2024 Patent Fee Adjustment - RIN 0651 AD64

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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
United States Patent and
Trademark Office, Department of
Commerce.
ACTION: Final rule.
AGENCY:

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:
SUMMARY:

I. Executive Summary

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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

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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.

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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-2023-00170001. 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-2023Fee-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/

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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

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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

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

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

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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

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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

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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

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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

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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

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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.

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.

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

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.

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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

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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.

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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

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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

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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.

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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

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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

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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

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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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https://www.uspto.gov/sites/default/
files/documents/20211115-PPAC-FY21pendency-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)

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(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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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

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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

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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

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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).

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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

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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,

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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

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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

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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

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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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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.

ER20NO24.010

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

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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.

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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

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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

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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

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(§ 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

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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.

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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

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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

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structure for provisional applications in
which fees will be decreased from

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current amounts by an average of 81%.
Under EOT practice, if an applicant is

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91923

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:

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.

The USPTO’s fee review concluded that
applicants who have certified micro entity

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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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.

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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).

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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

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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

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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

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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.

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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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

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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

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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

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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://
www.uspto.gov/patents/laws/patent-

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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

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.

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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

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

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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

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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).

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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

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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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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

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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

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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 12month (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.

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.

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13. America Invents Act Trial Fees

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

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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

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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

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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

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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
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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,

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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

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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

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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
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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

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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

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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.

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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

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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

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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

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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.

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

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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

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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

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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

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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.

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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

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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

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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

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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

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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

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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

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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

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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.

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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

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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.

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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.

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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

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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

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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

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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

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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

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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.

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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

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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

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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

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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

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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

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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
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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.

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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.
BILLING CODE 3510–16–P

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BILLING CODE 3510–16–C

Section 1.17
Section 1.17 is amended by revising
paragraphs (a), (c) through (i), (k), (m),

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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.

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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

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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

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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).
BILLING CODE 3510–16–P

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Section 1.18

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Section 1.18 is amended by revising
paragraphs (a) through (f) to set forth

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patent issue fees as authorized under
section 10 of the AIA. The changes to

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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

Section 1.20

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Section 1.20 is amended by revising
paragraphs (a) through (h), (j), and (k) to

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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.

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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91981

ER20NO24.050

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Section 1.21

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Section 1.21 is amended by revising
paragraphs (a), (e), (h), (i), and (n)

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through (q) to set forth miscellaneous
fees and charges as authorized under
section 10 of the AIA. The changes to

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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

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cited in § 1.17(w) as one of the
requirements that must be submitted
during the pendency of the later-filed
application.

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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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Federal Register / Vol. 89, No. 224 / Wednesday, November 20, 2024 / Rules and Regulations
U.S.C. 120, 121, 365(c), or 386(c) for the
benefit of a prior-filed application.

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

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 1.138

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.

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Section 1.136
Section 1.136 is amended by revising
paragraph (a)(1) to include the addition

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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

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91987

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 is amended by revising
paragraphs (a) and (c) to set forth

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international preliminary examination
and processing fees for international
patent applications entering the
international stage as authorized under

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section 10 of the AIA. The changes to
the fee amounts in § 1.482 are shown in
table 26.

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Section 1.482

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Section 1.492
Section 1.492 is amended by revising
paragraphs (a) through (f) and (h)

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through (j) to set forth national stage
fees for international patent applications
as authorized under section 10 of the

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AIA. The changes to the fee amounts in
§ 1.492 are shown in table 27.

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91990

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91991

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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

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be considered by the USPTO during the
pendency of the reexamination
proceeding.

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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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91993

changes to the fee amounts in § 1.1031
are shown in table 28.

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Section 41.20 is amended by revising
paragraphs (a) and (b) to set forth

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petition and appeal fees as authorized
under section 10 of the AIA. The

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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

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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

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10 of the AIA. The changes to the fee
amounts in § 42.15 are shown in table
30.

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91994

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91996

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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
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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

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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

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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,

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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.
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Because the percentage of small entity
filings varies widely between

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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.

