The United States Patent and Trademark Office (USPTO) has announced significant fee changes for US IP rights, effective from 18 January 2025.
Patents
On top of an increase of about 7.5% to most patent fees, significant increases and new fees have been introduced to incentivize efficient patent prosecution strategies and reduce the burden on patent examiners. Major changes include:
- Request for Continued Examination (RCE) fees for large/small entities increased to US$1,500/US$600 for the first RCE and US$2,860/US$1,144 for each subsequent RCE. The 43% fee increase for subsequent RCEs is intended to discourage prolonged examination.
- Excess claim fees for large/small entities increased to US$200/US$80 for each claim over 20 (100% increase) and US$600/US$240 for each independent claim over 3 (25% increase).
- Continuation applications filed between six and nine years from the earliest benefit date (often the PCT filing date) by large/small entities will attract a new surcharge of US$2,700/US$1,080.
- Continuation applications filed more than nine years from the earliest benefit date by large/small entities will attract a new surcharge of US$4,000/US$1,600.
- Information Disclosure Statements attract new fees if more than 50 references are reported.
On the good news side, patent applicants will now be able to expressly abandon US National Stage applications prior to examination and receive a refund on search and excess claim fees.
Trade marks
For new trade mark applications, there is a change to the fee structure. For national applications, there will be a base fee of US$350 per class with additional charges applying per class of:
- US$100 where there is insufficient information in an application;
- US$200 where free form goods/services specifications are used rather than the USPTO approved goods/services set out in the Trademark Identification Manual; and
- US$200 for each set of 1000 characters after the first 1000 characters in a specification.
Madrid applications will attract a base filing fee of US$600 per class, up from US$500.
Fees will also jump US$50 to US$150 to file each Statement of Use and Amendments to Allege Use.
Maintenance fees post registration will also increase. Fees for:renewals will increase by US$25 to US$325;
- Filing Declarations of Use under Sections 8 or 71 will increase US$100 to US$325 (per class); and
- Filing Affidavit of Incontestability under Section 15 will increase US$50 to US$250.
Key takeaways
For Australian organisations with US patent applications, the most significant changes relate to the increased RCE charges and new surcharges for continuation / divisional applications. Active abandonment of any unexamined patent applications which are no longer of interest is worth considering due to the fee refund now available.
On the trade mark side, there will be a cost saving for Australian organisations if any new national or Madrid application in the US can be filed before 18 January 2025. Any renewals or registration maintenance documents that can be filed before this date should also be lodged to avoid the extra fees.
If you’d like further information about how these fee changes might impact you, please get in touch with your POF attorney.