New fees affecting trademarks and patents have taken effect at the United States Patent and Trademark Office (USPTO). The new fee structures will dramatically influence trademark and patent filings. Applicants need to rethink their filing and prosecution strategies to ensure filings are cost effective while remaining sufficiently broad to protect valuable intellectual property rights.
New Trademark Fees
Effective Jan. 18, 2025, the USPTO has increased trademark fees for specific transactions. The fees are designed to simplify examination by compelling applicants to use shorter, more standard language for identifications of goods and services or pay additional fees. A summary of the new fees can be found here.
Direct Filings at USPTO
The new fees only affect applications filed directly at the USPTO under Sections 1 (use/intent to use) and 44 (foreign application/registration). The new filing system eliminates the TEAS Plus and TEAS Standard application formats in favor of a single format for applications filed directly at the USPTO. These applications are also subject to the following additional rules and associated fees.
Surcharge for Use of Custom Identifications Goods and Services
Freeform descriptions of goods and services not contained in the Trademark ID Manual are still permitted. However, use of a custom identification will result in a $200 surcharge per class. The fee covers up to 1,000 text characters per class.
Surcharge for Lengthy Goods/Services Descriptions
Lengthy freeform identifications will likewise be subject to additional fees. Freeform identifications that exceed 1,000 text characters per class will now incur a $200 surcharge for every additional 1,000 characters. For example, the USPTO will assess a $600 surcharge for applications using a freeform description reaching 3,000 characters ($200 for using the freeform option + $200 for characters 1,001-2000 + $200 for characters 2,000-3,000).
Fee for Missing Information
Much like the TEAS Plus applications, the USPTO will charge a $100 fee per class for applications lacking required details, such as the applicant's name, domicile address and entity type.
Madrid Protocol Applications
The new rules and associated fees do not affect applications resulting from Requests for Extension of Protection under Section 66 (Madrid Protocol Applications). However, on Feb. 18, 2025, the filing fee for Madrid Protocol Applications will increase by $100 per class.
Takeaways
Much like the surcharge for paper filings imposed 20 years ago, the USPTO is using the new fee structure to alter applicant behavior. Having tried the carrot of reduced filing fees for TEAS Plus applications, the Office is now using the stick of surcharges for applications that are highly customized, lengthy or incomplete. As applicants alter their filing strategies, examination should become simpler and fewer applications should receive Office Actions.
Examples of revised filing strategies include:
- Using wording from the Trademark ID Manual wherever possible.
- For applications that require custom identifications, using broad categorical language that cover concepts as broadly as possible with the fewest possible words.
- Avoiding repetitive language meant to cover every possible variant of a product.
- Contacting the USPTO to request inclusion of important terminology in the Trademark ID Manual. Trade groups may wish to consider cooperating on suitable language that will simplify their applications and submitting to the USPTO for inclusion in the manual.
New Patent Fees
Effective Jan. 19, 2025, the USPTO also implemented substantial patent fee increases that may significantly affect patent applicants, making it essential for both large and small entities to reassess their budgets and filing strategies. Below is an overview of the most important fee changes to consider:
Key Fee Adjustments:
- General Increase: Most patent-related fees have increased by 7.5% to adjust for inflation and to help the USPTO maintain operational efficiency. This increase affects maintenance fees, appeals and other transactional fees. For instance, the cumulative fees for utility patent maintenance have risen from $13,460 to $14,470 for Large Entities and from $3,365 to $3,620 for Small Entities.
- Filing, Search and Examination Fees: These front-end fees have increased by 10%. The cumulative fees increased from $1,820 to $2,000 for Large Entities, and from $728 to $800 to Small Entities.
- Request for Continued Examination (RCE): The fee for the first RCE has increased by around 10%, from $1,360 to $1,500 for Large Entities and from $680 to $750 for Small Entities. For second and subsequent RCEs, the fee has risen by 43%, from $2,000 to $2,860 for Large Entities, and from $1,000 to $1,430 for Small Entities.
- Excess Claim Fees: The fee for each claim over 20 has doubled from $100 to $200 for Large Entities, and from $40 to $80 for Small Entities, while the fee for each independent claim over three has increased by 25%, from $480 to $600 for Large Entities, and from $192 to $240 for Small Entities.
- Design Patent Fees: The combined fees for filing, search and examination of design patents have increased from $1,020 to $1,300 for Large Entities, and from $408 to $520 for Small Entities. The design issuance fees have increased from $740 to $1,300 for Large Entities, and from $296 to $520 for Small Entities.
- Information Disclosure Statement (IDS) Fees: New fees have been introduced for IDS submissions containing more than 50 items of information. The fees are $200 (for both Large and Small Entities) for more than 50 items, $500 (for both Large and Small Entities) for more than 100 items, and $800 (for both Large and Small Entities) for more than 200 items. The IDS count is tied to the application and not to the patent family.
- Continuation Applications: A new fee structure has been established for continuing applications filed at least six years after their earliest benefit date. Applications filed 6+ years after the earliest priority date will incur a fee of $2,700 for Large Entities and $1,080 for Small Entities. Applications filed 9+ years after the earliest priority date will incur fees of $4,000 for Large Entities and $1,600 for Small Entities. These fees apply not only to traditional continuation applications but also to any application with a qualifying benefit claim, including divisionals, CIPs and the like (excluding benefit claims under 35 U.S.C. § 119(a)-(d) (foreign priority application) and 35 U.S.C. § 119(e) (provisional application).
- AIA Trial Fees: All fees associated with filing and initiating an AIA trial (Inter Partes Review, Post Grant Review, Covered Business Method Review) have increased by 25%.
Takeaways
These fee hikes represent the USPTO's initiatives to better allocate resources, improve quality and speed of examination and adjust for inflation. Fees for excess claims, RCEs, and high-volume IDS submissions are intended to reduce unnecessary filings and improve examination efficiency. They also highlight the growing importance of carefully evaluating patent filing strategies, continuation applications and portfolio management. Several strategic recommendations include:
- Evaluating patent portfolio to identify core innovations and scaling back on less essential patents to reduce maintenance costs. For patents nearing the end of their term, considering whether it is more cost-effective to continue maintenance or let them lapse, particularly if they do not have significant licensing or enforcement value.
- Reassessing filing strategies to prioritize essential claims to avoid extra claim fees.
- Trying to resolve issues during the initial examination process to avoid multiple RCE filings and determining the value of continuing an application versus abandoning or refiling with new claims.
- Leveraging IDS filing fees by focusing on relevant and material references and avoiding cumulative or non-material submissions that could trigger additional fees.
- For continuation applications, consider filing sooner rather than later to avoid the potential for increased costs in future examinations.