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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

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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

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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
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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

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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

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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
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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

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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.

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).

D. Executive Order 13563 (Improving
Regulation and Regulatory Review)

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).

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).

PO 00000

Frm 00106

Fmt 4701

Sfmt 4700

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

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:

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

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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) * * *

By a micro entity (§ 1.29) .........
By a small entity (§ 1.27(a)) .....
By other than a small or micro
entity ......................................

$13.00
26.00
65.00

(h) * * *

By a micro entity (§ 1.29) .........
By a small entity (§ 1.27(a)) .....
By a small entity (§ 1.27(a)) if
the application is submitted
in compliance with the
USPTO electronic filing system (§ 1.27(b)(2)) ..................
By other than a small or micro
entity ......................................

TABLE 8 TO PARAGRAPH (h)

$70.00
140.00

70.00

TABLE 2 TO PARAGRAPH (b)
By a micro entity (§ 1.29) .........
By a small entity (§ 1.27(a)) .....
By other than a small or micro
entity ......................................

$60.00
120.00

$48.00
96.00

By a micro entity (§ 1.29) .........
By a small entity (§ 1.27(a)) .....
By other than a small or micro
entity ......................................

$65.00
130.00

TABLE 5 TO PARAGRAPH (e)
By a micro entity (§ 1.29) .........
By a small entity (§ 1.27(a)) .....

Fmt 4701

Sfmt 4700

By a micro entity (§ 1.29) .........
By a small entity (§ 1.27(a)) .....
By other than a small or micro
entity ......................................

$70.00
140.00

$40.00
80.00
200.00

(j) * * *

TABLE 10 TO PARAGRAPH (j)
By a micro entity (§ 1.29) .........
By a small entity (§ 1.27(a)) .....
By other than a small or micro
entity ......................................

$185.00
370.00
925.00

(k) * * *

TABLE 11 TO PARAGRAPH (k)
By a micro entity (§ 1.29) .........
By a small entity (§ 1.27(a)) .....
By other than a small or micro
entity ......................................

$154.00
308.00
770.00

(l) * * *

TABLE 12 TO PARAGRAPH (l)

325.00

(e) * * *

600.00

TABLE 9 TO PARAGRAPH (i)

240.00

(d) * * *

$120.00
240.00

(i) * * *

300.00

TABLE 3 TO PARAGRAPH (c)
By a micro entity (§ 1.29) .........
By a small entity (§ 1.27(a)) .....
By other than a small or micro
entity ......................................

By a micro entity (§ 1.29) .........
By a small entity (§ 1.27(a)) .....
By other than a small or micro
entity ......................................

350.00

(b) * * *

Frm 00107

170.00

TABLE 7 TO PARAGRAPH (g)

TABLE 1 TO PARAGRAPH (a)

PO 00000

$34.00
68.00

(g) * * *

TABLE 4 TO PARAGRAPH (d)

Administrative practice and
procedure, Inventions and patents,
Lawyers, Reporting and recordkeeping
requirements.

350.00

(f) * * *

■

37 CFR Part 1

37 CFR Part 41

By other than a small or micro
entity ......................................

By a micro entity (§ 1.29) .........
By a small entity (§ 1.27(a)) .....
By other than a small or micro
entity ......................................

1. The authority citation for part 1
continues to read as follows:

■

List of Subjects
Administrative practice and
procedure, Biologics, Courts, Freedom
of information, Inventions and patents,
Reporting and recordkeeping
requirements, Small businesses.

TABLE 5 TO PARAGRAPH (e)—
Continued

TABLE 6 TO PARAGRAPH (f)

PART 1—RULES OF PRACTICE IN
PATENT CASES

(c) * * *

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.

92003

By a micro entity (§ 1.29) .........
By a small entity (§ 1.27(a)) .....
By other than a small or micro
entity ......................................

