New calculated field suggestion - EBD
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The USPTO is instituting new fees on continuations/divisionals/CIPs January 19, 2025, that are based on how long ago the "EBD" (earliest benefit date) for the application is. The EBD is the earliest US non-provisional date that the continuing application claims priority benefit to (a PCT application is viewed as a US non-provisional). If the EBD is more than 6 years ago and no more than 9 years ago, a $2700 fee is due (undiscounted). If more than 9 years ago, then the fee is $4000. Federal register notice is here.
It would be very helpful if AppColl could have fields that indicate the EBD and the number of years since the EBD for each US non-provisional application (or at least, each continuing application). Such fields would ideally be available via the Matters Reports interface so that we can generate reports with the data.
The EBD would be calculated by looking at each US non-provisional application listed as a priority connection for such an application and then using the earliest filing date for those connections as the EBD.
NOTE: The Federal Register does note that if priority to a US provisional is claimed using 35 USC 120 instead of 35 USC 119, then such a provisional would be considered for the EBD. Since AppColl doesn't track what kind of benefit claim is made, it technically does not know if a provisional should or should not be included in the EBD calculation. However, I am unaware of any scenario in which anyone would actually want to claim priority benefit to a provisional using 35 USC 120, and AppColl's working assumption when filling out ADSs is to use 35 USC 119, so I think it is safe to assume that any provisionals that are in the priority chain were claimed via 35 USC 119 and thus should not be considered in the EBD calculation.
Can this be done?
Christian
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@BruceY9495 UPDATE: Our account has EBD data for about 40 matters, but that's it. I guess it is still updating/being calculated.
Our account had the EBD data in it as of this morning, so I think they have added it.Thanks, Gregg!
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@gregg_appcoll
It looks like the EBD field is calculated when a matter is opened, so it can then be saved. But it has not yet been calculated for all matters because if I add it as a column in the Matters module, it is blank for most matters. Are there plans to proactively calculate EBD for all matters in the system?
It would be a pain to go in and do it for all pending matters. -
We're working on populating this date in the next day or so. Thanks for your understanding.
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@ChristianS9906 I just put in a support ticket asking the same question.
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@gregg_appcoll Hi Gregg, do you know when the EBD field will be populated with data for all our existing US matters? The field is there, but not very useful to us without that info...would rather not have to add it all manually.
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@ChristianS9906 Looks like the EBD field is now available for those of you looking to use it. Thanks!
UPDATE: The field is now available, but there is no data in it for any of our pending matters.... Can it be populated?
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@ChristianS9906 Yes, I have been manually updating it for each filing so that I could more easily calculate expiration dates. Having an auto-populated EBD date will be good. I never really understood the purpose for "Official Filing Date" in the original definition of the matter record.
What about using EBD and PTA to auto-populate Expiration date? I understand that AppColl may not want to do that for liability reasons and you would also need to have PTE (which none of my clients get) to fully implement expiration date calculations.
I still don't see EBD. Guess it is still 'coming soon' but I am looking forward to having it.
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Bruce and Christian,
Official Filing Date is not auto-populated. It is a manual entry field.
The EBD is being deployed in the next day or so. I will add back to this thread. Thanks for the patience.
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@BruceY9495 I'm curious as well--it was supposed to have been instituted end of last week.
For the official filing date field, have you been manually updating it with the EBD all these years? I can't recall if it auto-populates, but if it does, it's only doing it for national stage applications.
If you have, good foresight!
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What is the status of this? I don't see EBD as an option for fields in the trigger events for task types.
I have actually been using the "Official Filing Date" field for this purpose since I began using AppColl 10 years ago. It is the same date that is useful for calculating the start of the 20 year term.
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@adminT7009 Would it also be possible to have it tell us how many RCEs have been filed in a case?
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Hi Christian, the new EBD field will be added by the end of this week. Thanks.
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@gregg_appcoll Hi Gregg, just wanted to check on this--is there an ETA on when this feature will be implemented? Ideally, it would be available this week or early next so that we have a little time before the new rules kick in in which to file CONs that might fall under the new fee schedule before it comes into effect.
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@gregg_appcoll this is really great news. Would it also be possible to have it tell us how many RCEs have been filed in a case?
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Yes this will be done by year-end.
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@gregg_appcoll Given the timeline, it would be helpful to have this feature before end of year. Any chance of that?
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@ChristianS9906 Got it. I will add this as a new feature request.
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@gregg_appcoll Thanks for responding, Gregg--the idea would be to ignore a) non-US priority apps and b) US provisionals for the purpose of calculating the EBD.
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Hi Christian,
We can probably do this with the assumption that priority claims are made based on 35 USC 119. Just so I am crystal clear, we would put the EBD as the earliest filed application whether it's provisional or not? Or ignore the provisional's filing date?
Gregg
