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 New appeals fees regime and 37 CFR 41.20? 
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Patent Practitioner

Joined: 2011-12-24 18:23:00
Posts: 104
Can anyone explain the new appeals fees regime and 37 CFR 41.20?

This is with special reference to this notice currently being mailed out by the USPTO:
http://www.uspto.gov/aia_implementation ... _22713.pdf

In particular, what is this "forwarding fee" and who owes it and when? Does the fee under (b)(4) get charged whenever the examiner sends your appeal up to the PTAB?

37 CFR 41.20 reads:

§ 41.20 Fees.

(a) Petition fee. The fee for filing a petition under this part is: $ 400.00.

(b) Appeal fees.

(1) For filing a notice of appeal from the examiner to the Patent Trial and Appeal Board:
By a micro entity (§ 1.29) $ 200.00
By a small entity (§ 1.27(a)) 400.00
By other than a small or micro entity 800.00

(2)(i) For filing a brief in support of an appeal in an application or ex parte reexamination proceeding: $ 0.00.
(ii) In addition to the fee for filing a notice of appeal, for filing a brief in support of an appeal in an inter partes reexamination proceeding:
By a micro entity (§ 1.29) $ 500.00
By a small entity (§ 1.27(a)) 1,000.00
By other than a small or micro entity 2,000.00

(3) For filing a request for an oral hearing before the Board in an appeal under 35 U.S.C. 134:
By a micro entity (§ 1.29) $ 325.00
By a small entity (§ 1.27(a)) 650.00
By other than a small or micro entity 1,300.00

(4) In addition to the fee for filing a notice of appeal, for forwarding an appeal in an application or ex parte reexamination proceeding to the Board:
By a micro entity (§ 1.29) $ 500.00
By a small entity (§ 1.27(a)) 1,000.00
By other than a small or micro entity 2,000.00

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2013-03-11 13:11:50
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Joined: 2012-06-24 07:31:51
Posts: 33
Hi,

Just as I understand it (no guarantee):

File a Notice of Appeal: $800 (or less if small or micro entity)
You can fila a PABR along with the Notice of Appeal without having to pay a fee.

If you have to file an Appeal Brief this also goes without any fee.
Then the Examiner reads your Brief and he may reopen prosecution without the Brief having to be forwarded to the Board.

If he does not reopen prosecution, he writes an answer regarding your Appeal Brief.

You may then withdraw the application from the appel procedure by abandoning it or by filing an RCE together with an amendment (assumed the examiners arguments for rejection are now persuasive to you).

You may, however, file a Reply Brief regarding the answer of the examiner.
Your Appeal Brief, the examiners answer and your Reply Brief then go before the Board, but at this time you have the forwarding fee of $2000 (or less if small or micro entity).

Here is an explanation of the procedure, albeit without addressing the forwarding fee in detail:

http://www.aipla.org/learningcenter/lib ... Lpaper.pdf

Regards,
Gerd


2013-10-06 11:39:21
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Joined: 2011-12-26 16:53:41
Posts: 117
Gerd wrote:
Hi,

File a Notice of Appeal: $800 (or less if small or micro entity)
You can fila a PABR along with the Notice of Appeal without having to pay a fee.

If you have to file an Appeal Brief this also goes without any fee.
Then the Examiner reads your Brief and he may reopen prosecution without the Brief having to be forwarded to the Board.

If he does not reopen prosecution, he writes an answer regarding your Appeal Brief.

You may then withdraw the application from the appel procedure by abandoning it or by filing an RCE together with an amendment (assumed the examiners arguments for rejection are now persuasive to you).

You may, however, file a Reply Brief regarding the answer of the examiner.
Your Appeal Brief, the examiners answer and your Reply Brief then go before the Board, but at this time you have the forwarding fee of $2000 (or less if small or micro entity).


I agree with Gerd's assessment. The big change from old procedure is *when* the fee is due. Under the old regime, you paid to submit the Brief. Now you don't pay until after you receive the answer and decide to forward to the Board.

I don't see the new regime as being advantageous for Applicants. The new regime requires affirmative action on the Applicant's part to move the case forward -- forget to pay the fee after the Answer, and your case ... what .... goes abandoned? [Definitely doesn't go to appeal.] So that seems like a negative. Under both the old and the new, the Applicant isn't required to pay for a second brief if the Examiner reopens pros -- though under the old regime you had to remember *not* to pay, so maybe the change is a slight positive in this regard.

It goes without saying that the old regime is preferable to the new when you consider the increase in the fees themselves (as opposed to timing of payment).

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Patent Prosecution blog "All Things Pros" http://allthingspros.blogspot.com/

The opinions expressed on this message board are mine and do not represent the views of my law firm, colleagues, or clients. My writings on this board are not legal advice and are offered for educational purposes only. No attorney-client relationship is created by my writings on this board.


2013-12-19 14:46:58
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