The United States Patent and Trademark Office (USPTO) is set to implement a significant overhaul of its fee structure for the fiscal year 2025. This move, aimed at optimizing the service provided to American innovators, includes the introduction of new fees and an increase in existing ones. These fee increases could alter prosecution and timing strategy in pending applications and patent families.
Notably, there will be new charges for the After Final Consideration Pilot Program 2.0, for which there was previously no additional charge. Given the limited time examiners are provided under this program relative to a Request for Continued Examination, as well as the limitation on the scope of amendments applicants may make under the Program, this new fee may disincentivize applicants from requesting participation in this program.
There is also a proposed additional fee for filing continuing applications more than five years after the earliest benefit date, and an even larger fee for eight years after the earliest benefit date. Given the substantial size of these fees ($2,200 and $3,500 for undiscounted applicants, respectively), applicants would be wise to accelerate filing such continuing applications to avoid these fees.
Additionally, the USPTO will introduce fees for Information Disclosure Statements when the cumulative total of references exceeds 50, and for Director review of Patent Trial and Appeal Board (PTAB) decisions. Overloading Examiners with many prior art references has been an all-too-common occurrence and, arguably, is contrary to the public interest of issuance of high-quality patents. The new fees, tiered at $200 for more than 50-100 cumulative references, $500 for 101-200 references, and $800 for 201+ references for all applicants, is likely to have an impact on smaller applicants but seems unlikely to be much of a deterrent to larger filers, but I suspect smaller applicants tend not to disclose as many references in their IDSs.
A particularly significant change is the three-digit increase in Terminal Disclaimer (TD) fees filed after a first action on the merits. To me, this is a somewhat nefarious fee. The new fee breaks down as follows:
| Description | Current Fee | Proposed Fee | Dollar/Percent Change |
| TD filed before first action | $170 | $200 | $30/18 |
| TD filed before Final Action or Allowance | $170 | $500 | $330/194 |
| TD filed after Final Action or Allowance | $170 | $800 | $630/371 |
| TD filed on or after Notice of Appeal | $170 | $1,100 | $930/547 |
| TD filed in patented case or reissue application | $170 | $1,400 | $1,230/724 |
While the greatest fee increases are reserved for TDs filed quite late in prosecution, or even after prosecution is concluded, to avoid a triple-digit fee increase, applicants must file a TD before a double patenting rejection has been made. Effectively, the USPTO is penalizing applicants for not limiting the term of their patent before there has been a determination that such a limitation is necessary or proper by increasing the fee if the applicant waits for the USPTO to meet its burden and demonstrate a TD is necessary. This seems to be one of the intended effects of this fee change. The USPTO provides data indicating only 6% of TDs are filed before an action on the merits and 65% are filed before a Final Action or allowance. The only function of the lowest fee being pre-substantive action is to avoid examiners having to actually analyze claims for double patenting, which is clearly working against that interests of applicants. As these proposed fees are open to public comment, this is one fee I will be speaking against, at least to the extent the fee structure pressures applicants to prophylactically file TDs.
There are many more fee increases laid out in the Federal Register publication where they were announced, and I will not summarize them here. Suffice to say, applicants can expect a 10-40% increase in most of the fees they will see in typical prosecution.
For those interested in the detailed implications of these changes, the USPTO has provided comprehensive documentation on their Fee-Setting web page, including a slide deck that outlines the proposed fee changes. Stakeholders are encouraged to review this information to understand how the new fee structure may affect their patent prosecution strategies. The proposed fee adjustments are open for public comment, allowing stakeholders to participate in the rulemaking process.
