In depth
The trademark fee hikes are specifically targeted. The new single base application filing fee will incur an application surcharge if the following conditions are met: (1) submission of an incomplete application; (2) using the free-form text field instead of using the pre-approved, drop-down goods and services from the Trademark Next Generation ID Manual; and (3) providing excessively lengthy descriptions of goods or services in the free-form field, which tend to be overly broad or merely a laundry list of items. Paper applications will increase from USD 750 to USD 850. Additionally, there will be a USD 200 fee for using the free-form field, a USD 200 fee for each additional block of 1,000 characters used in the ID, and a USD 100 charge for providing insufficient information in a trademark application.
Of the most commonly incurred patent fees for patent applications, eight will remain unchanged while 16 will be adjusted. The following will remain unchanged: (1) basic filing fee; (2) utility application size fee - for each additional 50 sheets that exceed 100 sheets; (3) maintenance fees at each of the 3.5-year, 7.5-year, and 11.5-year periods; (4) notice of appeal fee and fee for filing a brief in support of an appeal; and (5) fee submission of an information disclosure statement. However, for large entities, there will now be a separate surcharge for an information disclosure statement based on the cumulative number of applicant citations listed in an application.
The USPTO will adjust the fees for 16 of the most commonly incurred patent fees, with some increasing and others decreasing. For large entities, the three fees that will decrease for provisional applications are:: (1) extensions for responses within the first month (USD 220 to USD 50); (2) extensions for responses within the second month (USD 640 to USD 100); and (3) extensions for responses within the third month (USD 1,480 to USD 200). The remaining 13 fees will increase. The fee for a request for prioritized examination will now be USD 4,515 (from USD 4,200) for large entities and USD 1,806 (from 1,680) for small entities. The fee for a request for continued examination (RCE) will jump from USD 1,360 to USD 1,500 for large entities and from USD 544 to USD 600 for small entities. For the second and subsequent RCE, the fee will jump to USD 2,860 from USD 2,000 for large entities and from USD 800 to USD 1,144 for small entities. Each independent claim in excess of three will now be USD 600 instead of USD 480 for large entities and USD 240 from USD 192 for small entities. Independent claims in excess of 20F will now be USD 200 instead of USD 100 for large entities and USD 80 instead of USD 40 for small entities.
One of the biggest increases will be for design patent application filing fees, which will go up to USD 300 (from USD 220) for large entities and to USD 120 (from USD 88) for small entities. Issue fees will also increase as those for design patent applications went from USD 740 to USD 1,300 for large entities and USD 520 instead of USD 296 for small entities. Utility patent application issue fees will increase to USD 1,290 (from USD 1,200) for large entities and to USD 516 (from USD 480) for small entities. Utility patent applications search fees will increase to USD 770 (from USD 700) for large entities and to USD 408 (from USD 280) for small entities. Design patent application search fees will be USD 300 (from USD 160) for large entities and USD 120 (from USD 64) for small entities. Finally, examination fees will be raised for both utility and design patent applications. For utility patent applications it will increase from USD 800 to USD 880 for large entities and USD 353 instead of USD 320 for small entities. Design patent applications will now be USD 700 instead of USD 640 for large entities and USD 280 instead of USD 256 for small entities.
The Director of the USPTO is authorized by Section 10 of the Leahy-Smith America Invents Act (AIA) to adjust fees in order to provide the USPTO sufficient revenue to recover the aggregate cost of trademark and patent operations in future years. Prior to the 2011 AIA, the USPTO could only adjust fees to reflect changes in the consumer price index. In order to change fees, the USPTO must go through the rule-making process under Section 5 of the Administrative Procedure Act (APA). The rule-making process requires federal agencies like the USPTO to (1) publish a notice of proposed rulemaking (NPRM), (2) allow interested persons an opportunity to comment on the proposed rule, and (3) after reading and considering those comments, publish the final rule in the Federal Register. The USPTO repeated this process twice – once for trademarks and once for patents.
For trademarks, the Director notified the Trademark Public Advisory Committee (TPAC) of its intent to set or adjust trademark fees and submitted a preliminary trademark fee proposal on 8 May 2023. On 5 June 2023, TPAC held a public hearing in Alexandria, Virginia. After incorporating the public hearing input into the report, the USPTO published its NPRM to solicit comments on the proposed fee schedule on 26 March 2024. The NPRM received comments from seven intellectual property organizations, one government agency, 19 individuals, law firms, and other organizations. The Final Rule, Setting and Adjusting Trademark Fees During Fiscal Year 2025, is effective on 18 January 2025.
For patents, the Director notified the Patent Public Advisory Committee (PPAC) of its intent to set or adjust patent fees and submitted a preliminary patent fee proposal. On 19 May 2023, the PPAC held a public hearing in Alexandria, Virginia. The PPAC prepared a report that incorporated its comments, advice, and recommendations along with the public's input, which the USPTO considered and analyzed before publishing the NPRM on 3 April 2024. The USPTO received comments from 28 associations and individuals including intellectual property organizations, law firms, corporations, attorneys, and others. The Final Rule, Setting and Adjusting Patent Fees During Fiscal Year 2025, is effective on 19 January 2025.
What's next
It is evident that the USPTO is trying to raise funds to continue its operations while also prioritizing fast processing times, improving the quality of incoming applications, and enhancing processing efficiencies.
To avoid unnecessary fees, companies should meticulously review their trademark and patent filings to ensure they are thorough, include sufficient details, and comply with all the USPTO rules.
If you have any questions about your trademark and patent filing, please contact your Baker McKenzie attorney or the authors below.
