| Fees, Deposit Accounts, Credit Cards, Refunds, etc. |
Referenced Items (70, 71, 72, 73, 74, 75, 76, 77, 78, 79, 80, 81, 82, 83, 84, 85, 86, 87, 88, 89, 90, 91, 92, 93) |
(72) DEPARTMENT OF COMMERCE
Patent and Trademark Office
37 CFR Parts 1 and 41
[Docket No. PTO-C02008-0004]
RIN 0651-AC21
Revision of Patent Fees for Fiscal Year 2009
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Proposed rule.
SUMMARY: The United States Patent and Trademark Office (Office) is
proposing to adjust certain patent fee amounts for fiscal year 2009 to
reflect fluctuations in the Consumer Price Index (CPI). The patent
statute provides for the annual CPI adjustment of patent fees set by
statute to recover the higher costs associated with doing business.
DATES: Written comments must be received on or before July 3, 2008. No
public hearing will be held.
ADDRESSES: You may submit comments, identified by RIN number RIN
0651-AC21, by any of the following methods:
. Federal eRulemaking Portal: http://wwwregulations.gov. Follow the
instructions for submitting comments.
. E-mail: Walter.Schlueter@uspto.gov. Include RIN number RIN
0651-AC21 in the subject line of the message.
. Fax: (571) 273-6299, marked to the attention of Walter Schlueter.
. Mail: Director of the U.S. Patent and Trademark Office, P.O. Box 1450,
Alexandria, VA 22313-1450, marked to the attention of Walter
Schlueter.
Instructions: All submissions received must include the agency name
and Regulatory Information Number (RIN) for this proposed rule making.
For additional information on the rule making process, see the heading
of the SUPPLEMENTARY INFORMATION section of this document.
FOR FURTHER INFORMATION CONTACT: Walter Schlueter by e-mail at
Walter.Schlueter@uspto.gov, by telephone at (571) 272-6299, or by fax
at (571) 273-6299.
SUPPLEMENTARY INFORMATION: The Office is proposing to adjust certain
patent fees in accordance with the applicable provisions of title 35,
United States Code, as amended by the Consolidated Appropriations Act
(Pub. L. 108-447, 118 Stat. 2809 (2004)).
Background: Statutory Provisions: Patent fees are set by or under
the authority provided in 35 U.S.C. 41, 119, 120, 132(b), 156, 157(a),
255, 302, 311, 376, section 532(a)(2) of the Uruguay Round Agreements
Act (URAA) (Pub. L. 103-465, Sec. 532(a)(2), 108 Stat. 4809, 4985
(1994)), and section 4506 of the American Inventors Protection Act of
1999 (AIPA) (Pub. L. 106-113, 113 Stat. 1501, 1501A-565 (1999)). For
fees paid under 35 U.S.C. 41(a) and (b) and 132(b), independent
inventors, small business concerns, and nonprofit organizations who
meet the requirements of 35 U.S.C. 41(h)(1) are entitled to a fifty-
percent reduction.
Section 41(d) of title 35, United States Code, authorizes the
Director to establish fees for all other processing, services, or
materials related to patents to recover the average cost of providing
these services or materials, except for the fees for recording a
document affecting title, for each photocopy, for each black and white
copy of a patent, and for standard library service.
Section 41(f) of title 35, United States Code, provides that fees
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established under 35 U.S.C. 41(a) and (b) may be adjusted on October 1,
1992, and every year thereafter, to reflect fluctuations in the CPI
over the previous twelve months.
Section 41(g) of title 35, United States Code, provides that new
fee amounts established by the Director under 35 U.S.C. 41 may take
effect thirty days after notice in the Federal Register and the
Official Gazette of the United States Patent and Trademark Office.
The fiscal year 2005 Consolidated Appropriations Act (section 801
of Division B) provided 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. See Pub. L. 108-447, 118 Stat. 2809, 2924-
30 (2004). The patent and trademark fee provisions of the fiscal year
2005 Consolidated Appropriations Act were extended through September
30, 2008, by subsequent legislation. See Pub. L. 110-161, 121 Stat.
1844 (2007), Pub. L. 110-149, 121 Stat. 1819 (2007), Pub. L. 110-137,
121 Stat. 1454 (2007), Pub. L. 110-116, 121 Stat. 1295 (2007), Pub. L.
110-92, 121 Stat. 989 (2007), Pub. L. 110-5, 121 Stat. 8 (2007), Pub.
L. 109-383, 120 Stat. 2678 (2006), Pub. L. 109-369, 120 Stat. 2642
(2006), and Pub. L. 109-289, 120 Stat. 1257 (2006). The Office
anticipates the introduction and enactment of legislation that would
extend the patent and trademark fee provisions of the fiscal year 2005
Consolidated Appropriations Act through fiscal year 2009.
Fee Adjustment Level: The patent statutory fees established by 35
U.S.C. 41(a) and (b) are proposed to be adjusted to reflect
fluctuations occurring during the twelve-month period from October 1,
2007, through September 30, 2008, correspondingly, in the Consumer
Price Index for All Urban Consumers (CPI-U). The Office of Management
and Budget has advised that in calculating these fluctuations, the
Office should use CPI-U data as determined by the Secretary of Labor.
