We previously published that the United States Patent & Trademark Office (USPTO) is increasing trademark and patent fees effective January 18-19, 2025.
We had also notified you that January 15, 2015 would be our firm’s cut-off to secure the 2024 fee schedule for clients facing increased fees. We are pleased to announce that the cut-off date has been extended until January 31, 2025!
Folks may recall that Sherman IP LLP maintained previous years’ attorney fees into the following year to help absorb/delay annual USPTO governmental fee increases to help our clients acclimate. This was really appreciated by our clients, and Sherman IP received significant positive feedback from clients and contacts expressing their appreciation.
As mentioned, Sherman IP LLP will again help absorb the USPTO governmental fee increases for its clients and delay implementation of its new 2025 fee schedule for any filings paid for, and capable of being completed on or before January 31, 2025. In this program, the total paid by clients will remain constant through January 31st, in the hope that it will allow clients to maintain a consistent budget. However, any invoices that remain unpaid on January 31st will become invalid and clients will be required to meet the new USPTO and Sherman IP LLP fee schedules after that deadline.
For example, to prepare and file Section 8 & 15 maintenance filing to maintain a trademark registration, Sherman IP LLP currently charges a flat rate of $1,050.00 (including the Government fees) if the registration includes one class of goods or services. Effective January 18, 2025, the USPTO governmental fee for the same filing will increase by $150.00.
For all Trademark Post-Registration filings (§8 / §15 / §71 Declaration or §8 / §9 Declaration) ordered and paid for by our clients on or before January 31, 2025, Sherman IP LLP will reduce its attorney’s fees to allow the total client cost to remain the same regardless of the Government fee increase. This will apply across the board to all patent and trademark filings ordered and paid for by January 31, 2025. Sherman IP LLP must have all client information and materials so that the filing may be completed by January 31, 2025. The Sherman IP invoice must be paid on or before January 31, 2025, for this to be effective. After January 31, 2025, Sherman IP clients should anticipate an increase in trademark and patent filing costs.
In issuing further invoices, Sherman IP staff will assess the likelihood that a filing will be able to be completed prior to January 31, 2025, in quoting or invoicing any specific filing. That means our team will be asking you whether you actually have the materials and other items/information showing you are ready to file. The closer we get to January 31, 2025, the less likely it will be that your filing will be able to be completed by January 31st, and the more likely that your filing will fall over into the new 2025 fee schedule. If that is the case, you will be assessed based on the new 2025 fee schedule.
Likewise, any previous outstanding flat fee invoices quoted through Sherman IP’s Control Legal practice platform will EXPIRE ON January 31, 2025, if they have not already been paid prior to that date. We urge you to proceed without delay.
- Basis for USPTO Trademark Fee Increase – More Insufficient Applications and Less Registrants Are Maintaining their Trademark Registrations.
A USPTO biannual fee review process concluded that increased fees are necessary to both “recover the aggregate costs of maintaining the USPTO’s trademark-related operations,” as well as “enhance the quality of trademark examination, achieve optimal examination times, invest in modernizing trademark information technology systems and infrastructure, and provide stability to USPTO operations, even in times of financial fluctuations.”
This USPTO increase in trademark governmental filing fees is largely due to an increase in new applications filed with either insufficient information or voluminous information. These poor applications and filings now require the trademark office to bolster its review efforts to maintain its standards for registration and maintenance. Second, a trending pattern has emerged that a high percentage of Trademark Registrants are choosing to allow their trademark registrations to lapse. Ultimately, the USPTO determined that the current fee schedule was insufficient to satisfy its anticipated surge in budgetary requirements.
As detailed in the Trademark Final Rule addressing the Trademark Fee Adjustment:
“The USPTO is changing application filing fees to incentivize more complete and timely filings and improve prosecution. The USPTO is implementing surcharges to the base application filing fee in this final rule to enhance the quality of incoming applications, encourage efficient application processing, ensure additional examination costs are paid by those submitting more time-consuming applications, and reduce pendency,”
“The USPTO has an obligation to recover the aggregate costs of Trademark operations through user gees. The [above-cost] post-registration maintenance fees recover costs incurred by the USPTO during examination. Given changes in demand and filing behaviors, the agency is rebalancing aggregate revenue derived from renewals and post-registration maintenance fees to keep barriers to entry low for new applicants.”
