[Federal Register: July 31, 2001 (Volume 66, Number 147)]
[Rules and Regulations]
[Page 39447-39450]
From the Federal Register Online via GPO Access [wais.access.gpo.gov]
[DOCID:fr31jy01-18]

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DEPARTMENT OF COMMERCE

United States Patent and Trademark Office

37 CFR Part 1

[Docket No. 991105297-1167-04]
RIN 0651-AB01


Revision of Patent Fees for Fiscal Year 2002

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Final rule.

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SUMMARY: The United States Patent and Trademark Office (referred to as
``we'', ``us'', or ``our'' in this notice) is adjusting certain patent
fee amounts to reflect fluctuations in the Consumer Price Index (CPI).
Also, we are adjusting, by a corresponding amount, a few patent fees
that track the affected fees. Our Director is authorized to adjust
these fees annually by the CPI to recover the higher costs associated
with doing business. In addition, we are changing the maintenance fee
correspondence address to better serve our customers, and amending a
fee to reflect current business practice. These amendments will keep
our fees aligned with the CPI and streamline administrative matters. No
trademark fee will be adjusted.

EFFECTIVE DATE: October 1, 2001.

FOR FURTHER INFORMATION CONTACT: Matthew Lee by e-mail at
matthew.lee@uspto.gov, or by telephone at (703) 305-8051.

SUPPLEMENTARY INFORMATION: This final rule was proposed in a notice of
proposed rulemaking published at 66 FR 23642 on May 9, 2001. This rule
adjusts our fees in accordance with the applicable provisions of title
35, United States Code, as amended by the Consolidated Appropriations
Act, Fiscal Year 2000 (which incorporated the Intellectual Property and
Communications Omnibus Reform Act of 1999) (Pub. L. 106-113). This
final rule also adjusts, by a corresponding amount, a few patent fees
(37 CFR 1.17(e), (r), (s), and (t)) that track statutory fees (either
37 CFR 1.16(a) or 1.17(m)). The proposal to adjust a trademark fee has
been withdrawn; trademark fees are not affected by this final rule.
    In addition, this final rule changes the maintenance fee
correspondence address. The address change for maintenance fee payments
benefits our customers by allowing the payments to be processed within
24 hours of receipt, rather than the current time frame of three to
five days. Likewise, the funds are deposited more quickly with the
United States Treasury. The address change for correspondence related
to maintenance fees other than payments of maintenance fees in patents
permits us to respond in a timelier manner. Maintenance fee
correspondence received at the ``Box M Fee'' address will be forwarded
to the appropriate address in Sec. 1.1(d).

Background

Statutory Provisions

    Patent fees are authorized by 35 U.S.C. 41 and 35 U.S.C. 376. For
fees paid under 35 U.S.C. 41(a) and (b), independent inventors, small
business concerns, and nonprofit organizations who meet the
requirements of 35 U.S.C. 41(h)(1) are entitled to a fifty-percent
reduction.
    Subsection 41(f) of title 35, United States Code, provides that
fees established under 35 U.S.C. 41(a) and (b) may be adjusted on
October 1, 1992, and every year thereafter, to reflect fluctuations in
the CPI over the previous twelve months.
    Subsection 41(d) of title 35, United States Code, authorizes the
Director to establish fees for all other processing, services, or
materials related to patents to recover the average cost of providing
these services or materials, except for the fees for recording a
document affecting title, for each photocopy, for each black and white
copy of a patent, and for library services.
    Section 376 of title 35, United States Code, authorizes the
Director to set fees for patent applications filed under the Patent
Cooperation Treaty (PCT).
    Subsection 41(g) of title 35, United States Code, provides that new
fee amounts established by the Director under section 41 may take
effect thirty days after notice in the Federal Register and the
Official Gazette of the United States Patent and Trademark Office.

