Pay for What You Traverse: Ending After-Final Practice with Content-Based Fees

For many small businesses, uncertainty in patent prosecution can mean the difference between a strong issued patent and either abandonment or suboptimal coverage. One source of uncertainty in today’s system is final office action practice. Recent data suggests that roughly 42% of patent applications receive a final office action, meaning they are not allowed initially or after a response to a non-final office action. While receiving a final office action does not close the door on a patent application, it does give examiners greater discretion in directing its path. This discretion is unnecessary and can be eliminated by tying U.S. Patent and Trademark Office (USPTO) fees more closely to the actual content and complexity of each office action response.

Application-Size and Excess Claims Fees Already Prove Content Matters

Some inventions are more complex than others, and as a result require long specifications and large numbers of claims. Thankfully, the USPTO wants its examining corps to review all content, even long specifications that have large numbers of claims. They make this clear by requiring a $180 fee to be paid by small-entity applicants when they file patent applications that are more than 100 pages, an $80 fee to be paid for each claim over 20, and a $240 fee to be paid for each independent claim over three. Expanding the principle that applicants should be charged based on the effort required is one way to end after-final practice and its associated uncertainty in the patent system.

After-Final Practice Is a Symptom of Uniform Fees

After patent applications are filed, they very often receive a first, non-final office action on the merits. Non-final office actions can include any number of challenges by patent examiners, including claim objections, drawing objections, and 35 U.S.C. § 101/102/103/112 rejections. If applicants successfully traverse these objections and rejections when responding to the non-final office actions, they receive a Notice of Allowance. If they don’t, they often receive a final office action.

When applicants receive final office actions, they have an opportunity to traverse any remaining objections and rejections which were not addressed the first time around. However, if their traversal is not strong enough, they often have to pay a request for continued examination (RCE) fee.

In 2025, the USPTO received approximately 137,651 RCEs as part of the roughly 678,000 total patent application filings, meaning after-final practice is a big part of moving through the patent system. While there is nothing wrong with forcing applicants to pay RCE fees (e.g., patent examiners don’t work for free), there is a problem with forcing RCE fees in an arbitrary manner.

There are no numerical metrics that force examiners to require an RCE fee versus allowing a patent application after-final. The decision is shaped by the USPTO’s count system. Specifically, examiners receive credit for an allowance and zero credit for an Advisory Action (e.g., what leads to the RCE fee being paid). Examiners are largely not compensated for after-final work, which is why their discretion introduces uncertainty to the process. The elimination of the After-Final Consideration Pilot Program 2.0 has made the problem even worse, and left applicants with even fewer options when receiving final office actions.

Of course, after-final practice is not the main problem – it is just a symptom of a bigger problem. When it comes to examination, applicants all pay the exact same fees for office actions. The $308 search fee and $352 examination fee initially paid by small-entity applicants buy them two office actions regardless of whether they receive complex 35 U.S.C. § 101/103/112 rejections, claim objections, and drawing objections in their first two office actions, or they receive a notice of allowance in a first or second office action. In other words, applicants largely pay the USPTO regardless of how much work the USPTO does. Even when it comes to RCE fees – small entities all pay a $600 fee for a first RCE, regardless of whether there is a single outstanding rejection or numerous rejections. Put simply, there is no itemization done by the USPTO during patent prosecution.

Content-Based Fees: Pay Only for What You Traverse

The solution is straightforward: after-final practice should be eliminated and applicants should be charged based on the objections and rejections they face at every stage of the process. A long application filed by an inventor who wants to fight for coverage and which pushes the envelope on 35 U.S.C. § 101/103/112 should not require the same fees for two office actions as a short application filed by an inventor who does not want a long fight and which does not push the envelope.

While a content-based fee mechanism would not affect first office action practice, when applicants file their amendments and other responses, it would require them to pay fees based on what they are traversing. An amendment which traverses 35 U.S.C. § 101/103/112 rejections would require a separate fee to traverse each rejection.

