DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
37 CFR Part 1
RIN 0651-AA98
Changes to Implement the Patent Business Goals
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Final rule and correction to final rule.
SUMMARY: The United States Patent and Trademark Office (Office)
published a final rule in the Federal Register of September 8, 2000,
revising the rules of practice in patent cases to implement the Patent
Business Goals. This document corrects errors in that final rule and
amends the Rules of Practice for consistency with the Patent business
Goals final rule.
DATES: Effective Date: December 18, 2000. Applicability date: For fees
paid prior to November 7, 2000, the two-year time period for requesting
a refund is extended to expire on the later of February 16, 2001.
FOR FURTHER INFORMATION CONTACT: Hiram H. Bernstein ((703) 305-8713) or
Robert W. Bahr ((703) 308-6906), Senior Legal Advisors, or Robert J.
Spar, Director ((703) 308-5107), Office of Patent Legal Administration
(OPLA), directly by phone, or by facsimile to (703) 305-1013, marked to
the attention of Mr. Bernstein, or by mail addressed to: Box Comments--
Patents, Commissioner for Patents, Washington, DC 20231.
SUPPLEMENTARY INFORMATION: The Office published a final rule in the
Federal Register of September 8, 2000 (65 FR 54604), entitled ``Changes
to Implement Patent Business Goals'' (final rule). This document
corrects errors in that final rule as discussed below.
The final rule is corrected to indicate that the changes to
Secs. 1.52(e), 1.96, and 1.821 et seq. concerning the submission of
computer program listings and sequence listings are effective on
September 8, 2000, rather than November 7, 2000.
The final rule is corrected to indicate that the time period for
requesting a refund for fees paid prior to November 7, 2000, expires
the later of November 8, 2000 (rather than November 7, 2002), or two
years from the date the fee was paid. Since this correction will not be
published until after November 7, 2000, the two-year time period for
requesting a refund is extended to expire on the later of the date that
is sixty days after publication of this correction notice in the
Federal Register or the date that is two years from the date the fee
was paid.
The final rule is corrected to eliminate the sentences indicating
that only the paper portions of the application will be published as
patent application publications or patents. Portions of an application
submitted on an electronic medium under Sec. 1.52(e) will be available
(published) at least through an electronic medium.
The final rule is corrected to indicate that if continuity data is
included in an application data sheet, but not in the first sentence of
the specification, the continuity data to be set forth in the
application data sheet will not appear in the first line of the
specification in the patent. In such a situation, the continuity data
will only appear on the front page of the patent.
The final rule is corrected to delete the sentence indicating that
Sec. 1.78(a)(4) is additionally amended by deletion of the term
``copending'' as a requirement for a nonprovisional application to
claim priority to a provisional application. Section 1.78 was
previously amended to delete the copendency requirement for a
nonprovisional application claiming priority to a provisional
application. See Changes to Application Examination and Provisional
Application Practice, interim rule, 65 FR 14865, 14867, 14872 (Mar. 20,
2000), 1233 Off. Gaz. Pat. Office 47, 48, 53 (Apr. 11, 2000).
Section 1.14(h) in the final rule is corrected to refer to
``Sec. 1.47(c)'' rather than ``Secs. 1.47(a) and (b)'' (the relevant
portion of Secs. 1.47(a) and (b) was transferred to new Sec. 1.47(c)).
Sections 1.16(a) through (l), 1.17(a) through (e), (r) and (s),
1.18(a) through (c), 1.20(d) through (h) and 1.492(a) through (e) are
corrected to change their reference to ``Sec. 1.9(f)'' to a reference
to ``Sec. 1.27(a)'' (the substance of former Sec. 1.9(f) was
transferred to Sec. 1.27(a)).
Section 1.20(b) is corrected to indicate that its fee is a
processing fee (rather than a petition fee).
Section 1.53(c) is corrected to change its reference to
``Sec. 1.78(a)(3)'' to a reference to ``35 U.S.C. 119(e) and
Sec. 1.78(a)(4)'' (the substance of former Sec. 1.78(a)(3) was
transferred to ``Sec. 1.78(a)(4)).''
Section 1.366 is corrected to change its reference to
``Sec. 1.28(b)'' to a reference to ``Sec. 1.27(g)'' (the substance of
former Sec. 1.28(b) was transferred to Sec. 1.27(g)).
In rule FR Doc. 00-22392, published on September 8, 2000 (65 FR
54604), make the following corrections and 37 CFR Part 1 is amended as
follows:
1. On page 54604, in column 1, the sentence ``This rule is
effective November 7, 2000, except that the changes to Secs. 1.27,
1.78, 1.131, 1.132, 1.137, 1.152, 1.155, 1.324, 1.366, 1.740, and
1.760, and the removal of Sec. 1.44 are effective September 8, 2000''
should read ``This rule is effective November 7, 2000, except that the
changes to Secs. 1.27, 1.78, 1.52(e), 1.96, 1.131, 1.132, 1.137, 1.152,
1.155, 1.324, 1.366, 1.740, 1.760, 1.821, 1.823, 1.824, and 1.825, and
the removal of Sec. 1.44 are effective September 8, 2000.''
