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Interim Practice of Mailing a Notice of Publication Fee Due Separate From the Notice of Allowance

Interim Practice of Mailing a Notice of Publication Fee Due Separate From the Notice of Allowance

The United States Patent and Trademark Office (USPTO) has indicated that if an application is subject to publication under 37 CFR 1.211, the Notice of Allowance will require both the issue fee and the publication fee. See 37 CFR 1.211(e). The USPTO plans to modify the Notice of Allowance to require both the issue fee and any required publication fee, but this will not be done until later in the year. Until then, the USPTO will mail a separate Notice of Publication Fee Due in any application that has been assigned a projected publication date and which has been allowed. The Notice of Publication Fee Due requires payment of the publication fee within three months of the mail date of the Notice of Publication Fee Due. A sample of such a Notice is attached.

Once an application is placed in the publication queue, the application will not be withdrawn from publication unless: (1) the application is abandoned and the abandonment is recognized more than four weeks before the projected publication date, (2) the application is placed under Secrecy Order, or (3) the application should not otherwise be published under 37 CFR 1.211. Since an application that has been allowed may not necessarily issue as a patent (even if the issue fee is paid), the USPTO will not withdraw an application from publication due to the allowance of the application until the application has issued as a patent. See Changes to Implement Eighteen-Month Publication of Patent Applications , 65 Fed. Reg. 57023, 57035 (Sept. 20, 2000), 1239 Off. Gaz. Pat. Office 63, 73 (Oct. 10, 2000) (final rule). This may result in some applications being issued as patents and subsequently being published as patent application publications. See id., 1239 Off. Gaz. Pat. Office at 73.

Therefore, if the USPTO mails a Notice of Publication Fee Due, the applicant must pay the publication fee (currently $300) within three (3) months of the mail date of the Notice of Publication Fee Due to avoid abandonment of the application. If the USPTO does not publish the application (e.g., because the patent issued with sufficient time remaining to remove the application from the publication queue or because the USPTO recognizes that the application should not be published), applicant may request that the USPTO refund the publication fee. However, in the situation where an applicant has paid the issue fee many months before the projected publication date, the USPTO is likely to issue the patent with sufficient time remaining to remove the application from the eighteen-month publication queue, applicant should consider paying the publication fee by an authorization to charge the fee to a deposit account. In this situation, the USPTO will not charge the publication fee if the patent issued with sufficient time remaining to remove the application from the publication queue. Nevertheless, if the USPTO mails a Notice of Publication Fee Due, the applicant must pay the publication fee (or authorize it to be charged to a deposit account) within three (3) months of the mail date of the Notice of Publication Fee Due to avoid abandonment of the application. If the patent issues and the application is not published, applicant need not pay the publication fee if it is due after the patent issues.

The USPTO has posted several questions and answers about eighteen-month-month publication, and the Notice of Publication Fee Due on the USPTO's Internet Web site. See < http://www.uspto.gov/web/offices/dcom/olia/aipa/infoexch.htm#C > for further information regarding the Notice of Publication Fee Due.

Questions concerning this notice should be directed to the Customer Service Center, Office of Patent Publication, by telephone at (703) 308-6789 and 1-888-786-0101, or by facsimile at (703) 305-5065.

Date: July 5, 2001
Stephen G. Kunin
Deputy Commissioner for Patent Examination Policy

United States Patent and Trademark Office
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Last Modified: 7/4/2009 6:02:01 PM