In accordance with previous fee-setting methodology, the Office bases
this fee adjustment on the Administration's projected CPI-U for the
twelve-month period ending September 30, 2008, which is 4.0 percent.
Based on this projected CPI-U, patent statutory fees are proposed to be
adjusted by 4.0 percent. Before the final fee amounts are published,
the fee amounts may be adjusted based on actual fluctuations in the
CPI-U published by the Secretary of Labor.
The fee amounts were rounded by applying standard arithmetic rules
so that the amounts rounded will be convenient to the user. Fees for
other than a small entity of $100 or more were rounded to the nearest
$10. Fees of less than $100 were rounded to an even number so that any
comparable small entity fee will be a whole number.
General Procedures: Any fee amount that is paid on or after the
effective date of the proposed fee adjustment would be subject to the
new fees then in effect. The amount of the fee to be paid will be
determined by the time of filing. The time of filing will be determined
either according to the date of receipt in the Office (37 CFR 1.6) or
the date reflected on a proper Certificate of Mailing or Transmission,
where such a certificate is authorized under 37 CFR 1.8. Use of a
Certificate of Mailing or Transmission is not authorized for items that
are specifically excluded from the provisions of 37 CFR 1.8. Items for
which a Certificate of Mailing or Transmission under 37 CFR 1.8 is not
authorized include, for example, filing of national and international
applications for patents. See 37 CFR 1.8(a)(2).
Patent-related correspondence delivered by the "Express Mail Post
Office to Addressee" service of the United States Postal Service
(USPS) is considered filed or received in the Office on the date of
deposit with the USPS. See 37 CFR 1.10(a)(1). The date of deposit with
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the USPS is shown by the "date-in" on the "Express Mail" mailing
label or other official USPS notation.
To ensure clarity in the implementation of the proposed new fees, a
discussion of specific sections is set forth below.
Discussion of Specific Rules
37 CFR 1.16 National application filing, search, and examination
fees: Section 1.16, paragraphs (a) through (e), (h) through (k), and
(m) through (s), if revised as proposed, would adjust fees established
therein to reflect fluctuations in the CPI.
37 CFR 1.17 Patent application and reexamination processing fees:
Section 1.17, paragraphs (a)(2) through (a)(5), (l), and (m), if
revised as proposed, would adjust fees established therein to reflect
fluctuations in the CPI.
37 CFR 1.18 Patent post allowance (including issue) fees: Section
1.18, paragraphs (a) through (c), if revised as proposed, would adjust
fees established therein to reflect fluctuations in the CPI.
37 CFR 1.20 Post issuance fees: Section 1.20, paragraphs (c)(3),
(c)(4), and (d) through (g), if revised as proposed, would adjust fees
established therein to reflect fluctuations in the CPI.
37 CFR 1.492 National stage fees: Section 1.492, paragraphs (a),
(b)(3), (b)(4), (c)(2), (d) through (f), and (j), if revised as
proposed, would adjust fees established therein to reflect fluctuations
in the CPI.
37 CFR 41.20 Fees: Section 41.20, paragraphs (b)(1) through (b)(3),
if revised as proposed, would adjust fees established therein to
reflect fluctuations in the CPI.
Alternative Fee Amounts if Legislation Extending the Patent and
Trademark Fee Provisions of the Fiscal Year 2005 Consolidated
Appropriations Act is Not Enacted: If legislation that would extend the
patent and trademark fee provisions of the fiscal year 2005
Consolidated Appropriations Act into fiscal year 2009 is not enacted,
patent fees under 35 U.S.C. 41(a), (b), and (d) will become the patent
fees in effect in the absence of the fiscal year 2005 Consolidated
Appropriations Act. The Office is therefore also proposing to adjust
the patent fees under 35 U.S.C. 41(a), (b), and (d) that would be in
effect in the absence of the fiscal year 2005 Consolidated
Appropriations Act for fiscal year 2009 to reflect fluctuations in the
Consumer Price Index (CPI). The following table (Table 1) sets out the
proposed fee amounts in the event that legislation extending the patent
and trademark fee provisions of the fiscal year 2005 Consolidated
Appropriations Act into fiscal year 2009 is not enacted.
