USPTO creates more admin for patent filers seeking outage refunds
The US Patent and Trademark Office (USPTO) has asked patent filers who were inconvenienced while the agency’s patent systems were offline to file more forms if they want a refund.
As reported by WIPR, the USPTO underwent emergency IT maintenance after its patent systems went offline on August 15.
The USPTO said the maintenance related to a problem with the agency’s PALM database, which supports systems such as the Electronic Filing System (EFS) and Patent Application Information Retrieval System (PAIR).
On August 22, a week after the PALM database went offline, the USPTO announced that its patent systems were “operational from a filing and fee payment perspective” but warned that PAIR data may not be valid.
Other systems, such as the Electronic Patent Assignment System, the Patent Global Dossier Public Access Dossier, and the Office of Enrolment and Discipline Information System, did not become available until August 23.
Andrei Iancu, director of the USPTO, told filers that the agency would not extend deadlines given the availability of alternative methods of filing.
This caused controversy, as a fee of $400 is applicable to international patent applications made by post, while the same application made via the EFS costs just $240.
In response to cost concerns, the USPTO said it would issue refunds to applicants forced to pay higher filing fees while the patent systems were down.
The agency advised that Iancu would prescribe a process to enable this to happen and, more than a week later, the USPTO has now shared the details of this process.
The notice said that patent applications filed by paper due to the outage will be considered to have been filed by the USPTO’s EFS, “and thus will not incur the fee required”.
Applicants who used a paper filing method between August 15 up to and including August 23 are eligible for a refund of the higher fee.
The USPTO has advised that those wishing to claim a refund must file a copy of the paper application “as a follow-on paper” on the EFS within one month of the date that a filing receipt is issued for the application. It should also be accompanied by a request for a refund.
If the copy of the application is filed as a new application, the USPTO said it will be treated as such.
The filing “must be accompanied by a statement that it is a true copy of the original application as filed by the alternative filing method during the designated significant unplanned electronic business system outage”.
The USPTO added that the copy of the application should not be filed until the applicant has received a filing receipt or another notice to assign an application number to the application.
Ariel Reinitz, partner at FisherBroyles’ New York office, criticised the agency’s refund process on Twitter.
He suggested that the USPTO should take “full responsibility for its systems failure and waive or refund all fees automatically”, to avoid burdening applicants with a process to “resolve a mess created by the USPTO”.
“Instead of helping applicants by automatically deferring deadlines or waiving fees, USPTO is adding additional fees, procedures, deadlines, and forms,” Reinitz said.
A spokesperson for the USPTO told WIPR: "We had to develop a procedure that fits within existing statutory constraints. This procedure accomplishes that."
The USPTO recently released its draft 2018-2022 Strategic Plan, and has asked for public comments on areas including the optimisation of patent quality and timeliness. The deadline for comment submission is September 20.
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