative references and planning your submissions strategically.

CFR Provisions for IDS Fee Structure

The new fee structure for IDS practice is outlined below, detailing the IDS size fee corresponding to various CFR provisions:

37 CFR $ 1.17(v)

If the total number of cumulative references in an IDS is 50 or fewer, applicants do not need to pay an IDS size fee. However, when the IDS fee applies under the prosecution fee stages, applicants must pay $280 for large entities. The amount will differ for other entity sizes.

37 CFR $ 1.17(v)(1)

If an IDS includes 51 to 100 cumulative references, applicants must pay an IDS size fee of $200.

• If the USPTO prosecution fee stages do not apply, applicants must pay only the IDS size fee of $200.
• If the USPTO prosecution fee stages apply, applicants must pay an IDS fee of $280 (for a large entity or according to the entity size) in addition to the IDS size fee of $200, bringing the total to $480.

37 CFR $ 1.17(v)(2)

When the IDS includes between 101 and 200 cumulative references, applicants are required to pay an IDS size fee of $500.

• If the IDS fee does not apply based on the prosecution fee stages, applicants must pay only the IDS size fee of $500.
• If the IDS fee applies based on the prosecution fee stages, applicants must pay an IDS fee of $280 (for a large entity or according to entity size) in addition to the IDS size fee of $500 (minus any previously paid amount).
• For example, if applicants already paid $200 under 37 CFR § 1.17(v)(1), they must pay the remaining $300 ($500 – $200) for the IDS size fee, while the IDS fee of $280 remains unchanged based on the prosecution fee stages.

37 CFR $ 1.17(v)(3)

If the IDS contains more than 200 cumulative references, applicants must pay an IDS size fee of $800.

• If the IDS fee does not apply based on prosecution fee stages, applicants must pay only the IDS size fee of $800.
• If the IDS fee applies based on prosecution fee stages, applicants must pay an IDS fee of $280 (for large entities or according to entity size) in addition to the IDS size fee of $800 (minus any previously paid amount).

Important Notes:

1. All size fees are fixed regardless of entity size
2. The standard IDS fee ($280) varies with entity size
3. Previous size fee payments are credited toward higher tiers
4. Track references carefully to determine appropriate tier
5. Consider the prosecution stage to determine if the standard IDS fee applies

The USPTO’s tiered fee structure emphasizes a clear correlation between reference volume and filing costs. Understanding these CFR provisions is crucial as it directly impacts your IDS filing strategy and budget. Carefully tracking cumulative reference counts and understanding the relationship between size fees and standard IDS fees is crucial. This enables practitioners to make informed decisions on when and how to submit references.

This not only ensures compliance but also helps optimize costs throughout the patent prosecution process. While the initial tracking may require extra effort, the potential cost savings make it worthwhile. It also helps ensure a smoother prosecution process, making it a valuable investment in your patent practice.

Adjustment for Previously Paid Size Fees

The USPTO applies a straightforward credit system for previously paid Information Disclosure Statement (IDS) size fees. When moving to a higher fee tier, you only pay the difference between the new tier’s fee and what you’ve already paid. This progressive fee structure works as follows:

• If applicants already paid an IDS size fee of $500 under 37 CFR § 1.17(v)(2), they must pay the remaining IDS size fee of $300 ($800 – $500), while the IDS fee of $280 (for a large entity or according to entity size) remains unchanged based on the prosecution fee stages.
• If applicants already paid an IDS size fee of $200 under 37 CFR § 1.17(v)(1), they must pay the remaining IDS size fee of $600 ($800 – $200), while the IDS fee of $280 (for a large entity or according to entity size) remains unchanged based on the prosecution fee stages.

This credit system protects applicants from penalties for incremental references. It also maintains the integrity of the USPTO’s fee structure.

Best Practices for Filing an IDS Under the New USPTO Fee Structure

Navigating the updated USPTO rules for Information Disclosure Statement (IDS) filings requires thoughtful attention to detail. The new IDS size fees and stricter requirements create a framework where careful preparation ensures smooth prosecution. Here are some key considerations when filing an Information Disclosure Statement (IDS):

• The updated “SB/08 – Patent Center” form serves as your foundation for each IDS filing. This form requires a written assertion about the IDS size fee, regardless of whether a fee applies. This assertion is critical – without it, your IDS won’t receive Examiner consideration. To streamline this process, the USPTO has included convenient checkbox options for each fee scenario in the updated form.

• When your submission requires a size fee, take note: a general deposit account authorization won’t suffice. The new § 1.98(a) rule requires specific authorization for the IDS size fee under 37 C.F.R. § 1.17(v). In these cases, you’ll need to submit a separate “Information Disclosure Statement Size Fee – Written Assertion Under 37 CFR 1.98” form.
• Ensure accurate counting of cumulative references to select the correct checkbox during IDS filing.
• Pay the appropriate size fee corresponding to the fee scenario when submitting the IDS.

The consequences of inaccurate filings can be significant. Submitting an incorrect written assertion or failing to pay the required IDS size fee will result in the Examiner not considering your references. In such cases, you’ll need to resubmit through a new IDS, potentially incurring additional fees depending on the prosecution stage. These costs can be substantial. They may reach up to $2,860 if a second or subsequent request for continued examination (RCE) is needed to reopen prosecution and include the IDS.

Maintaining attention to detail and following these practices will ensure a smoother IDS filing process. This approach will help you sidestep complications during your patent prosecution journey.

Summing Up

The updated IDS fee structure seeks to balance efficient examination with the rising volume of prior art submissions at the USPTO. The USPTO introduces the IDS size fee to encourage applicants to disclose only the most relevant references. This approach helps reduce unnecessary burdens on the examination process.

These changes emphasize the importance of strategic and timely IDS filings, as fees and certification requirements depend on timing and reference volume. Adapting to these new guidelines will ensure compliance, optimize costs, and streamline prosecution. It will also enhance examination quality, leading to stronger and more reliable patents.

At Sagacious Elevate, we simplify IDS filings and help you confidently navigate the new USPTO fee structure. Contact us to ensure compliance and optimize costs.

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