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Referenced Items (299, 300, 301, 302, 303, 304) |
(304) Notice Concerning Payment of the Appeal Forwarding Fee under
37 CFR 41.45 and Improper Use of
Deposit Account General Authorizations under 37 CFR 1.25(b)
The Office has become aware that some applicants have relied upon a
general authorization to charge a deposit account under 37 CFR 1.25(b) to
pay fees associated with appeals to the Patent Trial and Appeal Board
(PTAB, formerly the Board of Patent Appeals and Interferences). The Office
notes that the rules of practice do not authorize payment of appeal fees
through general authorization. Nevertheless, the Office has been collecting
payment of appeal fees based on general authorizations. To avoid any
adverse consequences to applicants and patentees as a result of this
practice, the Office is taking the following measures to remedy this
situation.
As explained below, appeal fees (notice of appeal, appeal brief, and
petition fees) that were collected under a general authorization are being
treated sua sponte as timely paid. Applicants and patent owners do not need
to take any action if they currently have no fees due. Applicants and
patent owners that have attempted to pay appeal forwarding fees using a
general authorization are being given additional time to pay outstanding
fees in accordance with the current rules of practice to avoid dismissal of
the appeal. Additionally, the Office is providing notice herein that the
practice of collecting appeal fees under a general authorization will cease
as of May 1, 2014. The Office has corrected the notice of appeal form and
will provide a new appeal forwarding fee form to assist applicants and
patent owners in paying appeals fees in accordance with the current rules.
Past PTAB Fees (Notice of Appeal, Appeal Brief, and Petition) Paid under a
General Deposit Account Authorization are Treated as Timely Paid
To prevent undue hardship to those parties that mistakenly relied on
general deposit account authorizations to pay appeal fees (notice of
appeal, appeal brief and petition fees) under 37 CFR 41.20 in the past, the
Office is accepting the fees that were collected as timely paid nunc pro
tunc and will continue to collect fees paid by a general authorization
until April 30, 2014. The PTO Forms for Notice of Appeal (PTO/AIA/31 and
PTO/SB/31) erroneously included a check box stating "The Director has
already been authorized to charge fees in this application to a Deposit
Account" incorrectly implying that a previous general authorization would
be appropriate. However, as of May 1, 2014, only fees collected with a
general deposit account authorization identified in 37 CFR 1.25(b) under
37 CFR 1.16-1.18 will be considered timely paid.
To make payment more convenient in the future, the Office is considering
promulgating a new rule to permit general authorization of PTAB fees.
However, until such rule is finalized, PTAB petition and appeal fees under
37 CFR 41.20 must be paid separately when due. Payment may be made in
accordance with methods identified in 37 CFR 1.23 and 1.25(a) (specific
deposit account authorization).
Appeal Forwarding Fee - Temporary Waiver of 37 CFR 41.45(a)
Effective March 19, 2013, the appeal fees were restructured to require
an appeal forwarding fee to forward the appeal including the appellant's
brief and examiner's answer to the PTAB. See 37 CFR 41.45 and 78 Fed. Reg.
4212 (Jan. 18, 2013). The purpose of the rule change was to offer patent
prosecution options to applicants and to reduce fee charges where an
application in which an appeal brief is filed subsequently is allowed or
prosecution is reopened, rather than forwarded to the PTAB, after mailing
of an Examiner's answer. The current fees for applications and ex parte
reexamination proceedings include a notice of appeal fee of $800, an appeal
brief fee of $0, and an appeal forwarding fee of $2000 (37 CFR 41.20(b)).
Small and micro entity discounts are available for qualifying applications
and ex parte reexamination proceedings. These fees are not payable by a
 Top of Notices (304) December 27, 2016 |
US PATENT AND TRADEMARK OFFICE |
1433 CNOG 2495 |
general deposit account authorization under 37 CFR 1.25(b), which applies
only to fees under 37 CFR 1.16-1.118.
The appeal forwarding fee under 37 CFR 41.45 is due within the later of
two months from the date of either the examiner's answer or a decision
refusing to grant a petition to designate a new ground of rejection in an
examiner's answer. Failure to timely pay the appeal forwarding fee will
result in dismissal of the appeal. Extensions of time under 37 CFR 1.136(a)
are not applicable.
The Office notes that some parties have attempted to pay the appeal
forwarding fee under previously filed general authorizations to charge a
deposit account. As these fees are not payable under a general
authorization, the Office is temporarily waiving the timing requirement of
the Appeal Forwarding Fee under 37 CFR 41.45(a) to permit parties to pay
the fee and avoid dismissal of the appeal for any fee owed on or after
March 19, 2013. This waiver will be effective for any fee paid until
April 30, 2014, after which the appeal forwarding fee must be timely paid
using means other than the general authorization to prevent dismissal of
the appeal under 37 CFR 41.45(b).
To avoid inadvertent dismissal of appeals as a result of non-payment of
this new fee, as an interim measure, the Office will attempt to contact
parties with appeal forwarding fees due between March 19, 2013 and
April 30, 2014 that have not paid or have relied on a previous general
authorization for payment to obtain authorization to pay the fee. For those
parties not contacted, a notice will be mailed waiving the timing
requirement of 37 CFR 41.45(a) and resetting the time period to run two
months from the mail date of the notice. Failure to pay the fee within the
new time period will result in dismissal of the appeal.
As of May 1, 2014, the appeal forwarding fee must be timely paid in
accordance with 37 CFR 41.45 by the payment methods identified in 37 CFR
1.23 and 1.25(a)(specific deposit account authorization). To facilitate
payment, a new appeal forwarding fee transmittal form will be available
that will include a specific authorization to charge the deposit account
for the appeal forwarding fee. Additionally, a reminder that the appeal
forwarding fee is due is being included in the examiner's answer.
As of May 1, 2014, Appeal Fees Cannot be Paid Using a General Authorization
under 37 CFR 1.25(b)
Notice is also provided that as of May 1, 2014, PTAB petition and appeal
fees including (notice of appeal, petition, and appeal forwarding fees)
due under 37 CFR 41.20 cannot be paid using a general authorization to a
deposit account under 37 CFR 1.25(b), which only authorizes payment of fees
under 37 CFR 1.16 - 1.18. The public is advised to carefully review 37 CFR
1.25(b) for limitations on using a general deposit account authorization.
Any questions concerning this notice may be directed to Kery A. Fries,
Office of Patent Legal Administration, Office of Deputy Commissioner for
Patent Examination Policy, at 571-272-7757.
JAMES DONALD SMITH
Chief Administrative Patent Judge
Patent Trial and Appeal Board
[1401 OG 184]