TABLE 1
Proposed fee Proposed fee
37 CFR sec. Fee amount (non-small amount (small
entity) entity)
1.16(a) Basic filing fee-utility $ 840.00 $ 420.00
application
1.16(b) Independent claims in excess 94.00 47.00
of three
1.16(d) Multiple dependent claim 320.00 160.00
1.16(f) Basic filing fee-design 370.00 185.00
application
1.16(g) Basic filing fee-plant 590.00 295.00
application
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1.16(h) Basic filing fee-reissue 840.00 420.00
application
1.16(i) Independent claims in excess 94.00 47.00
of three-reissue
1.16(k) Basic filing fee-provisional 170.00 85.00
application
1.17(a)(2) Extension for response 460.00 230.00
within second month
1.17(a)(3) Extension for response 1,050.00 525.00
within third month
1.17(a)(4) Extension for response 1,640.00 820.00
within fourth month
1.17(a)(5) Extension for response 2,230.00 1,115.00
within fifth month
1.17(m) Petition to revive- 1,470.00 735.00
unintentionally abandoned
application
1.18(a) Issue fee-utility application 1,470.00 735.00
1.18(b) Issue fee-design application 520.00 260.00
1.18(c) Issue fee-plant application 710.00 355.00
1.20(e) Maintenance fee-due at 3.5 1,010.00 505.00
years
1.20(f) Maintenance fee-due at 7.5 2,300.00 1,150.00
years
1.20(g) Maintenance fee-due at 11.5 3,550.00 1,775.00
years
1.492(a)(1) IPEA-U.S. 800.00 400.00
1.492(a)(2) ISA-U.S. 840.00 420.00
1.492(a)(3) USPTO not ISA or IPEA 1,190.00 595.00
1.492(a)(5) Filing with EPO or JPO 1,020.00 510.00
search report
1.492(b) Independent claims in excess 94.00 47.00
of three
1.492(d) Multiple dependent claim 320.00 160.00
41.20(b)(1) Notice of appeal 360.00 180.00
41.20(b)(2) Brief in support of an appeal 360.00 180.00
41.20(b)(3) Request for oral hearing 320.00 160.00
Rulemaking Considerations
A. Initial Regulatory Flexibility Analysis
1. Description of the reasons that action by the agency is being
considered: The Office is proposing to adjust the patent fees set under
35 U.S.C. 41(a) and (b) to ensure proper funding for effective Office
operations. The patent fee CPI adjustment is a routine adjustment that
has generally occurred on an annual basis to recover the higher costs
of Office's operations that occur due to the increase in the price of
products and services. The lack of proper funding for effective Office
operations would result in a significant increase in patent pendency
levels.
2. Succinct statement of the objectives of, and legal basis for,
the proposed rules: The objective of the proposed change is to adjust
patent fees set under 35 U.S.C. 41(a) and (b) to recover the higher
costs of Office operations. Patent fees are set by or under the
authority provided in 35 U.S.C. 41, 119, 120, 132(b), 156, 157(a), 255,
302, 311, 376, section 532(a)(2) of the URAA, and 4506 of the AIPA. 35
U.S.C. 41(f) provides that fees established under 35 U.S.C. 41(a) and
(b) may be adjusted every year to reflect fluctuations in the CPI over
the previous twelve months.
3. Description and estimate of the number of affected small
entities: The Small Business Administration (SBA) small business size
standards applicable to most analyses conducted to comply with the
Regulatory Flexibility Act are set forth in 13 CFR 121.201. These
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regulations generally define small businesses as those with fewer than
a maximum number of employees or less than a specified level of annual
receipts for the entity's industrial sector or North American Industry
Classification System (NAICS) code. The Office, however, has formally
adopted an alternate size standard as the size standard for the purpose
of conducting an analysis or making a certification under the
Regulatory Flexibility Act for patent-related regulations. See Business
Size Standard for Purposes of United States Patent and Trademark Office
Regulatory Flexibility Analysis for Patent-Related Regulations, 71 FR
67109 (Nov. 20, 2006), 1313 Off. Gaz. Pat. Office 60 (Dec. 12, 2006).
This alternate small business size standard is the previously
established size standard that identifies the criteria entities must
meet to be entitled to pay reduced patent fees. See 13 CFR 121.802. If
patent applicants identify themselves on the patent application as
qualifying for reduced patent fees, the Office captures this data in the
Patent Application Location and Monitoring (PALM) database system, which
tracks information on each patent application submitted to the Office.
Unlike the SBA small business size standards set forth in 13 CFR
121.201, this size standard is not industry-specific. Specifically, the
Office'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. See Business Size Standard for Purposes of United States
Patent and Trademark Office Regulatory Flexibility Analysis for Patent-
Related Regulations, 71 FR at 67112, 1313 Off. Gaz. Pat. Office at 63.
The changes in this proposed rule will apply to any small entity
that files a patent application, or has a pending patent application or
unexpired patent. The changes in this proposed rule will specifically
apply when an applicant or patentee pays an application filing or
national stage entry fee, search fee, examination fee, excess or
multiple dependent claim fee, application size fee, extension of time
fee, notice of appeal fee, appeal brief fee, request for an oral
hearing fee, disclaimer fee, petition to revive fee, issue fee, or
patent maintenance fee. The following table (Table 2) indicates the
applicable fee, the number of small entity payments of the fee received
by the Office in fiscal year 2007 (number of small entities who paid
the applicable fee in fiscal year 2007), the current small entity fee
amount, the proposed small entity fee amount, and the net amount of the
small entity fee adjustment.
