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Monday Jul 09, 2012

Methodology for Appeal Fees

Blog by Under Secretary of Commerce for Intellectual Property and Director of the USPTO David Kappos

Continuing our series on implementation of the Leahy-Smith America Invents Act (AIA), allow me to discuss one type of fee being set using Section 10 fee-setting authority: appeal fees.
In preparation for public hearings—as directed by the AIA—we delivered an initial fee schedule proposal to the Patent Public Advisory Committee (PPAC) on February 7, 2012. In that preliminary proposal, the USPTO included changes to fees relating to appeals. We proposed these changes with the understanding that in some instances an appeal may be filed, but then the matter is resolved sufficiently early in the appeal process that there is no need to forward the appeal to the Board of Patent Appeals and Interferences (BPAI) for a decision.
The Office has made great strides in connecting with applicants to resolve prosecution issues before appeal. However, we recognize that it is sometimes necessary for these efforts to occur after an appeal is commenced, and indeed we want to encourage such post-appeal outreach between examiners and applicants. However, this can result in appealed cases proceeding unnecessarily to the BPAI while applicants are working with examiners toward resolution of the underlying issues.

We are working to find ways to minimize the cost impact on applicants in these situations. In constructing our preliminary fee proposal, our initial thought was to refund most appeal fees if the application did not proceed to the BPAI. However, this proved to be a non-viable option as the law does not permit us to provide refunds of appeal fees. 

As an alternative, the Office presented an option during the preliminary proposal at the PPAC hearings that included two components: (1) Shifting the payment timing for some of the appeal-related fees, and (2) Offering a combined $0 PGPub and Issue fee if the examiner withdraws a Final Rejection prior to an appeal being forwarded to the BPAI.
The second aspect of the initial proposal ($0 PGPub and Issue fee) raised implementation issues. As originally envisioned, a $0 PGPub and Issue fee would have been considered if the examiner withdrew a Final Rejection prior to an appeal being forwarded to the BPAI. However, withdrawing the Final Rejection can happen under many circumstances, including times when there is no error in prosecution by the examiner. For example, examiners often properly consider After Final amendments filed after notice of appeal, resulting in an allowance. Assessing when a $0 PGPub and Issue fee would be proper would require the USPTO to review the circumstances of each withdrawal of Final Rejection on a case-by-case basis, increasing the cost of patent operations.

Another consideration is that a $0 PGPub and Issue fee would eliminate the need for the notice of issue fee payment. Applicants often use this notification to decide if there is a need to file a continuing application. So after reviewing the resources that would be required to consider these situations on a case-by-case basis, and the possible negative impact applicants would experience, this particular piece of the initial proposal will not be pursued.
However, the Office does plan to maintain the first component in our rulemaking proposal as a means to provide savings to applicants—shifting the timing of when some of the appeal-related fees are paid. This approach provides the benefits related to the staging and timing of fee payments, without creating potential harm to applicants or additional implementation issues.


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