| Fees, Deposit Accounts, Credit Cards, Refunds, etc. |
Referenced Items (80, 81, 82, 83, 84, 85, 86, 87, 88, 89, 90, 91, 92, 93, 94, 95, 96, 97, 98, 99, 100, 101, 102, 103, 104, 105, 106, 107) |
(80) DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
37 CFR Parts 1, 41, and 42
[Docket No. PTO-C-2011-0008]
RIN 0651-AC54
Setting and Adjusting Patent Fees
AGENCY: United States Patent and Trademark Office, Department of Commerce.
ACTION: Notice of proposed rulemaking.
SUMMARY: The United States Patent and Trademark Office (Office or
USPTO) proposes to set or adjust patent fees as authorized by the
Leahy-Smith America Invents Act (Act or AIA). The proposed fees will
provide the Office with a sufficient amount of aggregate revenue to
recover its aggregate cost of patent operations, while helping the
Office implement a sustainable funding model, reduce the current patent
application backlog, decrease patent pendency, improve patent quality,
and upgrade the Office's patent business information technology (IT)
capability and infrastructure. The Office also proposes to reduce fees
for micro entities under section 10(b) of the Act (75 percent discount).
The proposed fees also will further key policy considerations. For example,
the proposal includes multipart and staged fees for requests for continued
examination and appeals, both of which aim to increase patent prosecution
options for applicants.
DATES: The Office solicits comments from the public on this proposed
rulemaking. Written comments must be received on or before November 5,
2012 to ensure consideration.
ADDRESSES: Comments should be sent by electronic mail message over the
Internet addressed to: fee.setting@uspto.gov. Comments may also be
submitted by postal mail addressed to: Mail Stop - Office of the Chief
Financial Officer, Director of the United States Patent and Trademark
Office, P.O. Box 1450, Alexandria, VA 22313-1450, marked to the
attention of "Michelle Picard." Comments may also be sent by
electronic mail message over the Internet via the Federal eRulemaking
Portal. See the Federal eRulemaking Portal Web site
(http://www.regulations.gov) for additional instructions on providing
comments via the Federal eRulemaking Portal.
Although comments may be submitted by postal mail, the Office
prefers to receive comments by electronic mail message over the
Internet, which allows the Office to more easily share comments with
the public. Electronic comments are preferred to be submitted in plain
text, but also may be submitted in ADOBE[supreg] portable document
format or MICROSOFT WORD[supreg] format. Comments not submitted
electronically should be submitted on paper in a format that
facilitates convenient digital scanning into ADOBE[supreg] portable
document format.
The comments will be available for public inspection via the
Office's Internet Web site (http://www.uspto.gov). Because comments
will be made available for public inspection, information that the
submitter does not desire to make public, such as an address or phone
number, should not be included in the comments.
FOR FURTHER INFORMATION CONTACT: Michelle Picard, Office of the Chief
Financial Officer, by telephone at (571) 272-6354; or Dianne Buie,
Office of Planning and Budget, by telephone at (571) 272-6301.
SUPPLEMENTARY INFORMATION:
I. Executive Summary
A. Purpose of This Action
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The Office proposes these rules under section 10 of the Act
(section 10), which authorizes the Director of the USPTO to set or
adjust by rule any patent fee established, authorized, or charged under
Title 35, United States Code (U.S.C.) for any services performed by, or
materials furnished by, the Office. Section 10 prescribes that fees may
be set or adjusted only to recover the aggregate estimated costs to the
Office for processing, activities, services, and materials relating to
patents, including administrative costs to the Office with respect to
such patent operations. Section 10 authority includes flexibility to
set individual fees in a way that furthers key policy considerations,
while taking into account the cost of the respective services. Section
10 also establishes certain procedural requirements for setting or
adjusting fee regulations, such as public hearings and input from the
Patent Public Advisory Committee and oversight by Congress.
The fee schedule proposed under section 10 in this rulemaking will
recover the aggregate estimated costs of the Office while achieving
strategic and operational goals, such as implementing a sustainable
funding model, reducing the current patent application backlog,
decreasing patent pendency, improving patent quality, and upgrading the
patent IT business capability and infrastructure.
The United States economy depends on high quality and timely
patents to protect new ideas and investments for business and job
growth. The Office estimates that the additional aggregate revenue
derived from the proposed fee schedule will enable a decrease in total
patent pendency by 12 months for the five-year planning horizon (FY
2013-FY 2017), thus permitting a patentee to obtain a patent sooner
than he or she would have under the status quo fee schedule. The
additional revenue from the proposed fee schedule will also recover the
aggregate cost of building a three-month patent operating reserve by FY
2017, thereby continuing to build a sustainable funding model that will
aid the Office in maintaining shorter pendency and a smaller backlog.
The proposed rule will also advance key policy considerations,
while taking into account the cost of individual services. For example,
the proposal includes multipart and staged fees for requests for
continued examination and appeals, both of which aim to increase patent
prosecution options for applicants. Also, this rule would include a new
75 percent fee reduction for micro entities, and expand the
availability of the 50 percent fee reduction for small entities as
required under section 10, providing small entities a discount on more
than 25 patent fees that do not currently qualify for a small entity
discount. All in all, as a result of these proposed adjustments to
patent fees, for all applicants the routine fees to obtain a patent
(i.e., filing, search, examination, publication, and issue fees) will
decrease by at least 22 percent relative to the current fee schedule.
B. Parallel Rulemaking
January and February 2012 Proposed Rules. In January and February
2012, the Office proposed rules setting fees for the new patent-related
services authorized by the Act using its rulemaking authority under 35
U.S.C. 41(d). The Office proposed those rules under section 41(d)
because fees for the new patent-related services must be in place one
year from the AIA's enactment (September 16, 2012) and because the
Office would not finish with its section 10 rulemaking by that date.
Unlike section 10 of the Act, section 41(d) of title 35 of the
U.S.C. requires the Office to set fees for processing, services, or
materials relating to patents at amounts to recover the estimated
average cost to the Office of the particular processing, activity,
service, or material per action (as opposed to the aggregate cost of
all processing, activities, services and material). 35 U.S.C. 41(d)(2).
On January 5, 2012 (77 FR 448), the Office proposed fees for filing third
party submissions; on January 25, 2012 (77 FR 3666), the Office proposed
fees for ex parte reexaminations and supplemental examinations; on February
9, 2012 (77 FR 6879), the Office proposed fees for inter partes
reviews, post-grant reviews, covered business method reviews, and
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derivation proceedings. Collectively, these rules are referred to
herein as the "January and February 2012 Proposed Rules."
The fees proposed in the January and February 2012 Proposed Rules
are set to recover the Office's costs per action under section 41(d),
as opposed to the Office's aggregate costs for all patent-related
activities under section 10. The Office intends to finalize fees
proposed in the January and February 2012 Proposed Rules within the
coming months to meet its implementation obligations under the Act to
institute certain new services. However, the Office anticipates that
the fees in those final rules will only be needed on a temporary basis,
from September 16, 2012, until this rulemaking becomes final. The
instant notice of proposed rulemaking (NPRM) does not reopen the
comment period for the January and February 2012 Proposed Rules.
Rather, this NPRM establishes a different comment period for setting
and adjusting fees under section 10. In sum, this parallel rulemaking
is necessary so that the Office can comply with both the Act's one-year
deadline for instituting certain new services, and commence the lengthier
process under section 10 for setting or adjusting fees for all of the
Office's patent processing, activities, services, and material. The Office
provides additional information about the AIA implementation effort,
including how the components of the AIA relate to one another, on its Web
site, http://www.uspto.gov/aia_implementation/index.jsp.
Proposed CPI Rule. Similarly, in a separate rulemaking, the USPTO
proposed to adjust certain patent fee amounts to reflect fluctuations
in the Consumer Price Index (CPI) under 35 U.S.C. 41(f). See 77 FR 8331
(May 14, 2012). This increase in fees is necessary for the USPTO to
reach its strategic goals within the time frame outlined in the USPTO
FY 2013 President's Budget (Budget). The fee increase in the CPI
rulemaking is planned as a bridge to provide resources until the
instant section 10 rulemaking (this NPRM) becomes final (at which time
the anticipated section 10 fees would supersede the fees in the CPI
rulemaking). The proposed rule for the CPI adjustment sets forth
particular fees to be adjusted and describes how the adjustment will be
calculated based on the fluctuation in the CPI over the twelve months
preceding the issuance of the final CPI rule. The aggregate revenue
estimates presented in this section 10 proposed rule reflect an
estimate of a CPI increase of 1.9 percent, which was the figure
included in the Budget and the initial patent fee proposal delivered to
the Patent Public Advisory Committee on February 7, 2012. The
hypothetical fee rates based on this estimated CPI and used to estimate
the aggregate revenue are included in the documents titled USPTO
Section 10 Fee Setting - Aggregate Revenue Estimates at
http://www.uspto.gov/aia_implementation/fees.jsp#heading-1. The USPTO
aggregate revenue estimate will be updated in the section 10 final rule
to reflect the actual CPI rates included in the CPI final rule. The
individual fee amounts proposed in this rule are not dependent on the
final CPI fee rates and may be considered independent of the CPI
increase. Except as otherwise noted, the current fees (baseline or
status quo) included herein for comparative purposes include the
January and February 2012 Proposed Rule fee amounts (as adjusted by the
final rule) but not estimated CPI fee amounts.
The parallel rulemakings discussed in this section work in concert
to meet the requirements of the AIA and secure the financial resources
necessary to advance the Office's goals.
C. Summary of Provisions Impacted by This Action
The Office proposes to set or adjust 352 patent fees - 94 apply to
large entities (any reference herein to "large entity" includes all
entities other than small or micro entities), 94 to small entities, 93
to micro entities, and 71 are not entity-specific. Of the 94 large
entity fees, 66 are being adjusted, 19 are set at existing fee amounts,
and 9 are newly proposed in this rule. Of the 94 small entity fees, 80
are being adjusted, 5 are set at existing fee amounts, and 9 are newly
proposed in this rule. There are 93 new micro entity fees being set at
a reduction of 75 percent from the large entity fee amounts. Of the 71
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fees that are not entity-specific, 6 are either being adjusted or set
as new fees in this rule and 65 are set at existing fee amounts.
In all, the routine fees to obtain a patent (i.e., filing, search,
examination, publication, and issue fees) will decrease by 22 percent
under this NPRM relative to the current fee schedule. Also, despite
increases in some fees, applicants who meet the new micro entity
definition will pay less than the amount paid for small entity fees
under the current fee schedule for 88 percent of the fees eligible for
a discount under section 10(b). Additional information describing the
adjustments is included in Part V: Individual Fee Rationale section of
Supplementary Information in this rulemaking.
D. Summary of Costs and Benefits of This Action
The Office prepared a Regulatory Impact Analysis (RIA) to analyze
the costs and benefits of this NPRM over a five-year period. This
analysis includes a comparison of the proposed fee schedule to the
current fee schedule (baseline) (which is defined to include the
January and February 2012 Proposed Rules fee amounts, as adjusted by
the final rules) and to three other alternatives described in the RIA.
The Office considered both monetized and qualitative costs and
benefits. Monetized costs and benefits have effects that the Office can
express in dollar values. Qualitative costs and benefits have effects
that are difficult to express in either dollar or numerical values. The
complete RIA is available for review at
http://www.uspto.gov/aia_implementation/fees.jsp#heading-1.
The RIA concluded that the proposed patent fee schedule has the
largest net benefit. The incremental net monetized benefit to patent
applicants, patent holders, other patent stakeholders, and society of
the proposed fee schedule is nearly seven billion dollars (assuming a 7
percent discount rate) for the five-year period. The most significant
incremental benefit is the increase in the average value of a patent
that stems from a decrease in patent application pendency (the time it
takes to have a patent application examined). The Office estimates that
total patent application pendency will decrease by 12 months during the
time period of this analysis, thereby permitting a patentee to obtain a
patent sooner than he or she would have under the Baseline (status quo
fee schedule). The proposed fee schedule also has qualitative benefits
including fee schedule design benefits and a decrease in uncertainty of
patent rights, as discussed below. See Table 1.
Table 1 - Proposed Patent Fee Schedule Costs and Benefits,
Cumulative FY 2013-FY 2017
Total
Monetized Costs and Benefits - 3% Discount Rate (dollars in millions)
Benefits:
Increase in private patent value from a $6,921
decrease in pendency.
Costs:
Cost of patent operations ($765)
Lost patent value from a decrease in ($166)
patent applications.
Net Benefit $5,990
Monetized Costs and Benefits - 7% Discount Rate (dollars in millions)
Benefits:
Increase in private patent value from a $7,694
decrease in pendency.
Costs:
Cost of patent operations ($682)
Lost patent value from a decrease in ($135)
patent applications.
Net Benefit (Cost) $6,877
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Qualitative Costs and Benefits
Costs:
No qualitative costs n/a
Benefit:
Fee Schedule Design Benefits Moderate
(Significant, Moderate, Not
Significant).
Decreased Uncertainty Effect Significant
(Significant, Moderate, Not
Significant).
To estimate the monetized benefits of the proposed fee schedule,
the Office considered how the value of a patent would increase under
the proposed fee schedule. When patent application pendency decreases,
a patentee holds the exclusive right to the invention sooner, which
would increase the private value of that patent. Because the outcomes
of this proposed rule would decrease patent pendency by 12 months
during the time period of the analysis, the Office expects the private
patent value will increase, relative to the baseline. This benefit
helps to speed the commercialization of new technologies and the jobs
they can create. See Table 1.
The Office also estimated the incremental increase in the costs of
its patent operations to determine the monetized costs of the proposed
fee schedule. The most significant incremental costs of patent
operations are (1) the increased patent examination capacity to work on
the large backlog of patent applications in inventory, thus reducing
patent application pendency; and (2) building a three-month patent
operating reserve by FY 2017 to support a sustainable funding model.
See Table 1.
In addition, the Office expects that this proposed rule will result
in a short-term reduction in patent applications filed due to the new
pricing. The Office estimates that 1.3 percent fewer applications than
the number estimated to be filed in the absence of a fee increase will
be filed during FY 2013. The Office further estimates that 2.7 percent
fewer patent applications will be filed during FY 2014 and 4.0 percent
fewer patent applications beginning in FY 2015 as patent filers adjust
to the new fees, specifically the increase in the total filing, search,
and examination fees for most applicants. However, the Office estimates
that patent application filings will return to the same growth rate
anticipated in the absence of a fee increase beginning in FY 2016.
Overall, the demand for patent application services is generally
inelastic and the number of patent applications filed will continue to
grow year-over-year. An estimate of the monetized cost to patent
applicants, other patent stakeholders, and society associated with this
reduction in patent applications filed was also subtracted from the
benefit of the increased patent value when estimating the overall net
benefit of the proposed fee schedule. See Table 1.
When considering the qualitative benefits of the proposed fee
schedule, the Office assessed the impact of the rule on two factors:
fee schedule design and decreasing uncertainty. First, the design of
the proposed fee schedule offers benefits relating to the three policy
factors considered for setting individual fees as described in Part III
of this NPRM, namely fostering innovation, facilitating the effective
administration of the patent system; and offering patent prosecution
options to applicants. By maintaining the current fee setting
philosophy of keeping front-end fees below the cost of application
processing and recovering revenue from back-end fees, the proposed fee
schedule continues to foster innovation and ease access to the patent
system. The fee schedule design continues to offer incentives and
disincentives to engage in certain activities that facilitate the
effective administration of the patent system and help reduce the
amount of time it takes to have a patent application examined. For
example, application size fees, extensions of time fees, and excess
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claims fees remain in place to facilitate the prompt conclusion of
prosecution of an application. The proposal includes multipart and
staged fees for requests for continued examination and appeals, both of
which aim to increase patent prosecution options for applicants.
Second, by decreasing pendency, this action provides the applicant and
other potential innovators with greater certainty through clearly
defined and an unambiguous scope of patent rights. This increase in
certainty and clarity in patent rights has an overall positive impact
on the freedom to innovate and the market for technology.
The RIA found that the proposed fee schedule generates the largest
net benefit based on the analysis of the costs and benefits of: (a) the
proposed fee schedule; (b) the no-action alternative (baseline); and
(c) the three other alternatives. Additional details describing the
costs and benefits is available in the RIA at
http://www.uspto.gov/aia_implementation/fees.jsp#heading-1.
II. Legal Framework
A. Leahy-Smith America Invents Act - Section 10
The Leahy-Smith America Invents Act was enacted into law on
September 16, 2011. See Public Law 112-29, 125 Stat. 284. Section 10(a)
of the Act authorizes the Director of the Office to set or adjust by
rule any patent fee established, authorized, or charged under Title 35,
U.S.C. for any services performed by, or materials furnished by, the
Office. Fees under 35 U.S.C. may be set or adjusted only to recover the
aggregate estimated cost to the Office for processing, activities,
services, and materials related to patents, including administrative
costs to the Office with respect to such patent operations. See 125
Stat. at 316. Provided that the fees in the aggregate achieve overall
aggregate cost recovery, the Director may set individual fees under
section 10 at, below, or above their respective cost. Section 10(e) of
the Act requires the Director to publish the final fee rule in the
Federal Register and the Official Gazette of the Patent and Trademark
Office at least 45 days before the final fees become effective. Section
10(i) terminates the Director's authority to set or adjust any fee
under section 10(a) upon the expiration of the seven-year period that
began on September 16, 2011.
B. Small Entity Fee Reduction
Section 10(b) of the AIA requires the Office to reduce by 50
percent the fees for small entities that are set or adjusted under
section 10(a) for filing, searching, examining, issuing, appealing, and
maintaining patent applications and patents.
C. Micro Entity Fee Reduction
Section 10(g) of the AIA amends Chapter 11 of Title 35, U.S.C. to
add section 123 concerning micro entities. The Act provides that the
Office must reduce by 75 percent the fees for micro entities for
filing, searching, examining, issuing, appealing, and maintaining
patent applications and patents. The implementing procedures for the
provisions of 35 U.S.C. 123 are proposed in a separate rulemaking. See
77 FR 31806 (May 30, 2012).
D. Patent Public Advisory Committee Role
The Secretary of Commerce established the Patent Public Advisory
Committee (PPAC) under the American Inventors Protection Act of 1999.
35 U.S.C. 5. The PPAC advises the Under Secretary of Commerce for
Intellectual Property and Director of the USPTO on the management,
policies, goals, performance, budget, and user fees of patent
operations.
When adopting fees under section 10 of the Act, the Director must
provide the PPAC with the proposed fees at least 45 days prior to
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publishing the proposed fees in the Federal Register. The PPAC then has
at least 30 days within which to deliberate, consider, and comment on
the proposal, as well as hold public hearing(s) on the proposed fees.
The PPAC must make a written report available to the public of the
comments, advice, and recommendations of the committee regarding the
proposed fees before the Office issues any final fees. The Office will
consider and analyze any comments, advice, or recommendations received
from the PPAC before finally setting or adjusting fees.
Consistent with this framework, on February 7, 2012, the Director
notified the PPAC of the Office's intent to set or adjust patent fees
and submitted a preliminary patent fee proposal with supporting materials.
The preliminary patent fee proposal and associated materials are available
at http://www.uspto.gov/about/advisory/ppac/. The PPAC held two public
hearings: one in Alexandria, Virginia, on February 15, 2012; and another in
Sunnyvale, California, on February 23, 2012. Transcripts of these hearings
and comments submitted to the PPAC in writing are available for review at
http://www.uspto.gov/about/advisory/ppac/. The PPAC is considering public
comments from these hearings and will make available to the public a written
report setting forth in detail the comments, advice, and recommendations of
the committee regarding the preliminary proposed fees. The PPAC is scheduled
to release its report no later than August 2012. The Office will consider and
analyze any comments, advice, or recommendations received from the PPAC
before publishing a final rule.
III. Rulemaking Goals and Strategies
Consistent with the Office's goals and obligations under the AIA,
the overall strategy of this rulemaking is to ensure the fee schedule
generates sufficient revenue to recover aggregate costs. Another
strategy is to set individual fees to further key policy considerations
while taking into account the cost of the particular service. As to the
strategy of balancing aggregate revenue and aggregate cost, this rule
will provide sufficient revenue to implement two significant USPTO
goals: (1) Implement a sustainable funding model for operations; and
(2) optimize patent timeliness and quality. As to the strategy of
setting individual fees to further key policy considerations, the
policy factors contemplated are: (1) Fostering innovation; (2)
facilitating effective administration of the patent system; and (3)
offering patent prosecution options to applicants.
These fee schedule goals and strategies are consistent with
strategic goals and objectives detailed in the USPTO 2010-2015
Strategic Plan (Strategic Plan) that is available at
http://www.uspto.gov/about/stratplan/USPTO_2010-2015_Strategic_Plan.pdf,
as amended by Appendix 1 of the Budget, available at
http://www.uspto.gov/about/stratplan/budget/fy13pbr.pdf) (collectively
referred to herein as "Strategic Goals"). The Strategic Plan defines
the USPTO's missions and long-term goals and presents the actions the
Office will take to realize those goals. The significant actions the
Office describes in the Strategic Plan that are specific to the goals
of this rulemaking are implementing a sustainable funding model,
reducing the patent application backlog and pendency, and improving
patent quality and IT.
Likewise, the fee schedule goals and strategies also support the
Strategy for American Innovation - an Administration initiative first
released in September 2009 and updated in February 2011 that is
available at http://www.whitehouse.gov/innovation/strategy. The
Strategy for American Innovation recognizes innovation as the
foundation of American economic growth and national competitiveness.
Economic growth in advanced economies like the United States' is driven
by creating new and better ways of producing goods and services, a
process that triggers new and productive investments, which is the
cornerstone of economic growth. Achieving the Strategy for American
Innovation depends, in part, on the USPTO's success in reducing the
patent application backlog (the number of applications awaiting
examiner action) and pendency (the time it takes to have a patent
application examined) - both of which stall the delivery of innovative
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goods and services to market and impede economic growth and the
creation of high-paying jobs. This rule positions the USPTO to reduce
the backlog and pendency.
A. Ensure the Overall Fee Schedule Generates Sufficient Revenue to
Recover Aggregate Cost
The first fee setting strategy is to ensure that the fee schedule
generates sufficient multi-year aggregate revenue to recover the
aggregate cost to maintain USPTO operations and accomplish USPTO strategic
goals. Two overriding principles, found in the Strategic Plan, motivate the
Office here: (1) Operating within a more sustainable funding model than in
the past to avoid disruptions caused by fluctuations in the economy; and (2)
accomplishing strategic goals, including the imperatives of reducing the
patent application backlog and pendency. Each principle is discussed in
greater detail below.
1. Implement a Sustainable Funding Model for Operations
As explained in the Strategic Plan, the Office's objective of
implementing a sustainable funding model for operations will facilitate
USPTO's long-term operational and financial planning and enable the
Office to adapt to changes in the economy and in operational workload.
Since 1982, patent fees that generate most of the patent revenue
(e.g., filing, search, examination, issue, and maintenance fees) have
been set by statute, and the Office could adjust these fees only to
reflect changes in the CPI for All Urban Consumers, as determined by
the Secretary of Labor. Because these fees were set by statute, the
USPTO could not realign or adjust them to quickly and effectively
respond to market demand or changes in processing costs other than for
the CPI. Over the years, these constraints led to funding variations
and shortfalls. Section 10 of the AIA changed this fee adjustment model
and authorizes the USPTO to set or adjust patent fees within the
regulatory process so that the Office will be better able to respond to
its rapidly growing workload.
The Budget delineates the annual plans and prospective aggregate
costs to execute the initiatives in the Strategic Plan. One of these
costs is the creation of a three-month patent operating reserve to
allow effective management of the U.S. patent system and responsiveness
to changes in the economy, unanticipated production workload, and
revenue changes, while maintaining operations and effectuating long-
term strategies. The Office evaluated the optimal size of the operating
reserve by examining specific risk factors. There are two main factors
that create a risk of volatility in patent operations - spending levels
and revenue streams. After reviewing other organizations' operating
reserves, the Office found that a fully fee-funded organization such as
the USPTO should maintain a minimum of a three-month operating reserve.
The fees proposed here will gradually build the three-month operating
reserve. The USPTO will assess the patent operating reserve balance
against its target balance annually and, at least every two years, will
evaluate whether the target balance continues to be sufficient to
provide the stability in funding needed by the Office. If the proposed
fee structure is implemented, then the USPTO anticipates that the
three-month patent operating reserve would be achieved in FY 2017.
The proposed fees will provide the USPTO with sufficient aggregate
revenue to recover the aggregate cost to operate the Office while
improving the patent system. During FY 2013, patent operations will
cost $2.604 billion (including an offset to spending from other income
of $18 million and a deposit in the operating reserve of $73 million).
The proposed fee schedule should generate $2.604 billion in aggregate
revenue to offset these costs. Once the Office transitions to the
proposed fee levels, it estimates an additional $11.8 billion in
aggregate revenue will be generated from FY 2014 through FY 2017 to
recover the total aggregate cost over the same time period - $11.2
billion in operating costs and $0.6 billion in a three-month operating
reserve. (See Table 3 in Part IV, Step 2 of this NPRM.)
Under the new fee structure, as in the past, the Office will
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continue to regularly review its operating budgets and long-range plans
to ensure the USPTO uses patent fees prudently.
2. Optimize Patent Quality and Timeliness
The Office developed the strategic goal of optimizing patent
quality and timeliness in response to intellectual property (IP)
community feedback, the Strategy for American Innovation, and in
recognition that a sound, efficient, and effective IP system is
essential for technological innovation and for patent holders to reap
the benefits of patent protection.
Over the past several years, a steady increase in incoming patent
applications and insufficient patent examiner hiring due to multi-year
funding shortfalls has led to a large patent application backlog (the
number of applications awaiting examiner action) and a long patent
application pendency (the time it takes to have a patent application
examined). Reducing pendency increases the private value of a patent
because the more quickly a patent is granted, the more quickly the
holder can commercialize the innovation. Shorter pendency also allows
for earlier disclosure of the scope of the patent, which reduces
uncertainty for the patentee, potential competitors, and additional
innovators regarding patent rights and the validity of the patentees'
claims.
To reduce the backlog and pendency, the USPTO must examine
significantly more patent applications than it receives each year for
the next several years. Bringing the applications in the backlog down
to a manageable level, while at the same time keeping pace with the new
patent applications expected to be filed each year, will require that
the Office collect more aggregate revenue than it estimates that it
will collect at existing fee rates. The Office needs this additional
revenue to hire additional patent examiners, improve the patent
business IT capability and infrastructure, and implement other programs
to optimize the timeliness of patent examination. This proposed
rulemaking will result in an average first action patent pendency of 10
months in FY 2015, an average total pendency of 20 months in FY 2016,
and a reduced patent application backlog and inventory of approximately
350,000 patent applications by FY 2015. This would be a significant
improvement over the 22.6 months and 34.1 months for average first
action patent pendency and average total pendency, respectively, as of
March 2012. Under this proposed rule, the patent application backlog is
also expected to decrease significantly from the 644,775 applications
in inventory as of March 2012.
In addition to timeliness of patent protection, the quality of
application review is critical to ensure the value of an issued patent.
Quality issuance of patents provides certainty in the market and allows
businesses and innovators to make informed and timely decisions on
product and service development. Under the proposed action, the Office
will continue to improve patent quality through comprehensive training
for new and experienced examiners, an expanded and enhanced ombudsmen
program to help resolve questions about applications, improved hiring
processes, and guidelines for examiners to address clarity issues in
patent applications - all actions intended to place quality at the top
of USPTO's priorities. The Office will continue to encourage interviews
to help clarify allowable subject matter early in the examination
process, and to encourage interviews later in prosecution to resolve
outstanding issues. The Office will also continue to reengineer the
examination process, and to monitor and measure examination using a
comprehensive set of metrics that analyze the quality of the entire
process.
In addition to direct improvements to patent quality and
timeliness, the USPTO's development and implementation of the patent
end-to-end processing system using the revenue generated from the
proposed fee structure will also improve the efficiency of the patent
system. The IT architecture and systems in place currently are obsolete
and difficult to maintain, leaving the USPTO highly vulnerable to
disruptions in patent operations. Additionally, the current IT systems
require patent employees and external stakeholders to perform labor-
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intensive business processes manually, decreasing the efficiency of the
patent system. This proposed rule provides the Office with sufficient
revenue to modernize its IT systems so that the majority of
applications are submitted, handled, and prosecuted electronically.
Improved automation will benefit both the Office and innovation
community.
B. Set Individual Fees to Further Key Policy Considerations, While
Taking Into Account the Costs of the Particular Service
The second fee setting strategy is to set individual fees to
further key policy considerations, while taking into account the cost
of the associated service or activity. The proposed fee schedule
recovers the aggregate cost to the Office, while also considering the
individual cost of each service provided. This includes consideration
that some applicants may use particular services in a much more costly
manner than other applicants (e.g., patent applications cost more to
process when more claims are filed). The proposed fee schedule
considers three key policy factors: (1) Fostering innovation; (2)
facilitating effective administration of the patent system; and (3)
offering patent prosecution options to applicants. The Office is
focusing on these policy factors because each promotes particular
aspects of the U.S. patent system. Fostering innovation is an important
policy factor to ensure that access to the U.S. patent system is
without significant barriers to entry and innovation is incentivized by
granting inventors certain short-term exclusive rights to stimulate
additional inventive activity. Facilitating effective administration of
the patent system is important to influence efficient patent
prosecution, resulting in compact prosecution and reduction in the time
it takes to obtain a patent. In addition, the Office recognizes that
patent prosecution is not a one-size-fits-all process and therefore,
where feasible, the Office endeavors to fulfill its third policy factor
of offering patent prosecution options to applicants. Each of these
policy factors is discussed in greater detail below.
1. Fostering Innovation
To encourage innovators to take advantage of patent protection, the
Office proposes to set basic "front-end" fees (e.g., filing, search,
and examination) below the actual cost of carrying out these
activities. Likewise, consistent with the requirements in the Act, the
Office proposes providing fee reductions for small and micro entity
innovators to facilitate access to the patent system. Setting front-end
and small and micro entity fees below cost requires, however, that
other fees be set above cost. To that end, the Office proposes to set
basic "back-end" fees (e.g., issue and maintenance) in excess of
costs to recoup revenue not collected by front-end and small and micro
entity fees. Charging higher back-end fees also fosters innovation and
benefits the overall patent system when patent owners more closely
assess the expected value of an existing patent over its life, and
determine whether to pay maintenance fees to keep the patent in force.
Expiration of a patent makes the subject matter of the patent available
in the public domain for subsequent commercialization. Determining the
appropriate balance between front-end and back-end fees is a critical
component of aligning the Office's costs and revenues.
2. Facilitating Effective Administration of the Patent System
The proposed fee structure helps facilitate effective
administration of the patent system by encouraging applicants or patent
holders to engage in certain activities that facilitate an effective
patent system. In particular, setting fees at the particular levels
proposed here will: (1) Encourage the submission of applications or
other actions that enable examiners to provide prompt, quality interim
and final decisions; (2) encourage the prompt conclusion of prosecution
of an application, which results in pendency reduction, faster
dissemination of information, and certainty in patented inventions; and
(3) help recover the additional costs imposed by some applicants' more
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intensive use of certain services that strain the patent system.
3. Offering Patent Prosecution Options to Applicants
The proposed fee schedule also provides applicants with flexible
and cost-effective options for seeking patent protection. For example,
in September 2011, the Office implemented prioritized examination for
utility and plant applications, as specified in provisions of section
11(h) of the Act, to offer applicants the choice of a fast track
examination for an additional fee. (See Changes To Implement the
Prioritized Examination Track (Track I) of the Enhanced Examination
Timing Control Procedures, 76 FR 6369 (Feb. 4, 2011)). In this proposed
rule, the Office proposes multipart and staged fees for requests for
continued examination (RCE) and appeals. The Office proposes to set the
RCE fee in two parts. The first RCE fee would be set below cost to
facilitate access to the service and in recognition that most
applicants using RCEs only require one per application. The fee for the
second and subsequent requests would be set at cost recovery as an
option for those who require multiple RCEs. Likewise, the staging of
appeal fees allows applicants to pay less in situations when an
application is either allowed or reopened before being forwarded to the
Board of Patent Appeals and Interferences (BPAI) (to become the Patent
Trial and Appeal Board (PTAB) on September 16, 2012). This patent
prosecution option allows applicants to make critical decisions at
multiple points in the patent prosecution process.