TABLE 2
Fee Fiscal year Current Proposed Fee
2007 small fee fee adjustment
entity payments amount amount
Basic filing fee-utility 41,519 75.00 80.00 5.00
application-electronic
filing
Basic filing fee-utility 45,832 155.00 160.00 5.00
application (on or after
December 8, 2004)
Basic filing fee-utility 66 405.00 420.00 15.00
application (before
December 8, 2004)
Basic filing fee-design 12,846 105.00 110.00 5.00
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application (on or
after December 8, 2004)
Basic filing fee-design 11 180.00 185.00 5.00
application (before
December 8, 2004)
Basic filing fee-plant 327 105.00 110.00 5.00
application (on or after
December 8, 2004)
Basic filing fee-plant 0 285.00 295.00 10.00
application (before
December 8, 2004)
Basic filing fee-provisional 83,712 105.00 110.00 5.00
application
Basic filing fee-reissue 181 155.00 160.00 5.00
application (on or
after December 8, 2004)
Basic filing fee-reissue 1 405.00 420.00 15.00
application (before
December 8, 2004)
Independent claims in excess 26,418 105.00 110.00 5.00
of three
Claims in excess of 20 41,100 25.00 26.00 1.00
Multiple dependent claim 2,503 185.00 190.00 5.00
Search fee-utility application 86,469 255.00 265.00 10.00
(on or after December 8, 2004)
Search fee-plant application 326 155.00 160.00 5.00
(on or after December 8, 2004)
Search fee-reissue application 180 255.00 265.00 10.00
(on or after December 8, 2004)
Examination fee-utility 86,658 105.00 110.00 5.00
application(on or after
December 8, 2004)
Examination fee-design 12,615 65.00 70.00 5.00
application (on or after
December 8, 2004)
Examination fee-plant 327 80.00 85.00 5.00
application (on or after
December 8, 2004)
Examination fee-reissue 191 310.00 320.00 10.00
application (on or after
December 8, 2004)
Application size fee greater 5,469 130.00 135.00 5.00
than 100 pages
Extension for response within 17,339 230.00 235.00 5.00
second month
Extension for response within 23,818 525.00 540.00 15.00
third month
Extension for response within 2,277 820.00 845.00 25.00
fourth month
Extension for response within 2,700 1,115.00 1,150.00 35.00
fifth month
Petition to revive-unavoidably 174 255.00 265.00 10.00
abandoned application
Petition to revive-unintentionally 3,271 770.00 800.00 30.00
abandoned application
Issue fee-utility application 33,718 720.00 750.00 30.00
Issue fee-design application 10,398 410.00 425.00 15.00
Issue fee-plant application 298 565.00 590.00 25.00
Reexamination independent claims 37 105.00 110.00 5.00
in excess of three
Reexamination claims in excess 45 25.00 26.00 1.00
of 20
Statutory disclaimer 6,248 65.00 70.00 5.00
Maintenance fee-due at 3.5 years 32,577 465.00 485.00 20.00
Maintenance fee-due at 7.5 years 20,981 1,180.00 1,225.00 45.00
Maintenance fee-due at 11.5 years 8,130 1,955.00 2,035.00 80.00
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Filing of PCT application-USPTO 11,807 155.00 160.00 5.00
ISA-national stage
National stage search fee-search 8,440 205.00 215.00 10.00
report to USPTO
National stage search fee-all 1,029 255.00 265.00 10.00
other situations
National stage examination fee-all 11,262 105.00 110.00 5.00
other situations
Independent claims in excess of 3,272 105.00 110.00 5.00
three
Claims in excess of 20 5,913 25.00 26.00 1.00
Multiple dependent claim 1,178 185.00 190.00 5.00
Application size fee greater 573 130.00 135.00 5.00
than 100 pages
Notice of appeal 5,978 255.00 265.00 10.00
Brief in support of an appeal 2,640 255.00 265.00 10.00
Request for oral hearing 233 515.00 535.00 20.00
The Office has also been advised that a number of small entity
applicants and patentees do not claim small entity status for various
reasons. See Business Size Standard for Purposes of United States
Patent and Trademark Office Regulatory Flexibility Analysis for Patent-
Related Regulations, 71 FR at 67110, 1313 Off. Gaz. Pat. Office at 61.
Therefore, the Office is also considering all other entities paying
patent fees as well. The following table (Table 3) indicates the
applicable fee, the number of non-small entity payments of the fee
received by the Office in fiscal year 2007 (number of non-small
entities who paid the applicable fee in fiscal year 2007), the current
non-small entity fee amount, the proposed non-small entity fee amount,
and the net amount of the non-small entity fee adjustment.
