| Fees and Payment of Money |
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(143) Waiver of the New Requirement to Pay an
Appeal Forwarding Fee if the Fee for
Filing an Appeal Brief was Filed before
March 19, 2013
Waiver: The United States Patent and Trademark Office (USPTO) is,
pursuant to 37 CFR 1.183, sua sponte waiving new 37 CFR 41.45 (effective
March 19, 2013) in any application or ex parte reexamination proceeding in
which the appellant has filed an appeal brief and the fee for filing the
brief by March 18, 2013, under the version of 37 CFR 41.20(b)(2) which
remains in effect through March 18, 2013. To promote an effective
transition for new fee rules that take effect on March 19, 2013, the USPTO
has in its discretion determined that justice requires this waiver. This
waiver avoids the payment of extra fees that would otherwise result when an
applicant paid both a fee to file an appeal brief by March 18, 2013, and
would also be required to pay the fee to forward an appeal on or after
March 19, 2013.
Discussion: On January 19, 2013, the USPTO promulgated a final rule that
established new 37 CFR 41.45 which requires payment of a fee for forwarding
an appeal in any application or ex parte reexamination to the Patent Trial
and Appeal Board (PTAB). See "Setting and Adjusting Patent Fees" 78 Fed.
Reg. 4212, 4291 (January 18, 2013). Under this new rule, any appeal in an
application or an ex parte reexamination proceeding in which the appellant
fails to pay the appeal forwarding fee within the time period set in 37 CFR
41.45(a) stands dismissed. See 37 CFR 41.45(b) in effect on March 19, 2013.
New 37 CFR 41.45 is effective on March 19, 2013, and it does not include a
transition provision for appellants who have already filed appeal briefs
and paid the appeal brief filing fee under 37 CFR 41.20(b)(2) by March 18,
2013. Thus, under new 37 CFR 41.45, the appeal forwarding fee would still
have to be paid by such appellants in order to avoid the dismissal of their
appeal.
The final rule also adjusts the fee due on submission of an appeal brief
in an application or ex parte reexamination proceeding to $0. See 37 CFR
41.20(b)(2)(i) in effect on March 19, 2013.
To promote an effective transition for new 37 CFR 41.45, which takes
effect March 19, 2013, and under its authority provided for in 37 CFR
1.183, the USPTO has determined in its discretion that justice requires
this waiver. This waiver serves to maintain the status quo fees in certain
narrow and temporary circumstances. Otherwise, without the waiver,
appellants in any application and ex parte reexamination proceeding that
have paid the fee to file an appeal brief by March 18, 2013, would also
have to pay the appeal forwarding fee if the expiration of the time period
set by 37 CFR 41.45(a) was on or after March 19, 2013. As a result of this
waiver, such appellants will not be required to pay both fees.
The period to file an appeal brief may be extended. See MPEP 1205.01.
This waiver, however, only applies in an appeal in which the appeal brief
and accompanying fee were filed before March 19, 2013.
The appeal forwarding fee is not required in any appeal to the PTAB in
an inter partes reexamination proceeding, and therefore, this notice does
not apply to such proceedings.
Any inquiries concerning this notice may be directed to Robert Clarke,
Office of the Associate Commissioner for Patent Examination Policy, at
571-272-7735, or via e-mail addressed to robert.clarke@uspto.gov.
February 27, 2013 TERESA STANEK REA
Acting Under Secretary of Commerce for Intellectual Property and
Acting Director of the United States Patent and Trademark Office
[1388 OG 344]
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