| Fees and Payment of Money |
Referenced Items (139, 140, 141, 142, 143, 144, 145, 146, 147, 148, 149, 150, 151, 152, 153, 154, 155, 156, 157, 158, 159, 160, 161, 162, 163, 164, 165, 166, 167, 168, 169, 170, 171, 172, 173) |
(147) DEPARTMENT OF COMMERCE
Patent and Trademark Office
37 CFR Parts 1 and 41
[PTO-C-2011-0007]
RIN 0651-AC55
CPI Adjustment of Patent Fees for Fiscal Year 2013
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Final rule.
SUMMARY: The United States Patent and Trademark Office (Office or
USPTO) is adjusting certain patent fee amounts for fiscal year 2013 to
reflect fluctuations in the Consumer Price Index (CPI). The patent
statute provides for the annual CPI adjustment of patent fees set by
statute to recover the higher costs associated with doing business as
reflected by the CPI.
DATES: This final rule is effective on October 5, 2012.
FOR FURTHER INFORMATION CONTACT: Gilda Lee by email at Gilda.Lee@uspto.gov,
by telephone at (571) 272-8698, or by fax at (571) 273-8698.
SUPPLEMENTARY INFORMATION:
Executive Summary
Purpose: Section 41(f) of Title 35 of the United States Code provides
the USPTO with the authority to adjust certain statutory patent fees to
reflect fluctuations during the preceding twelve months in the Consumer
Price Index (CPI). The purpose of this provision is to allow the USPTO to
recover higher costs of providing services as reflected by the CPI. This
final rule sets forth which fees will be adjusted and how the adjustment
is calculated based on the current fluctuation in the CPI over the twelve
months preceding this notice.
Summary of Major Provisions: The USPTO is adjusting certain patent
fees in accordance with 35 U.S.C. 41(f), as amended by the Consolidated
Appropriations Act (Pub. L. 108-447, 118 Stat. 2809 (2004)) and the
Leahy-Smith America Invents Act (Pub. L. 112-29). The fee increase helps
the USPTO to meet its strategic goals and maintain effective and efficient
operation of the patent system.
Costs and Benefits: This rulemaking is not economically significant
as that term is defined in Executive Order 12866 (Sept. 30, 1993).
Background
Statutory Provisions: Patent fees are set by or under the authority
provided in 35 U.S.C. 41, 119, 120, 132(b), 156, 157(a), 255, 302, 311,
376, section 532(a)(2) of the Uruguay Round Agreements Act (URAA) (Pub.
L. 103-465, Sec. 532(a)(2), 108 Stat. 4809, 4985 (1994)), and section
4506 of the American Inventors Protection Act of 1999 (AIPA) (Pub. L.
106-113, 113 Stat. 1501, 1501A-565 (1999)). For fees paid under 35 U.S.C.
41(a) and (b) and 132(b), independent inventors, small business concerns,
and nonprofit organizations who meet the requirements of 35 U.S.C. 41(h)(1)
are entitled to a fifty-percent reduction.
The USPTO published a notice proposing to adjust the patent fees
charged under 35 U.S.C. 41(a) and (b) for fiscal year 2013 to reflect
fluctuations in the CPI on May 14, 2012.
The fiscal year 2005 Consolidated Appropriations Act (section 801
of Division B) provided that 35 U.S.C. 41(a), (b), and (d) shall be
administered in a manner that revises patent application fees (35 U.S.C.
41(a)) and patent maintenance fees (35 U.S.C. 41(b)), and provides for a
separate filing fee (35 U.S.C. 41(a)), search fee (35 U.S.C. 41(d)(1)),
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and examination fee (35 U.S.C. 41(a)(3)) during fiscal years 2005 and 2006.
See Public Law 108-447, 118 Stat. 2809, 2924-30 (2004). The Omnibus
Appropriations Act, 2009, extended the patent and trademark fee provisions
of the fiscal year 2005 Consolidated Appropriations Act through September
30, 2011. See Public Law 112-4, 125 Stat. 6 (2011); Public Law 111-322, 124
Stat. 3518 (2010); Public Law 111-317, 124 Stat. 3454 (2010); Public Law
111-290, 124 Stat. 3063 (2010); Public Law 111-242, 124 Stat. 2607 (2010);
Public Law 111-224, 124 Stat. 2385 (2010); Public Law 111-117, 123 Stat.
3034 (2009); Public Law 111-8, 123 Stat. 524 (2009); Public Law 111-6, 123
Stat. 522 (2009); Public Law 111-5, 123 Stat. 115 (2009); Public Law
110-329, 122 Stat. 3574 (2008); Public Law 110-161, 121 Stat. 1844 (2007);
Public Law 110-149, 121 Stat. 1819 (2007); Public Law 110-137, 121 Stat.
1454 (2007); Public Law 110-116, 121 Stat. 1295 (2007); Public Law 110-92,
121 Stat. 989 (2007); Public Law 110-5, 121 Stat. 8 (2007); Public Law
109-383, 120 Stat. 2678 (2006); Public Law 109-369, 120 Stat. 2642 (2006);
and Public Law 109-289, 120 Stat. 1257 (2006). The Leahy-Smith America
Invents Act, enacted September 16, 2011, codified the patent and trademark
fee provisions of the fiscal year 2005 Consolidated Appropriations Act.
