Recent Changes to Continuing Application practice at the USPTO

2025 introduced significant changes to continuing applications at the USPTO.  New surcharges were introduced for later-filed continuing applications, and continuing applications are no longer being examined ahead of other pending applications.

Continuations are still an attractive way to expand patent prosecution without excessive costs, as applications do not require annual fees in the USPTO. However, due to these changes, increased foresight and communication are required to avoid excessive fees for continuing applications. Particular attention should be given to the new time limits of six and nine years which trigger the new surcharges.

New surcharges for continuing applications

Starting January 19, 2025, the USPTO implemented new surcharge fees for continuing applications that claim priority to an earlier U.S. application, filed more than 6 years after the earlier application’s earliest benefit date (EBD).  The EBD is the filing date of the earliest U.S. non-provisional application in the priority chain for which benefit is claimed. Importantly, the EBD does not include the filing date of a foreign priority application or a U.S. provisional application. In other words, the “surcharge clock” starts from the first U.S. non-provisional filing (including filing date of PCT applications that enter the US National Stage).

Example

As an example, a Finnish priority application is filed on July 1, 2025, followed by a PCT application filed July 1, 2026 claiming priority to the Finnish application, and then the National Stage is entered in the U.S. The applicant then wants to file a continuing application (continuation, divisional, or continuation-in-part) which claims the benefit of the PCT application. In this instance, the EBD would be the filing date of the PCT application, July 1, 2026, because the surcharge rule does not encompass priority claims to foreign applications. For more examples, please see: https://www.uspto.gov/sites/default/files/documents/quick-reference-guide-to-the-continuing-application-fee-caf.pdf

Surcharge amounts

The new surcharge structure is:

• $2,700 (or $1,080 for small entities) for continuing applications filed 6 or more years after the EBD
• $4,000 (or $1,600 for small entities) for continuing applications filed 9 or more years after the EBD

These fees are to be paid in addition to standard filing, search, and examination fees, which increased in 2025 to $2,000 (or $800 for small entities).

The USPTO has observed that later-filed continuing applications produce less maintenance fee revenue, and the new continuing surcharges are intended, in part, to compensate for reduced revenue while also promoting more timely filing practices.

Changes in examination timing

In addition to higher fees, applicants should be aware of longer and less predictable examination timelines.

Previously, continuing applications were often examined more quickly, as examiners were already familiar with the application. This is generally no longer the case. Continuing applications are now typically examined in normal docket order, similar to new applications.

As of March 2026, the average time to receive a first Office Action is approximately 22 months.

Practical impact

While the USPTO has not formally made an announcement regarding examination delays for continuing application, many practitioners have indeed observed delays.

These changes can have a significant effect on patent strategy and enforcement timing.

For example, in one case handled by our firm, a continuation application was filed five years after the filing of a non-provisional application. The first Office Action on the merits in the continuation was not issued until four years after filing of the continuation, meaning that nine years had elapsed from the filing of the parent application and that patent rights, such as full rights to sue for infringement, were delayed.

In other cases, examination has proceeded more quickly, indicating that timelines may still vary.

Options to accelerate examination

If faster examination is important, several options may be available:

• Patent Prosecution Highway (PPH)
  Accelerated examination based on allowed claims in another jurisdiction.
• Prioritized Examination (Track One)
  Faster examination for an additional fee ($4,200, or $1,680 for small entities).
• Petition to Make Special (no official fee if eligible), for example:
  • If an inventor is over 65 or in poor health.

Key takeaways

• Plan early
  Discuss potential continuing applications as early as possible to avoid unexpected fees and delays.
• Monitor critical deadlines
  The six- and nine-year deadlines from the earliest benefit date are particularly important.
• Evaluate strategy during prosecution
  Consider the need for continuing applications already while the parent application is pending, rather than waiting until allowance.

How we can help

Laine IP’s US team is happy to review your U.S. patent families to identify cases where these changes may affect cost, timing, or enforcement planning. Further, if you have questions about how these changes may affect your patent portfolio or filing strategy, we are happy to assist.