UNITED STATES PATENT AND TRADEMARK OFFICE ---

Commissioner for Patents
United States Patent and Trademark Office
P.O. Box 1450
Alexandria, VA 22313-1450
www.uspto.gov

MEMORANDUM

DATE: January 17, 2025

TO: Patent Examining Corps

FROM: Charles Kim Deputy Commissioner for Patents

SUBJECT: Revised and New Form Paragraphs in View of Setting and Adjusting Patent Fees During Fiscal Year 2025 (Final Rule)

The USPTO published on November 20, 2024, a final rule entitled “Setting and Adjusting Patent Fees During Fiscal Year 2025” establishing the fee adjustments needed to generate sufficient revenue to recover the aggregate estimated costs of patent operations in future years. The final rule is effective on January 19, 2025. New and revised form paragraphs will be released on January 21, 2025, in Patents End-to-End Official Correspondence (PE2E-OC) to reflect the patent fee rule changes in the final rule. Tables listing the new and revised form paragraphs are attached.

Patent fee rule changes include the following:

• A continuing application fee (CAF) for presenting benefit claims in applications or patents meeting certain timing thresholds (37 CFR 1.17(w))
• The information disclosure statement (IDS) size fee (37 CFR 1.17(v)) and size fee assertion (37 CFR 1.98(a)(4))
• A tiered petition fee for suspension of action under 37 CFR 1.103(a) (37 CFR 1.17(g)(2)) creating a higher fee for second and subsequent requests for suspension
• Creating separate extension of time fees pursuant to 37 CFR 1.136(a) for provisional applications (37 CFR 1.17(u))
• The tiered petition fee for an unintentional delay (37 CFR 1.17(m)(1)-(3)) creating a higher fee for petitions filed more than two years after the date when the required action was due

Examiners should continue to use the most updated form paragraph available to provide correct information to applicants. For example, when indicating whether an IDS is compliant under amended 37 CFR 1.97(a) and 1.98(a), examiners should use new form paragraph 6.49.11 or 6.49.12 when the IDS lacks the required size assertion and/or appropriate size fee set forth in new rule 37 CFR 1.17(v). New form paragraph 2.14 should be used to indicate when a benefit claim presented in an application was not entered because an appropriate CAF under 37 CFR

1.17(w) was required by 37 CFR 1.78(d)(3) but not paid. In addition, examiners should use the latest versions of form paragraphs 7.39 and 7.40, which appear in many final Office actions. An updated listing of consolidated rules that includes the patent fee rule changes will be posted after January 19, 2025, the effective date of the rule changes.

These revisions to the form paragraphs supersede the content in the Ninth Edition, Revision 01.2024, of the Manual of Patent Examining Procedure (MPEP). The MPEP will be updated in due course to include the new and revised form paragraphs.