| Fees, Deposit Accounts, Credit Cards, Refunds, etc. |
Referenced Items (72, 73, 74, 75, 76, 77, 78, 79, 80, 81, 82, 83, 84, 85, 86, 87, 88, 89, 90, 91, 92, 93) |
(73) DEPARTMENT OF COMMERCE
United States 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: Final rule.
SUMMARY: The United States Patent and Trademark Office (Office) is
adjusting 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. In addition, the
Office is correcting the addresses for maintenance fee payments and
correspondence, and deposit account replenishments.
EFFECTIVE DATE: October 1, 2008.
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 adjusting certain patent fee
amounts 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)). In addition, this final rule changes the
addresses for maintenance fee payments and correspondence, and deposit
account replenishments. The addresses are being changed to reflect the
current addresses that should be used.
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, § 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 fee amounts
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
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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). Legislation is
pending before Congress which, if enacted, would extend the patent and
trademark fee provisions of the fiscal year 2005 Consolidated
Appropriations Act through fiscal year 2009 (through September 30, 2009).
See S. 3182, 110th Cong. (2008).
Fee Adjustment Level: The patent statutory fee amounts established by 35
U.S.C. 41(a) and (b) are 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 CPI-U for the twelve-month period ending September 30,
2008.
The Office published a notice proposing to adjust the patent fees
charged under 35 U.S.C. 41(a), (b), and (d)(1) for fiscal year 2009 to
reflect fluctuations in the CPI. See Revision of Patent Fees for Fiscal
Year 2009, 73 FR 31655 (June 3, 2008), 1331 Off. Gaz. Pat. Office 97 (June
24, 2008) (proposed rule). While the proposed rule specified fee amounts
based upon a projected CPI-U of 4.0 percent, the proposed rule indicated
that the fee amounts adopted in a final rule may be based upon the actual
fluctuations in the CPI-U as determined by the Secretary of Labor. See
Revision of Patent Fees for Fiscal Year 2009, 73 FR at 31656, 1331-4 Off.
Gaz. Pat. Office at 98. After the date the proposed rule was published, the
projected CPI-U for the twelve-month period prior to the enactment of the
fee amount adjustments has increased from 4.0 percent to 5.0 percent. Thus,
this final rule adjusts the patent fees charged under 35 U.S.C. 41(a), (b),
and (d)(1) by 5.0 percent based upon the current projected fluctuation in
the CPI-U.
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 fee adjustment is subject to the new fees 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 the USPS is shown by
the "date-in" on the "Express Mail" mailing label or other official USPS
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notation.
To ensure clarity in the implementation of the new fee amounts and
change of addresses, a discussion of specific sections is set forth below.
Discussion of Specific Rules
37 CFR 1.1 Addresses for non-trademark correspondence with the United
States Patent and Trademark Office. Section 1.1, paragraph (d), is revised
to change the maintenance fee payment and correspondence address.
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), is revised to 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), (l), and (m), is revised to 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), is revised to 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), is revised to adjust fees established therein to
reflect fluctuations in the CPI.
37 CFR 1.25 Deposit accounts: Section 1.25, paragraph (c)(3), is revised
to change the deposit account replenishment address. In addition, paragraph
(c)(4) is removed.
37 CFR 1.492 National stage fees: Section 1.492, paragraphs (a), (b)(3),
(b)(4), (c)(2), (d) through (f), and (j), is revised to adjust fees
established therein to reflect fluctuations in the CPI.