TABLE 3
Fiscal year
Fee 2007 non- Current Proposed Fee
small entity fee amount fee amount adjustment
payments
Basic filing fee-utility 209,577 310.00 320.00 10.00
application (on or after
December 8, 2004)
Basic filing fee-utility 311 810.00 840.00 30.00
application (before
December 8, 2004)
Basic filing fee-design 13,400 210.00 220.00 10.00
application (on or after
December 8, 2004)
Basic filing fee-design 72 360.00 370.00 10.00
application (before
December 8, 2004)
Basic filing fee-plant 680 210.00 220.00 10.00
application (on or after
December 8, 2004)
Basic filing fee-plant 0 570.00 590.00 20.00
application (before
December 8, 2004)
Basic filing fee-provisional 47,925 210.00 220.00 10.00
application
Basic filing fee-reissue 689 310.00 320.00 10.00
application (on or after
December 8, 2004)
Basic filing fee-reissue 1 810.00 840.00 30.00
application (before
December 8, 2004)
Independent claims in 77,135 210.00 220.00 10.00
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excess of three
Claims in excess of 20 102,973 50.00 52.00 2.00
Multiple dependent claim 5,944 370.00 380.00 10.00
Search fee-utility 209,135 510.00 530.00 20.00
application (on or after
December 8, 2004)
Search fee-plant 681 310.00 320.00 10.00
application (on or after
December 8, 2004)
Search fee-reissue 688 510.00 530.00 20.00
application (on or after
December 8, 2004)
Examination fee-utility 209,465 210.00 220.00 10.00
application (on or after
December 8, 2004)
Examination fee-design 13,261 130.00 140.00 10.00
application (on or after
December 8, 2004)
Examination fee-plant 681 160.00 170.00 10.00
application (on or after
December 8, 2004)
Examination fee-reissue 707 620.00 640.00 20.00
application (on or after
December 8, 2004)
Application size fee greater 11,257 260.00 270.00 10.00
than 100 pages
Extension for response 42,308 460.00 470.00 10.00
within second month
Extension for response 41,489 1,050.00 1,080.00 30.00
within third month
Extension for response 3,105 1,640.00 1,690.00 50.00
within fourth month
Extension for response 3,482 2,230.00 2,300.00 70.00
within fifth month
Petition to revive-unavoidably 127 510.00 530.00 20.00
abandoned application
Petition to revive- 4,180 1,540.00 1,600.00 60.00
unintentionally abandoned
application
Issue fee-utility 122,251 1,440.00 1,500.00 60.00
application
Issue fee-design 12,433 820.00 850.00 30.00
application
Issue fee-plant application 673 1,130.00 1,180.00 50.00
Reexamination independent 132 210.00 220.00 10.00
claims in excess of three
Reexamination claims in 151 50.00 52.00 2.00
excess of 20
Statutory disclaimer 21,218 130.00 140.00 10.00
Maintenance fee-due at 125,653 930.00 970.00 40.00
3.5 years
Maintenance fee-due at 88,487 2,360.00 2,450.00 90.00
7.5 years
Maintenance fee-due at 42,193 3,910.00 4,070.00 160.00
11.5 years
Filing of PCT application- 41,842 310.00 320.00 10.00
USPTO ISA-national stage
National stage search fee- 38,457 410.00 430.00 20.00
search report to USPTO
National stage search fee- 2,429 510.00 530.00 20.00
all other situations
National stage examination 41,044 210.00 220.00 10.00
fee-all other situations
Independent claims in excess 9,367 210.00 220.00 10.00
of three
Claims in excess of 20 14,983 50.00 52.00 2.00
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Multiple dependent claim 3,998 370.00 380.00 10.00
Application size fee 2,102 260.00 270.00 10.00
greater than 100 pages
Notice of appeal 21,646 510.00 530.00 20.00
Brief in support of an appeal 11,950 510.00 530.00 20.00
Request for oral hearing 736 1,030.00 1,070.00 40.00
4. Description of the projected reporting, recordkeeping and other
compliance requirements of the proposed rules, including an estimate of
the classes of small entities which will be subject to the requirement
and the type of professional skills necessary for preparation of the
report or record: This notice does not propose any reporting,
recordkeeping and other compliance requirements. This notice proposes
only to adjust patent fees (as discussed previously) to reflect changes
in the CPI.
5. Description of any significant alternatives to the proposed
rules which accomplish the stated objectives of applicable statutes and
which minimize any significant economic impact of the proposed rules on
small entities: The alternative of not adjusting patent fees would have
a lesser economic impact on small entities, but would not accomplish
the stated objectives of applicable statutes. The Office is proposing
to adjust the patent fees to ensure proper funding for effective Office
operations. The patent fee CPI adjustment is a routine adjustment that
has generally occurred on an annual basis to recover the higher costs
of Office's operations that occur due to the increase in the price of
products and services. The lack of proper funding for effective Office
operations would result in a significant increase in patent pendency
levels.
6. Identification, to the extent practicable, of all relevant
Federal rules which may duplicate, overlap or conflict with the
proposed rules: The Office is the sole agency of the United States
Government responsible for administering the provisions of title 35,
United States Code, pertaining to examination and granting patents.
Therefore, no other federal, state, or local entity shares jurisdiction
over the examination and granting patents.
Other countries, however, have their own patent laws, and an entity
desiring a patent in a particular country must make an application for
patent in that country, in accordance with the applicable law. Although
the potential for overlap exists internationally, this cannot be
avoided except by treaty (such as the Paris Convention for the
Protection of Industrial Property, or the Patent Cooperation Treaty
(PCT)).
Nevertheless, the Office believes that there are no other
duplicative or overlapping rules.
B. Executive Order 13132 (Federalism)
This rulemaking does not contain policies with federalism
implications sufficient to warrant preparation of a Federalism
Assessment under Executive Order 13132 (Aug. 4, 1999).
