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1415 Reissue Application and Issue Fees [R-10.2019]

I. BASIC REISSUE APPLICATION FILING, SEARCH, AND EXAMINATION FEES

For reissue applications, the following fees are required: basic filing fee as set forth in 37 CFR 1.16(e); search fee as set forth in 37 CFR 1.16(n); examination fee as set forth in 37 CFR 1.16(r); application size fee, if applicable (see subsection II below); and excess claims fees, if applicable (see subsection III below).

The basic filing, search and examination fees are due on filing of the reissue application. These fees may be paid on a date later than the filing date of the reissue application provided they are paid within the time period set forth in 37 CFR 1.53(f) and include the surcharge set forth in 37 CFR 1.16(f).

For reissue applications in which a petition under 37 CFR 1.138(d) to expressly abandon the application was filed applicant may file a request for refund of the search fee and excess claims fee paid in the application. See MPEP § 711.01.

II. APPLICATION SIZE FEE

37 CFR 1.16(s) sets forth the application size fee the specification and drawings of which, excluding a sequence listing or computer program listing filed in an electronic medium in compliance with the rules (see 37 CFR 1.52(f)), exceed 100 sheets of paper. The application size fee applies for each additional 50 sheets or fraction thereof over 100 sheets of paper. Any sequence listing in an electronic medium in compliance with 37 CFR 1.52(e) and 37 CFR 1.821(c) or (e), and any computer program listing filed in an electronic medium in compliance with 37 CFR 1.52(e) and 1.96, will be excluded when determining the application size fee required by 37 CFR 1.16(s). See also MPEP § 607.

III. EXCESS CLAIMS FEES

37 CFR 1.16(h) sets forth the excess claims fee for each independent claim in excess of three. 37 CFR 1.16(i) sets forth the excess claims fee for each claim (whether independent or dependent) in excess of twenty. For reissue applications filed on or after December 8, 2004, in which a petition under 37 CFR 1.138(d) to expressly abandon the application was filed on or after March 10, 2006, applicant may file a request for refund of the search fee and excess claims fee paid in the application. See MPEP § 711.01.

Under 37 CFR 1.16(h) and (i), the number of claims in the original patent is not relevant in determining the excess claims fee for a reissue application.

Example:

Applicant filed a reissue application with the same number of claims as in the patent. The patent has 4 independent claims and 21 total claims. Excess claims fees for the 4th independent claim (one additional independent claim per the fee set forth in 37 CFR 1.16(h)) and the 21st claim (one additional total claim per the fee set forth in 37 CFR 1.16(i)) are required. Under 37 CFR 1.16(h) and (i), the number of claims in the original patent is not relevant in determining the excess claims fees for a reissue application.

The excess claims fees, if any, due with an amendment are required before any consideration of the amendment by the examiner. Upon submission of an amendment (whether entered or not) affecting the claims, payment of fees for those claims in excess of the number previously paid for is required. The additional fees, if any, due with an amendment are calculated on the basis of the claims (total and independent) which would be present, if the amendment were entered. If an amendment is limited to revising the existing claims and it does not result in the addition of any new claim, there is no excess claim fee. Excess claims fees apply only to the addition of claims. It is to be noted that where excess claims fees have been previously paid, a later amendment affecting the claims cannot serve as the basis for granting any refund. See 37 CFR 1.26(a).

Amendments filed before a first Office action, or otherwise not filed in reply to an Office action, presenting additional claims in excess of the number already paid for, not accompanied by the full additional claims fee due, will not be entered in whole or in part and applicant will be so notified. Such amendments filed in reply to an Office action will be regarded as being non-responsive to the Office action and the practice set forth in MPEP § 714.03 will be followed.

An amendment canceling claims accompanying the papers constituting the reissue application will be effective to diminish the number of claims to be considered in calculating the filing fees to be paid. A preliminary amendment filed concurrently with a reply to a Notice To File Missing Parts of Application that required the filing fees, which preliminary amendment cancels or adds claims, will be taken into account in determining the appropriate filing fees due in response to the Notice To File Missing Parts of Application. However, no refund will be made for claims being canceled in the reply that have already been paid for. After a requirement for restriction, non-elected claims will be included in determining the fees due in connection with a subsequent amendment unless such claims are canceled.

IV. ISSUE FEE

The issue fee for issuing each reissue patent is set forth in 37 CFR 1.18(a).

V. REISSUE APPLICATION FEE TRANSMITTAL FORM

The Office has prepared Reissue Application Fee Transmittal Forms which are designed to assist in the correct calculation of reissue filing fees. For reissue applications filed on or after September 16, 2012, use Form PTO/AIA/50; for reissue applications filed before September 16, 2012, use Form PTO/SB/56. Form PTO/AIA/50 is available at www.uspto.gov/patent/patents-forms.

1415.01 Maintenance Fees on the Original Patent [R-10.2019]

The filing of a reissue application does not alter the schedule of payments of maintenance fees on the original patent. If maintenance fees have not been paid on the original patent as required by 35 U.S.C. 41(b) and 37 CFR 1.20, and the patent has expired, no reissue patent can be granted. 35 U.S.C. 251 only authorizes the granting of a reissue patent for the unexpired term of the original patent. Once a patent has expired, the Director of the USPTO no longer has the authority under 35 U.S.C. 251 to reissue the patent. See In re Morgan, 990 F.2d 1230, 26 USPQ2d 1392 (Fed. Cir. 1993).

