[Patentpractice] questions about new 'IDS size fee'

[Randall Svihla]

Hi, Bill

As someone has already answered, you were not required to pay an IDS size fee, and will never have to pay any IDS size fees in this application.  However, you need to file a written IDS size assertion stating that no IDS size is due each time you file an IDS.

I don't think the USPTO will automatically refund the IDS size fee you paid because the USPTO is not supposed to track the number of items that have been submitted.  See this FAQ in the quick reference guide someone else mentioned:

[cid:image001.png at 01DB8DD1.30738540]

So you need to file another written IDS size fee assertion stating that no IDS size fee was due, and request a refund of the IDS size fee under 37 CFR 1.26(a) as being paid by mistake.

Good luck.

Best regards,

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


From: Patentpractice <patentpractice-bounces at oppedahl-lists.com> On Behalf Of William Ahmed via Patentpractice
Sent: Wednesday, March 5, 2025 10:58 AM
To: For Patent Practitioners. This Is Not for Laypersons To Seek Legal Advice. <patentpractice at oppedahl-lists.com>
Cc: William Ahmed <ahmed.william at ymail.com>
Subject: [Patentpractice] questions about new 'IDS size fee'

Dear List,
We have an application for which over 200 references were IDSed between it's 2023 filing date and Dec 31, 2024.

Question A --> If a new IDS is filed now, with 10 fresh references, does the USPTO require payment of the 'IDS size fee'? [i.e. the large number of refs were filed pre-Jan 19, 2025]

UPDATE -- we filed the IDS and paid the size-fee

Question B --> If the IDS size fee was NOT required [see Question A] and our IDS included the 'size-declaration' [along with the fee], will the USPTO refund the $800?

Many thanks,
Bill
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