[Federal Register Volume 66, Number 90 (Wednesday, May 9, 2001)]
[Proposed Rules]
[Pages 23642-23645]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 01-11591]


=======================================================================
-----------------------------------------------------------------------

DEPARTMENT OF COMMERCE

Patent and Trademark Office

37 CFR Parts 1 and 2

[Docket No. 991105297-1085-02]
RIN 0651-AB01


Revision of Patent and Trademark Fees for Fiscal Year 2002

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Notice of proposed rulemaking.

-----------------------------------------------------------------------

SUMMARY: The United States Patent and Trademark Office (referred to as 
``we'', ``us'', or ``our'' in this document) is proposing to adjust 
certain patent fee amounts and a trademark fee amount to reflect 
fluctuations in the Consumer Price Index (CPI). Also, we are proposing 
to adjust, by a corresponding amount, a few patent fees that track the 
affected fees. Our Director is authorized to adjust these fees annually 
by the CPI to recover the higher costs associated with doing business. 
In addition, we are proposing to change the maintenance fee 
correspondence address to better serve our customers, and amend a fee 
to reflect current business practice. These proposed amendments would 
keep our fees aligned with the CPI and streamline administrative 
matters.

DATES: Comments must be submitted on or before June 12, 2001.

ADDRESSES: Comments may be submitted by e-mail addressed to 
[email protected]. Comments may also be submitted by mail addressed 
to: Office of Finance, Crystal Park One, Suite 802, Washington, DC, 
20231, or by fax to (703) 305-8007, marked to the attention of Matthew 
Lee.

FOR FURTHER INFORMATION CONTACT: Matthew Lee by e-mail at 
[email protected], by telephone at (703) 305-8051, or by fax at 
(703) 305-8007.

SUPPLEMENTARY INFORMATION: This proposed rule would adjust 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); and section 1113 of 
title 15, United States Code. This proposed rule would also adjust, by 
a corresponding amount, a few patent fees (37 CFR 1.17(e), (r), (s), 
and (t)) that track statutory fees (either 37 CFR 1.16(a) or 1.17(m)).
    In addition, this proposed rule would change the maintenance fee 
correspondence address. The address change for maintenance fee payments 
would benefit our customers by allowing the payments to be processed 
within 24 hours of receipt, rather than the current time frame of three 
to five days. Likewise, the funds would be deposited more quickly with 
the United States Treasury. The address change for other communications 
related to maintenance fees would permit us to respond in a timelier 
manner. Maintenance fee correspondence received at the Box M Fee'' 
address would be forwarded to the appropriate address in Sec. 1.1(d) 
for an indefinite period of time.

Background

Statutory Provisions

    Patent fees are authorized by 35 U.S.C. 41 and 35 U.S.C. 376. For 
fees paid under 35 U.S.C. 41 (a) and (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.
    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.
    Section 1113 of title 15, United States Code, authorizes the 
Director to establish fees for the filing and processing of an 
application for the registration of a trademark or other mark, and for 
all other services and materials relating to trademarks and other 
marks.
    Subsection 1113(a) of title 15, United States Code, allows 
trademark fees to be adjusted once each year to reflect, in the 
aggregate, any fluctuations during the preceding twelve months in the 
CPI.
    Subsection 1113(a) also allows new trademark fee amounts to 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) 
are proposed to be adjusted on October 1, 2001, 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 we should use CPI-U data as determined by the Secretary 
of Labor. In accordance with previous fee-setting methodology, we use 
the Administration's projected CPI-U for