Fee Adjustment Level

    The patent statutory fees established by 35 U.S.C. 41(a) and (b)
will be adjusted on October 1, 2001, to reflect any fluctuations
occurring during the previous twelve months in the Consumer Price Index
for all urban consumers (CPI-U). In calculating these fluctuations, the
Office of Management and Budget (OMB) has determined that we should use
CPI-U data as determined by the Secretary of Labor. In accordance with
previous fee-setting methodology, we use the Administration's projected
CPI-U for the twelve-month period ending September 30, 2001, which is
3.6 percent. Based on this projection, patent statutory fees will be
adjusted by 3.6 percent.
    Certain patent processing fees established under 35 U.S.C. 41(d),
119, 120, 132(b), 376, and Public Law 103-465 (the Uruguay Round
Agreements Act) will be adjusted to reflect fluctuations in the CPI.
    The fee amounts were rounded by applying standard arithmetic rules
so that the amounts rounded will be convenient to the user. Fees of
$100 or more for other than a small entity were rounded to the nearest
$10. Fees of less than $100 were rounded to an even number so that any
comparable small entity fee will be a whole number.

General Procedures

    Any fee amount that is paid on or after the effective date of the
fee increase will be subject to the new fees then in effect. The amount
of the fee to be paid will be determined by the time of filing. The
time of filing will be determined either according to the date of
receipt in our office or the date reflected on a proper Certificate of
Mailing or Transmission, where such a certificate is authorized under
37 CFR 1.8. Use of a Certificate of Mailing or Transmission is not
authorized for items that are specifically excluded from the provisions
of Sec. 1.8. Items for which a Certificate of Mailing or Transmission
under Sec. 1.8 are not authorized include, for example, for filing of
Continued

[[Page 39448]]

Prosecution Applications (CPAs) under Sec. 1.53(d) and other national
and international applications for patents. See 37 CFR 1.8(a)(2).
    Under 37 CFR 1.10(a), any correspondence delivered by the ``Express
Mail Post Office to Addressee'' service of the United States Postal
Service (USPS) is considered filed or received in our office on the
date of deposit with the USPS. The date of deposit with the USPS is
shown by the ``date-in'' on the ``Express Mail'' mailing label or other
official USPS notation.
    To ensure clarity in the implementation of the new fees, a
discussion of specific sections is set forth below.

Discussion of Specific Rules

37 CFR 1.1  Addresses for Correspondence with the United States Patent
and Trademark Office

    Section 1.1, paragraphs (a) and (d), are revised to change the
maintenance fee correspondence address.

37 CFR 1.16  National Application Filing Fees

    Section 1.16, paragraphs (a), (b), (d), (f) through (i), and (k),
are revised to adjust fees established therein to reflect fluctuations
in the CPI.

37 CFR 1.17  Patent Application and Reexamination Processing Fees

    Section 1.17, paragraphs (a)(2) through (a)(5), (b) through (e),
(m), and (r) through (t), are revised to adjust fees established
therein to reflect fluctuations in the CPI.

37 CFR 1.18  Patent Post Allowance (Including Issue) Fees

    Section 1.18, paragraphs (a) through (c), are revised to adjust
fees established therein to reflect fluctuations in the CPI.

37 CFR 1.20  Post Issuance Fees

    Section 1.20, paragraphs (e) through (g), are revised to adjust
fees established therein to reflect fluctuations in the CPI.

37 CFR 1.21  Miscellaneous Fees and Charges

    Section 1.21, paragraph (o), is revised to reflect current business
practice. We no longer use or provide access to the Automated Patent
System.

37 CFR 1.492  National Stage Fees

    Section 1.492, paragraphs (a)(1) through (a)(3), (a)(5), (b), and
(d), are revised to adjust fees established therein to reflect
fluctuations in the CPI.

