The United States Patent and Trademark Office (USPTO) announced the finalized patent fee increases which will be taking effect on January 19, 2025. These fee changes include an average increase of 7.5 percent in fee collections from the current fees and are setting or adjusting 433 patent fees including 52 new patent fees that were not previously assessed. The USPTO, while exercising their fee-setting authority under the America Invents Act of 2011 (AIA), stated these fee adjustments are necessary to provide the agency with sufficient financial resources to facilitate the effective administration of the U.S. patent system.

While applicants can expect significant changes to certain aspects of prosecution, including continuing application practice and Information Disclosure Statement practice, it is notable the USPTO did not implement some other proposals including one about terminal disclaimer tiered fees.

Examples of some new fees include:

• Filing a continuing application more than six years after the earliest benefit date: $2,700 surcharge
• Filing a continuing application more than nine years after the earliest benefit date: $4,000 surcharge
• Information Disclosure Statements with 51-100, 101-200, and over 200 references: $200, $500, and $800, respectively

Examples of some notable fee increases (at the undiscounted or large entity rate) include:

• Utility application filing, search, and examination fees: $2,000 (10 percent increase)
• Excess claims, each claim in excess of 20: $200 (100 percent increase)
• Excess claims, each independent claim in excess of three: $600 (25 percent increase)
• Design application filing, search, and examination fees: $1,300 (27 percent increase)
• Design application issue fee: $1,300 (76 percent increase)
• Request for Continued Examination fee for second and subsequent requests: $2,860 (43 percent increase)
• Petitions associated with unintentional delay of greater than two years: $3,000 (43 percent increase)
• Significant increases also apply to fees for applications for Patent Term Extension
• Patent Trial and Appeal Board AIA trial fees: 25 percent increase

Regarding some fee proposals that did not go into effect:

• The After Final Consideration Pilot Program 2.0 will not be renewed so the proposed fee will not be implemented, and the program will expire on December 14, 2024
• The proposed tiered terminal disclaimer fees will not be implemented

The USPTO fee increases taking effect on January 19, 2025, will require careful consideration and planning for patent filing and prosecution strategies. This includes consideration of possibly accelerating certain filings ahead of the effective date of the fee increases. It will be important to tailor filing and prosecution strategies to the unique circumstances and needs of each client and their IP portfolio in view of these new fees.

For questions regarding patent strategies, please contact any member of Wilson Sonsini's patents and innovations practice.

Detailed information on the proposed fee adjustments are available on the USPTO’s Fee-Setting web page and the November 20, 2024 Federal Register Notice.