The US Patent and Trademark Office (USPTO) has published that there will be notable increases in some of its patent application fees as from 19 January 2025.
Since South African patent applicants generally have a strong interest in the USA as a patent jurisdiction, the changes should be taken note of.
The most relevant change for South African applicants, is that the USPTO will now be charging USD 200 per patent claim in excess of 20 and USD 600 per independent patent claim in excess of 3.
Adams & Adams has long followed a practice of endeavouring to limit claim sets for South African applicants in appropriate technology areas to 15 claims. This practice is based on our experience of the diligence and productivity of searching by foreign examining patent offices depending on the number of claims. Furthermore, excess claim fees apply in many jurisdictions and negatively impact the local market disproportionately because of the ZAR/USD exchange rate. Therefore, we expect that the increase in excess claim fees would likely not materially affect many of our clients.
The USPTO is also increasing the fees associated with the filling of a Request for Continued Examination (RCE). More specifically, the fee for a first RCE will increase by 10% to USD 1 500 and the fee for a second or subsequent RCE will increase by 43% to USD 2 860.
Our experience is that it is becoming increasingly challenging to obtain grant of US patents within a first round of examination, which has been exacerbated by the uncertainty created by some fairly recent court judgements. As a result, the need to file at least one RCE has become more common, and the fee increase in all likelihood has been motivated by this practice.
Probably for the same reason, the USPTO is changing the fee structure for continuation applications. Generally speaking, continuation applications are filed to continue the prosecution of a patent application for the same invention. This may be done after the issuance of an unfavourable final office action, as an alternative to filing an RCE, or in seeking to refine claim scope. More specifically, the USPTO will now include a new surcharge of USD 2 700 for continuation applications filed more than 6 years after the earliest priority date or USD 4 000 for continuation applications filed more than 9 years after the earliest priority date.
Finally, the USPTO will be adding a surcharge based on the total number of references that are included in the statutorily required Information Disclosure Statement (IDS). This new charge will be USD 200 for more than 50 references, USD 500 for more than 100 references, and USD 800 for more than 200 references.
Naturally, the abovementioned fee structure can be avoided by filing US patent applications before 19 January 2025. Applicants of existing PCT applications or having pending priority applications and who have interest in pursuing patent protection in the USA would therefore be well served to consider filing their US patent applications within the next two months. The same would apply to those having pending US applications at an advanced stage of prosecution and expecting that a continuation application may be required.
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