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Obtaining Refunds from the USPTO

By Susan Pan and Natalya Dvorson of Sughrue Mion PLLC

Ms. Pan specializes in patent portfolio building for large and small companies, including patent preparation, prosecution and appeals. Ms. Pan's legal expertise also extends to multi-party complex patent litigation before several U.S. federal district courts, the U.S. International Trade Commission, and the U.S. Federal Trade Commission. Ms. Pan counsels clients in patent licensing and valuation, taking into account probabilities of infringement and invalidity.

Ms. Dvorson prepares and prosecutes applications relating to computer software and the electrical and mechanical arts. Specifically, Natalya has experience drafting and prosecuting applications directed to business methods, document management, telecommunications, distributed networking, and various aspects of memory including RAID arrays, data compression, encryption/decryption. Ms. Dvorson is fluent in Russian.

Patent applications incur government fees at the outset of filing, throughout the duration of prosecution and even after patent grant. When filing many patent applications, it is almost inevitable that mistakes are made leading to excess fees being paid. On occasion, the USPTO also makes an error and charges Applicants the wrong fees or inadvertently double-charges fees. Unfortunately, requesting a refund is not as simple as picking up the phone. A formal paper must be filed, explaining the circumstances and providing ...

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