United States Patent and Trademark Office OG Notices: 12 July 2005
DEPARTMENT OF COMMERCE
Patent and Trademark Office
37 CFR Part 1
[Docket No.: 2005-P-052]
RIN 0651-AB84
Revision of Search and Examination Fees for
Patent Cooperation Treaty Applications
Entering the National Stage
in the United States
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 national fee for Patent Cooperation Treaty (PCT)
applications entering the national stage into a separate national fee,
search fee and examination fee, during fiscal years 2005 and 2006. The
United States Patent and Trademark Office (Office) is reducing the
search fee and examination fee for certain PCT applications entering
the national stage.
DATES: Effective date: July 1, 2005.
Applicability Date: The changes in this final rule apply to any
search fee paid on or after July 1, 2005, and to any examination fee
paid on or after July 1, 2005, in an international application entering
the national stage under 35 U.S.C. 371 for which the basic national fee
specified in 35 U.S.C. 41 was paid on or after December 8, 2004.
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: 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 or national 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. See Pub. L. 108-447, 118
Stat. 2809 (2004). The Consolidated Appropriations Act provides a fee
of $500.00 for the search of the national stage of each international
application (Section 803(c)(1) of Division B) and a fee of $200.00 for
the examination of the national stage of each international application
(35 U.S.C. 41(a)(3)(D)) during fiscal years 2005 and 2006.
35 U.S.C. 376 provides that: "[t]he Director may also refund any
part of the search fee, the national fee, the preliminary examination
fee and any additional fees, where he determines such refund to be
warranted." See 35 U.S.C. 376(b). Under the authority provided in 35
U.S.C. 376: (1) The Office will refund the entire search fee if an
international preliminary examination report on the international
application prepared by the United States International Preliminary
Examining Authority or a written opinion on the international application
prepared by the United States International Searching Authority states
that the criteria of novelty, inventive step (non-obviousness), and
industrial applicability, as defined in PCT Article 33(1) to (4) (PCT
Article 33(1) to (4) criteria) have been satisfied for all of the claims
presented in the application entering the national stage; (2) the Office
will refund the entire search fee less $100.00 ($50.00 for small entities)
if the 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; and (3) the Office will refund
$100.00 ($50.00 for small entities) if an international search report
on the international application has been prepared by an International
Searching Authority other than the United States International
Searching Authority and is provided to the Office no later than the
time at which the search fee is paid. In addition, under the authority
provided in 35 U.S.C. 376, the Office will refund the entire
examination fee if an international preliminary examination report on
the international application prepared by the United States
International Preliminary Examining Authority or a written opinion on
the international application prepared by the United States
International Searching Authority states that the PCT Article 33(1) to
(4) criteria have been satisfied for all of the claims presented in the
application entering the national stage.
Discussion of Specific Rules
Title 37 of the Code of Federal Regulations, Part 1, is amended as
follows:
Section 1.492: Section 1.492(b) sets forth the search fees for an
international application entering the national stage under 35 U.S.C.
371. Section 1.492(b)(1) provides that the search fee for an
international application entering the national stage under 35 U.S.C.
371 is $0.00 (small or non-small entity), if an international
preliminary examination report on the international application
prepared by the United States International Preliminary Examining
Authority or a written opinion on the international application
prepared by the United States International Searching Authority states
that the PCT Article 33(1) to (4) criteria have been satisfied for all
of the claims presented in the application entering the national stage.
Section 1.492(b)(2) provides that the search fee for an international
application entering the national stage under 35 U.S.C. 371 is $100.00
($50.00 for a small entity) if the 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. Section 1.492(b)(3) provides that the search fee for an
international application entering the national stage under 35 U.S.C.
371 is $400.00 ($200.00 for a small entity) if an international search
report on the international application has been prepared by an
International Searching Authority other than the United States
International Searching Authority and is provided to the Office. If the
search fee is paid in the amount specified in Sec. 1.492(b)(3) on the
date of the commencement of the national stage (Sec. 1.491(a)), but an
international search report on the international application prepared
by an International Searching Authority other than the United States
International Searching Authority is provided to the Office after the
date of the commencement of the national stage, the surcharge under
Sec. 1.492(h) 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 (if applicable) will be due because the application was
not entitled to the search fee specified in Sec. 1.492(b)(3) on the
date of the commencement of the national stage. Section 1.492(b)(4)
provides that the search fee for an international application entering
the national stage under 35 U.S.C. 371 is $500.00 ($250.00 for a small
entity) in all other situations.
