[Federal Register Volume 73, Number 158 (Thursday, August 14, 2008)]
[Rules and Regulations]
[Pages 47534-47542]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: E8-18822]
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DEPARTMENT OF COMMERCE
Patent and Trademark Office
37 CFR Parts 1 and 41
[Docket No. PTO-C02008-0004]
RIN 0651-AC21
Revision of Patent Fees for Fiscal Year 2009
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Final rule.
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SUMMARY: The United States Patent and Trademark Office (Office) is
adjusting certain patent fee amounts for fiscal year 2009 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. In addition,
the Office is correcting the addresses for maintenance fee payments and
correspondence, and deposit account replenishments.
DATES: Effective Date: October 2, 2008.
FOR FURTHER INFORMATION CONTACT: Walter Schlueter by e-mail at
[email protected], by telephone at (571) 272-6299, or by fax
at (571) 273-6299.
SUPPLEMENTARY INFORMATION: The Office is adjusting certain patent fee
amounts in accordance with the applicable provisions of title 35,
United States Code, as amended by the Consolidated Appropriations Act
(Pub. L. 108-447, 118 Stat. 2809 (2004)). In addition, this final rule
changes the addresses for maintenance fee payments and correspondence,
and deposit account replenishments. The addresses are being changed to
reflect the current addresses that should be used.
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.
Section 41(d) of title 35, United States Code, authorizes the
Director 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, for each black and white
copy of a patent, and for standard library service.
Section 41(f) of title 35, United States Code, provides that fee
amounts 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 CPI over the previous twelve months.
Section 41(g) of title 35, United States Code, provides that new
fee amounts established by the Director under 35 U.S.C. 41 may take
effect thirty days after notice in the Federal Register and the
Official Gazette of the United States Patent and Trademark Office.
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)), 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 patent and trademark fee provisions of the fiscal
year 2005 Consolidated Appropriations Act were extended through
September 30, 2008, by subsequent legislation. See 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). Legislation is pending before Congress which, if
enacted, would extend the patent and trademark fee provisions of the
fiscal year 2005 Consolidated Appropriations Act through fiscal year
2009 (through September 30, 2009). See S. 3182, 110th Cong. (2008).
Fee Adjustment Level: The patent statutory fee amounts established
by 35 U.S.C. 41(a) and (b) are adjusted to reflect fluctuations
occurring during the twelve-month period from October 1, 2007, through
September 30, 2008, correspondingly, in the Consumer Price Index for
All Urban Consumers (CPI-U). The Office of Management and Budget has
advised that in calculating these fluctuations, the Office should use
CPI-U data as determined by the Secretary of Labor. In accordance with
previous fee-setting methodology, the Office bases this fee adjustment
on the Administration's CPI-U for the twelve-month period ending
September 30, 2008.
The Office published a notice proposing to adjust the patent fees
charged under 35 U.S.C. 41(a), (b), and (d)(1) for fiscal year 2009 to
reflect fluctuations in the CPI. See Revision of Patent Fees for Fiscal
Year 2009, 73 FR 31655 (June 3, 2008), 1331 Off. Gaz. Pat. Office 97
(June 24, 2008) (proposed rule). While the proposed rule specified fee
amounts based upon a projected CPI-U of 4.0 percent, the proposed rule
indicated that the fee amounts adopted in a final rule may be based
upon the actual fluctuations in the CPI-U as determined by the
Secretary of Labor. See Revision of Patent Fees for Fiscal Year 2009,
73 FR at 31656, 1331-4 Off. Gaz. Pat. Office at 98. After the date the
proposed rule was published, the projected CPI-U for the twelve-month
period prior to the enactment of the fee amount adjustments has
increased from 4.0 percent to 5.0 percent. Thus, this final rule
adjusts the patent fees charged under 35 U.S.C. 41(a), (b), and (d)(1)
by 5.0 percent based upon the current projected fluctuation in the CPI-
U.
The fee amounts were rounded by applying standard arithmetic rules
so that the amounts rounded will be convenient 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 an even
[[Page 47535]]
number so that any comparable small entity fee will be a whole number.