Summary of Rationale and Purpose of the Proposed Rulemaking
The patent fee schedule proposed here will produce aggregate
revenues to recover the aggregate costs of the USPTO, including for its
management of strategic goals, objectives, and initiatives in FY 2013
and beyond. Using the two Strategic Plan goals (implementing a
sustainable funding model for operations and optimizing patent quality
and timeliness) as a foundation, the proposed rule would provide
sufficient aggregate revenue to recover the aggregate cost of patent
operations, including implementing a sustainable funding model,
reducing the current patent application backlog, decreasing patent
pendency, improving patent quality, and upgrading the patent business
IT capability and infrastructure. Additionally, in this rule, the
Office considers each individual fee by evaluating its historical cost
and considering the policy factors of fostering innovation,
facilitating the effective administration of the patent system, and
offering patent prosecution options to applicants.
IV. Fee Setting Methodology
There are three primary steps involved in developing the proposed
fees:
Step 1: Determine the prospective aggregate costs of patent operations
over the five-year period, including the cost of implementing new
initiatives to achieve strategic goals and objectives.
Step 2: Calculate the prospective revenue streams derived from the
individual fee amounts (from Step 3) that will collectively recover the
prospective aggregate cost over the five-year period.
Step 3: Set or adjust individual fee amounts to collectively
(through executing Step 2) recover projected aggregate cost over the
five-year period, while furthering key policy considerations.
These three steps are iterative and interrelated. Following is a
description of how the USPTO carries out these three steps.
Step 1: Determine Prospective Aggregate Costs
Calculating aggregate costs is accomplished primarily through the
routine USPTO budget formulation process. The Budget is a five-year
plan (that the Office prepares annually) for carrying out base programs
and implementing the strategic goals and objectives. The first activity
performed to determine prospective aggregate cost is to project the
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level of demand for patent products and services. Demand for products
and services depends on many factors, including domestic and global
economic activity. The USPTO also takes into account overseas patenting
activities, policies and legislation, and known process efficiencies.
Because examination costs are 70 percent of the total patent operating
cost, a primary production workload driver is the number of patent
application filings (i.e., incoming work to the Office). The Office
looks at indicators such as the expected growth in Real Gross Domestic
Product (RGDP), the leading indicator to incoming patent applications,
to estimate prospective workload. RGDP is reported by the Bureau of
Economic Analysis (www.bea.gov), and is forecasted each February by the
Office of Management and Budget (OMB) (www.omb.gov) in the Economic and
Budget Analyses section of the Analytical Perspectives, and each
January by the Congressional Budget Office (CBO) (www.cbo.gov) in the
Budget and Economic Outlook. A description of the Office's methodology
for using RGDP can be found at pages 36 and 37 of the Budget. The
expected change in the required production workload must then be
compared to the current examination production capacity to determine
any required staffing and operating cost (e.g., salaries, workload
processing contracts, and printing) adjustments. The Office uses a
patent pendency model that estimates patent production output based on
actual historical data and input assumptions, such as incoming patent
applications and overtime hours. An overview of the model, including a
description of inputs, outputs, key data relationships, and a
simulation tool is available at
http://www.uspto.gov/patents/stats/patent_pend_model.jsp.
The second activity is to calculate the aggregate costs to execute
the requirements. In developing its Budget, the Office first looks at
the cost of status quo operations (the base requirements). The base
requirements are adjusted for anticipated pay raises and inflationary
increases for the periods FY 2013-FY 2017 (detailed calculations and
assumptions for this adjustment to base are available in Exhibit 8 and
Exhibit 9 of the Budget). The Office then estimates the prospective
cost for expected changes in production workload and new initiatives
over the same period of time (refer to "Program Changes by Sub-
Activity" sections of the Budget). The Office reduces cost estimates
for completed initiatives and known cost savings expected over the same
five-year horizon (see page 9 of the Budget). Finally, the Office
estimates its three-month target operating reserve level based on this
aggregate cost calculation for year to determine if operating reserve
adjustments are necessary.
The Budget identifies that during FY 2013, patent operations will
cost $2.549 billion (see page 31 of the Budget), including $1.733
billion for patent examination activities; $362 million for IT systems,
support, and infrastructure contributing to patent operations; $61
million for activities related to patent appeals and the new AIA inter
partes dispute actions; $30 million for activities related to IP
protection, policy, and enforcement; and $363 million for general
support costs necessary for patent operations (e.g., rent, utilities,
legal, financial, human resources, and other administrative services).
In addition, the Office estimates collecting $18 million in other
income associated with reimbursable agreements (offsets to spending)
and depositing $73 million during FY 2013 toward the cost of building
the patent operating reserve to sustain operations. The operating
reserve estimate in this NPRM is different than the estimate included
in the Budget. The estimate included in the Budget is consistent with
the estimate included in the initial proposal to PPAC on February 7,
2012, and has been reduced in this NPRM in response to public feedback
provided to the PPAC. A detailed description of the operating
requirements and related aggregate cost is located in the Budget. Table
2 below provides key underlying production workload projections and
assumptions from the Budget used to calculate aggregate cost. Table 3
presents the total budgetary requirements (prospective aggregate cost)
for FY 2013 through FY 2017.
Table 2 - Patent Production Workload Projections - FY 2013-FY 2017
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Utility, plant, and
reissue (UPR) FY 2013 FY 2014 FY 2015 FY 2016 FY 2017
Applications* 565,300 599,200 632,200 666,900 700,300
Growth Rate** 6.0% 6.0% 5.5% 5.5% 5.0%
Production Units 620,600 671,900 694,200 645,200 656,200
End of Year Backlog 529,100 421,600 329,500 328,400 358,000
Examination 8,700 8,600 8,300 8,300 8,200
Capacity**
Performance Measures ....... ....... ....... ....... .......
(UPR)
Avg. First Action 16.9 15.9 10.1 9.4 9.4
Pendency (Months)
Avg. Total Pendency 30.1 24.6 22.9 18.3 18.1
(Months)
* In this table, the patent application filing data includes requests for
continued examination (RCEs).
** In this table, demand for patent examination services, which is used to
calculate aggregate cost in the FY 2013 President's Budget, is not adjusted
for price elasticity.
Table 3 - Estimated Annual Aggregate Costs and
Proposed Fee Schedule Aggregate Revenues
(Dollars in millions)
FY 2012 FY 2013 FY 2014 FY 2015 FY 2016 FY 2017
Aggregate Cost
Estimate
Planned Operating ....... $2,549 $2,702 $2,809 $2,846 $2,945
Requirements
Less Other ....... (18) (18) (18) (18) (18)
Income*
Net Operating ....... 2,531 2,684 2,791 2,828 2,927
Requirements
Planned Deposit ....... 73 200 143 125 95
in Operating
Reserve
Total ....... 2,604 2,884 2,934 2,953 3,022
Aggregate
Cost Estimate
Aggregate Revenue ....... 2,604 2,884 2,934 2,953 3,022
Estimate**
Cumulative Operating
Reserve Balance
Target Operating ....... 637 676 702 712 736
Reserve
Operating Reserve $121 194 394 537 662 757
Ending Balance
Over/(Under) ....... (443) (282) (165) (50) 21
Target Balance
* The Office collects other income associated with reimbursable agreements
(offsets to spending) and recoveries of funds obligated in prior years in
the amount of approximately $18 million each year.
** The proposed fee schedule will generate less revenue compared to the FY
2013 President's Budget in an effort to slow the growth of the operating
reserve over the next five years.
Step 2: Calculate Prospective Aggregate Revenue
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As described in "Step 1," the USPTO's FY 2013 requirements-based
budget includes the aggregate prospective cost of planned production,
new initiatives, and an operating reserve required for the Office to
realize its strategic goals and objectives for the next five years. The
aggregate prospective cost becomes the target aggregate revenue level
that the new fee schedule must generate in a given year and over the
five-year planning horizon. To calculate the aggregate revenue
estimates, the Office first analyzes relevant factors and indicators to
calculate or determine prospective fee workload (e.g., number of
applications and requests for services and products), growth, and
resulting fee workload volumes (quantities) for the five-year planning
horizon. Economic activity is an important consideration when
developing workload and revenue forecasts for the USPTO's products and
services because economic conditions affect patenting activity, as most
recently exhibited in the recession of 2009 when incoming workloads and
renewal rates declined.
The Office considers economic activity when developing fee
workloads and aggregate revenue forecasts for its products and
services. Major economic indicators include the overall condition of
the U.S. and global economies, spending on research and development
activities, and investments that lead to the commercialization of new
products and services. The most relevant economic indicator that the
Office uses is the RGDP, which is the broadest measure of economic
activity and is anticipated to grow approximately three percent for FY
2013 based on OMB and CBO estimates.
These indicators correlate with patent application filings, which
are a key driver of patent fees. Economic indicators also provide
insight into market conditions and the management of IP portfolios,
which influence application processing requests and post-issuance
decisions to maintain patent protection. When developing fee workload
forecasts, the Office considers other influential factors including
overseas activity, policies and legislation, process efficiencies, and
anticipated applicant behavior.
Anticipated applicant behavior in response to fee changes is
measured using an economic principle known as elasticity, which for the
purpose of this action means how sensitive applicants and patentees are
to fee amounts or price changes. If elasticity is low enough (i.e.,
demand is inelastic), when fees increase, patent activities will
decrease only slightly in response thereto, and overall revenues will
still increase. Conversely, if elasticity is high enough (i.e., demand
is elastic), when fees increase, patenting activities will decrease
significantly enough in response thereto such that overall revenues
will decrease. When developing fee forecasts, the Office accounts for
how applicant behavior will change at different fee amounts projected
for the various patent services. Additional detail about the Office's
elasticity estimates is available in "USPTO Section 10 Fee Setting -
Description of Elasticity Estimates," at
http://www.uspto.gov/aia_implementation/fees.jsp. Some of the information
on which the Office based its elasticity estimates are copyrighted materials
and are available for inspection at the USPTO.
Micro Entity Applicants
The introduction of a new class of applicants, called micro
entities, requires a change to aggregate revenue estimations, and the
Office has refined its workload and fee collection estimates to include
this new applicant class. See 35 U.S.C. 123; see also Changes to
Implement Micro Entity Status for Paying Patent Fees, 77 FR 31806 (May
30, 2012) . 35 U.S.C. 123, which sets forth how an applicant can claim
the micro entity discount, provides two bases under which an applicant
may establish micro entity status.
First, section 123(a) provides that the term "micro entity" means
an applicant who makes a certification that the applicant: (1)
Qualifies as a small entity as defined in 37 CFR 1.27; (2) has not been
named as an inventor on more than four previously filed patent
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applications, other than applications filed in another country,
provisional applications under 35 U.S.C. 111(b), or international
applications for which the basic national fee under 35 U.S.C. 41(a) was
not paid; (3) did not, in the calendar year preceding the calendar year
in which the applicable fee is being paid, have a gross income
exceeding three times the median household income for that preceding
calendar year; and (4) has not assigned, granted, or conveyed, and is
not under an obligation by contract or law to assign, grant, or convey,
a license or other ownership interest in the application concerned to
an entity that had a gross income exceeding the income limit described
in (3).
Second, 35 U.S.C. 123(d) provides that a micro entity shall also
include an applicant who certifies that: (1) The applicant's employer,
from which the applicant obtains the majority of theapplicant's income,
is an institution of higher education as defined in section 101(a) of
the Higher Education Act of 1965 (20 U.S.C. 1001(a)); or (2) the applicant
has assigned, granted, conveyed, or is under an obligation by contract or
law, to assign, grant, or convey, a license or other ownership interest in
the particular applications to such an institution of higher education.
The Office estimates that when micro entity discounts on patent
fees are available, 31 percent of small entity applications will be
micro entity applications, under the criteria set forth in section
123(a) and (d). In making this estimate, the Office considered several
factors, including historical data on patents granted. The Office began
with patent grant data, because the best available biographic data on
applicant type (e.g., independent inventor and domestic universities)
comes from patent grant data in the Office's database.
The Office first estimated the number of individuals who were
granted patents in FY 2011. There were 221,350 utility patents granted
in FY 2011 as reported in the FY 2011 USPTO Performance and
Accountability Report (PAR). The PAR is available for review at
http://www.uspto.gov/about/stratplan/ar/2011/index.jsp. The Office's Patent
Technology Monitoring Team (PTMT) provides data showing the split
between domestic and foreign patent grants. (It should be noted that
PTMT's data is based on the calendar year not the fiscal year.) PTMT's
data is available at
http://www.uspto.gov/web/offices/ac/ido/oeip/taf/all_tech.htm#PartA1_1b.
From this data, the Office found that 5.0 percent of utility patents
granted in FY 2011 were granted to individuals in the U.S. and 1.9 percent
were granted to individuals from other countries, where the individuals
were not listed in the USPTO database as associated with a company. These
individuals would likely meet the criteria under section 123(a)(1) (small
entity status). Using this information, the Office estimates that
individuals in the U.S. received 11,068 utility patents (221,350 times 5.0
percent) in FY 2011, and that individuals from other countries received
4,206 utility patents (221,350 times 1.9 percent). In total, the Office
estimates that 15,274 (11,068 plus 4,206) patents were granted to
individuals in FY 2011.
Concerning the application threshold in 35 U.S.C. 123(a)(2), the
Office's Patent Application Locating and Monitoring (PALM) database
reports that 62 percent of both foreign and domestic small entity
applicants filed fewer than 5 applications in FY 2009. As stated above,
an estimated 15,274 patent grants were to individuals both domestic
(11,068) and foreign (4,206). Using this information, the Office
estimates that 6,862 (11,068 times 62 percent) patents will be granted
to domestic applicants who meet the thresholds for micro entity status
set forth in sections 123(a)(1) and 123(a)(2), while 2,608 (4,206 times
62 percent) patents will be granted to foreign applicants who meet the
same thresholds.
Concerning the income threshold in 35 U.S.C. 123(a)(3), the median
household income for calendar year (CY) 2010 (the year most recently
reported by the Bureau of the Census) was $49,445. See Income, Poverty,
and Health Insurance Coverage in the United States: 2010, at 5 and 33
(Table A-1) (Sept. 2011) available at
http://www.census.gov/prod/2011pubs/p60-239.pdf. (The Office will indicate
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conspicuously on its Web site the median household income reported by the
Bureau of the Census and the income level that is three times the median
household income for the calendar year most recently reported.) Thus, the
income level specified in 35 U.S.C. 1.29(a)(3) and (a)(4) (three times the
median household income) is $148,335.
The Internal Revenue Service (IRS) records show that in 2009 about
97 percent of individuals (as proxied by the total number of IRS form
filings) reported adjusted gross income of less than $200,000, and
about 87 percent of individuals reported adjusted gross income of less
than $100,000. See Table 1.1 at:
http://www.irs.gov/taxstats/indtaxstats/article/0,,id=96981,00.html.
Using this information, the Office estimates that 6,656 (6,862 times 97
percent) of patents granted to individuals from the U.S. will be for
individuals under the gross income threshold of the micro entity definition
($148,335 for CY 2010). The Office uses 97 percent as the best available
estimate of the maximum number of individuals who satisfy the income limit.
Median household income and gross income levels are not readily available
for the country of origin for all foreign individuals. Therefore, the
Office conservatively estimates that all foreign individuals will
qualify for micro entity fee reductions, and income should not limit
their eligibility. Using the best available data, as presented above,
the Office estimates that the total number of individuals who meet the
thresholds set forth in 123(a)(1), (a)(2), and (a)(3) is 9,264 (6,656
from the U.S. and 2,608 foreign).
The 9,264 figure represents a reasonable approximation of the
number of patents granted annually to persons who would qualify as
micro entities under section 123(a). There is no data available to
indicate how many persons would be excluded under section 123(a)(4).
However, the Office's approach with the other components of section
123(a) is sufficiently conservative to mitigate the risks of not
capturing this population. Likewise, while a small company could
qualify as a micro entity under section 123(a), the above calculation
of individuals represents a reasonable overall approximation because
the estimate of affected individuals is sufficiently conservative.
Turning to 35 U.S.C. 123(d), the most recent data available on
university patent grants is from CY 2008. Reviewing the data from CY
2001-CY 2008, the Office estimates that domestic universities account
for approximately 1.9 percent of all patent grants. The Office is using
this figure as a reasonable approximation for the number of micro
entity applicants expected under section 123(d), which covers
applicants who are employed by universities or who have assigned their
invention to a university. Applying this information to FY 2011, the
Office estimates that universities received 4,206 (221,350 times 1.9
percent) of the patents granted in FY 2011. The data on university
patent grants is available at:
http://www.uspto.gov/web/offices/ac/ido/oeip/taf/univ/asgn/table_1_2008.htm.
To combine 123(a) and 123(d), the Office adds the estimated number
of patents granted that could meet the micro entity definition for
individuals (9,264) and for university employees (4,206) to obtain a
total of 13,470 patent grants. The Office divides 13,470 micro entity
patents by the 43,827 small entity patents in FY 2011 (per the Office's
PALM database) to calculate that approximately 31 percent of small
entity patents will be micro entity patents. The Office expects a
uniform distribution of micro entities across all application types. No
data exists to suggest otherwise. Likewise, the Office applies the 31
percent estimate to both filings and grants because it expects a
uniform distribution of micro entities among both applicants and
patentees, and no data exists to suggest otherwise. Thus, the Office
estimates that 31 percent of all small entity applicants will qualify
as micro entity applicants.
In recent years, small entity applicants made up approximately 25
percent of utility filings and 20 percent of utility patent grants (per
the PALM database). Given that utility filings are the largest category of
application types, for forecasting purposes, the Office uses utility
filing data as representative of the universe of patent application
filings. Applying the 31 percent estimate for the number of micro
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entities, the Office estimates that micro entities will account for 7.8
percent (25 percent times 31 percent) of all filings, and 6.2 percent
(20 percent times 31 percent) of all grants.
Aggregate Revenue Estimate Ranges
To calculate aggregate revenue, the USPTO prepares a high-to-low
range of fee collection estimates that includes a +/- 5 outer bounds to
account for: the inherent uncertainty, sensitivity, and volatility of
predicting fluctuations in the economy and market environment;
interpreting policy and process efficiencies; and developing fee
workload and fee collection estimates from assumptions. The Office used
5 percent because historically the Office's actual revenue collections
have typically been within 5 percent of the projected revenue.
Additional detail about the Office's aggregate revenue, including
projected workloads by fee, is available in "USPTO Section 10 Fee
Setting - Aggregate Revenue Estimates Alternative 1: Proposed
Alternative - Set and Adjust Section 10 Fees" available at
http://www.uspto.gov/aia_implementation/fees.jsp.
Summary
Patent fees are collected for patent related services and products
at different points in time within the patent application examination
process and over the life of the pending patent application and granted
patent. Approximately half of all patent fee collections are from issue
and maintenance fees, which subsidize filing, search, and examination
activities. Changes in application filing levels immediately impact
current year fee collections, because fewer patent application filings
means the Office collects fewer fees to devote to production-related
costs, such as additional examining staff and overtime. The resulting
reduction in production activities creates an out-year revenue impact
because less production output in one year results in fewer issue and
maintenance fee payments in future years.
The USPTO's five-year estimated aggregate patent fee revenue (see
"Aggregate Revenue Estimate" in Table 3) is based on the number of
patent applications it expects to receive for a given fiscal year, work
it expects to process in a given fiscal year (an indicator for workload
of patent issue fees), expected examination and process requests for
the fiscal year, and the expected number of post-issuance decisions to
maintain patent protection over that same fiscal year. Within the
iterative process for estimating aggregate revenue, the Office adjusts
individual fees up or down based on cost and policy decisions (see Step
3: Set Specific Fee Amounts), estimates the effective dates of new fee
rates, and then multiplies the resulting fees by appropriate workload
volumes to calculate a revenue estimate for each fee. To calculate the
aggregate revenue, the Office assumes that all new fee rates, except
for changes to sections 1.18(a) through (d) (patent issue and
publication fees) and 1.21(h)(1) and 1.21(h)(2) (recording patent
assignments), would be effective March 1, 2013. Fee changes for
sections 1.18(a) through (d) (patent issue and publication fees) and
1.21(h)(1) and 1.21(h)(2) (recording patent assignments) are assumed to
become effective on January 1, 2014. Using these figures, the USPTO
sums the individual fee revenue estimates, and the result is a total
aggregate revenue estimate for a given year (see Table 3).
Step 3: Set Specific Fee Amounts
Once the Office finalizes the annual requirements and aggregate
prospective costs for a given year during the budget formulation
process, the Office sets specific fee amounts that, together, will
derive the aggregate revenue required to recover the estimated
aggregate prospective costs during that time frame. Calculating
individual fees is an iterative process that encompasses many
variables. One variable that USPTO considers to inform fee setting is
the historical cost estimates associated with individual fees. The
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Office's Activity-Based Information (ABI) provides historical cost for
an organization's activities and outputs by individual fee using the
activity-based costing (ABC) methodology. ABC is commonly used for fee
setting throughout the Federal Government. Additional information about
the methodology, including the cost components related to respective
fees, is available at
http://www.uspto.gov/aia_implementation/fees.jsp#heading-1 in the document
titled "USPTO Section 10 Fee Setting - Activity-Based Information and
Costing Methodology." The USPTO provides data for FY 2009-FY 2011 because
the Office finds that reviewing the trend of ABI historical cost information
is the most useful way to inform fee setting. The underlying ABI data are
available for public inspection at the USPTO.
When the Office implements a new process or service, historical ABI
data is typically not available. However, the Office will use the
historical cost of a similar process or procedure as a starting point
to calculate the cost of a new activity or service. For example, as
described in the proposed rulemaking, Changes to Implement the
Supplemental Examination Provisions of the Leahy-Smith America Invents
Act, 77 FR 3666 (Jan. 25, 2012), the Office used the ABI historical
cost for ex parte reexamination procedures as a starting point for
calculating the prospective cost to implement the new supplemental
examination procedures.
In other cases, ABI historical cost information related to similar
processes are not available, and the Office estimates cost by
calculating the resources necessary to execute the new process. To do
so, the Office estimates the amount of time (in hours) and necessary
skill level to complete an activity. The USPTO then multiplies the
estimated amount of time by the hourly wage(s) of the persons required
at each skill level and adds the administrative and indirect cost rates
(derived from ABI historical cost data) to this base cost estimate to
calculate the full cost of the activity. One-time costs, such as IT,
training, or facilities, are added to the full cost estimate to obtain
the total cost of providing the new process or service. Lastly, the
USPTO applies a rate of inflation to estimate the prospective unit
cost. For example, the Office used this methodology to calculate the
costs associated with the new inter partes and post grant review
processes. (See 77 FR 6879, (Feb. 9, 2012).
This cost data serves as a point of reference for setting
individual fee amounts. The USPTO also uses various policy factors
discussed in the Rulemaking Goals and Strategies section of this NPRM
to inform fee setting. Fees are set to allow the Office to recover its
aggregate costs, while furthering key policy considerations. The
following section describes the rationale for setting fee rates at
specific amounts.
V. Individual Fee Rationale
The Office projects the aggregate revenue generated from the
proposed patent fees will recover the prospective aggregate cost of its
patent operations. However, each individual proposed fee is not
necessarily set equal to the estimated cost of performing the
activities related to the fee. Instead, as described in Part III.
Rulemaking Goals and Strategies, some of the proposed fees are set to
balance several key policy factors: fostering innovation, facilitating
effective administration of the patentsystem, and offering patent
prosecution options to applicants. As also described in Part III, executing
these policy factors in the patent fee schedule is consistent with the
Strategy for American Innovation and the goals and objectives outlined in
the Strategic Plan. Once the key policy factors are considered, fees are set
at, above, or below individual cost recovery levels for the activity or
service provided.
For the purpose of discussing the changes in this rule, the
rationale for proposing to set or adjust individual fees are grouped
into two major categories: (1) Fees where large entity amounts changed
from the current amount by greater than plus or minus 5 percent and 10
dollars (described below in section (A)); and (2) fees where large
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entity amounts stayed the same or did not change by greater than plus
or minus 5 percent and 10 dollars (described below in section (B). The
purpose of the categorization is to identify large fee changes for the
reader and provide an individual fee rationale for such changes. The
categorization is based on changes in large entity fee amounts because
percentage changes for small entity fees that are in place today would
be the same as the percentage change for the large entity, and the
dollar change would be half of that of the large entity change.
Therefore, there will never be an instance where the small entity fee
change meets the greater than plus or minus 5 percent and 10 dollars
criteria and a large entity does not.
The "USPTO Section 10 Fee Setting - Table of Patent Fee Changes"
is available at http://www.uspto.gov/aia_implementation/fees.jsp and
the tables in Part VI. The table of patent fee changes includes the
current fees for large and small entities and the proposed fees for
large, small, and micro entities with the dollar and percent changes in
large entity fees and the FY 2011, FY 2010, and FY 2009 unit costs. The
Discussion of Specific Rules in this rulemaking contains a complete
listing of fees that are set or adjusted in the proposed patent fee
schedule.
A. Discounts for Small and Micro Entity Applicants
The fees described below include discounts for small and micro
entity applicants as required by section 10. The current small entity
discount scheme will change when fees are set in accordance with
section 10. That is, section 10(a) provides that the USPTO can set or
adjust "any fee established, authorized or charged under" Title 35,
U.S.C. In turn, section 10(b) of the Act provides that fees set or
adjusted under section 10(a) authority for "filing, searching,
examining, issuing, appealing, and maintaining patent applications and
patents" will be reduced by 50 percent for small entities and 75
percent for micro entities. A small entity is defined as currently set
forth in 35 U.S.C. 41(h)(1), and a micro entity is defined in section
123.
Currently, the small entity discount is only available for
statutory fees provided under sections 41(a) and (b). Section 10(b)
extends the discount to some patent fees not contained in section 41(a)
and (b). Thus, the Office will apply the discount to a number of fees
that currently do not receive the small entity discount. Only one fee
for which a small entity discount is currently offered will be
ineligible for that discount under the proposed fee schedule (the fee
for a statutory disclaimer under 37 CFR 1.20(d), which is currently
$160 for a large entity and $80 for a small entity), because the
particular fee does not fall under one of the six categories of patent
fees set forth in section 10(b).
Additionally, the new contested case proceedings created under the
Act (inter partes review, post grant review, covered business method
patent review, and derivation proceedings) are trial services, not
appeals. As such, the fees for these services do not fall under any of
the six categories under section 10(b), and therefore are not eligible
for discounts. Appeals before the BPAI involve contests to an
examiner's findings. The new trial services, however, determine whether
a patent should have been granted. They involve discovery, including
cross-examination of witnesses. Further, the AIA amends sections of
Title 35 that specifically reference "appeals," while separately
discussing inter partes review, post grant review, and derivation
proceedings, highlighting that these new services are not appeals. See
section 7 of the AIA (amending 35 U.S.C. 6).
B. Fees With Proposed Changes of Greater Than Plus or Minus 5 Percent
and 10 Dollars
For those fees that are proposed to change by greater than plus or
minus 5 percent and 10 dollars, the individual fee rationale discussion
is divided into four general subcategories: (1) Fees to be set at cost
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recovery; (2) fees to be set below cost recovery; (3) fees to be set
above cost recovery; and (4) fees that are not set using cost data as
an indicator. Table 4 contains a summary of the individual fees that
are discussed in each of the subcategories referenced above.
As discussed above, for purposes of comparing amounts in the
individual fee rationale discussion, the Office has also included the
fees proposed previously using the USPTO's existing 35 U.S.C. 41(d)(2)
fee authority in the baseline (status quo). See 77 FR 982 (Jan. 6,
2012), 77 FR 3666 (Jan. 25, 2012), 77 FR 6879 (Feb. 9, 2012), 77 FR
7028 (Feb. 10, 2012), and 77 FR 7060 (Feb. 10, 2012). The fees proposed
in these January and February 2012 Proposed Rules (as adjusted by the
final rules) are included in the "current" fee column and denoted
with (*). This NPRM does not reopen the comment period for any of the
January and February 2012 Proposed Rules. It is anticipated that those
rules will be finalized in the coming months. This NPRM establishes a
different comment period for setting or adjusting all patent fees under
section 10 of the AIA. The Office anticipates finalizing this
rulemaking after the January and February 2012 Proposed Rules are
finalized.
In addition, for purposes of discussion within this section, where
new micro entity fees are proposed, it is expected that an applicant or
patent holder would have paid the current small entity fee (or large
entity in the event there is not a small entity fee) and dollar and
percent changes are calculated from the current small entity fee amount
(or large entity fee, where applicable).
It should be noted that the "Utility Search Fee" listed below
does not meet the "change by greater than plus or minus 5 percent and
10 dollars" threshold, but is nonetheless included in the discussion
for comparison of total filing, search, and examination fees.
Table 4 - Patent Fees Proposed To Change
[By greater than plus or minus 5 percent and 10 dollars]
Current Proposed Dollar Percent
fees fees change change
Fee description Large Large Large Large
(small) (small) (small) (small)
[micro] [micro] [micro] [micro]
entity entity entity entity
(1) Fees To Be Set at Cost Recovery
Request for Prioritized
Examination $4,800 $4,000 -$800 -17%
($2,400) ($2,000) (-$400) (-17%)
[N/A] [$1,000] [-$1,400] [-58%]
Second and Subsequent
RCEs (NEW) $930 $1,700 +$770 +83%
($465) ($850) (+$385) (+83%)
[N/A] [$425] [-$40] [-9%]
(2) Fees To Be Set Below Cost Recovery
Basic Filing Fee - Utility $380 $280 -$100 -26%
($190) ($140) (-$50) (-26%)
[N/A] [$70] [-$120] [-63%]
Utility Search Fee $620 $600 -$20 -3%
($310) ($300) (-$10) (-3%)
[N/A] [$150] [-$160] [-52%]
Utility Examination Fee $250 $720 +$470 +188%
($125) ($360) (+$235) (+188%)
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[N/A] [$180] [+$55] [+44%]
Basic Filing, Search, and $1,250 $1,600 +$350 +28%
Exam - Utility (Total) ($625) ($800) (+$175) (+28%)
[N/A] [$400] [-$225] [-36%]
First Request for Continued $930 $1,200 +$270 +29%
Examination (RCE) ($465) ($600) ($135) +29%
[N/A] [$300] [-$165] [-35%]
Notice of Appeal $620 $1,000 $380 +61%
($310) ($500) (+$190) (+61%)
[N/A] [$250] [-$60] [-19%]
Filing a Brief in Support of $620 $0 -$620 -100%
an Appeal in Application or ($310) ($0) (-$310) (-100%)
Ex Parte Reexamination [N/A] [$0] [-$310] [-100%]
Appeal Forwarding Fee for N/A $2,000 +$2,000 N/A
Appeal in Examination or (N/A) ($1,000) (+$1,000) (N/A)
Ex Parte Reexamination [N/A] [$500] [+$500] [N/A]
Proceeding or Filing a
Brief in Support of an
Appeal in Inter Partes
Reexamination (NEW)
Total Appeal Fees (Paid $1,240 $1,000 -$240 -19%
before Examiner Answer) (-$120) (-19%) [N/A] [$250]
[NA] [$250] [-$370] [-60%]
Total Appeal Fees (Paid after $1,240 $3,000 +$1760 +142%
Examiner Answer) ($620) ($1,500) (+$880) (+142%)
[N/A] [$750] [+$130] [+21%]
Ex Parte Reexamination *$17,750 $15,000 -$2,750 -15%
(N/A) ($7,500) (-$10,250) (-58%)
[N/A] [$3,750] [-$14,000] [-79%]
Processing and Treating a *$5,140 $4,400 -$740 -14%
Request for Supplemental (N/A) ($2,200) (-$2,940) (-57%)
Examination - Up to 20 [N/A] [$1,100] [-$4,040] [-79%]
Sheets (NEW)
Ex Parte Reexamination *$16,120 $13,600 -$2,520 -16%
Ordered as a Result of (N/A) ($6,800) (-$9,320) (-58%)
a Supplemental Examination [N/A] [$3,400] [-12,720] [-79%]
Proceeding (NEW)
Total Supplemental *$21,300 $18,000 -$3,330 -15%
Examination Fees (N/A) ($9,000) (-$12,300) (-58%)
[N/A] [$4,500] [-$16,800] [-79%]
Inter Partes Review Request - NEW $9,000 +$9,000 N/A
Up to 20 Claims (Per Claim (N/A) (N/A) (N/A)
Fee for Each Claim in Excess [N/A] [N/A] [N/A]
of 20 is $200).
