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Continuation Drafter
Continuation practice · Tier D

Late continuations now carry a surcharge

The continuing-application fee

The clock runs from the earliest benefit date under sections 120, 121, 365(c) and 386(c), which is the patent term filing date, and provisionals and foreign priority do not count toward it.

How to read the ledger below. Each numbered point carries the kind of evidence behind it. ESTABLISHED is stated in the authority's own text, with a locator. IMPLEMENTED is the rule as the authority actually applied it. OBSERVED is carried by a source outside this one. ASSUMED is the drafter's inference, flagged as such and not the authority speaking. Quotations are checked against a cached copy of the primary source by script.

In one paragraph

The USPTO adopted a final rule published at 89 Federal Register 91898 on 20 November 2024, effective 19 January 2025, which added continuing application fees at 37 CFR 1.17 subsection w. A nonprovisional application whose actual filing date is more than 6 years after its earliest benefit date owes an additional fee, and more than 9 years owes a higher one, with reduced amounts for small and micro entities. The earliest benefit date is the earliest filing date for which benefit is claimed under sections 120, 121, 365 and 386, it excludes provisional and foreign filing dates, and for a utility or plant application it is the same date the 20 year term runs from. The fee attaches to the benefit claim that triggers it rather than to the filing, so it can fall due years into pendency, and a petition for an unintentionally delayed benefit claim now owes this fee on top of the petition fee.

Reader summary

The office added two fees for continuing applications filed long after the date their family claims benefit from. The threshold is the earliest benefit date, a term the rule defines precisely: the earliest filing date for which benefit is claimed under sections 120, 121, 365(c) or 386(c). It excludes provisional filing dates and foreign priority dates, and for a utility or plant application it is the same date from which the twenty-year term runs.

That identity is the whole rationale. An application filed long after its earliest benefit date has correspondingly little term left, so the office expects to collect fewer maintenance fees from it and recovers some of that shortfall at filing instead.

The mechanics are worth reading carefully because they are not simply a filing surcharge. The fee attaches to the benefit claim, not to the application: it is due when the benefit claim that pushes the earliest benefit date past six or nine years is presented, which may be at filing or may be years later. Presenting several benefit claims at once does not multiply the fee. Presenting one later that moves the date past nine years costs the difference between the two tiers. An application already pending when the rule took effect owes nothing on benefit claims properly presented before that date, but a benefit claim presented afterwards triggers the fee on the same terms as anyone else.

On the office's own figures roughly four fifths of continuing applications are filed within six years and pay nothing new.

Why this matters when you are drafting

The clock is the term clock. Claim 7. There is now a second consequence attached to the same date that governs expiry, so the arithmetic a practitioner already does for term now also prices the filing.

A provisional year is free on this clock and a foreign priority year is too. Claim 6. That is a real structural difference between families that begin with a provisional and families that do not, and it is stated explicitly rather than left to inference.

The fee follows the benefit claim, not the filing. Claims 9 and 12. A continuation filed today can be fee-free and become fee-bearing later, when a benefit claim is added or corrected. Any workflow that adds or perfects benefit claims mid-pendency now has a cost attached.

A delayed benefit claim now costs twice. Claim 10. The petition fee and the continuing application fee are cumulative, which raises the price of the mistake that section 1.78(e) exists to fix.

Batch the benefit claims. Claim 11. Presenting several at once incurs one fee; presenting them across time can incur a second. That is a sequencing decision with a price on it.

Read this with in-re-forest and the laches records. Together they are the reason Tier D exists: long pendency is now expensive, risky, and at the far end worthless.

