| Fees and Payment of Money |
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(149) DEPARTMENT OF COMMERCE
Patent and Trademark Office
37 CFR Part 1
[Docket No. PTO-P-2011-0065]
RIN 0651-AC64
Fee for Filing a Patent Application
Other Than by the
Electronic Filing System
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Final rule.
SUMMARY: The Leahy-Smith America Invents Act provides an additional fee of
$400 for applications not filed electronically. This final rule revises the
rules of practice to include the fee for applications not filed
electronically.
DATES: Effective Date: November 15, 2011.
FOR FURTHER INFORMATION CONTACT: James J. Engel, Senior Legal Advisor,
Office of Patent Legal Administration, Office of the Associate Commissioner
for Patent Examination Policy, by telephone at (571) 272-7725; or by mail
addressed to: Mail Stop Comments Patents, Commissioner for Patents, P.O.
Box 1450, Alexandria, VA 22313-1450.
SUPPLEMENTARY INFORMATION: Section 10(h) of the Leahy-Smith America
Invents Act provides that an additional fee of $400 shall be
established for each application for an original (i.e., non-reissue)
patent, except for a design, plant, or provisional application, that is
not filed by electronic means as prescribed by the Director of the
United States Patent and Trademark Office (USPTO). See Public Law 112-
29, 125 Stat. 283, 319 (2011). Section 10(h) also provides that this
fee is reduced by 50 percent for small entities under 35 U.S.C.
41(h)(1). See id. Section 10(h) also provides that this new fee is
effective on November 15, 2011 (sixty days after the date of enactment
of the Leahy-Smith America Invents Act). See id. This final rule
revises 37 CFR 1.16 and 1.445 to include the fee for applications not
filed electronically.
The USPTO encourages applicants to file their applications via its
electronic filing system (EFS-Web) to avoid the fee provided for by
section 10(h) of the Leahy-Smith America Invents Act. Information
concerning electronic filing via EFS-Web is available from the USPTO's
Patent Electronic Business Center (EBC) at
http://www.uspto.gov/patents/process/file/efs/index.jsp.
Section-by-Section Discussion
Title 37 of the Code of Federal Regulations, Part 1, is amended as
follows:
Section 1.16: Section 1.16(t) is added to require the non-
electronic filing fee of $400 ($200 for a small entity) for any
application under 35 U.S.C. 111(a) (i.e., any nonprovisional
application) that is filed on or after November 15, 2011, other than by
the USPTO's electronic filing system (EFS-Web), except for a reissue,
design, or plant application.
Section 1.445: The introductory text of § 1.445(a) is amended
to add "by law or" prior to "by the Director under the authority of
35 U.S.C. 376" because the fee for filing an application other than by
the USPTO's electronic filing system is established by law (section 10(h)
of the Leahy-Smith America Invents Act). Section 1.445(a) is amended to set
out the current transmittal fee as a basic fee in § 1.445(a)(1)(i) and to
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add a new § 1.445(a)(1)(ii) setting out the non-electronic filing fee of
$400 ($200 for a small entity) for any Patent Cooperation Treaty (PCT)
international application designating the United States of America
that is filed on or after November 15, 2011, other than by the USPTO's
electronic filing system (EFS-Web), except for a plant application.
Section 1.445(a)(1)(ii) does not contain a reference to reissue, design,
or provisional applications as these types of applications cannot be
filed via the PCT. While § 1.445(a)(1)(ii) contains a reference to
plant applications, the USPTO advises against filing a plant application
under the PCT because many countries do not consider this subject matter
to be patent-eligible, and the color drawings or color photographs that
are often necessary for plant applications (§ 1.165(b)) are not permitted
in PCT international applications (PCT Applicant's Guide (] 5.159)
(Oct. 2011)).
The USPTO will consider applications filed with the USPTO via the
Department of Defense Secret Internet Protocol Router Network (SIPRNET)
as filed via the USPTO's electronic filing system for purposes of § 1.16(t)
and § 1.445(a)(1)(ii).
Rule Making Considerations
A. Administrative Procedure Act (APA): Section 10(h) of the Leahy-
Smith America Invents Act provides that an additional fee of $400 ($200
for a small entity) shall be established for each application for an
original (i.e., non-reissue) patent, except for a design, plant, or
provisional application, that is not filed by electronic means as
prescribed by the Director of the USPTO. The changes in this final rule
simply reiterate the provisions of section 10(h) of the Leahy-Smith
America Invents Act and are thus merely interpretative. See Gray
Panthers Advocacy Comm. v. Sullivan, 936 F.2d 1284, 1291-1292 (DC Cir.
1991) (regulation that reiterates statutory language does not require
notice and comment procedures). Accordingly, prior notice and an
opportunity for public comment are not required pursuant to 5 U.S.C.
553(b)(A) or any other law. See Cooper Techs. Co. v. Dudas, 536 F.3d
1330, 1336-37 (Fed. Cir. 2008) (stating that 5 U.S.C. 553, and thus 35
U.S.C. 2(b)(2)(B), do not require notice and comment rule making for
"interpretative rules, general statements of policy, or rules of
agency organization, procedure, or practice.") (quoting 5 U.S.C.
553(b)(A)). In addition, thirty-day advance publication is not required
pursuant to 5 U.S.C. 553(d) or any other law. See 5 U.S.C. 553(d)
(requiring thirty-day advance publication for substantive rules).
B. Regulatory Flexibility Act: As prior notice and an opportunity
for public comment are not required pursuant to 5 U.S.C. 553 or any
other law, neither a regulatory flexibility analysis nor a certification
under the Regulatory Flexibility Act (5 U.S.C. 601 et seq.) is required.
