Patent Prosecution

On April 3, 2024, the US Patent & Trademark Office (USPTO) proposed an array of patent fee adjustments for Fiscal Year 2025. 89 FR 23226. Among the proposed adjustments are new fees for claims to the benefit of earlier filing dates more than five years and more than eight years after the earliest filing date for which benefit is claimed under 35 USC §§ 120, 121, 365(c), or 386(c). The proposed fees would be $2200 (large entity), $880 (small entity), or $440 (micro entity) for the first presentation of a benefit claim more than five years after the earliest benefit date, and $3500 (large entity), $1400 (small entity), or $700 (micro entity) for the first presentation of a benefit claim more than eight years after the earliest benefit date. 89 FR 23237.

The proposed presentation of benefit claim fee would be calculated from earliest
non-provisional filing date

The Supplementary Information accompanying the proposed fee adjustments clarify that the five year and eight year periods triggering the proposed new fees begin as of the earliest non-provisional filing date for which a benefit is claimed, so a Continuation application with a benefit claim under 35 USC § 120 to the filing date of a non-provisional application filed four years earlier, but which in turn claimed the benefit under 35 USC § 119(e) to a provisional application filed five years earlier, would not result in a requirement to pay the proposed new continuing application fee (“because [the proposed change to 37 CFR] § 1.17(w) does not encompass benefit claims under 35 U.S.C. 119(e).”).

The proposed presentation of benefit claim fee would be charged only one time
per patent application, no matter the number of applications to which benefit is claimed

The Supplementary Information also clarifies that the proposed new continuing application fees would only be charged once per application, regardless of the number of benefit claims, with the maximum charge being a single continuing application fee for presentation of a benefit claim more than eight years after the earliest benefit date.  For example, if a continuing application is filed with an earliest benefit claim to an application filed five, but less than eight, years earlier, the lower-proposed (5 year) continuing application fee would be due at the time of filing of that continuing application.  If a further benefit claim to an earlier non-provisional application filed eight or more years earlier is added subsequent to the filing of that continuing application, then at the time of the added benefit claim, the applicant would need to top-off the fee payment, i.e. pay the difference between the larger-proposed (8-year) continuing application fee and the previously paid (5 year) continuing application fee.

USPTO’s rationale for the proposed presentation of benefit claim fee

The USPTO explains that the proposed fees would “recover more costs relating to continuing applications from the filers of such applications, encourage more efficient filing and prosecution behaviors, and partially offset forgone maintenance fee revenue resulting from later-filed continuing applications.” 89 FR 23238.

Applicant considerations

If the new fees take effect, applicants with applications pending for more than four years but less than five years, or more than seven years but less than eight, may consider filing a continuing application less than five (or eight) years from the earliest non-provisional filing date, in an effort to avoid the new continuing application fees.  For instance, if claims were withdrawn in response to a restriction requirement and rejoinder appears unlikely, consideration might be given to filing a divisional application prior to the fifth year anniversary of the earliest non-provisional filing date.

Applicants with patent applications in art units having significant backlogs may consider availing themselves of opportunities for accelerated examination, such as the patent prosecution highway (PPH), in an effort to have examination proceed to allowable claims of desired scope, and file desired continuing applications, before the five year mark that would incur the proposed new continuing application fee. 

Rule amendments proposed by the USPTO on May 10, 2024, 89 FR 40439, would require terminal disclaimers filed to obviate double patenting rejections to include an agreement that the resulting patent will be rendered unenforceable if tied by terminal disclaimer, directly or indirectly, to a patent in which any claim has been held unpatentable or invalidated as anticipated or obvious.  If these rule changes take effect, they would further disincentivize the filing of continuation or continuation-in-part applications, as the claims of resulting patents would be more vulnerable to attacks on the basis of non-statutory (obviousness-type) double patenting.

Other notable fee adjustments proposed by the USPTO

The proposed fee adjustments include new fees of $200 (regardless of entity size) for filing an information disclosure statement (IDS) that results in the total number of applicant-provided items of information to exceed 50 but not exceed 100; $500 (less any amount previously paid) for an IDS that results in a total of applicant-provided items to exceed 100 but not exceed 200; and $800 (less any amount previously paid) for an IDS that results in a total of applicant-provided items to exceed 200.

There is also a proposed new fee of $500 (large entity), $200 (small entity), or $100 (micro entity) for participating in the popular After Final Consideration Pilot Program 2.0 (AFCP 2.0).  AFCP 2.0 provides an opportunity for after-final consideration of substantive amendments and/or an after-final interview with the examiner to explore whether there are additional amendments that might advance the application to allowance.  The USPTO indicates that since 2016, it received AFCP 2.0 requests in over half of the responses to final office actions. 

A substantial increase in the fee for filing a second request for continuing application (RCE), $2500 (large entity), $1000 (small entity), or $500 (micro entity), a 25% increase over the current fee, a new fee for filing a third RCE, of $3600 (large entity), $1440 (small entity), or $720 (micro entity), and substantial increases to design patent prosecution fees, including a 76% increase in the design patent issue fee to $1300 (large entity), $520 (small entity), or $260 (micro entity), are also proposed.