[Patentcenter] Fee Preauthorization(s) with Issue Fee Payment
Randall Svihla
rsvihla at nsiplaw.com
Fri Dec 8 23:12:07 EST 2023
But at least you were able to bill the client for all of that extra work.
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From: Patentcenter <patentcenter-bounces at oppedahl-lists.com> on behalf of Richard Schafer via Patentcenter <patentcenter at oppedahl-lists.com>
Sent: Friday, December 8, 2023 4:41 PM
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Cc: Richard Schafer <richard at schafer-ip.com>; Sandu, Paula <Paula.Sandu at haynesboone.com>; David Boundy <DavidBoundyEsq at gmail.com>
Subject: Re: [Patentcenter] Fee Preauthorization(s) with Issue Fee Payment
I’ve managed to avoid having to maintain a deposit account for my solo practice, but back when I was at a big firm I once ran into a problem where the PTO simply ignored a pre-authorization and failed to charge the firm’s deposit account for something. As part of the long process that was required to get the problem fixed, I was told by more than one person at the PTO that (a) a pre-authorization made in one paper didn’t extend further than that paper, and (b) even if it did, the PTO couldn’t be expected to have its staff check for pre-authorizations if it wasn’t immediately in front of them in that paper. Eventually, I managed to get someone with enough knowledge of the law to admit they’d screwed up, but it was an incredible waste of time.
Best regards,
Richard A. Schafer | Schafer IP Law
P.O. Box 230081 | Houston, TX 77223
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From: Patentcenter <patentcenter-bounces at oppedahl-lists.com> On Behalf Of Katherine Koenig via Patentcenter
Sent: Friday, December 8, 2023 2:33 PM
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Cc: Katherine Koenig <katherine at koenigipworks.com>; David Boundy <DavidBoundyEsq at gmail.com>; Sandu, Paula <Paula.Sandu at haynesboone.com>
Subject: Re: [Patentcenter] Fee Preauthorization(s) with Issue Fee Payment
I agree. I also don’t typically authorize any additional charges when paying the issue fee, because there aren’t any (other than the $) publication fee, unless I’m forgetting something). I figure that anything else I’d have to pay for should be stated in a notice or communication.
Best regards,
Katherine
Dr. Katherine Koenig
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From: Patentcenter <patentcenter-bounces at oppedahl-lists.com<mailto:patentcenter-bounces at oppedahl-lists.com>> On Behalf Of Patent Lawyer via Patentcenter
Sent: Friday, December 8, 2023 3:23 PM
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Cc: Patent Lawyer <patentlawyer995 at gmail.com<mailto:patentlawyer995 at gmail.com>>; David Boundy <DavidBoundyEsq at gmail.com<mailto:DavidBoundyEsq at gmail.com>>; Sandu, Paula <Paula.Sandu at haynesboone.com<mailto:Paula.Sandu at haynesboone.com>>
Subject: Re: [Patentcenter] Fee Preauthorization(s) with Issue Fee Payment
My bad experience is that the PTO does not read these limited authorizations. Instead, in my experience, the PTO categorizes them as a general authorization and charges unauthorized fees.
While you should then have a good case for a refund if the fees should not have been charged, you will be trying to get refunds.
I have had my deposit account almost drained a few times because the PTO did not read the “except that” part of my limited authorization. I no longer authorize any charges to my deposit (except for QPIDS, where it was needed).
As to the original question, the best practice when paying the issue fee is to pay the issue fee. (What other fees might be due with the issue fee? The publication fee is $0. Is there something else?)
In general, not just for issue fees, the person doing a filing should ask the responsible attorney what fee boxes to check. Don't make the call yourself. Let the responsible attorney make the call. The responsible attorney will, of course, know exactly what fees are due. The responsible attorney will, of course, have counted their claims, figured out their extension fees and any other fees needed, and will want to pay only exactly what is needed. Ask the responsible attorney what fee authorization boxes they want checked (and let them take responsibility for excess charges when the PTO screws up).
If you make a whole lot of authorizations and then withdraw the case from issue, I believe those authorizations will carry over to your on-going prosecution.
Anecdote: My worst experience with a pre-authorization was not with an issue fee, but with PCT fees using RO/US (Carl – don’t say anything – I had to use the RO/US!). I charged the PCT fees to my credit card. I put in a pre-authorization to cover missing fees. Thirty days after my PCT filing, the PCT decided to process the payment. The PTO clerk took it on themselves to back out my credit card charge (about $3.5K) and charge everything to my deposit account (which had $1,100). My credit card got the refund, but there were not enough funds in the deposit account to cover the PCT fees. The PTO did not let me know for a week, by which time I was in the surcharge period for the PCT fees. I eventually got it fixed. It took a couple of weeks and hours of work. All because of an unneeded pre-authorization to charge fees to my deposit account. (There were no missing fees, and I never found out whey the PTO did this.)
From: Patentcenter <patentcenter-bounces at oppedahl-lists.com<mailto:patentcenter-bounces at oppedahl-lists.com>> on behalf of Patentcenter Patentcenter <patentcenter at oppedahl-lists.com<mailto:patentcenter at oppedahl-lists.com>>
Reply-To: Patentcenter Patentcenter <patentcenter at oppedahl-lists.com<mailto:patentcenter at oppedahl-lists.com>>
Date: Friday, December 8, 2023 at 2:52 PM
To: Patentcenter Patentcenter <patentcenter at oppedahl-lists.com<mailto:patentcenter at oppedahl-lists.com>>
Cc: David Boundy <DavidBoundyEsq at gmail.com<mailto:DavidBoundyEsq at gmail.com>>, "Sandu, Paula" <Paula.Sandu at haynesboone.com<mailto:Paula.Sandu at haynesboone.com>>
Subject: Re: [Patentcenter] Fee Preauthorization(s) with Issue Fee Payment
The thing that can run away is excess claim fees. So I authorize deposit account for everything but (a tip I learned from Rick Neifeld):
For the entire pendency of this application, the Commissioner is authorized to charge to Deposit Account No. xxx, Order No. xxxx, fees specified in 37 C.F.R. § 1.16 (national filing, search, and examination fees), § 1.17 (processing, including petition fees) and § 1.18 (post allowance, including issue fees) except that charge to Deposit Account is not authorized for excess claims (§ 1.16(h), (i), and (k)). For national stage entry of PCT applications, charges are authorized for fees identified in § 1.492(a)-(c) and (h)-(j), but not (d)-(g). Overpayments may be refunded to such Deposit Account.
On Fri, Dec 8, 2023 at 2:44 PM Sandu, Paula via Patentcenter <patentcenter at oppedahl-lists.com<mailto:patentcenter at oppedahl-lists.com>> wrote:
Good afternoon,
I’d like to ask for opinions as to what constitutes best practice when paying the Issue Fee.
There are paralegals who, when paying the Issue Fee, pay with a Credit Card and also go ahead and establish Fee Pre-authorization(s) to the Deposit Account for all available categories of fees.
Then there are those who will not establish Fee Preauthorization.
Thank you in advance!
Have a great afternoon,
Paula Sandu
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