607 Filing Fee [R-07.2022]

Created On
byChhabra Law Firm

Patent application filing fees are set in accordance with 35 U.S.C. 41 and the Fee Setting Authority set forth in section 10 of Public Law 112-29, September 16, 2011 (the Leahy-Smith America Invents Act). The fee amounts are available from the USPTO’s website at www.uspto.gov/Fees.

I. BASIC FILING, SEARCH, AND EXAMINATION FEES

For nonprovisional applications filed under 35 U.S.C. 111(a) on or after December 8, 2004 (including reissue applications), the following fees are required: basic filing fee as set forth in 37 CFR 1.16(a), (b), (c) or (e); search fee as set forth in 37 CFR 1.16(k), (l), (m), or (n); examination fee as set forth in 37 CFR 1.16(o),(p), (q), or (r) ; application size fee as set forth in 37 CFR 1.16(s), if applicable (see subsection II. below); excess claims fees as set forth in 37 CFR 1.16(h), (i), or (j), if applicable (see subsection III. below); and non-electronic filing fee as set forth in 37 CFR 1.16(t), if applicable (see subsection IV. below).

The basic filing, search and examination fees are due on filing of the nonprovisional application under 35 U.S.C. 111(a). These fees may be paid on a date later than the filing date of the 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 provisional applications filed under 35 U.S.C. 111(b), the basic filing fee set forth in 37 CFR 1.16(d) is required. The basic filing fee is due on filing of the provisional application, but may be paid later, if paid within the time period set forth in 37 CFR 1.53(g) and accompanied by payment of a surcharge as set forth in 37 CFR 1.16(g).

For international applications entering the national stage under 35 U.S.C. 371, see 37 CFR 1.492 for the required fees. See also MPEP § 1893.01(c). For international design applications under 35 U.S.C. 385, see 37 CFR 1.1031 for the required fees.

See also MPEP § 1415 for reissue application fees.

II. APPLICATION SIZE FEE

The application size fee set forth in 37 CFR 1.16(s) applies to any application (including any provisional applications and any reissue applications) filed under 35 U.S.C. 111 the specification (including claims) and drawings of which exceed 100 sheets of paper. The calculation of the application size fee required excludes any American Standard Code for Information Interchange (ASCII) plain text file or any eXtensible Markup Language XML file (as applicable) submitted on read-only optical disc or via the USPTO patent electronic filing system for any “Sequence Listing,” any computer readable form (CRF) of a “Sequence Listing,” any “Sequence Listing XML,” or a “Computer Program Listing Appendix.” See 37 CFR 1.52(f). The application size fee applies for each additional 50 sheets or fraction thereof over 100 sheets of paper. A preliminary amendment that is present on the filing date of the application is part of the original disclosure of the application. See MPEP § 714.01(e), subsection II. Thus, the Office will count the pages of a preliminary amendment present on the filing date of the application, including multiple sets of drawings or multiple sets of a specification, e.g., clean and marked-up versions, in determining the application size fee required. Accordingly, the Office does not recommend filing a substitute specification or multiple sets of drawings with the initial filing of the application. The Office will not count the sheets of paper making up any English translation of a non-English language specification if submitted with the application on filing. However, if the originally-filed application papers did not comply with 37 CFR 1.52, any papers filed to comply with 37 CFR 1.52 (if the page count of such papers is larger than the page count of the initial submission) will be counted for the purpose of determining the application size fee due, in place of the originally-filed specification and drawings. Any “Sequence Listing” or CRF of a “Sequence Listing” in compliance with 37 CFR 1.821(c) or (e) and any “Computer Program Listing Appendix” in compliance with 37 CFR 1.96(c) submitted on a read-only optical disc under 37 CFR 1.52(e) or submitted in an ASCII plain text file via the USPTO patent electronic filing system will be excluded when determining the application size fee required by 37 CFR 1.16(s). Any “Sequence Listing XML” on a read-only optical disc or submitted via the USPTO patent electronic filing system in compliance with 37 CFR 1.831(a) will be excluded when determining the application size fee required by 37 CFR 1.16(s). See 37 CFR 1.52(f)(1) and (2).

For purposes of determining the application size fee required by 37 CFR 1.16(s), for an application component submitted in part on a read-only optical disc in compliance with 37 CFR 1.52(e), excluding any ASCII plain text file or XML file (as applicable) of any “Sequence Listing” or CRF of a “Sequence Listing” in compliance with 37 CFR 1.821(c) or (e), any “Computer Program Listing Appendix” in compliance with 37 CFR 1.96(c), or any “Sequence Listing XML” in compliance with 37 CFR 1.831(a), each three kilobytes of content submitted on a read-only optical disc shall be counted as a sheet of paper. See 37 CFR 1.52(f)(1).

The paper size equivalent of the specification (including claims) and drawings of an application submitted via the USPTO patent electronic filing system will be considered to be seventy five percent of the number of sheets of paper present in the specification (including claims) and drawings of the application when entered into the Office file wrapper after being rendered by the USPTO patent electronic filing system for purposes of computing the application size fee required by 37 CFR 1.16(s). Any “Sequence Listing” or CRF of a “Sequence Listing” in compliance with 37 CFR 1.821(c) or (e) and any “Computer Program Listing Appendix” in compliance with 37 CFR 1.96(c), submitted via the USPTO patent electronic filing system will be excluded when determining the application size fee required by 37 CFR 1.16(s) if the listing is submitted in ASCII plain text as part of an associated file of the application. Any “Sequence Listing XML” in compliance with 37 CFR 1.831(a) submitted via the USPTO patent electronic filing system will be excluded when determining the application size fee required by 37 CFR 1.16(s) if the listing is submitted in XML file format as part of an associated file of the application. See 37 CFR 1.52(f)(1). “Sequence Listings” or computer program listings submitted via the USPTO patent electronic filing system in Portable Document Format (PDF) as part of the specification or as Tagged Image File Format (TIFF) drawing files would not be excluded when determining the application size fee required by 37 CFR 1.16(s).

