Q) Maintenance Fee Paid / Check Returned

by patentbar on August 19, 2008 · 16 comments

in Exam Questions

One question deals with a maintenance fee that was paid, but the patent was not identified correctly with the payment, so the USPTO mailed the check back. Answer options refer to 37 CFR 1.377. Review of decision refusing to accept and record payment of a maintenance fee filed prior to expiration of patent and 37 CFR 1.378. Acceptance of delayed payment of maintenance fee in expired patent to reinstate patent.

I chose the answer option based on 37 CFR 1.5. Identification of patent, patent application, or patent-related proceeding that covers mail returned by the USPTO for not identifying an application (not sure if correct) [Edit: see MPEP 2580].

Any correspondence not containing such identification will be returned to the sender where a return address is available. The returned correspondence will be accompanied with a cover letter which will indicate to the sender that if the returned correspondence is resubmitted to the Patent and Trademark Office within two weeks of the mail date on the cover letter, the original date of receipt of the correspondence will be considered by the Patent and Trademark Office as the date of receipt of the correspondence.

§ 1.377 Review of decision refusing to accept and record payment of a maintenance fee filed prior to expiration of patent. (a) Any patentee who is dissatisfied with the refusal of the Patent and Trademark Office to accept and record a maintenance fee which was filed prior to the expiration of the patent may petition the Director to accept and record the maintenance fee. (b) Any petition under this section must be filed within two months of the action complained of, or within such other time as may be set in the action complained of, and must be accompanied by the fee set forth in § 1.17(g). The petition may include a request that the petition fee be refunded if the refusal to accept and record the maintenance fee is determined to result from an error by the Patent and Trademark Office. (c) Any petition filed under this section must comply with the requirements of § 1.181(b) and must be signed by an attorney or agent registered to practice before the Patent and Trademark Office, or by the patentee, the assignee, or other party in interest.

MPEP 2580: “This petition [under §1.377] may be used, for example, in situations where an error is present in the identifying data required by 37 CFR 1.366(c) with the maintenance fee payment, i.e., either the patent number or the application number * >is< incorrect.” However, “A petition under 37 CFR 1.377 would not be appropriate where the patentee paid a maintenance fee on one patent when the patentee intended to pay the maintenance fee on a different patent but through error identified the wrong patent number and application number.”

{ 16 comments… read them below or add one }

1 John DoeNo Gravatar April 8, 2009 at 1:30 pm

Had a maintenance fee question where the check was mailed without ANY identifying information for the patent so the check was not applied. In this situation (no information whatsoever) I don’t believe you can use 1.377 . I think all but one answer discussed what needed to be filed to complete the 1.377 petition.

Reply

2 PHOSITANo Gravatar March 10, 2011 at 2:45 pm

John Doe seems correct per MPEP 2580 :
“A petition under 37 CFR 1.377 would not be appropriate where there is a complete failure to include at least one correct mandatory identifier as required by 37 CFR 1.366(c) for the patent since no evidence would be present as to the patent on which the maintenance fee was intended to be paid.”

Reply

3 SNo Gravatar June 5, 2010 at 6:40 am

I got this yesterday.

1.377:
(c)
Any petition filed under this section must comply with the requirements of § 1.181(b) and must be signed by an attorney or agent registered to practice before the Patent and Trademark Office, or by the patentee, the assignee, or other party in interest.

Reply

4 StuffNo Gravatar October 12, 2010 at 11:15 pm

37 CFR 1.366. Submission of maintenance fees.

(c) “… If the payment includes identi- fication of only the patent number (i.e., does not identify the application number of the United States application for the patent on which the maintenance fee is being paid), the Office may apply the payment to the patent identified by patent number in the payment or may return the payment.”

The PTO “may” return the payment if the submission is not properly identified.

Reply

5 AnneNo Gravatar January 19, 2011 at 9:58 pm

Got this one today. One of the answer choice was you cannot use 1.377 where there is not any mandatory numerical identifier, as Jon Doe said above.

