[Federal Register Volume 65, Number 101 (Wednesday, May 24, 2000)]
[Rules and Regulations]
[Pages 33452-33455]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 00-12992]


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DEPARTMENT OF COMMERCE

Patent and Trademark Office

37 CFR Part 1

[Docket No.: 99100008272-0123-02]
RIN 0651-AB07


Changes to Permit Payment of Patent and Trademark Fees by Credit 
Card

AGENCY: Patent and Trademark Office, Commerce.

ACTION: Final rule.

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

EFFECTIVE DATES: The amendment to Sec. 1.21 is effective July 24, 2000. 
Section 1.23 is effective June 5, 2000.

FOR FURTHER INFORMATION CONTACT:

    Concerning this final rule: Robert W. Bahr, by telephone at (703) 
308-6906, 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: It has been the practice of the United 
States Patent and Trademark Office (Office) to accept payment of fees 
for information products by credit card, but not to accept patent 
process fees or trademark process fees by credit card. The Office 
recently revised 37 CFR 1.23 to expressly permit payment of fees by 
credit card ``in an electronically filed trademark application or 
electronic submission in a trademark application.'' See Trademark Law 
Treaty Implementation Act Changes, Final Rule, 64 FR 48989, 48917 
(September 8, 1999), 1226 Off. Gaz. Pat. Office 103, 120 (September 23, 
1999) (TLTIA Final Rule). As explained in the TLTIA Final Rule:

    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 
(September 8, 1999), 1226 Off. Gaz. Pat. Office at 110.

    The Office is now amending the rules of practice to permit payment 
of any patent process fee, trademark process 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 process or trademark process 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 process or trademark 
process 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 during a patent, trademark, or other proceeding. The Credit 
Card Payment Form (PTO-2038) 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 
an 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 Office will not be liable in the event 
that the credit card number becomes public knowledge.
    35 U.S.C. 42(d) and Sec. 1.26 (which concern refund of patent and 
trademark fees) also apply to requests for refund of fees paid by 
credit card. Any refund of a fee paid by credit card will be by a 
credit to the credit card account to which the fee was charged. The 
Office will not refund a fee paid by credit card by Treasury check, 
electronic funds transfer, or credit to a deposit account (Sec. 1.25).
    Finally, any payment of a patent process or trademark process fee 
by credit card must be in writing (see Sec. 1.2), preferably on the 
Credit Card Payment Form (PTO-2038). If a Credit Card Payment Form or 
other document authorizing the Office to charge a patent

[[Page 33453]]

process or trademark process fee to a credit card does not contain the 
information necessary to charge the fee to the credit card, the 
customer must submit a revised Credit Card Payment Form or document 
containing the necessary information. Office employees will not accept 
oral (telephonic) instructions to complete the Credit Card Payment Form 
or otherwise charge a patent process or trademark process fee (as 
opposed to information product or service fees) to a credit card.

Discussion of Specific Rules

    Title 37 of the Code of Federal Regulations, Part 1, is amended as 
follows:
    Section 1.21: Section 1.21(m) is 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 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(a) is amended to add the phrase 
``national bank notes'' in the first sentence. This phrase was 
inadvertently deleted in the TLTIA Final Rule.
    Section 1.23(b) is amended by revising the first sentence to 
eliminate the restriction that the payment of money required for United 
States 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.''

