United States Patent and Trademark Office OG Notices: 22 March 2005
DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
37 CFR Part 1
[Docket No.: 2005-P-055]
RIN 0651-AB87
Changes to the Practice for Handling
Patent Applications Filed Without the
Appropriate Fees
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Notice of proposed rulemaking.
SUMMARY: Among other changes to patent and trademark fees, the
Consolidated Appropriations Act, 2005 (Consolidated Appropriations Act),
splits the patent application filing fee into a separate filing fee,
search fee and examination fee, and requires an additional fee
(application size fee) for applications whose specification and drawings
exceed 100 sheets of paper, during fiscal years 2005 and 2006. The United
States Patent and Trademark Office is in this notice proposing changes in
the Office's practice for handling patent applications filed without the
appropriate filing, search, and examination fees. The Office has
implemented the changes to the patent fees provided in the Consolidated
Appropriations Act in a separate rulemaking.
DATES: Comment Deadline Date: To be ensured of consideration, written
comments must be received on or before March 30, 2005. No public hearing
will be held.
ADDRESSES: Comments should be sent by electronic mail message over the
Internet addressed to AB69Comments@uspto.gov. Comments may also be
submitted by mail addressed to: Mail Stop Comments - Patents, Commissioner
for Patents, P.O. Box 1450, Alexandria, VA 22313-1450, or by facsimile to
(571) 273-7735, 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 prefers that the comments be submitted on a DOS formatted 3 1/2 inch
disk accompanied by a paper copy.
Comments may also be sent by electronic mail message over the Internet
via the Federal eRulemaking Portal. See the Federal eRulemaking Portal Web
site (http://www.regulations.gov) for additional instructions on providing
comments via the Federal eRulemaking Portal.
The comments will be available for public inspection at the Office of
the Commissioner for Patents, located in Madison East, Tenth Floor, 600
Dulany Street, Alexandria, Virginia, and will be available via the Office
Internet Web site (address: http://www.uspto.gov). Because 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: Robert W. Bahr, Senior Patent Attorney,
Office of the Deputy Commissioner for Patent Examination Policy, by
telephone at (571) 272-8800, by mail addressed to: Mail Stop
Comments-Patents, Commissioner for Patents, P.O. Box 1450, Alexandria,
VA 22313-1450, or by facsimile to (571) 273-7735, marked to the attention
of Robert W. Bahr.
SUPPLEMENTARY INFORMATION: Among other changes, the Consolidated
Appropriations Act (section 801 of Division B) provides that 35 U.S.C.
41(a), (b), and (d) shall be administered in a manner that revises patent
application fees (35 U.S.C. 41(a)) and patent maintenance fees (35 U.S.C.
41(b)), and provides for a separate filing fee (35 U.S.C. 41(a)), search
fee (35 U.S.C. 41(d)(1)), and examination fee (35 U.S.C. 41(a)(3)) during
fiscal years 2005 and 2006. The Consolidated Appropriations Act also
provides that the provisions of 35 U.S.C. 111(a) for payment of the fee
for filing the application apply to the payment of the examination fee (35
U.S.C. 41(a)(3)) and search fee (35 U.S.C. 41(d)(1)) in an application
filed under 35 U.S.C. 111(a), and that the provisions of 35 U.S.C. 371(d)
for the payment of the national fee apply to the payment of the examination
fee (35 U.S.C. 41(a)(3)) and search fee (35 U.S.C. 41(d)(1)) in an
international application filed under the Patent Cooperation Treaty (PCT)
and entering the national stage under 35 U.S.C. 371. See 35 U.S.C. 41(a)(3)
and 41(d)(1)(C). Thus, the examination fee and search fee are due on filing
in an application filed under 35 U.S.C. 111(a) or on commencement of the
national stage in a PCT international application, but may be paid at a
later time if paid within such period and under such conditions (including
payment of a surcharge) as may be prescribed by the Director. See H.R. Rep.
108-241, at 16 (2003) (H.R. Rep. 108-241 contains an analysis and
discussion of an identical provision in H.R. 1561, 108th Cong. (2004)).
In view of the revised patent fee structure during fiscal years 2005 and
2006 set forth in the Consolidated Appropriations Act, the Office is
proposing the following changes in Office practice for handling patent
applications filed without the appropriate fees: That is, the filing fee,
search fee, and examination fee.
