No web-based Issue Fee payment for Hague applications

It is recalled that one of USPTO’s stated goals for Patentcenter is that before it shuts down EFS-Web, the USPTO will bring forward all of the functions and features of EFS-Web into Patentcenter.  It is also a matter of common sense that each function and feature in Patentcenter that works for one application type needs to be implemented for all other relevant application types.   This blog article reports that the USPTO is now doubling down on a baffling refusal to correct a defect in Patentcenter relating to the payment of Issue Fees in Hague (35-series) applications. 

The legacy practice for issue fee payment is that the filer uses a typewriter to type information (for example the Assignee and the attorney-agent-or-firm) onto a PDF Form 85B.  After having typed the information onto the PDF form, the filer uploads the PDF to EFS-Web (or uploads the PDF to Patentcenter), and pays the Issue Fee.  Within USPTO’s IFW system, this PDF Form 85B is flattened into an image, and any previously computer-readable character-based content is discarded.  Within the USPTO, this forces the USPTO to hand-key the Assignee and attorney-agent-or-firm information into USPTO’s systems for typesetting of the front page of the issued patent.

The legacy practice of an uploaded PDF Form 85B benefits neither the USPTO nor the filer.  From the USPTO’s point of view this leads to mistakes by USPTO in the hand-keying of the Assignee and attorney-agent-or-firm information.  The USPTO is then forced to incur the internal cost of issuing Certificates of Correction, or depending on the magnitude of the USPTO’s mistake, even the internal cost of issuing a corrected patent.  From the filer’s point of view, this is a lot of work to do the hand-typing of the information onto the form.

This brings us to an important feature in EFS-Web, namely the “web-based issue fee payment” function.  In EFS-Web, the filer selects a particular patent application in which an Issue Fee needs to be paid.  Having selected the patent application, the filer then clicks on “web-based issue fee payment”.  This opens a web-based path in which the filer can copy and paste the needed Assignee and attorney-agent-or-firm information into computer-readable fields.  The filer then clicks “submit” and pays the Issue Fee.  Importantly, the character-based Assignee information and attorney-agent-or-firm information are not discarded, but are preserved and are then then available in a computer-readable way for auto-loading into USPTO’s systems for typesetting of the front page of the issued patent.

The “web-based issue fee payment” is a win-win for both the USPTO and for the filer.  Common sense suggests that the web-based issue fee payment function ought to be implemented for each application type in which an Issue Fee payment takes place.

This brings us to Patentcenter trouble ticket CP49 which was reported to the USPTO on May 27, 2021 (more than two years ago).  This ticket relates to 35-series design patent applications, by which we mean a US designation from a Hague application.  When the user of Patentcenter tries to pay an Issue Fee using the web-based tool for paying Issue Fees, Patentcenter refuses to do so, saying that the tool is not available for this kind of patent application.  The error message is “The application type entered does not allow for use of the Web-Based Issue Fee Transmittal.”

For more than two years, the USPTO has been aware of this defect in Patentcenter.  This defect violates the stated design goal that before EFS-Web gets shut down, each feature and function of EFS-Web will need to get implemented in Patentcenter.  This defect also violates the common-sense notion that any feature or function that works for one application type needs to be implemented for all other relevant application types.

On September 19, 2023 the USPTO conducted one of its “training events” relating to Patentcenter.  During the event, an attendee observed that the web-based issue fee payment function is broken for 35-series applications, and asked when the USPTO would fix this problem in Patentcenter.  One might have expected an answer from the USPTO along the lines of “it will get fixed real soon now”.  Instead, the USPTO takes the position that it will never fix this defect.  The USPTO doubles down on this wrongheaded response, stating that it will document its refusal to fix the defect by adding some language to “the quick start guide” stating that the defect will never get fixed.

You can hear the presenter’s own voice (MP3 file) here:

 

Here is a transcript:

Question:  In Patentcenter the web-based issue fee transmittal does not work for 35-series applications.

USPTO answer:  That’s correct.  Web 85B is not available for Hague applications.  It is only available for utility (non-provisional), plant and design applications.   So we will put a link to this information that was outlined in the Web-based Issue Fee Transmittal Quick Start Guide.

So you are correct, the web 85B is not available for Hague applications, and that is due to patent rules.

By the way, there is no patent rule stating that the web-based Issue Fee transmittal function ought not to be available for Hague (35-series) applications.  The presenter was just making that up.