Are documents on prior filed IDS's grandfathered into the USPTO's upcoming IDS fee increases? Here's a query regarding the upcoming USPTO size fees changes effective January 19, 2025: If we file an IDS after January 18, 2025, and the cumulative number of references has already exceeded the thresholds (50, 100, or 200) prior to the rule change, will the IDS size fee still apply? Specifically, if the threshold was surpassed before January 19, 2025, are we required to pay the IDS size fee upon filing the IDS after this date? Many of our clients has already crossed the threshold of 200 references, so due to the rule change should they need to pay $800 right after the Jan 19, 2025 when they file the first SIDS?" From a quick check, I didn't find any guidance on the USPTO webpage. https://lnkd.in/gM4mMdGP USPTO, #fee, #patent, #IDS
Edward Caja
1w
I suspect that “cumulative” necessarily includes the existing number of prior filed IDS in calculating any fees for new IDS filing. I do wonder (akin to your musing) whether even if no new IDS filings are made, if the Office will attempt to charge “excess IDS item fees” in any future office actions. For example, in some future Office Action, an examiner will process a (for argument’s sake, timely filed IDS) to indicate whether the references are included in the record as being “reviewed.” Since the action by the Office now involves IDS item count in excess of the no fee provision, will the Office attempt a charge?
Paralegal at Womble Bond Dickinson (US) LLP
1wDoes this mean every IDS after 200 has been reached will cost $800 even if only filing one ref. from a foreign action and then another,$800 if you have to file another couple of refs from a separate foreign action a month later, assuming updates occurring after first action on the merits. Seems incredibly expensive to meet your duty of disclosure requirements and timeliness statements.