Response to Comments

    We received several comments in response to the notice of proposed
rulemaking published at 66 FR 23642 on May 9, 2001. The comments and
our responses to the comments follow:
    Comment: One comment suggested that patentees would likely be
unaware of the change of address for mailing maintenance fee payments,
which would result in the patent expiring and the patentee incurring a
surcharge to reinstate the patent.
    Response: The address change for maintenance fee payments will
permit the payments to be processed without delay, and the funds to be
deposited more quickly. Maintenance fee payments received at the old
mailing address (``Box M Fee'') will be forwarded to the new mailing
address in Sec. 1.1(d)(1) for processing. Therefore, the patentee will
not be adversely affected by the address change.
    Comment: One comment recommended that Sec. 1.1(d) be changed so
that maintenance fee payments receive the date of actual receipt in our
office or the date reflected on a proper Certificate of Mailing or
Transmission when sent to the old mailing address (``Box M Fee''). In
addition, it was also recommended that the address in Sec. 1.1(d)(2) be
clarified.
    Response: Maintenance fee payments sent inadvertently to the old
mailing address will receive the date of actual receipt in our office
or the date reflected on a proper Certificate of Mailing or
Transmission when forwarded by the office to the new mailing address in
Sec. 1.1(d)(1) for processing. For example, if we receive a paper that
does not include a Certificate of Mailing or Transmission on September
28, 2001, in Box M Fee, the paper will be accorded a date of receipt of
September 28, 2001. The paper, after we forward it to the new mailing
address in Sec. 1.1(d)(1) for processing, will continue to be accorded
the September 28, 2001, date of receipt for processing of the
maintenance fee. Again, the patentee will not be adversely affected by
the address change. Section 1.1(d)(2) has been clarified to indicate
that correspondence related to maintenance fees other than payments of
maintenance fees in patents must be sent to the Washington, D.C.
address.
    Comment: Two comments stated that we should not increase fees for
fiscal year 2002, since millions of dollars are being diverted to fund
other Federal Government operations and are not being used to improve
our performance, services, or facilities.
    Response: Our budget for fiscal year 2002 is comprised of the
expected fiscal year 2002 fee revenue (less a designated carryover
amount) added to carryover amounts from prior fiscal years. If fees are
not adjusted by CPI, the anticipated fee revenue for fiscal year 2002
would be lower; this in turn would reduce the available funding and
have a negative impact on our operations. Therefore, adjusting our fees
by CPI is critical to ensure adequate funding is available.

Other Considerations

    This final rule contains no information collection requirements
within the meaning of the Paperwork Reduction Act of 1995, 44 U.S.C.
3501 et seq. This final rule has been determined to be not significant
for purposes of Executive Order 12866. This final rule does not contain
policies with Federalism implications sufficient to warrant preparation
of a Federalism Assessment under Executive Order 13132 (August 4,
1999).
    The Chief Counsel for Regulation of the Department of Commerce has
certified to the Chief Counsel for Advocacy, Small Business
Administration, that the final rule change will not have a significant
economic impact on a substantial number of small entities (Regulatory
Flexibility Act, 5 U.S.C. 605(b)). The final rule change increases fees
to reflect the change in the CPI as authorized by 35 U.S.C. 41(f).
Further, the principal impact of the major patent fees has already been
taken into account in 35 U.S.C. 41(h)(1), which provides small entities
with a fifty-percent reduction in the major patent fees. We received
roughly 92,000 patent applications last year from small entities. Since
the average small entity fee will increase by less than $14.00, with a
minimum increase of $2.00 and a maximum increase of $55.00, there will
not be a significant economic impact on a substantial number of small
entities due to this final rule change.

List of Subjects in 37 CFR Part 1

    Administrative practice and procedure, Inventions and patents,
Reporting and recordkeeping requirements, Small businesses.

    For the reasons set forth in the preamble, we are amending title 37
of the Code of Federal Regulations, Part 1, as set forth below.

PART 1--RULES OF PRACTICE IN PATENT CASES

    1. The authority citation for 37 CFR Part 1 continues to read as
follows:

    Authority: 35 U.S.C. 2(b)(2), unless otherwise noted.

    2. Section 1.1 is amended by revising paragraphs (a) introductory
text and (d) to read as follows:

[[Page 39449]]

Sec. 1.1  Addresses for correspondence with the United States Patent
and Trademark Office.