(m) * * *

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20NOR2

$60.00
120.00
300.00

92004

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

TABLE 13 TO PARAGRAPH (m)
By a micro entity (§ 1.29) .........
By a small entity (§ 1.27(a)) .....
By other than a small or micro
entity ......................................

$97.00
194.00
485.00

(n) * * *

TABLE 14 TO PARAGRAPH (n)
By a micro entity (§ 1.29) .........
By a small entity (§ 1.27(a)) .....
By other than a small or micro
entity ......................................

$154.00
308.00
770.00

(o) * * *

TABLE 15 TO PARAGRAPH (o)
By a micro entity (§ 1.29) .........
By a small entity (§ 1.27(a)) .....
By other than a small or micro
entity ......................................

$176.00
352.00
880.00

(p) * * *

TABLE 16 TO PARAGRAPH (p)
By a micro entity (§ 1.29) .........
By a small entity (§ 1.27(a)) .....
By other than a small or micro
entity ......................................

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:

$140.00
280.00

§ 1.17 Patent application and
reexamination processing fees.

$145.00
290.00

By a micro entity (§ 1.29) .........
By a small entity (§ 1.27(a)) .....
By other than a small or micro
entity ......................................

By a micro entity (§ 1.29) .........
By a small entity (§ 1.27(a)) .....
By other than a small or micro
entity ......................................

$510.00
1,020.00
2,550.00

By a micro entity (§ 1.29) .........
By a small entity (§ 1.27(a)) .....
By other than a small or micro
entity ......................................

By a micro entity (§ 1.29) .........
By a small entity (§ 1.27(a)) .....
By other than a small or micro
entity ......................................

khammond on DSK9W7S144PROD with RULES2

$138.00
276.00
690.00

*

450.00

By a micro entity (§ 1.29) .........
By a small entity (§ 1.27(a)) .....
By other than a small or micro
entity ......................................

$318.00
636.00
1,590.00

(4) * * *

*

TABLE 4 TO PARAGRAPH (a)(4)

TABLE 21 TO PARAGRAPH (u)
By a micro entity (§ 1.29) .........
By a small entity (§ 1.27(a)) .....
By other than a small or micro
entity ......................................

18:52 Nov 19, 2024

$86.00
172.00
430.00

Jkt 265001

By a micro entity (§ 1.29) .........
By a small entity (§ 1.27(a)) .....
By other than a small or micro
entity ......................................

(5) * * *

PO 00000

Frm 00108

*

By a micro entity (§ 1.29) .........
By a small entity (§ 1.27(a)) .....
By other than a small or micro
entity ......................................

$903.00
1,806.00
4,515.00

(d) * * *

TABLE 7 TO PARAGRAPH (d)
By a micro entity (§ 1.29) .........
By a small entity (§ 1.27(a)) .....
By other than a small or micro
entity ......................................

$138.00
276.00
690.00

By a micro entity (§ 1.29) .........
By a small entity (§ 1.27(a)) .....
By other than a small or micro
entity ......................................

$300.00
600.00
1,500.00

(2) * * *

By a micro entity (§ 1.29) .........
By a small entity (§ 1.27(a)) .....
By other than a small or micro
entity ......................................

$572.00
1,144.00
2,860.00

(f) * * *

TABLE 10 TO PARAGRAPH (f)

TABLE 3 TO PARAGRAPH (a)(3)

$90.00
180.00

*

TABLE 6 TO PARAGRAPH (c)

(3) * * *

TABLE 19 TO PARAGRAPH (s)

VerDate Sep<11>2014

*
*
(c) * * *

3,395.00

TABLE 9 TO PARAGRAPH (e)(2)

TABLE 2 TO PARAGRAPH (a)(2)

(s) * * *

*
*
(u) * * *

235.00

(2) * * *

TABLE 18 TO PARAGRAPH (r)

*

$47.00
94.00

725.00

(r) * * *

*

$679.00
1,358.00

TABLE 8 TO PARAGRAPH (e)(1)

TABLE 1 TO PARAGRAPH (a)(1)

TABLE 17 TO PARAGRAPH (q)

By a micro entity (§ 1.29) .........
By a small entity (§ 1.27(a)) .....
By other than a small or micro
entity ......................................

