New USPTO Fees For Continuation Applications With Older Priority Dates

Written by Ben Esplin

In last week’s post, I briefly mentioned the USPTO’s new fees for 2025. While these fees are not as high as those the USPTO had previously proposed, they do have two brand new fees that have not previously been levied against applicants.

The new fees are for (a) filing an application with a claim of priority greater than 6 years (but less than 9 years), and (b) filing an application with a claim of priority greater than 9 years. Filing a new utility patent application that falls into (a) above will incur an undiscounted fee of $2700.00, and filing a new utility patent application that falls into (b) above will incur an undiscounted fee of $4,000.00 (with fees discounted for small entities to $1080.00 and $1600.00, respectively). It goes without saying that these fees are significant, and will have a chilling effect on continuations being filed in patent families with older priority dates, a common practice among sophisticated patent holders for patent families deemed to be of value.

Currently, the new fees are set to go into effect January 18, 2025. Between now and that date, patent holders with patent families that have older priority dates may be able to avoid at least the “first round” of these new fees by proactively filing continuation applications in such families, rather than waiting until continuation applications are typically filed, after a Notice of Allowance has been received.

If you or your company hold a portfolio of patents and patent applications, and would like to understand whether any of the patent families will be subject to the new fees, and/or would like to review the option of proactively filing one or more continuation applications before the new fees go into effect, please contact us immediately for a consultation.