United States Patent and Trademark Office OG Notices: 04 April 2006
DEPARTMENT OF COMMERCE
Patent and Trademark Office
37 CFR Part 1
[Docket No. 2004-P-038]
RIN 0651-AB79
Changes to Implement the Patent
Search Fee Refund Provisions of the
Consolidated Appropriations Act, 2005
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
patent application filing fee into a separate filing fee, search fee and
examination fee. The Consolidated Appropriations Act also provides that the
United States Patent and Trademark Office (Office) may refund part or all
of the excess claims fee and the search fee in certain situations. This
final rule revises the rules of practice to implement the provisions for
refunding the search fee for applicants who file a written declaration of
express abandonment before an examination has been made of the application.
DATES: Effective Date: March 10, 2006.
Applicability Date: The changes in this final rule apply to any patent
application filed under 35 U.S.C. 111(a) on or after December 8, 2004, in
which a petition under 37 CFR 1.138(d) to expressly abandon the application
was filed on or after March 10, 2006.
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 Office may, by regulation, provide for a refund of: (1)
Any part of the excess claims fee specified in 35 U.S.C. 41(a)(2) for any
claim that is canceled before an examination on the merits has been made
of the application under 35 U.S.C. 131; (2) any part of the search fee for
any applicant who files a written declaration of express abandonment as
prescribed by the Office before an examination has been made of the
application under 35 U.S.C. 131; and (3) any part of the search fee for
any applicant who provides a search report that meets the conditions
prescribed by the Office. This final rule revises the rules of practice
to implement the provision for a refund of the search fee for any
applicant who files a written declaration of express abandonment as
prescribed by the Office before an examination has been made of the
application under 35 U.S.C. 131, and the provision for a refund of the
excess claims fee for any claim that is canceled before an examination
on the merits has been made of the application under 35 U.S.C. 131.
Discussion of Specific Rules
Title 37 of the Code of Federal Regulations, Part 1, is amended as
follows:
Section 1.138: Section 1.138(c) is amended to change "section" (i.e.,
Sec. 1.138) to "paragraph" (i.e., Sec. 1.138(c)) to clarify that a
petition to expressly abandon an application to avoid publication of an
application is filed under Sec. 1.138(c) (rather than Sec. 1.138).
Section 1.138 is also amended to include a new paragraph (d), which
implements the provision in 35 U.S.C. 41(d)(1)(D) that the Office may
provide for a refund of any part of the search fee "for any applicant
who files a written declaration of express abandonment as prescribed by
the Director before an examination has been made of the application
under [35 U.S.C.] 131" (and in part the provision in 35 U.S.C.
41(a)(2) that the Office may provide for a refund of any part of the
excess claims fee "for any claim that is canceled before an
examination on the merits, as prescribed by the Director, has been made
of the application under [35 U.S.C.] 131"). Section 1.138(d)
specifically provides that an applicant seeking to abandon an
application filed under 35 U.S.C. 111(a) and Sec. 1.53(b) on or after
December 8, 2004, to obtain a refund of the search fee and excess
claims fee paid in the application, must submit a petition and
declaration of express abandonment before an examination has been made
of the application.
A petition under Sec. 1.138(d) will be granted if it was filed before an
examination has been made of the application and will be denied if it
was not filed before an examination has been made of the application.
This will avert the situation in which an applicant files a declaration
of express abandonment to obtain a refund of the search fee and excess
claims fee, the request for a refund is not granted because the
declaration of express abandonment was not filed before an examination
has been made of the application, the applicant then wishes to rescind
the declaration of express abandonment upon learning that the
declaration of express abandonment was not filed before an examination
has been made of the application, and the Office cannot revive the
application (once the declaration of express abandonment is recognized)
because the application was expressly and intentionally abandoned by
the applicant.
An "examination has been made of the application" for purposes of
Sec. 1.138(d) once an action (e.g., restriction or election of
species requirement, requirement for information under Sec. 1.105, first
Office action on the merits, notice of Allowability or allowance, or
action under Ex parte Quayle, 1935 Dec. Comm'r Pat. 11
(1935)) is shown in PALM as having been counted. For purposes of Sec.
1.138(d), "before" means occurring earlier in time, in that if a
petition under Sec. 1.138(d) is filed and an action is counted on the
same day, the petition under Sec. 1.138(d) was not filed before an
examination has been made of the application. In addition, the date
indicated on any certificate of mailing or transmission under Sec. 1.8
will not be taken into account in determining whether a petition under
Sec. 1.138(d) was filed before an examination has been made of the
application. The Office recommends that petitions under Sec. 1.138(d) be
submitted by facsimile to 703-305-8568 using the Office's "Petition
for Express Abandonment to Obtain a Refund" form (PTO/SB/24B) to
avoid delays in receiving and processing the petition under Sec.