37 CFR 41.20 Fees: Section 41.20, paragraphs (b)(1) through (b)(3), is
revised to 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. In that
event, the Office will publish a final rule adjusting the patent fees under
35 U.S.C. 41(a), (b), and (d) in effect in the absence of the fiscal year
2005 Consolidated Appropriations Act to reflect fluctuations in the
Consumer Price Index (CPI-U). The following table (Table 1) sets out the
fee amounts that would be published in a final rule 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:
Alternative
Fee Amount Alternative
37 CFR (Non-Small Fee Amount
Sec. Fee Entity) (Small Entity)
1.16(a) Basic filing fee - utility 850.00 425.00
application
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1.16(b) Independent claims in excess of 94.00 47.00
three
1.16(d) Multiple dependent claim 330.00 165.00
1.16(f) Basic filing fee - design 380.00 190.00
application
1.16(g) Basic filing fee - plant 600.00 300.00
application
1.16(h) Basic filing fee - reissue 850.00 425.00
application
1.16(i) Independent claims in excess of 94.00 47.00
three - reissue
1.16(k) Basic filing fee - provisional 170.00 85.00
application
1.17(a)(1) Extension for response within 120.00 60.00
first month
1.17(a)(2) Extension for response within 480.00 240.00
second month
1.17(a)(3) Extension for response within 1,100.00 550.00
third month
1.17(a)(4) Extension for response within 1,720.00 860.00
fourth month
1.17(a)(5) Extension for response within 2,340.00 1,170.00
fifth month
1.17(m) Petition to revive - 1,480.00 740.00
unintentionally abandoned
application
1.18(a) Issue fee - utility application 1,480.00 740.00
1.18(b) Issue fee - design application 530.00 265.00
1.18(c) Issue fee - plant application 710.00 355.00
1.20(e) Maintenance fee - due at 3.5 1,020.00 510.00
years
1.20(f) Maintenance fee - due at 7.5 2,320.00 1,160.00
years
1.20(g) Maintenance fee - due at 11.5 3,580.00 1,790.00
years
1.492(a)(1) IPEA - U.S. 810.00 405.00
1.492(a)(2) ISA - U.S. 850.00 425.00
1.492(a)(3) USPTO not ISA or IPEA 1,200.00 600.00
1.492(a)(5) Filing with EPO or JPO search 1,030.00 515.00
report
1.492(b) Independent claims in excess of 94.00 47.00
three
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1.492(d) Multiple dependent claim 330.00 165.00
41.20(b)(1) Notice of appeal 370.00 185.00
41.20(b)(2) Brief in support of an appeal 370.00 185.00
41.20(b)(3) Request for oral hearing 330.00 165.00
Response to Comments: As discussed previously, the Office published a
notice proposing to adjust the patent fees charged under 35 U.S.C. 41(a),
(b), and (d)(1) for fiscal year 2009 to reflect fluctuations in the CPI.
See Revision of Patent Fees for Fiscal Year 2009, 73 FR 31655 et seq.,
1331-4 Off. Gaz. Pat. Office 97 et seq. The Office received one comment
(from an individual) in response to this notice. The comment stated that
small entity fees should not be increased, but rather should be reduced.
The small entity reduction amounts are provided by 35 U.S.C. 41(h)(1)
("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") and 41(h)(3) ("[t]he fee charged under [35 U.S.C.
41](a)(l)(A) shall be reduced by 75 percent with respect to its application
to any entity to which [35 U.S.C. 41(h)(1)] applies, if the application is
filed by electronic means as prescribed by the Director"). The Office has
no authority to change (increase or reduce) the percentage by which the
patent fees charged under 35 U.S.C. 41(a), (b), and (d)(1) are reduced for
small entities. The Office also has no authority to adjust the patent fee
amounts specified in [35 U.S.C. 41](a), (b) and (d)(1) to reflect
fluctuations in the CPI (which is necessary to recover the higher costs
associated with doing business) only with respect to non-small entities.
Rule Making Considerations:
A. Final Regulatory Flexibility Analysis:
1. Description of the reasons that action by the Office is being
considered: The Office is adjusting 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 the 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
final rule: The objective of the 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 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
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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 final 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 rule 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 new small entity fee amount, and the net amount of the
small entity fee adjustment.
