DEPARTMENT OF COMMERCE
Patent and Trademark Office
37 CFR Part 1
[Docket No.: 99100008272-0123-02]
RIN 0651-AB07
Changes to Permit Payment of
Patent and Trademark Fees by Credit Card
AGENCY: Patent and Trademark Office, Commerce.
ACTION: Final rule.
SUMMARY: The United States Patent and Trademark Office (Office) is
amending the rules of practice to provide for the payment of any patent
process or trademark process fee by credit card. The Office previously
limited payment by credit card to the fees required for information
products or for an electronic submission of or in a trademark
application. The Office will now accept payment of any patent process
fee, trademark process fee, or information product fee by credit card.
EFFECTIVE DATES: The amendment to 1.21 is effective July 24, 2000.
Section 1.23 is effective June 5, 2000.
FOR FURTHER INFORMATION CONTACT:
Concerning this final rule: Robert W. Bahr, by telephone at (703)
308-6906, 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: It has been the practice of the United States
Patent and Trademark Office (Office) to accept payment of fees for
information products by credit card, but not to accept patent process
fees or trademark process fees by credit card. The Office recently
revised 37 CFR 1.23 to expressly permit payment of fees by credit card
``in an electronically filed trademark application or electronic
submission in a trademark application.'' See Trademark Law Treaty
Implementation Act Changes, Final Rule, 64 FR 48989, 48917 (September 8,
1999), 1226 Off. Gaz. Pat. Office 103, 120 (September 23, 1999) (TLTIA
Final Rule). As explained in the TLTIA Final Rule:
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 (September 8, 1999), 1226 Off. Gaz. Pat. Office at 110.
The Office is now amending the rules of practice to permit payment of
any patent process fee, trademark process 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 process or trademark process 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 process or trademark process 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 during a patent, trademark, or other proceeding. The Credit
Card Payment Form (PTO-2038) 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 an 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 Office will not be liable in the event that the credit
card number becomes public knowledge.
35 U.S.C. 42(d) and 1.26 (which concern refund of patent and
trademark fees) also apply to requests for refund of fees paid by credit
card. Any refund of a fee paid by credit card will be by a credit to the
credit card account to which the fee was charged. The Office will not
refund a fee paid by credit card by Treasury check, electronic funds
transfer, or credit to a deposit account ( 1.25).
Finally, any payment of a patent process or trademark process fee by
credit card must be in writing (see 1.2), preferably on the Credit
Card Payment Form (PTO-2038). If a Credit Card Payment Form or other
document authorizing the Office to charge a patent process or trademark
process fee to a credit card does not contain the information necessary
to charge the fee to the credit card, the customer must submit a revised
Credit Card Payment Form or document containing the necessary
information. Office employees will not accept oral (telephonic)
instructions to complete the Credit Card Payment Form or otherwise
charge a patent process or trademark process fee (as opposed to
information product or service fees) to a credit card.
Discussion of Specific Rules
Title 37 of the Code of Federal Regulations, Part 1, is amended as
follows:
Section 1.21: Section 1.21(m) is 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(a) is amended to add the phrase ``national
bank notes'' in the first sentence. This phrase was inadvertently
deleted in the TLTIA Final Rule.
Section 1.23(b) is amended by revising the first sentence to eliminate
the restriction that the payment of money required for United States
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.''
Response to Comments
The Office published a notice (Notice of Proposed Rulemaking)
proposing changes to the rules of practice to implement payment of
patent and trademark fees by credit card. See Changes to Permit Payment
of Patent and Trademark Office Fees by Credit Card, Notice of Proposed
Rulemaking, 64 FR 59701 (November 3, 1999), 1228 Off. Gaz. Pat. Office
163 (November 23, 1999). The Office received fifteen written comments in
response to the Notice of Proposed Rulemaking. Most of the comments
supported changing the rules of practice to permit payment of all patent
and trademark fees by credit card. Other comments and the Office's
responses to the comments follow.
Comment (1): One comment suggested that the Office revise 1.23 to
permit customers to designate their deposit account as overdraft
protection for check and credit card payments. The comment further
suggested that the charge in 1.21(m) should be less for those
customers designating their deposit account as overdraft protection for
check and credit card payments.
