A-55766, JUNE 15, 1934, 13 COMP. GEN. 445

A-55766: Jun 15, 1934

Additional Materials:

Contact:

Edda Emmanuelli Perez
(202) 512-2853
EmmanuelliPerezE@gao.gov

 

Office of Public Affairs
(202) 512-4800
youngc1@gao.gov

PATENTS - FEES FOR APPLICATIONS WHERE THE REJECTION OF AN APPLICATION FOR A PATENT IS DUE TO THE ISSUANCE OF A PRIOR PATENT TO THE SAME APPLICANT IN A FOREIGN COUNTRY THE FEE WHICH THE LAW REQUIRES TO ACCOMPANY THE APPLICATION AND WHICH IS SEPARATE AND DISTINCT FROM THE FEES REQUIRED FOR THE ISSUANCE OF A PATENT MAY NOT BE REFUNDED TO THE APPLICANT. ARE ACCORDED THE BENEFIT OF THE FILING DATE IN THE COUNTRY OF ORIGIN PROVIDED THEY FILE HERE WITHIN TWELVE MONTHS OF FILING ABROAD. HE WOULD THEREFORE ORDINARILY HAVE RECEIVED THE BENEFIT OF HIS BRITISH FILING DATE BUT. WHEN STEVENS WAS NOTIFIED OF THE INSUFFICIENCY HE TRANSMITTED THE BALANCE WHICH ARRIVED AT THE PATENT OFFICE AFTER THE EXPIRATION OF THE YEARLY PERIOD.

A-55766, JUNE 15, 1934, 13 COMP. GEN. 445

PATENTS - FEES FOR APPLICATIONS WHERE THE REJECTION OF AN APPLICATION FOR A PATENT IS DUE TO THE ISSUANCE OF A PRIOR PATENT TO THE SAME APPLICANT IN A FOREIGN COUNTRY THE FEE WHICH THE LAW REQUIRES TO ACCOMPANY THE APPLICATION AND WHICH IS SEPARATE AND DISTINCT FROM THE FEES REQUIRED FOR THE ISSUANCE OF A PATENT MAY NOT BE REFUNDED TO THE APPLICANT.

COMPTROLLER GENERAL MCCARL TO THE SECRETARY OF COMMERCE, JUNE 15, 1934:

THERE HAS BEEN RECEIVED YOUR LETTER OF MAY 18, 1934, AS FOLLOWS:

PERMIT ME TO SEEK YOUR OPINION ON THE FOLLOWING QUESTION:

BY TREATY, CITIZENS OF CERTAIN FOREIGN COUNTRIES, INCLUDING GREAT BRITAIN, FILING APPLICATIONS FOR PATENTS IN THE UNITED STATES, ARE ACCORDED THE BENEFIT OF THE FILING DATE IN THE COUNTRY OF ORIGIN PROVIDED THEY FILE HERE WITHIN TWELVE MONTHS OF FILING ABROAD.

PROCEEDING UNDER SUCH A TREATY, ONE STEVENS OF BRISTOL, ENGLAND, FILED AN APPLICATION IN OUR PATENT OFFICE SEVEN DAYS BEFORE THE EXPIRATION OF THE YEARLY PERIOD. HE WOULD THEREFORE ORDINARILY HAVE RECEIVED THE BENEFIT OF HIS BRITISH FILING DATE BUT, IN THIS CASE, STEVENS SUBMITTED AN INSUFFICIENT FILING FEE, HIS ERROR ARISING FROM THE FACT THAT CONGRESS HAD, UNBEKNOWNST TO HIM, PASSED A LAW INCREASING THE FEES ABOVE THOSE SET FORTH IN HIS COPY OF THE RULES OF PRACTICE OF THE UNITED STATES PATENT OFFICE.

