A-80474, SEPTEMBER 21, 1936, 16 COMP. GEN. 283

A-80474: Sep 21, 1936

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PATENTS - REFUND OF FEES FOR REVIVAL OF FORFEITED APPLICATIONS THERE IS NO AUTHORITY FOR THE RETURN OF FEES ACCOMPANYING PETITIONS APPARENTLY FILED AS APPLICATIONS FOR REVIVAL OF ABANDONED APPLICATIONS FOR PATENTS. WHICH UPON INVESTIGATION ARE FOUND TO HAVE BEEN FORFEITED. NOTWITHSTANDING THERE IS NO STATUTORY AUTHORITY FOR THE REVIVAL OF FORFEITED APPLICATIONS. THE FEE HAVING BEEN EARNED BY REASON OF THE SERVICE REQUIRED OF THE GOVERNMENT IN DETERMINING THAT WHAT IS SOUGHT TO BE REVIVED IS A FORFEITED. OF WHICH NOTICE SHALL HAVE BEEN GIVEN TO THE APPLICANT. UNLESS IT BE SHOWN TO THE SATISFACTION OF THE COMMISSIONER OF PATENTS THAT SUCH DELAY WAS UNAVOIDABLE.'. WHICH FEE SHALL BE PAID NOT LATER THAN SIX MONTHS FROM THE TIME AT WHICH THE APPLICATION WAS PASSED AND ALLOWED AND NOTICE THEREOF WAS SENT TO THE APPLICANT OR HIS AGENT.

A-80474, SEPTEMBER 21, 1936, 16 COMP. GEN. 283

PATENTS - REFUND OF FEES FOR REVIVAL OF FORFEITED APPLICATIONS THERE IS NO AUTHORITY FOR THE RETURN OF FEES ACCOMPANYING PETITIONS APPARENTLY FILED AS APPLICATIONS FOR REVIVAL OF ABANDONED APPLICATIONS FOR PATENTS, WHICH UPON INVESTIGATION ARE FOUND TO HAVE BEEN FORFEITED, NOTWITHSTANDING THERE IS NO STATUTORY AUTHORITY FOR THE REVIVAL OF FORFEITED APPLICATIONS, THE FEE HAVING BEEN EARNED BY REASON OF THE SERVICE REQUIRED OF THE GOVERNMENT IN DETERMINING THAT WHAT IS SOUGHT TO BE REVIVED IS A FORFEITED, RATHER THAN AN ABANDONED, PETITION, AND THE PAYMENT UNDER SUCH CIRCUMSTANCES NOT BEING A PAYMENT BY MISTAKE WITHIN THE MEANING OF THE ACT OF MARCH 6, 1920, 41 STAT. 512.

ACTING COMPTROLLER GENERAL ELLIOTT TO THE SECRETARY OF COMMERCE, SEPTEMBER 21, 1936:

THERE HAS BEEN CONSIDERED YOUR LETTER OF SEPTEMBER 3, 1936, AS FOLLOWS:

SEC. 4894 R.S. (U.S.C., TITLE 35, SEC. 37), CONTAINS THE FOLLOWING PROVISION: "ALL APPLICATIONS FOR PATENTS SHALL BE COMPLETED AND PREPARED FOR EXAMINATION WITHIN SIX MONTHS AFTER THE FILING OF THE APPLICATION, AND IN DEFAULT THEREOF, OR UPON FAILURE OF THE APPLICANT TO PROSECUTE THE SAME WITHIN SIX MONTHS AFTER ANY ACTION THEREIN, OF WHICH NOTICE SHALL HAVE BEEN GIVEN TO THE APPLICANT, THEY SHALL BE REGARDED AS ABANDONED BY THE PARTIES THERETO, UNLESS IT BE SHOWN TO THE SATISFACTION OF THE COMMISSIONER OF PATENTS THAT SUCH DELAY WAS UNAVOIDABLE.'

AN ABANDONED APPLICATION MAY BE REVIVED UPON A SATISFACTORY SHOWING, BUT THE PETITION FOR REVIVAL MUST BE ACCOMPANIED BY A FILING FEE OF TEN DOLLARS AS REQUIRED BY SEC. 4934 R.S. (U.S.C., TITLE 35, SEC. 78).

AN APPLICATION BECOMES FORFEITED WHEN THE FINAL FEE REMAINS UNPAID FOR MORE THAN SIX MONTHS AFTER NOTICE OF ALLOWANCE, SEC. 4885 R.S. (U.S.C., TITLE 35, SEC. 41) PROVIDING AS FOLLOWS:

"EVERY PATENT SHALL ISSUE WITHIN A PERIOD OF THREE MONTHS FROM THE DATE OF THE PAYMENT OF THE FINAL FEE, WHICH FEE SHALL BE PAID NOT LATER THAN SIX MONTHS FROM THE TIME AT WHICH THE APPLICATION WAS PASSED AND ALLOWED AND NOTICE THEREOF WAS SENT TO THE APPLICANT OR HIS AGENT; AND IF THE FINAL FEE IS NOT PAID WITHIN THAT PERIOD THE PATENT SHALL BE WITHHELD.'