Reply

6 RodneyNo Gravatar January 25, 2011 at 5:26 pm

I got the same question as Anne today on my exam

Reply

7 ELSNo Gravatar March 7, 2011 at 12:21 pm

Had this question yesterday.

Reply

8 patenttipsNo Gravatar March 17, 2011 at 4:08 pm

Complete failure, basically you sent a blank check to PTO, means you’re SOL.

If you mess up something, but you tried, and payment was returned, then you can petition within 2 months.

My only question is do you still need to petition if you reply to returned check within two weeks (See original comments that give a 2 week period for reply). Hence replies from returned check 0 – 2 weeks are ok, 2 weeks – 2 months require petition. If you wrote the blank check or >2 months then you lost your patent.

Reply

9 InterenNo Gravatar March 31, 2011 at 7:31 pm

I don’t think 37 CFR 1.5a applies to maintenance fee submission, since it concerns a application instead of a patent. On the contrary, CFR 1.5b specifies to follow 1.366c for maintenance fee payment. So no 2-weeks clause here.

Reply

10 JamieNo Gravatar July 20, 2012 at 11:34 am

In my personal opinion, 1.5 is related to what to be identified in correspondence. 1.5a is for application while 1.5b is for patent other than maintenance fee. 1.366c is for maintenance fee. 1.5d is for reexam proceeding. Therefore, 2 weeks clause might be available for maintenance fee.
Or, we can interpret that 2 weeks clause is only for 1.5a?
These two might be possible interpretations.

11 OverworkkedNo Gravatar April 28, 2011 at 2:42 pm

I had this question on 4/27/2011 with very sparse facts that added extra facts in the answer:

QUESTION:

Patentee Z had maintenance payment due. Sent check. PTO did not credit Z’s patent.

Which does or does not comply with the MPEP, laws, regulations, etc.?

A. something
B. something else
C. Any petition filed under this section 1.377 must comply with the requirements of § 1.181(b) and must be signed by an attorney or agent registered to practice before the Patent and Trademark Office, or by the patentee, the assignee, or other party in interest. (Important to know if TRUE)
D. something else
E. Must pay Maintenance Fee before expiration but can pay surcharge later (False, must pay both up front per ??).

MPEP on Maint.Fees was important
so was CFR 1.377

Reply

12 ENo Gravatar November 19, 2011 at 10:28 am

I’m confused about E.

37 CFR 1.378. Acceptance of delayed payment of maintenance fee in expired patent to reinstate patent.
(a)The Director may accept the payment of any maintenance
fee due on a patent after expiration of the patent if, upon petition, the delay in payment of the maintenance fee is shown to the satisfaction of the Director to have been unavoidable (paragraph
(b) of this section) or unintentional (paragraph (c) of this section) and if the surcharge required by § 1.20(i) is paid as a condition
of accepting payment of the maintenance fee.

So you can pay the maintenance fee and surcharge after expiration?

Reply

13 jacquiegardnerNo Gravatar May 3, 2011 at 7:12 pm

Got this question today. Pretty sure I got the right answer, C.

Reply

14 maggieNo Gravatar October 19, 2011 at 8:12 pm

petition [under §1.377] refusal of maintenance fee
1. Must be filed within two months of the action complained
2. Must include the patent number, AND application number, if not both may or may not be entered –> option to Petition director 1.377
3. Petition is NOT appropriate where there is a (1) complete failure to include at least one correct mandatory identifier (2) through error identified the wrong patent number and application number (3) Insufficient payment
4. Petition is ok (appropriate) when either the patent number or the application number is incorrect.

Reply

15 BagelmanNo Gravatar January 20, 2012 at 12:02 pm

Got this on 1/18/12/.

Reply

16 TheGhostOfBilskiNo Gravatar April 10, 2012 at 11:47 pm

4/6/2012

Reply

Leave a Comment

Previous post:

Next post: