Managing international patent, design, and trade mark portfolios is a balance between maximising protection and controlling costs. For this reason, it is important to pay attention to official fee increases as and when they are published.
The latest increases by the European Patent Office in April 2024 were effectively identified as being inflationary increases. The same cannot really be said of the finalised fee schedule that was released by the US Patent and Trademark Office (USPTO) on November 20th, and which will take effect on January 19, 2025 for patents, and January 18, 2025 for trade mark fees.
This schedule will impact 433 patent fees, including the introduction of 52 new fees. The headlines are that there are some across the board increases for example annuity fees of approximately 7.5%, specific upfront prosecution fees associated with filing an application increasing by about 10%, and then there are some specific targeted fees where the increases are higher. Additionally, over 100 trade mark fees relating to filing, prosecuting and maintaining trade mark applications are set to be updated in the new year, with some filing options being discontinued. The intent is to raise approximately US$440 Million annually.
Whilst the USPTO states that these fee adjustments are required to provide sufficient financial resources to cover its costs and were shaped by public feedback, some of the changes may evidently affect applicant behaviour as they represent significant increases to the current charges. It is important to note that whilst increasing, standard discounts apply for small (60%) and micro (80%) entity status still apply for eligible patent applicants.
We outline some of these changes below, and what patent and trade mark applicants will want to consider moving forward.
New and Updated Fees for Patent Applications
As mentioned, there are a number of new patent fees being introduced. Whilst we will not outline all of these, two specifically warrant mention.
Continuations and Divisionals
The office will now charge an additional fee for continuing applications (i.e., continuations, divisional applications, and continuation-in-parts (CIPs)) based on the age of the earliest application in the patent family. The intent is to apply a surcharge for what is considered by the office as being a “late” filing and with the fees being $2,700 for any application filed more than 6 years after the earliest priority date and/ $4,000 for a new application filed more than 9 years after the earliest priority date, this may well affect filing strategies.
Information Disclosure Statement (IDS)
As practitioners are aware the USPTO has a duty of disclosure requirement where an applicant is obliged to advise the office of any relevant prior art reference. To counter practices where a large number of references were cumulatively filed, there is now introduced a new set of fees based on the total number of references submitted in an application. If an IDS causes the total number of applicant-provided references to exceed 50 / 100 / 200, there will be an additional fee of $200 / $500 / $800. The payment of the fee is also accompanied by an IDS certification requirement.
In addition to these new fees, the office has also identified a number of existing fees that will be subject to significant increases. These need to be highlighted as they may well affect prosecution strategies:
- Design applications where costs are estimated to increase by 45%,
- Excess claims’ fees increase by 100% for each claim over 20, and 25% for each independent claim over 3
- The cost of filing a second RCE increases by 43%
- Post-grant proceedings fees will increase by 25%.
As referenced above, where there is not a specific targeted fee increase, the office has proposed effectively an inflationary increase of 7.5%.
New and Updated Fees for Trade Mark Applications
Whilst detailed analysis will show that the new fee schedule sets or adjusts 28 trademark fees, including the introduction of seven new fees, the main changes affecting the USPTO’s trade mark applications fees are as follows:
Application Surcharges
There will no longer be a distinction between the TEAS Standard and TEAS Plus applications. Instead, the basic application fee of $350 per class will apply, with the Office applying potential surcharges (per class) if (a) it is contended that the application is filed with Insufficient information ($100), (b) the applicant has made use of free-form identification (not making use of the goods and services language in the USPTO Manual) of goods/services ($200), and (c) if the goods/services are defined with too many characters the office will charge $200 for each additional group of 1,000 characters after the first 1,000 characters.
Other Fees
Under the new fee schedule, there are also increases in the fees associated with statements of use and declarations of use which applicants will appreciate are a requirement of US trade mark prosecution. In addition, post-registration maintenance fees will also be updated.
What you need to do
It is evident that budgets may not have built these types of increases into the 2025 costs and will need to be managed, this will evidently require consideration, and we recommend that you contact your usual Murgitroyd contact to discuss what changes if any are required for your plans for 2025. In advance of that conversation, and given it is a shortened window of less than two months before the new fees take effect, we suggest the following at least should be considered.
Patents
- File any upcoming continuation and non-provisional applications before 19th January 2025.
- Review and monitor patent families and deadlines to avoid additional filing fees.
Trade marks
- Applicants who are currently within the filing window may want to complete these filings before the new fees are implemented on the 18th January 2025.
- If there is an option to avail of a Madrid filing to secure US protection, this may be more economical given that these fee increases do not in the main, as of yet, apply to Madrid designations.
For the full patents fee schedule, and for more information, please visit the USPTO’s website and see here for the full list of the trade mark changes.
