AGENCY:
United States Patent and Trademark Office, Commerce.
ACTION:
Final rule.
SUMMARY:
The United States Patent and Trademark Office (USPTO) is amending the rules of practice in patent cases to adjust certain patent fee amounts to reflect fluctuations in the Consumer Price Index (CPI). The USPTO is also amending the description of two fees to reflect current business practice.
EFFECTIVE DATE:
October 1, 2000.
FOR FURTHER INFORMATION CONTACT:
Matthew Lee by telephone at (703) 305-8051, by fax at (703) 305-8007, or by e-mail at matthew.lee@uspto.gov.
SUPPLEMENTARY INFORMATION:
This final rule adjusts our fees in accordance with the applicable provisions of title 35, United States Code, as amended by the Consolidated Appropriations Act, Fiscal Year 2000 (which incorporated the Intellectual Property and Communications Omnibus Reform Act of 1999) (Public Law 106-113).
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)(1).
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 CPI over the previous twelve months.
Subsection 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 library services.
Section 376 of title 35, United States Code, authorizes the Director 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 Director under section 41 may take effect thirty days after notice in the Federal Register and the Official Gazette of the United States Patent and Trademark Office.
Fee Adjustment Level
The patent statutory fees established by 35 U.S.C. 41(a) and (b) will be adjusted on October 1, 2000, to reflect any fluctuations occurring during the previous twelve months in the Consumer Price Index for all urban consumers (CPI-U). In calculating these fluctuations, the Office of Management and Budget (OMB) has determined that the USPTO should use CPI-U data as determined by the Secretary of Labor. In accordance with previous fee-setting methodology, the USPTO uses the Administration's projected CPI-U for the twelve-month period ending September 30, 2000, which is 2.68 percent. Based on this projection, patent statutory fees will be adjusted by 2.68 percent.
Certain patent processing fees established under 35 U.S.C. 41(d), 132(b), 376, and Public Law 103-465 (the Uruguay Round Agreements Act) will be adjusted to reflect fluctuations in the CPI.
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 fee amounts were rounded by applying standard arithmetic rules so that the amounts rounded would be convenient to the user. Fees of $100 or more were rounded to the nearest $10. Fees between $2 and $99 were 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 fee increase 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 our office. A Certificate of Mailing or Transmission under § 1.8 is not proper for items which are specifically excluded from the provisions of § 1.8. Items for which a Certificate of Mailing or Transmission under § 1.8 are not proper include, for example, for filing of Continued Prosecution Applications (CPAs) under § 1.53(d) and other national and international applications for patents. See 37 CFR 1.8(a)(2).
Under 37 CFR 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 our 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.
To ensure clarity in the implementation of the new fees, a discussion of specific sections is set forth below.
Discussion of Specific Rules
37 CFR 1.16 National Application Filing Fees
Section 1.16, paragraphs (a), (b), (d), and (f) through (i), are revised to adjust fees established therein to reflect fluctuations in the CPI.
37 CFR 1.17 Patent Application Processing Fees
Section 1.17, paragraphs (a)(2) through (a)(5), (b) through (e), (m), (r), and (s), are revised to adjust fees established therein to reflect fluctuations in the CPI.
37 CFR 1.18 Patent Issue Fees
Section 1.18, paragraphs (a) through (c), are revised to adjust fees established therein to reflect fluctuations in the CPI.
37 CFR 1.20 Post-Issuance Fees
Section 1.20, paragraphs (e) through (g), are revised to adjust fees established therein to reflect fluctuations in the CPI.
37 CFR 1.21 Miscellaneous Fees and Charges
Section 1.21, paragraph (a)(6), is revised to amend the description to reflect current business practices.
37 CFR 1.492 National Stage Fees
Section 1.492, paragraphs (a), (b), and (d), are revised to adjust fees established therein to reflect 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. This final rule does not contain policies with Federalism implications sufficient to warrant preparation of a Federalism Assessment under Executive Order 13132 (August 4, 1999).
Prior notice and opportunity for public comment for patent fee changes are not required by the Patent Statute or the Administrative Procedure Act. While the Patent Statute specifically requires 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 United States Patent and Trademark Office,” 35 U.S.C. 41(g), the statute does 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 establishment of fee amounts is a matter related to agency management.
As prior notice and an opportunity for public comment are not required pursuant to 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 existing and new fee amounts is included as an Appendix to this final rule.