Response: Section 1.25 currently permits customers to provide a general
authorization to charge fees to a deposit account. Therefore, no change
to 1.23 is necessary to permit customers to authorize the charging of
any fee deficiency (e.g., due to a returned check or refused charge) to
a deposit account. Since the Office's cost of processing the returned
check (or refused charge) is not decreased because a customer has
authorized the charging of the fee deficiency resulting from the
returned check or refused charge to a deposit account, the Office is not
providing a lower fee for processing a returned check or refused charge
in such a situation. Nevertheless, customers may still wish to provide
an authorization to charge fee deficiencies (e.g., due to a returned
check or refused charge) to a deposit account to avoid the adverse
results of non-payment of a fee (e.g., loss of a filing date in a
trademark application or abandonment of a patent or trademark
application).
Comment (2): One comment suggested that the Office permit use of direct
bank debit cards.
Response: The Office currently does not accept payment by bank debit
cards, since these cards usually require the use of a personal
identification number (or PIN). The Office will add other methods of
payment (including bank debit cards) as soon as the systems and
procedures for implementing them have been developed.
Comment (3): Another comment suggested that the Office permit the use of
a ``re-chargeable'' credit card (i.e., a card having a pre-applied
balance against which charges may be made).
Response: A ``re-chargeable'' credit card program would operate in a
manner similar to the existing deposit account program. Thus, a
``re-chargeable'' credit card program in addition to the current deposit
account program does not have sufficient benefit to justify the
administrative burden of maintaining these two duplicative programs.
Comment (4): Several comments suggested that the Office permit use of an
AMERICAN EXPRESS card because it has no upper limit. Another comment
suggested that the Office permit use of all major credit cards,
including AMERICAN EXPRESS cards and DINER'S CLUB cards. Another
comment suggested that if the Office intends to accept AMERICAN
EXPRESS cards, the language of 1.23 must be changed since AMERICAN
EXPRESS does not consider its card to be a credit card.
Response: The Office desires to maximize convenience to its customers
and is committed to adding additional credit cards and other methods of
payments as soon as the systems and procedures for implementing them
have been developed. In the meantime, the Office currently accepts
charges to the following credit cards: AMERICAN EXPRESS, DISCOVER,
MASTER CARD, and VISA. The Office considers each of these cards to
be a ``credit card'' within the meaning of 1.23.
Comment (5): One comment suggested that the Office should retain the
Credit Card Form (PTO-2038) in the file of the patent or trademark
proceeding (simply redacting the credit card number) so that third
parties may determine whether the proper fee was actually authorized and
paid.
Response: The Office file of a patent or trademark proceeding in which a
fee was paid by credit card will contain a printout from the Office's
Revenue Accounting and Management (RAM) system of the fee authorized and
paid. When a fee is paid by check in a patent or trademark proceeding,
the Office file includes only a printout from the RAM system of the fee
paid and an indication that it was paid by check. A copy of the check
used to pay the fee is not retained in the file for review by third
parties. There is no need to have a different practice for credit card
payments.
Comment (6): One comment suggested that the proposed change to permit
patent and trademark payments by credit card is an excellent idea,
especially if the Office permits the Credit Card Form (PTO-2038) to be
submitted by facsimile.
Response: Credit card payments by facsimile will be permitted except in
situations in which facsimile submission of correspondence is not
permitted in 1.6(d). Customers will be responsible for transmitting
the credit card form to the correct organization within the Office by
use of the correct facsimile number.
Comment (7): One comment suggested that the Office should permit a
general authorization to charge fees to a credit card, rather than
requiring customers to specify an exact amount. Another comment
suggested that the Office permit customers to specify a charge amount of
``up to and including XX'' (the top estimated fee due).
Response: The Office currently does not have systems and procedures in
place to accept authorization to charge an unspecified amount to a
credit card. However, the Office desires to maximize convenience to its
customers and is looking into ways for customers to pay by credit card
without specifying the exact dollar amount.
Comment (8): One comment suggested that if a customer uses his or her
own form containing the same information as the Credit Card Form
(PTO-2038), the Office should accept and treat such information with the
same liability as with the Credit Card Form (PTO-2038).
Response: When a customer uses his or her own form containing the same
information as the Credit Card Form (PTO-2038) in a patent or trademark
proceeding, the Office will attempt to redact the credit card number
(except for the last four digits) from the form before it is placed in
the file of the patent or trademark proceeding. Nevertheless, the Office
strongly encourages customers to use the Office's Credit Card Form
(PTO-2038) when paying fees by credit card. The Office will not accept
liability for release of credit card information when a customer chooses
to use his or her own form rather than the Office's Credit Card Form
(PTO-2038).