Inter Partes Review Post NEW $14,000 $14,000 N/A
Institution Fee - Up to (N/A) (N/A) (N/A)
15 Claims (Per Claim Fee [N/A] [N/A] [N/A]
for Each Claim in Excess
of 15 is $400)
Total Inter Partes Review *$27,200 $23,000 -$4,200 -15%
Fees (NEW) (For Current (N/A) (N/A) (N/A) (N/A)
Fees, Per Claim Fee for [N/A] [N/A] [N/A] [N/A]
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Each Claim in Excess of
20 is $600)
Post Grant Review or Covered NEW $12,000 +$12,000 N/A
Business Method Patent Review (N/A) (N/A) (N/A)
Request - Up to 20 Claims [N/A] [N/A] [N/A]
(Per Claim Fee for Each Claim
in Excess of 20 is $250)
Post Grant Review or Covered NEW $18,000 $18,000 N/A
Business Method Patent Review (N/A) (N/A) (N/A)
Post Institution Fee - Up to [N/A] [N/A] [N/A]
15 Claims (Per Claim Fee for
Each Claim in Excess of 15
is $550)
Total Post Grant Review *$35,800 $30,000 -$5,800 -16%
or Covered Business (N/A) (N/A) (N/A) (N/A)
Method Patent Fees (NEW) [N/A] [N/A] [N/A] [N/A]
(For Current Fees, Per
Claim Fee for Each Claim
in Excess of 20 is $800)
(3) Fees To Be Set Above Cost Recovery
Publication Fee for Early, $300 $0 -$300 -100%
Voluntary, or Normal (N/A) ($0) (-$300) (-100%)
Publication (Pre Grant [N/A] [$0] [-$300] [-100%]
Publication or PG Pub)
Utility Issue Fee $1,740 $960 -$780 -45%
($870) ($480) (-$390) (-45%)
[N/A] [$240] [-$630] [-72%]
Combined Total - Pre-grant $2,040 $960 -$1,080 -53%
Publication and Issue ($1,170) ($480) (-$690) (-59%)
Fee - Utility [N/A] [$240] [-$930] [-79%]
Maintenance Fee Due at $1,130 $1,600 +$470 +42%
3.5 Years (1st Stage) ($565) ($800) (+$235) (+42%)
[N/A] [$400] [-$165] [-29%]
Maintenance Fee Due at $2,850 $3,600 +$750 +26%
7.5 Years (2nd Stage) ($1,425) ($1,800) (+$375) (+26%)
[N/A] [$900] [-$525] [-37%]
Maintenance Fee Due at $4,730 $7,400 +$2,670 +56%
11.5 Years (3rd Stage) ($2,365) ($3,700) (+$1,335) (+56%)
[N/A] [$1,850] [-$515] [-22%]
(4) Fees That Will Not Be Set Using Cost Data as an Indicator
Extensions for Response $150 $200 +$50 +33%
within 1st Month ($75) ($100) (+$25) (+33%)
[N/A] [$50] [-$25] [-33%]
Extensions for Response $560 $600 +$40 +7%
within 2nd Month ($280) ($300) (+$20) (+7%)
[N/A] [$150] [-$130] [-46%]
Extensions for Response $1,270 $1,400 +$130 +10%
within 3rd Month ($635) ($700) (+$65) (+10%)
[N/A] [$350] [-$285] [-45%]
Extensions for Response $1,980 $2,200 +$220 +11%
within 4th Month ($990) ($1,100) (+$110) (+11%)
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[N/A] [$550] [-$440] [-44%]
Extensions for Response $2,690 $3,000 +$310 +12%
within 5th Month ($1,345) ($1,500) (+$155) (+12%)
[N/A] [$750] [-$595] [-44%]
Utility Application Size $310 $400 +$90 +29%
Fee - For each Additional ($155) ($200) (+$45) (+29%)
50 Sheets that Exceed 100 [N/A] [$100] [-$55] [-35%]
Sheets
Independent Claims in $250 $420 +$170 +68%
Excess of 3 ($125) ($210) (+$85) (+68%)
[N/A] [$105] [-$20] [-16%]
Claims in Excess of 20 $60 $80 +$20 +33%
($30) ($40) (+$10) (+33%)
[N/A] [$20] [-$10] [-33%]
Multiple Dependent Claim $450 $780 +$330 +73%
($225) ($390) (+$165) (+73%)
[N/A] [$195] >[-$30] [-13%]
Correct Inventorship After N/A $1,000 +$1,000 N/A
First Action on the Merits (N/A) ($500) (+$500) (N/A)
(NEW) [N/A] [$250] [+$250] [N/A]
Derivation Petition Fee (NEW) *$400 $400 $0 0%
(N/A) (N/A) (N/A) (N/A)
[N/A] [N/A] [N/A] [N/A]
Derivation Institution and N/A $0 $0 N/A
Trial Fee (NEW) (N/A) ($0) ($0) (N/A)
[N/A] [$0] [$0] [N/A]
Assignments Submitted $40 $0 -$40 -100%
Electronically (NEW) (N/A) (N/A) (N/A) (N/A)
[N/A] [N/A] [N/A] [N/A]
Assignments Not Submitted $40 $40 $0 0%
Electronically (NEW) (N/A) (N/A) (N/A) (N/A)
[N/A] [N/A] [N/A] [N/A]
(1) Fees To Be Set at Cost Recovery
The following two fees are set at cost recovery. These fees support
the policy factor of "offering patent prosecution options to applicants"
by providing applicants with flexibilities in seeking patent protection.
A discussion of the rationale for the proposed changes follows.
Request for Prioritized Examination:
Table 5 - Request for Prioritized Examination Fee Changes
Current Proposed Dollar Percent
fees fees change change
Fee information Large Large Large Large
(small) (small) (small) (small)
[micro] [micro] [micro] [micro]
entity entity entity entity
Request for Prioritized $4,800 $4,000 -$800 -17%
Examination ($2,400) ($2,000) (-$400) (-17%)
[N/A] [$1,000] [-$1,400] [-58%]
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Table 6 - Request for Prioritized Examination Cost Information
Cost information FY 2011
Cost Calculation is available in the proposed rule $4,000
published in the Federal Register Changes To Implement
the Prioritized Examination Track (Track I) of the
Enhanced Examination Timing Control Procedures, 76 FR
6369 (Feb. 4, 2011)
A patent applicant may seek prioritized examination at the time of
filing an original utility or plant application or a continuation
application thereof or upon filing an RCE in compliance with section
1.114. A single request for prioritized examination may be granted for
an RCE in a plant or utility application. When in the prioritized
examination track, an application will be accorded special status
during prosecution until a final disposition is reached. The target for
prioritized examination is to provide a final disposition within twelve
months, on average, of prioritized status being granted. This
prioritized examination procedure is part of an effort by the USPTO to
provide patent applicants patent prosecution options with greater
control over the timing of examination of their applications. The
procedure enables applicants to have greater certainty in their patent
rights sooner.
The AIA established the current large and small entity fees for
prioritized examination, which the Office put in place in 2011. See
Changes To Implement the Prioritized Examination Track (Track I) of the
Enhanced Examination Timing Control Procedures Under the Leahy-Smith
America Invents Act, 76 FR 59050 (Sept. 23, 2011). The large entity fee
is above the Office's cost to process a single prioritized examination
request to subsidize the fee revenue lost from providing small entity
applicants a 50 percent discount from the large entity fee. The cost
calculation for the prioritized examination fees is available in the
proposed rule. See Changes To Implement the Prioritized Examination
Track (Track I) of the Enhanced Examination Timing Control Procedures,
76 FR 6369 (Feb. 4, 2011). The higher large entity fee, coupled with
the lower small entity fee, recovers the Office's total cost for
conducting all prioritized examinations.
Under section 10, micro entities are eligible to receive a 75
percent discount from the large entity fee for prioritized examination.
Here, the Office proposes to set the large entity fee at cost ($4,000),
instead of further increasing the fee to subsidize the new micro entity
discount. This amount is the same as that which was proposed in the
initial fee schedule delivered to the PPAC on February 7, 2012. The
Office proposes to recover this subsidy through other fees that will be
set above cost recovery, rather than through a separate, higher, large
entity fee for prioritized examinations. The Office believes this
system will foster innovation and allow for ease of entry into the
patent system. Setting the large entity prioritized examination fee
further above cost would contradict this policy factor and hinder fast
patent protection for large entity applicants.
Request for Continued Examination (RCE) - Second and Subsequent
Request (New):
Table 7 - Second and Subsequent Request for
Continued Examination (RCE) Fee Changes
Current Proposed Dollar Percent
fees fees change change
Fee description Large Large Large Large
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(small) (small) (small) (small)
[micro] [micro] [micro] [micro]
entity entity entity entity
Second and Subsequent Requests $930 $1,700 +$770 +83%
for Continued Examination ($465) ($850) (+$385) (+83%)
(RCE) (NEW) [N/A] [$425] [-$40] [-9%]
Table 8 - Request for Continued Examination (RCE)
Historical Cost Information
Historical unit cost information FY 2011 FY 2010 FY 2009
Request for Continued Examination $2,070 $1,696 $1,881
(RCE).
Percentage of RCE cost compared 60% 43% 51%
to the cost to process a new
application
The historical unit cost information is calculated by subtracting the cost
to complete a single application with no RCEs from the cost to complete a
single application with one RCE. A description of the cost components is
available for review in the "Section 10 Fee Setting - Activity-Based
Information and Costing Methodology" document. It is reasonable to expect
that the cost to the Office to complete a single RCE should be less than
the cost to complete a new application because an RCE is continuing from
work already performed on the original application. The Office's historical
cost data demonstrates this, with the cost to process an RCE being, on
average, half of the cost to prosecute a new application.
An applicant may file an RCE in an application that is under final
rejection (i.e., prosecution is closed) by filing a submission and
paying a specified fee within the requisite time period. Applicants
typically file an RCE when they choose to continue to prosecute an
application before the examiner, rather than appeal a rejection or
abandon the application. In FY 2011, about 30 percent of applications
filed were for RCEs. Generally, around 70 percent of RCE applications
filed in a year are for first RCEs and the remaining 30 percent are a
second or subsequent RCE. Given this data, it is reasonable to expect
that most outstanding issues are resolved with the first RCE. Those
applications that cannot be completed with the first RCE do not
facilitate an effective administration of the patent system with the
prompt conclusion of patent prosecution.
On February 7, 2012, the Office delivered to the PPAC a proposed
RCE fee of $1,700. In response to stakeholder feedback on both the
individual fee level and the growth rate of the patent operating
reserve, the Office now proposes to divide the fee for RCEs into two
parts: (1) A fee for a first RCE; and (2) a second, higher fee for a
second or subsequent RCE. The Office proposes this RCE fee division
because, as noted above, based on historical cost information, 70
percent of RCEs are for the first RCE, which indicates that applicants
need modest additional time to resolve the outstanding issues with the
examiner. The proposed multipart RCE fees demonstrate how the Office
seeks to facilitate the effective administration of the patent system
and offer patent prosecution options to applicants.
The large entity fee for the first RCE would be set about 30
percent below cost recovery at $1,200 to advance innovation by easing
the burden on an applicant needing to resolve the outstanding items
with an examiner. The Office proposes to set the fee for the second and
subsequent RCEs at the same amount as initially delivered to PPAC,
i.e., $1,700, which is estimated to be at cost recovery. Setting the
second and subsequent RCE fees higher than the fee for the first RCE
helps to recover costs for activities that strain the patent system.
The USPTO calculated the large entity cost at $1,700 (rounded) by
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averaging historical costs after estimating the incremental cost to
complete a single application with one RCE compared to the cost to
complete an application with no RCE. The Office used a three-year
average to estimate the cost of a single RCE in lieu of using only FY
2011 data, because the trend in historical data shows that the cost to
process an RCE increased in FY 2011, and the Office believes this
increase is due to an anomaly caused by the Clearing the Oldest Patent
Application (COPA) initiative, as described in the FY 2011 USPTO
Performance and Accountability Report, available at
http://www.uspto.gov/about/stratplan/ar/2011/mda_02_03.html.
When an applicant does not agree with a final rejection notice, the
applicant has the option to file a notice of appeal, for which the fee
is also proposed to be set below cost recovery and less than the fee
proposed for the first, and second and subsequent, RCEs (see appeal fee
information in the following section). The USPTO proposes this fee
relationship to ensure that all applicants have viable options to
dispute a final rejection when they believe the examiner has erred.
These patent prosecution options allow applicants to make critical
decisions at multiple points in the patent prosecution process.
(2) Fees To Be Set Below Cost Recovery
There are seven types of fees that the Office proposes to be set
below cost recovery that meet the greater than plus or minus 5 percent
and 10 dollars criteria. The policy factors relevant to setting fees
below cost recovery are fostering innovation and offering patent
prosecution options to applicants. Applying these policy factors to set
fees below cost recovery benefits the patent system by keeping the fees
low and making patent filing and prosecution more available to
applicants, thus fostering innovation. Although many fees would
increase from current fee rates under this proposed rule, the Office is
not proposing to increase "pre-grant" fees (e.g., filing, search, and
examination) enough to create the same barrier to entry as otherwise
would have been created if fees were to recover the full cost of the
activity. The proposed fee schedule offers patent prosecution options
to provide applicants flexible and cost-effective options for seeking
and completing patent protection. This strategy provides multipart and
staged fees for certain patent prosecution activities. A discussion of
the rationale for each proposed fee adjustment follows.
Basic Filing, Search, and Examination - Utility:
Table 9 - Basic Filing, Search, and Examination -
Utility Fee Changes
Current Proposed Dollar Percent
fees fees change change
Fee description Large Large Large Large
(small) (small) (small) (small)
[micro] [micro] [micro] [micro]
entity entity entity entity
Basic Filing Fee - Utility $380 $280 -$100 -26%
($190) ($140) (-$50) (-26%)
[N/A] [$70] [-$120] [-63%]
Utility Search Fee $620 $600 -$20 -3%
($310) ($300) (-$10) (-3%)
[N/A] [$150] [-$160] [-52%]
Utility Examination Fee $250 $720 +$470 +188%
($125) ($360) (+$235) (+188%)
[N/A] [$180] [+$55] [+44%]
Basic Filing, Search, $1,250 $1,600 +$350 +28%
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and Exam - Utility ($625) ($800) (+$175) (+28%)
(Total) [N/A] [$400] [-$225] [-36%]
Table 10 - Basic Filing, Search, and Examination -
Utility Fee Historical Cost Information
Historical unit cost information FY 2011 FY 2010 FY 2009
$/% $/% $/%
of total of total of total
Basic Filing Fee - Utility $234/6% $243/6% $241/7%
Utility Search Fee $1,521/43% $1,694/43% $1,520/41%
Utility Examination Fee $1,814/51% $1,969/51% $1,904/52%
Total Unit Cost $3,569/100% $3,906/100% $3,665/100%
A non-provisional application for a patent includes filing, search,
and examination fees. Currently, the large entity basic filing, search,
and examination fees for a utility patent recover slightly more than
one-third of the average unit cost for prosecuting a patent application,
while a small entity application recovers around 17 percent of the average
unit cost. The Office proposes to maintain this "back-end" subsidy of
"front-end" fees structure to achieve the policy goal of fostering
innovation.
The current fee rates and respective costs associated with each stage
of patent prosecution are out of alignment. For example, on average, 94
percent of the costs associated with filing, searching, and examining an
application occur in the search and examination stages. Approximately half
of those costs are estimated to occur in the examination stage, but only 20
percent of the total filing, search, and examination fees are derived from
the examination fee (see Table 11). To adjust this fee structure and help
stabilize the USPTO funding model, the Office proposes to increase the total
filing, search, and examination fees and to realign the fee rates to more
closely track the cost pattern by stage of prosecution (i.e., filing, search,
and examination), while keeping each stage below actual cost.
Table 11 - Utility Basic Filing, Search, and Examination -
Current and Proposed Fee Information
Proposed to
Proposed fee information Current $/% PPAC $/% of Proposed $/%
of total total of total
Basic Filing Fee - Utility $380/30% $400/22% $280/17%
Utility Search Fee $620/50% $660/36% $600/38%
Utility Examination Fee $250/20% $780/42% $720/45%
Total Fees $1,250/100% $1,840/100% $1,600/100%
On February 7, 2012, the Office delivered to the PPAC a proposed
combined total fee for filing, search, and examination of $1,840. In
response to stakeholder feedback on both the individual fee level and
the growth rate of the patent operating reserve, the Office now
proposes to reduce the combined fees from the initial proposal ($1,840)
to $1,600. This adjustment keeps the cost of entering the patent system
at or below cost for large, small, and new micro entity applicants - 45
percent, 22 percent, and 11 percent of FY 2011 total cost,
respectively. Likewise, the proposed adjustment for filing, search, and
examination fees continues to ensure that these initial fees remain a
small part (10 percent) of the cost to apply for patent protection when
compared to the average legal fees. The filing, search, and examination
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fees are also only 10 percent of the total fees paid for a patent
through maintenance to full term (i.e., filing, search, examination,
issue, and maintenance).
The overall increase in filing, search, and examination fees
facilitates the effective administration of the patent system, because
it encourages applicants to submit only the most thoughtful and
unambiguous applications, therefore facilitating examiners' ability to
provide prompt, quality interim and final decisions. At the same time,
it helps to stabilize the Office's revenue stream by collecting additional
revenue when an application is filed, instead of when it is later published
or issued. Also, while the Office proposes to increase these application
fees, reducing the pre-grant publication and issue fees will offset
that increase. In addition, as the patent IT systems continue to
improve, the Office is also contemplating providing additional fee
discounts to encourage applicants to use the new IT systems, when
available, and the Office welcomes public comment on the possibility of
these discounts.
The Office recognizes that some applicants may choose to reduce the
number of applications filed in response to this proposed increase in
fees. However, the Office anticipates that this impact will be
relatively short-term; lasting for the first two and a half years of
the fee increase. The Office estimates that applicants will file 1.3
percent fewer patent applications during FY 2013 than the number
estimated to be filed in the absence of a fee increase (with new fee
schedule implementation for half the fiscal year). The Office estimates
that 2.7 percent fewer patent applications will be filed during FY 2014
and 4.0 percent fewer patent applications beginning in FY 2015, in
response to the proposed fee adjustment. However, despite the decrease
in patent applications filed when compared to the number filed absent
this proposed fee increase, the Office estimates that the overall
number of patent applications filed will continue to grow each year,
albeit at a lower growth rate in FY 2013 through FY 2015. The Office
estimates that beginning in FY 2016 the growth in patent applications
filed will return to the same levels anticipated in the absence of a
fee increase. Additional information about this estimate, including the
calculation methodology, is available at
http://www.uspto.gov/aia_implementation/fees.jsp, in a document entitled
"USPTO Section 10 Fee Setting - Description of Elasticity Estimates." The
economic impact of this proposed adjustment is further considered in the
cost-benefit calculation of the Regulatory Impact Analysis, available at
http://www.uspto.gov/aia_implementation/fees.jsp.
It should be noted that utility patent fees are referenced in this
section to simplify the discussion of the fee rationale. However, the
rationale also applies to the filing, search, and examination fee
changes for design, plant, reissue, and PCT national stage fees as
outlined in the "USPTO Section 10 Fee Setting - Table of Patent Fee
Changes."
Request for Continued Examination (RCE) - First Request:
Table 12 - First Request for Continued Examination (RCE)
Fee Changes
Current Proposed Dollar Percent
fees fees change change
Fee description Large Large Large Large
(small) (small) (small) (small)
[micro] [micro] [micro] [micro]
entity entity entity entity
First Request for Continued $930 $1,200 +$270 +29%
Examination (RCE) ($465) ($600) (+$135) (+29%)
[N/A] [$300] [-$165] [-35%]
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Table 13 - Request for Continued Examination (RCE)
Historical Cost Information
Historical unit cost information FY 2011 FY 2010 FY 2009
Request for Continued Examination $2,070 $1,696 $1,881
(RCE)
Percentage of RCE cost compared 60% 43% 51%
to the cost to process a new
application
The historical unit cost information is calculated by subtracting the cost
to complete a single application with no RCEs from the cost to complete a
single application with one RCE. A description of the cost components is
available for review in the "Section 10 Fee Setting - Activity-Based
Information and Costing Methodology" document. It is reasonable to expect
that the cost to the Office to complete a single RCE should be less than
the cost to complete a new application because an RCE is continuing from
work already performed on the original application. The Office's historical
cost data demonstrates this, with the cost to process an RCE being, on
average, half of the cost to prosecute a new application.
An applicant may file an RCE in an application that is under final
rejection (i.e., prosecution is closed) by filing a submission and
paying a specified fee within the requisite time period. Applicants
typically file an RCE when they choose to continue to prosecute an
application before the examiner, rather than appeal a rejection or
abandon the application. In FY 2011, about 30 percent of applications
filed were for RCEs. Generally, around 70 percent of RCE applications
filed in a year are for first RCEs and the remaining 30 percent are a
second or subsequent RCE. Given this data, it is reasonable to expect
that most outstanding issues are resolved with the first RCE.
On February 7, the Office delivered to the PPAC a proposed RCE fee
of $1,700. In response to stakeholder feedback on both the individual
fee level and the growth rate of the patent operating reserve, the
Office now proposes to divide the fees for RCE into two parts: (1) a
fee for a first RCE; and (2) a second, higher fee for a second or
subsequent RCE. The Office is proposing this RCE fee division because,
as stated before, 70 percent of RCEs are for the first RCE, which
indicates that applicants need modest additional time to resolve the
outstanding issues with the examiner. Multipart RCE fees demonstrate
how the Office seeks to facilitate the effective administration of the
patent system and offer patent prosecution options to applicants.
The large entity fee for the first RCE would be set about 30
percent below cost recovery at $1,200 to advance innovation by easing
the burden on an applicant needing to resolve the outstanding items
with an examiner. This amount is a reduction from the $1,700 fee
included in the February 7, 2012, initial proposal to PPAC.
The USPTO has calculated the large entity cost at $1,700 (rounded)
by averaging historical costs afterestimating the incremental cost to
complete a single application with one RCE compared to the cost to complete
an application with no RCE. The Office used a three-year average to estimate
the cost of a single RCE in lieu of using only FY 2011 data, because the
trend in historical data shows that the cost to process an RCE increased in
FY 2011, and the Office believes this increase is due to an anomaly caused
by the Clearing the Oldest Patent Application (COPA) initiative, as
described in the FY 2011 USPTO Performance and Accountability Report,
available at http://www.uspto.gov/about/stratplan/ar/2011/mda_02_03.html.
When an applicant does not agree with a final rejection notice, the
applicant has the option to file a notice of appeal as an alternative
to filing an RCE. The fee to file a notice of appeal is also proposed
to be set below cost recovery and less than the fee proposed for the
first, and second and subsequent, RCEs (see appeal fee information in
the following section). The USPTO proposes this fee relationship to
ensure all applicants have viable options to dispute a final rejection
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when they believe the examiner has erred. These patent prosecution
options allow applicants to make critical decisions at multiple points
in the patent prosecution process.
In addition to dividing the RCEs fees, the Office is exploring
other ways to address RCEs. Specifically, the Office recently announced
two pilot programs that aim to avoid the need to file an RCE by
permitting: (i) An Information Disclosure Statement to be submitted
after payment of the issue fee; and (ii) further consideration of after
final responses.
The first initiative, called Quick Path Information Disclosure
Statement (IDS) Pilot, permits an applicant to file an IDS after a
final rejection and gives the examiner time to consider whether
prosecution should be reopened. If the items of information in the IDS
do not require prosecution to be reopened, the application will return
to issue, thereby eliminating need for an RCE.
The second initiative, called the After Final Consideration Pilot,
authorizes a limited amount of non-production time for examiners to
consider responses filed after a final rejection with the goal of
achieving compact prosecution and increased collaboration between
examiners and stakeholders. Accordingly, the Office is hopeful for the
success of these two pilot programs to reduce the number of RCEs and
thereby enable applicants to secure a patent through a single
application filing.
Appeal Fees (Partially New):
Table 14 - Appeal Fee Changes
Current Proposed Dollar Percent
fees fees change change
Fee description Large Large Large Large
(small) (small) (small) (small)
[micro] [micro] [micro] [micro]
entity entity entity entity
Notice of Appeal $620 $1,000 +$380 +61%
($310) ($500) (+$190) (+61%)
[N/A] [$250] [-$60] [-19%]
Filing a Brief in Support $620 $0 -$620 -100%
of an Appeal in Application ($310) ($0) (-$310) (-100%)
or Ex Parte Reexamination [N/A] [$0] [-$310] [-100%]
Proceeding
Appeal Forwarding Fee for N/A $2,000 +$2,000 N/A
Appeal in Examination or (N/A) ($1,000) (+$1,000) (N/A)
Ex Parte Reexamination [N/A] [$500] [+$500] [N/A]
Proceeding or Filing a Brief
in Support of an Appeal in
Inter Partes Reexamination
(NEW)
Total Appeal Fees $1,240 $1,000 -$240 -19%
(paid before Examiner ($620) ($500) (-$120) (-19%)
Answer) [N/A] [$250] [-$370] [-60%]
Total Appeal Fees $1,240 $3,000 +$1,760 +142%
(paid after Examiner ($620) ($1,500) (+$880) (+142%)
Answer) [N/A] [$750] [+$130] [+21%]
Table 15 - Appeal Fee Historical Cost Information
Historical unit cost information FY 2011 FY 2010 FY 2009
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Notice of Appeal to Patent Trial $4,799 $4,960 $5,008
and Appeal Board Filing a Brief
in Support of an Appeal
Appeal Forwarding Fee
An applicant who disagrees with an examiner's final rejection may
appeal to the BPAI by filing a notice of appeal and the required fee
within the time period provided. An applicant likewise may file a
notice of appeal after the applicant's claim(s) has/have been twice
rejected, regardless of whether the claim(s) has/have been finally
rejected. Further, an applicant may file a notice of appeal after a
first rejection in a continuing application if any of theclaims in the
parent application were previously rejected.
Within two months from the date of filing the notice of appeal, the
appellant must file a Brief. Then, the examiner must file an Examiner's
Answer. After the Answer is mailed, the appeal file is forwarded to the
BPAI for review.
Currently, a large entity applicant pays $620 to file a notice of
appeal and another $620 when filing a brief - a total of $1,240. These
current fees only recover 25 percent of the Office's cost of an appeal.
The Office proposes to increase appeal fees to reduce the gap between
fees and cost. At the same time, the Office proposes to offer patent
prosecution options to applicants and stage the appeal fees to recover
additional cost at later points in time and thereby minimize the cost
impacts on applicants associated with withdrawn final rejections.
The Office proposes a $1,000 notice of appeal fee and a $0 fee when
filing the brief. Both of these actions would occur prior to the
preparation of an Examiner's Answer (and forwarding of the appeal to
the BPAI). The Office recognizes that after some notices of appeal are
filed, the matter is resolved, and there is no need to take the
ultimate step of forwarding the appeal to the BPAI for a decision. The
Office further proposes a $2,000 fee to forward the appeal file -
containing the appellant's Brief and the Examiner's Answer - to the BPAI
for review. Under this proposed fee structure, one-third of the fee
would be paid at the time of notice of appeal, and the remaining two-
thirds would be paid after the Examiner's Answer, but only if the
appeal is then forwarded to the BPAI. This fee payment structure allows
the appellant to reduce the amount invested in the appeal process until
receiving the Examiner's Answer. In fact, when prosecution issues are
resolved after the notice of appeal and before forwarding an appeal to
the BPAI, a large entity appellant would pay only $1,000 to obtain an
Examiner's Answer - 19 percent less than under the current fee
structure.
Staging the appeal fees in this manner allows applicants to pay
less in situations when an application is either allowed or reopened
instead of being forwarded to the BPAI. This patent prosecution option
allows applicants to make critical decisions at multiple points in the
patent prosecution process.
When considering the proposed appeal fees, the Office evaluated
several options to minimize the cost to applicants. For example, it
contemplated refunding certain appeal fees if the appeal was not
forwarded to the BPAI. However, under the current refund statutory
authority, the Office can only refund all or part of a fee paid by
mistake or in excess of the fee due. See 35 U.S.C. 42(d). Neither of
these conditions would apply when the issues raised on appeal are
resolved and the appeal is not forwarded to the BPAI because the matter
is resolved.
On February 7, 2012, the Office delivered to PPAC a fee proposal
that included two appeal fee payment features: (1) Staging the appeal-
related fees so that cost impacts on some applicants are minimized; and
(2) paying a $0 pre-grant publication (PGPub) and issue fee if the
examiner withdraws a final rejection prior to an appeal being forwarded
to the BPAI.
While the staging features delivered to PPAC are included in this
proposed rule, after reevaluating the $0 PGPub and Issue fee, the
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Office decided against proposing it here. Sometimes mistakes or errors
in prosecution are not self-evident, and sometimes examiners properly
consider After Final amendments and allow the application even after
the applicant has filed an appeal. Accordingly, when operating with a
$0 PGPub and Issue fee, the Office had planned to implement a case-by-
case review process to evaluate the root cause of why the applicant
filed an appeal. This process would increase the Office's cost of
operations without realizing counterbalancing benefits.
Additionally, a $0 PGPub and issue fee would eliminate the need for
the notice of issue fee payment and could impact when applicants
receive notice that their applications will proceed to issue. The
Office understands that the timing of issuance is extremely important
in managing a business, and that timing may be critically important
when an applicant intends to file a continuing application. In view of
these considerations and risks, the Office decided not to propose a $0
PGPub and issue fee here.
Finally, just as the Office is exploring ways to minimize
unnecessary RCE filings, the Office is likewise exploring other
options, including pilot programs, in an effort to reduce the need to
appeal to the BPAI.
Ex Parte Reexamination:
Table 16 - Ex Parte Reexamination Fee Changes
Current Proposed Dollar Percent
fees fees change change
Fee description Large Large Large Large
(small) (small) (small) (small)
[micro] [micro] [micro] [micro]
entity entity entity entity
Ex Parte Reexamination *$17,750 $15,000 -$2,750 -15%
(N/A) ($7,500) (-$10,250) (-58%)
[N/A] [$3,750] [-$14,000] [-79%]
* For purposes of comparing amounts, where a new fee has been proposed under
35 U.S.C. 41(d)(2) in the January and February 2012 Proposed Rules, that
proposed fee (as adjusted by the final rule) is included in the current
fee column and denoted with (*).
Table 17 - Ex Parte Reexamination Historical Cost Information
Historical unit cost information FY 2011 FY 2010 FY 2009
Ex Parte Reexamination $19,626 $16,647 $17,162
Table 18 - Ex Parte Reexamination Prospective Cost Information
Prospective cost information FY 2013
Cost Calculation, 77 FR 3666 $17,750
(Jan. 25, 2012) available at
http://www.uspto.gov/aia_implementation/cost_calc_supplemental_exam.pdf
Any person (including anonymously) may file a petition for the ex
parte reexamination of a patent that has been issued. The Office
initially determines if the petition presents "a substantial new
question of patentability" as to the challenged claims. If such a new
question has been presented, the Office will order a reexamination of
the patent for the relevant claims.
Currently, the ex parte reexamination fee is $2,520. 37 CFR 1.20.
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However, while examining its costs to estimate the cost of a
supplemental examination (pursuant to section 41(d)), the Office found
that its current ex parte reexamination fee does not recover the
Office's costs for that service. In fact, the Office incurs about seven
times the amount of the current fee for an ex parte reexamination.
Accordingly, to remedy this discrepancy, in January 2012, the Office
proposed to set the ex parte reexamination fee under section 41(d) at
$17,750, which recovers the Office's costs for the ex parte
reexamination (Changes To Implement the Supplemental Examination
Provisions of the Leahy-Smith America Invents Act and To Revise
Reexamination Fees, 77 FR 3666 (Jan. 25, 2012)).
On February 7, 2012, the Office delivered to the PPAC a fee
proposal under section 10 of the AIA proposing setting the large entity
fee at the same amount as proposed in the January and February 2012
Proposed Rules (i.e., $17,750) and introducing new small and micro
entity discounts for an ex parte reexamination. However, in accordance
with section 10, third party requestors are not eligible for the micro
entity discounts.
In response to stakeholder feedback on both the individual fee
level and the growth rate of the patent operating reserve in the
initial proposal, the Office now proposes to reduce the large entity
fee for ex parte reexamination to $15,000, which is 15 percent below
the Office's cost of conducting the proceeding. Setting the fee below
cost will reduce the growth rate of the operating reserve and permit
easier access to the ex parte reexamination process, which benefits the
patent system and patent quality by removing low quality patents.
