| Fees, Deposit Accounts, Credit Cards, Refunds, etc. |
Referenced Items (77, 78, 79, 80, 81, 82, 83, 84, 85, 86, 87, 88, 89, 90, 91, 92, 93, 94, 95, 96, 97, 98, 99, 100) |
(91) DEPARTMENT OF COMMERCE
Patent and Trademark Office
37 CFR Parts 1 and 41
[Docket No. 2003-P-026]
RIN 0651-AB54
Changes To Implement the
Patent Fee Related Provisions of the
Consolidated Appropriations Act, 2005
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Final rule.
SUMMARY: The Consolidated Appropriations Act, 2005 (Consolidated
Appropriations Act), revises patent fees in general, and provides for a
search fee and examination fee that are separate from the filing fee,
during fiscal years 2005 and 2006. This final rule revises the patent fees
set forth in the rules of practice to conform them to the patent fees set
forth in the Consolidated Appropriations Act.
DATES: Effective Date: December 8, 2004.
Applicability Date: The changes in this final rule apply to all
patents (including patents in reexamination proceedings), whenever
granted, and to all patent applications pending on or after December 8,
2004.
FOR FURTHER INFORMATION CONTACT: Robert W. Bahr, Senior Patent
Attorney, Office of the Deputy Commissioner for Patent Examination
Policy, by telephone at (571) 272-8800, by mail addressed to: Box
Comments - Patents, Commissioner for Patents, P.O. Box 1450, Alexandria,
VA, 22313-1450, or by facsimile to (571) 273-7735, marked to the
attention of Robert W. Bahr.
SUPPLEMENTARY INFORMATION: The Consolidated Appropriations Act (section
801 of Division B) provides that 35 U.S.C. 41(a), (b), and (d) shall be
administered in a manner that revises patent application fees (35
U.S.C. 41(a)) and patent maintenance fees (35 U.S.C. 41(b)), and
provides for a separate filing fee (35 U.S.C. 41(a)), search fee (35
U.S.C. 41(d)(1)), and examination fee (35 U.S.C. 41(a)(3)) during
fiscal years 2005 and 2006. See Pub. L. 108-447, 118 Stat. 2809 (2004).
This final rule revises the patent fees set forth in the rules of
practice in title 37 of the Code of Federal Regulations (CFR) to
conform them to the patent fees set forth in the Consolidated
Appropriations Act. The citations to 35 U.S.C. 41 in this final rule
are citations to 35 U.S.C. 41 as it is being administered during fiscal
years 2005 and 2006 pursuant to the Consolidated Appropriations Act.
The Consolidated Appropriations Act also provides that the
provisions of 35 U.S.C. 111(a) for payment of the fee for filing the
application apply to the payment of the examination fee (35 U.S.C.
41(a)(3)) and search fee (35 U.S.C. 41(d)(1)) in an application filed
under 35 U.S.C. 111(a), and that the provisions of 35 U.S.C. 371(d) for
the payment of the national fee apply to the payment of the examination
fee (35 U.S.C. 41(a)(3)) and search fee (35 U.S.C. 41(d)(1)) in an
international application filed under the Patent Cooperation Treaty
(PCT) and entering the national stage under 35 U.S.C. 371. See 35
U.S.C. 41(a)(3) and 41(d)(1)(C). Thus, the examination fee and search
fee are due on filing in an application filed under 35 U.S.C. 111(a) or
on commencement of the national stage in a PCT international
application, but may be paid at a later time if paid within such period
and under such conditions (including payment of a surcharge) as may be
prescribed by the Director. See H. R. Rep. 108-241, at 16 (2003) (H. R.
Rep. 108-241 contains an analysis and discussion of an identical
provision in H.R. 1561, 108th Cong. (2004)).
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The Consolidated Appropriations Act also provides that the small
entity reduction set forth in 35 U.S.C. 41(h)(1) also applies to the
search fee provided for in 35 U.S.C. 41(d)(1) (35 U.S.C. 41(h)(1)), and
provides that the filing fee charged under 35 U.S.C. 41(a)(1)(A) shall
be reduced by 75 percent with respect to its application to any small
entity "if the application is filed by electronic means as prescribed
by the Director" (35 U.S.C. 41(h)(3)). Since 35 U.S.C. 41(h)(3)
applies only to the filing fee charged under 35 U.S.C. 41(a)(1)(A) (the
filing fee for a nonprovisional original utility application), the 75
percent fee reduction set forth in 35 U.S.C. 41(h)(3) does not apply to
design or plant applications, reissue applications, or provisional
applications.
The Consolidated Appropriations Act also provides that the Office
may, by regulation, provide for a refund of: (1) Any part of the excess
claims fee specified in 35 U.S.C. 41(a)(2) for any claim that is
canceled before an examination on the merits has been made of the
application under 35 U.S.C. 131; (2) any part of the search fee for any
applicant who files a written declaration of express abandonment as
prescribed by the Office before an examination has been made of the
application under 35 U.S.C. 131; and (3) any part of the search fee for
any applicant who provides a search report that meets the conditions
prescribed by the Office. This final rule does not contain changes to
the rules of practice to implement the provisions for a refund of any
part of the excess claims fee specified in 35 U.S.C. 41(a)(2) for any
claim that is canceled before an examination on the merits has been
made of the application under 35 U.S.C. 131, and any part of the search
fee for any applicant who files a written declaration of express
abandonment as prescribed by the Office before an examination has been
made of the application under 35 U.S.C. 131.
The revised patent fees specified in 35 U.S.C. 41 apply to all
patents, whenever granted, and to all applications pending on or filed
after December 8, 2004, except as follows: The provisions of 35 U.S.C.
41(a)(1) (filing fee and application size fee), 35 U.S.C. 41(a)(3)
(examination fee), and 35 U.S.C. 41(d)(1) (search fee) apply only to
applications for patent filed under 35 U.S.C. 111 on or after December
8, 2004, and to international applications entering the national stage
under 35 U.S.C. 371 for which the basic national fee specified in 35
U.S.C. 41 was not paid before December 8, 2004. In addition, the
provisions of 35 U.S.C. 41(a)(2) (excess claims fee) apply only as to
those claims in independent form and those claims (whether independent
or dependent) that, after taking into account the claims that have been
canceled, are in excess of the number of claims in independent form and
claims (whether independent or dependent), respectively, for which the
excess claims fee specified in 35 U.S.C. 41 was paid before December 8,
2004.
The applicable fee amount is the fee amount in effect on the day
the fee is paid (in full). The day a fee is paid is the date of receipt
of the fee payment in the Office under Sec. 1.6, or the date reflected
on a proper certificate of mailing or transmission on the fee payment,
where such a certificate is authorized under Sec. 1.8. Use of a
certificate of mailing or transmission is not authorized for items that
are specifically excluded from the provisions of Sec. 1.8: e.g., the
filing of a national or international application for a patent. See
Sec. 1.8(a)(2). The date of receipt under 37 CFR 1.6 of patent-related
correspondence delivered by the "Express Mail Post Office to
Addressee" service of the United States Postal Service (USPS) is the
date of deposit of the correspondence with the USPS. See Secs.
1.6(a)(2) and 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 notation. See Sec. 1.10(a)(2).
Discussion of Specific Rules
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Title 37 of the Code of Federal Regulations, Parts 1 and 41, are
amended as follows:
Section 1.16: Section 1.16 is amended to set forth the application
filing, excess claims, search, examination, and application size fees
as specified in 35 U.S.C. 41(a) and (d)(1) as amended by the
Consolidated Appropriations Act.
Sections 1.16(a) through (e) set forth the basic filing fees under
the Consolidated Appropriations Act for applications filed under 35
U.S.C. 111 on or after December 8, 2004: (1) The basic filing fee for
an original nonprovisional utility application is $300.00 ($150.00 for
a small entity, and $75.00 for a small entity if the application is
submitted in compliance with the Office electronic filing system); (2)
the basic filing fee for an original design application is $200.00
($100.00 for a small entity); (3) the basic filing fee for an original
nonprovisional plant application is $200.00 ($100.00 for a small entity);
(4) the basic filing fee for a provisional application is $200.00 ($100.00
for a small entity); and (5) the basic filing fee for a reissue application
is $300.00 ($150.00 for a small entity). See 35 U.S.C. 41(a)(1)(A) through
(E).
The Consolidated Appropriations Act (Section 803(b)(1)(B)(i) of
Division B) provides that the basic filing fees specified in 35 U.S.C.
41(a)(1) (except for the filing fee specified in 35 U.S.C. 41(a)(1)(D)
for a provisional application) apply only to applications filed on or
after December 8, 2004. Therefore, Sec. 1.16 also sets forth the basic
filing fee for applications filed under 35 U.S.C. 111 before December
8, 2004: (1) The basic filing fee for an original nonprovisional
utility application and for a reissue application is $790.00 ($395.00
for a small entity); (2) the basic filing fee for an original design
application is $350.00 ($175.00 for a small entity); and (3) the basic
filing fee for an original nonprovisional plant application is $550.00
($275.00 for a small entity). See Revision of Patent Fees for Fiscal
Year 2005, 69 FR 52604 (Aug. 27, 2004) (final rule), and Certain Fees
to be Adjusted, 1285 Off. Gaz. Pat. Office 185 (Aug. 31, 2004)
(notice). These basic filing fees apply to applications filed before
December 8, 2004, even if the basic filing fee is not paid until on or
after December 8, 2004. The Consolidated Appropriations Act (Section
803(b)(1)(B)(ii) of Division B) also provides that the basic filing fee
for a provisional application applies to all provisional applications
filed before, on, or after December 8, 2004, in which the filing fee
was not paid before December 8, 2004.
