[Federal Register Volume 64, Number 212 (Wednesday, November 3, 1999)]
[Proposed Rules]
[Pages 59701-59702]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 99-28731]



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DEPARTMENT OF COMMERCE

Patent and Trademark Office

37 CFR Part 1

[Docket No.: 991008272-9272-01]
RIN 0651-AB07


 Changes To Permit Payment of Patent and Trademark Office Fees by 
Credit Card

AGENCY: Patent and Trademark Office, Commerce.

ACTION: Notice of proposed rulemaking.

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SUMMARY: The Patent and Trademark Office (Office) is proposing to amend 
the rules of practice to provide for the payment of any patent or 
trademark fee by credit card. The Office previously limited payment by 
credit card to the fees required for information products or for an 
electronic submission with or in a trademark application. The Office is 
proposing to accept payment of any patent fee, trademark fee, or 
information product fee by credit card.

DATES: Comment Deadline Date: To be assured of consideration, written 
comments must be received on or before December 3, 1999. While comments 
may be submitted after this date, the Office cannot ensure that 
consideration will be given to such comments. No public hearing will be 
held.

ADDRESSES: Comments should be sent by electronic mail message over the 
Internet addressed to: [email protected]. Comments may also be 
submitted by mail addressed to: Box Comments--Patents, Assistant 
Commissioner for Patents, Washington, D.C. 20231, or by facsimile to 
(703) 308-6916, marked to the attention of Robert W. Bahr. Although 
comments may be submitted by mail or facsimile, the Office prefers to 
receive comments via the Internet. If comments are submitted by mail, 
the Office would prefer that the comments be submitted on a DOS 
formatted 3\1/2\ inch disk accompanied by a paper copy.
    The comments will be available for public inspection at the Special 
Program Law Office, Office of the Deputy Assistant Commissioner for 
Patent Policy and Projects, located at Room 3-C23 of Crystal Plaza 4, 
2201 South Clark Place, Arlington, Virginia, 22202, and will be 
available through anonymous file transfer protocol (ftp) via the 
Internet (address: ftp.uspto.gov). Since comments will be made 
available for public inspection, information that is not desired to be 
made public, such as an address or phone number, should not be included 
in the comments.

FOR FURTHER INFORMATION CONTACT: Concerning this proposed rule change: 
Robert W. Bahr, by telephone at (703) 305-9285, or by facsimile to 
(703) 308-6916 marked to the attention of Robert W. Bahr.
    Concerning the payment of fees (by credit card or otherwise) in 
general: Matthew Lee, by telephone at (703) 305-8051, by e-mail at 
[email protected], or by facsimile at (703) 305-8007 marked to the 
attention of Matthew Lee.

SUPPLEMENTARY INFORMATION: Patent and Trademark Office (Office) 
practice has been to accept payment of fees for information products by 
credit card, but not to accept patent fees or trademark fees by credit 
card. The Office recently revised 37 CFR 1.23 to expressly permit 
payment of money for fees ``in an electronically filed trademark 
application or electronic submission in a trademark application.'' See 
Trademark Law Treaty Implementation Act Changes, Final Rule Notice, 64 
FR 48989, 48917 (September 8, 1999), 1226 Off. Gaz. Pat. Office 103, 
120 (September 23, 1999). As explained in that final rule notice:

    Section 1.23 is also amended to add a paragraph (b), providing 
that payments of money for fees in electronically filed trademark 
applications, or electronic submissions in trademark applications, 
may also be made by credit card. The Office previously limited fee 
payment by credit card to the fees required for information 
products, and will continue to accept payment of information product 
fees by credit card.
    Section 1.23(b) will also provide that payment of a fee by 
credit card must specify the amount to be charged and such other 
information as is necessary to process the charge, and is subject to 
collection of the fee.
    Section 1.23(b) will further provide that the Office will not 
accept a general authorization to charge fees to a credit card. The 
Office cannot accept an authorization to charge ``all required 
fees'' or ``the filing fee'' to a credit card, because the Office 
cannot determine with certainty the amount of an unspecified fee 
(the amount of the ``required fee'' or the applicable ``filing 
fee'') within the time frame for reporting a charge to the credit 
card company. Also, the Office cannot accept charges to credit cards 
that require the use of a personal identification number (PIN) 
(e.g., certain debit cards or check cards).
    Section 1.23(b) also contains a warning that if credit card 
information is provided on a form or document other than a form 
provided by the Office for the payment of fees by credit card, the 
Office will not be liable if the credit card number is made public. 
The Office currently provides an electronic form for use when paying 
a fee in an electronically filed trademark application or electronic 
submission in a trademark application. This form will not be 
included in the records open to public inspection in the file of a 
trademark matter. However, the inclusion of credit card information 
on forms or documents other than the electronic form provided by the 
Office may result in the release of credit card information.