Supplemental Examination:
Table 19 - Supplemental Examination Fee Changes
Current Proposed Dollar Percent
fees fees change change
Fee description Large Large Large Large
(small) (small) (small) (small)
[micro] [micro] [micro] [micro]
entity entity entity entity
Processing and Treating a *$5,140 $4,400 -$740 -14%
Request for Supplemental (N/A) $2,200) (-$2,940) (-57%)
Examination - Up to 20 [N/A] [$1,100] [-$4,040] [-79%]
Sheets (NEW)
Ex Parte Reexamination Ordered *$16,120 $13,600 -$2,520 -16%
as a Result of a Supplemental (N/A) ($6,800) (-$9,320) (-58%)
Examination Proceeding (NEW). [N/A] [$3,400] [-$12,720] [-79%]
Total Supplemental *$21,300 $18,000 -$3,330 -15%
Examination Fees (N/A) ($9,000) (-$12,300) (-58%)
[N/A] [$4,500] [-$16,800] [-79%]
* For purposes of comparing amounts, where a new fee has been proposed under
35 U.S.C. 41(d)(2) in the January and February 2012 Proposed Rules, that
proposed fee (as adjusted by the final rule) is included in the current
fee column and denoted with (*).
Table 20 - Supplemental Examination Prospective Cost Information
Prospective cost information FY 2013
Cost calculation 77 FR 3666 (Jan. 25, 2012) available at
http://www.uspto.gov/aia_implementation/cost_calc_supplemental_exam.pdf
Supplemental Examination Request $5,180
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Supplemental Examination Reexamination $16,120
Total Supplemental Examination Costs $21,300
A patent owner may request a supplemental examination of a patent
by the Office to consider, reconsider, or correct information believed
to be relevant to the patent. This proceeding will help the patent
owner preempt challenges to the patent during litigation. The need for
this proceeding arises only after a patent owner recognizes that there
is information that should have been brought to the attention of the
Office to consider or reconsider during the application process, or
information submitted during the application process that needs to be
corrected.
The January and February 2012 Proposed Rules (as adjusted by the
final rule), using section 41(d), proposed to set the fees for the
request for supplemental examination and the ex parte reexamination
ordered as a result of a supplemental examination proceeding at $5,140
and $16,120, respectively.
On February 7, 2012, the Office delivered to the PPAC proposed fees
of $7,000 and $20,000, respectively, using section 10 of the AIA, for
the request for supplemental examination and the ex parte reexamination
ordered as a result of a supplemental examination proceeding. This
increase was proposed to encourage applicants to submit applications
with all relevant information during initial examination, which
facilitates compact patent prosecution. In response to stakeholder
feedback on both the individual fee level and the growth rate of the
patent operating reserve in the initial proposal, the Office now
proposes to reduce these fees to $4,400 and $13,600, respectively. The
Office believes these reduced fee amounts continue to be sufficient to
encourage applicants to submit applications with all relevant
information during initial examination, yet low enough to facilitate
the effective administration of the patent system by providing
patentees with an alternative to the court system for addressing
inequitable conduct. The Office proposes to set total supplemental
examination fees of $18,000, 15 percent below cost and 30 percent less
than the total of $27,000 included in the proposal delivered to PPAC on
February 7, 2012.
Inter Partes Review:
Table 21 - Inter Partes Review Fee Changes
Current Proposed Dollar Percent
fees fees change change
Fee description Large Large Large Large
(small) (small) (small) (small)
[micro] [micro] [micro] [micro]
entity entity entity entity
Inter Partes Review Request - NEW $9,000 +$9,000 N/A
Up to 20 Claims (Per Claim (N/A) (N/A) (N/A)
Fee for Each Claim in Excess [N/A] [N/A] [N/A]
of 20 is $200).
Inter Partes Review Post NEW $14,000 +$14,000 N/A
Institution Fee - Up to (N/A) (N/A) (N/A)
15 Claims (Per Claim Fee [N/A] [N/A] [N/A]
for Each Claim in Excess
of 15 is $400)
Total Inter Partes Review *$27,200 $23,000 -$4,200 -15%
Fees (For Current Fees, (N/A) (N/A) (N/A) (N/A)
per Claim Fee for Each [N/A] [N/A] [N/A] [N/A]
Claim in Excess of 20
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is $600)
* For purposes of comparing amounts, where a new fee has been proposed under
35 U.S.C. 41(d)(2) in the January and February 2012 Proposed Rules, that
proposed fee (as adjusted by the final rule) is included in the current fee
column and denoted with (*).
Table 22 - Inter Partes Review Prospective Cost Information
Prospective Cost Information FY 2013
The Total Inter Partes Review cost calculation of $27,200, 77 FR 6879,
(Feb. 9, 2012) is available for review at
http://www.uspto.gov/aia_implementation/rin-0651-ac70.pdf. The Office
estimated that 35 hours of Judge time would be required during review
and used this as the basis for estimating the cost for the Inter Partes
Review. The IT-related costs are included in the Review Request portion
of the fee.
Description Base cost Per claim cost
Inter Partes Review Request - $10,500 >20 = $200
up to 20 claims.
Inter Partes Review Post $16,700 >15 = $400
Institution Fee - up to
15 claims
Total Inter Partes $27,200 N/A
Review Costs
Inter partes review is a new trial proceeding created by the AIA
that allows the Office to review the patentability of one or more
claims in a patent only on a ground that could be raised under 35
U.S.C. 102 or 103, and only on the basis of prior art consisting of
patents or printed publications. The inter partes review process begins
with a third party filing a petition. An inter partes review may be
instituted upon a showing that there is a reasonable likelihood that
the petitioner would prevail with respect to at least one claim
challenged.
In February 2012, the Office proposed setting a single fee for
inter partes review pursuant to 35 U.S.C. 41(d), at a level to recover
the Office's entire cost of conducting such proceeding. (See 77 FR 6879
(Feb. 9, 2012)); (See also 77 FR 7041 (Feb. 10, 2012)). Under that
proposal, the fee for an inter partes review would be based on the
number of claims for which review is sought, with the entire fee due on
filing of the petition. A petitioner could file a petition seeking
review of up to 20 claims for the base fee of $27,200. Fees would
increase for each additional 10 claims. For example, an inter partes
review of 51 to 60 claims would have cost $68,000 (See 77 FR 7050 (Feb.
10, 2012)).
On February 7, 2012, the Office delivered to the PPAC a fee proposal
under section 10 setting the fees at the same amount as proposed in the
February 2012 Proposed Rule. In response to stakeholder feedback on the
individual fee levels, the structure of the proposed inter partes review
fees, and the overall growth rate of the patent operating reserve in the
initial proposal, with this rulemaking, the Office now proposes to set the
inter partes review fees at a level below the Office's cost recovery and
to improve the fee payment structure.
The Office now proposes to set four separate fees for inter partes
review, which the petitioner would pay upon filing a petition. The
Office also proposes to return fees for post-institution services
should a petition not be instituted. Similarly, the Office proposes
that fees paid for post-institution review of a large number of claims
be returned if the Office only institutes the review of a subset of the
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requested claims.
The USPTO proposes to set the fee for an inter partes review
petition at $9,000 for up to 20 claims. This fee would not be returned
or refunded to the petitioner even if the review is not instituted.
In addition, the USPTO proposes to set a per claim fee of $200 for
each claim requested for review in excess of 20. This fee would not be
returned or refunded to the petitioner if the review is not instituted
or if the institution is limited to a subset of the requested claims.
The USPTO also proposes to set the inter partes review post-
institution fee at $14,000, for a review of up to 15 claims. This fee
would be returned to the petitioner if the Office does not institute a
trial.
Likewise, the Office proposes to set a per claim fee of $400 for
review of each claim in excess of 15 during the post-institution trial.
The entire post-institution fee would be returned to the petitioner if
the Office does not institute a review. The excess claims fees would be
returned if review of l5 or fewer claims is instituted. If the Office
reviews more than 15 claims, but fewer than all of the requested
claims, it would return part of the fee for each claim the Office did
not review.
For example, under this proposal, if a party requests inter partes
review of 52 claims, the petitioner would pay $44,200 ($9,000 plus 32
[52 minus 20] times $200 equals $15,400; plus $14,000 plus 37 [52 minus
15] times $400 equals $28,800; for a total of $44,200). This amount is
35 percent less than what the petitioner would pay under either the
February 2012 Proposed Rule or the initial proposal to PPAC in February
2012. In addition, under this proposed rule, if the petitioner seeks
review of 52 claims, but the Office only institutes review of 40
claims, the Office would return $4,800 (it did not institute review of
the 41st through 52nd claim for which review was requested).
Alternatively, if the review is not instituted at all, the Office would
return the entire $28,800 for claims over 15 as well as the base
$14,000 post-institution fee.
The Office proposes to maintain these two claim thresholds - one for
petitions (up to 20 claims) and the other for the post-institution
trials (up to 15 claims) - because it anticipates that it will not
institute review of 25 percent of claims for which review is requested.
The Office bases this approach on its analysis of the initial inter
partes reexaminations filed after September 15, 2011, as well as the
new opportunity for patent owners to file a response to the petition
before the Office determines whether and for which claims to institute
review.
This proposal also considers certain policy factors, such as
fostering innovation through facilitating greater access to the inter
partes review proceedings because certainty of patent rights benefits
the overall IP system.
Post Grant Review or Covered Business Method Patent Review:
Table 23 - Post Grant Review or Covered Business Method
Patent Review Fee Changes
Current Proposed Dollar Percent
fees fees change change
Fee description Large Large Large Large
(small) (small) (small) (small)
[micro] [micro] [micro] [micro]
entity entity entity entity
Post Grant Review or Covered NEW $12,000 +$12,000 N/A
Business Method Patent Review (N/A) (N/A) (N/A)
Request - Up to 20 Claims [N/A] [N/A] [N/A]
(Per Claim Fee for Each Claim
in Excess of 20 is $250)
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Post Grant Review or Covered NEW $18,000 $18,000 N/A
Business Method Patent Review (N/A) (N/A) (N/A)
Post Institution Fee - Up to [N/A] [N/A] [N/A]
15 Claims (Per Claim Fee for
Each Claim in Excess of
15 is $550).
Total Post Grant Review or *$35,800 $30,000 -$5,800 -16%
Covered Business Method (N/A) (N/A) (N/A) (N/A)
Patent Review Fees (For [N/A] [N/A] [N/A] [N/A]
Current Fees, Per Claim
Fee for Each Claim in
Excess of 20 is $800)
* For purposes of comparing amounts, where a new fee has been proposed under
35 U.S.C. 41(d)(2) in the January and February 2012 Proposed Rules, that
proposed fee (as adjusted by the final rule) is included in the current
fee column and denoted with (*).
Table 24 - Post Grant Review or Covered Business Method
Patent Review Prospective Cost Information
Prospective Cost Information FY 2013
The Total Post Grant Review cost calculation of $35,800, 77 FR 6879,
(Feb. 9, 2012) is available for review at
http://www.uspto.gov/aia_implementation/rin-0651-ac70.pdf. The Office
estimated that 50 hours of Judge time would be required during review
and used this as the basis for estimating the cost for the Post Grant
Review. The IT-related costs are included in the Review Request portion
of the fee.
Description Base cost Per claim cost
Post Grant Review or Covered $14,700 >20 = $250
Business Method Patent
Review Request - up to 20
claims.
Post Grant Review or Covered $21,100 >15 = $550
Business Method Patent
Review Post Institution
Fee - up to 15 claims
Total Post Grant Review Costs $35,800 N/A
Post grant review is a new trial proceeding created by the AIA that
allows the Office to review the patentability of one or more claims in
a patent on any ground that could be raised under 35 U.S.C. 282(b)(2)
and (b)(3) in effect on September 16, 2012. The post grant review
process begins when a third party files a petition within nine months
of the grant of the patent. A post grant review may be instituted upon
a showing that it is more likely than not that at least one challenged
claim is unpatentable or that the petition raises an unsettled legal
question that is important to other patents or patent applications. If
the trial is instituted and not dismissed, the Board will issue a final
determination within one year of institution. This period can be
extended for good cause for up to six months from the date of one year
after instituting the review.
In February 2012, the Office proposed under 35 U.S.C. 41(d) to set
a single fee for post grant review at a level to recover the entire
cost of conducting the proceeding based on the number of claims under
review, with the entire fee due on filing of the petition. (See Changes
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To Implement Post-Grant Review Proceedings, 77 FR 7060 (Feb. 9, 2012)).
The Office proposed a base fee of $35,800 for a post grant review of up
to 20 claims. In addition, the Office proposed a structure of
escalating fees for each additional 10 claims. For example, a post
grant review of 51 to 60 claims would cost $89,500 (See 77 FR 7060,
7070).
On February 7, 2012, the Office submitted to the PPAC a fee
proposed under section 10 setting the fees at the same amount as the
February 2012 proposed rule. In response to stakeholder feedback on the
individual fee levels, alternative post grant review fee structures,
and overall growth rate of the patent operating reserve in the initial
proposal, the Office now proposes to set the post grant review fee at a
level below the Office's cost recovery and to improve the fee payment
structure.
The Office proposes here to set four separate fees for post grant
review, which the petitioner would pay upon filing a petition for post
grant review. The Office also proposes to return fees for post-
institution services if a review is not instituted. Similarly, the
Office proposes that fees paid for a post-institution review of a large
number of claims be returned if the Office only institutes the review
of a subset of the requested claims. The Office proposes the same
structure and fees apply for covered business method review.
The Office proposes to set the fee for a post grant review petition
at $12,000 for up to 20 claims. This fee would not be returned or
refunded to the petitioner even if the review is not instituted by the
Office.
In addition, the Office proposes a per claim fee of $250 for each
claim in excess of 20. This fee would not be returned or refunded to
the petitioner if the review is not instituted, or if the institution
is limited to a subset of the requested claims.
The USPTO also proposes a post grant review post-institution fee at
$18,000, for post-institution review of up to 15 claims. This fee would
be returned to the petitioner if the Office does not institute a
review.
Likewise, the Office proposes to set a per claim fee of $550 for
review of each claim in excess of 15 during the post-institution trial.
The entire fee would be returned to the petitioner if the Office does
not institute a review. The excess claims fees would be returned if
review of 15 or fewer claims is instituted. If the Office reviews more
than 15 claims, but fewer than all of the requested claims, it would
return part of the fee for each claim that was not instituted.
For example, under the proposal here, a party seeking post grant
review of 52 claims would pay $58,350 ($12,000 plus 32 [52 minus 20]
times $250 equals $20,000; plus $18,000 plus 37 [52 minus 15] times
$550 equals $38,350; for a total of $58,350). This amount is 35 percent
less than the petitioner would pay under the February 2012 Proposed
Rule and the initial proposal to PPAC in February 2012. In addition,
under this proposal, if the petitioner requests review of 52 claims,
but the Office only institutes review of 40 claims, then the Office
would return $6,600 (it did not institute review of the 41st through
52nd claims for which review was requested). Alternatively, if a review
is not instituted at all, the Office would return the entire $38,350
for claims over 15, as well as the base $18,000 post-institution fee.
The Office proposes to maintain two different claim thresholds - one
for petition (up to 20 claims) and the other for the post-institution
trials (up to 15 claims) - because it anticipates that it will not
institute a review of 25 percent of claims for which review is
requested. The Office bases this approach on its analysis of the
initial inter partes reexaminations filed after September 15, 2011, as
well as the new opportunity for patent owners to file a response to the
petition before the Office determines whether and for which claims to
institute review.
The adjustments proposed here also consider certain policy factors,
such as fostering innovation through facilitating greater access to the
post grant review proceedings because certainty of patent rights
benefits the overall IP system.
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Pre Grant Publication (PGPub) Fee:
Table 25 - Pre Grant Publication (PGPub) Fee Changes
Current Proposed Dollar Percent
fees fees change change
Fee description Large Large Large Large
(small) (small) (small) (small)
[micro] [micro] [micro] [micro]
entity entity entity entity
Publication Fee for Early, $300 $0 -$300 100%
Voluntary, or Normal (N/A) ($0) (-$300) (-100%)
Publication [N/A] [$0] [-$300] [-100%]
Publication Fee for $300 $300 $0 0%
Republication (N/A) (N/A) (N/A) (N/A)
[N/A] [N/A] [N/A] [N/A]
Table 26 - Pre Grant Publication (PGPub)
Historical Cost Information
Historical unit cost information FY 2011 FY 2010 FY 2009
Publication Fee for Early, Voluntary, $181 $158 $243
or Normal Publication
With certain exceptions, each nonprovisional utility and plant
patent application is published 18 months from the earliest filing
date. The fee for this pre-grant publication (PGPub) is paid only after
a patent is granted. If a patent is never granted, the applicant does
not pay the fee for PGPub. Once the Office determines that the
invention claimed in a patent application is patentable, the Office
sends a notice of allowance to the applicant, outlining the patent
application publication fees due, along with the patent issue fee. The
applicant must pay these publication and issue fees three months from
the date of the notice of allowance to avoid abandoning the
application.
Currently, the PGPub fee is set at $300 and collects over one and a
half times the cost to publish a patent application. The IP system
benefits from publishing patent applications; disclosing information
publicly stimulates research and development, as well as subsequent
commercialization through further development or refinement of an
invention. Therefore, a lower PGPub fee would benefit both the
applicant and innovators in the patent system.
Given that publishing a patent application 18 months after its
receipt benefits the IP system more than individual applicants, the
Office proposes to reduce the PGPub fee to $0. Reducing this fee also
helps rebalance the fee structure and offsets the proposed increases to
filing, search, and examination fees ($350 increase, less this $300
decrease is a net $50 increase - or 3 percent - to apply for a patent and
publish the application). This proposed change is consistent with the
initial proposal delivered to PPAC on February 7, 2012.
It should be noted that the PGPub fee for republication of a patent
application (1.18(d)(2)) is not proposed to be adjusted, but will be
set at the existing rate of $300. The Office proposes to keep this fee
at its existing rate for each patent application that must be published
again after a first publication for $0.
(3) Fees To Be Set Above Cost Recovery
There are two types of fees that the Office proposes to set above
cost recovery that meet the greater than plus or minus 5 percent and 10
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dollars criteria. The policy factor relevant to setting fees above cost
recovery is fostering innovation. Back-end fees (e.g., issue and
maintenance fees) work in concert with front-end fees. The above-cost,
back-end fees allow the Office to recover the revenue required to
subsidize the cost of entry into the patent and reduce the backlog of
patent applications. A discussion of the rationale for each proposed
change follows.
Issue Fees:
Table 27 - Issue Fee Changes
Current Proposed Dollar Percent
fees fees change change
Fee description Large Large Large Large
(small) (small) (small) (small)
[micro] [micro] [micro] [micro]
entity entity entity entity
Utility Issue Fee $1,740 $960 -$780 -45%
($870) ($480) (-$390) (-45%)
[N/A] [$240] [-$630] [-72%]
Table 28 - Issue Fee Historical Cost Information
Historical unit cost information FY 2011 FY 2010 FY 2009
Utility Issue Fee $257 $231 $224
Once the Office determines that the invention claimed in a patent
application is patentable, the USPTO sends a notice of allowance to the
applicant outlining the patent application publication and patent issue
fees due. The applicant must pay the publication and issue fees three
months from the date of the notice of allowance to avoid abandoning of
the application.
In setting fees due after completing prosecution at a level higher
than cost, front-end fees can be maintained below cost, thereby
fostering innovation. Currently, the large entity issue fee is set at
$1,740, which is seven times more than the cost of issuing a patent.
This fee recovers revenue, but it also poses a challenge to applicants
at time of allowance. When the issue fee is due, patent owners possess
less information about the value of their invention than they do a few
years later. Lowering issue fees would consequently help inventors
financially at a time when the marketability of their invention is less
certain. Finally, setting the PGPub fee at $0 as discussed above, and
recovering the combined cost of publishing and issuing an application
through only the issue fee benefits small and micro entity innovators.
The 50 percent discount for small entities and 75 percent discount for
micro entities are not available for the publication fee, but are
available for the issue fee. Thus, there are benefits to both the IP
system and the applicant when the issue fees are set at an amount lower
than the current fee amount, but still above cost recovery.
To both maintain the beneficial aspects of this back-end subsidy
model and realign the balance of the fee structure, the Office proposes
to decrease the large entity issue fee to $960. This amount is about
twice the cost of both publishing an application (which is proposed to
be set below cost at $0) and issuing a patent. This fee adjustment is
over a 50 percent decrease from the amount currently paid for both the
PGPub and issue fees together and is the amount initially proposed in
the fee schedule delivered to the PPAC on February 7, 2012.
It should be noted that utility issue fees are referenced in this
section to simplify the discussion of the fee rationale; however, the
rationale is applicable to the issue fee changes for design, plant, and
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reissue fees as outlined in the "USPTO Section 10 Fee Setting - Table
of Patent Fee Changes".
Maintenance Fees:
Table 29 - Maintenance Fee Changes
Current Proposed Dollar Percent
fees fees change change
Fee description Large Large Large Large
(small) (small) (small) (small)
[micro] [micro] [micro] [micro]
entity entity entity entity
Maintenance Fee Due at $1,130 $1,600 +$470 +42%
3.5 Years (1st Stage) ($565) ($800) (+$235) (+42%)
[N/A] [$400] [-$165] [-29%]
Maintenance Fee Due at $2,850 $3,600 +$750 +26%
7.5 Years (2nd Stage) ($1,425) ($1,800) (+$375) (+26%)
[N/A] [$900] [-$525] [-37%]
Maintenance Fee Due at $4,730 $7,400 +$2,670 +56%
11.5 Years (3rd Stage) ($2,365) ($3,700) (+$1,335) (+56%)
[N/A] [$1,850] [-$515] [-22%]
Table 30 - Maintenance Fee Historical Cost Information
Historical unit cost information FY 2011 FY 2010 FY 2009
Maintenance Fee Due at 3.5 Years ....... $1 $2
(1st Stage)
Maintenance Fee Due at 7.5 Years ....... $1 $2
(2nd Stage)
Maintenance Fee Due at 11.5 Years ....... $1 $2
(3rd Stage)
* Beginning in FY 2011, the Office determined that the maintenance fee
activity was in support of the process application fees activity and its
associated fees. Therefore, the Office reassigned these costs accordingly,
and no longer estimates a unit cost for maintenance fee activities.
Additional information about the methodology for determining the cost of
performing the Office's activities, including the cost components related
to respective fees, available at
http://www.uspto.gov/aia_implementation/fees.jsp#heading-1 in the
document titled "USPTO Section 10 Fee Setting - Activity-Based Information
and Costing Methodology."
Maintenance fees must be paid at defined intervals - 3.5 years, 7.5
years, and 11.5 years - after the Office grants a utility patent in
order to keep the patent in force. Maintaining a patent costs the
Office very little. However, maintenance fees benefit the Office and
the patent system by generating revenue that permits the Office to keep
front-end patent prosecution fees below cost and to subsidize the cost
of prosecution for small and micro entity innovators.
Additionally, maintenance fees will be paid only by patent owners
who believe the value of their patent is much higher than this fee for
renewing these patent rights, thus when not renewed the subject matter
of the patent can be utilized freely. On this score, setting early
maintenance fees lower than later maintenance fees mitigates
uncertainty associated with the value of the patent. As the value
becomes more certain over time, the maintenance fee should (and does)
increase, because patent owners have more information about the
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commercial value of the patented invention and can more readily decide
whether the benefit of a patent outweighs the cost of the fee. For
example, when a patent holder pays the first stage maintenance fee at
3.5 years, the holder has less information about the commercial value
of the patent than when the holder pays the third stage maintenance fee
at 11.5 years.
Therefore, under a progressively higher maintenance fee schedule, a
patent holder is positioned to perform an individual cost-benefit
analysis to determine if the patent is at least as valuable as the
maintenance fee payment. When the patent holder determines the patent
benefit (value) outweighs the cost (maintenance fee), the holder will
likely continue to maintain the patent. Conversely, when the patent
holder determines that the benefit is less than the cost, the holder
likely will not maintain the patent to full term. When the patent
expires, the subject matter of the patent is no longer held with
exclusive patent rights and subsequent stakeholders may utilize the
idea from the public domain and work to extend its innovation or
commercialization. More information on the economic costs and benefits
of patent renewal can be found in the rulemaking Regulatory Impact
Analysis, which is available for review at
http://www.uspto.gov/aia_implementation/fees.jsp.
The Office proposes to increase the first, second, and third stage
maintenance fees to $1,600, $3,600, and $7,400, respectively. This
increase is commensurate with the subsidies offered for prosecution of
a patent application and aligns with the fee setting strategy of
fostering innovation by setting front-end fees below cost. The increase
also ensures the USPTO has sufficient aggregate revenue to recover the
aggregate cost of operations and implement goals and objectives.
On February 7, 2012, the Office delivered to the PPAC proposed fees
of $1,600, $3,600, and $7,600 for the first, second, and third stage
maintenance fees respectively. In response to stakeholder feedback on
both the individual fee levels and the growth rate of the patent
operating reserve, the Office now proposes to decrease the third stage
maintenance fee to $7,400 while maintaining the first and second stage
maintenance fees at the rates proposed to the PPAC.
(4) Fees That Are Not Set Using Cost Data as an Indicator
Fees in this category include those proposed fees for which the
USPTO does not typically maintain historical cost information separate
from that included in the average overall cost of activities during
patent prosecution or did not refer to cost information for setting the
particular fee. Instead, the Office evaluates the policy factors
described in Rulemaking Goals and Strategies, Part III above, to inform
fee setting. Some of these fees are based on the size and complexity of
an application and help the Office to effectively administer the patent
system by encouraging applicants to engage in certain activities.
Setting fees at particular levels can: (1) Encourage the submission of
applications or other actions which lead to more efficient processing
where examiners can provide, and applicants can receive, prompt,
quality interim and final decisions; (2) encourage the prompt
conclusion of prosecuting an application, resulting in pendency
reduction and the faster dissemination of patented information; and (3)
help recover costs for activities that strain the patent system.
There are six types of fees in this category. A discussion of the
rationale for each proposed change follows.
Extensions of Time Fees:
Table 31 - Extensions of Time Fee Changes
Current Proposed Dollar Percent
fees fees change change
Fee description Large Large Large Large
(small) (small) (small) (small)
[micro] [micro] [micro] [micro]
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entity entity entity entity
Extensions for Response $150 $200 +$50 +33%
within 1st Month ($75) ($100) [+$25] (+33%)
[N/A] [$50] [-$25] [-33%]
Extensions for Response $560 $600 +$40 +7%
within 2nd Month ($280) ($300) [+$20] (+7%)
[N/A] [$150] [-$130] [-46%]
Extensions for Response $1,270 $1,400 +$130 +10%
within 3rd Month ($635) ($700) [+$65] (+10%)
[N/A] [$350] [-$285] [-45%]
Extensions for Response $1,980 $2,200 +$220 +11%
within 4th Month ($990) ($1,100) [+$110] (+11%)
[N/A] [$550] [-$440] [-44%]
Extensions for Response $2,690 $2,000 +$310 +12%
within 5th Month ($1,345) ($1,500) [+$155] (+12%)
[N/A] [$750] [-$595] [-44%]
If an applicant must reply within a non-statutory or shortened
statutory time period, the applicant can extend the reply time period
by filing a petition for an extension of time and paying the requisite
fee. Extensions of time may be automatically authorized at the time an
application is filed or requested as needed during prosecution. The
USPTO proposes to increase these fees to facilitate an efficient and
prompt conclusion of application processing, which benefits the
Office's compact prosecution initiatives and reduces patent pendency.
The fees proposed in this rulemaking are the same as those included in
the proposal delivered to the PPAC on February 7, 2012.
Application Size Fees:
Table 32 - Application Size Fee Changes
Current Proposed Dollar Percent
fees fees change change
Fee description Large Large Large Large
(small) (small) (small) (small)
[micro] [micro] [micro] [micro]
entity entity entity entity
Application Size Fee - For each $310 $400 +$90 +29%
Additional 50 Sheets that ($155) ($200) (+$45) (+29%)
Exceed 100 Sheets [N/A] [$100] [-$55] [-35%]
Currently, the Office charges an additional fee for any application
where the specification and drawings together exceed 100 sheets of
paper. The application size fee applies for each additional 50 sheets
of paper or fraction thereof. The USPTO proposes to increase the
application size fee to facilitate an efficient and compact application
examination process, which benefits the applicant and the effective
administration of patent prosecution. Succinct applications facilitate
faster examination with an expectation of fewer errors. The fees
proposed in this rulemaking are the same as those included in the
proposal delivered to the PPAC on February 7, 2012.
Excess Claims:
Table 33 - Excess Claims Fee Changes
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Current Proposed Dollar Percent
fees fees change change
Fee description Large Large Large Large
(small) (small) (small) (small)
[micro] [micro] [micro] [micro]
entity entity entity entity
Independent Claims in $250 $420 +$170 +68%
Excess of 3 ($125) ($210) (+$85) (+68%)
[N/A] [$105] [-$20] [-16%]
Claims in Excess of 20 $60 $80 +$20 +33%
($30) ($40) (+$10) (+33%)
[N/A] [$20] [-$10] [-33%]
Multiple Dependent Claim $450 $780 +$330 +73%
($225) ($390) (+$165) (+73%)
[N/A] [$195] [-$30] [-13%]
Currently, the Office charges a fee for filing, or later presenting
at any other time, each independent claim in excess of 3, as well as
each claim (whether dependent or independent) in excess of 20. In
addition, any original application that is filed with, or amended to
include, multiple dependent claims must pay the multiple dependent
claim fee. Generally, a multiple dependent claim is a dependent claim
which refers back in the alternative to more than one preceding independent
or dependent claim.
The Office proposes to increase claim fees to facilitate an
efficient and compact application examination process, which benefits
the applicant and the USPTO through more effective administration of
patent prosecution. Filing applications with the most prudent number of
claims will enable prompt conclusion of application processing, because
more succinct applications facilitate faster examination with an
expectation of fewer errors.
On February 7, 2012, the Office delivered to the PPAC proposed
excess claims fee amounts higher than those proposed here.
Specifically, the Office proposed setting the fee for independent
claims in excess of three to $460, for claims in excess of 20 to $100,
and for multiple dependent claims to $860. In response to stakeholder
feedback about the amount of the increases to excess claims and the
growth rate of the patent operating reserve, the Office now proposes to
set fees for independent claims in excess of three to $420, for claims
in excess of 20 to $80, and for multiple dependent claims to $780. The
Office proposes to increase the excess claims fees to facilitate an
efficient and compact application examination process, which benefits
the applicant and the effective administration of the patent system.
Succinct applications with a prudent number of unambiguous claims
facilitate faster examination with an expectation of fewer errors
during examination.
Correct inventorship after first action on the merits (New):
Table 34 - Correct Inventorship After
First Action on the Merits Fee Changes
Current Proposed Dollar Percent
fees fees change change
Fee description Large Large Large Large
(small) (small) (small) (small)
[micro] [micro] [micro] [micro]
entity entity entity entity
Correct Inventorship After N/A $1,000 +$1,000 N/A
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First Action on the Merits (N/A) ($500) (+$500) (N/A)
(NEW) [N/A] [$250] [+$250] [N/A]
The Office needs to know who the inventors are to prepare patent
application publications, conduct examination under 35 U.S.C. 102 and
103, and prevent double patenting. Changes to inventorship (e.g.,
adding previously unnamed persons as inventors or removing persons
previously named as inventors) cause additional work for the Office.
For instance, the Office may need to repeat prior art searches and/or
reconsider patentability under sections 102 and 103, as well as
reconsider the possibility of double patenting.
On February 7, 2012, the Office delivered to the PPAC two proposed
fees: (1) a $3,000 fee to file an oath and declaration up to the notice
of allowance; and (2) a $1,700 fee to correct inventorship during
examination where it had not been provided before examination started.
In response to stakeholder feedback, the Office now proposes to
eliminate the $3,000 filing fee and reduce the $1,700 inventorship
correction fee to $1,000. The inventorship correction fee is proposed
to encourage reasonable diligence and a bona fide effort to ascertain
the actual inventorship as early as possible and to provide that
information to the Office prior to examination. The fee will also help
offset the costs incurred by the Office when there is a change in
inventorship.
The Office appreciates that inventorship may change as the result
of a restriction requirement by the Office. Where inventorship changes
as a result of a restriction requirement, the applicant should file a
request to correct inventorship promptly (prior to first Office action
on the merits) to avoid this fee for requests to correct inventorship
in an application after the first Office action on the merits.
Otherwise, the Office will incur the costs during examination related
to the change in inventorship. Accordingly, the fee for requests to
correct inventorship in an application after the first Office action on
the merits fee would be required.