Section 1.16(f) sets forth the late filing surcharge for a
nonprovisional application, and Sec. 1.16(g) sets forth the late
filing surcharge for a provisional application (formerly in Secs.
1.16(e) and (l), respectively). See also Secs. 1.53(f) and (g),
respectively.
Section 1.16(h) sets forth the excess claims fee for each
independent claim in excess of three; namely, $200 ($100 for a small
entity) for each claim in independent form in excess of three. See 35
U.S.C. 41(a)(2)(A).
Section 1.16(i) sets forth the excess claims fee for each claim
(whether dependent or independent) in excess of twenty; namely, $50
($25 for a small entity) for each claim (whether dependent or
independent) in excess of twenty. See 35 U.S.C. 41(a)(2)(B).
The excess claims fees specified in Sec. 1.16 apply to
applications filed before December 8, 2004, and to applications pending
on or after December 8, 2004. The Consolidated Appropriations Act
(Section 803(b)(1)(C) of Division B) provides that the excess claims
fees specified in 35 U.S.C. 41(a)(2) shall apply only as to those
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claims (independent or dependent) that, after taking into account any
claims that have been canceled, are in excess of the number of claims
for which the excess claims fee specified in 35 U.S.C. 41 was paid
before December 8, 2004. Thus, the Office will charge the excess claims
fees specified in Sec. 1.16(h) and (i) if an applicant in an
application filed before and pending on or after December 8, 2004, adds
a claim (independent or total) in excess of the number of claims
(independent or total) for which the excess claims fee was previously
paid (under the current or a previous fee schedule). Specifically, the
excess claims fees specified in Sec. 1.16(h) and (i) apply to any
excess claims fee paid on or after December 8, 2004, regardless of the
filing date of the application and regardless of the date on which the
claim necessitating the excess claims fee payment was added to the
application. For example, in an application (non-small entity) that
contains six independent claims and thirty total claims for which the
excess claims fee specified in Sec. 1.16 was previously paid: (1) No
excess claims fee is due if the applicant cancels ten claims, two of
which are independent, and adds ten claims, two of which are
independent; (2) the excess claims fee for a seventh independent claim
($200.00) is due if the applicant cancels ten claims, two of which are
independent, and adds ten claims, three of which are independent; (3)
the excess claims fee for a thirty-first claim ($50.00) is due if the
applicant cancels ten claims, two of which are independent, and adds
eleven claims, two of which are independent; and (4) the excess claims
fees for a seventh independent claim ($200.00) and a thirty-first claim
($50.00) are due if the applicant cancels ten claims, two of which are
independent, and adds eleven claims, three of which are independent.
The excess claims fees specified in Sec. 1.16(h) and (i) also
apply to all reissue applications pending on or after December 8, 2004.
Under 35 U.S.C. 41(a)(2) as amended by the Consolidated Appropriations
Act, the claims in the original patent are not taken into account in
determining the excess claims fee for a reissue application. Under
"former" 35 U.S.C. 41, excess claims fees were required in reissue
applications for each claim in independent form in excess of the number
of independent claims of the original patent, and for each claim
(whether independent or dependent) in excess of twenty and also in
excess of the number of claims of the original patent. Thus (in
addition to excess claims under "former" 35 U.S.C. 41 for which the
excess claims fee was not paid before December 8, 2004), the excess
claims fees specified in Sec. 1.16(h) and (i) are required for each
independent claim in excess of three that is presented in a reissue
application on or after December 8, 2004, and for each claim (whether
independent or dependent) in excess of twenty that is presented in a
reissue application on or after December 8, 2004.
Section 1.16(j) sets forth the fee for an application that contains
a multiple dependent claim (formerly in Sec. 1.16(d)). See 35 U.S.C.
41(a)(2)(C).
Sections 1.16(k), (l), (m), and (n) set forth the search fees as
provided for in the Consolidated Appropriations Act (Section 803(c)(1)
of Division B) for applications filed under 35 U.S.C. 111(a) on or
after December 8, 2004. The Consolidated Appropriations Act provides
for the following search fees during fiscal years 2005 and 2006: (1)
$500.00 for the search of each application for an original patent,
except for design, plant, provisional, or international application;
(2) $100.00 for the search of each application for an original design
patent; (3) $300.00 for the search of each application for an original
plant patent; and (4) $500.00 for the search of each application for
the reissue of a patent. These search fee amounts supersede the search
fee setting provisions of 35 U.S.C. 41(d)(1)(A) and (B) (which
authorize the Office to set a cost-recovery based search fee, with a
number of limitations), but do not supersede provisions for the payment
of search fees in 35 U.S.C. 41(d)(1)(C), the refund authorization
provisions in 35 U.S.C. 41(d)(1)(D), and the small entity reduction
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provisions in 35 U.S.C. 41(h)(1).
Sections 1.16(o), (p), (q), and (r) set forth the examination fees
specified in 35 U.S.C. 41(a)(3) for applications filed under 35 U.S.C.
111(a) on or after December 8, 2004: (1) The examination fee for each
application for an original patent, except for design, plant, or
provisional applications, is $200.00 ($100.00 for a small entity); (2)
the examination fee for each application for an original design patent
is $130.00 ($65.00 for a small entity); (3) the examination fee for
each application for an original plant patent is $160.00 ($80.00 for a
small entity); and (4) the examination fee for each application for
the reissue of a patent is $600.00 ($300.00 for a small entity).
Section 1.16(s) sets forth the fee for any application (including
any provisional applications and any reissue application) filed under
35 U.S.C. 111 on or after December 8, 2004, the specification and
drawings of which, excluding any sequence listing or computer program
listing filed in an electronic medium as prescribed by the Director
(see Sec. 1.52(f)), exceed 100 sheets of paper (the "application size
fee"). The application size fee set forth in Sec. 1.16(s) is $250.00
($125.00 for a small entity) for each additional 50 sheets or fraction
thereof. See 35 U.S.C. 41(a)(1)(G).
The provision in 35 U.S.C. 41(a)(1)(G) for the Office to prescribe
the paper size equivalent of an application filed in whole or in part
in an electronic medium for purposes of the fee specified in 35 U.S.C.
41(a)(1)(G) (Sec. 1.16(s)) will be implemented in a separate rule
making.
In situations in which a payment submitted for the fees due on
filing in a nonprovisional application filed under 35 U.S.C. 111(a) is
insufficient and the applicant has not specified the fees to which the
payment is to be applied, the Office will apply the payment in the
following order until the payment is expended: (1st) the basic filing
fee (Sec. 1.16(a), (b), (c), or (e)); (2nd) the application size fee
(Sec. 1.16(s)); (3rd) the late filing surcharge (Sec. 1.16(f)); (4th)
the processing fee for an application filed in a language other than
English (Sec. 1.17(i)); (5th) the search fee (Sec. 1.16(k), (l), (m),
or (n)); (6th) the examination fee (Sec. 1.16(o), (p), (q), or (r);
and (7th) the excess claims fee (Secs. 1.16(h), (i), and (j)). In
situations in which a payment submitted for the fees due on filing in a
provisional application filed under 35 U.S.C. 111(b) is insufficient
and the applicant has not specified the fees to which the payment is to
be applied, the Office will apply the payment in the following order
until the payment is expended: (1st) the basic filing fee (Sec.
1.16(d)); (2nd) the application size fee (Sec. 1.16(s)); and (3rd) the
late filing surcharge (Sec. 1.16(g)).
Since the basic filing fee, search fee, and examination fee under
the new patent fee structure are often referred to as the "filing
fee," the Office will treat a deposit account authorization to charge
"the filing fee" as an authorization to charge the applicable fees
under 1.16 (the basic filing fee, search fee, examination fee, any
excess claims fee, and any application size fee) to the deposit
account, and will treat a deposit account authorization to charge "the
basic filing fee" as an authorization to charge the applicable basic
filing fee, search fee, and examination fee to the deposit account. Any
deposit account authorization to charge the filing fee but not the
search fee or examination fee must specifically limit the authorization
by reference to one or more of paragraphs (a) through (e) of Sec.
1.16.
The filing and processing fees for international applications filed
under 35 U.S.C. 363 are covered in Secs. 1.445 and 1.482, and the
national fees (including search and examination fees) for applications
entering the national stage under 35 U.S.C. 371 from international
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applications are covered in Sec. 1.492.
Section 1.17: Section 1.17 is amended to set forth the application
processing fees as specified in 35 U.S.C. 41(a) as amended by the
Consolidated Appropriations Act.