(e) * * *
(1) * * *

(a) Extension fees pursuant to
§ 1.136(a), except in provisional
700.00 applications filed under § 1.53(c):
(1) * * *

(q) * * *

By a micro entity (§ 1.29) .........
By a small entity (§ 1.27(a)) .....
By other than a small or micro
entity ......................................

TABLE 5 TO PARAGRAPH (a)(5)

■
■

Fmt 4701

Sfmt 4700

$499.00
998.00
2,495.00

By a micro entity (§ 1.29) .........
By a small entity (§ 1.27(a)) .....
By other than a small or micro
entity ......................................

$90.00
180.00
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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Federal Register / Vol. 89, No. 224 / Wednesday, November 20, 2024 / Rules and Regulations
(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) .........
By a small entity (§ 1.27(a)) .....
By other than a small or micro
entity ......................................

$47.00
94.00

(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)
$60.00
120.00

TABLE 13 TO PARAGRAPH (g)(2)(ii)
$90.00
180.00
450.00

khammond on DSK9W7S144PROD with RULES2

(h) * * *

TABLE 14 TO PARAGRAPH (h)
By a micro entity (§ 1.29) .........
By a small entity (§ 1.27(a)) .....
By other than a small or micro
entity ......................................

21:08 Nov 19, 2024

By a micro entity (§ 1.29) .........
By a small entity (§ 1.27(a)) .....
By other than a small or micro
entity ......................................

150.00

Jkt 265001

$30.00
60.00
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) .........
By a small entity (§ 1.27(a)) .....
By other than a small or micro
entity ......................................

$151.00
151.00
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.

*

$30.00
60.00

Note 3 to table 14 to paragraph (h):

VerDate Sep<11>2014

TABLE 15 TO PARAGRAPH (i)(1)

300.00

(ii) For filing a second or subsequent
request for suspension pursuant to
§ 1.103(a) in an application:

By a micro entity (§ 1.29) .........
By a small entity (§ 1.27(a)) .....
By other than a small or micro
entity ......................................

(i) * * *
(1) * * *

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.

By a micro entity (§ 1.29) .........
By a small entity (§ 1.27(a)) .....
By other than a small or micro
entity ......................................

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.

*
*
(k) * * *

*

*

PO 00000

Frm 00109

Fmt 4701

Sfmt 4700

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) .........
By a small entity (§ 1.27(a)) .....
By other than a small or micro
entity ......................................

$600.00
1,200.00
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) .........
By a small entity (§ 1.27(a)) .....
By other than a small or micro
entity ......................................

$452.00
904.00
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)

TABLE 17 TO PARAGRAPH (k)
By a micro entity (§ 1.29) .........
By a small entity (§ 1.27(a)) .....

92005

$344.00
688.00

By a micro entity (§ 1.29) .........
By a small entity (§ 1.27(a)) .....
By other than a small or micro
entity ......................................

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20NOR2

$452.00
904.00
2,260.00

92006
*

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

*
*
(o) * * *

*

*

TABLE 26 TO PARAGRAPH (u)(1)—
Continued

TABLE 21 TO PARAGRAPH (o)
By a small entity (§ 1.27(a)) or
micro entity (§ 1.29) ..............
By other than a small or micro
entity ......................................

By other than a small or micro
entity ......................................

$78.00

(2) For reply within second month:

195.00

TABLE 27 TO PARAGRAPH (u)(2)

(p) * * *

By a micro entity (§ 1.29) .........
By a small entity (§ 1.27(a)) .....
By other than a small or micro
entity ......................................

TABLE 22 TO PARAGRAPH (p)
By a micro entity (§ 1.29) .........
By a small entity (§ 1.27(a)) .....
By other than a small or micro
entity ......................................

$56.00
112.00
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) .........
By a small entity (§ 1.27(a)) .....
By other than a small or micro
entity ......................................

