2810 Fees Due on Filing a Supplemental Examination Request [R-01.2024]
37 CFR 1.610 Content of request for supplemental examination.
- (a) A request for supplemental examination must be accompanied by the fee for filing a request for supplemental examination as set forth in § 1.20(k)(1), the fee for reexamination ordered as a result of a supplemental examination proceeding as set forth in § 1.20(k)(2), and any applicable document size fees as set forth in § 1.20(k)(3).
*****
- (d) The filing date of a request for supplemental examination will not be granted if the request is not in compliance with §§ 1.605, 1.615, and this section, subject to the discretion of the Office. If the Office determines that the request, as originally submitted, is not entitled to a filing date, the patent owner will be so notified and will be given an opportunity to complete the request within a specified time. If the patent owner does not timely comply with the notice, the request for supplemental examination will not be granted a filing date and the fee for reexamination as set forth in § 1.20(k)(2) will be refunded. If the patent owner timely files a corrected request in response to the notice that properly addresses all of the defects set forth in the notice and that otherwise complies with all of the requirements of §§ 1.605, 1.615, and this section, the filing date of the supplemental examination request will be the receipt date of the corrected request.
Consistent with the requirement in 35 U.S.C. 257(d) to establish fees, 37 CFR 1.610(a) requires that the request be accompanied by the fee for filing a request for supplemental examination as set forth in 37 CFR 1.20(k)(1), the fee for ex parte reexamination ordered as a result of a supplemental examination proceeding as set forth in 37 CFR 1.20(k)(2), and any applicable document size fees as set forth in 37 CFR 1.20(k)(3). These fees qualify for a 60 percent reduction for small entities and an 80 percent reduction for micro entities. See Reducing Patent Fees for Small Entities and Micro Entities Under the Unleashing American Innovators Act of 2022, 88 FR 17147 (March 22, 2023). See MPEP § 509.04.
If all of the required fees for supplemental examination are not paid at the time the request is filed, the request will be considered to be defective, and a filing date will not be granted. See 37 CFR 1.610(d) and MPEP § 2812.01et seq. If, after notification of the failure to pay all of the required fees, the fees are not timely received, then the request will not receive a filing date, the processing of the request will be terminated, and a refund in accordance with 37 CFR 1.610(d) of any fees paid will be made to the patent owner.
The fee under 37 CFR 1.20(k)(2) for ex parte reexamination ordered as a result of a supplemental examination proceeding will be refunded, in accordance with 37 CFR 1.610(d), if the supplemental examination certificate indicates that no substantial new question of patentability (SNQ) was raised by any of the items of information properly submitted as part of the request, and reexamination is not ordered.
2810.01 Document Size Fees [R-01.2024]
The document size fees, as set forth in 37 CFR 1.20(k)(3), are only applicable to non-patent documents having greater than 20 pages. Non-patent documents having 20 pages or less are not subject to the document size fees. Non-patent documents include, for example, non-patent literature, transcripts of audio or video recordings, and court documents. Patent documents, such as U.S. patents, U.S. patent application publications, published international patent applications, and foreign patents and patent application publications, are not subject to the document size fees. Translations of non-English language patent documents are also “patent documents” within the meaning of the rule, and are not subject to the document size fees.
Each non-patent document will be separately subject to the document size fees if greater than 20 pages. For example, each non-patent document attached to a declaration as an exhibit will be subject to its own document size fees if the document is greater than 20 pages. Thus, a 21-page journal article, which is designated as an exhibit to a declaration under 37 CFR 1.132, is considered to be a separate document for the purposes of the document size fees and its pages will be counted separately from the pages of the declaration.
Non-patent documents having 21–50 pages are subject to the fee pursuant to 37 CFR 1.20(k)(3)(i), per document. Non-patent documents having greater than 50 pages are, in addition, subject to a document size fee for each additional 50-page increment, or a fraction thereof, per document, pursuant to 37 CFR 1.20(k)(3)(ii).
The document size fees will not be pro-rated. For example, if a request for supplemental examination included a 51-page non-patent document and a 99-page non-patent document, the same total fee would be due for each document.
Blank pages will be counted. The Office uses an automatic page counter that does not subtract blank pages from the total page count for the non-patent document. This policy is consistent with the Office policy for application size fees.
