The USPTO quietly introduced new fees for Information Disclosure Statements (IDS) that became effective on January 19, 2025. These were set in November 2024 in 89 Fed. Reg. 91898 (Nov. 20, 2024) at 91923–91926 resulting from proposed fee adjustments and request for comments issued in April 2024. See 89 Fed. Reg. 23226 (Apr. 3, 2024) at 23242–23244.
The USPTO found that examiners spend approximately 80,000 additional hours each year considering large IDS submissions in applications, costing the agency $10 million annually. The implementation of the IDS size fees was intended to have applicants and patent owners cover the costs associated with examiner review of large IDS submissions. See 89 Fed. Reg. 91924.
The USPTO has amended 37 C.F.R. § 1.17 by adding new paragraph (v) to implement a new IDS size fee based on the cumulative number of items of information provided by an applicant or patent owner during the pendency of an application or reexamination proceeding. The USPTO interprets the term “provided” in this context to refer to items cited on an IDS under 37 C.F.R. § 1.98(a)(1), whether or not an actual copy of the cited item is submitted to the agency. In other words, citing U.S. Patents or U.S. Patent Publication documents, which are listed on the USPTO SB/08a form, but not typically submitted, count towards the cumulative number of items. Each item of information counts toward the total number, even if it is submitted twice. If an item of information was not considered because it was non-compliant and is resubmitted a second time in the same application, then this item will not be counted again.
The fees for IDS submissions are tiered based on the cumulative number of references. The IDS size fee sets forth:
- a first amount ($200) in § 1.17(v)(1) for a cumulative number of applicant provided or patent owner-provided items of information in excess of 50;
- a second amount ($500) in § 1.17(v)(2) for a cumulative number of applicant provided or patent-owner-provided items of information in excess of 100 but not exceeding 200, less any amount previously paid under § 1.17(v)(1); and
- a third amount ($800) in § 1.17(v)(3) for a cumulative number of applicant provided or patent owner-provided items of information in excess of 200, less any amounts previously paid under § 1.17(v)(1) and/or (v)(2).
We have summarized this in the following chart showing the cumulative item count thresholds:
This applies to all pending applications and granted patents filed before the January 19, 2025 effective date, but only if a new IDS submission is filed. The IDS size fee does not replace the existing IDS fee under 37 C.F.R. § 1.117(p), for late filing references. The USPTO has modified 37 C.F.R. § 1.117(p) to refer to the existing fee as the “IDS timing fee” and the new IDS size fee under 37 C.F.R. § 117(v) is called the “IDS size fee.”
It is the Applicant’s or Patent Owner’s responsibility to track the cumulative number of provided items of information submitted to the USPTO and to determine the appropriate IDS size fee. USPTO personnel are not required or expected to track the number of items. The cumulative count is determined for each application or patent separately. The count from an application does not carry over to any continuing applications, CPAs, reissue applications, or any post-issuance, proceedings such as supplemental, examinations or reexamination proceedings. A request for continued examination (RCE) is not the filing of a new application, and thus the count will not reset when an RCE is filed.
For continuation or divisional applications, the count resets to zero. An examiner will consider items of information that were considered in a parent application when examining a child application without any action required on the applicant’s part. Items of information that an applicant cited in a parent application will not be counted in a child application for purpose of the IDS size fees unless it is resubmitted, i.e., provided by the applicant on an IDS in the child application. Applicants who wish to avoid paying the IDS size fees in a child application for items of information considered in a parent application may do so by not resubmitting the items. However, an item of information must be resubmitted in the continuing application if the applicant desires the item of information to be printed on the patent.
The USPTO is also amending 37 C.F.R. § 1.98(a) to include a new content requirement for an IDS that will facilitate implementation of the IDS size fee. Specifically, the USPTO is requiring that an IDS contain a clear written assertion by the applicant and patent owner that the IDS is accompanied by the appropriate IDS size fee or that no IDS size fee is required. As noted above, is the Applicant or Patent Owner’s responsibility to track the cumulative number of provided items of information submitted to the USPTO and make an accurate written assertion of the fees due. This size fee assertion does not replace the existing IDS statements under 37 C.F.R. § 1.97(e).
If an IDS is filed without the IDS size fee assertion or the fee, the IDS will be deemed non-compliant. The IDS will be placed in the file, but not considered. If the fee is missing, the USPTO will determine whether there is a deposit account authorization and sufficient funds. If the USPTO is not able to charge the fees, the IDS will be deemed non-compliant.