$189.00
378.00
945.00

(s) * * *

TABLE 24 TO PARAGRAPH (s)
By a micro entity (§ 1.29) .........
By a small entity (§ 1.27(a)) .....
By other than a small or micro
entity ......................................

$189.00
378.00
945.00

(t) * * *

TABLE 25 TO PARAGRAPH (t)

khammond on DSK9W7S144PROD with RULES2

By a micro entity (§ 1.29) .........
By a small entity (§ 1.27(a)) .....
By other than a small or micro
entity ......................................

$39.00
78.00
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) .........
By a small entity (§ 1.27(a)) .....

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50.00

$10.00
20.00

Jkt 265001

$20.00
40.00

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) .........
By a small entity (§ 1.27(a)) .....
By other than a small or micro
entity ......................................

$540.00
1,080.00
2,700.00

(2) When the actual filing date of the
nonprovisional application in which the
benefit claim is presented is more than
(3) For reply within third month:
nine years from the earliest filing date
for which benefit is claimed under 35
TABLE 28 TO PARAGRAPH (u)(3)
U.S.C. 120, 121, 365(c), or 386(c) and
By a micro entity (§ 1.29) .........
$40.00 § 1.78(d), the amount shown in this
By a small entity (§ 1.27(a)) .....
80.00 paragraph is due, less any amount
previously paid under paragraph (w)(1)
By other than a small or micro
entity ......................................
200.00 of this section:
100.00

(4) For reply within fourth month:

TABLE 29 TO PARAGRAPH (u)(4)
By a micro entity (§ 1.29) .........
By a small entity (§ 1.27(a)) .....
By other than a small or micro
entity ......................................

$80.00
160.00
400.00

TABLE 32 TO PARAGRAPH (w)(2)
By a micro entity (§ 1.29) .........
By a small entity (§ 1.27(a)) .....
By other than a small or micro
entity ......................................

$800.00
1,600.00
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),
TABLE 30 TO PARAGRAPH (u)(5)
(e), and (f).
The revisions read as follows:
By a micro entity (§ 1.29) .........
$160.00
(5) For reply within fifth month:

By a small entity (§ 1.27(a)) .....
By other than a small or micro
entity ......................................

320.00
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

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■
■

§ 1.18 Patent post allowance (including
issue) fees.

(a) * * *

TABLE 1 TO PARAGRAPH (a)
By a micro entity (§ 1.29) .........
By a small entity (§ 1.27(a)) .....
By other than a small or micro
entity ......................................

$258.00
516.00
1,290.00

(b)(1) * * *

TABLE 2 TO PARAGRAPH (b)(1)
By a micro entity (§ 1.29) .........
By a small entity (§ 1.27(a)) .....
By other than a small or micro
entity ......................................

*

*
*
(c) * * *

*

$260.00
520.00
1,300.00

*

TABLE 3 TO PARAGRAPH (c)
By a micro entity (§ 1.29) .........
By a small entity (§ 1.27(a)) .....
By other than a small or micro
entity ......................................

$181.00
362.00
905.00

(d) * * *
(2) Publication fee before January 1,
2014: $320.00.

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

(b) Processing fee for correcting
inventorship in a patent (§ 1.324):
$172.00.
(c) * * *
(1)(i) * * * * *

*

Document supply fees.

*
*
(2) * * *

*

khammond on DSK9W7S144PROD with RULES2

*
*
*
*
(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.

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(g) * * *

TABLE 9 TO PARAGRAPH (g)

TABLE 1 TO PARAGRAPH (c)(1)(i)
By a micro entity (§ 1.29) .........
By a small entity (§ 1.27(a)) .....
By other than a small or micro
entity ......................................

*

$2,709.00
5,418.00
13,545.00

(3) * * *

TABLE 3 TO PARAGRAPH (c)(3)
$120.00
240.00
600.00

(4) * * *

*

*
*
(6) * * *

*

$40.00
80.00
200.00

By a micro entity (§ 1.29) .........
By a small entity (§ 1.27(a)) .....
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) .........
By a small entity (§ 1.27(a)) .....
By other than a small or micro
entity ......................................

