DEPARTMENT OF COMMERCE
Patent and Trademark Office
37 CFR Part 1
[Docket No.: 991008272-9272-01]
RIN 0651-AB07
Changes To Permit Payment of Patent and Trademark
Office Fees by Credit Card
AGENCY: Patent and Trademark Office, Commerce.
ACTION: Notice of proposed rulemaking.
SUMMARY: The Patent and Trademark Office (Office) is proposing to amend
the rules of practice to provide for the payment of any patent or
trademark fee by credit card. The Office previously limited payment by
credit card to the fees required for information products or for an
electronic submission with or in a trademark application. The Office is
proposing to accept payment of any patent fee, trademark fee, or
information product fee by credit card.
DATES: Comment Deadline Date: To be assured of consideration, written
comments must be received on or before December 3, 1999. While comments
may be submitted after this date, the Office cannot ensure that
consideration will be given to such comments. No public hearing will be
held.
ADDRESSES: Comments should be sent by electronic mail message over the
Internet addressed to: ccard.comments@uspto.gov. Comments may also be
submitted by mail addressed to: Box Comments-Patents, Assistant
Commissioner for Patents, Washington, D.C. 20231, or by facsimile to
(703) 308-6916, marked to the attention of Robert W. Bahr. Although
comments may be submitted by mail or facsimile, the Office prefers to
receive comments via the Internet. If comments are submitted by mail,
the Office would prefer that the comments be submitted on a DOS
formatted 3 1/2 inch disk accompanied by a paper copy.
The comments will be available for public inspection at the Special
Program Law Office, Office of the Deputy Assistant Commissioner for
Patent Policy and Projects, located at Room 3-C23 of Crystal Plaza 4,
2201 South Clark Place, Arlington, Virginia, 22202, and will be
available through anonymous file transfer protocol (ftp) via the
Internet (address: ftp.uspto.gov). Since comments will be made available
for public inspection, information that is not desired to be made
public, such as an address or phone number, should not be included in
the comments.
FOR FURTHER INFORMATION CONTACT:
Concerning this proposed rule change: Robert W. Bahr, by telephone at
(703) 305-9285, or by facsimile to (703) 308-6916 marked to the
attention of Robert W. Bahr.
Concerning the payment of fees (by credit card or otherwise) in
general: Matthew Lee, by telephone at (703) 305-8051, by e-mail at
matthew.lee@uspto.gov, or by facsimile at (703) 305-8007 marked to the
attention of Matthew Lee.
SUPPLEMENTARY INFORMATION: Patent and Trademark Office (Office) practice
has been to accept payment of fees for information products by credit
card, but not to accept patent fees or trademark fees by credit card.
The Office recently revised 37 CFR 1.23 to expressly permit payment of
money for fees ``in an electronically filed trademark application or
electronic submission in a trademark application.'' See Trademark Law
Treaty Implementation Act Changes, Final Rule Notice, 64 FR 48989, 48917
(September 8, 1999), 1226 Off. Gaz. Pat. Office 103, 120 (September 23,
1999). As explained in that final rule notice:
Section 1.23 is also amended to add a paragraph (b), providing that
payments of money for fees in electronically filed trademark
applications, or electronic submissions in trademark applications, may
also be made by credit card. The Office previously limited fee payment
by credit card to the fees required for information products, and will
continue to accept payment of information product fees by credit card.
Section 1.23(b) will also provide that payment of a fee by credit
card must specify the amount to be charged and such other information as
is necessary to process the charge, and is subject to collection of the
fee.
Section 1.23(b) will further provide that the Office will not accept
a general authorization to charge fees to a credit card. The Office
cannot accept an authorization to charge ``all required fees'' or ``the
filing fee'' to a credit card, because the Office cannot determine with
certainty the amount of an unspecified fee (the amount of the ``required
fee'' or the applicable ``filing fee'') within the time frame for
reporting a charge to the credit card company. Also, the Office cannot
accept charges to credit cards that require the use of a personal
identification number (PIN) (e.g., certain debit cards or check cards).