General Procedures: Any fee amount that is paid on or after the
effective date of the fee adjustment is subject to the new fees in
effect. The amount of the fee to be paid will be determined by the time
of filing. 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 Office 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 fee amounts and
change of addresses, a discussion of specific sections is set forth
below.
Discussion of Specific Rules
37 CFR 1.1 Addresses for non-trademark correspondence with the
United States Patent and Trademark Office. Section 1.1, paragraph (d),
is revised to change the maintenance fee payment and correspondence
address.
37 CFR 1.16 National application filing, search, and examination
fees: Section 1.16, paragraphs (a) through (e), (h) through (k), and
(m) through (s), is revised to adjust fees established therein to
reflect fluctuations in the CPI.
37 CFR 1.17 Patent application and reexamination processing fees:
Section 1.17, paragraphs (a), (l), and (m), is revised to adjust fees
established therein to reflect fluctuations in the CPI.
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.
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.
37 CFR 1.25 Deposit accounts: Section 1.25, paragraph (c)(3), is
revised to change the deposit account replenishment address. In
addition, paragraph (c)(4) is removed.
37 CFR 1.492 National stage fees: Section 1.492, paragraphs (a),
(b)(3), (b)(4), (c)(2), (d) through (f), and (j), is revised to adjust
fees established therein to reflect fluctuations in the CPI.
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.
Alternative Fee Amounts if Legislation Extending the Patent and
Trademark Fee Provisions of the Fiscal Year 2005 Consolidated
Appropriations Act Is Not Enacted: If legislation that would extend the
patent and trademark fee provisions of the fiscal year 2005
Consolidated Appropriations Act into fiscal year 2009 is not enacted,
patent fees under 35 U.S.C. 41(a), (b), and (d) will become the patent
fees in effect in the absence of the fiscal year 2005 Consolidated
Appropriations Act. In that event, the Office will publish a final rule
adjusting the patent fees under 35 U.S.C. 41(a), (b), and (d) in effect
in the absence of the fiscal year 2005 Consolidated Appropriations Act
to reflect fluctuations in the Consumer Price Index (CPI-U). The
following table (Table 1) sets out the fee amounts that would be
published in a final rule in the event that legislation extending the
patent and trademark fee provisions of the fiscal year 2005
Consolidated Appropriations Act into fiscal year 2009 is not enacted.
Table 1
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Alternative fee Alternative fee
37 CFR Sec. Fee amount (non- amount (small
small entity) entity)
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1.16(a)................................. Basic filing fee--utility 850.00 425.00
application.
1.16(b)................................. Independent claims in excess of 94.00 47.00
three.
1.16(d)................................. Multiple dependent claim........ 330.00 165.00
1.16(f)................................. Basic filing fee--design 380.00 190.00
application.
1.16(g)................................. Basic filing fee--plant 600.00 300.00
application.
1.16(h)................................. Basic filing fee--reissue 850.00 425.00
application.
1.16(i)................................. Independent claims in excess of 94.00 47.00
three--reissue.
1.16(k)................................. Basic filing fee--provisional 170.00 85.00
application.
1.17(a)(1).............................. Extension for response within 120.00 60.00
first month.
1.17(a)(2).............................. Extension for response within 480.00 240.00
second month.
1.17(a)(3).............................. Extension for response within 1,100.00 550.00
third month.
1.17(a)(4).............................. Extension for response within 1,720.00 860.00
fourth month.
1.17(a)(5).............................. Extension for response within 2,340.00 1,170.00
fifth month.
1.17(m)................................. Petition to revive-- 1,480.00 740.00
unintentionally abandoned
application.
1.18(a)................................. Issue fee--utility application.. 1,480.00 740.00
1.18(b)................................. Issue fee--design application... 530.00 265.00
1.18(c)................................. Issue fee--plant application.... 710.00 355.00
1.20(e)................................. Maintenance fee--due at 3.5 1,020.00 510.00
years.
1.20(f)................................. Maintenance fee--due at 7.5 2,320.00 1,160.00
years.
1.20(g)................................. Maintenance fee--due at 11.5 3,580.00 1,790.00
years.
