United States Patent and Trademark Office OG Notices: 04 June 2002
DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
37 CFR Parts 1 and 2
RIN 0651-AB51
Revision of Patent and Trademark Fees for Fiscal Year 2003
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Notice of proposed rulemaking.
SUMMARY: The United States Patent and Trademark Office
(referred to as "we", "us", or "our" in this notice) is
proposing to adjust certain patent fee amounts and a trademark fee
amount to reflect fluctuations in the Consumer Price Index (CPI). Also,
we are proposing to adjust, by a corresponding amount, a few patent
fees that track the affected fees. The Director is authorized to adjust
these fees annually by the CPI to recover the higher costs associated
with doing business.
DATES: Comments must be submitted on or before June 6, 2002.
ADDRESSES: Comments may be submitted by e-mail
addressed to matthew.lee@uspto.gov. Comments may also be submitted by
mail addressed to: Office of Finance, Crystal Park One, Suite 802,
Washington, DC, 20231, or by fax to (703) 305-8007, marked to the
attention of Matthew Lee.
FOR FURTHER INFORMATION CONTACT: Matthew Lee by e-mail
at matthew.lee@uspto.gov, by telephone at (703) 305-8051, or by fax at
(703) 305-8007.
SUPPLEMENTARY INFORMATION: This proposed rule would
adjust 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) (Public Law 106-113); and
section 1113 of title 15, United States Code. This proposed rule would
also adjust, 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)).
In addition to this proposed rule, we have also prepared another notice
of proposed rulemaking, to seek comment on a $50 per-class surcharge on
the trademark application fee and the fee for filing certain other
trademark-related documents where: (1) A Trademark Electronic
Application System (TEAS) form is available for that document and (2)
the document is filed on paper. That notice of proposed rulemaking
deals with the current trademark application fee, not the CPI adjusted
fee, and proposes that the current fee of $325 be used for the filing
of a TEAS application. A paper application filed under the same fee
schedule would be $375.
Background
Statutory Provisions
Patent fees are authorized by 35 U.S.C. 41, 119, 120, 132(b)
and 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.
Section 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.
Section 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 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.
Section 1113 of title 15, United States Code, authorizes the Director
to establish fees for the filing and processing of an application for
the registration of a trademark or other mark, and for all other
services and materials relating to trademarks and other marks.
Section 1113(a) of title 15, United States Code, allows trademark fees
to be adjusted once each year to reflect, in the aggregate, any
fluctuations during the preceding twelve months in the CPI.
Section 1113(a) also allows new trademark fee amounts to 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) are proposed to be adjusted on October 1, 2002, to reflect any
fluctuations occurring during the previous twelve months in the
Consumer Price Index for all urban consumers (CPI-U). The Office of
Management and Budget has advised us that in calculating these
fluctuations, we should use CPI-U data as determined by the Secretary
of Labor. In accordance with previous fee-setting methodology, we base
this proposed fee adjustment on the Administration's projected CPI-U
for the twelve-month period ending September 30, 2002, which is 2.4
percent. Based on this projection, patent statutory fees are proposed
to be adjusted by 2.4 percent. Before the final fee amounts are
published, the fee amounts may be adjusted based on actual fluctuations
in the CPI-U published by the Secretary of Labor.
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) are proposed to be adjusted to reflect fluctuations in the CPI.
A trademark processing fee established under 15 U.S.C. 1113 is proposed
to be adjusted to reflect fluctuations in the CPI.
The fee amounts were rounded by applying standard arithmetic rules so
that the amounts rounded would be convenient to the user. Fees for
other than a small entity of $100 or more were rounded to the nearest
$10. Fees of less than $100 were rounded to an even number so that any
comparable small entity fee would be a whole number.
General Procedures
Any fee amount that is paid on or after the effective date of
the proposed fee increase would 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 1.8. Items for which a Certificate of Mailing
or Transmission under 1.8 are not authorized include, for example,
for filing of Continued Prosecution Applications (CPAs) under
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 1.16 National Application Filing Fees
Section 1.16, paragraphs (a), (b), (d), and (f) through (i), if
revised as proposed, would 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), if revised as proposed, would 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), if revised as
proposed, would adjust fees established therein to reflect fluctuations
in the CPI.
