There are a number of instances where applicants can be required to pay extra fees above the usual filing, search and examination fees required when a new application is filed. For example, the USPTO charges extra fees for applicants submitting more than three independent claims and/or more than 20 claims total – which is to say if your 21st claim is also your fourth independent claim, then you are paying two extra fees to submit that extra claim. Moreover, it is common for applicants from jurisdictions outside the United States to submit applications containing multiple dependent claims resulting in the USPTO charging an extra fee. In addition, anytime an amendment to an application increases the number of claims above 20, includes more than three independent claims or introduces a multiple dependent claim, then the USPTO will refuse to enter the amendments until the fees are paid in full. Even after responding to a restriction requirement in which an applicant selects some claims to prosecute in lieu of other claims, the applicant will still be responsible for these fees unless excess claims are cancelled.
Section 607 of the MPEP makes it clear the USPTO will not refund a fee for an action they have already completed, even if that action is ultimately not necessary. For example, when claims are cancelled during prosecution after excess claim fees are paid, the USPTO will not refund the fees previously required to submit those excess claims even if the patent issues with fewer than three independent claims and 20 claims total.
Applicants are limited in their ability to obtain a refund of fees when those fees are erroneously paid. 37 CFR 1.26 states that the USPTO Director MAY refund any fee paid by mistake or any amount paid in excess of what was required. However, the term “mistake” is construed rather narrowly. For example, if the Applicant mistakenly takes a particular action that requires fees to be paid, then the USPTO will not refund the fees at issue even if the applicant indicates the action was taken in error. In addition, a “change of purpose” after a filing is made will not entitle an applicant to a refund. For example, if the applicant files a Request for Continued Examination (RCE) and accidentally submits a fee for an extension of time, then the USPTO director may issue a refund. However, if an RCE is filed in error with the correct RCE fee, a refund request will be denied even if filing the RCE itself was an error.
Patent prosecution is an expensive endeavor and can be made more expensive by careless errors. A number of applicants waste time and energy applying for refunds of fees under circumstances the USPTO considers inappropriate. Before applying for a refund of patent fees, consult with a qualified professional to discuss your chances of success.