The USPTO’s 25% Discount For Application Size Fee Calculations And How To Qualify For It

May 20, 2010

in Practice Suggestions,Useful Information

There are many advantages to filing applications via the USPTO’s electronic filing system (EFS-Web).  One practical advantage is that the USPTO measures the size of an electronically filed application differently than if it were filed by paper.

An application filed under 35 U.S.C. 111 (this includes provisional, nonprovisional and design applications, and reissue applications) that exceeds 100 pages in total length is subject to an additional filing fee under 37 CFR 1.16(s) for each additional 50 sheets or fraction thereof.  Thus, an application consisting of 101 pages of specification and drawings incurs an additional fee and an application having 151 pages incurs an even greater additional fee.

The Size of an Application Filed Via EFS-Web is Discounted by 25%

The USPTO applies a 25% discount to the size of an electronically filed application.  So, for example, a 100-page application filed electronically is treated as a 75-page application for application size purposes.  See 37 CFR 1.52(f)(2) and MPEP § 607.  This means that an applicant may file an application up to 133 pages in total length and avoid the size fee, so long as the application is filed electronically.

A Few Caveats

1.  The application size discount of 37 CFR 1.52(f)(2) for EFS-Web filings does NOT apply to national stage submissions under 35 U.S.C. § 371.  See MPEP § 1893.01(c).

2.  Sequence listings and any computer program listing submitted electronically are excluded when determining the application size fees under 37 CFR 1.16(s), so long as the listing is submitted in ASCII text as part of an associated file of the application.  See 37 CFR 1.52(f)(2).  Conversely, sequence listings or computer program listings submitted as PDF files are NOT excluded and are counted along with the specification and drawings.

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© 2010, Michael E. Kondoudis

The Law Office of Michael E. Kondoudis
DC Patent Attorney
www.mekiplaw.com

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