Late Benefit Claims, Big Fees, and Vague Notices: Welcome to 37 CFR § 1.17(w)

On January 19, 2025, the United States Patent and Trademark Office (USPTO) introduced new fees under 37 CFR § 1.17(w) that apply to continuing applications filed long after the original benefit date. The USPTO now charges an additional fee if you file a continuing application more than six or nine years after the earliest benefit date (EBD). The fees are tiered based on how far back you wish to claim benefit:

These fees are in addition to the usual filing and processing fees, and apply regardless of whether the continuing application is a continuation, divisional, or continuation-in-part.

According to the USPTO, these fees are meant to address two budgetary challenges.  First, the USPTO states that patent examination is subsidized on the assumption that a healthy percentage of patents will generate maintenance fees over time. However, many late-stage continuations don’t survive long enough to generate those fees:

The USPTO’s ability to subsidize front-end fees is dependent on a sufficient number of patentees paying maintenance fees . . . As the volume of applications with terms that are not long enough to require one or more maintenance fees increases, the risk that the agency will not generate sufficient aggregate revenue also increases.
In short, late-filed continuations can contribute to a funding gap for the USPTO’s aggregate costs of patent operations, and these new fees are intended to help enhance aggregate revenues.
Second, the USPTO contends that the increasing volume of continuing applications is a strain on examination resources.[1]

It is difficult for the agency to balance patent resources between the examination of ‘new’ applications . .  and continuing applications that, in some cases, are a repetition of previously examined applications . . .
The USPTO’s assertion of an undue “burden” is difficult to reconcile, as it simultaneously claims that continuing applications are often repetitive while also suggesting they may present more complex issues than new filings. Also, the USPTO contends that examiners are given the same amount of time for both, which somehow implies that continuing applications are harder to process, yet are still allocated the same budgeted time, and causes a drain on USPTO’s resources.[2]

It is also unclear how the USPTO can justify canceling an Applicant’s benefit claim that is properly made at the time of filing, simply because a newly-added fee has not been paid.  To these authors, the USPTO’s authority to “adjust by rule all patent and trademark fees established, authorized, or charged under title 35 US Code” was certainly used to its fullest extent.[3]

Regardless of the merits of the USPTO’s rationale for the new fees under 37 CFR § 1.17(w), the fees are now in effect—and if they are overlooked when filing a continuation, Applicant will receive a cryptic notice entitled: “Improper CFR Request,” formally labeled as a “Response to Request for Corrected Filing Receipt.” Neither title aligns with standard USPTO terminology nor offers clear context, leaving many Applicants puzzled. The notice provides no response deadline and simply states that the benefit claim has not been entered because the required continuation fee under § 1.17(w) was not paid.[4]

There are several ways to respond to the USPTO’s “Improper CFR Request” notice. Three potential approaches include:

1. Paying the applicable fees under 37 CFR § 1.17(w), accompanied by a statement confirming that the payment is made to satisfy the requirements of the rule. However, this approach may result in no immediate action from the USPTO, and it is often necessary to follow up by phone to ensure the priority claims have been properly recorded.
2. Paying the fees and submitting a marked-up Application Data Sheet (“ADS”) that reflects mark-ups for domestic or national stage benefit claims that were not granted due to non-payment of the 37 CFR § 1.17(w) fee. When this is accompanied by a clear statement referencing the fee payment and the corrected ADS, the USPTO typically responds promptly and issues a corrected Official Filing Receipt within a few days.  A sample statement accompanying the payment is provided below.
3. In certain situations, where the parent application is still pending and the filing fees are not paid, the applicant may choose to abandon the no-fee continuation and file a new continuation application, this time including the required fees under 37 CFR § 1.17(w).

In practice, option 2 is the most straightforward and preferred response.

Most importantly, it is critical that a suitable response be filed within four months of the filing date, to fall within the allowed period for submitting or correcting a benefit claim.[5]  See 37 CFR § 1.55.

37 CFR § 1.17(w) introduces a hefty price for filing continuation applications six or more years after the earliest benefit date. While the USPTO’s rationale may be debatable, the rule is now part of the landscape. Applicants and practitioners alike should be vigilant when filing continuations years after the earliest benefit date, not only to avoid surprise fees, but also to navigate the murky waters of the USPTO’s vague notices and evolving procedural expectations.

[1] https://www.federalregister.gov/d/2024-26821/p-80, last visited on Aug. 22, 2025.
[2] https://www.federalregister.gov/d/2024-26821/p-76, last visited on July 28, 2025.
[3] https://www.federalregister.gov/d/2024-26821/p-6, last visited on Aug. 22, 2025.
[4] In reply to the Response to Request for Corrected Filing Receipt mailed **date**, Applicant submits applicable fees for benefit claims to prior-filed nonprovisional application(s) under 37 C.F.R. § 1.17(w) and a marked-up Application Data Sheet. The marked-up Application Data Sheet includes markups to the domestic/national stage benefit that was claimed in the Application Data Sheet, but was withheld due to the non-payment of the fee set forth in 37 C.F.R. § 1.17(w)(1). Entry of the corrected Application Data Sheet and benefit claims are respectfully requested