Heightened Risk, Higher Fees: Preparing for the New Age of Continuing Application Practice

Introduction

The continued growth of intellectual property (IP) filings has brought about significant challenges for patent practitioners. The United States Patent and Trademark Office (USPTO) is facing an ever-increasing backlog of patent applications, leading to longer examination times and increased overall costs for applicants. To address this issue, the USPTO has implemented a series of changes to its continuing application practice, designed to streamline the process and reduce pendency. These changes, which came into effect on June 23, 2024, have significant implications for patent practitioners and applicants alike.

Increased Risk of Restriction

One of the most significant changes introduced by the USPTO is the heightened risk of restriction under 35 U.S.C. § 121. Previously, the USPTO would typically restrict a continuing application to claims directed to a single inventive concept. However, under the new practice, the USPTO may now require restriction even if the claims are directed to multiple embodiments of a single invention. This increased risk of restriction can have a number of negative consequences for applicants, including:

Increased prosecution costs: Applicants may need to file multiple continuing applications to cover all of the embodiments of their invention, resulting in higher fees for drafting, prosecution, and maintenance.
Delayed patent issuance: The process of filing and prosecuting multiple continuing applications can take months or even years, delaying the issuance of a patent and the applicant's ability to secure their intellectual property rights.
Loss of claims: If the USPTO restricts an application too narrowly, it may result in the loss of valuable claims that cover important aspects of the invention.

Higher Fees for Continuing Applications

In addition to the increased risk of restriction, the USPTO has also implemented higher fees for continuing applications. The new fee schedule, which took effect on June 23, 2024, includes:

Filing fees: The filing fee for a continuing application has increased from $160 to $210.
Search fees: The search fee for a continuing application has increased from $100 to $150.
Examination fees: The examination fee for a continuing application has increased from $200 to $250.

These increased fees can represent a significant financial burden for applicants, particularly those with limited resources.

Preparing for the New Age of Continuing Application Practice

In light of the changes to the USPTO's continuing application practice, patent practitioners and applicants should consider the following strategies:

File early: Filing a continuing application as early as possible can help to reduce the risk of restriction.
Consider a preliminary amendment: Filing a preliminary amendment can help to clarify the scope of the invention and avoid potential rejections or restrictions.
Work with a qualified patent attorney or agent: A qualified patent attorney or agent can assist applicants in navigating the complexities of the new continuing application practice and developing effective strategies for protecting their intellectual property rights.

Conclusion

The USPTO's changes to its continuing application practice represent a significant shift in the patent prosecution landscape. These changes have the potential to increase the risk of restriction, delay the issuance of patents, and increase the costs associated with patent prosecution. Patent practitioners and applicants should be aware of these changes and consider the strategies outlined above to mitigate the potential negative consequences. By working closely with a qualified patent attorney or agent, applicants can navigate the new continuing application practice and secure the strongest possible patent protection for their inventions.