A word of caution: pay the DPI filing fee by wire transfer | Jones Day
A decision of June 25, 2021 of the PTAB clarified that when paying the filing fee by bank transfer, the between the parties The filing date of the request for review (“RPI”) is based on the date the funds are made available to the USPTO. Toshiba America Electronic Components, Inc. v Monument Peak Ventures, LLC, IPR2021-00330 (PTAB June 25, 2021). In a 2-1 decision, the majority of the panel ruled that Toshiba’s filing fee was not received by the USPTO until the transfer funds were in the USPTO’s account, therefore , his IPR application was time-barred because it had not been filed. with the accompanying filing fee within one year of the service of the infringement complaint. The Council clarified that a filing fee paid by wire transfer is not considered received until it has been transferred to the USPTO bank account.
On December 17, 2019, Toshiba (“Applicant”) received notification of a complaint alleging infringement of US Patent 7,583,294 (“the“ 294 Patent ”) by Monument Peak Ventures, LLC (“ Patent Owner ”). Almost a year later, the petitioner filed a petition requesting an IPR of the ‘294 patent. The petition and attachments were submitted to the USPTO and provided to the patentee on December 16, 2020. Instead of selecting a payment option on the payment screen of the PTAB filing system, the petitioner chose to pay the deposit fee by bank transfer. The requester initiated the transfer and received a fee payment receipt indicating “IN PROGRESS” and “No records found”. On December 16 and 17, 2020, the lawyer handling the petitioner’s case was informed by the Revenue and Accounting Division of the USPTO that the funds had not yet been received. In January 2021, the applicant’s filing attorney was informed by a USPTO paralegal supervisor that the filing fee had been received on December 18, 2020 and that the case had been registered with the PTAB the next business day. , December 21, 2020.
The petitioner filed a request for correction of the filing date to change the filing date to December 16 or 17, 2020. The patent owner filed an opposition, arguing that the petitioner has not shown that the filing fee IPR had been received before December 18, 2020. The patentee then filed a preliminary response arguing that the petition is time-barred under 35 USC § 315 (b) based on the assigned filing date. Under Section 35 USC § 315 (b), an IPR request must be filed within one year of service of the complaint alleging a violation, by December 17, 2019. Statutory and PTAB regulations require that the costs of IPR filing accompany the request and prohibit the allocation of a filing. date until full payment is received. 37 CFR § 42.103. As a result, the dispute focused on whether the petition was “accompanied by payment of costs” by December 17, 2020.
The claimant argued that the filing date should be December 16, 2020, as that was the date the wire transfer was initiated and the filing fee debited from the claimant’s account. He estimated that the filing fee was received on December 16, 2020, as that was the day the funds were transferred to Treasury NYC, the designated bank for the USPTO. Council found this unconvincing, finding that the applicant had not demonstrated actual receipt of funds by the USPTO by December 18, 2020. Council cited a “Detailed USPTO Fedwire Report” indicating receipt on December 18, 2020, and January 2021 communication between filing attorney and USPTO paralegal supervisor. The Grievor argued that the fee payment receipt showed that the filing fee had been paid on December 16. The Commission explained that it had not established the payment date because the status was “IN PROGRESS” and it indicated that the payment file had not been found.
The Claimant further argued that federal regulations are clear that a wire transfer is received by the payee when the payee’s bank accepts payment on behalf of the payee. Again, the majority of the Board found the applicant’s argument unconvincing, holding that “the beneficiary receives payment when the beneficiary’s bank actually pays the beneficiary or credits the beneficiary’s account and makes the funds available to the beneficiary. , and not when the beneficiary’s bank accepts the electronic transfer from the sender’s bank. Since the Commission found that the filing fee was not received before December 18, 2020, the application was not considered to have been filed with the accompanying fee before that date. Subsequently, the filing date for the petition fell outside the legal window of one year for filing. Consequently, the Board refused to establish the DPI requested by the Applicant on the grounds that it was prescribed.
The petitioner also argued that there was good reason to change the filing date to December 16, 2020 because the filing fee was withdrawn and accepted by the USPTO bank on that date. The Board has discretion to excuse late action upon presentation of cause under 37 CFR § 42.5 (b), (c) (3). The Board took a strict approach and found that there was no valid reason despite the fact that the Applicant had initiated the bank transfer in due time for the payment of the fees in addition to submitting the Petition on time and associated documents. Earlier in the opinion, the Board found that the applicant had erroneously relied on background information describing the Fedwire system as performing real-time fund transfers. The Council further stated “[t]Taken together, the law, regulations, guidelines on the USPTO website, and past Board decisions provide practitioners with sufficient advance notice that an applicant who files a petition near the legal deadline should be well aware of the associated risks.
Take away food : In light of this Council decision, the best practice for practitioners is to file the petition before the legal deadline and using a payment method that provides instant confirmation of payment, such as using a deposit account. USPTO. The Commission has taken the position that practitioners should reasonably expect delays from third parties during the submission process. Accordingly, such delays do not provide a sufficient basis for adjusting a filing date.