Comment (9): One comment suggested that the Office could avoid including
credit card information in a file open to public inspection (as an
alternative to the Credit Card Form (PTO-2038)) by assigning a number or
other identifier to a credit card and permitting the customer/cardholder
to charge fees to that credit card by reference to the pre-assigned
number or identifier.
Response: The Office currently does not store credit card information
within any financial systems or databases for access by fee-processing
personnel. The Office desires to maximize convenience to its customers
and is looking into ways to assign and maintain numbers or identifiers
for each credit card number. The Office will implement such a practice
as soon as the necessary systems and procedures have been developed.
Comment (10): One comment suggested that the fees charged by credit card
institutions for use of a credit card should be borne solely by
customers who pay fees by credit card. The comment specifically
suggested that the Office impose a surcharge in excess of the given
patent or trademark fee on all credit card payments.
Response: Merchant fees charged for credit card transactions are paid by
the Department of the Treasury. Processing credit card transactions
results in lower costs to the Federal Government when compared to
processing payments made by checks. Therefore, there is no need to
impose a surcharge for credit card transactions.
Comment (11): One comment suggested that the Office does not always
properly expunge information that should not be part of a record open to
public inspection, so the Office should inform the public of its
expected compliance rate in another notice of proposed rulemaking before
adopting a final rule change. Alternatively, the comment suggests that
the Office should accept liability for any erroneous disclosure of
credit card information included on the Credit Card Form (PTO-2038).
Response: In view of the overwhelming support for the proposed change to
permit payment of patent and trademark fees by credit card (and for the
prompt adoption of such change), the Office considers it to be contrary
to the public interest to delay the adoption of this final rule. The
incidental situations in which confidential information was
inadvertently released to the public do not warrant delay particularly
since use of a credit card is optional.
Classification
Administrative Procedure Act
Pursuant to the authority at 5 U.S.C. 553(d)(1), the amendment to
1.23 is excepted from the thirty-day advance publication requirement of
5 U.S.C. 553(d) because it relieves a restriction.
Regulatory Flexibility Act
The Chief Counsel for Regulation of the Department of Commerce has
certified to the Chief Counsel for Advocacy, Small Business
Administration, that the changes in this final rule will not have a
significant impact on a substantial number of small entities (Regulatory
Flexibility Act, 5 U.S.C. 605(b)). The Office did not previously 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 in this final rule will 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, national bank note, money order,
or charge to a deposit account. Based upon the number of small entities
who pay fees to the 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 in this final rule will not have a
significant economic impact on any business.
Executive Order 13132
This rulemaking does not contain policies with federalism
implications sufficient to warrant preparation of a Federalism
Assessment under Executive Order 13132 (August 4, 1999).
Executive Order 12866
This rulemaking has been determined to be not significant for
purposes of Executive Order 12866 (September 30, 1993).
Paperwork Reduction Act
This final rule 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
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.
OMB Number: 0651-0043.
Title: United States Patent and Trademark Office Fees.
Form Number: PTO-2038.
Type of Review: Approved through January of 2003.
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 Office need to provide
information concerning the purpose for the fee so that the 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.
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, Office
of Patent Legal Administration, United States 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 United States 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.
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 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. 2(b)(2).
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 revised to read as follows:
1.23 Methods of payment.
(a) All payments of money required for United States Patent and
Trademark Office fees, including fees for the processing of
international applications ( 1.445), shall be made in U.S. dollars and
in the form of a cashier's or certified check, Treasury note, national
bank notes, or United States Postal Service money order. If sent in any
other form, the Office may delay or cancel the credit until collection
is made. Checks and money orders must be made payable to the Director of
the United States Patent and Trademark Office. (Checks made payable to
the Commissioner of Patents and Trademarks will continue to be
accepted.) Payments from foreign countries must be payable and
immediately negotiable in the United States for the full amount of the
fee required. Money sent to the Office by mail will be at the risk of
the sender, and letters containing money should be registered with the
United States Postal Service.
(b) Payments of money required for United States Patent and Trademark
Office fees may also be made by credit card. Payment of a fee by credit
card must specify the amount to be charged to the credit card and such
other information as is necessary to process the charge, and is subject
to collection of the fee. The Office will not accept a general
authorization to charge fees to a credit card. 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 becomes public knowledge.
May 15, 2000 Q. TODD DICKINSON
Under Secretary of Commerce for
Intellectual Property and Director of the
United States Patent and Trademark Office