1.492(a)(1)............................. IPEA--U.S....................... 810.00 405.00
1.492(a)(2)............................. ISA--U.S........................ 850.00 425.00
1.492(a)(3)............................. USPTO not ISA or IPEA........... 1,200.00 600.00
1.492(a)(5)............................. Filing with EPO or JPO search 1,030.00 515.00
report.
1.492(b)................................ Independent claims in excess of 94.00 47.00
three.
1.492(d)................................ Multiple dependent claim........ 330.00 165.00
41.20(b)(1)............................. Notice of appeal................ 370.00 185.00
41.20(b)(2)............................. Brief in support of an appeal... 370.00 185.00
[[Page 47536]]
41.20(b)(3)............................. Request for oral hearing........ 330.00 165.00
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Response to Comments: As discussed previously, the Office published
a notice proposing to adjust the patent fees charged under 35 U.S.C.
41(a), (b), and (d)(1) for fiscal year 2009 to reflect fluctuations in
the CPI. See Revision of Patent Fees for Fiscal Year 2009, 73 FR 31655
et seq., 1331-4 Off. Gaz. Pat. Office 97 et seq. The Office received
one comment (from an individual) in response to this notice. The
comment stated that small entity fees should not be increased, but
rather should be reduced.
The small entity reduction amounts are provided by 35 U.S.C.
41(h)(1) (``fees charged under [35 U.S.C. 41](a), (b) and (d)(1) shall
be reduced by 50 percent with respect to their application to any small
business concern as defined under section 3 of the Small Business Act,
and to any independent inventor or nonprofit organization as defined in
regulations issued by the Director'') and 41(h)(3) (``[t]he fee charged
under [35 U.S.C. 41](a)(l)(A) shall be reduced by 75 percent with
respect to its application to any entity to which [35 U.S.C. 41(h)(1)]
applies, if the application is filed by electronic means as prescribed
by the Director''). The Office has no authority to change (increase or
reduce) the percentage by which the patent fees charged under 35 U.S.C.
41(a), (b), and (d)(1) are reduced for small entities. The Office also
has no authority to adjust the patent fee amounts specified in [35
U.S.C. 41](a), (b) and (d)(1) to reflect fluctuations in the CPI (which
is necessary to recover the higher costs associated with doing
business) only with respect to non-small entities.
Rulemaking Considerations
A. Final Regulatory Flexibility Analysis
1. Description of the reasons that action by the Office is being
considered: The Office is adjusting the patent fees set under 35 U.S.C.
41(a) and (b) to ensure proper funding for effective Office operations.
The patent fee CPI adjustment is a routine adjustment that has
generally occurred on an annual basis to recover the higher costs of
the Office's operations that occur due to the increase in the price of
products and services. The lack of proper funding for effective Office
operations would result in a significant increase in patent pendency
levels.
2. Succinct statement of the objectives of, and legal basis for,
the final rule: The objective of the change is to adjust patent fees
set under 35 U.S.C. 41(a) and (b) to recover the higher costs of Office
operations. 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. 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. 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 Office, however, has formally
adopted 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 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.
Unlike the SBA small business size standards set forth in 13 CFR
121.201, this size standard is not industry-specific. Specifically, the
Office's 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, 1313 Off. Gaz. Pat. Office at 63.
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 rule specifically apply when an
applicant or patentee pays an application filing or national stage
entry fee, search fee, examination fee, excess or multiple dependent
claim fee, application size fee, extension of time fee, notice of
appeal fee, appeal brief fee, request for an oral hearing fee,
disclaimer fee, petition to revive fee, issue fee, or patent
maintenance fee. The following table (Table 2) indicates the applicable
fee, the number of small entity payments of the fee received by the
Office in fiscal year 2007 (number of small entities who paid the
applicable fee in fiscal year 2007), the current small entity fee
amount, the new small entity fee amount, and the net amount of the
small entity fee adjustment.
[[Page 47537]]
Table 2
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Fiscal year 2007
Fee small entity Former fee amount Adjusted fee Fee adjustment
payments amount
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Basic filing fee--utility 41,519 75.00 82.00 7.00
application--electronic filing.....
