Link to the full guidance document from the USPTO here
The patent landscape is evolving, and with it comes a critical change from the United States Patent and Trademark Office (USPTO) — one that patent agents and applicants alike need to be ready for. Starting January 19, 2025, the USPTO introduced a new Information Disclosure Statement (IDS) size fee and an accompanying assertion requirement. These updates are designed to reduce excessive prior art submissions by charging additional fees based on the number of references disclosed.
But what does this mean for patent professionals on the ground? How can they adjust strategies, maintain compliance, and avoid unnecessary costs? Much like AI tools reshaping legal workflows, these new rules demand thoughtful adaptation. Tools like DorothyAI’s CrossCite can help streamline and track disclosures, ensuring you stay ahead without missing a beat.
A Closer Look at the Changes
1. IDS Size Fee: Pay Attention to the Thresholds
Under the revised rules, an IDS size fee will apply when an IDS submission exceeds specific cumulative thresholds:
- 51 to 100 references — First-tier IDS size fee
- 101 to 200 references — Second-tier IDS size fee
- 201+ references — Third-tier IDS size fee
This fee is distinct from the existing IDS timing fee, which applies based on when the IDS is filed during prosecution. Patent agents must navigate situations where both fees might apply.
2. The Assertion Requirement: Don’t Skip It
Starting January 2025, every IDS must include a written assertion confirming whether the appropriate size fee is included or stating that no fee is required. Failing to include this assertion will render the IDS non-compliant — meaning the USPTO won’t consider it.
With DorothyAI’s CrossCite, patent agents can easily generate clear, compliant assertion statements and organize citations to prevent errors that could jeopardize patent prosecution.
3. Impact on Pending Applications
The new rules will apply to all IDS submissions after January 19, 2025, regardless of when the application was filed. Cumulative reference counts matter — so tracking prior disclosures will be essential.
Practical Strategies for Patent Agents
As with AI tools in the legal sector, the key to thriving under these changes lies in thoughtful, proactive strategies. Here’s how patent agents can navigate the new landscape:
1. Keep Meticulous Records
Just as AI demands careful data handling, the new IDS rules require agents to maintain up-to-date reference counts for each application. Knowing where you stand can help avoid unexpected fee thresholds.
2. Be Strategic with IDS Filings
Consolidate references where possible to stay within fee tiers. Thoughtful grouping can prevent costly tier jumps. DorothyAI’s CrossCite empowers agents to optimize their disclosures, helping to identify smart bundling strategies while staying compliant.
3. Use USPTO Forms to Ensure Compliance
Just as legal administrators rely on structured protocols for AI use, patent agents should use the USPTO’s SB/08 forms to ensure their assertions are clear and accurate. CrossCite seamlessly integrates with these forms, automating assertion creation for smoother filings.
4. Educate Clients Early
Managing client expectations is crucial. Just as legal firms prepare clients for AI-driven changes, patent agents should proactively inform clients about the potential financial implications of the new rules.
5. Double-Check Everything
In the same way that legal administrators emphasize vetting AI-generated work, patent agents must rigorously review IDS submissions to ensure compliance with the assertion requirement.
Just as AI is transforming legal practice into something smarter and more responsive, these new rules can encourage a more thoughtful, efficient approach to patent prosecution — one that benefits both agents and their clients in the long run. With DorothyAI’s CrossCite, patent professionals gain a powerful tool to navigate these complexities with confidence, ensuring compliance, efficiency, and strategic advantage in the evolving IP landscape