B-130956, MAR. 15, 1957

B-130956: Mar 15, 1957

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I. APPEARS THAT YOUR APPLICATION FOR A PATENT WAS FINALLY REJECTED BY THE PRIMARY EXAMINER. WHICH IS PRESCRIBED BY 35 U.S.C. YOU CONTEND THAT SINCE NO APPEAL DECISION WAS RENDERED. YOU ARE ENTITLED TO REFUND OF THE APPEAL FEE. 35 U.S.C. WILL BE REFUNDED. WILL NOT ENTITLE A PARTY TO DEMAND SUCH A RETURN.'. SINCE THE PAYMENT OF THE APPEAL FEE WAS REQUIRED BY LAW AND WAS NOT IN EXCESS OF THE AMOUNT FIXED BY STATUTE. THERE WOULD BE NO AUTHORITY FOR THE RETURN OF SUCH FEE UNLESS IT CAN BE SAID TO HAVE BEEN PAID BY MISTAKE ON YOUR PART. THERE IS NOTHING IN THE FACTS OF YOUR CASE WHICH SUGGESTS THAT THE REJECTION OF THE CLAIM BY THE PRIMARY EXAMINER WAS NOT MADE IN GOOD FAITH. IT IS ASSUMED THAT THE SUBSEQUENT WITHDRAWAL OF THE REJECTION RESULTED FROM THE FURTHER CONSIDERATION OF THE CLAIM BY THE EXAMINER AND THE CONCLUSION.

B-130956, MAR. 15, 1957

TO MR. PETER MICHELSKY:

ON JANUARY 25, 1957, YOU REQUESTED RECONSIDERATION OF OUR SETTLEMENT OF JANUARY 18, 1957, WHICH DISALLOWED YOUR CLAIM FOR REFUND OF THE PATENT APPEAL FEE IN THE AMOUNT OF $25 WHICH YOU HAD PAID TO THE DEPARTMENT OF COMMERCE, UNITED STATES PATENT OFFICE.

I. APPEARS THAT YOUR APPLICATION FOR A PATENT WAS FINALLY REJECTED BY THE PRIMARY EXAMINER, AND THAT YOU PAID THE FEE INVOLVED, WHICH IS PRESCRIBED BY 35 U.S.C. APPENDIX 1.21 (7), AND APPEALED FROM SUCH DECISION TO THE BOARD OF APPEALS UNDER 35 U.S.C. APPENDIX 1.191. HOWEVER, THE EXAMINER SUBSEQUENTLY WITHDREW THE FINAL REJECTION WHICH PLACED THE CASE IN CONDITION FOR ALLOWANCE AND OBVIATED THE NECESSITY FOR APPEAL. YOU CONTEND THAT SINCE NO APPEAL DECISION WAS RENDERED, YOU ARE ENTITLED TO REFUND OF THE APPEAL FEE.

35 U.S.C. APPENDIX 1.26 WHICH PROVIDES THE ONLY BASIS UPON WHICH REFUND OF THE APPEAL FEE IN QUESTION COULD BE CONSIDERED, READS IN PART, AS FOLLOWS:

"MONEY PAID BY ACTUAL MISTAKE OR IN EXCESS, SUCH AS A PAYMENT NOT REQUIRED BY LAW, WILL BE REFUNDED, BUT A MERE CHANGE OF PURPOSE AFTER THE PAYMENT OF MONEY, AS WHEN A PARTY DESIRES TO WITHDREW HIS APPLICATION OR TO WITHDRAW AN APPEAL, WILL NOT ENTITLE A PARTY TO DEMAND SUCH A RETURN.'

SINCE THE PAYMENT OF THE APPEAL FEE WAS REQUIRED BY LAW AND WAS NOT IN EXCESS OF THE AMOUNT FIXED BY STATUTE, THERE WOULD BE NO AUTHORITY FOR THE RETURN OF SUCH FEE UNLESS IT CAN BE SAID TO HAVE BEEN PAID BY MISTAKE ON YOUR PART.

THERE IS NOTHING IN THE FACTS OF YOUR CASE WHICH SUGGESTS THAT THE REJECTION OF THE CLAIM BY THE PRIMARY EXAMINER WAS NOT MADE IN GOOD FAITH, AND IT IS ASSUMED THAT THE SUBSEQUENT WITHDRAWAL OF THE REJECTION RESULTED FROM THE FURTHER CONSIDERATION OF THE CLAIM BY THE EXAMINER AND THE CONCLUSION, UPON SUCH RECONSIDERATION, THAT THE ORIGINAL ACTION WAS ERRONEOUS. EVEN IF IT CORRECTLY COULD BE SAID THAT THE REJECTION OF THE CLAIM BY THE PRIMARY EXAMINER WAS A MISTAKE, YET THAT FACT IS NOT CONTROLLING, SINCE BY THE PLAIN LANGUAGE OF THE SECTION, IT IS APPLICABLE TO A MISTAKE RELATING TO PAYMENT ONLY. HENCE, IT WOULD SEEM THAT A DETERMINATION OF THE QUESTION MUST DEPEND UPON THE FACTUAL SITUATION EXISTING WHEN THE CLAIM WAS REJECTED. AT THAT TIME YOU DESIRED TO FILE AN APPEAL FROM THE ADVERSE DECISION WITH WHICH YOU THEN WERE CONFRONTED; AND, IN ORDER TO DO SO, YOU PAID THE FEE REQUIRED BY LAW. THERE CAN BE NO DOUBT THAT THE FEE PAID WAS PAID INTENTIONALLY BY YOU FOR THE PURPOSE OF HAVING THE APPEAL CONSIDERED BY THE BOARD OF APPEALS; THAT IS TO SAY, THE PAYMENT OF THE FEE WAS PROPER AND WAS NOT IN ANY SENSE MADE BY MISTAKE. WHILE THE SUBSEQUENT WITHDRAWAL OF THE REJECTION BY THE EXAMINER OBVIATED THE NECESSITY FOR THE APPEAL, THERE APPEARS TO BE NO SOUND BASIS FOR THE VIEW THAT SUCH ACTION HAD THE RETROACTIVE EFFECT OF CONVERTING A PAYMENT PROPER WHEN MADE INTO A PAYMENT MADE BY MISTAKE.

ACCORDINGLY, UPON RECONSIDERATION, THE SETTLEMENT OF JANUARY 18, 1957, IS SUSTAINED.