In order to enter the appropriate quantity of documents that are subject to the $280 document size fee, you first need to determine which documents are subject to the document size fees, and which document size fees are applicable.
The document size fees are only applicable to non-patent documents. U.S. patents, U.S. patent application publications, published international patent applications, and foreign patents and patent application publications, are all patent documents, which are not subject to the document size fees. Translations of non-English language patent documents are also not subject to the document size fees. In addition, non-patent documents having 20 pages or less are not subject to the document size fees.
Non-patent documents having 21 – 50 pages are subject to a $170 document size fee per document, pursuant to 37 CFR 1.20(k)(3)(i). Non-patent documents having greater than 50 pages are, in addition, subject to a $280 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 $280 document size fee for each additional 50-page increment, or a fraction thereof, 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 amount of document size fees would be due for each document: $170 for pages 21-50, and $280 for a fraction of an additional 50-page increment (one page in the case of the 51-page document, and 49 pages in the case of the 99-page document), resulting in a total of $450 ($170 + $280) for each document, or $900 ($450 + $450) for both documents.
Blank pages will be counted. The Office will use an automatic page counter that will not subtract blank pages from the total page count for the non-patent document.
Example: 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, the U.S. patent is a patent document, and is 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 less than 20 pages. (If the declaration designated as an exhibit 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. The quantities of documents subject to each document size fee are calculated as follows:
|21-page journal article||30-page declaration||55-page transcript of audio or video recording||148-page catalog||Total Quantity|
|21-50 pages ($170 fee)|
|Each additional 50 pages or a fraction ($280 fee)|
In this example, the 21-page journal article and the 30-page declaration are each subject to the $170 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 $170 fee. The number”4” should be entered into the box labeled “Quantity” for the number of documents subject to the $170 fee for non-patent documents having 21 – 50 pages. This will result in a subtotal of $680 (4 x $170).
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” should be entered in the box labeled “Quantity” for the number of documents having additional 50-page increments or a fraction thereof. This will result in a subtotal of $840 (3 x $280).
The total amount due in document size fees in this example is $1520 ($680 + $840).
Note: in the above example, if the request also included a 562-page textbook, the document size fees for that document would amount to $3,250: $170 for pages 21-50, plus (11 x $280) for pages 51-562. The $3,250 fee would be added to the $1,520 total for the above example, resulting in $4,770 in document size fees. If the 562-page textbook were designated as an exhibit to the 30-page declaration, the fee total would be the same ($4,770), 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.
For further information regarding document size fees and for an additional example, see information on how a document size fee is calculated for each non-patent document having 21-50 pages.
For further efiling information, please see the EFS-Web Quick Start Guide to Filing a Supplemental Examination Request.