Response to Comments

    The Office published a notice (Notice of Proposed Rulemaking) 
proposing changes to the rules of practice to implement payment of 
patent and trademark fees by credit card. See Changes to Permit Payment 
of Patent and Trademark Office Fees by Credit Card, Notice of Proposed 
Rulemaking, 64 FR 59701 (November 3, 1999), 1228 Off. Gaz. Pat. Office 
163 (November 23, 1999). The Office received fifteen written comments 
in response to the Notice of Proposed Rulemaking. Most of the comments 
supported changing the rules of practice to permit payment of all 
patent and trademark fees by credit card. Other comments and the 
Office's responses to the comments follow.
    Comment (1): One comment suggested that the Office revise Sec. 1.23 
to permit customers to designate their deposit account as overdraft 
protection for check and credit card payments. The comment further 
suggested that the charge in Sec. 1.21(m) should be less for those 
customers designating their deposit account as overdraft protection for 
check and credit card payments.
    Response: Section 1.25 currently permits customers to provide a 
general authorization to charge fees to a deposit account. Therefore, 
no change to Sec. 1.23 is necessary to permit customers to authorize 
the charging of any fee deficiency (e.g., due to a returned check or 
refused charge) to a deposit account. Since the Office's cost of 
processing the returned check (or refused charge) is not decreased 
because a customer has authorized the charging of the fee deficiency 
resulting from the returned check or refused charge to a deposit 
account, the Office is not providing a lower fee for processing a 
returned check or refused charge in such a situation. Nevertheless, 
customers may still wish to provide an authorization to charge fee 
deficiencies (e.g., due to a returned check or refused charge) to a 
deposit account to avoid the adverse results of non-payment of a fee 
(e.g., loss of a filing date in a trademark application or abandonment 
of a patent or trademark application).
    Comment (2): One comment suggested that the Office permit use of 
direct bank debit cards.
    Response: The Office currently does not accept payment by bank 
debit cards, since these cards usually require the use of a personal 
identification number (or PIN). The Office will add other methods of 
payment (including bank debit cards) as soon as the systems and 
procedures for implementing them have been developed.
    Comment (3): Another comment suggested that the Office permit the 
use of a ``re-chargeable'' credit card (i.e., a card having a pre-
applied balance against which charges may be made).
    Response: A ``re-chargeable'' credit card program would operate in 
a manner similar to the existing deposit account program. Thus, a ``re-
chargeable'' credit card program in addition to the current deposit 
account program does not have sufficient benefit to justify the 
administrative burden of maintaining these two duplicative programs.
    Comment (4): Several comments suggested that the Office permit use 
of an AMERICAN EXPRESS card because it has no upper limit. 
Another comment suggested that the Office permit use of all major 
credit cards, including AMERICAN EXPRESS cards and DINER'S 
CLUB cards. Another comment suggested that if the Office 
intends to accept AMERICAN EXPRESS cards, the language of 
Sec. 1.23 must be changed since AMERICAN EXPRESS does not consider its 
card to be a credit card.
    Response: The Office desires to maximize convenience to its 
customers and is committed to adding additional credit cards and other 
methods of payments as soon as the systems and procedures for 
implementing them have been developed. In the meantime, the Office 
currently accepts charges to the following credit cards: AMERICAN 
EXPRESS, DISCOVER, MASTER CARD, and 
VISA. The Office considers each of these cards to be a 
``credit card'' within the meaning of Sec. 1.23.
    Comment (5): One comment suggested that the Office should retain 
the Credit Card Form (PTO-2038) in the file of the patent or trademark 
proceeding (simply redacting the credit card number) so that third 
parties may determine whether the proper fee was actually authorized 
and paid.
    Response: The Office file of a patent or trademark proceeding in 
which a fee was paid by credit card will contain a printout from the 
Office's Revenue Accounting and Management (RAM) system of the fee 
authorized and paid. When a fee is paid by check in a patent or 
trademark proceeding, the Office file includes only a printout from the 
RAM system of the fee paid and an indication that it was paid by check. 
A copy of the check used to pay the fee is not retained in the file for 
review by third parties. There is no need to have a different practice 
for credit card payments.
    Comment (6): One comment suggested that the proposed change to 
permit patent and trademark payments by credit card is an excellent 
idea, especially if the Office permits the Credit Card Form (PTO-2038) 
to be submitted by facsimile.
    Response: Credit card payments by facsimile will be permitted 
except in situations in which facsimile submission of correspondence is 
not permitted in Sec. 1.6(d). Customers will be responsible for 
transmitting the credit card form to the correct organization within 
the Office by use of the correct facsimile number.
    Comment (7): One comment suggested that the Office should permit a 
general authorization to charge fees to a credit card, rather than 
requiring customers to specify an exact amount. Another comment 
suggested that the Office permit customers to specify a charge

[[Page 33454]]

