(60) Notification Regarding Reduced Patent Fee
Schedule Effective October 1, 1998
All patent applicants and owners should be aware of the current
uncertainty as to what patent fees will be in effect on October 1, 1998,
when filing correspondence involving fees, such as new application filing
fees, extension of time fees, issue fees, and maintenance fees.
Trademark fees are not affected.
On October 1, 1998, the patent fee surcharge established in the Omnibus
Budget Reconciliation Act of 1990 will expire. As a result, until
Congress acts to set new patent fees, the patent statutory fees
authorized under title 35, United States Code, sections 41(a) and (b),
will fall automatically to pre-surcharge levels plus Consumer Price
Index (CPI) adjustments on October 1, 1998.
Both houses of Congress have initiated action to set new patent fees.
The Senate has passed an appropriations bill, S. 2260, and the House has
passed an authorization bill, H.R. 3723, both of which would reduce
patent fees from their current level, but not by as much as the fees
would decline in the absence of Congressional action. Also, if no PTO
appropriations legislation passes before October 1, Congress may enact a
continuing resolution which could affect the patent fee schedule. Any of
these legislative actions may occur at any time before, on or after
October 1, 1998.
Anticipating the possiblity that congress might not act by October 1,
1998, the PTO published a final rule in the Federal Register
establishing a fee schedule to take effect on October 1, 1998. This fee
schedule appeared in the Federal Register on July 24, 1998, in Volume
63, Number 142, pages 39731 to 39737, and in the Official Gazette of the
Patent and Trademark Office on August 18, 1998, in Volume 1213, pages
153 to 160.
See Appendix A at the end of Federal Register and Official Gazette
final rule notices for an easy to follow schedule of the new fees.
The Federal Register notice, including helpful Appendix A, may be easily
found on the PTO's Web site as explained below. The final rule would
reduce patent fees to reflect the expiration of the surcharge plus
fluctuations in the CPI, and assumes no Congressional action prior to
October 1, 1998. The fee levels that would be established should either
S. 2260 or H.R. 3723 be enacted may also be found in the third (H.R.
3723) column of the previously mentioned Appendix A.
Under normal circumstances, patent fees are set forth in 37 C.F.R.
1.16 through 1.21 and 1.492. As discussed above, however, it is possible
that legislation will be enacted that supersedes the patent fees
specified in 37 C.F.R. 1.16 through 1.21 and 1.492. If this
happens, the fees in effect are those fees set forth in the enacted
legislation (and not the fees specified in 37 C.F.R. 1.16 through
1.21 and 1.492). Therefore, it is also possible that there will be a gap
in time during which 37 C.F.R. 1.16 through 1.21 and 1.492 do not
accurately set forth the patent fees in effect. When legislation is
enacted to reset patent fees, the PTO will publish in the Federal
Register and in the Official Gazette an official notice setting forth
the patent fee schedule to be followed, and will post the patent fee
schedule on the PTO's Web site.
The final rule stated, in the section entitled "General Procedures" that
"[a]ny fee amount that is paid on or after the effective date of the
final fee adjustment will be subject to the new fees then in effect."
While this statement is correct for most patent fees, it is not correct
with respect to the filing fee required for a patent application filed
under 35 U.S.C. 111 or the national fee for an application entering
the national stage under 35 U.S.C. 371. A correct statement of these
fees is set forth below in this notice.
If you want to know what fee to pay when filing correspondence, you
should refer to the PTO's Web site (www.uspto.gov), or contact the PTO
General Information Services Division at (703) 308-4357 or (800)
PTO-9199 for the most current fee amounts and information.
As passage of the pending fee legislation is uncertain, the PTO will
proceed under the assumption that the fee changes set forth in the final
rule will become effective on October 1, 1998. In view of the scheduled
reduction in patent application fees effective on October 1, 1998, this
notice is intended to clarify: (1) the filing fee required to be paid
for a patent application filed under 35 U.S.C. 111 prior to October
1, 1998 where the fee is not actually received until on or after October
1, 1998; (2) the basic national fee and the fees for excess and multiple
dependent claims required for international applications entering the
national stage under 35 U.S.C. 371; and (3) the applicability of
Certificate of Mailing and "Express Mail" practice to the fee in effect
on the date of payment.
Patent Application Filing Fee For Application Filed Under 35 U.S.C.
111 and 37 C.F.R. 1.53
If the filing fee is received when the application is filed, the filing
fee required in an application filed under 35 U.S.C. 111 is the
filing fee in effect on the filing date assigned the application. If the
filing fee is received on a date later than the filing date assigned the
application, the filing fee required in an application filed under 35
U.S.C. 111 is the higher of: (1) the filing fee in effect on the
filing date assigned the application; or (2) the filing fee in effect on
the date the filing fee is received. The filing fee includes the basic
fee, excess claims fees (if any), and the multiple dependent claim fee
(if any), for claims present on filing (unless the excess or multiple
dependent claims are canceled before the filing fee is paid). Of course,
if the basic filing fee is received on a date later than the filing date
assigned the application filed under 35 U.S.C. 111, a surcharge as
set forth in 37 C.F.R. 1.16(e) is also required.