2. On page 54608, in the sentence bridging columns 2 and 3, ``The
two year time period for requesting a refund will end two years and
sixty days from the date of publication in the Federal Register for
fees paid prior to sixty days from the date of publication in the
Federal Register, or two years from payment of the fee for fees paid on
or after sixty days from the date of publication in the Federal
Register'' should read ``For fees paid prior to sixty days from the
date of publication in the
Federal Register, the two-year time period for requesting a refund will
expire on the later of November 7, 2000, or the date that is two years
from the date the fee was paid.''
3. On page 54621, in column 1, third paragraph, remove the
sentences ``Only the paper portions of the application will, under our
current procedures, be published, either as published applications or
patents'' and ``The Office can thus require that certain information,
such as related to an elected species, be submitted in the proper form
(paper) to be printed.''
4. On page 54626, in column 3, first incomplete paragraph, the
sentence ``If continuity data is included in an application data sheet,
but not in the first sentence of the specification, the continuity data
to be set forth in the first line of the patent will be taken from the
application data sheet'' should read ``If continuity data is included
in an application data sheet, but not in the first sentence of the
specification, the continuity data to be set forth in the application
data sheet will not be printed in the first line of the specification
in the patent.''
5. On page 54628, in column 1, fourth paragraph, remove the
sentence ``Section 1.78(a)(4) is additionally amended by deletion of
the term `copending' as a requirement for a nonprovisional application
claiming priority to a provisional application in view of the `American
Inventors Protection Act of 1999.'''
Sec. 1.14 [Corrected]
6. On page 54658, in the first column, Sec. 1.14, paragraph (h),
line 5, correct ``Secs. 1.47(a) and (b)'' to read ``Sec. 1.47(c)''.
PART 1--RULES OF PRACTICE IN PATENT CASES
7. The authority citation for 37 CFR Part 1 continues to read as
follows:
Authority: 35 U.S.C. 2(b)(2).
8. Section 1.16 is amended by revising paragraphs (a) through (l)
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))............................. $355.00
By other than a small entity.................................. $710.00
(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))............................. $40.00
By other than a small entity.................................. $80.00
(c) In addition to the basic filing fee in an original application,
except provisional applications, for filing or later presentation of
each claim (whether independent or dependent) in excess of 20 (Note
that Sec. 1.75(c) indicates how multiple dependent claims are
considered for fee calculation purposes.):
By a small entity (Sec. 1.27(a))............................. $9.00
By other than a small entity.................................. $18.00
(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))............................. $135.00
By other than a small entity.................................. $270.00
(e) Surcharge for filing the basic filing fee or oath or
declaration on a date later than the filing date of the application,
except provisional applications:
By a small entity (Sec. 1.27(a))............................. $65.00
By other than a small entity.................................. $130.00
(f) Basic fee for filing each design application:
By a small entity (Sec. 1.27(a))............................. $160.00
By other than a small entity.................................. $320.00
(g) Basic fee for filing each plant application, except provisional
applications:
By a small entity (Sec. 1.27(a))............................. $245.00
By other than a small entity.................................. $490.00
(h) Basic fee for filing each reissue application:
By a small entity (Sec. 1.27(a))............................. $355.00
By other than a small entity.................................. $710.00
(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))............................. $40.00
By other than a small entity.................................. $80.00
(j) In addition to the basic filing fee in a reissue application,
for filing or later presentation of each claim (whether independent or
dependent) in excess of 20 and also in excess of the number of claims
in the original patent (Note that Sec. 1.75(c) indicates how multiple
dependent claims are considered for fee purposes.):
By a small entity (Sec. 1.27(a))............................. $9.00
By other than a small entity.................................. $18.00
(k) Basic fee for filing each provisional application:
By a small entity (Sec. 1.27(a))............................. $75.00
By other than a small entity.................................. $150.00
(l) Surcharge for filing the basic filing fee or cover sheet
(Sec. 1.51(c)(1)) on a date later than the filing date of the
provisional application:
By a small entity (Sec. 1.27(a))............................. $25.00
By other than a small entity.................................. $50.00
* * * * *
9. Section 1.17 is amended by revising paragraphs (a) through (e),
(r) and (s) to read as follows:
Sec. 1.17 Patent application and reexamination processing fees.