[[Page 23643]]

the twelve-month period ending September 30, 2001, which is 3.6 
percent. Based on this projection, patent statutory fees are proposed 
to be adjusted by 3.6 percent. Before the final fee amounts are 
published, the fees may be adjusted slightly based on updated data 
available from the Secretary of Labor.
    Certain patent processing fees established under 35 U.S.C. 41(d), 
119, 120, 132(b), 376, and Public Law 103-465 (the Uruguay Round 
Agreements Act) are proposed to be adjusted to reflect fluctuations in 
the CPI.
    A trademark processing fee established under 15 U.S.C. 1113 is 
proposed to be adjusted to reflect fluctuations in the CPI.
    The fee amounts were rounded by applying standard arithmetic rules 
so that the amounts rounded would 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 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 
proposed fee increase would be subject to the new fees then 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 our office 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 Sec. 1.8. Items for which a Certificate of 
Mailing or Transmission under Sec. 1.8 are not authorized include, for 
example, for filing of Continued Prosecution Applications (CPAs) under 
Sec. 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 1.1  Addresses for Correspondence With the United States Patent 
and Trademark Office

    Section 1.1, paragraphs (a) and (d), if revised as proposed, would 
change the maintenance fee correspondence address.

37 CFR 1.16  National Application Filing Fees

    Section 1.16, paragraphs (a), (b), (d), (f) through (i), and (k), 
if revised as proposed, would 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)(2) through (a)(5), (b) through (e), 
(m), and (r) through (t), if revised as proposed, would 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), if revised as proposed, 
would adjust fees established therein to reflect fluctuations in the 
CPI.

37 CFR 1.20  Post Issuance Fees

    Section 1.20, paragraphs (e) through (g), if revised as proposed, 
would adjust fees established therein to reflect fluctuations in the 
CPI.

37 CFR 1.21  Miscellaneous Fees and Charges

    Section 1.21, paragraph (o), if revised as proposed, would be 
removed and reserved to reflect current business practice. We no longer 
use or provide access to the Automated Patent System.

37 CFR 1.492  National Stage Fees

    Section 1.492, paragraphs (a)(1) through (a)(3), (a)(5), (b), and 
(d), if revised as proposed, would adjust fees established therein to 
reflect fluctuations in the CPI.

37 CFR 2.6  Trademark Fees

    Section 2.6, paragraph (a)(1), if revised as proposed, would adjust 
the fee established therein to reflect fluctuations in the CPI.

Other Considerations

    This proposed rule contains no information collection requirements 
within the meaning of the Paperwork Reduction Act of 1995, 44 U.S.C. 
3501 et seq. This proposed rule has been determined to be not 
significant for purposes of Executive Order 12866. This proposed rule 
does not contain policies with Federalism implications sufficient to 
warrant preparation of a Federalism Assessment under Executive Order 
13132 (August 4, 1999).
    The Assistant General Counsel for Legislation and Regulation of the 
Department of Commerce has certified to the Chief Counsel for Advocacy, 
Small Business Administration, that the proposed rule change would not 
have a significant economic impact on a substantial number of small 
entities (Regulatory Flexibility Act, 5 U.S.C. 605(b)). The proposed 
rule change increases fees to reflect the change in the CPI as 
authorized by 35 U.S.C. 41(f). Further, the principal impact of the 
major patent fees has already been taken into account in 35 U.S.C. 
41(h)(1), which provides small entities with a fifty-percent reduction 
in the major patent fees. The USPTO received approximately 92,000 
patent applications last year from small entities. Since the average 
small entity fee would increase by less than $14.00, with a minimum 
increase of $2.00 and a maximum increase of $55.00, there will not be a 
significant economic impact on a substantial number of small entities 
due to this proposed rule change.
    A comparison of existing and proposed fee amounts is included as an 
appendix to this notice of proposed rulemaking.

Lists of Subjects

37 CFR Part 1

    Administrative practice and procedure, Inventions and patents, 
Reporting and recordkeeping requirements, Small businesses.

37 CFR Part 2

    Administrative practice and procedure, Courts, Lawyers, Trademarks.
    For the reasons set forth in the preamble, we are proposing to 
amend title 37 of the Code of Federal Regulations, Parts 1 and 2, as 
set forth below.

