1415 Reissue Application and Issue Fees [R-7]

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

The Consolidated Appropriations Act, 2005 (Consolidated Appropriations Act), effective December 8, 2004, provides for a separate reissue application filing fee, search fee, and examination fee during fiscal years 2005 and 2006. For reissue applications filed on or after December 8, 2004, the following fees are required: basic filing fee as set forth in 37 CFR 1.16 (e)(1); 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).

For reissue applications before to December 8, 2004, the following fees are required: basic filing fee as set forth in 37 CFR 1.16 (e)(2); and excess claims fees, if applicable (see subsection III below). No search and examination fees are required for reissue applications filed before December 8, 2004.

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 filed on or after December 8, 2004 but before July 1, 2005, which have been accorded a filing date under 37 CFR 1.53 (b), if the search and/or examination fees are paid on a date later than the filing date of the reissue application, the surcharge under 37 CFR 1.16 (f) is not required. For reissue applications filed on or after July 1, 2005, which have been accorded a filing date under 37 CFR 1.53 (b), if 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 reissue application, the surcharge under 37 CFR 1.16 (f) is required.

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.

II. APPLICATION SIZE FEE

The Consolidated Appropriations Act also provides for an application size fee. 37 CFR 1.16 (s) sets forth the application size fee for reissue applications filed on or after December 8, 2004, 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 does not apply to reissue applications filed before December 8, 2004. 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. The excess claims fees specified in 37 CFR 1.16 (h) and (i) apply to all reissue applications pending on or after December 8, 2004. The excess claims fees specified in 37 CFR 1.16 (h) and (i) apply to any excess claims fee paid on or after December 8, 2004, regardless of the filing date of the reissue application and regardless of the date on which the claim necessitating the excess claims fee payment was added to the reissue application.

Under 35 U.S.C. 41 (a)(2) as amended by the Consolidated Appropriations Act, the number of claims in the original patent is not relevant in determining the excess claims fee for a reissue application.

Example 1:

Applicant filed a reissue application before December 8, 2004, with the same number of claims as in the patent. The patent has more than 3 independent claims and more than 20 total claims. If applicant added one more independent claim in the reissue application by filing an amendment before December 8, 2004, but did not pay for the excess claims fees before December 8, 2004, on or after December 8, 2004, applicant will have to pay for one additional independent claim per the fee set forth in 37 CFR 1.16 (h) and one additional total claim per the fee set forth in 37 CFR 1.16 (i).

Example 2:

Applicant filed a reissue application on or after December 8, 2004, 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 4^th independent claim (one additional independent claim per the fee set forth in 37 CFR 1.16 (h)) and the 21^st claim (one additional total claim per the fee set forth in 37 CFR 1.16 (i)) are required. Under 35 U.S.C. 41 (a)(2) as amended by the Consolidated Appropriations Act, 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 TRANS-MITTAL FORM

The Office has prepared Form PTO/SB/56, Reissue Application Fee Transmittal Form which is designed to assist in the correct calculation of reissue filing fees.

1415.01 Maintenance Fees on the Original Patent [R-7]

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, first paragraph, 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, 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):

(A) Go to the USPTO Intranet (http://ptoweb/ptointranet/index.htm) and select the PALM screen, then the "General Information" screen, type in the patent number and then select the "Fees" screen.
(B) Go to the USPTO Intranet and then the "Revenue Accounting and Management" screen, then the "File History" screen. Then type in the patent number.
(C) Go to the USPTO Internet Site (http://www.uspto.gov) and select "eBusiness," under the "Patents" column select "Status & View Documents," type in the patent number and select the "Fees" screen.
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 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) or appropriate Quality Assurance Specialist (TC QAS) for instructions as to what appropriate action to take.

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.

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. 37 CFR 1.362 (h). Once an original patent reissues, maintenance fees are no longer due in the original patent, but rather the maintenance fees are due in the reissue patent. This is because upon the issuance of the reissue patent, the original patent is surrendered and ceases to exist.

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 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. In such instances, 35 U.S.C. 41 does not provide for the charging of more than one maintenance fee for the multiple reissues. Thus, only one maintenance fee is required for all the multiple reissue patents that replaced the single original patent. The maintenance fee must be directed to the latest reissue patent that has issued.

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