    See Trademark Law Treaty Implementation Act Changes, 64 FR at 
48906-07, 1226 Off. Gaz. Pat. Office at 110. The Office is now 
proposing to revise the rules of practice to expressly accept payment 
of any patent fee, trademark fee, or information product fee by credit 
card, subject to actual collection of the fee.
    The Office will provide a Credit Card Payment Form (PTO-2038) for 
use when paying a patent or trademark fee (or the fee for an 
information product) by credit card. The Office will not require 
customers to use this form when paying a patent or trademark fee by 
credit card. If, however, a customer provides a credit card charge 
authorization in another form or document (e.g., a communication 
relating to the patent or trademark), the credit card information may 
become part of the record of an Office file that is open to public 
inspection. Information concerning fees in general is posted on the 
Office's Web site at http://www.uspto.gov, and information on 
completing the Credit Card Payment Form will be posted on the Office's 
Web site.
    The Office will not include the Credit Card Payment Form (PTO-2038) 
among the records open to public inspection in the file of a patent, 
trademark registration, or other proceeding. The Credit Card Payment 
Form (PTO-2038) is the only form the Office uses to collect credit card 
information and is the only form the Office will not make available to 
the public as part of the file of a patent, trademark, or other 
proceeding. As discussed above, failure to use the Credit Card Payment 
Form (PTO-2038) when submitting a credit card payment may result in 
your credit card information becoming part of the record of a Patent 
and Trademark Office file that is open to public inspection. If the 
cardholder includes a credit card number on any form or document other 
than the Credit Card Payment Form, the Patent and Trademark Office will 
not be liable in the event that the credit card number becomes public 
knowledge.
    Discussion of Specific Rules: Title 37 of the Code of Federal 
Regulations, Part 1, is proposed to be amended as follows:
    Section 1.21: Section 1.21(m) is proposed to be amended to make the 
$50.00 fee for processing a check returned ``unpaid'' by a bank 
applicable to any payment refused or charged back by a financial 
institution. The burden of processing any payment refused or credit 
card transaction charged back by

[[Page 59702]]

