91898 Federal Register / Vol. 89, No. 224 / Wednesday, November 20, 2024 / Rules and Regulations 

DEPARTMENT OF COMMERCE 

Patent and Trademark Office 

37 CFR Parts 1, 41, and 42 

[Docket No. PTO–P–2022–0033] 

RIN 0651–AD64 

Setting and Adjusting Patent Fees 

During Fiscal Year 2025 

AGENCY: United States Patent and 

Trademark Office, Department of 

Commerce. 

ACTION: Final rule. 

SUMMARY: The United States Patent and 

Trademark Office (USPTO) sets or 

adjusts patent fees as authorized by the 

Leahy-Smith America Invents Act 

(AIA), as amended by the Study of 

Underrepresented Classes Chasing 

Engineering and Science Success Act of 

2018 (SUCCESS Act). The fee 

adjustments are needed to provide the 

USPTO with sufficient aggregate 

revenue to recover the aggregate 

estimated costs of patent operations in 

future years (based on assumptions and 

estimates found in the agency’s Fiscal 

Year 2025 Congressional Justification 

(FY 2025 Budget)), including 

implementing the USPTO 2022–2026 

Strategic Plan (Strategic Plan). 

DATES: This rule is effective on January 

19, 2025. The amendments to 

§ 1.18(b)(1) shall apply to those 

international design applications under 

the Hague Agreement having a date of 

international registration on or after 

January 19, 2025. 

FOR FURTHER INFORMATION CONTACT: 

Brendan Hourigan, Director, Office of 

Planning and Budget, at 571–272–8966 

or Brendan.Hourigan@uspto.gov or C. 

Brett Lockard, Director, Forecasting and 

Analysis Division, at 571–272–0928 or 

Christopher.Lockard@uspto.gov. 

SUPPLEMENTARY INFORMATION: 

I. Executive Summary 

A. Introduction 

The USPTO issues this final rule 

under section 10 of the AIA (section 10), 

Public Law 112–29, 125 Stat. 284, 

available at https://www.congress.gov/ 

112/plaws/publ29/PLAW112publ29.pdf, as amended by the 

SUCCESS Act, Public Law 115–273, 132 

Stat. 4158, available at https://

www.congress.gov/115/plaws/publ273/ 

PLAW-115publ273.pdf, which 

authorizes the Under Secretary of 

Commerce for Intellectual Property and 

Director of the USPTO (Director) to set 

or adjust by rule any patent fee 

established, authorized, or charged 

under 35 U.S.C. for any services 

performed or materials furnished by the 

agency. Section 10 prescribes that fees 

may be set or adjusted only to recover 

the aggregate estimated costs to the 

USPTO for processing, activities, 

services, and materials relating to 

patents, including administrative costs 

with respect to such patent fees. Section 

10 authority includes flexibility to set 

individual fees in a way that furthers 

key policy factors while considering the 

cost of the respective services. Section 

10 also establishes certain procedural 

requirements for setting or adjusting fee 

regulations, such as public hearings and 

input from the Patent Public Advisory 

Committee (PPAC), a public comment 

period, and congressional oversight. 

B. Purpose of This Action 

Based on a biennial review of fees, 

costs, and revenues that began in fiscal 

year (FY) 2021, the USPTO concluded 

that fee adjustments are necessary to 

provide the agency with sufficient 

financial resources to facilitate the 

effective administration of the U.S. 

patent system, including implementing 

the Strategic Plan, available on the 

agency website at https://

www.uspto.gov/StrategicPlan. The 

USPTO reviewed and analyzed the 

overall balance between the agency’s 

estimated revenue and costs over the 

next five years (based on current 

projections) under this rule. The fees 

established under this final rule will 

help stabilize the USPTO’s finances by 

offsetting the forecasted increase in 

aggregate costs and maintaining the 

patent operating reserve in the desired 

range. The patent operating reserve 

mitigates financing risk and enables the 

agency to deliver reliable and 

predictable service levels, while 

positioning it to undertake initiatives 

that encourage participation in the 

innovation ecosystem. 

The individual fee adjustments align 

with the USPTO’s strategic goals and its 

fee structure philosophy, including the 

agency’s four key fee setting policy 

factors discussed in detail in Part IV: 

Rulemaking Goals and Strategies of this 

rule: (1) promote innovation strategies, 

(2) align fees with the full costs of 

products and services, (3) facilitate 

effective administration of the U.S. 

patent system, and (4) offer application 

processing options. The fee adjustments 

in this final rule will enable the USPTO 

to accomplish its mission to drive U.S. 

innovation, inclusive capitalism, and 

global competitiveness. 

C. Summary of Provisions Impacted by 

This Action 

This final rule sets or adjusts 433 

patent fees for undiscounted, small, and 

micro entities, including the 

introduction of 52 new fees. Any 

reference herein to ‘‘undiscounted 

entity’’ includes all entities other than 

those with established entitlement to 

either a small or micro entity fee 

discount, see Part II: Background of this 

rule for more information. 

Overall, discussed in detail below, the 

routine fees to obtain a patent (i.e., 

filing, search, examination, and issue 

fees) will increase under this final rule 

relative to the current fee schedule to 

ensure financial sustainability and 

accommodate increases needed to 

improve the predictability and 

reliability of patent intellectual property 

(IP) protection. Applicants who meet 

the eligibility criteria for small or micro 

entity discounts will continue to pay a 

reduced fee for the fees eligible for 

discount under AIA section 10(b). 

Additional information describing the 

fee adjustments established by this final 

rule is included in Part V: Individual 

Fee Rationale in this rulemaking and in 

the ‘‘Table of Patent Fees—Current, 

Final Patent Fee Schedule, and Unit 

Cost’’ (Table of Patent Fees) available on 

the fee setting section of the USPTO 

website at https://www.uspto.gov/ 

FeeSettingAndAdjusting. 

D. Summary of Costs and Benefits of 

This Action 

This final rule is 3(f)(1) significant 

and requires a Regulatory Impact 

Analysis (RIA) under Executive Order 

(E.O.) 12866, Regulatory Planning and 

Review, (Sept. 30, 1993). The USPTO 

prepared an RIA to analyze the costs 

and benefits of the final rule over a fiveyear period, FY 2025–29. The RIA 

includes an analysis of how well the 

four alternatives align with the 

rulemaking strategies and goals, which 

are comprised of strategic priorities 

(goals, objectives, and key performance 

strategies) from the Strategic Plan and 

fee setting policy factors. From this 

conceptual framework, the USPTO 

assessed the absolute and relative 

qualitative costs and benefits of each 

alternative. Consistent with Office of 

Management and Budget (OMB) 

Circular A–4, ‘‘Regulatory Analysis’’ 

(see 88 FR 77615, Nov. 13, 2023), this 

final rule involves a transfer payment 

from one group to another. The USPTO 

recognizes that it is very difficult to 

precisely monetize and quantify social 

costs and benefits resulting from 

deadweight loss of a transfer rule such 

as this final rule. The costs and benefits 


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identified and analyzed in the RIA are 

strictly qualitative. Qualitative costs and 

benefits have effects that are difficult to 

express in either dollar or numerical 

values. Monetized costs and benefits, on 

the other hand, have effects that can be 

expressed in dollar values. The USPTO 

did not identify any monetized costs 

and benefits of this final rule but found 

this final rule has significant qualitative 

benefits and only minimal costs. 

The RIA assesses the qualitative costs 

and benefits with respect to fee 

schedule design—how well the fee 

schedule aligns to the key fee setting 

policy factors—and securing aggregate 

revenue to recover aggregate cost— 

whether the alternative provides 

adequate revenue to support the core 

mission and strategic priorities 

described in the final rule, Strategic 

Plan, and FY 2025 Budget. Based on the 

costs and benefits identified and 

analyzed in the RIA, the fee schedule 

detailed in this final rule offers the 

highest net benefits. As described 

throughout this document, the final fee 

schedule maintains the existing balance 

of below cost entry fees (e.g., filing, 

search, and examination) and above cost 

maintenance fees as one approach to 

foster innovation. Further, as detailed in 

Part V: Individual Fee Rationale of this 

rule, the fee changes are targeted in 

support of one or more fee setting policy 

factors. Lastly, this final rule secures the 

aggregate revenue needed to maintain 

patent operations and achieve the 

strategic priorities encompassed in the 

rulemaking goals and strategies (see Part 

IV: Rulemaking Goals and Strategies of 

this rule). The final fee schedule 

produces sufficient aggregate revenue to 

fund the strategic objectives to issue and 

maintain robust and reliable patents, 

improve patent application pendency, 

optimize the patent application process 

to enable efficiencies for applicants and 

other stakeholders, and enhance 

internal processes to prevent fraudulent 

and abusive behaviors that do not 

embody the USPTO’s mission. Table 1 

summarizes the RIA results. Additional 

details describing the costs and benefits 

can be found in the RIA, available on 

the fee setting section of the USPTO 

website at https://www.uspto.gov/ 

FeeSettingAndAdjusting. 

II. Background 

Section 10(a) of the AIA authorizes 

the Director to set or adjust by rule any 

patent fee established, authorized, or 

charged under 35 U.S.C. for any services 

performed or materials furnished by the 

agency. Fees under 35 U.S.C. may be set 

or adjusted only to recover the aggregate 

estimated costs to the USPTO for 

processing, activities, services, and 

materials related to patents, including 

administrative costs to the agency with 

respect to such patent operations. See 

125 Stat. at 316. Provided that fees in 

the aggregate achieve overall aggregate 

cost recovery, the Director may set 

individual fees under section 10 at, 

below, or above their respective cost. 

Section 10(e) requires the Director to 

publish the final fee rule in the Federal 

Register and the USPTO’s Official 

Gazette at least 45 days before the final 

fees become effective. 

Section 10 authorizes the USPTO to 

set or adjust patent fees within the 

regulatory process. The USPTO has 

used the AIA’s fee setting authority to 

achieve its key fee setting policy factors 

and to generate the aggregate revenue 

needed to recover the aggregate 

estimated costs of operations and 

strategic patent priorities in final rules 

published in FY 2013 (‘‘Setting and 

Adjusting Patent Fees,’’ 78 FR 4212 (Jan. 

18, 2013)), FY 2018 (‘‘Setting and 

Adjusting Patent Fees During Fiscal 

Year 2017,’’ 82 FR 52780 (Nov. 14, 

2017)), and FY 2020 (‘‘Setting and 

Adjusting Patent Fees During Fiscal 

Year 2020,’’ 85 FR 46932 (Aug. 3, 2020) 

(FY 2020 Final Rule)). 

Section 4 of the SUCCESS Act 

amended section 10(i)(2) to provide that 

the Director’s authority to set or adjust 

any fee under section 10 will end on 

September 16, 2026. While the fees 

established by this rule will remain in 

effect in perpetuity or until adjusted by 

a future rulemaking, the Director’s 

authority to initiate new rulemakings to 

set or adjust fees will expire on that 

date. 

On December 29, 2022, the President 

signed into law the Consolidated 

Appropriations Act, 2023, which 

included the Unleashing American 

Innovators Act (UAIA). The UAIA, 

available at https://www.congress.gov/ 

117/bills/hr2617/BILLS117hr2617enr.pdf, increased fee 

discounts for small entities from 50% to 

60% and fee discounts for micro entities 

from 75% to 80% for fees for filing, 

searching, examining, issuing, 

appealing, and maintaining patent 

applications and patents. The UAIA also 

increased fee discounts for small 

entities from 75% to 80% for filing a 

basic, nonprovisional utility application 

electronically. See Consolidated 

Appropriations Act, 2023, Public Law 

117–328; ‘‘Reducing Patent Fees for 

Small Entities and Micro Entities Under 

the Unleashing American Innovators 

Act of 2022,’’ 88 FR 17147 (Mar. 22, 

2023). 

Section 10(b) of the AIA, as amended 

by the UAIA, requires the USPTO to 

reduce by 60% the fees for small entities 

that are set or adjusted under section 

10(a) for filing, searching, examining, 

issuing, appealing, and maintaining 

patent applications and patents. 


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Section 10(g) of the AIA amended 35 

U.S.C chapter 11 by adding section 123 

concerning micro entities. The AIA, as 

amended by the UAIA, provides that the 

USPTO must reduce by 80% the fees for 

micro entities for filing, searching, 

examining, issuing, appealing, and 

maintaining patent applications and 

patents. 

When adopting fees under section 10, 

the Director must provide PPAC the 

proposed fees at least 45 days prior to 

publishing in the Federal Register. 

PPAC then has 30 days to deliberate, 

consider, and comment on the proposal, 

as well as hold public hearings on the 

proposed fees. Before the USPTO issues 

any final fees, PPAC must make a 

written report available to the public of 

the comments, advice, and 

recommendations of the committee 

regarding the proposed fees. The 

USPTO must consider and analyze any 

comments, advice, or recommendations 

received from PPAC before finally 

setting or adjusting fees. 

Consistent with this framework, on 

April 20, 2023, the Director notified 

PPAC of the USPTO’s intent to set or 

adjust patent fees and submitted a 

preliminary patent fee proposal with 

supporting materials, which are 

available on the fee setting section of the 

USPTO website at https://www.uspto.

gov/FeeSettingAndAdjusting. PPAC 

held a public hearing at the USPTO’s 

headquarters in Alexandria, Virginia, on 

May 18, 2023, where members of the 

public were given an opportunity to 

provide oral testimony. Transcripts of 

the hearing are available on the USPTO 

website at https://www.uspto.gov/sites/ 

default/files/documents/PPAC_

Hearing_Transcript-20230518.pdf. 

Members of the public were also given 

an opportunity to submit written 

comments for PPAC to consider, and 

these comments are available on 

Regulations.gov at https://www.regula

tions.gov/document/PTO-P-2023-0017- 

0001. On August 14, 2023, PPAC issued 

a written report setting forth in detail 

their comments, advice, and 

recommendations regarding the 

preliminary proposed fees. The report is 

available on the USPTO website at 

https://www.uspto.gov/sites/default/ 

files/documents/PPAC-Report-on-2023- 

Fee-Proposal.docx. 

The USPTO considered and analyzed 

all comments, advice, and 

recommendations received from PPAC 

before publishing the notice of proposed 

rulemaking (NPRM), ‘‘Setting and 

Adjusting Patent Fees during Fiscal 

Year 2025,’’ in the Federal Register on 

April 3, 2024, at 89 FR 23226. The 

NPRM and associated materials are 

available at https://www.uspto.gov/ 

FeeSettingAndAdjusting. Likewise, 

before issuing this final rule, the agency 

considered and analyzed all comments, 

advice, and recommendations received 

from the public during the 60-day 

comment period on the NPRM that 

closed on June 3, 2024. The agency’s 

response to comments received is 

available in Part VI: Discussion of 

Comments of this rule. 

III. Estimating Aggregate Costs and 

Revenues 

Section 10 prescribes that patent fees 

may be set or adjusted only to recover 

the aggregate estimated costs to the 

USPTO for processing, activities, 

services, and materials relating to 

patents, including administrative costs 

with respect to such patent fees. The 

following is a description of how the 

USPTO calculates aggregate costs and 

revenue. 

Step 1: Estimating Prospective 

Aggregate Costs 

Estimating prospective aggregate costs 

is accomplished primarily through the 

annual USPTO budget formulation 

process. The budget is a five-year plan 

for carrying out base programs and new 

initiatives to deliver on the USPTO’s 

statutory mission and implement 

strategic goals and objectives. 

First, the USPTO projects the level of 

demand for patent products and 

services. Demand for products and 

services depends on many factors that 

are subject to change, including 

domestic and global economic activity. 

The USPTO also considers overseas 

patenting activities, policies and 

legislation, and known process 

efficiencies. Because filing, search, and 

examination costs are the largest share 

of the total patent operating costs, a 

primary production workload driver is 

the number of patent application filings 

(i.e., incoming work to the USPTO). The 

USPTO looks at indicators such as the 

expected growth in Real Gross Domestic 

Product (RGDP), a leading indicator of 

incoming patent applications, to 

estimate prospective workload. RGDP is 

reported by the Bureau of Economic 

Analysis and is forecasted each 

February by the OMB in the Economic 

and Budget Analyses section of the 

Analytical Perspectives and twice 

annually by the Congressional Budget 

Office (CBO) in the Budget and 

Economic Outlook. 

The expected workload must then be 

compared to the current examination 

capacity to determine any required 

staffing and operating cost (e.g., salaries, 

workload processing contracts, and 

publication) adjustments. The USPTO 

uses a patent pendency model to 

estimate patent production output based 

on actual historical data and input 

assumptions, such as incoming patent 

applications and overtime hours. An 

overview of the model, including a 

description of inputs, outputs, key data 

relationships, and a simulation tool is 

available at https://www.uspto.gov/ 

learning-and-resources/statistics/patentpendency-model. 

Next, the USPTO calculates budgetary 

spending requirements based on the 

prospective aggregate costs of patent 

operations. First, the USPTO estimates 

the prospective costs of status quo 

operations (base requirements). Then, 

the base requirements are adjusted for 

anticipated pay increases and 

inflationary increases for the budget 

year and four outyears. The USPTO then 

estimates the prospective costs for 

expected changes in production 

workload and new initiatives over the 

same period. The USPTO reduces cost 

estimates for completed initiatives and 

known cost savings expected over the 

same five-year horizon. A detailed 

description of the budgetary 

requirements, aggregate costs, and 

related assumptions for the Patents 

program is available in the FY 2025 

Budget. 

The USPTO estimates that the Patents 

program will cost $3.973 billion in FY 

2025, including $2.835 billion for patent 

examining; $90 million for patent trial 

and appeals; $159 million for patent 

information resources; $24 million for 

activities related to IP protection, 

policy, and enforcement; and $866 

million for general support costs 

necessary for patent operations (e.g., the 

patent share of rent, utilities, legal, 

financial, human resources, other 

administrative services, and agencywide information technology (IT) 

infrastructure and IT support costs). See 

Appendix II of the FY 2025 Budget. In 

addition, the USPTO will transfer $2 

million to the Department of Commerce 

Inspector General for audit support. 

Table 2 below provides key 

underlying production workload 

projections and assumptions from the 

FY 2025 Budget used to calculate 

aggregate costs. Table 3 (see Step 2) 

presents the total budgetary 

requirements (prospective aggregate 

costs) for FY 2025 through FY 2029 and 

the estimated collections and operating 

reserve balances that would result from 

the adjustments contained in this final 

rule. These projections are based on 

point-in-time estimates and 

assumptions that are subject to change. 

There is considerable uncertainty in 

out-year budgetary requirements. There 

are risks that could materialize over the 

next several years (e.g., adjustments to 


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examination capacity, higher 

contracting costs, changes in workload, 

and other inflationary increases, etc.) 

that could increase the USPTO’s 

budgetary requirements. These 

estimates are refreshed annually in the 

production of the USPTO’s budget. 

Step 2: Estimating Prospective 

Aggregate Revenue 

As described above in Step 1, the 

USPTO’s prospective aggregate costs (as 

presented in the FY 2025 Budget) 

include budgetary requirements related 

to planned production, anticipated new 

initiatives, and a contribution to the 

patent operating reserve required for the 

USPTO to maintain patent operations 

and realize its strategic goals and 

objectives for the next five years. The 

prospective aggregate costs become the 

target aggregate revenue level that the 

new fee schedule must generate in a 

given year over the five-year planning 

horizon. To estimate aggregate revenue, 

the USPTO references the production 

models used to estimate aggregate costs 

and analyzes relevant factors and 

indicators to calculate or determine 

prospective fee workloads (e.g., number 

of applications and requests for services 

and products). 

Economic activity is an important 

consideration when developing 

workload and revenue forecasts for 

patent products and services because 

economic conditions affect patenting 

activity. Major economic indicators 

include the overall condition of the U.S. 

and global economies, spending on 

research and development activities, 

and investments that lead to the 

commercialization of new products and 

services. These indicators correlate with 

patent application filings, which are a 

key driver of patent fees. Economic 

indicators also provide insight into 

market conditions and the management 

of IP portfolios, which influence 


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application processing requests and 

post-issuance decisions to maintain 

patent protection. When developing fee 

workload forecasts, the USPTO 

considers other influential factors 

including overseas activity, policies and 

legislation, court decisions, process 

efficiencies, and anticipated applicant 

behavior. 

Anticipated applicant behavior in 

response to fee changes is measured 

using an economic principle known as 

elasticity, which for the purpose of this 

final rule measures how sensitive 

applicants and patentees are to changes 

in fee amounts. The higher the elasticity 

measure (in absolute value), the greater 

the applicant response to the relevant 

fee change. If elasticity is low enough 

(i.e., the elasticity measure is less than 

one in absolute value and demand is 

inelastic), a fee increase will lead to 

only a relatively small decrease in 

patent activities, and overall revenues 

will still increase. Conversely, if 

elasticity is high enough (i.e., the 

elasticity measure is greater than one in 

absolute value and demand is elastic), a 

fee increase will lead to a relatively 

large decrease in patenting activities 

such that overall revenues will decrease. 

When developing fee forecasts, the 

USPTO accounts for how applicant 

behavior will change at different fee 

amounts projected for the various patent 

services. The USPTO previously 

analyzed elasticity for nine broad patent 

fee categories: filing/search/examination 

fees, excess independent claims fees, 

excess total claims fees, application size 

(excess page) fees, issue fees, request for 

continued examination (RCE) fees, 

appeal fees, AIA trial fees, and 

maintenance fees, including distinctions 

by entity size where applicable. 

Additional information about how the 

USPTO estimates elasticity is provided 

in ‘‘Setting and Adjusting Patent Fees 

during Fiscal Year 2020—Description of 

Elasticity Estimates,’’ available on the 

USPTO website at https://

www.uspto.gov/sites/default/files/ 

documents/Elasticity_Appendix.docx. 

As required by law, the USPTO 

collects fees for patent-related services 

and products at different points in time 

within the patent application 

examination process and over the life of 

the pending patent application and 

granted patent to finance the associated 

work for providing those services. 

Maintenance fee payments account for 

about half of all patent fee collections 

and subsidize the cost of filing, search, 

and examination activities. Changes in 

application filing levels immediately 

impact current year fee collections. 

Fewer patent application filings mean 

the USPTO collects fewer fees to devote 

to production-related costs in the 

current pipeline. The production output 

in one- year impacts outyear revenue 

because less output in one year leads to 

fewer issue and maintenance fee 

payments in future years. 

The USPTO’s five-year estimated 

aggregate patent fee revenue (see table 3) 

is based on the number of patent 

applications it expects to receive for a 

given fiscal year, work it expects to 

process in a given fiscal year (an 

indicator of patent issue fee workloads), 

expected examination and process 

requests for the fiscal year, and the 

expected number of post-issuance 

decisions to maintain patent protection 

over that same fiscal year. Within the 

iterative process for estimating aggregate 

revenue, the USPTO adjusts individual 

fee rates up or down based on cost and 

policy decisions, estimates the effective 

dates of new fee rates, and multiplies 

the resulting fee rates by workload 

volumes (including elasticity 

adjustments) to calculate a revenue 

estimate for each fee. For the aggregate 

revenue estimates shown below, the 

USPTO assumes that all final rule fee 

rates will become effective on January 

18, 2025. Using these figures, the 

USPTO sums the individual fee revenue 

estimates, and the result is a total 

aggregate revenue estimate for a given 

year (see table 3). The aggregate revenue 

estimate also includes collecting $50 

million annually in other income 

associated with recoveries and 

reimbursable agreements (offsets to 

spending). 


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IV. Rulemaking Goals and Strategies 

A. Fee Setting Strategy 

The strategy of this final rule is to 

establish a fee schedule that generates 

sufficient multi-year revenue to recover 

the aggregate estimated costs of 

maintaining USPTO patent operations. 

The overriding principles behind this 

strategy are to operate within a 

sustainable funding model that supports 

the USPTO’s strategic goals and 

objectives, such as optimizing patent 

application pendency through the 

promotion of efficient operations and 

filing behaviors, issuing robust and 

reliable patents, and encouraging access 

to the patent system for all stakeholders. 

The USPTO assessed this final rule 

for alignment with four key fee setting 

policy factors: (1) promoting innovation 

strategies seeks to ensure barriers to 

entry into the U.S. patent system remain 

low, and innovation is incentivized by 

granting inventors certain short-term 

exclusive rights to stimulate additional 

inventive activity; (2) aligning fees with 

the full costs of products and services 

recognizes that some applicants may use 

particular services in a more costly 

manner than other applicants (e.g., 

patent applications cost more to process 

when more claims are filed); (3) 

facilitating the effective administration 

of the U.S. patent system seeks to 

encourage patent prosecution strategies 

that promote efficient patent 

prosecution, resulting in compact 

prosecution and reduction in the time it 

takes to obtain a patent; and (4) offering 

application processing options, where 

feasible, in recognition that patent 

prosecution is not a one-size-fits-all 

process. Part V: Individual Fee 

Rationale of this rule describes the 

reasoning for setting and adjusting 

individual fees, including the design 

benefits of the final fee schedule. The 

RIA, available on the fee setting section 

of the USPTO website at https://

www.uspto.gov/ 

FeeSettingAndAdjusting, also discusses 

fee schedule design benefits. 

In the event any provision is 

invalidated or held to be impermissible 

as a result of a legal challenge, the 

‘‘remainder of the regulation could 

function sensibly without the stricken 

provision.’’ Belmont Mun. Light Dep’t v. 

FERC, 38 F.4th 173, 187 (D.C. Cir. 2022) 

(quoting MD/DC/DE Broad. Ass’n v. 

FCC, 236 F.3d 13, 22 (D.C. Cir. 2001)). 

The USPTO views each fee in this final 

rule as able to stand on its own and to 

‘‘function sensibly’’ without the others. 

This means that in the event that a 

reviewing court were to find that any 

one fee setting or fee adjustment was 

invalid, that finding would not affect 

the fees or adjustments enacted 

elsewhere in the rule. Therefore, in the 

event that any portion of this final rule 

is held to be invalid or impermissible, 

the USPTO intends that the remaining 

aspects of the regulatory provisions, and 

fees set and adjusted therein, remain 

valid. 

B. Fee Setting Considerations 

The balance of this sub-section 

presents the specific fee setting 

considerations the USPTO reviewed in 

developing the final patent fee schedule: 

(1) historical cost of providing 

individual services, (2) the balance 

between projected costs and revenue to 

meet the USPTO’s operational needs 

and strategic goals, (3) ensuring 

sustainable funding, and (4) PPAC’s 

comments, advice, and 

recommendations on the USPTO’s 

initial fee setting proposal and the 

public comments received in response 

to the April 2024 NPRM. Collectively, 

these considerations inform USPTO’s 

chosen rulemaking strategy. 

1. Historical Cost of Providing 

Individual Services 

The USPTO sets individual fee rates 

to further key policy considerations 

while considering the cost of a 

particular service. For instance, the 

USPTO has a longstanding practice of 

setting basic filing, search, and 

examination (‘‘front-end’’) fees below 

the actual cost of processing and 

examining applications to encourage 

innovators to take advantage of patent 

rights and protections; these costs are 

subsidized by aggregate patent revenues 

elsewhere. 

The USPTO considers unit cost 

accounting data provided by its Activity 

Based Information (ABI) program to 

evaluate the cost to provide specific 

services and then decide how to best 

align fees for particular services to 

recover the aggregate costs of all 

products and services. Using historical 

cost data and forecasted application 

demands, the USPTO can align fees to 

the costs of specific patent products and 

services. Additional information on the 

USPTO’s costing methodology in 

addition to the last three years of 

historical cost data is provided in the 

document titled ‘‘Setting and Adjusting 

Patent Fees during Fiscal Year 2025— 

Activity Based Information and Patent 

Fee Unit Expense Methodology,’’ 

available on the fee setting section of the 

USPTO website at https://

www.uspto.gov/ 

FeeSettingAndAdjusting. Part V: 

Individual Fee Rationale of this rule 

describes the reasoning and anticipated 

benefits for setting some individual fees 

at cost, below cost, or above cost such 

that the USPTO recovers the aggregate 

costs of providing services through 

aggregate fee collections. 

2. Balancing Projected Costs and 

Revenue 

In developing this final patent fee 

schedule, the USPTO considered its 

current estimates of future year 

workload demands, fee collections, and 

costs to maintain core USPTO 

operations and meet its strategic goals as 

found in the FY 2025 Budget and the 

Strategic Plan. The USPTO’s strategic 

goals include driving inclusive U.S. 

innovation and global competitiveness, 

promoting the efficient delivery of 

reliable IP rights, promoting the 

protection of IP against new and 

persistent threats, bringing innovation 

to impact, and generating impactful 

employee and customer experiences by 

maximizing agency operations. The 

following subsections provide details 

regarding updated revenue and cost 

estimates, cost-saving efforts taken by 

the USPTO, and planned strategic 

improvements. 

a. Updated Revenue and Cost Estimates 

Projected revenue from the current fee 

schedule is insufficient to meet future 

budgetary requirements (costs) due 

largely to unforeseen economic and 

policy factors since the USPTO last 

exercised its rulemaking authority to set 

patent fees in the FY 2020 Final Rule. 

As further discussed below, increased 

fee discounts for small and micro 

entities under the UAIA have reduced 

revenue estimates. Higher-thanexpected inflation in the broader U.S. 

economy and government-wide pay 

raises have increased the USPTO’s 

forecasted operating costs. Also, the 

USPTO has increased special pay rates 

and undertaken efforts to offer other 

incentives to recruit and retain 

examiners and other employees in 

patent specific job series in order to 

remain competitive in the job market for 

science, technology, engineering, and 

mathematics (STEM) workers. The 

USPTO is required by law to finance 

operations by recovering fees for the 

services offered by the agency. Not 

implementing the final rule would 

result in insufficient fee collections to 

process the anticipated work volumes, 

impacting stakeholders and failing to 

deliver on the USPTO mission. 

On December 29, 2022, the President 

signed into law the Consolidated 

Appropriations Act, 2023, which 

included the UAIA. The law reduced 

barriers to entry into the patent system 

by increasing small entity discounts 

from 50% to 60% and micro entity 


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discounts from 75% to 80%. The 

USPTO estimated as part of its Fiscal 

Year 2024 Congressional Justification 

(FY 2024 Budget) that these discounts 

would reduce projected fee collections 

by $74 million in FY 2023 (partial year 

impact) and at least $100 million per 

year beginning in FY 2024 (full year 

impact). In addition to increased entity 

discounts, the UAIA increases costs 

through its provision that requires that 

the USPTO establish a new Southeast 

Regional Office and four new 

community outreach offices, including 

one in northern New England. The 

USPTO must also conduct a study to 

determine whether additional offices are 

required to achieve AIA mandates and 

to increase participation of 

underrepresented inventors in the 

patent system. 

Higher-than-expected inflation in the 

broader U.S. economy starting in 2021 

increased the USPTO’s operating costs 

above previous estimates for labor and 

nonlabor activities such as benefits, 

service contracts, and equipment. 

Salaries and benefits comprise 70% of 

all patent-related costs, and employee 

pay raises enacted across all U.S. 

government agencies—including the 

USPTO—in 2023 and 2024 were much 

larger than previously budgeted. Federal 

General Schedule (GS) pay was raised 

by 4.6% in 2023 and 5.2% in 2024; 

before 2023 the last time GS pay was 

raised by at least 4.0% was in 2004. The 

FY 2025 Budget includes an estimated 

2.0% civilian pay raise planned in 

calendar year (CY) 2025 and assumed 

3.0% civilian pay raises in CY 2026–29, 

as well as inflationary increases for 

other labor and nonlabor activities. 

Similarly, the USPTO adjusted the 

patent special rate table (pay) for the 

first time since 2007. In 2007 the special 

rate table was set 11.4% to 31.4% above 

the GS pay table for the Washington, DC 

area because patent-related job fields 

require a highly educated and technical 

STEM workforce. This specialization 

has historically posed recruitment 

challenges for the agency, and the 

increased pay rates kept the USPTO 

competitive with private sector 

compensation opportunities. Prior to the 

adjustment, the differential above the 

GS pay table had diminished over the 

years, and by 2023 nearly half of the 

covered employees no longer received a 

specialized supplement above the GS 

counterparts—reducing the USPTO’s 

competitive edge amongst both private 

and other Federal agencies. Following 

the change in 2024, the number of 

employees eligible for a specialized 

supplement increased, and the special 

rate table was set at 5.8% to 19.3% 

above the GS pay table for the 

Washington, DC area for most covered 

employees. The objective of the special 

rate table change is to provide 

competitive compensation to patent 

employees, thereby reducing attrition 

and enhancing recruitment of qualified 

talent. 

b. Cost-Saving Measures 

The USPTO recognizes that fees 

cannot simply increase for every 

improvement deemed desirable. The 

agency has a responsibility to 

stakeholders to pursue strategic 

opportunities for improvement in an 

efficient, cost-conscious manner. 

Likewise, the USPTO recognizes its 

obligation to gain operational efficiency 

and reduce spending when appropriate. 

As noted in the FY 2023 Agency 

Financial Report (AFR), available on the 

agency website at https://

www.uspto.gov/AnnualReport, total 

costs for the patent program increased 

13.8% from FY 2019 to FY 2023; the 

Consumer Price Index for All Urban 

Consumers (CPI–U) grew by 19.9% over 

the same period. See CPI Inflation 

Calculator, U.S. Bureau of Labor 

Statistics, https://www.bls.gov/data/ 

inflation_calculator.htm. 

The USPTO’s FY 2025 Budget 

submission includes cost reducing 

measures such as giving up leased space 

in Northern Virginia and a moderate 

reduction in overall IT spending. In FY 

2025, the USPTO estimates $4,569 

million in total spending for patent and 

trademark operations. This is a $122 

million net increase from the agency’s 

FY 2024 estimated spending level of 

$4,447 million. The net increase 

includes a $224 million upward 

adjustment for prescribed inflation and 

other adjustments and a $102 million 

downward adjustment in program 

spending and other realized efficiencies. 

This estimate builds on the $40 million 

in annual real estate savings assumed in 

the FY 2024 Budget submission to 

include additional annual cost savings 

of $12 million through releasing more 

leased space in Northern Virginia. The 

combined reduction in real estate space 

amounts to almost 1 million square feet 

and an estimated annual cost savings of 

approximately $52 million. Also, the 

USPTO is actively pursuing IT cost 

containment. The FY 2025 budget 

includes a relatively flat IT spending 

profile despite upward pressure from 

inflation, supply chain disruptions, and 

government-wide pay raises; ongoing IT 

improvements that offer business value 

to fee-paying customers; and data 

storage costs increasing proportionally 

with the forecasted growth in patent and 

trademark applications. The USPTO 

will achieve this cost containment goal 

via modern equipment in a new data 

center that will cost less to maintain and 

by retiring legacy IT systems. Both of 

these cost containment measures will 

further improve the USPTO’s 

cybersecurity posture and increase 

system resiliency. 

c. Efficient Delivery of Reliable IP 

Rights: Quality, Unexamined Inventory, 

and Pendency 

The USPTO continuously works to 

improve patent quality, particularly the 

predictability, reliability, and 

robustness of issued patents. See the 

patent quality section of the USPTO’s 

website, https://www.uspto.gov/patents/ 

quality-metrics, for more information 

including statutory compliance 

measures, process measures, and 

perception measures. The USPTO’s 

strategic goal to ‘‘promote the efficient 

delivery of reliable IP rights’’ recognizes 

the importance of innovation as a 

foundation of American economic 

growth and global competitiveness as 

well as the role the USPTO plays in 

encouraging these principles. The 

USPTO is committed to improving 

pendency to deliver timely, efficient 

services that help innovators bring their 

ideas and products to impact more 

quickly and efficiently. The USPTO 

diligently works to balance timely 

examination with improvements in 

patent quality, particularly the 

robustness and reliability of issued 

patents, while remaining mindful that 

patent applications are becoming 

increasingly more complex and that 

technologies are converging. To address 

these challenges, the USPTO must 

continue to develop and equip 

examiners with additional guidance, 

training, tools, advanced technology, 

and procedural resources. 

The USPTO is pursuing initiatives to 

enhance patent quality and the clarity 

and completeness of the official record 

during prosecution of an application 

including encouraging applicants to 

begin filing patent applications in 

DOCX format, automating 

preexamination procedures, expanding 

examiner training, and working on 

additional guidance for examiners and 

the Patent Trial and Appeal Board 

(PTAB). Current guidance initiatives 

include refresher guidance on 

obviousness under 35 U.S.C. 103 and 

enablement under 35 U.S.C. 112 and 

new guidance on how examiners should 

analyze inventorship issues for artificial 

intelligence (AI)-assisted inventions. 

See ‘‘Updated Guidance for Making a 

Proper Determination of Obviousness,’’ 

89 FR 14449 (February 27, 2024); 

‘‘Guidelines for Assessing Enablement 

in Utility Applications and Patents in 


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View of the Supreme Court Decision in 

Amgen Inc. et al. v. Sanofi et al.,’’ 89 FR 

1563 (December 21, 2023); 

‘‘Inventorship Guidance for AI-Assisted 

Inventions,’’ 89 FR 10043 (February 13, 

2024). Also, the USPTO is increasing 

patent examination quality and 

efficiency via initiatives such as the 

Global Dossier Initiative (see https://

www.uspto.gov/patents/basics/ 

international-protection/global-dossierinitiative) and by providing examiners 

with advanced technologies and tools 

for identifying prior art, such as the AIbased ‘‘More Like This’’ and ‘‘Similarity 

Search’’ features in the Patents End-toEnd (PE2E) search suite (see 1494 Off. 

Gaz. Pat. Office 251 (January 11, 2022) 

and 1504 Off. Gaz. Pat. Office 359 

(November 15, 2022)). More information 

on the USPTO’s AI initiatives, including 

the AI and Emerging Technologies 

Partnership, is available at https://

www.uspto.gov/initiatives/artificialintelligence. 

The USPTO recognizes that optimal 

pendency helps inventors and investors 

bring innovation to impact. The growing 

demand for patent services requires that 

the USPTO embrace new ways of 

delivering these critical IP services. 

Therefore, the USPTO is also working to 

identify policies, process changes, and 

technologies to improve patent 

pendency. Some of these efforts will 

focus on operational improvements to 

the patent examination process, 

including aligning the patent workforce 

with the incoming workload in the most 

efficient manner. Other efforts will 

target improvements to how applicants 

and other customers engage with the 

USPTO and navigate the prosecution 

process. For example, the USPTO has 

updated its website to improve access to 

resources and enhance customer service 

for inventors and practitioners, 

including modernizing and updating the 

Patent Basics and Patents Petitions 

pages, adding a Virtual Assistant on 

select pages, and providing an updated 

and modern general website search tool. 

The USPTO has also upgraded its 

computer systems, including 

transitioning in November 2023from 

legacy systems to Patent Center for the 

electronic filing and management of 

patent applications. Patent Center, a 

web-based platform that allows users to 

file and manage patent applications and 

requests, provides improved system 

performance and a more intuitive user 

interface for an enhanced user 

experience. The USPTO is committed to 

continuously improving the customer 

experience on its website to enhance 

and modernize accessibility, design, and 

overall satisfaction in our digital space. 

For information on additional 

enhancements to the agency’s online 

services, visit the USPTO’s web 

improvements page at https://

www.uspto.gov/about-us/websiteimprovements. Effecting the changes in 

the examination process needed to 

ensure the issuance of reliable patents 

while also issuing those patents in a 

timely manner requires recognizing a 

potential increase in the core operating 

costs for future years. 

Another major component of the 

overall patent process that has seen an 

increase in operating costs is the work 

carried out by the PTAB and the Central 

Reexamination Unit (CRU). These units 

play a key role in providing an efficient 

system for amending or voiding any 

patent claims that overreach and stunt 

innovation, inclusive capitalism, and 

global competitiveness. To ensure that 

post-issuance challenges to patent rights 

through the PTAB and the CRU help 

protect innovation and investments to 

commercialize innovation, the USPTO 

will invest in new tools and resources 

that increase communication, 

knowledge sharing, and collective 

problem solving. These strategic 

investments will enable the USPTO to 

identify and continue to implement 

guidelines and best practices to serve 

the patent system. 

3. Sustainable Funding 

All aspects of estimating the five-year 

forecast for aggregate cost, aggregate 

revenue, and the patent operating 

reserve are inherently uncertain because 

they are based on numerous, 

multifaceted planning assumptions 

predicated on external indicators of 

economic IP activity to forecast demand 

as well as internal workload drivers 

derived from production models. 

Maintaining a viable operating reserve is 

a key consideration as the USPTO sets 

patent fees. To mitigate the risk of 

uncertain demand, the USPTO 

maintains a patent operating reserve. 

The U.S. Government Accountability 

Office (GAO) considers operating 

reserves a best practice for user feefunded government agencies like the 

USPTO. The patent operating reserve 

enables the USPTO to align fees and 

costs over a longer horizon and to 

improve its preparation for, and 

adjustment to, fluctuations in actual fee 

collections and spending. 

The USPTO manages the operating 

reserve within a range of acceptable 

balances and assesses its options when 

projected balances fall either below or 

above that range. Minimum planning 

targets are intended to address 

immediate, unplanned changes in the 

economic or operating environments as 

the reserve builds to the optimal level. 

The minimum and optimal planning 

targets are reviewed every three years to 

ensure the reserve operating range 

(between minimum and optimal targets) 

mitigates the severity of an array of 

financial risks. Based on the current risk 

environment, including various risk 

factors such as economic and funding 

uncertainty and the high percentage of 

fixed costs in the Patents program, the 

USPTO established a minimum 

planning level of 8% of total spending— 

about one month’s operating expenses 

(estimated between $318 million and 

$368 million from FY 2025–29)—and an 

optimal long-range target of 22% of total 

spending—about three months’ 

operating expenses (estimated between 

$875 million and $1,012 million from 

FY 2025–2029). 

Based on current cost and revenue 

assumptions in the FY 2025 Budget, the 

USPTO forecasts that in FY 2024 

aggregate estimated costs will exceed 

aggregate revenue and the operating 

reserve will be used to maintain 

operations. The fees contained in this 

final rule are projected to increase 

patent fee collections to the point that 

they exceed known spending 

requirements, and forecasted excess fee 

collections will replenish the patent 

operating reserve each year from FY 

2025 through FY 2027. Based on this 

forecast, the USPTO will likely achieve 

its optimal level for the patent operating 

reserve in FY 2026. Based on spending 

requirements, the USPTO expects to 

rely on the patent operating reserve to 

fund a portion of operating expenses in 

FY 2028 and FY 2029 as projected 

patent spending requirements will 

likely exceed projected fee collections. 

These projections are based on pointin-time estimates and assumptions that 

are subject to change. For instance, the 

budget includes assumptions about 

filing levels, renewal rates, whether the 

President will authorize or Congress 

will mandate employee pay raises, the 

productivity of the workforce, and many 

other factors. A change in any of these 

factors could have a significant 

cumulative impact on fee collections or 

spending requirements that affect the 

reserve balances. As seen in table 3, set 

forth in Part III: Estimating Aggregate 

Costs and Revenue of this rule, the 

operating reserve balance can change 

significantly over a five-year planning 

horizon, underscoring the value of the 

operating reserves as a risk mitigation 

tool for USPTO’s financial vulnerability 

to varying risk factors and the 

importance of fee setting authority. 

The USPTO will continue to evaluate 

long-term planning assumptions to 

determine the appropriate course of 


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action beyond FY 2027 to appropriately 

adjust the Patents program for 

fluctuations in annual revenue resulting 

from changes in the economy, changes 

in spending requirements, and other 

financial risks. The USPTO will also 

continue to assess the patent operating 

reserve balance against its target balance 

annually, and at least every three years, 

the USPTO will evaluate whether the 

minimum and optimal target balance 

remain sufficient to provide the stable 

funding the USPTO needs. Per the 

USPTO’s operating reserve policy, if the 

operating reserve balance is projected to 

exceed the optimal level by 10% for two 

consecutive years, the USPTO will 

consider fee reductions. The USPTO 

will continue to regularly review its 

operating budgets and long-range plans 

to ensure the prudent use of patent fees. 

4. Comments, Advice, and 

Recommendations From PPAC and the 

Public 

As detailed in the NPRM and the 

report prepared in accordance with AIA 

fee setting authority, PPAC conveyed 

support for seeking adequate revenue to 

recover the costs for the USPTO to 

fulfill its role in supporting the 

country’s innovation ecosystem, 

commenting that ‘‘[t]imely, high-quality 

search and examination require an 

appropriately compensated work force 

with adequate time to complete the 

same, supported by state of the art and 

reliable IT infrastructure.’’ PPAC Report 

at 5–6. 

In addition, PPAC recognized that 

‘‘the USPTO is in the best position to 

assess its own needs and balance the 

tradeoffs in setting individual fees.’’ 

PPAC Report at 6. The USPTO 

considered and analyzed the comments, 

advice, and recommendations received 

from PPAC before publishing this final 

rule. 

Likewise, the agency considered and 

analyzed the comments, advice, and 

recommendations received from the 

public during the 60-day comment 

period following publication of the 

NPRM before publishing this final rule. 

The agency’s response to comments 

received is available in Part VI: 

Discussion of Comments of this rule. 

C. Summary of Rationale and Purpose 

of the Proposed Rule 

The USPTO estimates that the 

proposed patent fee schedule will 

produce sufficient aggregate revenue to 

recover the aggregate estimated costs of 

patent operations and ensure financial 

sustainability for effective 

administration of the patent system. 

This proposed rule aligns with the 

USPTO’s four key fee setting policy 

factors and supports the USPTO’s 

mission-focused strategic goals. 

V. Individual Fee Rationale 

The USPTO projects that aggregate 

revenue generated by the patent fees 

established in this final rule will recover 

the prospective aggregate estimated 

costs of patent operations as laid out in 

the FY 2025 Budget. 

The USPTO did not set each 

individual fee necessarily equal to the 

estimated costs of performing activities 

related to the fee. Instead, as described 

in Part IV: Rulemaking Goals and 

Strategies of this rule, some fees are set 

at, above, or below their unit costs to 

balance four key fee setting policy 

factors: (1) promoting innovation 

strategies, (2) aligning fees with the full 

costs of products and services, (3) 

facilitating effective administration of 

the U.S. patent system, and (4) offering 

application processing options. For 

example, the agency sets many initial 

filing fees below unit cost to promote 

innovation strategies by removing 

barriers to entry to the patent system. To 

balance the aggregate revenue loss of 

fees set below cost, the USPTO must set 

other fees above cost in areas less likely 

to reduce inventorship (e.g., 

maintenance). 

For some fees established in this final 

rule, such as extension of time fees, the 

USPTO does not maintain individual 

historical cost data for services 

provided; instead, the agency considers 

the policy factors described in Part IV: 

Rulemaking Goals and Strategies of this 

rule to inform fee setting. For example, 

facilitating effective administration of 

the U.S. patent system enables the 

USPTO to foster an environment where 

USPTO personnel can provide and 

applicants can receive prompt, quality 

interim and final decisions; encourage 

the prompt conclusion of prosecuting an 

application, resulting in pendency 

reduction and faster dissemination of 

patented information; and help recover 

costs for activities that strain the patent 

system. 

The fee changes are grouped into 

three categories: (A) an across-the-board 

adjustment to patent fees, (B) an 

adjustment to front-end fees, and (C) 

targeted fees. Part VII: Discussion of 

Specific Rules of this rule contains a 

complete listing of fees set or adjusted 

in the final patent fee schedule, 

including small and micro entity fees. 

This information is also listed in the 

Table of Patent Fees available on the fee 

setting section of the USPTO website at 

https://www.uspto.gov/ 

FeeSettingAndAdjusting. 

This final rule includes one 

procedural amendment (D) expanding 

the applicability of the rule allowing 

applicants to obtain a refund of search 

and excess claims fees paid in an 

application through express 

abandonment. 

A. Across-the-Board Adjustment to 

Patent Fees 

The broader U.S. economy has 

experienced higher-than-expected 

inflation the last two years and, in turn, 

USPTO operating costs increased 

relative to baseline estimates for labor 

and nonlabor activities such as benefits, 

service contracts, and equipment. 

Additionally, the USPTO adjusted the 

patent special rate table (pay) for the 

first time since 2007 to provide 

competitive compensation to patent 

employees. The agency’s estimates of 

future costs in the FY 2025 Budget 

include a 2.0% civilian pay raise 

planned in CY 2025 and an assumption 

of 3.0% civilian pay raises in CY 2026– 

29, as well as inflationary increases for 

other labor and nonlabor activities. 

In the NPRM, the USPTO proposed 

raising fees not covered by the targeted 

adjustments discussed in part V(C) of 

this rule by 5%. However, this final rule 

alters that proposal. The agency stated 

in the NPRM that it may need to refine 

the size of the across-the-boardadjustment either upward or downward 

such that fees are set at a level that 

secures aggregate cost recovery and 

maintains the operating reserves at 

acceptable levels. The USPTO has 

removed or adjusted several of the 

targeted proposals in the NPRM based 

on stakeholder feedback. To keep the 

USPTO on a stable financial track 

sufficient to recover the aggregate 

estimated costs of patent operations and 

to support the agency’s strategic 

objectives, the agency is adjusting by 

approximately 7.5% all patent fees not 

covered by the targeted adjustments 

discussed in part V(C). This option 

results in an aggregate increase to 

projected patent fee collections that is 

about the same as the projected increase 

in the NPRM. 

The effective date of this final rule is 

more than four years after the agency’s 

last fee adjustment in October 2020. A 

7.5% across-the-board increase in 2025 

will be equivalent to a 1.7% annual 

increase, well below the prevailing 

inflation rate since October 2020. The 

agency is not proposing a larger increase 

in line with inflation because the acrossthe-board adjustment is intended to 

supplement the additional revenue 

collected from the targeted adjustments. 

Also, the USPTO will continue its 

ongoing efforts to improve operational 

efficiency and reduce spending when 

appropriate. 


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The 7.5% across-the-board adjustment 

strikes an appropriate balance between 

projected aggregate revenue and 

aggregate costs based on the 

assumptions used to develop the pointin-time estimates that support this final 

rule. For patent fees with small and 

micro entity fee reductions, the 

undiscounted fee is rounded up or 

down to the nearest $5 by applying 

standard arithmetic rules. The resulting 

fee amounts are more convenient to 

patent users and permit the USPTO to 

set small and micro entity fees at whole 

dollar amounts when applying 

applicable fee reductions. Therefore, 

some smaller fees will not change since 

a 7.5% increase would round down to 

the current fee, while other fees will 

change by slightly more or less than 

7.5%, depending on rounding. For 

patent fees that do not have small and 

micro entity fee reductions, the fees are 

rounded to the nearest dollar by 

applying standard arithmetic rules. The 

fee adjustments in this category are 

listed in the Table of Patent Fees 

available on the fee setting section of the 

USPTO website at https://www.uspto.

gov/FeeSettingAndAdjusting. 

B. Adjustment to Front-End Patent Fees 

The USPTO is adjusting all filing, 

search, and examination fees not 

covered by the targeted adjustments as 

discussed in part V(C) of this rule by an 

additional 2.5% on top of the 7.5% 

across-the-board adjustment, for a total 

front-end increase of 10%. This total is 

consistent with the fee increases 

proposed in the NPRM. The net increase 

over the across-the-board adjustment 

has been lowered from 5% to 2.5%, 

keeping the total increase for front-end 

patent fees at 10%. The current fee 

schedule sets filing, search, and 

examination fees below the costs of 

performing these services to achieve low 

barriers to entry into the innovation 

ecosystem. These front-end fees are 

subsidized by other fee collections, 

primarily maintenance fees. This 

adjustment will marginally recover 

some, but not all, additional filing, 

search, and examination costs earlier in 

the patent life cycle, thus mitigating the 

risk of potentially lower maintenance 

fee payments in the future while 

remaining consistent with a low barrier 

to entry policy. 

Similar to the across-the-board 

adjustment, for fees that have small and 

micro entity fee reductions, the 

undiscounted fee is rounded up or 

down to the nearest $5 by applying 

standard arithmetic rules. Therefore, the 

fee rates established in this final rule 

might not be precisely 10% higher than 

the current fee rates. The fee 

adjustments in this category are listed in 

the Table of Patent Fees available on the 

fee setting section of the USPTO website 

at https://www.uspto.gov/FeeSetting

AndAdjusting. 

C. Targeted Adjustments to Patent Fees 

The USPTO sets or adjusts the 

following fees for the reasons stated 

below. Small and micro entity fees are 

set as 40% and 20%, respectively, of the 

undiscounted fees. 

1. After Final Consideration Pilot 

Program 2.0 

The USPTO considered the public 

feedback on the After Final 

Consideration Pilot Program 2.0 (AFCP 

2.0) and the proposed fee and decided 

not to renew the program. 

Consequently, a fee is not necessary. 

The program will expire on December 

14, 2024. 

2. Continuing Application Fees 


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The USPTO is instituting new fees for 

certain continuing applications to 

ensure a sustainable funding model into 

the future. The patent fee structure is 

designed to encourage innovation by 

maintaining low barriers to entry, which 

the agency accomplishes by keeping 

front-end fees (filing, search, and 

examination fees) below the costs for 

the corresponding front-end services 

(preexamination, search, and 

examination), and by reducing most 

patent fees by 60% for small entities 

and by 80% for micro entities. For 

example, for a utility application, 

current front-end fees ($1,820 for 

undiscounted entities in FY 2023) are 

set far below the USPTO’s average costs 

for filing, search, and examination 

activities ($6,165 in FY 2023). As of FY 

2023, the subsidy (the difference 

between the USPTO’s costs and what an 

applicant pays) for an average 

application was $4,345 for an 

undiscounted entity and even higher for 

those applicants paying discounted fee 

rates ($5,501 for a small entity filing 

electronically, and $5,801 for a micro 

entity). 

The USPTO recovers the shortfall 

(i.e., the costs associated with filing, 

search, and examination activities that 

are not recouped by their associated 

fees) from other fees, particularly issue 

fees and maintenance fee payments 

made after issuance of a utility patent. 

See e.g., FY 2023 AFR at 63–64, 

available on the USPTO website at 

https://www.uspto.gov/AnnualReport. 

Maintenance fees are due 3.5 years, 7.5 

years, and 11.5 years from the issue date 

of a utility patent. See 35 U.S.C. 

41(b)(1). During FY 2023, maintenance 

fees collected from utility patentees 

were 54.9% of the USPTO’s patent 

revenue, about one-third of which 

derived from payment of the 11.5-year 

fee. This revenue is vital to providing 


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the necessary aggregate financing to 

fund patent operations. 

Continuing applications, which 

include continuation, divisional, and 

continuation-in-part applications filed 

under the conditions specified in 35 

U.S.C. 120, 121, 365(c), or 386(c) and 

§ 1.78, represent a large and increasing 

share of patent applications. From FY 

2010 to FY 2022, total serialized filings 

rose about 44%, including a moderate 

increase in noncontinuing applications 

(about 25%) and a large increase in 

continuing applications (about 100%), 

due almost entirely to increased 

continuation filings. Since FY 2010, 

divisional and continuation-in-part 

applications remained flat at annual 

levels of about 22,000 and 19,000, 

respectively. However, continuation 

applications have tripled, from about 

40,000 in FY 2010 to about 122,800 in 

FY 2022, representing about 34% of FY 

2022 serialized filings. 

The volume and rapid increase of 

continuing applications negatively 

impacts the USPTO’s workload and 

docketing practices. For example, it is 

difficult for the agency to balance patent 

resources between the examination of 

‘‘new’’ (i.e., noncontinuing) applications 

disclosing new technologies and 

innovations and continuing applications 

that, in some cases, are a repetition of 

previously examined applications either 

issued as patents or that have become 

abandoned. See e.g., FY 2021 pendency 

statistics review presented at the PPAC 

quarterly meeting on Nov. 18, 2021, 

available on the USPTO website at 

https://www.uspto.gov/sites/default/ 

files/documents/20211115-PPAC-FY21- 

pendency-stats-review.pdf (note that 

about 80% of continuations have a 

patented parent). In addition, certain 

continuing applications, particularly 

divisional and continuation-in-part 

applications, might present different 

claimed inventions or more complex 

issues than a non-continuing 

application. Examiners are provided the 

same amount of time to examine a 

continuing application as a noncontinuing application; equal time 

equates to equal cost to the agency. 

Moreover, continuing applications 

filed long after their earliest benefit date 

(EBD) are less likely to have a patent 

term long enough for the USPTO to 

recover more of their costs from 

maintenance fees. The EBD is a term 

used in this rulemaking (the NPRM and 

this final rule) to refer to the earliest 

filing date for which benefit is claimed 

under 35 U.S.C. 120, 121, 365(c), or 

386(c) and § 1.78(d). The EBD is 

determined on an application-byapplication basis. The EBD cannot be 

the filing date of a foreign application or 

the filing date of a provisional 

application to which benefit is claimed 

under 35 U.S.C. 119(e). When the laterfiled application is a utility or plant 

patent application, the EBD is also the 

date from which the 20-year patent term 

is calculated under 35 U.S.C. 154(a)(2). 

The EBD is also known as the patent 

term filing date. For more information 

about benefit claims, see Manual of 

Patent Examining Procedure (MPEP) 

(9th ed., Rev. 01.2024, November 2024) 

210 and 211 et seq.; for more 

information about the patent term filing 

date, see MPEP 804, subsection I.B.1(a); 

and for more information about patent 

term, see MPEP 2701. The MPEP may be 

viewed on or downloaded from the 

USPTO website at https://

www.uspto.gov/MPEP or https://

mpep.uspto.gov. 

Figure 1 depicts the estimated patent 

terms for a hypothetical patent family 

containing five applications that are 

filed at different times after their EBD: 

Parent A filed at 0 years, Child B filed 

at 2.5 years after the EBD, Child C filed 

at 5 years after the EBD, Child D filed 

at 7.5 years after the EBD, and Child E 

filed at 10 years after the EBD. Each 

application claims the benefit of every 

prior-filed application in the family 

under 35 U.S.C. 120, e.g., Child C is a 

continuation of Child B, which is a 

continuation of Parent A. The pendency 

of each application is shown as a white 

bar with a dotted outline, and the term 

of each patent is shown as a shaded gray 

bar. For the sake of simplicity, the terms 

are estimated based on a 30-month 

pendency and assume that no patent 

term adjustments, patent term 

extensions, or terminal disclaimers 

apply. Key dates for each patent are 

indicated by labeled ovals (e.g., ‘‘I’’ for 

the issue date, and ‘‘M1,’’ ‘‘M2,’’ or 

‘‘M3’’ for the maintenance fee due dates, 

which for purposes of this illustration 

are shown as inclusive of the 35 U.S.C. 

41(b)(2) grace periods). 


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As shown in figure 1, Parent A is filed 

on the EBD, Child B is filed 2.5 years 

after the EBD, and Child C is filed 5 

years after the EBD. All three of these 

applications will have a patent term 

long enough to require payment of all 

three maintenance fees to avoid 

expiration prior to the maximum 

statutory term. Child D and Child E, 

however, will not. Child D, filed 7.5 

years after the EBD, will not have a term 

long enough to require payment of the 

third maintenance fee to avoid 

expiration prior to the maximum 

statutory term, and Child E, filed 10 

years after the EBD, will not have a term 

long enough to require payment of the 

second or third maintenance fee to 

avoid expiration prior to the maximum 

statutory term. 

While not all patentees choose to 

maintain their patents for their full 

term, the USPTO’s ability to subsidize 

front-end fees is dependent on a 

sufficient number of patentees paying 

maintenance fees so that the aggregate 

revenue generated by patent fees will 

cover the aggregate costs of patent 

operations. As the volume of 

applications with terms that are not long 

enough to require one or more 

maintenance fees increases, the risk that 

the agency will not generate sufficient 

aggregate revenue also increases. 

Instituting fees for certain continuing 

applications based on the EBD will 

make the USPTO’s funding model more 

resilient to changes in filing behaviors 

that impact the average term of issued 

patents and the resulting impact on 

maintenance fee payments. 

In May 2023, the agency originally 

proposed that new fees would apply to 

nonprovisional applications that have 

an actual filing date more than three or 

more than seven years later than their 

EBD. In response to feedback from 

PPAC, the USPTO adjusted the 

thresholds in the NPRM and proposed 

that the new fees would apply to 

nonprovisional applications that have 

an actual filing date more than five or 

more than eight years later than their 

EBD. During the public comment period 

following the NPRM, the USPTO 

received a number of comments 

expressing concerns that the adjusted 

thresholds were still too early in time. 

After weighing the public feedback and 

considering the effects on the patent 

system as a whole, the USPTO has 

adjusted the timing thresholds for the 

continuing application fees as detailed 

below. 

As set forth in this final rule, the new 

fees in § 1.17(w) apply to 

nonprovisional applications that have 

an actual filing date more than six years 

after their EBD. The § 1.17(w)(1) fee 

applies when the later-filed 

application’s EBD is more than six and 

no more than nine years earlier than its 

actual filing date and is $2,700 for 

undiscounted applications, $1,080 for 

applications receiving a small entity 

discount, and $540 for applications 

receiving a micro entity discount. For 

the hypothetical patent family shown in 

figure 1, Child D would incur the 

§ 1.17(w)(1) fee because it was filed 7.5 

years after its EBD. The § 1.17(w)(2) fee 

applies when the later-filed 

application’s EBD is more than nine 

years earlier than its actual filing date 

and is $4,000 for undiscounted 

applications, $1,600 for applications 

receiving a small entity discount, and 

$800 for applications receiving a micro 

entity discount. For the hypothetical 

patent family shown in figure 1, Child 

E would incur the § 1.17(w)(2) fee 

because it was filed 10 years after its 

EBD. 

The new fees in § 1.17(w) will 

partially offset foregone maintenance fee 

revenue resulting from later-filed 

continuing applications and, therefore, 

recover more costs related to continuing 

applications filed long after their EBD 

directly from filers of such applications. 

As noted previously, the § 1.17(w) fees 

are designed so that continuing 

applications filed six or fewer years 

after their EBD will continue to receive 

a front-end fee subsidy that is equal to 

that received by non-continuing 

applications. Thus, low barriers to entry 

into the patent system are preserved for 

non-continuing applications and for 

approximately 80.3% of continuing 

applications. For those continuing 

applications filed more than six years 

after their EBD, the § 1.17(w) fee will 

essentially reduce the amount of the 

front-end fee subsidy in recognition that 

such applications are less likely to have 

a patent term long enough for the 

USPTO to recover the costs of their 

search and examination from 

maintenance fees. The § 1.17(w) fees are 

set at a rate that is both less than the 

front-end fee subsidy and substantially 

less than the third maintenance fee 

amount. 

For example, for the hypothetical 

patent family shown in figure 1, under 

the undiscounted fee rates as adjusted 

by this final rule, Child D would pay the 

undiscounted § 1.17(w)(1) fee of $2,700 

and would not have a term long enough 

to require payment of the third 

maintenance fee ($8,280) to avoid 

expiration prior to the maximum 

statutory term. Child E would pay the 

undiscounted § 1.17(w)(2) fee of $4,000 

and would not have a term long enough 

to require payment of the second 

($4,040) or third ($8,280) maintenance 

fee to avoid expiration prior to the 

maximum statutory term. Therefore, the 

§ 1.17(w)(1) fees will help offset a frontend subsidy of approximately $4,165 

(with front-end fees adjusted to a 

combined $2,000 in this final rule and 

combined FY 2023 unit costs of $6,165 

for filing, search, and examination 

activities). If these applications paid 

discounted fees, the difference would be 

even greater. For example, if Child D 

received small entity fee discounts, the 

§ 1.17(w)(1) fee would be $1,080, 

partially offsetting a front-end subsidy 

of approximately $5,435 and less than 

the third maintenance fee of $3,312. 

If future workloads for continuing 

applications were to remain consistent 

with FY 2022 data, about 80.3% of 

continuing applications would not incur 

the new fees because they are filed 

within six years of their EBD, while the 

remaining 19.7% of continuing 

applications (about 6.5% of all 

applications) would incur a continuing 

application fee. In particular, as shown 

in table 5, about 11.4% of continuing 

applications are filed more than six but 

not more than nine years after their EBD 

and would incur the § 1.17(w)(1) fee, 

and an additional 8.3% of continuing 

applications are filed more than nine 

years after their EBD and would incur 

the § 1.17(w)(2) fee. The table includes 

columns for ranges of years from the 

EBD to the filing date, the share of 

continuing applications in each range, 

and the applicability of the § 1.17(w) 

fees. 


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Figure 2 illustrates the same data, 

with the addition of noting when the 

§ 1.17(w) fees are incurred. The x-axis 

represents the years from the EBD to the 

filing date, and the y-axis shows the 

total share of continuing applications. 

Each vertical bar in figure 2 corresponds 

to a row in table 5. The leftmost two 

vertical bars labeled ‘‘0 to 3’’ and ‘‘>3 to 

6’’ represent the approximate 80.3% 

share of continuing applications will 

not incur the new fees, the vertical bar 

labeled ‘‘>6 to 9’’ represents the 11.4% 

share of continuing applications that 

will incur the § 1.17(w)(1) fee, and the 

rightmost three vertical bars inside the 

dashed box represent the 8.3% share of 

continuing applications that will incur 

the § 1.17(w)(2) fee. 

For an application filed on or after the 

effective date of this final rule, payment 

of the § 1.17(w) fees is required at the 

time a prompting benefit claim (i.e., a 

benefit claim that causes the EBD of the 

later-filed application to be more than 

six or nine years earlier than its actual 

filing date) is presented in the later-filed 

application. If the prompting benefit 

claim is presented at the time of filing 

the later-filed application, the 

applicable § 1.17(w) fee will be due at 

filing. If the prompting benefit claim is 

presented at a later time, the applicable 

§ 1.17(w) fee will be due concurrently 

with the presentation of the prompting 

benefit claim. If the later presentation of 

the prompting benefit claim is by way 

of a petition for acceptance of an 

unintentionally delayed benefit claim 

under § 1.78(e), the applicable § 1.17(w) 

fee will be due in addition to the 

petition fee under § 1.17(m). 

Because the fees in § 1.17(w) are 

based on the application’s EBD, 

presenting multiple benefit claims at the 

same time will not incur multiple fees. 

However, if benefit claims are presented 

at multiple times during an 

application’s pendency, a second fee 


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may be due if the later-presented benefit 

claim changes the application’s EBD to 

be more than nine years earlier than the 

actual filing date. In this situation, the 

amount due under § 1.17(w)(2) for the 

later presentation will reflect any prior 

payment under § 1.17(w)(1) for the 

earlier presentation. For instance, if the 

fee under § 1.17(w)(1) was paid at the 

time of filing and a prompting benefit 

claim requiring payment of the 

§ 1.17(w)(2) fee is presented at a later 

time, the additional amount owed is the 

difference between the current fee 

amount stated in § 1.17(w)(2) and the 

amount of the previous payment under 

§ 1.17(w)(1). 

An application that is pending prior 

to the effective date of this final rule 

will not incur a fee under § 1.17(w) 

based on any benefit claims that were 

properly presented prior to the effective 

date. If a benefit claim is presented in 

the application on or after the effective 

date of this final rule, however, the 

application will incur a fee under 

§ 1.17(w) if the actual filing date of the 

application is more than six or nine 

years later than its EBD. 

The following examples are not 

exhaustive but illustrate the most 

common situations anticipated to 

require payment of the new fees under 

§ 1.17(w). For purposes of these 

examples, the agency assumes that all 

requirements for claiming benefit under 

35 U.S.C. 119, 120, 121, 365(c), or 386(c) 

and § 1.78 are satisfied, and that all fees 

are paid at the undiscounted rates. 

Example 1: Claiming benefit of a 

nonprovisional application under 35 U.S.C. 

120. Application A is a nonprovisional 

application filed on July 1, 2026. The 

Application Data Sheet (ADS) present upon 

A’s filing contains a benefit claim under 35 

U.S.C. 120 to nonprovisional application N 

filed on March 2, 2020, which is the only 

benefit claim in the application. A’s EBD is 

March 2, 2020, which is more than six but 

not more than nine years earlier than A’s 

actual filing date of July 1, 2026. In this 

example, the § 1.17(w)(1) fee of $2,700 is due 

upon A’s filing. 

Example 2: Claiming benefit of a 

provisional application under 35 U.S.C. 

119(e). Application B is a nonprovisional 

application filed on July 1, 2026. The ADS 

present upon B’s filing contains a benefit 

claim under 35 U.S.C. 120 to nonprovisional 

application O filed on February 2, 2021, and 

a benefit claim under 35 U.S.C. 119(e) to 

provisional application P filed on March 3, 

2020. The USPTO’s records indicate that O 

also contains a benefit claim under 35 U.S.C. 

119(e) to provisional application P. In this 

situation, P’s filing date is not the EBD, 

because § 1.17(w) does not encompass benefit 

claims under 35 U.S.C. 119(e). Instead, B’s 

EBD is February 2, 2021, which is less than 

six years earlier than B’s actual filing date of 

July 1, 2026. In this example, no fee would 

be due under § 1.17(w). 

Example 3: Claiming benefit of a 

provisional application under 35 U.S.C. 120. 

Application C is a nonprovisional 

application filed on July 1, 2026. The ADS 

present upon C’s filing contains a benefit 

claim under 35 U.S.C. 120 to nonprovisional 

application O filed on February 2, 2021, and 

a benefit claim under 35 U.S.C. 120 to 

provisional application P filed on March 3, 

2020. The USPTO’s records indicate that O 

also contains a benefit claim under 35 U.S.C. 

120 to provisional application P. In this 

situation, P’s filing date is the EBD, because 

§ 1.17(w) encompasses benefit claims under 

35 U.S.C. 120. C’s EBD is March 3, 2020, 

which is more than six but not more than 

nine years earlier than C’s actual filing date 

of July 1, 2026. In this example, the 

§ 1.17(w)(1) fee of $2,700 is due upon C’s 

filing. Note, it is not recommended that 

applicants claim the benefit to a provisional 

application under 35 U.S.C. 120 since such 

a claim could have the effect of reducing the 

patent term. See MPEP 211.02, subsection III. 

Example 4: Claiming priority to a foreign 

application under 35 U.S.C. 119(a). 

Application D is a nonprovisional 

application filed on July 1, 2026. The ADS 

present upon D’s filing contains a benefit 

claim under 35 U.S.C. 120 to nonprovisional 

application O filed on February 2, 2021, and 

a priority claim under 35 U.S.C. 119(a) to 

foreign application Q filed on March 3, 2020. 

The USPTO’s records indicate that O also 

contains a priority claim under 35 U.S.C. 

119(a) to foreign application Q. In this 

situation, Q’s filing date is not the EBD, 

because § 1.17(w) does not encompass 

priority claims to foreign applications under 

35 U.S.C. 119. Instead, D’s EBD is February 

2, 2021, which is less than six years earlier 

than D’s actual filing date of July 1, 2026. In 

this example, no fee would be due under 

§ 1.17(w). 

Example 5: National stage of an 

international application claiming priority to 

a foreign application under 35 U.S.C. 119(a) 

and 365(b). Application E is an international 

application filed under the Patent 

Cooperation Treaty (PCT) on July 1, 2026. 

The PCT Request form present upon E’s filing 

contains a priority claim under 35 U.S.C. 

119(a) and 365(b) to foreign application R 

filed on July 7, 2025. When the national stage 

of E is commenced in the United States 

under 35 U.S.C. 371, the USPTO will 

determine the EBD of the national stage 

application to evaluate whether any 

continuing application fees are due. In this 

situation, R’s filing date is not the EBD, 

because § 1.17(w) does not encompass 

priority claims to foreign applications. 

Instead, E’s EBD is July 1, 2026, which is the 

same as its actual filing date. In this example, 

no fee would be due under § 1.17(w). 

Example 6: National stage of an 

international application claiming benefit of 

a nonprovisional application under 35 U.S.C. 

120 and 365(c). Application F is an 

international application designating the 

United States that is filed under the PCT on 

July 1, 2026. The PCT request form present 

upon F’s filing contains a benefit claim under 

35 U.S.C. 120 and 365(c) to nonprovisional 

application N filed on March 2, 2020. When 

the national stage of F is commenced in the 

United States under 35 U.S.C. 371, the 

USPTO will determine the EBD of the 

national stage application to evaluate 

whether any continuing application fees are 

due. In this situation, N’s filing date of March 

2, 2020, is the EBD, because § 1.17(w) 

encompasses benefit claims under 35 U.S.C. 

120 and 365(c). Thus, F’s EBD is March 2, 

2020, which is more than six years, and no 

more than nine years, earlier than F’s actual 

filing date of July 1, 2026. In this example, 

the § 1.17(w)(1) fee of $2,700 is due when F 

commences the U.S. national stage under 35 

U.S.C. 371. 

Example 7: Bypass continuation of an 

international application claiming benefit of 

a nonprovisional application under 35 U.S.C. 

120 and 365(c). Application G is a 

nonprovisional application filed on 

December 28, 2028. The ADS present upon 

G’s filing contains benefit claims under 35 

U.S.C. 120 and 365(c) to international 

application F filed on July 1, 2026, and 

nonprovisional application N filed on March 

2, 2020. As noted in Example 6, supra, F also 

contains a benefit claim under 35 U.S.C. 120 

and 365(c) to N. In this situation, N’s filing 

date of March 2, 2020, is the EBD because 

§ 1.17(w) encompasses benefit claims under 

35 U.S.C. 120 and 365(c). Thus, G’s EBD is 

March 2, 2020, which is more than six but 

not more than nine years earlier than G’s 

actual filing date of December 28, 2028. In 

this example, the § 1.17(w)(1) fee of $2,700 is 

due upon G’s filing. 

Example 8: International design 

application claiming benefit of a 

nonprovisional application under 35 U.S.C. 

120. Application H is an international design 

application designating the United States that 

is filed under the Hague Agreement 

Concerning the International Registration of 

Industrial Designs, July 2, 1999 (‘‘Hague 

Agreement’’), on July 1, 2026. The DM/1 form 

titled ‘‘Application for International 

Registration’’ present upon H’s filing does 

not contain any priority or benefit claims. 

Thus, at the time of H’s filing, H’s EBD is the 

same as its actual filing date, and no fee 

would be due under § 1.17(w). Shortly after 

the international registration is published by 

the International Bureau and a U.S. 

application number (35/series) is established, 

the applicant files a corrected ADS 

containing a benefit claim under 35 U.S.C. 

120 to nonprovisional application N filed on 

March 2, 2020. Because this newly added 

benefit claim causes H’s EBD to become 

March 2, 2020, which is more than six but 

not more than nine years earlier than H’s 

actual filing date of July 1, 2026, the 

§ 1.17(w)(1) fee of $2,700 is due upon filing 

of the corrected ADS. 

Example 9: Adding timely benefit claims 

under 35 U.S.C. 120 after filing; single fee 

due. Application I is a nonprovisional 

application filed on July 3, 2028. The ADS 

present upon I’s filing does not contain any 

benefit claims, and thus no fee would be due 

under § 1.17(w) upon I’s filing. Two months 

after I’s filing, the applicant files a second 

ADS containing a benefit claim under 35 

U.S.C. 120 to nonprovisional application O 

filed on February 2, 2021. Because this newly 

added benefit claim causes I’s EBD to become 

February 2, 2021, which is more than six but 


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not more than nine years earlier than I’s 

actual filing date of July 3, 2028, the 

§ 1.17(w)(1) fee of $2,700 is due upon filing 

of the second ADS. The applicant pays the 

fee. One month later (three months after I’s 

filing), the applicant files a third ADS 

containing the previously added benefit 

claim to O and a new benefit claim under 35 

U.S.C. 120 to nonprovisional application N 

filed on March 2, 2020. This newly added 

benefit claim causes I’s EBD to become 

March 2, 2020, which is more than six but 

not more than nine years earlier than I’s 

actual filing date of July 3, 2028. However, 

because the applicant already paid the 

§ 1.17(w)(1) fee, no additional fee is due 

upon filing of the third ADS. 

Example 10: Adding timely benefit claims 

under 35 U.S.C. 120 after filing; multiple fees 

due. Application J is a nonprovisional 

application filed on July 5, 2029. The ADS 

present upon J’s filing contains a benefit 

claim under 35 U.S.C. 120 to nonprovisional 

application O filed on February 2, 2021, 

which is the only benefit claim in the 

application. J’s EBD is February 2, 2021, 

which is more than six but not more than 

nine years, earlier than J’s actual filing date 

of July 5, 2029. In this example, the 

§ 1.17(w)(1) fee of $2,700 is due upon J’s 

filing. The applicant pays the fee. Two 

months after I’s filing, the applicant files a 

second ADS containing the previously added 

benefit claim to O and a new benefit claim 

under 35 U.S.C. 120 to nonprovisional 

application N filed on March 2, 2020. This 

newly added benefit claim causes J’s EBD to 

become March 2, 2020, which is more than 

nine years earlier than I’s actual filing date 

of July 5, 2029, and thus prompts the fee in 

§ 1.17(w)(2). Because the fee in § 1.17(w)(1) 

was previously paid, the previous payment is 

subtracted from the amount now due under 

§ 1.17(w)(2). Accordingly, the amount due 

upon filing of the second ADS is $1,300 (the 

current fee amount of $4,000 set forth in 

§ 1.17(w)(2) less the $2,700 previously paid 

under § 1.17(w)(1)). 

Example 11: Adding delayed benefit claim 

under 35 U.S.C. 120. Application K is a 

nonprovisional application filed on July 5, 

2029. The ADS present upon K’s filing does 

not contain any benefit claims. Eighteen 

months after K’s filing, the applicant files a 

second ADS containing a benefit claim under 

35 U.S.C. 120 to nonprovisional application 

N filed on March 2, 2020. Because this newly 

added benefit claim causes K’s EBD to 

become March 2, 2020, which is more than 

nine years earlier than K’s actual filing date 

of July 5, 2029, the § 1.17(w)(2) fee of $4,000 

is due upon filing of the second ADS. In 

addition, because this benefit claim is 

delayed (not submitted within the required 

time period in § 1.78(d)), a petition for 

acceptance of an unintentionally delayed 

benefit claim under § 1.78(e) and the petition 

fee under § 1.17(m) are also required. 

Example 12: Adding timely benefit claim 

under 35 U.S.C. 120 in an application that 

predates the effective date of the final rule; 

§ 1.17(w)(1) fee due. Application L is a 

nonprovisional application filed on January 

2, 2025, which is prior to the effective date 

of this final rule. The ADS present upon L’s 

filing contains a benefit claim under 35 

U.S.C. 120 to nonprovisional application S 

filed on February 5, 2018, which is the only 

benefit claim in the application. L’s EBD is 

February 5, 2018, which is more than six but 

not more than nine years earlier than L’s 

actual filing date of January 2, 2025. Because 

L was filed prior to the effective date of this 

final rule, no fee under § 1.17(w)(1) was due 

upon L’s filing or upon the effective date of 

the final rule. Two months after L’s filing and 

after the effective date of this final rule, the 

applicant files a second ADS containing a 

benefit claim under 35 U.S.C. 120 to 

nonprovisional application O filed on 

February 2, 2021. While the newly added 

benefit claim does not change L’s EBD, its 

presentation in an application having an EBD 

more than six but not more than nine years 

earlier than its actual filing date prompts the 

fee in § 1.17(w)(1). Accordingly, the 

§ 1.17(w)(1) fee of $2,700 is due upon filing 

of the second ADS. 

Example 13: Adding timely benefit claim 

under 35 U.S.C. 120 in an application that 

predates the effective date of the final rule; 

§ 1.17(w)(2) fee due. Application M is a 

nonprovisional application filed on January 

2, 2025, which is prior to the effective date 

of this final rule. The ADS present upon M’s 

filing contains a benefit claim under 35 

U.S.C. 120 to nonprovisional application S 

filed on February 5, 2018, which is the only 

benefit claim in the application. M’s EBD is 

February 5, 2018, which is more than six but 

not more than nine years earlier than M’s 

actual filing date of January 2, 2025. Because 

M was filed prior to the effective date of this 

final rule, no fee under § 1.17(w)(1) was due 

upon M’s filing or upon the effective date of 

the final rule. Two months after M’s filing 

and after the effective date of this final rule, 

the applicant files a second ADS containing 

a benefit claim under 35 U.S.C. 120 to 

nonprovisional application T filed on March 

6, 2015. This newly added benefit claim 

causes M’s EBD to become March 6, 2015, 

which is more than nine years earlier than 

M’s actual filing date of January 2, 2025, and 

thus prompts the fee in § 1.17(w)(2). 

Accordingly, the § 1.17(w)(2) fee of $4,000 is 

due upon filing of the second ADS. 

The USPTO does not believe these 

new fees will disproportionately impact 

small or micro entities. Based on FY 

2022 data, of the applications that had 

an EDB more than six years before the 

actual filing date, about 70% were 

undiscounted, about 29% received a 

small entity discount, and about 1% 

received a micro entity discount. The 

USPTO also anticipates that these fees 

will be relatively technology neutral. 

Technology Center (TC) 3700 receives a 

much higher proportion of late-filed 

continuing applications than other 

areas, but this TC covers diverse subject 

matter and many technologies, 

including mechanical engineering, 

manufacturing, gaming, and medical 

devices and processes. 

3. Design Application Fees 

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BILLING CODE 3510–16–C 

The patent fee structure is designed to 

encourage innovation by maintaining 

low barriers to entry into the patent 

system. The USPTO accomplishes this 

goal by keeping initial filing fees for 

utility, plant, and design applications 

below the agency’s costs for 

preexamination, search, and 

examination, and by reducing most 

patent fees by 60% for small entities 

and by 80% for micro entities. See Part 

II: Background, supra. The USPTO 

recovers the remaining costs of 

performing the work from other fees, 

particularly issue fees and maintenance 

fee payments made after issuance of a 

utility patent. See e.g., the FY 2023 

Agency Financial Report at 63–64, 

available on the USPTO website at 

https://www.uspto.gov/AnnualReport. 

Although the USPTO is not permitted to 

establish maintenance fees for design or 

plant patents (see 35 U.S.C. 41(b)(3)), 

the maintenance fees it collects from 

utility patentees represented 54.9% of 

patent revenue in FY 2023. This 

revenue is vital to providing the 

necessary aggregate revenue to recover 

the aggregate costs of patent operations. 

Currently, the undiscounted design 

fees ($1,760 total for filing, search, 

examination, and issue fees) are set well 

below the cost of their associated 

services for both new design 

applications ($2,252 cost in FY 2023) 

and continued prosecution applications 

(CPAs) ($2,947 cost in FY 2023). The 

discounted design fees are significantly 

lower ($704 total for a small entity, and 

$352 total for a micro entity), even 

though the costs are the same. More 

than half of design applicants pay 

discounted fees; for example, of the 

design applications filed in FY 2023, 

26% paid the micro entity fee amount, 

37% paid the small entity fee amount, 

and only 37% paid the undiscounted 

fee amount. 

As a result of design fees being set 

below cost and the heavy use of entity 

fee discounts by design applicants, the 

USPTO’s collections from design fees 

are significantly below design costs. In 

FY 2023, the USPTO’s collections from 

design fees averaged only $1,013 per 

application. This resulted in a shortfall 

of $1,239 per design application, which 

represented 55% of the cost. In other 

words, design applicants, on an 

aggregate basis, paid for only 45% of 

design costs. Because USPTO operations 

are financed solely by user fees, the 

agency must make up the shortfall in 

the design area through fees set in other 

patent areas. While the USPTO has 


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raised design fees twice in the last 10 

years, those increases were not large 

enough to eliminate the shortfall over 

the long term. Thus, design costs 

continue to be subsidized by other fees, 

primarily utility patent maintenance 

fees. 

This subsidy has grown in recent 

years, as shown in figure 3. The graph 

depicts average fee collections per 

design application (average collections) 

in dark gray, and the average shortfall or 

subsidy per design application (average 

subsidy) in light gray. The average 

subsidy per design application in FY 

2022 was $1,108 and in FY 2023 was 

$1,239. Table 7 below figure 3 provides 

the actual dollar amounts for each data 

point (unit cost, average collections, and 

average subsidy) shown in figure 3 and 

also includes the subsidy as a 

percentage of unit cost for each fiscal 

year. 


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Historically, this difference between 

design fees and design costs did not 

result in a significant subsidy because 

the annual volume of design 

applications was much lower than the 

annual volume of issued utility patents. 

Since 2014, however, the number of 

design applications has surged 50% 

(from 36,254 in FY 2014 to 53,665 in FY 

2023), while the number of issued 

utility patents (and thus, the volume of 

potential future maintenance fees) has 

increased only 2% (from 303,930 in FY 

2014 to 310,245 in FY 2023). See e.g., 

FY 2023 Workload Table 1, available on 

the USPTO website at https://

www.uspto.gov/AnnualReport. 

Furthermore, most of the growth in 

design application filings is attributable 

to applications in which discounted fees 

are paid. From FY 2014 to FY 2023, the 

number of undiscounted design 

applications (including CPAs) filed 

increased 12%, but the number of small 

entity applications increased 31%, and 

the number of micro entity applications 

increased 306%. As a result, the entity 

spread for design applications changed 

dramatically. For example, in FY 2014, 

the entity spread for design applications 

was 50% undiscounted, 40% small 

entity, and 10% micro entity; during FY 

2023, the entity spread for design 

applications was 37% undiscounted, 

37% small entity, and 26% micro entity. 

In contrast, the entity spread in utility 

application filings has remained the 

same from FY 2014 to FY 2023, at about 

72% undiscounted, 24% small entity, 

and 4% micro entity. 

Moreover, because design fee payors 

do not bear the full costs of design 

services, the current imbalance between 

fees and costs in the design patent area 

could lead to overuse of discounted 

services. See e.g., ‘‘Federal User Fees: A 

Design Guide,’’ Report No. GAO–08– 

386SP (May 2008), available at https:// 

www.gao.gov/products/gao-08-386sp, 

and the ‘‘Patent and Trademark Office: 

New User Fee Design Presents 

Opportunities to Build on Transparency 

and Communication Success,’’ Report 

No. GAO–12–514R (April 2012), 

available at https://www.gao.gov/ 

products/gao-12-514r. 

The USPTO is increasing the fees for 

design patent applications to account 

for inflationary cost increases and 

recover a larger portion of design costs 

from design applicants. The design fee 

increases will affect national design 

application filings including CPAs, and 

international design application filings 

that designate the United States under 

the Geneva Act of the Hague Agreement. 

As shown in the fee table above, the 

combined total of filing fees in § 1.16(b), 

search fees in § 1.16(l), examination fees 

in § 1.16(p), and issue fees in 

§ 1.18(b)(1) for a design application or 

CPA that proceeds to issuance is 

increasing from $1,760 to $2,600 for 

undiscounted applications, from $704 to 

$1,040 for applications receiving a small 

entity discount, and from $352 to $520 

for applications receiving a micro entity 

discount. The reissue fees under 

§ 1.16(e), 16(n), and 16(r) are part of the 

across-the-board adjustment and not 

included in this targeted adjustment. 

Note that under the Hague Agreement 

and its implementing regulations in the 

United States, including § 1.1031, the 

required fees (known as designation 

fees) for international design application 

filings that designate the United States 

are set by reference to the national fees. 

Thus, the first part of the designation fee 

corresponds to the sum of the filing fee, 

search fee, and examination fee, and the 

second part of the designation fee 

corresponds to the issue fee. See MPEP 

2910 for more information about 

international design application fees. 

The transmittal fee for international 

design applications filed in the USPTO 

as an office of indirect filing under 

§ 1.1031(a) is part of the across-theboard adjustment and not included in 

this targeted adjustment. 

The increased design fees for an 

undiscounted applicant ($2,600 in 

combined filing, search, examination, 

and issue fees) are now in between the 

cost of new design applications and 

CPA design applications, while the fees 

for discounted entities ($1,040 for a 

small entity and $520 for a micro entity) 

remain far below cost. Despite these 

increases, the adjusted fees will not 

achieve full recovery of design costs. On 

an individual basis, the adjusted fees, 

including the issue fee, will recover the 

cost of examining and issuing a design 

application if the applicant pays the 

undiscounted rate and does not file a 

CPA. Because most design applications 

qualify for discounted fees, design fee 

collections will not fully recover design 

costs on an aggregate basis. For 

example, if the application filing 

volume, entity spread, and cost remain 

the same as in FY 2023, the increased 

fees would result in design fee 

collections averaging $1,462 per 

application, thus reducing the shortfall 

to about $790 per application, which is 

about 35% of the cost. The final rule 

thus improves cost recovery from design 

applicants, who will now on an 

aggregate basis pay for about 65% of 

design costs as compared to the 45% 

they paid in FY 2023. 

These design fees maintain a low 

barrier to entry into the patent system 

while increasing revenue to recover 

more design costs from design 

applicants. The USPTO has 

accomplished these goals by balancing 

relatively low front-end fees against the 

higher design issue fee and the reduced, 

but still large, subsidy from utility 

maintenance fees. While front-end fees 

are set below cost for all entities, both 

the design issue fee and utility 

maintenance fees are set above their 

unit cost for undiscounted entities. For 

example, the design issue cost is $539, 

and the design issue fee is $1,300 for an 

undiscounted entity, $520 for a small 

entity, and $260 for a micro entity. As 

of June 2024, the undiscounted issue fee 

of $1,300 was 6% lower than the 

inflation-adjusted 2013 issue fee would 

be. As a result of this balancing, the 

USPTO has managed to keep the frontend fees only $5 to $10 higher than they 

were set in 2020 for the majority of 

design applicants. When the issue fee is 

included, the total fees paid by 

discounted entities are still 13% less 

than inflation-adjusted 2013 fees would 

be. See CPI Inflation Calculator, U.S. 

Bureau of Labor Statistics, https://

www.bls.gov/data/inflation_

calculator.htm (comparing March 2013 

to June 2024 to calculate buying power). 

The USPTO believes these fee 

adjustments appropriately balance 

encouraging innovation and recovering 

costs. For example, based on the FY 

2023 unit cost and assuming that filing 

volume and entity spread remain stable, 

recovering the full cost of design 

services from design applicants would 

require total fees of about $4,000 for 

undiscounted applications. Abruptly 

raising fees to these levels could 

discourage innovation, so the USPTO is 

implementing a more moderate increase 

to $2,600 for undiscounted applications. 

After considering all relevant factors, 

the agency believes the adjusted design 

fees strike a balance that encourages 

innovation while bringing in increased 

revenue to recover more design costs. 

The USPTO is conscious that fee 

increases affect resource-constrained 

applicants. The agency will continue to 

offer the 60% discount for small entities 

and the 80% discount for micro entities, 

which reduces the impact of the fee 

increases on these entities. For example, 

when these discounts are taken into 

account, the total fees paid by 

discounted entities through issuance of 

a design application represent less than 

half of the USPTO’s costs (small entities 

pay 46% of new design application 

costs and 35% of CPA costs, and micro 

entities pay 23% of new design 

application costs and 18% of CPA 

costs). 

4. Excess Claims Fees 

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BILLING CODE 3510–16–C 

The USPTO charges a fee for filing, or 

later presenting at any other time, each 

independent claim in excess of three 

(referred to as an excess independent 

claim), as well as each claim (whether 

dependent or independent) in excess of 

20 (referred to as an excess total claim). 

These thresholds for excess 

independent claims and excess total 

claims (collectively, ‘‘excess claims’’) 

are set in 35 U.S.C. 41(a)(2). 

In this final rule, the USPTO is 

increasing the fee for each excess 

independent claim in an application 

(§ 1.16(h)), reissue application 

(§ 1.16(h)), reexamination proceeding 

(§ 1.20(c)(3)), or national stage 

application (§ 1.492(d)) to $600 for 

undiscounted entities. The USPTO is 

also increasing the fee for each excess 

total claim in an application (§ 1.16(i)), 

a reissue application (§ 1.16(i)), 

reexamination proceeding (§ 1.20(c)(4)), 

or national stage application (§ 1.492(e)) 

to $200 for undiscounted entities. The 

§ 1.16(j) and § 1.492(f) multiple 

dependent claim fees are part of the 

across-the-board adjustment and not 

included in this targeted adjustment. 

These changes will provide the 

agency with more revenue to help 

recover the additional search and 

examination costs associated with 

excess claims, as well as prosecution 

costs not covered by front-end fees. The 

USPTO notes that excess claiming can 

be a significant burden to the patent 

system and the agency. The number of 

claims impacts the complexity of 

examination and increases the demands 

placed on the examiner. For example, if 

each independent claim in an 

application requires a completely 

separate prior art patentability 

determination and an application 

contains six independent claims, the 

examiner must conduct six completely 

separate prior art patentability 


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determinations. Excess dependent 

claims also represent additional work, 

because a dependent claim may be 

allowable over the prior art even if the 

claim from which it depends is not. 

