You may have noticed a new fee when filing patent applications at the United States Patent and Trademark Office (USPTO). Or, you may have noticed that your priority claims are being dropped when you file continuations. Whether or not this has happened to you yet, it likely will soon.
That is because the USPTO’s new Continuing Application Fee (CAF) is in effect (since January 19, 2025) and the USPTO is enforcing it the best they know how.
What is the Continuing Application Fee?
Short answer: A fee applicants must pay when their continuation applications have a priority claim older than 6 (or 9) years.
Long answer: 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 CAF?
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.
| Entity Size | §1.17(w)(1) | §1.17(w)(2) |
| Regular | $2,700 | $4,000 |
| Small | $1,080 | $1,600 |
| Micro | $540 | $800 |
When do I have to pay the CAF?
Short Answer: At the time of filing the continuation application.
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. So, the best time to pay the CAF is at the time of filing. If you do not pay at filing, the USPTO will not necessarily inform you that you are not entitled to the earliest benefit dates. Instead, you will simply receive an Official Filing Receipt that does not include all your benefit claims.
If you happen to notice this and submit a corrected ADS but don’t pay the fee, you may receive a response from the USPTO like the below:
However, in any situation you should strive to pay the CAF before four months of the U.S. Application’s filing date or sixteen months from the priority of the earlier foreign application pursuant to 37 CFR § 1.55.
What happens if I don’t pay the CAF?
Failure to pay the CAF will result in non-entry of the benefit claim. This means that the Applicant has waived the priority claim and the continuation application will not receive benefit back to the earliest benefit date. This can have serious implications for continuation applications because it means earlier filed applications can become prior art against the continaution.
Applicant’s should seek guidance from their patent attorney before making a decision on whether or not to waive their earlier priority claims.
How will I know if the CAF applies to my application?
Calculate your earliest benefit date (EBD) for which benefit is claimed. If the EBD is more than six or nine years earlier than the actual filing date of the present continuation application, then a CAF applies.
Why does the CAF exist?
Short Answer: It exists because the USPTO says it does and the USPTO has fee-setting authority.
The longer answer involves the USPTO’s policy goals (and Congressional input) regarding patent thickets, revenue the USPTO can raise per patent, ensuring that patents that have value late in their life are adequately paying USPTO fees, etc.
Practice Tips for the Continuing Application Fee
When filing continuations, plan ahead and calculate whether any of your priority claims will be subject to the continuing application fee.
Talk with clients about the cost of the CAF. Explain that they will have to pay this fee or else lose priority which could impact the patentability of their continuation.
When correcting your ADS and paying the CAF, include a Request for Corrected Filing Receipt with your submission so you have an opportunity to explain to the USPTO what priority you want included. If you do not do this step, the USPTO will simply look at your supplemental ADS and your fee and try to guess at how to enter in the priority.
Pay the CAF before the four month deadline after you file the application. Otherwise, you will also need to pay petition fees to restore priority and those petition fees are significant.
Check out the USPTO’s Guide to the Continuing Application Fee.