Section 1.492(c) sets forth the examination fee for an
international application entering the national stage under 35 U.S.C.
371. Section 1.492(c)(1) provides that the examination fee for an
international application entering the national stage under 35 U.S.C.
371 is $0.00 (small or non-small entity), if an international
preliminary examination report on the international application
prepared by the United States International Preliminary Examining
Authority or a written opinion on the international application
prepared by the United States International Searching Authority states
that the PCT Article 33(1) to (4) criteria have been satisfied for all
of the claims presented in the application entering the national stage.
Section 1.492(c)(2) provides that the examination fee for an
international application entering the national stage under 35 U.S.C.
371 is $200.00 ($100.00 for a small entity) in all other situations.
Section 1.496: Section 1.496(b) is amended to revise its references
to Sec. 1.492 to reflect the changes in Sec. 1.492 by which national
stage applications having paid therein the search fee as set forth in
Sec. 1.492(b)(1) and the examination fee as set forth in Sec.
1.492(c)(1) may be amended subsequent to the date of entry into the
national stage only to the extent necessary to eliminate objections as
to form or to cancel rejected claims. Section 1.496(b) is also amended
to provide that such national stage applications will be advanced out
of turn for examination (rather than taken up out of order).
Response to comments: The Office published an interim rule revising
search and examination fees for international applications entering the
national stage in the United States and inviting comments on the
revised search and examination fees. See Revision of Search and
Examination Fees for Patent Cooperation Treaty Applications Entering
the National Stage in the United States, 70 FR 5053 (Feb. 1, 2005),
1292 Off. Gaz. Pat. Office 21 (Mar. 1, 2005) (interim rule). The Office
received three written comments (from an intellectual property
organization, and patent practitioners) in response to this notice. The
comments and the Office's responses to the comments follow:
Comment 1: One comment suggested that there should be greater
search fee and examination fee reductions for applications entering the
national stage in the United States with an international search report
and international preliminary examination report provided by the United
States Patent and Trademark Office acting as an International Searching
Authority and International Preliminary Examining Authority, especially
where an international preliminary examination report is positive, and
for applications entering the national stage in the United States with
an international search report and international preliminary
examination report provided by other offices acting as an International
Searching Authority. The comment argued that such greater fee
reductions would be consistent with the greater fee reductions for such
applications provided by 35 U.S.C. 41(a) prior to enactment of the
Consolidated Appropriations Act, would encourage applicants to use the
PCT system, and would further the implementation of the United States
Patent and Trademark Office 21st Century Strategic Plan.
Response: The Office will reduce the search fee to $0.00 and the
examination fee to $0.00 where an international preliminary examination
report on the international application prepared by the United States
International Preliminary Examining Authority or a written opinion on
the international application prepared by the United States International
Searching Authority states that the PCT Article 33(1) to (4) criteria have
been satisfied for all of the claims presented in the application entering
the national stage (Sec. 1.496(b)). The Office considers a search fee
reduction to $100.00 ($50.00 for a small entity) for other applications
entering the national stage in the United States with an international
search report provided by the United States Patent and Trademark Office
acting as an International Searching Authority to be appropriate. This
search fee reduction (to $100.00, or $50.00 for a small entity) is
significant, and the Office will be required to conduct additional
searching during the course of examining an international application
in which the PCT Article 33(1) to (4) criteria have not been satisfied
for all of the claims presented in the application entering the
national stage.
The Office reduced the search fee to $400.00 ($200.00 for a small
entity) for applications entering the national stage in the United
States with an international search report provided by an International
Searching Authority other than the United States Patent and Trademark
Office. The United States Patent and Trademark Office 21st Century
Strategic Plan contemplates significant national stage search fee
reductions for international applications in which the international
search report was done by an intellectual property authority with which
the United States Patent and Trademark Office has a multilateral or
bilateral search exchange agreement. The multilateral or bilateral
search exchange agreements contemplated by the United States Patent and
Trademark Office 21st Century Strategic Plan, however, are not
currently in place. Therefore, a greater reduction in the search fee
for applications entering the national stage in the United States with
an international search report provided by an International Searching
Authority other than the United States Patent and Trademark Office is
not warranted at this time.
Comment 2: One comment noted that the search fees and examination
fees in Sec. 1.492 appear to apply only to international applications
entering the national stage in the United States under 35 U.S.C. 371.