Dependent claims also require separate 

patentability determinations for nonprior-art issues such as enablement, 

subject matter eligibility, utility, and 

written description. Thus, applicants 

who include excess claims are using the 

patent system more extensively than 

those who do not. 

Moreover, examination efficiency is 

promoted when there is a high 

frequency of applications with 20 

claims or fewer. Thus, these fee changes 

will enhance prosecution, because the 

USPTO believes that applicants 

motivated by costs will be incentivized 

by the fee adjustments to not file excess 

claims. The agency has increased excess 

claims fees several times during the last 

20 years, which has been very effective 

at reducing excess claims from their 

peak in the early 2000s. For instance, in 

FY 2023, 83% of applications did not 

contain any excess claims, and 17% 

contained excess total claims, excess 

independent claims, or both (10% 

contained excess total claims only, 3.1% 

contained excess independent claims 

only, and 3.5% contained both excess 

total claims and excess independent 

claims). These percentages are in line 

with historic values over the last 

decade. 

The excess total claims fees are also 

designed to ensure that most applicants 

presenting excess claims will be able to 

do so for less than the cost of filing a 

second application. The front-end 

application fees (including the new 

continuing application fees discussed 

earlier) and excess claims fees are 

naturally linked and likely to have 

counterbalancing effects. For example, 

an increase in new or continuing 

applications could result from raising 

only excess claims fees, and an increase 

in excess claims could result from 

raising only the front-end application 

fees (even in specific, lesser-occurring 

situations). The increases in excess 

claims fees implemented in this final 

rule are intended to avert the latter 

scenario. Without these adjustments, the 

agency expects that excess claims 

numbers would increase in response to 

increased front-end fees, including the 

fees for certain continuing applications 

discussed previously. 

In FY 2023, 86% of applications 

contained no excess total claims and 

therefore will not be affected by this fee 

adjustment, 11% paid excess claims fees 

but contained 10 or fewer excess claims, 

and only 3% contained more than 10 

excess claims. For the 11% of 

applications containing 10 or fewer 

excess claims, it would remain either 

the same cost or be less expensive to 

pay the excess total claims fees as 

opposed to filing a second application. 

As an example, for an undiscounted 

entity, 10 excess total claims at $200 

each would equal $2,000 in excess total 

claims fees, which is the same as the 

combined filing, search and 

examination fees for filing an 

application as adjusted by this final 

rule. Moreover, for applications 

containing from one to 10 excess claims, 

the average number of excess claims 

was 5, so on average, paying excess total 

claims fees would be much less 

expensive than a second application. As 

an example, for an undiscounted entity, 

5 excess total claims at $200 each would 

equal $1,000 in excess total claims fees. 

For the 3% of applications containing 

more than 10 excess total claims, the 

average was 34 excess claims. Thus, for 

this group of applications, it would be 

more expensive to pay the excess total 

claims fees as opposed to filing a second 

application, but this increased expense 

reflects that these applications are, on 

average, presenting more than the 

number of claims that would be covered 

by the fees for filing a second 

application. Notably, about one-third of 

these applications (10% of all 

applications containing excess total 

claims, or 1% of all applications) 

contained an average of 59 excess 

claims, which is more than would be 

covered by the fees for filing two 

additional applications. 

5. Extension of Time for Provisional 

Application Fees 


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The USPTO is implementing a 

standalone extension of time (EOT) fee 

structure for provisional applications in 

which fees will be decreased from 

current amounts by an average of 81%. 

Under EOT practice, if an applicant is 


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required to reply within a nonstatutory 

or shortened statutory time period, the 

applicant may normally petition to 

extend the time period for reply with 

the requisite fee. The time extension 

may be up to the earlier of the 

expiration of any maximum period set 

by statute or five months after the time 

period set for reply if a petition for an 

EOT under § 1.136(a), including the 

EOT fee set in § 1.17(a), is filed. 

Currently, the EOT fees specified in 

§ 1.17(a) apply equally to both 

provisional and nonprovisional 

applications. The USPTO is 

implementing an average 81% EOT fee 

decrease in provisional applications 

under a new paragraph (u) of § 1.17 and 

is additionally amending § 1.136(a) to 

refer to EOT fees under both § 1.17(a) 

and new § 1.17(u). For patent 

applications other than provisional 

applications, the EOT fees retained 

under § 1.17(a) will be increased in 

accordance with the across-the-board 

proposal. 

With fees reduced by 81% on average, 

the separate EOT fee structure for 

provisional applications will benefit 

filers in all entity status categories. The 

agency envisions that micro entity 

provisional application filers will 

benefit most. As explained in the 

Director’s April 20, 2023, letter to PPAC: 

The USPTO’s fee review concluded that 

applicants who have certified micro entity 

status in provisional applications are more 

than twice as likely to request EOT as 

compared to other applicants. Thus, we are 

proposing reduced EOT fees for provisional 

applications by an average of 81% to reduce 

financial and entry barriers and further foster 

inclusive innovation. 

Some micro entity applicants need 

time extensions to accommodate 

attempts to meet additional formality 

requirements associated with 

establishing micro entity status. Another 

consideration favoring this change is 

that provisional applications are not 

examined; therefore, there is less 

urgency to expedite processing. 

6. Information Disclosure Statement 

Size Fees 

Sections 1.97 and 1.555 provide 

applicants and patent owners the 

opportunity to submit an information 

disclosure statement (IDS) containing 

items of information for consideration 

by the examiner. To be considered in a 


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patent application, the IDS must meet 

the timing requirements of § 1.97 and 

the content requirements of § 1.98. In a 

reexamination proceeding, the IDS must 

meet the content requirements of § 1.98. 

There are no specific regulatory limits to 

the number of items of information that 

may be included in an IDS. Most 

applications contain relatively few 

items of information provided by 

applicants for consideration. 

Approximately 87% of applications 

contain 50 or fewer applicant-provided 

items of information, and approximately 

77% contain fewer than 25. 

The USPTO receives large IDS 

submissions that cause the cumulative 

number of applicant-provided items of 

information in an application to exceed 

50 in a small percentage of applications. 

Based on the agency’s most recent data, 

in approximately 13% of applications 

applicants provide over 50 total items of 

information. About 5% of applications 

contain 51 to 100 applicant-provided 

items of information, about 4% of 

applications contain 101 to 200 

applicant-provided items of 

information, and only 4% of 

applications contain more than 200 

applicant-provided items of 

information. In an even smaller subset 

of applications, the number of 

applicant-provided items can be quite 

large, sometimes in the thousands or 

even tens of thousands. 

In many instances, these large IDS 

submissions contain clearly irrelevant, 

marginally relevant, or cumulative 

information. It is onerous for examiners 

and hinders the USPTO’s statutory 

obligation to timely examine 

applications under 35 U.S.C. 154 to 

consider large numbers of clearly 

irrelevant, marginally relevant, or 

cumulative information. Additionally, 

large IDS submissions are costly for the 

agency to consider. Therefore, the 

USPTO suggests, as a best practice, that 

applicants and patent owners avoid 

filing large IDS submissions by 

eliminating clearly irrelevant, 

marginally relevant, or cumulative 

information. See MPEP 2004, item 13. If 

applicants or patent owners file a large 

IDS, the USPTO encourages them to 

‘‘highlight those documents which have 

been specifically brought to applicant’s 

attention and/or are known to be of 

most significance.’’ MPEP 2004, item 13. 

In 2006, the USPTO attempted to 

address large IDS submissions by 

proposing new requirements, including 

that IDSs with more than twenty 

citations be accompanied by an 

explanation of relevance. See ‘‘Changes 

To Information Disclosure Statement 

Requirements and Other Related 

Matters,’’ 71 FR 38808 (July 10, 2006). 

The proposal was not adopted; instead, 

to provide some relief for examiners 

burdened with large IDS submissions, 

the agency began providing examiners 

additional time to consider large IDS 

submissions in applications. 

On average, the USPTO provides 

examiners approximately 80,000 

additional hours each year to consider 

large IDS submissions in applications, 

costing the agency $10 million annually. 

As there is currently no fee for large IDS 

submissions, this cost is subsidized 

generally by patent fees, primarily 

maintenance fees collected for patents 

that resulted from applications that did 

not contain large IDS submissions. 

Accordingly, to have applicants and 

patent owners filing large IDS 

submissions cover more of their 

associated costs, the USPTO is 

amending § 1.17 by adding new 

paragraph (v) to implement a new IDS 

size fee based on the cumulative 

number of items of information 

provided by an applicant or patent 

owner during the pendency of the 

application or reexamination 

proceeding. ‘‘Provided’’ in this context 

refers to items cited on an IDS under 

§ 1.98(a)(1) by an applicant or patent 

owner, whether or not an actual copy of 

the cited item is submitted by the 

applicant or patent owner to the agency. 

The IDS size fee sets forth: a first 

amount ($200) in § 1.17(v)(1) for a 

cumulative number of applicantprovided or patent owner-provided 

items of information in excess of 50; a 

second amount ($500) in § 1.17(v)(2) for 

a cumulative number of applicantprovided or patent-owner-provided 

items of information in excess of 100 

but not exceeding 200, less any amount 

previously paid under § 1.17(v)(1); and 

a third amount ($800) in § 1.17(v)(3) for 

a cumulative number of applicantprovided or patent owner-provided 

items of information in excess of 200, 

less any amounts previously paid under 

§ 1.17(v)(1) and/or (v)(2). 

Generally, each item provided (listed 

under § 1.98(a)(1) on an IDS filed under 

§ 1.97) by an applicant or owner, 

including each instance of a particular 

item, will count toward the cumulative 

number of items of information. For 

example, if the applicant lists a 

particular item (e.g., a journal article 

authored by Marie Curie) twice on the 

same IDS, each listing will count. 

Similarly, if the applicant lists the same 

item in multiple IDSs in the same 

application, each of those listings will 

count. However, if a particular item 

provided by an applicant or patent 

owner on an IDS was not considered 

because the item was non-compliant 

and that particular item is provided on 

an IDS a second time in the same 

application or patent, it will not be 

counted again. Applicants are reminded 

that when a U.S. application is listed on 

an IDS, the examiner will only consider 

the specification (including the claims) 

and drawings of the application. If the 

applicant seeks consideration of 

documents in the prosecution history of 

the application such as particular Office 

actions, they must list such documents 

separately. See MPEP 609.04(a)(I). 

The cumulative count is determined 

for each application or patent 

separately. That is, the count from an 

application does not carry over to any 

continuing applications, CPAs, reissue 

applications, or any post-issuance 

proceedings such as supplemental 

examinations or reexamination 

proceedings. Instead, continuing, CPA, 

and reissue applications and postissuance proceedings will start with a 

count of zero. Note, however, that a 

request for continued examination 

(RCE) is not the filing of a new 

application, and thus the count will not 

reset when an RCE is filed. 

Under current IDS practice, an 

examiner will consider items of 

information that were considered in a 

parent application when examining a 

child application (e.g., a continuation, 

continuation-in-part, or divisional 

application) without any action required 

on the applicant’s part. See MPEP 

609.02 for information about this 

practice. Examiners will continue to 

follow current IDS practice with respect 

to considering items of information that 

were cited in parent applications. To be 

clear, an item of information that an 

applicant cited in a parent application 

will not be counted in a child 

application for purpose of the IDS size 

fees unless it is resubmitted, i.e., 

provided by the applicant on an IDS in 

the child application. Thus, applicants 

who wish to avoid paying the IDS size 

fees in a child application for items of 

information considered in a parent 

application may do so by not 

resubmitting the items. An item of 

information must be resubmitted in the 

continuing application if the applicant 

desires the item of information to be 

printed on the patent. See MPEP 609.02, 

subsection II.A.2. 

Additionally, the USPTO is amending 

§ 1.98(a) to include a new content 

requirement for an IDS that will 

facilitate implementation of the IDS size 

fee. Specifically, the USPTO is requiring 

that an IDS contain a clear written 

assertion by the applicant and patent 

owner that the IDS is accompanied by 

the appropriate IDS size fee or that no 

IDS size fee is required. This assertion 

is necessary because it ensures the 


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record is clear as to which fee the 

applicant or patent owner believes may 

be due (or that no fee may be due) with 

the IDS so the examiner can promptly 

ascertain whether the IDS is compliant. 

There is no specific language required 

for the written assertion, but it should 

be readily identifiable on the IDS and 

clearly convey the applicable IDS size 

fee by specifying the particular 

paragraph in § 1.17(v) that applies (e.g., 

‘‘the fee due under 1.17(v)(2)’’), if any. 

The following examples illustrate 

some common situations anticipated to 

arise in connection with payment of the 

new fees under § 1.17(v): 

Example 1: Single IDS submission with 

cumulative count less than fee threshold. If 

an applicant submits a single IDS during 

prosecution with 30 items of information, no 

IDS size fee would be due. At the time of 

submitting the IDS, the applicant certifies 

that no IDS size fee is required. 

Example 2: Single IDS submission with 

cumulative count exceeding fee threshold. If 

an applicant submits a single IDS during 

prosecution with 101 items of information, 

the $500 fee under § 1.17(v)(2) for exceeding 

100 items of information, but not exceeding 

200, is due. At the time of submitting the 

IDS, the applicant must certify that the 

§ 1.17(v)(2) fee is due and pay the fee. 

Example 3: Re-submission of item 

previously refused consideration. If an 

applicant submits a first IDS with 49 items 

of information, no IDS size fee would be due. 

At the time of submitting the first IDS, the 

applicant certifies that no IDS size fee is 

required. When the examiner evaluates the 

first IDS, the examiner discovers that the 

copy of a particular item (a journal article 

authored by Marie Curie) provided by the 

applicant is blurry and illegible. Accordingly, 

the examiner does not consider the Curie 

article. Subsequently, in that same 

application, the applicant files a second IDS 

with two items of information, including the 

same Curie article previously listed and a 

newly cited item. Because the Curie article 

was previously before the examiner and 

refused consideration for being 

noncompliant, its resubmission in the second 

IDS is not counted again. Thus, the 

cumulative number of items of information 

in the application after submission of the 

second IDS is only 50 (the total of the 49 

items from the first IDS and the newly cited 

item from the second IDS), and no IDS size 

fee would be due. At the time of submitting 

the second IDS, the applicant certifies that no 

IDS size fee is required. 

Example 4: Multiple IDS submissions 

covered by the same fee. If an applicant files 

a first IDS with 61 items of information, the 

$200 fee under § 1.17(v)(1) for exceeding 50 

items of information, but not exceeding 100, 

is due. At the time of submitting the first IDS, 

the applicant certifies that the § 1.17(v)(1) fee 

is due and pays the fee. Subsequently, in that 

same application, if the applicant files a 

second IDS with 10 items of information, the 

cumulative number of items of information 

in the application would be 71. No additional 

fee would be due, because the cumulative 

number of items is still in the range covered 

by the § 1.17(v)(1) fee that was previously 

paid. While the applicant must still include 

a certification with the second IDS, the 

applicant may certify that no IDS size fee is 

required with submission of the second IDS. 

Example 5: Multiple IDS submissions 

requiring additional fees. If an applicant files 

a first IDS with 51 items of information, they 

would certify that the § 1.17(v)(1) fee for 

exceeding 50 items of information, but not 

exceeding 100, is due and pay the fee of 

$200. Subsequently, in that same application, 

if the applicant files a second IDS with 50 

items of information, the cumulative number 

of items of information in the application 

would be 101. The applicant would then 

certify that the § 1.17(v)(2) fee for exceeding 

100 items of information, but not exceeding 

200, is due, and pay $300 (the $500 fee under 

§ 1.17(v)(2) minus the $200 previously paid). 

Further, in that same application, if the 

applicant files a third IDS with 100 items of 

information, the cumulative number of items 

of information in the application would be 

201. The applicant would then certify that 

the § 1.17(v)(3) fee for exceeding 200 items of 

information is due and pay $300 (the $800 

fee under § 1.17(v)(3) minus the $500 

previously paid). Thus, in this example, the 

applicant would pay a combined IDS size fee 

of $800 for the three IDSs filed during the 

pendency of the application. 

With respect to the new content 

requirement under § 1.98(a), the agency 

envisions modifying USPTO Form PTO/ 

SB/08 to include the requisite written 

assertion stylized as a set of check boxes 

corresponding to each IDS size fee, 

along with an additional box indicating 

that no IDS size fee is due. Since the 

form must be signed in accordance with 

§ 1.33(b), certifications under §§ 1.4 and 

11.18 will apply. Applicants and patent 

owners are strongly advised to use the 

PTO/SB/08 form, but it will not be 

required. An authorization to charge 

fees to a deposit account is not a 

compliant written assertion under the 

new § 1.98(a) requirement, unless the 

authorization clearly identifies the 

particular IDS size fee that should be 

charged for submission of a particular 

IDS. For example, language such as ‘‘the 

Director is authorized to charge the 

§ 1.17(v)(2) fee for the IDS submitted on 

July 1, 2026 to deposit account XX– 

XXXXX’’ would be a compliant written 

assertion because reference to paragraph 

(v)(2) particularly identifies the IDS size 

fee due, but language such as ‘‘the 

Director is authorized to charge any 

applicable IDS size fee to deposit 

account XX–XXXXX’’ would not be a 

compliant written assertion because it 

fails to establish which IDS size fee is 

due. General authorizations to charge 

fees to a deposit account are not 

compliant written assertions under the 

new § 1.98(a) requirement. See 37 CFR 

1.25 and MPEP 509.01 for more 

information about deposit account 

authorization practice. 

It is the applicant’s and patent 

owner’s responsibility to track the 

cumulative number of items of 

information provided in the application 

and provide a written assertion of any 

applicable IDS size fee due. In 

accordance with § 1.97(i), an IDS filed 

in an application without the written 

assertion or the necessary IDS size fee 

will be placed in the file but not 

considered. The applicant may then file 

a new IDS accompanied by the written 

assertion or necessary IDS size fee, but 

the date the new IDS is filed will be the 

date of the IDS for purposes of 

determining compliance with § 1.97. 

See MPEP 609.05(a). An IDS filed in a 

reexamination proceeding without the 

written assertion or the necessary IDS 

size fee will be placed in the file and 

will remain of record, but the IDS will 

not be considered. 

Applicants are reminded that the duty 

of disclosure under §§ 1.56 and 1.555 

only requires the submission of 

information material to patentability. 

Material information is described in 

§§ 1.56(b) and 1.555(b) as information 

that is not cumulative to information 

already of record and (1) establishes, by 

itself or in combination with other 

information, a prima facie case of 

unpatentability of a claim; or (2) refutes 

or is inconsistent with a position the 

applicant takes in opposing an argument 

of unpatentability relied on by the 

USPTO or asserting an argument of 

patentability. The United States Court of 

Appeals for the Federal Circuit uses an 

even higher standard for materiality 

than the §§ 1.56(b) and 1.555(b) 

standards by requiring ‘‘but-for’’ 

materiality, such that the USPTO would 

not have allowed a claim had it been 

aware of the undisclosed information. 

Therasense, Inc. v. Becton, Dickinson & 

Co., 649 F.3d 1276, 1288, 99 USPQ2d 

1065, 1071 (Fed. Cir. 2011) (en banc). 

Neither the §§ 1.56(b) and 1.555(b) 

standards nor the Federal Circuit’s ‘‘butfor’’ standard require the submission of 

clearly irrelevant or marginally relevant 

information. 

By placing more of the cost for 

considering IDS submissions totaling 

over 50 items of information on the 

applicants who file such IDS 

submissions, less cost will be borne 

across the patent system. To the extent 

that the IDS size fees may encourage 

some applicants to filter out irrelevant 

or cumulative information prior to 

submission, the examiners of those 

applications will be able to focus on the 

more relevant information and perform 

a more efficient and effective 


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examination, thus benefiting the patent 

system as a whole. 

The USPTO does not believe the IDS 

size fee will have a large impact on 

patent applicants or owners. As stated 

previously, a majority of applicants do 

not provide large amounts of 

information for consideration. Based on 

current IDS filing volume, the vast 

majority (approximately 87%) of 

applications will not be affected by 

these fees because they contain 50 or 

fewer applicant-provided items of 

information. Only 13% of applications 

contain more than 50 applicantprovided items of information. About 

5% of applications contain 51 to 100 

applicant-provided items of information 

and would incur only the first fee in 

§ 1.17(v)(1), about 4% of applications 

contain 101 to 200 applicant-provided 

items of information and would incur 

the first and second fees in § 1.17(v)(1) 

and (v)(2), and only 4% of applications 

contain more than 200 applicantprovided items of information and 

would incur all three fees in § 1.17(v)(1), 

(v)(2), and (v)(3). Additionally, the fee 

should not disproportionately impact 

small and micro entities. During FY 

2022, small entities accounted for only 

25% of applications that would incur a 

fee, while micro entities made up less 

than 1%. When compared to all utility 

application filings that same year, only 

1 in 62 applications filed by micro 

entities and 1 in 7.5 applications filed 

by small entities would incur an IDS 

size fee. 

7. Patent Term Adjustment Fees 

The USPTO considered the public 

feedback on the proposed increase from 

$210 to $300 for filing an application for 

patent term adjustment under § 1.705(b) 

and decided not to proceed with this 

proposal. Instead, the fee for this service 

will be increased in accordance with the 

across-the-board adjustment applied to 

most patent fees. 

8. Patent Term Extension Fees 

The USPTO is increasing the fees for 

filing applications for patent term 

extensions (PTE) and applications for 

interim extensions under 35 U.S.C. 156 

and implementing a new fee for 

requesting a supplemental 

redetermination of the PTE in a pending 

PTE application. These changes adjust 

the fee rates for inflation, reflect the full 

cost of these services, and support the 

agency’s fee setting policy of aligning 

fees with the costs of providing the 

service. The fees for these services are 

set forth in § 1.20(j). 

The PTE service and fee were 

introduced in October 1984 as part of 

initial operating guidelines established 

after enactment of the PTE provisions of 

35 U.S.C. 156 in the Drug Price 

Competition and Patent Term 

Restoration Act of 1984 (Pub. L. 98–417, 

98 Stat. 1585 (1984)) (Hatch-Waxman 

Act). See Guidelines for Extension of 

Patent Term under 35 U.S.C. 156, 1047 

Off. Gaz. Pat. Office 16 (Oct. 9, 1984). 

Patent term extensions under 35 U.S.C. 

156 enable owners of patents claiming 

certain products subject to premarket 

regulatory review to restore to the terms 

of those patents some of the time lost 

while awaiting premarket approval for 

the products from a regulatory agency. 

The products eligible for PTE services 

under 35 U.S.C. 156 include human 

drug products, medical devices, animal 

drugs, and food or color additive 

products, all of which are regulated by 

the FDA, and veterinary biological 

products, which are regulated by the 

United States Department of Agriculture 

(USDA). See MPEP 2750 for more 

information regarding the legislative 

history and scope of the Hatch-Waxman 

Act with respect to PTE. 

In accordance with this law and its 

implementing regulations, the patent 

owner must file an application for PTE 

with the USPTO within a short time 

after the product receives permission for 

commercial marketing or use from the 

applicable regulatory agency (i.e., the 

FDA or the USDA). See MPEP 2754 et 

seq. Upon receipt, the USPTO reviews 

the application, applicant, patent, and 

claimed product or process and then 

works with the applicable regulatory 

agency to evaluate compliance with the 

statutory requirements for PTE under 35 

U.S.C. 156. While it is the USPTO’s 

responsibility to decide whether an 


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applicant has satisfied statutory 

requirements and whether the patent 

qualifies for PTE, the applicable 

regulatory agency possesses expertise 

and records regarding some statutory 

requirements and has certain direct 

responsibilities under 35 U.S.C. 156 for 

determining length of the regulatory 

review period. See MPEP 2756 for a 

more detailed explanation of how the 

USPTO works with these regulatory 

agencies to determine a patent’s 

eligibility for PTE under 35 U.S.C. 156. 

Once the USPTO has received the 

necessary information from the 

regulatory agency, it determines the 

applicable PTE (if any) and formulates 

a notice of final determination or 

determination of ineligibility, reviews 

any responses or reconsideration 

requests received from the patent 

owner, and prepares a final 

determination or certificate as 

appropriate. See MPEP 2755 through 

2759 for an explanation of this process. 

Because of the coordination and 

communication required between the 

USPTO and the appropriate regulatory 

agency and the complexity of the legal 

determinations involved, it often takes 

two or more years to reach a final 

determination or determination of 

ineligibility. The time required varies 

greatly depending on the individual 

circumstances of each application. 

When introduced in 1984, the fee for 

this service was set at $750 and has 

since increased to $1,180. See e.g., 

‘‘Guidelines for Extension of Patent 

Term Under 35 U.S.C. 156,’’ 1047 OG 16 

(Oct. 9, 1984), ‘‘Rules for Extension of 

Patent Term,’’ 52 FR 9386 (Mar. 24, 

1987), and FY 2020 Final Rule. If the 

original fee were adjusted for inflation 

as measured by the CPI, it would be 

$2,238 as of June 2024. Moreover, the 

complexity and cost of this service has 

increased over time due to the subject 

matter and legal expertise required to 

evaluate the statutory requirements. 

Thus, the USPTO proposed to raise the 

§ 1.20(j)(1) fee for this service from 

$1,180 to $6,700. 

While the proposed fee was greater 

than the reported unit cost in the NPRM 

($2,581 for FY 2022), the USPTO did 

not begin formally tracking the unit cost 

of this specific service until midway 

through FY 2021. Prior to FY 2018, the 

service volume was quite low at about 

42 applications each year. Since then, 

volume has averaged 100-plus 

applications each year. As previously 

noted, PTE services involve work that is 

performed over the course of multiple 

years, with individual applications 

varying widely in terms of their 

complexity and the length of time it 

requires to obtain the necessary 

information from the PTE applicant and 

the appropriate regulatory agency. The 

USPTO is exploring how it can improve 

its expense modeling for these services. 

For more information about how the 

USPTO determines fee unit expenses, 

see the document titled, ‘‘USPTO 

Setting and Adjusting Patent Fees 

During Fiscal Year 2025—Activity 

Based Information and Patent Fee Unit 

Expense Methodology,’’ available on the 

fee setting section of the USPTO website 

at https://www.uspto.gov/ 

FeeSettingAndAdjusting. 

The USPTO is also implementing a 

new service fee in § 1.20(j)(4) that 

applies to the approximately one-third 

of applications for PTE in which the 

user files a response that includes a 

terminal disclaimer after receiving the 

notice of final determination. The 

submission of terminal disclaimers at 

this late stage in the review process 

affects the patent term, requiring the 

USPTO to engage in a substantial 

amount of rework to recalculate the 

applicable PTE and make a 

supplemental redetermination of the 

appropriate extension in view of the 

disclaimer. These submissions became 

more common after the Federal Circuit’s 

decision in Gilead Sciences, Inc. v. 

Natco Pharma Ltd., 753 F.3d 1208 (Fed. 

Cir. 2014), which made it clear that the 

extended term of a patent can be 

affected by a terminal disclaimer filed 

against a later-issued but earlierexpiring reference patent. 

These late-stage disclaimer 

submissions are expected to become 

more common in the future because of 

In re Cellect, 81 F.4th 1216 (Fed. Cir. 

2023), in which the Federal Circuit 

explained that patent term adjustment 

and PTE are treated differently with 

respect to nonstatutory double patenting 

and terminal disclaimers. Currently, 

beneficiaries of this rework receive this 

additional service for free because the 

cost is subsidized by other users (e.g., by 

unrelated fee collections from other 

patent applicants and owners). In 

accordance with user fee design 

principles, the USPTO is implementing 

a new fee of $1,440 to cover the costs 

of this service and to be paid by users 

who benefit from it. Because the notice 

of final determination is mailed at a late 

stage of the review process, most PTE 

service users will have a window of 

several years during the review process 

to submit terminal disclaimers without 

incurring this additional fee. 

The USPTO is also increasing the 

§ 1.20(j)(2) and (j)(3) fees for filing 

applications for interim PTE under 

§ 1.790. This service and fees were 

introduced in 1994 in response to an 

amendment of the Hatch-Waxman Act 

that added 35 U.S.C. 156(d)(5). See 

MPEP 2750 and Guidelines for Interim 

Extension Under 35 U.S.C. 156(d)(5) of 

a Patent Term Prior To Regulatory 

Approval of a Product for Commercial 

Marketing or Use—Public Law 103–179 

(Dec. 3, 1993), 1159 Off. Gaz. Pat. 12 

(Feb. 1, 1994). Interim patent extension 

under 35 U.S.C. 156(d)(5) is available 

for a patent claiming a product that is 

undergoing the approval phase of 

regulatory review as defined in 35 

U.S.C. 156(g) if the patent is expected to 

expire before approval is granted. The 

application of an interim patent 

extension is very similar to an 

application for PTE with a similar 

evaluation process, except the USPTO is 

not required to seek the advice of the 

regulatory agency. See MPEP 2755.02 

for more information regarding this 

service. 

The interim extension service has a 

very low volume of about 20 or fewer 

applications each year, but it is costly 

and requires special handling due to the 

subject matter and legal expertise 

required to evaluate the statutory 

requirements. The USPTO is raising the 

§ 1.20(j)(2) fees from $440 to $1,320 for 

the initial (first) application for an 

interim extension of patent term and the 

§ 1.20(j)(3) fees from $230 to $680 for 

each subsequent application. This fee 

increase will help recover the agency’s 

costs of performing this service. Upon 

its introduction in 1994, the fees for this 

service were set at $400 for an initial 

application and $200 for subsequent 

applications, and they have increased 

by only $40 and $30, respectively, since. 

See FY 2020 Final Rule. 

No PTE-related fees are eligible for 

entity discounts in this fee setting 

because section 10(b) of the AIA, as 

amended by the UAIA, only authorizes 

discounting six categories of fees (i.e., 

fees for filing, searching, examining, 

issuing, appealing, and maintaining 

patent applications and patents). PTErelated fees do not fall into any of the 

section 10 categories. Even without 

discounts, the USPTO expects that PTE 

service users will be financially able to 

pay for the PTE services they are 

requesting because the service is limited 

to certain patents on human drug 

products, medical devices, animal 

drugs, food or color additive products, 

and veterinary biological products. 

Over the last 40 years, 81% of PTE 

applications concerned human drug 

products, 15% concerned medical 

devices, 3% concerned animal drugs, 

and about 1% concerned food or color 

additive products or veterinary 

biological products. See, e.g., the 

USPTO website at https://

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term-extension/patent-terms-extendedunder-35-usc-156, which provides a list 

of patents that have been extended via 

this service. It costs companies millions 

or billions of dollars to research, 

develop, test, and obtain regulatory 

approval for the products and medical 

devices that are the subjects of PTE 

applications. Thus, when compared to 

either FDA user fees or the research and 

development costs required to develop 

a new drug and obtain marketing 

approval, the fees to obtain a PTE for the 

patent covering such a new drug are 

quite small.1

9. Request for Continued Examination 

Fees 

For utility and plant applications 

where prosecution is closed (e.g., a final 

rejection has been mailed), the applicant 

may file a request for continued 

examination (RCE) and pay a specified 

fee within the requisite time period. 

Applicants typically file an RCE when 

they choose to continue prosecution 

before an examiner rather than appeal a 

rejection or abandon the application. 

Prior to application abandonment, 

applicants may also file a continuing 

application to extend prosecution rather 

than file an RCE. 


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Since FY 2013, the USPTO has split 

RCE fees into two parts: (1) a fee for a 

first RCE and (2) a second, higher fee for 

a second or subsequent RCE. ‘‘See 

Setting and Adjusting Patent Fees,’’ 78 

FR 4212 (Jan. 18, 2013). Higher fees for 

RCEs filed after the first RCE are 

intended to help promote more compact 

prosecutions by reducing RCE filings in 

favor of appeal or reaching agreement 

with an examiner. Higher fees for 

successively filed RCEs also address the 

inequities of providing further subsidies 

to those applicants who use more 

USPTO resources per application than 

others. As explained in the USPTO’s FY 

2013 rulemaking, 78 FR at 4245, 

because the USPTO sets the fee for the 

first RCE below the costs to process it, 

the agency must recoup those costs 

elsewhere. Since most applicants 

resolve their issues with the first RCE, 

the agency determined that applicants 

who file more than one RCE are using 

the patent system more extensively than 

those who file zero or only one RCE. 

Therefore, the USPTO determined in the 

FY 2013 rulemaking that the cost to 

review applications with multiple RCEs 

should not be subsidized with other 

back-end fees to the same extent as 

applications with a first RCE, newly 

filed applications, or other continuing 

applications. This splitting of the fees 

promotes compact prosecution and 

more appropriately distributes the 

benefit of the low barrier to entry feature 

of below cost front-end fees. 

The USPTO’s FY 2017 fee setting 

rulemaking maintained the 

undiscounted fee for a first RCE well 

below cost but set the undiscounted fee 

for second and subsequent RCEs at 19% 

above cost. See ‘‘Setting and Adjusting 

Patent Fees During Fiscal Year 2017,’’ 

82 FR 52780 (Nov. 14, 2017). The initial 

undiscounted RCE fee from FY 2017 

would have required an applicant to file 

four RCEs for the USPTO to mostly 

recover the costs for treating all of the 

applicant’s RCE filings. These costs 

have increased annually since FY 2017. 

In fact, the current undiscounted fee for 

second and subsequent RCEs is set so 

far below cost that no amount of RCE 

filings would result in the agency 

recapturing the costs of providing the 

service. 

The bifurcated fee structure does not 

appear to have had much effect on RCE 

filing behavior. During FY 2011, when 

the agency’s fee schedule set only one 

RCE fee, RCE filings comprised about 

30% of all RCE and utility patent 

application filings collectively. In FY 

2018, RCE filings comprised 29% of the 

total despite the bifurcated fee structure 

introduced in FY 2013. The RCE filing 

percentage declined to 25% in FY 2021 

and 23% in FY 2022. It is unlikely these 

recent decreases resulted from the 

bifurcated fee structure, as the RCE 

filing percentage was hardly affected in 

the years immediately following FY 

2013. 

The USPTO had proposed in the 

NPRM to trifurcate the RCE fee 

structure, i.e., to split the existing RCE 

fees into three parts—a fee for a first 

RCE, a higher fee for a second RCE, and 

a still higher fee for third and 

subsequent RCEs filed in a single patent 

application. Under the trifurcated 

structure, the undiscounted fee for a 

first RCE would have been more than 

50% below cost, and the undiscounted 

fee for a second RCE would have been 

just above cost. As proposed, the 

undiscounted fee for third and 

subsequent RCEs would have been 

enough above current RCE costs that a 

third RCE from an applicant with no 

entity status discount, combined with 

the fees for filing the first two RCEs, 

would have covered agency costs for 

treating all three RCEs. 

During the public comment period on 

the NPRM, the USPTO received a 

number of comments expressing 

concerns over the proposal to trifurcate 

the RCE fees. Having further considered 

the public feedback on this proposal, 

the USPTO decided against proceeding 

with this proposal. Instead, the USPTO 

will retain the existing bifurcated RCE 

fee structure in which the first RCE is 

charged at a lower rate than the second 

and subsequent RCEs. 

In this final rule, the USPTO is 

increasing the § 1.17(e)(1) fee for a first 

RCE ($1,500 for undiscounted entities) 

only 10%, similar to the across-theboard adjustment applied to most patent 

fees. The undiscounted fee for a first 

RCE will thus remain more than 50% 

below cost ($3,110 in FY 2023). In 

accordance with the existing rationale 

for the bifurcated fee structure described 

above in connection with the FY 2013 

and FY 2017 fee settings, the USPTO is 

increasing the undiscounted § 1.17(e)(2) 

fee for the second and subsequent RCEs 

to an amount ($2,860) that is above the 

agency’s costs of processing those RCEs 

($2,258 in FY 2023). 

Even at the undiscounted rate, the fee 

for second and subsequent RCEs does 

not fully recoup the costs associated 

with the first RCE, and the agency must 

recoup those costs elsewhere (e.g., for 

the second RCE, the USPTO has 

incurred $5,368 in RCE costs for the first 

and second RCEs, but has received only 

$4,360 in RCE fees from an 

undiscounted entity). It is not until the 

fourth and subsequent RCEs that the 

cumulative undiscounted RCE fees 

recover the cumulative RCE processing 

costs. Moreover, although RCEs in 

applications receiving entity discounts 

incur the same processing costs, the 

discounted fees are so far below cost 

that the agency would never recoup its 

costs regardless of the number of RCEs 

filed (e.g., for the second RCE, the 

USPTO has incurred $5,368 in RCE 

costs for the first and second RCEs, but 

has received only $1,744 in RCE fees 

from a small entity and $872 from a 

micro entity). The final rule thus leaves 

the agency in essentially the same 

position financially as it has been since 

FY 2017, in that it will not recover its 

RCE processing costs from an applicant 

paying undiscounted RCE fees until the 

fourth or subsequent RCE filing and 

never recover its costs from applicants 

paying discounted RCE fees. For all 

RCEs (first, second, and subsequent), 

about 76% are filed by undiscounted 

entities, 22% by small entities, and 2% 

by micro entities. 

10. Suspension of Action Fees 


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Currently, § 1.103(a) permits 

applicants to request a suspension of 

action for a period not exceeding six 

months for good and sufficient cause. 

The patent examiner typically decides 

the first request for suspension. Second 

and subsequent requests require 

Technology Center director approval. 

Due to the heightened approval level, 

these requests cost the USPTO more to 

process. Additionally, the pendency of 

an application increases as more 

requests for suspension are requested 

and granted. 

The USPTO is creating a new tiered 

fee structure for requests for suspension 

of action under § 1.103(a). Specifically, 

the agency is increasing the 

undiscounted fee for a first suspension 

request to $300 and establishing a new 

undiscounted fee of $450 for the second 

or subsequent requests in the same 

application. The fee increases strive to 

shift the costs of the service to those 

applicants who request suspensions, 

thereby reducing subsidization from 

other fees. This increase will not affect 

fees for suspensions of action requested 

at the time of filing a CPA under 

§ 1.103(b) or an RCE under § 1.103(c). 

To effect this change, the USPTO is 

amending § 1.17(g) by splitting it into 

two paragraphs, (g)(1) and (g)(2). 

Paragraph (g)(1) covers all fees formerly 

encompassed by § 1.17(g), other than 

those for suspension of action under 

§ 1.103(a). Paragraph (g)(2) covers fees 

for suspension of action under § 1.103(a) 

and is bifurcated so that new paragraph 

(g)(2)(i) covers the fee for the first 

suspension request and new paragraph 

(g)(2)(ii) covers the fee for the second 

and subsequent requests. The § 1.17 

(g)(2) fees are the tiered suspension of 

action fees proposed in the NPRM and 

shown above in table 13. 

The USPTO receives approximately 

2,500 requests for suspension under 

§ 1.103(a) each year. Of those requests, 

86% are filed by undiscounted entities, 

12% by small entities, and 2% by micro 

entities. Given the availability of entity 

discounts, the USPTO believes this fee 

increase will generally have a negligible 

impact on small and micro entities. 

11. Terminal Disclaimer Fees 

In the NPRM, the USPTO proposed 

creating a new tiered fee structure for 

terminal disclaimers. The proposed fees 

for filing such terminal disclaimers 

would have increased and would have 

varied depending on the stage of 

examination of the application in which 

the terminal disclaimer was filed. In 

particular, the proposal would have 

created five tiers of fees for filing 

terminal disclaimers, beginning at $200 

for the first tier and increasing by $300 

for each subsequent tier. The proposed 

structure focused on encouraging 

applicants to promptly address double 

patenting issues that arise during 

prosecution. 

However, during the public comment 

period, the USPTO received a number of 

comments expressing concerns over the 

proposed structure, particularly whether 

applicants would be able to make 

informed decisions on whether to file a 

terminal disclaimer before the fees 

escalated. The USPTO considered the 

public feedback and decided not to 

proceed with this proposal. Instead, the 

fee for this service will be increased in 

accordance with the across-the-board 

adjustment applied to most patent fees. 

12. Unintentional Delay Petition Fees 

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BILLING CODE 3510–16–P 

During FY 2020, the USPTO issued a 

notice to clarify when additional 

information is required to support a 

petition for unintentional delay. See 

‘‘Clarification of the Practice for 

Requiring Additional Information in 

Petitions Filed in Patent Applications 

and Patents Based on Unintentional 

Delay,’’ 85 FR 12222 (March 2, 2020) 

(2020 Notice). Petitions based on 

unintentional delay include petitions 

seeking revival of an abandoned 

application, acceptance of a delayed 

maintenance fee payment, and 

acceptance of a delayed priority or 

benefit claim. The 2020 Notice clarified 

that ‘‘any applicant filing a petition to 

revive an abandoned application under 

§ 1.137 more than two years after the 

date of abandonment, any patentee 

filing a petition to accept a delayed 

maintenance fee under § 1.378 more 

than two years after the date of 

expiration for nonpayment of a 

maintenance fee, and any applicant or 

patent owner filing a petition to accept 

a delayed priority or benefit claim under 

§ 1.55(e) or § 1.78(c) and (e) more than 

two years after the due date of the 

priority or benefit claim should expect 

to be required to provide an additional 

explanation of the circumstances 

surrounding the delay that establishes 

that the entire delay was unintentional.’’ 

Id. at 12223. 

As the evidentiary requirements for 

these petitions have increased, the costs 

to review and treat these petitions have 

also increased due to the higher level of 

review needed to consider the 

additional explanation. Accordingly, the 

USPTO is setting a new, higher fee for 

petitions based on unintentional delay 

over two years to recover their 

additional associated costs. The higher 

fee should encourage timely petition 

filings and avoid delays in the 

examination process. Timely filing of 

petitions based on unintentional delay 

benefits applicants because it avoids 

delays in the examination process, and 

it also benefits the patent system as a 

whole by reducing uncertainty and 

unpredictability relating to patent 

rights, inasmuch as the abandoned 

status of an application, the expired 

status of a patent, or an absence of the 

priority or benefit claim could be relied 

upon by other parties. 

To effect this change, the USPTO is 

amending § 1.17(m) by splitting it into 

three paragraphs, (m)(1) through (m)(3). 

Paragraph (m)(1) implements the new 

higher fee ($3,000 for undiscounted 

entities) for petitions based on 

unintentional delay over two years. This 

higher fee will apply to petitions under 

§ 1.78(c) and (e) to accept a delayed 

benefit claim submitted more than two 

years after the date the benefit claim 

was due, under § 1.55(e) to accept a 

delayed priority claim more than two 

years after the date the foreign priority 

claim was due, under § 1.137 to revive 

an abandoned application or 

reexamination proceeding more than 

two years after the date of abandonment, 

under § 1.378 to seek reinstatement of 

an expired patent more than two years 

after the date of expiration for 

nonpayment of a maintenance fee, and 

under § 1.1051 to excuse an applicant’s 

failure to act within prescribed time 

limits in an international design 

application. 

Paragraph (m)(2) implements the fee 

for petitions based on unintentional 

delay that is less than or equal to two 

years, and paragraph (m)(3) implements 

the fee for petitions requesting 

restoration of the right of priority, i.e., 

petitions under § 1.55(c), § 1.78(b), or 

§ 1.452 for the extension of the 12- 

month (6-month for designs) period for 

filing a subsequent application. These 


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fees are also increasing as compared to 

the current § 1.17(m) fee (from $2,100 to 

$2,260 for undiscounted entities) in 

accordance with the across-the-board 

adjustment applied to most patent fees. 

The USPTO receives approximately 

12,000 petitions each year based upon 

the unintentional standard (FY 2021, 

12,752 petitions; FY 2022, 11,755 

petitions; FY 2023, 11,304 petitions). 

About 10% of these petitions (1,200) 

have a delay of more than two years. 

Therefore, the higher cost for petitions 

having a delay of greater than two years 

should not have a significant impact on 

patent applicants overall. The increased 

fee will help ensure those applicants 

requesting the service pay its costs, 

thereby reducing subsidization from 

other patent applicants. 

13. America Invents Act Trial Fees 

As proposed, the USPTO is increasing 

existing fees for AIA trial proceedings 

by 25%. Under 35 U.S.C. 311(a) and 

321(a), the USPTO Director must 

establish reasonable fees for inter partes 

review and post-grant review in relation 

to their aggregate costs. The fee 

increases will better align the fee rates 

charged to petitioners with the actual 

costs borne by the USPTO in providing 

these proceedings. This change will 

help the PTAB maintain the appropriate 

level of judicial and administrative 

resources to continue providing highquality and timely decisions for AIA 

trials. 

14. Request for Review of a PTAB 

Decision by the Director Fee 


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The USPTO is setting a new fee for 

parties requesting Director Review in 

AIA trial proceedings under part 42. 

The fee is set at the same rate as a 

petition to the Chief Judge in ex parte 

appeals (see 37 CFR 42.20(a)) and is 

designed to partially recover the 

USPTO’s costs for conducting Director 

Reviews. The new fee is part of the 

agency’s ongoing efforts to formalize the 

Director Review process developed in 

response to the Supreme Court’s 

decision in United States v. Arthrex, 

Inc. and furthers the USPTO’s goals of 

promoting innovation through 

consistent, transparent decision-making 

and the issuance and maintenance of 

reliable patents. 

More specifically, Arthrex explained 

that ‘‘constitutional principles chart a 

clear course: Decisions by 

[administrative patent judges (APJs)] 

must be subject to review by the 

Director.’’ See 141 S. Ct. 1970, 1986 

(2021). Following the statutory authority 

provided to the Director by Congress 

and the constitutional principles 

explained by the Supreme Court, the 

USPTO set forth an interim process for 

Director Review, which has been 

updated periodically. The agency 

sought public feedback on the interim 

process and is using feedback to 

promulgate rules. See ‘‘Rules Governing 

Director Review of Patent Trial and 

Appeal Board Decisions,’’ 89 FR 26807 

(April 16, 2024); ‘‘Request for 

Comments on Director Review, 

Precedential Opinion Panel Review, and 

Internal Circulation and Review of 

Patent Trial and Appeal Board 

Decisions,’’ 87 FR 43249 (July 20, 2022). 

