United States Patent and Trademark Office OG Notices: 01 August 2006
DEPARTMENT OF COMMERCE
Patent and Trademark Office
Docket No.: PTO-P-2006-0034]
Size Standard for Purposes of United
States Patent and Trademark Office
Regulatory Flexibility Analysis for
Patent-Related Regulations
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Request for comments.
SUMMARY: The United States Patent and Trademark Office
(USPTO) uses the Small Business Administration (SBA) size standard for
the purpose of paying reduced patent fees as its size standard when
conducting an analysis or making a certification under the Regulatory
Flexibility Act for patent-related regulations. The Small Business
Administration Office of Advocacy (SBA-Advocacy) has questioned whether
this is the appropriate size standard for conducting an analysis or
making a certification under the Regulatory Flexibility Act. Pursuant
to the Regulatory Flexibility Act, the USPTO is providing this
opportunity for public comment on the establishment of the SBA's
definition of "small business concern" for the purpose of paying
reduced patent fees as the definition of "small business concern"
for Regulatory Flexibility Act purposes for patent-related regulations.
Comment Deadline Date: To be ensured of consideration,
written comments must be received on or before August 7, 2006. No
public hearing will be held.
ADDRESSES: Comments should be sent by electronic mail
message over the Internet addressed to rfa-patents.comments@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 Christina T. Donnell. Although comments may be submitted by mail or
facsimile, the Office prefers to receive comments via the Internet.
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: Christina T. Donnell, Senior Petition
Attorney, Office of Petitions, Office of the Deputy Commissioner for
Patent Examination Policy, by telephone at (571) 272-3211, 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 Christina T. Donnell.
SUPPLEMENTARY INFORMATION: The patent statute provides that "fees charged
under [35 U.S.C. 41](a), (b) and (d)(1) shall be reduced by 50 percent with
respect to their application to any small business concern as defined under
section 3 of the Small Business Act, and to any independent inventor or
nonprofit organization as defined in regulations issued by the Director."
35 U.S.C. 41(h)(1). The SBA defines a small business concern for the
purpose of paying reduced patent fees as one: "(a) Whose number of
employees, including affiliates, does not exceed 500 persons; and (b)
Which has not assigned, granted, conveyed, or licensed (and is under no
obligation to do so) any rights in the invention to any person who made it
and could not be classified as an independent inventor, or to any concern
which would not qualify as a non-profit organization or a small business
concern under this section." 13 CFR 121.802.
The USPTO uses the SBA size standard for the purpose of paying reduced
patent fees in 13 CFR 121.802 as the size standard when conducting an
analysis or making a certification under the Regulatory Flexibility Act
for patent-related regulations. See e.g., Changes To Support Implementation
of the United States Patent and Trademark Office 21st Century Strategic
Plan, 69 FR 56481, 56530 (Sept 21, 2004) (discussion indicating that small
entities for purposes of Regulatory Flexibility Act are considered a subset
of the small entities for purposes of paying reduced patent fees). The
SBA-Advocacy, however, has questioned whether the USPTO's size standard is
under-inclusive because it excludes "any business concern that has
assigned, granted, conveyed, or licensed (and is under no obligation to do
so) any rights in the invention to any person who made it and could not be
classified as an independent inventor, or to any concern which would not
qualify as a non-profit organization or a small business concern under
[13 CFR 121.802]." 13 CFR 121.802(b).
The size standard set forth in 13 CFR 121.802 is the size standard
``for the purpose of paying reduced patent fees'' and thus appears to
be limited to payment of patent fees. See 13 CFR 121.801.
The SBA small business size standards are set forth in 13 CFR 121.201.
The USPTO uses the SBA size standard for the purpose of paying reduced
patent fees as its size standard when conducting an analysis or making
a certification under the Regulatory Flexibility Act because the USPTO
has no business need (other than to conduct an analysis or make a
certification under the Regulatory Flexibility Act) to collect
information from patentees and patent applicants concerning whether
they are a small business concern using the size standards set forth in
13 CFR 121.201, and thus, the USPTO does not collect this information.
The USPTO is proposing to use the size standard set forth in 13 CFR
121.802 as its size standard when conducting an analysis or making a
certification under the Regulatory Flexibility Act to avoid the need to
collect information from patentees and patent applicants concerning
whether they are a small business concern using the size standards set
forth in 13 CFR 121.201.
The Regulatory Flexibility Act permits an agency head to establish, for
purposes of Regulatory Flexibility Act analysis and certification, one
or more definitions of "small business concern" that are
appropriate to the activities of the agency, after consultation with
the Office of Advocacy of the Small Business Administration and after
opportunity for public comment. See 5 U.S.C. 601(3) and 13
CFR 121.903(c). Therefore, the USPTO is publishing for comment a
definition of small business concern for purposes of the USPTO
conducting an analysis or making a certification under the Regulatory
Flexibility Act for patent-related regulations. Specifically, the
USPTO's definition of small business concern for Regulatory
Flexibility Act purposes is a business or other concern that: (1) Meets
the SBA's definition of a "business concern or concern" set forth
in 13 CFR 121.105; and (2) meets the size standards set forth in 13 CFR
121.802 for the purpose of paying reduced patent fees, namely an
entity: (a) Whose number of employees, including affiliates, does not
exceed 500 persons; and (b) which has not assigned, granted, conveyed,
or licensed (and is under no obligation to do so) any rights in the
invention to any person who made it and could not be classified as an
independent inventor, or to any concern which would not qualify as a
non-profit organization or a small business concern under this
definition.
June 28, 2006 JON W. DUDAS
Under Secretary of Commerce for
Intellectual Property and Director of the
United States Patent and Trademark Office