Section 1.17(a) sets forth the extension fees for a petition for an
extension of time under 35 U.S.C. 41(a)(8) and Sec. 1.136(a): (1) the
petition fee for reply within the first month is $120.00 ($60.00 for a
small entity); (2) the petition fee for reply within the second month
is $450.00 ($225.00 for a small entity); (3) the petition fee for reply
within the third month is $1,020.00 ($510.00 for a small entity); (4)
the petition fee for reply within the fourth month is $1,590.00
($795.00 for a small entity); and (5) the petition fee for reply within
the fifth month is $2,160.00 ($1,080.00 for a small entity). See 35
U.S.C. 41(a)(8).
Sections 1.17(l) and (m) set forth petition fees for the revival of
abandoned applications, the delayed payment of issue fees, or the
delayed response by the patent owner in reexamination proceedings: (1)
the fee under the unavoidable standard provided for in Sec. 1.137(a)
is $500.00 ($250.00 for a small entity) (Sec. 1.17(l)); and (2) the
fee under the unintentional standard provided for in Sec. 1.137(b) is
$1,500.00 ($750 for a small entity) (Sec. 1.17(m)). See 35 U.S.C.
41(a)(7).
The Consolidated Appropriations Act does not revise the fees for:
(1) A request for continued examination under 35 U.S.C. 132(b) and
Sec. 1.114; (2) a submission after final rejection under Sec.
1.129(a); or (3) each additional invention to be examined under Sec.
1.129(b). Therefore: (1) the fee for a request for continued
examination under 35 U.S.C. 132(b) and Sec. 1.114 remains at $790.00
($395.00 for a small entity); (2) the fee for a submission after final
rejection under Sec. 1.129(a) remains at $790.00 ($395.00 for a small
entity); and (3) the fee for each additional invention to be examined
under Sec. 1.129(b) remains at $790.00 ($395.00 for a small entity).
See Revision of Patent Fees for Fiscal Year 2004, 69 FR at 52604, and
Certain Fees to be Adjusted, 1285 Off. Gaz. Pat. Office at 186.
Section 1.18: Section 1.18 is amended to set forth the patent issue
fees as specified in 35 U.S.C. 41(a)(4) as amended by the Consolidated
Appropriations Act: (1) The fee for issuing an original utility patent
or for issuing a reissue patent is $1,400.00 ($700.00 for a small
entity); (2) the fee for issuing an original design patent is $800.00
($400.00 for a small entity); and (3) the fee for issuing an original
plant patent is $1,100.00 ($550.00). See 35 U.S.C. 41(a)(4).
Section 1.20: Section 1.20 is amended to provide that excess claims
fees as specified in 35 U.S.C. 41(a)(2) as amended by the Consolidated
Appropriations Act are applicable to excess claims proposed to be added
to a patent by their presentation during a reexamination proceeding.
Under "former" 35 U.S.C. 41, excess claims fees were included as part
of the "application" filing fee under 35 U.S.C. 41(a)(1), and thus
did not apply during reexamination proceedings. The Consolidated
Appropriations Act does not include the excess claims as part of the
"application" filing fee under 35 U.S.C. 41(a)(1), but separately
provides for excess claims fees in 35 U.S.C. 41(a)(2) (as being in
addition to the filing fee in 35 U.S.C. 41(a)(1)). 35 U.S.C. 41(a)(2)
provides that an excess claims fee is due "on filing or on
presentation at any other time" (e.g., during a reexamination
proceeding) of an independent claim in excess of three or of a claim
(whether independent or dependent) in excess of twenty. See H. R. Rep.
108-241, at 15 ("[t]he excess claims fees required by [35 U.S.C.]
41(a)(2) are due at the time of presentation of the claim for which
payment is required (whether on filing or at a later time) in the
application or reexamination proceeding").
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Section 1.20(c)(3) specifically requires $200 ($100 for a small
entity) for each claim in independent form in excess of three that is
also in excess of the number of claims in independent form in the
patent under reexamination. Section 1.20(c)(4) specifically requires
$50 ($25 for a small entity) for each claim (whether dependent or
independent) in excess of twenty that is also in excess of the number
of claims in the patent under reexamination. A claim that has been
disclaimed under 35 U.S.C. 253 and Sec. 1.321(a) as of the date of
filing of the request for reexamination is not considered to be a claim
in the patent under reexamination for purposes of excess claims fee
calculations. Section 1.20(c)(5) provides that if the excess claims
fees required by Sec. 1.20(c)(3) and (c)(4) are not paid with the
request for reexamination or on later presentation of the claims for
which the excess claims fees are due, the fees required by Sec.
1.20(c)(3) and (c)(4) must be paid or the claims canceled by amendment
prior to the expiration of the time period set for reply by the Office
in any notice of fee deficiency.
The excess claims fees specified in Sec. 1.20(c) apply to all
patents, whenever granted, for each independent claim in excess of
three and also in excess of the number of independent claims in the
patent or for each claim (whether independent or dependent) in excess
of twenty and also in excess of the number of claims in the patent that
is presented in a reexamination proceeding on or after December 8, 2004
(since no excess claims fee was due under 35 U.S.C. 41 for any claim
presented during a reexamination proceeding before December 8, 2004).
For example, in a patent (non-small entity) that contains (including as
a result of a previous reexamination proceeding) six independent claims
and thirty total claims: (1) No excess claims fee is due if the patent
owner cancels ten claims, two of which are independent, and adds ten
claims, two of which are independent; (2) the excess claims fee for a
seventh independent claim ($200.00) is due if the patent owner cancels
ten claims, two of which are independent, and adds ten claims, three of
which are independent; (3) the excess claims fee for a thirty-first
claim ($50.00) is due if the patent owner cancels ten claims, two of
which are independent, and adds eleven claims, two of which are
independent; and (4) the excess claims fees for a seventh independent
claim ($200.00) and a thirty-first claim ($50.00) are due if the patent
owner cancels ten claims, two of which are independent, and adds eleven
claims, three of which are independent.
Section 1.20(d) sets forth the fee for filing a disclaimer under 35
U.S.C. 253 and Sec. 1.321 in a patent application or patent: $130.00
($65 for a small entity). See 35 U.S.C. 41(a)(5).
Sections 1.20(e), (f), and (g) are amended to set forth the patent
maintenance fees as specified in 35 U.S.C. 41(b) as amended by the
Consolidated Appropriations Act: (1) the first maintenance fee due at
three years and six months after grant is $900.00 ($450.00 for a small
entity); (2) the second maintenance fee due at seven years and six
months after grant is $2,300.00 ($1,150.00 for a small entity); and (3)
the third maintenance fee due at eleven years and six months after
grant is $3,800.00 ($1,900.00 for a small entity). See 35 U.S.C. 41(b).
Section 1.27: Section 1.27(b) is amended to implement the provision
of 35 U.S.C. 41(h)(3), which provides that the fee charged under 35
U.S.C. 41(a)(1)(A) shall be reduced by 75 percent with respect to its
application to any small entity "if the application is filed by
electronic means as prescribed by the Director." See 35 U.S.C.
41(h)(3). Since 35 U.S.C. 41(h)(3) applies only to the filing fee
charged under 35 U.S.C. 41(a)(1)(A) (the filing fee for a
nonprovisional original utility application under 35 U.S.C. 111(a)),
its 75 percent fee reduction does not apply to design or plant
applications, reissue applications, or provisional applications. In any
event, the Office electronic filing system does not currently provide
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for design or plant applications, or for international applications
filed under the PCT which are entering the national stage under 35
U.S.C. 371.
Section 1.27(b)(1) contains the preexisting provisions of Sec.
1.27(b). Section 1.27(b)(2) provides that submission of an original
utility application in compliance with the Office electronic filing
system by an applicant who has properly asserted entitlement to small
entity status pursuant to Sec. 1.27(c) in the particular original
utility application allows the payment of a reduced filing fee pursuant
to 35 U.S.C. 41(h)(3) (currently $75.00).
Section 1.27(c) is amended to revise its reference to Secs.
1.16 and 1.492 to reflect the corresponding changes to Secs. 1.16
and 1.492.
Section 1.33: Section 1.33(c) is amended to re-insert text that was
inadvertently deleted in the final rule Changes to Representation of
Others Before the United States Patent and Trademark Office, 69 FR
35427 (June 24, 2004).
Section 1.51: Section 1.51(b)(4) is amended to indicate that a
complete application under Secs. 1.53(b) or 1.53(d)
(nonprovisional applications filed under 35 U.S.C. 111(a)) includes the
prescribed filing fee, search fee, examination fee, and application
size fee. Section 1.51(c)(4) is amended to indicate that a complete
application under Sec. 1.53(c) (provisional applications filed under
35 U.S.C. 111(b)) includes the prescribed filing fee and application
size fee.
Section 1.52: Section 1.52(f)(1) is added to provide that any
sequence listing in an electronic medium in compliance with Secs.
1.52(e) and 1.821(c) or (e), and any computer program listing filed in
an electronic medium in compliance with Secs. 1.52(e) and 1.96,
will be excluded when determining the application size fee required by
Sec. 1.16(s) or Sec. 1.492(j). See 35 U.S.C. 41(a)(1)(G) (which
provides that a sequence listing or a computer program listing is
excluded if filed in an electronic medium as prescribed by the
Director).