As a part of the interim process, when 

the USPTO receives a Director Review 

request from a party to an AIA 

proceeding, the request is processed and 

routed to an advisory committee that 

assists with Director Review. The 

committee includes at least 11 

representatives from various USPTO 

business units who serve at the 

Director’s discretion. Members 

independently review each request and 

associated case materials, and the 

committee meets regularly to 

recommend which requests for review 

should be granted. The Director 

considers each request, its case 

materials, and the committee’s 

recommendation in determining 

whether to grant or deny review. When 

the Director determines to grant review, 

personnel from various USPTO business 

units assist in case processing and in 

issuing and publicizing the Director 

Review decision. 

Given the number of agency 

personnel involved in Director Review, 

the USPTO expects the new fee will be 

relatively small compared to the overall 

costs. The agency plans to formally 

capture and evaluate these costs after 

the fee takes effect. 

D. Amendment to Obtaining a Refund 

Through Express Abandonment 

The USPTO is amending paragraph 

(d) of § 1.138, which permits an 

applicant to obtain a refund of the 

search and excess claims fees that were 

paid in an application by submitting a 

petition and declaration of express 

abandonment before an examination has 

been made of the application. The 

current rule permits such refunds only 

in nonprovisional applications filed 

under 35 U.S.C. 111(a) and § 1.53(b). 

The amendment expands the 

applicability of the rule to permit such 

refunds in national stage applications 

filed under 35 U.S.C. 371. 

The amendment also clarifies that 

refunds of search and excess claims fee 

payments under these provisions are 

limited to the search and excess claims 

fees set forth in § 1.16 (which apply to 

applications filed under 35 U.S.C. 

111(a) and § 1.53(b)) and § 1.492 (which 

apply to national stage applications 

filed under 35 U.S.C. 371). No refunds 

will be permitted of any search fees paid 

under § 1.445 during the international 

stage of an application filed under the 

PCT, even if such an application later 

enters the national stage under 35 U.S.C. 

371. 

The petition process and the 

conditions under which a refund will be 

granted will not otherwise change. See 

MPEP 711.01, subsection III for more 

information. The amendment puts 

national stage applications on the same 

footing as applications filed under 35 

U.S.C. 111(a) when an application is 

expressly abandoned prior to 

examination. 

VI. Discussion of Comments 

Comments and Responses 

The USPTO published a proposed 

rule on April 3, 2024, soliciting 

comments on the proposed fee 

schedule. In response, the USPTO 

received comments from 28 associations 

and individuals including intellectual 

property organizations, law firms, 

corporations, attorneys, and others. 

These comments are available on 

Regulations.gov at https://

www.regulations.gov/docket/PTO-P2022-0033. 

Summaries of comments and the 

agency’s responses follow. 

General Fee Setting Approach 

Comment 1: One commenter stated 

that most of the fee proposals are 

necessary and appropriate. The 

commenter also urged Congress to 

appropriate previously diverted funds 

from the USPTO budget back to the 

agency to improve the patent 

examination process. 

Response: The USPTO appreciates the 

feedback from the commenter and is 

committed to achieving the goals 

developed in consultation with the 

stakeholder community as set forth in 

the Strategic Plan. Comments directed 

to Congress are outside the scope of this 

rulemaking. 

Comment 2: One commenter 

expressed their support of the proposals 

set forth in the NPRM in their entirety. 

Response: The USPTO appreciates the 

commenter’s support for the proposed 

fees. The fees in the final rule will give 

the agency sufficient financial resources 

to facilitate the effective administration 

of the U.S. patent system and 

implement the goals outlined in the 

Strategic Plan. 

Comment 3: One commenter 

expressed their support of the 


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proposals, noting that the adjustments 

will allow the USPTO to come closer to 

recovering its aggregate costs for patent 

examination activities by better aligning 

fees with the costs of products and 

services, while also promoting more 

efficient patent prosecution. 

Response: The USPTO appreciates the 

commenter’s feedback. The agency 

carefully considered all comments it 

received about the proposals outlined in 

the NPRM and believes the fees in the 

final rule strike a balance between 

addressing commenter concerns and 

providing sufficient financial resources 

to recover the aggregate estimated costs 

of patent operations and support the 

goals described in the Strategic Plan. 

Comment 4: Commenters stated that 

the proposed fee increases are severe 

and appear to represent a departure 

from the USPTO’s historic practice of 

adjusting fees incrementally to reflect 

anticipated cost increases and agency 

priorities. 

Response: The USPTO recognizes that 

higher fees will affect entities 

interacting with the agency. The USPTO 

is experiencing an increase in aggregate 

costs, and fee increases are necessary to 

maintain operations and deliver the 

priorities listed in the Strategic Plan. 

Most fees fall into the across-the-board 

and front-end adjustments and will 

increase around 7.5% or 10% 

respectively. It has been more than four 

years since the agency’s last fee 

adjustment in October 2020 and these 

increases are well below the prevailing 

inflation rate since then. While some 

fees are increasing by larger percentages 

and new fees are being introduced, the 

rationales for these increases are 

explained in Part V(c): Targeted 

Adjustments to Patent Fees. Moreover, 

the time frame associated with the fee 

setting process inherently provides for 

the phasing in of fee changes. For 

example, this fee setting process began 

with a proposal presented to PPAC in 

April 2023, and the public has had two 

opportunities to review and comment 

on the fee proposals as part of the 

process since then. The USPTO refined 

the fee proposal in both the NPRM and 

this final rule based on feedback from 

the public and PPAC. 

Comment 5: One commenter stated 

that the proposals run counter to the 

USPTO’s stated goals and mission and 

could drive smaller companies and 

start-ups out of the U.S. patent process. 

Response: Helping small businesses 

and independent inventors with limited 

resources is important to the USPTO. 

The agency provides several free or 

reduced-fee programs to assist 

independent inventors and small 

businesses in securing patent protection 

for their inventions, including the 

Patent Pro Bono Program, Pro Se 

Assistance Program, and Law School 

Clinic Certification Program, as well as 

tips to avoid scams. More information 

on these programs can be found on the 

USPTO website: https://www.uspto.gov/ 

ProBonoPatents, https://www.uspto.gov/ 

ProSePatents, and https://

www.uspto.gov/LawSchoolClinic. 

The USPTO also offers reduced fees 

for small and micro entities. Applicants 

qualifying as a micro entity under 

section 11(g) of the AIA are eligible for 

an 80% reduction on most fees, and 

applicants qualifying as a small entity 

under 35 U.S.C. 41(h)(1) are eligible for 

a 60% fee reduction. Many of the small 

and micro entity fees adjusted in this 

rule will continue to be lower than the 

fee rates that were in place prior to 

passage of the UAIA, which increased 

the percentages of these discounts. 

Comment 6: One commenter 

suggested that several of the proposed 

fee adjustments are punitive charges. 

Response: The USPTO has increased 

fees via this final rule because it is 

required by law to recover its aggregate 

estimated costs for processing, 

activities, services, and materials 

relating to the patent system, including 

administrative costs with respect to 

such patent fees. The agency set many 

of the targeted fee adjustments in this 

final rule to recover more costs directly 

from the users of services that increase 

the agency’s costs of processing and 

examination. Setting fees lower than 

prescribed in the final rule would 

necessitate an offset by raising other 

fees, reducing spending on core mission 

and strategic priorities, or depleting the 

operating reserves, thereby significantly 

increasing agency financial risk. More 

information on why the USPTO is 

setting individual fees at the specified 

rates can be found in Part V: Individual 

Fee Rationale of this rule. 

Comment 7: One commenter stated 

that an increase in the price of obtaining 

a patent can be expected to decrease 

patents and innovation. The commenter 

believed increasing fees to cover the 

agency’s costs could lead to excessive 

spending and suggested reducing costs 

rather than increasing fees and 

potentially disincentivizing innovation. 

Response: The USPTO recognizes its 

duty to stakeholders to be good stewards 

of the patent system and continues to 

pursue efforts to increase efficiency and 

control costs. 

Additionally, the agency conducted 

an elasticity analysis (i.e., an assessment 

of the degree to which changes in fee 

rates affect demand for services) as part 

of a prior rulemaking and found that 

patent fees are relatively inelastic. As 

such, increases of the nature contained 

in this rule would not be expected to 

significantly deter innovation. A 

description of elasticity estimates can be 

found on the fee setting and adjusting 

section of the USPTO website at https:// 

www.uspto.gov/ 

FeeSettingAndAdjusting. 

The USPTO recognizes that fees 

cannot simply increase for every 

improvement it deems desirable. The 

USPTO’s financial advisory board 

evaluates financial risk and determines 

which expenses are truly necessary to 

achieve performance outcomes and 

service level commitments to 

stakeholders. As noted in the FY 2023 

AFR, available on the agency website at 

https://www.uspto.gov/AnnualReport, 

total costs for the patent program 

increased 13.8% from FY 2019 to FY 

2023, well below the CPI–U, which 

grew by 19.9% over the same period. 

Comment 8: One commenter stated 

that the patent system is not well suited 

to sudden changes and requested that 

the USPTO consider a more moderate, 

incremental approach to raising fees and 

adding new ones. 

Response: The time frame associated 

with the fee setting process inherently 

provides for the phasing in of fee 

changes and intentionally incorporates 

multiple opportunities for public 

feedback. As part of the fee setting 

process, the public has had two 

opportunities to review and comment 

on the fee proposals. The agency refined 

the fee proposals in both the NPRM and 

this final rule based on feedback from 

the public and PPAC, including 

reducing some proposed fee increases. 

Comment 9: Commenters stated that 

dramatic, controversial fee increases run 

the risk of the USPTO losing its fee 

setting authority or having it renewed 

only for another relatively short period 

of time. Commenters cautioned the 

USPTO against reopening the door to 

congressional interest in USPTO user 

fees and potential fee diversions from 

collecting excessive funds. 

Response: The agency recognizes its 

responsibility to be a good steward of 

the fee setting authority granted by 

Congress, as well as its duty to its 

stakeholders. After considering the 

many public comments, the agency has 

removed or adjusted several fees 

proposed in the NPRM. These changes 

include removal of the AFCP 2.0, 

terminal disclaimer, patent term 

adjustment, and third and subsequent 

RCE proposals and the adjustment of the 

patent term extension and continuing 

applications proposals. The USPTO is 

committed to improving the fee 

schedule design to generate sufficient 

financial resources for effective 


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administration of the U.S. IP system 

while also remaining responsive to 

stakeholder feedback. The agency takes 

its responsibility to stakeholders 

seriously and appreciates the rigorous 

and open review process involved in 

adjusting fee rates. 

Comment 10: One commenter stated 

that fees need to be set in such a way 

that patent applicants and holders do 

not overpay or underpay. 

Response: With the exception of small 

and micro entity discounts, the agency 

is legally obligated to charge the same 

fees for applicants. As explained in this 

final rule, the revised fees strike the 

right balance between maintaining low 

barriers to entry to the patent system 

and providing sufficient financial 

resources to recover the aggregate costs 

of patent operations and support the 

goals described in the Strategic Plan. 

Comment 11: One commenter stated 

the USPTO was effectively proposing a 

one-size-fits-all fee structure in the 

NPRM. The commenter believed the 

proposed fee structure would deny 

options to applicants by imposing costprohibitive fees. 

Response: The USPTO is not adopting 

a one-size-fits-all fee structure. The fees 

in this final rule are intended to 

encourage efficient operations and filing 

options, but they do not eliminate other 

prosecution pathways. The USPTO 

agrees with the commenter that 

applicants may have diverse patenting 

needs and strategies. However, the 

current fee structure includes fees for 

many less-widely used services below 

unit cost, meaning their costs are 

subsidized by applicants who do not 

take advantage of the service. The fee 

structure in this final rule will help 

redistribute some of those costs to 

applicants who are directly requesting 

these services. 

The agency realizes that fee increases 

will affect applicants. At the same time, 

the USPTO’s costs for processing, 

activities, services, and materials 

relating to patents, including 

administrative costs with respect to 

such patent fees, have increased. The 

agency set many of the targeted fee 

adjustments in this final rule to recover 

more costs directly from the users of 

services that increase the agency’s costs 

of processing and examination. Setting 

fees lower than prescribed in this final 

rule would require that the USPTO 

offset shortfalls by raising other fees, 

reducing spending on core mission and 

strategic priorities, and/or depleting the 

operating reserves, thereby significantly 

increasing agency financial risk. 

Additionally, the USPTO has continued 

its longstanding policy of charging 

patent applicants and holders lower 

filing, search, and examination (frontend) fees and higher issue and 

maintenance (back-end) fees, when an 

invention’s relative value is better 

known. 

In addition, the USPTO provides 

several programs to support 

independent inventors and small 

businesses. See the response to 

comment 5 for resources regarding free 

or reduced fee programs to assist these 

entities in securing patent protection for 

their inventions. The USPTO also offers 

reduced fee rates for many fees to small 

and micro entities. An applicant who 

meets micro entity requirements is 

eligible for an 80% reduction in most 

fees, and small entity status offers a 

60% fee reduction. Many of the small 

and micro entity fees adjusted in this 

final rule will continue to be lower than 

the fee rates that were in place prior to 

passage of the UAIA, which increased 

the percentages of these discounts. 

Comment 12: Commenters stated the 

proposal escalates fees at critical aspects 

of the patent process and for actions that 

many patent owners take to clarify 

rights or simplify litigation. The 

commenters cautioned against raising 

fees for common actions for valuable 

patents, which might disproportionately 

impact the most innovative companies, 

small businesses, and independent 

inventors who rely on patent protection 

in response to theft by efficient 

infringers. 

Response: As a fee-funded agency, the 

law requires the USPTO to recover its 

aggregate costs for the services it 

provides. The agency set many of the 

targeted fee adjustments in this final 

rule to recover more costs directly from 

the users of services that increase the 

costs of processing and examination. 

Setting fees lower than prescribed in 

this final rule would require that the 

USPTO offset shortfalls by raising other 

fees, reducing spending on core mission 

and strategic priorities, and/or depleting 

the operating reserves, thereby 

significantly increasing agency financial 

risk. Also, the USPTO has continued its 

longstanding policy of charging patent 

applicants and holders lower filing, 

search, and examination (front-end) fees 

and higher issue and maintenance 

(back-end) fees when an invention’s 

relative value is better known. For small 

businesses and independent inventors, 

applicants who meet the micro entity 

requirements are eligible for an 80% 

reduction on most fees, and applicants 

with small entity status receive a 60% 

fee reduction. The USPTO notes that 

many of the small and micro entity fees 

adjusted in this final rule will continue 

to be lower than the fee rates that were 

in place prior to passage of the UAIA, 

which increased the size of these 

discounts. 

Comment 13: One commenter stated 

that patent fees should reflect the actual 

costs incurred by the USPTO rather than 

be used as a tool to incentivize specific 

behaviors. The commenter stated that 

this strategy could result in unintended 

consequences. 

Response: Section 10(a) of the AIA 

grants the USPTO broad authority to set 

or adjust patent fees to generate the 

aggregate revenue required to recover 

the aggregate estimated costs of 

operations. As part of the Final 

Regulatory Flexibility Analysis (FRFA), 

the agency considered a unit cost 

recovery alternative that set most 

individual undiscounted fees at the 

historical cost of performing the 

activities related to that particular 

service in FY 2022. The USPTO 

ultimately opted against this alternative 

because it would reverse the agency’s 

longstanding policy of setting front-end 

fees below cost and charging higher 

back-end fees when a patent holder has 

more information about a patent’s value. 

The results of the FRFA are discussed 

further in Part VIII(b): Regulatory 

Flexibility Act of this final rule. 

Comment 14: One commenter stated 

that the proposed fee rule does not 

appear to project that increased fees will 

result in any performance 

improvements. The commenter requests 

that the USPTO share information on 

how it will use the increased fees to 

address unexamined inventory and 

pendency rates. 

Response: The fees included in this 

final rule will provide the agency with 

sufficient financial resources to 

facilitate the effective administration of 

the U.S. patent system, including 

implementing the Strategic Plan. The 

RIA associated with this rule uses the 

same production models for all 

alternatives simply for comparison. 

Aggregate revenue resulting from the 

current fee schedule, in absence of 

implementation of this rule, would 

require the USPTO to reduce planned 

spending, which would impede the 

agency’s ability to achieve these 

performance levels (i.e., pendency could 

increase) and other strategic priorities. 

The Strategic Plan, available on the 

agency website at https://

www.uspto.gov/StrategicPlan, includes 

a description of several initiatives that 

will address quality, unexamined 

inventory, and pendency. Additionally, 

Part IV(C): Efficient Delivery of Reliable 

IP Rights: Quality, Unexamined 

Inventory, and Pendency of this rule 

includes discussion of some of these 

initiatives. To effect necessary changes 

in the examination process and ensure 


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the timely issuance of reliable patents, 

the USPTO must plan for potential 

increases in core operating costs for 

future years. The USPTO lays out 

spending plans in each year’s 

congressional budget justification, 

available at https://www.uspto.gov/ 

about-us/performance-and-planning/ 

budget-and-financial-information. 

These strategic investments will enable 

the USPTO to identify and continue 

implementing improvements, 

guidelines, and best practices to serve 

the patent system, including reducing 

pendency in the future. 

Comment 15: One commenter stated 

the proposed fee structure could result 

in decreased revenue. The commenter 

requested that the USPTO share any 

financial impact analysis of the 

proposed fee structure’s net expected 

effect. 

Response: The USPTO carefully 

considered the fee schedule in this final 

rule. As part of the fee setting process, 

the agency conducted both a regulatory 

flexibility analysis (IRFA for the NPRM 

and FRFA for this final rule) and RIA. 

These analyses relied in part on the 

results of an existing elasticity analysis 

(i.e., an assessment of the degree to 

which changes in fee rates may affect 

demand for services), which found that 

patent fees are relatively inelastic and, 

therefore, fee increases will not reduce 

patenting activity enough to negatively 

impact overall revenue. The results of 

the FRFA are discussed in Part VIII(B): 

Regulatory Flexibility Act of this rule. 

The RIA and Description of Elasticity 

Estimates can be found at https://

www.uspto.gov/ 

FeeSettingAndAdjusting. 

Comment 16: One commenter stated 

that the proposed fee structure is 

inconsistent with the goals and 

traditions of the U.S. patent system, as 

the fees will increase the financial 

hurdle to gain entry into the patent 

system. 

Response: As discussed in Part I: 

Executive Summary of this final rule, 

the individual fee adjustments included 

in this final rule align with the USPTO’s 

strategic goals and its fee structure 

philosophy, including the agency’s four 

key fee setting policy factors: (1) 

promote innovation strategies, (2) align 

fees with the full costs of products and 

services, (3) facilitate effective 

administration of the U.S. patent 

system, and (4) offer application 

processing options. The fee adjustments 

will enable the USPTO to accomplish its 

mission of driving U.S. innovation, 

inclusive capitalism, and global 

competitiveness. While many fees will 

increase, the USPTO has long promoted 

a fee structure that fosters innovation by 

reducing barriers to entry into the patent 

system through lower front-end fees (set 

below cost) and higher back-end fees. 

Under the fee structure in the final rule, 

front-end fees will remain below cost to 

continue facilitating entry into the 

patent system and, in so doing, 

encourage the disclosure of information 

on new inventions and ideas to the 

public. For small businesses and 

independent inventors, applicants who 

meet the micro entity requirements are 

eligible for an 80% reduction on most 

fees, and applicants with small entity 

status receive a 60% fee reduction. The 

USPTO notes that many of the small 

and micro entity fees adjusted in this 

final rule will continue to be lower than 

the fee rates that were in place prior to 

passage of the UAIA, which increased 

the size of these discounts. The agency 

carefully considered many factors 

discussed in this final rule and 

determined that the fee increases are 

adequate to generate the aggregate 

revenue required to recover examination 

costs while continuing to foster 

innovation. 

Comment 17: One commenter 

expressed their support of the USPTO’s 

use of cost-cutting measures to limit the 

need for increasing or creating new fees 

but expressed concern regarding the 

flatlining of IT budgets, which they 

stated might be short-sighted. 

Response: As outlined in the FY 2025 

Budget, the agency will achieve this cost 

containment goal via modern equipment 

in a new data center that will cost less 

to maintain. In addition, by retiring 

legacy systems, the agency will reduce 

the required number of maintenance 

teams, reduce hardware and software 

costs, reduce storage and licensing 

costs, improve technical debt and 

patching efficiency, and improve 

cybersecurity. With respect to the 

impact these cost-cutting measures will 

have on operations, the USPTO remains 

committed to sustaining its planned 

levels of functionality and performance, 

and compliance with Federal laws, 

regulations, and directives. The agency’s 

FY 2025 Budget is available on the 

USPTO website at https://

www.uspto.gov/about-us/performanceand-planning/budget-and-financialinformation. 

Comment 18: One commenter stated 

that patent quality is a matter for the 

courts and issues could be resolved by 

awarding legal costs to prevailing 

parties in all but exceptional cases. 

Response: Providing high-quality, 

efficient examination of patent 

applications is paramount to the 

USPTO’s mission. With respect to 

shifting cost burdens in legal 

proceedings, such changes are beyond 

the scope of this rulemaking. 

Across-the-Board Adjustment to Patent 

Fees 

Comment 19: One commenter 

recognized the need for the USPTO to 

increase some patent fees and stated the 

across-the-board adjustment is 

reasonable. 

Response: The USPTO appreciates the 

commenter’s feedback. The across-theboard adjustment outlined in this final 

rule will help keep the UPSTO on a 

stable financial track sufficient to 

recover the aggregate costs of patent 

operations and support the agency’s 

strategic objectives. 

Comment 20: One commenter 

expressed disagreement with including 

the DOCX surcharge in the across-theboard adjustment since the agency 

implemented the fee less than a year 

ago. 

Response: The USPTO is adjusting the 

DOCX surcharge as part of the acrossthe-board adjustment to help keep pace 

with inflationary cost increases. 

Although the DOCX surcharge was 

instituted recently, the agency is 

required by law to finance operations in 

the aggregate by recovering fees for its 

services. Setting fees lower than 

prescribed in this final rule would 

require that the USPTO offset shortfalls 

by raising other fees, reducing spending 

on core mission and strategic priorities, 

and/or depleting the operating reserves, 

thereby significantly increasing agency 

financial risk. 

Front-End Adjustment to Patent Fees 

Comment 21: One commenter stated 

that the current relationship between 

front-end and back-end fees should be 

maintained and noted that PPAC 

objected to adding or increasing upfront processing fees. 

Response: To encourage innovation, 

the USPTO will continue to set frontend fees below its costs of providing 

these services. Further, while the 

USPTO increased the across-the-board 

adjustment in this final rule to ensure 

aggregate cost recovery in light of 

reductions to other proposals, it lowered 

the front-end increase relative to the 

across-the-board adjustment from 5% to 

2.5%, keeping the total front-end 

increase at 10%. Therefore, the fees set 

in this final rule will have a smaller 

impact on the balance between frontend and back-end fees compared to the 

NPRM proposal while still allowing the 

USPTO to marginally recover some 

costs earlier in the patent life cycle. 

Comment 22: One commenter 

expressed support for the USPTO 

recovering more of its costs through 


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front-end fees and encouraged the 

USPTO to consider an even larger shift 

towards cost recovery on the front-end. 

Response: The USPTO appreciates the 

commenter’s support. While this final 

rule slightly increases filing, search, and 

examination fees, the agency remains 

committed to promoting a fee structure 

that fosters innovation by maintaining 

low barriers to entry into the patent 

system. Lower front-end fees facilitate 

entry into the patent system and, in so 

doing, encourage the disclosure of 

information on new inventions and 

ideas to the public. Higher back-end fees 

not only help the agency recoup costs 

incurred at the front end of the process 

but also foster innovation by 

encouraging patent holders to assess the 

costs and benefits of maintaining their 

patent at various points over its 20-year 

term (i.e., 3.5 years, 7.5 years, and 11.5 

years) when maintenance fees are due. 

This strategy helps ensure that lowvalue patents are released back into the 

public domain for subsequent 

commercialization. The USPTO 

carefully considered many factors 

discussed in this final rule in 

determining that the increases to filing, 

search, and examination fees are 

adequate to generate the aggregate 

revenue needed to recover examination 

costs and continue fostering innovation. 

Comment 23: One commenter 

suggested that undiscounted fees be 

decoupled from fees for small and micro 

entities to allow for further fee increases 

for large users. 

Response: The agency does not have 

the legal authority to set fees for small 

and micro entities separately from 

undiscounted fees. The authority to 

reduce fees for small and micro entities 

under the USPTO’s rulemaking 

authority is limited by the AIA as 

amended by the UAIA. These statutes 

prescribe that the USPTO must provide 

small and micro entity discounts based 

on a set percentage of the undiscounted 

fee rate. Further, these discounts apply 

to only the six fee categories under 

section 10(b) of the AIA. Helping small 

businesses and independent inventors is 

an important part of the USPTO’s 

mission of driving U.S. innovation, 

inclusive capitalism, and global 

competitiveness. See the response to 

comment 5 for resources regarding free 

or reduced fee programs that assist these 

entities in securing patent protection for 

their inventions. 

Targeted Fee Adjustments 

After Final Consideration Pilot Program 

2.0 Fee 

Comment 24: Commenters expressed 

concerns about the AFCP 2.0 pilot 

program and the proposed participation 

fee. Commenters stated that the 

program’s primary benefit is the 

opportunity to hold an interview with 

the examiner after the close of 

prosecution. 

Response: The agency considered 

public feedback on AFCP 2.0 and the 

proposed fee and opted to allow the 

program to expire on December 14, 

2024. As a reminder, under customary 

examination practice, after the close of 

prosecution, amendments that will 

place the application either in condition 

for allowance or in better form for 

appeal may be entered, and the 

applicant may also hold an interview 

with the examiner. See § 1.116(b) and 

section 714.12 of Manual of Patent 

Examining Procedure (MPEP) (9th ed., 

Rev. 01.2024, November 2024), which 

may be viewed on or downloaded from 

the USPTO website at https://

www.uspto.gov/MPEP or https://

mpep.uspto.gov. Thus, even without the 

program, applicants still have the 

opportunity to hold interviews with 

examiners after the close of prosecution. 

Continuing Application Fees 

Comment 25: One commenter stated 

that the meaning of the term ‘‘earliest 

benefit date’’ or ‘‘EBD’’ as used in the 

NPRM was not clear, particularly with 

regard to whether or how it differs from 

the ‘‘effective filing date’’ language in 35 

U.S.C. 102. The commenter suggested 

that established statutory language be 

used instead of the ‘‘earliest benefit 

date’’ or ‘‘EBD.’’ 

Response: EBD is not a synonym for 

‘‘effective filing date.’’ The USPTO has 

added additional examples and 

explanations in this final rule to further 

clarify the meaning of EBD. 

‘‘Effective filing date’’ is a term 

defined in the statute and can refer to 

a priority date or a benefit date. The 

USPTO determines the effective filing 

date on a claim-by-claim basis. As set 

forth in 35 U.S.C. 100(i)(1), for a patent 

application, the effective filing date for 

a claimed invention is either (A) the 

actual filing date of the application 

containing a claim to the invention or 

(B) the filing date of the earliest 

application for which the application is 

‘‘entitled, as to such invention, to a right 

of priority under [35 U.S.C.] section 119, 

365(a), 365(b), 386(a), or 386(b) or to the 

benefit of an earlier filing date under 

section 120, 121, 365(c), or 386(c).’’ See 

MPEP 2152.01 for more information 

about the effective filing date. 

The EBD is a term used in this 

rulemaking (the NPRM and this final 

rule) to refer to the earliest filing date 

for which benefit is claimed under 35 

U.S.C. 120, 121, 365(c), or 386(c), and 

§ 1.78(d). The EBD is determined on an 

application-by-application basis. The 

EBD cannot be the filing date of a 

foreign application or the filing date of 

a provisional application to which 

benefit is claimed under 35 U.S.C. 

119(e). 

In short, the effective filing date can 

be a priority date or a benefit date, and 

different claims in the same application 

can have different effective filing dates. 

The EBD, however, can only be a benefit 

date, and there is only one EBD per 

application. The difference is explained 

further in table 17. 


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With respect to using statutory 

language, when the later-filed 

application is a utility or plant patent 

application, the EBD is also the date 

from which the 20-year patent term is 

calculated under 35 U.S.C. 154(a)(2), 

and thus for a utility or plant 

application the EBD is synonymous 

with the ‘‘patent term filing date.’’ See 

MPEP 804, subsection I.B.1(a) for more 

information about the patent term filing 

date. There is no preexisting statutory 

language to use for design applications, 

as the term of design patents is 

calculated differently than for utility 

and plant patents. See MPEP 2701 for 

more information about patent term. 

Comment 26: One commenter 

questioned whether continuing 

application fees would actually be 

technology neutral since the USPTO 

stated in the NPRM that TC 3700 

‘‘receives a much higher proportion of 

late-filed continuing application than 

other areas.’’ 

Response: The fee will be assessed for 

all continuing applications in all 

technologies. Although TC 3700 has a 

higher proportion of continuing 

applications that would be subject to the 

new fee(s) as compared to other TCs, 

there is diverse subject matter examined 

within this TC, encompassing many 

technologies. For example, TC 3700 

examines applications directed to 

mechanical engineering, machine and 

hand tools, manufacturing (all 

disciplines), gaming, amusement and 

educational devices (electrical and 

mechanical), combustion technology, 

fluid handling, refrigeration, medical 

and surgical instruments and processes, 

diagnostic equipment, and medical 

treatment devices. Therefore, its relative 

excess of late-filed continuations does 

not cause a significant difference when 

combined with data from the entire 

corps, and technology sectors are 

considered as a whole. 

Comment 27: Commenters expressed 

concern about perceived unfairness of 

the continuing application fees for those 

applications that claim priority to 

foreign applications. 

Response: As noted above in the 

response to comment 25, foreign 

priority dates are not included in the 

determination of an EBD. The EBD is 

limited to the earliest filing date for 

which benefit is claimed under 35 

U.S.C. 120, 121, 365(c), or 386(c), and 

§ 1.78(d). Thus, an application that 

claims a right of priority to a foreign 

application will not incur any fees set 

forth in § 1.17(w) based on that priority 

claim. 

Comment 28: Commenters suggested 

that the continuing application fees will 

disproportionately affect national stage 

applications, discourage use of the 

Patent Cooperation Treaty (PCT) system, 

or prevent applicants from considering 

the merits of a bypass continuation 

application claiming benefit of a PCT 

application until after the applicable 

timing thresholds for the fees have 

passed. 

Response: Applicants are free to 

choose whatever route they believe is 

more advantageous for obtaining patent 

protection in the United States, whether 

through the PCT or through a direct 

national filing under 35 U.S.C. 111(a). 

National stage applications filed under 

35 U.S.C. 371 are unlikely to be affected 

by the continuing application fees 

because PCT time limits are much 

shorter than the timing thresholds that 

prompt the continuing application fees, 

and very few national stage applications 

contain benefit claims that could 

prompt the fees. 

Consider the following illustrative 

example. An international application 

designating the U.S. is filed under the 

PCT on May 5, 2026. The international 

application claims priority to a single 

foreign patent application that was filed 

in the Canadian Intellectual Property 


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Office on June 6, 2025. This 

international application has an 

international filing date of May 5, 2026, 

and a priority date of June 6, 2025 (the 

‘‘priority date’’ for an international 

application is defined in PCT Article 

2(xi)). 

The PCT time limit to commence the 

U.S. national stage is 30 months (2.5 

years) from the priority date. Assume 

the exemplary application commences 

the U.S. national stage on the last 

possible day, which is December 6, 2027 

(the day that is 30 months from the June 

6, 2025, priority date). See MPEP 

1893.01 for more information about 

national stage commencement time 

limits. When the U.S. national stage is 

commenced, the USPTO will determine 

the EBD of the national stage 

application to evaluate whether any 

continuing application fees are due. As 

explained in the response to comment 

25, foreign priority dates are not 

included in the determination of an 

EBD, and thus the filing date of the 

Canadian patent application is not the 

EBD. Instead, the exemplary national 

stage application would have an EBD 

that is the same as its international 

filing date, i.e., May 5, 2026. Because 

the EBD is the same as the actual filing 

date (the international filing date), no 

continuing application fees would be 

due upon national stage commencement 

of this application. 

Even if the international application 

had also included a benefit claim to an 

earlier-filed U.S. application, it is very 

unlikely that the national stage 

application would be affected by the 

continuing application fees. USPTO 

data from FY 2020 through FY 2023 

indicates that very few (less than 1%) 

U.S. national stage applications include 

a benefit claim to an earlier-filed 

application such that their EBD would 

be earlier than the international filing 

date, let alone an EBD that is more than 

six years prior to the international filing 

date as would be required to incur the 

continuing application fee. Given that 

the primary purpose of filing an 

international application is usually to 

pursue international patent protection, 

this data is not surprising. 

Similarly, a so-called bypass 

continuing application of an 

international application is unlikely to 

be affected by the continuing 

application fees for any benefit claim to 

the international application or any 

benefit or priority claim made through 

the PCT system (e.g., where the 

international application serves as an 

intermediate application to establish 

copendency between the bypass 

application and an earlier-filed 

application). See MPEP 1895 et seq. for 

more information about bypass 

applications. Even if such an 

application were affected, the effects 

would be similar to those for an 

application where the benefit ‘‘chain’’ 

did not include an international 

application. 

Consider another illustrative example. 

On January 8, 2032, an applicant files 

two applications: an international 

application designating the U.S.; and 

application D, which is a U.S. 

nonprovisional application. Both 

applications claim priority to a single 

foreign patent application that was filed 

in the Instituto Mexicano de la 

Propiedad Industrial (IMPI) on January 

10, 2031, and also claim benefit as a 

continuation of U.S. nonprovisional 

applications A, B, and C under 35 

U.S.C. 120, with the earliest-filed 

application being A, which was filed on 

July 11, 2025. The international 

application would not incur any fees 

under § 1.17(w) unless and until it 

commences the U.S. national stage. 

Application D will incur the 

§ 1.17(w)(1) fee because its actual filing 

date (January 8, 2032) is more than six 

years after its EBD (A’s filing date of 

July 11, 2025). 

On July 7, 2033, 30 months after the 

priority date (the filing date of the 

Mexican patent application), the 

applicant commences the U.S. national 

stage of the international application. At 

this time, the USPTO will determine the 

EBD of the national stage application to 

evaluate whether any continuing 

application fees are due. As previously 

noted, the foreign priority date is not 

included, but benefit claims under 35 

U.S.C. 120 are included. The earliest 

benefit date to which the national stage 

application claims benefit is A’s filing 

date, and thus the national stage 

application has an EBD of July 11, 2025. 

Because the actual filing date of the 

national stage application (the 

international filing date of January 8, 

2032) is more than six years after its 

EBD (A’s filing date of July 11, 2025), 

the § 1.17(w)(1) fee will be due upon 

national stage commencement of this 

application. 

The applicant files two additional 

applications on July 7, 2033. The first is 

a bypass application that claims benefit 

of the international application and the 

earlier-filed applications A, B, C, and D. 

The second is a nonprovisional 

application E that claims benefit to A, 

B, C, and D. Both the bypass application 

and E will incur the § 1.17(w)(1) fee, 

because their actual filing date (July 7, 

2033) is more than six years after their 

EBD (A’s filing date of July 11, 2025). 

In this example, all three of these 

latter applications (the national stage 

application, the bypass application, and 

E) are in essentially the same position 

with respect to being able to evaluate 

their merits based on the history of the 

prior applications. Over the last few 

years, the USPTO’s Traditional Total 

Pendency (which the USPTO defines as 

the average number of months from the 

patent application filing date to the date 

the application has reached final 

disposition (e.g., issued as a patent or 

abandoned)) has ranged between 24 and 

26 months. More data on Traditional 

Total Pendency is available on the 

USPTO’s Patents pendency data web 

page at https://www.uspto.gov/ 

dashboard/patents/pendency.html. 

Thus, assuming a Traditional Total 

Pendency of 26 months, in this example 

the applicant easily could have 

completed the prosecution of their 

earlier-filed applications A, B, and C by 

July 2033 and would also have 

progressed with the prosecution of 

application D. The applicant would thus 

have the benefit of reviewing the 

patentability issues that arose during 

prosecution of A, B, C, and D before 

filing the applications in July 2033 that 

would incur the continuing application 

fees. 

In addition, applicants using the PCT 

system can consider the international 

search report (ISR) and the optional 

international preliminary examination 

report (IPER) during the international 

stage before filing either a national stage 

or a bypass application. 

While there may be outlier situations, 

this discussion illustrates that the 

commenters’ concerns about 

disproportionate effects on national 

stage applications and being unable to 

consider the merits of a bypass 

application until after the due date for 

the continuing application fees are 

largely unfounded. 

Comment 29: One commenter stated 

that the continuing application fees 

limit applicants’ rights to file continuing 

applications under 35 U.S.C. 120 and 

thus are punitive in nature. 

Response: The continuing application 

fees do not prevent applicants from 

filing as many continuing applications 

as they want at any time during the 

pendency of the parent application, nor 

are they punitive in nature. Instead, 

they are designed to recover more of the 

costs of examining continuing 

applications where maintenance fees on 

the issued patent are unlikely to be paid 

as a result of insufficient term. 

This final rule does not impose a fee 

under § 1.17(w) for continuing 

applications filed within six years of 

their EBD. About 80.3% of continuing 

applications are filed within six years of 

their EBD and thus will not incur the 


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fees. Only continuing applications filed 

more than six years after their EBD 

(about 19.7% of continuing applications 

or about 6.5% of all applications) will 

incur a continuing application fee based 

on today’s filing patterns. 

As explained in the response to 

comment 33, the continuing application 

fees reduce, but do not eliminate, the 

existing subsidy of front-end fees (i.e., 

filing, search, and examination fees) that 

patent applicants are currently 

receiving. As explained in Part V. 

Individual Fee Rationale of this rule, the 

agency maintains a low barrier to entry 

into the patent system by setting frontend fees below the unit cost of the 

corresponding front-end services (i.e., 

preexamination, search, and 

examination). The difference between 

front-end fees and front-end unit costs 

are subsidized by other fees (e.g., 

maintenance fees) that are set above 

their unit cost. 

As of FY 2023, this front-end subsidy 

amounted to $4,345 for an undiscounted 

entity. The subsidy was substantially 

higher for applicants paying discounted 

fee rates because their front-end fees are 

discounted 60% or more as compared to 

undiscounted rates while the unit costs 

of the corresponding services remain the 

same. For undiscounted entities, based 

on FY 2023 unit costs, the final rule’s 

increase of the front-end fee rates will 

reduce the subsidy to $4,165 for 

applications that are not subject to 

continuing application fees, $1,465 for 

continuing applications subject to the 

$2,700 fee under § 1.17(w)(1), and $165 

for continuing applications subject to 

the $4,000 fee under § 1.17(w)(2) fee. 

Thus, applications subject to continuing 

application fees will still receive a 

subsidy on their front-end fees, albeit 

lower than that given to non-continuing 

applications and continuing 

applications filed six or fewer years 

after their EBD. In addition to this 

subsidy of front-end fees, those 

applicants who are resource-constrained 

likely will also qualify for entity 

discounts, which afford a 60% (for 

small entity status) or 80% (for micro 

entity status) discount on most patent 

fees, further reducing the financial 

burden on such applicants. 

Comment 30: Commenters expressed 

their support for the proposed fees for 

continuing applications. One 

commenter noted that continuations are 

more likely to be litigated, and the fees 

will allow for comprehensive review of 

these applications. Other commenters 

stated that the continuing application 

fees were inappropriate, asserting that 

the USPTO’s costs of examining 

continuing applications are lower than 

the cost of examining non-continuing 

applications. 

Response: The agency’s costs for 

examining continuing applications are 

not necessarily lower than the costs of 

examining non-continuing applications. 

Examiners are provided the same 

amount of time to examine a continuing 

application as a non-continuing 

application; equal time equates to equal 

cost to the agency. Certain continuing 

applications, particularly divisional and 

continuation-in-part applications, may 

present different claimed inventions or 

more complex issues than a noncontinuing application. For example, as 

an applicant grows their application 

family by filing additional continuing 

applications over time, the 

determinations of which claims in the 

child application are supported under 

35 U.S.C. 112(a) by which parent 

applications may be more complex, and 

double patenting concerns may be more 

frequent and time-consuming to 

analyze. Moreover, as explained in the 

response to comment 29, even those 

applicants paying the continuing 

application fees are the beneficiaries of 

subsidized front-end fees that are set 

below front-end costs. 

Comment 31: Commenters expressed 

concerns about the timing thresholds for 

the continuing application fees, 

asserting there are substantial delays at 

the USPTO preventing applicants from 

being able to determine the scope of 

their first application’s claims before 

filing a continuing application subject to 

the fees. Thus, the commenters stated 

they would be unable to file a 

continuing application without having 

to pay the continuing application fees. 

The commenters pointed to the 

USPTO’s Patents Dashboard for patent 

pendency data in support of their 

comments. One commenter asserted that 

average pendency was about 2.5 years 

for non-continuing applications and five 

to six years for continuation and 

divisional applications. 

Response: The continuing application 

fees do not prevent applicants from 

filing as many continuing applications 

as they want at any time during the 

pendency of the parent application. See 

MPEP 211.01(b), which explains the 

copendency requirement for claiming 

the benefit of a nonprovisional 

application under 35 U.S.C. 120, 121, 

365(c) or 386(c). Applicants are not 

required to wait until their first 

application has been examined or 

allowed before filing a continuing 

application. Many applicants choose not 

to wait, as evidenced by the fact that 

about 38% of continuing applications 

are filed within two years of their EBD. 

Regarding concerns about timeliness 

of application examination, the 

commenter setting forth the 2.5 and 5– 

6 year time periods appears to have 

misunderstood the data provided on the 

Patents Dashboard, available on the 

USPTO website at https://

www.uspto.gov/dashboard/patents/. 

The dashboard reports data on Patents 

operations on an ongoing basis. Several 

different pendency metrics are reported 

and defined on the USPTO’s Patents 

pendency data web page, https://

www.uspto.gov/dashboard/patents/ 

pendency.html, including a metric 

called ‘‘Traditional Total Pendency’’ 

and two other metrics called ‘‘Pendency 

for Continuation Applications’’ and 

‘‘Pendency for Divisional Applications.’’ 

As noted in response to comment 28, 

Traditional Total Pendency is defined as 

the average number of months from the 

patent application filing date to the date 

the application has reached final 

disposition (e.g., issued as a patent or 

abandoned) and is inclusive of both 

continuing and non-continuing 

applications. As reported on the Patents 

Dashboard, over the two-year period 

ending in June 2024, Traditional Total 

Pendency fluctuated between 24 and 26 

months and as of June 2024 was 25.9 

months. In other words, the USPTO is 

reporting an average pendency from 

actual filing date to final disposition for 

both continuing and non-continuing 

applications of 25.9 months. The 

reported pendency of 25.9 months is 

several months shorter than the 30 

months suggested by the commenter. 

In contrast to Traditional Total 

Pendency, the Pendency for 

Continuation Applications and 

Pendency for Divisional Applications 

metrics reflect the total elapsed time 

from the filing of the first parent 

application through any intermediate 

parent applications to the final 

disposition of the continuation or 

divisional application. In other words, 

these latter two metrics are measuring 

the elapsed time from the EBD of a 

continuing application to the final 

disposition of the continuing 

application. It is expected that these 

latter two metrics would have higher 

results than Traditional Total Pendency 

because they reflect the pendency of an 

entire chain of continuing applications, 

not a single application. 

Thus, for an exemplary application Z, 

which is a continuation of Y, which is 

a continuation of X, the Traditional 

Total Pendency would be the time from 

Z’s filing to Z’s final disposition, but the 

Pendency for Continuation Applications 

would be the time from X’s filing to the 

final disposition of Z. The USPTO 

stopped reporting the Pendency for 


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Continuation Applications and 

Pendency for Divisional Applications 

metrics on its Patents Dashboard in 

April 2023. The last reported numbers 

for these metrics were 61.7 months for 

continuations and 69.1 months for 

divisionals, which reflect the elapsed 

time from the EBDs of the continuations 

or divisionals until their final 

dispositions. 

Based on the currently reported 

Traditional Total Pendency of 

approximately 26 months (as of June 

2024, the USPTO’s average Traditional 

Total Pendency was 25.9 months), even 

if there were delays on either or both the 

agency’s or the applicant’s side, 

applicants typically would still have 

several years to file continuing 

applications before the continuing 

application fees would apply, even if 

they delay filing of a continuing 

application until just before the final 

disposition of its parent. See the 

discussion of example applications A 

through F in the response to comment 

32. 

Comment 32: Commenters expressed 

concerns about the timing thresholds for 

the continuing application fees, 

particularly the threshold of five years 

after the EBD. Commenters stated that 

five years was insufficient time to 

benefit from the examination of a parent 

application, and thus the continuing 

application fees would negatively 

impact industries such as medical 

devices or biotechnology by 

encouraging applicants to file 

applications too early in the innovation 

process. Some commenters also 

expressed concern that the continuing 

application fees would stifle innovation 

by independent inventors, small 

businesses, or resource-constrained 

applicants. 

Response: The USPTO decided to 

modify the timing thresholds for the 

continuing application fees so they now 

apply only to those continuing 

applications having an actual filing date 

more than six or nine years after their 

EBD. These revised thresholds will 

afford applicants more time to benefit 

from examination of the parent 

applications and to file continuing 

applications without incurring the 

§ 1.17(w) fees before being faced with 

the decision of whether to file a 

continuing application that would incur 

the fees. 

This final rule does not impose a fee 

under § 1.17(w) for continuing 

applications filed within six years of 

their EBD. As about 80% of continuing 

applications are filed within six years of 

their EBD, the majority of continuing 

applications will not incur the fees. 

Moreover, applicants will now have six 

full years to consider the examination of 

the original non-continuing application 

and any intermediate applications 

before deciding whether to file a 

continuing application that would incur 

the fees. 

The USPTO is not aware of data that 

supports the commenters’ concerns 

about not having sufficient time to 

benefit from the examination of a parent 

application before incurring the fees or 

that certain industries or applicants will 

be negatively impacted because the fees 

will encourage them to file continuing 

applications too early or not at all. As 

previously noted, about 80% of 

continuing applications are filed within 

six years of their EBD, over half of 

which are filed within three years of 

their EBD. Thus, the majority of 

continuing applications, including those 

filed by independent inventors, small 

businesses, or resource-constrained 

applicants, will be unaffected by this 

rulemaking. 