The current rules (37 C.F.R. 1.53(f) and (g)) are designed to
discourage the filing of an application without the basic filing fee by
imposing a financial penalty in the form of a surcharge when the basic
filing fee is received later than the filing date assigned the
application. Therefore, delaying the payment of the filing fee in an
application under 35 U.S.C. 111 will not reduce the filing fee
required to be paid in the application. For example, the filing fee
required to be paid in an application under 35 U.S.C. 111 filed
before October 1, 1998 cannot be reduced by delaying the payment of the
filing fee until on or after October 1, 1998.
It is not recommended that the filing of any application be delayed
until October 1, 1998 for the purpose of paying a reduced filing fee
because: (1) a delay in filing an application could adversely affect the
patentability of the application ( see, e.g., 35 U.S.C. 102(b)); and
(2) it is uncertain as to what fees will be in effect on and after
October 1, 1998.
Fees For International Application Entering The National Stage Under 35
U.S.C. 371 and 37 C.F.R. 1.494 or 1.495
The basic national fee for an international application entering the
national stage is due not later than the expiration of 20 months from
the priority date in the international application (or 30 months from
the priority date if the United States was elected prior to the
expiration of 19 months from the priority date), and the amount of the
basic national fee that is required to be paid is the basic national fee
in effect on the date the full fee is received.
If the reduced basic national fee scheduled to be effective on October
1, 1998 does take effect, even for a limited period of time, or if a
different reduced fee schedule is set forth in enacted legislation,
applicants may take advantage of such a reduction in fees. This is
because the amount required to be paid for the basic national fee is
determined by the fees in effect on the date the basic national fee is
received. Applicants are cautioned, however, that the full basic
national fee must be paid within the permitted (20 or 30 months) period
for payment of the basic national fee, delaying payment of the basic
national fee may cause a later date under 35 U.S.C. 102(e) to be
accorded to any patent issuing on the application, and, as previously
noted, it is uncertain what fees will be in effect on and after October
1, 1998.
The excess claim fees or the multiple dependent claim fee required to be
paid is the higher of: (1) the excess claims fees and the multiple
dependent claim fee in effect on the date the basic national fee is
received; or (2) the excess claims fees and the multiple dependent claim
fee in effect on the date (any of) these fees are received. In this
respect, the practice for determining the fees due for excess claims and
any multiple dependent claim when entering into the national stage is
analogous to the practice for applications filed under 35 U.S.C. 111.
Fees for claims which are added after entry into the national stage are
determined by the fees in effect (for any excess claims and any multiple
dependent claim) on the date the fee(s) are received.
All Other Patent Fees
The fee required to be paid for all other patent fees is the fee in
effect on the date the fee is received (see "Certificate of Mailing or
Transmission under 37 C.F.R. 1.8(a)(1)" and "Correspondence filed by
`Express Mail,'" discussed below).
Certificate of Mailing or Transmission under 37 C.F.R. 1.8(a)(1)
For those items for which a Certificate of Mailing or Transmission under
37 C.F.R. 1.8(a)(1) is proper, the fee required is the lower of:
(1) the fee in effect on the date of receipt of the fee; or (2) the fee
in effect on the date of mailing indicated on a proper Certificate of
Mailing or Transmission under 37 C.F.R. 1.8(a)(1). Items for which a
Certificate of Mailing or Transmission under 37 C.F.R. 1.8(a)(1) is
not proper include, for example, Continued Prosecution Applications
under 37 C.F.R. 1.53(d) and other national and international
applications for patents, see 37 C.F.R. 1.8(a)(2).
Correspondence Filed by "Express Mail"
Under 37 C.F.R. 1.10(a), any correspondence delivered by the "Express
Mail Post Office to Addressee" service of the United States Postal
Service (USPS) is considered filed or received in the Office on the date
of deposit with the USPS. The date of deposit with the USPS is shown by
the "date-in" on the "Express Mail" mailing label or other official USPS
notation.
Questions or comments concerning this notice should be forwarded to John
F. Gonzales, Senior Legal Advisor, by facsimile at (703) 308-6916, by
telephone at (703) 305-9285, or by e-mail at john.gonzales@uspto.gov.
September 9, 1998 Q. TODD DICKINSON
Acting Assistant Secretary
of Commerce and Commissioner
of Patents and Trademarks
[1214 OG 130]