by Dennis Crouch
The USPTO’s new fee structure, which took effect on January 19, 2025, introduces significant changes that will reshape patent prosecution strategy in the coming years. While the update includes generally higher fees across the board, one notable development is a substantial surcharge targeting continuation applications filed long after their earliest benefit date (EBD). Under this new structure, applicants now face a $2,700 surcharge for continuations filed six years after the EBD, with the fee jumping to $4,000 for applications filed nine or more years out. Small and micro entities receive their typical discounts. This change forces patent practitioners to reconsider long-established prosecution timing strategies, particularly the common practice of sequential continuation filings. The impact will be especially significant for foreign applicants and companies maintaining large continuation portfolios, requiring some immediate attention to docketing practices and client communication schedules.
Definitions: The EBD is the filing date that starts the 20-year patent term clock running under 35 U.S.C. ยง 154. This excludes both U.S. provisional applications and foreign national applications. This structure means that the new fees will especially impact foreign patent applicants who enter the U.S. market via PCT national stage route because their EBD typically reaches back to their PCT priority filing date rather than their actual U.S. national stage filing date — typically adding 2+ years to the timeline.
The USPTO’s explanation for the change focuses on revenue — continuation applications filed toward the end of the patent term are less likely to be maintained through their full term, and the office relies upon those late-stage maintenance fees as a major revenue source. At the same time, the change also appears designed to discourage late-filed claims that can create uncertainty in the marketplace. The ideas here are akin to those restricting broadening reissue applications beyond a certain deadline.
Most patent portfolios involve multiple patents covering the same basic invention, all claiming priority back to the same original application. These continuation applications allow patent owners to better match claim-scope with competitor activity. The most common approach is sequential prosecution — waiting until the prior case receives a notice of allowance before filing the next in line. This approach offers several benefits: It naturally spreads prosecution costs over time rather than requiring substantial upfront investment. The delay also creates two distinct opportunities for cost savings. First, the passage of time helps reveal which inventions have true market value, allowing applicants to drop continuation plans for less valuable innovations. Second, and perhaps more importantly, the prosecution history of the parent application typically crystallizes the points of novelty through argument and amendment. That recognition of what has already been approved-of allows for more focused and efficient claim drafting in the continuation, often leading to smoother prosecution. But, this approach has a surcharge problem under the new fees.
As patent prosecutors and portfolio managers develop a longer-term prosecution strategies to account for the new fees, I would advise taking some immediate action to flag applications in the docket system for review prior to these six and nine year marks. At that point, a client may decide to preemptively file a continuation application — even before receiving a notice of allowance in the parent case. This front-loading approach avoids the surcharge but with the tradeoffs suggested above. Patent attorneys should begin discussing these timeline issues with clients now – particularly for cases already past the four-year mark – to ensure sufficient lead-time for strategic decisions. The key will be striking the right balance between avoiding the new surcharges and maintaining the cost-spreading and prosecution-efficiency benefits that have made sequential continuation practice the norm.