    (a) Except for paragraphs (a)(3)(i) and (ii), and (d)(1) of this
section, all correspondence intended for the United States Patent and
Trademark Office must be addressed to either ``Commissioner of Patents
and Trademarks, Washington, DC 20231'' or to specific areas within the
Office as set out in paragraphs (a)(1), (2) and (3)(iii) of this
section. When appropriate, correspondence should also be marked for the
attention of a particular office or individual.
* * * * *
    (d) Maintenance fee correspondence.
    (1) Payments of maintenance fees in patents not submitted
electronically over the Internet should be mailed to: United States
Patent and Trademark Office, P.O. Box 371611, Pittsburgh, PA 15250-
1611.
    (2) Correspondence related to maintenance fees other than payments
of maintenance fees in patents is not to be mailed to P.O. Box 371611,
Pittsburgh, PA 15250-1611, but must be mailed to: Box M Correspondence,
Commissioner of Patents and Trademarks, Washington, DC 20231.
* * * * *

    3. Section 1.16 is amended by revising paragraphs (a), (b), (d),
(f) through (i), and (k) to read as follows:

Sec. 1.16  National application filing fees.

    (a) Basic fee for filing each application for an original patent,
except provisional, design, or plant applications:

By a small entity (Sec. 1.27(a))--$370.00
By other than a small entity--$740.00

    (b) In addition to the basic filing fee in an original
application, except provisional applications, for filing or later
presentation of each independent claim in excess of 3:

By a small entity (Sec. 1.27(a))--$42.00
By other than a small entity--$84.00

* * * * *
    (d) In addition to the basic filing fee in an original application,
except provisional applications, if the application contains, or is
amended to contain, a multiple dependent claim(s), per application:

By a small entity (Sec. 1.27(a))--$140.00
By other than a small entity--$280.00

* * * * *
    (f) Basic fee for filing each design application:

By a small entity (Sec. 1.27(a))--$165.00
By other than a small entity--$330.00

    (g) Basic fee for filing each plant application, except provisional
applications:

By a small entity (Sec. 1.27(a))--$255.00
By other than a small entity--$510.00

    (h) Basic fee for filing each reissue application:

By a small entity (Sec. 1.27(a))--$370.00
By other than a small entity--$740.00

    (i) In addition to the basic filing fee in a reissue application,
for filing or later presentation of each independent claim which is in
excess of the number of independent claims in the original patent:

By a small entity (Sec. 1.27(a))--$42.00
By other than a small entity--$84.00

* * * * *
    (k) Basic fee for filing each provisional application:

By a small entity (Sec. 1.27(a))--$80.00
By other than a small entity--$160.00

* * * * *

    4. Section 1.17 is amended by revising paragraphs (a)(2) through
(a)(5), (b) through (e), (m), and (r) through (t) to read as follows:

Sec. 1.17  Patent application and reexamination processing fees.

    (a) * * *
    (1) * * *
    (2) For reply within second month:

By a small entity (Sec. 1.27(a))--$200.00
By other than a small entity--$400.00

(3) For reply within third month:

By a small entity (Sec. 1.27(a))--$460.00
By other than a small entity--$920.00

(4) For reply within fourth month:

By a small entity (Sec. 1.27(a))--$720.00
By other than a small entity--$1,440.00

(5) For reply within fifth month:

By a small entity (Sec. 1.27(a))--$980.00
By other than a small entity--$1,960.00

    (b) For filing a notice of appeal from the examiner to the Board of
Patent Appeals and Interferences:

By a small entity (Sec. 1.27(a))--$160.00
By other than a small entity--$320.00

    (c) In addition to the fee for filing a notice of appeal, for
filing a brief in support of an appeal:

 By a small entity (Sec. 1.27(a))--$160.00
 By other than a small entity--$320.00

    (d) For filing a request for an oral hearing before the Board of
Patent Appeals and Interferences in an appeal under 35 U.S.C. 134:

By a small entity (Sec. 1.27(a))--$140.00
By other than a small entity--$280.00

    (e) To request continued examination pursuant to Sec. 1.114:

By a small entity (Sec. 1.27(a))--$370.00
By other than a small entity--$740.00

* * * * *
    (m) For filing a petition for revival of an unintentionally
abandoned application, for the unintentionally delayed payment of the
fee for issuing a patent, or for the revival of an unintentionally
terminated reexamination proceeding under 35 U.S.C. 41(a)(7)
(Sec. 1.137(b)):

By a small entity (Sec. 1.27(a))--$640.00
By other than a small entity--$1,280.00

* * * * *
    (r) For entry of a submission after final rejection under
Sec. 1.129(a):

By a small entity (Sec. 1.27(a))--$370.00
By other than a small entity--$740.00

    (s) For each additional invention requested to be examined under
Sec. 1.129(b):

By a small entity (Sec. 1.27(a))--$370.00
By other than a small entity--$740.00

    (t) For the acceptance of an unintentionally delayed claim for
priority under 35 U.S.C. 119, 120, 121, or 365(a) or (c) (Secs. 1.55
and 1.78)--$1,280.00

    5. Section 1.18 is amended by revising paragraphs (a) through (c)
to read as follows:

Sec. 1.18  Patent post allowance (including issue) fees.