$993.00
1,986.00
4,965.00

(2) * * *

TABLE 12 TO PARAGRAPH (k)(2)

By a micro entity (§ 1.29) .........
By a small entity (§ 1.27(a)) .....
By other than a small or micro
entity ......................................

$439.00
878.00

By a micro entity (§ 1.29) .........
By a small entity (§ 1.27(a)) .....
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) .........
By a small entity (§ 1.27(a)) .....
By other than a small or micro
entity ......................................

By a micro entity (§ 1.29) .........
By a small entity (§ 1.27(a)) .....
By other than a small or micro
entity ......................................

Fmt 4701

Sfmt 4700

By a micro entity (§ 1.29) .........
By a small entity (§ 1.27(a)) .....
By other than a small or microentity ......................................

$808.00
1,616.00
4,040.00

$39.00
78.00
195.00

(ii) * * *

2,150.00

TABLE 8 TO PARAGRAPH (f)

13,655.00

TABLE 13 TO PARAGRAPH (k)(3)(i)

$430.00
860.00

(f) * * *

$2,731.00
5,462.00

(3) * * *
(i) * * *

*

Frm 00111

$108.00
216.00

*

*

TABLE 5 TO PARAGRAPH (c)(6)

PO 00000

8,280.00

TABLE 10 TO PARAGRAPH (h)

TABLE 4 TO PARAGRAPH (c)(4)
By a micro entity (§ 1.29) .........
By a small entity (§ 1.27(a)) .....
By other than a small or micro
entity ......................................

$1,656.00
3,312.00

(h) * * *

6,775.00

TABLE 2 TO PARAGRAPH (c)(2)

By a micro entity (§ 1.29) .........
By a small entity (§ 1.27(a)) .....
By other than a small or micro
entity ......................................

By a micro entity (§ 1.29) .........
By a small entity (§ 1.27(a)) .....
By other than a small or micro
entity ......................................

$1,355.00
2,710.00

*

By a micro entity (§ 1.29) .........
By a small entity (§ 1.27(a)) .....
By other than a small or micro
entity ......................................

92007

TABLE 14 TO PARAGRAPH (k)(3)(ii)
By a micro entity (§ 1.29) .........
By a small entity (§ 1.27(a)) .....
By other than a small or micro
entity ......................................

$65.00
130.00
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.

khammond on DSK9W7S144PROD with RULES2

*

*
*
*
*
(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.
*
*
*
*
*

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Jkt 265001

(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) * * *

$2,258.00
4,516.00
11,290.00

§ 1.136

$228.00
456.00
1,140.00

(2) * * *

TABLE 2 TO PARAGRAPH (o)(2)
By a micro entity (§ 1.29) .........
By a small entity (§ 1.27(a)) .....
By other than a small or micro
entity ......................................

(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

PO 00000

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§ 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:

TABLE 1 TO PARAGRAPH (o)(1)
By a micro entity (§ 1.29) .........
By a small entity (§ 1.27(a)) .....
By other than a small or micro
entity ......................................

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:

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

TABLE 3 TO PARAGRAPH (a)(1)(I)(C)—
Continued
By a small entity (§ 1.27(a)) .....
By other than a small or micro
entity ......................................

TABLE 1 TO PARAGRAPH (a)(1)(i)(A)
$57.00
114.00
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)

khammond on DSK9W7S144PROD with RULES2

By a micro entity (§ 1.29) .........
By a small entity (§ 1.27(a)) .....
By other than a small or micro
entity ......................................

$52.00
104.00
260.00

(C) For an international application
having a receipt date that is on or after
October 2, 2020, and before December
29, 2022:

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$65.00

Jkt 265001

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) .........
By a small entity (§ 1.27(a)) .....
By other than a small or micro
entity ......................................

$60.00
120.00

(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:

By a small entity (§ 1.27(a)) .....
By other than a small entity .....

