Anticipate This!™ | Patent and Trademark Law Blog

MPEP 1126: Applications That Publish After the Patent Issues.

Posted in Practice Commentary by Jake Ward on December 16, 2008

An interesting practice note we thought we’d share.  Per MPEP 1126:

The publication fee set forth in 37 CFR 1.18(d) must be paid in each application published (or scheduled to be published) under 35 U.S.C. 122(b) before a patent will be granted on the application. . . .

Applicant is required to pay the publication fee to avoid abandonment of the application even if the application has not yet been published at the time when the publication fee is due. The Office will continue with the pre-grant publication process until a patent actually issues. This is because there are many instances in which the Office mails a notice of allowance in an application but the application does not issue as a patent in regular course. Therefore, the Office will not discontinue the pre-grant publication process until a patent has actually issued. Since the Office cannot discontinue the pre-grant publication process during the last two to four weeks of the publication process, this will result in a few applications being issued as patents and subsequently being published as patent application publications. The Office will refund the publication fee (if paid) if the application is not published as a patent application publication, but will not refund the publication fee if the application is published as a patent application publication, even if it is published after the patent issues

Accordingly, applicant may file a request for a refund of the publication fee after 4 weeks from the issue date of the patent if the application did not publish.  A request for refund filed before 4 weeks from the issue date is premature and will be disregarded. Requests for a refund of the publication fee should be directed to the Pre-Grant Publication Division of the Office of Publications at Mail Stop PGPUB.

(Emphasis ours).

Inventive Step Blog.

Posted in General Commentary by Jake Ward on December 16, 2008

There is a new patent blog on the scene, dedicated to a discussion of patent law issues and strategies.  The blog is titled Inventive Step and is authored by registered patent attorney Matthew R. Osenga, from Richmond, Virginia.

We have been reading Inventive Step posts over the past week or so, and Matt has provided some very matter-of-fact commentary related to the state of the patent practice in the United States.  We especially enjoyed the posts Is the Patent Office Against Patent Applicants? and Patent Allowance Rate Continues to Drop.  The first summarizes the extent to which the USPTO’s current administration has seemingly antagonized the Patent Bar over the past few years, and the latter notes the historically low allowance rates presently at the USTPO.  (See below graph ).

 44allowancerate

See also this earlier and related AT! post commenting on the plummeting allowance rates at the USPTO. 

We’d certainly recommend taking a look at Inventive Step as part of your daily blog read (should you be into such joyful activities)!