SUMMARY
Costs for prosecuting patents at the USPTO are set to increase on 1/19/25
Across-the-board 7.5% increase in fees
Some targeted fees increase more
Some new fees added
After-Final 2.0 program terminated as part of fee increase changes
Still possible that someone will file a lawsuit to delay Implementation of the fee increases so the future Trump-appointed USPTO Director can reconsider them
What new fees/increases are most relevant to biotech companies?
Noteworthy is the new $800 fee for IDSs with >200 cumulative cited art.
See our post below for more info:
Intro
The USPTO is set to increase patent fees and add some new ones on January 19, 2025 ^1, the last day of the Biden administration. Although it is likely that the new fees will be implemented as scheduled, there is a chance that someone will file a lawsuit and block the changes from implementation so the new Trump-appointed USPTO Director can reconsider them.
Here are more details regarding these fee increases and new fees that are scheduled for January 2025.
Across the Board Increase
According to the new rules, fees that do not have a targeted adjustment (see below) will increase by 7.5%.
Targeted Adjustments
In addition to the 7.5% across-the-board increase, several fees important to biotech companies will have targeted adjustments at various stages during a patent application: fees associated with the front-end of the application (at filing), fees for excess claims (during prosecution), fees for requests for continued examination (at final rejection), and fees for patent term extension (after issuance). These increases vary from 10% to 200% as shown below, with exact fees in the tables in footnote ^2.
Front-end patent fees
Filing, search, and examination fees will increase by 10%
Excess claims fees
The fee for each independent claim above 3 will increase by 25%
The fee for each claim above 20 total will increase by 100%
Requests for continued examination (RCE)
The fee for the 1st RCE will increase by 10%
The fee for the 2nd RCE will increase by 43%
Patent term extension
Application fees will increase by 119% to 200%
New Fees
Separately, the USPTO is introducing two fees that may affect prosecution strategy and your Information Disclosure Statement (IDS) process.
Continuing application fees
IDS size fees
Continuing application fees will be introduced for filing any continuation, divisional, and continuation-in-part applications that have a filing date more than six or nine years after the earliest benefit date (see table below). These fees will affect the costs for expanding older families in your portfolio, and may impact how thick to make your patent thicket.
Applications will also incur a new tiered fee for the cumulative number of applicant-provided references cited during prosecution. As shown in the table below, the first 50 references are free, then the tiers of the fee are: 51-100 references, 101-200 references, and 201+ references. The new fee is based on cumulative art cites, so the most paid for this fee in a single application will be $800.
This new IDS fee class is especially noteworthy for bio/pharma since these art areas tend to have many more cited art references, due in part to the large number of inter-related patent families for many bio/pharma companies. Thus, for many bio/pharma companies, with the implementation of this fee, they will pay an additional $800 per U.S. patent application. This fee will disproportionately hit them in 2025, since the $800 fee will likely be due with their next IDS filing.
Regarding bio/pharma companies that are small entities, note the fees are not discounted based on entity size. Thus, since many small bio/pharma companies often cite more than 200 art references in their IDSs for a U.S. patent application, they will often have to pay this $800 fee with their next IDS filing. This should be taken into account in annual budgeting.
Our biotech clients typically have many references in various cross-cited families, so we hit the 201+ tier in most applications, and this IDS fee will basically end up being an $800 fee for each application. However, for continuing applications, references cited in the parent applications do not need to be re-cited, which would bring the number of references down. One caveat to not re-citing the references is that those uncited from the parent application will not be on the face of the issued patent.
Small Entity Fees
The Federal Register update announcing the final rule relating to fee changes (^1) also highlighted the reductions that small entities have been receiving since 2023, and stated that the new discounted fees include these same discounts. Lastly, the Federal Register re-emphasized the industry-agnostic rule for determining a small business, which requires “an entity (a) whose number of employees, including affiliates, does not exceed 500 persons; and (b) that has not assigned, granted, conveyed, or licensed (and is under no obligation to do so) any rights in the invention to any person who made it and could not be classified as an independent inventor or to any concern that would not qualify as a nonprofit organization or a small business concern under this definition” ^1.
Footnotes
FN^1. Federal Register rule change:
FN^2. Tables of New/Increased Fees (large entity (undiscounted) amount shown)
Targeted Adjustments
New Fees
12/20/24 MM, JH, DV, EJV
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