One of the many concerns raised by the recent outage of the USPTO’s electronic filing system was the requirement to pay the surcharge due when a new U.S. application is not filed electronically. The surcharge is statutory (enacted as part of the AIA), so the USPTO could not waive the fee. However, it has prescribed a process for applicants to obtain a refund that involves re-filing the application electronically in the record for the originally filed application.

Designated Significant Unplanned Electronic Business System Outage (DSUEBSO)

As practitioners and examiners know, the recent outage affected more than just the USPTO’s electronic filing system. The Director has designated it a “significant unplanned electronic business system outage.” The recent outage has been designated as occurring from August 15, 2018 through and including August 23, 2018.

Alternative “Electronic Filing” Procedures

The USPTO has prescribed the following “alternative electronic filing means” available when the Director designates that there is (or has been) a “significant unplanned electronic business system outage” that precludes electronic filing “for a significant period of time.” (Please refer to the full Federal Register Notice if implementing this procedure.)

  • The application was filed non-electronically during a DSUEBSO
  • The application is re-filed electronically in the record of the originally filed application (not as a new application)
    • if the fee was paid: no later than one month from the date a filing receipt is first issued, in which case the electronic re-filing should be accompanied by a request for refund
    • if the fee was not paid: no later than the expiration of the period for reply to a notice requiring payment of the fee (e.g., a notice to file missing parts)
  • The electronically re-filed application is accompanied by a statement that it is a true copy of the original application as filed during the DSUEBSO

No Refund OF PCT Fees

The Federal Register Notice explains that these procedures only apply to the non-electronic filing fee required by section 10(h) of the Leahy-Smith America Invents Act. The USPTO “has no authority” to prescribe similar procedures for international (PCT) applications or waive any international filing fees.

The Costs Of Requesting Refunds

It is likely that the costs of following these procedures will amount to less than the $400 large entity fee, but they could come close to the $200 small entity fee. While applicants likely will appreciate having this option, they probably are more concerned that the USPTO take measures to ensure that we do not experience a DSUEBSO again.