Section 11 of the Leahy-Smith America Invents Act provides for a
surcharge of fifteen percent, rounded by standard arithmetic rules, on all
fees charged or authorized by 35 U.S.C. 41(a), (b), and (d)(1), as well as
by 35 U.S.C. 132(b). Section 11 of the Act provides that this fifteen
percent surcharge is effective ten days after the date of enactment (i.e.,
September 26, 2011). Section 11 also provides that this fifteen percent
surcharge shall terminate, with respect to a fee to which the surcharge
applies, on the effective date of the setting or adjustment of that fee
pursuant to the exercise of the authority under section 10 of the Act for
the first time with respect to that fee. Section 10 fee-setting will be
implemented in a future separate rulemaking.
As for this rulemaking, Section 41(f) of Title 35, United States Code,
provides that fees established under 35 U.S.C. 41(a) and (b) may be adjusted
on October 1, 1992, and every year thereafter, to reflect fluctuations in
the Consumer Price Index over the previous twelve months. If the annual
change in CPI is one percent or less, no fee adjustment for CPI fluctuations
will be pursued.
This CPI increase will be implemented on October 1, 2012. This interim
increase in fees is necessary to allow the USPTO to meet its strategic goals
within the time frame outlined in the FY 2013 President's Budget. The
interim fee increase is a bridge to provide resources until the USPTO
exercises its fee-setting authority and develops a new fee structure that
will provide sufficient financial resources in the long term. An adequately
funded USPTO will optimize the administration of the U.S. intellectual
property system, and thereby move innovation to the marketplace more quickly,
creating and sustaining U.S. jobs and enhancing the health and living
standards of Americans.
Fee Adjustment Level: The patent statutory fees established by 35 U.S.C.
41(a) and (b) are adjusted to reflect the most recent fluctuations occurring
during the twelve-month period prior to publication of the final rule
implementing this CPI adjustment, as measured by the Consumer Price Index
for All Urban Consumers (CPI-U). The Office of Management and Budget (OMB)
has advised that in calculating these fluctuations, the USPTO should use
CPI-U data as determined by the Secretary of Labor, which is found at
"http://www.bls.gov/cpi/". In accordance with the above description of the
statutory fee adjustment, the USPTO is adjusting patent statutory fee amounts
based on the Administration's CPI-U for the twelve-month period ending
June 30, 2012.
The fees other than small entity patent statutory fees have been
adjusted based on the June 2011 to June 2012 annual CPI-U increase of 1.7%.
These fee amounts were then rounded by applying standard arithmetic rules so
that the resulting amounts will be consistent to the user. Fees for other
than a small entity of $100 or more were rounded to the nearest $10. Fees of
less than $100 were rounded to the nearest even number so that any comparable
small entity fee will be a whole number. The small entity fee amounts are 50%
of the other than small entity fee amounts.
General Procedures: Any fee amount adjusted by the final rule that is
paid on or after the effective date of the fee adjustment enacted by the
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final rule is subject to the new fees in effect. The amount of the fee to be
paid for a given item will be determined by the time of filing of that item
with the Office. The time of filing will be determined either according to
the date of receipt in the Office (37 CFR 1.6) or the date reflected on a
proper Certificate of Mailing or Transmission, where such a certificate is
authorized under 37 CFR 1.8. Use of a Certificate of Mailing or Transmission
is not authorized for items that are specifically excluded from the
provisions of 37 CFR 1.8. Items for which a Certificate of Mailing or
Transmission under 37 CFR 1.8 is not authorized include, for example, filing
of national and international applications for patents. See 37 CFR 1.8(a)(2).
Patent-related correspondence delivered by the "Express Mail Post Office
to Addressee" service of the United States Postal Service (USPS) is
considered filed or received in the USPTO on the date of deposit with the
USPS. See 37 CFR 1.10(a)(1). The date of deposit with the USPS is shown by
the "date-in" on the "Express Mail" mailing label or other official USPS
notation.
To ensure clarity in the implementation of the new fees, a discussion of
specific sections is set forth below.
Discussion of Specific Rules
37 CFR 1.16 National application filing, and examination fees:
Section 1.16, paragraphs (a) through (e), (h) through (j) and (o)
through (s), is revised to adjust fees established therein to reflect
fluctuations in the CPI-U. See Table 1.
37 CFR 1.17 Patent application and reexamination processing fees:
Section 1.17, paragraphs (a)(1) through (a)(5), (l), and (m), is revised
to adjust fees established therein to reflect fluctuations in the CPI-U.
See Table 1.
37 CFR 1.18 Patent post allowance (including issue) fees: Section
1.18, paragraphs (a) through (c), is revised to adjust fees established
therein to reflect fluctuations in the CPI-U. See Table 1.
