The United States Patent and Trademark Office (USPTO) recently introduced a Continuing Application Fee (CAF) to address the growing backlog of continuing applications and encourage timely prosecution. Effective January 19, 2025, this fee applies to certain continuing applications based on their timing relative to the earliest benefit date (EBD).

The CAF applies to all utility, plant, and design continuing applications that are filed more than six years after their EBD.

The fee is generally $4,000 for applications filed nine or more years after the EBD and $2,700 for applications filed between six and nine years later after the EBD. For small entities, the fee is reduced to $1,600 for applications filed nine or more years after the EBD and $1,080 for applications filed between six and nine years after.

Applicants often file what are known as “no fee” continuing applications, which allow for the deferral of fees until responding to a Notice to File Missing Parts. This strategy allows applicants additional time to determine which claims to present for prosecution — or whether to pursue the application at all — before expending filing fees.

However, the new CAFs have created a potential trap for filers of “no fee” continuing applications. If a continuing application requiring a CAF is filed without the necessary fee, the USPTO will not acknowledge priority claims to applications filed six or more years prior. This means that the filing receipt will exclude such priority claims. Of note, the USPTO will not send a notification to applicants informing them about the deletion of the priority claim, so there is no explicit communication to which applicants have the opportunity to respond to correct lost priority claims.

To reinstate the priority claims, applicants must submit a "corrected" Application Data Sheet (ADS) and pay the applicable CAF within four months of the continuing application's filing date.

To avoid loss of priority claims, applicants should ensure the CAF is paid either at the time of filing or within four months of filing with submission of a corrected ADS. We recommend that the four month deadline for paying the CAF be docketed to prompt a timely filing of the ADS with the required CAF in the event a CAF is omitted.

The USPTO provided additional information in a Quick Reference Guide to the Continuing Application Fee.

For more information, please contact Scott Warren at swarren@foxrothschild.com or another member of Fox Rothschild’s national Patent Law Practice Group.

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