Table 2:
Fiscal Year
2007
Small Entity Former Fee Adjusted Fee Fee
Fee Payments Amount Amount Adjustment
Basic filing fee - 41,519 75.00 82.00 7.00
utility application -
electronic filing
Basic filing fee - 45,832 155.00 165.00 10.00
utility application
(on or after
December 8, 2004)
Basic filing fee - 66 405.00 425.00 20.00
utility application
(before December 8,
2004)
Basic filing fee - 12,846 105.00 110.00 5.00
design application
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(on or after
December 8, 2004)
Basic filing fee - 11 180.00 190.00 10.00
design application
(before December 8,
2004)
Basic filing fee - 327 105.00 110.00 5.00
plant application
(on or after
December 8, 2004)
Basic filing fee - 0 285.00 300.00 15.00
plant application
(before
December 8, 2004)
Basic filing fee - 83,712 105.00 110.00 5.00
provisional
application
Basic filing fee - 181 155.00 165.00 10.00
reissue application
(on or after
December 8, 2004)
Basic filing fee - 1 405.00 425.00 20.00
reissue application
(before December 8,
2004)
Independent claims 26,418 105.00 110.00 5.00
in excess of three
Claims in excess 41,100 25.00 26.00 1.00
of 20
Multiple dependent 2,503 185.00 195.00 10.00
claim
Search fee - 86,469 255.00 270.00 15.00
utility application
(on or after
December 8, 2004)
Search fee - 326 155.00 165.00 10.00
plant application
(on or after
December 8, 2004)
Search fee - 180 255.00 270.00 15.00
reissue application
(on or after
December 8, 2004)
Examination fee - 86,658 105.00 110.00 5.00
utility application
(on or after
December 8, 2004)
Examination fee - 12,615 65.00 70.00 5.00
design application
(on or after
December 8, 2004)
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Examination fee - 327 80.00 85.00 5.00
plant application
(on or after
December 8, 2004)
Examination fee - 191 310.00 325.00 15.00
reissue application
(on or after
December 8, 2004)
Application size fee 5,469 130.00 135.00 5.00
greater than 100 pages
Extension for response 30,722 60.00 65.00 5.00
within first month
Extension for response 17,339 230.00 245.00 15.00
within second month
Extension for response 23,818 525.00 555.00 30.00
within third month
Extension for response 2,277 820.00 865.00 45.00
within fourth month
Extension for response 2,700 1,115.00 1,175.00 60.00
within fifth month
Petition to revive - 174 255.00 270.00 15.00
unavoidably abandoned
application
Petition to revive - 3,271 770.00 810.00 40.00
unintentionally
abandoned
application
Issue fee - utility 33,718 720.00 755.00 35.00
application
Issue fee - design 10,398 410.00 430.00 20.00
application
Issue fee - plant 298 565.00 595.00 30.00
application
Reexamination 37 105.00 110.00 5.00
independent claims
in excess of three
Reexamination claims 45 25.00 26.00 1.00
in excess of 20
Statutory disclaimer 6,248 65.00 70.00 5.00
Maintenance fee - 32,577 465.00 490.00 25.00
due at 3.5 years
Maintenance fee - 20,981 1,180.00 1,240.00 60.00
due at 7.5 years
Maintenance fee - 8,130 1,955.00 2,055.00 100.00
due at 11.5 years
Filing of PCT 11,807 155.00 165.00 10.00
application - USPTO
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ISA - national stage
National stage 8,440 205.00 215.00 10.00
search fee -
search report
to USPTO
National stage 1,029 255.00 270.00 15.00
search fee -
all other
situations
National stage 11,262 105.00 110.00 5.00
examination fee -
all other situations
Independent claims 3,272 105.00 110.00 5.00
in excess of three
Claims in excess of 20 5,913 25.00 26.00 1.00
Multiple dependent 1,178 185.00 195.00 10.00
claim
Application size fee 573 130.00 135.00 5.00
greater than 100 pages
Notice of appeal 5,978 255.00 270.00 15.00
Brief in support of 2,640 255.00 270.00 15.00
an appeal
Request for oral 233 515.00 540.00 25.00
hearing
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 has also considered 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 revised
non-small entity fee amount, and the net amount of the non-small entity fee
adjustment.