37 CFR 1.20 Post Issuance Fees
Section 1.20, paragraphs (e) through (g), if revised as
proposed, would adjust fees established therein to reflect fluctuations
in the CPI.
37 CFR 1.492 National Stage Fees
Section 1.492, paragraphs (a)(1) through (a)(3), (a)(5), (b),
and (d), if revised as proposed, would adjust fees established therein
to reflect fluctuations in the CPI.
37 CFR 2.6 Trademark Fees
Section 2.6, paragraph (a)(1), if revised as proposed, would
adjust the fee established therein to reflect fluctuations in the CPI.
Other Considerations
This proposed rule contains no information collection
requirements within the meaning of the Paperwork Reduction Act of 1995,
44 U.S.C. 3501 et seq. This proposed rule has been determined to be not
significant for purposes of Executive Order 12866. This proposed rule
does not contain policies with Federalism implications sufficient to
warrant preparation of a Federalism Assessment under Executive Order
13132 (August 4, 1999).
The Assistant General Counsel for Legislation and Regulation of the
Department of Commerce has certified to the Chief Counsel for Advocacy,
Small Business Administration, that the proposed rule change would not
have a significant economic impact on a substantial number of small
entities (Regulatory Flexibility Act, 5 U.S.C. 605(b)). The proposed
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 98,000 patent
applications (approximately 30 percent of total patent applications)
last year from small entities. Since the average small entity fee would
increase by less than $10.00, with a minimum increase of $1.00 and a
maximum increase of $35.00, there will not be a significant economic
impact on a substantial number of small entities due to this proposed
rule change.
Lists of Subjects
37 CFR Part 1
Administrative practice and procedure, Inventions and patents,
Reporting and record keeping requirements, Small businesses.
37 CFR Part 2
Administrative practice and procedure, Courts, Lawyers,
Trademarks.
For the reasons set forth in the preamble, we are proposing to
amend title 37 of the Code of Federal Regulations, Parts 1 and 2, as
set forth below.
PART 1 - RULES OF PRACTICE IN PATENT CASES
1. The authority citation for 37 CFR Part1 would continue to
read as follows:
Authority: 35 U.S.C. 2(b)(2), unless otherwise noted.
2. Section 1.16 is proposed to be amended by revising
paragraphs (a), (b), (d), and (f) through (i) to read as follows:
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 ( 1.27(a)) - $380.00
By other than a small entity - $760.00
(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 ( 1.27(a)) - $43.00
By other than a small entity - $86.00
* * * * *
(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 ( 1.27(a)) - $145.00
By other than a small entity - $290.00
* * * * *
(f) Basic fee for filing each design application:
By a small entity ( 1.27(a)) - $170.00
By other than a small entity - $340.00
(g) Basic fee for filing each plant application, except
provisional applications:
By a small entity ( 1.27(a)) - $260.00
By other than a small entity - $520.00
(h) Basic fee for filing each reissue application:
By a small entity ( 1.27(a)) - $380.00
By other than a small entity - $760.00
(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 ( 1.27(a)) - $43.00
By other than a small entity - $86.00
* * * * *
3. Section 1.17 is proposed to be amended by revising
paragraphs (a)(2) through (a)(5), (b) through (e), (m), and (r) through
(t) to read as follows:
1.17 Patent application and reexamination processing fees.
(a) * * *
(1) * * *
(2) For reply within second month:
By a small entity ( 1.27(a)) - $205.00
By other than a small entity - $410.00
(3) For reply within third month:
By a small entity ( 1.27(a)) - $470.00
By other than a small entity - $940.00
(4) For reply within fourth month:
By a small entity ( 1.27(a)) - $735.00
By other than a small entity - $1,470.00
(5) For reply within fifth month:
By a small entity ( 1.27(a)) - $1,000.00
By other than a small entity - $2,000.00
(b) For filing a notice of appeal from the examiner to the
Board of Patent Appeals and Interferences:
By a small entity ( 1.27(a)) - $165.00
By other than a small entity - $330.00
(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 ( 1.27(a)) - $165.00
By other than a small entity - $330.00
(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 ( 1.27(a) - $145.00
By other than a small entity - $290.00(e)
To request continued examination pursuant to 1.114:
By a small entity ( 1.27(a)) - $380.00
By other than a small entity - $760.00
* * * * *
(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) (
1.137(b)):
By a small entity ( 1.27(a)) - $655.00
By other than a small entity - $1,310.00
* * * * *
(r) For entry of a submission after final rejection under
1.129(a):
By a small entity ( 1.27(a)) - $380.00
By other than a small entity - $760.00
(s) For each additional invention requested to be examined
under 1.129(b):
By a small entity ( 1.27(a)) - $380.00
By other than a small entity - $760.00
(t) For the acceptance of an unintentionally delayed claim for
priority under 35 U.S.C. 119, 120, 121, or 365(a) or (c) ( 1.55 and
1.78): $1,310.00.
4. Section 1.18 is proposed to be amended by revising paragraphs (a)
through (c) to read as follows:
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 ( 1.27(a)) - $655.00
By other than a small entity - $1,310.00
(b) Issue fee for issuing a design patent:
By a small entity ( 1.27(a)) - $235.00
By other than a small entity - $470.00
(c) Issue fee for issuing a plant patent:
By a small entity ( 1.27(a)) - $315.00
By other than a small entity - $630.00
* * * * *
5. Section 1.20 is proposed to be amended by revising
paragraphs (e) through (g) to read as follows:
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 ( 1.27(a)) - $450.00
By other than a small entity - $900.00
(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 ( 1.27(a)) - $1,035.00
By other than a small entity - $2,070.00
(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 ( 1.27(a)) - $1,585.00
By other than a small entity - $3,170.00
* * * * *
6. Section 1.492 is proposed to be amended by revising
paragraphs (a)(1) through (a)(3), (a)(5), (b), and (d) to read as
follows:
1.492 National stage fees.
* * * * *
(a) The basic national fee:
(1) Where an international preliminary examination fee as set forth in
1.482 has been paid on the international application to the United
States Patent and Trademark Office:
By a small entity ( 1.27(a)) - $365.00
By other than a small entity - $730.00
(2) Where no international preliminary examination fee as set
forth in 1.482 has been paid to the United States Patent and
Trademark Office, but an international search fee as set forth in
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 ( 1.27(a)) - $380.00
By other than a small entity - $760.00
(3) Where no international preliminary examination fee as set
forth in 1.482 has been paid and no international search fee as set
forth in 1.445(a)(2) has been paid on the international application
to the United States Patent and Trademark Office:
By a small entity ( 1.27(a)) - $530.00
By other than a small entity - $1,060.00
(4) * * *
(5) Where a search report on the international application has been
prepared by the European Patent Office or the Japan Patent Office:
By a small entity ( 1.27(a)) - $455.00
By other than a small entity - $910.00
(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 ( 1.27(a)) - $43.00
By other than a small entity - $86.00
* * * * *
(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 ( 1.27(a)) - $145.00
By other than a small entity - $290.00
* * * * *
PART 2 - RULES OF PRACTICE IN TRADEMARK CASES
1. The authority citation for 37 CFR Part 2 would continue to
read as follows:
Authority: 15 U.S.C. 1123; 35 U.S.C. 6, unless otherwise noted.
2. Section 2.6 is proposed to be amended by revising paragraph
(a)(1) to read as follows:
2.6 Trademark fees.
* * * * *
(a) * * *
(1) For filing an application, per class - $340.00
* * * * *
May 1, 2002 JON W. DUDAS
Acting Under Secretary of Commerce for
Intellectual Property and
Acting Director of the United States
Patent and Trademark Office