[Federal Register Volume 66, Number 147 (Tuesday, July 31, 2001)]
[Rules and Regulations]
[Pages 39447-39450]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 01-19021]


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

DEPARTMENT OF COMMERCE

United States Patent and Trademark Office

37 CFR Part 1

[Docket No. 991105297-1167-04]
RIN 0651-AB01


Revision of Patent Fees for Fiscal Year 2002

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Final rule.

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

SUMMARY: The United States Patent and Trademark Office (referred to as 
``we'', ``us'', or ``our'' in this notice) is adjusting certain patent 
fee amounts to reflect fluctuations in the Consumer Price Index (CPI). 
Also, we are adjusting, 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 changing the maintenance fee 
correspondence address to better serve our customers, and amending a 
fee to reflect current business practice. These amendments will keep 
our fees aligned with the CPI and streamline administrative matters. No 
trademark fee will be adjusted.

EFFECTIVE DATE: October 1, 2001.

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

SUPPLEMENTARY INFORMATION: This final rule was proposed in a notice of 
proposed rulemaking published at 66 FR 23642 on May 9, 2001. This 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) (Pub. L. 106-113). This 
final rule also adjusts, 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)). The proposal to adjust a trademark fee has 
been withdrawn; trademark fees are not affected by this final rule.
    In addition, this final rule changes the maintenance fee 
correspondence address. The address change for maintenance fee payments 
benefits 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 are deposited more quickly with the 
United States Treasury. The address change for correspondence related 
to maintenance fees other than payments of maintenance fees in patents 
permits us to respond in a timelier manner. Maintenance fee 
correspondence received at the ``Box M Fee'' address will be forwarded 
to the appropriate address in Sec. 1.1(d).

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.

Fee Adjustment Level

    The patent statutory fees established by 35 U.S.C. 41(a) and (b) 
will 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 the twelve-month period ending September 30, 2001, which is 
3.6 percent. Based on this projection, patent statutory fees will be 
adjusted by 3.6 percent.
    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) will be adjusted to reflect fluctuations in the CPI.
    The fee amounts were rounded by applying standard arithmetic rules 
so that the amounts rounded will be convenient to the user. Fees of 
$100 or more for other than a small entity were rounded to the nearest 
$10. Fees of less than $100 were rounded to an even 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 increase will 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

[[Page 39448]]

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), are revised to 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), 
are 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)(2) through (a)(5), (b) through (e), 
(m), and (r) through (t), are 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), 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 (o), is revised 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), are revised to adjust fees established therein to reflect 
fluctuations in the CPI.

Response to Comments

    We received several comments in response to the notice of proposed 
rulemaking published at 66 FR 23642 on May 9, 2001. The comments and 
our responses to the comments follow:
    Comment: One comment suggested that patentees would likely be 
unaware of the change of address for mailing maintenance fee payments, 
which would result in the patent expiring and the patentee incurring a 
surcharge to reinstate the patent.
    Response: The address change for maintenance fee payments will 
permit the payments to be processed without delay, and the funds to be 
deposited more quickly. Maintenance fee payments received at the old 
mailing address (``Box M Fee'') will be forwarded to the new mailing 
address in Sec. 1.1(d)(1) for processing. Therefore, the patentee will 
not be adversely affected by the address change.
    Comment: One comment recommended that Sec. 1.1(d) be changed so 
that maintenance fee payments receive the date of actual receipt in our 
office or the date reflected on a proper Certificate of Mailing or 
Transmission when sent to the old mailing address (``Box M Fee''). In 
addition, it was also recommended that the address in Sec. 1.1(d)(2) be 
clarified.
    Response: Maintenance fee payments sent inadvertently to the old 
mailing address will receive the date of actual receipt in our office 
or the date reflected on a proper Certificate of Mailing or 
Transmission when forwarded by the office to the new mailing address in 
Sec. 1.1(d)(1) for processing. For example, if we receive a paper that 
does not include a Certificate of Mailing or Transmission on September 
28, 2001, in Box M Fee, the paper will be accorded a date of receipt of 
September 28, 2001. The paper, after we forward it to the new mailing 
address in Sec. 1.1(d)(1) for processing, will continue to be accorded 
the September 28, 2001, date of receipt for processing of the 
maintenance fee. Again, the patentee will not be adversely affected by 
the address change. Section 1.1(d)(2) has been clarified to indicate 
that correspondence related to maintenance fees other than payments of 
maintenance fees in patents must be sent to the Washington, D.C. 
address.
    Comment: Two comments stated that we should not increase fees for 
fiscal year 2002, since millions of dollars are being diverted to fund 
other Federal Government operations and are not being used to improve 
our performance, services, or facilities.
    Response: Our budget for fiscal year 2002 is comprised of the 
expected fiscal year 2002 fee revenue (less a designated carryover 
amount) added to carryover amounts from prior fiscal years. If fees are 
not adjusted by CPI, the anticipated fee revenue for fiscal year 2002 
would be lower; this in turn would reduce the available funding and 
have a negative impact on our operations. Therefore, adjusting our fees 
by CPI is critical to ensure adequate funding is available.

Other Considerations

    This final rule contains no information collection requirements 
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).
    The Chief Counsel for Regulation of the Department of Commerce has 
certified to the Chief Counsel for Advocacy, Small Business 
Administration, that the final rule change will not have a significant 
economic impact on a substantial number of small entities (Regulatory 
Flexibility Act, 5 U.S.C. 605(b)). The final 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. We received 
roughly 92,000 patent applications last year from small entities. Since 
the average small entity fee will 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 final rule change.

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, we are 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 1.1 is amended by revising paragraphs (a) introductory 
text and (d) to read as follows:

[[Page 39449]]

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

    (a) Except for paragraphs (a)(3)(i) and (ii), and (d)(1) of this 
section, all 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 not submitted 
electronically over the Internet should be mailed to: United States 
Patent and Trademark Office, P.O. Box 371611, Pittsburgh, PA 15250-
1611.
    (2) Correspondence related to maintenance fees other than payments 
of maintenance fees in patents is not to be mailed to P.O. Box 371611, 
Pittsburgh, PA 15250-1611, but must be mailed to: Box M Correspondence, 
Commissioner of Patents and Trademarks, Washington, DC 20231.
* * * * *

    3. Section 1.16 is 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 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 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 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

[[Page 39450]]

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 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 amended by removing and reserving paragraph (o).

    8. Section 1.492 is 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

* * * * *

    Dated: July 25, 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. 01-19021 Filed 7-30-01; 8:45 am]
BILLING CODE 3510-16-P