Top of Notices Top of Notices   (113)  December 31, 2019 US PATENT AND TRADEMARK OFFICE Print This Notice 1469 CNOG  295 

Fees and Payment of Money Referenced Items (113, 114, 115, 116, 117, 118, 119, 120, 121, 122, 123, 124, 125, 126, 127, 128, 129, 130, 131, 132, 133, 134, 135, 136, 137, 138, 139, 140, 141, 142, 143, 144, 145, 146)
(113)    Original Utility Patents Not Surrendered by Reissue and
             All Reissue Patents in the Reissue Patent Family
                Require Separate Maintenance Fee Payments

   This notice addresses the new practice of requiring separate maintenance
fees in each reissued patent based on a single original utility patent, and
in original utility patents for which a reissue application is pending and
at least one reissue patent has already issued. The new practice for
multiple reissued patents and certain original patents that are the basis
for reissue applications is set forth in the recent final rule to adjust
patent fees. See Setting and Adjusting Patent Fees During Fiscal Year 2017,
82 FR 52780, 52791 (November 14, 2017).

   Effective January 16, 2018, each utility reissued patent requires its
own maintenance fee payment during the unexpired part of the term of the
original patent (unless the original patent was filed before December 12,
1980). The new practice requires a maintenance fee to be paid in each
reissued patent in force on (i.e., issued before) the maintenance fee due
date. This includes all reissued patents that replace the same original
patent and have maintenance fees due on or after January 16, 2018. The new
practice also includes a requirement for maintenance fee payments in
original patents that are not surrendered because one or more reissue
applications of the same original patent are still pending on the
maintenance fee due date. In summary, for maintenance fees due on or after
January 16, 2018, the new practice requires a separate payment of the
maintenance fee for each reissued patent based on a single original patent,
and for the original patent if there is a pending reissue application based
on the same original patent, to maintain each reissued patent(s) and the
original patent in force beyond the 4th, 8th, or 12th anniversary of the
grant date of the original patent. The due date for a maintenance fee is
the last day the maintenance fee may be paid without a surcharge under
37 CFR 1.362(d). Sections 1415.01 and 2504 of the Manual of Patent
Examining Procedure (MPEP) will be revised to reflect policies and
procedures consistent with this notice.

   The former practice of requiring only one maintenance fee in the latest
issued reissue patent for all reissued patents based on the same original
patent and for the original patent will be discontinued effective
January 16, 2018. Accordingly, maintenance fee payments due on January 15,
2018, will be the last maintenance fees payable under the former practice.
However, to ensure that all patentees have a six-month period to pay
maintenance fees without a surcharge, the Office is establishing procedures
for patentees to request a refund of the surcharge under 37 CFR 1.20(h) for
payments made from January 17, 2018, to July 16, 2018. The surcharge cannot
be waived during the transition due to limitations in the automated
processing system. The request for refund is limited to the surcharge
accompanying the maintenance fee payments that are newly required by this
change in practice (e.g., for patents in reissue patent families except for
the latest reissued patent). The request for refund may be submitted via
EFS-Web using document code PET.OP or by mail directed to Mail Stop
Petition, Commissioner for Patents, P.O. Box 1450, Alexandria,
VA 22313-1450. A request for refund must be made by January 16, 2019.

FOR FURTHER INFORMATION: Contact James Engel, Senior Legal Advisor, at
(571) 272-7725.

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