Effective as of January 19, 2025, the United States Patent and Trademark Office (USPTO) implemented new requirements and size fees for filing Information Disclosure Statements (IDSs). The new size fees seek to account for the costs associated with the services necessary for reviewing applicant-cited references in pending patent applications.
New Fee Structure for IDS Practice
- Fees are Based on the Cumulative Number of References: A new IDS size fee has been implemented that is incurred when an IDS is filed resulting in the cumulative number of applicant-cited references in a pending patent application exceeding a threshold. The new IDS size fee is required regardless of when the applicant-cited references were provided to the USPTO.
- Fees are Incurred at Specific Thresholds: The new size fees are only incurred when the cumulative number of applicant-cited references exceeds a threshold of 50, 100, or 200.
- The Fee Structure is also Cumulative: The size fee for applicant-cited references exceeding 50 is $200; the size fee for applicant-cited references exceeding 100 is $500, less any amount previously paid; and the size fee for applicant-cited references exceeding 200 is $800, less any amount previously paid.
New Requirements for IDS Practice
- Written Assertion: Every IDS must include a written assertion regarding the IDS size fee, including when no size fee is due. Failure to provide the written assertion will result in the IDS not being considered.
- Updated Form: The USPTO published the “SB/08 – Patent Center” form to replace the previous SB/08 form. The updated “SB/08 – Patent Center” form includes a written assertion for each fee scenario with a corresponding checkbox.
- Particular IDS Size Fee Must be Clearly Identified: If a size fee is required, a general authorization to charge fees to a deposit account is not a compliant written assertion under the new § 1.98(a) requirement unless the authorization clearly identifies the particular IDS size fee under 37 C.F.R. § 1.17(v) that should be charged for submission of a particular IDS.
Ramifications for Failing to Comply
- IDS will not be Considered: The Examiner will not consider the references from the IDS if the correct assertion or IDS size fee is not made.
- Resubmission: The references will need to be resubmitted in a subsequent IDS to the USPTO if they are to be considered by the Examiner.
- Additional Fees Upon Resubmission: Additional fees may be incurred depending on the stage of prosecution upon resubmission of an IDS. These additional fees may be nominal. However, these fees could be as high as $2,860.00 if it is necessary to file a second or subsequent request for continued examination (RCE) to reopen prosecution and resubmit the IDS.
Recommendations for IDS Practice
- Track the Number of Applicant-Cited References: Maintain a chart, log, or spreadsheet for each pending patent application to track the cumulative number of applicant-cited references in IDSs, including references that were cited prior to January 19, 2025.
- Ensure the Written Assertion is Included: Confirm that the checkbox corresponding to the correct size fee scenario is marked on the updated “SB/08 – Patent Center” form when filing an IDS.
- Pay the Size Fee: Pay the appropriate size fee corresponding to the fee scenario along with filing the IDS. Per the USPTO guidance, size fees are only incurred when additional references are filed causing one of the thresholds for cumulative applicant-cited references (i.e., 50, 100, or 200) to be exceeded.
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