The Office is proposing to: (1) Require the surcharge under Sec. 1.16(f)
in any application filed under 35 U.S.C. 111(a) in which the search fee or
examination fee is paid on a date later than the filing date; and (2)
require the surcharge under Sec. 1.492(h) in any application filed under
the PCT in which the search fee or examination fee is paid on a date later
than thirty months from the priority date. This change is because the
Consolidated Appropriations Act splits the former patent application filing
(or national) fee into a separate filing (or national) fee, search fee and
examination fee during fiscal years 2005 and 2006. The filing of an
application which lacks any of the basic filing (or national) fee, the
search fee, the examination fee, or oath or declaration requires the Office
to issue a notice to file the missing parts (or requirements) of the
application.
The Office is also proposing to eliminate the processing and retention
fee (Sec. 1.21(l)) practice. The processing and retention fee practice
permits an applicant to file an application without the basic filing fee
(which formerly covered the cost of the initial processing of an
application and part of the cost of the search and examination of an
application) and pay only the processing and retention fee set forth in
Sec. 1.21(l) in order for the application to be used as a basis for
foreign filing and benefit claims under 35 U.S.C. 120 and Sec. 1.78(a).
Under the revised patent fee structure set forth in the Consolidated
Appropriations Act, the basic filing fee covers only the cost of the
initial processing of an application. Thus, the Office is proposing to
require payment of the basic filing fee (rather than just the current
processing and retention fee set forth in Sec. 1.21(l)) to retain the
application. Since the Office must retain an application to permit benefit
of the application to be claimed under 35 U.S.C. 120 and Sec. 1.78 in a
subsequent nonprovisional or international application, the Office is also
proposing to require payment of the basic filing fee (rather than just the
current processing and retention fee set forth in Sec. 1.21(l)) to permit
benefit of the application to be claimed under 35 U.S.C. 120 and Sec. 1.78
in a subsequent nonprovisional or international application.
The Office is also implementing the provision in 35 U.S.C. 41(a)(1)(G)
for the Office to prescribe the paper size equivalent of an application
filed in whole or in part in an electronic medium for purposes of the
application size fee specified in 35 U.S.C. 41(a)(1)(G) (Sec. 1.16(s) and
Sec. 1.492(j)). A 21.6 cm by 27.9 cm (8 1/2 by 11 inches) sheet of paper
with a top margin of 2.0 cm (3/4 inch), a left side margin of 2.5 cm (1
inch), a right side margin of 2.0 cm (3/4 inch), and a bottom margin of
2.0 cm (3/4 inch)), will contain about 30 lines of double-spaced text,
with each line having about 50 to 65 characters. An ASCII text (the only
format permitted by Sec. 1.52(e)) document containing 30 lines of text,
each line having about 50 to 65 characters, will be slightly less than two
kilobytes in size. Therefore, the Office is proposing that each two
kilobytes of content submitted on an electronic medium shall be counted as
a sheet of paper for purposes of the application size fee specified in 35
U.S.C. 41(a)(1)(G) (Sec. 1.16(s) and Sec. 1.492(j)).
Discussion of Specific Rules
Title 37 of the Code of Federal Regulations, Part 1, is proposed to be
amended as follows:
Section 1.16: Section 1.16(f) is proposed to be amended to require a
surcharge if any of the basic filing fee, the search fee, the examination
fee, or oath or declaration is filed in a nonprovisional application on a
date later than the filing date of the application. Section 1.16(s) is
proposed to be amended to include a cross reference to Sec. 1.52(f).
Section 1.21: Section 1.21 is proposed to be amended to remove and reserve
paragraph (l), which set forth the fee for processing and retaining an
application in which the basic filing fee has not been paid.
Section 1.52: Section 1.52(f)(1) is proposed to be amended to provide that
for purposes of determining the application size fee required by Sec.
1.16(s) or Sec. 1.492(j), for an application the specification and
drawings of which (excluding any sequence listing in compliance with Sec.
1.821(c) or (e), and any computer program listing filed in an electronic
medium in compliance with Secs. 1.52(e) and 1.96) are submitted in
whole or in part on an electronic medium other than the Office electronic
filing system, each two kilobytes of content submitted on an electronic
medium shall be counted as a sheet of paper.
Section 1.53: Section 1.53(f)(5) is proposed to be amended to provide that
if the applicant does not pay the basic filing fee during the pendency of
the application, the Office may dispose of the application.
Section 1.78: Section 1.78(a)(1) is proposed to be amended to provide that
to claim the benefit of a prior-filed nonprovisional application under 35
U.S.C. 120 and Sec. 1.78(a) in a subsequent nonprovisional or international
application, the prior-filed nonprovisional application must be entitled to
a filing date as set forth in Sec. 1.53(b) or Sec. 1.53(d) and have paid
therein the basic filing fee set forth in Sec. 1.16 within the pendency of
the application.