Basic filing fee--utility 45,832 155.00 165.00 10.00
application (on or after December
8, 2004)...........................
Basic filing fee--utility 66 405.00 425.00 20.00
application (before December 8,
2004)..............................
Basic filing fee--design application 12,846 105.00 110.00 5.00
(on or after December 8, 2004).....
Basic filing fee--design application 11 180.00 190.00 10.00
(before December 8, 2004)..........
Basic filing fee--plant application 327 105.00 110.00 5.00
(on or after December 8, 2004).....
Basic filing fee--plant application 0 285.00 300.00 15.00
(before December 8, 2004)..........
Basic filing fee--provisional 83,712 105.00 110.00 5.00
application........................
Basic filing fee--reissue 181 155.00 165.00 10.00
application (on or after December
8, 2004)...........................
Basic filing fee--reissue 1 405.00 425.00 20.00
application (before December 8,
2004)..............................
Independent claims in excess of 26,418 105.00 110.00 5.00
three..............................
Claims in excess of 20.............. 41,100 25.00 26.00 1.00
Multiple dependent claim............ 2,503 185.00 195.00 10.00
Search fee--utility application (on 86,469 255.00 270.00 15.00
or after December 8, 2004).........
Search fee--plant application (on or 326 155.00 165.00 10.00
after December 8, 2004)............
Search fee--reissue application (on 180 255.00 270.00 15.00
or after December 8, 2004).........
Examination fee--utility application 86,658 105.00 110.00 5.00
(on or after December 8, 2004).....
Examination fee--design application 12,615 65.00 70.00 5.00
(on or after December 8, 2004).....
Examination fee--plant application 327 80.00 85.00 5.00
(on or after December 8, 2004).....
Examination fee--reissue application 191 310.00 325.00 15.00
(on or after December 8, 2004).....
Application size fee greater than 5,469 130.00 135.00 5.00
100 pages..........................
Extension for response within first 30,722 60.00 65.00 5.00
month..............................
Extension for response within second 17,339 230.00 245.00 15.00
month..............................
Extension for response within third 23,818 525.00 555.00 30.00
month..............................
Extension for response within fourth 2,277 820.00 865.00 45.00
month..............................
Extension for response within fifth 2,700 1,115.00 1,175.00 60.00
month..............................
Petition to revive--unavoidably 174 255.00 270.00 15.00
abandoned application..............
Petition to revive--unintentionally 3,271 770.00 810.00 40.00
abandoned application..............
Issue fee--utility application...... 33,718 720.00 755.00 35.00
Issue fee--design application....... 10,398 410.00 430.00 20.00
Issue fee--plant application........ 298 565.00 595.00 30.00
Reexamination independent claims in 37 105.00 110.00 5.00
excess of three....................
Reexamination claims in excess of 20 45 25.00 26.00 1.00
Statutory disclaimer................ 6,248 65.00 70.00 5.00
Maintenance fee--due at 3.5 years... 32,577 465.00 490.00 25.00
Maintenance fee--due at 7.5 years... 20,981 1,180.00 1,240.00 60.00
Maintenance fee--due at 11.5 years.. 8,130 1,955.00 2,055.00 100.00
Filing of PCT application--USPTO 11,807 155.00 165.00 10.00
ISA--national stage................
National stage search fee--search 8,440 205.00 215.00 10.00
report to USPTO....................
National stage search fee--all other 1,029 255.00 270.00 15.00
situations.........................
National stage examination fee--all 11,262 105.00 110.00 5.00
other situations...................
Independent claims in excess of 3,272 105.00 110.00 5.00
three..............................
Claims in excess of 20.............. 5,913 25.00 26.00 1.00
Multiple dependent claim............ 1,178 185.00 195.00 10.00
Application size fee greater than 573 130.00 135.00 5.00
100 pages..........................
Notice of appeal.................... 5,978 255.00 270.00 15.00
Brief in support of an appeal....... 2,640 255.00 270.00 15.00
Request for oral hearing............ 233 515.00 540.00 25.00
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The Office has also 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, 1313 Off. Gaz. Pat. Office at 61.
