New continuation application fees: why and at what cost?

Earlier this year, the US Patent and Trademark Office (USPTO) instituted new fees related to the filing of continuation patent applications. As a refresher, a continuation application is a second or subsequent patent application filing that claims the benefit of an earlier filed patent application. Prior to January 19, 2025, only the standard patent application fees were due when filing a continuation application.

Now, the USPTO has tacked on a new fee that is based on how much time has elapsed since the original application filing. If the continuation application is filed more than six years after the original application, an additional fee of $2,700 must be paid on top of the standard filing fees. If the continuation application is filed more than nine years after the original application, the additional fee is $4,000. As with other fees, these can be discounted for small or micro entities. 

Why this sudden philosophical shift? The stated justification is that because of the age of these continuation applications, the USPTO will miss out on certain maintenance fee payments. A patent will ordinarily incur maintenance fees due at about four, eight, and 12 years after issuance to keep the patent in force. Since a continuation patent’s term is based on the original filing date, applications filed long afterward will have shorter life spans that expire before some of these payments are due. For example, a continuation application filed in the first window (between six and nine years after the original application) is likely to expire before the 12-year maintenance fee deadline. Similarly, a continuation application filed in the second window (more than nine years) could avoid both the eight and 12-year maintenance fee deadlines. 

The USPTO claims that maintenance fees help to cover the cost of the examination, so losing these fees creates a budgetary setback. The thinking on these new continuation fees is to basically recover some of that lost money in an extra up-front payment. Unfortunately, this arrangement forces an applicant to effectively pay maintenance fees up-front on an application that may not ultimately be granted. It might have made more sense to accelerate a maintenance fee schedule on the back end after the grant for these drawn-out applications, but the USPTO opted for a different scheme. 

The result is likely to be a setback to continuation practice. Investors often like to see an “open” patent family to allow for flexibility in obtaining additional coverage that could be more valuable in the long run.  Continuations can also be important to keep available as the market for the invention develops.  The trends may be unclear in the first several years after introducing an invention to the marketplace, but continuation applications can serve as a path to better protection as clarity develops.  The new fees may end up making continuation applications cost-prohibitive, particularly for smaller entities that are already on tight budgets.  The fee structure will have to be considered when developing a patent portfolio strategy to optimize proper coverage and opportunities with costs. 

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