Patent Lodge

In April 2023, the U.S. Patent & Trademark Office (USPTO) announced proposed changes to some of the fees that it charges with respect to patent applications, design patents and America Invents Act trials. The complete list of proposed changes can be found here.

While the proposed fee changes have not been finalized and are not planned to go into effect until January 2025, it is interesting to try and interpret what the various increases represent. Put another way, how is the USPTO looking to potentially sway applicant behavior?

By focusing on a few of the proposed fee increases (relative to large entity rates), it seems the USPTO is desiring smaller claim sets, yet would be more lenient on greater quantities of independent claims. For example, there is a 100 percent proposed increase (from $100 to $200) for each claim over a quantity of 20, while there is only a 25 percent proposed increase (from $480 to $600) for each independent claim over a quantity of 3.

In addition, the USPTO seems to be in favor of curbing application pendency by fee increases set for subsequent RCE filings. Particularly, while the fee for a first  RCE filing is proposed to only increase by about 10 percent (from $1,360 to $1,500), the fee for second RCE filing is proposed to increase by 25 percent ($2,000 to $2,500) and a third RCE filing is proposed to increase by 80 percent ($2,000 to $3,600).

Further, if your client is in the practice of keeping one patent application on file (via continuation filing) to preserve the ability to continually carve out additional scopes of protection, the USPTO appears focused on dissuading the practice. In this case, a continuation filed between three and seven years from the earliest priority will be subject to an additional fee of $1,500, while one filed more than seven years from the earliest priority will be subject to an additional fee of $3,000.

The proposed fee increases above can impact application preparation, prosecution and post-allowance strategies. If you have questions and would like to discuss any of these topics, please let us know.