37 CFR 1.20 Post issuance fees: Section 1.20, paragraphs (c)(3)-(c)(4),
and (d) through (g), is revised to adjust fees established therein to reflect
fluctuations in the CPI-U. See Table 1.
37 CFR 1.492 National stage fees: Section 1.492, paragraphs (a), (c)(2),
(d) through (f) and (j), is revised to adjust fees established therein to
reflect fluctuations in the CPI-U. See Table 1.
37 CFR 41.20 Fees: Section 41.20, paragraphs (b)(1) through (b)(3),
is revised to adjust fees established therein to reflect fluctuations
in the CPI-U. See Table 1.
Fee Amount Adjustments: Table 1 shows the adjusted patent statutory fee
amounts and fee adjustments based on the June 2011 to June 2012 annual CPI-U
increase of 1.7%. The other than small entity fee amounts have been adjusted
by 1.7%. These fee amounts were then rounded by applying standard arithmetic
rules. Fees for other than a small entity of $100 or more were rounded to the
nearest $10. Fees of less than $100 were rounded to the nearest even number.
The small entity fee amounts are 50% of the large entity fee amounts.
Table 1 - Fee Adjustment Calculations Based on
CPI-U Adjustment of 1.7%
Current fee New fee Fee
37 CFR Fee title amount amount adjustment
1.16(a)(1) Filing of Utility $380 $390 $10
Patent Application Small Entity SE $195 SE $5
(on or after (SE) $190
12/8/2004).
1.16(a)(1) Filing of Utility $95 $98 $3
Patent Application
(electronic filing
for small entities)
(on or after
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12/8/2004).
1.16(b)(1) Filing of Design $250 $250 $0
Patent Application SE $125 SE $125 SE $0
(on or after
12/8/2004).
1.16(b)(1) Filing of Design $250 $250 $0
Patent Application SE $125 SE $125 SE $0
(Continued
Prosecution
Application)
(on or after
12/8/2004).
1.16(c)(1) Filing of Plant $250 $250 $0
Patent Application SE $125 SE $125 S E $0
(on or after
12/8/2004).
1.16(d) Provisional $250 $250 $0
Application SE $125 SE $125 SE $0
Filing.
1.16(e)(1) Filing of Reissue $380 $390 $10
Patent Application SE $190 SE $195 SE $5
(on or after
12/8/2004).
1.16(e)(1) Filing of Reissue $380 $390 $10
Patent Application SE $190 SE $195 SE $5
(CPA) (on or after
12/8/2004).
1.16(h) Independent Claims $250 $250 $0
in Excess of SE $125 SE $125 SE $0
Three.
1.16(h) Reissue $250 $25 $0
Independent Claims SE $125 SE $125 SE $0
in Excess of
Three.
1.16(i) Claims in Excess $60 $62 $2
of Twenty. SE $30 SE $31 SE $1
1.16(i) Reissue Total $60 $62 $2
Claims in Excess SE $30 SE $31 SE $1
of Twenty.
1.16(j) Multiple Dependent $450 $460 $10
Claims. SE $225 SE $230 SE $5
1.16(o) Utility Patent $250 $250 $0
Examination. SE $125 SE $125 SE $0
1.16(p) Design Patent $160 $160 $0
Examination. SE $80 SE $80 SE $0
1.16(q) Plant Patent $200 $200 $0
Examination. SE $100 SE $100 SE $0
1.16(r) Reissue Patent $750 $760 $10
Examination. SE $375 SE $380 SE $5
1.16(s) Utility $310 $320 $10
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Application Size SE $155 SE $160 SE $5
Fee - For each
additional 50
sheets that
exceeds 100
sheets.
1.16(s) Design Application $310 $320 $10
Size Fee - For SE $155 SE $160 SE $5
each additional
50 sheets that
exceeds 100
sheets.
1.16(s) Plant Application $310 $320 $10
Size Fee - For SE $155 SE $160 SE $5
each additional
50 sheets that
exceeds 100
sheets.
1.16(s) Reissue $310 $320 $10
Application Size SE $155 SE $160 SE $5
Fee - For each
additional 50
sheets that
exceeds 100
sheets.
1.16(s) Provisional $310 $320 $10
Application Size SE $155 SE $160 SE $5
Fee - For each
additional 50
sheets that
exceeds 100
sheets.
1.17(a)(1) Extension for $150 $150 $0
Response within SE $75 SE $75 SE $0
First Month.
1.17(a)(2) Extension for $560 $570 $10
Response within SE $280 SE $285 SE $5
Second Month.
1.17(a)(3) Extension for $1,270 $1,290 $20
Response within SE $635 SE $645 $10
Third Month
1.17(a)(4) Extension for $1,980 $2,010 $30
Response within SE $990 SE $1,005 SE $15
Fourth Month.
1.17(a)(5) Extension for $2,690 $2,730 $40
Resonse within SE $1,345 SE $1,365 SE $20
Fifth Month.
1.17(l) Petition to Revive $620 $630 $10
Unavoidably SE $310 SE $315 SE $5
Abandoned
Application.
