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|Top of Notices (76) December 27, 2011||US PATENT AND TRADEMARK OFFICE||Print This Notice 1373 CNOG 318|
|Copies, Fee Deficiency Submissions||Referenced Items (75, 76)|
(76) Treatment of Fee Deficiency Submissions under 37 CFR 1.28(c) in view of the Federal Circuit decision in DH Technology In early 1997, the Patent and Trademark Office (PTO) began holding the acceptance of all submissions of fee deficiencies under 37 CFR 1.28(c) in abeyance pending a decision by the Court of Appeals for the Federal Circuit on the appeal in DH Tech. v. Synergstex Intn'l, 937 F. Supp. 902, 909, 40 USPA2d 1754, 1761 (N.D. Cal. 1996). See Interim Treatment of Fee Deficiency Submissions under 37 CFR 1.28(c) in view of DH Technology, 1198 Off. Gaz. Pat. Office 27 (May 6, 1997). On September 1, 1998, the Federal Circuit rendered a decision, holding that 37 CFR 1.28(c) is the sole provision governing the time for correction of the erroneous payment of the issue fee as a small entity. See DH Tech. v. Synergstex Intern'l, 154 F.3d 1333, 1342, 47 USPQ2d 1865, 1872 (Fed. Cir. 1998). At the time of the Federal Circuit decision, the PTO had more than five hundred applications or patent files in which it was holding the acceptance of a fee deficiency under 37 CFR 1.28(c) in abeyance. The PTO is aware that any delay in the acceptance of a fee deficiency under 37 CFR 1.28(c) places a burden on the applicant or patentee. Thus, the PTO engaged in an effort to expeditiously process the acceptance of the fee deficiencies submitted in these applications or patents, and has issued a notice in each of these applications or patents that it accepted the fee deficiency submission under 37 CFR 1.28. The PTO has now forwarded the pending applications to the appropriate PTO organization (e.g., Publishing Division or appropriate technology center) for further processing, and forwarded the patent files to Files Repository. All future submissions of a fee deficiency under 37 CFR 1.28(c) should also include a detailed break-down of the total amount paid. This would include a listing of each of the prior fee underpayments as well as the specific deficiency (based on the current fees) being submitted. To assist the PTO in correctly applying the fees being submitted, the submission should include the following information for each fee which was deficient: 1) filing date of the original fee payment; 2) the type of fee, e.g., basic filing fee, maintenance fee, extension fee; 3) the amount of the original fee payment; and 4) the amount of the fee deficiency. For example: Deficiency (based on current fee Column A Column B amount) Filing date Current fee Amount (Col. A of original amount as a originally minus paper/fee Type of fee paid large entity paid Col. B) 03/04/96 basic filing fee $760 $375 $385 03/04/96 7 independent $546 $273 $273 claims in excess of 3 03/04/96 10 total claims $180 $110 $70 in excess of 20 05/20/97 3 month extension $870 $450 $420 TOTAL $1148 If a detailed break-down of the total amount paid is not submitted, the submitter may be notified that such a breakdown must be submitted before the payment can be accepted. Alternatively, the payment could be accepted (without a breakdown) but processing delays can be expected for the PTO staff to perform the break-down computations. Inquiries with regard to this matter should be directed to the Office of Petitions Staff at (703) 305-9282. December 9, 1998 STEPHEN G. KUNIN Deputy Assistant Commissioner for Patent Policy and Projects [1218 OG 528]