    (a) Issue fee for issuing each original or reissue patent, except a
design or plant patent:

By a small entity (Sec. 1.27(a))--$640.00
By other than a small entity--$1,280.00

    (b) Issue fee for issuing a design patent:

By a small entity (Sec. 1.27(a))--$230.00
By other than a small entity--$460.00

    (c) Issue fee for issuing a plant patent:

By a small entity (Sec. 1.27(a))--$310.00
By other than a small entity--$620.00

* * * * *

    6. Section 1.20 is amended by revising paragraphs (e) through (g)
to read as follows:

Sec. 1.20  Post issuance fees.

* * * * *
    (e) For maintaining an original or reissue patent, except a design
or plant patent, based on an application filed on or after December 12,
1980, in force beyond four years; the fee is due by three years and six
months after the original grant:

By a small entity (Sec. 1.27(a))--$440.00
By other than a small entity--$880.00

    (f) For maintaining an original or reissue patent, except a design
or plant

[[Page 39450]]

patent, based on an application filed on or after December 12, 1980, in
force beyond eight years; the fee is due by seven years and six months
after the original grant:

By a small entity (Sec. 1.27(a))--$1,010.00
By other than a small entity--$2,020.00

    (g) For maintaining an original or reissue patent, except a design
or plant patent, based on an application filed on or after December 12,
1980, in force beyond twelve years; the fee is due by eleven years and
six months after the original grant:

By a small entity (Sec. 1.27(a))--$1,550.00
By other than a small entity--$3,100.00

* * * * *

Sec. 1.21  [Amended]

    7. Section 1.21 is amended by removing and reserving paragraph (o).

    8. Section 1.492 is amended by revising paragraphs (a)(1) through
(a)(3), (a)(5), (b), and (d) to read as follows:

Sec. 1.492  National stage fees.

* * * * *
    (a) The basic national fee:
    (1) Where an international preliminary examination fee as set forth
in Sec. 1.482 has been paid on the international application to the
United States Patent and Trademark Office:

By a small entity (Sec. 1.27(a))--$355.00
By other than a small entity--$710.00

    (2) Where no international preliminary examination fee as set forth
in Sec. 1.482 has been paid to the United States Patent and Trademark
Office, but an international search fee as set forth in
Sec. 1.445(a)(2) has been paid on the international application to the
United States Patent and Trademark Office as an International Searching
Authority:

By a small entity (Sec. 1.27(a))--$370.00
By other than a small entity--$740.00

    (3) Where no international preliminary examination fee as set forth
in Sec. 1.482 has been paid and no international search fee as set
forth in Sec. 1.445(a)(2) has been paid on the international
application to the United States Patent and Trademark Office:

By a small entity (Sec. 1.27(a))--$520.00
By other than a small entity--$1,040.00

    (4) * * *
    (5) Where a search report on the international application has been
prepared by the European Patent Office or the Japanese Patent Office:

By a small entity (Sec. 1.27(a))--$445.00
By other than a small entity--$890.00

    (b) In addition to the basic national fee, for filing or later
presentation of each independent claim in excess of 3:

By a small entity (Sec. 1.27(a))--$42.00
By other than a small entity--$84.00

* * * * *
    (d) In addition to the basic national fee, if the application
contains, or is amended to contain, a multiple dependent claim(s), per
application:

By a small entity (Sec. 1.27(a))--$140.00
By other than a small entity--$280.00

* * * * *

    Dated: July 25, 2001.
Nicholas P. Godici,
Acting Under Secretary of Commerce for Intellectual Property and Acting
Director of the United States Patent and Trademark Office.
[FR Doc. 01-19021 Filed 7-30-01; 8:45 am]
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