IP Hot Topic: USPTO Establishes New Surcharge for Late-Stage Continuation Applications

The U.S. Patent & Trademark Office published a final rule on November 20, 2024, that establishes a new surcharge for continuation applications filed well after their earliest benefit dates (EBDs). Beginning January 19, 2025, undiscounted entities can expect to pay, at least, a one-time $2,700 fee for continuation applications filed six or more years after their EBDs. This fee is in addition to the regular filing and examination fees (which are also increased). The fee increases to $4,000 for continuation applications filed nine or more years after their EBDs.

The USPTO reasons that the new surcharge will help offset the lower amount of maintenance fees it receives from continuation applications that quickly expire after issuance.

Applicants foreseeing the need for future continuation applications can avoid the surcharge by filing the applications any time before the six-year mark—as opposed to waiting for a notice of allowance in the parent application. In many cases, it may behoove an applicant to watch for these six- and nine-year milestones and evaluate early whether a continuation might be worthwhile before the extra fee would apply.

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