For the approximately 19.7% of 

continuing applications filed more than 

six years after their EBD, this final rule 

is not expected to change applicant 

behavior to any significant degree. Some 

applicants may be encouraged to file 

and prosecute their portfolios more 

efficiently, perhaps by shifting a 

continuing application filing a few 

months earlier to avoid the fees or to 

reduce the fee amount. Other applicants 

may choose to present additional claims 

in earlier applications instead of filing 

additional continuing applications. As 

explained in the NPRM, the USPTO is 

not seeking to change applicant 

behavior with these fees but instead is 

motivated by the need to generate 

sufficient aggregate revenue to cover the 

aggregate cost of patent operations. The 

continuing application fees are thus 

designed to recover more costs related 

to continuing applications filed long 

after their EBD from the filers of such 

applications. 

Given that Traditional Total Pendency 

has ranged between 24 and 26 months 

over the last few years, typically an 

applicant can be at the point of filing 

their third or subsequent continuing 

application by the time the fees under 

§ 1.17(w) would apply. Consider the 

following examples, which show how a 

typical applicant can file and prosecute 

multiple applications (applications A, 

B, and C) before being faced with the 

decision of whether the filing of 

application D more than six years after 

its EBD is worth the additional cost of 

the § 1.17(w)(1) fee. For simplicity’s 

sake, the examples assume a Traditional 

Total Pendency of 26 months that 

remains the same throughout the 

examples and also assumes that all 

applications are utility applications. 

Example 1: Applications A, B, and C: 

Applicant files non-continuing application A 

on July 11, 2025. Application A issues 26 

months later in September 2027. On 

September 10, 2027, just prior to A’s 

issuance, applicant files continuing 

application B, which claims the benefit of A’s 

filing date under 35 U.S.C. 120. B issues 26 

months later in November 2029. On 

November 9, 2029, just prior to B’s issuance, 

applicant files continuing application C, 

which claims the benefit of A and B’s filing 

dates under 35 U.S.C. 120. C issues 26 

months later in January 2032. None of 

applications A, B, or C will owe a continuing 

application fee. A is not a continuing 

application, and B and C have actual filing 

dates that are less than six years after their 

EBD of July 11, 2025 (the filing date of A, 

which is the EBD to which B and C claim 

benefit under 35 U.S.C. 120). 

Example 2: Applications D and E: On 

January 8, 2032, just prior to C’s issuance, 

applicant files continuing application D, 

which claims the benefit of A, B, and C’s 

filing dates under 35 U.S.C. 120. D issues 26 

months later in March 2034. On March 7, 

2034, just prior to D’s issuance, applicant 

files continuing application E, which claims 

the benefit of A, B, C, and D’s filing dates 

under 35 U.S.C. 120. E issues 26 months later 

in May 2036. Applications D and E will owe 

the § 1.17(w)(1) fee, because their actual 

filing dates in January 2032 and May 2034 

are more than six years after their EBD of July 

11, 2025 (the filing date of A, which is the 

EBD to which D and E claim benefit under 

35 U.S.C. 120). 

Example 3: Application F: On May 6, 2036, 

just prior to E’s issuance, applicant files 

continuing application F, which claims the 

benefit of A, B, C, D, and E’s filing dates 

under 35 U.S.C. 120. F issues 26 months later 

in July 2038. Application F will owe the 

§ 1.17(w)(2) fee because its actual filing date 

in May 2036 is more than nine years after its 

EBD of July 11, 2025 (the filing date of A, 

which is the earliest benefit date to which F 

claims benefit under 35 U.S.C. 120). 

As these examples illustrate, a typical 

applicant can file at least two 

continuations in series without paying 

the continuing application fees, even if 

they wait until the last possible moment 

(e.g., issuance of the parent) before filing 

each continuing application. In reality, 

applicants need not wait until the last 

possible moment and may file multiple 

continuing applications at any point in 

time during the pendency of the 

immediate parent application. Further, 

when an applicant considers their 

innovation economically valuable 

enough to file multiple continuing 

applications over the course of many 

years, it is unlikely that they would 

consider the § 1.17(w) fees as an 

obstacle to filing the additional 

applications they consider necessary. 

Comment 33: Commenters suggested 

that the timing thresholds for the 


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continuing application fees were 

arbitrary or unfair or that the USPTO 

should exempt certain types of 

applications (e.g., divisional, 

continuation-in-part, or design 

applications) from the continuing 

application fees. 

Response: As explained in the NPRM, 

the continuing application fees will 

apply to all utility, plant, and design 

continuing applications, i.e., 

continuation, divisional, and 

continuation-in-part applications, 

which have an actual filing date that is 

more than a set number of years after 

their EBD. The continuing application 

fees are motivated by the need to 

generate sufficient aggregate revenue to 

cover the aggregate cost of patent 

operations and are designed to recover 

more costs related to continuing 

applications filed long after their EBD 

from the filers of such applications. 

The patent fee structure is designed to 

encourage innovation by maintaining 

low barriers to entry, which the agency 

accomplishes by keeping the front-end 

fees (filing, search, and examination 

fees) below the costs for the 

corresponding front-end services 

(preexamination, search, and 

examination). For example, for a utility 

application, current front-end fees 

($1,820 for undiscounted entities in FY 

2023) are set far below the USPTO’s 

average costs for filing, search, and 

examination activities ($6,165 in FY 

2023), and the difference is subsidized 

by other fee collections, primarily issue 

fees and maintenance fees. As of FY 

2023, for the average application, this 

subsidy (the difference between the 

USPTO’s costs and what an applicant 

pays) was $4,345 for an undiscounted 

entity, and even higher for those 

applicants paying discounted fee rates 

($5,501 for a small entity filing 

electronically, and $5,801 for a micro 

entity). 

After weighing public feedback and 

considering the effects on the patent 

system as a whole, the USPTO has 

decided to retain this existing subsidy 

amount and the resultant low barrier to 

entry for most continuing applications. 

The USPTO has adjusted the timing 

thresholds for the continuing 

application fees, which will now be 

prompted when the actual filing date of 

an application is more than six or nine 

years after its EBD. 

The USPTO notes that continuing 

applications filed long after their EBD 

have a direct impact on the agency’s 

ability to generate sufficient aggregate 

revenue. As explained in the NPRM, 

such applications are less likely to have 

a patent term long enough for the 

USPTO to recover the costs of their 

search and examination from 

maintenance fees. While not all 

patentees choose to maintain their 

patents for their full term, the USPTO’s 

ability to subsidize front-end fees is 

dependent on a sufficient number of 

patentees paying all three maintenance 

fees so that the aggregate revenue 

generated by patent fees will cover the 

aggregate costs of patent operations. 

As an example of how continuing 

applications filed long after their EBD 

are less likely to have a patent term long 

enough for the USPTO to recover the 

costs of their search and examination 

from maintenance fees, table 18 below 

shows the patent terms for each member 

of the exemplary patent family 

discussed in the response to comment 

32. As explained in the prior response, 

all of these patents have an EBD of July 

11, 2025, and a patent term that will 

expire in July 2045 (20 years after the 

EBD) assuming no patent term 

adjustments, patent term extensions, or 

terminal disclaimers apply. Due dates 

are expressed in months and years only 

and reflect the statutory due dates set 

forth in 35 U.S.C. 41(b). See MPEP 2506 

for more information about maintenance 

fee due dates. As shown in table 18 

below, applications D and E (which will 

incur the § 1.17(w)(1) fee for the reasons 

explained in the prior response) will not 

have a term long enough to require 

payment of the third maintenance fee to 

avoid expiration prior to the maximum 

statutory term, and application F (which 

will incur the § 1.17(w)(2) fee for the 

reasons explained in the prior response) 

will not have a term long enough to 

require payment of the second or third 

maintenance fee to avoid expiration 

prior to the maximum statutory term. 


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As noted previously, the § 1.17(w) 

fees are designed so that continuing 

applications filed six or fewer years 

after their EBD will continue to receive 

a front-end fee subsidy that is equal to 

that received by non-continuing 

applications. Thus, low barriers to entry 

into the patent system are preserved for 

non-continuing applications and for 

approximately 80% of continuing 

applications. For those continuing 

applications filed more than six years 

after their EBD, the § 1.17(w) fee will 

essentially reduce the amount of the 

front-end fee subsidy, in recognition 

that such applications are less likely to 

have a patent term long enough for the 

USPTO to recover the costs of their 

search and examination from 

maintenance fees. The § 1.17(w) fees are 

set at a rate that is both less than the 

front-end fee subsidy and substantially 

less than the third maintenance fee 

amount. For example, under the 

undiscounted fee rates as adjusted by 

this final rule, exemplary application D 

would pay the undiscounted 

§ 1.17(w)(1) fee of $2,700, and 

application F would pay the 

undiscounted § 1.17(w)(2) fee of $4,000, 

as compared to a front-end subsidy of 

approximately $4,165 (with front-end 

fees of $2,000 and combined FY 2023 

unit costs of $6,165 for filing, search, 

and examination activities) and an 

undiscounted third maintenance fee of 

$8,280. If these applications paid 

discounted fees, the difference would be 

even greater, e.g., if application D paid 

small entity fees, the § 1.17(w)(1) fee 

would be $1,080, as compared to a 

front-end subsidy of approximately 

$5,435 and a third maintenance fee of 

$3,312. 

Comment 34: Commenters expressed 

concern that the continuing application 

fees, particularly the higher fee 

proposed for applications filed more 

than eight years after the EBD, may 

encourage applicants to shift from filing 

continuing applications to filing 

appeals. They asserted that this shift 

could potentially overwhelm the appeal 

system or incur significant delays. 

Response: The USPTO modified the 

timing thresholds for the continuing 

application fees so they now will apply 

only to those continuing applications 

having an actual filing date more than 

six or nine years after their EBD. These 

revised thresholds will afford applicants 

more time to benefit from the 

examination of the parent applications 

and file continuing applications without 

incurring the § 1.17(w) fees before being 

faced with the decision of whether to 

file a continuing application that would 

incur the fees. 

The USPTO disagrees that the 

continuing application fees will result 

in the appeal system being 

overwhelmed or significantly delayed. If 

an applicant feels that an examiner has 

unjustly rejected their claim(s) and the 

differences in opinion can be justly 

resolved only upon appeal, then 

appealing may be the better choice for 

applicant and the overall patent system 

as compared to refiling the rejected 

claims in a continuing application. See 

MPEP 1201 et seq. for a discussion of 

appeal practice. As noted in the NPRM, 

continuations make up the majority of 

continuing applications, and about 80% 

of continuations have a patented parent, 

which is indicative that applicants are 

both obtaining allowable subject matter 

in a parent application and also filing 

continuing applications. 

Comment 35: Commenters asserted 

that the USPTO did not consider 

increases to the maintenance fees 

instead of introducing the continuing 

application fees. 

Response: As explained in the NPRM, 

the agency considered such an option. 

See, e.g., fee alternative 3 discussed in 

the NPRM at Part VII(B): Regulatory 

Flexibility Act. The USPTO decided not 

to pursue that alternative, choosing 

instead to increase maintenance fees in 

addition to introducing the continuing 

application fees. In particular, each 

maintenance fee amount is being 

increased about 7% to 8%; for instance, 

the undiscounted third maintenance fee 

is increasing from $7,700 to $8,280. The 

combined effect of the increased 

maintenance fees and the continuing 

application fees will help provide 

sufficient aggregate revenue to cover the 

aggregate costs of patent operations, 

while also enabling the agency to keep 

front-end fees below unit cost for all 

applications. If the USPTO did not 

charge the continuing application fees, 

it would need to raise other fees 

(particularly the issue and maintenance 

fees) even higher to offset costs and to 

generate sufficient aggregate revenue to 

cover the aggregate costs of patent 

operations, which would burden all 

applicants, not just those filing 

continuing applications long after their 

EBD. 

Design Application Fees 

Comment 36: Commenters expressed 

concern about the increased fees for 

design applications and questioned the 

cost rationale for the increases. Several 

commenters asserted that the fee 

increases will discourage applicants 

(particularly independent inventors, 

small businesses, or resourceconstrained applicants) from filing 

design applications. One commenter 

stated that the fee increases are punitive 

because design examination is less 

complicated than utility examination, 

and one commenter stated that the fees 

should not be increased until design 

pendency is lowered. 

Response: In setting the fee rates, the 

USPTO’s goal is not to dissuade design 

applications but to more closely align 

the fee rates with the costs of examining 

and issuing these applications and to 

support the hiring of additional design 

examiners to meet the agency’s 

pendency goals. 

While examination of design 

applications is less costly than 

examination of utility applications, the 

agency still incurs significant costs to 

provide design services. In FY 2023, the 

cost for preexamination, search, 

examination, and issuance activities, 

was $2,252 per design application, not 

including continued prosecution 

applications (CPAs), which have a 

higher cost of $2,947. The FY 2023 fees 

for an undiscounted applicant ($1,760 

in combined filing, search, examination, 

and issue fees) were far below these 

costs. Further, because the majority of 

design applications qualify for 

discounted fees (in FY 2023, 26% of 

applicants paid the micro entity fee 

amount, 37% paid the small entity fee 

amount, and only 37% paid the 

undiscounted fee amount), the design 

fee collections in the same year 

averaged only $1,013 per application. 

This imbalance resulted in a shortfall of 

$1,239 per application, representing 

55% of the cost, and design examination 

was subsidized by other fee collections, 

primarily utility maintenance fees. 

Historically, this difference between 

design fees and design costs did not 

result in a significant subsidy because 

the design fees were much higher 

relative to their costs, the annual 

volume of design applications was 

much lower than the annual volume of 

issued utility patents, and a greater 

proportion of design applicants were 

paying undiscounted fees. For example, 

in FY 2013, the subsidy was only 14%, 

because design costs were $1,446, the 

undiscounted design fees were $1,780, 

and about half of design applications 

were filed by undiscounted entities, 

resulting in an average shortfall/subsidy 

of about $200. Since that time, design 

costs have increased significantly, and 

design fees decreased sharply in 2014 

and have only recently come back to 

2013 levels (undiscounted design fees 

were only $1,320 in FY 2014, $1,660 in 

FY 2018, and $1,760 in FY 2023). 

Meanwhile, the number of design 

applications has surged 50%, virtually 

all from discounted entities. Notably, 

the total undiscounted design fees in FY 


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2023 were $20 less than in 2013 before 

adjusting for inflation and 27% less 

when adjusted for inflation as of June 

2024. See CPI Inflation Calculator, U.S. 

Bureau of Labor Statistics, https://

www.bls.gov/data/inflation_

calculator.htm (comparing March 2013 

to June 2024 to calculate buying power). 

With the fee increases, design fees for 

an undiscounted applicant ($2,600 in 

combined filing, search, examination, 

and issue fees) are now in between the 

cost of new design applications and 

CPA design applications, while the fees 

for discounted entities ($1,040 for a 

small entity, and $520 for a micro 

entity) remain far below cost. The 

increased fees should reduce the 

subsidy amount by about a third if all 

other variables remain the same. For 

example, if the application filing 

volume, entity spread, and cost remain 

the same as in FY 2023, the increased 

fees would result in design fee 

collections averaging $1,462 per 

application, thus reducing the shortfall 

to about $790 per application, which is 

about 35% of the cost. This expected 

decrease in the shortfall amount will 

reduce the subsidy from $1,239 to $790, 

which is a 36% decrease. 

The USPTO is conscious that fee 

increases affect resource-constrained 

applicants, and the agency will continue 

to offer the 60% discount for small 

entities and the 80% discount for micro 

entities, which reduces the impact of 

the fee increases on these entities. When 

these discounts are taken into account, 

the total fees paid by discounted entities 

through issuance of a design application 

under this final rule represent less than 

half of the USPTO’s FY 2023 cost per 

design application, including 

preexamination, search, examination, 

and issuance activities (small entities 

pay 46% of new design application 

costs and 35% of CPA costs, and micro 

entities pay 23% of new design 

application costs and 18% of CPA 

costs). 

The design fees maintain a low barrier 

to entry into the patent system while 

bringing in increased revenue to recover 

more design costs from design 

applicants. The USPTO has 

accomplished these goals by balancing 

relatively low front-end fees against the 

higher design issue fee and the reduced, 

but still large, subsidy from utility 

maintenance fees. While the front-end 

fees are set below cost, both the design 

issue fee and the utility maintenance 

fees are set above their unit cost. As a 

result of this balancing, the USPTO has 

managed to keep the front-end fees only 

$5 to $10 higher than they were set in 

2020 for design applicants qualifying for 

small or micro entity discounts. When 

the issue fee is included, the total fees 

paid by discounted entities are 13% 

more than inflation-adjusted 2013 fees 

would be. See CPI Inflation Calculator, 

U.S. Bureau of Labor Statistics, https:// 

www.bls.gov/data/inflation_

calculator.htm (comparing March 2013 

to June 2024 to calculate buying power). 

Comment 37: Commenters questioned 

why the design issue fee increase was 

greater than for other design fees, 

particularly in view of the switch to 

electronic patent issuance. 

Response: In FY 2023, the front-end 

costs (i.e., costs for the preexamination, 

search, and examination) of a design 

application were $1,713 for a new 

design application and $2,408 for a 

CPA, but the front-end fees were only 

$1,300 for an undiscounted entity, $520 

for a small entity, and $260 for a micro 

entity. In order to recover these costs 

plus the additional cost of issuance 

while also recovering a greater 

percentage of design costs from design 

applicants, the issue fee is set above its 

cost for undiscounted entities. Thus, 

while the design issue cost is $539, the 

design issue fees are $1,300 for an 

undiscounted entity, $520 for a small 

entity, and $260 for a micro entity. As 

of June 2024, the undiscounted issue fee 

of $1,300 is 6% lower than the inflationadjusted 2013 issue fee would be. See 

CPI Inflation Calculator, U.S. Bureau of 

Labor Statistics, https://www.bls.gov/ 

data/inflation_calculator.htm 

(comparing March 2013 to June 2024, to 

calculate buying power). As explained 

in other responses, these fees maintain 

a lower barrier to entry into the patent 

system while also increasing design fee 

collections and reducing the subsidy 

required for the average design 

application. Moreover, despite the 

switch to electronic patent issuance in 

April 2023 the unit cost for issuing a 

patent decreased only slightly from 

$574 in FY 2022 to $539 in FY 2023. 

Comment 38: Commenters suggested 

that the USPTO should increase utility 

maintenance fees to pay for design costs 

or should seek legislative solutions such 

as maintenance fees for design patents 

instead of increasing design patent fees. 

Response: The agency already relies 

on utility maintenance fees, which are 

increased in this final rule, to subsidize 

a significant portion of design costs. As 

explained in other responses, assuming 

that the application filing volume, entity 

spread, and cost remain the same as in 

FY 2023, the average subsidy for design 

applications will be about $790 per 

application, which is about 35% of the 

cost. The subsidy amount is even higher 

for discounted entities, e.g., about 

$1,212 or 54% of the cost for small 

entities, and $1,732 or 77% of the cost 

for micro entities. As explained in the 

NPRM and this final rule, the design fee 

increases will more closely align the fee 

rates with the agency’s costs, which 

should reduce the current imbalance 

between fees and costs. The design fees 

will also support the hiring of 

additional design examiners to meet the 

agency’s pendency goals. With respect 

to legislative solutions such as 

maintenance fees for design patents, 

such changes are beyond the scope of 

this rulemaking. 

Comment 39: One commenter 

suggested that the USPTO could reduce 

costs instead of raising fees by allowing 

applicants to submit design patent 

applications with multiple designs per 

application instead of a single design 

per application, as required under 

current practice. 

Response: Changes to design 

application practice are beyond the 

scope of this rulemaking. Currently, 

more than one embodiment of a design 

may be claimed so long as such 

embodiments involve a single inventive 

concept according to the obviousnesstype double patenting practice for 

designs. 

Comment 40: One commenter stated 

that USPTO design fees are much higher 

than those in other jurisdictions such as 

the European Union. 

Response: The agency conducts 

substantive examination of design 

applications, whereas most other 

national or regional IP offices do not. 

Substantive examination requires 

significant time from a highly trained 

patent examiner. Additionally, most 

other national or regional IP offices 

require design patent holders to pay 

annuity or renewal fees to maintain 

their property rights, which drives up 

the cost of obtaining and maintaining a 

design patent. When these annuity or 

renewal fees are taken into account, 

USPTO fees for undiscounted entities 

are comparable to, or less expensive 

than, the fees charged by other large 

patent offices and, for discounted 

entities, the USPTO fees are much 

lower. 

Comment 41: Commenters suggested 

that the USPTO could reduce costs 

instead of raising fees by addressing 

improper micro entity assertions. 

Response: The agency has robust 

diligence procedures in place to identify 

anomalies in patent filings and in the 

last several years has identified 

questionable or apparently erroneous 

certifications of eligibility for micro 

entity status in applications, 

particularly in the design area. See, e.g., 

the USPTO Director’s blog entry from 

September 2021, titled ‘‘Ensuring the 

validity of micro entity certifications— 


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which provide reduced fees to eligible 

inventors and small businesses,’’ 

available on the USPTO website at 

https://www.uspto.gov/blog/ensuringthe-validity-of-micro. As explained in 

that blog entry, when the agency 

becomes aware of such questionable 

certifications, it takes remedial actions 

including mailing Notices of Additional 

Fees Due in the applications. However, 

because applications with questionable 

certifications remain a small fraction of 

incoming filings, addressing these 

issues does not negate the need for 

additional fee revenue that will be 

provided by this final rule. 

Excess Claims Fees 

Comment 42: One commenter 

expressed support for the increased fees 

for excess claims, noting that as larger 

numbers of claims are filed in a single 

application, examiners need to spend 

additional time reviewing the claims, 

conducting prior art searches, and 

assessing patentability. Other 

commenters expressed concern about 

the increased fees for excess claims and 

asserted that the USPTO did not provide 

a sufficient cost-based rationale for the 

increases. 

Response: The agency incurs 

additional costs associated with 

examining excess claims. The USPTO 

has determined the resources necessary 

to carry out search and examination of 

applications based on the statutory 

thresholds for excess claims (no more 

than 20 total claims, of which no more 

than three are independent) and on 

applicant claiming trends, which 

indicate that the majority of 

applications do not contain excess 

claims. In FY 2023, 83% of applications 

did not contain any excess claims and 

17% contained excess total claims, 

excess independent claims, or both 

(10% contained excess total claims 

only, 3.1% contained excess 

independent claims only, and 3.5% 

contained both excess total claims and 

excess independent claims). These 

percentages are in line with historical 

values over the last decade. 

The USPTO notes that excess 

claiming can be a significant burden to 

the patent system and the agency. The 

number of claims impacts the 

complexity of examination and 

increases the demands placed on the 

examiner. For example, if each 

independent claim in an application 

requires a completely separate prior art 

patentability determination and if an 

application contains six independent 

claims, the examiner must conduct six 

completely separate prior art 

patentability determinations. Excess 

dependent claims also represent 

additional work, as a dependent claim 

may be allowable over the prior art even 

if the claim from which it depends is 

not, and dependent claims also require 

separate patentability determinations for 

non-prior art based issues such as 

enablement, subject matter eligibility, 

utility, and written description. Thus, 

applicants who include excess claims 

are using the patent system more 

extensively than those who do not. 

The USPTO accordingly determined 

that the cost to review applications 

containing excess claims should not be 

subsidized with other back-end fees to 

the same extent as applications that do 

not contain excess claims. While the 

subsidization of front-end fees is 

important for promoting innovation, it 

is also important to align fees with the 

full costs of products and services, 

because some applicants (here, 

applicants presenting excess claims) are 

using particular services in a more 

costly manner than other applicants. As 

explained in the NPRM, current frontend fees ($1,820 for undiscounted 

entities in FY 2023) are set far below the 

USPTO’s average costs for filing, search, 

and examination activities ($6,165 in FY 

2023), and the difference is subsidized 

by other fee collections, primarily issue 

fees and maintenance fees. As of FY 

2023, for an average application that 

does not contain excess claims, this 

subsidy (the difference between the 

agency’s costs and what an individual 

applicant pays) is $4,345 for an 

undiscounted entity and even higher for 

applicants paying discounted fee rates 

($5,501 for a small entity filing 

electronically, and $5,801 for a micro 

entity). Applications containing excess 

claims have higher costs, and if those 

costs are not recouped by excess claims 

fees paid by the applicants presenting 

the excess claims, they will be 

subsidized by other applicants who 

must, in turn, pay higher fees for other 

services, thus driving the subsidy for 

applications containing excess claims 

higher than the current $4,345–$5,801 

amounts. The excess claims fees 

account for the increased subsidy. 

The excess claims fees are also 

designed to ensure that most applicants 

presenting excess claims will be able to 

do so for less than the cost of filing a 

second application. In FY 2023, 86% of 

applications contained no excess total 

claims, 11% contained 10 or fewer 

excess claims, and only 3% contained 

more than 10 excess claims. 

For the 11% of applications 

containing 10 or fewer excess claims, 

the average was five excess claims. In 

these applications, it would remain 

either the same cost or be less expensive 

to pay the excess total claims fees as 

opposed to filing a second application. 

For example, for an undiscounted 

entity, 10 excess total claims at $200 

each would be $2,000 in excess total 

claims fees, which will be the same as 

the combined filing, search, and 

examination fees for filing an 

application as adjusted by this final 

rule. The average number of excess 

claims for these applications was only 

five, so paying the excess total claim 

fees would be much less expensive than 

a second application. As an example, for 

an undiscounted entity, five excess total 

claims at $200 each would be $1,000 in 

excess total claims fees. 

For the 3% of applications containing 

more than 10 excess total claims, the 

average was 34 excess claims. Thus, for 

this group of applications, it would be 

more expensive to pay the excess total 

claims fees as opposed to filing a second 

application. This increased expense 

reflects that these applications are, on 

average, presenting more than the 

number of claims that would be covered 

by the fees for filing a second 

application. Notably, about one-third of 

these applications (10% of all 

applications containing excess total 

claims, or 1% of all applications) 

contained an average of 59 excess 

claims, which is more than would be 

covered by the fees for filing two 

additional applications. 

The USPTO’s goal is to more closely 

align the fee rates with the cost of 

examining excess claims. Higher fees for 

excess claims will provide more 

revenue to help recover the additional 

search and examination costs associated 

with excess claims as well as 

prosecution costs not covered by frontend fees. These fees will also promote 

compact prosecution and address the 

inequities of providing further subsidies 

to those who make greater use of the 

patent system. If the USPTO does not 

increase the excess claims fees, it 

would, in effect, increase the 

subsidization of excess claims by other 

fees, requiring increases in other fees 

(particularly issue and maintenance 

fees) to offset the costs associated with 

excess claims at lower fee rates and to 

generate sufficient aggregate revenue to 

recover the aggregate costs of patent 

operations. 

Comment 43: Commenters stated that 

the increased fees for excess claims will 

discourage applicants from filing 

applications, particularly continuations 

or applications with broad disclosures, 

thereby weakening patent rights and 

limiting applicants’ freedom to pursue 

additional patent claims. 

Response: The agency is not limiting 

the number of claims that applicants 

may file in their applications. The 


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USPTO notes that excess claiming can 

be a significant burden to the patent 

system and the agency. As discussed in 

other responses, the number of claims 

impacts the complexity of examination 

and increases the demands placed on 

the examiner. Applicants continue to 

have the opportunity to include excess 

claims when they consider it necessary 

to obtain an appropriate scope of 

coverage for an invention. The increased 

fees ensure that applicants who make 

greater use of the patent system bear 

more of the cost of the additional 

burden they are placing on the USPTO. 

The vast majority of applications 

contain either no excess total claims 

(86% of applications), or up to 10 excess 

claims (11% of applications, which on 

average contain five excess claims), and 

thus the increased fees for excess claims 

are unlikely to negatively impact the 

patent system as a whole. As explained 

in other responses, there is additional 

burden on the USPTO associated with 

examining excess claims; thus, the 

excess claims fee revenue will at least, 

in part, recover costs for this additional 

burden. Filing applications with the 

most prudent number of unambiguous 

claims enables prompt conclusion of 

application processing because more 

succinct applications facilitate faster 

examination. Therefore, the USPTO is 

increasing excess claims fee rates to 

facilitate an efficient and compact 

application examination process, which 

benefits the applicant and the USPTO 

through more effective administration of 

patent prosecution. 

Comment 44: Commenters stated that 

the increased fees for excess claims did 

not reflect the realities of prosecution 

practices. For example, some applicants 

may choose to recite different species in 

separate claims rather than as 

alternatives in a single claim, or some 

applicants may choose to present 

multiple inventions in the same 

application. One commenter also 

suggested a refund system in which 

excess claims fees are returned when 

claims are canceled in response to a 

restriction requirement or when claims 

are canceled by an applicant. 

Response: As set forth in MPEP 804, 

claims that are unrelated (e.g., 

unconnected in design, operation, and 

effect) are generally subject to 

restriction. Because independent claims 

in most applications are at least related, 

restriction requirements are usually 

based on a determination by the 

examiner that the claims are distinct. 

Therefore, the commenter’s observation 

offers little relief from the burden 

imposed by excess claims, particularly 

excess independent claims. With regard 

to refunds, the USPTO already refunds 

excess claims fees when the application 

is abandoned prior to examination. See 

§ 1.138(d) and MPEP 607.02, subsection 

V & 711.01, subsection III. Canceling 

claims after restriction impacts an 

applicant’s rights to rejoinder, and it is 

common for applicants who receive a 

restriction requirement to leave nonelected claims pending. In addition, 

allowing applicants to obtain a refund if 

they cancel claims after rejoinder is 

considered requires examiners to 

consider rejoinder as to the withdrawn 

claims, which can be costly. 

Comment 45: Commenters expressed 

concern about which USPTO activities 

would be funded by the excess claims 

fees and asserted that these fees should 

be used to fund the examination process 

only and not for any other activities. 

Response: As explained in the NPRM 

in parts IV(B): Fee Setting 

Considerations and V: Individual Fee 

Rationale, the USPTO sets or adjusts 

patent fees to recover the aggregate 

estimated costs for processing, 

activities, services, and materials 

relating to patents, including 

administrative costs with respect to 

such patent fees. The patent fees will 

recover the aggregate estimated costs of 

patent operations while enabling the 

USPTO to predictably finance the 

agency’s daily operations and mitigate 

financial risks. As explained in the 

NPRM, some proposed fees are set at, 

above, or below their unit costs to 

balance four key fee setting policy 

factors: (1) promoting innovation 

strategies, (2) aligning fees with the full 

costs of products and services, (3) 

facilitating effective administration of 

the U.S. patent system, and (4) offering 

application processing options. For 

example, the agency sets many initial 

filing fees below unit cost to promote 

innovation strategies by removing 

barriers to entry to the patent system. To 

balance the aggregate revenue loss of 

fees set below cost, the USPTO must set 

other fees above cost in areas less likely 

to reduce inventorship (e.g., 

maintenance). 

For some fees proposed in the NPRM 

and set in this final rule, such as excess 

claims fees, the USPTO does not 

maintain individual historical cost data 

for services provided; instead, the 

agency considers the policy factors 

described in Part IV: Rulemaking Goals 

and Strategies of this rule to inform fee 

setting. For example, facilitating 

effective administration of the U.S. 

patent system enables the USPTO to 

foster an environment where USPTO 

personnel can provide and applicants 

can receive prompt, quality interim and 

final decisions; encourage the prompt 

conclusion of prosecuting an 

application, resulting in pendency 

reduction and faster dissemination of 

patented information; and help recover 

costs for activities that strain the patent 

system. As explained in other 

responses, there is additional burden on 

the USPTO associated with examining 

excess claims; thus, the excess claims 

fee revenue will at least, in part, recover 

costs for this additional burden. To the 

extent that the excess claims fee revenue 

might exceed the direct cost of 

examining excess claims, such revenue 

will be used to recover the aggregate 

estimated costs of other processing, 

activities, services, and materials 

relating to patents. 

Comment 46: One commenter 

suggested that the USPTO implement a 

tiered approach to excess claims fees 

instead of the current approach under 

which each excess claim incurs the 

same fee. 

Response: This rulemaking does not 

modify the statutory thresholds for 

excess claims, which are set in 35 U.S.C. 

41(a)(2). The rulemaking simply adjusts 

the fee for submitting claims in excess 

of those thresholds (more than 20 claims 

total or more than three independent 

claims). 

Information Disclosure Statement Size 

Fees 

Comment 47: One commenter 

expressed support for the IDS size fees 

as necessary to support the additional 

examination resources needed to review 

large numbers of references submitted 

by applicants. The commenter also 

stated that the IDS size fees will 

incentivize applicants to be more 

selective in submitting references, 

which will benefit clarity of the record. 

Other commenters also stated the fees 

may encourage applicants to submit 

fewer references but asserted that this 

result will be detrimental to patent 

quality and will potentially disparately 

affect small and micro entities, 

applicants who file families of 

applications, or applicants who file 

applications in certain technology areas. 

Response: Reviewing large numbers of 

references imposes an additional burden 

on the agency. As noted in the NPRM, 

the vast majority (approximately 87%) 

of applications will not be affected by 

these fees because they contain 50 or 

fewer applicant-provided items of 

information. Based on FY 2021 data, 

only 13% of applications contained 

more than 50 applicant-provided items 

of information: about 5% of applications 

contained 51 to 100 applicant-provided 

items of information, about 4% of 

applications contained 101 to 200 

applicant-provided items of 

information, and only 4% of 


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applications contained more than 200 

applicant-provided items of 

information. 

As noted in the NPRM, small and 

micro entities should not be 

disproportionately impacted by these 

fees, as small entities accounted for only 

25% of applications that would incur a 

fee in FY 2022, while micro entities 

made up less than 1%. One commenter 

apparently misunderstood this 

statement as implying that 1 in 4 small 

and micro entities would be affected by 

the new fee. The NPRM was referring to 

the entity spread, i.e., what proportion 

of applications that would incur an IDS 

size fee were filed by undiscounted 

entities (about 74%), small entities 

(about 25%), or micro entities (less than 

1%). When compared to all utility 

application filings in FY 2022, only 1 in 

62 applications filed by micro entities 

and 1 in 7.5 applications filed by small 

entities would incur an IDS size fee. 

With respect to families of 

applications, under current IDS practice 

an examiner will consider items of 

information that were considered in a 

parent application when examining a 

child application (e.g., a continuation, 

continuation-in-part, or divisional 

application) without any action required 

on applicant’s part. See MPEP 609.02 

for information about this practice. 

Thus, for an application family that 

comprises a parent application and a 

child application, an item of 

information that the applicant cited in 

the parent application will not be 

counted in the child application for 

purpose of the IDS size fees unless it is 

resubmitted by the applicant on an IDS 

in the child application. 

Additionally, for both large families of 

applications and for those in certain 

technologies where applicants tend to 

cite more references than others, the 

USPTO notes that although § 1.56 

clearly imposes a duty to disclose 

material information, that rule neither 

authorizes nor requires filing 

unreviewed or irrelevant documents 

with the USPTO. Such documents add 

little to the effectiveness of the 

examination process and could 

negatively impact the quality of the 

resulting examination. The USPTO 

encourages applicants to avoid 

submitting long lists of documents if 

possible, such as by eliminating clearly 

irrelevant and marginally pertinent 

cumulative information. MPEP 2004, 

item 13. If the applicant or patent owner 

does submit a long list of references, the 

USPTO encourages them to ‘‘highlight 

those documents which have been 

specifically brought to applicant’s 

attention and/or are known to be of 

most significance.’’ MPEP 2004, item 13. 

To the extent that the IDS size fees may 

encourage some applicants to filter out 

irrelevant or cumulative information 

prior to submission, the examiners of 

those applications will be able to focus 

on the more relevant information and 

perform a more efficient and effective 

examination, thus benefiting the patent 

system as a whole. 

Large IDS submissions are a 

significant burden to the patent system 

and the agency. The number of items of 

information submitted impacts the 

complexity of examination and 

increases the demands placed on the 

examiner. It costs the agency millions of 

dollars each year to provide examiners 

the additional time necessary to review 

large IDS submissions. Thus, applicants 

who submit large IDS submissions are 

using more USPTO resources than those 

who do not. The IDS size fees will 

provide more revenue to help recover 

the additional costs associated with 

large IDS submissions and address the 

inequities of providing subsidies to 

those who use more resources. If the 

USPTO did not charge these IDS size 

fees, it would in effect be increasing the 

subsidization of large IDS submissions 

by other fees and be required to raise 

other fees (particularly issue and 

maintenance fees) to offset the costs and 

generate sufficient aggregate revenue to 

cover the aggregate estimated costs of 

patent operations. 

Comment 48: Commenters suggested 

that legislative solutions such as 

inequitable conduct reform would be 

preferable to IDS size fees when 

addressing the issue of applicants who 

submit more than 50 cumulative items 

of information in an application. 

Response: The suggestion of 

legislative solutions is beyond the scope 

of this rulemaking. 

Comment 49: Commenters suggested 

that it is not or should not be 

burdensome for the USPTO to review 

large numbers of references because the 

agency could use search and analysis 

tools to determine which references are 

most relevant. 

Response: The agency is actively 

pursuing a number of initiatives 

involving advanced technologies and 

tools for increasing patent examination 

quality and efficiency such as the AIbased ‘‘More Like This’’ and ‘‘Similarity 

Search’’ features in the PE2E search 

suite, available on the USPTO website at 

https://www.uspto.gov/web/offices/com/ 

sol/og/2022/week02/TOC.htm#ref10 

and https://www.uspto.gov/sites/ 

default/files/documents/ai-simsearch.pdf. The development and 

refinement of these technologies and 

tools require substantial investment by 

the agency and even when completed 

will not eliminate the need for an 

examiner to consider an applicant’s 

cited references. 

Comment 50: One commenter 

objected to the new content requirement 

in § 1.98(a) that an IDS contain a clear 

written assertion that the IDS is either 

accompanied by the appropriate IDS 

size fee or that no IDS size fee is 

required, stating that this requirement 

places a high burden on applicants. 

Response: As noted in the NPRM, this 

assertion is necessary to implement the 

IDS size fee because it ensures the 

record is clear as to which fee the 

applicant or patent owner believes may 

be due (or that no fee may be due), 

allowing the examiner to promptly 

ascertain whether the IDS is compliant. 

Including this assertion will greatly 

reduce the need for the USPTO to spend 

additional funds developing tools 

specifically to detect whether an IDS 

size fee is due in a particular 

application. The vast majority of 

applications (approximately 87%) 

contain fewer than 50 applicant-cited 

items of information, and 77% contain 

fewer than 25. Thus, it should not be 

burdensome for most applicants to 

check the appropriate box on the PTO 

form or to include a short statement 

saying that no IDS size fee is due. For 

those applications containing more than 

50 applicant-cited items of information, 

it should not be unduly burdensome for 

an applicant to keep track of how many 

items of information they have 

submitted in a particular application 

and to make the appropriate assertion 

when submitting an IDS. 

Comment 51: One commenter 

suggested that the USPTO should 

eliminate the requirement for applicants 

to provide copies of the items of 

information cited in an IDS. 

Response: Changes to IDS practice are 

beyond the scope of this rulemaking. 

Currently, applicants are not required to 

submit copies of U.S. patent application 

publications or U.S. patents because 

these documents are already available to 

the USPTO. See § 1.98 and MPEP 609 

for more information about the required 

contents of an IDS. 

Comment 52: One commenter 

suggested that the IDS size fees will 

undermine clarity of the record unless 

the USPTO exempts items of 

information that were cited in parent 

applications and that are resubmitted by 

applicants in the child application from 

being counted in the cumulative 

number of applicant-provided items of 

information. 

Response: Changes to IDS practice are 

beyond the scope of this rulemaking. 

Under current IDS practice, an examiner 

will consider items of information that 


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were considered in a parent application 

when examining a child application 

(e.g., a continuation, continuation-inpart, or divisional application) without 

any action required from the applicant. 

See MPEP 609.02 for information about 

this practice. The IDS size fees will not 

undermine the clarity of the record 

because examiners will continue to 

follow current IDS practice with respect 

to considering items of information that 

were cited in parent applications. An 

item of information that an applicant 

cited in a parent application will not 

count towards the number of 

information items in a child application 

for purposes of the IDS size fees unless 

it is resubmitted by the applicant on an 

IDS in the child application. Thus, 

applicants who wish to avoid paying the 

IDS size fees in a child application for 

items of information considered in a 

parent application may do so by not 

resubmitting the items. 

Patent Term Adjustment Fees 

Comment 53: Commenters stated the 

proposed targeted increase from $210 to 

$300 for filing an application for patent 

term adjustment (PTA) under § 1.705(b) 

was too large. 

Response: The agency considered 

public feedback on the proposed 

targeted increase and opted not to 

proceed with this proposal. Instead, the 

PTA fee is increasing from $210 to $226 

in this final rule in accordance with the 

across-the-board adjustment applied to 

most patent fees. 

Patent Term Extension Fees 

Comment 54: Commenters requested 

that the USPTO offer entity discounts 

for patent term extension (PTE) fees 

because the proposed fee increases were 

substantial. 

Response: While the USPTO is 

committed to helping small and micro 

entity filers, the agency’s authority to 

reduce fees for small and micro entities 

is limited to the six categories specified 

in section 10(b) of the AIA (i.e., filing, 

searching, examining, issuing, 

appealing, and maintaining patent 

applications and patents). Since PTE 

services are outside of the six categories, 

those fees are not eligible for discounts 

absent a change in statutory authority. 

Comment 55: Commenters stated that 

the USPTO should not propose such a 

large increase to PTE fees without the 

supporting cost data to justify the 

proposal. One commenter suggested that 

the USPTO wait to propose an increase 

to PTE fees until there is data to back 

up the expectation that the unit cost 

determined by the ABI program will 

more closely align with the actual cost. 

Response: After considering the 

comments, the agency has chosen not to 

implement the proposed fee of $6,700 

for filing a PTE application. Instead, the 

fee for an application for extension will 

be set at $2,500. This amount is between 

the FY 2022 unit cost and FY 2023 unit 

cost for the service. All other PTE fees 

will be adjusted in accordance with the 

levels outlined in the NPRM. 

Comment 56: Commenters expressed 

concerns about the increased fee for 

filing a PTE application. 

Response: The agency considered the 

public feedback on the proposed 

increase of the fee for filing a PTE 

application as set forth in § 1.20(j)(1) 

and determined that the fee for this 

service should be increased to cover the 

costs of providing this service. The 

USPTO carefully considered all of the 

comments and, in response, opted not to 

implement the proposed fee of $6,700, 

instead setting the fee at $2,500. This 

new amount is in line with the reported 

unit costs for this service, which were 

$2,581 in FY 2022 and $2,078 in FY 

2023. This new fee will improve the 

agency’s cost recovery for this service 

and reduce the current subsidization of 

this service by other patent fees. 

Comment 57: One commenter stated 

that the fee for supplemental 

redetermination after a notice of final 

determination should be refunded if the 

USPTO’s initial determination was 

deemed to be incorrect. 

Response: The comment indicates a 

misunderstanding of the nature of this 

service. The new fee for supplemental 

redetermination after a notice of final 

determination is not related to 

correcting errors. Instead, the fee will 

recover the additional costs the USPTO 

incurs when a PTE applicant chooses to 

wait to file a response that includes a 

terminal disclaimer until after the 

agency has issued its notice of final 

determination. The submission of 

terminal disclaimers affects the patent 

term, and submission at this late stage 

in the PTE process requires the USPTO 

to engage in a substantial amount of 

rework to recalculate the applicable PTE 

and make a supplemental 

redetermination of the appropriate 

extension in view of the disclaimer. If 

a PTE applicant wishes to avoid this fee, 

they are encouraged to submit terminal 

disclaimers earlier in the PTE process. 

Comment 58: Commenters objected to 

increases to PTE fees, asserting the 

proposal would disproportionately 

impact the life sciences industry. 

Response: By statute, the products 

eligible for PTE services under 35 U.S.C. 

156 are limited to human drug products, 

medical devices, animal drugs, and food 

or color additive products, all of which 

are regulated by the FDA, and veterinary 

biological products, which are regulated 

by the USDA. While PTE fees are only 

relevant for certain products, the costs 

of providing PTE services are currently 

subsidized by other patent fees paid by 

non-PTE service users. These increases 

will improve the agency’s cost recovery 

and recover PTE costs directly from PTE 

service users, thus reducing the burden 

of these fees on other entities. Further, 

the costs for regulatory approval of these 

products are extremely high. When 

compared to either FDA user fees or the 

research and development costs 

required to develop a new drug and 

obtain marketing approval, the proposed 

fees to obtain a patent term extension 

for the patent covering such a new drug 

are quite small, and therefore higher 

PTE fees should not impact the level of 

innovation in this industry.2

Request for Continued Examination 

Fees 

Comment 59: Commenters expressed 

concerns about the increased fees for 

RCEs, particularly the proposal to 

trifurcate the RCE fees, and disagreed 

with the USPTO’s cost rationale. One 

commenter stated that all prosecution 

costs after the initial final rejection are 

relatively low, and one commenter 

asserted that examination costs decrease 

with subsequent RCEs. Another 

commenter stated that the USPTO does 

not incur any additional costs for 

subsequent RCEs, and several 

commenters asserted that the increased 

fees were an attempt to dissuade 

applicants from filing RCEs, rather than 

a means to recoup costs. 

Response: The agency considered the 

public feedback on the proposed 

trifurcation of the RCE fees and decided 

not to proceed with this proposal. 

Instead, the USPTO will retain the 

existing bifurcated RCE fee structure, in 

which the first RCE is charged at a lower 

rate than the second and subsequent 

RCEs. For more information on the 

adjusted fee rates for the first RCE and 

second and subsequent RCEs, see Part 

V: Individual Fee Rationale of this rule. 

Comment 60: One commenter 

expressed support for the increased RCE 

fees, stating that the increases will 

incentivize applicants to seek an earlier 

close to patent prosecution, including 

through appeals. Other commenters also 

stated the fees might encourage 

applicants to shift from filing RCEs to 

filing appeals. They stated that this shift 

could overwhelm the appeal system or 

cause significant delays. Another 

commenter stated that the fees might 

encourage applicants to file more 

continuation applications instead of 

RCEs. 