Section 1.492: Section 1.492(h) is proposed to be amended to require a
surcharge if any of the search fee, the examination fee, or the oath or
declaration is filed later than thirty months from the priority date.
Section 1.492(j) is proposed to be amended to include a cross reference to
Sec. 1.52(f).
Rulemaking Considerations
Administrative Procedure Act: The changes proposed in this notice relate
solely to the procedures to be followed in prosecuting a patent
application: i.e., the procedures for paying the fees due upon filing an
application for patent. This notice does not propose any change to the
amount of fees charged by the Office. Specifically, the changes proposed
in this notice concern the procedures for payment of the filing fee, search
fee, and examination fee, and setting forth which fees must be paid in
order for a nonprovisional application to be processed and retained by the
Office such that it may be used as the basis for foreign filing and for
benefit claims under 35 U.S.C. 120 and Sec. 1.78(a). Therefore, these rule
changes involve interpretive rules, or rules of agency practice and
procedure under 5 U.S.C. 553(b)(A). See Bachow Communications Inc. v. FCC,
237 F.3d 683, 690 (D.C. Cir. 2001) (rules governing an application process
are "rules of agency organization, procedure, or practice" and are exempt
from the Administrative Procedure Act's notice and comment requirement);
see also Merck & Co., Inc. v. Kessler, 80 F.3d 1543, 1549-50, 38 USPQ2d
1347, 1351 (Fed. Cir. 1996) (the rules of practice promulgated under the
authority of former 35 U.S.C. 6(a) (now in 35 U.S.C. 2(b)(2)) are not
substantive rules (to which the notice and comment requirements of the
Administrative Procedure Act apply)), and Fressola v. Manbeck, 36 USPQ2d
1211, 1215 (D.D.C. 1995) ("it is doubtful whether any of the rules
formulated to govern patent and trade-mark practice are other than
`interpretative rules, general statements of policy, * * * procedure, or
practice.'") (quoting C.W. Ooms, The United States Patent Office and the
Administrative Procedure Act, 38 Trademark Rep. 149, 153 (1948)).
Under the Office's pre-existing "missing parts" or "missing
requirements" practice, an applicant was required to pay a surcharge if the
basic filing fee was not present on filing in an application filed under 35
U.S.C. 111 or if the basic national fee was not present on the date of
commencement of the national stage of processing in a PCT application
entering the national stage under 35 U.S.C. 371. The Consolidated
Appropriations Act split the patent application filing (or national) fee
into a separate filing (or national) fee, search fee and examination fee.
Therefore, the proposed replacement of the basic filing (or national) fee
in Secs. 1.16 and 1.492 with the basic filing (or national) fee, the
search fee, or the examination fee is simply a procedural change that is
necessary to maintain (or restore) the status quo ante with respect to the
Office's pre-existing "missing parts" or "missing requirements" practice.
The processing and retention fee practice allows applicants to file an
application without the filing fee and to pay only a processing and
retention fee in order for the application to be used as a basis for
foreign filing and for priority under 35 U.S.C. 120. Under the revised
patent fee structure set forth in the Consolidated Appropriations Act
(which split the filing fee into a separate filing, search fee and
examination fee), the filing fee covers the cost of the initial processing
and retention of an application. Thus, requiring payment of the basic
filing fee under the Consolidated Appropriations Act in order for an
application to be used as a basis for foreign filing and for priority
under 35 U.S.C. 120 is more compatible with the filing fee scheme set
forth in the Consolidated Appropriations Act than is continuing the
processing and retention fee practice.
The Consolidated Appropriations Act provides for the Office to
prescribe the paper size equivalent of an application filed in whole or
in part in an electronic medium for purposes of the application size
fee specified in 35 U.S.C. 41(a)(1)(G). Thus, setting a paper size
equivalent based upon the number of kilobytes of content that can fit
onto a sheet of paper (given the current requirements for applications
filed in part on CD and for paper size and margins) simply sets forth
the procedures for determining the paper size equivalent of an
application filed in whole or in part in an electronic medium for
purposes of the application size fee.
Accordingly, prior notice and opportunity for public comment are not
required pursuant to 5 U.S.C. 553(b) or (c) (or any other law).
Nevertheless, the Office is providing this opportunity for public
comment on the changes proposed in this notice because the Office
desires the benefit of public comment on these proposed changes.
Regulatory Flexibility Act: As prior notice and an opportunity for public
comment are not required pursuant to 5 U.S.C. 553 (or any other law), an
initial regulatory flexibility analysis under the Regulatory Flexibility
Act (5 U.S.C. 601 et seq.) is not required. See 5 U.S.C. 603.
Executive Order 13132: This rule making does not contain policies with
federalism implications sufficient to warrant preparation of a Federalism
Assessment under Executive Order 13132 (Aug. 4, 1999).
