Takeaways
- Requestor submissions in reexamination proceedings are exempt from triggering IDS size fees.
- Correcting filing benefit claims in reissue triggers the new continuing application fee.
As we noted in our November article, the USPTO’s newly implemented (January 20, 2025) information disclosure statement fee applies to both reissue applications and reexamination proceedings. Since our writing, the USPTO has published a Quick Reference Guide to the IDS size fee document (QRG-IDS) which further clarifies how items of information are counted in these post-grant proceedings. In the QRG-IDS, the USPTO explains document counting procedures. In particular, the QRG-IDS expressly states that the IDS fees do not apply to IDS submissions by third parties (e.g., requestors, opposition filers) and that the total number of items of information (the “count”) held against a patent owner would not include items of information submitted by these third parties. Thus, it appears that a patent owner’s count certifications are solely limited to the number of items of information submitted by the patent owner and do not include the number of items of information submitted by third parties.
Turning to reissues, correcting errors in benefit claims under 35 U.S.C. §§ 119 and 120 have long been recognized as proper errors to support a reissue application. See Brenner v. State of Israel, 400 F.2d 789, 158 USPQ 584 (D.C. Cir. 1968); See also Sampson v. Comm’r Pat., 195 USPQ 136, 137 (D.D.C. 1976). To the extent such corrective actions occur outside the timeline specified in 37 C.F.R. §§ 1.78(c) and 1.78(e), (and effectively all such corrections to benefit claims in reissue will fall outside the required timeline), the Office requires the reissue application also include a grantable petition for an unintentionally delayed benefit claim and appropriate petition fee, as explained in MPEP 1402 III and IV.
Correcting filing benefit claims in reissue just got more expensive, however. The January 2025 fee-setting regulation created a new Continuing Application Fee (CAF). The basis offered by the Office for this new fee focused on the Office’s back-end funding regime, which relies upon patent maintenance fees for funding lower up-front application and examination costs. According to the rulemaking notice, continuing applications filed long after their earliest benefit date (the Office apparently defines “long after” as six- or nine-years, respectively) are “less likely to have a patent term long enough to recover more of their [up-front] costs from maintenance fees.” See Fee Rule at 91909.
To clarify the operation of this new fee, the USPTO published a Quick Reference Guide to the Continuing Application Fee (QRG-CAF). The QRG-CAF explains that the “CAF applies to all utility, plant, and design continuing applications.” Although the CAF applies to reissue applications in general, the fee is waived to the extent that the priority claim was properly presented and entered in the original patent, it will not be considered to be presented for purposes of the CAF when it is included in an application data sheet (ADS) upon filing of an application for reissue of the original patent.” See Example 19 of the QRG-CAF.
However, if any other benefit claim is presented in the reissue application, and the earliest benefit date of the reissue is greater than six-years or nine-years, the respective appropriate CAF will be due. Presumably “any other benefit claim” includes both the presentation of one or more new benefit claims previously omitted from the original prosecution, and the correction of typographical errors that may be present in the previously presented benefit claim of the underlying patent. See Example 20 of the QRG-CAF.
Moreover, should a continuing reissue application be filed, that is both a continuation of a reissue application and an application for reissue of an original patent, the CAF will be triggered even if no corrections are being made to the benefit claim. As the QRG-CAF explains “the waiver discussed […] does not apply here, because the application is a continuing reissue application.” See Example 20 of the QRG-CAF. Thus, reissue continuation practice should be mindful of the six- and nine-year CAF triggers just as in non-provisional continuation practice.
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