The examiner should determine whether all required maintenance fees have been paid before conducting an examination of a reissue application. In addition, prior to issuing any Office action and during the process of preparing the reissue application for issue, the examiner should again determine whether all maintenance fees required to date have been paid.

The history of maintenance fees is determined by the following, all of which should be used (to provide a check on the search made):

If the window for the maintenance fee due has closed (maintenance fees are due by the day of the 4th, 8th and 12th year anniversary of the grant of the original patent), but the maintenance fee has not been paid, the Office of Patent Legal Administration (OPLA) should be contacted by the Technology Center (TC) Special Program Examiner (SPRE), appropriate Quality Assurance Specialist (TQAS), or Supervisory Patent Reexamination Specialist (SPRS) for instructions as to what appropriate action to take.

See MPEP Chapter 2500 for additional information pertaining to maintenance fees.

I. PAYMENT OF MAINTENANCE FEES WHERE THE PATENT HAS BEEN REISSUED

Pursuant to 37 CFR 1.362(b), maintenance fees are not required for a reissue patent if the original patent that was reissued did not require maintenance fees. Design and plant patents do not require the payment of maintenance fees. See 37 CFR 1.362(b).

Where the original patent that was reissued did require maintenance fees, the schedule of payments of maintenance fees on the original patent will continue for the reissue patent. See 37 CFR 1.362(h).

If the maintenance fee is due prior to the issuance of a reissue patent, the maintenance fee must be paid in the original patent to maintain (1) the reissue patent in force beyond the end of the applicable grace period defined in 37 CFR 1.362(c) and (2) the pendency of any applications for reissue of the original patent. If the reissue application that is scheduled to issue is the only or last pending reissue application, payment should be made in the original patent at least a day prior to the issue date of the reissue application to avoid any uncertainty in the record about payment of the maintenance fee. This is because when that reissue application issues as a reissue patent, the original patent is surrendered and ceases to exist. If the maintenance fee is not paid before the issue date of the reissue application, payment of the maintenance fee during the grace period must be made to avoid expiration of the reissue patent. Payment of the maintenance fee should be made in the original patent because the maintenance fee was due before surrender of the original patent. In addition, the maintenance fee payment must include the surcharge under 37 CFR 1.20(h) if the maintenance fee is paid during the grace period (excluding any later payment authorized by 37 CFR 1.362(f)).

A.Maintenance Fees Due Prior to January 16, 2018

If the original patent that was reissued requires maintenance fees, the schedule of payments of maintenance fees on the original patent will continue for the reissue patent. See 37 CFR 1.362(h). Maintenance fees due after the issuance of the reissue patent must be paid in the reissue patent to maintain the reissue patent in force.

If there was more than one reissue patent granted that replaced a single original patent, a single maintenance fee is required for all reissue patents. The maintenance fee must be directed to the latest reissue patent that has issued, i.e., the reissue patent with the highest reissue patent number. The issuance of more than one reissue patent does not alter the schedule of payments of maintenance fees on the original patent.

B.Maintenance Fee Due On or After January 16, 2018

The practice of requiring only a single maintenance fee for multiple reissued patents was discontinued for maintenance fees due on or after January 16, 2018 in accordance with the USPTO’s fee setting authority. See Setting and Adjusting Patent Fees during Fiscal Year 2017, 82 FR 52780 (November 14, 2017). Maintenance fees with a due date on January 13, 14, or 15 of 2018 could have been paid on Tuesday, January 16, 2018 in accordance with 37 CFR 1.362(f). The procedures that allow payment on January 16, 2018 do not change the maintenance fee due dates from being prior to January 16, 2018.

1. Single Reissue Patent and No Pending Application for Reissue

Once an original patent reissues and there is no pending application for reissue of the original patent, maintenance fees due after the issuance of the reissue patent must be paid in the reissue patent to maintain the reissue patent in force. If more than one reissue patent replaced the original patent, maintenance fees must be paid in each of the reissue patents. Maintenance fees are no longer due in the original patent because it has been surrendered. However, if there is at least one pending application for reissue of the original patent, maintenance fees are still due in the original patent even if one or more reissue patents have issued. See paragraph 3 below for additional information.

2. More Than One Reissue Patent and No Pending Application for Reissue

In some instances, more than one reissue patent will be granted to replace a single original patent. The issuance of more than one reissue patent does not alter the schedule of payments of maintenance fees on the original patent. The existence of multiple reissue patents for one original patent can arise where multiple divisional reissue applications are filed for the same patent, and the multiple divisional applications issue as reissue patents (all to replace the same original patent). In addition, a divisional application or continuation application of an existing reissue application may be filed, and both may then issue as reissue patents. Effective January 16, 2018, separate maintenance fee payments are required for each utility reissue patent during the unexpired part of the term of the original patent (unless the original patent was filed before December 12, 1980). Therefore, maintenance fee payments are required in each of the reissue patents that replace the single original patent.

See MPEP § 2504, subsection I, for additional information on maintenance fees for reissue patents.

3. One or More Reissue Patent(s) and One or More Pending Application(s) for Reissue

Maintenance fee payments are required 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. Accordingly, each maintenance fee that comes due in a reissue patent family on or after January 16, 2018 must be separately paid in each reissue patent, and must also be paid in the original patent if the original patent is not surrendered on the maintenance fee due date.

See MPEP § 2504, subsection I, for additional information on maintenance fees for reissue patents and original patents for which a reissue application is pending.

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Last Modified: 06/25/2020 17:06:53