16. Jill, a registered patent agent, receives a Notice of Allowance from the USPTO
with a mail date of November 13, 2001, regarding a utility patent application for an
improved garden hose which she had filed on behalf of one of her small entity clients.
The Notice of Allowance specifies a sum that must be paid within three months of the
mailing date to avoid abandonment. The sum specified includes both the issue fee and
the publication fee. As a result of a small fire in her office building, Jill is unable to
resurrect her files until the last day of the three month period. Jill mails a letter to the
USPTO on February 13, 2002 using the U.S. Postal Service. Jill does not employ the
procedures of 37 CFR 1.8 or 1.10 to mail the letter. The letter is received in the USPTO
on February 15, 2002. The letter correctly identifies the application. The letter
authorizes the USPTO to charge the proper issue fee for a small entity to her deposit
account. The account has been identified in a previously filed authorization to charge
fees. At the time the letter was filed in the USPTO, the account had a balance of
$1000.00 in funds. Nothing in the letter authorized payment of the publication fee, no
petition for an extension of time was filed, and an Office-provided issue fee transmittal
form was not filed. No postal emergency was involved in filing the letter. Which of the
following statements accords with proper USPTO practice and procedure?
(A) The application will become abandoned because Jill did not authorize
payment of the publication fee.
(B) The application will not become abandoned because the authorization to
charge fees operates as a request to charge the correct fees to any deposit
account identified in a previously filed authorization to charge fees.
(C) The application will become abandoned because Jill’s letter did not
include a petition for an extension of time accompanied by the proper fee.
(D) The application will become abandoned because a completed Officeprovided
issue fee transmittal form, PTOL-85B, did not accompany Jill’s
letter.
(E) The application will become abandoned because Jill’s letter was not
timely filed in the USPTO and it was not mailed in accordance with the
provisions of 37 CFR 1.8 or 1.10.
16. ANSWER: (E) is correct. A communication mailed within the time given for response in
accordance with the procedure of 37 C.F.R. § 1.8 or 1.10 is considered timely filed even if it is
received after the date a reply is due. In (E), the letter was not mail in accordance with 37
C.F.R.§ 1.8 or 1.10. Therefore, the letter would be considered filed when it is received in the
USPTO. 37 C.F.R. § 1.311(a) states, “This three month period is not extendable.” Without
complying with 37 C.F.R. § 1.8 or 1.10, the filing date of the letter is the date it was received in
the USPTO, i.e., February 15, 2002, which is after the due date for payment of the issue fee,
February 13, 2002. (A) is wrong because the reason given for abandonment is incorrect. The
application becomes abandoned for the reasons expressed in (E). Although 37 C.F.R. § 1.311(b)
provides that the submission of an incorrect issue fee (or other post-allowance fees set forth in 37
C.F.R. § 1.18) operates as a request to charge the correct issue fee, it does not change the fact
that Jill’s letter is received by the USPTO after expiration of the non-extendable statutory three
month period for payment of the issue fee. (B) is wrong because the application will become
abandoned because Jill’s letter will be received by the USPTO after expiration of the nonApril
extendable statutory three month period. (C) is wrong because the period for payment of the
issue fee was not extendable by petition. The period is set by statute. 35 U.S.C. § 151.
Abandonment occurred because Jill’s letter was received by the USPTO after expiration of the
non-extendable statutory three month period. A petition for an extension of time was not
available in this case. (D) is wrong because the reason for abandonment is wrong. Filing the
form is optional. Although 37 C.F.R. § 1.311(b) provides that the submission of a completed
Office-provided issue fee transmittal form, PTOL-85B, operates as a request to charge the
correct issue fee (or other post-allowance fees set forth in 37 C.F.R. § 1.18) to any deposit
account identified in a previously filed authorization to charge fees, it does not change the fact
that Jill’s letter was received by the USPTO after expiration of the non-extendable statutory three
month period.