Table 3:
Fiscal Year
2007
Non-Small
Entity Former Fee Adjusted Fee Fee
Fee Payments Amount Amount Adjustment
Basic filing fee - 209,577 310.00 330.00 20.00
utility application
(on or after
December 8, 2004)
Basic filing fee - 311 810.00 850.00 40.00
utility application
(before December 8,
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2004)
Basic filing fee - 13,400 210.00 220.00 10.00
design application
(on or after
December 8, 2004)
Basic filing fee - 72 360.00 380.00 20.00
design application
(before December 8,
2004)
Basic filing fee - 680 210.00 220.00 10.00
plant application
(on or after
December 8, 2004)
Basic filing fee - 0 570.00 600.00 30.00
plant application
(before
December 8, 2004)
Basic filing fee - 47,925 210.00 220.00 10.00
provisional
application
Basic filing fee - 689 310.00 330.00 20.00
reissue application
(on or after
December 8, 2004)
Basic filing fee - 1 810.00 850.00 40.00
reissue application
(before December 8,
2004)
Independent claims 77,135 210.00 220.00 10.00
in excess of three
Claims in excess 102,973 50.00 52.00 2.00
of 20
Multiple dependent 5,944 370.00 390.00 20.00
claim
Search fee - 209,135 510.00 540.00 30.00
utility application
(on or after
December 8, 2004)
Search fee - 681 310.00 330.00 20.00
plant application
(on or after
December 8, 2004)
Search fee - 688 510.00 540.00 30.00
reissue application
(on or after
December 8, 2004)
Examination fee - 209,465 210.00 220.00 10.00
utility application
(on or after
December 8, 2004)
Examination fee - 13,261 130.00 140.00 10.00
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design application
(on or after
December 8, 2004)
Examination fee - 681 160.00 170.00 10.00
plant application
(on or after
December 8, 2004)
Examination fee - 707 620.00 650.00 30.00
reissue application
(on or after
December 8, 2004)
Application size fee 11,257 260.00 270.00 10.00
greater than 100 pages
Extension for response 88,684 120.00 130.00 10.00
within first month
Extension for response 42,308 460.00 490.00 30.00
within second month
Extension for response 41,489 1,050.00 1,110.00 60.00
within third month
Extension for response 3,105 1,640.00 1,730.00 90.00
within fourth month
Extension for response 3,482 2,230.00 2,350.00 120.00
within fifth month
Petition to revive - 127 510.00 540.00 30.00
unavoidably abandoned
application
Petition to revive - 4,180 1,540.00 1,620.00 80.00
unintentionally
abandoned application
Issue fee - utility 122,251 1,440.00 1,510.00 70.00
application
Issue fee - design 12,433 820.00 860.00 40.00
application
Issue fee - plant 673 1,130.00 1,190.00 60.00
application
Reexamination 132 210.00 220.00 10.00
independent claims
in excess of three
Reexamination claims 151 50.00 52.00 2.00
in excess of 20
Statutory disclaimer 21,218 130.00 140.00 10.00
Maintenance fee - 125,653 930.00 980.00 50.00
due at 3.5 years
Maintenance fee - 88,487 2,360.00 2,480.00 120.00
due at 7.5 years
Maintenance fee - 42,193 3,910.00 4,110.00 200.00
due at 11.5 years
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Filing of PCT 41,842 310.00 330.00 20.00
application -
USPTO ISA -
national stage
National stage 38,457 410.00 430.00 20.00
search fee -
search report
to USPTO
National stage 2,429 510.00 540.00 30.00
search fee -
all other
situations
National stage 41,044 210.00 220.00 10.00
examination fee -
all other
situations
Independent claims 9,367 210.00 220.00 10.00
in excess of three
Claims in excess 14,983 50.00 52.00 2.00
of 20
Multiple dependent 3,998 370.00 390.00 20.00
claim
Application size 2,102 260.00 270.00 10.00
fee greater than
100 pages
Notice of appeal 21,646 510.00 540.00 30.00
Brief in support 11,950 510.00 540.00 30.00
of an appeal
Request for oral 736 1,030.00 1,080.00 50.00
hearing
4. Description of the reporting, recordkeeping and other compliance
requirements of the final rule, 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
rule does not require any reporting or record keeping or incorporate other
compliance requirements. This rule only adjusts patent fees (as discussed
previously) to reflect changes in the CPI.
