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.
USC 35 151 states as follows:
“If any payment required by this section is not timely made, but is submitted with the fee for delayed payment and the delay in payment is shown to have been unavoidable, it may be accepted by the Director as though no abandonment or lapse had ever occurred.”
Jill has a fire in her office so I would have thought that the delay would have been unavoidable, in which case she is able to submit late. Is that not true? I guess, if she retrieved the docs on the day they were due she could still mail them in accordance with 37 1.8 and 1.10.
Any thoughts?
GDB,
Sadly, in Jill’s case, because she is responding to a Notice of Allowance (which falls under 1.311(b), she only gets 3 months to reply. That’s it, that 3 months is NEVER extendable, for any reason, and thus, 35 USC 151 cannot be applied).
The fire information is included to try and divert your attention away from the “real” problem. Instead of looking at it from Jills perspective, put yourself in the examiner’s shoes. They demand a response by “X” date, and this date, is NOT extendable, for ANY reason. Period. Thus, IF, response is not given by “X” date, the mailing is considered untimely, and her app is abandoned. Period.
37 CFR 1.311 states:
“The notice of allowance shall specify a sum constituting the issue fee which must be paid within three months from the date of mailing of the notice of allowance to avoid abandonment of the application. The sum specified in the notice of allowance may also include the publication fee, in which case the issue fee and publication fee (§ 1.211(e)) must both be paid within three months from the date of mailing of the notice of allowance to avoid abandonment of the application. This three-month period is not extendable.”
now, let’s say (for the sake of argument) she “could” extend the time.
1) Noting in the letter mentioned that she had had an unavoidable delay. this is all we know about the letter she sent:
–> 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
(so, you would be tempted to chose (C) as the answer, right? Again, sadly, the 3 month time period as set under 1.311 is NEVER extendable, for any reason…including an office fire.)
So, you are “correct” in that an office fire, under other circumstances, would be a valid reason for an unavoidable delay. but, because she is responded to a NoA, she’s out of luck.
Thanks Bfusion!
Actually, reading 151 again, which relates to notices of allowances and issue fees, it states that the director CAN grant the patent for an unavoidable delay. But as you say, here there doesn’t seem to be an unavoidable delay, so it’s irrelevant!