Updates on the Forthcoming USPTO Patent Fees

On November 20, 2024, the USPTO published its final rule, “Setting and Adjusting Patent Fees During Fiscal Year 2025,” which will take effect on Sunday, January 19, 2025. Since the April 3, 2024, Notice of Proposed Rulemaking to establish or increase certain patent fees, AIPLA has actively engaged with its members by gathering feedback, submitting written comments, meeting with USPTO officials, and hosting informational webinars to keep members informed of the changes. As the implementation date approaches, members have raised additional questions, prompting AIPLA to seek clarification from the USPTO. Read below the results of our outreach with the Office.

Key updates include guidance on Information Disclosure Statements (IDS) and associated fees. Fee payments for IDS submissions are due at the time of submission and cannot rely on blanket authorizations. Applicants must explicitly state whether a fee is due and under which category it falls. A detailed count of references to the USPTO is unnecessary; a general statement suffices. Fees will only apply if the number of applicant-cited or patent owner-cited references exceeds thresholds (50, 100, or 200) on or after January 19, 2025. References cited by the Office or Examiner are exempt from these fees. Improper IDS submissions without appropriate fee statements will be rejected and placed in the file, requiring resubmission with proper fees and certifications.

For IDS certifications, specific language is not mandated, as 37 CFR 11.18(b)(2) provides adequate guidance. The USPTO is updating Form SB-08 to include checkboxes reflecting new IDS size fee requirements. Additionally, fees for continuing applications filed six or nine years after the earliest effective filing date are due at the time of filing, with no missing parts practice available. Existing remedies for delays, such as petitions for unintentional delay, remain applicable, but applicants should be mindful of timing issues under Rule 1.78.

If you have additional questions regarding the fees, please contact Brian Stanton, Vice Chair of the Patent Relations With the USPTO Committee, at brobstan@yahoo.com, so we can do our best to get your questions answered.

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Additionally, the USPTO provided FAQs:

1. General Quick Reference Guide - addresses general questions and also includes several weekend/holiday scenarios that may arise.
2. Continuing Application Fee (CAF) Quick Reference Guide - addresses issues such as how to determine if a CAF is due, what is an “Earliest Benefit Date,” what happens if applicants don’t pay the CAF, application of the fee to reissue applications, and examples.
3. Information Disclosure Statement (IDS) size fee Quick Reference Guide - addresses the new requirements for the IDS size fee and size fee assertion, how applicants/patent owners should count references, what happens if the fee isn’t paid, and examples.