2810 Fees Due on Filing a Supplemental Examination Request
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(a) A request for supplemental examination must be accompanied by the fee for filing a request for supplemental examination as set forth in § 1.20(k)(1), the fee for reexamination ordered as a result of a supplemental examination proceeding as set forth in § 1.20(k)(2), and any applicable document size fees as set forth in § 1.20(k)(3).
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(d) The filing date of a request for supplemental examination will not be granted if the request is not in compliance with §§ 1.605, 1.615, and this section, subject to the discretion of the Office. If the Office determines that the request, as originally submitted, is not entitled to a filing date, the patent owner will be so notified and will be given an opportunity to complete the request within a specified time. If the patent owner does not timely comply with the notice, the request for supplemental examination will not be granted a filing date and the fee for reexamination as set forth in § 1.20(k)(2) will be refunded. If the patent owner timely files a corrected request in response to the notice that properly addresses all of the defects set forth in the notice and that otherwise complies with all of the requirements of §§ 1.605, 1.615, and this section, the filing date of the supplemental examination request will be the receipt date of the corrected request.
2810.01 Document Size Fees
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Here are a few examples:
A request for supplemental examination includes eight documents: two U.S. patents, one U.S. patent application publication, one published international patent application, one Japanese published application, two journal articles, and a court document. The Japanese published application is not in the English language. For this reason, the request also includes a ninth document, which is a 22-page translation of the Japanese published application. The first journal article is 20 pages long, the second journal article is 25 pages long, and the court document is 50 pages long.
In this example, the U.S. patents, the U.S. patent application publication, the published international patent application, and the Japanese published application and its 22-page translation, are all patent documents, and are not subject to the document size fees. The 20-page journal article, which has 20 pages or less, is also not subject to the document size fees.
In this example, there are only two documents which are subject to the document size fee for non-patent documents which have 21–50 pages: the 25-page journal article and the 50-page court document. Therefore, the request should be accompanied by a payment equivalent to two document size fees.
In addition, there are no non-patent documents having greater than 50 pages. Therefore, there are no non-patent documents subject to the document size fee. For EFS-Web Filers: in this example, the number "2" should be entered into the box labeled "Quantity" for the number of documents subject to the fee for non-patent documents having 21–50 pages.
A request for supplemental examination includes six documents: one U.S. patent, one 21-page journal article, one 30-page declaration under 37 CFR 1.132, one 2-page invoice or sales receipt, one 55-page transcript of an audio or video recording, and one 148-page copy of a catalog. The 2-page invoice or sales receipt is designated as an exhibit to the 30-page declaration.
In this example, the U.S. patent is a patent document, and is not subject to the document size fees. The 2-page invoice or sales receipt is considered to be a separate document for the purposes of the document size fees, even though it is designated as an exhibit to the declaration. It is not subject to the document size fee because it has less than 20 pages. (If the declaration designated as an exhibit included one or more non-patent documents each having greater than 20 pages, then each of the greater-than-20-page exhibits would be subject to the document size fees.)
The remaining documents are subject to the document size fees, which are calculated as follows:
21-50 pages |
Each additional 50 pages or a fraction |
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21-page journal article |
1 |
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30-page declaration |
1 |
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55-page transcript of audio or video recording |
1 |
1 |
148-page chapter of textbook |
1 |
2 |
__ |
__ |
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Total Quantity |
4 |
3 |
In this example, the 21-page journal article and the 30-page declaration are each subject to the fee for a non-patent document having 21-50 pages. The 55-page transcript and the 148-page catalog also include pages 21-50, and are subject to the same fee. (For EFS-Web Filers: the number "4" should be entered into the box labeled "Quantity" for the number of documents subject to the fee for non-patent documents having 21–50 pages).
In addition, the 55-page transcript and the 148-page catalog each have greater than 50 pages, and therefore include all, or a fraction, of at least one additional 50-page increment. The 55-page transcript includes only one (5-page) fraction of a 50-page increment greater than 50 pages. The 148-page catalog includes two 50-page increments (or a fraction thereof): one for pages 51–100, and a second one for pages 101–148. (For EFS-Web Filers: the number "3" should be entered in the box labeled "Quantity" for the number of documents having additional 50-page increments or a fraction thereof).
Therefore, in this example, the request should be accompanied by a payment equivalent to four times the document size fee pursuant to 37 CFR 1.20(k)(3)(i), plus three times the document size fee pursuant to 37 CFR 1.20(k)(3)(ii).
Note: If the request in the above example also included a 562-page textbook, the document size fees for that document would include one fee under 37 CFR 1.20(k)(3)(i) for pages 21-50, and, in addition, the equivalent of eleven fees under 37 CFR 1.20(k)(3)(ii) for pages 51-562. The total document size fee for the 562-page textbook would be added to the total for all of the documents in the above example. If the 562-page textbook were designated as an exhibit to the 30-page declaration, the fee total would be the same, because the textbook would be considered as a separate document for the purposes of calculating the document size fees, even though it is designated as an exhibit to a declaration.