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montysimmons
montysimmons, Patent Prosecutor
Category: Intellectual Property Law
Satisfied Customers: 226
Experience:  Electrical Engineer, South Carolina Attorney, Member of US Patent Bar
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I have an utility non-provisional patent application in USA

Resolved Question:

I have an utility non-provisional patent application in USA with status "undergoing preexam processing".
Six month ago I received a 'claims worksheet' from USPTO showing how the fees are calculated for independent claims over 3 and extra claims over 20. The requested me to pay that amount.
My response was to submit online a list of new claims (reduced their number by half), such that to avoid the fees. I have checked online on my PAIR-private account which I have with USPTO, and confirmed that the NEW claims have been received six months ago. The claims are in my history of transactions and when I open the PDF online I see the NEW claims.
Recently I received a letter from USPTO as a "notice to file missing parts of nonprovisional application" where they require me to pay a fee for claims which appear to have the same number claims exceeding as it was BEFORE I sent the NEW claims six months ago. Also this time I did not receive a 'claims worksheet' so I don't know if this fee is done on old claims or on NEW claims.
My question: how can I confirm whether the NEW claims (sent six months ago) have been acknowledged by USPTO ? Ideally would be to receive a 'claims worksheet' to understand how the new fee was calculated.
Submitted: 11 months ago.
Category: Intellectual Property Law
Expert:  montysimmons replied 11 months ago.

montysimmons :

Fees are calculated as follows

montysimmons :

You get 20 claims for the original filing fees.

montysimmons :

3 of such claims can be indepenent

montysimmons :

that leaves 17 dependent claims

montysimmons :

If you are a micro Entity, each extra Independent claims costs $105
If you are a small Entity, each extra Independent Claims costs $210

IF you are a micro Entity, each extra dependent claims costs $20, Small entity, $40

montysimmons :

IF you meet the requirements, you should file the form for Micro Entity.

montysimmons :

Filing fee drops from $730 (70+ 300 + 360) to $365

montysimmons :

You need to review the Notice to File Missing Parts VERY CAREFULLY

And respond to all issues or you might be required to pay for Extensions of time.

Even worse, if you want to long the application can go abandoned and it is very expensive to revive.

montysimmons :

*if you wait too long

montysimmons :

I would need to see you Notice to File Missing Parts to answer your question.

montysimmons :

you can call the USPTO and ask them directly.

montysimmons :

But be careful, I have had little luck talking to non Examiners regarding applications and have received bad information. Had I not know better such information would have caused me trouble.

montysimmons :

*known better

Expert:  montysimmons replied 11 months ago.

Sample calculation:

 

You file 22 claims with 4 independent claims and 18 dependent claims.

 

Your extra charges for claims over 20 : 22 claims - 20 claims = 2 claims x $20/claim = $40 (micro entity)

 

Your extra independent claims : 1 (i.e. 4 - 3 = 1 extra) = $105 (micro entity)

 

 

Sample 2 calculation:

 

You file 25 claims, 3 independent claims and 22 dependent claims.

Extra charge for claims over 20 : 25 - 20 = 5 claims x $20/claim = $100

 

No extra charge for independent claims.

 

 

 

 

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Customer: replied 11 months ago.

hi,


my question was: how can I confirm whether the NEW claims (sent six months ago) have been acknowledged by USPTO ?


 


I don't see where my question was answered.


I did not ask how to calculate fees.


 

Expert:  montysimmons replied 11 months ago.

I stated:

I would need to see your Notice to File Missing Parts to answer your question.

 

you can call the USPTO and ask them directly.

 

But be careful, I have had little luck talking to non Examiners regarding applications and have received bad information. Had I not know better such information would have caused me trouble.

Customer: replied 11 months ago.

This is what it says in the Notice to File Missing Parts:


 


"the items indicated below are missing:


* additional claim fee of $xxxx as an undiscounted entity, including any required multiple dependent claim fee, are required".


 


So the history is:


1) On Aug 2012 I submitted 44 claims.


2) Then on Jan 2013 I CHANGED all the claims and reduced the list to 26 claims.


3) However today they ask me to pay "24 total claims over 20", which means that they disregard the NEW list of 26 claims send on Jan 2013, and they still charge me for the 44 claims send on Aug 2012.


 


So how can I make them understand that I want to replace the 44 claims with the 26 NEW claims?


 

Expert:  replied 11 months ago.

This is a difficult question to answer on the information you have given me as the answer is very fact dependent is several ways.

 

For example, a NOTICE TO FILE MISSING PARTS provides much more information than you just gave me.

 

SIDE ISSUE

 

First, I note that you state “$xxxx as an undiscounted entity”.

 

It seems you should qualify for a “small entity” and perhaps a “Micro Entity”

 

Small Entity fees are one-half the cost undiscounted entity fees. Micro Entity Fees are one-half the cost of Small entity fees.

 

For example, filing fees for undiscounted entities is $1,460 where as filing fees for a small entity are $730 and micro $400 (with no extra claims).

 

You do not have to file anything to get “Small Entity” status, just check the correct box during the electronic filing process.

 

One does need to file a form SB/15A and check the correct box during the electronic filing process to qualify for “Micro Entity” process.

 

A very simple form. http://www.uspto.gov/forms/aia_forms.jsp

 

Now your question:

 

You state: “I CHANGED all the claims and reduced the list to 26 claims”. But the USPTO still wants you to pay for the 44 claims.

 

Generally speaking all one has to do is file a PRELIMINARY AMENDMENT “canceling” the claims no longer desired. The word "canceling" is important.

 

You claim to have "reduced" the number of your claims, however, I have no way of knowing if you “reduced” your claims correctly.

 

First, there is a specific format for amending claims. I assumed you followed such format.

 

Second, how you “reduced” your claims is important. One can “reduce” the number of claims via a “withdrawal” or “Cancel”.

 

“Withdrawn” claims still count for fee purposes whereas “Canceled” claims do not.

 

Thus, if you had Claims 1-44, withdraw claims 27-44, you have not changed the fees due.

 

In contrast, if you had Claims 1-44 and CANCELED claims 27-44, now you only have 26 claims pending and the fees due change.

 

Thus, the answer depends on if you amended and reduced your claims correctly for the goal you wished to accomplish.

 

If you did, the USPTO should have sent you a new notice with a fee reduction.

 

Such is all I can do without actually reviewing your entire file wrapper as the answer to your question is very fact specific.

 

You can call the USPTO at(NNN) NNN-NNNN/strong>, Selection option “0”, and have your application number ready and they will review your file and be able to tell you specifically what you need to do.

 

Good Luck

montysimmons, Patent Prosecutor
Satisfied Customers: 226
Experience: Electrical Engineer, South Carolina Attorney, Member of US Patent Bar
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