$200
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) .........
By a small entity (§ 1.27(a)) .....
By other than a small or micro
entity ......................................

$480.00
960.00
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) .........
By a small entity (§ 1.27(a)) .....
By other than a small or micro
entity ......................................

$436.00
872.00
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) .........
By a small entity (§ 1.27(a)) .....

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Fmt 4701

Sfmt 4700

By a micro entity (§ 1.29) .........
By a small entity (§ 1.27(a)) .....
By other than a small or micro
entity ......................................

$520.00
1,040.00
2,080.00.

240.00

TABLE 3 TO PARAGRAPH (a)(1)(I)(C)
By a micro entity (§ 1.29) .........

By other than a small or micro
entity ......................................

TABLE 4 TO PARAGRAPH (a)(1)(i)(D)

TABLE 5 TO PARAGRAPH (a)(1)(ii)

(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 8 TO PARAGRAPH (a)(2)(iii)—
Continued

260.00

(D) For an international application
having a receipt date that is on or after
January 1, 2014, and before October 2,
2020:

§ 1.445 International application filing,
processing and search fees.

By a micro entity (§ 1.29) .........
By a small entity (§ 1.27(a)) .....
By other than a small or micro
entity ......................................

130.00

92009

$545.00
1,090.00

(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) .........
By a small entity (§ 1.27(a)) .....
By other than a small or micro
entity ......................................

$480.00
960.00
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) .........
By a small entity (§ 1.27(a)) .....
By other than a small or micro
entity ......................................

$436.00
872.00
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) .........
By a small entity (§ 1.27(a)) .....
By other than a small or micro
entity ......................................

$545.00
1,090.00
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) .........
By a small entity (§ 1.27(a)) .....
By other than a small or micro
entity ......................................

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$520.00
1,040.00
2,080.00

92010

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

(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) .........
By a small entity (§ 1.27(a)) .....
By other than a small or micro
entity ......................................

$69.00
138.00
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:

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

*

By a micro entity (§ 1.29) .........
By a small entity (§ 1.27(a)) .....
By other than a small or micro
entity ......................................

$141.00
282.00
705.00

TABLE 2 TO PARAGRAPH (a)(1)(ii)
$176.00
352.00

TABLE 3 TO PARAGRAPH (a)(2)

khammond on DSK9W7S144PROD with RULES2

*

*
*
(c) * * *

*

$141.00
282.00

By a micro entity (§ 1.29) .........
By a small entity (§ 1.27(a)) .....
By other than a small or micro
entity ......................................

TABLE 4 TO PARAGRAPH (c)
By a micro entity (§ 1.29) .........
By a small entity (§ 1.27(a)) .....
By other than a small or micro
entity ......................................

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18:52 Nov 19, 2024

$30.00
60.00

$69.00
138.00
345.00

Jkt 265001

$116.00
232.00

TABLE 5 TO PARAGRAPH (b)(4)
By a micro entity (§ 1.29) .........
By a small entity (§ 1.27(a)) .....
By other than a small or micro
entity ......................................

$154.00
308.00

$185.00
370.00
925.00

*

$34.00
68.00
170.00

(i) * * *

TABLE 12 TO PARAGRAPH (i)
By a micro entity (§ 1.29) .........
By a small entity (§ 1.27(a)) .....
By other than a small or micro
entity ......................................

$30.00
60.00
150.00

(j) * * *

TABLE 13 TO PARAGRAPH (j)
By a micro entity (§ 1.29) .........
By a small entity (§ 1.27(a)) .....
By other than a small or micro
entity ......................................

$90.00
180.00
450.00

16. Section 1.555 is amended by
revising
paragraph (a) to read as follows:
770.00
■

§ 1.555 Information material to
patentability in ex parte reexamination and
inter partes reexamination proceedings.

(c) * * *
(2) * * *

TABLE 7 TO PARAGRAPH (c)(2)
$176.00
352.00
880.00

(d) * * *

TABLE 8 TO PARAGRAPH (d)
$120.00
240.00
600.00

(e) * * *

TABLE 9 TO PARAGRAPH (e)
By a micro entity (§ 1.29) .........