Section 1.23(b) also contains a warning that if credit card
information is provided on a form or document other than a form provided
by the Office for the payment of fees by credit card, the Office will
not be liable if the credit card number is made public. The Office
currently provides an electronic form for use when paying a fee in an
electronically filed trademark application or electronic submission in a
trademark application. This form will not be included in the records
open to public inspection in the file of a trademark matter. However,
the inclusion of credit card information on forms or documents other
than the electronic form provided by the Office may result in the
release of credit card information.
See Trademark Law Treaty Implementation Act Changes, 64 FR at 48906-07,
1226 Off. Gaz. Pat. Office at 110. The Office is now proposing to revise
the rules of practice to expressly accept payment of any patent fee,
trademark fee, or information product fee by credit card, subject to
actual collection of the fee.
The Office will provide a Credit Card Payment Form (PTO-2038) for use
when paying a patent or trademark fee (or the fee for an information
product) by credit card. The Office will not require customers to use
this form when paying a patent or trademark fee by credit card. If,
however, a customer provides a credit card charge authorization in
another form or document (e.g., a communication relating to the patent
or trademark), the credit card information may become part of the record
of an Office file that is open to public inspection. Information
concerning fees in general is posted on the Office's Web site at
http://www.uspto.gov, and information on completing the Credit Card
Payment Form will be posted on the Office's Web site.
The Office will not include the Credit Card Payment Form (PTO-2038)
among the records open to public inspection in the file of a patent,
trademark registration, or other proceeding. The Credit Card Payment
Form (PTO-2038) is the only form the Office uses to collect credit card
information and is the only form the Office will not make available to
the public as part of the file of a patent, trademark, or other
proceeding. As discussed above, failure to use the Credit Card Payment
Form (PTO-2038) when submitting a credit card payment may result in your
credit card information becoming part of the record of a Patent and
Trademark Office file that is open to public inspection. If the
cardholder includes a credit card number on any form or document other
than the Credit Card Payment Form, the Patent and Trademark Office will
not be liable in the event that the credit card number becomes public
knowledge.
Discussion of Specific Rules: Title 37 of the Code of Federal
Regulations, Part 1, is proposed to be amended as follows:
Section 1.21: Section 1.21(m) is proposed to be amended to make the
$50.00 fee for processing a check returned ``unpaid'' by a bank
applicable to any payment refused or charged back by a financial
institution. The burden of processing any payment refused or credit card
transaction charged back by a financial institution is the same as the
burden of processing a check returned ``unpaid'' by a bank. The phrase
``payment refused * * * by a financial institution'' includes a check
returned ``unpaid'' by a bank but also applies to the refusal by a
financial institution of a payment by other means.
Section 1.23: Section 1.23(b) is proposed to be amended by revising the
first sentence to eliminate the restriction that the payment of money
required for Patent and Trademark Office fees by credit card be limited
to fees ``in an electronically filed trademark application or electronic
submission in a trademark application.''
Review under the Paperwork Reduction Act of 1995 and Other
Considerations. This notice is in conformity with the requirements of
the Regulatory Flexibility Act (5 U.S.C. 601 et seq.), Executive Order
12612 (October 26, 1987), and the Paperwork Reduction Act of 1995 (44
U.S.C. 3501 et seq.). It has been determined that this rulemaking is not
significant for the purposes of Executive Order 12866 (September 30,
1993).
This notice involves information collection requirements which are
subject to review by the Office of Management and Budget (OMB) under the
Paperwork Reduction Act of 1995 (44 U.S.C. 3501 et seq.). As required by
the Paperwork Reduction Act of 1995 (44 U.S.C. 3507(d)), the Patent and
Trademark Office has submitted an information collection package to OMB
for its review and approval. The title, description, and respondent
description for this information collection is shown below with an
estimate of the annual reporting burdens. Included in the estimate is
the time for reviewing instructions, searching existing data sources,
gathering and maintaining the data needed, and completing and reviewing
the collection of information.
Title: Patent and Trademark Office Fees.
Form Number: PTO-2038.
Type of Review: A new collection.