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Response: The agency agrees with the 

commenters that increased fees for 

second and subsequent RCEs might 

encourage some applicants to shift from 

filing successive RCEs in favor of appeal 

or reaching agreement with an 

examiner. However, the USPTO 

disagrees that the increased fees will 

result in the appeal system being 

overwhelmed or significantly delayed. 

The appeal process at the USPTO 

begins with an applicant’s filing of a 

notice of appeal and payment of an 

appeal fee. Currently, an applicant may 

request a pre-appeal brief conference 

review and, if so, may include a short 

paper presenting arguments on the 

appealable issues with their request. 

The pre-appeal brief conference 

program provides a relatively prompt 

review of the appealable issues in the 

application by a panel of examiners at 

no additional cost to the applicant 

(other than the notice of appeal fee that 

is required for all appeals). If 

prosecution of the application is 

reopened after the conference, the 

applicant will have a further 

opportunity to prosecute in front of the 

examiner and would not need to file an 

appeal brief. If the application remains 

under appeal, the applicant would then 

file an appeal brief if they wish to 

continue with the appeal. Upon receipt 

of an appeal brief, USPTO personnel 

conduct an internal appeal conference 

to determine whether to proceed with 

an examiner’s answer, allow the 

application, or reopen prosecution. 

Based on historical data from FY 2010 

to 2020, only 43% of applications in 

which a notice of appeal is filed result 

in an examiner’s answer. After the 

examiner’s answer, the applicant has 

the opportunity to file a reply brief, and 

upon payment of the appeal forwarding 

fee, the application is forwarded to the 

Board for decision on the appeal. The 

applicant may also exit the appeal 

process by withdrawing the appeal, 

filing an RCE, or abandoning the 

application. 

Currently, the pendency of an appeal 

is relatively short, and the inventory of 

pending appeals is at historically low 

levels. As of the second quarter of FY 

2024, pendency of a decided appeal— 

the period between the assignment of an 

appeal number and the mailing date of 

the decision—was 11.9 months. In 

addition, since the USPTO first 

bifurcated RCE fees in FY 2013, the 

PTAB has reduced the inventory of 

pending appeals from 25,437 to 4,231 at 

the close of FY 2023. If each of the 9,863 

third and subsequent RCEs expected to 

be filed in FY 2025 (as estimated in the 

aggregate revenue tables prepared for 

the NPRM) were instead a notice of 

appeal, this would result in 

approximately 4,241 additional 

examiner’s answers being mailed (based 

on the historical 43% rate) and a 

somewhat lower number of applications 

eventually forwarded to the Board. 

While this scenario would noticeably 

increase the PTAB’s workload, the 

resultant number of appeals would still 

be far below historical levels even if 

every applicant who would otherwise 

have filed a third or subsequent RCE 

chooses to enter the appeal process 

instead of paying an increased RCE fee. 

It is unlikely that an applicant 

motivated primarily by costs would 

necessarily file an appeal instead of 

paying the RCE fees. The undiscounted 

fee for a second and subsequent RCE is 

$2,860, and an applicant’s non-USPTO 

costs for the RCE may be very low, as 

many RCEs are filed with only an IDS 

or a request to reconsider a previously 

submitted response. In contrast, the 

undiscounted appeal fees are $3,440, 

including the notice of appeal and 

appeal forwarding fee; in addition, the 

applicant’s non-USPTO costs for an 

appeal are likely significantly higher 

than for an RCE. For example, the 2023 

Report of the Economic Survey, 

published by the Committee on 

Economics of Legal Practice of the 

American Intellectual Property Law 

Association (AIPLA) and available at 

https://www.aipla.org/home/newspublications/economic-survey, indicates 

that the mean cost (exclusive of USPTO 

fees) for an appeal without oral 

argument is $5,269, while fees for an 

amendment and/or argument 

responding to an Office action range 

from $2,364 to $3,972 (depending on the 

technology and complexity of the 

invention), and the fee for an IDS with 

less than 50 references is $473. When 

these non-USPTO costs are taken into 

consideration, a subsequent RCE might 

be significantly less expensive than an 

appeal. Compare, for example, the total 

of $8,709 for an appeal without an oral 

argument ($3,440 in USPTO fees plus 

$5,269 in other costs) with the total of 

$3,333 for a second RCE with an IDS 

($2,860 in USPTO fees plus $473 in 

other costs), or even $5,224 to $6,832 for 

a second RCE with a new amendment 

and/argument ($2,860 in USPTO fees 

plus $2,364 to $3,972 in other costs). 

Moreover, some applicants might see 

value in filing successive RCEs as 

opposed to appealing or reaching 

agreement with an examiner. As noted 

in the NPRM, the scope of an issued 

patent is fixed, and competitors may 

accordingly assess how to avoid 

infringement. The scope of a patent that 

results in the future from a pending 

application is harder to assess. These 

applicants may be less cost-sensitive 

than other applicants, given the value to 

them in prolonging prosecution. Other 

applicants may be more willing to 

consider appeals despite their higher 

cost because if the applicant still 

disagrees with the examiner’s rejections 

after filing two RCEs, it may be more 

effective to appeal than to file a 

continuing application or another RCE 

because the appeal process ends with a 

resolution of the disputed rejections. 

The USPTO does not see continuing 

applications as completely 

interchangeable with an RCE. While 

there is an $860 fee differential between 

the fees to file a continuing application 

($2,000 combined filing, search, and 

examination fees for an undiscounted 

application) and subsequent RCEs 

($2,860 for an undiscounted 

application), the agency believes the 

different characteristics of these filings 

would be the overriding factor in an 

applicant’s choice. Additionally, RCEs 

are not subject to excess claim or excess 

page fees and thus might cost less than 

continuing applications in many 

instances. 

In setting these fee rates, the USPTO’s 

goal is not to steer applicants away from 

RCEs but to more closely align the fee 

rates with the costs of processing RCEs, 

as discussed in other responses. Higher 

fees for successively filed RCEs also 

address the inequities of providing 

further subsidies to those applicants 

who make greater use of the patent 

system. If the USPTO does not increase 

RCE fees, it would in effect be 

increasing the subsidization of RCEs by 

other fees, which would then require 

increases in other fees (particularly 

issue and maintenance fees) to offset the 

cost of processing RCEs at lower fee 

rates. 

Comment 61: Commenters asserted 

that the proposed fee increases were 

based on assumptions that multiple 

RCEs filed in the same application 

reflect dilatory or otherwise undesirable 

applicant behavior. Commenters 

described other prosecution scenarios as 

a reason why applicants file multiple 

RCEs, including filing an IDS after the 

close of prosecution when an applicant 

is unable to make the required 

certification under § 1.97(e) and 

responding to new rejections in final 

Office actions. 

Response: The agency’s goal is not to 

dissuade RCE filings but to more closely 

align the fee rates with the cost of 

processing RCEs, as discussed in other 

responses. The USPTO understands that 

applicants may file multiple RCEs for a 

variety of valid reasons and has 

determined that the cost to review 

applications with multiple RCEs should 


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not be subsidized with other back-end 

fees to the same extent as applications 

with a first RCE, newly filed 

applications, or continuing applications. 

Higher fees for successively filed RCEs 

also address the inequities of providing 

further subsidies to those applicants 

who make greater use of the patent 

system. 

With respect to filing an IDS after the 

close of prosecution when an applicant 

is unable to make the required 

certification under § 1.97(e), the USPTO 

notes that the requirement for a 

certification may be avoided by filing 

the IDS earlier, e.g., prior to the close of 

prosecution (in which case the 

applicant has the option to pay a small 

fee instead of making the certification) 

or within three months of the item(s) of 

information being cited in a 

communication from a foreign office in 

a counterpart foreign application or 

otherwise becoming known to 

individuals designated in § 1.56(c). 

More information about certifications 

under § 1.97(e) is provided in section 

609.04(b) of the MPEP. Thus, applicants 

who wish to avoid paying the increased 

fees for second and subsequent RCEs 

have other options available to submit 

an IDS in an application. 

With respect to an applicant’s need to 

respond to new rejections in final Office 

actions, the USPTO notes that second 

Office actions are not automatically 

made final and that new rejections in 

final Office actions are ordinarily 

necessitated by the applicant’s 

amendment of the claims or based on 

information submitted by the applicant 

in an IDS filed during the period set 

forth in § 1.97(c) with the fee set forth 

in § 1.17(p). See MPEP 706.07(a) for 

more information about when final 

rejections are proper. Furthermore, after 

the close of prosecution, amendments 

that will place the application either in 

condition for allowance or in better 

form for appeal may be entered, and the 

applicant may also hold an interview 

with the examiner. See § 1.116(b) and 

MPEP 714.12. Thus, applicants who 

wish to avoid paying the increased fees 

for second and subsequent RCEs have 

other options available to respond to 

rejections in an application. 

Terminal Disclaimer Fees 

Comment 62: One commenter 

expressed support and several 

commenters objected to the proposed 

tiered fee structure for terminal 

disclaimers. 

Response: The agency considered this 

feedback on the proposed tiered fee 

structure for terminal disclaimers and 

decided not to proceed with this 

proposal. Instead, the fee for this service 

is increasing from $170 to $183 in 

accordance with the across-the-board 

adjustment applied to most patent fees. 

Comment 63: One commenter 

requested data on the costs of 

processing terminal disclaimers. 

Response: The agency’s ABI program 

cannot calculate a specific unit expense 

for statutory disclaimers, including 

terminal disclaimers, because the 

service does not lend itself to unit 

costing as related costs are not easily 

severable from larger activity costs. 

Unintentional Delay Petition Fees 

Comment 64: One commenter 

expressed concern with charging a 

higher fee for petitions based on 

unintentional delays of more than two 

years and asserted that the higher fee 

has an implicit purpose of discouraging 

the submission of such petitions. 

Response: The purpose of the higher 

fee for petitions based on unintentional 

delays of more than two years is to 

recover their additional associated costs. 

As noted in the NPRM, the USPTO 

requires additional information 

regarding the facts and circumstances 

surrounding such extended delays to 

ensure that the USPTO can support a 

conclusion that the entire delay was 

unintentional. As the evidentiary 

requirements for these petitions have 

increased, the costs to review and 

decide these petitions have also 

increased due to the higher level of 

review needed to consider the 

additional explanation. While the 

agency’s primary goal in setting this fee 

rate is to recover the additional costs of 

these petitions, the higher fee also 

should encourage timely petition filings. 

Timely filing of petitions based on 

unintentional delay benefits applicants 

because it avoids delays in the 

examination process and also benefits 

the patent system as a whole by 

reducing uncertainty and 

unpredictability relating to patent 

rights. For example, the abandoned 

status of an application, the expired 

status of a patent, or an absence of the 

priority or benefit claim may be relied 

upon by other parties. 

America Invents Act Trial Fees 

Comment 65: Commenters requested 

more information on historical costs 

associated with trial proceedings to 

better understand the cost data and 

support the claim that AIA trial costs 

have continued to increase. 

Response: The Table of Patent Fees, 

available on the fee setting section of the 

USPTO website at https://

www.uspto.gov/ 

FeeSettingAndAdjusting, provides three 

years of historical cost data for most 

current fees, including AIA trial 

proceedings. In addition to the Table of 

Patent Fees, the fee setting section of the 

agency’s website also includes a 

document titled ‘‘Setting and Adjusting 

Patent Fees during Fiscal Year 2025— 

Activity Based Information and Patent 

Fee Unit Expense Methodology,’’ which 

provides additional details on the cost 

methodologies used to derive the 

historical fee unit expenses outlined in 

the Table of Patent Fees. In response to 

this comment, the agency has provided 

additional details on PTAB activity 

costs in the methodology compared to 

the version published as part of the 

NPRM. 

Comment 66: One commenter stated 

that word counts are an ineffective 

strategy to address problems associated 

with AIA trial petitions. The commenter 

stated regular petition fees already 

disincentivize filing a parallel petition. 

Response: The agency elected not to 

move forward with setting fees based on 

word counts after considering the PPAC 

report and public comments received 

following the public hearing in May 

2023, and the proposal was not 

included in the NPRM. 

Comment 67: One commenter 

requested reassurances that AIA trial 

fees would not be discounted for small 

and micro entities in the future. 

Response: Currently, AIA trial fees are 

not subject to small or micro entity 

discounts under section 10(b) of the 

AIA. Any expansion of small or micro 

entity discounts under section 10 would 

require statutory changes. 

Comment 68: One commenter stated 

that raising fees for AIA trials runs 

counter to congressional intent to make 

them cost-efficient. 

Response: The agency is committed to 

maintaining the PTAB’s ability to 

provide fair, timely, and high-quality 

decisions. Under 35 U.S.C. 311(a) and 

321(a), the USPTO Director must 

establish reasonable fees for inter partes 

review and post-grant review in 

consideration of their total costs. The 

fee increases better align the fee rates 

charged to petitioners with the actual 

costs borne by the USPTO in providing 

these proceedings. 

Comment 69: One commenter stated 

that administrative post-grant 

proceedings have become a permanent 

part of the patent system and that the 

administrative costs of the USPTO for 

these services should not be subsidized 

by all patent applicants. 

Response: The increase in existing 

fees for AIA trial proceedings will better 

align the fee rates charged to petitioners 

with the actual costs borne by the 

USPTO in providing these proceedings. 


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Request for Review of a PTAB Decision 

by the Director Fee 

Comment 70: One commenter 

requested more information on 

historical costs associated with Director 

Review. 

Response: Unfortunately, the USPTO 

cannot calculate a specific unit expense 

for Director Review because it is a new 

fee code with no historical cost data. As 

noted in Part V: Individual Fee 

Rationale of this rule, many staff assist 

the Director in reviewing requests and 

associated case materials, as well as 

publicizing decisions. The agency plans 

to formally capture and evaluate the 

costs associated with Director Review 

after the fee takes effect. 

Comment 71: One commenter 

suggested that the Director Review 

process is a tool for ensuring 

consistency across cases and for the 

Director to set policy. The commenter 

objected to the proposed fee asserting 

private parties should not be required to 

pay for consistency across cases or for 

the Director to set policy. 

Response: The new fee is expected to 

be nominal compared to the overall cost 

of Director Review and is merely 

designed to recover some of the 

processing costs. 

Comment 72: One commenter stated 

that Director Review should be free 

because it is an alternative to seeking 

rehearing, and the cost of requesting 

rehearing is $0. 

Response: The fee for AIA 

proceedings already accounts for the 

agency’s costs of handling panel 

rehearing requests; it does not account 

for the additional costs of Director 

Review. 

Comment 73: One commenter 

suggested that the USPTO should 

refund the proposed fee if the Director 

grants a review. 

Response: The agency’s refund 

authority is limited to refunds of fees 

‘‘paid by mistake or in excess of that 

required’’ under § 1.26(a). Because the 

fee provides partial recovery of costs 

that are incurred regardless of whether 

the Director Review request is granted, 

no refund is legally authorized. 

Legal Considerations 

Comment 74: Commenters stated the 

proposed fee schedule violated the U.S. 

Constitution because setting fees to 

encourage or discourage behavior falls 

under the definition of a tax set forth by 

the U.S Constitution and the Supreme 

Court, and the USPTO does not have 

taxing authority. 

Response: Patent fees are paid for 

receiving and maintaining a patent 

grant. Such fees are payments for a 

service and not a tax. 

Comment 75: One commenter stated 

that the USPTO does not have the 

statutory authority to set fees that fall 

under 35 U.S.C. 41(d)(2) at more than 

their estimated unit cost. 

Response: Under section 10 of the 

AIA, the USPTO has specific authority 

to ‘‘set or adjust by rule any fee 

established, authorized, or charged 

under title 35, United States Code, or 

the Trademark Act of 1946 (15 U.S.C. 

1051 et seq.), for any services performed 

by or materials furnished by, the Office’’ 

so long as the aggregate revenues for all 

patent fees recover the aggregate 

estimated costs of the patent operation. 

The comment would interpret the AIA 

to include limitations that do not exist 

in the AIA. 

Comment 76: One commenter stated 

that the text of the Patent Act makes it 

clear that the USPTO cannot use fee 

setting to implement policy. The 

commenter asserted that the USPTO can 

advise others and can set policy for the 

agency but has no general authority to 

set or exercise policy. 

Response: The Patent Act, 35 U.S.C. 

41(d), limits the USPTO to setting fees 

only to levels necessary to recover the 

estimated average cost of the service, 

prohibiting any other policy 

consideration from factoring into the 

calculation of fee levels. However, in 

2011, Congress provided the USPTO 

with additional and broader fee setting 

authority under section 10 of the AIA, 

which co-exists with those authorities 

provided under the Patent Act. Section 

10 of the AIA, provides the USPTO 

specific authority to ‘‘set or adjust by 

rule any fee established, authorized, or 

charged under title 35, United States 

Code, or the Trademark Act of 1946 (15 

U.S.C. 1051 et seq.), for any services 

performed by or materials furnished by, 

the Office’’ so long as the aggregate 

revenues for all patent fees recover the 

aggregate estimated costs of the patent 

operation. When it enacted this 

language, Congress was aware that 

USPTO’s existing fee setting authority 

under the Patent Act allowed only for 

fee setting based on cost recovery. But 

the language Congress enacted in 

section 10 imposes no limitations on 

how the Office can set any individual 

fee, so long as in the aggregate patent 

revenues are balanced against patent 

costs. The USPTO has interpreted this 

authority to allow it to set individual 

fees at, below, or above their respective 

cost, so long as the USPTO recovers the 

aggregate costs of providing services 

through aggregate fee collections as 

provided by the statutory language. In 

the 13 years since its enactment, the 

USPTO has exercised its section 10 fee 

setting authority multiple times (final 

rules published in 2013, 2015, 2016, 

2017, and 2020). Congress demonstrated 

support of the USPTO’s interpretation, 

and USPTO’s repeated implementation 

of section 10 authority in fee rulemaking 

in part to make policy changes, when 

Congress reauthorized the authority, 

with no change to its terms, in 2018 

under the Study of Underrepresented 

Classes Chasing Engineering and 

Science Success (SUCCESS) Act of 2018 

(Pub. L. 115–273). Thus, the 

commenter’s assertions regarding the 

USPTO’s fee setting authority would 

interpret the AIA to include limitations 

that do not exist in the AIA. 

Comment 77: One commenter 

asserted that Congress explicitly 

specified where the USPTO has fee 

setting discretion, and the USPTO does 

not have broad authority outside of 

what was specified. 

Response: The AIA expressly 

provides the agency with broad fee 

setting authority. Specifically, section 

10(a)(1) provides that, ‘‘[t]he Director 

may set or adjust by rule any fee 

established, authorized, or charged 

under title 35, United States Code, or 

the Trademark Act of 1946 (15 U.S.C. 

1051 et seq.), for any services performed 

by or materials furnished by, the 

Office.’’ The fees set and adjusted in this 

rule fall within the subject matter 

identified by the AIA. See also 

discussion on fee setting authority in 

response to Comment 76. 

Comment 78: Commenters stated the 

consideration of policy factors and 

objectives beyond ‘‘aggregate estimated 

costs to the Office’’ is a violation of the 

USPTO’s section 10 fee setting 

authority. 

Response: The AIA permits 

individual patent fees to be set or 

adjusted above, below, or equal to the 

cost of particular services, so long as the 

aggregate revenues for all patent fees 

recover the aggregate estimated costs of 

the patent operation. The comment 

would interpret the AIA to include 

limitations that do not exist in the AIA. 

See also discussion on fee setting 

authority in response to Comment 76. 

Comment 79: Commenters objected to 

the USPTO’s statement in the NPRM 

that ‘‘[s]ection 10 authority includes 

flexibility to set individual fees in a way 

that furthers key policy factors, while 

considering the cost of the respective 

services,’’ stating language on flexibility 

is absent from the statute. 

Response: The AIA permits 

individual patent fees to be set or 

adjusted above, below, or equal to the 

cost of particular services, so long as the 

aggregate revenues for all patent fees 

recover the aggregate estimated costs of 

the patent operation. The comment 


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would interpret the AIA to include 

limitations that do not exist in the AIA. 

See also discussion on fee setting 

authority in response to Comment 76. 

Comment 80: Commenters stated that 

the USPTO does not have the authority 

to engage in substantive rulemaking. 

They asserted that proposals for new 

fees for continuing applications and 

terminal disclaimers and substantial 

increases to patent term extension fees 

were impermissible because the purpose 

of those proposals was to change 

applicant behavior and set policy. 

Response: The agency is undertaking 

this rulemaking action consistent with 

the requirements and authority under 

section 10 of the AIA. The AIA permits 

individual patent fees to be set or 

adjusted above, below, or equal to the 

cost of particular services, so long as the 

aggregate revenues for all patent fees 

recover the aggregate estimated costs of 

the patent operation. The comment 

would interpret the AIA to include 

limitations that do not exist in the AIA. 

See also discussion on fee setting 

authority in response to Comment 76. 

Comment 81: Commenters stated that 

in the absence of cost data, i.e., where 

a unit cost is not available (e.g., excess 

claims fees), the USPTO has no 

authority to impose any fee other than 

those provided in 35 U.S.C. 41. 

Commenters also stated any proposed 

adjustments must be in proportion to 

the original fees set by Congress in 2011 

when the AIA was enacted, with any 

changes limited to the amount of 

inflation since then. 

Response: Section 10 of the AIA gives 

the agency authority to ‘‘set or adjust by 

rule any fee established, authorized, or 

charged under title 35, United States 

Code, or the Trademark Act of 1946 (15 

U.S.C. 1051 et seq.), for any services 

performed by or materials furnished by, 

the Office’’ so long as the aggregate 

revenues for all patent fees recover the 

aggregate estimated costs of the patent 

operation. The comment would 

interpret the AIA to include limitations 

that do not exist in the AIA. 

Comment 82: One commenter stated 

that the revenue split between front-end 

fees (filing, search, and examination) 

and back-end fees (maintenance and 

issue) must remain roughly 50/50 based 

on the historical proportions at the time 

Congress first enacted maintenance fees 

in 1980–82. 

Response: Under section 10 of the 

AIA, the agency has specific authority to 

‘‘set or adjust by rule any fee 

established, authorized, or charged 

under title 35, United States Code, or 

the Trademark Act of 1946 (15 U.S.C. 

1051 et seq.), for any services performed 

by or materials furnished by, the 

Office,’’ so long as the aggregate 

revenues for all patent fees recover the 

aggregate estimated costs of the patent 

operation. The comment would 

interpret the AIA to include limitations 

that do not exist and are inconsistent 

with the AIA. The USPTO also notes 

that the fee schedule set forth in this 

rule continues the longstanding practice 

of setting basic filing, search, and 

examination (‘‘front-end’’) fees below 

the actual costs of processing and 

examining applications, and subsidizing 

these services by setting undiscounted 

issue and maintenance (‘‘back-end’’) 

fees above unit cost. 

Comment 83: One commenter 

asserted that setting AIA trial fees below 

cost was unlawful because the AIA 

requires the USPTO to set inter partes 

review and post-grant review fees ‘‘to be 

reasonable, considering the aggregate 

cost of the review.’’ This commenter 

also stated that claiming the increase 

supported ‘‘aggregate cost recovery’’ was 

purposefully misleading and less than 

candid. 

Response: The comment would 

interpret the AIA to include limitations 

that do not exist in the AIA. Under 

section 10 of the AIA, the USPTO has 

specific authority to ‘‘set or adjust by 

rule any fee established, authorized, or 

charged under title 35, United States 

Code, or the Trademark Act of 1946 (15 

U.S.C. 1051 et seq.), for any services 

performed by or materials furnished by, 

the Office,’’ so long as the aggregate 

revenues for all patent fees recover the 

aggregate estimated costs of the patent 

operation. The USPTO is increasing the 

fee rate for this service as part of the 

overall package that balances aggregate 

costs of the Patents business line with 

aggregate revenues. Moreover, the 

USPTO has determined that the inter 

partes review and post-grant review fees 

are reasonable. 

Comment 84: Commenters asserted 

that the legislative history of the AIA 

makes it clear that the USPTO cannot 

use fee setting to implement policy. 

Response: The AIA permits 

individual patent fees to be set or 

adjusted above, below, or equal to the 

cost of particular services, so long as the 

aggregate revenues for all patent fees 

recover the aggregate estimated costs of 

the patent operation. The comment 

would interpret the AIA to include 

limitations that do not exist in the AIA. 

Comment 85: One commenter stated 

the USPTO violated the Administrative 

Procedure Act (APA) by proposing fee 

adjustments in instances where no 

individual cost data was available. 

Response: The USPTO disagrees with 

the assertion that it violated the APA in 

proposing its fee adjustments. The 

preamble and regulatory text clearly set 

forth the new costs and explain the 

rationale for each change in compliance 

with the requirements of the APA. 

Comment 86: One commenter 

asserted that the USPTO’s RCE proposal 

impairs incentives for innovation and 

therefore an explanation of the 

regulation is required under E.O. 12866. 

Response: The preamble and 

regulatory text in the proposed rule and 

this final rule, as well as the 

accompanying RIA, clearly set forth the 

new costs and explain the rationale for 

the change in fees for RCEs in 

compliance with the requirements of the 

APA and E.O. 12866. Based on further 

consideration of the merits of the 

proposed rule in light of feedback from 

the public, the USPTO has decided not 

to move forward with creating a new 

tier for third and subsequent RCEs; 

instead, this final rule adjusts the 

existing RCE fees as discussed in Part V: 

Individual Fee Rationale of this rule. 

Comment 87: One commenter 

questioned why the last document 

published in the Federal Register as 

part of the FY 2020 patent final rule was 

not classified as economically 

significant and accused the USPTO of 

attempting to evade cost-benefit review 

under E.O. 12866 and the ‘‘two for one’’ 

provision of E.O. 13771 (in effect at the 

time). 

Response: The document referenced 

by the commenter, which published on 

September 18, 2020 (85 FR 58282), was 

a correction rule issued to fix 

typographical errors and makes other 

nonsubstantive changes. OMB 

determined that action was not 

significant pursuant to E.O. 12866 and 

thus did not require an RIA, nor was it 

subject to E.O. 13771. The final rule 

being corrected was published on 

August 3, 2020 (85 FR 46932). That rule 

was determined to be economically 

significant and was accompanied by a 

Regulatory Impact Analysis that 

satisfied the requirements of E.O. 12866. 

The final rule was not subject to the 

requirements of E.O. 13771 because it 

involved a transfer payment, as detailed 

in part VIII(E) of that rule. 

Comment 88: Commenters stated the 

USPTO violated the Independent 

Offices Appropriations Act (IOAA), 

asserting the AIA must be construed in 

pari materia (a Latin phrase meaning 

‘‘on the same subject or matter’’) with 

the IOAA, and a commentator objected 

to previous responses the USPTO gave 

in fee setting rulemakings regarding the 

IOAA. 

Response: The IOAA provides Federal 

agencies the authority to charge user 

fees where the agencies do not have 

their own specific statutory authority to 


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charge fees. Fees collected under the 

IOAA are deposited in the general fund 

of the U.S. Treasury and not available to 

the charging agency for its use. OMB 

Circular A–25, ‘‘User Charges,’’ provides 

guidance on IOAA authority. The IOAA 

has no relevance to the fee setting 

undertaken by the USPTO, as the 

agency has specific statutory authority 

to charge fees under 35 U.S.C. and the 

Trademark Act of 1946. The USPTO 

further has specific authority to set and 

adjust those fees as in the current 

rulemaking under section 10 of the AIA. 

Fees collected by the USPTO are made 

available to the agency through annual 

appropriations and are available to use 

for the activities that generated the fee 

(patent and trademark examination and 

proportionate administrative expenses). 

Thus, the general authority described in 

the IOAA and OMB Circular A–25 is not 

relevant to the USPTO’s fee setting. 

Comment 89: One commenter stated 

the USPTO violated the Information 

Quality Act by proposing fee 

adjustments in instances where no 

individual cost data is available. 

Response: The USPTO disagrees with 

the assertion that it has violated the IQA 

in its fee proposals. The USPTO’s 

information quality guidelines are 

intended to improve the quality of the 

information disseminated by the agency 

to the public by formalizing the existing 

pre-dissemination review processes and 

establishing mechanisms ‘‘allowing 

affected persons to seek and obtain 

correction of information maintained 

and disseminated by the agency.’’ The 

USPTO’s IQA Guidelines may be found 

at: https://www.uspto.gov/learning-andresources/information-qualityguidelines. The USPTO does not 

calculate a specific unit expense for 

some fee codes since they may be: (1) 

a new fee code with no historical cost 

data, (2) a fee code with zero or very low 

workload or usage, and/or (3) a fee code 

which does not lend itself to unit 

costing as related costs are not easily 

severable from larger activity costs. 

Where the USPTO has historical data, it 

provides that data to the public for 

comment during the rulemaking. The 

IQA does not require the creation of 

new data for every action undertaken in 

this rulemaking. 

Comment 90: Commenters asserted 

that several of the USPTO’s proposals 

violated the Paperwork Reduction Act 

(PRA). According to the commenters, 

the proposed fees, including those for 

continuing applications, terminal 

disclaimers, and IDSs, create an 

additional burden for applicants and 

that the collection of information for 

these fees is new and has not been 

previously reviewed or approved by the 

OMB as required. 

Response: The USPTO has complied 

with the PRA in considering the 

paperwork burdens associated with this 

final rule. The USPTO has previously 

received OMB approval for associated 

burdens and submitted additional 

statements to address revisions made by 

this final rule. Some of the proposals 

cited by the commenter have been 

adjusted since the NPRM after careful 

consideration of stakeholder feedback. 

Comment 91: One commenter stated 

the USPTO is violating the PRA by 

proposing fee adjustments in instances 

where no individual cost data is 

available. 

Response: The USPTO has complied 

with the PRA in considering the 

paperwork burdens associated with this 

final rule. The USPTO has submitted 

additional statements to the OMB to 

address revisions made by this final 

rule. 

Comment 92: One commenter stated a 

USPTO rulemaking cannot override or 

rewrite existing laws and asserted that 

the proposed fee increases undermine 

enacted laws to the extent that they will 

strongly discourage applicants from 

taking advantage of patent prosecution 

options created by Congress. 

Response: The USPTO disagrees with 

the assertion that it is overriding or 

undermining any existing laws in this 

fee setting. The preceding discussion of 

each fee contains extensive explanation 

for why fees have been established or 

adjusted, the potential impacts on filers 

and other stakeholders, and the 

consistency of the final rule with 

applicable law. 

Comment 93: One commenter stated 

terminal disclaimer fees should be 

eligible for a discount under 35 U.S.C. 

41(h)(1) because they are included 

under 35 U.S.C. 41(a). 

Response: The fees in this final rule 

are set or adjusted under section 10 of 

the AIA. As previously discussed in 

‘‘Setting and Adjusting Patent Fees,’’ 78 

FR 4212, 4223 (Jan. 18, 2013), prior to 

the enactment of discounted fees under 

section 10 of the AIA, the small entity 

discount was available only for statutory 

fees provided under 35 U.S.C. 41(a), (b), 

and (d)(1), which included terminal 

disclaimers. Section 10(a) of the AIA 

provides the agency authority to adjust 

all fees charged under 35 U.S.C., but 

section 10(b) provides that fees adjusted 

using section 10(a) authority only 

receive small entity (as defined by 35 

U.S.C. 41(h)) and micro entity (as 

defined by section 10(g) of the AIA) 

discounts if they are fees for ‘‘filing, 

searching, examining, issuing, 

appealing, and maintaining patent 

applications and patents.’’ As noted in 

‘‘Setting and Adjusting Patent Fees,’’ 78 

FR 4212, 4223, the disclaimer fee does 

not fall under one of the six categories 

of discount-eligible patent fees set forth 

in section 10(b). 

Comment 94: One commenter stated 

the term ‘‘original patent’’ is a single 

term used in 35 U.S.C. 41(a)(1)(A), 

41(a)(3)(A), and 41(a)(4)(A) to describe a 

group inclusive of both initial 

applications and any continuing 

applications, and the USPTO does not 

have the authority to further subdivide 

fees for specific subgroups (e.g., 

continuing applications) falling within 

the original patent. 

Response: The comment suggests the 

commenter understood the proposed 

rule to be subdividing certain statutory 

fees: the filing fees in 35 U.S.C. 

41(a)(1)(A), the examination fees in 35 

U.S.C. 41(a)(3)(A), and the issue fees in 

35 U.S.C. 41(a)(4)(A). The USPTO is not 

subdividing these fees. The filing, 

examination, and issue fees continue to 

be due in original applications, and 

while the rates for these fees are 

increased in this final rule, the rates 

remain the same for continuing and 

non-continuing applications. The rules 

implementing the adjustments to these 

fees are §§ 1.16(a)–(e) and 1.492(a) for 

filing fees, §§ 1.16(o)–(r) and 1.492(c) for 

examination fees, and §§ 1.18(a)–(c) for 

issue fees. The commenter’s reference to 

continuing applications relates to a 

different fee under § 1.16(w), which is a 

new fee for presenting certain benefit 

claims in continuing applications. This 

new fee under § 1.16(w) is a distinct fee, 

and, when due, it is due in addition to 

the filing, examination, and issue fees. 

Filing and examination fees are always 

due upon filing of the application, and 

issue fees are always due after 

allowance of an application. The new 

fee under § 1.16(w) is due when certain 

benefit claims are made, which can 

occur upon filing, at any time during 

pendency, or even after a patent is 

granted. 

Comment 95: One commenter stated 

the USPTO does not have the authority 

to set fees for continuing applications at 

levels contained in the proposed rule 

because doing so would be cost 

prohibitive and effectively take away 

applicants’ statutory rights to file 

continuing applications. 

Response: The AIA permits 

individual patent fees to be set or 

adjusted above, below, or equal to the 

cost of particular services, so long as the 

aggregate revenues for all patent fees 

recover the aggregate estimated costs of 

the patent operation. The comment 

would interpret the AIA to include 

limitations that do not exist in the AIA. 


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Comment 96: One commenter 

asserted that the continuing 

applications proposal was designed 

solely to suppress continuing 

application filings and that such a 

purpose is not within the USPTO’s 

authority under section 10. 

Response: The continuing application 

fees do not prevent applicants from 

filing as many continuing applications 

as they want at any time during the 

pendency of the parent application. 

Instead, they are designed to recover 

more of the costs of examining 

continuing applications where 

maintenance fees on the issued patent 

are unlikely to be paid as a result of 

insufficient term. Further, the AIA 

permits individual patent fees to be set 

or adjusted above, below, or equal to the 

cost of particular services, so long as the 

aggregate revenues for all patent fees 

recover the aggregate estimated costs of 

the patent operation. The comment 

would interpret the AIA to include 

limitations that do not exist in the AIA. 

VII. Discussion of Specific Rules 

The discussion below includes all fee 

amendments and all changes to the 

Code of Federal Regulations (CFR) text. 

Title 37 of the CFR, parts 1, 41, and 

42, are proposed to be amended as 

follows: 

Section 1.16 

Section 1.16 is amended by revising 

paragraphs (a) through (s) and (u) to set 

forth national application filing, search, 

examination, and related fees as 

authorized under section 10 of the AIA. 

The changes to the fee amounts in § 1.16 

are shown in table 19. 

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91960 Federal Register / Vol. 89, No. 224 / Wednesday, November 20, 2024 / Rules and Regulations 


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Federal Register / Vol. 89, No. 224 / Wednesday, November 20, 2024 / Rules and Regulations 91961 


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91962 Federal Register / Vol. 89, No. 224 / Wednesday, November 20, 2024 / Rules and Regulations 


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Federal Register / Vol. 89, No. 224 / Wednesday, November 20, 2024 / Rules and Regulations 91963 

BILLING CODE 3510–16–C 

Section 1.17 

Section 1.17 is amended by revising 

paragraphs (a), (c) through (i), (k), (m), 

and (o) through (t) and adding 

paragraphs (u), (v), and (w) to set forth 

application processing fees as 

authorized under section 10 of the AIA. 

The changes to the fee amounts in § 1.17 

are shown in table 20. 

The USPTO revises the introductory 

text of paragraph (a) to exclude 


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provisional applications filed under 

1.53(c). 

The USPTO revises paragraph (g) by 

splitting it into two paragraphs (g)(1) 

and (2). Paragraph (g)(1) is the same as 

existing paragraph (g) except for the 

removal of § 1.103(a) from its coverage. 

New paragraphs (g)(2)(i) and (ii) specify 

the fees for filing a first request pursuant 

to § 1.103(a) respectively. The USPTO 

adds paragraphs (m)(1) through (3) to 

create tiered fees for unintentionally 

delayed petitions based on the length of 

the delay. 

The USPTO adds paragraphs (u) 

through (w). Paragraph (u) creates a 

lower fee for extension fees pursuant to 

§ 1.136(a) in provisional applications 

filed under § 1.53(c). Paragraph (v) 

creates fees for information disclosure 

statements filed under § 1.97. Paragraph 

(w) creates fees for presenting a benefit 

claim in a nonprovisional application 

under 35 U.S.C. 120, 121, 365(c), or 

386(c) and § 1.78(d). 

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91966 Federal Register / Vol. 89, No. 224 / Wednesday, November 20, 2024 / Rules and Regulations 


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91968 Federal Register / Vol. 89, No. 224 / Wednesday, November 20, 2024 / Rules and Regulations 


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91970 Federal Register / Vol. 89, No. 224 / Wednesday, November 20, 2024 / Rules and Regulations 


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91972 Federal Register / Vol. 89, No. 224 / Wednesday, November 20, 2024 / Rules and Regulations 


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91974 Federal Register / Vol. 89, No. 224 / Wednesday, November 20, 2024 / Rules and Regulations 


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Section 1.18 

Section 1.18 is amended by revising 

paragraphs (a) through (f) to set forth 

patent issue fees as authorized under 

section 10 of the AIA. The changes to 

the fee amounts in § 1.18 are shown in 

table 21. 


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Section 1.19 

Section 1.19 is amended by revising 

paragraphs (a), (b), and (f) to set forth 

document supply fees as authorized 

under section 10 of the AIA. The 

changes to the fee amounts in § 1.19 are 

shown in table 22. 

Section 1.20 

Section 1.20 is amended by revising 

paragraphs (a) through (h), (j), and (k) to 

set forth post issuance fees as 

authorized under section 10 of the AIA. 

The changes to the fee amounts in § 1.20 

are shown in table 23. 

The USPTO adds paragraph (j)(4) to 

create a fee for requesting supplemental 

redetermination after Notice of Final 

Determination. 


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91980 Federal Register / Vol. 89, No. 224 / Wednesday, November 20, 2024 / Rules and Regulations 


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91982 Federal Register / Vol. 89, No. 224 / Wednesday, November 20, 2024 / Rules and Regulations 


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Federal Register / Vol. 89, No. 224 / Wednesday, November 20, 2024 / Rules and Regulations 91983 


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91984 Federal Register / Vol. 89, No. 224 / Wednesday, November 20, 2024 / Rules and Regulations 

Section 1.21 

Section 1.21 is amended by revising 

paragraphs (a), (e), (h), (i), and (n) 

through (q) to set forth miscellaneous 

fees and charges as authorized under 

section 10 of the AIA. The changes to 

the fee amounts in § 1.21 are shown in 

table 24. 


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BILLING CODE 3510–16–C 

Section 1.78 

Section 1.78 is amended by revising 

paragraph (d)(3)(i) to include the fee 

cited in § 1.17(w) as one of the 

requirements that must be submitted 

during the pendency of the later-filed 

application. 

The USPTO revises paragraph (e)(2) to 

add the applicable fee in § 1.17(w) to the 

list of required items that must 

accompany a petition to accept an 

unintentionally delayed claim under 35 


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U.S.C. 120, 121, 365(c), or 386(c) for the 

benefit of a prior-filed application. 

Section 1.97 

Section 1.97 is amended by revising 

paragraph (a) to require the information 

disclosure statement size fee under 

§ 1.17(v) for an information disclosure 

statement in compliance with § 1.98 to 

be considered by the USPTO during the 

pendency of the application. 

Section 1.98 

Section 1.98 is amended by revising 

the introductory text in paragraph (a) to 

include paragraph (a)(4) in the items 

that shall be included with any 

information disclosure statement. 

The USPTO adds paragraph (a)(4), 

which will require a clear written 

assertion that the information disclosure 

statement is accompanied by the 

applicable information disclosure 

statement size fee under § 1.17(v) or a 

clear written assertion that no 

information disclosure statement size 

fee under § 1.17(v) is required. 

Section 1.136 

Section 1.136 is amended by revising 

paragraph (a)(1) to include the addition 

of the fee set in § 1.17(u) in extensions 

of time. 

Section 1.138 

Section 1.138 is amended by revising 

paragraph (d) to expand the 

applicability of the express 

abandonment rule to permit such 

refunds in national stage applications 

filed under 35 U.S.C. 371. The current 

rule permits such refunds only in 

nonprovisional applications filed under 

35 U.S.C. 111(a) and § 1.53(b). 

Paragraph (d) is also amended to clarify 

that refunds of search and excess claims 

fee payments under these provisions are 

limited to the search and excess claims 

fees set forth in § 1.16 (which apply to 

applications filed under 35 U.S.C. 

111(a) and § 1.53(b)) and search and 

excess claims fees set forth in § 1.492 

(which apply to national stage 

applications filed under 35 U.S.C. 371). 

Paragraph (d) is also amended to clarify 

that refunds of search and excess claims 

fee payments under these provisions are 

limited to the search and excess claims 

fees set forth in § 1.16 (which apply to 

applications filed under 35 U.S.C. 

111(a) and § 1.53(b)) and search and 

excess claims fees set forth in § 1.492 

(which apply to national stage 

applications filed under 35 U.S.C. 371). 

Section 1.445 

Section 1.445 is amended by revising 

and republishing paragraph (a) to set 

forth international filing, processing, 

and search fees as authorized under 

section 10 of the AIA. The changes to 

the fee amounts in § 1.445 are shown in 

table 25. The fees are for or an 

international application having a 

receipt date that is on or after the 

effective date of the final rule. Fees 

previously provided for in paragraphs 

(a)(1)(i)(A), (a)(2)(i), and (a)(3)(i) for 

international applications having a 

receipt date that is on or after December 

29, 2023, will be redesignated as 

(a)(1)(i)(B), (a)(2)(ii), and (a)(3)(ii) and 

will apply to international applications 

having a receipt date that is on or after 

December 29, 2022, and before the 

effective date of the final rule. Other 

paragraphs under paragraphs (a)(1) 

through (3) are to be redesignated to 

accommodate these proposed changes. 

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Section 1.482 

Section 1.482 is amended by revising 

paragraphs (a) and (c) to set forth 

international preliminary examination 

and processing fees for international 

patent applications entering the 

international stage as authorized under 

section 10 of the AIA. The changes to 

the fee amounts in § 1.482 are shown in 

table 26. 


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91990 Federal Register / Vol. 89, No. 224 / Wednesday, November 20, 2024 / Rules and Regulations 

Section 1.492 

Section 1.492 is amended by revising 

paragraphs (a) through (f) and (h) 

through (j) to set forth national stage 

fees for international patent applications 

as authorized under section 10 of the 

AIA. The changes to the fee amounts in 

§ 1.492 are shown in table 27. 


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91992 Federal Register / Vol. 89, No. 224 / Wednesday, November 20, 2024 / Rules and Regulations 

Section 1.555 

Section 1.555 is amended by revising 

paragraph (a) to require the information 

disclosure statement size fee under 

§ 1.17(v) for an information disclosure 

statement in compliance with § 1.98 to 

be considered by the USPTO during the 

pendency of the reexamination 

proceeding. 

Section 1.1031 

Section 1.1031 is amended by revising 

paragraph (a) to set forth international 

design application fees as authorized 

under section 10 of the AIA. The 


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changes to the fee amounts in § 1.1031 

are shown in table 28. 

Section 41.20 

Section 41.20 is amended by revising 

paragraphs (a) and (b) to set forth 

petition and appeal fees as authorized 

under section 10 of the AIA. The 

changes to the fee amounts in § 41.20 

are shown in table 29. 


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Section 42.15 

Section 42.15 is amended by revising 

paragraphs (a) through (e) and adding 

paragraph (f) to set forth inter partes 

review and post-grant review or covered 

business method patent review of a 

patent fees as authorized under section 

10 of the AIA. The changes to the fee 

amounts in § 42.15 are shown in table 

30. 


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BILLING CODE 3510–16–C 


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91996 Federal Register / Vol. 89, No. 224 / Wednesday, November 20, 2024 / Rules and Regulations 

VIII. Rulemaking Considerations 

A. America Invents Act 

This rule sets or adjust fees under 

section 10(a) of the AIA as amended by 

the SUCCESS Act, Pub. L. 115–273, 132 

Stat. 4158. Section 10(a) of the AIA 

authorizes the Director to set or adjust 

by rule any patent fee established, 

authorized, or charged under 35 U.S.C. 

for any services performed or materials 

furnished by the USPTO. The SUCCESS 

Act extends the USPTO fee setting 

authority until September 2026. Section 

10 prescribes that fees may be set or 

adjusted only to recover the aggregate 

estimated cost to the USPTO for 

processing, activities, services, and 

materials relating to patents, including 

administrative costs of the agency with 

respect to such patent fees. Section 10 

authority includes flexibility to set 

individual fees in a way that furthers 

key policy factors, while taking into 

account the cost of the respective 

services. Section 10(e) of the AIA sets 

forth the general requirements for 

rulemakings that set or adjust fees under 

this authority. In particular, section 

10(e)(1) requires the Director to publish 

in the Federal Register any proposed fee 

change under section 10 and include in 

such publication the specific rationale 

and purpose for the proposal, including 

the possible expectations or benefits 

resulting from the proposed change. For 

such rulemakings, the AIA requires that 

the USPTO provide a public comment 

period of not less than 45 days. 

PPAC advises the Under Secretary of 

Commerce for Intellectual Property and 

Director of the USPTO on the 

management, policies, goals, 

performance, budget, and user fees of 

patent operations. When proposing fees 

under section 10 of the AIA, the 

Director must provide PPAC with the 

proposed fees at least 45 days prior to 

publishing the proposed fees in the 

Federal Register. PPAC then has at least 

30 days within which to deliberate, 

consider, and comment on the proposal, 

as well as hold public hearings on the 

proposed fees. PPAC must provide a 

written report to the public detailing the 

committee’s comments, advice, and 

recommendations regarding the 

proposed fees before the USPTO issues 

a final rule. The USPTO must consider 

and analyze any comments, advice, or 

recommendations received from PPAC 

before setting or adjusting fees. 