1.17(m) Petition to Revive $1,860 $1,890 $30
Unintentionally SE $930 SE $945 SE $15
Abandoned
Application.
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1.18(a) Utility Issue $1,740 $1,770 $30
SE $870 SE $885 SE $15
1.18(a) Reissue Issue $1,740 $1,770 $30
SE $870 SE $885 SE $15
1.18(b) Design Issue $990 $1,010 $20
SE $495 SE $505 SE $10
1.18(c) Plant Issue $1,370 $1,390 $20
SE $685 SE $695 SE $10
1.20(c)(3) Reexamination $250 $250 $0
Independent SE $125 SE $125 SE $0
Claims in Excess
of Three.
1.20(c)(4) Reexamination $60 $62 $2
Total Claims in SE $30 SE $31 SE $1
Excess of Twenty.
1.20(d) Statutory $160 $160 $0
Disclaimer. SE $80 SE $80 SE $0
1.20(e) First Stage $1,130 $1,150 $20
Maintenance. SE $565 SE $575 SE $10
1.20(f) Second Stage $2,850 $2,900 $50
Maintenance. SE $1,425 SE $1,450 SE $25
1.20(g) Third Stage $4,730 $4,810 $80
Maintenance. SE $2,365 SE $2,405 SE $40
1.492(a) Filing of PCT $380 $390 $10
National Stage SE $190 SE $195 SE $5
Application.
1.492(b)(3) PCT National Stage $490 $500 $10
Search Search SE $245 SE $250 SE $5
Report Prepared
and Provided to
USPTO.
1.492(b)(4) PCT National Stage $620 $630 $10
Search - All Other SE $310 SE $315 SE $5
Situations.
1.492(c)(2) PCT National Stage $250 $250 $0
Examination - All SE $125 SE $125 SE $0
Other Situations.
1.492(d) Independent Claims $250 $250 $0
in Excess of SE $125 SE $125 SE $0
Three.
1.492(e) Total Claims in $60 $62 $2
Excess of Twenty. SE $30 SE $31 SE $1
1.492(f) Multiple Dependent $450 $460 $10
Claims. SE $225 SE $230 SE $5
1.492(j) PCT National Stage $310 $320 $10
Application Size SE $155 SE $160 SE $5
Fee.
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41.20(b)(1) Notice of Appeal $620 $630 $10
SE $310 SE $315 SE $5
41.20(b)(2) Filing a Brief in $620 $630 $10
Support of an SE $310 SE $315 SE $5
Appeal.
41.20(b)(3) Request for Oral $1,240 $1,260 $20
Hearing. SE $620 SE $630 SE $10
Comment and Response to Comment: The USPTO published a notice
proposing to adjust the patent fees charged under 35 U.S.C. 41(a) and
(b) for fiscal year 2013 to reflect fluctuations in the CPI. The Office
received one comment in response to the proposed rule. The commenter
supports the proposed CPI adjustment of fees for FY 2013 as an interim
fee increase until the USPTO exercises its fee-setting authority under
Section 10 of the AIA. However, because of the significant
administrative burdens on corporations and patent law firms to adjust
their internal systems for paying fees and correctly advising clients
of fee increases, it is suggested there should not be more than one fee
adjustment per year. The commenter suggests that in future years, CPI
adjustments and Section 10 adjustments should be timed so as to avoid
having two separate adjustments in the same year. The Office's response
is patent fees are being set under 35 U.S.C. 41(a) and (b) to ensure
proper funding for effective operations. As previously discussed, this
interim increase in fees is necessary to allow the USPTO to meet its
strategic goals within the time frame outlined in the FY 2013 President's
Budget. In the future, the USPTO does not anticipate routinely adjusting
patent fees more than once per fiscal year.
Rulemaking Considerations
Final Regulatory Flexibility Analysis
The Office has prepared the following Final Regulatory Flexibility
Analysis.
1. Description of the reasons that action by the agency is being
considered: The USPTO is adjusting the patent fees set under 35 U.S.C.
41(a) and (b) to ensure proper funding for effective operations. The
patent fee CPI adjustment under 35 U.S.C. 41(f) is a routine adjustment
that has generally occurred on an annual basis when necessary to
recover the higher costs of USPTO operations that occur due to the
increase in the price of products and services.
2. Statement of the objectives of, and legal basis for, the final
rule: Patent fees are set by or under the authority provided in 35
U.S.C. 41, 119, 120, 132(b), 156, 157(a), 255, 302, 311, 376, section
532(a)(2) of the URAA, and 4506 of the AIPA. The objective of the
change is to adjust patent fees set under 35 U.S.C. 41(a) and (b) as an
annual, routine step in order to recover the higher costs of USPTO
operations as reflected by the CPI. 35 U.S.C. 41(f) provides that fees
established under 35 U.S.C. 41(a) and (b) may be adjusted every year to
reflect fluctuations in the CPI over the previous twelve months.
3. Statement of Significant Issues Raised by the Public Comments in
Response to the IRFA and the Office's Response to Such Issues: The
Office received no comments concerning the Initial Regulatory Flexibility
Act analysis.
