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Author Topic: Any impact on patent if PTO fails to charge required claim fees?  (Read 630 times)

JV

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Kind of an unusual situation - I came across a recently issued patent by a competitor.  18 claims total, only one independent claim, but: claim 17 is a multiply dependent claim of the "according to any of the preceding claims" type (yes the priority application was an EPO app) and claim 18 depends from 17.  So by my math, the applicant should have been charged for 28 extra claims (claims 17 and 18 each count as 16 claims, so a total of 48 claims).  No extra claims fees were charged or paid.  That leads me to wonder - is there any impact at all on the patent?  Or did the applicant simply get away with a deal?
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Peacefulness

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Kind of an unusual situation - I came across a recently issued patent by a competitor.  18 claims total, only one independent claim, but: claim 17 is a multiply dependent claim of the "according to any of the preceding claims" type (yes the priority application was an EPO app) and claim 18 depends from 17.  So by my math, the applicant should have been charged for 28 extra claims (claims 17 and 18 each count as 16 claims, so a total of 48 claims).  No extra claims fees were charged or paid.  That leads me to wonder - is there any impact at all on the patent?  Or did the applicant simply get away with a deal?
It doesn't impact the validity of the patent itself.  Might I ask what the patent number of this case is?  How do you know how many claims the applicant was charged for this application, now issued patent?
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MYK

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Kind of an unusual situation - I came across a recently issued patent by a competitor.  18 claims total, only one independent claim, but: claim 17 is a multiply dependent claim of the "according to any of the preceding claims" type (yes the priority application was an EPO app) and claim 18 depends from 17.  So by my math, the applicant should have been charged for 28 extra claims (claims 17 and 18 each count as 16 claims, so a total of 48 claims).  No extra claims fees were charged or paid.  That leads me to wonder - is there any impact at all on the patent?  Or did the applicant simply get away with a deal?
It doesn't impact the validity of the patent itself.  Might I ask what the patent number of this case is?  How do you know how many claims the applicant was charged for this application, now issued patent?
Public PAIR IFW?

Payment of improper small entity status fees can be used to invalidate a patent, at least when the error was not made in good faith.  I haven't heard of anything similar regarding number of claims, but I could see the issue at least being raised during litigation, and after McKesson, who really knows what will honk off a CAFC judge.
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"The life of a patent solicitor has always been a hard one."  Judge Giles Rich, Application of Ruschig, 379 F.2d 990.

Disclaimer: not only am I not a lawyer, I'm not your lawyer.  Therefore, this does not constitute legal advice.

Robert K S

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Somewhere in my files I think I have a CAFC (or predecessor court) opinion that holds, among other things, that rule or Patent Office procedure violations, even if not caught by the PTO during prosecution, are not grounds for invalidity or unenforceability.  I can't seem to find it.  Anybody know what I'm talking about?
« Last Edit: 10-09-17 at 11:42 am by Robert K S »
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This post is made in the context of professional discussion of general patent law issues and nothing contained herein may be construed as legal advice.

OhioStateJD

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Magnivision, Inc. v. Bonneau Co., 115 F. 3d 956, 960 (Fed. Cir. 1997) (“Procedural lapses during examination, should they occur, do not provide grounds of invalidity.  Absent proof of inequitable conduct, the examiner's or the applicant's absolute compliance with the internal rules of patent examination becomes irrelevant after the patent has issued.”).
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Robert K S

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Thanks, OhioStateJD!
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This post is made in the context of professional discussion of general patent law issues and nothing contained herein may be construed as legal advice.
 



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