Journal

USPTO patent fee changes for 2025

The United States Patent and Trademark Office (‘USPTO’) implemented significant changes to its patent fees that became effective on 19 January 2025. By Amanda K. Murphy, Jeffrey M. Jacobstein, Mary C. Till and Antoinette E. Nibbs.

The changes included adjustments to 433 patent fees for undiscounted, small, and micro entities, and the introduction of 52 new fees. The most significant changes are highlighted below, including several that apply fees in new ways and should, therefore, be considered carefully by practitioners moving forward. All fees provided herein are based on the USPTO’s current fee schedule[1] and are listed in the following order: undiscounted, small entity (as defined in 37 C.F.R. § 1.27), and micro entity (as defined in 37 C.F.R. § 1.29).

New fee for continuing applications claiming benefit to a prior application filed more than six or nine years earlier

The USPTO introduced new fees for filing a continuing application (i.e., a continuation application, divisional application, or continuation-in-part application) that presents a benefit claim to a non-provisional application[2] filed more than six years ($2,700, $1,080, $540) or more than nine years ($4,000, $1,600, $800) prior to the continuing application’s actual filing date. This continuing application fee (‘CAF’) applies to all utility, plant, and design continuing applications, and must be paid in addition to the standard filing, search, and examination fees (which are discussed below).

The USPTO has indicated that it will not acknowledge on a filing receipt a benefit claim where the required fee is not paid. To verify whether a particular benefit claim has been entered, the USPTO directs applicants to ‘carefully and promptly review their filing receipts’.[3] If a desired benefit claim has not been entered because a CAF was required and not paid, the fee must be submitted within four months from the filing date of the continuing application. If the fee is not submitted within this timeframe, an applicant must petition the USPTO for acceptance of a late-filed priority claim, which requires an additional fee ($3,000, $1,200, $600).

While the new CAF represents a dramatic change in continuing application practice at the USPTO and means that applicants may need to consider the increased cost of maintaining applications in US portfolios more closely than in the past, this should feel familiar to those who practice before the European Patent Office, which requires payment of back-annuities when filing a divisional application. Indeed, the loss of revenue from the 3.5-year and 7.5-year maintenance fees that were not being paid in continuing applications that were filed after six or nine years of pendency was one of the USPTO’s stated rationales for introducing the CAF.

New fee for number of items on an Information Disclosure Statement

The USPTO has set new fees for any Information Disclosure Statement (‘IDS’) filed on or after 19 January 2025, based on the cumulative number of items of information provided by an applicant or patent owner during the pendency of the application or reexamination proceeding. This fee applies to applications pending on or after 19 January 2025, as well as new applications filed on or after 19 January 2025.

A cumulative number of items of information in excess of 50 but not exceeding 100 will incur a first fee ($200); a cumulative number of items of information in excess of 100 but not exceeding 200 will incur a second fee ($500 less any amount previously paid for exceeding 50 items of information); and a cumulative number of items of information in excess of 200 will incur a third fee ($800 less any amount previously paid for exceeding 100 items of information). These fees are due in addition to any other IDS fees that may be required (e.g., for an IDS submitted after certain examination events such as the mailing of a notice of allowance) and these fees are not discounted for small or micro entities.

For any IDS filed on or after 19 January 2025, an affirmative statement must also accompany the IDS that indicates whether and which fee is due. Without an affirmative statement as to whether an IDS size fee is due, the USPTO has indicated that it will not consider the IDS. The USPTO has also stated that it will not consider a general authorization to charge fees to a deposit account to be a compliant statement, unless the authorization clearly identifies whether and which fee is due in connection with a specific IDS.

In guidance that the USPTO issued, the agency indicated that the items of information count is determined for each application or patent separately.[4] That is, the count from an application does not carry over to any continuing applications or any post-issuance proceedings. However, under current IDS practice, an examiner will consider items of information that were considered in a parent application when examining a continuing application without any action required on an applicant’s part. Thus, applicants who wish to avoid paying the IDS size fees in a child application for items of information considered in a parent application may do so by not filing an IDS listing those items. If an applicant desires an item of information to be printed on the face of the patent, however, the item of information must be resubmitted in the continuing application and will, therefore, contribute to the items of information count for the continuing application.

Filing, search, and examination

The USPTO increased filing, search, and examination fees by an additional 2.5% on top of the 7.5% across-the-board proposal (10% in total). The new fees are:

• Basic filing fee: $350, $140, $700
• Search fee: $770, $308, $154
• Examination fee: $880, $352, $176.