1.138(d).
The Patent Application Locating and Monitoring (PALM) system maintains
computerized contents records of all patent applications and
reexamination proceedings. The PALM system will show a status higher
than 031 once an action has been counted. If the status of an
application as shown in PALM is higher than 031 before or on the day
that the petition under Sec. 1.138(d) was filed, the petition under Sec.
1.138(d) will be denied and the search fee and excess claims fee will
not be refunded.
The Patent Application Information Retrieval (PAIR) system is a system
that provides public access to PALM for patents and applications that
have been published. The PAIR system does not provide public access to
information concerning applications that are maintained in confidence
under 35 U.S.C. 122(a). The private side of PAIR, however, can be used
by an applicant to access confidential information about his or her
pending application. To access the private side of PAIR, a customer
number must be associated with the correspondence address for the
application, and the user of the system must have a digital
certificate. For further information, contact the Customer Support
Center of the Electronic Business Center at (571) 272-4100 or toll free
at (866) 217-9197.
Section 1.138(d) also provides that if a request for refund of the
search fee and excess claims fee paid in the application is not filed
with the declaration of express abandonment under Sec. 1.138(d) or within
two months (not extendable) from the date on which the declaration of
express abandonment under Sec. 1.138(d) was filed, the Office may retain
the entire search fee and excess claims fee paid in the application.
Finally, Sec. 1.138(d) provides that if a declaration of express
abandonment under Sec. 1.138(d) is not filed before an examination has
been made of the application, the Office will not refund any part of
the search fee or excess claims fee paid in the application except as
provided in Sec. 1.26.
A petition under Sec. 1.138(d) may not be effective to stop publication
of an application unless the petition under Sec. 1.138(d) is granted and
the abandonment processed before technical preparations for publication
of the application has begun. Technical preparations for publication of
an application generally begin four months prior to the projected date
of publication.
Response to Comments: The Office published a notice
proposing changes to implement the patent search fee refund provisions
of the Consolidated Appropriations Act, 2005. See Changes to
Implement the Patent Search Fee Refund Provisions of the Consolidated
Appropriations Act, 2005, 70 FR 35571 (Jun. 21, 2005), 1296
Off. Gaz. Pat. Office 69 (Jul. 12, 2005) (proposed rule).
The Office received four written comments (from an intellectual
property organization, law firm, and patent practitioners) in response
to this notice. The comments and the Office's responses to the
comments follow:
Comment 1: Several comments argued that the Office's
decision to limit search fee refunds to applications that have been
abandoned before being placed on an examiner's docket or before being
taken up for examination was inconsistent with the Consolidated
Appropriations Act, which provides for a search fee refund if the
application is abandoned "before an examination has been made of the
application." The comments further argued that the Office cannot use
information technology issues as a justification for not implementing
this provision. Several other comments argued that the Office's
decision to limit search fee refunds to applications that have been
abandoned before being placed on an examiner's docket will result in
only limited use of the process, which in turn would result in the
Office needing to examine more applications than it would otherwise
need to examine.
Response: The Consolidated Appropriations Act permits, but
does not require, the Office to refund, or develop procedures to
refund, search fees or excess claims fees. See 35 U.S.C.
41(a)(2) and (d)(1)(D) ("[t]he Director may by regulation provide
for a refund") (emphasis added). The Consolidated Appropriations Act
(35 U.S.C. 41(d)(1)(D)) gives the Office the authority to fix the time
by which an application must be expressly abandoned for the applicant
to obtain a refund of the search fee. 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)). The "before
an examination has been made of the application under [35 U.S.C.]
131" provision (search fees) simply places a restriction on this
authority, in that the Office does not have the authority to refund, or
develop procedures to refund, the search fee in an application in which
the written declaration of express abandonment is not filed before an
examination has been made of the application under 35 U.S.C. 131.
Nevertheless, the Office is seeking to maximize any benefit that may be
obtained by the authority in 35 U.S.C. 41(d)(1)(D) to refund the search
fee and excess claims fee in applications that are expressly abandoned
before an examination has been made of the application under 35 U.S.C.
131. Therefore, the Office is revising Sec. 1.138(d) to change "must
submit a declaration of express abandonment by way of a petition under
this paragraph in sufficient time to permit the appropriate officials
to recognize the abandonment before the application has been taken up
for examination" to "must submit a declaration of express
abandonment by way of a petition under this paragraph before an
examination has been made of the application," and is providing that
an "examination has been made of the application" for purposes of
Sec. 1.138(d) once an action (e.g., restriction or election of
species requirement, requirement for information under Sec. 1.105, first
Office action on the merits, notice of Allowability or allowance, or
action under Ex parte Quayle, 1935 Dec. Comm'r Pat. 11
(1935)) is shown in PALM as having been counted.