Derivation proceeding (New):
Table 35 - Derivation Proceeding Fee Changes
Current Proposed Dollar Percent
fees fees change change
Fee description Large Large Large Large
(small) (small) (small) (small)
[micro] [micro] [micro] [micro]
entity entity entity entity
Derivation petition fee (NEW) *$400 $400 $0 0%
(N/A) (N/A) (N/A) (N/A)
[N/A] [N/A] [N/A] [N/A]
Derivation institution and N/A $0 $0 N/A
trial fee (NEW) (N/A) ($0) ($0) (N/A)
[N/A] [$0] [$0] [N/A]
* For purposes of comparing amounts, where a new fee has been proposed under
35 U.S.C. 41(d)(2) in the January and February 2012 Proposed Rules, that
proposed fee is included in the current fee column and denoted with (*).
A derivation proceeding is a new trial proceeding conducted at the
BPAI to determine whether an inventor named in an earlier application
derived the claimed invention from an inventor named in the
petitioner's application; and whether the earlier application claiming
such invention was authorized. An applicant subject to the first-
inventor-to-file provisions may file a petition to institute a
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derivation proceeding only within one year of the first publication of
a claim to an invention that is the same or substantially the same as
the earlier application's claim to the invention. The petition must be
supported by substantial evidence that the claimed invention was
derived from an inventor named in the petitioner's application.
On February 10, 2012, the Office proposed under 35 U.S.C. 41(d)
procedures for derivation proceedings before the BPAI. (Changes To
Implement Derivation Proceedings, 77 FR 7028 (Feb. 10, 2012)). In that
action, the Office proposed the $400 derivation petition fee. On
February 7, 2012, the Office provided an initial fee proposal to the
PPAC with the same fee, $400. Here, the Office proposes to retain the
$400 derivation petition fee and to set an additional fee of $0 for a
derivation institution and trial.
The Office estimates the $400 petition fee will recover its cost to
process a petition for derivation. The Office also estimates that its
costs for determining whether to institute and conducting a trial are
approximately $40,000. However, the Office does not propose to recover
the full cost of instituting and conducting the trial from the
petitioner. Instead, by charging a $0 trial fee, the Office seeks to
promote issuing patents to the actual inventor and to discourage a
situation where another had derived the invention from the actual
inventor and sought a patent on the derived invention. As there is no
requirement for fees in derivation proceedings under the AIA, the
Office has flexibility in setting the timing and amount of the fee(s)
that may be required for derivation.
Assignments Submitted Electronically Fee (New):
Table 36 - Fee Changes for Assignments
Submitted Electronically
Current Proposed Dollar Percent
fees fees change change
Fee description Large Large Large Large
(small) (small) (small) (small)
[micro] [micro] [micro] [micro]
entity entity entity entity
Assignments Submitted $40 $0 -$40 -100%
Electronically (NEW) (N/A) (N/A) (N/A) (N/A)
[N/A] [N/A] [N/A] [N/A]
Assignments Not Submitted $40 $40 $0 0%
Electronically (NEW) (N/A) (N/A) (N/A) (N/A)
[N/A] [N/A] [N/A] [N/A]
Note: The current fee amount is $40 for submitting an assignment to the
Office, regardless of method of submission.
Ownership of a patent gives the patent owner the right to exclude
others from making, using, offering for sale, selling, or importing
into the U.S. the invention claimed in a patent. Patent law provides
for the transfer or sale of a patent, or of an application for patent,
by an instrument in writing (i.e., an assignment). When executing an
assignment, the patent owner may assign (e.g., transfer) the total or a
percentage of interest, rights, and title of a patent to an assignee.
When there is a completed assignment, the assignee becomes the owner of
the patent and has the same rights of the original patentee. The Office
records assignments sent to it, and the recording serves as public
notice.
Assignment records are an important part of the business cycle -
markets operate most efficiently when buyers and sellers can locate one
another. If assignment records are incomplete, the business and
research and development cycles could be disrupted because buyers face
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difficulty finding sellers, and potential innovators may not have a
thorough understanding of the marketplace they are considering
entering. The Office recognizes that complete patent assignment data
disseminated to the public provides certainty in the technology space
and helps to encourage innovation.
Therefore, more complete patent assignment records would produce a
number of benefits for the public and IP stakeholders. The public would
have a more comprehensive understanding of which entities hold and
maintain U.S. patent rights. Patenting inventors and companies would
better understand the competitive environment in which they are
operating, allowing them to better allocate their own research and
development resources, more efficiently obtain licenses, and accurately
value patent portfolios.
Currently, a patent owner must pay $40 to record the assignment of
patent rights. During FY 2011 approximately 90 percent of assignments
were submitted electronically. This fee could be viewed as a barrier to
those involved in patent and application assignments. Given that patent
applications, patents, and the completeness of the patent record play
an important role in the markets for innovation and the long-term
health of the U.S. economy, the Office proposes to set two fees for
recording an assignment. When an assignment is submitted using the
Office's electronic system, the Office proposes to set the fee at $0.
When an assignment is sent to the Office in a manner other than using
the Office's electronic system, the Office proposes to set the fee at
the current amount of $40. Providing these patent prosecution options
for applicants benefits a majority of owners who typically record
assignments. In addition, the patent prosecution options for applicants
also benefit the overall IP system by reducing the financial barrier
for recording patent ownership information and facilitating a more
complete record of assigned applications and grants.
C. Fees With No Proposed Changes (or Changes of Less Than Plus or Minus
5 Percent and 10 Dollars)
The Office proposes to set all other categories of fees not
discussed above at existing fee rates or at adjusted slightly fees
(i.e., less than plus or minus 5 percent and 10 dollars) to be rounded
to the nearest ten dollars by applying standard arithmetic rules. The
resulting proposed fee amounts will be convenient to patent users and
permit the Office to set micro entity fees at whole dollar amounts when
applying the fee reduction. These other fees, such as those related to
disclosing patent information to the public (excluding the PGPub fee)
and patent attorney/agent enrollment and discipline fees, are already
set at appropriate levels to achieve the Office's goals expressed in
this rulemaking.
D. Overall Comparison of the Proposed Patent Fee Schedule to the
Current Fees
Overall, the total amount of fees under this proposed rule that
would be added together to obtain a basic patent decreases when
compared to the total fees paid for the same services under the current
fee schedule. This decrease is substantial (22 percent) from
application to issue (see Table 37). When additional processing options
such as RCEs are included, the decrease becomes smaller after the first
RCE (11 percent) and eventually begins increasing after a second RCE (6
percent) (see Tables 38 and 39). The staging of appeal fees proposed in
this rule offers similar decreases in the total fees paid when filing a
notice of appeal. Under the proposed fee schedule, the total fees for
both filing an appeal and to obtain a basic patent decrease from the
current fee schedule (21 percent) (see Table 40). If the appeal is
forwarded to the BPAI for a decision after the Examiner's Answer, then
the total fees increase (23 percent) (see Table 40). Once an applicant
has obtained a basic patent, the cost to maintain it remains
substantially the same through the second stage maintenance fee.
However, at the third stage maintenance fee, once the patent holder has
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more information on the value of the patent, the total fees increase
(26 percent) (see Table 41). This structure reflects the key policy
considerations for fostering innovation, facilitating effective
administration of the patent system, and offering patent
prosecution options to applicants. Additional details about each of
these payment structures are outlined below. To simplify the comparison
among fee schedules, the time value of money has not been estimated in
the examples below.
1. Routine Application Processing Fees and First RCE Fees Decrease
The total amount paid for routine fees to obtain a basic patent
(i.e., filing, search, examination, publication, and issue) under the
proposed fee structure will decrease compared to the current fee
structure, as shown in Table 37. This overall decrease is possible
because the decrease in pre-grant patent application publication and
issue fees from $2,040 to $960 (a decrease of $1,080) more than offsets
the increase in large entity filing, search, and examination fees from
$1,250 to $1,600 (an increase of $350). The net effect is a $730 (or 22
percent) decrease in total fees paid under the proposed fee structure
when compared to the current fee structure. This fosters innovation by
reducing the cost to obtain a basic successful patent.
Table 37 - Comparison of Proposed Patent Fee Schedule to the
Current Patent Fees From Filing Through Issue
Proposed on Proposed in
Fee Current 2/7/2012 this NPRM
Filing, Search, and Examination $1,250 $1,840 $1,600
Pre-Grant Publication and Issue 2,040 960 960
Total 3,290 2,800 2,560
When an application for a first RCE is submitted to complete
prosecution, the total fees beginning with filing to obtain a basic
patent continue to remain less than would be paid under the current fee
schedule. This overall decrease continues to be possible because of the
decrease in pre-grant patent application publication and issue fees.
The net effect of the proposed fee schedule, including a first RCE, is
a $460 (or 11 percent) decrease in total fees paid under the proposed
fee structure when compared to the current fee structure, as shown in
Table 38.
Table 38 - Comparison of the Proposed Patent Fees to the
Current Patent Fees From Filing Through Issue with One RCE
Proposed on Proposed in
Fee Current 2/7/2012 this NPRM
Filing, Search, and Examination $1,250 $1,840 $1,600
First RCE 930 1,700 1,200
Pre-Grant Publication and Issue 2,040 960 960
Total 4,220 4,500 3,760
When adding a second RCE to prosecution, the total fees increase
slightly, by $310 (or 6 percent), as shown in Table 39. However, the
proposed total fees from applicant filing are $740 (or 12 percent) less
than the total fees included in the proposal delivered to PPAC on
February 7, 2012.
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Table 39 - Comparison of the Proposed Patent Fees to the
Current Patent Fees with Two RCEs
Proposed on Proposed in
Fee Current 2/7/2012 this NPRM
Filing, Search, and Examination $1,250 $1,840 $1,600
First RCE 930 1,700 1,200
Second and subsequent RCE 930 1,700 1,700
Pre-Grant Publication and Issue 2,040 960 960
Total 5,150 6,200 5,460
2. Initial Appeals Fees Decrease
Instead of filing an RCE, an applicant may choose to file a notice
of appeal. When adding the notice of appeal and the briefing filing
fees (allowing the applicant to receive the Examiner's Answer) to the
fees to obtain a basic patent, the total fees from application filing
decrease by $970 (or 21 percent) from the current total fees. If the
prosecution issues are not resolved prior to forwarding an appeal to
the Board, the fees increase because the Office proposes to recover
more of the appeals cost. In that instance, fees will increase by
$1,030 (or 23 percent) more than would be paid today for an appeal
decision. However, under this new proposal, the staging of fees allows
the applicant to pay less than under the current fee schedule in
situations where an application is either allowed or prosecution is
reopened before being forwarded to the Board. The proposed total fees
from applicant filing are $1,240 (or 18 percent) less than the total
fees included in the proposal that the Office delivered to PPAC on
February 7, 2012.
Table 40 - Comparison of the Proposed Patent Fees and
Current Patent Fees, with an Appeal
Proposed on Proposed in
Fee Current 2/7/2012 this NPRM
Filing, Search, and Examination $1,250 $1,840 $1,600
Notice of Appeal and 1,240 1,500 1,000
Filing a Brief
Pre-Grant Publication and Issue 2,040 960 960
Subtotal for Fees paid
before Examiner's Answer 4,530 4,300 3,560
Appeal Forwarding Fee NEW 2,500 2,000
Subtotal for Fees if Appeal
is Forwarded to Board for
Decision 4,530 6,800 5,560
3. Maintenance Fees Increase
When a patent holder begins maintaining an issued patent, he or she
will pay $260, (or 6 percent) less than is paid under the current fee
schedule from initial application filing through the first stage. To
maintain the patent through second stage, a patent holder will pay $490
(large entity), or 7 percent more than is paid today under the current
fee schedule. When a patent is maintained for full term, a patent
holder will pay $3,160 (or 26 percent) more than would be paid under
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the current fee schedule. The most significant maintenance fee increase
occurs after holding a patent for 11.5 years, which is when a patent
holder will be in a better position to determine whether the benefit
(value) from the patent exceeds the cost (maintenance fee) to maintain
the patent.
Table 41 - Comparison of the Proposed Patent Fee Schedules to the
Current Fees, Life of Patent
Proposed on Proposed in
Fee Current 2/7/2012 this NPRM
Filing, Search, and Examination $1,250 $1,840 $1,600
Pre-Grant Publication and Issue 2,040 960 960
Total Through Issue 3,290 2,800 2,560
First Stage Maintenance - 1,130 1,600 1,600
3.5 years
Cumulative Subtotal 4,420 4,400 4,160
Second Stage Maintenance - 2,850 3,600 3,600
7.5 years
Cumulative Subtotal 7,270 8,000 7,760
Third Stage Maintenance - 4,730 7,600 7,400
11.5 years
Total Fees for Life of Patent 12,000 15,600 15,160
VI. Discussion of Specific Rules
Title 37 of the Code of Federal Regulations, Parts 1 and 41, are
proposed to be amended as follows:
Section 1.16: Sections 1.16(a)(1), (b)(1), (c)(1), (d), (e)(1), (f)
through (s) would be amended to set forth the application filing,
excess claims, search, examination, and application size fees for
patent applications filed as authorized under section 10 of the Act.
This section would no longer distinguish between applications filed
before or after December 8, 2004, because section 11 of the AIA no
longer makes the distinction. The changes to the fee amounts indicated
in section 1.16 are shown in Table 42.
Table 42
Current Proposed
fees fees
(dollars) (dollars)
CFR section Fee code Description Large Small Large Small Micro
1.16(a)(1) 1011/2011/3011 Basic Filing 380 190 280 140 70
Fee - Utility
1.16(a)(1) 4011 Basic Filing n/a 95 n/a 70 n/a
Fee - Utility
(electronic
filing for
small
entities).
1.16(b)(1) 1012/2012/3012 Basic Filing 250 125 180 90 45
Fee - Design
1.16(b)(1) 1017/2017/3017 Basic Filing 250 125 180 90 45
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Fee - Design
(CPA)
1.16(c)(1) 1013/2013/3013 Basic Filing 250 125 180 90 45
Fee - Plant
1.16(d) 1005/2005/3005 Provisional 250 125 260 130 65
Application
Filing Fee
1.16(e)(1) 1014/2014/3014 Basic Filing 380 190 280 140 70
Fee - Reissue
1.16(e)(1) 1019/2019/3019 Basic Filing 380 190 280 140 70
Fee - Reissue
(CPA)
1.16(f) 1051/2051/3051 Surcharge - 130 65 140 70 35
Late Filing
Fee, Search
Fee, Examination
Fee or Oath or
Declaration
1.16(g) 1052/2052/3052 Surcharge - 50 25 60 30 15
Late Provisional
Filing Fee or
cover sheet
1.16(h) 1201/2201/3201 Independent 250 125 420 210 105
Claims in
Excess of
Three
1.16(h) 1204/2204/3204 Reissue 250 125 420 210 105
Independent
Claims in
Excess of
Three
1.16(i) 1202/2202/3202 Claims in 60 30 80 40 20
Excess of
20
1.16(i) 1205/2205/3205 Reissue 60 30 80 40 20
Claims in
Excess of 20
1.16(j) 1203/2203/3203 Multiple 450 225 780 390 195
Dependent
Claim
1.16(k) 1111/2111/3111 Utility 620 310 600 300 150
Search
Fee
1.16(l) 1112/2112/3112 Design 120 60 120 60 30
Search
Fee
1.16(m) 1113/2113/3113 Plant 380 190 380 190 95
Search
Fee
1.16(n) 1114/2114/3114 Reissue 620 310 600 300 150
Search
Fee
1.16(o) 1311/2311/3311 Utility 250 125 720 360 180
Examination
Fee
1.16(p) 1312/2312/3312 Design 160 80 460 230 115
Examination
Fee
1.16(q) 1313/2313/3313 Plant 200 100 580 290 145
Examination
Fee
1.16(r) 1314/2314/3314 Reissue 750 375 2,160 1,080 540
Examination
Fee
1.16(s) 1081/2081/3081 Utility 310 155 400 200 100
Application
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Size Fee -
For Each
Additional
50 Sheets
That Exceeds
100 Sheets
1.16(s) 1082/2082/3082 Design 310 155 400 200 100
Application
Size Fee -
For Each
Additional
50 Sheets
That Exceeds
100 Sheets
1.16(s) 1083/2083/3083 Plant 310 155 400 200 100
Application
Size Fee -
For Each
Additional
50 Sheets
That Exceeds
100 Sheets
1.16(s) 1084/2084/3084 Reissue 310 155 400 200 100
Application
Size Fee -
For Each
Additional
50 Sheets
That Exceeds
100 Sheets
1.16(s) 1085/2085/3085 Provisional 310 155 400 200 100
Application
Size Fee -
For Each
Additional
50 Sheets
That Exceeds
100 Sheets
Section 1.17: Sections 1.17(a)(1) through (a)(5), (c), (e) through
(t) would be amended and (d) and (e) would be added to set forth the
application processing fees as authorized under section 10 of the Act.
The changes to the fee amounts indicated in section 1.17 are shown in
Table 43.
Table 43
Current Proposed
fees fees
(dollars) (dollars)
CFR section Fee code Description Large Small Large Small Micro
1.17(a)(1) 1251/2251/3251 Extension for 150 75 200 100 50
Response
Within
First Month.
1.17(a)(2) 1252/2252/3252 Extension for 560 280 600 300 150
Response
Within
Second Month.
1.17(a)(3) 1253/2253/3253 Extension for 1,270 635 1,400 700 350
Response
Within
Third Month.
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1.17(a)(4) 1254/2254/3254 Extension for 1,980 990 2,200 1,100 550
Response
Within
Fourth Month.
1.17(a)(5) 1255/2255/3255 Extension for 2,690 1,345 3,000 1,500 750
Response
Within
Fifth Month.
1.17(c) 1817/2817/3817 Request for 4,800 2,400 4,000 2,000 1,000
Prioritized
Examination.
1.17(d) NEW Correct NEW NEW 1,000 500 250
Inventorship
After First
Action on
Merits.
1.17(e) 1801/2801/3801 Request for 930 465 1,200 600 300
Continued
Examination
(RCE) (1st
request)
(see 37 CFR
1.114).
1.17(e) NEW Request for NEW NEW 1,700 850 425
Continued
Examination
(RCE)
(2nd and
subsequent
request).
1.17(f) 1462/2462/3462 Petitions 400 n/a 400 200 100
Requiring
the
Petition
Fee Set
Forth in
37 CFR
1.17(f)
(Group I).
1.17(g) 1463/2463/3463 Petitions 200 n/a 200 100 50
Requiring
the
Petition
Fee Set
Forth in
37 CFR
1.17(g)
(Group II).
1.17(h) 1464/2464/3464 Petitions 130 n/a 140 70 35
Requiring
the
Petition
Fee Set
Forth in
37 CFR
1.17(h)
(Group III).
1.17(i) 1053/2053/3053 Non-English 130 n/a 140 70 35
Specification.
1.17(i) 1808 Processing 130 n/a 130 n/a n/a
Fee,
Except in
Provisional
Applications.
1.17(i) 1803 Request for 130 n/a 130 n/a n/a
Voluntary
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Publication or
Republication.
1.17(k) 1802 Request for 900 n/a 900 450 225
Expedited
Examination
of a Design
Application.
1.17(l) 1452/2452/3452 Petition to 620 310 640 320 160
Revive
Unavoidably
Abandoned
Application.
1.17(m) 1453/2453/3453 Petition to 1,860 930 1,900 950 475
Revive
Unintentionally
Abandoned
Application.
1.17(p) 1806/2806/3806 Submission 180 n/a 180 90 45
of an
Information
Disclosure
Statement.
1.17(q) 1807 Processing 50 n/a 50 n/a n/a
Fee for
Provisional
Applications.
1.17(r) 1809/2809/3809 Filing a 810 405 840 420 210
Submission
After Final
Rejection
(see 37 CFR
1.129(a)).
1.17(s) 1810/2810/3810 For Each 810 405 840 420 210
Additional
Invention
to be
Examined
(see 37 CFR
1.129(b)).
1.17(t) 1454/2454/3454 Acceptance 1,410 n/a 1,420 710 355
of an
Unintentionally
Delayed Claim
for Priority,
or for Filing
a Request for
the Restoration
of the Right of
Priority.
§ 1.17 Patent application and reexamination processing fees.
(d) For correction of inventorship in an application after the
first Office action on the merits:
By a micro entity (§ 1.29(a)). $250.00
By a small entity (§ 1.27(a)). $500.00
By other than a small
or micro entity. $1,000.00
§ 1.17 Patent application and reexamination processing fees.
(e) To request continued examination pursuant to § 1.114:
(1) For filing a first request for continued examination pursuant
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to § 1.114 in an application:
By a micro entity. $300.00
By a small entity (§ 1.27(a)
of this title). $600.00
By other than a small or
micro entity $1,200.00
(2) For filing a second or subsequent request for continued
examination pursuant to § 1.114 in an application:
By a micro entity $425.00
By a small entity
(§ 1.27(a) of the title) $850.00
By other than a small or
micro entity $1,700.00
Section 1.18: Sections 1.18(a) through (f) would be amended to set
forth the patent issue fees as authorized under section 10 of the Act.
The changes to the fee amounts indicated in § 1.18 are shown in Table 44.
Table 44
Current Proposed
fees fees
(dollars) (dollars)
CFR section Fee code Description Large Small Large Small Micro
1.18(a) 1501/2501/3501 Utility 1,740 870 960 480 240
Issue Fee
1.18(a) 1511/2511/3511 Reissue 1,740 870 960 480 240
Issue Fee
1.18(b) 1502/2502/3502 Design 990 495 560 280 140
Issue Fee
1.18(c) 1503/2503/3503 Plant 1,370 685 760 380 190
Issue Fee
1.18(d)(1) 1504 Publication 300 n/a 0 n/a n/a
Fee for
Early,
Voluntary,
or Normal
Publication.
1.18(d)(2) 1505 Publication 300 n/a 300 n/a n/a
Fee for
Republication.
1.18(e) 1455 Filing an 200 n/a 200 n/a n/a
Application
for
Patent Term
Adjustment.
1.18(f) 1456 Request for 400 n/a 400 n/a n/a
Reinstatement of
Term Reduced.
§ 1.18 Patent post allowance (including issue) fees.
(d)(1) Publication fee $0.00
(d)(2) Republication fee (§ 1.221(a)) $300.00
Section 1.19: Sections 1.19(a)(1) through (a)(3), (b)(1)(i)(A)
through (b)(1)(i)(D), (b)(1)(ii)(A), (b)(1)(ii)(B), (b)(1)(ii)(C),
(b)(2)(i)(A), (b)(2)(i)(B), (b)(2)(ii), (b)(3), (b)(4), and (c) through
(g) would be amended to set forth the patent document supply fees as
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authorized under section 10 of the Act. The changes to the fee amounts
set are indicated in § 1.19 are shown in Table 45.
Table 45
Current
fees Proposed
with CPI fees
(dollars) (dollars)
CFR section Fee code Description Large Small Large Small Micro
1.19(a)(1) 8001 Printed Copy of 3 n/a 3 n/a n/a
Compact Disk or
Other Electronic
Form (e.g.,
compact disks
stored in
artifact folder),
Other Than as
Available in
1.19(b)(1);
First Physical
Electronic
Medium in a
Single Order.
1.19(b)(2)(i)(B) 8042 Additional Fee 15 n/a 15 n/a n/a
for Each
Continuing Copy
of Patent-
Related File
Wrapper Contents
as Specified in
1.19(b)(2)(i)(A).
1.19(b)(2)(ii) 8043 Copy of Patent- 55 n/a 3 n/a n/a
Patent w/o
Color,
Delivery by
USPS, USPTO
Box, or
Electronic
Means.
1.19(a)(2) 8003 Printed Copy of 15 n/a 15 n/a n/a
Plant Patent
in Color.
1.19(a)(3) 8004 Color Copy of 25 n/a 25 n/a n/a
Patent (other
than plant
patent) or
SIR
Containing
a Color
Drawing.
1.19(a)(1) 8005 Patent 3 n/a 3 n/a n/a
Application
Publication
(PAP).
1.19(b)(1)(i)(A) 8007 Copy of Patent 20 n/a 20 n/a n/a
Application
as Filed.
1.19(b)(1)(i)(B) 8008 Copy of Patent- 200 n/a 200 n/a n/a
Related File
Wrapper and
Contents
of 400 or
Fewer Pages,
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if Provided
on Paper.
1.19(b)(1)(i)(C) 8009 Additional Fee 40 n/a 40 n/a n/a
for Each
Additional 100
Pages of Patent-
Related File
Wrapper and
(Paper) Contents,
or Portion
Thereof.
1.19(b)(1)(i)(D) 8010 Individual 25 n/a 25 n/a n/a
Application
Documents, Other
Than Application
as Filed, per
Document.
1.19(b)(1)(ii)(A) 8007 Copy of Patent 20 n/a 20 n/a n/a
Application
as Filed.
1.19(b)(1)(ii)(B) 8011 Copy of Patent- 55 n/a 55 n/a n/a
Related File
Wrapper and
Contents if
Provided
Electronically
or on a
Physical
Electronic
Medium as
Specified in
1.19(b)(1)(ii).
1.19(b)(1)(ii)(C) 8012 Additional Fee 15 n/a 15 n/a n/a
for Each
Continuing Physical
Electronic Medium
in Single Order of
1.19(b)(1)(ii)(B).
1.19(b)(1)(iii)(A) 8007 Copy of Patent 20 n/a 20 n/a n/a
Application
as Filed.
1.19(b)(1)(iii)(B) 8011 Copy of Patent- 55 n/a 55 n/a n/a
Related File
Wrapper and
Contents if
Provided
Electronically
or on a Physical
Electronic Medium.
1.19(b)(2)(i)(A) 8041 Copy of Patent- 55 n/a 55 n/a n/a
Related File
Wrapper Contents
That Were
Submitted and
Are Stored on
Compact Disk or
Other Electronic
Form (e.g.,
compact disks
stored in
artifact folder),
Other Than as
Available in
1.19(b)(1);
First Physical
Electronic
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Medium in a
Single Order.
1.19(b)(2)(i)(B) 8042 Additional Fee 15 n/a 15 n/a n/a
for Each
Continuing Copy
of Patent-
Related File
Wrapper Contents
as Specified in
1.19(b)(2)(i)(A).
1.19(b)(2)(ii) 8043 Copy of Patent- 55 n/a 55 n/a n/a
Related File
Wrapper Contents
That Were
Submitted and are
Stored on Compact
Disk, or Other
Electronic Form,
Other Than as
Available in
1.19(b)(1); If
Provided
Electronically
Other Than on a
Physical Electronic
Medium, per Order.
1.19(b)(3) 8013 Copy of Office 25 n/a 25 n/a n/a
Records, Except
Copies of
Applications as
Filed.
1.19(b)(4) 8014 For Assignment 25 n/a 25 n/a n/a
Records, Abstract
of Title and
Certification,
per Patent.
1.19(c) 8904 Library Service 50 n/a 50 n/a n/a
1.19(d) 8015 List of U.S. 3 n/a 3 n/a n/a
Patents and
SIRs in Subclass.
1.19(e) 8016 Uncertifidied 10 n/a 10 n/a n/a
Statement re
Status of
Maintenance
Fee Payments.
1.19(f) 8017 Copy of Non-U.S. 25 n/a 25 n/a n/a
Document
1.19(g) 8050 Petitions for at cost n/a at cost n/a n/a
Documents In Form
Other Than That
Provided By This
Part, or In Form
Other Than That
Generally
Provided by
Director, to be
Decided in
Accordance With
Merits.
Section 1.20: Sections 1.20(a), (b), (c)(1) through (c)(4), (c)(6),
(c)(7), (d) through (k) would be amended to set forth the reexamination
excess claims fees, disclaimer fees, and maintenance fees as authorized
under section 10 of the Act. The changes to the fee amounts indicated
in § 1.20 are shown in Table 46.
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Table 46
Current Proposed
fees fees
(dollars) (dollars)
CFR section Fee code Description Large Small Large Small Micro
1.20(a) 1811 Certificate 100 n/a 100 n/a n/a
of Correction.
1.20(b) 1816 Processing Fee 130 n/a 130 n/a n/a
for Correcting
Patent.
1.20(c)(1) 1812 Request for 2,520 n/a 15,000 7,500 3,750
Ex Parte
Reexamination.
1.20(c)(3) 1821/2821/3821 Reexamination 250 125 420 210 105
Independent
Claims in Excess
of Three and
also in Excess
of the Number
of Such Claims
in the Patent
Under Reexamination.
1.20(c)(4) 1822/2822/3822 Reexamination 60 30 80 40 20
Claims in Excess
of 20 and Also
in Excess of
the Number of
Claims in the
Patent Under
Reexamination.
1.20(c)(6) NEW Filing a Petition NEW NEW 1,940 970 485
in a
Reexamination
Proceeding,
Except for Those
Specifically
Enumerated in
§ 1.550(i) and
1.937(d).
1.20(c)(7) 1812 For a Refused 830 n/a 3,600 1,800 900
Request for
Ex parte
Reexamination
Under § 1.510
(included in
the request
for ex parte
reexamination fee).
1.20(d) 1814/2814 Statutory 160 80 160 n/a n/a
Disclaimer,
Including
Terminal
Disclaimer.
1.20(e) 1551/2551/3551 Maintenance Fee 1,130 565 1,600 800 400
Due at 3.5
Years.
1.20(f) 1552/2552/3552 Maintenance Fee 2,850 1,425 3,600 1,800 900
Due at 7.5
Years.
1.20(g) 1553/2553/3553 Maintenance Fee 4,730 2,365 7,400 3,700 1,850
Due at 11.5
Years.
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1.20(h) 1554/2554/3554 Maintenance Fee 150 75 160 80 40
Surcharge -
3.5. Years -
Late Payment
Within 6
Months.
1.20(h) 1555/2555/3555 Maintenance Fee 150 75 160 80 40
Surcharge -
7.5. Years -
Late Payment
Within 6
Months.
1.20(h) 1556/2556/3556 Maintenance Fee 150 75 160 80 40
Surcharge -
11.5 Years -
Late Payment
Within 6
Months.
1.20(i)(1) 1557/2557/3557 Maintenance Fee 700 n/a 700 350 175
Surcharge After
Expiration -
Late Payment is
Unavoidable.
1.20(i)(2) 1558/2558/3558 Maintenance Fee 1,640 n/a 1,640 820 410
Surcharge After
Expiration -
Late Payment is
Unintentional.
1.20(j)(1) 1457 Extension of Term 1,120 n/a 1,120 n/a n/a
of Patent.
1.20(j)(2) 1458 Initial 420 n/a 420 n/a n/a
Application
for Interim
Extension
(see 37 CFR
1.790).
1.20(j)(3) 1459 Subsequent 220 n/a 220 n/a n/a
Application
for Interim
Extension
(see 37 CFR
1.790).
1.20(k)(1) NEW Processing and NEW NEW 4,400 2,200 1,100
Treating a
Request for
Supplemental
Examination.
1.20(k)(2) NEW Ex Parte NEW NEW 13,600 6,800 3,400
Reexamination
Ordered as a
Result of a
Supplemental
Examination
Proceeding.
1.20(k)(3)(i) NEW For Processing NEW NEW 180 90 45
and Treating,
in a
Supplemental
Examination
Proceeding,
a Non-Patent
Document Over
20 Sheets in
Length, per
Document Between
21-50 Pages.
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1.20(k)(3)(ii) NEW For Processing NEW NEW 280 140 70
and Treating, in
a Supplemental
Examination
Proceeding, a
Non-Patent
Document Over
20 Sheets in
Length, per
Document for
Each Additional
50 Sheets or
Fraction Thereof.
Section 1.21: Sections 1.21(a)(1)(i), (a)(1)(ii)(A), (a)(1)(ii)(B),
(a)(10), (a)(2), (a)(4), (a)(4)(i), (a)(5)(i), (a)(5)(ii), (a)(7)(i)
through (a)(7)(iv), (a)(8), (a)(9)(i), (a)(9)(ii), (a)(10), (b)(3),
(e), (g) through (k), and (n) would be amended to set forth
miscellaneous fees and charges as authorized under section 10 of the
Act. The changes to the fee amounts indicated in § 1.21 are shown
in Table 47.
Table 47
Current Proposed
fees fees
(dollars) (dollars)
CFR section Fee code Description Large Small Large Small Micro
1.21(a)(1)(i) 9001 Application Fee 40 n/a 40 n/a n/a
(non-refundable).
1.21(a)(1)(ii)(A) 9010 For Test 200 n/a 200 n/a n/a
Administration
by Commercial
Entity.
1.21(a)(1)(ii)(B) 9011 For Test 450 n/a 450 n/a n/a
Administration
by the USPTO.