4. Description and estimate of the number of affected small
entities: The Small Business Administration (SBA) small business size
standards applicable to most analyses conducted to comply with the
Regulatory Flexibility Act are set forth in 13 CFR 121.201. These
regulations generally define small businesses as those with fewer than
a maximum number of employees or less than a specified level of annual
receipts for the entity's industrial sector or North American Industry
Classification System (NAICS) code. The USPTO, however, has formally
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adopted, with SBA approval, an alternate size standard as the size
standard for the purpose of conducting an analysis or making a
certification under the Regulatory Flexibility Act for patent-related
regulations. See Business Size Standard for Purposes of United States
Patent and Trademark Office Regulatory Flexibility Analysis for Patent-
Related Regulations, 71 FR 67109 (Nov. 20, 2006), 1313 Off. Gaz. Pat.
Office 60 (Dec. 12, 2006). This alternate small business size standard
is the previously established size standard that identifies the
criteria entities must meet to be entitled to pay reduced patent fees.
See 13 CFR 121.802. If patent applicants identify themselves on the
patent application as qualifying for reduced patent fees, the USPTO
captures this data in the Patent Application Location and Monitoring
(PALM) database system, which tracks information on each patent
application submitted to the USPTO.
Unlike the general SBA small business size standards set forth in
13 CFR 121.201, USPTO's approved alternative size standard is not
industry-specific. Specifically, the USPTO definition of small business
concern for Regulatory Flexibility Act purposes is a business or other
concern that: (1) Meets the SBA's definition of a "business concern or
concern" set forth in 13 CFR 121.105; and (2) meets the size standards
set forth in 13 CFR 121.802 for the purpose of paying reduced patent
fees, namely, an entity: (a) Whose number of employees, including
affiliates, does not exceed 500 persons; and (b) which has not
assigned, granted, conveyed, or licensed (and is under no obligation to
do so) any rights in the invention to any person who made it and could
not be classified as an independent inventor, or to any concern which
would not qualify as a non-profit organization or a small business
concern under this definition. See Business Size Standard for Purposes
of United States Patent and Trademark Office Regulatory Flexibility
Analysis for Patent-Related Regulations, 71 FR at 67112 (November 20,
2006), 1313 Off. Gaz. Pat. Office at 63 (December 12, 2006).
The changes in this final rule will apply to any small entity that
files a patent application, or has a pending patent application or
unexpired patent. The changes in this final rule will specifically
apply when an applicant or patentee pays an application filing or
national stage entry fee, search fee, examination fee, extension of
time fee, notice of appeal fee, appeal brief fee, request for an oral
hearing fee, petition to revive fee, issue fee, or patent maintenance
fee.
The USPTO has been advised that a number of small entity applicants
and patentees do not claim small entity status for various reasons. See
Business Size Standard for Purposes of United States Patent and
Trademark Office Regulatory Flexibility Analysis for Patent-Related
Regulations, 71 FR at 67110 (November 20, 2006), 1313 Off. Gaz. Pat.
Office at 61 (December 12, 2006). Therefore, the USPTO is also
considering all other entities paying patent fees to be small entities
as well in an effort to capture the impact on allsmall entity applicants
whether they claim that status or not. While the USPTO does not record the
number of small entity filers in a given year, the USPTO estimates that in
FY 2011, of the patent fees where a small entity discount is available,
3,980,519 patent fees were paid, out of which 1,190,558 fees claimed the
small entity discount.
5. Description of the reporting, recordkeeping and other compliance
requirements of the final rule, including an estimate of the classes of
small entities which will be subject to the requirement and the type of
professional skills necessary for preparation of the report or record:
This final rule does not require any reporting or recordkeeping or
incorporate other compliance requirements. This final rule only adjusts
patent fees (as discussed previously) to reflect changes in the CPI.
6. Description of any significant alternatives to the final rule
which accomplish the stated objectives of applicable statutes and which
minimize any significant economic impact of the rule on small entities:
The alternative of not adjusting patent fees would have a lesser
economic impact on small entities, but would not accomplish the stated
objectives of the applicable statutes. The USPTO is making a small
adjustment to patent fees, under 35 U.S.C. 41(f), to ensure proper
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funding for effective operations in light of changes in the CPI. The
patent fee CPI adjustment is a routine adjustment that has generally
occurred on an annual basis to recover the higher costs of USPTO
operations that occur due to increases in the price of products and
services. This CPI adjustment helps the Office maintain effective
operations and decrease patent pendency levels.
7. Identification, to the extent practicable, of all relevant
Federal rules which may duplicate, overlap or conflict with the final
rule: The USPTO is the sole agency of the United States Government
responsible for administering the provisions of Title 35, United States
Code, pertaining to examination and granting patents. Therefore, no
other Federal, state, or local entity shares jurisdiction over the
examination and granting of patents and there are no duplicative,
overlapping or conflicting rules.
