United States Patent and Trademark Office OG Notices: 21 June 2005
DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
37 CFR Part 1
Changes to the Practice for Handling Patent Applications
Filed Without the Appropriate Fees
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Final rule.
SUMMARY: Among other changes to patent and trademark fees, the
Consolidated Appropriations Act, 2005 (Consolidated Appropriations
Act), splits the former patent application basic filing fee into a
separate basic filing (or basic national) 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 changing its practice for handling patent
applications filed without the appropriate basic filing (or basic
national) fee, search fee and examination fee.
DATES: Effective Date: July 1, 2005.
Applicability Dates: The change to 37 CFR 1.78 applies to any
application that claims benefit of an application under 35 U.S.C.
111(a) in which the processing and retention fee in now former 37 CFR
1.21(l) was not paid before July 1, 2005. The change to 37 CFR 1.16(f)
applies to any application under 35 U.S.C. 111(a) filed on or after
July 1, 2005. The change to 37 CFR 1.492(h) applies to any
international application in which the basic national fee was not paid
before July 1, 2005.
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 adopting the following changes in Office practice for
handling patent applications filed without the appropriate fees: That
is, the basic filing (or basic national) fee, search fee, and
examination fee.
The Office is adopting changes to: (1) Require the surcharge under
Sec. 1.16(f) in any application filed under 35 U.S.C. 111(a) in which
any of the basic filing fee, the search fee, or the examination fee are
paid on a date later than the filing date of the application; and (2)
require the surcharge under Sec. 1.492(h) in any application filed
under the PCT in which either of the search fee or the examination fee
are paid after the date of the commencement of the national stage
(Sec. 1.491(a)). This change is because the Consolidated
Appropriations Act splits the former patent application basic filing
(or basic national) fee into a separate basic filing (or basic
national) fee, search fee and examination fee during fiscal years 2005
and 2006. The filing of an application which lacks either the search
fee or the examination fee requires the Office to issue a notice to
file the missing parts (or requirements) of the application.
The Office is also eliminating the processing and retention fee
(Sec. 1.21(l)) practice. The processing and retention fee practice
permitted 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
former 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
requiring payment of the basic filing fee (rather than just the
processing and retention fee set forth in former 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 requiring payment of the basic filing fee (rather than just the
processing and retention fee set forth in former 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) 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
text with double line spacing, 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. Since the
Office permits text with a line spacing of 1 1/2 (notwithstanding that
ASCII does not permit 1 1/2 line spacing), the Office is providing
that each three kilobytes (rounding up) 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 amended as
follows:
Section 1.16: Section 1.16(f) is amended to require a surcharge if
any of the basic filing fee, the search fee, the examination fee, or
the 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
amended to include a cross-reference to Sec. 1.52(f).
Section 1.21: Section 1.21 is 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 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
(including claims) 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 three
kilobytes of content submitted on an electronic medium shall be counted
as a sheet of paper.
Section 1.53(f)(2) is amended to provide for purposes of
determining the application size fee required by Sec. 1.16(s), the
paper size equivalent of an application submitted via the Office
electronic filing system will be considered to be equal to seventy-five
percent of the number of sheets of paper present in the specification
and drawings of the application when entered into the Office file
wrapper after being rendered by the Office electronic filing system.
Section 1.53: Section 1.53(d)(3) is amended to correct the
references to the design application basic filing fee (set forth in
Sec. 1.16(b)), and add references to the design application search fee
(set forth in Sec. 1.16(l)) and examination fee (set forth in Sec.
1.16(p)). Section 1.53(f)(5) is 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 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 amended to require a surcharge
if any of the search fee, the examination fee, or the oath or
declaration is filed after the date of the commencement of the national
stage (Sec. 1.491(a)). Section 1.492(j) is amended to include a cross-
reference to Sec. 1.52(f).
