2250.03 Fees for Adding Claims and for Filing a Petition [R-07.2015]
Excess claims fees are applicable to excess claims proposed to be added to a patent by their presentation during a reexamination proceeding. See 37 CFR 1.20(c)(3) and (c)(4). Under “former” 35 U.S.C. 41, excess claims fees were included as part of the “application” filing fee under 35 U.S.C. 41(a)(1), and thus did not apply during reexamination proceedings. The Consolidated Appropriations Act does not include the excess claims as part of the “application” filing fee under 35 U.S.C. 41(a)(1), but separately provides for excess claims fees in 35 U.S.C. 41(a)(2) (as being in addition to the filing fee in 35 U.S.C. 41(a)(1)). 35 U.S.C. 41(a)(2) provides that an excess claims fee is due “on filing or on presentation at any other time” (e.g., during a reexamination proceeding) of an independent claim in excess of three or of a claim (whether independent or dependent) in excess of twenty.
37 CFR 1.20 was amended, effective December 8, 2004, to provide for excess claims fees in a reexamination proceeding. The excess claims fees specified in 37 CFR 1.20(c) apply to all patents, whenever granted. The fees must be submitted for any excess claims presented in a reexamination proceeding on or after December 8, 2004 (no excess claims fee was due under 35 U.S.C. 41 for any claim presented during a reexamination proceeding before December 8, 2004). Even though a reexamination proceeding was commenced prior to December 8, 2004, the excess claims fees are due for any amendment filed on or after December 8, 2004.
When a patent owner presents an amendment to the claims (on or after December 8, 2004) during an ex parte reexamination proceeding, or upon filing of an ex parte reexamination request under 35 U.S.C. 302 (on or after December 8, 2004), excess claims fees may be applicable. If the amendment is limited to revising the existing claims, i.e., it does not provide any new claim, there is no claim fee. The excess claims fees apply only to the submission of new, i.e., “excess” claims.
The excess claims fees specified in 37 CFR 1.20(c) apply to excess claims that result from an amendment as follows:
- (A) The fee designated in 37 CFR 1.20(c)(3) as the independent claims fee must be paid for each independent claim in excess of three and also in excess of the number of independent claims in the patent being reexamined. The amendment must increase the number of independent claims to be more than both of these limits, in order for the “independent excess claims fee” to apply;
- (B) The fee designated in 37 CFR 1.20(c)(4) as the total claims fee must be paid for each claim (whether independent or dependent) in excess of twenty and also in excess of the number of claims in the patent being reexamined. The amendment must increase the total number of claims to be more than both of these limits, in order for the “total excess claims fee” to apply.
The following examples illustrate the application of the excess claims fees in a patent (non-small entity) to be reexamined containing six independent claims and thirty total claims:
- (A) No excess claims fee is due if the patent owner cancels ten claims, two of which are independent, and adds ten claims, two of which are independent.
- (B) The 37 CFR 1.20(c)(3) excess independent claims fee for a seventh independent claim is due if the patent owner cancels ten claims, two of which are independent, and adds ten claims, three of which are independent.
- (C) The 37 CFR 1.20(c)(4) excess total claims fee for a thirty-first claim is due if the patent owner cancels ten claims, two of which are independent, and adds eleven claims, two of which are independent.
- (D) The 37 CFR 1.20(c)(3) excess independent claims fee for a seventh independent claim and the 37 CFR 1.20(c)(4) excess total claims fee for a thirty-first claim are due if the patent owner cancels ten claims, two of which are independent, and adds eleven claims, three of which are independent.
A claim that has been disclaimed under 35 U.S.C. 253 and 37 CFR 1.321(a) as of the date of filing of the request for reexamination is not considered to be a claim in the patent under reexamination for purposes of excess claims fee calculations. The same applies to a claim canceled via a prior reexamination certificate, reissue patent, or certificate of correction.
If, for a response to a non-final Office action, the excess claims fees required by 37 CFR 1.20(c)(3) and (c)(4) are not paid with the presentation of the excess claims, a notice of fee deficiency will be issued as a Notice of Defective Paper In Ex Parte Reexamination. In third party requested reexaminations, a one-month time period will be set in the form PTOL-475 for correction of the defect, i.e., the fee deficiency. In patent owner requested reexaminations (including reexaminations ordered under 35 U.S.C. 257) or Director ordered reexaminations, a two-month time period will be set in form PTO-2311 for correction of the defect, i.e., the fee deficiency. An extension of time to correct the fee deficiency may be requested under 37 CFR 1.550(c). If the unpaid excess claims fees required by 37 CFR 1.20(c)(3) and (c)(4) are not paid within the time period set for response to the Notice, the prosecution of the reexamination proceeding will be terminated under 37 CFR 1.550(e), to effect the “abandonment” set forth in 37 CFR 1.20(c)(5). If the excess claims fees required by 37 CFR 1.20(c)(3) and (c)(4) are not paid with the presentation of the excess claims in a response to a final Office action, the examiner should notify the owner of the fee deficiency in the advisory action.
II. FEES FOR FILING A PETITION IN REEXAMINATION
Pursuant to 37 CFR 1.550(i), a petition in an ex parte reexamination proceeding must be accompanied by the fee set forth in 37 CFR 1.20(c)(6), except for petitions under 37 CFR 1.530(c) to extend the period for response by a patent owner, petitions under 37 CFR 1.550(e) to accept a delayed response by a patent owner, petitions under 37 CFR 1.78 to accept an unintentionally delayed benefit claim, and petitions under 37 CFR 1.530(l) for correction of inventorship in a reexamination proceeding.
Pursuant to 37 CFR 1.20(c)(6), the fee for filing a petition in an ex parte reexamination proceeding, except for those specifically enumerated in 37 CFR 1.550(i) is:
$ 1,940 for a large entity.
$ 970 for a small entity.
$ 485 for a micro entity (available for patent owners only).