(61) Department of Commerce
Patent and Trademark Office
37 CFR Part 1
[Docket No. 980713170-8170-01]
RIN 0651-AA96
Revision of Patent Fees
for Fiscal Year 1999
Agency: Patent and Trademark Office, Commerce.
Action: Final Rule.
Summary: The Patent and Trademark Office (PTO) is amending the rules of
practice in patent cases, to adjust patent statutory fee amounts to
reflect the expiration of the surcharge established by the Omnibus
Reconciliation Act of 1990, as amended, and fluctuations in the Consumer
Price Index (CPI). Also, a few fees that track statutory fees asr being
correspondingly adjusted, and a non-statutory fee is being reduced to
recover cost.
Patent statutory fees consist of a fee amount pursuant to title 35,
United States Code; annual adjustments to reflect fluctuations in the
CPI; and a surcharge, established by the Omnibus Budget Reconciliation
Act of 1990, as amended. The intent of the surcharge was to finance the
cost of operating the PTO from user fees, rather than from taxes paid to
the general fund of the United States Treasury. In fiscal year 1998, the
surcharge will raise $119,000,000. The surcharge will expire at the end
of fiscal year 1998. To replace the surcharge and to ensure continued
user-fee funding of PTO's operations, legislation has been introduced in
the Congress, namely, H.R. 3989 and H.R. 3723. Should either legislation
or an alternative be enacted, the PTO will publish a document in the
Federal Register to ensure that this final rule and the fees established
will not take effect.
This final rule assumes that no legislative change to patent fees will
take place before October 1, 1998. This final rule adjusts patent fees
to reflect the expiration of the surcharge established by the Omnibus
Budget Reconciliation Act of 1990, as amended, and to reflect
fluctuations in the CPI over the previous twelve months.
Effective Date: October 1, 1998.
For Further Information Contact: Matthew Lee by telephone at (703)
305-8051, fax at (703) 305-8007, or by mail marked to his attention and
addressed to the Commissioner of Patents and Trademarks, Office of
Finance, Crystal Park 1, Suite 802, Washington, D.C. 20231.
Supplementary Information: This final rule adjusts PTO fees in
accordance with the applicable provisions of title 35, United States
Code, and the Patent and Trademark Office Authorization Act of 1991
(Public Law 102-204).
Legislation has been introduced in the Congress, namely H.R. 3989 and
H.R. 3723, to replace the surcharge and to ensure continued user-fee
funding of PTO's operations. H.R. 3989 would re-establish patent
statutory fees at the fiscal year 1998 fee levels. For patent customers,
H.R. 3989 would not change fee levels; it would simply include the
current surcharge and previous years' annual inflation adjustments
within the statutory fees, in accordance with the President's budget.
The President's budget further proposes to rescind $66,342,000 of PTO's
fiscal year 1998 budget authority, and an additional $50,000,000 in fees
collected in fiscal year 1999, for a total recission of $116,342,000.
H.R. 3723 would re-establish patent statutory fees below the levels
proposed in H.R. 3989. The total amount collected under H.R. 3723 is
expected to be $50,000,000 less than would be collected under H.R. 3989.
H.R. 3723 does not assume recission of PTO budget authority from fees
collected in fiscal year 1999. (A comparison of fee amounts for fiscal
year 1998, this final rule for fiscal year 1999, H.R. 3723, and H.R.
3989 is included as an Appendix to this final rule.)
In the absence of the enactment of these bills, or any other positive
action by the Congress before October 1, 1998, certain patent fees will
revert to their statutory levels, as adjusted for previous years' annual
fluctuations in the CPI. Should this occur, and PTO not increase fees by
CPI fiscal year 1999, PTO fee collections in fiscal year 1999 would be
$182,000,000 less than would be collected under H.R. 3989 and the
President's budget proposal, and $132,000,000 less than would be
collected under H.R. 3723.
This final rule assumes that these bills- and any other statutory change
to patent fees-will not be enacted before October 1, 1998. This final
rule adjusts patent fees to reflect the expiration of the surcharge
established by the Omnibus Budget Reconciliation Act of 1990, as
amended, and to reflect fluctuations in the CPI over the previous twelve
months. Fees collected under this final rule in fiscal year 1999 would
be $171,000,000 less than would be collected under H.R. 3723.
Patent customers should be aware that legislative changes to patent fees
superceding this final rule may occur. If such changes occur, the PTO
will publish a document in the Federal Register to ensure that this
final rule and the fees established herein will not take effect. Patent
customers may wish to refer to the official PTO wbsite (www.uspto.gov)
for the most current fee amounts. Official notices of any fee changes
will appear in the Federal Register and the Official Gazette of the
Patent and Trademark Office.