PART 1--RULES OF PRACTICE IN PATENT CASES

    1. The authority citation for 37 CFR Part 1 would continue to read 
as follows:

    Authority: 35 U.S.C. 2(b)(2), unless otherwise noted.

    2. Section 1.1 is proposed to be amended by revising paragraphs (a) 
introductory text and (d) to read as follows:


Sec. 1.1  Addresses for correspondence with the Patent and Trademark 
Office.

    (a) Except for paragraph (a)(3)(i) and (ii), and (d)(1) of this 
section, all

[[Page 23644]]

correspondence intended for the United States Patent and Trademark 
Office must be addressed to either ``Commissioner of Patents and 
Trademarks, Washington, DC 20231'' or to specific areas within the 
Office as set out in paragraphs (a)(1), (2) and (3)(iii) of this 
section. When appropriate, correspondence should also be marked for the 
attention of a particular office or individual.
* * * * *
    (d) Maintenance fee correspondence. (1) Payments of maintenance 
fees in patents shall be mailed to: United States Patent and Trademark 
Office, P.O. Box 371611, Pittsburgh, PA 15250-1611.
    (2) Other communications related to maintenance fees should be 
additionally marked ``Box M Correspondence.''
* * * * *
    3. Section 1.16 is proposed to be amended by revising paragraphs 
(a), (b), (d), (f) through (i), and (k) to read as follows:


Sec. 1.16  National application filing fees.

    (a) Basic fee for filing each application for an original patent, 
except provisional, design, or plant applications:

By a small entity (Sec. 1.27(a)): $370.00
By other than a small entity: $740.00

    (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 (Sec. 1.27(a)): $42.00
By other than a small entity: $84.00

* * * * *
    (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 (Sec. 1.27(a)): $140.00
By other than a small entity: $280.00

* * * * *
    (f) Basic fee for filing each design application:

By a small entity (Sec. 1.27(a)): $165.00
By other than a small entity: $330.00

    (g) Basic fee for filing each plant application, except provisional 
applications:

By a small entity (Sec. 1.27(a)): $255.00
By other than a small entity: $510.00

    (h) Basic fee for filing each reissue application:

By a small entity (Sec. 1.27(a)): $370.00
By other than a small entity: $740.00

    (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 (Sec. 1.27(a)): $42.00
By other than a small entity: $84.00

* * * * *
    (k) Basic fee for filing each provisional application:

By a small entity (Sec. 1.27(a)): $80.00
By other than a small entity: $160.00

* * * * *
    4. Section 1.17 is proposed to be amended by revising paragraphs 
(a)(2) through (a)(5), (b) through (e), (m), and (r) through (t) to 
read as follows:


Sec. 1.17  Patent application and reexamination processing fees.

    (a) * * *
    (1) * * *
    (2) For reply within second month:

By a small entity (Sec. 1.27(a)): $200.00
By other than a small entity: $400.00

    (3) For reply within third month:

By a small entity (Sec. 1.27(a)): $460.00
By other than a small entity: $920.00

    (4) For reply within fourth month:

By a small entity (Sec. 1.27(a)): $720.00
By other than a small entity: $1,440.00

    (5) For reply within fifth month:

By a small entity (Sec. 1.27(a)): $980.00
By other than a small entity: $1,960.00

    (b) For filing a notice of appeal from the examiner to the Board of 
Patent Appeals and Interferences:

By a small entity (Sec. 1.27(a)): $160.00
By other than a small entity: $320.00

    (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 (Sec. 1.27(a)): $160.00
By other than a small entity: $320.00

    (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 (Sec. 1.27(a)): $140.00
By other than a small entity: $280.00

    (e) To request continued examination pursuant to Sec. 1.114:

By a small entity (Sec. 1.27(a)): $370.00
By other than a small entity: $740.00

* * * * *
    (m) For filing a petition for 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)): $640.00
By other than a small entity: $1,280.00

