The USPTO has taken another step toward implementing fee adjustments in January 2025, by publishing a Notice of Proposed Rulemaking (NPRM) on April 3, 2024. The NPRM stands by most of the significant fee adjustments it proposed in April 2023, with a few changes made in response to input from the Patent Public Advisory Committee (PPAC). Stakeholders will want to plan ahead for across-the-board fee increases of about 5% and more significant targeted fee adjustments (and new fees) that could impact patent prosecution strategies.

Proposed Fee Adjustments

Detailed information on the proposed fee adjustments is available on the USPTO’s Fee-Setting web page. There you can find a slide deck that provides an overview of the proposed fee changes (in alphabetical order), as well as documentation supporting the proposals.

The following summary lists fees at the undiscounted (large entity) rate.

Significantly Higher Fees

Examples of significantly higher fees include:

• The aggregate of filing, search, examination, and issue fees for design patents will increase by about 48%
• Excess claim fees will double to US$200 for each claim over 20 and increase 25% to US$600 for each independent claim over three.
• RCE fees will increase, with a new higher tier for third and subsequent RCEs.
  • 1^st RCE: US$1,500 (+10% over current fee)2^nd RCE: US$2,500 (+25% over current fee)
  • 3^rd RCE: US$3,600 (+80% over current fee)
• The fee for a Request for Reconsideration of the USPTO’s Patent Term Adjustment calculation will increase 43% from US$210 to US$300
• The fee for a Patent Term Extension application (e.g., based on FDA review of a regulated product) will increase 468% from US$1,180 to US$6,700

New Fees Aimed at Cost Recovery

• After Final Consideration Pilot Program Request: US$500
• Petitions associated with unintentional delay of > 2 years: US$3,000

New Fees That Could Change Applicant Behavior

• Continuing Application Surcharge, filed ≥ 5 years after earliest benefit date: US$2,200
• Continuing Application Surcharge, filed ≥ 8 years after earliest benefit date: US$3,500

The NPRM defines “earliest benefit date” as the earliest priority date claimed under 35 USC § 120, 121, 365(c) or 386(c), and 37 CFR § 1.78(d), also known as the “patent term filing date” (e.g., the date from which the 20-year patent term is calculated), and not including priority claims to provisional applications. The NPRM expressly includes divisional applications in the category of “continuing” applications that could be encompassed by these fees.

• Escalating IDS fees based on the cumulative number of references cited:
  • > 50 items: US$200> 100 items: US$300
  • > 200 items: US$300
• Escalating Terminal Disclaimer fees based on when the Terminal Disclaimer is filed:
  • Before a first Office Action on the merits: US$200
  • Before a final Office Action: US$500
  • After a final Office Action or Allowance: US$800
  • On or after filing a Notice of Appeal: US$1,100
  • After patent grant: US$1,400

PTAB Trial Fees

• Petition fees for PTAB trials will increase by about 25%
• There will be a new US$440 fee for a Request for Director review of a PTAB decision

Did the USPTO Take Any of PPAC’s Advice? 

The NPRM addresses PPAC’s comments on the proposed fee adjustments, but the USPTO maintained most of the fee increases PPAC objected to. It dropped the proposal to impose a nominal fee for recording an assignment submitted electronically, stated that it is withdrawing the proposal to permit additional words in an inter partes or post-grant petition for a fee, and adjusted the timing of the continuing application surcharges (originally proposed to take effect at > 3 years and > 7 years), but otherwise responded by providing more justification for the original proposals. With that history in mind, it is not clear whether stakeholder comments could have any impact on the final schedule, but the USPTO is obligated by law to consider written comments properly submitted through the Federal eRulemaking Portal by June 3, 2024.