Therefore, the Office has also considered all other entities paying
patent fees as well. The following table (Table 3) indicates the
applicable fee, the number of non-small entity payments of the fee
received by the
[[Page 47538]]
Office in fiscal year 2007 (number of non-small entities who paid the
applicable fee in fiscal year 2007), the current non-small entity fee
amount, the revised non-small entity fee amount, and the net amount of
the non-small entity fee adjustment.
Table 3
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Fiscal year 2007
Fee non-small entity Former fee amount Adjusted fee Fee adjustment
payments amount
----------------------------------------------------------------------------------------------------------------
Basic filing fee--utility 209,577 310.00 330.00 20.00
application (on or after December
8, 2004)...........................
Basic filing fee--utility 311 810.00 850.00 40.00
application (before December 8,
2004)..............................
Basic filing fee--design application 13,400 210.00 220.00 10.00
(on or after December 8, 2004).....
Basic filing fee--design application 72 360.00 380.00 20.00
(before December 8, 2004)..........
Basic filing fee--plant application 680 210.00 220.00 10.00
(on or after December 8, 2004).....
Basic filing fee--plant application 0 570.00 600.00 30.00
(before December 8, 2004)..........
Basic filing fee--provisional 47,925 210.00 220.00 10.00
application........................
Basic filing fee--reissue 689 310.00 330.00 20.00
application (on or after December
8, 2004)...........................
Basic filing fee--reissue 1 810.00 850.00 40.00
application (before December 8,
2004)..............................
Independent claims in excess of 77,135 210.00 220.00 10.00
three..............................
Claims in excess of 20.............. 102,973 50.00 52.00 2.00
Multiple dependent claim............ 5,944 370.00 390.00 20.00
Search fee--utility application (on 209,135 510.00 540.00 30.00
or after December 8, 2004).........
Search fee--plant application (on or 681 310.00 330.00 20.00
after December 8, 2004)............
Search fee--reissue application (on 688 510.00 540.00 30.00
or after December 8, 2004).........
Examination fee--utility application 209,465 210.00 220.00 10.00
(on or after December 8, 2004).....
Examination fee--design application 13,261 130.00 140.00 10.00
(on or after December 8, 2004).....
Examination fee--plant application 681 160.00 170.00 10.00
(on or after December 8, 2004).....
Examination fee--reissue application 707 620.00 650.00 30.00
(on or after December 8, 2004).....
Application size fee greater than 11,257 260.00 270.00 10.00
100 pages..........................
Extension for response within first 88,684 120.00 130.00 10.00
month..............................
Extension for response within second 42,308 460.00 490.00 30.00
month..............................
Extension for response within third 41,489 1,050.00 1,110.00 60.00
month..............................
Extension for response within fourth 3,105 1,640.00 1,730.00 90.00
month..............................
Extension for response within fifth 3,482 2,230.00 2,350.00 120.00
month..............................
Petition to revive--unavoidably 127 510.00 540.00 30.00
abandoned application..............
Petition to revive--unintentionally 4,180 1,540.00 1,620.00 80.00
abandoned application..............
Issue fee--utility application...... 122,251 1,440.00 1,510.00 70.00
Issue fee--design application....... 12,433 820.00 860.00 40.00
Issue fee--plant application........ 673 1,130.00 1,190.00 60.00
Reexamination independent claims in 132 210.00 220.00 10.00
excess of three....................
Reexamination claims in excess of 20 151 50.00 52.00 2.00
Statutory disclaimer................ 21,218 130.00 140.00 10.00
Maintenance fee--due at 3.5 years... 125,653 930.00 980.00 50.00
Maintenance fee--due at 7.5 years... 88,487 2,360.00 2,480.00 120.00
Maintenance fee--due at 11.5 years.. 42,193 3,910.00 4,110.00 200.00
Filing of PCT application--USPTO 41,842 310.00 330.00 20.00
ISA--national stage................
National stage search fee--search 38,457 410.00 430.00 20.00
report to USPTO....................
National stage search fee--all other 2,429 510.00 540.00 30.00
situations.........................