What the authority establishes

  1. [ESTABLISHED, the effective date] "This rule is effective on January" 19, 2025. (89 FR 91898.)
  1. [ESTABLISHED, the trigger] "the new fees in § 1.17(w) apply to nonprovisional applications that have an actual filing date more than six years after their EBD." (89 FR 91910.)
  1. [ESTABLISHED, the first tier] "The § 1.17(w)(1) fee applies when the later-filed application's EBD is more than six and no more than nine years earlier than its actual filing date and is $2,700 for undiscounted applications, $1,080 for applications receiving a small entity discount, and $540 for applications receiving a micro entity discount." (89 FR 91910.)
  1. [ESTABLISHED, the second tier] "The § 1.17(w)(2) fee applies when the later-filed application's EBD is more than nine years earlier than its actual filing date and is $4,000 for undiscounted applications, $1,600 for applications receiving a small entity discount, and $800 for applications receiving a micro entity discount." (89 FR 91910.)
  1. [ESTABLISHED, the definition, and it is the operative term] The earliest benefit date is "the earliest filing date for which benefit is claimed under 35 U.S.C. 120, 121, 365(c), or 386(c) and § 1.78(d)." (89 FR 91909.) It "is determined on an application-by" application basis. (89 FR 91909.)
  1. [ESTABLISHED, what does NOT count toward it] "The EBD cannot be the filing date of a foreign application or the filing date of a provisional application to which benefit is claimed under 35 U.S.C. 119(e)." (89 FR 91909.) A provisional adds a year of pendency without starting this clock.
  1. [ESTABLISHED, and this is why the thresholds are where they are] For a utility or plant application "the EBD is also the date from which the 20-year patent term is calculated under 35 U.S.C. 154(a)(2). The EBD is also known as the patent term filing date." (89 FR 91909.) The fee clock and the term clock are the same clock.
  1. [ESTABLISHED, the rationale in the office's own words] "continuing applications filed long after their earliest benefit date" are "less likely to have a patent term long enough for the USPTO to recover more of their costs from maintenance fees." (89 FR 91909.)
  1. [ESTABLISHED, when payment is due, and this is the mechanic most likely to be missed] "payment of the § 1.17(w) fees is required at the time a prompting benefit claim" is presented (89 FR 91911.), defined as "a benefit claim that causes the EBD of the later-filed application to be more than six or nine years earlier than its actual filing date" (89 FR 91911.) If presented at filing the fee is due at filing; if presented later it is due "concurrently with the presentation of the prompting benefit claim." (89 FR 91911.)
  1. [ESTABLISHED, the interaction with a delayed benefit claim] Where the late presentation is by petition for an unintentionally delayed benefit claim under section 1.78(e), "the applicable § 1.17(w) fee will be due in addition to the petition fee under § 1.17(m)." (89 FR 91911.) Two fees, not one.
  1. [ESTABLISHED, multiple claims] "Because the fees in § 1.17(w) are based on the application's EBD, presenting multiple benefit claims at the same time will not incur multiple fees." (89 FR 91911.) But a later claim moving the date past nine years costs "the difference between the current fee amount stated in § 1.17(w)(2) and the amount of the previous payment under § 1.17(w)(1)." (89 FR 91912.)
  1. [ESTABLISHED, the transition rule] "An application that is pending prior to the effective date of this final rule will not incur a fee under § 1.17(w) based on any benefit claims that were properly presented prior to the effective date." (89 FR 91912.) But "If a benefit claim is presented in the application on or after the effective date of this final rule, however, the application will incur a fee under § 1.17(w) if the actual filing date of the application is more than six or nine years later than its EBD." (89 FR 91912.)
  1. [IMPLEMENTED, the regulation as codified, which is what actually binds] The fee tables at 37 CFR 1.17(w) key the first tier to an actual filing date more than "six years and no more than nine years from the earliest filing date for which benefit is claimed under 35 U.S.C. 120, 121, 365(c), or 386(c) and § 1.78(d):" (89 FR 92006.) The introductory clause and its continuation sit in different columns of the printed page and the extraction interleaves them, so they are quoted as two fragments rather than one sentence; per hazard 7 this is a reading-order artifact, not a gap in the rule.
  1. [IMPLEMENTED, the conforming amendments that put the fee in the benefit-claim rules] Section 1.78(d)(3)(i) now requires that the section 120 reference "and the applicable fee set forth in § 1.17(w), must be submitted during the pendency of the later-filed application." (89 FR 92008.) Section 1.78(e)(2) now lists "The petition fee as set forth in § 1.17(m), and the applicable fee set forth in § 1.17(w); and" (89 FR 92008.)
  1. [ESTABLISHED, the scale, on the office's own projection] "about 80.3% of continuing applications would not incur the new fees because they are filed within six years of their EBD" (89 FR 91910.), while "about 11.4% of continuing applications are filed more than six but not more than nine years after their EBD" and "an additional 8.3% of continuing applications are filed more than nine years after their EBD". (89 FR 91910.)
  1. [ESTABLISHED, how the amounts were calibrated] The fees "are set at a rate that is both less than the front-end fee subsidy and substantially less than the third maintenance fee amount." (89 FR 91910.) They are a partial recovery, not a deterrent priced at the value of the branch.
  1. [ASSUMED, drafter's inference, flagged as such] Claims 7 and 9 together mean the decision point is not whether to file a continuation but which benefit claim the branch will make, and when. A branch that claims benefit only from a recent intermediate application has a later earliest benefit date, and therefore both more term and, on these thresholds, potentially no fee. The rule does not discuss claim-chain structuring; this follows from the definition in claim 5 read against the trigger in claim 9.

Quotations, verified against the source

All from the final rule. Page locators are Federal Register pages of volume 89, computed from the running Federal Register citation line.