Section 1.52(f)(2) is added to provide that the paper size
equivalent of the specification and drawings of an application
submitted via the Office electronic filing system will be considered to
be the number of sheets of paper present in the specification and
drawings of the application when entered into the Office file wrapper
(currently in the Office image file wrapper system) after being
rendered by the Office electronic filing system for purposes of
computing the application size fee required by Sec. 1.16(s). See 35
U.S.C. 41(a)(1)(G) (which provides that the Director shall prescribe
the paper size equivalent of an application filed in an electronic
medium). Section 1.52(f)(2) further provides that any sequence listing
in compliance with Sec. 1.821(c) or (e), and any computer program
listing in compliance with Sec. 1.96, submitted via the Office
electronic filing system will be excluded when determining the
application size fee required by Sec. 1.16(s) if the listing is
submitted in American Standard Code for Information Interchange (ASCII)
text as part of an associated file of the application. That is, for
applications filed via the Office electronic filing system, a sequence
listing or a computer program listing is "filed in an electronic
medium as prescribed by the Director" for purposes of 35 U.S.C.
41(a)(1)(G) only if the listing is submitted in ASCII text as part of
an associated file of the application. Thus, for example, sequence
listings or computer program listings submitted via the Office
electronic filing system in Portable Document Format (PDF) as part of
the specification or as Tagg(ed) Image File Format (TIFF) drawing files
would not be excluded when determining the application size fee
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required by Sec. 1.16(s) or Sec. 1.492(j).
Section 1.53: Sections 1.53(c), (f) and (g) are amended to revise
their references to Sec. 1.16 to reflect the corresponding changes to
Sec. 1.16.
Section 1.53(f) is further amended to provide for any application
under Sec. 1.53(b), or any continued prosecution application (CPA)
under Sec. 1.53(d) (for design applications), that does not also
include the search fee and the examination fee. Section 1.53(f)
specifically provides that if an application under Sec. 1.53(b) or a
CPA under Sec. 1.53(d) does not include the search fee and the
examination fee: (1) Applicant will be notified and given a period of
time within which to pay the search fee and examination fee to avoid
abandonment if applicant has provided a correspondence address
(Sec. 1.33(a)); and (2) applicant has two months from the filing date of
the application within which to pay the search fee and examination fee
to avoid abandonment if applicant has not provided a correspondence
address.
Section 1.53(f) is also amended to include the provisions formerly
in Sec. 1.16(m) that if the excess claims fees required by Secs.
1.16(h) and (i) and multiple dependent claim fee required by Sec.
1.16(j) are not paid on filing or on later presentation of the claims
for which the excess claims or multiple dependent claim fees are due,
the fees required by Secs. 1.16(h), (i), and (j) must be paid or
the claims canceled by amendment prior to the expiration of the time
period set for reply by the Office in any notice of fee deficiency in
order to avoid abandonment.
Section 1.53(f) is also amended to provide that if the application
size fee required by Sec. 1.16(s) (if any) is not paid on filing or on
later presentation of the amendment necessitating a fee or additional
fee under Sec. 1.16(s), the fee required by Sec. 1.16(s) must be paid
prior to the expiration of the time period set for reply by the Office
in any notice of fee deficiency in order to avoid abandonment. The
submission of an amendment in reply to any Office action or notice
which necessitates an application size fee or additional application
size fee under Sec. 1.16(s) and which does not also include the
requisite application size fee under Sec. 1.16(s) is a reply having an
omission under Sec. 1.703(c)(7), which will result in a reduction of
any patent term adjustment by the number of days (if any) beginning on
the day after the date the reply lacking the requisite application size
under Sec. 1.16(s) was filed and ending no earlier than the date that
the requisite application size fee under Sec. 1.16(s) was filed. See
Sec. 1.703(c)(7).
Section 1.53(g) is also amended to provide that if the application
size fee required by Sec. 1.16(s) (if any) is not paid on filing, the
fee required by Sec. 1.16(s) must be paid prior to the expiration of
the time period set for reply by the Office in any notice of fee
deficiency in order to avoid abandonment.
Section 1.69: Section 1.69 is amended to correct typographical
errors.
Section 1.75: Section 1.75(c) is amended to revise its reference to
Sec. 1.16 to reflect the corresponding changes to Sec. 1.16.
Section 1.78: Section 1.78(a) is amended to revise its reference to
Sec. 1.16 to reflect the corresponding changes to Sec. 1.16.
Section 1.84: Section 1.84(y) is amended to correct an errant
cross-reference to former Sec. 1.174.
Section 1.111: Section 1.111(a)(2)(i) is amended to correct a
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typographical error.
Section 1.136: Section 1.136(b) is amended to correct an errant
cross-reference to former Sec. 1.645.
Section 1.211: Section 1.211 is amended to revise its reference to
Sec. 1.16 to reflect the corresponding changes to Sec. 1.16. Section
1.211 is also amended to provide that the Office may delay publishing
any application until it includes any application size fee required by
the Office under Sec. 1.16(s) or Sec. 1.492(j).
Section 1.324: Section 1.324(a) is amended to correct an errant
cross-reference to former Sec. 1.634.
Section 1.445: Section 1.445(a) is amended to provide that the
search fee set forth in Sec. 1.445(a)(2)(i) is applicable only if a
corresponding prior United States national application has been filed
under 35 U.S.C. 111(a) and the basic filing fee, search fee, and the
examination fee have been paid therein.
Section 1.492: Section 1.492 is amended to set forth the basic
national, search, and examination fees for an international application
entering the national stage under 35 U.S.C. 371.
Section 1.492(a) sets forth the basic national fee for an
international application entering the national stage under 35 U.S.C.
371: $300.00 ($150.00 for a small entity). See 35 U.S.C. 41(a)(1)(F).
Section 1.492(b) sets forth the search fees for an international
application entering the national stage under 35 U.S.C. 371. The
Consolidated Appropriations Act (Section 803(c)(1) of Division B)
provides a search fee of $500.00 ($250 for a small entity) for the
search of the national stage of each international application during
fiscal years 2005 and 2006.
Section 1.492(c) sets forth the examination fee for an
international application entering the national stage under 35 U.S.C.
371: $200.00 ($100.00 for a small entity). See 35 U.S.C. 41(a)(3).
The basic national fee, search fee, and examination fee specified
in Sec. 1.492(a), (b), and (c) apply only to international
applications entering the national stage under 35 U.S.C. 371 for which
the basic national fee specified in 35 U.S.C. 41 was not paid before
December 8, 2004. Section 1.492 does not also specify the basic
national fee for an international application entering the national
stage under 35 U.S.C. 371 for which the basic national fee specified in
35 U.S.C. 41 was paid before December 8, 2004, because (by definition)
the basic national fee for such an application was paid before the
effective date of the Consolidated Appropriations Act and this final
rule.
Section 1.492(d) sets forth the excess claims fee for each
independent claim in excess of three; namely, $200 ($100 for a small
entity) for each claim in independent form in excess of three. See 35
U.S.C. 41(a)(2)(A).
Section 1.492(e) sets forth the excess claims fee for each claim
(whether dependent or independent) in excess of twenty; namely, $50
($25 for a small entity) for each claim (whether dependent or
independent) in excess of twenty. See 35 U.S.C. 41(a)(2)(B).
Section 1.492(f) sets forth the fee for an application that
contains a multiple dependent claim (formerly in Sec. 1.492(d)). See
35 U.S.C. 41(a)(2)(C).
Section 1.492(g) provides that if the excess claims fees required
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by Sec. 1.492(d) and (e) and multiple dependent claim fee required by
Sec. 1.492(f) are not paid with the basic national fee or on later
presentation of the claims for which the excess claims or multiple
dependent claim fees are due, the fees required by Sec. 1.492(d), (e),
and (f) must be paid or the claims canceled by amendment prior to the
expiration of the time period set for reply by the Office in any notice
of fee deficiency in order to avoid abandonment.
Section 1.492(h) sets forth the surcharge for filing the oath or
declaration later than thirty months from the priority date pursuant to
Sec. 1.495(c) (formerly in Sec. 1.492(e)).
Section 1.492(i) sets forth the processing fee for filing an
English translation of an international application or of any annexes
to an international preliminary examination report later than thirty
months after the priority date (Secs. 1.495(c) and (e)) (formerly
in Sec. 1.492(f)).
Section 1.492(j) sets forth the fee for any international
application for which the basic national fee was not paid before
December 8, 2004, the specification and drawings of which, excluding
any sequence listing or computer program listing filed in an electronic
medium as prescribed by the Director (see Sec. 1.52(f)), exceed 100
sheets of paper (the "application size fee"). The application size
fee set forth in Sec. 1.492(j) is $250.00 ($125.00 for a small entity)
for each additional 50 sheets or fraction thereof. See 35 U.S.C.
41(a)(1)(G).
In situations in which a payment submitted for the fees due in an
international application entering the national stage under 35 U.S.C.
371 and Sec. 1.495 is insufficient and the applicant has not specified
the fees to which the payment is to be applied, the Office will apply
the payment in the following order until the payment is expended: (1st)
the basic national fee (Sec. 1.492(a)); (2nd) the application size fee
(Sec. 1.492(j)); (3rd) the surcharge for filing the oath or
declaration later than thirty months from the priority date (Sec.