5. Description of any significant alternatives to the final rule which
accomplish the stated objectives of applicable statutes and which minimize
any significant economic impact of the rule 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 adjusting the patent fee amounts 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 the 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 final rules: The
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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 final rule making 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 rule
making 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 rule making 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. Therefore, a tribal summary impact statement is not
required under Executive Order 13175 (Nov. 6, 2000).
E. Executive Order 13211 (Energy Effects): This rule making is not a
significant energy action under Executive Order 13211 because this rule
making 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 rule making 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 rule making 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 rule making
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.), the United States Patent and Trademark Office
has submitted a report containing the final rule and other required
information to the United States Senate, the United States House of
Representatives and the Comptroller General of the Government
Accountability Office. The changes in this final rule will not 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 final rule is not a "major
rule" as defined in 5 U.S.C. 804(2).
J. Unfunded Mandates Reform Act of 1995: The changes in this final rule
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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 rule making 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: 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 rule making does
not contain provisions which involve the use of technical standards.
M. Paperwork Reduction Act: This 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 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 but will update the fee amounts 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 at the time these collections are resubmitted to OMB for renewal.
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.
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 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:
Authority: 35 U.S.C. 2(b)(2).
2. Section 1.1 is amended by revising paragraph (d) to read as follows:
§ 1.1 Addresses for non-trademark correspondence with the United States
Patent and Trademark Office.
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* * * * *
(d) Payments of maintenance fees in patents not submitted electronically
over the Internet, and correspondence related to maintenance fees may be
addressed to: Director of the United States Patent and Trademark Office,
Attn: Maintenance Fee, 2051 Jamieson Avenue, Suite 300, Alexandria,
Virginia 22314.
* * * * *
3. Part 1 of 37 CFR is amended immediately after the undesignated center
heading "Fees and Payment of Money" to include the following authority
citation:
Authority: Secs. 1.16 to 1.22 also issued under 35 U.S.C. 41, 111,
119, 120, 132(b), 156, 157, 255, 302, and 311, and Public Laws 103-465, and
106-113.
4. Section 1.16 is amended by revising paragraphs (a) through (e), (h)
through (k), and (m) through (s) to read as follows:
§ 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 (§ 1.27(a)) if the application is submitted in
compliance with the Office electronic filing system
(§ 1.27(b)(2)) ... $82.00
By a small entity (§ 1.27(a)) $165.00
By other than a small entity $330.00
(2) For an application filed before December 8, 2004:
By a small entity (§ 1.27(a)) $425.00
By other than a small entity $850.00
(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 (§ 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 (§ 1.27(a)) $190.00
By other than a small entity $380.00
(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 (§ 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 (§ 1.27(a)) $300.00
By other than a small entity $600.00
(d) Basic fee for filing each provisional application:
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By a small entity (§ 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 (§ 1.27(a)) $165.00
By other than a small entity $330.00
(2) For an application filed before December 8, 2004:
By a small entity (§ 1.27(a)) $425.00
By other than a small entity $850.00
* * * * *
(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 (§ 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
§ 1.75(c) indicates how multiple dependent claims are considered for fee
calculation purposes):
By a small entity (§ 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 (§ 1.27(a)) $195.00
By other than a small entity $390.00
(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 (§ 1.27(a)) $270.00
By other than a small entity $540.00
* * * * *
(m) Search fee for each application filed on or after December 8, 2004,
for an original plant patent:
By a small entity (§ 1.27(a)) $165.00
By other than a small entity $330.00
(n) Search fee for each application filed on or after December 8, 2004,
for the reissue of a patent:
By a small entity (§ 1.27(a)) $270.00
By other than a small entity $540.00
(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 (§ 1.27(a)) $110.00
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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 (§ 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 (§ 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:
By a small entity (§ 1.27(a)) $325.00
By other than a small entity $650.00
(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 (§ 1.27(a)) $135.00
By other than a small entity $270.00
* * * * *
5. Section 1.17 is amended by revising paragraphs (a), (l), and (m) to
read as follows:
§ 1.17 Patent application and reexamination processing fees.
