USPTO Ends Processing and Retention Practice with New Surcharges for Late Patent Filing Fees

Effective July 1, 2005, The United States Patent and Trademark Office is changing its practice for handling patent applications filed without the appropriate basic filing (or basic national) fee, search fee, and examination fee. The new rules will

1. Require a surcharge under § 1.16(f) ("By a small entity (§ 1.27(a)) - $65.00; By other than a small entity - $130.00 ") in any nonprovisional application filed under 35 U.S.C. 111(a) in which any of the basic filing fee, the search fee, or the examination fee are paid on a date later than the filing date of the application;
2. Require a surcharge under § 1.492(h) ("By a small entity (§ 1.27(a)) - $65.00; By other than a small entity - $130.00") in any application filed under the PCT in which either of the search fee or the examination fee are paid after the date of the commencement of the national stage (§ 1.491(a)); and
3. Eliminate the processing and retention fee (§ 1.21(l)) practice which in the past has permitted an applicant to file an application without the basic filing fee and pay only the processing and retention fee set forth in former § 1.21(l) in order for the application to be used as a basis for foreign filing and benefit claims under 35 U.S.C. 120 and § 1.78(a).
   Thus, the Office is requiring payment of the basic filing fee (rather than just the processing and retention fee set forth in former § 1.21(l)) to retain the application, such as to permit benefit of the application to be claimed under 35 U.S.C. 120 and § 1.78 in a subsequent nonprovisional or international application.

The Office is also implementing a new provision in 35 U.S.C. 41(a)(1)(G) to prescribe the paper size equivalent of an application filed in whole or in part in an electronic medium for purposes of the application size fee specified in 35 U.S.C. 41(a)(1)(G) (§ 1.16(s) and § 1.492(j)):

A 21.6 cm by 27.9 cm (81�2 by 11 inches) sheet of paper
with a top margin of 2.0 cm (3�4 inch), a left side margin of 2.5 cm (1 inch), a
right side margin of 2.0 cm (3�4 inch), and a bottom margin of 2.0 cm (3�4
inch), will contain about 30 lines of text with double line spacing, with each
line having about 50 to 65 characters. An ASCII text (the only format permitted
by § 1.52(e)) document containing 30 lines of text, each line having about 50 to
65 characters, will be slightly less than two kilobytes in size. Since the
Office permits text with a line spacing of 11�2 (notwithstanding that ASCII does
not permit 11�2 line spacing), the Office is providing that each three kilobytes
(rounding up) of content submitted on an electronic medium shall be counted as a
sheet of paper for purposes of the application size fee specified in 35 U.S.C.
41(a)(1)(G) (§ 1.16(s) and § 1.492(j)).

The paper size equivalent of the specification and drawings of an application submitted via the Office electronic filing system will be considered to be seventy-five percent of the number of sheets of paper present in the specification and drawings of the application when entered into the Office file wrapper after being rendered by the Office electronic filing system for purposes of determining the application size fee required by § 1.16(s). Any sequence listing in compliance with § 1.821(c) or (e), and any computer program listing in compliance with § 1.96, submitted via the Office electronic filing system will be excluded when determining the application size fee required by § 1.16(s) if the listing is submitted in ASCII text as

The change to 37 CFR 1.78 applies to any application that claims benefit of an application under 35 U.S.C. 111(a) in which the processing and retention fee in now former 37 CFR 1.21(l) was not paid before July 1, 2005. The change to 37 CFR 1.16(f) applies to any application under 35 U.S.C. 111(a) filed on or after July 1, 2005. The change to 37 CFR 1.492(h) applies to any international application in which the basic national fee was not paid before July 1, 2005.

Click here for the full Final Rule.