a financial institution is the same as the burden of processing a check 
returned ``unpaid'' by a bank. The phrase ``payment refused * * * by a 
financial institution'' includes a check returned ``unpaid'' by a bank 
but also applies to the refusal by a financial institution of a payment 
by other means.
    Section 1.23: Section 1.23(b) is proposed to be amended by revising 
the first sentence to eliminate the restriction that the payment of 
money required for Patent and Trademark Office fees by credit card be 
limited to fees ``in an electronically filed trademark application or 
electronic submission in a trademark application.''
    Review under the Paperwork Reduction Act of 1995 and Other 
Considerations. This notice is in conformity with the requirements of 
the Regulatory Flexibility Act (5 U.S.C. 601 et seq.), Executive Order 
12612 (October 26, 1987), and the Paperwork Reduction Act of 1995 (44 
U.S.C. 3501 et seq.). It has been determined that this rulemaking is 
not significant for the purposes of Executive Order 12866 (September 
30, 1993).
    This notice involves information collection requirements which are 
subject to review by the Office of Management and Budget (OMB) under 
the Paperwork Reduction Act of 1995 (44 U.S.C. 3501 et seq.). As 
required by the Paperwork Reduction Act of 1995 (44 U.S.C. 3507(d)), 
the Patent and Trademark Office has submitted an information collection 
package to OMB for its review and approval. The title, description, and 
respondent description for this information collection is shown below 
with an estimate of the annual reporting burdens. Included in the 
estimate is the time for reviewing instructions, searching existing 
data sources, gathering and maintaining the data needed, and completing 
and reviewing the collection of information.
    Title: Patent and Trademark Office Fees.
    Form Number: PTO-2038.
    Type of Review: A new collection.
    Affected Public: Individuals or households, businesses or other 
for-profit, not-for-profit institutions, farms, state, local or tribal 
governments, and the Federal Government.
    Estimated Number of Respondents: 100,000 responses per year.
    Estimated Time Per Response: 12 minutes.
    Estimated Total Annual Respondent Burden Hours: 20,000 hours per 
year.
    Needs and Uses: Persons submitting fees to the Patent and Trademark 
Office need to provide information concerning the purpose for the fee 
so that the Patent and Trademark Office is able to: (1) Apply the fee 
to the particular application, patent, trademark registration, or other 
proceeding, service or product; and (2) determine whether the person 
has submitted the fee(s) required by law or regulation. The Credit Card 
Form provides the public with a convenient manner of paying a patent 
application or service fee, trademark application or service fee, or 
information product fee by credit card.
    Comments are invited on: (a) Whether the collection of information 
is necessary for proper performance of the functions of the agency; (b) 
the accuracy of the agency's estimate of the burden; (c) ways to 
enhance the quality, utility, and clarity of the information to be 
collected; and (d) ways to minimize the burden of the collection of 
information to respondents.
    Interested persons are requested to send comments regarding the 
burden estimate or any other aspects of the information requirements, 
including suggestions for reducing the burden, to Robert J. Spar, 
Director, Special Program Law Office, Patent and Trademark Office, 
Washington, D.C. 20231, or to the Office of Information and Regulatory 
Affairs of OMB, New Executive Office Building, 725 17th Street, N.W., 
Room 10235, Washington, D.C. 20503, Attention: Desk Officer for the 
Patent and Trademark Office.
    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.
    The Chief Counsel for Regulation of the Department of Commerce 
certified to the Chief Counsel for Advocacy, Small Business 
Administration, that the changes proposed in this notice if adopted 
would not have a significant impact on a substantial number of small 
entities (Regulatory Flexibility Act, 5 U.S.C. 605(b)). The Office does 
not currently permit patent or trademark fees (except in an 
electronically filed trademark application or electronic submission in 
a trademark application) to be paid by credit card. The changes 
proposed in this notice if adopted would permit small entities as well 
as non-small entities the option of paying any patent or trademark fee 
by credit card. Small entities as well as non-small entities will 
continue to have the option of paying any patent or trademark fee by 
check, treasury note, money order, or charge to a deposit account. 
Based upon the number of small entities who pay fees to the Patent and 
Trademark Office each year and the percentage of fee payments that are 
by credit card (where currently permitted), the Office expects 16,000 
small entities to pay a patent or trademark fee by credit card each 
year. Thus, the changes proposed in this notice if adopted would not 
have a significant economic impact on any business.
    This notice of proposed rulemaking does not contain policies with 
federalism implications sufficient to warrant preparation of a 
Federalism Assessment under Executive Order 12612 (October 26, 1987).

List of Subjects in 37 CFR Part 1

    Administrative practice and procedure, Courts, Freedom of 
Information, Inventions and patents, Reporting and recordkeeping 
requirements, Small businesses.
    For the reasons set forth in the preamble, 37 CFR Part 1 is 
proposed to be amended as follows:

PART 1--RULES OF PRACTICE IN PATENT CASES

    1. The authority citation for 37 CFR Part 1 is revised to read as 
follows:

    Authority: 35 U.S.C. 6, unless otherwise noted.

    2. Section 1.21 is amended by revising paragraph (m) to read as 
follows:


Sec. 1.21  Miscellaneous fees and charges.

* * * * *
    (m) For processing each payment refused (including a check returned 
``unpaid'') or charged back by a financial institution-- $50.00
* * * * *
    3. Section 1.23 is amended by revising the first sentence of 
paragraph (b) to read as follows:


Sec. 1.23  Method of payment.

* * * * *
    (b) Payments of money required for Patent and Trademark Office fees 
may also be made by credit card. * * *
* * * * *

    Dated: October 29, 1999.
Robert M. Anderson,
Acting Assistant Secretary of Commerce and Acting Commissioner of 
Patents and Trademarks.
[FR Doc. 99-28731 Filed 11-2-99; 8:45 am]
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