1.492(h)); (4th) the processing fee for filing an English translation
later than thirty months after the priority date (Sec. 1.492(i));
(5th) the search fee (Sec. 1.492(b)); (6th) the examination fee (Sec.
1.492(c)); and (7th) the excess claims fee (Secs. 1.492(d), (e),
and (f)).
Section 1.495: Section 1.495(c) is subdivided into Sec.
1.495(c)(1) through (c)(4). Section 1.495(c)(1) provides that if
applicant complies with Sec. 1.495(b) before expiration of thirty
months from the priority date, the Office will notify the applicant if
he or she has omitted any of: (1) A translation of the international
application, as filed, into the English language, if it was originally
filed in another language (35 U.S.C. 371(c)(2)); (2) the oath or
declaration of the inventor (35 U.S.C. 371(c)(4) and Sec. 1.497), if a
declaration of inventorship in compliance with Sec. 1.497 has not been
previously submitted in the international application under PCT Rule
4.17(iv) within the time limits provided for in PCT Rule 26ter.1; (3)
the search fee set forth in Sec. 1.492(b); (4) the examination fee set
forth in Sec. 1.492(c); and (5) any application size fee set forth in
Sec. 1.492(j). Section 1.495(c)(2) provides that a notice under Sec.
1.495(c)(1) will set a period of time within which applicant must
provide any omitted translation, oath or declaration of the inventor,
search fee set forth in Sec. 1.492(b), examination fee set forth in
Sec. 1.492(c), and any application size fee set forth in Sec.
1.492(j) in order to prevent abandonment of the application. Section
1.495(c)(3) and (c)(4) contain existing provisions of Sec. 1.495(c).
Section 41.20: Section 41.20(b) sets forth appeal fees: (1) The fee
for filing a notice of appeal from the examiner to the Board of Patent
Appeals and Interferences is $500.00 ($250.00 for a small entity); (2)
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the additional fee for filing a brief in support of an appeal is
$500.00 ($250.00 for a small entity); and (3) the additional fee for
filing a request for an oral hearing before the Board of Patent Appeals
and Interferences in an appeal under 35 U.S.C. 134 is $1,000.00
($500.00 for a small entity). See 35 U.S.C. 41(a)(6).
Rule Making Considerations
Administrative Procedure Act: The changes in this final rule merely
revise the rules of practice to conform to the patent fees specified in
35 U.S.C. 41 as amended by the Consolidated Appropriations Act (Pub. L.
108-447). Therefore, these rule changes involve interpretive rules or
rules of agency practice and procedure under 5 U.S.C. 553(b)(A). See
Bachow Communications Inc. v. FCC, 237 F.3d 683, 690 (D.C. Cir. 2001);
Paralyzed Veterans of America v. West, 138 F.3d 1434, 1436 (Fed. Cir.
1998); Komjathy v. National Transportation Safety Board, 832 F.2d 1294,
1296-97 (D.C. Cir. 1987). Accordingly, the changes in this final rule
may be adopted without prior notice and opportunity for public comment
under 5 U.S.C. 553(b) and (c), or thirty-day advance publication under
5 U.S.C. 553(d) or 35 U.S.C. 41(g).
Regulatory Flexibility Act: As prior notice and an opportunity for
public comment are not required pursuant to 5 U.S.C. 553 (or any other
law), neither a regulatory flexibility analysis nor a certification
under the Regulatory Flexibility Act (5 U.S.C. 601 et seq.) are
required. See 5 U.S.C. 603.
Executive Order 13132: This rule making does not contain policies
with federalism implications sufficient to warrant preparation of a
Federalism Assessment under Executive Order 13132 (Aug. 4, 1999).
Executive Order 12866: This rule making has been determined to be
not significant for purposes of Executive Order 12866 (Sept. 30, 1993).
Paperwork Reduction Act: This final rule involves information
collection requirements that are subject to review by the Office of
Management and Budget (OMB) under the Paperwork Reduction Act of 1995
(44 U.S.C. 3501 et seq.). The collections of information involved in
this final rule have been reviewed and previously approved by OMB under
the following 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 because the
changes in this final rule do not affect the information collection
requirements associated with the information collections under these
OMB control numbers.
The title, description and respondent description of each of the
information collections are shown below with an estimate of each of the
annual reporting burdens. Included in each estimate is the time for
reviewing instructions, gathering and maintaining the data needed, and
completing and reviewing the collection of information.
OMB Number: 0651-0016.
Title: Rules for Patent Maintenance Fees.
Form Numbers: PTO/SB/45/47/65/66.
Type of Review: Approved through May of 2006.
Affected Public: Individuals or Households, Business or Other
For-Profit Institutions, Not-For-Profit Institutions and Federal
Government.
Estimated Number of Respondents: 348,140.
Estimated Time Per Response: Between 20 seconds and 8 hours.
Estimated Total Annual Burden Hours: 30,735 hours.
Needs and Uses: Maintenance fees are required to maintain a patent,
except for design or plant patents, in force under 35 U.S.C. 41(b).
Payment of maintenance fees are required at 3 1/2, 7 1/2 and 11 1/2
years after the grant of the patent. A patent number and application
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number of the patent on which maintenance fees are paid are required in
order to ensure proper crediting of such payments.
OMB Number: 0651-0021.
Title: Patent Cooperation Treaty.
Form Numbers: PCT/RO/101, PCT/RO/134, PCT/IPEA/401, PTO-1382,
PTO-1390, PTO/SB/61/PCT, PTO/SB/64/PCT, PCT/Model of power of attorney,
PCT/Model of general power of attorney.
Type of Review: Approved through March of 2007.
Affected Public: Individuals or Households, Business or Other
For-Profit Institutions, Not-for-Profit Institutions, Farms, Federal
Government, and State, Local or Tribal Government.
Estimated Number of Respondents: 355,655.
Estimated Time Per Response: Between 15 minutes and 8 hours.
Estimated Total Annual Burden Hours: 347,889.
Needs and Uses: The information collected is required by the Patent
Cooperation Treaty (PCT). The general purpose of the PCT is to simplify
the filing of patent applications on the same invention in different
countries. It provides for a centralized filing procedure and a
standardized application format.
OMB Number: 0651-0031.
Title: Patent Processing (Updating).
Form Numbers: PTO/SB/08A, PTO/SB/08B, PTO/SB/17i, PTO/SB/17p,
PTO/SB/21-27, PTO/SB/30-37, PTO/SB/42-43, PTO/SB/61-64, PTO/SB/64a,
PTO/SB/67-68, PTO/SB/91-92, PTO/SB/96-97, PTO-2053-A/B, PTO-2054-A/B,
PTO-2055-A/B, PTOL-413A.
Type of Review: Approved through July of 2006.
Affected Public: Individuals or Households, Business or Other
For-Profit Institutions, Not-for-Profit Institutions, Farms, Federal
Government and State, Local and Tribal Governments.
Estimated Number of Respondents: 2,281,439.
Estimated Time Per Response: 1 minute and 48 seconds to 8 hours.
Estimated Total Annual Burden Hours: 2,731,841 hours.
Needs and Uses: During the processing for an application for a
patent, the applicant/agent may be required or desire to submit
additional information to the United States Patent and Trademark Office
concerning the examination of a specific application. The specific
information required or which may be submitted includes: Information
disclosure statements and citations, requests for extensions of time,
the establishment of small entity status; abandonment and revival of
abandoned applications, disclaimers, requests for expedited examination
of design applications, transmittal forms, requests to inspect, copy
and access patent applications, nonpublication requests, certificates
of mailing or transmission, submission of priority documents and
amendments.
OMB Number: 0651-0032.
Title: Initial Patent Application.
Form Number: PTO/SB/01-07, PTO/SB/13PCT, PTO/SB/16-19, PTO/SB/29
and 29A, PTO/SB/101-110, Electronic New Utility and Provisional
Application Forms.
Type of Review: Approved through July of 2006.
Affected Public: Individuals or Households, Business or Other
For-Profit Institutions, Not-For-Profit Institutions, Farms, Federal
Government, and State, Local, or Tribal Governments.
Estimated Number of Respondents: 454,287.
Estimated Time Per Response: 22 minutes to 10 hours and 45 minutes.
Estimated Total Annual Burden Hours: 4,171,568 hours.
Needs and Uses: The purpose of this information collection is to
permit the Office to determine whether an application meets the
criteria set forth in the patent statute and regulations. The standard
Fee Transmittal form, New Utility Patent Application Transmittal form,
New Design Patent Application Transmittal form, New Plant Patent
Application Transmittal form, Declaration, Provisional Application
Cover Sheet, and Plant Patent Application Declaration will assist
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applicants in complying with the requirements of the patent statute and
regulations, and will further assist the Office in processing and
examination of the application.
OMB Number: 0651-0033.
Title: Post Allowance and Refiling.
Form Numbers: PTO/SB/44, PTO/SB/50-51, PTO/SB/51S, PTO/SB/52-53,
PTO/SB/56-58, PTOL-85B.