1.21(a)(2) 9003 Registration to 100 n/a 100 n/a n/a
Practice or
Grant of Limited
Recognition
under § 11.9(b)
or (c).
1.21(a)(2) 9025 Registration to 100 n/a 100 n/a n/a
Practice for
Change of
Practitioner Type.
1.21(a)(4) 9005 Certificate of Good 10 n/a 10 n/a n/a
Standing as
an Attorney
or Agent.
1.21(a)(4)(i) 9006 Certificate of Good 20 n/a 20 n/a n/a
Standing as an
Attorney or Agent,
Suitable
for Framing.
1.21(a)(5)(i) 9012 Review of Decision 130 n/a 130 n/a n/a
by the Director
of Enrollment
and Discipline
under § 11.2(c).
1.21(a)(5)(ii) 9013 Review of Decision 130 n/a 130 n/a n/a
of the Director
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of Enrollment
and Discipline
under § 11.2(d).
1.21(a)(7)(i) 9015 Annual Fee for 118 n/a 120 n/a n/a
Registered
Attorney or
Agent in
Active Status.
1.21(a)(7)(ii) 9016 Annual Fee for 25 n/a 25 n/a n/a
Registered
Attorney or
Agent in
Voluntary
Inactive Status.
1.21(a)(7)(iii) 9017 Requesting 50 n/a 50 n/a n/a
Restoration to
Active Status
from Voluntary
Inactive Status.
1.21(a)(7)(iv) 9018 Balance of Annual 93 n/a 100 n/a n/a
Fee Due upon
Restoration to
Active Status
from Voluntary
Inactive Status.
1.21(a)(8) 9019 Annual Fee for 118 n/a 120 n/a n/a
Individual
Granted Limited
Recognition.
1.21(a)(9)(i) 9020 Delinquency Fee 50 n/a 50 n/a n/a
for Annual Fee.
1.21(a)(9)(ii) 9004 Reinstatement to 100 n/a 100 n/a n/a
Practice.
1.21(a)(10) 9014 Application Fee 1,600 n/a 1,600 n/a n/a
for Person
Disciplined,
Convicted of
a Felony or
Certain
Misdemeanors
under § 11.7(h).
1.21(e) 8020 International 40 n/a 40 n/a n/a
Type Search
Report.
1.21(g) 8902 Self-Service 0.25 n/a 0.25 n/a n/a
Copy Charge,
per Page.
1.21(h)(1) NEW Recording Each NEW NEW 0 n/a n/a
Patent
Assignment,
Agreement
or Other
Paper, per
Property if
Submitted
Electronically.
1.21(h)(2) 8021 Recording Each 40 n/a 40 n/a n/a
Patent
Assignment,
Agreement
or Other
Paper, per
Property if
not Submitted
Electronically.
1.21(i) 8022 Publication in 25 n/a 25 n/a n/a
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Official Gazette
1.21(j) 8023 Labor Charges for 40 n/a 40 n/a n/a
Services,
per Hour or
Fraction
Thereof.
1.21(k) 8024 Unspecified at cost n/a at cost n/a n/a
Other Services,
Excluding Labor.
1.21(k) 9024 Unspecified at cost n/a at cost n/a n/a
Other Services,
Excluding Labor.
1.21(n) 8026 Handling Fee for 130 n/a 130 n/a n/a
Incomplete
or Improper
Application.
§ 1.21 Miscellaneous fees and charges.
(h) For recording each assignment, agreement, or other paper
relating to the property in a patent or application, per property:
(1) If submitted electronically $0.00
(2) If not submitted electronically $40.00
Section 1.445: Sections 1.445(a)(1) through (a)(4) would be amended
to set forth the international application filing, processing, and
search fees as authorized under section 10 of the Act. The changes to
the fee amounts indicated in § 1.445 are shown in Table 48.
Table 48
Current Proposed
fees fees
(dollars) (dollars)
CFR section Fee code Description Large Small Large Small Micro
1.445(a)(1) 1601 PCT International 240 n/a 240 120 60
Stage
Transmittal Fee.
1.445(a)(2) 1602 PCT International 2,080 n/a 2,080 1,040 520
Stage Search
Fee - Regardless
of Whether
There is a
Corresponding
Application
(see 35 U.S.C.
361(d) and PCT
Rule 16).
1.445(a)(3).
1.445(a)(3) 1604 PCT International 2,080 n/a 2,080 1,040 520
Stage
Supplemental
Search Fee When
Required, per
Additional
Invention.
1.445(a)(4) 1621 Transmitting 240 n/a 240 120 60
Application to
International
Bureau to Act
as Receiving
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Office.
Section 1.482: Sections 1.482(a)(1) and (a)(2) would be amended to
set forth the international application filing, processing, and search
fees as authorized under section 10 of the Act. The changes to the fee
amounts indicated in § 1.445 are shown in Table 49.
Table 49
Current Proposed
fees fees
(dollars) (dollars)
CFR section Fee code Description Large Small Large Small Micro
1.482(a)(1)(i) 1605 PCT International 600 n/a 600 300 150
Stage
Preliminary
Examination Fee -
U.S. was the ISA.
1.482(a)(1)(ii) 1606 PCT International 750 n/a 760 380 190
Stage
Preliminary
Examination Fee -
U.S. was not the ISA.
1.482(a)(2) 1607 PCT International 600 n/a 600 300 150
Stage
Supplemental
Examination Fee
per Additional
Invention.
Section 1.492: Sections 1.492(a), (b)(1) through (b)(4), (c)(2),
(d) through (f), (h), (i) and (j) would be amended to set forth the
application filing, excess claims, search, examination, and application
size fees for international patent applications entering the national
stage as authorized under section 10 of the Act. The changes to the fee
amounts indicated in § 1.492 are shown in Table 50.
Table 50
Current Proposed
fees fees
(dollars) (dollars)
CFR section Fee code Description Large Small Large Small Micro
1.492(a) 1631/2631 Basic PCT 380 190 280 140 70
National
Stage Fee.
1.492(b)(1) 1640/2640 PCT National 0 0 0 0 0
Stage Search
Fee - IPEA
and All Claims
Satisfy
PCT Article
33(1)-(4).
1.492(b)(2) 1641/2641 PCT National 120 60 120 60 30
Stage Search Fee -
U.S. was the ISA.
1.492(b)(3) 1642/2642 PCT National 490 245 480 240 120
Stage Search
Fee - Search
Report Prepared
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and Provided to
USPTO.
1.492(b)(4) 1632/2632 PCT National 620 310 600 300 150
Stage Search
Fee - All Other
Situations.
1.492(c)(1) 1643/2643 PCT National Stage 0 0 0 0 0
Examination
Fee - U.S. was
the ISA or IPEA
and All Claims
Satisfy PCT
Article 33(1)-(4).
1.492(c)(2) 1633/2633 National Stage 250 125 720 360 180
Examination Fee -
All Other
Situations.
1.492(d) 1614/2614 PCT National 250 125 420 210 105
Stage Claims -
Extra
Independent
(over three).
1.492(e) 1615/2615 PCT National 60 30 80 40 20
Stage Claims -
Extra Total
(over 20).
1.492(f) 1616/2616 PCT National 450 225 780 390 195
Stage Claims -
Multiple Dependent.
1.492(h) 1617/2617 Search Fee, 130 65 140 70 35
Examination
Fee or Oath
or Declaration
After Thirty
Months From
Priority
Date.
1.492(i) 1618/2618 English Translation 130 n/a 140 70 35
After Thirty
Months From
Priority Date.
1.492(j) 1681/2681 PCT National Stage 310 155 400 200 100
Application
Size Fee - for
Each Additional
50 Sheets that
Exceeds 100
Sheets.
Section 41.20: Sections 41.20(a) and (b)(1) through (b)(4) would be
amended to set forth the appeal fees as authorized under section 10 of
the Act. The changes to the fee amounts indicated in § 41.20 are shown in
Table 51.
Table 51
Current Proposed
fees fees
(dollars) (dollars)
CFR section Fee code Description Large Small Large Small Micro
41.20(a) 1405 Petitions to 400 n/a 400 n/a n/a
the Chief
Administrative
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Patent Judge
under 37 CFR
41.3.
41.20(b)(1) 1401/2401 Notice of 620 310 1,000 500 250
Appeal.
41.20(b)(2)(i) 1402/2402 Filing a Brief 620 310 0 0 0
in Support of an
Appeal in an
Application or
Ex Parte
Reexamination
Proceeding.
41.20(b)(2)(ii) NEW Filing a Brief NEW NEW 2,000 1,000 500
in Support of
an Appeal in an
Inter Partes
Reexamination
Proceeding.
41.20(b)(3) 1403/2403 Request for 1,240 620 1,300 650 325
Oral Hearing.
41.20(b)(4) NEW Forwarding an NEW NEW 2,000 1,000 500
Appeal in an
Application or
Ex Parte
Reexamination
Proceeding to
the Board.
Section 41.20 Fees: Section 41.20 would be amended by revising
paragraphs (a) and (b) to read as follows:
§ 41.20 Fees.
* * * * *
(a) Petition fee. The fee for filing a petition under this
part is $400.00.
(b) Appeal fees.
(1) For filing a notice of appeal from the examiner to the Board:
By a micro entity (§ 1.29(a)) $250.00
By a small entity (§ 1.27(a)) $500.00
By other than a small or micro entity $1,000.00
(2)(i) For filing a brief in support of an appeal in an application
or ex parte reexamination proceeding: $0.00.
(ii) In addition to the fee for filing a notice of appeal, for
filing a brief in support of an appeal in an inter partes reexamination
proceeding:
By a micro entity (§ 1.29(a)) $500.00
By a small entity (§ 1.27(a)) $1,000.00
By other than a small or micro entity $2,000.00
(3) For filing a request for an oral hearing before the Board in an
appeal under 35 U.S.C. 134:
By a micro entity (§ 1.29(a)) $325.00
By a small entity (§ 1.27(a)) entity $1,300.00
(4) In addition to the fee for filing a notice of appeal, for
forwarding an appeal in an application or ex parte reexamination
proceeding to the Board:
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By a micro entity (§ 1.29(a)) $500.00
By a small entity (§ 1.27(a)) $1,000.00
By other than a small or micro entity $2,000.00
Section 41.37: Section 41.37 would be amended by revising
paragraphs (a) and (b) to read as follows:
§ 41.37 Appeal brief.
(a) Timing. Appellant must file a brief under this section within
two months from the date of filing the notice of appeal under § 41.31.
The appeal brief fee in an application or ex parte reexamination
proceeding is $0.00, but if the appeal results in an Examiner's Answer,
the appeal forwarding fee set forth in § 41.20(b)(4) must be paid
within the time period specified in § 41.48 to avoid dismissal of
an appeal.
(b) Failure to file a brief. On failure to file the brief within
the period specified in paragraph (a) of this section, the appeal will
stand dismissed.
* * * * *
Section 41.45: Section 41.45 would be added to read as follows:
§ 41.45 Appeal forwarding fee.
(a) Timing. Appellant in an application or ex parte reexamination
proceeding must pay the fee set forth in § 41.20(b)(4) within the
later of two months from the date of either the examiner's answer, or a
decision refusing to grant a petition under § 1.181 of this title
to designate a new ground of rejection in an examiner's answer.
(b) Failure to pay appeal forwarding fee. On failure to pay the fee
set forth in § 41.20(b)(4) within the period specified in paragraph
(a) of this section, the appeal will stand dismissed.
(c) Extensions of time. Extensions of time under § 1.136(a) of
this title for patent applications are not applicable to the time
period set forth in this section. See § 1.136(b) of this title for
extensions of time to reply for patent applications and § 1.550(c)
of this title for extensions of time to reply for ex parte
reexamination proceedings.
Section 42.15: Sections 42.15 (a) through (d) would be amended to
set forth the inter partes review and post-grant review or covered
business method patent review of patent fees as authorized under
section 10 of the Act. The changes to the fee amounts indicated in
§ 42.15 are shown in Table 52.
Table 52
Current Proposed
fees fees
(dollars) (dollars)
CFR section Fee code Description Large Small Large Small Micro
42.15(a)(1) NEW Inter Partes NEW NEW 9,000 n/a n/a
Review Request
Fee.
42.15(a)(2) NEW Inter Partes NEW NEW 14,000 n/a n/a
Review Post-
Institution Fee.
42.15(a)(3) NEW In Addition NEW NEW 200 n/a n/a
to the Inter
Partes Review
Request Fee,
for Requesting
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Review of Each
Claim in Excess
of 20.
42.15(a)(4) NEW In addition to NEW NEW 400 n/a n/a
the Inter Partes
Post-Institution
Fee, for Requesting
Review of Each
Claim in Excess of
15.
42.15(b)(1) NEW Post Grant or NEW NEW 12,000 n/a n/a
Covered Business
Method Patent
Review Request
Fee.
42.15(b)(2) NEW Post Grant or NEW NEW 18,000 n/a n/a
Covered Business
Method Patent
Review Post-
Institution Fee.
42.15(b)(3) NEW In Addition to NEW NEW 250 n/a n/a
the Post Grant
or Covered
Business Method
Patent Review
Request Fee,
for Requesting
Review of Each
Claim in Excess
of 20.
42.15(b)(4) NEW In Addition to NEW NEW 550 n/a n/a
the Post Grant
or Covered
Business Method
Patent Review
Post-Institution
Fee, for
Requesting
Review of Each
Claim in Excess
of 15.
42.15(c)(1) NEW Derivation NEW NEW 400 n/a n/a
Petition.
42.15(c)(2) NEW Derivation NEW NEW 0 0 0
Institution
and Trial Fee.
42.15(d) NEW Request to NEW NEW 400 n/a n/a
Make a Settlement
Agreement Available.
Section 42.15: Section 42.15 would be added to read as follows:
§ 42.15 Fees.
(a) On filing a petition for inter partes review of a patent,
payment of the following fees are due:
(1) Inter Partes Review request fee $9,000.00
(2) Inter Partes Review Post-Institution fee $14,000.00
(3) In addition to the Inter Partes Review request fee, for $200.00
requesting review of each claim in excess of 20
(4) In addition to the Inter Partes Post-Institution $400.00
request fee, for requesting review of each claim in excess
of 15
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(b) On filing a petition for post-grant review or covered business
method patent review of a patent, payment of the following fees are
due:
(1) Post Grant or Covered Business Method Patent Review $12,000.00
request fee
(2) Post Grant or Covered Business Method Patent Review $18,000.00
Post-Institution fee
(3) In addition to the Post Grant or Covered Business $250.00
Method Patent Review request fee, for requesting review of
each claim in excess of 20
(4) In addition to the Post Grant or Covered Business $550.00
Method Patent Review request fee Post-Institution request
fee, for requesting review of each claim in excess of 15
(c) On the filing of a petition for a derivation proceeding,
payment of the following fees is due:
(1) Derivation petition fee $400.00
(2) Derivation institution and trial fee $0.00
(d) Any request requiring payment of a fee under $400.00
this part, including a written request to make a settlement
agreement available:
Rulemaking Considerations
A. Regulatory Flexibility Act
The USPTO publishes this Initial Regulatory Flexibility Analysis
(IRFA) as required by the Regulatory Flexibility Act (RFA) (5 U.S.C.
601 et seq.) to examine the impact of the Office's proposed rules
implementing the fee-setting provisions of the Leahy-Smith America
Invents Act (Pub. L. 112-29, 125 Stat. 284) (the Act) on small entities
and to seek the public's views. Under the RFA, whenever an agency is
required by 5 U.S.C. 553 (or any other law) to publish a notice of
proposed rulemaking (NPRM), the agency must prepare and make available
for public comment an IRFA, unless the agency certifies under 5 U.S.C.
605(b) that the proposed rule, if implemented, will not have a
significant economic impact on a substantial number of small entities.
5 U.S.C. 603, 605.
While the Office welcomes all comments on this IRFA, it
particularly seeks comments describing the type and extent of the
impact of the proposed patent fees on commenters' specific businesses.
In describing the impact, the Office requests biographic detail about
the impacted businesses or concerns, including the size, average annual
revenue, past patent activity (e.g., applications submitted, contested
cases pursued, maintenance fees paid, patents abandoned, etc.), and
planned patent activity of the impacted business or concern, where
feasible. The Office will use this information to further assess the
impact of the proposed rule on small entities. Where possible, comments
should also describe any recommended alternative methods of setting and
adjusting patent fees that would further reduce the impact on small
entities.
Items 1-5 below discuss the five items specified in 5 U.S.C.
603(b)(1)-(5) to be addressed in an IRFA. Item 6 below discusses
alternatives to this proposal that the Office considered.
1. A Description of the Reasons Why the Action by the agency Is Being
Considered
Section 10 of the Act authorizes the Director of the USPTO to set
or adjust by rule any patent fee established, authorized, or charged
under title 35, U.S.C., for any services performed, or materials
furnished, by the Office. Section 10 prescribes that patent fees may be
set or adjusted only to recover the aggregate estimated costs to the
Office for processing, activities, services, and materials relating to
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patents, including administrative costs to the Office with respect to
such patent fees. The proposed fee schedule will recover the aggregate
cost of patent operations while facilitating the effective
administration of the U.S. patent system. The reasons why the
rulemaking is being considered are further discussed in section 6.i
below and elsewhere in this IRFA and the NPRM.
2. The Objectives of, and Legal Basis for, the Proposed Rule
The objective of the proposed rules is to implement the fee setting
provisions of section 10 of the Act by setting or adjusting patent fees
to recover the aggregate cost of patent operations, including
administrative costs, while facilitating the effective administration
of the U.S. patent system. The Act strengthened the patent system by
affording the USPTO the "resources it requires to clear the still
sizeable backlog of patent applications and move forward to deliver to
all American inventors the first rate service they deserve." H.R. Rep.
No. 112-98(I), at 163 (2011). In setting fees under the Act, the Office
seeks to secure a sufficient amount of aggregate revenue to recover the
aggregate cost of patent operations, including for achieving strategic
and operational goals, such as reducing the current patent application
backlog, decreasing patent pendency, improving patent quality,
upgrading its patent business information technology (IT) capability
and infrastructure, and implementing a sustainable funding model. As
part of these efforts, the Office will use a portion of the patent fees
to establish a patent operating reserve, a step toward achieving the
Office's financial sustainability goals. In addition, the Office
proposes to include multipart and staged fees for requests for
continued examination and appeals, both of which aim to foster
innovation and increase prosecution options. Additional information on
the Office's strategic goals may be found in the USPTO 2010-2015
Strategic Plan, available at http://www.uspto.gov/about/stratplan/USPTO_2010
2015_Strategic_Plan.pdf. Additional information on the
Office's goals and operating requirements may be found in the USPTO FY
2013 President's Budget (Budget), available at
http://www.uspto.gov/about/stratplan/budget/fy13pbr.pdr. The legal basis for
the proposed rules is section 10 of the Act.
3. A Description of and, Where Feasible, an Estimate of the Number of
Small Entities To Which the Proposed Rule Will Apply SBA Size Standard
The Small Business Act (SBA) size standards applicable to most
analyses conducted to comply with the RFA are set forth in 13 CFR
121.201. These regulations generally define small businesses as those
with less than a specified 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. As
provided by the RFA, and after consulting with the Small Business
Administration, the Office formally adopted an alternate size standard
for the purpose of conducting an analysis or making a certification
under the RFA for patent-related regulations. See Business Size
Standard for Purposes of United States Patent and Trademark Office
Regulatory Flexibility Analysis for Patent-Related Regulations, 71 FR
67109 (Nov. 20, 2006), 1313 Off. Gaz. Pat. Office 60 (Dec. 12, 2006).
The Office's alternate small business size standard consists of SBA's
previously established size standard for entities entitled to pay
reduced patent fees. See 13 CFR 121.802.
Unlike SBA's generally applicable small business size standards,
the size standard for the USPTO is not industry-specific. The Office's
definition of a small business concern for RFA 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
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concern that would not qualify as a nonprofit 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 67109 (Nov.
20, 2006), 1313 Off. Gaz. Pat. Office at 63 (Dec. 12, 2006).
If a patent applicant self-identifies on a patent application as
qualifying as a small entity for reduced patent fees under the Office's
alternative size standard, 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.
Small Entities Affected by This Rule
Small Entity Defined
The Act provides that fees set or adjusted under section 10(a)
"for filing, searching, examining, issuing, appealing, and maintaining
patent applications and patents shall be reduced by 50 percent" with
respect to the application of such fees to any "small entity" (as
defined in 37 CFR 1.27) that qualifies for reduced fees under 35 U.S.C.
41(h)(1). 35 U.S.C. 41(h)(1), in turn, provides that certain patent
fees "shall be reduced by 50 percent" for a small business concern as
defined by section 3 of the SBA, and to any independent inventor or
nonprofit organization as defined in regulations described by the
Director.
Micro Entity Defined
Section 10(g) of the Act creates a new category of entity called a
"micro entity." 35 U.S.C. 123; see also 125 Stat. at 318-19. Section
10(b) of the Act provides that the fees set or adjusted under section
10(a) "for filing, searching, examining, issuing, appealing, and
maintaining patent applications and patents shall be reduced * * * by
75 percent with respect to the application of such fees to any micro
entity as defined by [new 35 U.S.C.] 123." 125 Stat. at 315-17.
35 U.S.C. 123(a) defines a "micro entity" as an applicant who
certifies that the applicant: (1) Qualifies as a small entity as
defined in 37 CFR 1.27; (2) has not been named as an inventor on more
than four previously filed patent applications, other than applications
filed in another country, provisional applications under 35 U.S.C.
111(b), or Patent Cooperation Treaty (PCT) applications for which the
basic national fee under 35 U.S.C. 41(a) was not paid; (3) did not, in the
calendar year preceding the calendar year in which the applicable fee is
being paid, have a gross income, as defined in section 61(a) of the Internal
Revenue Code of 1986 (26 U.S.C. 61(a)), exceeding three times the median
household income for that preceding calendar year, as most recently reported
by the Bureau of the Census; and (4) has not assigned, granted, conveyed,
and is not under an obligation by contract or law, to assign, grant, or
convey, a license or other ownership interest in the application
concerned to an entity exceeding the income limit set forth in (3)
above. See 125 Stat. at 318.
35 U.S.C. 123(d) also defines a "micro entity" as an applicant
who certifies that: (1) The applicant's employer, from which the
applicant obtains the majority of the applicant's income, is an
institution of higher education as defined in section 101(1) of the
Higher Education Act of 1965 (20 U.S.C. 1001(a)); or (2) the applicant
has assigned, granted, conveyed, or is under an obligation by contract
or law, to assign, grant, or convey, a license or other ownership
interest in the particular applications to such an institution of
higher education.
Estimate of Number of Small Entities Affected
The changes in the proposed rules will apply to any entity,
including small and micro entities, that pays any patent fee set forth
in the notice of proposed rulemaking. The reduced fee rates (50 percent
for small entities and 75 percent for micro entities) will apply to any
small entity asserting small entity status and to any micro entity
certifying micro entity status for filing, searching, examining,
issuing, appealing, and maintaining patent applications and patents.
The Office reviews historical data to estimate the percentages of
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application filings asserting small entity status. Table 53 presents a
summary of such small entity filings by type of application (utility,
reissue, plant, design) over the last five years.
Table 53 - Number of Patent Applications
Filed in Last Five Years*
FY 2011** FY 2010 FY 2009 FY 2008 FY 2007 Average
Utility:
All 504,089 479,332 458,901 466,258 439,578 469,632
Small 126,878 122,329 113,244 116,891 112,953 118,459
% Small 25.2 25.5 24.7 25.1 25.7 25.2
Reissue:
All 1,139 1,138 1,035 1,080 1,057 1,090
Small 265 235 237 258 238 247
% Small 23.3 20.7 22.9 23.9 22.5 22.6
Plant:
All 1,106 1,013 988 1,331 1,002 1,088
Small 574 472 429 480 358 463
% Small 51.9 46.6 43.4 36.1 35.7 42.7
Design:
All 30,270 28,577 25,575 28,217 26,693 27,866
Small 14,699 15,133 14,591 14,373 14,620 14,683
% Small 48.6 53.0 57.1 50.9 54.8 52.9
Total:
All 536,604 510,060 486,499 496,886 468,330 499,676
Small 142,416 138,169 128,501 132,002 128,169 133,851
% Small 26.5 27.1 26.4 26.6 27.4 26.8
* The patent application filing data in this table includes RCEs.
** FY 2011 application data are preliminary and will be finalized in the FY
2012 Performance and Accountability Report (PAR).
Because the percentage of small entity filings varies widely
between application types, the Office has averaged the small entity
filing rates over the past five years for those application types in
order to estimate future filing rates by small and micro entities.
Those average rates appear in the last column of Table 53. The Office
estimates that small entity filing rates will continue for the next
five years at these average historic rates.
The Office forecasts the number of projected patent applications
(i.e., workload) for the next five years using a combination of
historical data, economic analysis, and subject matter expertise. The
Office estimates that utility, plant, and reissue (UPR) patent
application filings would grow by 6.0 percent each year in FY 2013 and
FY 2014, by 5.5 percent each year in FY 2015 and FY 2016, and by 5.0
percent in FY 2017. The Office forecasts design patent applications
independently of UPR applications because they exhibit different
behavior. The Office also previously estimated that design patent
application filings would grow by 2.0 percent each year in FY 2013 and
FY 2017. These filing estimates, however, are established prior to an
analysis of elasticity based on fee adjustments. The Budget (page 36,
"USPTO Fee Collection Estimates/Ranges") further describes the
Office's workload forecasting methodology, which involves reviewing
economic factors and other relevant indicators about the intellectual
property environment. Exhibit 12 of the Budget presents additional
performance goals and measurement data, including the forecasted patent
application filing growth rate as described above.
Using the estimated filings for the next five years, the average
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historic rates of small entity filings, and the Office's elasticity
estimates, Table 53 presents the Office's estimates of the number of
patent application filings by all applicants, including small entities,
over the next five fiscal years by application type. As stated in Part
V. of this NPRM, and taking into account elasticity, the Office
estimates that applicants will file 1.3 percent fewer patent
applications during FY 2013 than the number estimated to be filed in
the absence of a fee increase (with new fee schedule implementation for
half the fiscal year). The Office further estimates that 2.7 percent fewer
patent applications will be filed during FY 2014 and 4.0 percent fewer
patent applications beginning in FY 2015, in response to the proposed fee
adjustment. Beginning in FY 2016, the growth in patent applications
filed will return the same levels anticipated in the absence of a fee
increase. The Office's estimate of the number of patent application
filings by small entities represents an upper bound. Some entities may
file more than one application in a given year.
The Office has undertaken an elasticity analysis to examine how fee
adjustments may impact small entities, and in particular, whether
increases in fees would result in some such entities not submitting
applications. Elasticity measures how sensitive patent applicants and
patentees are to fee amounts or changes. If elasticity is low enough
(demand is inelastic), then fee increases will not reduce patenting
activity enough to negatively impact overall revenues. If elasticity is
high enough (demand is elastic), then increasing fees will decrease
patenting activity enough to decrease revenue. The Office analyzes
elasticity at the overall filing level across all patent applicants
regardless of entity size. Additional information about elasticity
estimates is available at
http://www.uspto.gov/aia_implementation/fees.jspheading-1 in the document
entitled "USPTO Section 10 Fee Setting - Description of Elasticity
Estimates." Table 53 reflects estimates for total numbers of applicants,
including the portion of small entity applicants; these estimates include
reductions in the application growth rate (as described in the previous
paragraph) based on the estimated elasticity effect included in Table 2 of
the aforementioned Description of Elasticity Estimates document. This
estimated elasticity effect is multiplied by the estimated number of
patent applications in the absence of a fee increase to obtain the
estimates in Table 54. See the appendix on elasticity for additional
detail on the Office's elasticity estimates and methodology.
Table 54 - Estimated Numbers of Patent Applications in
FY 2013 - FY 2017
FY 2012 FY 2013 FY 2014 FY 2015 FY 2016 FY 2017
(current)
Utility:
All 531,551 554,650 578,603 600,571 633,667 665,406
Small 134,571 141,669 147,881 153,490 161,951 170,063
Reissue:
All 690 685 678 672 692 713
Small 152 151 149 148 152 157
Plant
All 1,044 1,034 1,024 1,014 1,024 1,036
Small 522 517 512 507 512 518
Design:
All 32,062 31,994 31,910 31,810 32,446 33,094
Small 16,031 15,997 15,955 15,905 16,223 16,547
Total
All 565,347 588,363 612,215 634,067 667,829 700,249
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Small 151,276 158,334 164,497 170,051 178,837 187,285
4. A Description of the Projected Reporting, Recordkeeping and Other
Compliance Requirements of the Proposed Rule, Including an Estimate of
the Classes of Small Entities Which Will Be Subject to the Requirement
and Type of Professional Skills Necessary for Preparation of the Report
or Record
If implemented, this rule will not change the burden of existing
reporting and recordkeeping requirements for payment of fees. The
current requirements for small entities will continue to apply to small
entities. The process to assess whether an entity can claim micro
entity status requires the same skill currently required to assess
whether an entity can claim small entity status. The projected
reporting and recordkeeping requirements for an entity to certify
eligibility for micro entity fee reductions are minimal (namely, a
brief certification). These minimal requirements will not require any
professional skills beyond those required to file and prosecute an
application. Therefore, the professional skills necessary to file and
prosecute an application through issue and maintenance remain unchanged
under this proposal. This action proposes only to adjust patent fees
and not to set procedures for asserting small or micro entity status,
as previously discussed.
The full proposed fee schedule (see Part VI. Discussion of Specific
Rules) is set forth in this NPRM. The proposed fee schedule sets or
adjusts 352 patent fees. This fee schedule includes 9 new fees for
which there are no small or micro entity fee reductions, 94 fees for
which there are small entity fee reductions, and 93 fees for which
there are micro entity fee reductions. One fee, Statutory Disclaimer
(37 CFR 1.20(d)), was formerly eligible for a small entity fee
reduction, but is no longer eligible for such reduction under section
10(b) of the Act. Similarly, Basic Filing Fee - Utility (37 CFR
1.16(a)(1), electronic filing for small entities), is set expressly for
small entities in section 10(h) of the Act, and there is no
corresponding large or micro entity fee.
Commensurate with changes to large entity fees, small entities will
pay more than they do currently for 48 percent of the fees currently
eligible for the 50 percent fee reduction. However, more fees are
reduced for small entities under the Act. As a result, they will pay
less than they do currently for 43 percent of the fees eligible for the
50 percent reduction (5 percent of the fees stay the same and the
balance are newly proposed fees). Additionally, micro entities are
eligible for fee reductions of 75 percent. Compared to what they would
have paid as small entities under the current fee schedule, micro
entities will pay less for 88 percent of the fees eligible for
reduction.
5. Identification, to the Extent Practicable, of All Relevant Federal
Rules Which May Duplicate, Overlap, or Conflict With the Proposed Rules
The USPTO is the sole agency of the United States Government
responsible for administering the provisions of title 35, United States
Code, pertaining to examining and granting patents. It is solely
responsible for issuing rules to comply with section 10 of the AIA. No
other Federal, state, or local entity has jurisdiction over the examination
and granting of 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 PCT). Nevertheless, the USPTO
believes that there are no other duplicative or overlapping rules.
6. Description of Any Significant Alternatives to the Proposed Rules
Which Accomplish the Stated Objectives of Applicable Statutes and Which
Minimize Any Significant Economic Impact of the Proposed Rules on Small
Entities
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The USPTO considered several alternative approaches to the
proposal, discussed below, including retaining current fees, full cost
recovery of fees, an across-the-board adjustment to fees, and the
proposal submitted to the Patent Public Advisory Committee (PPAC) on
February 7, 2012. The discussion begins with a description of the
proposal in this rulemaking.
i. Alternative 1: Proposed Alternative - Set and Adjust Section 10 Fees
The USPTO chose the alternative proposed herein because it will
enable the Office to achieve its goals effectively and efficiently
without unduly burdening small entities, erecting barriers to entry, or
stifling incentives to innovate. The alternative proposed here achieves
the aggregate revenue needed for the Office to offset aggregate costs,
and is therefore beneficial to all entities that seek patent
protection. Also, the alternative proposed here offers small entities a
50 percent fee reduction and micro entities a 75 percent fee reduction.
As discussed in Item 4 above, the proposed fee schedule includes a
total of 94 reduced fees for small entities and 93 reduced fees for
micro entities. Compared to the current patent fee schedule, small
entities will see 34 small entity fees decrease and micro entities will
see 74 fees decrease (when compared to the rate they would have paid as
a small entity under the current fee schedule).
