With the USPTO’s implementation of new fees for certain continuation patent applications, applicants now face important strategic decisions regarding the timing and management of their filings.

New Continuation Application Fees

1. Applications Filed 6 to 9 Years After Earliest Benefit Date (EBD): A fee of $2,700 is applied to any continuation application filed six or more years, but less than nine years, after its EBD.
2. Applications Filed 9 or More Years After EBD: A higher fee of $4,000 is imposed on continuation applications filed nine or more years after their EBD.

These continuation fees are in addition to standard filing, search, and examination fees. Applicants eligible for small or micro entity status may receive discounts on these additional fees. See Table 4 of Federal Register: Setting and Adjusting Patent Fees During Fiscal Year 2025.

Definition of Earliest Benefit Date (EBD)

The EBD is defined as the earliest filing date for which benefit is claimed under relevant sections of the Patent Act (35 U.S.C. §§120, 121, 365(c), or 386(c), and 37 C.F.R. § 1.78(d)). This excludes the filing date of a foreign application or a provisional application to which benefit is claimed under 35 U.S.C. §119.

Strategic Considerations for Applicants:

• Timely Filing: To avoid these additional fees, applicants should consider filing continuation applications before the six-year mark from the EBD.
• Review of Patent Portfolios: Applicants should assess their existing patent portfolios to identify applications approaching the six-year threshold and determine if filing a continuation is necessary before the increased fees apply.
• Cost-Benefit Analysis: Given the substantial increase in fees for later-filed continuations, a thorough cost-benefit analysis is advisable to decide whether the potential benefits of a continuation application justify the additional costs.

These changes underscore the growing importance of proactive, cost-conscious planning in patent prosecution. By understanding the timing and financial implications of the new rules, applicants can better manage their intellectual property portfolios and avoid unnecessary expenses.

Notably, the rollout of these continuation fees prompted a significant uptick in filings ahead of the January 19, 2025, effective date. This surge may contribute to temporary backlogs at the USPTO and could result in longer examination pendency—particularly in high-volume technology areas. Compounding this pressure are developments affecting the size and stability of the examiner workforce, including federal hiring freezes, rescinded offers to incoming examiners, the termination of provisional or term-limited positions, and ongoing attrition through retirements and resignations. Together, these workforce constraints and increased filing volumes are contributing to evolving pendency trends that merit close attention from stakeholders.

In light of these potential delays, applicants seeking to avoid the new continuation fees may need to make filing decisions earlier in the prosecution timeline—possibly even before the parent application reaches a final office action or allowance. As pendency grows, the window for filing cost-effective continuations may close well before the full commercial or strategic value of a pending application is clear. This shift underscores the need for proactive portfolio planning and early-stage decision-making under the new fee structure.