How It Would Work in Patent Center—and Why Gamesmanship Is Not an Issue

Implementing a content-based fee mechanism would involve the USPTO amending its fee schedule to provide for a 35 U.S.C. § 101 traversal fee, a 35 U.S.C. § 103 traversal fee, a claim objection traversal fee, and the like, where these fees would be pre-determined just like application size fees and excess claim fees. Importantly, examiners would have no discretion over these fee-based decisions because fees would track actual examiner effort more closely.

In practice, applicants would upload their amendments and responses in the Patent Center just as they currently do, but when paying their fees they would make selections for each traversal they are making (e.g., three claims being rejected under 35 U.S.C. § 101, with an independent claim costing more to traverse than a dependent claim, etc.), and pay accordingly. Moreover, in a well-developed iteration, the USPTO could automatically calculate how much an office action response costs by tabulating all of the objections and rejections – traversing three 35 U.S.C. § 101 rejections, two 35 U.S.C. § 102 rejections, three 35 U.S.C. § 103 rejections, and a drawing objection could be precisely calculated ahead of time so applicants do not have to select fees the way they do in today’s Patent Center. The USPTO already asks applicants the size of their applications and the number of claims, and then has them select which fees to pay. Asking them what rejections and objections they are traversing and having them pay accordingly follows this pattern. In all cases, funneling responses through the Patent Center would avoid any gamesmanship because nothing would get forwarded to an examiner unless it was paid for in an itemized manner.

In one illustrative example, the $660 initial search and examination fees for two office actions can each be significantly reduced (e.g., down to $180-$220 for search fee and $200-$250 for examination fee). This would account for the additional fees that would be paid in later responses. For inventors who have nothing more than claim objections or allowable subject matter rewriting, there would be a significant savings because they would no longer pay for a second office action and would only pay a modest amount to respond to a mostly favorable first office action. For instance, they may be required to pay $30-$50 to upload such an amendment to the Patent Center, which would be commensurate with the examiner time they are actually getting from the USPTO. In another illustrative example, an applicant traversing claim objections and multiple claim rejections might pay $150-$200 for uploading an amendment to the Patent Center.

What Content-Based Fees Would Mean for the USPTO

For the USPTO, there would not be a loss of revenue from the elimination of after-final and RCE practice because examiners would be paid based on what they are actually doing. If examiners issue many rejections and claim objections, the USPTO will be paid when applicants respond according to what the examiners did, meaning any shift to content-based fees would be calibrated so that the USPTO recovers the actual costs of examination. What this will do is provide the examining corps with a new incentive structure, one in which every response that is forwarded to an examiner becomes a new, fee-supported action on which to work.

It goes without saying that making these changes would not be easy. The USPTO would need to calibrate the new traversal fees just like it did when setting application size and excess claim fees. A dropdown interface or automatic fee calculation mechanism can be built into the existing Patent Center which is already familiar to applicants. Current after-final practice under 37 CFR 1.116 can also be folded into the same schedule, thereby minimizing remaining discretion. None of these issues are insurmountable, and they are far preferable to the current discretionary and uncertainty-laden system.

Finally, two other considerations would need to be kept in mind. First, individual traversal fees must be calibrated so that multi-issue office actions do not become unreasonably expensive to respond to – the total owed should remain proportional to actual examiner effort rather than be a deterrent. Second, while the USPTO would still need to set count values for successive actions, every forwarded response would be a fee-supported, count-earning action. This would end the zero-credit Advisory Action that currently distorts examiner incentives.

Pricing Examiner Effort Directly Serves Small Inventors

The USPTO already charges more for longer applications because they take more effort to examine. They also charge more to examine large numbers of claims. Patent prosecution should follow the same principles. Different objections and rejections require different amounts of examiner effort. Pricing that effort directly would end after-final practice, increase certainty, and give small businesses a fairer path through the patent system.

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Author: iqoncept
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