Given the three-month operating reserve target estimated to be
achieved in FY 2017 under this proposed alternative, small and micro
entities would pay some higher fees than under some of the other
alternatives considered. However, the fees are not as high as those
initially proposed to PPAC (Alternative 4), which achieved the three-
month target operating reserve in FY 2015. Instead, in this
alternative, the Office decided to slow the growth of the operating
reserve and lower key fee amounts in response to comments and feedback
the PPAC received from IP stakeholders and other interested members of
the public during and following the PPAC fee setting hearings.
The proposed alternative secures the Office's required revenue to
meet its aggregate costs, while meeting the strategic goals of patent
pendency and patent application backlog reduction that will benefit all
applicants, and especially small and micro entities. Pendency is one of
the most important factors in an analysis of patent fee proposal
alternatives. Reducing patent pendency increases the private value of
patents because patents are granted sooner, thus allowing patent
holders to more quickly commercialize their innovations. Reducing
pendency may also allow for earlier disclosure of information and scope
of protection, which reduces uncertainty regarding the scope of patent
rights and validity of claims for patentees, competitors, and new
entrants. All patent applicants should benefit from the reduced
pendency that will be realized under the proposed alternative. While
some of the other alternatives discussed make progress toward the
pendency (and related backlog reduction) goal, the proposed alternative
is the only one that does so in a way that does not pose undue costs on
patent applicants and holders while still achieving the Office's other
strategic goals.
The proposed alternative is also uniquely responsive to stakeholder
feedback in ways the other alternatives are not, including multipart
and staged fees for requests for continued examination, appeals, and
several of the new trial proceedings, including inter partes review and
post grant review. These inclusions in the proposed alternative aim to
foster innovation and increase patent prosecution options for
applicants and patent holders, as discussed in the Part V: Individual
Fee Rationale section of Supplementary Information in this NPRM. Two
examples illustrate how the proposed fee structure is responsive to
stakeholder feedback. First, the Office proposes two fees for RCEs. The
fee for an initial RCE is set below cost; the second and any subsequent
RCEs are set above the amount of the first RCE, but also estimated to
be at cost recovery. This structure recognizes stakeholder feedback and
Office data about how commonplace RCEs have become as a path to patent
protection. A lower first RCE fee continues to allow for use of this
option, when necessary; only the more intensive use of this process,
which impacts compact prosecution, requires higher fees. Second, the
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Office proposes to stage the payment of the appeal fees to recover
additional cost at later points in time and thereby minimize the cost
impacts on applicants associated with withdrawn final rejections. The
Office proposes (1) a $1,000 notice of appeal fee, (2) a $0 fee when
filing the brief, and (3) a $2,000 fee when forwarding the appeal
file - containing the appellant's Brief and the Examiner's Answer - to
the BPAI for review. This structure aims to: provide patent prosecution
options for applicants and appellants, stabilize the fee structure by
recovering cost at the points in time where appeals cost is the most
significant, and seek ways to minimize the cost impact on applicants
associated with withdrawn rejections.
When estimating aggregate revenue, the Office used a 1.9 percent
CPI increase (which was the figure included in the Budget) to estimate
the amount of aggregate revenue from October 1, 2012 to an estimated
date (primarily March 1, 2013, except for issue, pre-grant publication,
and assignment fee changes on January 1, 2014) the proposed fees in
this rule could be made final. The Office also included the fees in the
January and February 2012 Proposed Rules (as adjusted by the final
rules) in the aggregate revenue calculation. The proposed fee schedule
for this rulemaking, as compared to existing fees (labeled Alternative
1 - Proposed Alternative - Set and Adjust Section 10 Fees) is available
at http://www.uspto.gov/aia_implementation/fees.jspheading-1,
in the document entitled "USPTO Section 10 Fee Setting - IRFA Tables".
Fee changes for small and micro entities are included in the tables.
For the purpose of calculating the dollar and percent fee change, fees
for micro entities are compared to current fees for small entities. For
the comparison between proposed fees and current fees, as noted above,
the "current fees" column displays the fees that went into effect on
September 16, 2011, and include the fees proposed in the January and
February 2012 Proposed Rules (as adjusted by the final rules), but
unlike the aggregate revenue estimates, do not include an estimated CPI
fee amount.
ii. Other Alternatives Considered
In addition to the proposed fee schedule set forth in Alternative
1, above, the Office considered several other alternative approaches.
a. Alternative 2: Fee Cost Recovery
The USPTO considered setting most individual large entity fees at
the cost of performing the activities related to the particular
service, while implementing the small and micro entity fee reductions
for eligible fees. Fees that are not typically set using cost data as
an indicator have been set at current rates. Under this alternative,
maintenance fees are set at a level sufficient to ensure the Office is
able to recover the cost of mandatory expenses and offset the revenue
loss from small and micro entity discounts (approximately half of the
current maintenance fee rates). Additional information about the
methodology for determining the cost of performing the activities,
including the cost components related to respective fees, is available
for review at http://www.uspto.gov/aia_implementation/
fees.jspheading-1 in the document titled "USPTO Section 10
Fee Setting - Activity-Based Information and Costing Methodology." When
estimating aggregate revenue, the Office used a 1.9 percent CPI
increase (which was the figure included in the Budget) to estimate the
amount of aggregate revenue from October 1, 2012 to an estimated date
(March 1, 2013) the proposed fees in this rule could be made final. The
Office also included the fees in the January and February 2012 Proposed
Rules (as adjusted by the final rules) in the aggregate revenue
calculation.
It is common practice in the Federal Government to set a particular
fee at a level to recover the cost of that service. In OMB Circular A-
25: User Charges, the OMB states that user charges (fees) should be
sufficient to recover the full cost to the Federal Government of
providing the particular service, resource, or good, when the
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Government is acting in its capacity as sovereign. However, the Office
projects a significant revenue shortfall under this alternative,
defeating the goals of this rulemaking.
First, this alternative would not provide sufficient funds to
offset the required fee reductions for small and micro entities. Even
after adjusting maintenance fees upward, aggregate revenue would suffer
considerably. In response, it would be necessary for the Office to
reduce operating costs (i.e., examination capacity (hiring), IT system
upgrades, and various other initiatives), the loss of which would
negatively impact meeting the financial, strategic, and policy goals of
this rulemaking.
Moreover, this alternative presents significant barriers to seeking
patent protection, because front-end fees would increase significantly
for all applicants, even with small and micro entity fee reductions.
The high costs of entry into the patent system could lead to a
significant decrease in the incentives to invest in innovative
activities among all entities, and especially for small and micro
entities. Likewise, there would be no improvements in fee design, such
as the multipart RCE fees or staging the appeal fees included in
Alternative 1.
In sum, this alternative is inadequate to accomplish any of the
goals and strategies as stated in Part III of this rulemaking and so
the Office has not adopted it.
The fee schedule for Alternative 2: Fee Cost Recovery is available
at http://www.uspto.gov/aia_implementation/fees.jsp#heading-1, in the
document entitled "USPTO Section 10 Fee Setting - IRFA Tables." Fee
changes for small and micro entities are included in the tables. For
the purpose of calculation the dollar and percent fee change, fees for
micro entities are compared to current fees for small entities. For the
comparison between proposed fees and current fees, the "current fees"
column displays the fees that went into effect on September 16, 2011,
and include the fees proposed in the January and February 2012 Proposed
Rules (as adjusted by the final rules), but does not include an
estimated CPI fee amount.
b. Alternative 3: Across-the-Board Adjustment
In some past years, and as estimated to begin on October 1, 2012
(see 77 FR 8831 (May 14, 2012)), the USPTO used its authority to adjust
statutory fees annually according to changes in the consumer price
index (CPI), which is a commonly used measure of inflation. Building on
this prior approach, Alternative 3 would set fees by applying a 6.7
percent, multi-year, across-the-board inflationary increase to the
baseline (status quo) beginning in FY 2013. The increase would be in
addition to the CPI increase described in the aforementioned proposed
rule. The 6.7 percent represents the estimated cumulative inflationary
adjustment from FY 2013 through FY 2016. The Office selected this time
period to represent the fiscal year in which the fees would be
effective through the fiscal year in which the operating reserve will
be approaching the target level. As estimated by the Congressional
Budget Office, projected inflationary rates by fiscal year are: 1.4
percent in FY 2013, 1.5 percent in FY 2014, 1.6 percent in FY 2015, and
2.0 percent in FY 2016. Each percentage rate for a given year applies
to the following year, e.g., a 1.4 percent increase for FY 2013 is
applied to FY 2014. These rates are multiplied together to account for
the compounding effect occurring from year-to-year; the rounded result
is 6.7 percent. When estimating aggregate revenue, the Office used a
1.9 percent CPI increase (which was the figure included in the Budget)
to estimate the amount of aggregate revenue from October 1, 2012 to an
estimated date (March 1, 2013) the proposed fees in this rule could be
made final. The Office also included the fees in the January and
February 2012 Proposed Rules (as adjusted by the final rules) in the
aggregate revenue calculation.
Under this alternative, the Office would not collect enough revenue
to achieve strategic goals identified in Part III and within the
timeframes identified in the Budget. This alternative would implement
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the small and micro entity fee reductions for eligible fees, but would
also retain the same fee relationships and subsidization policies as
the status quo (baseline) alternative. There would be no improvements
in fee design, such as the multipart RCE fees or staging the appeal
fees included in Alternative 1. Further, when looking at the aggregate
revenue generated from this alternative, the Office projects that
patent pendency would not change compared to the status quo. This means
that while patent pendency and application backlog will first start to
decrease due to the hiring initiative in FY 2012 (1,500 examiners), it
would thereafter increase because adequate funding would not be
available to continue hiring to increase examination capacity to work
off the patent application backlog, keep pace with new incoming
applications, and build an adequate operating reserve.
The fee schedule for Alternative 3: Across-the-Board Adjustment is
available at http://www.uspto.gov/aia_implementation/fees.jsp#heading-1, in
the document entitled "USPTO Section 10 Fee Setting - IRFA
Tables." Fee changes for small and micro entities are included in the
tables. For the purpose of calculating the dollar and percent fee
change, fees for micro entities are compared to current fees for small
entities. For the comparison between proposed fees and current fees,
the "current fees" column displays the fees that went into effect on
September 16, 2011, and include the fees proposed
in the January and February 2012 Proposed Rules (as adjusted by the
final rule), but does not include an estimated CPI fee amount.
c. Alternative 4: Initial Proposal to the PPAC
The fee structure initially delivered to the PPAC on February 7,
2012, and published during the public hearings in February 2012, which
is consistent with the Budget, would achieve the USPTO's strategic
goals and objectives, including reducing backlog and pendency.
This alternative is nearly the same as the proposed Alternative 1.
As described in Part V. of this NPRM, some fees would be set to achieve
cost recovery for specific patent-related services, while many others
would be set either below or above cost. For example, like alternatives
1 and 3, under this alternative the Office would subsidize front-end
fees set below cost (e.g., file, search, and examination) by setting
back-end fees (e.g., issue and maintenance) above cost to enable a low
cost of entry into the patent system. In some cases, fee rates would be
set at a level during patent prosecution so that an applicant pays
certain fees at a point in time relative to the amount of information
available to make a decision about proceeding. Specifically, fees would
be set low during prosecution when there is less certainty about the
value of an applicant's invention, then begin to rise gradually
starting at issue and continuing through maintenance fees at different
stages of the patent lifecycle (e.g., 3.5, 7.5, and 11.5 years) when a
patent holder has greater certainty in the value of the invention. This
structure also considers the relationship among individual fees and the
cost of operational processes, including some targeted adjustments to
fees where the gap between cost and current fees is greatest.
The fee schedule for this alternative would achieve higher revenue
than each of the other alternatives considered. It would permit the
Office to fund the operating reserve at a rapid pace, reaching its
three-month target level in FY 2015. When estimating aggregate revenue,
the Office used a 1.9 percent CPI increase (which was the figure
included in the Budget) to estimate the amount of aggregate revenue
from October 1, 2012, to an estimated date (primarily March 1, 2013,
except for issue and pre-grant publication fee changes on January 1,
2014) the proposed fees in this rule could be made final. The Office
also included the fees in the January and February 2012 Proposed Rules
in the aggregate revenue calculation.
However, during the PPAC hearings and comment period, stakeholders
raised concerns about the rate of growth associated with the operating
reserve. While most of the Office's stakeholders agree with the need
for an operating reserve, many raised concerns about the need to reach
the target so quickly. Stakeholders opined that such a rate of growth
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would impose too great of a burden on the patent user community. Many
were also concerned that the fee rates associated with achieving the
operating reserve target so quickly would be too high. Although this
alternative would meet the Office's revenue goals, the Office
ultimately rejected this alternative because it would have a greater
economic impact on all entities (including small and micro entities)
than the alternative proposed in this NPRM. A modified version of this
alternative (with a number of lower fees) became the proposed
alternative in this rulemaking.
The fee schedule for Alternative 4: Initial Proposal to PPAC is
available at http://www.uspto.gov/aia_implementation/fees.jsp#heading-1, in
the document entitled "USPTO Section 10 Fee Setting - IRFA
Tables." Fee changes for small and micro entities are included in the
tables. For the purpose of calculation the dollar and percent fee
change, fees for micro entities are compared to current fees for small
entities. For the comparison between proposed fees and current fees,
the "current fees" column displays the fees that went into effect on
September 16, 2011, and include the fees proposed in the January and
February 2012 Proposed Rules, but does not include an estimated CPI fee
amount.
d. Alternative 5: Retain Current Fees (Status Quo)
The Office considered a no-action alternative. This alternative
would retain the status quo, meaning that the Office would not expand
the range of fees eligible for a small entity discount (50 percent),
nor would it go a step further and provide micro entities with the 75
percent fee reduction that Congress provided in section 10 of the Act.
This approach would not provide sufficient aggregate revenue to
accomplish the Office's goals as set forth in Part III of this NPRM or
the Strategic Plan, including hiring the examiners needed to decrease
the backlog of patent applications, meeting patent pendency goals,
improving patent quality, advancing IT initiatives, and achieving
sustainable funding. When estimating aggregate revenue, the Office
included the fees proposed in the January and February 2012 Proposed
Rules (as adjusted by the final rules) in the aggregate revenue
calculation.
The status quo alternative would be detrimental to micro entities,
because the proposed rule includes a 75 percent fee reduction for micro
entities that will result in those applicants paying less under the
proposed fee structure than they would under the status quo. Moreover,
small entities generally would be harmed because fewer small entity
discounts would be available.
The status quo approach would result in inadequate funding for
effective patent operations. It would result in increased patent
pendency levels and patent application backlog. It would also prevent
the USPTO from meeting the goals in its strategic plan that are
designed to achieve greater efficiency and improve patent quality.
These results would negatively impact small entities just as they would
negatively impact all other patent applicants. While the Office would
continue to operate and make some progress toward its goals, the
progress would be much slower, and in some cases, initial improvements
would be eradicated in the out-years (e.g., patent pendency and the
backlog would increase in the out-years as the Office fails to increase
examination capacity to keep up with incoming applications). Likewise,
IT improvement activities would continue, but at a slower rate due to
funding limitations.
iii. Alternatives Specified by the RFA
The RFA provides that an agency also consider four specified
"alternatives" or approaches, namely: (1) Establishing different
compliance or reporting requirements or timetables that take into
account the resources available to small entities; (2) clarifying,
consolidating, or simplifying compliance and reporting requirements
under the rule for small entities; (3) using performance rather than
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design standards; and (4) exempting small entities from coverage of the
rule, or any part thereof. 5 U.S.C. 604(c). The USPTO discusses each of
these specified alternatives or approaches below, and describes how
this notice of proposed rulemaking is adopting these approaches.
Differing Requirements
As discussed above, the changes proposed in this rulemaking would
establish differing requirements for small and micro entities that take
into account the reduced resources available to them. Specifically,
micro entities would pay a 75 percent reduction in patent fees under
this proposal.
For non-micro small entities, this proposal would not only retain the
existing 50 percent patent fee reduction but also expand the
availability of such small entity fee reductions to 26 patent fees that
currently are not eligible for small entity reductions. The increased
availability of fee reductions for both small and micro entities arises
from the fact that section 10(b) of the Act provides that reductions
apply to all fees for "filing, searching, examining, issuing,
appealing, and maintaining patent applications and patents." Prior to
the AIA, small entity fee reductions applied only to fees set under 35
U.S.C. 41(a) and 41(b). By increasing the scope of fees eligible for
reductions, the AIA allows the USPTO to do more to ease burdens and
reduce the entry barriers for small and micro entities to take part in
the patent system.
This rulemaking sets fee levels but does not set or alter
procedural requirements for asserting small or micro entity status. To
pay reduced patent fees, small entities must merely assert small entity
status to pay reduced patent fees. The small entity may make this
assertion by either checking a box on the transmittal form, "Applicant
claims small entity status," or by paying the small entity fee
exactly. The Office is similarly proposing that a micro entity submit a
form certifying micro entity status. (Changes to Implement Micro Entity
Status for Paying Patent Fees, 77 FR 31806 (May 30, 2012)). These
proposed rules do not change any reporting requirements for any small
entity. For both small and micro entities, the burden to establish
their status is nominal (making an assertion or submitting a
certification), and the benefit of the fee reductions (50 percent for
small entities and 75 percent for micro entities) is significant.
This proposed rule makes the best use of differing requirements for
small and micro entities. It also makes the best use of the redesigned
fee structure, as discussed further below.
Clarification, Consolidation, or Simplification of Requirements
The proposed changes here also clarify, consolidate, and simplify
the current requirements. These changes incorporate certain options to
stage fees (break fees into multiple parts), so that applicants can
space out the payment of fees and make decisions about some fees at
late stages in the application process when they have more information.
Applicants also can receive partial refunds when some parts of a
service prove not to be needed.
For example, the Office proposes that appeal fees be spread out
across different stages of the appeal process so that an applicant can
pay a smaller fee to initiate the appeal, and then not pay for the bulk
of the appeal fee until if and when the appeal is forwarded to the BPAI
after the Examiner's Answer is filed. Thus, if a small or micro entity
initiates an appeal, but the appeal does not go forward because the
examiner withdraws the rejection, the small entity will pay less for
the appeal process than under the current fee structure (where the bulk
of the appeal fees would be paid up front even if the appeal does not
go forward). In another example, the Office proposes to set fees for
the administrative trials (inter partes review, post grant review, and
covered business method review) before the BPAI to be paid in multiple
parts. With inter partes review, for instance, the Office proposes to
return fees for post-institution services should a petition not be
instituted. Similarly, the Office proposes that fees paid for post-
institution review of a large number of claims be returned if the
Office only institutes the review of a subset of the requested claims.
These options for staging and splitting fees into multiple parts will
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benefit small and micro entities, who will be able to spread out their
payments of fees and in some instances, potentially receive refunds of
fees where only a portion of a particular service is ultimately
provided. See proposed 41.20 and 42.15.
This proposed rule makes the best use of this alternative approach.
No other alternative considered above includes the full range of
redesign features.
Performance Standards
Performance standards do not apply to the current rulemaking.
Exemption for Small Entities
The proposed changes here include a new 75 percent reduction in
fees for micro entities, and an expansion of the 50 percent reduction
in fees for small entities. The Office considered exempting small and
micro entities from paying patent fees, but determined that the USPTO
would lack statutory authority for this approach. Section 10(b) of the
Act provides that "fees set or adjusted under subsection (a) for
filing, searching, examining, issuing, appealing, and maintaining
patent applications and patents shall be reduced by 50 percent [for
small entities] and shall be reduced by 75 percent [for micro
entities]." (Emphasis added). Neither the AIA nor any other statute
authorizes the USPTO simply to exempt small or micro entities, as a
class of applicants, from paying patent fees.
B. Executive Order 12866 (Regulatory Planning and Review)
This rulemaking has been determined to be economically 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). The Office has developed a RIA as required for rulemakings
deemed to be economically significant. The complete RIA is available at
http://www.uspto.gov/aia_implementation/fees.jsp#heading-1.
C. Executive Order 13563 (Improving Regulation and Regulatory Review)
The Office has complied with Executive Order 13563. Specifically,
the Office has, to the extent feasible and applicable: (1) Made a
reasoned determination that the benefits justify the costs of the rule;
(2) tailored the rule to impose the least burden on society consistent
with obtaining the regulatory objectives; (3) selected a regulatory
approach that maximizes net benefits; (4) specified performance
objectives; (5) identified and assessed available alternatives; (6)
involved the public in an open exchange of information and perspectives
among experts in relevant disciplines, affected stakeholders in the
private sector, and the public as a whole, and provided on-line access
to the rulemaking docket; (7) attempted to promote coordination,
simplification, and harmonization across Government agencies and
identified goals designed to promote innovation; (8) considered
approaches that reduce burdens and maintain flexibility and freedom of
choice for the public; and (9) ensured the objectivity of scientific
and technological information and processes.
D. Executive Order 13132 (Federalism)
This rulemaking does not contain policies with federalism
implications sufficient to warrant preparation of a Federalism
Assessment under Executive Order 13132 (Aug. 4, 1999).
E. Congressional Review Act
Under the Congressional Review Act provisions of the Small Business
Regulatory Enforcement Fairness Act of 1996 (5 U.S.C. 801-808), prior
to issuing any final rule, the United States Patent and Trademark
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Office will submit a report containing the final rule and other
required information to the U.S. Senate, the U.S. House of
Representatives, and the Comptroller General of the Government
Accountability Office.
F. Unfunded Mandates Reform Act of 1995
The changes proposed in this notice do not involve a Federal
intergovernmental mandate that will result in the expenditure by state,
local, and tribal governments, in the aggregate, of 100 million dollars
(as adjusted) or more in any one year, or a Federal private sector
mandate that will result in the expenditure by the private sector of
100 million dollars (as adjusted) or more in any one year, and will not
significantly or uniquely affect small governments. Therefore, no
actions are necessary under the provisions of the Unfunded Mandates
Reform Act of 1995. See 2 U.S.C. 1501-1571.
G. Paperwork Reduction Act
The Paperwork Reduction Act of 1995 (PRA) (44 U.S.C. 3501-3549)
requires that the USPTO considers the impact of paperwork and other
information collection burdens imposed on the public. This proposed
rule involves information collection requirements that are subject to
review by the Office of Management and Budget (OMB) under the PRA. The
collection of information involved in this notice has been submitted to
OMB as a new information collection under OMB control number 0651-00xx.
The proposed collection will be available at the OMB's Information
Collection Review Web site at: www.reginfo.gov/public/do/PRAMain.
1. Summary
This notice of proposed rulemaking proposes both collecting two
fees not specifically delineated in an existing information collection
request (listed in Table (A) below) and amending the fees in several
current information collections previously approved by OMB (listed in
Table (B) below). The USPTO is consolidating these fee burdens in order
to allow for fee burden adjustments to be requested through a single
fee information collection package entitled "America Invents Act
Section 10 Patent Fee Adjustments." This new, consolidated collection
will result in the unavoidable double counting of certain fees for a
short period of time. The USPTO will update the fee burden inventory in
existing information collections to correct the double counting by
submitting non-substantive change requests in each of the currently
existing information collection requests (in Table (B) below) with the
appropriate fee adjustments. Nothing associated with either this
rulemaking or this information collection request alters the existing
non-fee burden of any response to any information collection. However,
because a change in some fees will change the aggregate demand for
certain services, the total number of responses for some information
collections will change, which in turn will change the total number of
burden hours (defined as the total hour burden of a collection
multiplied by the total responses) and respondent cost burden (burden
hours multiplied by the attorney cost per hour) for some collections.
These changes are detailed in the supporting statement for this
information collection, and the USPTO will update the existing
information collections to account for this change when submitting the
non-substantive change requests described above.
(A) Fees Included in this New Information Collection Request
Amount (Large Amount (Small Amount (Micro
Fee Entity) Entity) Entity) Regulation
Correct $1,000.00 $500.00 $250.00 37 CFR 1.17(d)
Inventorship after
First Action on the
Merits.
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Petitions to Chief $400 $400 $400 37 CFR 41.3
APJ Under 37 CFR
41.3.
(B) Existing & Pending Collections Amended under the Proposed
Rulemaking
(1) 0651-0012 Admittance to Practice and Roster of Registered Patent
Attorneys and Agents Admitted to Practice Before the USPTO
(2) 0651-0016 Rules for Patent Maintenance Fees
(3) 0651-0020 Patent Term Extension
(4) 0651-0021 Patent Cooperation Treaty
(5) 0651-0027 Recording Assignments
(6) 0651-0031 Patent Processing (Updating)
(7) 0651-0032 Initial Patent Applications
(8) 0651-0033 Post Allowance and Refiling
(9) 0651-0036 Statutory Invention Registration
(10) 0651-0059 Certain Patent Petitions Requiring a Fee (formerly
Patent Petitions Charging the Fee Under 37 CFR 1.17(f))
(11) 0651-0063 Board of Patent Appeals and Interferences (BPAI) Actions
(12) 0651-0064 Patent Reexaminations
(13) 0651-00xx Patent Review and Derivation Proceedings
(14) 0651-00xx Matters Related to Patent Appeals
2. Data
Section 10 of the Act authorizes the Director of the USPTO to set
or adjust all patent fees established, authorized, or charged under
Title 35 of the U.S. Code. Agency fees associated with information
collections are considered to be part of the burden of the collection
of information. The data associated with this information collection
request is summarized below and provided in additional detail in the
supporting statement for this information collection request, available
through the Information Collection Review Web site
(www.reginfo.gov/public/do/PRAMain).
Section 10 also provides for the creation of a "micro entity
status." The information collection associated with micro entity
status will be addressed in a separate proposed rulemaking and a
separate PRA analysis.
Needs and Uses: The Agency is authorized to collect these fees by
Section 10 of the Act. The public uses this information collection to
pay their required fees and communicate with the Office regarding their
applications and patents procedures. The Agency uses these fees to
process respondents' applications and patents, to process applicants'
requests for various procedures in application and post-grant patent
processing, and to provide all associated services of the Office.
OMB Number: 0651-00xx.
Title: America Invents Act Section 10 Patent Fee Adjustments.
Form Numbers: None.
Type of Review: New Collection.
Likely Respondents/Affected Public: Individuals or households,
businesses or other for-profit institutions, not-for-profit
institutions, farms, Federal Government, and state, local, or tribal
governments.
A. Estimates For All Fees, Including Both Information Added In This
Collection And Information In Existing And Pending Collections
Estimated Number of Respondents For All Fees: 5,832,472 responses
per year.
Estimated Time per Response For All Fees: Except as noted below for
the two fees added to this collection, this
information collection will not result in any change in any time per
response.
Estimated Total Annual (Hour) Respondent Cost Burden for All Fees:
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Except as noted below for the two fees added to this collection, this
information collection will not result in any change in any information
requirements associated with fees set or amended by this proposed
rulemaking. Other than the two fees added to this collection, the only
change in the total annual (hour) respondent cost burden results from
the change in responses, which is a result of two factors. First,
because the change in a fee for a particular service may cause a change
in demand for that service, the total number of respondents for each
service might change, altering the total annual (hour) respondent cost
burden for fees covered under approved collections. This change has
been fully detailed in the supporting statement and its appendices.
Second, response numbers of current inventories have been updated to
reflect the Office's most recent estimates.
Estimated Total Annual (Non-Hour) Respondent Cost Burden for All
Fees: $2,594,521,312. The USPTO estimates that the total fees
associated with this collection, representing all fees collected across
the full panoply of patent processing services provided by the Office,
will be approximately $2,594,521,210 per year. (This number is
different than the total revenue cited elsewhere in this rule because
PRA estimates have been calculated by taking an average over three
years of estimated responses and because not every fee adjusted in this
rulemaking constitutes a burden under the PRA (e.g., self-service
copying fees).) The amount of these fees is a $358,711,017 change from
the fee amounts currently in the USPTO PRA inventory. Of this,
$349,621,825 directly results from this proposed rulemaking and
$9,089,192 results from non-rulemaking factors. Additionally, the USPTO
estimates that $102 of additional postage cost associated with the
items added in this collection will result from this collection.
Because the postage costs for items in existing collections have not
been altered by this rulemaking, they are not part of the burden of
this rulemaking.
B. Estimates for Fees not Specifically Delineated in an Existing
Information Collection Request (A Subset of All Fees in Part A. Above)
Estimated Number of Respondents for Information Added In This
Collection: 665 responses per year.
Estimated Time Per Response For Information Added In This
Collection: The USPTO estimates that it will take the public between 2
and 4 hours to gather the necessary information, prepare the
appropriate form or other documents, and submit the information to the
USPTO.
Estimated Total Annual Respondent Burden Hours For Information
Added In This Collection: 1,660 hours per year.
Estimated Total Annual (Hour) Respondent Cost Burden For
Information Added In This Collection: $615,860 per year.
Estimated Annual (Non-Hour) Respondent Cost Burden For Information
Added In This Collection: $493,852 per year. Of this amount, $427,750
directly results from this rulemaking, $66,000 results from non-
rulemaking factors, and $102 results from postage.
3. Solicitation
The agency is soliciting comments to: (1) Evaluate whether the
proposed information requirement is necessary for the proper
performance of the functions of the agency, including whether the
information will have practical utility; (2) evaluate the accuracy of
the agency's estimate of the burden; (3) enhance the quality, utility,
and clarity of the information to be collected; and (4) minimize the
burden of collecting the information on those who are to respond,
including by using appropriate automated, electronic, mechanical, or
other technological collection techniques or other forms of information
technology.
Interested persons are requested to send comments regarding this
information collection by November 5, 2012 to: (1) The Office of
Information and Regulatory Affairs, Office of Management and Budget,
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New Executive Office Building, Room 10202, 725 17th Street NW.,
Washington, DC 20503, Attention: Nicholas A. Fraser, the Desk Officer
for the United States Patent and Trademark Office, and via email at
nfraser@omb.eop.gov; and (2) Michelle Picard via email to
fee.setting@uspto.gov, or by mail addressed to: Mail Stop - Office of
the Chief Financial Officer, Director of the United States Patent and
Trademark Office, P.O. Box 1450, Alexandria, VA 22313-1450, marked to
the attention of Michelle Picard.
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.
37 CFR Part 42
Trial practice before the Patent Trial and Appeal Board.
For the reasons set forth in the preamble, 37 CFR parts 1, 41, and
42 are proposed to be amended as follows:
PART 1 - RULES OF PRACTICE IN PATENT CASES
1. The authority citation for 37 CFR Part 1 continues to read as
follows:
Authority: 35 U.S.C. 2(b)(2).
2. Section 1.16 is amended by revising paragraphs (a) 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:
By a micro entity (§ 1.29(a)) $70.00
By a small entity (§ 1.27(a)) $140.00
By a small entity (§ 1.27(a)) if the application is $70.00
submitted in compliance with the Office electronic filing
system (§ 1.27(b)(2))
By other than a small or micro entity $280.00
(b) Basic fee for filing each app lication for an original design
patent:
By a micro entity (§ 1.29(a)) $45.00
By a small entity (§ 1.27(a)) $90.00
By other than a small or micro entity $180.00
(c) Basic fee for filing each application for an original plant
patent:
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By a micro entity (§ 1.29(a)) $45.00
By a small entity (§ 1.27(a)) $90.00
By other than a small or micro entity $180.00
(d) Basic fee for filing each provisional application:
By a micro entity (§ 1.29(a)) $65.00
By a small entity (§ 1.27(a)) $130.00
By other than a small or micro entity $260.00
(e) Basic fee for filing each application for the reissue of a
patent:
By a micro entity (§ 1.29(a)) $70.00
By a small entity (§ 1.27(a)) $140.00
By other than a small or micro entity $280.00
(f) Surcharge for filing any of the basic filing fee, the search
fee, the examination fee, or the oath or declaration on a date later
than the filing date of the application, except provisional
applications:
By a micro entity (§ 1.29(a)) $35.00
By a small entity (§ 1.27(a)) $70.00
By other than a small or micro entity $140.00
(g) Surcharge for filing the basic filing fee or cover sheet
(§ 1.51(c)(1)) on a date later than the filing date of the provisional
application:
By a micro entity (§ 1.29(a)) $15.00
By a small entity (§ 1.27(a)) $30.00
By other than a small or micro entity $60.00
(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 micro entity (§ 1.29(a)) $105.00
By a small entity (§ 1.27(a)) $210.00
By other than a small or micro entity $420.00
(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 micro entity (§ 1.29(a)) $20.00
By a small entity (§ 1.27(a)) $40.00
By other than a small or micro entity $80.00
(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 micro entity (§ 1.29(a)) $195.00
By a small entity (§ 1.27(a)) $390.00
By other than a small or micro entity $780.00
(k) Search fee for each application filed under 35 U.S.C. 111 for
an original patent, except design, plant, or provisional applications:
By a micro entity (§ 1.29(a)) $150.00
By a small entity (§ 1.27(a)) $300.00
By other than a small or micro entity $600.00
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(l) Search fee for each application for an original design patent:
By a micro entity (§ 1.29(a)) $30.00
By a small entity (§ 1.27(a)) $60.00
By other than a small or micro entity $120.00
(m) Search fee for each application for an original plant patent:
By a micro entity (§ 1.29(a)) $95.00
By a small entity (§ 1.27(a)) $190.00
By other than a small or micro entity $380.00
(n) Search fee for each application for the reissue of a patent:
By a micro entity (§ 1.29(a)) $150.00
By a small entity (§ 1.27(a)) $300.00
By other than a small or micro entity $600.00
(o) Examination fee for each application filed under 35 U.S.C. 111
for an original patent, except design, plant, or provisional
applications:
By a micro entity (§ 1.29(a)) $180.00
By a small entity (§ 1.27(a)) $360.00
By other than a small or micro entity $720.00
(p) Examination fee for each application for an original design
patent:
By a micro entity (§ 1.29(a)) $115.00
By a small entity (§ 1.27(a)) $230.00
By other than a small or micro entity $460.00
(q) Examination fee for each application for an original plant patent:
By a micro entity (§ 1.29(a)) $145.00
By a small entity (§ 1.27(a)) $290.00
By other than a small or micro entity $580.00
(r) Examination fee for each application for the reissue of a patent:
By a micro entity (§ 1.29(a)) $540.00
By a small entity (§ 1.27(a)) $1,080.00
By other than a small or micro entity $2,160.00
(s) Application size fee for any application filed under 35 U.S.C.