Other countries, however, have their own patent laws, and an entity
desiring a patent in a particular country must make an application for
patent in that country, in accordance with the applicable law. Although
the potential for overlap exists internationally, this cannot be
avoided except by treaty (such as the Paris Convention for the
Protection of Industrial Property, or the Patent Cooperation Treaty
(PCT)). Nevertheless, the USPTO believes that there are no other
duplicative or overlapping rules.
B. Executive Order 13132 (Federalism)
This rulemaking does not contain policies with federalism
implications sufficient to warrant preparation of a Federalism
Assessment under Executive Order 13132 (Aug. 4, 1999).
C. Executive Order 12866 (Regulatory Planning and Review)
This rulemaking has been determined to be significant for purposes
of Executive Order 12866 (Sept. 30, 1993), as amended by Executive
Order 13258 (Feb. 26, 2002), and Executive Order 13422 (Jan. 18, 2007).
D. Executive Order 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.
E. Executive Order 13175 (Tribal Consultation)
This rulemaking will not: (1) Have substantial direct effects on
one or more Indian tribes; (2) impose substantial direct compliance
costs on Indian tribal governments; or (3) preempt tribal law.
Therefore, a tribal summary impact statement is not required under
Executive Order 13175 (Nov. 6, 2000).
F. Executive Order 13211 (Energy Effects)
This rulemaking is not a significant energy action under Executive
Order 13211 because this rulemaking is not likely to have a significant
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adverse effect on the supply, distribution, or use of energy.
Therefore, a Statement of Energy Effects is not required under
Executive Order 13211 (May 18, 2001).
G. Executive Order 12988 (Civil Justice Reform)
This rulemaking meets applicable standards to minimize litigation,
eliminate ambiguity, and reduce burden as set forth in sections 3(a)
and 3(b)(2) of Executive Order 12988 (Feb. 5, 1996).
H. Executive Order 13045 (Protection of Children)
This rulemaking does not concern an environmental risk to health or
safety that may disproportionately affect children under Executive
Order 13045 (Apr. 21, 1997).
I. Executive Order 12630 (Taking of Private Property)
This rulemaking will not effect a taking of private property or
otherwise have taking implications under Executive Order 12630 (Mar.
15, 1988).
J. Congressional Review Act
Under the Congressional Review Act provisions of the Small Business
Regulatory Enforcement Fairness Act of 1996 (5 U.S.C. 801 et seq.), the
USPTO has submitted a report containing the final rule and other
required information to the U.S. Senate, the U.S. House of
Representatives and the Comptroller General of the Government
Accountability Office. The changes in this final rule will not result
in an annual effect on the economy of 100 million dollars or more, a
major increase in costs or prices, or significant adverse effects on
competition, employment, investment, productivity, innovation, or the
ability of United States-based enterprises to compete with foreign-
based enterprises in domestic and export markets. Therefore, this final
rule is not a "major rule" as defined in 5 U.S.C. 804(2).
K. Unfunded Mandates Reform Act of 1995
The changes in this final rule do not involve a Federal
intergovernmental mandate that will result in the expenditure by State,
local, and tribal governments, in the aggregate, of 100 million dollars
(as adjusted) or more in any one year, or a Federal private sector
mandate that will result in the expenditure by the private sector of
100 million dollars (as adjusted) or more in any one year, and will not
significantly or uniquely affect small governments. Therefore, no
actions are necessary under the provisions of the Unfunded Mandates Reform
Act of 1995. See 2 U.S.C. 1501 et seq.
L. National Environmental Policy Act
This rulemaking will not have any effect on the quality of
environment and is thus categorically excluded from review under the
National Environmental Policy Act of 1969. See 42 U.S.C. 4321 et seq.
M. National Technology Transfer and Advancement Act
The requirements of section 12(d) of the National Technology
Transfer and Advancement Act of 1995 (15 U.S.C. 272 note) are
inapplicable because this rulemaking does not contain provisions which
involve the use of technical standards.
N. Paperwork Reduction Act
This final rule involves information collection requirements which
are subject to review by the Office of Management and Budget (OMB)
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under the Paperwork Reduction Act of 1995 (44 U.S.C. 3501 et seq.).
The collections of information involved in this final rule have
been reviewed and approved by OMB. The Office is not resubmitting
information collection requests to OMB for its review and approval at
this time but will update the fee amounts for existing information
collection requirements associated with the information collections
under OMB control numbers 0651-0016, 0651-0021, 0651-0024, 0651-0031,
0651-0032, 0651-0033, 0651-0063, and 0651-0064. The USPTO will submit
to OMB fee revision changes for OMB control numbers 0651-0016, 0651-
0021, 0651-0024, 0651-0031, 0651-0032, 0651-0033, 0651-0063, and 0651-
0064 at the time these collections are submitted to OMB for renewal.
Notwithstanding any other provision of law, no person is required
to respond to, nor shall a person be subject to a penalty for failure
to comply with, a collection of information subject to the requirements
of the Paperwork Reduction Act, unless that collection of information
displays a currently valid OMB control number.
List of Subjects
37 CFR Part 1
Administrative practice and procedure, Courts, Freedom of
information, Inventions and patents, Reporting and record keeping
requirements, Small businesses.