Type of Review: Approved through April of 2007.
Affected Public: Individuals or Households, Business or Other
For-Profit Institutions, Not-For-Profit Institutions, Farms, State, Local
and Tribal Governments, and Federal Government.
Estimated Number of Respondents: 223,411.
Estimated Time Per Response: 1.8 minutes to 2 hours.
Estimated Total Annual Burden Hours: 67,261 hours.
Needs and Uses: This collection of information is required to
administer the patent laws pursuant to Title 35, U.S.C., concerning the
issuance of patents and related actions including correcting errors in
printed patents, refiling of patent applications, requesting
reexamination of a patent, and requesting a reissue patent to correct
an error in a patent. The affected public includes any individual or
institution whose application for a patent has been allowed or who
takes action as covered by the applicable rules.
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 Robert J. Spar, Director, Office of Patent Legal
Administration, United States Patent and Trademark Office, P.O. Box
1450, Alexandria, VA 22313-1450, or to the Office of Information and
Regulatory Affairs of OMB, New Executive Office Building, 725 17th
Street, NW., Room 10235, Washington, DC 20503, Attention: Desk Officer
for the United States Patent and Trademark Office.
Notwithstanding any other provision of law, no person is required
to respond to nor shall a person be subject to a penalty for failure to
comply with a collection of information subject to the requirements of
the Paperwork Reduction Act unless that collection of information
displays a currently valid OMB control number.
List of Subjects
37 CFR Part 1
Administrative practice and procedure, Courts, Freedom of
information, Inventions and patents, Reporting and 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
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 revised 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)) - $75.00.
By a small entity (Sec. 1.27(a)) - $150.00.
By other than a small entity - $300.00.
(2) For an application filed before December 8, 2004:
By a small entity (Sec. 1.27(a)) - $395.00.
By other than a small entity - $790.00.
(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)) - $100.00.
By other than a small entity - $200.00.
(2) For an application filed before December 8, 2004:
By a small entity (Sec. 1.27(a)) - $175.00.
By other than a small entity - $350.00.
(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)) - $100.00.
By other than a small entity - $200.00.
(2) For an application filed before December 8, 2004:
By a small entity (Sec. 1.27(a)) - $275.00.
By other than a small entity - $550.00.
(d) Basic fee for filing each provisional application:
By a small entity (Sec. 1.27(a)) - $100.00.
By other than a small entity - $200.00.
(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)) - $150.00.
By other than a small entity - $300.00.
(2) For an application filed before December 8, 2004:
By a small entity (Sec. 1.27(a)) - $395.00.
By other than a small entity - $790.00.
(f) Surcharge for filing the basic filing fee or oath or
declaration on a date later than the filing date of the application,
except provisional applications:
By a small entity (Sec. 1.27(a)) - $65.00.
By other than a small entity - $130.00.
(g) Surcharge for filing the basic filing fee or cover sheet (Sec.
1.51(c)(1)) on a date later than the filing date of the provisional
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application:
By a small entity (Sec. 1.27(a)) - $25.00.
By other than a small entity - $50.00.
(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 (Sec. 1.27(a)) - $100.00.
By other than a small entity - $200.00.
(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)) - $25.00.
By other than a small entity - $50.00.
(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)) - $180.00.
By other than a small entity - $360.00.
(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)) - $250.00.
By other than a small entity - $500.00.
(l) Search fee for each application filed on or after December 8,
2004, for an original design patent:
By a small entity (Sec. 1.27(a)) - $50.00.
By other than a small entity - $100.00.
(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)) - $150.00.
By other than a small entity - $300.00.
(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)) - $250.00.
By other than a small entity - $500.00.
(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)) - $100.00.
By other than a small entity - $200.00.
(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)) - $65.00.
By other than a small entity - $130.00.
(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)) - $80.00.
By other than a small entity - $160.00.
(r) Examination 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)) - $300.00.
By other than a small entity - $600.00.
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(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)) - $125.00.
By other than a small entity - $250.00.
Note to Sec. 1.16: See Secs. 1.445, 1.482 and 1.492 for
international application filing and processing fees.
3. Section 1.17 is amended by revising paragraphs (a), (l) and (m) to
read as follows:
Sec. 1.17 Patent application and reexamination processing fees.
(a) Extension fees pursuant to Sec. 1.136(a):
(1) For reply within first month:
By a small entity (Sec. 1.27(a)) - $60.00.
By other than a small entity - $120.00.
(2) For reply within second month:
By a small entity (Sec. 1.27(a)) - $225.00.
By other than a small entity - $450.00.
(3) For reply within third month:
By a small entity (Sec. 1.27(a)) - $510.00.
By other than a small entity - $1,020.00.
(4) For reply within fourth month:
By a small entity (Sec. 1.27(a)) - $795.00.
By other than a small entity - $1,590.00.
(5) For reply within fifth month:
By a small entity (Sec. 1.27(a)) - $1,080.00.
By other than a small entity - $2,160.00.
* * * * *
(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)) - $250.00.
By other than a small entity - $500.00.
(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)) - $750.00.
By other than a small entity - $1,500.00.
* * * * *
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.
(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)) - $700.00.
By other than a small entity - $1,400.00.
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(b) Issue fee for issuing an original design patent:
By a small entity (Sec. 1.27(a)) - $400.00.
By other than a small entity - $800.00.
(c) Issue fee for issuing an original plant patent:
By a small entity (Sec. 1.27(a)) - $550.00.
By other than a small entity - $1,100.00.
* * * * *
5. Section 1.20 is amended by revising paragraphs (c) through (g) to
read as follows:
Sec. 1.20 Post issuance fees.
* * * * *
(c) In reexamination proceedings
(1) For filing a request for ex parte reexamination (Sec.
1.510(a)) - $2,520.00.
(2) For filing a request for inter partes reexamination (Sec.
1.915(a)) - $8,800.00.
(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)) - $100.00.
By other than a small entity - $200.00.
(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)) - $25.00.
By other than a small entity - $50.00.
(5) If the excess claims fees required by paragraphs (c)(3) and
(c)(4) are not paid with the request for reexamination or on later
presentation of the claims for which the excess claims fees are due,
the fees required by paragraphs (c)(3) and (c)(4) must be paid or the
claims canceled by amendment prior to the expiration of the time period
set for reply by the Office in any notice of fee deficiency in order to
avoid abandonment.
(d) For filing each statutory disclaimer (Sec. 1.321):
By a small entity (Sec. 1.27(a)) - $65.00.
By other than a small entity - $130.00.
(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)) - $450.00.
By other than a small entity - $900.00.
(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)) - $1,150.00.
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By other than a small entity - $2,300.00.
(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)) - $1,900.00.
By other than a small entity - $3,800.00.
* * * * *
6. Section 1.27 is amended by revising paragraphs (b) and (c)(3) to
read as follows:
Sec. 1.27 Definition of small entities and establishing status as a
small entity to permit payment of small entity fees; when a
determination of entitlement to small entity status and notification of
loss of entitlement to small entity status are required; fraud on the
Office.
* * * * *
(b) Establishment of small entity status permits payment of reduced
fees.
(1) A small entity, as defined in paragraph (a) of this section,
who has properly asserted entitlement to small entity status pursuant
to paragraph (c) of this section will be accorded small entity status
by the Office in the particular application or patent in which
entitlement to small entity status was asserted. Establishment of small
entity status allows the payment of certain reduced patent fees
pursuant to 35 U.S.C. 41(h)(1).
(2) Submission of an original utility application in compliance
with the Office electronic filing system by an applicant who has
properly asserted entitlement to small entity status pursuant to
paragraph (c) of this section in that application allows the payment of
a reduced filing fee pursuant to 35 U.S.C. 41(h)(3).
(c) * * *
(3) Assertion by payment of the small entity basic filing or basic
national fee. The payment, by any party, of the exact amount of one of
the small entity basic filing fees set forth in Secs. 1.16(a),
1.16(b), 1.16(c), 1.16(d), 1.16(e), or the small entity basic national
fee set forth in Sec. 1.492(a), will be treated as a written assertion
of entitlement to small entity status even if the type of basic filing
or basic national fee is inadvertently selected in error.
(i) If the Office accords small entity status based on payment of a
small entity basic filing or basic national fee under paragraph (c)(3)
of this section that is not applicable to that application, any balance
of the small entity fee that is applicable to that application will be
due along with the appropriate surcharge set forth in Sec. 1.16(f), or
Sec. 1.16(g).
(ii) The payment of any small entity fee other than those set forth
in paragraph (c)(3) of this section (whether in the exact fee amount or
not) will not be treated as a written assertion of entitlement to small
entity status and will not be sufficient to establish small entity
status in an application or a patent.
* * * * *
7. Section 1.33 is amended by revising paragraph (c) to read as
follows:
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Sec. 1.33 Correspondence respecting patent applications,
reexamination proceedings, and other proceedings.