111 for the specification and drawings which exceed 100 sheets of
paper, for each additional 50 sheets or fraction thereof:
By a micro entity (§ 1.29(a)) $100.00
By a small entity (§ 1.27(a)) $200.00
By other than a small or micro entity $400.00
* * * * *
3. Section 1.17 is amended by revising paragraphs (a) through (i),
removing and reserving paragraph (j), and revising paragraphs (k)
through (m) and (p) through (t) 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 micro entity (§ 1.29(a)) $50.00
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By a small entity (§ 1.27(a)) $100.00
By other than a small or micro entity $200.00
(2) For reply within second month:
By a micro entity (§ 1.29(a)) $150.00
By a small entity (§ 1.27(a)) $300.00
By other than a small or micro entity $600.00
(3) For reply within third month:
By a micro entity (§ 1.29(a)) $350.00
By a small entity (§ 1.27(a)) $700.00
By other than a small or micro entity $1,400.00
(4) For reply within fourth month:
By a micro entity (§ 1.29(a)) $550.00
By a small entity (§ 1.27(a)) $1,100.00
By other than a small or micro entity $2,200.00
(5) For reply within fifth month:
By a micro entity (§ 1.29(a)) $750.00
By a small entity (§ 1.27(a)) $1,500.00
By other than a small or micro entity $3,000.00
(b) For fees in proceedings before the Board of Patent Appeals and
Interferences, see § 41.20 of this title.
(c) For filing a request for prioritized examination under § 1.102(e):
By a micro entity (§ 1.29(a)) $1,000.00
By a small entity (§ 1.27(a)) $2,000.00
By other than a small or micro entity $4,000.00
(d) For correction of inventorship in an application after the
first Office action on the merits:
By a micro entity (§ 1.29(a)) $250.00
By a small entity (§ 1.27(a)) $500.00
By other than a small or micro entity $1,000.00
(e) To request continued examination pursuant to § 1.114:
(1) For filing a first request for continued examination pursuant
to § 1.114 in an application:
By a micro entity $300.00
By a small entity (§ 1.27(a)) $600.00
By other than a small or micro entity $1,200.00
(2) For filing a second or subsequent request for continued
examination pursuant to § 1.114 in an application:
By a micro entity $425.00
By a small entity (§ 1.27(a)) $850.00
By other than a small or micro entity $1,700.00
(f) For filing a petition under one of the following sections which
refers to this paragraph:
By a micro entity (§ 1.29(a)) $100.00
By a small entity (§ 1.27(a)) $200.00
By other than a small or micro entity $400.00
§ 1.36(a) - for revocation of a power of attorney by fewer than
all of the applicants.
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§ 1.53(e) - to accord a filing date.
§ 1.57(a) - to accord a filing date.
§ 1.182 - for decision on a question not specifically provided for.
§ 1.183 - to suspend the rules.
§ 1.378(e) - for reconsideration of decision on petition
refusing to accept delayed payment of maintenance fee in an expired
patent.
§ 1.741(b) - to accord a filing date to an application under
§ 1.740 for extension of a patent term.
(g) For filing a petition under one of the following sections which
refers to this paragraph:
By a micro entity (§ 1.29(a)) $50.00
By a small entity (§ 1.27(a)) $100.00
By other than a small or micro entity $200.00
§ 1.12 - for access to an assignment record.
§ 1.14 - for access to an application.
§ 1.47 - for filing by other than all the inventors or a person
not the inventor.
§ 1.59 - for expungement of information.
§ 1.103(a) - to suspend action in an application.
§ 1.136(b) - for review of a request for extension of time when
the provisions of § 1.136 (a) are not available.
§ 1.295 - for review of refusal to publish a statutory invention
registration.
§ 1.296 - to withdraw a request for publication of a statutory
invention registration filed on or after the date the notice of intent
to publish issued.
§ 1.377 - for review of decision refusing to accept and record
payment of a maintenance fee filed prior to expiration of a patent.
§ 1.550(c) - for patent owner requests for extension of time in
ex parte reexamination proceedings.
§ 1.956 - for patent owner requests for extension of time in
inters partes reexamination proceedings.
§ 5.12 - for expedited handling of a foreign filing license.
§ 5.15 - for changing the scope of a license.
§ 5.25 - for retroactive license.
(h) For filing a petition under one of the following sections which
refers to this paragraph:
By a micro entity (§ 1.29(a)) $35.00
By a small entity (§ 1.27(a)) $70.00
By other than a small or micro entity $140.00
§ 1.19(g) - to request documents in a form other than provided
in this part.
§ 1.84 - for accepting color drawings or photographs.
§ 1.91 - for entry of a model or exhibit.
§ 1.102(d) - to make an application special.
§ 1.138(c) - to expressly abandon an application to avoid
publication.
§ 1.313 - to withdraw an application from issue.
§ 1.314 - to defer issuance of a patent.
(i) Processing fee for taking action under one of the following
sections which refers to this paragraph:
By a micro entity (§ 1.29(a)) $35.00
By a small entity (§ 1.27(a)) $70.00
By other than a small or micro entity $140.00
§ 1.28(c)(3) - for processing a non-itemized fee deficiency
based on an error in small entity status.
§ 1.41 - for supplying the name or names of the inventor or
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inventors after the filing date without an oath or declaration as
prescribed by § 1.63, except in provisional applications.
§ 1.48 - for correcting inventorship, except in provisional
applications.
§ 1.52(d) - for processing a nonprovisional application filed
with a specification in a language other than English.
§ 1.53(b)(3) - to convert a provisional application filed under
§ 1.53(c) into a nonprovisional application under § 1.53(b).
§ 1.55 - for entry of late priority papers.
§ 1.71(g)(2) - for processing a belated amendment under § 1.71(g).
§ 1.99(e) - for processing a belated submission under § 1.99.
§ 1.102(e) - for requesting prioritized examination of an
application.
§ 1.103(b) - for requesting limited suspension of action,
continued prosecution application for a design patent (§ 1.53(d)).
§ 1.103(c) - for requesting limited suspension of action,
request for continued examination (§ 1.114).
§ 1.103(d) - for requesting deferred examination of an
application.
§ 1.217 - for processing a redacted copy of a paper submitted in
the file of an application in which a redacted copy was submitted for
the patent application publication.
§ 1.221 - for requesting voluntary publication or republication
of an application.
§ 1.291(c)(5) - for processing a second or subsequent protest by
the same real party in interest.
§ 1.497(d) - for filing an oath or declaration pursuant to 35
U.S.C. 371(c)(4) naming an inventive entity different from the
inventive entity set forth in the international stage.
§ 3.81 - for a patent to issue to assignee, assignment submitted
after payment of the issue fee.
(j) [Reserved]
(k) For filing a request for expedited examination under § 1.155(a):
By a micro entity (§ 1.29(a)) $225.00
By a small entity (§ 1.27(a)) $450.00
By other than a small or micro entity $900.00
(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 (§ 1.137(a)):
By a micro entity (§ 1.29(a)) $160.00
By a small entity (§ 1.27(a)) $320.00
By other than a small or micro entity $640.00
(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 micro entity (§ 1.29(a)) $475.00
By a small entity (§ 1.27(a)) $950.00
By other than a small or micro entity $1,900.00
* * * * *
(p) For an information disclosure statement under § 1.97(c) or
(d) or a submission under § 1.9:
By a micro entity (§ 1.29(a)) $45.00
By a small entity (§ 1.27(a)) $90.00
By other than a small or micro entity $180.00
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(q) Processing fee for taking action under one of the following
sections which refers to this paragraph: $50.00
§ 1.41 - to supply the name or names of the inventor or
inventors after the filing date without a cover sheet as prescribed by
§ 1.51(c)(1) in a provisional application § 1.48 - for
correction of inventorship in a provisional application.
§ 1.53(c)(2) - to convert a nonprovisional application filed
under § 1.53(b) to a provisional application under § 1.53(c)
(r) For entry of a submission after final rejection under § 1.129(a):
By a micro entity (§ 1.29(a)) $210.00
By a small entity (§ 1.27(a)) $420.00
By other than a small or micro entity $840.00
(s) For each additional invention requested to be examined under
§ 1.129(b):
By a micro entity (§ 1.29(a)) $210.00
By a small entity (§ 1.27(a)) $420.00
By other than a small or micro entity $840.00
(t) For the acceptance of an unintentionally delayed claim for
priority under 35 U.S.C. 119, 120, 121, or 365(a) or (c) (Sec. § 1.55
and 1.78) or for filing a request for the restoration of the right
of priority under:
By a micro entity (§ 1.29(a)) $355.00
By a small entity (§ 1.27(a)) $710.00
By other than a small or micro entity $1,420.00
4. Section 1.18 is revised 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 micro entity (§ 1.29(a)) $240.00
By a small entity (§ 1.27(a)) $480.00
By other than a small or micro entity $960.00
(b) Issue fee for issuing an original design patent:
By a micro entity (§ 1.29(a)) $140.00
By a small entity (§ 1.27(a)) $280.00
By other than a small or micro entity $560.00
(c) Issue fee for issuing an original plant patent:
By a micro entity (§ 1.29(a)) $190.00
By a small entity (§ 1.27(a)) $380.00
By other than a small or micro entity $760.00
(d)
Publication fee $0.00
Republication fee (§ 1.221(a)) $300.00
(e) For filing an application for patent term adjustment under
§ 1.705: $200.00
(f) For filing a request for reinstatement of all or part of the
term reduced pursuant to § 1.704(b) in an application for patent
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term adjustment under § 1.705: $400.00
5. Section 1.19 is revised to read as follows:
§ 1.19 Document Supply Fees.
The United States Patent and Trademark Office will supply copies of
the following patent-related documents upon payment of the fees
indicated. Paper copies will be in black and white unless the original
document is in color, a color copy is requested and the fee for a color
copy is paid.
(a) Uncertified copies of patent application publications and
patents:
(1) Printed copy of the paper portion of a patent application
publication or patent including a design patent, statutory invention
registration, or defensive publication document. Service includes
preparation of copies by the Office within two to three business days
and delivery by United States Postal Service; and preparation of copies
by the Office within one business day of receipt and delivery to an
Office Box or by electronic means (e.g., facsimile, electronic mail):
$3.00
(2) Printed copy of a plant patent in color: $15.00
(3) Color copy of a patent (other than a plant patent) or statutory
invention registration containing a color drawing: $25.00
(b) Copies of Office documents to be provided in paper, or in
electronic form, as determined by the Director (for other patent-
related materials see § 1.21(k)):
(1) Copy of a patent application as filed, or a patent-related file
wrapper and contents, stored in paper in a paper file wrapper, in an
image format in an image file wrapper, or if color documents, stored in
paper in an Artifact Folder:
(i) If provided on paper:
(A) Application as filed: $20.00
(B) File wrapper and contents of 400 or fewer pages: $200.00
(C) Additional fee for each additional 100 pages or portion thereof
of file wrapper and contents: $40.00
(D) Individual application documents, other than application as
filed, per document: $25.00
(ii) If provided on compact disc or other physical electronic
medium in single order:
(A) Application as filed: $20.00
(B) File wrapper and contents, first physical electronic
medium: $55.00
(C) Additional fee for each continuing physical electronic medium
in the single order of paragraph (b)(1)(ii)(B) of this section: $15.00
(iii) If provided electronically (e.g., by electronic transmission)
other than on a physical electronic medium as specified in paragraph
(b)(1)(ii) of this section:
(A) Application as filed: $20.00
(B) File wrapper and contents: $55.00
(iv) If provided to a foreign intellectual property office pursuant to
a priority document exchange agreement (see § 1.14 (h)(1)): $0.00
(2) Copy of patent-related file wrapper contents that were
submitted and are stored on compact disc or other electronic form
(e.g., compact discs stored in an Artifact Folder), other than as
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available in paragraph (b)(1) of this section:
(i) If provided on compact disc or other physical electronic medium
in a single order:
(A) First physical electronic medium in a single order: $55.00
(B) Additional fee for each continuing physical electronic medium
in the single order of paragraph (b)(2)(i) of this section: $15.00
(ii) If provided electronically other than on a physical electronic
medium per order: $55.00
(3) Copy of Office records, except copies available under paragraph
(b)(1) or (2) of this section: $25.00
(4) For assignment records, abstract of title and certification,
per patent: $25.00
(c) Library service (35 U.S.C. 13): For providing to libraries
copies of all patents issued annually, per annum: $50.00
(d) For list of all United States patents and statutory invention
registrations in a subclass: $3.00
(e) Uncertified statement as to status of the payment of
maintenance fees due on a patent or expiration of a patent: $10.00
(f) Uncertified copy of a non-United States patent document, per
document: $25.00
(g) Petitions for documents in a form other than that provided by
this part, or in a form other than that generally provided by the
Director, will be decided in accordance with the merits of each
situation. Any petition seeking a decision under this section must be
accompanied by the petition fee set forth in § 1.17 (h) and, if the
petition is granted, the documents will be provided at cost.
6. Section 1.20 is revised to read as follows:
§ 1.20 Post issuance fees.
(a) For providing a certificate of correction for applicant's
mistake (§ 1.323): $100.00
(b) Processing fee for correcting inventorship in a patent
(§ 1.324): $130.00
(c) In reexamination proceedings:
(1) For filing a request for ex parte reexamination (§ 1.510(a)):
By a micro entity (§ 1.29(a)) $3,750.00
By a small entity (§ 1.27(a)) $7,500.00
By other than a small or micro entity $15,000.00
(2) [Reserved]
(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 micro entity (§ 1.29(a)) $105.00
By a small entity (§ 1.27(a)) $210.00
By other than a small or micro entity $420.00
(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
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how multiple dependent claims are considered for fee calculation
purposes):
By a micro entity (§ 1.29(a)) $20.00
By a small entity (§ 1.27(a)) $40.00
By other than a small or micro entity $80.00
(5) If the excess claims fees required by paragraphs (c)(3) and (4)
of this section 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 (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.
(6) For filing a petition in a reexamination proceeding, except for
those specifically enumerated in Sec. § 1.550(i) and 1.937(d):
By a micro entity (§ 1.29(a)) $485.00
By a small entity (§ 1.27(a)) $970.00
By other than a small or micro entity $1,940.00
(7) For a refused request for ex parte reexamination under § 1.510
(included in the request for ex parte reexamination fee):
By a micro entity (§ 1.29(a)) $900.00
By a small entity (§ 1.27(a)) $1,800.00
By other than a small or micro entity $3,600.00
(d) For filing each statutory disclaimer (§ 1.321):
By other than a small or micro entity $160.00
(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 micro entity (§ 1.29(a)) $400.00
By a small entity (§ 1.27(a)) $800.00
By other than a small or micro entity $1,600.00
(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 micro entity (§ 1.29(a)) $900.00
By a small entity (§ 1.27(a)) $1,800.00
By other than a small or micro entity $3,600.00
(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 micro entity (§ 1.29(a)) $1 ,850.00
By a small entity (§ 1.27(a)) $3,700.00
By other than a small or micro entity $7,400.00
(h) Surcharge for paying a maintenance fee during the six-month
grace period following the expiration of three years and six months,
seven years and six months, and eleven years and six months after the
date of the original grant of a patent based on an application filed on
or after December 12, 1980:
By a micro entity (§ 1.29(a)) $40.00
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By a small entity (§ 1.27(a)) $80.00
By other than a small or micro entity $160.00
(i) Surcharge for accepting a maintenance fee after expiration of a
patent for non-timely payment of a maintenance fee where the delay in
payment is shown to the satisfaction of the Director to have been -
(1) Unavoidable:
By a micro entity (§ 1.29(a)) $175.00
By a small entity (§ 1.27(a)) $350.00
By other than a small or micro entity $700.00
(2) Unintentional:
By a micro entity (§ 1.29(a)) $410.00
By a small entity (§ 1.27(a)) $820.00
By other than a small or micro entity $1,640.00
(j) For filing an application for extension of the term of a patent
(1) Application for extension under § 1.740: $1,120.00
(2) Initial application for interim extension under
§ 1.790: $420.00
(3) Subsequent application for interim extension under
§ 1.790: $220.00
(k) In supplemental examination proceedings:
(1) For processing and treating a request for supplemental
examination:
By a micro entity (§ 1.29(a)) $1,100.00
By a small entity (§ 1.27(a)) $2,200.00
By other than a small or micro entity $4,400.00
(2) For ex parte reexamination ordered as a result of a
supplemental examination proceeding:
By a micro entity (§ 1.29(a)) $3,400.00
By a small entity (§ 1.27(a)) $6,800.00
By other than a small or micro entity $13,600.00
(3) For processing and treating, in a supplemental examination
proceeding, a non-patent document over 20 sheets in length, per
document:
(i) Between 21 and 50 sheets:
By a micro entity (§ 1.29(a)) $45.00
By a small entity (§ 1.27(a)) $90.00
By other than a small or micro entity $180.00
(ii) For each additional 50 sheets or a fraction thereof:
By a micro entity (§ 1.29(a)) $70.00
By a small entity (§ 1.27(a)) $140.00
By other than a small or micro entity $280.00
7. Section 1.21 is amended by:
a. Revising paragraph (a);
b. Removing and reserving paragraph (d);
c. Revising paragraph (e);
d. Revising paragraphs (g) through (k);
e. Revising paragraph (n); and
f. Removing paragraph (o).
The revisions read as follows:
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§ 1.21 Miscellaneous fees and charges.
* * * * *
(a) Registration of attorneys and agents:
(l) For admission to examination for registration to practice:
(i) Application Fee (non-refundable): $40.00
(ii) Registration Examination Fee.
(A) For test administration by commercial entity: $200.00
(B) For test administration by the USPTO: $450.00
(2) On registration to practice or grant of limited recognition
under § 11.9(b) or (c): $100.00
(3) [Reserved]
(4) For certificate of good standing as an attorney or
agent: $10.00
(i) Suitable for framing: $20.00
(ii) [Reserved]
(5) For review of decision:
(i) By the Director of Enrollment and Discipline under
§ 11.2(c): $130.00
(ii) Of the Director of Enrollment and Discipline under
§ 11.2(d): $130.00
(6) [Reserved]
(7) Annual practitioner maintenance fee for registered attorney or
agent.
(i) Active Status: $120.00
(ii) Voluntary Inactive Status: $25.00
(iii) Fee for requesting restoration to active status from
voluntary inactive status: $50.00
(iv) Balance due upon restoration to active status from voluntary
inactive status: $100.00
(8) Annual practitioner maintenance fee for individual granted
limited recognition: $120.00
(9)(i) Delinquency fee: $50.00
(ii) Administrative reinstatement fee: $100.00
(10) On application by a person for recognition or registration
after disbarment or suspension on ethical grounds, or resignation
pending disciplinary proceedings in any other jurisdiction; on
application by a person for recognition or registration who is
asserting rehabilitation from prior conduct that resulted in an adverse
decision in the Office regarding the person's moral character; and on
application by a person for recognition or registration after being
convicted of a felony or crime involving moral turpitude or breach of
fiduciary duty; on petition for reinstatement by a person excluded or
suspended on ethical grounds, or excluded on consent from practice before
the Office: $1,600.00
* * * * *
(e) International type search reports: For preparing an
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international type search report of an international type search made
at the time of the first action on the merits in a national patent
application: $40.00
(g) Self-service copy charge, per page: $0.25
(h) For recording each assignment, agreement, or other paper
relating to the property in a patent or application, per property:
(1) If submitted electronically: $0.00
(2) If not submitted electronically: $40.00
(i) Publication in Official Gazette: For publication in the
Official Gazette of a notice of the availability of an application or a
patent for licensing or sale: Each application or patent: $25.00
(j) Labor charges for services, per hour or fraction
thereof: $40.00
(k) For items and services that the Director finds may be supplied,
for which fees are not specified by statute or by this part, such
charges as may be determined by the Director with respect to each such
item or service: Actual cost
* * * * *
(n) For handling an application in which proceedings are terminated
pursuant to § 1.53(e); $130.00
8. Section 1.445 is amended by revising paragraph (a) introductory
text and paragraphs (a)(1)(i), (a)(2) through (4), and (b) to read as
follows:
§ 1.445 International application filing, processing and search fees.
(a) The following fees and charges for international applications
are established by law or by the Director under the authority of 35
U.S.C. 376:
(1) A transmittal fee (see 35 U.S.C. 361(d) and PCT Rule 14)
consisting of:
(i) A basic portion:
By a micro entity (§ 1.29(a)) $60.00
By a small entity (§ 1.27(a)) $120.00
By other than a small or micro entity $240.00
* * * * *
(2) A search fee (see 35 U.S.C. 361(d) and PCT Rule 16):
By a micro entity (§ 1.29(a)) $520.00
By a small entity (§ 1.27(a)) $1,040.00
By other than a small or micro entity $2,080.00
(3) A supplemental search fee when required, per additional
invention:
By a micro entity (§ 1.29(a)) $520.00
By a small entity (§ 1.27(a)) $1,040.00
By other than a small or micro entity $2,080.00
(4) A fee equivalent to the transmittal fee in paragraph (a)(1) of
this section for transmittal of an international application to the
International Bureau for processing in its capacity as a Receiving
Office (PCT Rule 19.4):
By a micro entity (§ 1.29(a)) $60.00
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By a small entity (§ 1.27(a)) $120.00
By other than a small or micro entity $240.00
(b) The international filing fee shall be as prescribed in PCT Rule
15.
9. Section 1.482 is revised to read as follows:
§ 1.482 International preliminary examination fees.
(a) The following fees and charges for international preliminary
examination are established by the Director under the authority of 35
U.S.C. 376:
(1) The following preliminary examination fee is due on filing the
Demand:
(i) If an international search fee as set forth in § 1.445(a)(2)
has been paid on the international application to the United States Patent
and Trademark Office as an International Searching Authority:
By a micro entity (§ 1.29(a)) $150.00
By a small entity (§ 1.27(a)) $300.00
By other than a small or micro entity $600.00
(ii) If the International Searching Authority for the international
application was an authority other than the United States Patent and
Trademark:
By a micro entity (§ 1.29(a)) $190.00
By a small entity (§ 1.27(a)) $380.00
By other than a small or micro entity $760.00
(2) An additional preliminary examination fee when required, per
additional invention:
By a micro entity (§ 1.29(a)) $150.00
By a small entity (§ 1.27(a)) $300.00
By other than a small or micro entity $600.00
(b) The handling fee is due on filing the Demand and shall be
prescribed in PCT Rule 57.
10. Section 1.492 is revised to read as follows:
§ 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:
By a micro entity (§ 1.29(a)) $70.00
By a small entity (§ 1.27(a)) $140.00
By other than a small or micro entity $280.00
(b) Search fee for an international application entering the
national stage under 35 U.S.C. 371:
(1) If an international preliminary examination report on the
international application prepared by the United States International
Preliminary Examining Authority or a written opinion on the
international application prepared by the United States International
Searching Authority states that the criteria of novelty, inventive step
(non-obviousness), and industrial applicability, as defined in PCT
Article 33(1) to (4) have been satisfied for all of the claims
presented in the application entering the national stage:
By a micro entity (§ 1.29(a)) $0.00
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By a small entity (§ 1.27(a)) $0.00
By other than a small or micro entity $0.00
(2) If the search fee as set forth in § 1.445(a)(2) has been
paid on the international application to the United States Patent and
Trademark Office as an International Searching Authority:
By a micro entity (§ 1.29(a)) $30.00
By a small entity (§ 1.27(a)) $60.00
By other than a small or micro entity $120.00
(3) If an international search report on the international
application has been prepared by an International Searching Authority
other than the United States International Searching Authority and is
provided, or has been previously communicated by the International
Bureau, to the Office:
By a micro entity (§ 1.29(a)) $120.00
By a small entity (§ 1.27(a)) $240.00
By other than a small or micro entity $480.00
(4) In all situations not provided for in paragraphs (b)(1), (2),
or (3) of this section:
By a micro entity (§ 1.29(a)) $150.00
By a small entity (§ 1.27(a)) $300.00
By other than a small or micro entity $600.00
(c) The examination fee for an international application entering
the national stage under 35 U.S.C. 371:
(1) If an international preliminary examination report on the
international application prepared by the United States International
Preliminary Examining Authority or a written opinion on the
international application prepared by the United States International
Searching Authority states that the criteria of novelty, inventive step
(non-obviousness), and industrial applicability, as defined in PCT
Article 33(1) to (4) have been satisfied for all of the claims
presented in the application entering the national stage:
By a micro entity (§ 1.29(a)) $0.00
By a small entity (§ 1.27(a)) $0.00
By other than a small or micro entity $0.00
(2) In all situations not provided for in paragraph (c)(1) of this
section:
By a micro entity (§ 1.29(a)) $180.00
By a small entity (§ 1.27(a)) $360.00
By other than a small or micro entity $720.00
(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 micro entity (§ 1.29(a)) $105.00
By a small entity (§ 1.27(a)) $210.00
By other than a small or micro entity $420.00
(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 micro entity (§ 1.29(a)) $20.00
By a small entity (§ 1.27(a)) $40.00
By other than a small or micro entity $80.00
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(f) In addition to the basic national fee, if the application
contains, or is amended to contain, a multiple dependent claim, per
application:
By a micro entity (§ 1.29(a)) $195.00
By a small entity (§ 1.27(a)) $390.00
By other than a small or micro entity $780.00
(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 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 any of the search fee, the examination
fee, or the oath or declaration after the date of the commencement of
the national stage (§ 1.491(a)) pursuant to § 1.495(c):
By a micro entity (§ 1.29(a)) $35.00
By a small entity (§ 1.27(a)) $70.00
By other than a small or micro entity $140.00
(i) For filing an English translation of an international
application or any annexes to an international preliminary examination
report later than thirty months after the priority date (§ 1.495(c)
and (e)):
By a micro entity (§ 1.29(a)) $35.00
By a small entity (§ 1.27(a)) $70.00
By other than a small or micro entity $140.00
(j) Application size fee for any international application, the
specification and drawings of which exceed 100 sheets of paper, for
each additional 50 sheets or fraction thereof:
By a micro entity (§ 1.29(a)) $100.00
By a small entity (§ 1.27(a)) $200.00
By other than a small or micro entity $400.00
PART 41 - PRACTICE BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES
11. The authority citation for 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.
12. Section 41.20 is revised to read as follows:
§ 41.20 Fees.
(a) Petition fee. The fee for filing a petition under this
part is: $400.00
(b) Appeal fees. (1) For filing a notice of appeal from the
examiner to the Patent Trial and Appeal Board:
By a micro entity (§ 1.29(a)) $250.00
By a small entity (§ 1.27(a)) $500.00
By other than a small or micro entity $1,000.00
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(2)(i) For filing a brief in support of an appeal in an application
or ex parte reexamination proceeding: $0.00
(ii) In addition to the fee for filing a notice of appeal, for
filing a brief in support of an appeal in an inter partes reexamination
proceeding:
By a micro entity (§ 1.29(a)) $500.00
By a small entity (§ 1.27(a)) $1,000.00
By other than a small or micro entity $2,000.00
(3) For filing a request for an oral hearing before the Board in an
appeal under 35 U.S.C. 134:
By a micro entity (§ 1.29(a)) $325.00
By a small entity (§ 1.27(a)) $650.00
By other than a small or micro entity $1,300.00
(4) In addition to the fee for filing a notice of appeal, for
forwarding an appeal in an application or ex parte reexamination
proceeding to the Board:
By a micro entity (§ 1.29(a)) $500.00
By a small entity (§ 1.27(a)) $1,000.00
By other than a small or micro entity $2,000.00
13. Section 41.37 is amended by revising paragraphs (a) and (b) to
read as follows:
§ 41.37 Appeal brief.
(a) Timing. Appellant must file a brief under this section within
two months from the date of filing the notice of appeal under § 41.31.
The appeal brief fee in an application or ex parte reexamination
proceeding is $0.00, but if the appeal results in an examiner's answer,
the appeal forwarding fee set forth in § 41.20(b)(4) must be paid
within the time period specified in § 41.48 to avoid dismissal of
an appeal.
(b) Failure to file a brief. On failure to file the brief within
the period specified in paragraph (a) of this section, the appeal will
stand dismissed.
* * * * *
14. Section 41.45 is added to read as follows:
§ 41.45 Appeal forwarding fee.
(a) Timing. Appellant in an application or ex parte reexamination
proceeding must pay the fee set forth in § 41.20(b)(4) within the
later of two months from the date of either the examiner's answer, or a
decision refusing to grant a petition under § 1.181 of this chapter
to designate a new ground of rejection in an examiner's answer.
(b) Failure to pay appeal forwarding fee. On failure to fee set
forth in § 41.20(b)(4) within the period specified in paragraph (a)
of this section, the appeal will stand dismissed.
(c) Extensions of time. Extensions of time under § 1.136(a) of
this title for patent applications are not applicable to the time
period set forth in this section. See § 1.136(b) of this title for
extensions of time to reply for patent applications and § 1.550(c)
of this title for extensions of time to reply for ex parte
reexamination proceedings.
PART 42 - TRIAL PRACTICE BEFORE THE PATENT TRIAL AND APPEAL BOARD
15. The authority citation for part 42 continues to read as
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follows:
Authority: 35 U.S.C. 2(b)(2), 6, 21, 23, 41,135, 311, 312, 316,
321-326 and Leahy-Smith America Invents Act, Pub. L. 112-29,
sections 6(c), 6(f) and 18, 125 Stat. 284, 304, 311, and 329 (2011).
16. Section 42.15, as added at August 14, 2012, at 77 FR 48669,
effective September 16, 2012, is revised to read as follows:
§ 42.15 Fees
(a) On filing a petition for inter partes review of a patent,
payment of the following fees are due:
(1) Inter Partes Review request fee: $9,000.00
(2) Inter Partes Review Post-Institution fee: $14,000.00
(3) In addition to the Inter Partes Review request fee, for
requesting review of each claim in excess of 20: $200.00
(4) In addition to the Inter Partes Post-Institution request fee,
for requesting review of each claim in excess of 15: $400.00
(b) On filing a petition for post-grant review or covered business
method patent review of a patent, payment of the following fees are
due:
(1) Post Grant or Covered Business Method Patent Review request
fee: $12,000.00
(2) Post Grant or Covered Business Method Patent Review Post-
Institution fee: $18,000.00
(3) In addition to the Post Grant or Covered Business Method Patent
Review request fee, for requesting review of each claim in excess of
20: $250.00
(4) In addition to the Post Grant or Covered Business Method Patent
Review request fee Post-Institution request fee, for requesting review
of each claim in excess of 15: $550.00
(c) On the filing of a petition for a derivation proceeding,
payment of the following fees is due:
(1) Derivation petition fee: $400.00
(2) Derivation institution and trial fee: $0.00
(d) Any request requiring payment of a fee under this part,
including a written request to make a settlement agreement
available:
August 29, 2012 DEBORAH S. COHN
Commissioner for Trademarks
United States Patent and Trademark Office
[1383 OG 65]