C. Executive Order 12866 (Regulatory Planning and Review)
This rulemaking has been determined to be significant for purposes
of Executive Order 12866 (Sept. 30, 1993), as amended by Executive
Order 13258 (Feb. 26, 2002) and Executive Order 13422 (Jan. 18, 2007).
D. Executive Order 13175 (Tribal Consultation)
This rulemaking will not: (1) Have substantial direct effects on
one or more Indian tribes; (2) impose substantial direct compliance
costs on Indian tribal governments; or (3) preempt tribal law.
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Therefore, a tribal summary impact statement is not required under
Executive Order 13175 (Nov. 6, 2000).
E. Executive Order 13211 (Energy Effects)
This rulemaking is not a significant energy action under Executive
Order 13211 because this rulemaking is not likely to have a significant
adverse effect on the supply, distribution, or use of energy.
Therefore, a Statement of Energy Effects is not required under
Executive Order 13211 (May 18, 2001).
F. Executive Order 12988 (Civil Justice Reform)
This rulemaking meets applicable standards to minimize litigation,
eliminate ambiguity, and reduce burden as set forth in sections 3(a)
and 3(b)(2) of Executive Order 12988 (Feb. 5, 1996).
G. Executive Order 13045 (Protection of Children)
This rulemaking is not an economically significant rule and does
not concern an environmental risk to health or safety that may
disproportionately affect children under Executive Order 13045 (Apr.
21, 1997).
H. Executive Order 12630 (Taking of Private Property)
This rulemaking will not effect a taking of private property or
otherwise have taking implications under Executive Order 12630 (Mar.
15, 1988).
I. Congressional Review Act
Under the Congressional Review Act provisions of the Small Business
Regulatory Enforcement Fairness Act of 1996 (5 U.S.C. 801 et seq.),
prior to issuing any final rule, the United States Patent and Trademark
Office will submit a report containing the final rule and other
required information to the U.S. Senate, the U.S. House of
Representatives and the Comptroller General of the Government
Accountability Office. The changes proposed in this notice are not
expected to result in an annual effect on the economy of 100 million
dollars or more, a major increase in costs or prices, or significant
adverse effects on competition, employment, investment, productivity,
innovation, or the ability of United States-based enterprises to
compete with foreign-based enterprises in domestic and export markets.
Therefore, this rulemaking is not likely to result in a "major rule"
as defined in 5 U.S.C. 804(2).
J. Unfunded Mandates Reform Act of 1995:
The changes proposed in this notice do not involve a Federal
intergovernmental mandate that will result in the expenditure by State,
local, and tribal governments, in the aggregate, of 100 million dollars
(as adjusted) or more in any one year, or a Federal private sector
mandate that will result in the expenditure by the private sector of
100 million dollars (as adjusted) or more in any one year, and will not
significantly or uniquely affect small governments. Therefore, no
actions are necessary under the provisions of the Unfunded Mandates
Reform Act of 1995. See 2 U.S.C. 1501 et seq.
K. National Environmental Policy Act
This rulemaking will not have any effect on the quality of
environment and is thus categorically excluded from review under the
National Environmental Policy Act of 1969. See 42 U.S.C. 4321 et seq.
L. National Technology Transfer and Advancement Act
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The requirements of section 12(d) of the National Technology
Transfer and Advancement Act of 1995 (15 U.S.C. 272 note) are
inapplicable because this rulemaking does not contain provisions which
involve the use of technical standards.
M. Paperwork Reduction Act
This proposed 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 collections of information involved in this proposed rule
have been reviewed and approved by OMB under OMB control numbers 0651-
0016, 0651-0021, 0651-0031, 0651-0032, and 0651-0033. The Office is not
resubmitting information collection packages to OMB for its review and
approval at this time because the changes proposed in this notice
revise the fees for existing information collection requirements
associated with the information collections under OMB control numbers
0651-0016, 0651-0021, 0651-0031, 0651-0032, and 0651-0033. The Office
will submit fee revision changes for OMB control numbers 0651-0016,
0651-0021, 0651-0031, 0651-0032, and 0651-0033 to OMB for review if the
changes proposed in this notice are adopted.
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 A. Clarke, 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
37 CFR Part 1
Administrative practice and procedure, Courts, Freedom of
Information, Inventions and patents, Reporting and recordkeeping
requirements, Small businesses.
37 CFR Part 41
Administrative practice and procedure, Inventions and patents,
Lawyers.
For the reasons set forth in the preamble, 37 CFR parts 1 and 41
are proposed to be amended as follows:
PART 1--RULES OF PRACTICE IN PATENT CASES
1. The authority citation for 37 CFR part 1 continues to read as
follows:
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Authority: 35 U.S.C. 2(b)(2).
2. Section 1.16 is amended by revising paragraphs (a) through (e),
(h) through (k), and (m) through (s) to read as follows:
Sec. 1.16 National application filing, search, and examination fees.