Consistent with this framework, on 

April 20, 2023, the Director notified 

PPAC of the USPTO’s intent to set or 

adjust patent fees and submitted a 

preliminary patent fee proposal with 

supporting materials. The preliminary 

patent fee proposal and associated 

materials are available on the fee setting 

section of the USPTO website at https:// 

www.uspto.gov/ 

FeeSettingAndAdjusting. PPAC held a 

public hearing at the USPTO’s 

headquarters in Alexandria, Virginia, on 

May 18, 2023, where members of the 

public were given the opportunity to 

provide oral testimony. Transcripts of 

the hearing are available for review on 

the USPTO website at https://

www.uspto.gov/sites/default/files/ 

documents/PPAC_Hearing_Transcript20230518.pdf. Members of the public 

were also given the opportunity to 

submit written comments for PPAC to 

consider, and these comments are 

available on Regulations.gov at https:// 

www.regulations.gov/document/PTO-P2023-0017-0001. On August 14, 2023, 

PPAC released a written report setting 

forth in detail their comments, advice, 

and recommendations regarding the 

preliminary proposed fees. The PPAC 

Report is available on the USPTO 

website at https://www.uspto.gov/sites/ 

default/files/documents/PPAC-Reporton-2023-Fee-Proposal.docx. The USPTO 

considered and analyzed all comments, 

advice, and recommendations received 

from PPAC before publishing the NPRM 

on April 3, 2024 (89 FR 23226). The 

NPRM comment period closed on June 

3, 2024. Section 10(e) of the AIA 

requires the director to publish the final 

fee rule in the Federal Register and the 

Official Gazette of the USPTO at least 45 

days before the final fees become 

effective. Pursuant to this requirement, 

this rule is effective on January 19, 

2025. 

B. Regulatory Flexibility Act (RFA) 

The USPTO publishes this Final 

Regulatory Flexibility Analysis (FRFA) 

as required by the RFA (5 U.S.C. 601 et 

seq.) to examine the impact of this final 

rule on small entities. Under the RFA, 

whenever an agency is required by 5 

U.S.C. 553 (or any other law) to publish 

an NPRM, the agency must prepare and 

make available for public comment an 

Initial Regulatory Flexibility Analysis 

(IRFA), unless the agency certifies under 

5 U.S.C. 605(b) that the proposed rule, 

if implemented, will not have a 

significant economic impact on a 

substantial number of small entities. 

The USPTO published an IRFA, along 

with the NPRM, on April 3, 2024 (89 FR 

23226). Given that the final patent fee 

schedule, based on the assumptions 

found in the FY 2025 Budget, is 

projected to result in $2,053 million in 

additional aggregate revenue over the 

current fee schedule (baseline) for the 

period including FY 2025 to FY 2029, 

the USPTO acknowledges that the fee 

adjustments will impact all entities 

seeking patent protection and could 

have a significant impact on small and 

micro entities. The $2,053 million in 

additional aggregate revenue results 

from an additional $292 million in FY 

2025, $435 million in FY 2026, $442 

million in FY 2027, $441 million in FY 

2028, and $444 million in FY 2029. This 

implies annualized effects of $406.3 

million using a 3% discount rate and 

$408.5 million using a 7% discount rate. 

Items 1–6 below discuss the six items 

specified in 5 U.S.C. 604(a)(1)–(6) to be 

addressed in an FRFA. Item 6 below 

discusses the alternatives to this final 

rule that were considered. 

1. A statement of the need for, and 

objectives of, the rule. 

Section 10 of the AIA authorizes the 

Director to set or adjust by rule any 

patent fee established, authorized, or 

charged under 35 U.S.C. for any services 

performed or materials furnished by the 

USPTO. The objective of this final 

patent fee schedule is for patent fees to 

recover the aggregate cost of patent 

operations, including administrative 

costs, while facilitating effective 

administration of the U.S. patent 

system. Since its inception, the AIA 

strengthened the patent system by 

affording the USPTO the ‘‘resources it 

requires to clear the still sizeable 

unexamined inventory of patent 

applications and move forward to 

deliver to all American inventors the 

first rate service they deserve.’’ H.R. 

Rep. No. 112–98(I), at 163 (2011). In 

setting and adjusting fees under the 

AIA, the agency will secure a sufficient 

amount of aggregate revenue to recover 

the aggregate cost of patent operations, 

including revenue needed to achieve 

strategic and operational goals. 

Additional information on the USPTO’s 

strategic goals may be found in the 

Strategic Plan, available at 

www.uspto.gov/StrategicPlan. 

Additional information on the agency’s 

operating requirements to achieve the 

strategic goals may be found in the 

‘‘USPTO FY 2025 President’s Budget 

Request,’’ available at https://

www.uspto.gov/about-us/performanceand-planning/budget-and-financialinformation. 

2. A statement of the significant issues 

raised by the public comments in 

response to the Initial Regulatory 

Flexibility Analysis, a statement of the 

assessment of the agency of such issues, 

and a statement of any changes made in 

the final rule as a result of such 

comments. 

The USPTO did not receive any 

public comments in response to the 

IRFA. However, the agency received 

comments about fees in general, as well 

as particular fees, and their impact on 


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small entities, which are discussed 

above in Part VI. Discussion of 

Comments. 

3. The response of the agency to any 

comments filed by the chief counsel for 

advocacy of the Small Business 

Administration in response to the 

proposed rule, and a detailed statement 

of any change made to the proposed 

rule in the final rule as a result of the 

comments. 

The USPTO did not receive any 

comments filed by the Chief Counsel for 

Advocacy of the Small Business 

Administration (SBA) in response to the 

NPRM. 

4. A description of and, where 

feasible, an estimate of the number of 

small entities to which the rule will 

apply or an explanation of why no such 

estimate is available. 

a. SBA Size Standard 

The SBA size standards applicable to 

most analyses conducted to comply 

with the RFA are set forth in 13 CFR 

121.201. These regulations generally 

define small businesses as those with 

less than a specified maximum number 

of employees or less than a specified 

level of annual receipts for the entity’s 

industrial sector or North American 

Industry Classification System (NAICS) 

code. As provided by the RFA, and after 

consulting with the SBA, the USPTO 

formally adopted an alternate size 

standard for the purpose of conducting 

an analysis or making a certification 

under the RFA for patent-related 

regulations. See ‘‘Business Size 

Standard for Purposes of United States 

Patent and Trademark Office Regulatory 

Flexibility Analysis for Patent-Related 

Regulations,’’ 71 FR 67109, 67109 (Nov. 

20, 2006), 1313 Off. Gaz. Pat. Office 37, 

60 (Dec. 12, 2006). The USPTO’s 

alternate small business size standard 

consists of the SBA’s previously 

established size standard for entities 

entitled to pay reduced patent fees. See 

13 CFR 121.802. 

Unlike the SBA’s generally applicable 

small business size standards, the size 

standard for the USPTO is not industryspecific. The USPTO’s definition of a 

small business concern for RFA 

purposes is a business or other concern 

that meets the SBA’s definition of a 

‘‘business concern or concern’’ set forth 

in § 121.105 and meets the size 

standards set forth in § 121.802 for the 

purpose of paying reduced patent fees, 

namely, an entity (a) whose number of 

employees, including affiliates, does not 

exceed 500 persons; and (b) that has not 

assigned, granted, conveyed, or licensed 

(and is under no obligation to do so) any 

rights in the invention to any person 

who made it and could not be classified 

as an independent inventor or to any 

concern that would not qualify as a 

nonprofit organization or a small 

business concern under this definition. 

See 71 FR at 67109, 1313 Off. Gaz. Pat. 

Office 60. 

A patent applicant can self-identify 

on a patent application as qualifying as 

a small entity or may provide 

certification of micro entity status for 

reduced patent fees under the USPTO’s 

alternative size standard. The data is 

captured and tracked for each patent 

application submitted. 

b. Small Entity Defined 

The AIA, as amended by the UAIA, 

provides that fees set or adjusted under 

section 10(a) ‘‘for filing, searching, 

examining, issuing, appealing, and 

maintaining patent applications and 

patents shall be reduced by 60 percent’’ 

with respect to the application of such 

fees to any ‘‘small entity’’ (as defined in 

§ 1.27) that qualifies for reduced fees 

under 35 U.S.C. 41(h)(1). In turn, 125 

Stat. at 316–17. 35 U.S.C. 41(h)(1) 

provides that certain patent fees ‘‘shall 

be reduced by 60 percent’’ for a small 

business concern as defined by section 

3 of the Small Business Act and for any 

independent inventor or nonprofit 

organization as defined in regulations 

described by the Director. 

c. Micro Entity Defined 

Section 10(g) of the AIA created a new 

category of entity called a ‘‘micro 

entity.’’ 35 U.S.C. 123; see also 125 Stat. 

at 318–19. Section 10(b) of the AIA, as 

amended by the UAIA, provides that the 

fees set or adjusted under section 10(a) 

‘‘for filing, searching, examining, 

issuing, appealing, and maintaining 

patent applications and patents shall be 

reduced by 80 percent with respect to 

the application of such fees to any micro 

entity as defined by 35 U.S.C. 123.’’ 125 

Stat. at 315–17. 35 U.S.C. 123(a) defines 

a ‘‘micro entity’’ as an applicant who 

makes a certification that the applicant 

(1) qualifies as a small entity as defined 

in § 1.27; (2) has not been named as an 

inventor on more than four previously 

filed patent applications, other than 

applications filed in another country, 

provisional applications under 35 

U.S.C. 111(b), 35 U.S.C. 111(b), or 

Patent Cooperation Treaty (PCT) 

applications for which the basic 

national fee under 35 U.S.C. 41(a) was 

not paid; (3) did not, in the calendar 

year preceding the calendar year in 

which the applicable fee is being paid, 

have a gross income, as defined in 

section 61(a) of the Internal Revenue 

Code of 1986 (26 U.S.C. 61(a)), 

exceeding three times the median 

household income for that preceding 

calendar year, as most recently reported 

by the Bureau of the Census; and (4) has 

not assigned, granted, or conveyed, and 

is not under an obligation by contract or 

law, to assign, grant, or convey, a 

license or other ownership interest in 

the application concerned to an entity 

exceeding the income limit set forth in 

(3) above. See 125 Stat. at 318; see also 

https://www.uspto.gov/ 

PatentMicroEntity. 35 U.S.C. 123(d) also 

defines a ‘‘micro’’ as an applicant who 

certifies that the applicant’s employer, 

from which the applicant obtains the 

majority of the applicant’s income, is an 

institution of higher education as 

defined in section 101(a) of the Higher 

Education Act of 1965 (20 U.S.C. 

1001(a)); or the applicant has assigned, 

granted, conveyed, or is under an 

obligation by contract or law, to assign, 

grant, or convey, a license or other 

ownership interest in the particular 

applications to such an institution of 

higher education. 

d. Estimate of Number of Small Entities 

Affected 

The changes in this final rule will 

apply to any entity, including small and 

micro entities, that pays any patent fee 

set forth in the final rule. The reduced 

fee rates (60% for small entities and 

80% for micro entities) will continue to 

apply to any small entity asserting small 

entity status and to any micro entity 

certifying micro entity status for filing, 

searching, examining, issuing, 

appealing, and maintaining patent 

applications and patents. 

The USPTO reviews historical data to 

estimate the percentages of application 

filings asserting small entity status. 

Table 31 presents a summary of such 

small entity filings by type of 

application (utility, reissue, plant, 

design) over the last five years. 

BILLING CODE 3510–16–P 


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BILLING CODE 3510–16–C Because the percentage of small entity 

filings varies widely between 

application types, the USPTO has 

averaged the small entity filing rates 


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over the past five years for those 

application types to estimate future 

filing rates by small and micro entities. 

Those average rates appear in the last 

column of table 31. The USPTO 

estimates that small entity filing rates 

will continue for the next five years at 

these average historic rates. 

The USPTO forecasts the number of 

projected patent applications (i.e., 

workload) for the next five years using 

a combination of historical data, 

economic analysis, and subject matter 

expertise. The USPTO estimates that 

utility, plant, and reissue (UPR) patent 

application filings will grow by 0.4% in 

FY 2024 and about 1.5% per year on 

average from FY 2025 to FY 2029. 

Design patent applications are forecast 

independently of UPR applications 

because they exhibit different filing 

behaviors. 

Using the estimated filings for the 

next five years, and the average historic 

rates of small entity filings, table 32 

presents the USPTO’s estimates of the 

number of patent application filings by 

all applicants, including small and 

micro entities, over the next five fiscal 

years by application type. 

The USPTO has previously 

undertaken an elasticity analysis to 

examine if fee adjustments may impact 

small entities and whether increases in 

fees would result in some such entities 

not submitting applications. Elasticity 

measures how sensitive demand for 

services by patent applicants and 

patentees is to fee changes. If elasticity 

is low enough (demand is inelastic), 

then fee increases will not reduce 

patenting activity enough to negatively 

impact overall revenues. If elasticity is 

high enough (demand is elastic), then 

increasing fees will decrease patenting 

activity enough to decrease revenue. 

The USPTO analyzed elasticity at the 

overall filing level across all patent 

applicants with regard to entity size and 

estimated the potential impact to patent 

application filings across entities. 

Additional information about how the 

USPTO estimates elasticity is provided 

in ‘‘Setting and Adjusting Patent Fees 

during Fiscal Year 2020—Description of 

Elasticity Estimates,’’ available on the 

USPTO website at https://

www.uspto.gov/sites/default/files/ 

documents/Elasticity_Appendix.docx. 

5. A description of the projected 

reporting, recordkeeping, and other 

compliance requirements of the 

proposed rule, including an estimate of 

the classes of small entities which will 

be subject to the requirement and type 

of professional skills necessary for 

preparation of the report or record. 

When implemented, this rule will not 

change the burden of existing reporting 

and recordkeeping requirements for 

payment of fees. The current 

requirements for small and micro 

entities will continue to apply. 

Therefore, the professional skills 

necessary to file and prosecute an 

application through issue and 

maintenance remain unchanged under 

this rule. This action only adjusts patent 

fees and does not set procedures for 

asserting small entity status or certifying 

micro entity status, as previously 

discussed. There are no new compliance 

requirements in this rule. 

The full fee schedule (see Part VII: 

Discussion of Specific Rules) is set forth 

in this final rule. The fee schedule sets 

or adjusts 433 patent fees in total, 

including 52 new fees. 

6. A description of the steps the 

agency has taken to minimize the 

significant economic impact on small 

entities consistent with the stated 

objectives of applicable statutes, 

including a statement of the factual, 

policy, and legal reasons for selecting 

the alternative adopted in the final rule 

and why each one of the other 

significant alternatives to the rule 

considered by the agency which affect 

the impact on small entities was 

rejected. 

The USPTO considered several 

alternative approaches to this final rule, 

discussed below, including full cost 

recovery for individual services, an 

across-the-board adjustment to fees, and 

a baseline (current fee rates). The 

discussion here begins with a 

description of the fee schedule adopted 

for this final rule. A full discussion of 

the costs and benefits of all four 

alternatives and the methodology used 

for that analysis is contained in the RIA, 

available at https://www.uspto.gov/ 

FeeSettingAndAdjusting. 

a. Alternative 1: Final Patent Fee 

Schedule—Setting and Adjusting Patent 

Fees During Fiscal Year 2025 

The final patent fee schedule secures 

the USPTO’s required revenue to 

facilitate the effective administration of 

the U.S. patent system, including 

implementing the Strategic Plan. The 

revenue will allow the USPTO to 

continue to balance timely 

examination—to help innovators bring 

their ideas and products to impact more 

quickly and efficiently—with 

improvements in patent quality— 

particularly, the robustness and 

reliability of issued patents—and ensure 

the USPTO can resource mission 


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success. Adequate resources will benefit 

all applicants, including small and 

micro entities, without undue burden or 

barriers to entry to patent applicants 

and holders or reduced incentives to 

innovate. This alternative maintains 

small and micro entity discounts. 

Compared to the current fee schedule, 

there are no new small or micro entity 

fee codes being extended to existing 

undiscounted fee rates and none are 

being eliminated. 

As discussed throughout this 

document, the fee changes in this 

alternative are moderate compared to 

other alternatives. Given that the final 

patent fee schedule will result in 

increased aggregate revenue, small and 

micro entities will pay higher fees when 

compared to the current fee schedule 

(Alternative 4). 

In summary, the fees to obtain a 

patent will increase. All fees are subject 

to the 7.5% across-the-board 

adjustment. In addition to the acrossthe-board adjustment, some fees will be 

subject to a larger increase. For example, 

the fee rate for a first RCE will increase 

by 10%, and second and subsequent 

RCEs will increase by 43%, 

respectively. Also, AIA trial fees will 

increase 25% to better align the fee rates 

charged with the actual costs borne by 

the USPTO to provide these proceedings 

and so PTAB can continue to maintain 

the appropriate level of judicial and 

administrative resources to continue to 

provide high-quality and timely 

decisions for AIA trials. 

Adjusting the patent fee schedule as 

prescribed in this alternative allows the 

USPTO to implement the patent-related 

strategic goals and objectives 

documented in the Strategic Plan and to 

carry out requirements as described in 

the FY 2025 Budget. Specifically, the 

revenue from this final patent fee 

schedule is sufficient to recover the 

aggregate estimated costs of patent 

operations and to support the strategic 

objectives to issue and maintain robust 

and reliable patents, improve patent 

application pendency, optimize the 

patent application process to enable 

efficiencies for applicants and other 

stakeholders, and enhance internal 

processes to prevent fraudulent and 

abusive behaviors that do not embody 

the USPTO’s mission. The final patent 

fee schedule focuses on building 

resiliency against financial shocks by 

maintaining the minimum operating 

reserve balance (approximately one 

month of operating expenses) while 

building the operating reserve balance 

to the optimal reserve target 

(approximately three months of 

operating expenses). While the other 

alternatives discussed facilitate progress 

toward some of the USPTO’s goals, the 

final patent fee schedule is the only one 

that does so in a way that does not 

impose undue costs on patent 

applicants and holders. 

The fee schedule under this final rule 

is available on the fee setting section of 

the USPTO website at https://

www.uspto.gov/ 

FeeSettingAndAdjusting, in the 

document titled ‘‘Setting and Adjusting 

Patent Fees During Fiscal Year 2025– 

FRFA Tables.’’ 

b. Other Alternatives Considered 

In addition to the final fee schedule 

set forth in Alternative 1, the USPTO 

considered three other alternative 

approaches. The agency calculated 

proposed fees and the resulting revenue 

derived from each alternative scenario. 

The proposed fees and their 

corresponding revenue tables are 

available on the fee setting section of the 

USPTO website at https://

www.uspto.gov/ 

FeeSettingAndAdjusting. Only the fees 

outlined in Alternative 1 are set or 

adjusted in this final rule; other 

alternative scenarios are shown only to 

demonstrate the analysis of other 

options. 

Alternative 2: Unit Cost Recovery 

It is common practice in the Federal 

Government to set individual fees at a 

level sufficient to recover the cost of 

that single service. In fact, official 

guidance on user fees, as cited in OMB 

Circular A–25, ‘‘User Charges,’’ states 

that user charges (fees) should be 

sufficient to recover the full cost to the 

Federal Government of providing the 

particular service, resource, or good 

when the government is acting in its 

capacity as sovereign. 

As such, the USPTO considered 

setting most individual undiscounted 

fees at the historical cost of performing 

the activities related to the particular 

service in FY 2022. While more recent 

FY 2023 cost data is now available, for 

consistency with information presented 

in the NPRM, the agency continues to 

base the fee rates displayed under 

Alternative 2 in the FRFA and the RIA 

on FY 2022 unit cost data. The USPTO 

recognizes that using FY 2022 costs to 

set fee rates beginning in FY 2025 does 

not account for inflationary factors that 

would likely increase costs and 

necessitate higher fees in the out-years. 

However, the USPTO contends that the 

FY 2022 data is the best unit cost data 

available to inform this analysis. 

There are several complexities in 

achieving individual fee unit cost 

recovery for the patent fee schedule. 

The most significant is the AIA 

requirement to provide a 60% discount 

on fees to small entities and an 80% 

discount on fees to micro entities. To 

account for this requirement, this 

alternative retains existing small and 

micro entity discounts where eligible 

under AIA authority. To provide these 

discounts and still generate sufficient 

revenue to recover the anticipated 

budgetary requirements over the fiveyear period, maintenance fees must be 

set significantly above unit cost under 

this alternative. Note that the USPTO no 

longer collects activity-based 

information for maintenance fees, and 

previous year unit costs were negligible. 

Except for maintenance fees, this 

alternative sets fees for which there is 

no FY 2022 cost data at current rates. 

For the small number of services that 

have a variable fee, the aggregate 

revenue table does not list a fee. Instead, 

for those services with an estimated 

workload, the workload is listed in 

dollars rather than units to develop 

revenue estimates. Fees without either a 

fixed fee rate or a workload estimate are 

assumed to provide zero revenue. 

Alternative 2 does not align well with 

the agency’s strategic and policy goals. 

Front-end services (i.e., filing, search, 

and examination) are costlier for the 

USPTO to perform than back-end 

services (i.e., issuance and 

maintenance), but both the current (the 

Baseline) and final patent fee schedule 

(Alternative 1) are structured to collect 

fees at filing below the cost and more 

fees further along in the process, when 

the patent owner has better information 

about a patent’s value, rather than at the 

time of filing, when applicants are less 

certain about the value of their 

invention. Setting fees at the cost of the 

service under Alternative 2 would 

reverse the long-established policy to set 

front-end fees below cost to foster 

innovation and would create a barrier 

for entry into the patent system. 

The USPTO has estimated the 

potential quantitative elasticity impacts 

for application filings (e.g., filing, 

search, and examination fees), 

maintenance renewals (all three stages), 

and other major fee categories. Results 

of this analysis indicate that a high cost 

of entry into the patent system could 

lead to a significant decrease in the 

incentives to invest in innovative 

activities among all entities, especially 

for small and micro entities. Under the 

current fee schedule, maintenance fees 

subsidize all applications. By setting 

fees to recover the cost of each service 

at each point in the application process, 

the USPTO would effectively charge 

high fees for every patent application, 

meaning those applicants who have less 

information about the patentability of 


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their claims or the market value of their 

invention may be less likely to pursue 

patent prosecution. The ultimate effect 

of these changes in behavior is likely to 

stifle innovation. While the loss of the 

front-end subsidy designed to promote 

innovation strategies is the most 

obvious cost of this alternative, the 

impacts of much costlier patent 

processing options (e.g., RCEs and 

appeals) are also noticeable. 

Similarly, the USPTO suspects that 

patent renewal rates could change as 

well, given fee reductions for 

maintenance fees at each of the three 

stages. While some innovators and firms 

may choose to file fewer applications 

given the higher front-end costs, others 

whose claims are allowed or upheld 

may seek to fully maximize the benefits 

of obtaining a patent by keeping those 

patents in force for longer than they 

would have previously (i.e., under the 

baseline). In the aggregate, patents that 

are maintained beyond their useful life 

weaken the IP system by slowing the 

rate of public accessibility and followon inventions, which is contrary to the 

USPTO’s policy factor of promoting 

innovation strategies. In sum, this 

alternative is inadequate to accomplish 

the goals as stated in Part IV: 

Rulemaking Goals and Strategies of this 

rule. 

The fee schedule for this alternative is 

available on the fee setting section of the 

USPTO website at https://

www.uspto.gov/ 

FeeSettingAndAdjusting, in the 

document titled ‘‘Setting and Adjusting 

Patent Fees During Fiscal Year 2025— 

FRFA Tables.’’ 

Alternative 3: Across-the-Board 

Adjustment 

In years past, the USPTO used its 

authority to adjust statutory fees 

annually according to increases in the 

consumer price index (CPI), which is a 

commonly used measure of inflation. 

Building on this prior approach and 

incorporating the additional authority 

under the AIA to set small and micro 

entity fees, Alternative 3 would set fees 

by applying a one-time 12.5%, acrossthe-board increase to the baseline 

(current fees) beginning in FY 2025. A 

12.5% increase represents the change in 

revenue needed to achieve the aggregate 

revenue necessary to recover the 

aggregate estimated costs laid out in the 

FY 2025 Budget. 

Under this alternative, nearly every 

existing fee would be increased, no new 

fees would be introduced, and no fees 

would be discontinued or reduced. This 

alternative maintains the status quo 

ratio of front-end and back-end fees, 

given that all fees would be adjusted by 

the same escalation factor, thereby 

promoting innovation strategies and 

allowing applicants to gain access to the 

patent system through fees set below 

cost while patent holders pay issue and 

maintenance fees above cost to 

subsidize the below-cost front-end fees. 

Alternative 3 nevertheless fails to 

implement policy factors and deliver 

benefits beyond what exists in the 

Baseline fee schedule (e.g., no fee 

adjustments to offer new patent 

prosecution options or facilitate more 

effective administration of the patent 

system). 

The fee schedule for this alternative is 

available on the fee setting section of the 

USPTO website at https://

www.uspto.gov/ 

FeeSettingAndAdjusting, in the 

document titled ‘‘Setting and Adjusting 

Patent Fees During Fiscal Year 2025— 

FRFA Tables.’’ 

Alternative 4: Baseline (Current Fee 

Schedule) 

The USPTO considered a no-action 

alternative. This alternative would 

retain the status quo, meaning that the 

USPTO would continue the small and 

micro entity discounts that the Congress 

provided in section 10 of the AIA, as 

amended by the UAIA, and maintain the 

fees that became effective on December 

29, 2022. 

Alternative 4 would not secure 

aggregate revenue to recover the 

aggregate estimated costs laid out in the 

FY 2025 Budget. Under this alternative, 

the USPTO would only expect to collect 

sufficient revenue to continue executing 

some, not all, of the patent priorities. 

For example, the USPTO plans to hire 

approximately 800 to 850 patent 

examiners in FY 2024 through FY 2025, 

and between 700 and 900 patent 

examiners in FY 2026 through FY 2029 

(averaging 350 over estimated attrition 

levels) during the five-year planning 

horizon. This additional examination 

capacity will allow the agency to 

improve patent reliability and maintain 

patent term adjustment (PTA) 

compliance rates. Alternative 4 provides 

neither sufficient resources to hire the 

same number of examiners nor 

sufficient resources to continue building 

the patent operating reserve to its 

optimal level in the five-year planning 

horizon. In fact, current estimates 

project that under the Baseline fee 

schedule, the USPTO would withdraw 

funds from the patent operating reserve 

in every year until the reserve is 

exhausted during FY 2027. This 

approach would not provide sufficient 

aggregate revenue to accomplish the 

USPTO’s rulemaking goals as stated in 

Part IV: Rulemaking Goals and 

Strategies of this rule. IT improvements, 

progress on timely processing and 

quality, and other improvement 

activities would continue, but at a 

significantly slower rate as increases in 

core patent examination costs crowd out 

funding for other improvements. 

Likewise, without a fee increase, the 

USPTO would deplete its operating 

reserves, leaving the USPTO vulnerable 

to fiscal and economic events. This 

approach would expose core operations 

to unacceptable levels of financial risk 

and would position the USPTO to have 

to return to making inefficient, shortterm funding decisions. 

The fee schedule for this alternative is 

available on the fee setting section of the 

USPTO website at https://

www.uspto.gov/ 

FeeSettingAndAdjusting, in the 

document titled ‘‘Setting and Adjusting 

Patent Fees During Fiscal Year 2025— 

FRFA Tables.’’ 

Alternatives Specified by the RFA 

The RFA provides that an agency also 

consider four specified ‘‘alternatives’’ or 

approaches, namely: (i) establishing 

different compliance or reporting 

requirements or timetables that take into 

account the resources available to small 

entities; (ii) clarifying, consolidating, or 

simplifying compliance and reporting 

requirements under the rule for small 

entities; (iii) using performance rather 

than design standards; and (iv) 

exempting small entities from coverage 

of the rule or any part thereof. 5 U.S.C. 

604(c). The USPTO discusses each of 

these specified alternatives or 

approaches below and describes how 

this final rule is adopting these 

approaches. 

i. Differing Requirements 

As discussed above, the changes in 

this final rule would continue existing 

fee discounts for small and micro 

entities that take into account the 

reduced resources available to them as 

well as offer new discounts when 

applicable under AIA authority. 

Specifically, micro entities would 

continue to receive an 80% reduction in 

most patent fees under this final rule, 

and small entities that do not qualify as 

micro entities would continue to receive 

a 60% reduction in most patent fees. 

This final rule sets fee levels but does 

not set or alter procedural requirements 

for asserting small or micro entity 

status. Small entities must merely assert 

small entity status to pay reduced patent 

fees. The small entity may make this 

assertion by either checking a box on 

the transmittal form, ‘‘Applicant claims 

small entity status,’’ or by paying the 

basic filing or basic national small entity 


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fee exactly. The process to claim micro 

entity status is similar in that eligible 

entities need only submit a written 

certification of their status prior to or at 

the time a reduced fee is paid. This final 

rule does not change any reporting 

requirements for any small or micro 

entity. For both small and micro 

entities, the burden to establish their 

status is nominal (making an assertion 

or submitting a certification) and the 

benefit of the fee reductions (60% for 

small entities and 80% for micro 

entities) is significant. 

This final rule makes the best use of 

differing requirements for small and 

micro entities. It also makes the best use 

of the redesigned fee structure, as 

discussed further below. 

ii. Clarification, Consolidation, or 

Simplification of Requirements 

This final rule pertains to setting or 

adjusting patent fees. Any compliance 

or reporting requirements in this rule 

are de minimis and necessary to 

implement lower fees. Therefore, any 

clarifications, consolidations, or 

simplifications to compliance and 

reporting requirements for small entities 

are not applicable or would not achieve 

the objectives of this rulemaking. 

iii. Performance Standards 

Performance standards do not apply 

to this final rule. 

iv. Exemption for Small and Micro 

Entities 

This final rule maintains a 60% 

reduction in fees for small entities and 

an 80% reduction in fees for micro 

entities. The USPTO considered 

exempting small and micro entities from 

paying increased patent fees but 

determined that the USPTO would lack 

statutory authority for this approach. 

Section 10(b) of the AIA, as amended by 

the UAIA, provides that ‘‘fees set or 

adjusted under subsection (a) for filing, 

searching, examining, issuing, 

appealing, and maintaining patent 

applications and patents shall be 

reduced by 60 percent [for small 

entities] and shall be reduced by 80 

percent [for micro entities]’’ (emphasis 

added). Neither the AIA, UAIA, nor any 

other statute authorizes the USPTO to 

exempt small or micro entities, as a 

class of applicants, from paying 

increased patent fees. 

C. Executive Order 12866 (Regulatory 

Planning and Review) 

This final rule has been determined to 

be 3(f)(1) significant for purposes of 

Executive Order (E.O.) 12866 (Sept. 30, 

1993), as amended by E.O. 14094 (April 

6, 2023), Modernizing Regulatory 

Review. The USPTO has developed an 

RIA as required for rulemakings deemed 

to be 3(f)(1) significant. The complete 

RIA is available on the fee setting 

section of the USPTO website at https:// 

www.uspto.gov/ 

FeeSettingAndAdjusting. 

D. Executive Order 13563 (Improving 

Regulation and Regulatory Review) 

The USPTO has complied with E.O. 

13563 (Jan. 18, 2011). Specifically, the 

USPTO has, to the extent feasible and 

applicable: (1) made a reasoned 

determination that the benefits justify 

the costs of the final rule; (2) tailored 

the final rule to impose the least burden 

on society consistent with obtaining the 

regulatory objectives; (3) selected a 

regulatory approach that maximizes net 

benefits; (4) specified performance 

objectives; (5) identified and assessed 

available alternatives; (6) involved the 

public in an open exchange of 

information and perspectives among 

experts in relevant disciplines, affected 

stakeholders in the private sector, and 

the public as a whole, and provided 

online access to the rulemaking docket; 

(7) attempted to promote coordination, 

simplification, and harmonization 

across government agencies and 

identified goals designed to promote 

innovation; (8) considered approaches 

that reduce burdens and maintain 

flexibility and freedom of choice for the 

public; and (9) ensured the objectivity of 

scientific and technological information 

and processes. 

E. Executive Order 13132 (Federalism) 

This rulemaking does not contain 

policies with federalism implications 

sufficient to warrant preparation of a 

Federalism Assessment under E.O. 

13132 (Aug. 4, 1999). 

F. Executive Order 13175 (Tribal 

Consultation) 

This rulemaking will not: (1) have 

substantial direct effects on one or more 

Indian Tribes; (2) impose substantial 

direct compliance costs on Indian Tribal 

governments; or (3) preempt Tribal law. 

Therefore, a Tribal summary impact 

statement is not required under E.O. 

13175 (Nov. 6, 2000). 

G. Executive Order 13211 (Energy 

Effects) 

This rulemaking is not a significant 

energy action under E.O. 13211 because 

this rulemaking is not likely to have a 

significant adverse effect on the supply, 

distribution, or use of energy. Therefore, 

a Statement of Energy Effects is not 

required under E.O. 13211 (May 18, 

2001). 

H. Executive Order 12988 (Civil Justice 

Reform) 

This rulemaking meets applicable 

standards to minimize litigation, 

eliminate ambiguity, and reduce burden 

as set forth in sections 3(a) and 3(b)(2) 

of E.O. 12988 (Feb. 5, 1996). 

I. Executive Order 13045 (Protection of 

Children) 

This rulemaking does not concern an 

environmental risk to health or safety 

that may disproportionately affect 

children under E.O. 13045 (Apr. 21, 

1997). 

J. Executive Order 12630 (Taking of 

Private Property) 

This rulemaking will not affect a 

taking of private property or otherwise 

have taking implications under E.O. 

12630 (Mar. 15, 1988). 

K. Congressional Review Act 

Under the Congressional Review Act 

provisions of the Small Business 

Regulatory Enforcement Fairness Act of 

1996 (5 U.S.C. 801 et seq.), the USPTO 

will submit a report containing the rule 

and other required information to the 

United States Senate, the United States 

House of Representatives, and the 

Comptroller General of the Government 

Accountability Office. The changes in 

this final rule are expected to result in 

an annual effect on the economy of $100 

million or more, a major increase in 

costs or prices, or significant adverse 

effects on competition, employment, 

investment, productivity, innovation, or 

the ability of United States-based 

enterprises to compete with foreignbased enterprises in domestic and 

export markets. Therefore, this final rule 

meets the criteria in 5 U.S.C. 804(2). 

L. Unfunded Mandates Reform Act of 

1995 

The changes set forth in this 

rulemaking do not involve a Federal 

intergovernmental mandate that will 

result in the expenditure by State, local, 

and Tribal governments, in the 

aggregate, of $100 million (as adjusted) 

or more in any one year, or a Federal 

private sector mandate that will result 

in the expenditure by the private sector 

of $100 million (as adjusted) or more in 

any one year, and will not significantly 

or uniquely affect small governments. 

Therefore, no actions are necessary 

under the provisions of the Unfunded 

Mandates Reform Act of 1995. See 2 

U.S.C. 1501 et seq. 

M. National Environmental Policy Act 

This rulemaking will not have any 

effect on the quality of the environment 

and is thus categorically excluded from 


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review under the National 

Environmental Policy Act of 1969. See 

42 U.S.C. 4321 et seq. 

N. National Technology Transfer and 

Advancement Act 

The requirements of section 12(d) of 

the National Technology Transfer and 

Advancement Act of 1995 (15 U.S.C. 

272 note) are not applicable because this 

rulemaking does not contain provisions 

which involve the use of technical 

standards. 

O. Paperwork Reduction Act 

The Paperwork Reduction Act of 1995 

(44 U.S.C. 3501 et seq.) requires that the 

USPTO consider the impact of 

paperwork and other information 

collection burdens imposed on the 

public. The collection of information 

involved in this final rule has been 

reviewed and previously approved by 

OMB under control numbers 0651– 

0012, 0651–0016, 0651–0017, 0651– 

0020, 0651–0021, 0651–0024, 0651– 

0027, 0651–0031, 0651–0032, 0651– 

0033, 0651–0034, 0651–0035, 0651– 

0059, 0651–0062, 0651–0063, 0651– 

0064, 0651–0069, 0651–0075 and 0651– 

0089. In addition, updates to the 

aforementioned information collections 

as a result of this final rule will be 

submitted to the OMB as nonsubstantive change requests. 

Notwithstanding any other provision 

of law, no person is required to respond 

to nor shall any person be subject to a 

penalty for failure to comply with a 

collection of information subject to the 

requirements of the Paperwork 

Reduction Act unless that collection of 

information displays a currently valid 

OMB control number. 

P. E-Government Act Compliance 

The USPTO is committed to 

compliance with the E-Government Act 

to promote the use of the internet and 

other information technologies, to 

provide increased opportunities for 

citizen access to government 

information and services, and for other 

purposes. 

List of Subjects 

37 CFR Part 1 

Administrative practice and 

procedure, Biologics, Courts, Freedom 

of information, Inventions and patents, 

Reporting and recordkeeping 

requirements, Small businesses. 

37 CFR Part 41 

Administrative practice and 

procedure, Inventions and patents, 

Lawyers, Reporting and recordkeeping 

requirements. 

37 CFR Part 42 

Administrative practice and 

procedure, Inventions and patents, 

Lawyers. 

For the reasons set forth in the 

preamble, 37 CFR parts 1, 41, and 42 are 

amended as follows: 

PART 1—RULES OF PRACTICE IN 

PATENT CASES 

■ 1. The authority citation for part 1 

continues to read as follows: 

Authority: 35 U.S.C. 2(b)(2), unless 

otherwise noted. 

■ 2. Section 1.16 is amended by revising 

the tables 1 through 19 in paragraphs (a) 

through (s) and table 21 in paragraph (u) 

to read as follows: 

§ 1.16 National application filing, search, 

and examination fees. 

(a) * * * 

TABLE 1 TO PARAGRAPH (a) 

By a micro entity (§ 1.29) ......... $70.00 

By a small entity (§ 1.27(a)) ..... 140.00 

By a small entity (§ 1.27(a)) if 

the application is submitted 

in compliance with the 

USPTO electronic filing system (§ 1.27(b)(2)) .................. 70.00 

By other than a small or micro 

entity ...................................... 350.00 

(b) * * * 

TABLE 2 TO PARAGRAPH (b) 

By a micro entity (§ 1.29) ......... $60.00 

By a small entity (§ 1.27(a)) ..... 120.00 

By other than a small or micro 

entity ...................................... 300.00 

(c) * * * 

TABLE 3 TO PARAGRAPH (c) 

By a micro entity (§ 1.29) ......... $48.00 

By a small entity (§ 1.27(a)) ..... 96.00 

By other than a small or micro 

entity ...................................... 240.00 

(d) * * * 

TABLE 4 TO PARAGRAPH (d) 

By a micro entity (§ 1.29) ......... $65.00 

By a small entity (§ 1.27(a)) ..... 130.00 

By other than a small or micro 

entity ...................................... 325.00 

(e) * * * 

TABLE 5 TO PARAGRAPH (e) 

By a micro entity (§ 1.29) ......... $70.00 

By a small entity (§ 1.27(a)) ..... 140.00 

TABLE 5 TO PARAGRAPH (e)— 

Continued 

By other than a small or micro 

entity ...................................... 350.00 

(f) * * * 

TABLE 6 TO PARAGRAPH (f) 

By a micro entity (§ 1.29) ......... $34.00 

By a small entity (§ 1.27(a)) ..... 68.00 

By other than a small or micro 

entity ...................................... 170.00 

(g) * * * 

TABLE 7 TO PARAGRAPH (g) 

By a micro entity (§ 1.29) ......... $13.00 

By a small entity (§ 1.27(a)) ..... 26.00 

By other than a small or micro 

entity ...................................... 65.00 

(h) * * * 

TABLE 8 TO PARAGRAPH (h) 

By a micro entity (§ 1.29) ......... $120.00 

By a small entity (§ 1.27(a)) ..... 240.00 

By other than a small or micro 

entity ...................................... 600.00 

(i) * * * 

TABLE 9 TO PARAGRAPH (i) 

By a micro entity (§ 1.29) ......... $40.00 

By a small entity (§ 1.27(a)) ..... 80.00 

By other than a small or micro 

entity ...................................... 200.00 

(j) * * * 

TABLE 10 TO PARAGRAPH (j) 

By a micro entity (§ 1.29) ......... $185.00 

By a small entity (§ 1.27(a)) ..... 370.00 

By other than a small or micro 

entity ...................................... 925.00 

(k) * * * 

TABLE 11 TO PARAGRAPH (k) 

By a micro entity (§ 1.29) ......... $154.00 

By a small entity (§ 1.27(a)) ..... 308.00 

By other than a small or micro 

entity ...................................... 770.00 

(l) * * * 

TABLE 12 TO PARAGRAPH (l) 

By a micro entity (§ 1.29) ......... $60.00 

By a small entity (§ 1.27(a)) ..... 120.00 

By other than a small or micro 

entity ...................................... 300.00 

(m) * * * 


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TABLE 13 TO PARAGRAPH (m) 

By a micro entity (§ 1.29) ......... $97.00 

By a small entity (§ 1.27(a)) ..... 194.00 

By other than a small or micro 

entity ...................................... 485.00 

(n) * * * 

TABLE 14 TO PARAGRAPH (n) 

By a micro entity (§ 1.29) ......... $154.00 

By a small entity (§ 1.27(a)) ..... 308.00 

By other than a small or micro 

entity ...................................... 770.00 

(o) * * * 

TABLE 15 TO PARAGRAPH (o) 

By a micro entity (§ 1.29) ......... $176.00 

By a small entity (§ 1.27(a)) ..... 352.00 

By other than a small or micro 

entity ...................................... 880.00 

(p) * * * 

TABLE 16 TO PARAGRAPH (p) 

By a micro entity (§ 1.29) ......... $140.00 

By a small entity (§ 1.27(a)) ..... 280.00 

By other than a small or micro 

entity ...................................... 700.00 

(q) * * * 

TABLE 17 TO PARAGRAPH (q) 

By a micro entity (§ 1.29) ......... $145.00 

By a small entity (§ 1.27(a)) ..... 290.00 

By other than a small or micro 

entity ...................................... 725.00 

(r) * * * 

TABLE 18 TO PARAGRAPH (r) 

By a micro entity (§ 1.29) ......... $510.00 

By a small entity (§ 1.27(a)) ..... 1,020.00 

By other than a small or micro 

entity ...................................... 2,550.00 

(s) * * * 

TABLE 19 TO PARAGRAPH (s) 

By a micro entity (§ 1.29) ......... $90.00 

By a small entity (§ 1.27(a)) ..... 180.00 

By other than a small or micro 

entity ...................................... 450.00 

* * * * * 

(u) * * * 

TABLE 21 TO PARAGRAPH (u) 

By a micro entity (§ 1.29) ......... $86.00 

By a small entity (§ 1.27(a)) ..... 172.00 

By other than a small or micro 

entity ...................................... 430.00 

■ 3. Section 1.17 is amended by: 

■ a. Revising paragraph (a) introductory 

text; 

■ b. Revising tables 1 through 10 in 

paragraphs (a)(1) through (5), (c), (d), 

(e)(1) and (2), and (f); 

■ c. Revising paragraph (g); 

■ d. Redesignating tables 12 through 15 

in paragraphs (h), (i)(1) and (2), and (k) 

as tables 14 through 17 to paragraphs 

(h), (i)(1) and (2), and (k) and revising 

them; 

■ e. Revising paragraph (m); 

■ f. Redesignating tables 17 and 18 in 

paragraphs (o) and (p) as table 21 and 

22 to paragraphs (o) and (p) and revising 

them; 

■ g. Revising paragraph (q); 

■ h. Redesigning tables 19 through 21 in 

paragraphs (r) through (t) as tables 23 

through 25 to paragraphs (r) through (t) 

and revising them; and 

■ i. Adding paragraphs (u) through (w). 

The revisions and additions read as 

follows: 

§ 1.17 Patent application and 

reexamination processing fees. 

(a) Extension fees pursuant to 

§ 1.136(a), except in provisional 

applications filed under § 1.53(c): 

(1) * * * 

TABLE 1 TO PARAGRAPH (a)(1) 

By a micro entity (§ 1.29) ......... $47.00 

By a small entity (§ 1.27(a)) ..... 94.00 

By other than a small or micro 

entity ...................................... 235.00 

(2) * * * 

TABLE 2 TO PARAGRAPH (a)(2) 

By a micro entity (§ 1.29) ......... $138.00 

By a small entity (§ 1.27(a)) ..... 276.00 

By other than a small or micro 

entity ...................................... 690.00 

(3) * * * 

TABLE 3 TO PARAGRAPH (a)(3) 

By a micro entity (§ 1.29) ......... $318.00 

By a small entity (§ 1.27(a)) ..... 636.00 

By other than a small or micro 

entity ...................................... 1,590.00 

(4) * * * 

TABLE 4 TO PARAGRAPH (a)(4) 

By a micro entity (§ 1.29) ......... $499.00 

By a small entity (§ 1.27(a)) ..... 998.00 

By other than a small or micro 

entity ...................................... 2,495.00 

(5) * * * 

TABLE 5 TO PARAGRAPH (a)(5) 

By a micro entity (§ 1.29) ......... $679.00 

By a small entity (§ 1.27(a)) ..... 1,358.00 

By other than a small or micro 

entity ...................................... 3,395.00 

* * * * * 

(c) * * * 

TABLE 6 TO PARAGRAPH (c) 

By a micro entity (§ 1.29) ......... $903.00 

By a small entity (§ 1.27(a)) ..... 1,806.00 

By other than a small or micro 

entity ...................................... 4,515.00 

(d) * * * 

TABLE 7 TO PARAGRAPH (d) 

By a micro entity (§ 1.29) ......... $138.00 

By a small entity (§ 1.27(a)) ..... 276.00 

By other than a small or micro 

entity ...................................... 690.00 

(e) * * * 

(1) * * * 

TABLE 8 TO PARAGRAPH (e)(1) 

By a micro entity (§ 1.29) ......... $300.00 

By a small entity (§ 1.27(a)) ..... 600.00 

By other than a small or micro 

entity ...................................... 1,500.00 

(2) * * * 

TABLE 9 TO PARAGRAPH (e)(2) 

By a micro entity (§ 1.29) ......... $572.00 

By a small entity (§ 1.27(a)) ..... 1,144.00 

By other than a small or micro 

entity ...................................... 2,860.00 

(f) * * * 

TABLE 10 TO PARAGRAPH (f) 

By a micro entity (§ 1.29) ......... $90.00 

By a small entity (§ 1.27(a)) ..... 180.00 

By other than a small or micro 

entity ...................................... 450.00 

Note 1 to table 10 to paragraph (f): 

1.36(a)—for revocation of a power of attorney by fewer than all of the applicants. 

