An Analysis of the New Rules: 37 C.F.R. § 1.117: Refund Due to Cancellation of Claims

    By Christopher P. Singer --

On August 21, 2007, the U.S. Patent and Trademark Office published new rules concerning continuation and claims practice that will undoubtedly have a profound effect on the way patent attorneys and agents prosecute applications before the Patent Office.  In view of the 128-page Federal Register notice regarding the new rules, the Patent Office's nearly two hour webcast on August 23, 2007 (and the webcast's accompanying 109-page presentation), and the Office's 45-page list of Frequently Asked Questions, Patent Docs believes it may be helpful to examine the rules piece-by-piece in an attempt to identify areas where patent attorneys and agents will need to modify their patent prosecution practice.

37 C.F.R. § 1.117:

In light of the new and harsh rule changes relating to the consequences of a patent application containing more than 5 independent or 25 total claims (see our earlier report), the USPTO has anticipated that applicants may wish to file amendments that cancel pending claims in order to avoid filing the unsavory examination support document (ESD).  Amended rule 37 C.F.R. § 1.117 details the circumstances under which an applicant may request a refund of excess claims fees in an application that has yet to be examined on the merits.

Applicants can request a refund for any excess claims fees under 37 C.F.R. §§ 1.16(h), (i), or (j) or under §§ 1.492(d), (e), or (f), paid on or after December 8, 2004, in an application that has yet to have an examination on the merits.  Any amendments filed with a certificate of transmission or mailing under 37 C.F.R. § 1.8 will not be considered as filed on the date indicated on the certificate for the purpose of determining whether it was filed before an examination on the merits has been made.  Subsection (b) of this rule states that if the request for a refund is not made within two months (non-extendable) from the filing date of the amendment cancelling the excess claim(s), the Office may keep the excess fees.

In the section of the Patent Office's final rule notice entitled "Discussion of Specific Rules," the Office notes that an examination on the merits (35 U.S.C. § 131) for the purposes of this rule has been made once: (a) the Office issues a first Office action on the merits; (b) the Office issues a notice of allowability or allowance; or (c) an action under Ex parte Quayle is shown in the Patent Application Locating and Monitoring (PALM) system as having been counted.  The discussion in the final rule notice also notes that the Office lacks authority to grant a refund for claims withdrawn from consideration that were directed to a non-elected invention or species.

For additional articles in this series, please see:

• "An Analysis of the New Rules: 37 C.F.R. § 1.142: Suggested Restriction Requirements," September 6, 2007
• "An Analysis of the New Rules: 37 C.F.R. § 1.114: RCE Practice," September 5, 2007
• "An Analysis of the New Rules: 37 C.F.R. § 1.75(b): 5/25 Limit on Claims," September 4, 2007
• "An Analysis of the New Rules: 37 C.F.R. § 1.78(d)(1): Claims for Benefit of Prior-Filed Applications," September 3, 2007
• "An Analysis of the New Rules: 37 C.F.R. § 1.78(f): Commonly Owned Applications and Patents," August 27, 2007

For additional information on this and other related topics, please see:

• "Inventor Sues PTO to Prevent New Continuation Rules from Taking Effect," August 30, 2007
• "Patent Office Provides Recorded Web-Based Discussion of New Rules," August 30, 2007
• "New PTO Continuation Rules: Unfair to Biotech?" August 29, 2007
• "Proposed Agenda for September 12, 2007 Biotechnology/ Chemical/Pharmaceutical Art Group Meeting," August 24, 2007
• "The 'Word' on the New Continuation Rules (from the USPTO Webcast) - Part II," August 24, 2007
• "The 'Word' on the New Continuation Rules (from the USPTO Webcast) - Part I," August 23, 2007
• "New Continuation and Claims Rules Published," August 22, 2007
• "More on M.P.E.P. § 710.06," August 20, 2007
• "Patent Office to Hold Webcast on New Claim and Continuation Rules on August 23, 2007," August 20, 2007
• "Patent Office Announces that New Continuation and Claims Rules Will Be Published . . . Tomorrow," August 20, 2007
• "Procuring Patent Protection from the Present USPTO," August 15, 2007
• "New Continuation and Claims Rules to Be Published in Late Summer," July 25, 2007
• "They Just Don't Get It - 'Patent Reform' at the USPTO," April 11, 2007
• "Patent Applicants Beware: The Rules Are Changing (Again)" Part 1 and Part 2, November 6, 2006

Changes to Rule 117:

(a) If an amendment canceling a claim is filed before an examination on the merits has been made of the application, the applicant may request a refund of any fee under § 1.16(h), (i), or (j) or under § 1.492(d), (e), or (f) paid on or after December 8, 2004, for such claim. If an amendment adding one or more claims is also filed before the application has been taken up for examination on the merits, the Office may apply any refund under § 1.117 to any excess claims fees due as a result of such an amendment. The date indicated on any certificate of mailing or transmission under § 1.8 will not be taken into account in determining whether an amendment canceling a claim was filed before an examination on the merits has been made of the application.
(b) If a request for refund under this section is not filed within two months from the date on which the claim was canceled, the Office may retain the excess claims fee paid in the application. This two-month period is not extendable. If an amendment canceling a claim is not filed before an examination on the merits has been made of the application, the Office will not refund any part of the excess claims fee paid in the application except as provided in § 1.26.