For information on oversized submissions of a “Sequence Listing” or a “Sequence Listing XML” under 37 CFR 1.52(f)(3), see MPEP § 2422.03et seq.

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 any excess claims fee paid, regardless of the filing date of the application and regardless of the date on which the claim necessitating the excess claims fee payment was added to the application.

The excess claims fees specified in 37 CFR 1.16(h) and (i) also apply to all reissue applications. Under 35 U.S.C. 41(a)(2), the claims in the original patent are not taken into account in determining the excess claims fee for a reissue application. The excess claims fees specified in 37 CFR 1.16(h) and (i) are required for each independent claim in excess of three that is presented in a reissue application and for each claim (whether independent or dependent) in excess of twenty that is presented in a reissue application.

Fees for a proper multiple dependent claim are calculated based on the number of claims to which the multiple dependent claim refers, 37 CFR 1.75(c), and a separate fee is required in each application containing a proper multiple dependent claim. See 37 CFR 1.16(j). For an improper multiple dependent claim, the fee charged is that charged for a single dependent claim. See MPEP § 608.01(n) for multiple dependent claims.

For nonprovisional applications filed under 35 U.S.C. 111(a) without claims, if more than three independent claims, more than twenty total claims, or a multiple dependent claim, are presented in the application, the excess claims fee as set forth in 37 CFR 1.16(h), (i), and/or (j) is due when the excess claims are presented in the application.

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.

Amendments before the first action, or 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 fee due, will not be entered in whole or in part and applicant will be so advised. Such amendments filed in reply to an Office action will be regarded as not responsive thereto and the practice set forth in MPEP § 714.03 will be followed.

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. The amendment of a claim, unless it changes a dependent claim to an independent claim or adds to the number of claims referred to in a multiple dependent claim, and the replacement of a claim by a claim of the same type, unless it is a multiple dependent claim which refers to more prior claims, do not require any additional fees.

For purposes of determining the fee due the U.S. Patent and Trademark Office, a claim will be treated as dependent if it contains reference to one or more other claims in the application. A claim determined to be dependent by this test will be entered if the fee paid reflects this determination.

Any claim which is in dependent form but which is so worded that it, in fact, is not a proper dependent claim, as for example it does not include every limitation of the claim on which it depends, will be required to be canceled as not being a proper dependent claim; and cancellation of any further claim depending on such a dependent claim will be similarly required. The applicant may thereupon amend the claims to place them in proper dependent form, or may redraft them as independent claims, upon payment of any necessary additional fee.

After a requirement for restriction, nonelected claims will be included in determining the fees due in connection with a subsequent amendment unless such claims are canceled.

An amendment canceling claims accompanying the papers constituting the 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 response to a Notice To File Missing Parts of Application that required the fees set forth in 37 CFR 1.16, which preliminary amendment cancels or adds claims, will be taken into account in determining the appropriate fees due in response to the Notice To File Missing Parts of Application. No refund will be made for claims being canceled in the response that have already been paid for.

The additional fees, if any, due with an amendment are required prior to any consideration of the amendment by the examiner.

Money paid in connection with the filing of a proposed amendment will not be refunded by reason of the nonentry of the amendment. However, unentered claims will not be counted when calculating the fee due in subsequent amendments.

Amendments affecting the claims cannot serve as the basis for granting any refund. See MPEP § 607.02 subsection V for refund of excess claims fees.

Excess claims fees set forth in 37 CFR 1.20(c)(3) and (c)(4) apply to excess claims that are presented during a reexamination proceeding.

IV. NON-ELECTRONIC FILING FEE

Section 10(h) of Public Law 112-29, September 16, 2011 (the Leahy-Smith America Invents Act) provides that an additional fee of $400 ($200 for a small entity) shall be established for each application for an original (i.e., non-reissue) patent, except for a design, plant, or provisional application, not filed by electronic means. See 37 CFR 1.16(t) for the non-electronic fee applicable to applications under 35 U.S.C. 111(a) filed on or after November 15, 2011 other than by the USPTO patent electronic filing system. See 37 CFR 1.445(a)(1)(ii) for the non-electronic filing fee portion of the transmittal fee due in an international application filed with the USPTO as receiving Office on or after November 15, 2011.

V. APPLICANT DOES NOT SPECIFY FEES TO WHICH PAYMENT IS TO BE APPLIED

In situations in which a payment submitted for the fees due on filing in a nonprovisional application filed under 35 U.S.C. 111(a) is insufficient and the applicant has not specified the fees to which the payment is to be applied, the Office will apply the payment in the following order until the payment is expended:

In situations in which a payment submitted for the fees due on filing in a provisional application filed under 35 U.S.C. 111(b) is insufficient and the applicant has not specified the fees to which the payment is to be applied, the Office will apply the payment in the following order until the payment is expended:

See also MPEP § 509.

Since the basic filing fee, search fee, and examination fee under the patent fee structure are often referred to as the “filing fee,” the Office will treat a deposit account authorization to charge “the filing fee” as an authorization to charge the applicable fees under 37 CFR 1.16 (the basic filing fee, search fee, examination fee, any excess claims fee, and any application size fee) to the deposit account. The Office will also treat a deposit account authorization to charge “the basic filing fee” as an authorization to charge the applicable basic filing fee, search fee, and examination fee to the deposit account. Any deposit account authorization to charge the filing fee but not the search fee or examination fee must specifically limit the authorization by reference to one or more of paragraphs (a) through (e) of 37 CFR 1.16. See MPEP § 509.01.