The United States Patent & Trademark Office (USPTO) is increasing virtually all fees effective January 19, 2025. Most of these fee increases are moderate in nature and are in step with inflation. In enacting the current schedule, the USPTO did withdraw some more controversial proposals to limit continuation patent practice. Here is an overview of the fees most often encountered in our practice.
Trademark Fees
Trademark fee will increase (moderately) the cost of most federal trademark applications by $100. If the filing is an ITU (intent to use), then the increase is $150. If you need to draft a custom identification of goods (not in the ID manual) because your product or service is unique, that privilege will double in costs from $100 to $200. To stem some of the frivolous filings that claim every product or service within an International Class, there will be a rolling surcharge for exceeding 1,000 characters in the identification. Renewals at year 5 post-registration will typically cost $150 more and 10-year renewals $125 more. Letter of Protests (an option to preemptively notify USPTO of an unexamined pending mark that should not register) go up to $150 from $50.
Patent Fees
Companies with more than 500 employees typically pay the large rate. Universities and most smaller companies pay a bit less than half of these rates, “small entity” fees. An Excel spreadsheet of all fees is available here. The most common increases affecting our practice are enumerated below.
| Description | Current Fee | New Fee |
| Utility Base Filing (all fees) | $1,820 large $728 small | $2,000 large $800 small |
| Utility Issue Fee | $1,200 large $480 small | $1,290 large $516 small |
| Maint. Fee 1 (3.5 years) | $2,000 large $800 small | $2,150 large $860 small |
| Maint. Fee 2 (7.5 years) | $3,760 large $1,504 small | $4,040 large $1,616 small |
| Maint. Fee 3 (11.5 years) | $7,700 large $3,080 small | $8,280 large $3,312 small |
| Terminal disclaimers | $170 | $183 |
| Continuation > 6 years priority | non-existent | $2,700 large $1,080 small |
| Continuation > 9 years priority | non-existent | $4,000 large $1,600 small |
| RCE – 1st request | $1,360 large $544 small | $1,500 large $600 small |
| RCE – 2nd and subsequent | $2,000 large $800 small | $2,860 large $1,144 small |
| Basic filing fee – Design patent | $220 large $88 small | $300 large $120 small |
| Design patent search fee | $160 large $64 small | $300 large $120 small |
| Design patent exam fee | $640 large $256 small | $700 large $280 small |
| Design patent issue fee | $740 large $296 small | $1,300 large $520 small |
| Utility claim fees > 20 / each | $100 large $40 small | $200 large $80 small |
| Utility claim indep. > 3 / each | $480 large $192 small | $600 large $240 small |
| IDS > 50 prior art citations | non-existent | $200 |
| IDS 100-200 prior art citations | non-existent | $500 |
| IDS > 200 prior art citations | non-existent | $800 |
Prosecution Strategy Updates
The USPTO fee increases call for some strategic updates in approaches to patent prosecution, particularly in cost-sensitive university patent practice. Substantial coverage can be maintained while mitigating some impact of these additional costs.
Design Patents
The fee increases for design patents are likely quite necessary. The Federal Circuit decision in LKQ v. GM mandates a more rigorous examination of applications under the KSR obviousness standard. Design patent applications should be more conservative and not necessarily push the envelopment going forward.
Claim Count
The base claim count is 20 claims overall and three of those can be “independent.” The independent claims are really what is substantively examined. Once a patent examiner finds an independent claim allowable, the dependent claims that reference it are “allowable as a matter of law.” Why even have dependent claims? Because they are “back up” in case (during litigation) the independent claim is found invalid on prior art. However, it is quite common to see dependent claims introduce otherwise frivolous or obvious variations to far more important independent claim.
There should be a good reason for exceeding 20 claims. For most of our clients, adding an extra independent claim will be $300 (small entity/university discount). Even though this is triple what a similarly filed extra dependent claim would cost ($100), there is far more “bang for the buck” because this independent claim gets a full examination.
Information Disclosure Statements (IDS)
Every patent attorney, inventor, owner and those substantively involved in patent prosecution have an affirmative duty to disclose information material to patentability. This typically involves any patent or publication deemed “close” to the claimed invention.
However, for university clients, we are often translating an academic work (e.g., a Ph.D. thesis) into a patent specification. These works often have hundreds of citations. With the new IDS fees, it will be necessary to come back to the faculty-inventor and ask them to identify the references that are “material” to what we are seeking in the patent application. That also means conveying in layperson’s terms, the boundaries of the claims sought to the inventor.
Conclusion
The USPTO fee increase effective January should not meaningfully change prosecution strategy on the patent or trademark side. Planning for the USPTO fee increase means culling down massive IDS submissions, using restraint on excessive claims and filing well-thought out design patent applications. On the trademark side, the USPTO has implemented some innovative fees such as those for 1,000+ character identification of goods. This will likely stem either fraudulent or incompetent trademark submissions that unduly burden the trademark examining attorneys. Overall, the fee increases appear relatively nominal in view of other inflationary increases.
