The Federal Register publication entitled Setting and Adjusting Patent Fees During Fiscal Year 2025 dated 11/20/2024 sets forth increases to several fees, including the establishment of a tiered fee structure for large Information Disclosure Statements (IDS) effective January 19, 2025. With respect to IDS submissions, the Federal Register publication sets forth amendments to 37 CFR §§ 1.97 and 1.98, and these revisions establish a new affirmative requirement for all IDS’s, regardless of the number of references cited.
The publication establishes a $200 fee for filing an IDS that causes the cumulative number of applicant-provided items to exceed 50, a $500 fee for filing of an IDS that causes the cumulative number of applicant-provided items to exceed 100, and an $800 fee for filing of an IDS that causes the cumulative number of applicant-provided items to exceed 200.
The notice also establishes a requirement that the applicant either provide a written assertion that no IDS size fee is due or a written assertion that an IDS size fee is due and is being submitted. Specifically, 37 CFR 1.98(a) is being amended to include a new subsection (4), which reads:
37 CFR 1.98(a) Any information disclosure statement filed under § 1.97 shall include the items listed in paragraphs (a)(1) through (4) of this section.
(4) A clear written assertion that the information disclosure statement is accompanied by the applicable information disclosure statement size fee under § 1.17(v) or a clear written assertion that no information disclosure statement size fee under § 1.17(v) is required.”
The Federal Register publication indicates that the added language of 37 CFR 1.98(a)(4) may be more than a formality that Examiners may overlook. The Federal Register publication clarifies that this new required language in each IDS is necessary to ensure the record is clear as to which fee the applicant believes may be due (or that no fee may be due) with the IDS so the examiner can promptly ascertain whether the IDS is compliant. The Federal Register publication also notes that there is no specific language required for the written assertion, but it should be readily identifiable on the IDS and clearly convey the applicable IDS size fee by specifying the particular paragraph in § 1.17(v) that applies (e.g., “the fee due under 1.17(v)(2)”), if any.
Time will tell how the USPTO handles an IDS that lacks this written assertion, but the Federal Register reiterates that, to be considered in a patent application, an IDS must meet the content requirements of § 1.98, indicating that Examiners may not consider an IDS submitted without a written assertion satisfying 37 CFR 1.98(a)(4).
The Patent Office has not yet announced updated IDS forms that would easily allow applicant compliance with the new regulations. We anticipate that this will eventually occur. In the interim, however, we advise using a transmittal letter or cover sheet to include the newly required information to ensure compliance with the new requirements of § 1.98.
