What happens if excess claims fees are not paid in an inter partes reexamination?
If excess claims fees are not paid when required in an inter partes reexamination, the USPTO will issue a notice of fee deficiency. According to MPEP 2666.04: “If the excess claims fees required by 37 CFR 1.20(c)(3) and (c)(4) are not paid with the presentation of the excess claims, a notice of fee deficiency will…
Read MoreWhat are the fees for adding claims in an inter partes reexamination?
The fees for adding claims in an inter partes reexamination vary based on the type of claim and the entity status of the patent owner. According to MPEP 2666.04, the fees are as follows: For each independent claim in excess of three and also in excess of the number of independent claims in the patent…
Read MoreCan the time period for paying excess claims fees be extended in reexamination?
Yes, the time period for paying excess claims fees in reexamination can be extended. According to MPEP 2666.04: “An extension of time to correct the fee deficiency may be requested under 37 CFR 1.956.” This means that if you receive a Notice of Defective Paper In Inter Partes Reexamination (PTOL-2069) for unpaid excess claims fees,…
Read MoreWhen did excess claims fees become applicable in reexamination proceedings?
Excess claims fees became applicable in reexamination proceedings on December 8, 2004. The MPEP 2666.04 states: “The excess claims fees specified in 37 CFR 1.20(c) apply to all patents eligible for inter partes reexamination. The fees must be submitted for any excess claims presented in a reexamination proceeding on or after December 8, 2004 (no…
Read MoreAre disclaimed or previously canceled claims counted when calculating excess claims fees?
No, disclaimed or previously canceled claims are not counted when calculating excess claims fees in reexamination proceedings. According to MPEP 2666.04: “A claim that has been disclaimed under 35 U.S.C. 253 and 37 CFR 1.321(a) as of the date of filing of the request for reexamination is not considered to be a claim in the…
Read MoreHow are excess claims fees calculated in inter partes reexamination?
Excess claims fees in inter partes reexamination are calculated based on the number of claims added beyond certain thresholds. According to MPEP 2666.04: Independent claims fee (37 CFR 1.20(c)(3)): Due for each independent claim in excess of three AND in excess of the number of independent claims in the patent being reexamined. Total claims fee…
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