The Commissioner for Trademarks highlighted that many applications are now being filed without proper materials and disregarding important base application requirements. Applicants are entering extensive lists of good/services in multiple classes, are not utilizing the USPTO’s ID Manual (i.e., Acceptable Identification of Goods and Services Manual and submitting questionable specimens. Additional resources need to be allocated to examine and reject these improper or time-consuming applications.
At Sherman IP, we are often hired to fix these applications. We see these types of improper filings all the time. Sometimes they cannot be fixed, applications must be re-filed, and rights must be abandoned. Sherman IP attorneys are specialists in fixing and filing trademark applications.
To that end, here is a list of some of the main changes to the trademark fee structure which take effect January 18, 2025:
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See the Trademark Final Rule for a full list of fee adjustments and changes.
- Basis for USPTO Patent Fee Increase – Increased Continuing Application Practice, Design Applicants Utilizing Discounted Fee Structures and Large Cumulative IDS Submissions.
This USPTO increase in patent governmental filing fees is partially due to higher volume in Continuing Application filings., If and when these Continuing Applications issue, the cost of examining them isn’t recouped by the USPTO due to a shortened patent term. The USPTO has implemented new fees for Continuing Applications relying on the benefit of a priority claim more than six (6) years, and more (9) years from the earliest filing date.
“The volume and rapid increase of continuing applications negatively impacts the USPTO’s workload and docketing practices. For example, it is difficult for the agency to balance patent resources between the examination of “new” (i.e., noncontinuing) applications disclosing new technologies and innovations and continuing applications that, in some cases, are a repetition of previously examined applications either issued as patents or that have become abandoned.”
In the Patent Final Rule, the USPTO reports that new Design applications have increased more than 50% since 2014, with more than half of Design Applicants enjoying discounted (small or micro-entity) fees. Historically, the USPTO relied on revenues from utility Applicants/Patentees to offset discounted fee structures for Design Applicants. Due to continued shortfalls in utility maintenance fees, the USPTO is now forced to realign the Design Application fee schedule to balance its budget.
The Commissioner of Patents has further implemented a new three-tiered fee structure to reduce the number of applicant-provided Information Disclosure Statements (IDS) citations. In the opinion of the USPTO, large IDS submissions of 50 or more pieces of information, “…contain clearly irrelevant, marginally relevant, or cumulative information”. The new IDS size fee will sway Applicants to submit information that is only material to patentability as required under §1.56(b), thereby allowing Examiners to focus on the more relevant information during examination.
Discussed in the Patent Final Rule addressing the new IDS Size Fee:
“Large IDS submissions are a significant burden to the patent system and the agency. The number of items of information submitted impacts the complexity of examination and increases the demands placed on the examiner. It costs the agency millions of dollars each year to provide examiners the additional time necessary to review large IDS submissions. Thus, applicants who submit large IDS submissions are using more USPTO resources than those who do not. The IDS size fees will provide more revenue to help recover the additional costs associated with large IDS submissions and address the inequities of providing subsidies to those who use more resources.”
Here is a highlight of the main changes to the patent fee structure which take effect January 19, 2025:
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See the Patent Final Rule for a full list of fee adjustments and changes.
In Sherman IP’s Control Legal® practice platform, all work is conducted on a limited scope, flat fee basis. Each filing is quoted and invoiced separately, in advance. The quoted flat fee amount includes all project required attorneys’/service fees for that specific anticipated project/filing, as well as project required communications and calendaring involved in that project. A single, quoted, and agreed upon flat fee covers all anticipated work. While Sherman IP is the attorney throughout your matter, any further work requires Sherman IP to be authorized and pre-paid(“hired”) separately for each approved, particular, anticipated scope of work so that you can control and budget your legal fees.
We recommend that clients consider filing their anticipated patent and trademark matters now to avoid the USPTO fee increases and that any foreign applicants contact us to make sure that their applications are represented appropriately before the USPTO. Sherman IP attorneys are specialists in representing clients before the USPTO for their patent and trademark matters.
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