Frm 00114

*

By a micro entity (§ 1.29) .........
By a small entity (§ 1.27(a)) .....
By other than a small or micro
entity ......................................

580.00

(4) * * *

PO 00000

*
*
(h) * * *

150.00

(3) * * *

By a micro entity (§ 1.29) .........
By a small entity (§ 1.27(a)) .....
By other than a small or micro
entity ......................................

*

*

350.00

TABLE 3 TO PARAGRAPH (b)(2)

705.00

By a micro entity (§ 1.29) .........
By a small entity (§ 1.27(a)) .....
By other than a small or micro
entity ......................................

TABLE 11 TO PARAGRAPH (h)

By a micro entity (§ 1.29) .........
By a small entity (§ 1.27(a)) .....
By other than a small or micro
entity ......................................

(2) * * *

By a micro entity (§ 1.29) .........
By a small entity (§ 1.27(a)) .....
By other than a small or micro
entity ......................................

$70.00
140.00

(b) * * *
(2) * * *()

880.00

200.00

TABLE 10 TO PARAGRAPH (f)

TABLE 1 TO PARAGRAPH (a)
By a micro entity (§ 1.29) .........
By a small entity (§ 1.27(a)) .....
By other than a small or micro
entity ......................................

80.00

(f) * * *

*

By a micro entity (§ 1.29) .........
By a small entity (§ 1.27(a)) .....
By other than a small or micro
entity ......................................

(ii) * * *

By a micro entity (§ 1.29) .........
By a small entity (§ 1.27(a)) .....
By other than a small or micro
entity ......................................

*

TABLE 4 TO PARAGRAPH (b)(3)

TABLE 1 TO PARAGRAPH (a)(1)(i)

By a small entity (§ 1.27(a)) .....
By other than a small or micro
entity ......................................

National stage fees.

*
*
(a) * * *

§ 1.482 International preliminary
examination and processing fees.

(a) * * *
(1) * * *
(i) * * *

TABLE 9 TO PARAGRAPH (e)—
Continued

■

Fmt 4701

Sfmt 4700

$40.00

(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
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:

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) .........
By a small entity (§ 1.27(a)) .....
By other than a small or micro
entity ......................................

$181.00
362.00
905.00

(2) * * *
(ii) * * *

TABLE 2 TO PARAGRAPH (b)(2)(ii)
By a micro entity (§ 1.29) .........
By a small entity (§ 1.27(a)) .....
By other than a small or micro
entity ......................................

$452.00
904.00
2,260.00

(3) * * *

TABLE 3 TO PARAGRAPH (b)(3)
By a micro entity (§ 1.29) .........
By a small entity (§ 1.27(a)) .....
By other than a small or micro
entity ......................................

$292.00
584.00
1,460.00

(4) * * *

TABLE 4 TO PARAGRAPH (b)(4)
By a micro entity (§ 1.29) .........
By a small entity (§ 1.27(a)) .....
By other than a small or micro
entity ......................................

$507.00
1,014.00
2,535.00

■

§ 1.1031
fees.

International design application

19. The authority citation for part 42
continues to read as follows:

■

(a) * * *

TABLE 1 TO PARAGRAPH (a)
By a micro entity (§ 1.29) .........
By a small entity (§ 1.27(a)) .....
By other than a small or micro
entity ......................................

khammond on DSK9W7S144PROD with RULES2

*

*

*

*

$26.00
52.00

*

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.

18:52 Nov 19, 2024

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:

■

130.00

PART 41—PRACTICE BEFORE THE
PATENT TRIAL AND APPEAL BOARD

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PART 42—TRIAL PRACTICE BEFORE
THE PATENT TRIAL AND APPEAL
BOARD

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§ 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.

PO 00000

Frm 00115

Fmt 4701

Sfmt 9990

92011

(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
1 As 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.
2 See 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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