Section 1.495: Section 1.495(c)(1)(i) is amended to reinsert the
language concerning the publication of the international application
previously submitted under 35 U.S.C. 154(d) under Sec. 1.417. This
language was inadvertently deleted in the final rule to implement the
Consolidated Appropriations Act. See Changes to Implement the Patent
Fee Related Provisions of the Consolidated Appropriations Act, 2005, 70
FR 3880 (Jan. 27, 2005), 1291 Off. Gaz. Pat. Office 133 (Feb. 22, 2005)
(final rule). Section 1.495(c)(1)(i) is amended to replace "the oath
or declaration" with "any of the search fee, the examination fee, or
the oath or declaration" for consistency with the change to Sec.
1.492.
Response to comments: The Office published a notice proposing
changes to the Office's practice for handling patent applications filed
without the appropriate fees. See Changes to the Practice for Handling
Patent Applications Filed Without the Appropriate Fees, 70 FR 9570
(Feb. 28, 2005), 1292 Off. Gaz. Pat. Office 143 (Mar. 22, 2005)
(proposed rule). The Office received seven written comments (from
intellectual property organizations, patent practitioners, and the
general public) in response to this notice. The comments and the
Office's responses to the comments follow:
Comment 1: Several comments suggested that the elimination of the
processing and retention fee practice is effectively a fee increase,
and as such is not simply an interpretative or procedural rule change.
Several comments also suggested that the elimination of the processing
and retention fee practice is effectively a fee increase that should
not be adopted without sufficient justification.
Response: The processing and retention fee practice was adopted in
April of 1984. See Revision of Patent Practice, 49 FR 548 (Jan. 4,
1984) (final rule), and Proposed Revision of Patent Practice, 48 FR
39016 (Aug. 26, 1983) (proposed rule). This fee ($100.00 in 1984, or
one-third of the $300.00 basic filing (non-small entity) in effect in
April of 1984) was designed to cover the costs of initial processing
and retention of an application that was abandoned prior to payment (or
due to non-payment) of the basic filing fee. The Office proposed
eliminating the processing and retention fee practice during the
implementation of the provisional application practice provided for in
the Uruguay Round Agreements Act, Pub. L. 103-465, 108 Stat. 4809
(1994), but ultimately decided to retain the processing and retention
fee practice. See Changes to Implement 20-Year Patent Term and
Provisional Applications, 60 FR 20195, 20197 (Apr. 25, 1995) (final
rule), and Changes to Implement 20-Year Patent Term and Provisional
Applications, 59 FR 63951, 63952 (Dec. 12, 1994) (proposed rule). The
Office has determined that it is now appropriate to eliminate the
processing and retention fee practice in view of provisional
application practice and the changes to the patent fee structure in the
Consolidated Appropriations Act.
The Consolidated Appropriations Act provides that (during fiscal
years 2005 and 2006) 35 U.S.C. 41(a)(1) shall be administered as though
that provision reads: "[t]he Director shall charge * * * [o]n filing
each application for an original patent, except for design, plant, or
provisional applications, $300." See 35 U.S.C. 41(a)(1)(A). 35 U.S.C.
111(a) provides (in part) that: [t]he application must be accompanied
by the fee required by law." See 35 U.S.C. 111(a)(3). Thus, 35 U.S.C.
41(a)(1) and 111 require the Office to charge and the applicant to pay
(inter alia) the basic filing fee in a nonprovisional application.
While a processing and retention fee practice may have been appropriate
under a fee structure in which the filing fee was designed to cover the
initial processing, the search, and the examination of an application,
it is not consistent with the patent fee structure provided in the
Consolidated Appropriations Act to maintain an "alternative"
processing and retention fee practice when the patent fee structure
provided in the Consolidated Appropriations Act sets forth a filing fee
that is separate from a search fee and an examination fee and is
designed to cover the initial processing of an application.
