One of the many concerns raised by the recent outage of the USPTO’s electronic filing system was the requirement to pay the surcharge due when a new U.S. application is not filed electronically. The surcharge is statutory (enacted as part of the AIA), so the USPTO could not waive the fee. However, it has prescribed a process for applicants to obtain a refund that involves re-filing the application electronically in the record for the originally filed application.
As practitioners and examiners know, the recent outage affected more than just the USPTO’s electronic filing system. The Director has designated it a “significant unplanned electronic business system outage.” The recent outage has been designated as occurring from August 15, 2018 through and including August 23, 2018.
The USPTO has prescribed the following “alternative electronic filing means” available when the Director designates that there is (or has been) a “significant unplanned electronic business system outage” that precludes electronic filing “for a significant period of time.” (Please refer to the full Federal Register Notice if implementing this procedure.)
The Federal Register Notice explains that these procedures only apply to the non-electronic filing fee required by section 10(h) of the Leahy-Smith America Invents Act. The USPTO “has no authority” to prescribe similar procedures for international (PCT) applications or waive any international filing fees.
It is likely that the costs of following these procedures will amount to less than the $400 large entity fee, but they could come close to the $200 small entity fee. While applicants likely will appreciate having this option, they probably are more concerned that the USPTO take measures to ensure that we do not experience a DSUEBSO again.