The U.S. Patent & Trademark Office (USPTO) has proposed new fees and fee increases that could dramatically impact intellectual property budgets and change filing strategies for new applications. This article summarizes those proposed new fees and fee increases and how filing strategies may change to minimize the impact of increased fees and maximize patent value. The proposed fees can be found in the Notice of Proposed Rulemaking.
New fees for continuation applications (CONS): Filing continuation applications (CONS) is one of the best ways to realize the return on investment for drafting patent applications and expand the scope of patent protection. CONS are essentially “child” applications that leverage the same subject matter and patent documentation as an earlier parent filing but claim the disclosed technology in broader or different ways than the original parent filing. Thus, CONS require significantly less effort to prepare than an entirely “new” application and, as a result, have a lower cost than parent applications but can be just as valuable from a protection standpoint.
The USPTO has proposed new fees for CONS filed either (1) more than 5 years or (2) more than 8 years after the earliest claimed priority date (e.g., the date of the earliest parent application in a patent family). Currently, the USPTO does not charge additional fees for filing a CON besides the standard utility application fees.
Why is the USPTO proposing these new fees for CONS? The primary source of USPTO funding is patent maintenance fees. Maintenance fees are paid 3 ½ years, 7 ½ years, and 11 ½ years after a patent issues. However, many patents filed as CONS will typically expire before all three maintenance fees are paid. Therefore, the new CON fees can be re-framed as advancing other fees, like some maintenance fees.
New proposed CON fees:
| Time | Fee |
| More than 5 Years | $2,200 |
| More than 8 Years | $3,500 |
MMM Recommendations:
Since the new CON fees start to apply 5 years after the earliest claimed priority date, we recommend reviewing each application before the 5-year date to identify any potential CON options. This way, CONS can be filed in advance of the increased fee window.
Rather than filing CONS serially (e.g., one at a time in a chain), clients may want to file multiple CONS concurrently. For example, we may decide to file multiple CONS at the same time prior to the 5-year date to cover all possible inventive variations of a given technology.
Increased fees for Requests for Continued Examination (RCE): Prosecuting a patent may take multiple rounds of prosecution (i.e., back and forth negotiation with a USPTO examiner). After receiving a final Office Action, the USPTO requires that applicants file a request RCE and pay a fee to continue prosecution.
The USPTO has proposed increasing the fees for RCEs. Additionally, the fees for second and third RCEs will escalate from the first RCE fee.
New proposed RCE fees (including the % increase over the current RCE fees):
| RCE | Fee | Increase |
| First | $1,500 | 10% |
| Second | $2,500 | 25% |
| Third | $3,600 | 80% |
MMM Recommendations:
Since second and third RCEs will have higher fees than first RCEs, we may recommend narrowing the claim scope faster during prosecution. Typically, we recommend fighting for the broadest patent protection, so we don’t usually recommend narrowing claim scope quickly. However, for fee sensitive clients, targeting a narrow patent quickly during prosecution will help avoid the increased RCE fees. Understanding the key points of novelty for each application will be necessary to avoid the later RCE fees.
Considering both the new CON fees and increased RCE fees, clients may want to prosecute two applications in parallel. For example, we may initially file two applications: one with relatively broad claim scope and a second with relatively narrow claim scope. Prosecuting applications in parallel will help us understand the prior art while still varying the claim scope, and also provide optionality during examination.
Increased fees for Terminal Disclaimers (TDs): When prosecuting continuation applications, applicants sometimes receive double patenting rejections. Patent examiners issue double patenting rejections when a continuation application has similar claims to the parent application. Double patenting rejections can be overcome by filing a terminal disclaimer (TD). A TD is a statement on the record that the patent, once issued, will (1) always remain under common ownership as the parent application and (2) the maximum term of either patent is limited to the term of whichever expires first.
The USPTO has proposed increasing the fees for TDs. Additionally, the fees will escalate depending on when the TD is filed during prosecution. The current fee is $170 regardless of when a TD is filed.
| TDs | Fee | Increase |
| Before a First Action on Merits | $200 | 18% |
| Before a Final Action or Allowance | $500 | 194% |
| After a Final Action or Allowance | $800 | 371% |
MMM Recommendations:
We recommend reviewing the claims in parent and pending applications and if a TD is likely to be received, applicants may consider filing TDs concurrently with or shortly after filing a new application to avoid the escalating TD fees.
New fees for After Final Consideration Pilot Program 2.0 (AFCPP): The After Final Consideration Pilot Program 2.0 (AFCPP) allows patent Examiners to review an application one additional time after receiving a final rejection. We sometimes recommend filing AFCPP when we’re close to an allowance.
The USPTO has proposed adding a new $500 fee for AFCPP. Currently, the USPTO does not charge a fee for AFCPP, which may curtail its usefulness.
Increased fees for new applications: The USPTO has proposed increasing the filing, search, examination, and issue fees for design applications by 48% aggregate. Additionally, the USPTO has proposed increasing the filing, search, and examination fees for utility applications by 10% aggregate. Thus, particularly for design applications, client should confirm that new filings will bring value to the business.
What patent applicants should do now: While the fee increases are not final, the USPTO will announce the final changes between October and December of 2024. Patent owners and applicants should be prepared to increase their 2025 IP and legal budgets to account for the increased fees. With that said, even if the fee increases are implemented, patent applicants can keep costs low by focusing on the features that are both novel and valuable to their business and employing creative filing strategies aimed at both maximizing IP value but minimizing unnecessary expense.
If you have any questions regarding this legal update, please contact the author, Anna Baker, or the editors, Daniel Sineway and Adam Thompson.