Further, the elimination of the processing and retention fee
practice does not constitute a substantive change requiring notice-and-
comment rule making under the Administrative Procedure Act. The change
does not "encode a substantive value judgment," but simply
discontinues the purely procedural practice of retaining a copy of an
application for which the statutory filing fee had not been paid. See
Pub. Citizen v. Dep't of State, 276 F.3d 634, 640 (D.C. Cir. 2002) (the
focus in determining whether a rule falls under the procedural
exemption of 5 U.S.C. 553(b)(A) is on asking whether the rule encodes a
substantive value judgment). As a result of the change, applicants will
not be able to require the Office to retain a copy of an application
unless they resort to another existing procedure (e.g., filing a
provisional application instead of a nonprovisional application, or
just paying the filing fee pay in the nonprovisional application).
While the use of such an alternative procedure may result in a higher
cost to the applicant, "an otherwise-procedural rule does not become a
substantive one, for notice-and-comment purposes, simply because it
imposes a burden on regulated parties." James V. Hurson Associates v.
Glickman, 222 F.3d. 277, 281 (D.C. Cir. 2000).
Finally, notwithstanding that the Office maintains that these rule
changes involve interpretative rules, or rules of agency practice and
procedure under 5 U.S.C. 553(b)(A), it should be noted that
the elimination of the processing and retention fee practice was first
published for public comment as provided for in 5 U.S.C. 553(b) prior
to adoption of the rule changes to eliminate the processing and
retention fee practice.
Comment 2: One comment suggested that whether to retain or
eliminate the processing and retention fee practice is a decision for
Congress and not the Office.
Response: As discussed, 35 U.S.C. 41(a)(1) and 111 require the
Office to charge and the applicant to pay (inter alia) the basic filing
fee in a nonprovisional application. The patent statute does not
provide either for a processing and retention fee as an alternative to
the basic filing fee or for a processing and retention fee practice.
Comment 3: One comment suggested that applicants may file a patent
application without a fee and if a continuation application is filed
within a short period of time, there is a statutory right to claim the
benefit of the prior-filed application.
Response: As discussed, 35 U.S.C. 41(a)(1) and 111 require the
Office to charge and the applicant to pay (inter alia) the basic filing
fee in a nonprovisional application. There is no "statutory right" to
file an application without paying the basic filing fee, regardless of
whether a continuation application that claims the benefit of the
prior-filed application is ever filed.
Comment 4: One comment suggested that the Office should not
"burn" an application file wrapper simply because the applicant has
not paid the basic filing fee, and further suggested that an electronic
copy of an application will continue to exist even if the Office
"burns" a paper copy of the application file wrapper.
Response: The Office did not indicate that it would "burn" or
necessarily remove from its paper or electronic records those
applications in which the basic filing fee has not been paid. The
Office is simply providing that if the applicant does not pay the basic
filing fee during the pendency of a nonprovisional application, the
Office may dispose of the application. Put simply, the Office is not
obligating itself to retain an abandoned nonprovisional application
among its records (paper or electronic) if the applicant does not pay
at least the basic filing fee during the pendency of the application.
Comment 5: One comment suggested that language of Sec. 1.16 and
Sec. 1.492(h) was not consistent with the discussion of those sections
in the preamble, and requested clarification of the proposed changes to
Sec. 1.16 and Sec. 1.492(h).
Response: Section 1.16(f) requires a surcharge in any application
filed under 35 U.S.C. 111(a) in which any of the basic filing fee, the
search fee, or the examination fee is paid on a date later than the
filing date of the application. Section 1.492(h) requires a surcharge
in any application filed under the PCT in which either of the search
fee or the examination fee is paid after the date of the commencement
of the national stage (Sec. 1.491(a)).
Comment 6: Several comments suggested that the proposed provision
that each two kilobytes of content submitted on an electronic medium
shall be counted as a sheet of paper is too low. One comment gave an
example of a 21,496 kilobyte table that prints as 5,081 pages, which if
submitted on a compact disc would be treated as 10,748 pages.
Response: In view of the four kilobytes per page ratio of the table
provided as an example, it appears that the lines of the table are
single spaced. The rules of practice provide for either 1 1/2 or
double line spacing, but not for single line spacing. See Sec.
