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[njiplawyer]

Hi,

The deadline for filing a response to an office action was yesterday, which required the fee for a one month extension of time.  We paid the fee for the one-month extension of time, however we mistakenly paid the small entity fee ($75) and not the large entity fee ($150).  However, we did check the box on the petition form stating that the "Director is hereby authorized to charge any fees which may be required, or credit any overpayment, to Depsit Account Number (our number)."

My questions are as follows:

1)  Procedurally how can we handle this?  Can we just submit a supplemental filing stating that the Director is authorized to charge the difference ($150 - $75 paid = $75 additional) to our deposit account?  Alternatively, do we have to request a refund of the original amount paid ($75) and pay the correct amount ($150)?

2) Because we filed it yesterday, but the fee was wrong, can we still pay the one-month extension fee or will we now have to pay the two-month fee ($560)?  I called the USPTO and got two different answers to this question.  I've been trying to look in the MPEP for a section that covers this, but I've had no luck.  Is anyone aware of a section in the MPEP that discusses this issue?

Thank you so much for your help!!!!!

[JimIvey]

Id' call the USPTO Help Desk or someone in the USPTO -- not the examiner but someone that maintains the application's docket.  Sometimes they'll just tell you to send in a second paper authorizing payment of the difference.

However, my guess is that you'll need to extend for a second month at large entity prices.

First, the paper isn't considered filed until all requisite fees are paid.

Second, the USPTO relies heavily on extension and revival fees for its budget.  When faced with various solutions, the USPTO tends to choose the one with the highest fees.

Regards.

[khazzah]

The deadline for filing a response to an office action was yesterday, which required the fee for a one month extension of time.  We paid the fee for the one-month extension of time, however we mistakenly paid the small entity fee ($75) and not the large entity fee ($150).  However, we did check the box on the petition form stating that the "Director is hereby authorized to charge any fees which may be required, or credit any overpayment, to Depsit Account Number (our number)."

I don't see a problem. The PTO will deduct an extra $75 from the account, as you authorized them to do in case of an underpayment. That's exactly the scenario the preauthorization is intended to cover.

That said, it wouldn't hurt to call the PTO helpdesk to confirm my understanding.

[njiplawyer]

The deadline for filing a response to an office action was yesterday, which required the fee for a one month extension of time.  We paid the fee for the one-month extension of time, however we mistakenly paid the small entity fee ($75) and not the large entity fee ($150).  However, we did check the box on the petition form stating that the "Director is hereby authorized to charge any fees which may be required, or credit any overpayment, to Depsit Account Number (our number)."

I don't see a problem. The PTO will deduct an extra $75 from the account, as you authorized them to do in case of an underpayment. That's exactly the scenario the preauthorization is intended to cover.

That said, it wouldn't hurt to call the PTO helpdesk to confirm my understanding.

The only problem is that we selected "small entity" on the petition form, so the USPTO would have no way of knowing we paid the incorrect fee unless we notify them. 


What I'm considering doing is requesting a refund of the $75 and at the same time submitting a supplemental petition with a payment of the $150 fee.  I'd also add the standard lanugage above in case we need to pay the second month.  What do you think?

[MLM]

The only problem is that we selected "small entity" on the petition form, so the USPTO would have no way of knowing we paid the incorrect fee unless we notify them. 

What I'm considering doing is requesting a refund of the $75 and at the same time submitting a supplemental petition with a payment of the $150 fee.  I'd also add the standard lanugage above in case we need to pay the second month.  What do you think?

Don't request a refund. For one thing, refunds are for overpayments, and you underpaid.

If the applicant status is large entity, and you have not specifically requested a change of status to small entity, then the PTO should assume that you underpaid and should automatically deduct the difference under the preauthorization. Best thing is to call and ask what to do, but I think you should be OK without doing anything. Just check and make sure that they deduct the right amount.

[njiplawyer]

Don't request a refund. For one thing, refunds are for overpayments, and you underpaid.

If the applicant status is large entity, and you have not specifically requested a change of status to small entity, then the PTO should assume that you underpaid and should automatically deduct the difference under the preauthorization. Best thing is to call and ask what to do, but I think you should be OK without doing anything. Just check and make sure that they deduct the right amount.

Well, I'd prefer not to be in a situation where we request to be charged an additional $75 and have to monitor the status to make sure they charge us the extra fee.  Rather than waiting around, I think I'd rather just pay the $150 now and ask for the refund of the original $75.  That way, at least I'll know that the fee has been paid and we don't have to keep monitoring the status of when they will charge us the extra $75.

Also, I did call the USPTO twice regarding the first-month vs. second-month fee issue, and unfortunately I got two seperate answers.  One agent told me we would need to pay the second month fee, the other agent informed me we would only have to pay the first.

[klaviernista]

Don't request a refund. For one thing, refunds are for overpayments, and you underpaid.

not true.  See 37 C.F.R. 1.26(a)(stating, inter alia, "The Director may refund any fee paid by mistake or in excess of that required...."

[klaviernista]

Issues I see:

1)  Did you assert small entity status by paying the small entity extension fee?

A-  I say no.  37 C.F.R. 1.27(c)(3)(ii) specifically states that the payment of a small entity fee other than the basic small enetity filing fee is not considered a written entitlement to small entity status.

2A)  Did you assert small entity status by checking a box on the petition for EOT correlating to small entity?

A-  Maybe yes, maybe no.  37 C.F.R. 1.27 says that small entity status may be established by a written statement that is "clearly identifiable," is "signed" and which "convey(s) the concept of small entity status."  Depending on the text next to the box you checked, it is possible that the petition constituted a written assertion of small entity status.  See MPEP 509.03 ("The written assertion can be made in any paper filed in or with the application and need be no more than a simple sentence or a box checked on an application transmittal letter.")

