About the Authors

  • The Authors and Contributors of "Patent Docs" are patent attorneys and agents, many of whom hold doctorates in a diverse array of disciplines.
2018 Juristant Badge - MBHB_165
Juristat #4 Overall Rank

E-mail Newsletter

  • Enter your e-mail address below to receive the "Patent Docs" e-mail newsletter.

Contact the Docs


  • "Patent Docs" does not contain any legal advice whatsoever. This weblog is for informational purposes only, and its publication does not create an attorney-client relationship. In addition, nothing on "Patent Docs" constitutes a solicitation for business. This weblog is intended primarily for other attorneys. Moreover, "Patent Docs" is the personal weblog of the Authors; it is not edited by the Authors' employers or clients and, as such, no part of this weblog may be so attributed. All posts on "Patent Docs" should be double-checked for their accuracy and current applicability.
Juristat #8 Overall Rank


« Meet the Docs at BIO | Main | Docs at BIO: Steve Burrill's State of the Biotechnology Industry Report 2008 »

June 19, 2008


I haven't read the proposed fee increases yet, but I assume there is no provision for refunding the search and/or examination fee when the search or examination isn't performed on time. I wonder if you or any of your readers have any statistics on how frequently this occurs with PCT application for which the US is the RO or ISA - from my own experience, it's fairly frequent, but I can't provide numbers. I don't see a reason to increase a fee for a service that will not be performed on time, or may even performed so late as to be useless (such as a WOISA issued at 29.9 months or an IPRP issued after 30 months). Also, any idea how the PTO calculates its cost? Does this tell us how much time is allocated to PCT searches, or just how much it costs to outsource PCT searches? If the PTO were willing to suck up and refund the money when PCT services aren't timely provided, the proposed fee increases would be much more palatable.

The extra fees for the service not performed can be used to fund illegal "new rules" and other Dudas adventures.
Dudas collects these fees today, and by the time the 3rd-world-quality outsorcing search firm gets around to actually doing the work (and late at that) Dudas will be loooong gone, at a cushy job at one of the CPF firms.

Dear Circuitous-
You raise a valid question (to me, at least). In fact, I just filed a US National Phase today off of a PCT that did not yet have the ISR/IPER performed/completed, so I could not file it with the application. In a strange twist (but a bit of a fiscal windfall for the PTO), I think it cost the Applicant "extra" to file this application, as the fee for filing without a search report is more than filing with a search report.

The Federal Register Notice refers to estimated average costs for the searching and ISR/IPER preparation as well as initial processing, but does not get too detailed. It has to be based on the general amount of time PTO personnel spend on searching and related database costs (I don't think they outsource completely (yet)).

In any case, I do not think that the PCT Rules provide explicitly for a fee refund if a ISR/IPER is not timely completed. Many of the administrative procedures are left to the discretion of the individual Receiving Offices (i.e., their national rules). Last I checked, the CFR wasn't too chock-full of refund options. -- It looks like anonymous Agent has a working theory...

Thanks for the comments.


The comments to this entry are closed.

February 2024

Sun Mon Tue Wed Thu Fri Sat
        1 2 3
4 5 6 7 8 9 10
11 12 13 14 15 16 17
18 19 20 21 22 23 24
25 26 27 28 29