[Patentcenter] CAF (continuing application fee)

Wed Jun 4 15:16:21 UTC 2025

Here is the guide from the USPTO.   See example 16 - see if a general fee authorization was made at the time of the filing, either on the N417 or even a line in a transmittal memo, if not a separate document.

https://www.uspto.gov/sites/default/files/documents/quick-reference-guide-to-the-continuing-application-fee-caf.pdf

Pamela Cei Brisky | Senior Patent Paralegal

Fujitsu Intellectual Property Center

Fujitsu North America, Inc.

(571) 216-2112

pbrisky at fujitsu.com<mailto:pbrisky at fujitsu.com>

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Subject: Re: [Patentcenter] CAF (continuing application fee)

Right - because it's due on presentation (see below). We have 4 months to (re)submit the priority claim per 37 CFR 1.55.

"For an application filed on or after the effective date of this final rule, payment of the § 1.17(w) fees is required at the time a prompting benefit claim ( i.e., a benefit claim that causes the EBD of the later-filed application to be more than six or nine years earlier than its actual filing date) is presented in the later-filed application. If the prompting benefit claim is presented at the time of filing the later-filed application, the applicable § 1.17(w) fee will be due at filing. If the prompting benefit claim is presented at a later time, the applicable § 1.17(w) fee will be due concurrently with the presentation of the prompting benefit claim. If the later presentation of the prompting benefit claim is by way of a petition for acceptance of an unintentionally delayed benefit claim under § 1.78(e), the applicable § 1.17(w) fee will be due in addition to the petition fee under § 1.17(m)."
https://www.federalregister.gov/d/2024-26821/p-87

My understanding is that the NTFMP should run separately but I also haven't received NTFMPs at this point. Of course, the NTFMP is practically worthless after the 4 months because you now have lost the oldest benefit claim and so likely have your own earlier application as prior art.

And, of course, under most fact patterns that I can think of, you couldn't intentionally wait more than 4 months and then petition for an unintentionally delayed priority claim.

Another way of stating what Nichole is saying is that essentially the priority claim is rejected and we have 4 months from filing to (re)present it with the appropriate fee.

Please feel free to message or call with any questions.
Have a great day!

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On 6/4/2025 9:38 AM, Karen S. Canady via Patentcenter wrote:
My understanding was that we have 4 months from the date of filing to pay the CAF. No notice; it’s on the applicant as the fee is part of a valid priority claim.

Karen Canady
Partner
Canady + Lortz LLP

Typos courtesy of thumb typing on iPhone

On Jun 4, 2025, at 7:29 AM, Goebel, Nichole L. via Patentcenter <patentcenter at oppedahl-lists.com><mailto:patentcenter at oppedahl-lists.com> wrote:

My understanding is that you are to pay the CAF fee ( 6 or 9 years if applicable) when filing the application.  The CAF will not be listed on a NTFMP and there is no late period to file the CAF.

You will have to file the petition.

Nichole L. Goebel
Paralegal, Intellectual Property
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From: Patentcenter <patentcenter-bounces at oppedahl-lists.com><mailto:patentcenter-bounces at oppedahl-lists.com> On Behalf Of Jodi Lang via Patentcenter
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Cc: Jodi Lang <ip at remotedocket.com><mailto:ip at remotedocket.com>
Subject: [Patentcenter] CAF (continuing application fee)

[EXTERNAL EMAIL]

________________________________

Good Morning Listmates.  I have a few questions.  If an application is filed (with claims to benefits for priority more than 6 or 9 nine years) and is filed WITHOUT any fees (i.e. a no-fee continuation application) , I understand that the priority claim will not be listed on the filing receipt.  However, it does not appear that we are receiving a notice to file missing parts, rather a Response to Request for Corrected Filing Receipt which indicates:

In response to your request for a corrected filing receipt dated 05/21/2025, the Office is unable to comply with your request because:

Applicant presented one or more benefit claims to a prior-filed nonprovisional application without the applicable continuing application fee set forth in 37 CFR 1.17(w). The benefit claim(s) has not been entered because it was not presented with the applicable 37 CFR 1.17(w) fee. Applicant may wish to present any desired benefit claim(s) in accordance with 37 CFR 1.78(d), including the applicable continuing application fee. See 37 CFR 1.78(d)(3)(i). A petition to accept an unintentionally delayed benefit claim may also be required. See 37 CFR 1.78(e).

My questions are:

1.  Will we receive a Notice to File Missing Parts (which is needed for all the fees not just the CAF)?

2.  Do we have the regular 4 month period to pay the late priority fee without penalty?

3.  Will we be able to pay a late fee for the CAF or will we have to file a petition to accept a delayed claim to priority?

Thank you for your replies....

Jodi Lang
Docket Administrator/IP Paralegal

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