U.S. patent prosecution strategy has long included two familiar tools: keeping continuation applications pending to preserve claim flexibility and filing Information Disclosure Statements to satisfy disclosure obligations as new references arise. Both practices remain central to patent prosecution. But under the United States Patent and Trademark Office’s (USPTO) current fee structure, they now carry additional cost and compliance considerations that should be built into portfolio management decisions. The USPTO’s current fee schedule became effective January 19, 2025, and is listed by the Office as last revised July 1, 2026.

USPTO Continuing Application Fees and Continuation Strategy

The first major change concerns continuing applications. Under 37 C.F.R. § 1.17(w), the USPTO now imposes a Continuing Application Fee when an application is filed, or a benefit claim is presented, more than six years after the application’s earliest benefit date. The current large-entity fee is $2,700 when the relevant timing is more than six years after the earliest benefit date, and $4,000 when it is more than nine years after that date. Small and micro entity discounts apply, but even discounted fees can be material across a large portfolio.

Strategic Timing of Continuation Applications

The practical effect is that continuation timing now matters more than ever. A continuation filed shortly before a six-year or nine-year threshold may preserve the same strategic flexibility with lower USPTO fees than one filed shortly after the threshold. For patent families that support important products, licensing programs, standards positions, or enforcement strategies, companies should consider whether additional claim sets should be pursued earlier rather than waiting unless critical market considerations or awaiting clarity on competitor product designs necessitate delayed filings.

The USPTO’s guidance explains that the Continuing Application Fee applies to utility, plant, and design continuing applications, including continuations, divisionals, and continuations-in-part, that have an actual filing date more than six years from the earliest benefit date. The earliest benefit date is determined application-by-application and does not include the filing date of a foreign application or the filing date of a provisional application.

This should not dissuade applicants from filing continuations, since continuation practice remains one of the most valuable features of the U.S. patent system. It allows applicants to pursue different claim scopes, respond to evolving commercial products, account for competitor design-arounds, and maintain a pending application while business and technical facts continue to develop. The point is not to reduce or abandon continuation strategy, but to make it more deliberate. Families that once could be left open as a low-cost option may now deserve earlier review.

For continuation practice, clients should consider several practical steps. First, identify pending patent families that are approaching six years or nine years from their earliest benefit date and decide whether continuation filings should be accelerated. Second, review important families where no continuation is pending but future claim flexibility may be valuable. Third, update docketing systems to flag potential Continuing Application Fee issues before filing decisions are made.

USPTO Information Disclosure Statement Size Fees

The second major change concerns Information Disclosure Statements (IDS). The USPTO has introduced IDS size fees for IDS filings under 37 C.F.R. § 1.97 that cause the cumulative number of applicant provided items to exceed 50, 100, or 200 references. The USPTO’s guidance states that these requirements became effective January 19, 2025, and apply to IDS filings made on or after that date. The current IDS size fees are $200 when an IDS causes the cumulative count to exceed 50 but not 100 items, $500 when it causes the cumulative count to exceed 100 but not 200 items, and $800 when it causes the cumulative count to exceed 200 items, less any amount previously paid. Unlike many other patent fees, the fee schedule lists the same IDS size-fee amounts for large, small, and micro entities.

IDS Size-Fee Assertions and Compliance Risks

The IDS rule also introduces a compliance trap. For every IDS filed under 37 C.F.R. § 1.97 on or after January 19, 2025, the applicant must include an IDS size fee assertion stating either that the appropriate IDS size fee accompanies the IDS or that no IDS size fee is required. The USPTO guidance states that a general deposit account authorization is not enough unless it clearly identifies the particular IDS size fee to be charged for that IDS. The consequence of getting this wrong can be significant. If an IDS lacks the required IDS size fee assertion, the IDS is non-compliant and will be placed in the file but not considered.

Parent-Application References and IDS Cost Management

As a reminder, examiners are required to consider references that were submitted in a parent application when examining a child application without any action required by the applicant. The references that were considered during prosecution of parent applications are not counted in a child application for purpose of the IDS size fees unless those references are resubmitted in the child application. Thus, unless the applicant wants those previous references to be printed on the patent, the applicant need not resubmit references from parent applications to comply with the duty of disclosure.

For IDS practice, ensure IDS forms and templates include the required size-fee assertion language. Also, track cumulative IDS reference counts at the application level so that prosecution teams know when a fee tier may be triggered. For organizations with large patent families, active foreign prosecution, litigation-related prior art, standards-related disclosures, or robust competitor monitoring, IDS counts can grow quickly. The new fee structure makes it more important to track cumulative IDS counts for each application, to consider not resubmitting references from parent applications, and to avoid unnecessary duplicate submissions while still satisfying the duty of disclosure.

Patent Portfolio Management and Next Steps

These changes are best viewed as a portfolio management issue, not merely a filing fee issue. The cost of a single delayed continuation filing fee or excess IDS count may be manageable, but the cumulative impact across a large portfolio can be meaningful.

Moving forward: U.S. prosecution strategy now rewards earlier and more disciplined decision making. Organizations should continue to use continuations and IDS filings where they serve a business or are legally required, e.g. to comply with the duty of disclosure. But they should do so with better timing, better tracking, and better coordination between inventors, in-house counsel, outside counsel, and foreign associates. A modest portfolio review today may help preserve valuable claim flexibility while avoiding unnecessary fees and preventable prosecution issues later.

For organizations managing U.S. patent portfolios, a disciplined approach to continuation timing, IDS reference tracking, and prosecution budgeting can help preserve claim flexibility while avoiding unnecessary fees and compliance issues. Contact Conley Rose to discuss how your organization can adapt its patent prosecution strategy to the USPTO’s current fee structure.