Can applicants request a refund for fees paid in transitional applications?

Yes, in certain circumstances, applicants can request a refund for fees paid in transitional applications. The MPEP provides two scenarios where refunds may be requested:

1. Rejoined Inventions: According to MPEP 803.03(a), “Whenever divided inventions in a transitional application are rejoined because a linking claim is allowable (MPEP § 809, § 821.04, and § 821.04(a)) and applicant paid the fee set forth in 37 CFR 1.17(s) for the additional invention, applicant should be notified that he or she may request a refund of the fee paid for that additional invention.“
2. Allowable Generic Claims: MPEP 803.03(b) states, “Whenever claims drawn to an additional species in a transitional application for which applicant paid the fee set forth in 37 CFR 1.17(s) are no longer withdrawn from consideration because they are fully embraced by an allowable generic claim, applicant should be notified that he or she may request a refund of the fee paid for that additional species.“

These provisions allow applicants to potentially recover fees paid for examining additional inventions or species when those inventions or species are ultimately examined together with the main invention due to linking claims or allowable generic claims.

To learn more:

• Transitional Applications
• Fee Refunds
• Rejoined Inventions
• Allowable Generic Claims