(a) Extension fees pursuant to Sec. 1.136(a):
(1) For reply within first month:
By a small entity (Sec. 1.27(a)).......................... $55.00
By other than a small entity............................... $110.00
(2) For reply within second month:
By a small entity (Sec. 1.27(a)).......................... $195.00
By other than a small entity............................... $390.00
(3) For reply within third month:
By a small entity (Sec. 1.27(a)).......................... $445.00
By other than a small entity............................... $890.00
(4) For reply within fourth month:
By a small entity (Sec. 1.27(a)).......................... $695.00
By other than a small entity............................... $1,390.00
(5) For reply within fifth month:
By a small entity (Sec. 1.27(a)).......................... $945.00
By other than a small entity............................... $1,890.00
(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)).......................... $155.00
By other than a small entity............................... $310.00
(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)).......................... $155.00
By other than a small entity............................... $310.00
(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)).......................... $135.00
By other than a small entity............................... $270.00
(e) To request continued examination pursuant to Sec. 1.114:
By a small entity (Sec. 1.27(a)).......................... $355.00
By other than a small entity............................... $710.00
* * * * *
(r) For entry of a submission after final rejection under
Sec. 1.129(a):
By a small entity (Sec. 1.27(a)).......................... $355.00
By other than a small entity............................... $710.00
(s) For each additional invention requested to be examined under
Sec. 1.129(b):
By a small entity (Sec. 1.27(a)).......................... $355.00
By other than a small entity............................... $710.00
10. 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)).......................... $620.00
By other than a small entity............................... $1,240.00
(b) Issue fee for issuing a design patent:
By a small entity (Sec. 1.27(a)).......................... $220.00
By other than a small entity............................... $440.00
(c) Issue fee for issuing a plant patent:
By a small entity (Sec. 1.27(a)).......................... $300.00
By other than a small entity............................... $600.00
* * * * *
11. Section 1.20 is amended by revising paragraphs (b) and (d)
through (h) to read as follows:
Sec. 1.20 Post issuance fees.
* * * * *
(b) Processing fee for correcting inventorship in a patent
(Sec. 1.324)--$55.00.
* * * * *
(d) For filing each statutory disclaimer (Sec. 1.321):
By a small entity (Sec. 1.27(a)).......................... $55.00
By other than a small entity............................... $110.00
(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)).......................... $425.00
By other than a small entity............................... $850.00
(f) 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 eight years; the fee is due by seven years and
six months after the original grant:
By a small entity (Sec. 1.27(a)).......................... $975.00
By other than a small entity............................... $1,950.00
(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)).......................... $1,495.00
By other than a small entity............................... $2,990.00
(h) Surcharge for paying a maintenance fee during the six-month
grace period following the expiration of three years and six months,
seven years and six months and eleven years and six months after the
date of the original grant of a patent based on an application filed on
or after December 12, 1980:
By a small entity (Sec. 1.27(a)).......................... $65.00
By other than a small entity............................... $130.00
* * * * *
12. Section 1.53 is amended by revising paragraph (c)(4) to read as
follows:
Sec. 1.53 Application number, filing date, and completion of
application.
* * * * *
(c) * * *
(4) A provisional application is not entitled to the right of
priority under 35 U.S.C. 119 or 365(a) or Sec. 1.55, or to the benefit
of an earlier filing date under 35 U.S.C. 120, 121 or 365(c) or
Sec. 1.78 of any other application. No claim for priority under 35
U.S.C. 119(e) or Sec. 1.78(a)(4) may be made in a design application
based on a provisional application. No request under Sec. 1.293 for a
statutory invention registration may be filed in a provisional
application. The requirements of Secs. 1.821 through 1.825 regarding
application disclosures containing nucleotide and/or amino acid
sequences are not mandatory for provisional applications.
* * * * *
13. Section 1.366 is amended by revising paragraph (f) to read as
follows:
Sec. 1.366 Submission of maintenance fees.
* * * * *
(f) Notification of any change in status resulting in loss of
entitlement to small entity status must be filed in a patent prior to
paying, or at the time of paying, the earliest maintenance fee due
after the date on which status as a small entity is no longer
appropriate. See Sec. 1.27(g).
* * * * *
14. Section 1.492 is amended by revising paragraphs (a) through (e)
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)).......................... $345.00
By other than a small entity............................... $690.00
(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)).......................... $355.00
By other than a small entity............................... $710.00
(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)).......................... $500.00
By other than a small entity............................... $1,000.00
(4) Where the international preliminary examination fee as set
forth in Sec. 1.482 has been paid to the United States Patent and
Trademark Office and the international preliminary examination report
states that the criteria of novelty, inventive step (non-obviousness),
and industrial applicability, as defined in PCT Article 33(1) to (4)
have been satisfied for all the claims presented in the application
entering the national stage (see Sec. 1.496(b)):
By a small entity (Sec. 1.27(a)).......................... $50.00
By other than a small entity............................... $100.00
(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)).......................... $430.00
By other than a small entity............................... $860.00
(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)).......................... $40.00
By other than a small entity............................... $80.00
(c) In addition to the basic national fee, for filing or later
presentation of each claim (whether independent or dependent) in excess
of 20 (Note that Sec. 1.75(c) indicates how multiple dependent claims
are considered for fee calculation purposes.):
By a small entity (Sec. 1.27(a)).......................... $9.00
By other than a small entity............................... $18.00
(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)).......................... $135.00
By other than a small entity............................... $270.00
(e) Surcharge for filing the oath or declaration later than 20
months from the priority date pursuant to Sec. 1.494(c) or later than
30 months from the priority date pursuant to Sec. 1.495(c):
By a small entity (Sec. 1.27(a)).......................... $65.00
By other than a small entity............................... $130.00
* * * * *
December 8, 2000 Q. TODD DICKINSON
Under Secretary of Commerce for
Intellectual Property and Director of the
United States Patent and Trademark Office