The United States Patent and Trademark Office (USPTO) has announced increased patent and trademark fees effective 19 and 18 January 2025, respectively.

The USPTO periodically reviews its fee structures in view of achieving its stated strategic goals, which include:

1. To promote innovation strategies;
2. To align fees with the full costs of products and services;
3. To facilitate effective administration of the US patent system; and
4. To offer application processing options.

The USPTO states that most of the fee increases are well below the rate of inflation since the last USPTO fee increase in 2020. Summaries of the fee changes for patents can be found here, and summaries of the fee changes for trademarks can be found here.

Some practice change opportunities moving forward become apparent based on these fee increases/additions and corresponding new requirements. For example, where a continuing patent application is already planned for Q1/Q2 2025, applicants should take the opportunity to consider filing prior to 19 January 2025, especially if the continuing application will have an earliest benefit date beyond six or nine years prior to filing if filed after the fee increases are in effect. Note that the earliest benefit date is the earliest filing date for which benefit is claimed under 35 U.S.C. 120, 121, 365(c) and § 1.78(d). It cannot be the filing date of a foreign application or the filing date of a provisional application to which the family claims priority under 35 U.S.C. 119(e).

Additionally, new information disclosure statement (IDS) filing fees will require Applicants to keep track of the total document count in order to pay the requisite fees and state the total number of documents cited across IDSs in a given application. It’s noteworthy that references cited in a parent are automatically considered by the examiner and do not need to be cited in each child application, which will help to avoid triggering the new IDS fees. However, if the Applicant intends for the references to be printed on the face of the patent, they will need to cite all prior art in IDSs and incur the new IDS fees.

Finally, in view of strategic goal (3), the combination of increased fees for excess claims and 2^nd instance Requests for Continued Examination (RCEs) could be interpreted as a signal to applicants to streamline prosecution, e.g., claim scope, with a planned approach as opposed to developing a prosecution strategy amidst office action remarks.

Generally, to the extent reasonable, patent applicants should file all fee-incurring documents prior to 19 January 2025, with a specific focus on:

1. Continuation applications that would have priority dates more than six/nine years prior as noted above;
2. IDSs in cases with cumulative prior art listings over 50;
3. Second or subsequent RCEs; and
4. Design applications.

These filings incur relatively significant fees as summarized below that may have a greater impact on the applicant’s IP budget.

For trademarks, applicants with long or unusual descriptions of goods and services may consider filing applications before the fees for using free form text boxes and additional characters go into place. Furthermore, the filing fees for trademark maintenance are also increasing, reportedly to offset the higher processing costs for these filings, which includes analyzing specimens of use. Registrants with maintenance deadlines in the next year whose periods are open for filing now may consider filing the Declarations of Use and Incontestability or Renewal before the fee increases go into effect.

The patent fee adjustments include the following increases (in US$):

• 10% increase for utility filing/exam/search fees;
• A 25% fee increase for each independent claim in excess of three, and a 100% increase each claim above 20;
• A 10% fee increase for the first instance RCE and a 43% fee increase for each second and subsequent instance RCE;
• New fees implemented for filing continuing applications after six years ($2,700 large entity; $1,080 small entity) or nine years ($4,000 large entity; $1,600 small entity) from earliest priority;
• New fees implemented for IDS filings having 51–100 ($200 (all entities)), 101–200 ($500), or 201+ ($800) references;
• 50% increase for design filing/exam/search fees;
• A 112% fee increase for patent term extension (PTE) applications, a 200% fee increase for initial applications for interim extensions, and a 196% fee increase for subsequent applications for interim extensions; and
• A new fee of $1,400 (all entities) implemented for supplemental redetermination after notice of final PTE determination.

The trademark fee adjustments include the following increases (all electronic filings) (in US$):

• A $350 application filing fee per class, which is no increase from a TEAS filing and a 40% increase from a TEAS Plus filing;
• A new fee of $100 for insufficient information at the time of filing, per class;
• A new fee of $200 for using a free-form text box at the time of filing, per class;
• A new fee of $100 for each additional group of 1,000 characters beyond the first 1,000, per class;
• 20% increase for WIPO filings to $600, per class;
• 50% increase for amendments to allege use and statements of use to $150, per class;
• Increases between 8% and 44% for Section 8, 9, 15, and 71 declarations to $325, $325, $250, and $325, per class, respectively; and
• Petition and letter of protest fee increases.

In general, applicants should review their IP strategy to prioritize filings before the January 18/19 fee increase implementation dates.