(a) Extension fees pursuant to § 1.136(a):
(1) For reply within first month:
By a small entity (§ 1.27(a)) $65.00
By other than a small entity $130.00
(2) For reply within second month:
By a small entity (§ 1.27(a)) $245.00
By other than a small entity $490.00
(3) For reply within third month:
By a small entity (§ 1.27(a)) $555.00
By other than a small entity $1,110.00
(4) For reply within fourth month:
By a small entity (§ 1.27(a)) $865.00
By other than a small entity $1,730.00
(5) For reply within fifth month:
By a small entity (§ 1.27(a)) $1,175.00
By other than a small entity $2,350.00
* * * * *
(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
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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
(§ 1.137(a)):
By a small entity (§ 1.27(a)) $270.00
By other than a small entity $540.00
(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) (§ 1.137(b)):
By a small entity (§ 1.27(a)) $810.00
By other than a small entity $1,620.00
* * * * *
6. Section 1.18 is amended by revising paragraphs (a) through (c) to
read as follows:
§ 1.18 Patent post allowance (including issue) fees.
(a) Issue fee for issuing each original patent, except a design or plant
patent, or for issuing each reissue patent:
By a small entity (§ 1.27(a)) $755.00
By other than a small entity $1,510.00
(b) Issue fee for issuing an original design patent:
By a small entity (§ 1.27(a)) $430.00
By other than a small entity $860.00
(c) Issue fee for issuing an original plant patent:
By a small entity (§ 1.27(a)) $595.00
By other than a small entity $1190.00
* * * * *
7. Section 1.20 is amended by revising paragraphs (c)(3), (c)(4), and
(d) through (g) to read as follows:
§ 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 (§ 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 § 1.75(c) indicates how multiple dependent claims
are considered for fee calculation purposes):
By a small entity (§ 1.27(a)) $26.00
By other than a small entity $52.00
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* * * * *
(d) For filing each statutory disclaimer (§ 1.321):
By a small entity (§ 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 (§ 1.27(a)) $490.00
By other than a small entity $980.00
(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 (§ 1.27(a)) $1,240.00
By other than a small entity $2,480.00
(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 (§ 1.27(a)) $2,055.00
By other than a small entity $4,110.00
* * * * *
8. Section 1.25 is amended by removing paragraph (c)(4) and revising
paragraph (c)(3) to read as follows:
§ 1.25 Deposit accounts.
* * * * *
(c) * * *
(3) A payment to replenish a deposit account may be addressed to:
Director of the United States Patent and Trademark Office, Attn: Deposit
Accounts, 2051 Jamieson Avenue, Suite 300, Alexandria, Virginia 22314.
9. Section 1.492 is amended by revising paragraphs (a), (b)(3), (b)(4),
(c)(2), (d) through (f) and (j) to read as follows:
§ 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 (§ 1.27(a)) $165.00
By other than a small entity $330.00
(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:
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By a small entity (§ 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 (§ 1.27(a)) $270.00
By other than a small entity $540.00
(c) * * *
(2) In all situations not provided for in paragraph (c)(1) of this
section:
By a small entity (§ 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 (§ 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 § 1.75(c) indicates how multiple
dependent claims are considered for fee calculation purposes):
By a small entity (§ 1.27(a)) $26.00
By other than a small entity $52.00
(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 (§ 1.27(a)) $195.00
By other than a small entity $390.00
* * * * *
(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 (§ 1.27(a)) $135.00
By other than a small entity $270.00
PART 41--PRACTICE BEFORE THE BOARD OF
PATENT APPEALS AND INTERFERENCES
10. 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.
11. Section 41.20 is amended by revising paragraph (b) to read as
follows:
§ 41.20 Fees.
* * * * *
(b) Appeal fees.
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(1) For filing a notice of appeal from the examiner to the Board:
By a small entity (§ 1.27(a) of this title) $270.00
By other than a small entity $540.00
(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 (§ 1.27(a) of this title) $270.00
By other than a small entity $540.00
(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 (§ 1.27(a)) $540.00
By other than a small entity $1,080.00
August 8, 2008 MARGARET J. A. PETERLIN
Deputy Under Secretary of Commerce for
Intellectual Property and Deputy Director of the
United States Patent and Trademark Office
[1334 OG 45]