National stage examination fee--all 41,044 210.00 220.00 10.00
other situations...................
Independent claims in excess of 9,367 210.00 220.00 10.00
three..............................
Claims in excess of 20.............. 14,983 50.00 52.00 2.00
Multiple dependent claim............ 3,998 370.00 390.00 20.00
Application size fee greater than 2,102 260.00 270.00 10.00
100 pages..........................
Notice of appeal.................... 21,646 510.00 540.00 30.00
Brief in support of an appeal....... 11,950 510.00 540.00 30.00
Request for oral hearing............ 736 1,030.00 1,080.00 50.00
----------------------------------------------------------------------------------------------------------------
4. 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
[[Page 47539]]
skills necessary for preparation of the report or record: This rule
does not require any reporting or recordkeeping or incorporate other
compliance requirements. This rule only adjusts patent fees (as
discussed previously) to reflect changes in the CPI.
5. 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 applicable statutes. The Office is adjusting the patent
fee amounts to ensure proper funding for effective Office operations.
The patent fee CPI adjustment is a routine adjustment that has
generally occurred on an annual basis to recover the higher costs of
the Office's operations that occur due to the increase in the price of
products and services. The lack of proper funding for effective Office
operations would result in a significant increase in patent pendency
levels.
6. Identification, to the extent practicable, of all relevant
Federal rules which may duplicate, overlap or conflict with the final
rules: The Office 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 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 Patent Cooperation Treaty
(PCT)).
Nevertheless, the Office believes that there are no other
duplicative or overlapping rules.
B. Executive Order 13132 (Federalism)
This final 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 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).
E. 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
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).
F. 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).
G. 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).
H. 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).
I. 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
United States Patent and Trademark Office has submitted a report
containing the final rule and other required information to the United
States Senate, the United States 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).
J. 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.
K. 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.
L. 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 contain provisions which
involve the use of technical standards.
M. Paperwork Reduction Act
This rule 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.). The
collections of information involved in this rule have been reviewed and
approved by OMB under OMB control numbers 0651-0016, 0651-0021, 0651-
0031, 0651-0032, and 0651-0033. The Office is not resubmitting
information collection packages 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, 0651-0031, 0651-0032,
and 0651-0033. The Office will submit fee revision changes for OMB
control numbers 0651-0016, 0651-0021, 0651-0031, 0651-0032, and 0651-
0033 at the time these collections are resubmitted to OMB for renewal.
[[Page 47540]]
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.
0
For the reasons set forth in the preamble, 37 CFR parts 1 and 41 are
amended as follows:
PART 1--RULES OF PRACTICE IN PATENT CASES
0
1. The authority citation for 37 CFR part 1 continues to read as
follows:
Authority: 35 U.S.C. 2(b)(2).
0
2. Section 1.1 is amended by revising paragraph (d) to read as follows:
Sec. 1.1 Addresses for non-trademark correspondence with the United
States Patent and Trademark Office.
* * * * *
(d) Payments of maintenance fees in patents not submitted
electronically over the Internet, and correspondence related to
maintenance fees may be addressed to: Director of the United States
Patent and Trademark Office, Attn: Maintenance Fee, 2051 Jamieson
Avenue, Suite 300, Alexandria, Virginia 22314.
* * * * *
0
3. Part 1 of 37 CFR is amended immediately after the undesignated
center heading ``Fees and Payment of Money'' to include the following
authority citation:
Authority: Secs. 1.16 to 1.22 also issued under 35 U.S.C. 41,
111, 119, 120, 132(b), 156, 157, 255, 302, and 311, and Public Laws
103-465, and 106-113.
0
4. Section 1.16 is amended by revising paragraphs (a) through (e), (h)
through (k), and (m) through (s) to read as follows:
Sec. 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 (Sec. 1.27(a)) if the application is $82.00
submitted in compliance with the Office electronic filing
system (Sec. 1.27(b)(2))..................................