§ 1.53(e)—to accord a filing date. 

§ 1.182—for decision on a question not specifically provided for in an application for patent. 

§ 1.183—to suspend the rules in an application for patent. 

§ 1.741(b)—to accord a filing date to an application under § 1.740 for extension of a patent term. 

§ 1.1023—to review the filing date of an 

international design application. 


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(g)(1) For filing a petition under one 

of the following sections which refers to 

this paragraph (g): 

TABLE 11 TO PARAGRAPH (g)(1) 

By a micro entity (§ 1.29) ......... $47.00 

By a small entity (§ 1.27(a)) ..... 94.00 

By other than a small or micro 

entity ...................................... 235.00 

Note 2 to table 11 to paragraph (g)(1): 

§ 1.12—for access to an assignment record. 

§ 1.14—for access to an application. 

§ 1.46—for filing an application on behalf of 

an inventor by a person who otherwise shows 

sufficient proprietary interest in the matter. 

§ 1.55(f)—for filing a belated certified copy 

of a foreign application. 

§ 1.55(g)—for filing a belated certified copy 

of a foreign application. 

§ 1.57(a)—for filing a belated certified copy 

of a foreign application. 

§ 1.59—for expungement of information. 

§ 1.136(b)—for review of a request for extension of time when the provisions of 

§ 1.136(a) are not available. 

§ 1.377—for review of decision refusing to 

accept and record payment of a maintenance 

fee filed prior to expiration of a patent. 

§ 1.550(c)—for patent owner requests for 

extension of time in ex parte reexamination 

proceedings. 

§ 1.956—for patent owner requests for extension of time in inter partes reexamination 

proceedings. 

§ 5.12 of this chapter—for expedited handling of a foreign filing license. 

§ 5.15 of this chapter—for changing the 

scope of a license. 

§ 5.25 of this chapter—for retroactive 

license. 

(2) For filing a petition to suspend 

action in an application under 

§ 1.103(a): 

(i) For filing a first request for 

suspension pursuant to § 1.103(a) in an 

application: 

TABLE 12 TO PARAGRAPH (g)(2)(i) 

By a micro entity (§ 1.29) ......... $60.00 

By a small entity (§ 1.27(a)) ..... 120.00 

By other than a small or micro 

entity ...................................... 300.00 

(ii) For filing a second or subsequent 

request for suspension pursuant to 

§ 1.103(a) in an application: 

TABLE 13 TO PARAGRAPH (g)(2)(ii) 

By a micro entity (§ 1.29) ......... $90.00 

By a small entity (§ 1.27(a)) ..... 180.00 

By other than a small or micro 

entity ...................................... 450.00 

(h) * * * 

TABLE 14 TO PARAGRAPH (h) 

By a micro entity (§ 1.29) ......... $30.00 

By a small entity (§ 1.27(a)) ..... 60.00 

By other than a small or micro 

entity ...................................... 150.00 

Note 3 to table 14 to paragraph (h): 

1.84—for accepting color drawings or photographs. 

§ 1.91—for entry of a model or exhibit. 

§ 1.102(d)—to make an application special. 

§ 1.138(c)—to expressly abandon an application to avoid publication. 

§ 1.313—to withdraw an application from 

issue. 

§ 1.314—to defer issuance of a patent. 

(i) * * * 

(1) * * * 

TABLE 15 TO PARAGRAPH (i)(1) 

By a micro entity (§ 1.29) ......... $30.00 

By a small entity (§ 1.27(a)) ..... 60.00 

By other than a small or micro 

entity ...................................... 150.00 

Note 4 to table 15 to paragraph (i)(1): 

§ 1.28(c)(3)—for processing a non-itemized 

fee deficiency based on an error in small entity status. 

§ 1.29(k)(3)—for processing a non-itemized 

fee deficiency based on an error in micro entity status. 

§ 1.41(b)—for supplying the name or names 

of the inventor or joint inventors in an application without either an application data sheet or 

the inventor’s oath or declaration, except in 

provisional applications. 

§ 1.48—for correcting inventorship, except 

in provisional applications. 

§ 1.52(d)—for processing a nonprovisional 

application filed with a specification in a language other than English. 

§ 1.53(c)(3)—to convert a provisional application filed under § 1.53(c) into a nonprovisional application under § 1.53(b). 

§ 1.71(g)(2)—for processing a belated 

amendment under § 1.71(g). 

§ 1.102(e)—for requesting prioritized examination of an application. 

§ 1.103(b)—for requesting limited suspension of action, continued prosecution application for a design patent (§ 1.53(d)). 

§ 1.103(c)—for requesting limited suspension of action, request for continued examination (§ 1.114). 

§ 1.103(d)—for requesting deferred examination of an application. 

§ 1.291(c)(5)—for processing a second or 

subsequent protest by the same real party in 

interest. 

§ 3.81 of this chapter—for a patent to issue 

to assignee, assignment submitted after payment of the issue fee. 

(2) * * * 

TABLE 16 TO PARAGRAPH (i)(2) 

By a micro entity (§ 1.29) ......... $151.00 

By a small entity (§ 1.27(a)) ..... 151.00 

By other than a small or micro 

entity ...................................... 151.00 

Note 5 to table 16 to paragraph (i)(2): 

§ 1.217—for processing a redacted copy of 

a paper submitted in the file of an application 

in which a redacted copy was submitted for 

the patent application publication. 

§ 1.221—for requesting voluntary publication 

or republication of an application. 

* * * * * 

(k) * * * 

TABLE 17 TO PARAGRAPH (k) 

By a micro entity (§ 1.29) ......... $344.00 

By a small entity (§ 1.27(a)) ..... 688.00 

TABLE 17 TO PARAGRAPH (k)— 

Continued 

By other than a small or micro 

entity ...................................... 1,720.00 

* * * * * 

(m)(1) For filing a petition under one 

of the following sections which refers to 

this paragraph (m), when the petition is 

filed more than two years after the date 

when the required action was due: 

TABLE 18 TO PARAGRAPH (m)(1) 

By a micro entity (§ 1.29) ......... $600.00 

By a small entity (§ 1.27(a)) ..... 1,200.00 

By other than a small or micro 

entity ...................................... 3,000.00 

Note 6 to table 18 to paragraph (m)(1): 

§ 1.55(e)—for the delayed submission of a 

priority claim, when the petition is filed more 

than two years after the date when the priority 

claim was due. 

§ 1.78(c) or (e)—for the delayed submission 

of a benefit claim, when the petition is filed 

more than two years after the date when the 

benefit claim was due. 

§ 1.137—for filing a petition for the revival of 

an abandoned application for a patent, or for 

the delayed payment of the fee for issuing 

each patent, when the petition is filed more 

than two years after the abandonment of the 

application. 

§ 1.137—for filing a petition for the revival of 

a reexamination proceeding that was terminated or limited due to a delayed response by 

the patent owner, when the petition is filed 

more than two years after the termination or 

limitation of the reexamination proceeding. 

§ 1.378—for filing a petition to accept a delayed payment of the fee for maintaining a 

patent in force, when the petition is filed more 

than two years after the patent expiration date. 

§ 1.1051—for filing a petition to excuse an 

applicant’s failure to act within prescribed time 

limits in an international design application, 

when the petition is filed more than two years 

after the abandonment of the application. 

(2) For filing a petition under 

§ 1.55(e), § 1.78(c), § 1.78(e), § 1.137, 

§ 1.1051, or § 1.378, when the petition is 

filed before the time period specified in 

paragraph (m)(1) of this section: 

TABLE 19 TO PARAGRAPH (m)(2) 

By a micro entity (§ 1.29) ......... $452.00 

By a small entity (§ 1.27(a)) ..... 904.00 

By other than a small or micro 

entity ...................................... 2,260.00 

(3) For filing a petition under 

§ 1.55(c), § 1.78(b), or § 1.452 for the 

extension of the 12-month (six-month 

for designs) period for filing a 

subsequent application: 

TABLE 20 TO PARAGRAPH (m)(3) 

By a micro entity (§ 1.29) ......... $452.00 

By a small entity (§ 1.27(a)) ..... 904.00 

By other than a small or micro 

entity ...................................... 2,260.00 


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* * * * * 

(o) * * * 

TABLE 21 TO PARAGRAPH (o) 

By a small entity (§ 1.27(a)) or 

micro entity (§ 1.29) .............. $78.00 

By other than a small or micro 

entity ...................................... 195.00 

(p) * * * 

TABLE 22 TO PARAGRAPH (p) 

By a micro entity (§ 1.29) ......... $56.00 

By a small entity (§ 1.27(a)) ..... 112.00 

By other than a small or micro 

entity ...................................... 280.00 

(q) Processing fee for taking action 

under one of the following sections 

which refers to this paragraph (q): 

$54.00. 

(1) Section 1.41—to supply the name 

or names of the inventor or inventors 

after the filing date without a cover 

sheet as prescribed by § 1.51(c)(1) in a 

provisional application. 

(2) Section 1.48—for correction of 

inventorship in a provisional 

application. 

(3) Section 1.53(c)(2)—to convert a 

nonprovisional application filed under 

§ 1.53(b) to a provisional application 

under § 1.53(c). 

(r) * * * 

TABLE 23 TO PARAGRAPH (r) 

By a micro entity (§ 1.29) ......... $189.00 

By a small entity (§ 1.27(a)) ..... 378.00 

By other than a small or micro 

entity ...................................... 945.00 

(s) * * * 

TABLE 24 TO PARAGRAPH (s) 

By a micro entity (§ 1.29) ......... $189.00 

By a small entity (§ 1.27(a)) ..... 378.00 

By other than a small or micro 

entity ...................................... 945.00 

(t) * * * 

TABLE 25 TO PARAGRAPH (t) 

By a micro entity (§ 1.29) ......... $39.00 

By a small entity (§ 1.27(a)) ..... 78.00 

By other than a small or micro 

entity ...................................... 195.00 

(u) Extension fees pursuant to 

§ 1.136(a) in provisional applications 

filed under § 1.53(c): 

(1) For reply within first month: 

TABLE 26 TO PARAGRAPH (u)(1) 

By a micro entity (§ 1.29) ......... $10.00 

By a small entity (§ 1.27(a)) ..... 20.00 

TABLE 26 TO PARAGRAPH (u)(1)— 

Continued 

By other than a small or micro 

entity ...................................... 50.00 

(2) For reply within second month: 

TABLE 27 TO PARAGRAPH (u)(2) 

By a micro entity (§ 1.29) ......... $20.00 

By a small entity (§ 1.27(a)) ..... 40.00 

By other than a small or micro 

entity ...................................... 100.00 

(3) For reply within third month: 

TABLE 28 TO PARAGRAPH (u)(3) 

By a micro entity (§ 1.29) ......... $40.00 

By a small entity (§ 1.27(a)) ..... 80.00 

By other than a small or micro 

entity ...................................... 200.00 

(4) For reply within fourth month: 

TABLE 29 TO PARAGRAPH (u)(4) 

By a micro entity (§ 1.29) ......... $80.00 

By a small entity (§ 1.27(a)) ..... 160.00 

By other than a small or micro 

entity ...................................... 400.00 

(5) For reply within fifth month: 

TABLE 30 TO PARAGRAPH (u)(5) 

By a micro entity (§ 1.29) ......... $160.00 

By a small entity (§ 1.27(a)) ..... 320.00 

By other than a small or micro 

entity ...................................... 800.00 

(v) Information disclosure statement 

size fee for an information disclosure 

statement filed under § 1.97 that, 

inclusive of the number of applicantprovided or patent owner-provided 

items of information listed under 

§ 1.98(a)(1) on the information 

disclosure statement, causes the 

cumulative number of applicantprovided or patent owner-provided 

items of information under § 1.98(a)(1) 

during the pendency of the application 

or reexamination proceeding to: (1) Exceed 50 but not exceed 

100. . . . . .$200; 

(2) Exceed 100 but not exceed 

200. . . . . .$500, less any amount 

previously paid under paragraph (v)(1) 

of this section; and 

(3) Exceed 200..... .$800, less any 

amounts previously paid under 

paragraphs (v)(1) and/or (2) of this 

section. 

(w) Additional fee for presenting a 

benefit claim in a nonprovisional 

application under 35 U.S.C. 120, 121, 

365(c), or 386(c) and § 1.78(d): 

(1) When the actual filing date of the 

nonprovisional application in which the 

benefit claim is presented is more than 

six years and no more than nine years 

from the earliest filing date for which 

benefit is claimed under 35 U.S.C. 120, 

121, 365(c), or 386(c) and § 1.78(d): 

TABLE 31 TO PARAGRAPH (w)(1) 

By a micro entity (§ 1.29) ......... $540.00 

By a small entity (§ 1.27(a)) ..... 1,080.00 

By other than a small or micro 

entity ...................................... 2,700.00 

(2) When the actual filing date of the 

nonprovisional application in which the 

benefit claim is presented is more than 

nine years from the earliest filing date 

for which benefit is claimed under 35 

U.S.C. 120, 121, 365(c), or 386(c) and 

§ 1.78(d), the amount shown in this 

paragraph is due, less any amount 

previously paid under paragraph (w)(1) 

of this section: 

TABLE 32 TO PARAGRAPH (w)(2) 

By a micro entity (§ 1.29) ......... $800.00 

By a small entity (§ 1.27(a)) ..... 1,600.00 

By other than a small or micro 

entity ...................................... 4,000.00 

■ 4. Section 1.18 is amended by: 

■ a. Revising tables 1 through 3 in 

paragraphs (a), (b)(1), and (c); and 

■ b. Revising paragraphs (d)(2) and (3), 

(e), and (f). 

The revisions read as follows: 

§ 1.18 Patent post allowance (including 

issue) fees. 

(a) * * * 

TABLE 1 TO PARAGRAPH (a) 

By a micro entity (§ 1.29) ......... $258.00 

By a small entity (§ 1.27(a)) ..... 516.00 

By other than a small or micro 

entity ...................................... 1,290.00 

(b)(1) * * * 

TABLE 2 TO PARAGRAPH (b)(1) 

By a micro entity (§ 1.29) ......... $260.00 

By a small entity (§ 1.27(a)) ..... 520.00 

By other than a small or micro 

entity ...................................... 1,300.00 

* * * * * 

(c) * * * 

TABLE 3 TO PARAGRAPH (c) 

By a micro entity (§ 1.29) ......... $181.00 

By a small entity (§ 1.27(a)) ..... 362.00 

By other than a small or micro 

entity ...................................... 905.00 

(d) * * * 

(2) Publication fee before January 1, 

2014: $320.00. 


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(3) Republication fee (§ 1.221(a)): 

$344.00. 

(e) For filing an application for patent 

term adjustment under § 1.705: $226.00 

(f) For filing a request for 

reinstatement of all or part of the term 

reduced pursuant to § 1.704(b) in an 

application for patent term adjustment 

under § 1.705: $452.00. 

■ 5. Section 1.19 is amended by revising 

paragraphs (a)(2), (b)(1)(i)(A), (B), and 

(D), (b)(1)(ii)(A) and (B), (b)(3) and (4), 

and (f) to read as follows: 

§ 1.19 Document supply fees. 

* * * * * 

(a) * * * 

(2) Printed copy of a plant patent in 

color: $16.00. 

* * * * * 

(b) * * * 

(1) * * * 

(i) * * * 

(A) Application as filed: $38.00. 

(B) Copy Patent File Wrapper, Paper 

Medium, Any Number of Sheets: 

$312.00. 

* * * * * 

(D) Individual application documents, 

other than application as filed, per 

document: $27.00. 

(ii) * * * 

(A) Application as filed: $38.00. 

(B) Copy Patent File Wrapper, 

Electronic, Any Medium, Any Size: 

$65.00. 

* * * * * 

(3) Copy of Office records, except 

copies available under paragraph (b)(1) 

or (2) of this section: $27.00. 

(4) For assignment records, abstract of 

title and certification, per patent: 

$38.00. 

* * * * * 

(f) Uncertified copy of a non-United 

States patent document, per document: 

$27.00. 

* * * * * 

■ 6. Section 1.20 is amended by: 

■ a. Revising paragraphs (a) and (b); 

■ b. Revising tables 1 through 5 in 

paragraphs (c)(1)(i) through (c)(4) and 

(c)(6); 

■ c. Revising paragraph (d); 

■ d. Revising tables 7 through 10 in 

paragraphs (e) through (h); 

■ e. Revising paragraph (j); and 

■ f. Redesignating tables 12 through 15 

in paragraphs (k)(1) and (2) and (k)(3)(i) 

and (ii) as tables 11 through 14 in 

paragraphs (k)(1) and (2) and (k)(3)(i) 

and (ii) and revising them. 

The revisions read as follows: 

§ 1.20 Post-issuance fees. 

(a) For providing a certificate of 

correction for an applicant’s mistake 

(§ 1.323): $172.00. 

(b) Processing fee for correcting 

inventorship in a patent (§ 1.324): 

$172.00. 

(c) * * * 

(1)(i) * * * * * 

TABLE 1 TO PARAGRAPH (c)(1)(i) 

By a micro entity (§ 1.29) ......... $1,355.00 

By a small entity (§ 1.27(a)) ..... 2,710.00 

By other than a small or micro 

entity ...................................... 6,775.00 

* * * * * 

(2) * * * 

TABLE 2 TO PARAGRAPH (c)(2) 

By a micro entity (§ 1.29) ......... $2,709.00 

By a small entity (§ 1.27(a)) ..... 5,418.00 

By other than a small or micro 

entity ...................................... 13,545.00 

(3) * * * 

TABLE 3 TO PARAGRAPH (c)(3) 

By a micro entity (§ 1.29) ......... $120.00 

By a small entity (§ 1.27(a)) ..... 240.00 

By other than a small or micro 

entity ...................................... 600.00 

(4) * * * 

TABLE 4 TO PARAGRAPH (c)(4) 

By a micro entity (§ 1.29) ......... $40.00 

By a small entity (§ 1.27(a)) ..... 80.00 

By other than a small or micro 

entity ...................................... 200.00 

* * * * * 

(6) * * * 

TABLE 5 TO PARAGRAPH (c)(6) 

By a micro entity (§ 1.29) ......... $439.00 

By a small entity (§ 1.27(a)) ..... 878.00 

By other than a small or micro 

entity ...................................... 2,195.00 

* * * * * 

(d) For filing each statutory disclaimer 

(§ 1.321): $183.00. 

(e) * * * 

TABLE 7 TO PARAGRAPH (e) 

By a micro entity (§ 1.29) ......... $430.00 

By a small entity (§ 1.27(a)) ..... 860.00 

By other than a small or micro 

entity ...................................... 2,150.00 

(f) * * * 

TABLE 8 TO PARAGRAPH (f) 

By a micro entity (§ 1.29) ......... $808.00 

By a small entity (§ 1.27(a)) ..... 1,616.00 

By other than a small or micro 

entity ...................................... 4,040.00 

(g) * * * 

TABLE 9 TO PARAGRAPH (g) 

By a micro entity (§ 1.29) ......... $1,656.00 

By a small entity (§ 1.27(a)) ..... 3,312.00 

By other than a small or micro 

entity ...................................... 8,280.00 

(h) * * * 

TABLE 10 TO PARAGRAPH (h) 

By a micro entity (§ 1.29) ......... $108.00 

By a small entity (§ 1.27(a)) ..... 216.00 

By other than a small or micro 

entity ...................................... 540.00 

* * * * * 

(j) For filing an application for 

extension of the term of a patent: 

(1) Application for extension under 

§ 1.740: $2,500.00. 

(2) Initial application for interim 

extension under § 1.790: $1,320.00. 

(3) Subsequent application for interim 

extension under § 1.790: $680.00. 

(4) Requesting supplemental 

redetermination after notice of final 

determination: $1,440.00. 

(k) * * * 

(1) * * * 

TABLE 11 TO PARAGRAPH (k)(1) 

By a micro entity (§ 1.29) ......... $993.00 

By a small entity (§ 1.27(a)) ..... 1,986.00 

By other than a small or micro 

entity ...................................... 4,965.00 

(2) * * * 

TABLE 12 TO PARAGRAPH (k)(2) 

By a micro entity (§ 1.29) ......... $2,731.00 

By a small entity (§ 1.27(a)) ..... 5,462.00 

By other than a small or micro 

entity ...................................... 13,655.00 

(3) * * * 

(i) * * * 

TABLE 13 TO PARAGRAPH (k)(3)(i) 

By a micro entity (§ 1.29) ......... $39.00 

By a small entity (§ 1.27(a)) ..... 78.00 

By other than a small or microentity ...................................... 195.00 

(ii) * * * 

TABLE 14 TO PARAGRAPH (k)(3)(ii) 

By a micro entity (§ 1.29) ......... $65.00 

By a small entity (§ 1.27(a)) ..... 130.00 

By other than a small or micro 

entity ...................................... 325.00 

■ 7. Section 1.21 is amended by: 

■ a. Revising paragraphs (a)(1)(i), 

(a)(1)(ii)(A), (a)(1)(iii) and (iv), (a)(2)(i) 


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and (ii), (a)(4)(i) and (ii), (a)(5)(i) and 

(ii), (a)(6)(ii), (a)(9)(i) and (ii), (a)(10), (e), 

(h)(2), (i), and (n); 

■ b. Revising tables 1 and 2 in 

paragraphs (o)(1) and (2); and 

■ c. Revising paragraphs (p) and (q). 

The revisions read as follows: 

§ 1.21 Miscellaneous fees and charges. 

* * * * * 

(a) * * * 

(l) * * * 

(i) Application Fee (non-refundable): 

$118.00. 

(ii) * * * 

(A) For test administration by 

commercial entity: $226.00. 

* * * * * 

(iii) For USPTO-administered review 

of registration examination: $505.00. 

(iv) Request for extension of time in 

which to schedule examination for 

registration to practice (non-refundable): 

$124.00. 

(2) * * * 

(i) On registration to practice under 

§ 11.6 of this chapter: $226.00. 

(ii) On grant of limited recognition 

under § 11.9(b) of this chapter: $226.00. 

* * * * * 

(4) * * * 

(i) Standard: $43.00. 

(ii) Suitable for framing: $54.00. 

(5) * * * 

(i) By the Director of Enrollment and 

Discipline under § 11.2(c) of this 

chapter: $452.00. 

(ii) Of the Director of Enrollment and 

Discipline under § 11.2(d) of this 

chapter: $452.00. 

(6) * * * 

(ii) For USPTO-assisted change of 

address: $75.00. 

* * * * * 

(9) * * * 

(i) Delinquency fee: $54.00. 

(ii) Administrative reinstatement fee: 

$226.00. 

(10) On application by a person for 

recognition or registration after 

disbarment or suspension on ethical 

grounds, or resignation pending 

disciplinary proceedings in any other 

jurisdiction; on application by a person 

for recognition or registration who is 

asserting rehabilitation from prior 

conduct that resulted in an adverse 

decision in the Office regarding the 

person’s moral character; on application 

by a person for recognition or 

registration after being convicted of a 

felony or crime involving moral 

turpitude or breach of fiduciary duty; 

and on petition for reinstatement by a 

person excluded or suspended on 

ethical grounds, or excluded on consent 

from practice before the Office: 

$1,806.00. 

* * * * * 

(e) International type search reports: 

For preparing an international type 

search report of an international type 

search made at the time of the first 

action on the merits in a national patent 

application: $43.00 

* * * * * 

(h) * * * 

(2) If not submitted electronically: 

$54.00 

(i) Publication in Official Gazette: For 

publication in the Official Gazette of a 

notice of the availability of an 

application or a patent for licensing or 

sale: Each application or patent: $27.00. 

* * * * * 

(n) For handling an application in 

which proceedings are terminated 

pursuant to § 1.53(e): $151.00. 

(o) * * * 

(1) * * * 

TABLE 1 TO PARAGRAPH (o)(1) 

By a micro entity (§ 1.29) ......... $228.00 

By a small entity (§ 1.27(a)) ..... 456.00 

By other than a small or micro 

entity ...................................... 1,140.00 

(2) * * * 

TABLE 2 TO PARAGRAPH (o)(2) 

By a micro entity (§ 1.29) ......... $2,258.00 

By a small entity (§ 1.27(a)) ..... 4,516.00 

By other than a small or micro 

entity ...................................... 11,290.00 

(p) Additional Fee for Overnight 

Delivery: $43.00. 

(q) Additional fee for expedited 

service: $183.00. 

■ 8. Section 1.78 is amended by revising 

paragraphs (d)(3)(i) and (e)(2) to read as 

follows: 

§ 1.78 Claiming benefit of earlier filing date 

and cross-references to other applications. 

* * * * * 

(d) * * * 

(3)(i) The reference required by 35 

U.S.C. 120 and paragraph (d)(2) of this 

section, and the applicable fee set forth 

in § 1.17(w), must be submitted during 

the pendency of the later-filed 

application. 

* * * * * 

(e) * * * 

(2) The petition fee as set forth in 

§ 1.17(m), and the applicable fee set 

forth in § 1.17(w); and 

* * * * * 

■ 9. Section 1.97 is amended by revising 

paragraph (a) to read as follows: 

§ 1.97 Filing of information disclosure 

statement. 

(a) In order for an applicant for a 

patent or for a reissue of a patent to have 

an information disclosure statement in 

compliance with § 1.98 considered by 

the Office during the pendency of the 

application, the information disclosure 

statement must satisfy one of paragraph 

(b), (c), or (d) of this section and be 

accompanied by any applicable 

information disclosure statement size 

fee under § 1.17(v). 

* * * * * 

■ 10. Section 1.98 is amended by 

revising paragraph (a) introductory text 

and adding paragraph (a)(4) to read as 

follows: 

§ 1.98 Content of information disclosure 

statement. 

(a) Any information disclosure 

statement filed under § 1.97 shall 

include the items listed in paragraphs 

(a)(1) through (4) of this section. 

* * * * * 

(4) A clear written assertion that the 

information disclosure statement is 

accompanied by the applicable 

information disclosure statement size 

fee under § 1.17(v) or a clear written 

assertion that no information disclosure 

statement size fee under § 1.17(v) is 

required. 

* * * * * 

■ 11. Section 1.136 is amended by 

revising paragraph (a)(1) introductory 

text to read as follows: 

§ 1.136 Extensions of time. 

(a)(1) If an applicant is required to 

reply within a nonstatutory or shortened 

statutory time period, applicant may 

extend the time period for reply up to 

the earlier of the expiration of any 

maximum period set by statute or five 

months after the time period set for 

reply, if a petition for an extension of 

time and the fee set in § 1.17(a) or (u) 

are filed, unless: 

* * * * * 

■ 12. Section 1.138 is amended by 

revising paragraph (d) to read as 

follows: 

§ 1.138 Express abandonment. 

* * * * * 

(d) An applicant seeking to abandon 

an application filed under 35 U.S.C. 

111(a) and § 1.53(b) on or after 

December 8, 2004, or a national stage 

application under 35 U.S.C. 371 in 

which the basic national fee was paid 

on or after December 8, 2004 to obtain 

a refund of the search fee and excess 

claims fee paid in the application, must 

submit a declaration of express 

abandonment by way of a petition under 

this paragraph before an examination 

has been made of the application. The 

date indicated on any certificate of 

mailing or transmission under § 1.8 will 


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not be taken into account in 

determining whether a petition under 

this paragraph (d) was filed before an 

examination has been made of the 

application. Refunds under this 

paragraph are limited to the search fees 

and excess claims fees set forth in 

§§ 1.16 and 1.492. If a request for refund 

of the search fee and excess claims fee 

paid in the application is not filed with 

the declaration of express abandonment 

under this paragraph or within two 

months from the date on which the 

declaration of express abandonment 

under this paragraph was filed, the 

Office may retain the entire search fee 

and excess claims fee paid in the 

application. This two-month period is 

not extendable. If a petition and 

declaration of express abandonment 

under this paragraph are not filed before 

an examination has been made of the 

application, the Office will not refund 

any part of the search fee and excess 

claims fee paid in the application except 

as provided in § 1.26. 

■ 13. Section 1.445 is amended by 

revising and republishing paragraph (a) 

to read as follows: 

§ 1.445 International application filing, 

processing and search fees. 

(a) The following fees and charges for 

international applications are 

established by law or by the director 

under the authority of 35 U.S.C. 376: 

(1) A transmittal fee (see 35 U.S.C. 

361(d) and PCT Rule 14) consisting of: 

(i) A basic portion: 

(A) For an international application 

having a receipt date that is on or after 

January 19, 2025: 

TABLE 1 TO PARAGRAPH (a)(1)(i)(A) 

By a micro entity (§ 1.29) ......... $57.00 

By a small entity (§ 1.27(a)) ..... 114.00 

By other than a small or micro 

entity ...................................... 285.00 

(B) For an international application 

having a receipt date that is on or after 

December 29, 2022, and before January 

19, 2025: 

TABLE 2 TO PARAGRAPH (a)(1)(i)(B) 

By a micro entity (§ 1.29) ......... $52.00 

By a small entity (§ 1.27(a)) ..... 104.00 

By other than a small or micro 

entity ...................................... 260.00 

(C) For an international application 

having a receipt date that is on or after 

October 2, 2020, and before December 

29, 2022: 

TABLE 3 TO PARAGRAPH (a)(1)(I)(C) 

By a micro entity (§ 1.29) ......... $65.00 

TABLE 3 TO PARAGRAPH (a)(1)(I)(C)— 

Continued 

By a small entity (§ 1.27(a)) ..... 130.00 

By other than a small or micro 

entity ...................................... 260.00 

(D) For an international application 

having a receipt date that is on or after 

January 1, 2014, and before October 2, 

2020: 

TABLE 4 TO PARAGRAPH (a)(1)(i)(D) 

By a micro entity (§ 1.29) ......... $60.00 

By a small entity (§ 1.27(a)) ..... 120.00 

By other than a small or micro 

entity ...................................... 240.00 

(E) For an international application 

having a receipt date that is before 

January 1, 2014: $240.00. 

(ii) A non-electronic filing fee portion 

for any international application 

designating the United States of 

America that is filed on or after 

November 15, 2011, other than by the 

USPTO patent electronic filing system, 

except for a plant application: 

TABLE 5 TO PARAGRAPH (a)(1)(ii) 

By a small entity (§ 1.27(a)) ..... $200 

By other than a small entity ..... 400.00 

(2) A search fee (see 35 U.S.C. 361(d) 

and PCT Rule 16): 

(i) For an international application 

having a receipt date that is on or after 

January 19, 2025: 

TABLE 6 TO PARAGRAPH (a)(2)(i) 

By a micro entity (§ 1.29) ......... $480.00 

By a small entity (§ 1.27(a)) ..... 960.00 

By other than a small or micro 

entity ...................................... 2,400.00 

(ii) For an international application 

having a receipt date that is on or after 

April 1, 2023, and before January 19, 

2025: 

TABLE 7 TO PARAGRAPH (a)(2)(ii) 

By a micro entity (§ 1.29) ......... $436.00 

By a small entity (§ 1.27(a)) ..... 872.00 

By other than a small or micro 

entity ...................................... 2,180.00 

(iii) For an international application 

having a receipt date that is on or after 

October 2, 2020, and before April 1, 

2023: 

TABLE 8 TO PARAGRAPH (a)(2)(iii) 

By a micro entity (§ 1.29) ......... $545.00 

By a small entity (§ 1.27(a)) ..... 1,090.00 

TABLE 8 TO PARAGRAPH (a)(2)(iii)— 

Continued 

By other than a small or micro 

entity ...................................... 2,180.00 

(iv) For an international application 

having a receipt date that is on or after 

January 1, 2014, and before October 2, 

2020: 

TABLE 9 TO PARAGRAPH (a)(2)(iv) 

By a micro entity (§ 1.29) ......... $520.00 

By a small entity (§ 1.27(a)) ..... 1,040.00 

By other than a small or micro 

entity ...................................... 2,080.00. 

(v) For an international application 

having a receipt date that is before 

January 1, 2014: $2,080.00. 

(3) A supplemental search fee when 

required, per additional invention: 

(i) For an international application 

having a receipt date that is on or after 

January 19, 2025: 

TABLE 10 TO PARAGRAPH (a)(3)(i) 

By a micro entity (§ 1.29) ......... $480.00 

By a small entity (§ 1.27(a)) ..... 960.00 

By other than a small or micro 

entity ...................................... 2,400.00 

(ii) For an international application 

having a receipt date that is on or after 

April 1, 2023, and before January 19, 

2025: 

TABLE 11 TO PARAGRAPH (a)(3)(ii) 

By a micro entity (§ 1.29) ......... $436.00 

By a small entity (§ 1.27(a)) ..... 872.00 

By other than a small or micro 

entity ...................................... 2,180.00 

(iii) For an international application 

having a receipt date that is on or after 

October 2, 2020, and before April 1, 

2023: 

TABLE 12 TO PARAGRAPH (a)(3)(iii) 

By a micro entity (§ 1.29) ......... $545.00 

By a small entity (§ 1.27(a)) ..... 1,090.00 

By other than a small or micro 

entity ...................................... 2,180.00 

(iv) For an international application 

having a receipt date that is on or after 

January 1, 2014, and before October 2, 

2020: 

TABLE 13 TO PARAGRAPH (a)(3)(iv) 

By a micro entity (§ 1.29) ......... $520.00 

By a small entity (§ 1.27(a)) ..... 1,040.00 

By other than a small or micro 

entity ...................................... 2,080.00 


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(v) For an international application 

having a receipt date that is before 

January 1, 2014: $2,080.00. 

(4) A fee equivalent to the transmittal 

fee in paragraph (a)(1) of this section 

that would apply if the USPTO was the 

Receiving Office for transmittal of an 

international application to the 

International Bureau for processing in 

its capacity as a Receiving Office (PCT 

Rule 19.4). 

(5) Late furnishing fee for providing a 

sequence listing in response to an 

invitation under PCT Rule 13ter: 

TABLE 14 TO PARAGRAPH (a)(5) 

By a micro entity (§ 1.29) ......... $69.00 

By a small entity (§ 1.27(a)) ..... 138.00 

By other than a small or micro 

entity ...................................... 345.00 

(6) Late payment fee pursuant to PCT 

Rule 16bis.2. 

* * * * * 

■ 14. Section 1.482 is amended by 

revising tables 1 through 4 in 

paragraphs (a)(1)(i) and (ii), (a)(2), and 

(c) to read as follows: 

§ 1.482 International preliminary 

examination and processing fees. 

(a) * * * 

(1) * * * 

(i) * * * 

TABLE 1 TO PARAGRAPH (a)(1)(i) 

By a micro entity (§ 1.29) ......... $141.00 

By a small entity (§ 1.27(a)) ..... 282.00 

By other than a small or micro 

entity ...................................... 705.00 

(ii) * * * 

TABLE 2 TO PARAGRAPH (a)(1)(ii) 

By a micro entity (§ 1.29) ......... $176.00 

By a small entity (§ 1.27(a)) ..... 352.00 

By other than a small or micro 

entity ...................................... 880.00 

(2) * * * 

TABLE 3 TO PARAGRAPH (a)(2) 

By a micro entity (§ 1.29) ......... $141.00 

By a small entity (§ 1.27(a)) ..... 282.00 

By other than a small or micro 

entity ...................................... 705.00 

* * * * * 

(c) * * * 

TABLE 4 TO PARAGRAPH (c) 

By a micro entity (§ 1.29) ......... $69.00 

By a small entity (§ 1.27(a)) ..... 138.00 

By other than a small or micro 

entity ...................................... 345.00 

■ 15. Section 1.492 is amended by 

revising table 1 in paragraph (a), tables 

2 through 5 in paragraphs (b)(2) through 

(4), tables 7 through 10 in paragraphs 

(c)(2) and (d) through (f), and tables 11 

through 13 in paragraphs (h) through (j) 

to read as follows. 

§ 1.492 National stage fees. 

* * * * * 

(a) * * * 

TABLE 1 TO PARAGRAPH (a) 

By a micro entity (§ 1.29) ......... $70.00 

By a small entity (§ 1.27(a)) ..... 140.00 

By other than a small or micro 

entity ...................................... 350.00 

(b) * * * 

(2) * * *() 

TABLE 3 TO PARAGRAPH (b)(2) 

By a micro entity (§ 1.29) ......... $30.00 

By a small entity (§ 1.27(a)) ..... 60.00 

By other than a small or micro 

entity ...................................... 150.00 

(3) * * * 

TABLE 4 TO PARAGRAPH (b)(3) 

By a micro entity (§ 1.29) ......... $116.00 

By a small entity (§ 1.27(a)) ..... 232.00 

By other than a small or micro 

entity ...................................... 580.00 

(4) * * * 

TABLE 5 TO PARAGRAPH (b)(4) 

By a micro entity (§ 1.29) ......... $154.00 

By a small entity (§ 1.27(a)) ..... 308.00 

By other than a small or micro 

entity ...................................... 770.00 

(c) * * * 

(2) * * * 

TABLE 7 TO PARAGRAPH (c)(2) 

By a micro entity (§ 1.29) ......... $176.00 

By a small entity (§ 1.27(a)) ..... 352.00 

By other than a small or micro 

entity ...................................... 880.00 

(d) * * * 

TABLE 8 TO PARAGRAPH (d) 

By a micro entity (§ 1.29) ......... $120.00 

By a small entity (§ 1.27(a)) ..... 240.00 

By other than a small or micro 

entity ...................................... 600.00 

(e) * * * 

TABLE 9 TO PARAGRAPH (e) 

By a micro entity (§ 1.29) ......... $40.00 

TABLE 9 TO PARAGRAPH (e)— 

Continued 

By a small entity (§ 1.27(a)) ..... 80.00 

By other than a small or micro 

entity ...................................... 200.00 

(f) * * * 

TABLE 10 TO PARAGRAPH (f) 

By a micro entity (§ 1.29) ......... $185.00 

By a small entity (§ 1.27(a)) ..... 370.00 

By other than a small or micro 

entity ...................................... 925.00 

* * * * * 

(h) * * * 

TABLE 11 TO PARAGRAPH (h) 

By a micro entity (§ 1.29) ......... $34.00 

By a small entity (§ 1.27(a)) ..... 68.00 

By other than a small or micro 

entity ...................................... 170.00 

(i) * * * 

TABLE 12 TO PARAGRAPH (i) 

By a micro entity (§ 1.29) ......... $30.00 

By a small entity (§ 1.27(a)) ..... 60.00 

By other than a small or micro 

entity ...................................... 150.00 

(j) * * * 

TABLE 13 TO PARAGRAPH (j) 

By a micro entity (§ 1.29) ......... $90.00 

By a small entity (§ 1.27(a)) ..... 180.00 

By other than a small or micro 

entity ...................................... 450.00 

■ 16. Section 1.555 is amended by 

revising paragraph (a) to read as follows: 

§ 1.555 Information material to 

patentability in ex parte reexamination and 

inter partes reexamination proceedings. 

(a) A patent by its very nature is 

affected with a public interest. The 

public interest is best served, and the 

most effective reexamination occurs 

when, at the time a reexamination 

proceeding is being conducted, the 

Office is aware of and evaluates the 

teachings of all information material to 

patentability in a reexamination 

proceeding. Each individual associated 

with the patent owner in a 

reexamination proceeding has a duty of 

candor and good faith in dealing with 

the Office, which includes a duty to 

disclose to the Office all information 

known to that individual to be material 

to patentability in a reexamination 

proceeding. The individuals who have a 

duty to disclose to the Office all 

information known to them to be 

material to patentability in a 


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Federal Register / Vol. 89, No. 224 / Wednesday, November 20, 2024 / Rules and Regulations 92011 

reexamination proceeding are the patent 

owner, each attorney or agent who 

represents the patent owner, and every 

other individual who is substantively 

involved on behalf of the patent owner 

in a reexamination proceeding. The 

duty to disclose the information exists 

with respect to each claim pending in 

the reexamination proceeding until the 

claim is cancelled. Information material 

to the patentability of a cancelled claim 

need not be submitted if the information 

is not material to patentability of any 

claim remaining under consideration in 

the reexamination proceeding. The duty 

to disclose all information known to be 

material to patentability in a 

reexamination proceeding is deemed to 

be satisfied if all information known to 

be material to patentability of any claim 

in the patent after issuance of the 

reexamination certificate was cited by 

the Office or submitted to the Office in 

an information disclosure statement. 

However, the duties of candor, good 

faith, and disclosure have not been 

complied with if any fraud on the Office 

was practiced or attempted or the duty 

of disclosure was violated through bad 

faith or intentional misconduct by, or on 

behalf of, the patent owner in the 

reexamination proceeding. Any 

information disclosure statement must 

be filed with the items listed in § 1.98(a) 

as applied to individuals associated 

with the patent owner in a 

reexamination proceeding, should be 

filed within two months of the date of 

the order for reexamination, or as soon 

thereafter as possible, and be 

accompanied by any applicable 

information disclosure statement size 

fee under § 1.17(v). 

* * * * * 

■ 16. Section 1.1031 is amended by 

revising the table 1 to paragraph (a) to 

read as follows: 

§ 1.1031 International design application 

fees. 

(a) * * * 

TABLE 1 TO PARAGRAPH (a) 

By a micro entity (§ 1.29) ......... $26.00 

By a small entity (§ 1.27(a)) ..... 52.00 

By other than a small or micro 

entity ...................................... 130.00 

* * * * * 

PART 41—PRACTICE BEFORE THE 

PATENT TRIAL AND APPEAL BOARD 

■ 17. The authority citation for part 41 

continues to read as follows: 

Authority: 35 U.S.C. 2(b)(2), 3(a)(2)(A), 21, 

23, 32, 41, 134, 135, and Pub. L. 112–29. 

■ 18. Section 41.20 is amended by 

revising paragraph (a) and tables 1 

through 4 in paragraphs (b)(1), (b)(2)(ii), 

and (b)(3) and (4) to read as follows: 

§ 41.20 Fees. 

(a) Petition fee. The fee for filing 

petitions to the Chief Administrative 

Patent Judge under § 41.3 is: $452.00. 

(b) * * * 

(1) * * * 

TABLE 1 TO PARAGRAPH (b)(1) 

By a micro entity (§ 1.29) ......... $181.00 

By a small entity (§ 1.27(a)) ..... 362.00 

By other than a small or micro 

entity ...................................... 905.00 

(2) * * * 

(ii) * * * 

TABLE 2 TO PARAGRAPH (b)(2)(ii) 

By a micro entity (§ 1.29) ......... $452.00 

By a small entity (§ 1.27(a)) ..... 904.00 

By other than a small or micro 

entity ...................................... 2,260.00 

(3) * * * 

TABLE 3 TO PARAGRAPH (b)(3) 

By a micro entity (§ 1.29) ......... $292.00 

By a small entity (§ 1.27(a)) ..... 584.00 

By other than a small or micro 

entity ...................................... 1,460.00 

(4) * * * 

TABLE 4 TO PARAGRAPH (b)(4) 

By a micro entity (§ 1.29) ......... $507.00 

By a small entity (§ 1.27(a)) ..... 1,014.00 

By other than a small or micro 

entity ...................................... 2,535.00 

PART 42—TRIAL PRACTICE BEFORE 

THE PATENT TRIAL AND APPEAL 

BOARD 

■ 19. The authority citation for part 42 

continues to read as follows: 

Authority: 35 U.S.C. 2(b)(2), 6, 21, 23, 41, 

135, 311, 312, 316, 321–326; Pub. L. 112–29, 

125 Stat. 284; and Pub. L. 112–274, 126 Stat. 

2456. 

■ 20. Section 42.15 is amended by 

revising paragraphs (a)(1) through (4), 

(b)(1) through (4), (c)(1), (d), and (e) and 

adding paragraph (f) to read as follows: 

§ 42.15 Fees. 

(a) * * * 

(1) Inter Partes Review request fee— 

up to 20 claims: $23,750.00. 

(2) Inter Partes Review PostInstitution fee—up to 20 claims: 

$28,125.00. 

(3) In addition to the Inter Partes 

Review request fee, for requesting a 

review of each claim in excess of 20: 

$470.00. 

(4) In addition to the Inter Partes PostInstitution request fee, for requesting a 

review of each claim in excess of 20: 

$940.00. 

(b) * * * 

(1) Post-Grant or Covered Business 

Method Patent Review request fee—up 

to 20 claims: $25,000.00. 

(2) Post-Grant or Covered Business 

Method Patent Review Post-Institution 

fee—up to 20 claims: $34,375.00. 

(3) In addition to the Post-Grant or 

Covered Business Method Patent 

Review request fee, for requesting a 

review of each claim in excess of 20: 

$595.00. 

(4) In addition to the Post-Grant or 

Covered Business Method Patent 

Review Post-Institution fee, for 

requesting a review of each claim in 

excess of 20: $1,315.00. 

(c) * * * 

(1) Derivation petition fee: $452.00. 

* * * * * 

(d) Any request requiring payment of 

a fee under this part, including a written 

request to make a settlement agreement 

available: $452.00. 

(e) Fee for non-registered practitioners 

to appear pro hac vice before the Patent 

Trial and Appeal Board: $269.00. 

(f) Fee for requesting a review of a 

Patent Trial and Appeal Board decision 

by the Director: $452. 

Endnotes 

1As reported by the CBO, three recent 

studies estimated the average research 

and development costs per new drug to 

range from $0.8 billion to $2.3 billion. 

See ‘‘Research and Development in the 

Pharmaceutical Industry,’’ Report No. 

57126 pp. 15 and 16 (April 2021), 

available at https://www.cbo.gov/ 

publication/57126. FDA user fees 

applicable to prescription drugs are 

currently between $2.16 million and 

$4.31 million as a one-time sum, with 

an additional annual program fee of 

$403,889. See e.g., the FDA’s user fee 

page for prescription drugs at https://

www.fda.gov/industry/fda-user-feeprograms/prescription-drug-user-feeamendments. 

2See note 1, supra. 

Katherine K. Vidal, 

Under Secretary of Commerce for Intellectual 

Property and Director of the United States 

Patent and Trademark Office. 

[FR Doc. 2024–26821 Filed 11–19–24; 8:45 am] 

BILLING CODE 3510–16–P 


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