Filing an Information Disclosure Statement should be a routine compliance task. But when it comes to calculating the associated USPTO fees, “routine” is where a surprising number of firms lose money either by overpaying fees that were never owed, or by underpaying and exposing the application to a later fee deficiency. The culprit is almost always the same: a miscount of the cumulative number of applicant-cited references, which drives the size-fee tiers under 37 CFR 1.17(v).
Here are the three mistakes we see most often, the actual current USPTO fee amounts involved, and how to avoid getting caught by them.
A Quick Refresher on the Fees Involved
Before diving into the mistakes, it helps to have the exact numbers in front of you. Submission of an IDS itself, when a fee is required under 37 CFR 1.97(b) or (c), costs $280 for an undiscounted (large) entity, $112 for a small entity, and $56 for a micro entity under 37 CFR 1.17(p).
Separately, and often overlooked, is the size fee under 37 CFR 1.17(v), which is triggered by the cumulative number of applicant-cited references in an application, regardless of the 1.97 window fee described above:
- 37 CFR 1.17(v)(1): $200 when the cumulative count of applicant-cited references exceeds 50 but does not exceed 100.
- 37 CFR 1.17(v)(2): $500, less any amount previously paid under this section, when the cumulative count exceeds 100 but does not exceed 200.
- <37 CFR 1.17(v)(3): $800, less any amount previously paid under this section, when the cumulative count exceeds 200.
Critically, these three size-fee tiers are flat they do not vary by entity size the way the 1.17(p) submission fee does. A small entity and a large entity crossing the 100-reference threshold both owe the same $500 (less amounts previously paid). That single fact is the root of the first mistake below.
Mistake #1: Assuming Parent-Cited References Don’t Count Toward the IDS Size Fee
A common misconception is that references cited and considered in a parent application are automatically excluded from the IDS size-fee calculation in a continuation or divisional application. In reality, if those parent-cited references are included in an IDS filed for the child application, the USPTO treats them as applicant-cited references for that child application, and they are counted toward the cumulative total used to determine the IDS size fee under 37 CFR § 1.17(v).
Before filing an IDS in a continuation or divisional, carefully review which references truly need to be resubmitted. Including unnecessary references can increase the cumulative reference count, potentially triggering higher IDS size fees. Maintaining a well-organized record of previously cited references and submitting only those required for the child application can help avoid unnecessary filing costs while ensuring compliance.
Mistake #2: Losing Track of the Running Cumulative Count Across Filings
The 1.17(v) fee tiers are cumulative by design: 1.17(v)(2) and 1.17(v)(3) are calculated “less any amount previously paid” under the section. If a firm already paid the $200 fee at the 50-reference tier, and a later IDS pushes the application past 100 references, the fee owed is $500 minus the $200 already paid not a fresh $500.
The mistake happens when firms treat each IDS filing as an isolated event rather than tracking a running total across the application’s life. Without a persistent, accurate count of cumulative references and fees already paid, it is easy to overpay when a credit was owed, or to miss that a threshold was crossed at all, because no one added up references across five or six separate filings over a long-pending application.
Mistake #3: Not Accounting for IDS Size Fees
While the USPTO automatically calculates and applies the appropriate IDS fees during electronic filing, firms should ensure there are sufficient funds available in their USPTO deposit account or on the payment method used to complete the filing. This is particularly important for large IDS submissions that trigger the tiered size fees under 37 CFR § 1.17(v). Insufficient funds can delay or prevent successful filing at a critical stage of prosecution. Verifying available funds before submission helps avoid unnecessary filing disruptions and keeps the IDS process on track.
How to Avoid All Three Mistakes
The key to avoiding these common IDS filing mistakes is maintaining an accurate, application-specific record of applicant-cited references, understanding which references will be counted toward the cumulative IDS total, and ensuring the appropriate fee tier is identified before filing. Doing this manually across a large patent portfolio is a repetitive, detail-intensive process that can easily lead to errors.
Max-IDS helps streamline this process by maintaining a cumulative count of applicant-cited references for each application and flagging the applicable IDS size-fee tier before filing. During electronic submission, the USPTO automatically determines the actual fee due including any credits for previously paid fee tiers and calculates the final amount owed. Max-IDS helps firms identify when a size fee may apply so they can prepare accordingly and ensure sufficient funds are available for filing.
For a deeper understanding of IDS filing requirements, see our Ultimate Guide to USPTO IDSs, which explains the complete framework under 37 CFR § 1.97, including filing windows, fee requirements, and best practices for maintaining compliance.
Frequently Asked Questions
What triggers the USPTO IDS size fee under 37 CFR 1.17(v)?
The size fee is triggered when the cumulative number of applicant-cited references in an application exceeds 50. Exceeding 50 but not 100 references triggers a $200 fee; exceeding 100 but not 200 triggers $500 less any amount previously paid; and exceeding 200 triggers $800 less any amount previously paid.
Do small entities pay a reduced USPTO IDS size fee?
No. Unlike the base IDS submission fee under 37 CFR 1.17(p), which is discounted for small and micro entities, the size fees under 37 CFR 1.17(v)(1) through (v)(3) are flat amounts of $200, $500, and $800 respectively, and do not vary by entity size.
Should references cited in a parent application be counted toward the IDS size-fee threshold in a continuation?
Yes – if they are included in an IDS filed for the continuation or divisional application. The USPTO treats any references submitted in the child application’s IDS as cumulative applicant-cited references for that application, including references that were previously cited in the parent. As a result, those references are counted when determining whether the IDS size-fee thresholds under 37 CFR § 1.17(v) have been reached. Before resubmitting parent-cited references, firms should carefully evaluate whether they need to be included, as doing so may increase the cumulative reference count and trigger a higher IDS size fee.
