USPTO Issues Search Fee Refund Rules

On March 10, 2006, the U.S. Patent and Trademark Office issued rules to implement the provisions for refunding the search fee for applicants who file a written declaration of express abandonment before an examination has been made of the application. The changes in this final rule apply to any patent application filed under 35 U.S.C. 111(a) 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.

According to the USPTO's comments,

A petition under § 1.138(d) will be granted [only] if it was filed before
an examination has been made of the application . . . . An ‘‘examination
has been made of the application’’ for purposes of § 1.138(d) once an action
(e.g., restriction or election of species requirement, requirement for
information under § 1.105, first Office action on the merits, notice of
Allowability or allowance, or action under Ex parte Quayle, 1935 Dec. Comm’r
Pat. 11 (1935)) is shown in PALM as having been counted.
For purposes of § 1.138(d), ‘‘before’’ means occurring earlier in time, in that if a petition under § 1.138(d) is filed and an action is counted on the same day, the petition under § 1.138(d) was not filed before an examination has been made of the application. In addition, the date indicated on any certificate of mailing or transmission under § 1.8 will not be taken into account in determining whether a petition under § 1.138(d) was filed before an examination has been made of the application.

The Patent Application Locating and Monitoring (PALM) system maintains computerized contents records of all patent applications and reexamination proceedings. The PALM system will show a status higher than 031 once an action has been counted. If the status of an application as shown in PALM is higher than 031 before or on the day that the petition under § 1.138(d) was filed, the petition under § 1.138(d) will be denied and the search fee and excess claims fee will not be refunded. The Patent Application Information Retrieval (PAIR) system is a system that provides public access to PALM for patents and applications that have been published.