Final fee rule adds surcharges for late continuations and large reference lists, effective January 19, 2025

2024-11-20Costs

Setting and Adjusting Patent Fees During Fiscal Year 2025, 89 Fed. Reg. 91898 (Nov. 20, 2024) (final rule, effective Jan. 19, 2025)

The United States Patent and Trademark Office published its fiscal year 2025 patent fee rule, which "sets or adjusts 433 patent fees for undiscounted, small, and micro entities, including the introduction of 52 new fees," effective January 19, 2025. Fees outside the targeted changes rise about 7.5 percent, and front-end filing, search and examination fees rise 10 percent in total. A continuing application filed more than six and not more than nine years after its earliest benefit date carries a new undiscounted fee of $2,700 under 37 C.F.R. 1.17(w)(1), and one filed more than nine years after that date carries $4,000 under 1.17(w)(2). The earliest benefit date is the earliest filing date claimed under Sections 120, 121, 365(c) or 386(c) of Title 35 of the United States Code, never a provisional or foreign filing date. The Office reasons that such applications "are less likely to have a patent term long enough" for maintenance fees to recover examination costs. A new information disclosure statement size fee applies to the cumulative count of items cited: $200 once the count exceeds 50, $500 above 100 and $800 above 200, less amounts already paid. Excess claim fees rise to $600 for each independent claim over three and $200 for each claim over twenty, and combined design fees rise from $1,760 to $2,600.

What it changesArtificial intelligence families from the 2019 to 2021 filing wave are the ones these surcharges reach first: a family whose first nonprovisional or international application was filed in that period hits its six-year mark between 2025 and 2027, and every continuation filed after the mark costs $2,700 more before examination begins, $4,000 after the ninth year. The clock runs from the first nonprovisional filing, not the provisional. Put the six- and nine-year dates for every active family on the docket now, decide before each mark which continuation claim sets are worth filing, and file those on the earlier side of the line. For references, consolidate citations before an application crosses 50, 100 and 200 cumulative items, and stop carrying every reference from every family member into every child. Budget the excess-claims increase into claim sets that run past three independent or twenty total claims, which is where a method, system and medium set with alternative embodiments lands.

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Burbage Law is the practice of Jon Burbage, a registered patent attorney. 342 United States patents have issued from applications he wrote; the full list is on the Patents page. More about Jon Burbage.

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