By a small entity (Sec. 1.27(a))........................... $165.00
By other than a small entity................................. $330.00
(2) For an application filed before December 8, 2004:
By a small entity (Sec. 1.27(a))........................... $425.00
By other than a small entity................................. $850.00
(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 (Sec. 1.27(a))........................... $110.00
By other than a small entity................................. $220.00
(2) For an application filed before December 8, 2004:
By a small entity (Sec. 1.27(a))........................... $190.00
By other than a small entity................................. $380.00
(c) Basic fee for filing each application for an original plant
patent:
(1) For an application filed on or after December 8, 2004:
By a small entity (Sec. 1.27(a))........................... $110.00
By other than a small entity................................. $220.00
(2) For an application filed before December 8, 2004:
By a small entity (Sec. 1.27(a))........................... $300.00
By other than a small entity................................. $600.00
(d) Basic fee for filing each provisional application:
By a small entity (Sec. 1.27(a))........................... $110.00
By other than a small entity................................. $220.00
(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 (Sec. 1.27(a))........................... $165.00
By other than a small entity................................. $330.00
(2) For an application filed before December 8, 2004:
By a small entity (Sec. 1.27(a))........................... $425.00
By other than a small entity................................. $850.00
* * * * *
(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 (Sec. 1.27(a))........................... $110.00
By other than a small entity................................. $220.00
(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 Sec. 1.75(c) indicates how multiple dependent claims
are considered for fee calculation purposes):
By a small entity (Sec. 1.27(a))........................... $26.00
By other than a small entity................................. $52.00
(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 (Sec. 1.27(a))........................... $195.00
By other than a small entity................................. $390.00
(k) Search 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 (Sec. 1.27(a))........................... $270.00
By other than a small entity................................. $540.00
* * * * *
(m) Search fee for each application filed on or after December 8,
2004, for an original plant patent:
By a small entity (Sec. 1.27(a))........................... $165.00
By other than a small entity................................. $330.00
(n) Search fee for each application filed on or after December 8,
2004, for the reissue of a patent:
By a small entity (Sec. 1.27(a))........................... $270.00
By other than a small entity................................. $540.00
(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 (Sec. 1.27(a))........................... $110.00
By other than a small entity................................. $220.00
(p) Examination fee for each application filed on or after December
8, 2004, for an original design patent:
By a small entity (Sec. 1.27(a))........................... $70.00
By other than a small entity................................. $140.00
(q) Examination fee for each application filed on or after December
8, 2004, for an original plant patent:
By a small entity (Sec. 1.27(a))........................... $85.00
By other than a small entity................................. $170.00
(r) Examination fee for each application filed on or after December
8, 2004, for the reissue of a patent:
By a small entity (Sec. 1.27(a))........................... $325.00
By other than a small entity................................. $650.00
(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 (Sec. 1.27(a))........................... $135.00
By other than a small entity................................. $270.00
* * * * *
0
5. Section 1.17 is amended by revising paragraphs (a), (l), and (m) to
read as follows:
[[Page 47541]]
Sec. 1.17 Patent application and reexamination processing fees.
(a) Extension fees pursuant to Sec. 1.136(a):
(1) For reply within first month:
By a small entity (Sec. 1.27(a))........................... $65.00
By other than a small entity................................. $130.00
(2) For reply within second month:
By a small entity (Sec. 1.27(a))........................... $245.00
By other than a small entity................................. $490.00
(3) For reply within third month:
By a small entity (Sec. 1.27(a))........................... $555.00
By other than a small entity................................. $1,110.00
(4) For reply within fourth month:
By a small entity (Sec. 1.27(a))........................... $865.00
By other than a small entity................................. $1,730.00
(5) For reply within fifth month:
By a small entity (Sec. 1.27(a))........................... $1,175.00
By other than a small entity................................. $2,350.00
* * * * *
(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 (Sec. 1.137(a)):
By a small entity (Sec. 1.27(a))........................... $270.00
By other than a small entity................................. $540.00
(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) (Sec.