NO AUTHORITY EXISTS FOR THE REVIVAL OF A FORFEITED APPLICATION, THE ONLY REMEDY IN THIS SITUATION BEING FOUND IN SEC. 4897 R.S. (U.S.C., TITLE 35, SEC. 38), WHICH PROVIDES:

"ANY PERSON WHO HAS AN INTEREST IN AN INVENTION OR DISCOVERY, WHETHER AS INVENTOR, DISCOVERER, OR ASSIGNEE, FOR WHICH A PATENT WAS ORDERED TO ISSUE UPON THE PAYMENT OF THE FINAL FEE, BUT WHO FAILS TO MAKE PAYMENT THEREOF WITHIN SIX MONTHS FROM THE TIME AT WHICH IT WAS PASSED AND ALLOWED, AND NOTICE THEREOF WAS SENT TO THE APPLICANT OR HIS AGENT, SHALL HAVE A RIGHT TO MAKE AN APPLICATION FOR A PATENT FOR SUCH INVENTION OR DISCOVERY THE SAME AS IN THE CASE OF AN ORIGINAL APPLICATION. BUT SUCH SECOND APPLICATION MUST BE MADE WITHIN ONE YEAR AFTER THE ALLOWANCE OF THE ORIGINAL APPLICATION.'

NOTWITHSTANDING THE FACT THAT SUCH RELIEF IS UNAUTHORIZED BY STATUTE, PETITIONS TO REVIVE APPLICATIONS FORFEITED THROUGH FAILURE TO PAY THE FINAL FEE AFTER ALLOWANCE ARE FROM TIME TO TIME FILED IN THE PATENT OFFICE, ACCOMPANIED BY THE TEN DOLLAR FEE PRESCRIBED FOR THE FILING OF PETITIONS TO REVIVE ABANDONED APPLICATIONS. WHEN SUCH PETITIONS ARE RECEIVED THEY ARE EITHER DISMISSED BY THE COMMISSIONER FOR LACK OF JURISDICTION TO ENTERTAIN THEM, OR THE PETITIONER IS SIMPLY NOTIFIED OF THE NONEXISTENCE OF THE REMEDY SOUGHT TO BE INVOKED.

AN OFFICIAL RULING IS REQUESTED AS TO WHETHER, IN THESE CASES, THE TEN DOLLAR FILING FEE SHOULD BE RETURNED, UNDER THE PROVISION OF THE APPROPRIATION ACT OF MARCH 6, 1920 (U.S.C., TITLE 35, SEC. 79), THAT THE "COMMISSIONER IS AUTHORIZED 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.'

SECTION 78, TITLE 35, U.S.C. PROVIDES SEPARATE AND DISTINCT FEES OF THE FILING OF APPLICATIONS, PETITIONS FOR REVIVAL, THE ISSUING OF PATENTS, ETC. WHENEVER AN APPLICATION, OR PETITION FOR REVIVAL, APPARENTLY VALID UPON ITS FACE, IS RECEIVED, CONSIDERED AND FILED BY THE PATENT OFFICE, A SERVICE HAS BEEN RENDERED OR A PRIVILEGE GRANTED. SINCE THE STATUTE EXPRESSLY PROVIDES DISTINCT FEES FOR FILING OF APPLICATIONS AND PETITIONS FOR REVIVAL, SEPARATE AND APART FROM THOSE FOR THE ISSUANCE OF A PATENT, IT MUST BE CONSIDERED THAT THE FILING FEE IS EARNED WHEN THE APPLICATION OR PETITION PROPERLY IS RECEIVED, FILED, AND CONSIDERED BY THE PATENT OFFICE. THAT IS TO SAY, THE GRANTING OR ISSUING OF A PATENT IS NOT A CONDITION PRECEDENT TO THE GOVERNMENT'S RIGHT TO THE RETENTION OF THE FILING FEE. ALTHOUGH THE STATUTE GRANTS NO AUTHORITY FOR THE REVIVAL OF A FORFEITED APPLICATION, IT IS CLEAR THAT WHEN FEES OF THE CLASS IN QUESTION HERE ARE SUBMITTED SAID FEES ARE FOR THE PURPOSE OF HAVING THE APPLICATION CONSIDERED AS ONE FOR REVIVAL OF AN ABANDONED APPLICATION. A CERTAIN AMOUNT OF SERVICE IS INVOLVED BEFORE IT IS FINALLY DETERMINED THAT WHAT IS SOUGHT TO BE REVIVED BY THE PETITION IS A FORFEITED APPLICATION--- ONE NOT REVIVABLE. FEES SUBMITTED UNDER SUCH CIRCUMSTANCES MAY NOT BE SAID TO HAVE BEEN PAID BY MISTAKE WITHIN THE MEANING OF THE 1920 STATUTE CITED AND QUOTED IN PART IN YOUR SUBMISSION. 13 COMP. GEN. 445. CF. 15 COMP. GEN. 38.

SPECIFICALLY, THEREFORE, YOU ARE ADVISED THAT, UPON THE FACTS AS SUBMITTED, THE $10 FILING FEE IN THIS CLASS OF CASES IS NOT FOR RETURNING TO THE APPLICANT.