* * * * *
    (r) For entry of a submission after final rejection under 
Sec. 1.129(a):

By a small entity (Sec. 1.27(a)): $370.00
By other than a small entity: $740.00

    (s) For each additional invention requested to be examined under 
Sec. 1.129(b):

By a small entity (Sec. 1.27(a)): $370.00
By other than a small entity: $740.00

    (t) For the acceptance of an unintentionally delayed claim for 
priority under 35 U.S.C. 119, 120, 121, or 365(a) or (c) (Secs. 1.55 
and 1.78): $1,280.00
    5. Section 1.18 is proposed to be 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 or reissue patent, except a 
design or plant patent:

By a small entity (Sec. 1.27(a)): $640.00
By other than a small entity: $1,280.00

    (b) Issue fee for issuing a design patent:

By a small entity (Sec. 1.27(a)): $230.00
By other than a small entity: $460.00

    (c) Issue fee for issuing a plant patent:

By a small entity (Sec. 1.27(a)): $310.00
By other than a small entity: $620.00

* * * * *
    6. Section 1.20 is proposed to be amended by revising paragraphs 
(e) through (g) to read as follows:


Sec. 1.20  Post issuance fees.

* * * * *
    (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 (Sec. 1.27(a)): $440.00
By other than a small entity: $880.00

    (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 (Sec. 1.27(a)): $1,010.00
By other than a small entity: $2,020.00

    (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

[[Page 23645]]

eleven years and six months after the original grant:

By a small entity (Sec. 1.27(a)): $1,550.00
By other than a small entity: $3,100.00

* * * * *


Sec. 1.21  [Amended]

    7. Section 1.21 is proposed to be amended by removing and reserving 
paragraph (o).
    8. Section 1.492 is proposed to be amended by revising paragraphs 
(a)(1) through (a)(3), (a)(5), (b), and (d) to read as follows:


Sec. 1.492  National stage fees.

* * * * *
    (a) The basic national fee:
    (1) Where an international preliminary examination fee as set forth 
in Sec. 1.482 has been paid on the international application to the 
United States Patent and Trademark Office:

By a small entity (Sec. 1.27(a)): $355.00
By other than a small entity: $710.00

    (2) Where no international preliminary examination fee as set forth 
in Sec. 1.482 has been paid to the United States Patent and Trademark 
Office, but an international search fee as set forth in 
Sec. 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 (Sec. 1.27(a)): $370.00
By other than a small entity: $740.00

    (3)Where no international preliminary examination fee as set 
forth in Sec. 1.482 has been paid and no international search fee as 
set forth in Sec. 1.445(a)(2) has been paid on the international 
application to the United States Patent and Trademark Office:

By a small entity (Sec. 1.27(a)): $520.00
By other than a small entity: $1,040.00

    (4) * * *
    (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 (Sec. 1.27(a)): $445.00
By other than a small entity: $890.00

    (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 (Sec. 1.27(a)): $42.00
By other than a small entity: $84.00

* * * * *
    (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 (Sec. 1.27(a)): $140.00
By other than a small entity: $280.00

* * * * *

PART 2--RULES OF PRACTICE IN TRADEMARK CASES

    1. The authority citation for 37 CFR Part 2 would continue to read 
as follows:

    Authority: 15 U.S.C. 1123; 35 U.S.C. 6, unless otherwise noted.

    2. Section 2.6 is proposed to be amended by revising paragraph 
(a)(1) to read as follows:


Sec. 2.6  Trademark fees.

* * * * *
    (a) * * *

(1) For filing an application, per class: $340.00

* * * * *

    Dated: April 27, 2001.
Nicholas P. Godici.
Acting Under Secretary of Commerce for Intellectual Property and Acting 
Director of the United States Patent and Trademark Office.
[FR Doc. 01-11591 Filed 5-8-01; 8:45 am]
BILLING CODE 3510-16-P