Excess claims

The USPTO increased the fees for presenting claims that exceed the statutory limit of three independent ($600, $240, $120) and 20 total claims ($200, $80, $40).

The USPTO also increased the fees for presenting multiple dependent claims (‘MDCs’) ($950, $370, $185) and has not indicated any intent to alter its current practice of calculating excess claim fees by counting MDCs multiple times depending on the number of claims from which they depend. Thus, an application filed with 20 total claims in which claim 20 is an MDC that refers to claims 1-19 will be charged an MDC fee and an excess claim fee for having 19 claims over 20.

Requests for continued examination

After receiving a final office action rejecting one or more claims, an applicant may reopen prosecution before the examiner to present new claim amendments and/or new evidence by filing a Request for Continued Examination (‘RCE’). However, doing so has now become more expensive for applicants, as the USPTO increased the fees for a first RCE by 10% ($1,500, $600, $300) and for second and subsequent RCEs by 43% ($2,860, $1,144, $572).

Extensions of time for provisional applications

In contrast to the many fees that were increased, the USPO reduced the fees associated with extending the period for responding to communications mailed in provisional applications. The current fees are:

• One month: $50, $20, $10
• Two months: $100, $40, $20
• Three months: $200, $80, $40
• Four months: $400, $160, $80
• Five months: $800, $320, $160.

Suspension of action

The USPTO allows applicants to request a suspension of action for good and sufficient cause, provided the applicant has responded to all outstanding office actions. The USPTO has created a new tiered system of fees for requesting such suspensions of action under which the fee is now split into a first suspension of action ($300, $120, $60) and a second/subsequent suspension of action ($450, $180, $90).

Terminal disclaimers

Terminal disclaimers can be used to obviate obviousness-type double patenting rejections raised by an examiner or by a third-party challenger. The USPTO has increased the fee for making such filings by 8% ($183). This fee is not discounted for small or micro entities.

Patent term extension applications

The USPTO increased the fees for patentees seeking to extend patent term due to regulatory delay. The USPTO also implemented a new fee for requesting a supplemental redetermination of the amount of term to be granted in light of a terminal disclaimer filed after the agency has mailed a Notice of Final Determination to an applicant for patent term extension.

Unintentional delay petitions

The USPTO increased the fee for petitions based on unintentional delay ($2,260, $904, $452) and created a higher tier for petitions covering unintentional delays of more than two years ($3,000, $1,200, $600).

AIA trials

The USPTO increased AIA trial fees by 25%. Current pre- and post-institution fees for requesting inter partes review of up to 20 challenged claims are $23,750 and $28,125, respectively. Current pre- and post-institution fees for requesting post-grant review of up to 20 challenged claims are $25,000 and $34,375, respectively. These fees are not discounted for small or micro entities.

The USPTO also instituted a new fee for requesting review of a PTAB trial decision by the Director ($452). This fee is not discounted for small or micro entities.

Design applications

All fees for design applications have been increased.

Across-the-board adjustments

Where the USPTO did not finalise targeted fees, the agency increased patents and PTAB fees by about 7.5%.

For more information

• The Federal Register notice discussing all of these fees and including tables to new fees can be found here: https://www.govinfo.gov/content/pkg/FR-2024-11-20/pdf/2024-26821.pdf.
• Also note that the USPTO provided a slide deck to better understand the new fees: https://www.uspto.gov/sites/default/files/documents/Patents-At-A-Glance-FR-2025.pptx.
• Lastly, the agency provided a quick reference guide to the fiscal year 2025 patent fee setting rule: https://www.uspto.gov/sites/default/files/documents/quick-reference-guide-to-the-fy2025-patent-fee-setting-rule.pdf.

Amanda K. Murphy, Ph.D. (London) and Jeffrey M. Jacobstein (Boston) are Partners; Mary C. Till (Washington DC) an Of Counsel; and Antoinette E. Nibbs, Ph.D. (Boston) an Associate at Finnegan.

Notes and references

[1] USPTO fee schedule: https://www.uspto.gov/learning-and-resources/fees-and-payment/uspto-fee-schedule

[2] A claim to an earlier-filed foreign priority application or an earlier-filed US provisional application will not trigger a fee.

[3] Quick Reference Guide to the Continuing Application Fee (CAF): https://www.uspto.gov/sites/default/files/documents/quick-reference-guide-to-the-continuing-application-fee-caf.pdf

[4] Quick Reference Guide to the Information Disclosure Statement (IDS) Size Fee and Size Fee Assertion: https://www.uspto.gov/sites/default/files/documents/quick-reference-guide-to-the-information-disclosure-statement-ids.pdf)