2215 Fee for Requesting Ex Parte Reexamination under 35 U.S.C. 302 [R-10.2019]

For ex parte reexamination requests under 35 U.S.C. 302, which are filed on or after January 16, 2018, the entire fee required under 37 CFR 1.20(c)(1) or 37 CFR 1.20(c)(2), as appropriate, must be paid if the request is to be granted a filing date. If the filing fee under 37 CFR 1.20(c)(1) is paid, the request must also comply with all of the requirements set forth in 37 CFR 1.20(c)(1). Similarly, if the filing fee under 37 CFR 1.20(c)(2) is paid, the request must also comply with the requirements set forth in 37 CFR 1.20(c)(2). See subsection I. below for further details.

For ex parte reexamination requests under 35 U.S.C. 302 which were filed before January 16, 2018, the entire filing fee set forth in former 37 CFR 1.20(c)(1), which was in effect on or before January 15, 2018, must have been paid in order for the request to have been granted a filing date.

In addition, regardless of which filing fee is submitted, if the request under 35 U.S.C. 302 is filed by the patent owner and includes a proposed amendment in accordance with 37 CFR 1.530, excess claims fees under 37 CFR 1.20(c)(3) and (c)(4) may also apply; see MPEP § 2250.03.

I. FILING FEE FOR EX PARTE REEXAMINATION REQUESTS FILED ON OR AFTER JANUARY 16, 2018

For ex parte reexamination requests filed on or after January 16, 2018, the Office established a reduced fee, set forth in 37 CFR 1.20(c)(1), for filing a request which has forty (40) or fewer pages and which complies with all of the other requirements of 37 CFR 1.20(c)(1), i.e., a “streamlined” request.

For ex parte reexamination requests filed on or after January 16, 2018 which do not comply with the requirements (A) through (E) of 37 CFR 1.20(c)(1)(i) (such as, e.g., requests having greater than forty (40) pages), but which comply with the provisions of 37 CFR 1.20(c)(2), i.e., a “non-streamlined” request, the fee for filing the request is set forth in 37 CFR 1.20(c)(2).

A.The Filing Fee under 37 CFR 1.20(c)(1)

Requests for ex parte reexamination under 35 U.S.C. 302 filed on or after January 16, 2018, which have forty (40) or fewer pages and which comply with all of the other requirements of 37 CFR 1.20(c)(1), i.e., “streamlined” requests, may be filed with a reduced filing fee set forth in 37 CFR 1.20(c)(1). This reexamination filing option was created to make it financially less burdensome for requesters with limited resources.

A request which is filed under 37 CFR 1.20(c)(1) remains subject to all applicable filing requirements, with the sole exception that the filing fee is reduced. Filing a request that meets the requirements of 37 CFR 1.20(c)(1) does not impact the subsequent reexamination process, including the order in which the case is taken up for action by the examiner. The filing of a request which meets the requirements of 37 CFR 1.20(c)(1) will not cause the prosecution of any resulting reexamination proceeding to be accelerated or prioritized.

See MPEP § 2214, subsection II for a detailed discussion of the requirements under 37 CFR 1.20(c)(1) that a request must meet in order to qualify for the reduced filing fee set forth in the rule.

B.The Filing Fee under 37 CFR 1.20(c)(2)

The filing fee set forth in 37 CFR 1.20(c)(2) applies to a request for reexamination under 35 U.S.C. 302 which does not comply with requirements (A) through (E) of 37 CFR 1.20(c)(1)(i), i.e., a “non-streamlined” request. For example, the filing fee pursuant to 37 CFR 1.20(c)(2) must be paid when submitting a request having greater than forty (40) pages.

To be granted a filing date, a request for which the filing fee set forth in 37 CFR 1.20(c)(2) is paid must also have sufficient clarity and contrast to permit direct reproduction and electronic capture by use of digital imaging and optical character recognition, pursuant to the provisions of 37 CFR 1.20(c)(2).

II. FILING FEE FOR EX PARTE REEXAMINATION REQUESTS FILED BEFORE JANUARY 16, 2018

For ex parte reexamination requests under 35 U.S.C. 302 which were filed before January 16, 2018, the filing fee is set forth in former 37 CFR 1.20(c)(1), which was in effect prior to January 16, 2018.

III. ENTITY STATUS

Pursuant to 37 CFR 1.20(c)(1) and (c)(2), there are different filing fees for a large entity, a small entity and a micro entity, when filing a request for ex parte reexamination under 35 U.S.C. 302. In order for a requester to pay small entity or micro entity fees, a requester must affirmatively state that it is eligible for small entity or micro entity status (respectively). For example, a requester can affirmatively assert small entity status by checking the appropriate box on the transmittal form (PTO/SB/57). However, only a patent owner requester can establish micro entity status. A third party requester cannot establish micro entity status, since a third party requester is not provided for in 37 CFR 1.29. See 37 CFR 1.27 and MPEP §§ 509.02 and 509.03 for more information about establishing small entity status. See 37 CFR 1.29 and MPEP § 509.04et seq. for more information about establishing micro entity status.

IV. INCOMPLETE REQUESTS

If the appropriate filing fee (37 CFR 1.20(c)(1) or 37 CFR 1.20(c)(2)) and any applicable excess claim fees are not paid in their entirety, or if the request fails to meet all of the requirements of the rule governing the filing fee submitted (37 CFR 1.20(c)(1) or 37 CFR 1.20(c)(2)), and all of the requirements of 37 CFR 1.510(a) and (b), the request will be considered to be incomplete. See 37 CFR 1.510(c) and (d) and MPEP § 2227.

Where the entire filing fee and any applicable excess claim fees are not paid after the requester has been given one opportunity to do so (i.e., the defect is not cured), no determination on the request will be made. The request will not be granted a filing date. The request papers will be placed in the patent file as a submission under 37 CFR 1.501 if they comply with the requirements of the rule. See MPEP § 2206 for handling of prior art citations or written statements under 37 CFR 1.501.

V. REFUNDS

If the request for ex parte reexamination under 35 U.S.C. 302 is subsequently denied (see MPEP § 2247 and § 2248), or vacated (see MPEP § 2227 and § 2246, subsection I), a refund in accordance with 37 CFR 1.26(c)(1) will be made to the identified requester. If the request for ex parte reexamination under 35 U.S.C. 302 is found to be incomplete and the defect is not cured (see MPEP § 2227), a refund in accordance with 37 CFR 1.26(a) will be made to the identified requester.

If, on the Request for Ex Parte Reexamination Transmittal Form PTO/SB/57 or an equivalent, the requester checks the box indicating the requester’s intent to submit a reduced filing fee pursuant to 37 CFR 1.20(c)(1), but submits a filing fee pursuant to 37 CFR 1.20(c)(2), the filing fee pursuant to 37 CFR 1.20(c)(2) will be accepted. The requester may file a request for refund accompanied by the reasons why the requester believes that the request meets the requirements for a reduced filing fee pursuant to 37 CFR 1.20(c)(1).

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