amount of ``up to and including XX'' (the top estimated fee due).
    Response: The Office currently does not have systems and procedures 
in place to accept authorization to charge an unspecified amount to a 
credit card. However, the Office desires to maximize convenience to its 
customers and is looking into ways for customers to pay by credit card 
without specifying the exact dollar amount.
    Comment (8): One comment suggested that if a customer uses his or 
her own form containing the same information as the Credit Card Form 
(PTO-2038), the Office should accept and treat such information with 
the same liability as with the Credit Card Form (PTO-2038).
    Response: When a customer uses his or her own form containing the 
same information as the Credit Card Form (PTO-2038) in a patent or 
trademark proceeding, the Office will attempt to redact the credit card 
number (except for the last four digits) from the form before it is 
placed in the file of the patent or trademark proceeding. Nevertheless, 
the Office strongly encourages customers to use the Office's Credit 
Card Form (PTO-2038) when paying fees by credit card. The Office will 
not accept liability for release of credit card information when a 
customer chooses to use his or her own form rather than the Office's 
Credit Card Form (PTO-2038).
    Comment (9): One comment suggested that the Office could avoid 
including credit card information in a file open to public inspection 
(as an alternative to the Credit Card Form (PTO-2038)) by assigning a 
number or other identifier to a credit card and permitting the 
customer/cardholder to charge fees to that credit card by reference to 
the pre-assigned number or identifier.
    Response: The Office currently does not store credit card 
information within any financial systems or databases for access by 
fee-processing personnel. The Office desires to maximize convenience to 
its customers and is looking into ways to assign and maintain numbers 
or identifiers for each credit card number. The Office will implement 
such a practice as soon as the necessary systems and procedures have 
been developed.
    Comment (10): One comment suggested that the fees charged by credit 
card institutions for use of a credit card should be borne solely by 
customers who pay fees by credit card. The comment specifically 
suggested that the Office impose a surcharge in excess of the given 
patent or trademark fee on all credit card payments.
    Response: Merchant fees charged for credit card transactions are 
paid by the Department of the Treasury. Processing credit card 
transactions results in lower costs to the Federal Government when 
compared to processing payments made by checks. Therefore, there is no 
need to impose a surcharge for credit card transactions.
    Comment (11): One comment suggested that the Office does not always 
properly expunge information that should not be part of a record open 
to public inspection, so the Office should inform the public of its 
expected compliance rate in another notice of proposed rulemaking 
before adopting a final rule change. Alternatively, the comment 
suggests that the Office should accept liability for any erroneous 
disclosure of credit card information included on the Credit Card Form 
(PTO-2038).
    Response: In view of the overwhelming support for the proposed 
change to permit payment of patent and trademark fees by credit card 
(and for the prompt adoption of such change), the Office considers it 
to be contrary to the public interest to delay the adoption of this 
final rule. The incidental situations in which confidential information 
was inadvertently released to the public do not warrant delay 
particularly since use of a credit card is optional.

Classification

Administrative Procedure Act

    Pursuant to the authority at 5 U.S.C. 553(d)(1), the amendment to 
Sec. 1.23 is excepted from the thirty-day advance publication 
requirement of 5 U.S.C. 553(d) because it relieves a restriction.

Regulatory Flexibility Act

    The Chief Counsel for Regulation of the Department of Commerce has 
certified to the Chief Counsel for Advocacy, Small Business 
Administration, that the changes in this final rule will not have a 
significant impact on a substantial number of small entities 
(Regulatory Flexibility Act, 5 U.S.C. 605(b)). The Office did not 
previously 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 in this final rule 
will 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, national bank 
note, money order, or charge to a deposit account. Based upon the 
number of small entities who pay fees to the 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 in this final 
rule will not have a significant economic impact on any business.

Executive Order 13132

    This rulemaking does not contain policies with federalism 
implications sufficient to warrant preparation of a Federalism 
Assessment under Executive Order 13132 (August 4, 1999).

Executive Order 12866

    This rulemaking has been determined to be not significant for 
purposes of Executive Order 12866 (September 30, 1993).

Paperwork Reduction Act

    This final 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.). As 
required by the Paperwork Reduction Act of 1995 (44 U.S.C. 3507(d)), 
the 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.
    OMB Number: 0651-0043.
    Title: United States Patent and Trademark Office Fees.
    Form Number: PTO-2038.
    Type of Review: Approved through January of 2003.
    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 Office need to 
provide information concerning the purpose for the fee so that the 
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

[[Page 33455]]

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.
    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, Office of Patent Legal Administration, United States 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 United States 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.

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 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. 2(b)(2).


    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 revised to read as follows:


Sec. 1.23  Methods of payment.

    (a) All payments of money required for United States Patent and 
Trademark Office fees, including fees for the processing of 
international applications (Sec. 1.445), shall be made in U.S. dollars 
and in the form of a cashier's or certified check, Treasury note, 
national bank notes, or United States Postal Service money order. If 
sent in any other form, the Office may delay or cancel the credit until 
collection is made. Checks and money orders must be made payable to the 
Director of the United States Patent and Trademark Office. (Checks made 
payable to the Commissioner of Patents and Trademarks will continue to 
be accepted.) Payments from foreign countries must be payable and 
immediately negotiable in the United States for the full amount of the 
fee required. Money sent to the Office by mail will be at the risk of 
the sender, and letters containing money should be registered with the 
United States Postal Service.
    (b) Payments of money required for United States Patent and 
Trademark Office fees may also be made by credit card. Payment of a fee 
by credit card must specify the amount to be charged to the credit card 
and such other information as is necessary to process the charge, and 
is subject to collection of the fee. The Office will not accept a 
general authorization to charge fees to a credit card. 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 becomes public 
knowledge.

    Dated: May 15, 2000.
Q. Todd Dickinson,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
[FR Doc. 00-12992 Filed 5-23-00; 8:45 am]
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