USPTO’s New Continuing Application Fee (CAF) - 37 CFR 1.17(w)
Beginning on January 19, 2025, applicants at the United States Patent and Trademark Office (USPTO) may be required to pay the new Continuing Application Fee (CAF) if they want to claim the full priority benefit of their patent application.
What is the Continuing Application Fee?
The CAF is a new fee the USPTO is requiring under 37 CFR 1.17(w) for presenting a benefit claim under § 1.78(d). The CAF applies to all utility, plant, and design continuing applications which have an actual filing date more than six years after their Earliest Benefit Date (EBD). This means that if an applicant files a continuation, divisional, or continuation-in-part application and the application claims priority to another application that is more than six years prior to the filing date of the new continuation, the CAF fee will be required if the applicant wants to claim priority.
What is the cost of the Continuing Application Fee?
There are two different costs for the CAF depending on whether the earlier benefit application is more than six years prior or more than nine years prior. If the earliest benefit date is more than six years prior, then the § 1.17(w)(1) fee is due. If the earliest benefit date is more than nine year prior, then the §1.17(w)(2) fee is due.
The §1.17(w)(1) fee is $2,700 for a regular entity. The §1.17(w)(2) fee is $4,000 for a regular entity.
The §1.17(w)(1) fee is $1,080 for a small entity. The §1.17(w)(2) fee is $1,600 for a small entity.
The §1.17(w)(1) fee is $540 for a micro entity. The §1.17(w)(2) fee is $800 for a micro entity.
Do I have to pay multiple Continuing Application Fees for each priority claim?
It depends. Presenting multiple benefit claims at the same time will not incur multiple fees. However, if multiple benefit claims are presented at different times during the application, a second fee may be due if the later presented benefit claims are more than nine years prior to the filing date and the applicant only paid the fee for benefit claims going back six years.
For example, if an applicant submits a benefit claim to a prior application that was filed 7 years ago and pays the § 1.17(w)(1) fee, but then later adds a benefit claim to a prior application filed 10 years ago, the applicant will owe the different between the §1.17(w)(2) fee and the already-paid §1.17(w)(1) fee. The good news is that the maximum amount due in a single application is the §1.17(w)(2) fee.
The USPTO provides a guide with examples of what CAF fees might be do in the USPTO Quick Reference Guide to the Continuing Application Fee.
Working with your patent attorney is the best way to determine what CAF fee you may owe.
When do I have to pay the Continuing Application Fee?
For an application filed on or after January 19, 2025, payment of the CAF is required at the time a benefit claim is presented in the application.
What if I don’t pay the Continuing Application Fee?
Failure to pay the CAF will result in non-entry of the benefit claim. This means that the continuation application will not receive benefit back to the earliest benefit date.
How will the USPTO notify me about my benefit claims?
Applicants can verify whether benefit claims are entered by checking their application’s Filing Receipt. If a benefit claim has been entered, it will show up on the Filing Receipt. If a benefit claim is not entered, it will not appear on the Filing Receipt. However, applicants should be careful because the USPTO will not separately notify applicants that their benefit claim has been removed from the Filing Receipt. Applicants should carefully review the Filing Receipts with their attorney to ensure that all the benefits claims they believe they are entitled to are entered in the application.
For more information, please contact Whitestone’s Patent Practice Group at patents@whitestone.law
This information is intended to inform clients and friends about legal developments. Nothing in this publication should be construed as legal advice or a legal opinion. Readers should not act upon the information contained in this publication without seeking the advice of legal counsel.