37 CFR Part 41
Administrative practice and procedure, Inventions and patents,
Lawyers.
For the reasons set forth in the preamble, 37 CFR parts 1 and 41
are to be amended as follows:
PART 1 - RULES OF PRACTICE IN PATENT CASES
. 1. The authority citation for 37 CFR Part 1 continues to read as
follows:
Authority: 35 U.S.C. 2(b)(2).
. 2. Section 1.16 is amended by revising paragraphs (a) through (e), (h)
through (j), and (o) through (s) to read as follows:
§ 1.16 National application filing, search, and examination fees.
(a) Basic fee for filing each application under 35 U.S.C. 111 for
an original patent, except design, plant, or provisional applications:
(1) For an application filed on or after December 8, 2004:
By a small entity (§ 1.27(a)) if the application is $98.00
submitted in compliance with the Office electronic filing
system (§ 1.27(b)(2)):
By a small entity (§ 1.27(a)) $195.00
By other than a small entity $390.00
(b) Basic fee for filing each application for an original design
patent:
(1) For an application filed on or after December 8, 2004:
By a small entity (§ 1.27(a)) $125.00
By other than a small entity $250.00
(c) Basic fee for filing each application for an original plant
patent:
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(1) For an application filed on or after December 8, 2004:
By a small entity (§ 1.27(a)) $125.00
By other than a small entity $250.00
(d) Basic fee for filing each provisional application:
By a small entity (§ 1.27(a)) $125.00
By other than a small entity $250.00
(e) Basic fee for filing each application for the reissue of a
patent:
(1) For an application filed on or after December 8, 2004:
By a small entity (§ 1.27(a)) $195.00
By other than a small entity $390.00
* * * * *
(h) In addition to the basic filing fee in an application, other
than a provisional application, for filing or later presentation at any
other time of each claim in independent form in excess of 3:
By a small entity (§ 1.27(a)) $125.00
By other than a small entity $250.00
(i) In addition to the basic filing fee in an application, other
than a provisional application, for filing or later presentation at any
other time of each claim (whether dependent or independent) in excess
of 20 (note that § 1.75(c) indicates how multiple dependent claims
are considered for fee calculation purposes):
By a small entity (§ 1.27(a)) $31.00
By other than a small entity $62.00
(j) In addition to the basic filing fee in an application, other
than a provisional application, that contains, or is amended to
contain, a multiple dependent claim, per application:
By a small entity (§ 1.27(a)) $230.00
By other than a small entity. $460.00
* * * * *
(o) Examination fee for each application filed under 35 U.S.C. 111
on or after December 8, 2004, for an original patent, except design,
plant, or provisional applications:
By a small entity (§ 1.27(a)) $125.00
By other than a small entity $250.00
(p) Examination fee for each application filed on or after December
8, 2004, for an original design patent:
By a small entity (§ 1.27(a)) $80.00
By other than a small entity $160.00
(q) Examination fee for each application filed on or after December
8, 2004, for an original plant patent:
By a small entity (§ 1.27(a)) $100.00
By other than a small entity $200.00
(r) Examination fee for each application filed on or after December
8, 2004, for the reissue of a patent:
By a small entity (§ 1.27(a)) $380.00
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By other than a small entity $760.00
(s) Application size fee for any application under 35 U.S.C. 111
filed on or after December 8, 2004, the specification and drawings of
which exceed 100 sheets of paper, for each additional 50 sheets or
fraction thereof:
By a small entity (§ 1.27(a)) $160.00
By other than a small entity. $320.00
* * * * *
. 3. Section 1.17 is amended by revising paragraphs (a), (l), and (m) to
read as follows:
§ 1.17 Patent application and reexamination processing fees.
(a) Extension fees pursuant to § 1.136(a):
(1) For reply within first month:
By a small entity (§ 1.27(a)) $75.00
By other than a small entity $150.00
(2) For reply within second month
By a small entity (§ 1.27(a)) $285.00
By other than a small entity $570.00
(3) For reply within third month:
By a small entity (§ 1.27(a)) $645.00
By other than a small entity $1,290.00
(4) For reply within fourth month:
By a small entity (§ 1.27(a)) $1,005.00
By other than a small entity $2,010.00
(5) For reply within fifth month:
By a small entity (§ 1.27(a)) $1,365.00
By other than a small entity $2,730.00
* * * * *
(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 small entity (§ 1.27(a)) $315.00
By other than a small entity $630.00
(m) For filing a petition for the revival of an unintentionally
abandoned application, for the unintentionally delayed payment of the fee
for issuing a patent, or for the revival of an unintentionally terminated
reexamination proceeding under 35 U.S.C. 41(a)(7) (§ 1.137(b)):
By a small entity (§ 1.27(a)) $945.00
By other than a small entity $1,890.00
* * * * *
4. Section 1.18 is amended by revising paragraphs (a) through (c)
to read as follows:
§ 1.18 Patent post allowance (including issue) fees.
