March 2025 Newsletter

2025 Updates to Information Disclosure and Continuation Procedures at the USPTO

by John P. Dyro

The U.S. Patent and Trademark Office (USPTO) has recently implemented new procedures and fees associated with submission and prosecution of patent applications, which patent applicants should take into account.

Information Disclosure Statements

All patent applicants in the United States, including inventors, assignees and their representatives, attorneys of record, and anyone else substantively involved in the preparation of the patent application, have a duty to disclose to the USPTO all information known to them that is material to patentability of the invention claimed in the patent application. Such information is often referred to as the “prior art.”

To facilitate compliance with the duty of disclosure, the USPTO provides an information disclosure statement (IDS), which is a form on which the applicant can set out the above-described prior art in categories, namely US patent publications, foreign patent publications, and other published materials. Proper submission of the IDS form ensures that the Patent Examiner will consider the listed prior art during substantive examination of the application.

On January 19, 2025, the USPTO instituted a new process associated with the submission of an IDS, which includes new USPTO fees based on the number of prior art references listed on the IDS form and all previously submitted IDS forms in a subject patent application. The new thresholds and associated fees are shown in the table below. These fees are subject to change over time.

The USPTO rules indicate that if an IDS form is filed without a proper fee, it will be deemed non-compliant and will be placed in the file but not considered by the Examiner.

Continuation Applications

Starting January 19, 2025, the USPTO also has instituted a new fee for continuing applications filed late in the term of the parent patent. The new fee applies to continuing applications filed more than six years after the earliest benefit date (EBD), with an additional higher fee for an application filed more than nine years after the EBD:

Continuing applications filed six or more years after the EBD: $2700

Continuing applications filed nine or more years after the EBD: $4000

The EBD is the filing date of the earliest US nonprovisional application, PCT application designating the US, or international design application from which a benefit claim is made in the continuing application. For utility and plant applications, the EBD is also the “patent term filing date,” i.e., the date from which the 20-year patent term is calculated. These fees will apply not only to traditional continuation applications but also to all applications claiming priority to a non-provisional application, including continuations-in-part and divisional applications.

Please contact your Andrus attorney with any questions you may have regarding these changes.

Cobby J. Shereff joins Andrus

Andrus is pleased to welcome Cobby J. Shereff as an of counsel attorney. Cobby focuses her practice on domestic and international trademark prosecution and enforcement, and is experienced in managing and protecting global trademark portfolios, and in connection with acquisitions, licensing, and related transactional matters. Cobby joins Andrus after 20 years of intellectual property practice as a partner at Blumenfield & Shereff, LLP. She previously worked as in-house counsel for RCA Records in New York in the areas of copyright, trademark, unfair competition, licensing, and on general corporate matters, including contract drafting and negotiation. Cobby also served as a Deputy Assistant Attorney General for the State of New York.

Aaron T. Olejniczak Serves as Member of the Milwaukee Bar Foundation Board

Andrus partner Aaron T. Olejniczak is continuing as a member of the Board of the Milwaukee Bar Foundation, the foundation that supports and funds the Milwaukee Bar Association and the Milwaukee Justice Center.

The nationally recognized Milwaukee Justice Center (MJC) has been serving the greater Milwaukee community for nearly fifteen years, closing the gap between those who do not qualify for legal aid services but cannot afford legal counsel. The services provided by the MJC are essential, especially in Wisconsin, which ranks among the lowest states in the nation for civil legal aid funding. The Milwaukee Bar Association Foundation is embarking on a $3 million dollar campaign to ensure the long-term viability and high caliber of services being offered through the Milwaukee Justice Center in perpetuity. If you are interested in supporting this important project, please reach out to Aaron Olejniczak.