Heading into 2025, patent applicants should prepare for significant fee increases at the United States Patent and Trademark Office (USPTO). These fee increases can significantly impact patent applicant behavior, leading prudent applicants to evaluate and adjust their patent protection strategies. Pharmaceutical and biotechnology companies in particular should plan and budget for new and drastically increased fees that impact large and long-lived patent estates.

The following information lists fees at the large entity rate. Discounts are available for small entities (having no more than 500 employees) and micro entities, as detailed on the USPTO’s Save on Fees website. Additionally, more detailed information on the proposed changes can be found on the USPTO’s Fee Setting and Adjusting website.

File Soon, if Possible

• Filing before the increases take effect will result in significant savings.
• Basic filing, search, and examination fees will all increase by 10%.
• Filing a continuation (or divisional) application more than 5 or 8 years after the priority benefit claim date will begin to cost an additional $2,200 or $3,500 on top of the ordinary filing, search, and examination fees, respectively.

Consider Filing Excess Claims in 2024

• The costs for each excess claim above 20 doubles in 2025 (increasing from $100 to $200).
• The fee for each independent claim in excess of 3 will increase from $480 to $600 each.
• Consider filing more claims in pending applications in 2024 to benefit from the lower rate.
• For applications filed in 2025, consider strategies to consolidate claims to reduce fees.

Prosecute Efficiently

• Prolonged prosecution will cost more.
• The After-Final Consideration Pilot, which allows applicants to submit certain papers for consideration after final action without filing a request for continued examination (RCE) will begin charging a fee of $500.
• The fee for filing an RCE will increase to $1,500, $2,500, or $3,600 for a first, second, or third and subsequent request, respectively.
• As mentioned above, continuations filed 5 and 8 years after the earliest priority benefit date will be charged significant new fees of 2,200 and 3,500, respectively.

Prioritize Your Disclosures

• You have a duty to disclose, but consider whether references are redundant or not material to patentability. Omitting unnecessary references can help avoid new fees for voluminous disclosures.
• Filing an Information Disclosure Statement (IDS) that causes the cumulative number of applicant-provided items to exceed 50, 100, or 200 will begin to cost $200, $500, or $800, respectively (less any amount previously paid).

Consider Terminal Disclaimers Early

• The fee for filing a terminal disclaimer will begin to vary depending on when it is filed. If you know terminal disclaimers will be necessary, file as early as possible.

Consider the Benefit of Patent Term Adjustment and Extension Applications

• The fee for a Patent Term Adjustment (PTA) application will increase from $210 to $300.
• The fee for a Patent Term Extension (PTE) application will increase from $1,180 to $5,520.

Stay Vigilant

• Be cognizant of the status of your patent or patent application and consider whether trial proceedings are likely to occur.
• The fees for unintentional delays of greater than 2 years will increase from $2,100 to $3,000. This will include unintentional delays in payment of maintenance fees, revival of abandoned applications, delayed submissions of priority claims, and other special situations.
• Trial fees for inter partes review and post-grant proceedings at the Patent Trademark Appeal Board (PTAB) will see a 25% increase across the board.
• Additionally, a request for review of a PTAB decision by the director will begin to cost $440.

For Example…

If you are considering filing a utility patent application but are on the fence about when to file, consider this example. Let’s say you want to file a continuation application that claims the benefit of an application filed in 2019. This application will have 3 independent claims and 27 dependent claims, for a total of 30 claims. Based on the parent applications, you plan to disclose 120 items in an IDS, and you anticipate the need for at least one RCE. Depending on whether you file in 2024 or 2025, the official fees are approximated to be:

As you see, you could file two applications in 2024 for about the same cost as filing a single application after the proposed fee increases take place! Additionally, if a terminal disclaimer needs to be filed, that could further increase costs, depending on when it is filed.

Planning Ahead

The proposed USPTO fee increases slated for 2025 require careful consideration and planning for patent filing and prosecution strategies. Applicants should consider prioritizing high-value patent filings, optimizing the number and format of claims filed, and/or filing terminal disclaimers at an earlier stage in prosecution. Filing in 2024, before the fee increases take effect, will save significant sums of money.

Given the significant savings to be realized, it is important for patent applicants, patent owners, and also patent challengers to consult with counsel to tailor strategies to their unique circumstances and needs.