Comment 2: Several comments suggested that the Office should
also refund the excess claims fees paid in an application if the
application is expressly abandoned under Sec. 1.138(d).
Response: Section 1.138(d) has been revised to provide that
the Office will also refund the excess claims fees paid in an
application if the application is expressly abandoned under Sec.
1.138(d).
Comment 3: One comment requested confirmation that no
petition or other fee is required for a petition under Sec. 1.138(d) to
expressly abandon an application.
Response: No petition or other fee is required for a
petition under Sec. 1.138(d) to expressly abandon an application.
Comment 4: One comment argued that the term "any search
fee" was unclear and should be replaced with "the entire search
fee" if the Office plans to refund the entire search fee paid in the
application.
Response: Section 1.138(d) has been revised to replace the
term "any search fee" with "the search fee."
Comment 5: One comment argued that: (1) Pro se inventors without
knowledge of customer numbers and private PAIR will not be able to
access their application to determine whether it has been placed on an
examiner's docket; (2) it is not clear which docketing date will control
for transferred applications as the original docket assignment may be
changed after the transfer; (3) the proposed rule does not address the
filing of a request for a continued examination in the application; and
(4) the time at which an application is placed on an examiner's docket
varies dramatically from Art Unit to Art Unit and from Technology Center
to Technology Center. One comment suggested a rule that set a fixed time
period within which the applicant may expressly abandon the application
and obtain a refund of the search fee, with the Office notifying an
applicant if the application would be taken up for action prior to the
expiration of such fixed time period. Another comment suggested that the
Office can avoid a significant information technology investment by just
having the petition examiners use the telephone or electronic mail message
to determine an application has been taken up for action. The comment also
suggested that the Office simply have the examiner place an entry on
the PALM system when a particular application was taken up for action.
Response: The Office is revising Sec. 1.138(d) to change "must submit
a declaration of express abandonment by way of a petition under this
paragraph in sufficient time to permit the appropriate officials to
recognize the abandonment before the application has been taken up for
examination" to "must submit a declaration of express abandonment by way
of a petition under this paragraph before an examination has been made of
the application," and is providing that an "examination has been made of
the application" for purposes of Sec. 1.138(d) once an action (e.g.,
restriction or election of species requirement, requirement for
information under Sec. 1.105, first Office action on the merits, notice of
Allowability or allowance, or action under Ex parte Quayle, 1935 Dec.
Comm'r Pat. 11 (1935)) is shown in PALM as having been counted. As
discussed previously, an implementation of the search fee refund
provisions of the Consolidated Appropriations Act that requires a
significant information technology investment (e.g., the ability to
generate notices to the applicant when an application is about to be taken
up for action) is not warranted in the absence of the enactment of
legislation which makes the patent fee structure provided for in the
Consolidated Appropriations Act permanent.
Rule Making Considerations
Regulatory Flexibility Act
For the reasons set forth herein, the Deputy General Counsel
for General Law of the United States Patent and Trademark Office has
certified to the Chief Counsel for Advocacy of the Small Business
Administration that changes in this final rule will not have a
significant economic impact on a substantial number of small entities.
See 5 U.S.C. 605(b). This final rule changes the rules of
practice to implement the provisions for a refund of the search fee and
excess claims fee for any applicant who files a written declaration of
express abandonment as prescribed by the Office before an examination
has been made of the application under 35 U.S.C. 131. The changes in
this final rule would not impose any additional fees or requirements on
any patent applicant. Rather, the changes in this final rule only
provide for a refund of the search fee and excess claims fee for patent
applicants (small or non-small entity) in certain situations.
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
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 changes in this final rule concern the
procedures for refunding the search fee and excess claims fee for any
applicant who files a written declaration of express abandonment before
an examination has been made of the application under 35 U.S.C. 131.
The collections of information involved in this final rule have been
reviewed and previously approved by OMB under the following OMB control
numbers: 0651-0031 and 0651-0032. The United States Patent and
Trademark Office is resubmitting the information collections package to
OMB for its review and approval because the changes in this final rule
do affect the information collection requirements associated with the
information collection under these OMB control numbers.
The title, description and respondent description of the information
collections under OMB control numbers 0651-0031 and 0651-0032
are shown below with estimates of the annual reporting burdens.
Included in the estimates is the time for reviewing instructions,
gathering and maintaining the data needed, and completing and reviewing
the collection of information.
OMB Number: 0651-0031.
Title: Patent Processing (Updating).
Form Numbers: PTO/SB/08A, PTO/SB/08B, PTO/SB/17i,
PTO/SB/17p, PTO/ SB/21-27, PTO/SB/30-37, PTO/SB/42-43, PTO/SB/61-64,
PTO/SB/64a, PTO/SB/ 67-68, PTO/SB/91-92, PTO/SB/96-97, PTO-2053-A/B,
PTO-2054-A/B, PTO- 2055-A/B, POOL-413A.