1.52(b)(2)(i). However, since the rules of practice provide for 1 1/2
line spacing, the Office is revising this provision to indicate that
each three kilobytes of content submitted on an electronic medium shall
be counted as a sheet of paper (notwithstanding that ASCII does not
provide for 1 1/2 line spacing).
Comment 7: Several comments suggested that the proposed provision
that each two kilobytes of content submitted on an electronic medium
shall be counted as a sheet of paper, being based solely on ASCII text
content, fails to appreciate that Tagg(ed) Image File Format (TIFF)
drawings sheets are usually far larger than two kilobytes per page.
Another comment suggested that a typical electronic drawing will
measure at least 50 kilobytes, and often will range from 100 to 200
kilobytes.
Response: The rules of practice do not provide for the submission
of either drawings sheets or any TIFF application documents on a
compact disc. See Secs. 1.52(e)(1) and (e)(3). Applicants may
submit TIFF drawings sheets in an application submitted via the Office
electronic filing system; however, the provisions of Sec. 1.52(f)(1)
that each three kilobytes of content submitted on an electronic medium
shall be counted as a sheet of paper does not apply to an application
submitted via the Office electronic filing system.
Comment 8: One comment questioned whether the provisions of Sec.
1.52(f)(1) were limited to tables, since sequence and computer program
listings are excluded. The comment further suggested that, if the
provisions of Sec. 1.52(f)(1) have broader applicability, then it has
discriminatory effect based on subject matter of the patent application
because chemical patent applications and, in particular, pharmaceutical
patent applications are treated unfavorably under the provisions of
Sec. 1.52(f)(1). The comment indicated that these applications tend to
have an extensive number of embedded chemical structures, and the
electronic size of images such as ChemDraw structures, PDF tables and
the like, which have significantly higher byte totals when compared to
the ASCII text used for the calculations. The comment gave an example
of an application having a total of 68 pages but an electronic size of
640 kilobytes (which would be treated as 340 pages if each two
kilobytes were treated as equal to one page).
Response: Section 1.52(e) currently limits the application
documents that may be submitted on compact disc to computer program
listings, sequence listings, and tables. See Sec. 1.52(e)(1).
Therefore, for an application submitted in compliance with the rules of
practice (Sec. 1.52(e)), the provisions of Sec. 1.52(f)(1) that each
three kilobytes of content submitted on an electronic medium shall be
counted as a sheet of paper would apply only to tables. If an applicant
submitted other application documents on a compact disc in violation of
Sec. 1.52(e)(1), and/or in a format not permitted by Sec. 1.52(e)(3)
(i.e., in a format other than ASCII), any unfavorable treatment would
be due to the applicant's failure to follow the rules of practice and
not due to any action on the part of the Office.
Comment 9: One comment suggested that the Office should consider a
flat processing fee for electronic medium submissions that would
compensate the Office for any additional work. Another comment
suggested that there be an upper limit to the fees similar to that
provided for by Part 8 of the Administration Instructions (AI) under
the Patent Cooperation Treaty.
Response: The Office does not consider a "flat processing fee" or
an "upper limit" to be appropriate. 35 U.S.C. 41(a)(1)(G) authorizes
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), not to create
a new application size fee regime for applications filed in whole or in
part in an electronic medium.
Comment 10: Several comments suggested that the Office should
reconsider the provisions of proposed Sec. 1.52(f)(1) (that each two
kilobytes of content submitted on an electronic medium shall be counted
as a sheet of paper) in light of the Office's stated goal to increase
the number of electronic submissions.
Response: The Office has a goal of increasing usage of its
electronic filing system. The Office is revising Sec. 1.52(f)(2) to
provide that the paper size equivalent of the specification (including
claims) and drawings of an application submitted via the Office
electronic filing system will be considered to be seventy-five percent
of the number of sheets of paper present in the specification
(including claims) and drawings of the application when entered into
the Office file wrapper after being rendered by the Office electronic
filing system for purposes of determining the application size fee
required by Sec. 1.16(s). This change is being made to ensure that
number of sheets of paper present in the specification (including
claims) and drawings of the application when entered into the Office
file wrapper after being rendered by the Office electronic filing
system does not exceed the number of pages in the application when
printed out by the applicant. The filing of application documents on
compact disc as permitted by Sec. 1.52(e), however, is not germane to
the Office's goal of increasing usage of its electronic filing system.