Background:
Statutory Provisions
Patent fees are authorized by 35 U.S.C. 41 and 35 U.S.C. 376. A fifty
percent reduction in the fees paid under 35 U.S.C. 41(a) and (b) by
independent inventors, small business concerns, and nonprofit
organizations who meet prescribed definitions is required by 35 U.S.C.
41(h).
Subsection 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 (CPI) over the previous 12 months.
Subsection 41(d) of title 35, United States Code, authorizes the
Commissioner to establish fees for all other processing, services, or
materials related to patents to recover the average cost of providing
these services or materials, except for the fees for recording a
document affecting title, for each photocopy, and for each black and
white copy of a patent, and for library services.
Section 376 of title 35, United States Code, authorizes the Commissioner
to set fees for patent applications filed under the Patent Cooperation
Treaty (PCT).
Subsection 41(g) of title 35, United States Code, provides that new fee
amounts established by the Commissioner under section 41 may take effect
thirty days after notice in the Federal Register and the Official
Gazette of the Patent and Trademark Office.
Fee Adjustment Level
The patent fees established by 35 U.S.C. 41(a) and (b) will be adjusted
on October 1, 1998, to reflect fluctuations occurring during the
previous twelve months in the Consumer Price Index for all urban
consumers (CPI-U), and CPI-U adjustments, where applicable, from fiscal
years 1992 through 1997. In calculating these fluctuations, the Office
of Management and Budget (OMB) has determined that the PTO should use
CPI-U data as determined by the Secretary of Labor. However, the
Department of Labor does not make public the CPI-U until approximately
twenty-one days after the end of the month being calculated. Therefore,
the latest CPI-U information available is for the month of May 1998. In
accordance with previous rulemaking methodology, the PTO uses the
Administration's projected CPI-U for the twelve-month period ending
September 30, 1998, which is 2.2 percent. Based on this projection,
patent statutory fees will be adjusted by 2.2
Four patent service fees that are set by statute will not be adjusted.
The four fees that are not being adjusted are the assignment recording
fee, printed patent copy fee, photocopy charge fee, and library service
fee.
The final fee amounts were rounded by applying standard arithmetic rules
so that the amounts rounded would be convenient to the user. Fees
rounded to an even number so that any comparable small entity fee would
be a whole number.
General Procedures
Any 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. For
purposes of determining the amount of the fee to be paid, the date of
mailing indicated on a proper Certificate of Mailing or Transmission,
where authorized under 37 CFR 1.8, will be considered to be the date of
receipt in the PTO. A Certificate of Mailing or Transmission under
Section 37 CFR 1.8(a)(1) is not proper for items which are specifically
excluded under 37 CFR 1.8(a)(2). 37 CFR 1.8(a)(2) should be consulted to
determine those items for which a Certificate of Mailing or Transmission
is not proper. Such items include, among other things, the filing of
national and international applications for patents and the filing of
trademark applications. In addition, the provisions of 37 CFR 1.10
relating to filing papers and fees using the "Express Mail" service of
the United States Postal Service (USPS) do apply to any paper or fee
(including patent and trademark applications) to be filed in the PTO. If
an application or fee is filed by "Express Mail" with a date of deposit
with the USPS (shown by the "date in" on the "Express Mail" mailing
label) which is dated on or after the effective date of the rules, as
amended, the amount of the fee to be paid would be the fee established
by the amended rules.
Discussion of Specific Rules
37 CFR 1.16 National application filing fees.
Section 1.16, paragraphs (a) through (d), and (f) through (j), is
revised to adjust fees established therein to reflect the expiration of
the patent fee surcharge established by the Omnibus Budget
Reconciliation Act of 1990, as amended, and fluctuations in the CPI.
37 CFR 1.17 Patent application processing fees.
Section 1.17, paragraphs (a) through (d), (l), (m), (r), and (s), is
revised to adjust fees established therein to reflect the expiration of
the patent fee surcharge established by the Omnibus Budget
Reconciliation Act of 1990, as amended, and fluctuations in the CPI.
37 CFR 1.18 Patent issue fees.
Section 1.18, paragraphs (a) through (c), is revised to adjust fees
established therein to reflect the expiration of the patent fee
surcharge established by the Omnibus Budget Reconciliation Act of 1990,
as amended, andfluctuations in the CPI.
37 CFR 1.20 Post-issuance fees.
Section 1.20, paragraphs (d) through (g), is revised to adjust fees
established therein to reflect the expiration of the patent fee
surcharge established by the Omnibus Budget Reconciliation Act of 1990,
as amended, and fluctuations in the CPI.