Type of Review: Approved through July of 2006.
Affected Public: Individuals or Households, Business or
Other For-Profit Institutions, Not-for-Profit Institutions, Farms,
Federal Government and State, Local and Tribal Governments.
Estimated Number of Respondents: 2,284,439.
Estimated Time per Response: 1 minute and 48 seconds to 8
hours.
Estimated Total Annual Burden Hours: 2,732,441 hours.
Needs and Uses: During the processing of an application for
a patent, the applicant/agent may be required or desire to submit
additional information to the United States Patent and Trademark Office
concerning the examination of a specific application. The specific
information required or which may be submitted includes: Information
Disclosures and citation, requests for extensions of time, the
establishment of small entity status, abandonment and revival of
abandoned applications, disclaimers, appeals, expedited examination of
design applications, transmittal forms, requests to inspect, copy and
access patent applications, publication requests, and certificates of
mailing, transmittals, and submission of priority documents and
amendments.
OMB Number: 0651-0032.
Title: Initial Patent Application.
Form Number: PTO/SB/01-07, PTO/SB/13PCT, PTO/SB/16-19,
PTO/SB/29 and 29A, PTO/SB/101-110, Electronic New Utility and
Provisional Application Forms.
Type of Review: Approved through July of 2006.
Affected Public: Individuals or Households, Business or
Other For-Profit Institutions, Not-For-Profit Institutions, Farms,
Federal Government, and State, Local, or Tribal Governments.
Estimated Number of Respondents: 454,287.
Estimated Time per Response: 22 minutes to 10 hours and 45
minutes.
Estimated Total Annual Burden Hours: 4,171,568 hours.
Needs and Uses: The purpose of this information collection
is to permit the Office to determine whether an application meets the
criteria set forth in the patent statute and regulations. The standard
Fee Transmittal form, New Utility Patent Application Transmittal form,
New Design Patent Application Transmittal form, New Plant Patent
Application Transmittal form, Declaration, Provisional Application
Cover Sheet, and Plant Patent Application Declaration will assist
applicants in complying with the requirements of the patent statute and
regulations, and will further assist the Office in processing and
examination of the application.
Comments are invited on: (1) Whether the collection of information is
necessary for proper performance of the functions of the agency; (2)
the accuracy of the agency's estimate of the burden; (3) ways to
enhance the quality, utility, and clarity of the information to be
collected; and (4) ways to minimize the burden of the collection of
information to respondents.
Interested persons are requested to send comments regarding these
information collections, including suggestions for reducing this
burden, to: (1) The Office of Information and Regulatory Affairs,
Office of Management and Budget, New Executive Office Building, Room
10202, 725 17th Street, NW., Washington, DC 20503, Attention: Desk
Officer for the Patent and Trademark Office; and (2) Robert J. Spar,
Director, Office of Patent Legal Administration, Commissioner for
Patents, P.O. Box 1450, Alexandria, VA 22313-1450.
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 record keeping
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 1.138 is amended by revising paragraph (c) and
adding paragraph (d) to read as follows:
Sec. 1.138 Express abandonment.
* * * * *
(c) An applicant seeking to abandon an application to avoid
publication of the application (see Sec. 1.211(a)(1)) must submit a
declaration of express abandonment by way of a petition under this
paragraph including the fee set forth in Sec. 1.17(h) in sufficient time
to permit the appropriate officials to recognize the abandonment and
remove the application from the publication process. Applicants should
expect that the petition will not be granted and the application will
be published in regular course unless such declaration of express
abandonment and petition are received by the appropriate officials more
than four weeks prior to the projected date of publication.
(d) An applicant seeking to abandon an application filed under 35
U.S.C. 111(a) and Sec. 1.53(b) on or after December 8, 2004, to obtain a
refund of the search fee and excess claims fee paid in the application,
must submit a declaration of express abandonment by way of a petition
under this paragraph before an examination has been made of the
application. The date indicated on any certificate of mailing or
transmission under Sec. 1.8 will not be taken into account in determining
whether a petition under Sec. 1.138(d) was filed before an examination
has been made of the application. If a request for refund of the search
fee and excess claims fee paid in the application is not filed with the
declaration of express abandonment under this paragraph or within two
months from the date on which the declaration of express abandonment
under this paragraph was filed, the Office may retain the entire search
fee and excess claims fee paid in the application. This two-month
period is not extendable. If a petition and declaration of express
abandonment under this paragraph are not filed before an examination
has been made of the application, the Office will not refund any part
of the search fee and excess claims fee paid in the application except
as provided in Sec. 1.26.
March 2, 2006 JON W. DUDAS
Under Secretary of Commerce for
Intellectual Property and Director of the
United States Patent and Trademark Office