List of Subjects in 37 CFR Part 1
- Administrative practice and procedure
- Inventions and patents
- Reporting and recordkeeping requirements
- Small businesses
For the reasons set forth in the preamble, the USPTO is amending title 37 of the Code of Federal Regulations, Part 1, as set forth below.
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 revising paragraphs (a), (b), (d), and (f) through (i) to read as follows:
(a) Basic fee for filing each application for an original patent, except provisional, design, or plant applications:
By a small entity (§ 1.9(f))—$355.00
By other than a small entity—$710.00
(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))—$40.00
By other than a small entity—$80.00
(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))—$135.00
By other than a small entity—$270.00
(f) Basic fee for filing each design application:
By a small entity (§ 1.9(f))—$160.00
By other than a small entity—$320.00
(g) Basic fee for filing each plant application, except provisional applications:
By a small entity (§ 1.9(f))—$245.00
By other than a small entity—$490.00
(h) Basic fee for filing each reissue application:
By a small entity (§ 1.9(f))—$355.00
By other than a small entity—$710.00
(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))—$40.00
By other than a small entity—$80.00
3. Section 1.17 is amended by revising paragraphs (a)(2) through (a)(5), (b) through (e), (m), (r), and (s) to read as follows:
(a) * * *
(1) * * *
(2) For reply within second month:
By a small entity (§ 1.9(f))—$195.00
By other than a small entity—$390.00
(3) For reply within third month:
By a small entity (§ 1.9(f))—$445.00
By other than a small entity—$890.00
(4) For reply within fourth month:
By a small entity (§ 1.9(f))—$695.00
By other than a small entity—$1,390.00
(5) For reply within fifth month:
By a small entity (§ 1.9(f))—$945.00
By other than a small entity—$1,890.00
(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))—$155.00
By other than a small entity—$310.00
(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))—$155.00
By other than a small entity—$310.00
(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))—$135.00
By other than a small entity—$270.00
(e) To request continued examination pursuant to § 1.114:
By a small entity (§ 1.9(f))—$355.00
By other than a small entity—$710.00
(m) For filing a petition for the revival of an unintentionally abandoned application or the unintentionally delayed payment of the issue fee under 35 U.S.C. 41(a)(7) (§ 1.137(b)):
By a small entity (§ 1.9(f))—$620.00
By other than a small entity—$1,240.00
(r) For entry of a submission after final rejection under § 1.129(a):
By a small entity (§ 1.9(f))—$355.00
By other than a small entity—$710.00
(s) For each additional invention requested to be examined under § 1.129(b):
By a small entity (§ 1.9(f))—$355.00
By other than a small entity—$710.00
4. Section 1.18 is revised to read as follows:
(a) Issue fee for issuing each original or reissue patent, except a design or plant patent:
By a small entity (§ 1.9(f))—$620.00
By other than a small entity—$1,240.00
(b) Issue fee for issuing a design patent:
By a small entity (§ 1.9(f))—$220.00
By other than a small entity—$440.00
(c) Issue fee for issuing a plant patent:
By a small entity (§ 1.9(f))—$300.00
By other than a small entity—$600.00
5. Section 1.20 is amended by revising paragraphs (e) through (g) to read as follows:
(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))—$425.00
By other than a small entity—$850.00
(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))—$975.00
By other than a small entity—$1,950.00
(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))—$1,495.00
By other than a small entity—$2,990.00
6. Section 1.21 is amended by revising paragraph (a)(6) to read as follows:
(a) * * *
(6) For requesting regrading of an examination under § 10.7(c):
(i) Regrading of seven or fewer questions—$230.00
(ii) Regrading of eight or more questions—$460.00
7. Section 1.492 is amended by revising paragraphs (a), (b), and (d) to read as follows:
(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))—345.00
By other than a small entity—690.00
(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))—355.00
By other than a small entity—710.00
(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))—500.00
By other than a small entity—1,000.00
(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))—50.00
By other than a small entity—100.00
(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))—430.00
By other than a small entity—860.00
(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))—40.00
By other than a small entity—80.00
(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))—135.00
By other than a small entity—270.00
Dated: July 14, 2000.
Q. Todd Dickinson,
Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office.
Note:
The following appendix is provided as a courtesy to the public, but is not a substitute for the rules. It will not appear in the Code of Federal Regulations.
Appendix A—Comparison of Existing and New Fee Amounts
[—Indicates fees remain at FY 2000 amount]
[FR Doc. 00-20354 Filed 8-10-00; 8:45 am]
BILLING CODE 3510-16-P