The comment questioned whether the reduced search fees would also apply
to a continuation application filed under 35 U.S.C. 111(a) of an
international application (i.e., a bypass continuation application), or
a continuation application filed under 35 U.S.C. 111(a) of an
international application that entered the national stage in the United
States under 35 U.S.C. 371.
Response: The search fees and examination fees in Sec. 1.492 apply
only to international applications entering the national stage in the
United States under 35 U.S.C. 371. The search fees and examination fees
in Sec. 1.492 do not apply to any application filed under 35 U.S.C.
111(a), including continuation applications of an international
application (i.e., a bypass continuation application), or continuation
applications of an international application that entered the national
stage in the United States under 35 U.S.C. 371.
Comment 3: One comment noted that Sec. 1.492(c)(1) provides a
reduced examination fee where the international preliminary examination
report satisfies PCT Article 33(1) to (4) criteria for an application
entering the national stage, but contends that the Office frequently
delays issuance of the international preliminary examination report
until after thirty months from the priority date, which effectively
nullifies the examination reduction. The comment suggested revising
Sec. 1.492(c)(1) by also providing this reduced examination fee for
applications entering the U.S. national stage where the international
preliminary examination report is overdue.
Response: If the Office delays issuance of the international
preliminary examination report until after thirty months from the
priority date, and the international preliminary examination report
states that the PCT Article 33(1) to (4) criteria have been satisfied
for all of the claims presented in the application entering the
national stage, the applicant may request a refund of the search fee
and the examination fee. The Office will grant such a request for
refund, however, only where the delay in issuance of the international
preliminary examination report was the Office's fault (e.g., the Office
will not grant a refund where the delay was due to applicant delays, or
delays by another International Searching Authority).
Comment 4: One comment noted that Sec. 1.496(b) appears to
prohibit formal changes which may be necessary, and does not specify
any specific time frame within which the application must be taken up
for examination. The comment suggested revising Sec. 1.496 to permit
changes to the application except for the claims, and provide that such
applications will be taken up within three months of completion of the
requirements of Sec. 1.495(b) and (c).
Response: The Office did not propose substantive changes to Sec.
1.496(b). The Office will revise Sec. 1.496(b) to indicate that such
national stage applications "will be advanced out of turn for
examination." The Office will also consider the suggestion to amend
Sec. 1.496(b) to permit additional changes to the application in a
future rule making.
Rule Making Considerations
Administrative Procedure Act: Nothing in this or any other law
requires delayed implementation of the fee reductions in this final
rule. Pursuant to its authority under 35 U.S.C. 376(b), the Office has
reduced the patent fees set forth in Sec. 1.492 to less than the
amount specified in 35 U.S.C. 41. Existing rights and obligations are
not otherwise changed. It is in the public interest to implement the
reduced search and examination fees without delay because delay in the
adoption of these fee reductions would cause harm to those applicants
who currently meet the conditions for entitlement to a fee reduction.
Otherwise, applicants who are currently filing search and examination
fees in order to avoid abandonment of their applications will be
unnecessarily paying higher search and examination fees. The Office
believes the public wants these new reduced fees to become effective as
soon as possible as the public should benefit from the efficiencies and
savings resulting therefrom. In addition, the Office does not believe
the public needs time to conform its conduct so as to avoid violation
of these regulations. In order to give the public the benefit of the
Office's decision to reduce specified search and examination fees
without delay, the Office finds, pursuant to the authority provided at
5 U.S.C. 553(d), good cause to adopt this change without thirty-day
advance publication as such a delay would be contrary to the public
interest.
35 U.S.C. 41(g) provides that: "[n]o fee established by the
Director under [35 U.S.C. 41]; shall take effect until at least 30 days
after notice of the fee has been published in the Federal Register and
in the Official Gazette of the Patent and Trademark Office." Since the
reduced search fees and examination fees specified in Sec. 1.492(b)
and (c) are established by the Office on the basis of the Office's
authority under 35 U.S.C. 376(b) (rather than the authority in 35
U.S.C. 41), the thirty-day advance publication requirement of 35 U.S.C.
41(g) does not apply to the reduced search fees and examination fees
specified in Sec. 1.492(b) and (c).
Accordingly, the changes in this final rule may be adopted without
thirty-day advance publication under 5 U.S.C. 553(d) or 35 U.S.C. 41(g).