2B)  If small entity status was asserted improperly, how can that be addressed?

A-  See MPEP 509.03(X) - make sure you include a statement somewhere that the assertion of small entity status was made in error and without deceptive intent

To be continued

[MLM]

Good luck convincing the PTO that an underpayment should be refunded on the basis of "a mistake." They don't even seem to know how to handle this situation themselves, given the different answers you got. Also note the word "may" in the regulations - refunds are discretionary as far as I can tell.

If you really feel that you need to do something, then I would file a statement explaining what happened and re-authorizing the PTO to deduct the necessary fees without actually remitting more money from your deposit account. They should figure out how much is owed (one-month or two-month extension). I say keep an eye on them because you never know what they are going to do or not do. Again, I would not pursue the refund route. Fees paid are generally non-refundable (I get that warning every time), and even where there is an overpayment refunds are not guaranteed. Everyone I've asked about refunds says "good luck with that." Maybe others have a different and better experience. FWIW.

[klaviernista]

3)  If small entity status was not asserted, how can the fee payment issue be addressed?

A-  Through a deposit account charge or via a subsequent submission to the PTO.  I personally would use the former (provided the language authorizing the charge to the deposit account was sufficient), as it will likely result in the PTO charging only the fee required as of the filing of the paper, in your case, a one month EOT fee.  The latter option makes it look like a supplemental paper was required in order to have the appropriate fee paid, which means that the paper was not properly submitted within the earlier deadline and a fee for an additional EOT is required.

Regardless, I would submit some paper to the PTO indicating that the small entity fees were mistakenly paid, that the box correlating to small entity fees on the petition was mistakenly checked, and that such errors were unintentional and were made without deceptive intent.

[njiplawyer]

Issues I see:

1)  Did you assert small entity status by paying the small entity extension fee?

A-  I say no.  37 C.F.R. 1.27(c)(3)(ii) specifically states that the payment of a small entity fee other than the basic small enetity filing fee is not considered a written entitlement to small entity status.

2A)  Did you assert small entity status by checking a box on the petition for EOT correlating to small entity?

A-  Maybe yes, maybe no.  37 C.F.R. 1.27 says that small entity status may be established by a written statement that is "clearly identifiable," is "signed" and which "convey(s) the concept of small entity status."  Depending on the text next to the box you checked, it is possible that the petition constituted a written assertion of small entity status.  See MPEP 509.03 ("The written assertion can be made in any paper filed in or with the application and need be no more than a simple sentence or a box checked on an application transmittal letter.")

2B)  If small entity status was asserted improperly, how can that be addressed?

A-  See MPEP 509.03(X) - make sure you include a statement somewhere that the assertion of small entity status was made in error and without deceptive intent

To be continued

This makes a lot of sense, thank you!  I think the key issue is your question 2A.  What we did was select a check box on form PTO/SB/22 requesting the one-month extension.  On the form there are two columns listing fees, one listing "fee" and the otherlisting "small enttiy fee."  Right next to the columns is a text field for entering in the fee.  We entered the small entity fee in the text field, but we did not check a box stating we were a small entity.  So the answer to question 2A is debatable...but I'm leaning toward answering "no," because we did not affirmately state we are a small sentity.

[trw]

Rather than calling the Help Desk, I'd suggest you call the LIE (i.e., Legal Instrument Examiner -- not to be confused with the Patent Examiner) who handles docketing for the art unit to which your case is assigned.  It's going to take a few phone calls to figure out who the appropriate LIE is, but once you reach that person, you might be able to take care of everything by phone.

[klaviernista]

Rather than calling the Help Desk, I'd suggest you call the LIE (i.e., Legal Instrument Examiner -- not to be confused with the Patent Examiner) who handles docketing for the art unit to which your case is assigned.  It's going to take a few phone calls to figure out who the appropriate LIE is, but once you reach that person, you might be able to take care of everything by phone.

Pretty easy to figure this out.  Just call the examiner, ask him for the LIE's contact information, and voila.  Unless things have changed, each AU has its own set of LIE's, and the Examiners know who they are.

[JimIvey]

Also, I did call the USPTO twice regarding the first-month vs. second-month fee issue, and unfortunately I got two seperate answers.  One agent told me we would need to pay the second month fee, the other agent informed me we would only have to pay the first.

The person you need to reach is the person who will update the status of your case in the USPTO docket database.  That's whose opinion matters. 

Once the correct fees are received and your case status indicates that the ball is on the examiner's side of the net, it's highly unlikely it will every be a problem for you.

Regards.

[NJ Patent1]

Good luck getting a square answer from the help(less) desk.  And, if you do get a comprehensible one, in anyb event it is not "controlling authority".  But, but, but, your Honor the Office said ...   Fugeddaboutit.  You made a simple honest clerical error without deceptive intent.  I made the exact same mistake. twice! Just correct it.  Your application in question has not matured to a patent and this stuff can be corrected.  I filed papers captioned "Authorization to Debit Additional Fees" and explained that, with no deceptive intent, Applicant yada yada yada.  I'm uncomfortable with the idea that authorization to charge all additional fees will cut it.  The Office relied on your (mine too)  representation that client is/was a small entity.  The Office is not even aware that additional fees are due.  Even if the Office doesn't follow-up and debit the additional $, your paper is in the file and, IMO, would militate against any allegation of inequitable conduct wrt underpayment of fees.  Just get it done b4 U get a Notice of Allowance and pay the issue fee.  As much as I rant about the Office, they really are OK people, just overworked and will work with you.