Executive Order 12866: This rule making has been determined to be not
significant for purposes of Executive Order 12866 (Sept. 30, 1993).
Paperwork Reduction Act: 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.). The collections of information involved in this notice have been
reviewed and previously approved by OMB under OMB control numbers:
0651-0021, 0651-0031, and 0651-0032. The United States Patent and
Trademark Office is not resubmitting any information collection package to
OMB for its review and approval because the changes in this notice do not
affect the information collection requirements associated with the
information collection under these OMB control numbers. The changes
proposed in this notice concern the procedures for payment of the filing
fee, search fee, examination fee, and the application size fee, including
setting forth which fees must be paid in order for an application to be
processed and retained by the Office such that it may be used as the
basis for foreign filing and for benefit claims under 35 U.S.C. 120 and
Sec. 1.78(a).
Interested persons are requested to send comments regarding these
information collections, including suggestions for reducing this burden,
to Robert J. Spar, Director, Office of Patent Legal Administration,
Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450, or to
the Office of Information and Regulatory Affairs, Office of Management and
Budget, New Executive Office Building, Room 10235, 725 17th Street, NW.,
Washington, DC 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.
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 continues to read as
follows:
Authority: 35 U.S.C. 2(b)(2).
2. Section 1.16 is amended by revising paragraphs (f) and (s) to read
as follows:
Sec. 1.16 National application filing, search, and examination fees.
* * * * *
(f) Surcharge for filing any of the basic filing fee, the search fee,
the examination 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
* * * * *
(s) Application size fee for any application under 35 U.S.C. 111 filed
on or after December 8, 2004, the specification and drawings of which
exceed 100 sheets of paper, for each additional 50 sheets or fraction
thereof (see Sec. 1.52(f) for applications submitted in whole or in part
on an electronic medium):
By a small entity (Sec. 1.27(a)) - $125.00
By other than a small entity - $250.00
* * * * *
3. Section 1.21 is amended by removing and reserving paragraph (l):
Sec. 1.21 Miscellaneous fees and charges.
* * * * *
(l) [Reserved]
* * * * *
4. Section 1.52 is amended by revising paragraph (f)(1) to read as
follows:
Sec. 1.52 Language, paper, writing, margins, compact disc specifications.
* * * * *
(f)(1) Any sequence listing in an electronic medium in compliance with
Secs. 1.52(e) and 1.821(c) or (e), and any computer program listing
filed in an electronic medium in compliance with Secs. 1.52(e) and
1.96, will be excluded when determining the application size fee required
by Sec. 1.16(s) or Sec. 1.492(j). For purposes of determining the
application size fee required by Sec. 1.16(s) or Sec. 1.492(j), for an
application the specification and drawings of which, excluding any
sequence listing in compliance with Sec. 1.821(c) or (e), and any computer
program listing filed in an electronic medium in compliance with Secs.
1.52(e) and 1.96, are submitted in whole or in part on an electronic
medium other than the Office electronic filing system, each two kilobytes
of content submitted on an electronic medium shall be counted as a sheet
of paper.
* * * * *
5. Section 1.53 is amended by revising paragraph (f)(5) to read as
follows:
Sec. 1.53 Application number, filing date, and completion of application.
* * * * *
(f) * * *
(5) If applicant does not pay the basic filing fee during the pendency
of the application, the Office may dispose of the application.
* * * * *
6. Section 1.78 is amended by removing paragraph (a)(1)(iii) and
revising paragraph (a)(1)(ii) to read as follows:
Sec. 1.78 Claiming benefit of earlier filing date and cross references to
other applications.
(a)(1) * * *
(ii) Entitled to a filing date as set forth in Sec. 1.53(b) or Sec.
1.53(d) and have paid therein the basic filing fee set forth in Sec. 1.16
within the pendency of the application.
* * * * *
7. Section 1.492 is amended by revising paragraphs (h) and (j) to read
as follows:
Sec. 1.492 National stage fees.
* * * * *
(h) Surcharge for filing any of the search fee, the examination fee, or
the oath or declaration later than thirty 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
* * * * *
(j) Application size fee for any international application for which
the basic national fee was not paid before December 8, 2004, the
specification and drawings of which exceed 100 sheets of paper, for each
additional 50 sheets or fraction thereof (see Sec. 1.52(f) for
applications submitted in whole or in part on an electronic medium):
By a small entity (Sec. 1.27(a)) - $125.00
By other than a small entity - $250.00
February 22, 2005 JON W. DUDAS
Under Secretary of Commerce for
Intellectual Property and Director of the
United States Patent and Trademark Office