  • "This rule is effective on January" (89 FR 91898.)
  • "continuing applications filed long after their earliest benefit date" (89 FR 91909.)
  • "less likely to have a patent term long enough for the USPTO to recover more of their costs from maintenance fees." (89 FR 91909.)
  • "the earliest filing date for which benefit is claimed under 35 U.S.C. 120, 121, 365(c), or 386(c) and § 1.78(d)." (89 FR 91909.)
  • "is determined on an application-by" (89 FR 91909.)
  • "The EBD cannot be the filing date of a foreign application or the filing date of a provisional application to which benefit is claimed under 35 U.S.C. 119(e)." (89 FR 91909.)
  • "the EBD is also the date from which the 20-year patent term is calculated under 35 U.S.C. 154(a)(2). The EBD is also known as the patent term filing date." (89 FR 91909.)
  • "the new fees in § 1.17(w) apply to nonprovisional applications that have an actual filing date more than six years after their EBD." (89 FR 91910.)
  • "The § 1.17(w)(1) fee applies when the later-filed application's EBD is more than six and no more than nine years earlier than its actual filing date and is $2,700 for undiscounted applications, $1,080 for applications receiving a small entity discount, and $540 for applications receiving a micro entity discount." (89 FR 91910.)
  • "The § 1.17(w)(2) fee applies when the later-filed application's EBD is more than nine years earlier than its actual filing date and is $4,000 for undiscounted applications, $1,600 for applications receiving a small entity discount, and $800 for applications receiving a micro entity discount." (89 FR 91910.)
  • "are set at a rate that is both less than the front-end fee subsidy and substantially less than the third maintenance fee amount." (89 FR 91910.)
  • "about 80.3% of continuing applications would not incur the new fees because they are filed within six years of their EBD" (89 FR 91910.)
  • "about 11.4% of continuing applications are filed more than six but not more than nine years after their EBD" (89 FR 91910.)
  • "an additional 8.3% of continuing applications are filed more than nine years after their EBD" (89 FR 91910.)
  • "payment of the § 1.17(w) fees is required at the time a prompting benefit claim" (89 FR 91911.)
  • "a benefit claim that causes the EBD of the later-filed application to be more than six or nine years earlier than its actual filing date" (89 FR 91911.)
  • "concurrently with the presentation of the prompting benefit claim." (89 FR 91911.)
  • "the applicable § 1.17(w) fee will be due in addition to the petition fee under § 1.17(m)." (89 FR 91911.)
  • "Because the fees in § 1.17(w) are based on the application's EBD, presenting multiple benefit claims at the same time will not incur multiple fees." (89 FR 91911.)
  • "the difference between the current fee amount stated in § 1.17(w)(2) and the amount of the previous payment under § 1.17(w)(1)." (89 FR 91912.)
  • "An application that is pending prior to the effective date of this final rule will not incur a fee under § 1.17(w) based on any benefit claims that were properly presented prior to the effective date." (89 FR 91912.)
  • "If a benefit claim is presented in the application on or after the effective date of this final rule, however, the application will incur a fee under § 1.17(w) if the actual filing date of the application is more than six or nine years later than its EBD." (89 FR 91912.)
  • "six years and no more than nine years from the earliest filing date for which benefit is claimed under 35 U.S.C. 120, 121, 365(c), or 386(c) and § 1.78(d):" (89 FR 92006.)
  • "and the applicable fee set forth in § 1.17(w), must be submitted during the pendency of the later-filed application." (89 FR 92008.)
  • "The petition fee as set forth in § 1.17(m), and the applicable fee set forth in § 1.17(w); and" (89 FR 92008.)

Tensions and open questions

A correction was published and is NOT cached, so this record cannot speak to it. The plan's source list names a correction at FR-2025-01-14. Nothing in this record depends on it, but a practitioner relying on exact amounts should check the corrected text and the current fee schedule rather than these figures. Fee amounts change; the structure is what this record is for.

Fee amounts in a rule go stale in a way holdings do not. Claims 3 and 4 state the amounts as promulgated in November 2024. The office adjusts fees periodically. Treat the thresholds as durable and the dollar figures as of that date.

What counts as a properly presented benefit claim before the effective date is not elaborated here. Claim 12 turns on it, and the passages read do not define it further.

Whether the fee reaches every continuing application type is not settled by what was read. The rule speaks of nonprovisional applications making benefit claims under the four listed statutes. Divisionals claim benefit under section 121 and so appear to be within it, which is a notable result given that a divisional is often filed in response to a restriction the office itself imposed. This record does not resolve whether any exception exists, because the comment responses were not read.

Only the fee portion of a large rule was read. The rule adjusts many fees. This record is scoped to sections 1.17(w) and 1.78 and says nothing about the rest.

What this record does and does not cover

The continuing-application-fee provisions, the definition of the earliest benefit date, the payment-timing and transition rules, the projected incidence, and the codified text at 37 CFR 1.17(w) and 1.78 were read end to end.

What was NOT read, and is therefore outside what this record can support: the rest of this rule, which is long and mostly about other fees. This record says nothing about any other fee change, about the comment responses, or about the January 2025 correction, which is not cached.

Currency

This record was verified against its primary source on 2026-08-15. That is a fidelity check: the quotations, locators and attribution are accurate to that source. Whether the authority has since been narrowed, distinguished, abrogated or reversed has not been checked here. Confirm it still stands before relying on it.