The Check is in the Mail!

Not much exciting going on at the PTAB until the new Director arrives in a few weeks. But, there was at least one new POP decision that is worth mentioning.

In Toshiba America Electronic Components, Inc. v. Monument Peak Ventures, LLC the Precedential Opinion Panel (POP) held that payment for an AIA trial petition is effective when received by the Treasury. I know, I know…try to contain your excitement.

In the earlier panel decision institution was denied under § 315(b)’s one-year bar on the basis that the fee payment was untimely (and the petition, therefore incomplete). The panel reasoned that even thought Petitioner had timely filed its Petition and wired the fee payment to the U.S. Treasury in accordance with the USPTO’s instructions, and the Treasury actually received the funds before the expiration of the time bar, notifying the USPTO that same day— the USPTO didn’t get paid until after the expiration of the one-year bar. Fortunately, the panel didn’t “knee cap” the petitioner’s attorneys for messing with its money; but, it was a rather Draconian result.

The POP vacated the panel’s decision, holding that Treasury’s confirmation of payment constituted sufficient evidence of timely payment (here)

The evidence of record thus establishes that, on December 16, 2020, Petitioner complied with the published USPTO instructions for sending a payment through Fedwire, and successfully transferred the full amount of the fee to Treasury NYC, the bank the USPTO specifically instructs to designate as its ‘Receiver’ for such payments. … Based on the Fedwire confirmation, we understand that Petitioner did everything in its power to pay the fee as instructed, and that the fee transfer was successful.

While reassuring, it is always best to use a deposit account and file early.