37 CFR 1.21 Miscellaneous fees and charges.
Section 1.21, paragraphs (a)(6)(ii), is revised to adjust fees
established therein to recover costs.
37 CFR 1.492 National stage fees.
Section 1.492, paragraphs (a) through (d), is revised to adjust fees
established therein to reflect the expiration of the patent fee
surcharge established by the Omnibus Budget Reconciliation Act of 1990,
as amended, and fluctuations in the CPI.
Other Considerations
This final rule contains no information collection within the meaning of
the Paperwork Reduction Act of 1995, 44 U.S.C. 3501 et seq. This final
rule has been determined to be not significant for purposes of Executive
Order 12866.
Prior notice and opportunity for public comment for patent fee chnages
is not required by the patent statutes or the Administrative Procedure
Act. While the patent statutes specifically require that changes to
patent fees shall not take effect "until at least 30 days after notice
of the fee has been published in the Federal Register and in the
Official Gazette of the Patent and Trademark Office," 35 U.S.C. 41(g),
they do not require any additional publication of proposed fee changes.
In addition, changes in patent fees are exempted from the notice of
proposed rulemaking requirements of the Administrative Procedure Act
under 5 U.S.C. 553(a)(2) as the establishmnet of fee amounts is a matter
related to agency management.
As prior notice and an opportunity for public comment are not required
pursuant ot 5 U.S.C. 553, or any other law, the analytical requirements
of the Regulatory Flexibility Act, 5 U.S.C. 601 et seq., are
inapplicable.
A comparison of fee amounts for fiscal year 1998, this final rule for
fiscal year 1999, H.R. 3723, and H.R. 3989 are included as an Appendix
to this final rule.
List of Subjects
37 CFR Part 1
Administrative practice and procedure, Inventions and patents, Reporting
and record keeping requirements, Small businesses.
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. 6, unless otherwise noted.
2. Section 1.16 is amended by revising paragraphs (a) through (d), and
(f) through (j) to read as follows:
1.16 National application filing fees.
(a) Basic fee for filing each application for an original patent, except
provisional, design or plant applications:
By a small entity ( 1.9(f)) $305.00
By other than a small entity $610.00
(b) In addition to the basic filing fee in an original application,
except provisional applications, for filing or later presentation of
each independent claim in excess of 3:
By a small entity ( 1.9(f)) $32.00
By other than a small entity $64.00
(c) In addition to the basic filing fee in an original application,
except provisional applications, for filling or later presentation of
each claim in excess of 20:
By a small entity ( 1.9(f)) $7.00
By other than a small entity $14.00
(d) In addition to the basic filing fee in an original application,
except provisional applications, if the application contains, or is
amended to contain, a multiple dependent claim(s), per application:
By a small entity ( 1.9(f)) $105.00
By other than a small entity $210.00
*****
(f) Basic fee for filing each design application
By a small entity ( 1.9(f)) $130.00
By other than a small entity $260.00
(g) Basic fee for filing each plant application, except provisional
applications:
By a small entity ( 1.9(f)) $195.00
By other than a small entity $390.00
(h) Basic fee for filing each reissue application:
By a small entity ( 1.9(f)) $305.00
By other than a small entity $610.00
(i) In addition to the basic filing fee in a reissue application, for
filing or later presentation of each independent claim which is in
excess of the number of independent claims in the original patent:
By a small entity ( 1.9(f)) $32.00
By other than a small entity $64.00
(j) In addition to the basic filing fee in a reissue application, for
filing or later presentation of each claim in excess of 20 and also in
excess of the number of claims in the original patent:
By a small entity ( 1.9(f)) $7.00
By other than a small entity $14.00
*****
3. Section 1.17 is amended by revising (a)(i) through (5), (b) through
(d), (l), (m), (r), and (s) to read as follows:
1.17 Patent application processing fees.
(a) ***
(1) For reply within first month:
By a small entity ( 1.9(f)) $45.00
By other than a small entity $90.00
(2) For reply within second month:
By a small entity ( 1.9(f)) $155.00
By other than a small entity $310.00
(3) For reply within third month:
By a small entity ( 1.9(f)) $355.00
By other than a small entity $710.00
(4) For reply within fourth month:
By a small entity ( 1.9(f)) $550.00
By other than a small entity $1,100.00
(5) For reply within fifth month:
By a small entity ( 1.9(f)) $750.00
By other than a small entity $1,500.00
(b) For filing a notice of appeal from the examiner to the Board of
Patent Appeals and Interferences:
By a small entity ( 1.9 (f)) $125.00
By other than a small entity $250.00
(c) In addition to the fee for filing a notice of appeal, for filing a
brief in support of an appeal:
By a small entity ( 1.9 (f)) $125.00
By other than a small entity $250.00
(d) For filing a request for an oral hearing before the Board of Patent
Appeals and Interferences in an appeal under 35 U.S.C. 134:
By a small entity ( 1.9(f)) $105.00
By other than a small entity $210.00
*****
(l) For filing a petition:
(1) For the revival of an unavoidably abandoned application under 35
U.S.C. 111, 133, 364, or 371, or
(2) For delayed payment of the issue fee under 35 U.S.C. 151:
By a small entity ( 1.9(f)) $45.00
By other than a small entity $90.00
(m) For filing a petition:
(1) For revival of an unintentionally abandoned application, or
(2) For the unintentionally delayed payment of the fee for issuing a
patent:
By a small entity ( 1.9(f)) $490.00
By other than a small entity $980.00
*****
(r) For entry of a submission after final rejection under 1.129(a):
By a small entity ( 1.9(f)) $305.00
By other than a small entity $610.00
(s) For each additional invention requested to be examined under
1.129(b):
By a small entity ( 1.9(f)) $305.00
By other than a small entity $610.00
4. Section 1.18 is revised to read as follows:
1.18 Patent issue fees.
(a) Issue fee for issuing each original or reissue patent, except a
design or plant patent:
By a small entity ( 1.9(f)) $490.00
By other than a small entity $980.00
(b) Issue fee for issuing a design patent:
By a small entity ( 1.9(f)) $175.00
By other than a small entity $350.00
(c) Issue fee for issuing a plant patent:
By a small entity ( 1.9(f)) $235.00
By other than a small entity $470.00
5. Section 1.20 is amended by revising paragraphs (d) through (g) to
read as follows:
1.20 Post issuance fees.
*****
(d) For filing each statutory disclaimer ( 1.321):
By a small entity ( 1.9(f)) $45.00
By other than a small entity $90.00
(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 is due by three years and six
months after the original grant:
By a small entity ( 1.9(f)) $385.00
By other than a small entity $770.00
(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 is due by seven years and six
months after the original grant:
By a small entity ( 1.9(f)) $770.00
By other than a small entity $1,540.00
(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 is due by eleven years and
six months after the original grant:
By a small entity ( 1.9(f)) $1,180.00
By other than a small entity $2,360.00
*****
6. Section 1.21 is amended by revising paragraph (a)(6)(ii) to read as
follows:
1.21 Miscellaneous fees and charges.
*****
(a) ***
(6) ***
(ii) Regrading of afternoon section
(Claim Drafting) $230.00
*****
(7) Section 1.492 is amended by revising paragraphs (a) through (d) to
read as follows:
1.492 National stage fees.
*****
(a) The basic national fee:
(1) Where an international preliminary examination fee as set forth in
1.482 has been paid on the international application to the United
States Patent and Trademark Office:
By a small entity ( 1.9(f)) $270.00
By other than a small entity $540.00
(2) Where no international preliminary examination fee as set forth in
1.482 has been paid to the United States Patent and Trademark Office,
but 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 small entity ( 1.9(f)) $305.00
By other than a small entity $610.00
(3) Where no international preliminary examination fee as set forth in
1.482 has been paid and no 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:
By a small entity ( 1.9(f)) $395.00
By other than a small entity $790.00
(4) Where an international preliminary examination fee as set forth in
1.482 has been paid to the United States Patent and Trademark Office and
the international preliminary examination report 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 the claims presented in the application entering the
national stage (see 1.496(b)):
By a small entity ( 1.9(f)) $39.00
By other than a small entity $78.00
(5) Where a search report on the international application has been
prepared by the European Patent Office or the Japanese Patent Office:
By a small entity ( 1.9(f)) $395.00
By other than a small entity $790.00
(b) In addition to the basic national fee, for filing or later
presentation of each independent claim in excess of 3:
By a small entity ( 1.9(f)) $32.00
By other than a small entity $64.00
(c) In addition to the basic national fee, for filling or later
presentation of each claim (whether independent or dependent) in excess
of 20 (Note that 1.75(c) indicates how multiple dependent claims are
considered for fee calculation purposes.):
By a small entity ( 1.9(f)) $7.00
By other than a small entity $14.00
(d) In addition to the basic national fee, if the application contains,
or is amended to contain, a multiple dependent claim(s), per application:
By a small entity ( 1.9(f)) $105.00
By other than a small entity $210.00
*****
July 17, 1998 BRUCE A. LEHMAN
Assistant Secretary of Commerce and
Commissioner of Patents and Trademarks
[1213 OG 153]