Examples
Document Size Fee for Each Non-Patent Document Having 21–50 Pages
A request for supplemental examination includes eight documents: two U.S. patents, one U.S. patent application publication, one published international patent application, one Japanese published application, two journal articles, and a court document. The Japanese published application is not in the English language. For this reason, the request also includes a ninth document, which is a 22-page translation of the Japanese published application. The first journal article is 20 pages long, the second journal article is 25 pages long, and the court document is 50 pages long.
In this example, the U.S. patents, the U.S. patent application publication, the published international patent application, and the Japanese published application and its 22-page translation, are all patent documents, and therefore are not subject to the document size fees.
In this example, there are three non-patent documents. The 20-page journal article is not subject to the document size fees because it has only 20 pages. However, there are two documents which are subject to the document size fee for non-patent documents which have 21–50 pages: the 25-page journal article and the 50-page court document. Therefore, the request should be accompanied by a payment equivalent to two document size fees pursuant to 37 CFR 1.20(k)(3)(i). None of the non-patent documents have greater than 50 pages, and therefore none are subject to the document size fee pursuant to 37 CFR 1.20(k)(3)(ii).
In this example, the number “2” is entered into the box labeled “Total Quantity” in the below table for the number of documents subject to the fee for non-patent documents having 21–50 pages.
|
21-50 pages |
Each additional 50 pages or a fraction |
|
|---|---|---|
|
25-page journal article |
1 |
|
|
50-page court document |
1 |
|
|
__ |
__ |
|
|
Total Quantity |
2 |
0 |
Document Size Fee for Each Additional 50-Page Increment, Per Document
A request for supplemental examination includes six documents: one U.S. patent, one 21-page journal article, one 30-page declaration under 37 CFR 1.132, one 2-page invoice or sales receipt, one 55-page transcript of an audio or video recording, and one 148-page copy of a catalog. The 2-page invoice or sales receipt is designated as an exhibit to the 30-page declaration.
In this example, there are two documents that are not subject to the document size fees. The U.S. patent is a patent document, and is therefore not subject to the document size fees. The 2-page invoice or sales receipt is considered to be a separate document for the purposes of the document size fees, even though it is designated as an exhibit to the declaration. It is not subject to the document size fee because it has 20 pages or less. (If the declaration designated as an exhibit included one or more non-patent documents each having greater than 20 pages, then each of the greater-than-20-page exhibits would be subject to the document size fees.)
The remaining documents are subject to the document size fees, which are calculated as follows:
|
21-50 pages |
Each additional 50 pages or a fraction |
|
|---|---|---|
|
21-page journal article |
1 |
|
|
30-page declaration |
1 |
|
|
55-page transcript of audio or video recording |
1 |
1 |
|
148-page catalog |
1 |
2 |
|
__ |
__ |
|
|
Total Quantity |
4 |
3 |
In this example, the 21-page journal article and the 30-page declaration are each subject to the fee for a non-patent document having 21-50 pages. The 55-page transcript and the 148-page catalog also include pages 21-50, and are subject to the same fee. (The number “4” is entered into the box labeled “Total Quantity” in the above table for the number of documents subject to the fee for non-patent documents having 21–50 pages).
In addition, the 55-page transcript and the 148-page catalog each have greater than 50 pages, and therefore include all, or a fraction, of at least one additional 50-page increment. The 55-page transcript includes only one (5-page) fraction of a 50-page increment greater than 50 pages. The 148-page catalog includes two 50-page increments (or a fraction thereof): one for pages 51–100, and a second one for pages 101–148. (The number “3” is entered in the box labeled “Total Quantity” in the above table for the number of documents having additional 50-page increments or a fraction thereof).
Therefore, in this example, the request should be accompanied by a payment equivalent to four times the document size fee pursuant to 37 CFR 1.20(k)(3)(i), plus three times the document size fee pursuant to 37 CFR 1.20(k)(3)(ii).
Note: If the request in the above example also included a 562-page textbook, the document size fees for that document would include one fee under 37 CFR 1.20(k)(3)(i) for pages 21-50, and, in addition, the equivalent of eleven fees under 37 CFR 1.20(k)(3)(ii) for pages 51-562. The total document size fee for the 562-page textbook would be added to the total for all of the documents in the above example. If the 562-page textbook were designated as an exhibit to the 30-page declaration, the fee total would be the same, because the textbook would be considered as a separate document for the purposes of calculating the document size fees, even though it is designated as an exhibit to a declaration.
Patent owners are encouraged to redact lengthy documents to include only the relevant portions, unless the redaction would remove context such that the examiner would not be provided with a full indication of the relevance of the information.