* * * * *
(c) All notices, official letters, and other communications for the
patent owner or owners in a reexamination proceeding will be directed
to the attorney or agent of record (see Sec. 1.32(b)) in the patent
file at the address listed on the register of patent attorneys and
agents maintained pursuant to Secs. 11.5 and 11.11 of this
subchapter, or, if no attorney or agent is of record, to the patent
owner or owners at the address or addresses of record. Amendments and
other papers filed in a reexamination proceeding on behalf of the
patent owner must be signed by the patent owner, or if there is more
than one owner by all the owners, or by an attorney or agent of record
in the patent file, or by a registered attorney or agent not of record
who acts in a representative capacity under the provisions of Sec.
1.34. Double correspondence with the patent owner or owners and the
patent owner's attorney or agent, or with more than one attorney or
agent, will not be undertaken. If more than one attorney or agent is of
record and a correspondence address has not been specified,
correspondence will be held with the last attorney or agent made of
record.
* * * * *
8. Section 1.51 is amended by revising paragraphs (b)(4) and (c)(4) to
read as follows:
Sec. 1.51 General requisites of an application.
* * * * *
(b) * * *
(4) The prescribed filing fee, search fee, examination fee, and
application size fee, see Sec. 1.16.
(c) * * *
(4) The prescribed filing fee and application size fee, see Sec. 1.16.
* * * * *
9. Section 1.52 is amended by revising the heading and adding paragraph
(f) to read as follows:
Sec. 1.52 Language, paper, writing, margins, compact disc specifications.
* * * * *
(f)(1) Any sequence listing in an electronic medium in compliance
with Secs. 1.52(e) and 1.821(c) or (e), and any computer program
listing filed in an electronic medium in compliance with Secs.
1.52(e) and 1.96, will be excluded when determining the application
size fee required by Sec. 1.16(s) or Sec. 1.492(j).
(2) Except as otherwise provided in this paragraph, the paper size
equivalent of the specification and drawings of an application
submitted via the Office electronic filing system will be considered to
be the number of sheets of paper present in the specification and
drawings of the application when entered into the Office file wrapper
after being rendered by the Office electronic filing system for
purposes of computing the application size fee required by Sec.
1.16(s). Any sequence listing in compliance with Sec. 1.821(c) or (e),
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and any computer program listing in compliance with Sec. 1.96, submitted
via the Office electronic filing system will be excluded when determining
the application size fee required by Sec. 1.16(s) if the listing is
submitted in ACSII text as part of an associated file.
10. Section 1.53 is amended by revising paragraphs (c)(3), (f) and (g)
to read as follows:
Sec. 1.53 Application number, filing date, and completion of application.
* * * * *
(c) * * *
(3) A provisional application filed under paragraph (c) of this
section may be converted to a nonprovisional application filed under
paragraph (b) of this section and accorded the original filing date of
the provisional application. The conversion of a provisional
application to a nonprovisional application will not result in either
the refund of any fee properly paid in the provisional application or
the application of any such fee to the filing fee, or any other fee,
for the nonprovisional application. Conversion of a provisional
application to a nonprovisional application under this paragraph will
result in the term of any patent to issue from the application being
measured from at least the filing date of the provisional application
for which conversion is requested. Thus, applicants should consider
avoiding this adverse patent term impact by filing a nonprovisional
application claiming the benefit of the provisional application under
35 U.S.C. 119(e) (rather than converting the provisional application
into a nonprovisional application pursuant to this paragraph). A
request to convert a provisional application to a nonprovisional
application must be accompanied by the fee set forth in Sec. 1.17(i)
and an amendment including at least one claim as prescribed by the
second paragraph of 35 U.S.C. 112, unless the provisional application
under paragraph (c) of this section otherwise contains at least one
claim as prescribed by the second paragraph of 35 U.S.C. 112. The
nonprovisional application resulting from conversion of a provisional
application must also include the filing fee, search fee, and
examination fee for a nonprovisional application, an oath or
declaration by the applicant pursuant to Secs. 1.63, 1.162, or
1.175, and the surcharge required by Sec. 1.16(f) if either the basic
filing fee for a nonprovisional application or the oath or declaration
was not present on the filing date accorded the resulting
nonprovisional application (i.e., the filing date of the original
provisional application). A request to convert a provisional
application to a nonprovisional application must also be filed prior to
the earliest of:
(i) Abandonment of the provisional application filed under
paragraph (c) of this section; or
(ii) Expiration of twelve months after the filing date of the
provisional application filed under paragraph (c) of this section.
* * * * *
(f) Completion of application subsequent to filing - Nonprovisional
(including continued prosecution or reissue) application.
(1) If an application which has been accorded a filing date
pursuant to paragraph (b) or (d) of this section does not include the
basic filing fee, the search fee, or the examination fee, or if an
application which has been accorded a filing date pursuant to paragraph
(b) of this section does not include an oath or declaration by the
applicant pursuant to Secs. 1.63, 1.162 or Sec. 1.175, and
applicant has provided a correspondence address (Sec. 1.33(a)),
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applicant will be notified and given a period of time within which to
pay the basic filing fee, search fee, and examination fee, file an oath
or declaration in an application under paragraph (b) of this section,
and pay the surcharge if required by Sec. 1.16(f) to avoid abandonment.
(2) If an application which has been accorded a filing date
pursuant to paragraph (b) of this section does not include the basic
filing fee, the search fee, the examination fee, or an oath or
declaration by the applicant pursuant to Secs. 1.63, 1.162 or
Sec. 1.175, and applicant has not provided a correspondence address
(Sec. 1.33(a)), applicant has two months from the filing date of the
application within which to pay the basic filing fee, search fee, and
examination fee, file an oath or declaration, and pay the surcharge if
required by Sec. 1.16(f) to avoid abandonment.
(3) If the excess claims fees required by Secs. 1.16(h) and
(i) and multiple dependent claim fee required by Sec. 1.16(j) are not
paid on filing or on later presentation of the claims for which the
excess claims or multiple dependent claim fees are due, the fees
required by Secs. 1.16(h), (i), and (j) must be paid or the claims
canceled by amendment prior to the expiration of the time period set
for reply by the Office in any notice of fee deficiency. If the
application size fee required by Sec. 1.16(s) (if any) is not paid on
filing or on later presentation of the amendment necessitating a fee or
additional fee under Sec. 1.16(s), the fee required by Sec. 1.16(s)
must be paid prior to the expiration of the time period set for reply
by the Office in any notice of fee deficiency in order to avoid
abandonment.
(4) This paragraph applies to continuation or divisional
applications under paragraphs (b) or (d) of this section and to
continuation-in-part applications under paragraph (b) of this section.
See Sec. 1.63(d) concerning the submission of a copy of the oath or
declaration from the prior application for a continuation or divisional
application under paragraph (b) of this section.
(5) If applicant does not pay one of the basic filing or the
processing and retention fees (Sec. 1.21(l)) during the pendency of
the application, the Office may dispose of the application.
(g) Completion of application subsequent to filing - Provisional
application.
(1) If a provisional application which has been accorded a filing
date pursuant to paragraph (c) of this section does not include the
cover sheet required by Sec. 1.51(c)(1) or the basic filing fee (Sec.
1.16(d)), and applicant has provided a correspondence address (Sec.
1.33(a)), applicant will be notified and given a period of time within
which to pay the basic filing fee, file a cover sheet (Sec.
1.51(c)(1)), and pay the surcharge required by Sec. 1.16(g) to avoid
abandonment.
(2) If a provisional application which has been accorded a filing
date pursuant to paragraph (c) of this section does not include the
cover sheet required by Sec. 1.51(c)(1) or the basic filing fee (Sec.
1.16(d)), and applicant has not provided a correspondence address
(Sec. 1.33(a)), applicant has two months from the filing date of the
application within which to pay the basic filing fee, file a cover
sheet (Sec. 1.51(c)(1)), and pay the surcharge required by Sec.
1.16(g) to avoid abandonment.
(3) If the application size fee required by Sec. 1.16(s) (if any)
is not paid on filing, the fee required by Sec. 1.16(s) must be paid
prior to the expiration of the time period set for reply by the Office
in any notice of fee deficiency in order to avoid abandonment.
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(4) If applicant does not pay the basic filing fee during the
pendency of the application, the Office may dispose of the application.
* * * * *
11. Section 1.69 is amended by revising paragraph (b) to read as
follows:
Sec. 1.69 Foreign language oaths and declarations.
* * * * *
(b) Unless the text of any oath or declaration in a language other
than English is in a form provided by the Patent and Trademark Office or in
accordance with PCT Rule 4.17(iv), it must be accompanied by an English
translation together with a statement that the translation is accurate,
except that in the case of an oath or declaration filed under Sec.
1.63, the translation may be filed in the Office no later than two
months from the date applicant is notified to file the translation.
12. Section 1.75 is amended by revising paragraph (c) to read as follows:
Sec. 1.75 Claim(s).
* * * * *
(c) One or more claims may be presented in dependent form,
referring back to and further limiting another claim or claims in the
same application. Any dependent claim which refers to more than one
other claim ("multiple dependent claim") shall refer to such other
claims in the alternative only. A multiple dependent claim shall not
serve as a basis for any other multiple dependent claim. For fee
calculation purposes under Sec. 1.16, a multiple dependent claim will
be considered to be that number of claims to which direct reference is
made therein. For fee calculation purposes also, any claim depending
from a multiple dependent claim will be considered to be that number of
claims to which direct reference is made in that multiple dependent
claim. In addition to the other filing fees, any original application
which is filed with, or is amended to include, multiple dependent
claims must have paid therein the fee set forth in Sec. 1.16(j).
