[Federal Register Volume 68, Number 83 (Wednesday, April 30, 2003)]
[Proposed Rules]
[Pages 23092-23094]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 03-10583]



[[Page 23092]]

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DEPARTMENT OF COMMERCE

Patent and Trademark Office

37 CFR Part 1

RIN 0651-AB60


Revision of Patent Fees for Fiscal Year 2004

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Proposed rule.

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SUMMARY: The United States Patent and Trademark Office (referred to as 
``we'', ``us'', or ``our'' in this notice) is proposing to adjust 
certain patent fee amounts 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. The Director is 
authorized to adjust these fees annually by the CPI to recover the 
higher costs associated with doing business.
    Legislation has also been introduced in the Congress that would 
alter our fees. If enacted, this legislation would supersede the fees 
identified in this proposed rule.

DATES: Comments must be submitted on or before May 30, 2003.

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) (Pub. L. 106-113). 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)).
    Legislation has been introduced in the Congress that would alter 
our fees. Customers should be aware that legislative changes to our 
fees would supersede this proposed rule. When such changes occur, we 
will make corresponding rule changes by publication in the Federal 
Register. Customers may wish to refer to our official web site at 
www.uspto.gov for the most current fee amounts. Official notices of any 
fee changes will appear in the Federal Register and the Official 
Gazette of the United States Patent and Trademark Office.

Background

Statutory Provisions

    Patent fees are authorized by 35 U.S.C. 41, 119, 120, 132(b) and 
376. For fees paid under 35 U.S.C. 41(a) and (b) and 132(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.
    Section 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.
    Section 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 standard library service.
    Section 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) 
are proposed to be adjusted on October 1, 2003, to reflect fluctuations 
occurring during the twelve-month period from October 1, 2002, through 
September 30, 2003, in the Consumer Price Index for All Urban Consumers 
(CPI-U). The Office of Management and Budget has advised us that in 
calculating these fluctuations, we should use CPI-U data as determined 
by the Secretary of Labor. In accordance with previous fee-setting 
methodology, we base this fee adjustment on the Administration's 
projected CPI-U for the twelve-month period ending September 30, 2003, 
which is 2.17 percent. Based on this projected CPI-U, patent statutory 
fees are proposed to be adjusted by 2.17 percent. Before the final fee 
amounts are published, the fee amounts may be adjusted based on actual 
fluctuations in the CPI-U published by 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.
    The fee amounts were rounded by applying standard arithmetic rules 
so that the amounts rounded will 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 will be a whole number.

General Procedures

    Any fee amount that is paid on or after the effective date of the 
proposed fee adjustment 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, 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).
    Patent-related 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. See 37 CFR 1.10(a)(1). 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 proposed 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), 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

[[Page 23093]]

(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 1.492 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.

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 Deputy General Counsel for General Law of the United States 
Patent and Trademark Office 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. We received roughly 111,000 patent 
applications (approximately 33 percent of total patent applications) 
last year from small entities. Since the average small entity fee would 
increase by less than $10, with a minimum increase of $1 and a maximum 
increase of $35, there would not be a significant economic impact on a 
substantial number of small entities due to this proposed rule change.

List of Subjects in 37 CFR Part 1

    Administrative practice and procedure, Patents.
    For the reasons set forth in the preamble, we are proposing to 
amend 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 would continue to read 
as follows:

    Authority: 35 U.S.C. 2, unless otherwise noted.
    2. Section 1.16 is proposed to be amended by revising paragraphs 
(a), (b), (d), and (f) through (i) 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))........................   $385.00
    By other than a small entity..............................   $770.00
(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))........................    $43.00
    By other than a small entity..............................    $86.00
 
                                * * * * *
(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))........................   $145.00
    By other than a small entity..............................   $290.00
 
                                * * * * *
(f) Basic fee for filing each design application:
    By a small entity (Sec.   1.27(a))........................   $170.00
    By other than a small entity..............................   $340.00
(g) Basic fee for filing each plant application, except
 provisional applications:
    By a small entity (Sec.   1.27(a))........................   $265.00
    By other than a small entity..............................   $530.00
(h) Basic fee for filing each reissue application:
    By a small entity (Sec.   1.27(a))........................   $385.00
    By other than a small entity..............................   $770.00
(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))........................    $43.00
    By other than a small entity..............................    $86.00
 
                                * * * * *
 

    3. 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) * * *
* * * * *

(2) For reply within second month:
    By a small entity (Sec.   1.27(a))......................     $210.00
    By other than a small entity............................     $420.00
(3) For reply within third month:
    By a small entity (Sec.   1.27(a))......................     $475.00
    By other than a small entity............................     $950.00
(4) For reply within fourth month:
    By a small entity (Sec.   1.27(a))......................     $740.00
    By other than a small entity............................   $1,480.00
(5) For reply within fifth month:
    By a small entity (Sec.   1.27(a))......................   $1,005.00
    By other than a small entity............................   $2,010.00
(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))......................     $165.00
    By other than a small entity............................     $330.00
(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))......................     $165.00
    By other than a small entity............................     $330.00
(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))......................     $145.00
    By other than a small entity............................     $290.00
(e) To request continued examination pursuant to Sec.
 1.114:
    By a small entity (Sec.   1.27(a))......................     $385.00
    By other than a small entity............................     $770.00
 
                                * * * * *
(m) For filing a petition for the 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))......................     $665.00
    By other than a small entity............................   $1,330.00
 
                                * * * * *
(r) For entry of a submission after final rejection under
 Sec.   1.129(a):
    By a small entity (Sec.   1.27(a))......................     $385.00
    By other than a small entity............................     $770.00
(s) For each additional invention requested to be examined
 under Sec.   1.129(b):
    By a small entity (Sec.   1.27(a))......................     $385.00
    By other than a small entity............................     $770.00
(t) For the acceptance of an unintentionally delayed claim     $1,330.00
 for priority under 35 U.S.C. 119, 120, 121, or 365(a) or
 (c) (Sec.  Sec.   1.55 and 1.78)...........................
 

    4. 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))......................     $665.00
    By other than a small entity............................   $1,330.00
(b) Issue fee for issuing a design patent:
    By a small entity (Sec.   1.27(a))......................     $240.00
    By other than a small entity............................     $480.00
(c) Issue fee for issuing a plant patent:
    By a small entity (Sec.   1.27(a))......................     $320.00
    By other than a small entity............................     $640.00
 * * * *
 

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


Sec.  1.20  Post issuance fees.

* * * * *

[[Page 23094]]



(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))......................     $455.00
    By other than a small entity............................     $910.00
(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))......................   $1,045.00
    By other than a small entity............................   $2,090.00
(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))......................   $1,610.00
    By other than a small entity............................   $3,220.00
 * * * *
 

    6. 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))......................     $370.00
    By other than a small entity............................     $740.00
(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))......................     $385.00
    By other than a small entity............................     $770.00
(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))......................     $540.00
    By other than a small entity............................   $1,080.00
 
                                * * * * *
(5) Where a search report on the international application
 has been prepared by the European Patent Office or the
 Japan Patent Office:
    By a small entity (Sec.   1.27(a))......................     $460.00
    By other than a small entity............................     $920.00
(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))......................      $43.00
    By other than a small entity............................      $86.00
 
                                * * * * *
(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))......................     $145.00
    By other than a small entity............................     $290.00
 
                                * * * * *
 


    Dated: April 24, 2003.
James E. Rogan,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
[FR Doc. 03-10583 Filed 4-29-03; 8:45 am]
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