When the America Invents Act became law, it established a statutory penalty of $400 for the practitioner who failed to e-file a new patent application. ($200 for small entities.) This might best be understood as a Congressional mandate to the USPTO to do whatever was needed to ensure that a backup e-filing server would always be available even if the main e-filing server were to crash.
It will be recalled that there was a massive system outage at the USPTO starting on August 15, 2018. Despite numerous reminders in 2014, 2015, and 2016 to the USPTO to take steps to move the backup server physically away from the main server, USPTO failed to do so, and as a consequence the system outage took down the backup server as well as the main server. During the massive system outage, practitioners thus had no choice but to file their new patent applications on paper. These applications were filed by Priority Mail Express (Rule 10) or were hand-carried to the USPTO. Each such application thus incurred the $400 penalty.
Of course one wishes that USPTO would refund the penalty given that it was USPTO’s fault, not that of the practitioner, that the filer failed to e-file. But during the previous outages, the USPTO had taken the position that because the $400 was statutory, not rule-based, then its hands were tied and it was impossible to refund the $400. During the August 2018 outage, however, Director Iancu posted a message that the USPTO was working on a way to give back the $400. I wondered (blog article) how the USPTO would finesse this.
Now USPTO has posted a Federal Register notice that establishes a policy for getting the $400 back. This blog article discusses the notice and explains how to actually get the money back. Continue reading