WHEN STEVENS WAS NOTIFIED OF THE INSUFFICIENCY HE TRANSMITTED THE BALANCE WHICH ARRIVED AT THE PATENT OFFICE AFTER THE EXPIRATION OF THE YEARLY PERIOD. ACTING UNDER CERTAIN PRIOR DECISIONS, THE APPLICATION WAS ASSIGNED A FILING DATE COINCIDENT WITH THE ARRIVAL OF THE BALANCE OF THE FEE AND WAS REFUSED A DATE CORRESPONDING TO THE ORIGINAL, INSUFFICIENT PAYMENT. SINCE THE LATER DATE FELL OUTSIDE THE TREATY PERIOD, AND SINCE A BRITISH PATENT HAD MEANWHILE ISSUED TO STEVENS, HE WAS, AND IS, ACCORDING TO LAW, BARRED FROM OBTAINING A PATENT HERE. UNDER THE CIRCUMSTANCES STEVENS HAS PETITIONED FOR THE RETURN OF THE FEES PAID.

THE APPROPRIATION ACT OF MARCH 6, 1920, (U.S.C. TITLE 35, SEC. 79), AUTHORIZES THE COMMISSIONER OF PATENTS "TO PAY BACK ANY SUM OR SUMS OF MONEY PAID TO HIM BY ANY PERSON BY MISTAKE OR IN EXCESS OF THE FEE REQUIRED BY LAW.' THE ACTING COMMISSIONER OF PATENTS REPORTS THAT IN HIS OPINION THE FIRST PAYMENT WAS BY MISTAKE (AS TO THE FACT THAT THE APPLICATION WOULD BE ACCEPTED WITHIN THE TREATY PERIOD), THE SECOND ALSO (BECAUSE THE APPLICANT BELIEVED IT WOULD BE ACCEPTED RETROACTIVELY),AND WOULD LIKE TO HAVE AUTHORITY TO MAKE THE REIMBURSEMENT.

BEFORE CLOSING IT MIGHT BE ADDED THAT THE AMOUNT INVOLVED IS THIRTY ONE DOLLARS AND ALSO THAT THE PATENT OFFICE WILL OPERATE THIS YEAR AT A NET PROFIT OF APPROXIMATELY HALF A MILLION DOLLARS.

KINDLY ADVISE ME.

SECTIONS 78 AND 78A, TITLE 35, U.S. CODE, REQUIRE THAT UPON THE FILING OF AN ORIGINAL APPLICATION FOR PATENT AFTER JULY 1, 1932, THE APPLICANT MUST DEPOSIT A FEE OF $30 AND $1 ADDITIONAL FOR EACH CLAIM IN EXCESS OF TWENTY, AND A SIMILAR FEE FOR THE ISSUANCE OF EACH ORIGINAL PATENT. THAT IS TO SAY, THE FILING FEE WITH THE APPLICATION IS NOT A FEE FOR A PATENT, BUT IS IN PAYMENT FOR THE SERVICES RENDERED IN RECEIVING AND CONSIDERING THE APPLICATION AND ITS RETENTION BY THE GOVERNMENT IS NOT DEPENDENT UPON THE GRANTING OF A PATENT. IT WILL BE NOTED THAT THE STATUTORY PROVISION FOR REFUNDS CITED IN YOUR LETTER DOES NOT AUTHORIZE A REFUND OF THE FEE FILED WITH THE APPLICATION IN ALL CASES WHEN A PATENT IS NOT ISSUED, BUT ONLY WHEN THE FEE HAS BEEN PAID BY MISTAKE OR IN EXCESS OF THE AMOUNT REQUIRED. FEES DEPOSITED WITH THE APPLICATION FOR A PATENT WHICH CANNOT BE ISSUED DUE TO ISSUANCE OF PRIOR FOREIGN PATENT TO THE SAME APPLICANT, CANNOT BE SAID TO HAVE BEEN PAID BY MISTAKE ANY MORE THAN A MISTAKE COULD BE SAID TO HAVE BEEN MADE IN THE PAYMENT OF FEES ACCOMPANYING ALL OTHER REJECTED APPLICATIONS FOR PATENTS. YOU ARE INFORMED THAT THE FEE MAY NOT BE REFUNDED TO THE APPLICANT.