Recently, the U.S. Patent and Trademark Office announced that they have completed a comprehensive patent fee review, concluding that fees must go up—some of them significantly. This is primarily due to the discounts provided under the Unleashing American Innovators Act for micro and small entities, as well as general inflation in the U.S. economy. 

To compensate for the expected lower revenue generated from fees, the USPTO has proposed a 5% across-the-board increase on all fees and significantly more on selected fees. Some of the more significant increases are:

• An additional 5% increase for filing, search, and examination fees
• 48% increase for design patents
• Cumulative surcharges on IDSs exceeding 50, 100, or 200 references, i.e., an applicant that files an IDS with over 200 citations pays three surcharges
• Escalating fees for second and subsequent requests for continued examination, i.e., a second RCE fee will increase from $2,000 to $2,500, a third and subsequent RCEs will increase from $2,000 to $3,600
• A request for patent term extension will increase from $1,180 to $6,700
• Fees for inter partes review of up to 20 claims will go from $19,000 to $23,750 and post grant review will go from $20,000 to $25,000
• Fees for filing a terminal disclaimer, which are often filed to avoid a double patenting rejection, will increase from $170 to $1,400

The USPTO has posted additional information regarding these proposals at www.uspto.gov/FeeSettingAndAdjusting and is seeking public comments at the next Patent Public Advisory Committee meeting on May 18. Consider these fee increases as you plan your prosecution strategies over the next 18 months since they are expected to take effect in January 2025.