The USPTO has provided updated PTO/SB/08a (01-25) forms for IDS submissions and new form, PTO/SB/08C (01-25), for providing a written assertion of the fees believed due.
The USPTO has also provided a Quick Reference Guide that provides some helpful guidance and supplements examples provided in 89 Fed. Reg. 91925.
Against this backdrop, we provide some examples on how these new fees will apply because there are some nuances in how cumulative items of information are counted and the application of the fees.
Example 1: Filing subsequence IDS in an application that predates the effective date of the final rule; no IDS size fee due even though cumulative count exceeds first fee threshold. (corresponding to Example 6 in the USPTO Quick Reference Guide)
Prior to the effective date, Applicant submitted a first IDS citing 55 items. No fee was due because this was filed before the effective date. After the effective date, Applicant files a second IDS citing 10 items. The cumulative count of items is now 65 items. However, no IDS size fee is due for the second IDS because it did not cause the cumulative count to exceed any of the thresholds specified in the rule (50, 100, 200). Applicant must still include an IDS size fee assertion in the second IDS indicating that no IDS size fee is due.
Example 2: Filing subsequence IDS in an application that predates the effective date of the final rule; first tier IDS size fee due. (corresponding to Example 7 in the USPTO Quick Reference Guide)
Prior to the effective date, Applicant submitted a first IDS citing 35 items. No fee was due because this was filed before the effective date. After the effective date, Applicant files a second IDS citing 30 items. The cumulative count of items is now 65 items. The $200 IDS size fee is due for the second IDS because it caused the cumulative count to exceed the first thresholds (50 items) specified in the rule. At the time of submitting the second IDS, the Applicant must certify that the $200 fee is due and pay the fee.
Example 3: Filing subsequent IDS in an application that predates the effective date of the final rule; no IDS size fee due even though cumulative count exceeds first fee threshold. (corresponding to Example 8 in the USPTO Quick Reference Guide)
Prior to the effective date, Applicant submitted a first IDS citing 70 items. No fee was due because this was filed before the effective date. After the effective date, Applicant files a second IDS citing 40 items. The cumulative count of items is now 110 items. The $500 IDS size fee is due for the second IDS because the second caused the cumulative count to exceed the second thresholds (100 items) specified in the rule. At the time of submitting the second IDS, the Applicant must certify that the $500 fee is due and pay the fee.
Example 4: Filing subsequence IDS in an application that predates the effective date of the final rule; first tier IDS size fee due. (corresponding to Example 9 in the USPTO Quick Reference Guide)
Prior to the effective date, Applicant submitted a first IDS citing 205 items. No fee was due because this was filed before the effective date. After the effective date, Applicant files a second IDS citing 10 items. The cumulative count of items is now 215 items. However, no IDS size fee is due for the second IDS because it did not cause the cumulative count to exceed any of the thresholds specified in the rule (50, 100, 200). Applicant must still include an IDS size fee assertion in the second IDS indicating that no IDS size fee is due.
Example 5: Multiple IDS submissions covered by the same fee. (corresponding to Example 4 in the USPTO Quick Reference Guide)
If an Applicant files a first IDS after the effective date with 61 items, the $200 fee for exceeding 50 items of information is due. The Applicant certifies that the $200 fee is due and pays the fee. Subsequently in the same application, the Applicant files a second IDS with 10 additional items of information. The cumulative number of information is now 71. No additional fee would be due because the cumulative number of information is still within the range covered by the $200 fee that was previously paid. The Applicant must include a certification with the second IDS that no IDS size fee is due for submission of the second IDS.
Example 6: Multiple IDS submissions requiring additional fees. (corresponding to Example 5 in the USPTO Quick Reference Guide)
If an Applicant files a first IDS after the effective date with 51 items, they would certify that the $200 fee for exceeding 50 items of information is due. Subsequently in the same application, the Applicant files a second IDS with 50 additional items of information. The cumulative number of information is now 101. The Applicant must certify that the fee for exceeding 100 items of information is due and pay $300 (= $500 − $200 previously paid). Further in the same application, if the applicant files a third IDS with 100 items of information. The cumulative number of information is now 201. The Applicant must certify that the fee for exceeding 200 items of information is due and pay $300 (= $800 − $200 + $300 previously paid).
Please contact your Michael Best attorney with any questions regarding these changes.