Earlier this year, as we discussed here, here, and here, the United States Patent and Trademark Office (USPTO or Office) proposed a number of sweeping changes to the Office’s patent fees, including a very steep set of fees for filing terminal disclaimers, later continuation applications, and three or more requests for continued examination (RCEs). The USPTO also proposed a 25 percent hike in America Invents Act (AIA) trial fees.

The new fees, announced last month and going into effect January 19, 2025, include some, but not all of these fee hikes. The ones that remain still may well affect patent prosecution strategies. We discuss some of the most prominent fee increases here.

Background

As we discussed in our prior blogs, in an April 3, 2024 Notice of Proposed Rulemaking (NPRM), the USPTO proposed a number of fee increases, ostensibly to help the Office recover its costs. The proposal would have increased terminal disclaimer fees by as much as 700 percent and received tremendous pushback, so the USPTO backed down. Likewise, because of strong objections, the USPTO withdrew its proposal for a very substantial fee for a third RCE.