Understanding the New USPTO Fee Schedule: 2025 Updates

The United States Patent and Trademark Office (USPTO) has announced significant changes to its USPTO fee schedule, effective January 19, 2025. These changes reflect the office’s need to meet rising operational costs. Let’s explore how these updates will affect patent applications and what strategies you can use to manage these new costs. 

Key Changes in the USPTO Fee Schedule

The new fee schedule introduces several higher costs, especially in the areas of basic filing, and prosecution.

Basic Filing and Prosecution Fees

The USPTO fee schedule shows notable increases for design patent applications. The new fees apply to all types of applicants: 

Patent Term Extensions Made More Affordable 

The USPTO often conducts public feedback sessions and makes sure its practices align with stakeholders’ needs. In response to feedback on the increased fees, the USPTO chose to adjust the cost for Patent Term Extensions (PTE). Initially, the fee was proposed at $6,700, but it was lowered to $2,500 to make it easier for applicants to afford.

Fees for Excess Claims 

The new USPTO fee schedule introduces increased fees for excess claims, including both independent claims and claims exceeding 20. The updated fees are as follows:

Note: These increases also apply to reissue and re-examination claims for all entity types.

Request for Continued Examination (RCE) Fees 

The cost for the first request has increased for all entities, and there are extra charges for subsequent requests after the first one. Here are the new prices: 

Terminal Disclaimer (TD) Fee Adjustments 

The USPTO initially proposed a tiered fee structure for TD filings, but this plan was scrapped after public comments. Instead, the TD fee has been modestly increased from $170 to $183. 

Continuation Applications: A Time-Based Fee Structure 

The USPTO has introduced a time-based fee structure for continuation applications (including divisional and continuation-in-part filings). Fees are now tied to the elapsed time from the earliest benefit date: 

Note: The USPTO cites the rapid growth of continuations as a strain on its resources. Reviewing patent families early can help determine whether filings are essential under the updated USPTO fee schedule. 

Information Disclosure Statement (IDS) Fees 

The new increased fee for IDS applies exclusively to undiscounted entities and is based on the number of references cited. IDS are essential for disclosing relevant prior art to the patent examiner during the application process. 

• An IDS with 50-100 references will cost $200  

• An IDS with 101-200 references will cost $500 

• An IDS with more than 201 references will cost $800. 

Note: For IDS containing more than 101 references, the already paid cost will be adjusted. 

Suggestions for IDS Management from Sagacious IP 

• Categorization of References: As paralegal practitioners, we have observed that examiners label references as X, Y, A, and so on, to show how relevant they are, as you can see in the image below. To help with this, we added a column in our master sheet to highlight the reference category if it’s provided.

• Evaluate Relevance Based on Categorization: Applicants and attorneys should assess the relevance of references based on their assigned categories before submitting Information Disclosure Statements (IDS) for counterpart applications. This step ensures that only pertinent references are included, optimizing the submission process. 

• Avoid Citing Counterpart: We recommend not citing counter-part office action (OA) as a Non-patent literature (NPL) in IDSs to avoid unnecessary complications. 

• Review of Counterparts and Equivalents: Regularly review counterpart applications (those filed in different jurisdictions) and their equivalents. This practice aids in identifying previously cited references and determining the necessary actions for efficient IDS management. 

Note: For continuing applications claiming benefit under 35 U.S.C. 120 to a patent application (excluding international applications designating the U.S.), applicants need not include an IDS listing prior art cited by the examiner in the parent application unless they want this information printed on the continuing application’s patent. The examiner will review the prior information from the parent application during the examination of the continuation application. 

Tips for Adjusting to the New Fee Changes 

Dealing with the updated USPTO fee schedule might feel tough, but with smart planning, you can lessen its effects. Here’s how: 

1. File Early: File pending continuation and non-provisional applications before January 19, 2025, to avoid higher fees. 

2. Streamline Patent Families: Review important patent families and identify deadlines six and nine years after priority dates to avoid continuation surcharges. 

3. Optimize Claims and Disclosures: Write concise claims to avoid excess claim fees, use examiner interviews to reduce the need for RCE filings, and avoid overloading IDS submissions with redundant references. 

4. Leverage Technology and Expertise: Use advanced patent management software and work closely with experienced practitioners to navigate the fee changes. 

Conclusion 

The updated USPTO fee schedule brings major changes to patent filing costs. While some fees have gone up a lot, knowing about these changes helps with better planning and managing expenses. By being smart about when and how you file, you can reduce the effect of these new fees on your patents. The key to handling these changes is planning and thinking strategically.

Whether you are an individual inventor or part of a big company, understanding and adjusting to the new USPTO fee schedule will be essential for successfully managing your patents in 2025. By aligning your patent strategy with these new fees, you can keep your patent portfolio strong without overspending. It’s a good idea to talk to a patent expert to find the most cost-effective way to handle your needs under this new fee system. 
 
Sagacious IP provides customized solutions to enhance your IP filings, cut costs, and manage portfolios efficiently. With our global expertise and advanced technology, we assist innovators and businesses in achieving affordable patent protection. Contact us today to learn how we can support your patent prosecution needs under the 2025 USPTO fee schedule.

– Pushpendra Dwivedi (IPMS) and Rahul Raj (Content Creation & Strategy)

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