IP Hot Topic: USPTO Establishes New Fees for More Than Fifty Cumulative IDS References

Along with other new and increased fees, including the surcharge for late-stage continuation applications, the United States Patent & Trademark Office published a final rule on November 20, 2024, that establishes new fees for Information Disclosure Statements (IDS) that cite more than 50 references.

Beginning January 19, 2025, applicants can expect to pay at least $200—and up to $800—for citing more than 50 references in an application. The fee applies based on the total number of references cited in the application up to that point, and scales as follows:

• Up to 50 total cited references: no fee
• 51–100 total cited references: $200 fee
• 101–200 total cited references: $500 fee (less any amount previously paid)
• 201+ total cited references: $800 fee (less any amount previously paid)

Because the reference thresholds are cumulative, they may be exceeded by one IDS or several IDSs taken together over the course of prosecution.

The USPTO reasons that the new fees will help recover the $10 million the Office spends annually on considering large IDSs—which, until now, the USPTO considers to have been subsidized by other patent fees.

The final rule also requires that IDSs submitted on or after January 19, 2025, contain a clear written assertion that they are accompanied by the appropriate fee—and an identification of the applicable large-IDS fee—or otherwise contain an assertion that no fee is required. IDSs submitted without the written assertion or the appropriate large-IDS fee will not be substantively considered.

Importantly, under the final rule, a general authorization to charge a deposit account is not a valid, written assertion for the purposes of a large-IDS fee. Thus, relying only upon a general authorization to charge a deposit account for a large-IDS fee may result in the accompanying IDS not being substantively considered.

Read the final rule here: https://www.federalregister.gov/documents/2024/11/20/2024-26821/setting-and-adjusting-patent-fees-during-fiscal-year-2025.