[Patentpractice] Two year bar on Refunds when Expressly Abandoning Cases?

[Randall Svihla]

MPEP 711.01(III) governs express abandonment to obtain refunds, and says nothing about a 2-year deadline.

37 CFR 1.26(b) sets forth the 2-year deadline, but that is for refunds under 37 CFR 1.26(a), which are for fees paid by mistake or in excess of that required.

37 CFR 1.138(d) governs express abandonments to obtain a refund of the search and examination fee, and says nothing about a 2-year deadline.

You'll have to file a new petition, because the 2-month period for requesting reconsideration has elapsed.

You'll probably spent more in attorney time than the amount of the refund.

Good luck.

Best regards,

Randall S. Svihla
NSIP Law
Washington, D.C.


From: Patentpractice <patentpractice-bounces at oppedahl-lists.com> On Behalf Of pbrisky--- via Patentpractice
Sent: Friday, February 9, 2024 4:32 PM
To: Carl Oppedahl via Patentpractice <patentpractice at oppedahl-lists.com>
Cc: pbrisky at fujitsu.com
Subject: [Patentpractice] Two year bar on Refunds when Expressly Abandoning Cases?

Listmates:

I am dealing with some denials of Petitions for Express Abandonments to Obtain Refunds.  The denials came from someone in the office of data management and I think their denials were made in error and the reasons for denial misguided.  They are denying our requests because the fees were paid more than two years ago.  I understand that this is the rule for general refunds, but I don't ever recall this being the case for refund requests that went with Express Abandonment requests.  Why should applicants be punished for the Office's delay?  <rhetorical> If a search has not been conducted and examination has not begun after two years, the applicant should not be penalized for it when it comes to requesting a refund.

I have made several calls and sent emails to the USPTO to try to discuss the matter and have received no useful follow-up. Petitions were fantastic and told me they agreed with our position but told me to call OPLA, which I did.  They told me they did not know why petitions had me call them and told me they would look into the matter.  That was two months ago and I have not heard from them since (despite repeated follow ups - in writing).  For reasons I would rather not go into here, I don't want simply request reconsideration but I do know that would have been an option, had we acted quickly enough and not relied upon the USPTO to provide clarification or to cure the dismissals.

In my email to the USPTO, I said ....

***

Thank you for talking with me the week before last.  Attached is a file containing the dismissals of our express-abandonment related refund requests.

It is our belief that these requests were improperly dismissed.  The Office seems to be taking the position that the fees are not able to be refunded because the charges were debited more than two years prior to the request.  It appears that the denial is based on an erroneous interpretation of 37 CFR 1.26 and the refund request should be properly viewed through the provisions of 37 CFR 1.138.

The Office referenced ...

37 CFR § 1.26 - Refunds.

(b) Any request for refund must be filed within two years from the date the fee was paid, except as otherwise provided in this paragraph or in § 1.28(a)<https://www.law.cornell.edu/cfr/text/37/1.28#a>. If the Office charges a deposit account by an amount other than an amount specifically indicated in an authorization (§ 1.25(b)<https://www.law.cornell.edu/cfr/text/37/1.25#b>), any request for refund based upon such charge must be filed within two years from the date of the deposit account statement indicating such charge, and include a copy of that deposit account statement. The time periods set forth in this paragraph are not extendable.

However, the CFR 1.138 does not appear to set forth this limitation when it comes to refund requests due to express abandonment. The requirements under 1.138 state that the request must be filed before examination has been made of the application.

(d) An applicant<https://www.law.cornell.edu/definitions/index.php?width=840&height=800&iframe=true&def_id=08e72d765bb8bde1a92a362f0bc1d642&term_occur=999&term_src=Title:37:Chapter:I:Subchapter:A:Part:1:Subpart:B:Subjgrp:90:1.138> seeking to abandon an application filed under 35 U.S.C. 111(a)<https://www.law.cornell.edu/uscode/text/35/111> and § 1.53(b) on or after December 8, 2004, to obtain a refund of the search fee and excess claims fee paid in the application, must submit a declaration of express abandonment by way of a petition under this paragraph before an examination has been made of the application. The date indicated on any certificate of mailing or transmission under § 1.8 will not be taken into account in determining whether a petition under § 1.138(d) was filed before an examination has been made of the application. If a request for refund of the search fee and excess claims fee paid in the application is not filed with the declaration of express abandonment under this paragraph or within two months from the date on which the declaration of express abandonment under this paragraph was filed, the Office may retain the entire search fee and excess claims fee paid in the application. This two-month period is not extendable. If a petition and declaration of express abandonment under this paragraph are not filed before an examination has been made of the application, the Office will not refund any part of the search fee and excess claims fee paid in the application except as provided in § 1.26.

The two year limitation, according to 1.138, seems to apply to applications in which examination has already commenced, which is not the case with the requests we made.  "If a petition and declaration of express abandonment under this paragraph are not filed before an examination has been made of the application, the Office will not refund any part of the search fee and excess claims fee paid in the application except as provided in § 1.26."

As such, the refund provision in 1.26 does not appear to be applicable to the requests for refund made with a petition for express abandonment -- 1.138 sets examination as the test for timeliness, not the two year period contained in 1.26.  The Office has taken active measures to balance harm to applicants due to Office delay and placing the two year limitation on the express-abandonment related refunds is inconsistent with that practice.

***

Does anyone on the list have any  thoughts on this? I  have sent this to a few people from the list but no one has gotten back to me so maybe I (we) are way off base on this.  As I said, Petitions agreed with our position, but did not know what they could do or how to seek reconsideration when the person sending the dismissal is in the office of data management and seems to just be checking boxes and not understanding the underlying regulations.

Thank you!

Pamela Cei Brisky

Senior Patent Paralegal, Docketing Manager
Fujitsu North America, Inc.| Fujitsu Intellectual Property Center

pbrisky at fujitsu.com<mailto:pbrisky at fujitsu.com> |571-216-2112

[cid:image001.png at 01DA5B7B.7FB6EA90]

-------------- next part --------------
An HTML attachment was scrubbed...
URL: <http://oppedahl-lists.com/pipermail/patentpractice_oppedahl-lists.com/attachments/20240209/bc1b767b/attachment.htm>
-------------- next part --------------
A non-text attachment was scrubbed...
Name: image001.png
Type: image/png
Size: 487519 bytes
Desc: image001.png
URL: <http://oppedahl-lists.com/pipermail/patentpractice_oppedahl-lists.com/attachments/20240209/bc1b767b/attachment.png>