Affected Public: Individuals or households, businesses or other
for-profit, not-for-profit institutions, farms, state, local or tribal
governments, and the Federal Government.
Estimated Number of Respondents: 100,000 responses per year.
Estimated Time Per Response: 12 minutes.
Estimated Total Annual Respondent Burden Hours: 20,000 hours per year.
Needs and Uses: Persons submitting fees to the Patent and Trademark
Office need to provide information concerning the purpose for the fee so
that the Patent and Trademark Office is able to: (1) Apply the fee to
the particular application, patent, trademark registration, or other
proceeding, service or product; and (2) determine whether the person has
submitted the fee(s) required by law or regulation. The Credit Card Form
provides the public with a convenient manner of paying a patent
application or service fee, trademark application or service fee, or
information product fee by credit card.
Comments are invited on: (a) Whether the collection of information is
necessary for proper performance of the functions of the agency; (b) the
accuracy of the agency's estimate of the burden; (c) ways to enhance the
quality, utility, and clarity of the information to be collected; and
(d) ways to minimize the burden of the collection of information to
respondents.
Interested persons are requested to send comments regarding the burden
estimate or any other aspects of the information requirements, including
suggestions for reducing the burden, to Robert J. Spar, Director,
Special Program Law Office, Patent and Trademark Office, Washington,
D.C. 20231, or to the Office of Information and Regulatory Affairs of
OMB, New Executive Office Building, 725 17th Street, N.W., Room 10235,
Washington, D.C. 20503, Attention: Desk Officer for the Patent and
Trademark Office.
Notwithstanding any other provision of law, no person is required to
respond to nor shall a person be subject to a penalty for failure to
comply with a collection of information subject to the requirements of
the Paperwork Reduction Act unless that collection of information
displays a currently valid OMB control number.
The Chief Counsel for Regulation of the Department of Commerce certified
to the Chief Counsel for Advocacy, Small Business Administration, that
the changes proposed in this notice if adopted would not have a
significant impact on a substantial number of small entities (Regulatory
Flexibility Act, 5 U.S.C. 605(b)). The Office does not currently permit
patent or trademark fees (except in an electronically filed trademark
application or electronic submission in a trademark application) to be
paid by credit card. The changes proposed in this notice if adopted
would permit small entities as well as non-small entities the option of
paying any patent or trademark fee by credit card. Small entities as
well as non-small entities will continue to have the option of paying
any patent or trademark fee by check, treasury note, money order, or
charge to a deposit account. Based upon the number of small entities who
pay fees to the Patent and Trademark Office each year and the percentage
of fee payments that are by credit card (where currently permitted), the
Office expects 16,000 small entities to pay a patent or trademark fee by
credit card each year. Thus, the changes proposed in this notice if
adopted would not have a significant economic impact on any business.
This notice of proposed rulemaking does not contain policies with
federalism implications sufficient to warrant preparation of a
Federalism Assessment under Executive Order 12612 (October 26, 1987).
List of Subjects in 37 CFR Part 1
Administrative practice and procedure, Courts, Freedom of
Information, Inventions and patents, Reporting and recordkeeping
requirements, Small businesses.
For the reasons set forth in the preamble, 37 CFR Part 1 is proposed to
be amended as follows:
PART 1-RULES OF PRACTICE IN PATENT CASES
1. The authority citation for 37 CFR Part 1 is revised to read as
follows:
Authority: 35 U.S.C. 6, unless otherwise noted.
2. Section 1.21 is amended by revising paragraph (m) to read as follows:
1.21 Miscellaneous fees and charges.
* * * * *
(m) For processing each payment refused (including a check returned
``unpaid'') or charged back by a financial institution - $50.00
* * * * *
3. Section 1.23 is amended by revising the first sentence of
paragraph (b) to read as follows:
1.23 Method of payment.
* * * * *
(b) Payments of money required for Patent and Trademark Office fees
may also be made by credit card.* * *
* * * * *
October 29, 1999 ROBERT M. ANDERSON
Acting Assistant Secretary of Commerce and
Acting Commissioner of Patents and
Trademarks