The USPTO has published a notice explaining the procedures for obtaining a refund for extra-fees paid by patent applicants and others during its recent “significant unplanned electronic business system outage.”
An application filed by the alternative electronic means prescribed in this notice during a designated significant unplanned electronic business system outage will be considered to have been filed by the USPTO’s electronic filing system, and thus will not incur the fee required by section 10(h) of the Leahy-Smith America Invents Act for a patent application not filed by the USPTO’s electronic filing system.
The basics for a refund:
- File a copy of the application via EFS-Web (or the “Patent Center”) as a “follow-on paper in the application.”
- The EFS-Web application must include a statement that it is a “true copy of the original application as filed by the alternative filing method during the designated significant unplanned electronic business system outage.
Timing:
- The copy of the application should not be filed until applicant has received either a filing receipt or other USPTO notice identifying the application number assigned to the application.
- The copy must be then filed within “(1) One month from the date a filing receipt is first issued for the application, and be accompanied by a request for refund, if the non-electronic filing fee has been paid; or (2) the expiration of the period for reply to a notice requiring payment of the non-electronic filing fee (e.g., a notice to file missing parts under 37 CFR 1.53(f)) if the non-electronic filing fee has not been paid.”
Read the notice here: https://www.federalregister.gov/documents/2018/08/30/2018-18897/filing-patent-applications-electronically-during-designated-significant-outages-of-the-united-states
Outrageous. You know which applications came in that way. Just refund the fee! You shouldn’t have even required the fee. Why must we do extra work to get back money you should not have required in order to work around a problem you caused!
Any law firm willing to charge less than the refund amount to file the necessary paperwork to get the refund? I doubt the USPTO will recieve many requests.
OPLA is not intending to refund fees spent to save applications that would have become abandoned due to a 6 month statutory bar date being on an outage date in instances where an action (prepared by an examiner) would have been given a mailing data in that period had PAIR operated correctly (and hence preventing statutory abandonment). The USPTO’s view of the outage is short-sighted.
Wait, you were counting on an examiner’s action to save you from a statutory bar? That sounds like a risky move under any circumstances.
Not quite, the comment says “fees spent”, these days, USPTO cannot be trusted. From USPTO, finality withdrawn, approved by SPE, non-final office action completed and in the pipeline (visible in USPTO’s internal view) – but could not get a mailing date due to PAIR outage.
Ah, got it. So you got stuck with an RCE fee AND a 3-month extension of time. Ouch.
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