The United States Patent and Trademark Office’s (USPTO) recently proposed patent fee increases could have far-ranging consequences for applicants looking to build a patent family from a single patent application. In this first of a series of blogs, we will discuss the potential consequences of the USPTO’s proposed fee increases for continuing applications, including continuation, divisional, and continuation-in-part applications. Subsequent blogs will discuss the impact of increased cost of terminal disclaimers, and of appeals and Requests for Continued Examination (RCEs). All of these proposed increases will synergistically – and not in a good way – dramatically increase the cost and the risk of building a patent portfolio.

The USPTO Proposals

In an April 3, 2024 Notice of Proposed Rulemaking (NPRM), the USPTO has set forth a new, steeply graduated fee structure for continuing applications. The cost of a regular continuing application (no more than 20 claims, no more than three independent claims) will go up a little less than 10 percent.

In addition, the proposed fees include surcharges for filing a continuing application too long after the “Earliest Benefit Date” (EBD), also known as the “patent term filing date” (the date from which the 20-year patent term is calculated). Continuing applications filed more than five years from the EBD will incur a $2,200 (undiscounted) surcharge, while continuing application filed more than eight years from the EBD will incur a $3,500 (undiscounted) surcharge. So-called small entities receive a 60% discount on these fees, and micro entities would receive an 80% discount.

The USPTO’s rationale for the new fees is that the Office relies on maintenance fees, due periodically after a patent issues, to make up for losses during examination, as the filing, search, and examination fees paid on filing are much less than what it costs the Office to handle a patent application through issuance. Continuing applications filed five or eight years after their EBD will miss at least one maintenance fee, possibly two, so that the Office cannot use those fees as part of cost recovery.