See 5 U.S.C. 603.
C. Executive Order 13132 (Federalism): This rule making does not
contain policies with federalism implications sufficient to warrant
preparation of a Federalism Assessment under Executive Order 13132
(Aug. 4, 1999).
D. Executive Order 12866 (Regulatory Planning and Review): This
rule making has been determined not 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).
E. Executive Order 13563 (Improving Regulation and Regulatory
Review): The USPTO has complied with Executive Order 13563 (Jan. 18,
2011). Specifically, the USPTO 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)
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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 rule making 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.
F. Executive Order 13175 (Tribal Consultation): This rule making
will not: (1) Have substantial direct effects on one or more Indian
tribes; (2) impose substantial direct compliance costs on Indian tribal
government; or (3) preempt tribal law. Therefore, a tribal summary
impact statement is not required under Executive Order 13175 (Nov. 6,
2000).
G. Executive Order 13211 (Energy Effect): This rule making is not
significant energy action under Executive Order 13211 because this rule
making is not likely to have a significant adverse effect on the
supply, distribution, or use of energy. Therefore, a Statement of
Energy Effects is not required under Executive Order 13211 (May 18,
2001).
H. Executive Order 12988 (Civil Justice Reform): This rule making
meets applicable standards to minimize litigation, eliminate ambiguity,
and reduce burden as set forth in sections 3(a) and 3(b)(2) of
Executive Order 12988 (Feb. 5, 1996).
I. Executive Order 13045 (Protection of Children): This rule making
is not an economically significant rule and does not concern an
environmental risk to health or safety that may disproportionately
affect children under Executive Order 13045 (Apr. 21, 1997).
J. Executive Order 12630 (Taking of Private Property): This rule
making will not effect a taking of private property or otherwise have
taking implications under Executive Order 12630 (Mar. 15, 1988).
K. 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 will submit a report containing
this 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 change in this rule making is not
expected to result in an annual effect on the economy of 100 million
dollars or more, a major increase in costs or prices, or significant
adverse effects on competition, employment, investment, productivity,
innovation, or the ability of United States-based enterprises to
compete with foreign-based enterprises in domestic and export markets.
Therefore, this rule making is not expected to result in a "major rule"
as defined in 5 U.S.C. 804(2).
L. Unfunded Mandates Reform Act of 1995: The changes proposed in
this notice do not involve a Federal intergovernmental mandate that
will result in the expenditure by State, local, and tribal governments,
in the aggregate, of 100 million dollars (as adjusted) or more in any
one year, or a Federal private sector mandate that will result in the
expenditure by the private sector of 100 million dollars (as adjusted)
or more in any one year, and will not significantly or uniquely affect
small governments. Therefore, no actions are necessary under the
provisions of the Unfunded Mandates Reform Act of 1995. See 2 U.S.C.
1501 et seq.
M. National Environmental Policy Act: The rule making will not have
any effect on the quality of the environment and is thus categorically
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excluded from review under the National Environmental Policy Act of
1968. See 42 U.S.C. 4321 et seq.
N. National Technology Transfer and Advancement Act: The requirements of
section 12(d) of the National Technology Transfer and Advancement Act of
1995 (15 U.S.C. 272 note) are inapplicable, because this rule making does
not involve the use of technical standards.
O. Paperwork Reduction Act: This rule making involves information
collection requirements which are subject to review by the Office of
Management and Budget (OMB) under the Paperwork Reduction Act of 1995
(44 U.S.C. 3501 et seq.). As discussed previously, the changes in this
final rule simply reiterate the provisions of section 10(h) of the
Leahy-Smith America Invents Act. The collection of information involved
in this rule making has been reviewed and previously approved by OMB
under OMB control numbers 0651-0021 and 0651-0032. This notice does not
add any additional information collection requirements for patent
applicants or patentees. Therefore, the USPTO is not resubmitting
information collection packages to OMB for its review and approval
because the changes proposed in this notice do not affect the
information collection requirements associated with the information
collections under OMB control numbers 0651-0021 and 0651-0032. The
USPTO will update fee calculations for the currently approved
information collections associated with this rule making upon
submission to the OMB of the renewals of those information collections.
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 in 37 CFR Part 1
Administrative practice and procedure, Courts, Freedom of
information, Inventions and patents, Reporting and recordkeeping
requirements, Small businesses, and Biologics.
For the reasons set forth in the preamble, 37 CFR part 1 is 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), unless otherwise noted.
. 2. Section 1.16 is amended by adding paragraph (t) to read as follows:
§ 1.16 National application filing, search, and examination fees.
* * * * *
(t) Non-electronic filing fee for any application under 35 U.S.C.
111(a) that is filed on or after November 15, 2011, other than by the
Office electronic filing system, except for a reissue, design, or plant
application:
By a small entity (§ 1.27(a)) ........................... $200.00
By other than a small entity ........................... $400.00
* * * * *
. 3. Section 1.445 is amended by revising paragraph (a) introductory text
and paragraph (a)(1) to read as follows:
§ 1.445 International application filing, processing and search fees.
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(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 ........................... $240.00
(ii) A non-electronic filing fee portion for any international
application designating the United States of America that is filed on
or after November 15, 2011, other than by the Office electronic filing
system, except for a plant application:
By a small entity (§ 1.27(a)) ........................... $200.00
By other than a small entity ........................... $400.00
* * * * *
November 7, 2011 DAVID J. KAPPOS
Under Secretary of Commerce for Intellectual Property and
Director of the United States Patent and Trademark Office
[1373 OG 105]