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Fees and Payment of Money Referenced Items (104, 105, 106, 107, 108, 109, 110, 111, 112, 113, 114, 115, 116, 117, 118, 119, 120, 121, 122, 123, 124, 125, 126, 127, 128, 129, 130, 131, 132, 133, 134, 135, 136)
(134)             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

   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

   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:

                                                               (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

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