Rule Making Considerations
Administrative Procedure Act: The changes in this final rule 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 final rule does not change the amount
of fees charged by the Office. Specifically, the changes in this final
rule 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 interpretative 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) and JEM Broadcasting Co. v. FCC, 22
F.3d 320, 327 (D.C. Cir. 1994) (rule under which any flawed application
is summarily dismissed without allowing the applicant to correct its
error is merely procedural despite its sometimes harsh effects on
applicants); 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" practice, an
applicant was required to pay a surcharge if the basic filing fee was
not present on filing in an application. The Consolidated
Appropriations Act splits the patent application basic filing (or basic
national) fee into a separate basic filing (or basic national) fee,
search fee and examination fee. Therefore, the replacement of the basic
filing fee with the basic filing 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" 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 splits 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 the Office to process and retain an application such that the
application may be used as a basis for foreign filing and for priority
under 35 U.S.C. 120 is more consistent 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 calculating 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 a compact disc 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 calculating 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).
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), neither a regulatory flexibility analysis nor a certification
under the Regulatory Flexibility Act (5 U.S.C. 601 et seq.) are
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 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 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 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 the 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
* * * * *
Sec. 1.21 [Amended]
3. Section 1.21 is amended by removing and reserving paragraph (l).
4. Section 1.52 is amended by revising paragraph (f) 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 three kilobytes of content submitted on an electronic
medium shall be counted as a sheet of paper.
(2) Except as otherwise provided in this paragraph, the paper size
equivalent of the specification and drawings of an application
submitted via the Office electronic filing system will be considered to
be seventy-five percent of the number of sheets of paper present in the
specification and drawings of the application when entered into the
Office file wrapper after being rendered by the Office electronic
filing system for purposes of determining the application size fee
required by Sec. 1.16(s). Any sequence listing in compliance with
Sec. 1.821(c) or (e), and any computer program listing in compliance
with Sec. 1.96, submitted via the Office electronic filing system will
be excluded when determining the application size fee required by Sec.
1.16(s) if the listing is submitted in ASCII text as part of an
associated file.
* * * * *
5. Section 1.53 is amended by revising paragraphs (d)(3) and (f)(5) to
read as follows:
Sec. 1.53 Application number, filing date, and completion of
application.
* * * * *
(d) * * *
(3) The filing fee, search fee, and examination fee for a continued
prosecution application filed under this paragraph are the basic filing
fee as set forth in Sec. 1.16(b), the search fee as set forth in Sec.
1.16(l), and the examination fee as set forth in Sec. 1.16(p).
* * * * *
(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 after the date of the commencement of
the national stage (Sec. 1.491(a)) 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
8. Section 1.495 is amended by revising paragraphs (c)(1)(i) and (c)(3)
to read as follows:
Sec. 1.495 Entering the national stage in the United States of
America.
* * * * *
(c)(1) * * *
(i) A translation of the international application, as filed, into
the English language, if it was originally filed in another language
and if any English language translation of the publication of the
international application previously submitted under 35 U.S.C. 154(d)
(Sec. 1.417) is not also a translation of the international
application as filed (35 U.S.C. 371(c)(2));
* * * * *
(3) The payment of the processing fee set forth in Sec. 1.492(i)
is required for acceptance of an English translation later than the
expiration of thirty months after the priority date. The payment of the
surcharge set forth in Sec. 1.492(h) is required for acceptance of any
of the search fee, the examination fee, or the oath or declaration of
the inventor after the date of the commencement of the national stage
(Sec. 1.491(a)).
* * * * *
May 19, 2005. JON W. DUDAS
Under Secretary of Commerce for Intellectual
Property and Director of the United States
Patent and Trademark Office