When can an applicant request a refund for fees paid on additional inventions?
This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice.
According to MPEP 803.03(a), an applicant can request a refund for fees paid on additional inventions in a transitional application when certain conditions are met. Specifically:
“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.”
In other words, if:
- The application is a transitional application
- Inventions were previously divided
- A linking claim is found allowable, leading to rejoinder of the inventions
- The applicant had paid the fee for an additional invention
Then the applicant may be eligible to request a refund for the fee paid for the additional invention.