New USPTO Rules for Filing Continuing Applications

D. BENJAMIN BORSON
Borson Law Group P.C.

SECTION 10(A) OF THE AMERICA INVENTS ACT (AIA) authorizes the Director to set or adjust by rule any patent fee established, authorized, or charged under 35 U.S.C. for any services performed or materials furnished by the agency. Fees under 35 U.S.C. may be set or adjusted only to recover the aggregate estimated costs to the USPTO for processing, activities, services, and materials related to patents, including administrative costs to the agency with respect to such patent operations. See 125 Stat. at 316. Provided that fees in the aggregate achieve overall aggregate cost recovery, the Director may set individual fees under section 10 at, below, or above their respective cost. Section 10(e) requires the Director to publish the final fee rule in the Federal Register and the USPTO’s Official Gazette at least 45 days before the final fees become effective.

Section 10 authorizes the USPTO to set or adjust patent fees within the regulatory process. The USPTO has used the AIA’s fee setting authority to achieve its key fee setting policy factors and to generate the aggregate revenue needed to recover the aggregate estimated costs of operations and strategic patent priorities in final rules published in FY 2013 ("Setting and Adjusting Patent Fees," 78 FR 4212 (Jan. 18, 2013)), FY 2018 ("Setting and Adjusting Patent Fees During Fiscal Year 2017," 82 FR 52780 (Nov. 14, 2017)), and FY 2020 ("Setting and Adjusting Patent Fees During Fiscal Year 2020," 85 FR 46932 (Aug. 3, 2020) (FY 2020 Final Rule)).

Section 4 of the SUCCESS Act amended section 10(i)(2) to provide that the Director’s authority to set or adjust any fee under section 10 will end on September 16, 2026.