Claims in dependent form shall be construed to include all the
limitations of the claim incorporated by reference into the dependent
claim. A multiple dependent claim shall be construed to incorporate by
reference all the limitations of each of the particular claims in
relation to which it is being considered.
* * * * *
13. Section 1.78 is amended by revising paragraph (a)(4) to read as
follows:
Sec. 1.78 Claiming benefit of earlier filing date and cross-references
to other applications.
(a) * * *
(4) A nonprovisional application, other than for a design patent,
or an international application designating the United States of
America may claim an invention disclosed in one or more prior-filed
provisional applications. In order for an application to claim the
benefit of one or more prior-filed provisional applications, each
prior-filed provisional application must name as an inventor at least
one inventor named in the later-filed application and disclose the
named inventor's invention claimed in at least one claim of the later-filed
application in the manner provided by the first paragraph of 35
U.S.C. 112. In addition, each prior-filed provisional application must
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be entitled to a filing date as set forth in Sec. 1.53(c), and the
basic filing fee set forth in Sec. 1.16(d) must be paid within the
time period set forth in Sec. 1.53(g).
* * * * *
14. Section 1.84 is amended by revising paragraph (y) to read as follows:
Sec. 1.84 Standards for drawings.
* * * * *
(y) Types of drawings. See Sec. 1.152 for design drawings, Sec.
1.165 for plant drawings, and Sec. 1.173(a)(2) for reissue drawings.
15. Section 1.111 is amended by revising the first sentence of
paragraph (a)(2)(i) to read as follows:
Sec. 1.111 Reply by applicant or patent owner to a non-final Office
action.
(a) * * *
(2) * * * (i) A reply that is supplemental to a reply that is in
compliance with Sec. 1.111(b) will not be entered as a matter of right
except as provided in paragraph (a)(2)(ii) of this section. * * *
* * * * *
16. Section 1.136 is amended by revising the fourth sentence of
paragraph (b) to read as follows:
Sec. 1.136 Extensions of time.
* * * * *
(b) * * * See Sec. 1.304 for extensions of time to appeal to the
U.S. Court of Appeals for the Federal Circuit or to commence a civil
action; Sec. 1.550(c) for extensions of time in ex parte reexamination
proceedings; Sec. 1.956 for extensions of time in inter partes
reexamination proceedings; and Secs. 41.4(a) and 41.121(a)(3) of
this title for extensions of time in contested cases before the Board
of Patent Appeals and Interferences. * * *
* * * * *
17. Section 1.211 is amended by revising paragraph (c) to read as
follows:
Sec. 1.211 Publication of applications.
* * * * *
(c) An application filed under 35 U.S.C. 111(a) will not be
published until it includes the basic filing fee (Sec. 1.16(a) or
1.16(c)), any English translation required by Sec. 1.52(d), and an
executed oath or declaration under Sec. 1.63. The Office may delay
publishing any application until it includes any application size fee
required by the Office under Sec. 1.16(s) or Sec. 1.492(j), a
specification having papers in compliance with Sec. 1.52 and an
abstract (Sec. 1.72(b)), drawings in compliance with Sec. 1.84, and a
sequence listing in compliance with Secs. 1.821 through 1.825 (if
applicable), and until any petition under Sec. 1.47 is granted.
* * * * *
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18. Section 1.324 is amended by revising the second sentence of
paragraph (a) to read as follows:
Sec. 1.324 Correction of inventorship in patent, pursuant to 35
U.S.C. 256.
(a) * * * A petition to correct inventorship of a patent involved
in an interference must comply with the requirements of this section
and must be accompanied by a motion under Sec. 41.121(a)(2) or Sec.
41.121(a)(3) of this title.
* * * * *
19. Section 1.445 is amended by revising paragraph (a)(2) to read as
follows:
Sec. 1.445 International application filing, processing and search
fees.
(a) * * *
(2) A search fee (see 35 U.S.C. 361(d) and PCT Rule 16):
(i) If a corresponding prior United States national application
under 35 U.S.C. 111(a) has been filed on or after December 8, 2004, the
basic filing fee under Sec. 1.16(a), search fee under Sec. 1.16(k),
and examination fee under Sec. 1.16(o) have been paid therein, and the
corresponding prior United States national application is identified by
application number, if known, or if the application number is not known
by the filing date, title, and name of applicant (and preferably the
application docket number), in the international application or
accompanying papers at the time of filing the international
application - $300.00.
(ii) If a corresponding prior United States national application
under 35 U.S.C. 111(a) has been filed before December 8, 2004, the
basic filing fee under Sec. 1.16 has been paid therein, and the
corresponding prior United States national application is identified by
application number, if known, or if the application number is not known
by the filing date, title, and name of applicant (and preferably the
application docket number), in the international application or
accompanying papers at the time of filing the international
application - $300.00.
(iii) For all situations not provided for in paragraphs (a)(2)(i)
or (a)(2)(ii) of this section - $1000.00.
* * * * *
20. Section 1.492 is revised to read as follows:
Sec. 1.492 National stage fees.
The following fees and charges are established for international
applications entering the national stage under 35 U.S.C. 371:
(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)) - $150.00.
By other than a small entity - $300.00.
(b) Search fee for an international application entering the
national stage under 35 U.S.C. 371 if the basic national fee was not
paid before December 8, 2004:
By a small entity (Sec. 1.27(a)) - $250.00.
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By other than a small entity - $500.00.
(c) The examination fee for an international application entering
the national stage under 35 U.S.C. 371 if the basic national fee was
not paid before December 8, 2004:
By a small entity (Sec. 1.27(a)) - $100.00.
By other than a small entity - $200.00.
(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)) - $100.00.
By other than a small entity - $200.00.
(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)) - $25.00.
By other than a small entity - $50.00.
(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 (Sec. 1.27(a)) - $180.00.
By other than a small entity - $360.00.
(g) If the excess claims fees required by paragraphs (d) and (e) of
this section and multiple dependent claim fee required by paragraph (f)
of this section are not paid with the basic national fee or on later
presentation of the claims for which the excess claims or multiple
dependent claim fees are due, the fees required by paragraphs (d), (e),
and (f) of this section must be paid or the claims canceled by
amendment prior to the expiration of the time period set for reply by
the Office in any notice of fee deficiency in order to avoid
abandonment.
(h) Surcharge for filing the oath or declaration later than thirty
months from the priority date pursuant to Sec. 1.495(c):
By a small entity (Sec. 1.27(a)) - $65.00.
By other than a small entity - $130.00.
(i) For filing an English translation of an international
application or of any annexes to an international preliminary
examination report later than thirty months after the priority date
(Secs. 1.495(c) and (e)) - $130.00.
(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)) - $125.00.
By other than a small entity - $250.00.
21. Section 1.495 is amended by revising paragraph (c) to read as
follows:
Sec. 1.495 Entering the national stage in the United States of America.
* * * * *
(c)(1) If applicant complies with paragraph (b) of this section
before expiration of thirty months from the priority date, the Office
will notify the applicant if he or she has omitted any of:
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US PATENT AND TRADEMARK OFFICE |
1373 CNOG 413 |
(i) A translation of the international application, as filed, into
the English language, if it was originally filed in another language
(35 U.S.C. 371(c)(2));
(ii) The oath or declaration of the inventor (35 U.S.C. 371(c)(4)
and Sec. 1.497), if a declaration of inventorship in compliance with
Sec. 1.497 has not been previously submitted in the international
application under PCT Rule 4.17(iv) within the time limits provided for
in PCT Rule 26ter.1;
(iii) The search fee set forth in Sec. 1.492(b);
(iv) The examination fee set forth in Sec. 1.492(c); and
(v) Any application size fee required by Sec. 1.492(j).
(2) A notice under paragraph (c)(1) of this section will set a
period of time within which applicant must provide any omitted
translation, oath or declaration of the inventor, search fee set forth
in Sec. 1.492(b), examination fee set forth in Sec. 1.492(c), and any
application size fee required by Sec. 1.492(j) in order to avoid
abandonment of the application.
(3) The payment of the processing fee set forth in Sec. 1.492(i)
is required for acceptance of an English translation later than the
expiration of thirty months after the priority date. The payment of the
surcharge set forth in Sec. 1.492(h) is required for acceptance of the
oath or declaration of the inventor later than the expiration of thirty
months after the priority date.
(4) A "Sequence Listing" need not be translated if the "Sequence
Listing" complies with PCT Rule 12.1(d) and the description complies
with PCT Rule 5.2(b).
* * * * *
PART 41 - PRACTICE BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES
22. 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.
23. 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) - $250.00.
By other than a small entity - $500.00.
(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) - $250.00.
By other than a small entity - $500.00.
(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) of this title) - $500.00.
By other than a small entity - $1,000.00.
January 18, 2005 JON W. DUDAS
Under Secretary of Commerce for
Intellectual Property and
Director of the United States
Patent and Trademark Office
[1291 OG 133]