(a) Basic fee for filing each application under 35 U.S.C. 111 for
an original patent, except design, plant, or provisional applications:
(1) For an application filed on or after December 8, 2004:
By a small entity (Sec. 1.27(a)) if the application is submitted in
compliance with the Office electronic filing system
(Sec. 1.27(b)(2)) $80.00
By a small entity (Sec. 1.27(a)) 160.00
By other than a small entity 320.00
(2) For an application filed before December 8, 2004:
By a small entity (Sec. 1.27(a)) $420.00
By other than a small entity 840.00
(b) Basic fee for filing each application for an original design patent:
(1) For an application filed on or after December 8, 2004:
By a small entity (Sec. 1.27(a)) $110.00
By other than a small entity 220.00
(2) For an application filed before December 8, 2004:
By a small entity (Sec. 1.27(a)) $185.00
By other than a small entity 370.00
(c) Basic fee for filing each application for an original plant patent:
(1) For an application filed on or after December 8, 2004:
By a small entity (Sec. 1.27(a)) $110.00
By other than a small entity 220.00
(2) For an application filed before December 8, 2004:
By a small entity (Sec. 1.27(a)) $295.00
By other than a small entity 590.00
(d) Basic fee for filing each provisional application:
By a small entity (Sec. 1.27(a)) $110.00
By other than a small entity 220.00
(e) Basic fee for filing each application for the reissue of a patent:
(1) For an application filed on or after December 8, 2004:
By a small entity (Sec. 1.27(a)) $160.00
By other than a small entity 320.00
(2) For an application filed before December 8, 2004:
By a small entity (Sec. 1.27(a)) $420.00
By other than a small entity 840.00
* * * * *
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(h) In addition to the basic filing fee in an application, other
than a provisional application, for filing or later presentation at any
other time of each claim in independent form in excess of 3:
By a small entity (Sec. 1.27(a)) $110.00
By other than a small entity 220.00
(i) In addition to the basic filing fee in an application, other
than a provisional application, for filing or later presentation at any
other time of each claim (whether dependent or independent) in excess
of 20 (note that Sec. 1.75(c) indicates how multiple dependent claims
are considered for fee calculation purposes):
By a small entity (Sec. 1.27(a)) $26.00
By other than a small entity 52.00
(j) In addition to the basic filing fee in an application, other
than a provisional application, that contains, or is amended to
contain, a multiple dependent claim, per application:
By a small entity (Sec. 1.27(a)) $190.00
By other than a small entity 380.00
(k) Search fee for each application filed under 35 U.S.C. 111 on or
after December 8, 2004, for an original patent, except design, plant,
or provisional applications:
By a small entity (Sec. 1.27(a)) $265.00
By other than a small entity 530.00
* * * * *
(m) Search fee for each application filed on or after December 8,
2004, for an original plant patent:
By a small entity (Sec. 1.27(a)) $160.00
By other than a small entity 320.00
(n) Search fee for each application filed on or after December 8,
2004, for the reissue of a patent:
By a small entity (Sec. 1.27(a)) $265.00
By other than a small entity 530.00
(o) Examination fee for each application filed under 35 U.S.C. 111
on or after December 8, 2004, for an original patent, except design,
plant, or provisional applications:
By a small entity (Sec. 1.27(a)) $110.00
By other than a small entity 220.00
(p) Examination fee for each application filed on or after December
8, 2004, for an original design patent:
By a small entity (Sec. 1.27(a)) $70.00
By other than a small entity 140.00
(q) Examination fee for each application filed on or after December
8, 2004, for an original plant patent:
By a small entity (Sec. 1.27(a)) $85.00
By other than a small entity 170.00
(r) Examination fee for each application filed on or after December
8, 2004, for the reissue of a patent:
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By a small entity (Sec. 1.27(a)) $320.00
By other than a small entity 640.00
(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:
By a small entity (Sec. 1.27(a)) $135.00
By other than a small entity 270.00
* * * * *
3. Section 1.17 is amended by revising paragraphs (a)(2) through
(a)(5), (l), and (m) to read as follows:
Sec. 1.17 Patent application and reexamination processing fees.
(a) * * *
(2) For reply within second month:
By a small entity (Sec. 1.27(a)) $235.00
By other than a small entity 470.00
(3) For reply within third month:
By a small entity (Sec. 1.27(a)) $540.00
By other than a small entity 1,080.00
(4) For reply within fourth month:
By a small entity (Sec. 1.27(a)) $845.00
By other than a small entity 1,690.00
(5) For reply within fifth month:
By a small entity (Sec. 1.27(a)) $1,150.00
By other than a small entity 2,300.00
* * * * *
(l) For filing a petition for the revival of an unavoidably abandoned
application under 35 U.S.C. 111, 133, 364, or 371, for the unavoidably
delayed payment of the issue fee under 35 U.S.C. 151, or for the revival
of an unavoidably terminated reexamination proceeding under 35 U.S.C. 133
(Sec. 1.137(a)):
By a small entity (Sec. 1.27(a)) $265.00
By other than a small entity 530.00
(m) For filing a petition for the revival of an unintentionally
abandoned application, for the unintentionally delayed payment of the
fee for issuing a patent, or for the revival of an unintentionally
terminated reexamination proceeding under 35 U.S.C. 41(a)(7) (Sec.