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(a) Issue fee for issuing each original patent, except a design or
plant patent, or for issuing each reissue patent:
By a small entity (§ 1.27(a)) $885.00
By other than a small entity $1,770.00
(b) Issue fee for issuing an original design patent:
By a small entity (§ 1.27(a)) $505.00
By other than a small entity $1,010.00
(c) Issue fee for issuing an original plant patent:
By a small entity (§ 1.27(a)) $695.00
By other than a small entity $1,390.00
* * * * *
. 5. Section 1.20 is amended by revising paragraphs (c)(3), (c)(4), and
(d) through (g) to read as follows:
§ 1.20 Post issuance fees.
* * * * *
(c) * * *
(3) For filing with a request for reexamination or later
presentation at any other time of each claim in independent form in
excess of 3 and also in excess of the number of claims in independent
form in the patent under reexamination:
By a small entity (§ 1.27(a)) $125.00
By other than a small entity $250.00
(4) For filing with a request for reexamination or later
presentation at any other time of each claim (whether dependent or
independent) in excess of 20 and also in excess of the number of claims
in the patent under reexamination (note that § 1.75(c) indicates
how multiple dependent claims are considered for fee calculation
purposes):
By a small entity (§ 1.27(a)) $31.00
By other than a small entity $62.00
* * * * *
(d) For filing each statutory disclaimer (§ 1.321):
By a small entity (§ 1.27(a)) $80.00
By other than a small 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 small entity (§ 1.27(a)) $575.00
By other than a small entity $1,150.00
(f) For maintaining an original or reissue patent, except a design
or plant patent, based on an application filed on or after December 12,
1980, in force beyond eight years, the fee being due by seven years and
six months after the original grant:
By a small entity (§ 1.27(a)) $1,450.00
By other than a small entity $2,900.00
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(g) For maintaining an original or reissue patent, except a design
or plant patent, based on an application filed on or after December 12,
1980, in force beyond twelve years, the fee being due by eleven years
and six months after the original grant:
By a small entity (§ 1.27(a)) $2,405.00
By other than a small entity $4,810.00
* * * * *
6. Section 1.492 is amended by revising paragraphs (a), (b)(3),
(b)(4), (c)(2), (d) through (f) and (j) to read as follows:
§ 1.492 National stage fees.
* * * * *
(a) The basic national fee for an international application
entering the national stage under 35 U.S.C. 371 if the basic national
fee was not paid before December 8, 2004:
By a small entity (§ 1.27(a)) $195.00
By other than a small entity $390.00
(b) * * *
(3) If an international search report on the international
application has been prepared by an International Searching Authority
other than the United States International Searching Authority and is
provided, or has been previously communicated by the International
Bureau, to the Office:
By a small entity (§ 1.27(a)) $250.00
By other than a small entity $500.00
(4) In all situations not provided for in paragraphs (b)(1),
(b)(2), or (b)(3) of this section:
By a small entity (§ 1.27(a)) $315.00
By other than a small entity $630.00
(c) * * *
(2) In all situations not provided for in paragraph (c)(1) of this
section:
By a small entity (§ 1.27(a)) $125.00
By other than a small entity. $250.00
(d) In addition to the basic national fee, for filing or on later
presentation at any other time of each claim in independent form in
excess of 3:
By a small entity (§ 1.27(a)) $125.00
By other than a small entity $250.00
(e) In addition to the basic national fee, for filing or on later
presentation at any other time of each claim (whether dependent or
independent) in excess of 20 (note that § 1.75(c) indicates how
multiple dependent claims are considered for fee calculation purposes):
By a small entity (§ 1.27(a)) $31.00
By other than a small entity $62.00
(f) In addition to the basic national fee, if the application
contains, or is amended to contain, a multiple dependent claim, per
application:
By a small entity (§ 1.27(a)) $230.00
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By other than a small entity $460.00
* * * * *
(j) Application size fee for any international application for
which the basic national fee was not paid before December 8, 2004, the
specification and drawings of which exceed 100 sheets of paper, for
each additional 50 sheets or fraction thereof:
By a small entity (§ 1.27(a)) $160.00
By other than a small entity $320.00
PART 41 - PRACTICE BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES
. 7. The authority citation for 37 CFR part 41 continues to read as
follows:
Authority: 35 U.S.C. 2(b)(2), 3(a)(2)(A), 21, 23, 32, 41, 134, 135.
. 8. Section 41.20 is amended by revising paragraph (b) to read as
follows:
§ 41.20 Fees.
* * * * *
(b) Appeal fees. (1) For filing a notice of appeal from the
examiner to the Board:
By a small entity (§ 1.27(a) of this title) $315.00
By other than a small entity $630.00
(2) In addition to the fee for filing a notice of appeal, for
filing a brief in support of an appeal:
By a small entity (§ 1.27(a) of this title) $315.00
By other than a small entity $630.00
(3) For filing a request for an oral hearing before the Board in an
appeal under 35 U.S.C. 134:
By a small entity (§ 1.27(a)) $630.00
By other than a small entity $1,260.00
August 31, 2012 DEBORAH S. COHN
Commissioner for Trademarks
United States Patent and Trademark Office
[1383 OG 49]