On January 19, 2025, the United States Patent and Trademark Office (USPTO) will introduce significant changes to the fee structure for patent filings. These changes primarily affect continuation, divisional, and continuation-in-part (CIP) applications, with new surcharges based on the earliest benefit date (EBD). These additional fees aim to offset lost revenue from maintenance fees that continuing applications often bypass. While this new USPTO fee rule may help maintain financial sustainability, it places a substantial cost burden on patent applicants, particularly those with large portfolios or long development timelines.
To help you navigate this complex change, let’s break down the fee updates and outline strategies to minimize their financial impact.
Overview of the New USPTO Fee Structure for Continuing Applications
The new USPTO fee structure introduces charges for continuing applications filed six or more years after their EBD. Previously, applicants paid only the standard continuation filing fees. Currently, two additional fee tiers exist, determined by the application’s filing date after the EBD.
Comparison Table: New vs. Previous Fees
| Application Type | Filing Period After EBD | Previous Fee | New Fee (Effective Jan. 19, 2025) | Small Entity Fee | Micro Entity Fee |
| Continuing Applications | Less than 6 years. | Standard Fee | Standard Fee | 60% reduction | 80% reduction |
| Continuing Applications | 6–9 years | $0 | $2,700 | $1,080 | $540 |
| Continuing Applications | 9+ years | $0 | $4,000 | $1,600 | $800 |
Key Points:
- If you file the continuation 6–9 years after the EBD, there is a $2,700 fee.
- The $4,000 fee applies if the filing occurs 9+ years after the EBD.
- Small entities (e.g., businesses with fewer than 500 employees) receive a 60% discount, and micro entities (e.g., qualifying independent inventors) receive an 80% discount.
This new fee structure underscores the importance of managing continuation timelines carefully to avoid unexpected costs.
What Is the Earliest Benefit Date (EBD)?
The EBD is crucial in determining whether a continuing application will incur additional fees. The EBD is the earliest non-provisional filing date in the patent family. It does not include:
- Provisional applications filed under 35 U.S.C. § 119(e)
- Foreign applications for which priority is claimed under 35 U.S.C. § 119(a)
Example:
If a non-provisional application was filed on March 2, 2020, the EBD for all related continuing applications remains March 2, 2020, regardless of when other claims are filed or amended.
Rationale for the Fee Changes
The USPTO introduced these fees to address two primary challenges:
- Revenue Loss Caused by Short-Lived Continuations: Many continuation applications end or expire before significant maintenance fees are gathered. The new fees recapture lost revenue upfront.
- Rising Administrative Costs: Continuation filings require significant examination resources. The increased fees aim to balance the cost of processing these filings, especially those involving large or complex claim sets.
How These Fees Apply in Real Scenarios
The USPTO provided detailed examples to illustrate the application of these fees. Let’s examine a few typical scenarios:
- Standard Six-Year Mark Filing: An application claims the benefit of a non-provisional application filed in 2020. The filing of a continuation in 2026 results in a fee of $2,700. Filing it in 2029 incurs a $4,000 fee due to the nine-year threshold.
- Late International Benefit Claim: A national stage entry under the PCT in 2027 asserts priority over a non-provisional U.S. filing from 2020. If the PCT filing is more than nine years after the EBD, the $4,000 fee applies.
- Changing the Benefit Date After Filing: Adding an older non-provisional application to the benefit claim list after the initial filing can shift the EBD earlier and trigger the continuation fee retroactively.
Insight: Careful consideration of benefit claims when filing amendments can prevent avoidable fees.
Strategies to Manage New Continuation Fees
Given these new rules, applicants should adjust their patent strategies to minimize the cost impact.
1. File Continuations Before the Six-Year Mark
Filing continuations earlier ensures they avoid the fee surcharges. Applicants should regularly review their portfolios and identify applications nearing the six-year threshold.
Pro Tip: Schedule important dates for each patent family to avoid missing fee deadlines.
2. Parallel Continuations
Consider filing parallel continuations instead of waiting for a parent application’s allowance. This approach can be cost-effective if there is a need to protect additional claims sooner.
3. Consolidate Claims in a Single Filing
Reducing the number of separate claims across multiple applications can help minimize excess claim fees. Consolidating claims into a single continuation application may reduce overall costs if managed effectively.
Example: If an application has multiple claims covering similar embodiments, filing broader, consolidated claims may eliminate the need for multiple continuation applications.
4. Avoid Delay in Adding Claims
Instead of adding new claims after years of prosecution, consider including them earlier in the parent application to avoid triggering high fees at the continuation stage.
Additional fee changes impact prosecution.
The new rule on fee structure includes additional changes beyond continuing application fees.
| Fee Type | Previous Fee | New Fee (2025) | Increase (%) |
| Request for Continued Examination (First RCE) | $1,200 | $1,500 | 25% |
| Request for Continued Examination (Subsequent RCEs) | $2,000 | $2,860 | 43% |
| Independent Claim (Excess over 3 claims) | $480/claim | $600/claim | 25% |
| Excess Claims (Total over 20 claims) | $100/claim | $200/claim | 100% |
| Information Disclosure Statement (IDS) (51–100 references) | $0 | $200 | New Fee |
| Information Disclosure Statement (IDS) (101–200 references) | $0 | $500 | New Fee |
Note: The USPTO introduced fees for large IDS submissions to manage examination complexity and reduce examiner workloads.
Preparing for the New Fee Rule: Action Steps
To avoid last-minute complications, applicants should take proactive steps before the January 19, 2025, deadline:
- Review Open Patent Families: Identify applications approaching the six- or nine-year EBD thresholds and file continuations in advance.
- Consider Early Continuation Filings: Where possible, submit continuations alongside the parent application.
- Consult with Patent Counsel: Engage with legal professionals to reassess filing strategies and cost-efficient claim drafting.
FAQs
- When does the new USPTO fee rule take effect?
The new fee structure will take effect on January 19, 2025. - How does the USPTO define the earliest benefit date (EBD)?
The EBD is the filing date of the earliest non-provisional application in the patent family. It excludes provisional and foreign applications. - What fees apply for small and micro entities?
Small entities receive a 60% discount, while micro entities receive an 80% discount on most fees. - Are there fees for filing continuations before six years?
No additional continuation fees apply for filings before the six-year mark. Standard filing fees still apply. - How can applicants avoid IDS fees?
To avoid IDS fees, limit the number of references submitted at each stage and consolidate relevant information in smaller batches.
Conclusion
The USPTO’s new fee rule introduces substantial costs for continuing applications filed after six or nine years. While the changes aim to address revenue gaps and processing burdens, they place a significant financial responsibility on applicants. By adopting proactive filing strategies—such as early continuations, parallel filings, and claim consolidation—applicants can mitigate these cost increases. Staying informed and preparing well in advance of critical filing dates will be essential for maintaining an efficient and cost-effective patent portfolio.
If you’re seeking expert guidance on navigating the complexities of the USPTO’s new fee structure, Stevens Law Group is here to help. Our experienced team of patent attorneys specializes in crafting cost-effective strategies tailored to your specific needs. Whether you need assistance with early continuation filings, claim drafting, or proactive portfolio management, we’ve got you covered.
Contact Stevens Law Group today for a consultation and ensure your innovations are protected without unnecessary costs. Stay ahead of the changes—schedule your strategy session now!
References:
Promoting and Respecting Economically Vital American Innovation Leadership Act” (PREVAIL Act)
Realizing Engineering, Science, and Technology Opportunities by Restoring Exclusive Patent Rights Act (RESTORE Act)
Patent Eligibility Restoration Act” (PERA)
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