1.137(b)):
By a small entity (Sec. 1.27(a)) $800.00
By other than a small entity 1,600.00
* * * * *
4. Section 1.18 is amended by revising paragraphs (a) through (c)
to read as follows:
Sec. 1.18 Patent post allowance (including issue) fees.
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(a) Issue fee for issuing each original patent, except a design or
plant patent, or for issuing each reissue patent:
By a small entity (Sec. 1.27(a)) $750.00
By other than a small entity 1,500.00
(b) Issue fee for issuing an original design patent:
By a small entity (Sec. 1.27(a)) $425.00
By other than a small entity 850.00
(c) Issue fee for issuing an original plant patent:
By a small entity (Sec. 1.27(a)) $590.00
By other than a small entity 1,180.00
* * * * *
5. Section 1.20 is amended by revising paragraphs (c)(3), (c)(4),
and (d) through (g) to read as follows:
Sec. 1.20 Post issuance fees.
* * * * *
(c) * * *
(3) For filing with a request for reexamination or later presentation
at any other time of each claim in independent form in excess of 3 and
also in excess of the number of claims in independent form in the patent
under reexamination:
By a small entity (Sec. 1.27(a)) $110.00
By other than a small entity 220.00
(4) For filing with a request for reexamination or later
presentation at any other time of each claim (whether dependent or
independent) in excess of 20 and also in excess of the number of claims
in the patent under reexamination (note that Sec. 1.75(c) indicates
how multiple dependent claims are considered for fee calculation
purposes):
By a small entity (Sec. 1.27(a)) $26.00
By other than a small entity 52.00
* * * * *
(d) For filing each statutory disclaimer (Sec. 1.321):
By a small entity (Sec. 1.27(a)) $70.00
By other than a small entity 140.00
(e) For maintaining an original or reissue patent, except a design
or plant patent, based on an application filed on or after December 12,
1980, in force beyond four years, the fee being due by three years and
six months after the original grant:
By a small entity (Sec. 1.27(a)) $485.00
By other than a small entity 970.00
(f) For maintaining an original or reissue patent, except a design
or plant patent, based on an application filed on or after December 12,
1980, in force beyond eight years, the fee being due by seven years and
six months after the original grant:
By a small entity (Sec. 1.27(a)) $1,225.00
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By other than a small entity 2,450.00
(g) For maintaining an original or reissue patent, except a design
or plant patent, based on an application filed on or after December 12,
1980, in force beyond twelve years, the fee being due by eleven years
and six months after the original grant:
By a small entity (Sec. 1.27(a)) $2,035.00
By other than a small entity 4,070.00
* * * * *
6. Section 1.492 is amended by revising paragraphs (a), (b)(3),
(b)(4), (c)(2), (d) through (f) and (j) to read as follows:
Sec. 1.492 National stage fees.
* * * * *
(a) The basic national 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:
By a small entity (Sec. 1.27(a)) $160.00
By other than a small entity 320.00
(b) * * *
(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)) $215.00
By other than a small entity 430.00
(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)) $265.00
By other than a small entitY 530.00
(c) * * *
(2) In all situations not provided for in paragraph (c)(1) of this
section:
By a small entity (Sec. 1.27(a)) $110.00
By other than a small entity 220.00
(d) In addition to the basic national fee, for filing or on later
presentation at any other time of each claim in independent form in
excess of 3:
By a small entity (Sec. 1.27(a)) $110.00
By other than a small entity 220.00
(e) In addition to the basic national fee, for filing or on later
presentation at any other time of each claim (whether dependent or
independent) in excess of 20 (note that Sec. 1.75(c) indicates how
multiple dependent claims are considered for fee calculation purposes):
By a small entity (Sec. 1.27(a)) $26.00
By other than a small entity 52.00
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(f) In addition to the basic national fee, if the application
contains, or is amended to contain, a multiple dependent claim, per
application:
By a small entity (Sec. 1.27(a)) $190.00
By other than a small entity 380.00
* * * * *
(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:
By a small entity (Sec. 1.27(a)) $135.00
By other than a small entity 270.00
PART 41-PRACTICE BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES
7. The authority citation for 37 CFR part 41 continues to read as
follows:
Authority: 35 U.S.C. 2(b)(2), 3(a)(2)(A), 21, 23, 32, 41, 134, 135.
8. Section 41.20 is amended by revising paragraph (b) to read as
follows:
Sec. 41.20 Fees.
* * * * *
(b) Appeal fees.
(1) For filing a notice of appeal from the examiner to the Board:
By a small entity (Sec. 1.27(a) of this title) $265.00
By other than a small entity 530.00
(2) In addition to the fee for filing a notice of appeal, for
filing a brief in support of an appeal:
By a small entity (Sec. 1.27(a) of this title) $265.00
By other than a small entity 530.00
(3) For filing a request for an oral hearing before the Board in an
appeal under 35 U.S.C. 134:
By a small entity (Sec. 1.27(a)) $535.00
By other than a small entity 1,070.00
May 29, 2008 JON W. DUDAS
Under Secretary of Commerce for
Intellectual Property and Director of the
United States Patent and Trademark Office
[1331 OG 97]