1.137(b)):
By a small entity (Sec. 1.27(a))........................... $810.00
By other than a small entity................................. $1,620.00
* * * * *
0
6. Section 1.18 is amended by revising paragraphs (a) through (c) to
read as follows:
Sec. 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 small entity (Sec. 1.27(a))........................... $755.00
By other than a small entity................................. $1,510.00
(b) Issue fee for issuing an original design patent:
By a small entity (Sec. 1.27(a))........................... $430.00
By other than a small entity................................. $860.00
(c) Issue fee for issuing an original plant patent:
By a small entity (Sec. 1.27(a))........................... $595.00
By other than a small entity................................. $1,190.00
* * * * *
0
7. Section 1.20 is amended by revising paragraphs (c)(3), (c)(4), and
(d) through (g) to read as follows:
Sec. 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 (Sec. 1.27(a))........................... $110.00
By other than a small entity................................. $220.00
(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 Sec. 1.75(c) indicates
how multiple dependent claims are considered for fee calculation
purposes):
By a small entity (Sec. 1.27(a))........................... $26.00
By other than a small entity................................. $52.00
* * * * *
(d) For filing each statutory disclaimer (Sec. 1.321):
By a small entity (Sec. 1.27(a))........................... $70.00
By other than a small entity................................. $140.00
(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 (Sec. 1.27(a))........................... $490.00
By other than a small entity................................. $980.00
(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 (Sec. 1.27(a))........................... $1,240.00
By other than a small entity................................. $2,480.00
(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 small entity (Sec. 1.27(a))........................... $2,055.00
By other than a small entity................................. $4,110.00
* * * * *
0
8. Section 1.25 is amended by removing paragraph (c)(4) and revising
paragraph (c)(3) to read as follows:
Sec. 1.25 Deposit accounts.
* * * * *
(c) * * *
(3) A payment to replenish a deposit account may be addressed to:
Director of the United States Patent and Trademark Office, Attn:
Deposit Accounts, 2051 Jamieson Avenue, Suite 300, Alexandria, Virginia
22314.
0
9. Section 1.492 is amended by revising paragraphs (a), (b)(3), (b)(4),
(c)(2), (d) through (f) and (j) to read as follows:
Sec. 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 (Sec. 1.27(a))........................... $165.00
By other than a small entity................................. $330.00
(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 (Sec. 1.27(a))........................... $215.00
By other than a small entity................................. $430.00
(4) In all situations not provided for in paragraphs (b)(1),
(b)(2), or (b)(3) of this section:
By a small entity (Sec. 1.27(a))........................... $270.00
By other than a small entity................................. $540.00
(c) * * *
(2) In all situations not provided for in paragraph (c)(1) of this
section:
By a small entity (Sec. 1.27(a))........................... $110.00
By other than a small entity................................. $220.00
(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 (Sec. 1.27(a))........................... $110.00
By other than a small entity................................. $220.00
(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 Sec. 1.75(c) indicates how
multiple dependent claims are considered for fee calculation purposes):
By a small entity (Sec. 1.27(a))........................... $26.00
By other than a small entity................................. $52.00
(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 (Sec. 1.27(a))........................... $195.00
By other than a small entity................................. $390.00
* * * * *
(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
[[Page 47542]]
paper, for each additional 50 sheets or fraction thereof:
By a small entity (Sec. 1.27(a))........................... $135.00
By other than a small entity................................. $270.00
PART 41--PRACTICE BEFORE THE BOARD OF PATENT APPEALS AND
INTERFERENCES
0
10. 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.
0
11. Section 41.20 is amended by revising paragraph (b) to read as
follows:
Sec. 41.20 Fees.
* * * * *
(b) Appeal fees. (1) For filing a notice of appeal from the
examiner to the Board:
By a small entity (Sec. 1.27(a) of this title)............. $270.00
By other than a small entity................................. $540.00
(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 (Sec. 1.27(a) of this title)............. $270.00
By other than a small entity................................. $540.00
(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 (Sec. 1.27(a))........................... $540.00
By other than a small entity................................. $1,080.00
Dated: August 8, 2008.
Margaret J. A. Peterlin,
Deputy Under Secretary of Commerce for Intellectual Property and Deputy
Director of the United States Patent and Trademark Office.
[FR Doc. E8-18822 Filed 8-13-08; 8:45 am]
BILLING CODE 3510-16-P