Regulatory Flexibility Act: The Deputy General Counsel for General
Law of the United States Patent and Trademark Office certifies to the
Chief Counsel for Advocacy of the Small Business Administration that
this final rule, Revision of Search and Examination Fees for Patent
Cooperation Treaty Applications Entering the National Stage in the
United States (RIN 0651-AB84), will not have a significant economic
impact on a substantial number of small entities. See 5 U.S.C. 605(b).
Pursuant to its authority under 35 U.S.C. 376(b), the Office is
reducing the patent fees set forth in Sec. 1.492 to less than the
amount specified in 35 U.S.C. 41. The changes in this final rule will
not impose any additional fees or requirements on any patent applicant.
Rather, the changes in this final rule would eliminate search and
examination fees for patent applicants (for both small and non-small
entities) in specific situations where the Office performed the search
and/or examination at the international stage of the PCT application.
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 final rule involves information
collection requirements that 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 collection of information involved in
this final rule has been reviewed and previously approved by OMB under
the following control number: 0651-0021. The Office is not resubmitting
an information collection package to OMB for its review and approval
because the changes in this final rule do not affect the information
collection requirements associated with the information collection
under this OMB control number.
Interested persons are requested to send comments regarding this
information collection, including suggestions for reducing this burden,
to Robert J. Spar, Director, Office of Patent Legal Administration,
United States Patent and Trademark Office, P.O. Box 1450, Alexandria,
VA, 22313-1450, or to the Office of Information and Regulatory Affairs
of OMB, New Executive Office Building, 725 17th Street, NW., Room
10235, Washington, DC 20503, Attention: Desk Officer for the United
States Patent and Trademark Office.
Notwithstanding any other provision of law, no person is required
to respond to nor shall a person be subject to a penalty for failure to
comply with a collection of information subject to the requirements of
the Paperwork Reduction Act unless that collection of information
displays a currently valid OMB control number.
List of Subjects
37 CFR Part 1
Administrative practice and procedure, Courts, Freedom of
Information, Inventions and patents, Reporting and record keeping
requirements, Small Businesses.
. For the reasons set forth in the preamble, the interim rule amending
37 CFR Part 1 which was published at 70 FR 5053-5056 on February 1, 2005,
is adopted as final with the following changes:
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 1.492 is amended by revising paragraphs (b) and (c) to read
as follows:
Sec. 1.492 National stage fees.
* * * * *
(b) Search fee for an international application entering the
national stage under 35 U.S.C. 371 if the basic national fee was not
paid before December 8, 2004:
(1) If an international preliminary examination report on the
international application prepared by the United States International
Preliminary Examining Authority or a written opinion on the
international application prepared by the United States International
Searching Authority 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 of the claims
presented in the application entering the national stage:
By a small entity (Sec. 1.27(a)) $0.00
By other than a small entity $0.00
(2) If the 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)) $50.00
By other than a small entity $100.00
(3) If an international search report on the international
application has been prepared by an International Searching Authority
other than the United States International Searching Authority and is
provided, or has been previously communicated by the International
Bureau, to the Office:
By a small entity (Sec. 1.27(a)) $200.00
By other than a small entity $400.00
(4) In all situations not provided for in paragraphs (b)(1), (b)(2),
or (b)(3) of this section:
By a small entity (Sec. 1.27(a)) $250.00
By other than a small entity $500.00
(c) The examination fee for an international application entering
the national stage under 35 U.S.C. 371 if the basic national fee was
not paid before December 8, 2004:
(1) If an international preliminary examination report on the
international application prepared by the United States International
Preliminary Examining Authority or a written opinion on the
international application prepared by the United States International
Searching Authority 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 of the claims
presented in the application entering the national stage:
By a small entity (Sec. 1.27(a)) $0.00
By other than a small entity $0.00
(2) In all situations not provided for in paragraph (c)(1) of this
section:
By a small entity (Sec. 1.27(a)) $100.00
By other than a small entity $200.00
* * * * *
. 3. Section 1.496 is amended by revising paragraph (b) to read as
follows:
Sec. 1.496 Examination of international applications in the national
stage.
* * * * *
(b) National stage applications having paid therein the search fee
as set forth in Sec. 1.492(b)(1) and the examination fee as set forth
in Sec. 1.492(c)(1) may be amended subsequent to the date of entry
into the national stage only to the extent necessary to eliminate
objections as to form or to cancel rejected claims. Such national stage
applications will be advanced out of turn for examination.
June 10, 2005 JON W. DUDAS
Under Secretary of Commerce for
Intellectual Property and Director of the
United States Patent and Trademark Office