[Federal Register Volume 69, Number 90 (Monday, May 10, 2004)]
[Proposed Rules]
[Pages 25861-25864]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 04-10572]


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DEPARTMENT OF COMMERCE

Patent and Trademark Office

37 CFR Part 1

RIN 0651-AB70


Revision of Patent Fees for Fiscal Year 2005

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

[[Page 25862]]

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 been proposed and passed by the House of 
Representatives that would alter our fee amounts and procedures. The 
United States Patent and Trademark Fee Modernization Act of 2004 (H.R. 
1561) passed the House of Representatives on March 3, 2004. Similar 
legislation is pending in the Senate as S. 1760. If enacted, this 
legislation would supersede certain patent fee amounts identified in 
this proposed rule.

DATES: Comments must be submitted on or before June 9, 2004.

ADDRESSES: You may submit comments, identified by RIN number 0651-AB70, 
by any of the following methods:
     Federal eRulemaking Portal: http://www.regulations.gov. 
Follow the instructions for submitting comments.
     E-mail: [email protected]. Include RIN number 0651-
AB70 in the subject line of the message.
     Fax: (703) 308-5077, marked to the attention of Tamara 
McClure.
     Mail: Mail Stop 16, Director of the U.S. Patent and 
Trademark Office, PO Box 1450, Alexandria, VA 22313-1450, marked to the 
attention of Tamara McClure.
    Instructions: All submissions received must include the agency name 
and Regulatory Information Number (RIN) for this rule making. For 
additional information on the rule making process, see the heading of 
the SUPPLEMENTARY INFORMATION section of this document.

FOR FURTHER INFORMATION CONTACT: Tamara McClure by e-mail at 
[email protected], by telephone at (703) 308-5075, or by fax at 
(703) 308-5077.

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 proposed and passed by the House of 
Representatives that would alter our fee amounts and procedures. The 
United States Patent and Trademark Fee Modernization Act of 2004 (H.R. 
1561) passed the House of Representatives on March 3, 2004. Similar 
legislation is pending in the Senate as S. 1760. Customers should be 
aware that legislative changes to our fees would supersede certain 
patent fees in this proposed rule. If such legislative changes occur, 
we will need to make corresponding changes to the rules of practice to 
conform them to the fees as set forth in such legislation. Customers 
may wish to refer to our official Web site at http://www.uspto.gov for 
the most current fee amounts.

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, 2004, to reflect fluctuations 
occurring during the twelve-month period from October 1, 2003, through 
September 30, 2004, 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, 2004, 
which is 1.1 percent. Based on this projected CPI-U, patent statutory 
fees are proposed to be adjusted by 1.1 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), (g) and (h), if revised as proposed, 
would adjust fees established therein to reflect fluctuations in the 
CPI.

[[Page 25863]]

    37 CFR 1.17 Patent application and reexamination processing fees
    Section 1.17, paragraphs (a)(3) through (a)(5), (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 1.492 National stage fees
    Section 1.492, paragraphs (a)(1) through (a)(3), and (a)(5) 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)).
    By statute, the USPTO's Director is expressly authorized to adjust 
fees annually to reflect fluctuations in the CPI. See 35 U.S.C. 41(f) 
(certain fees ``may be adjusted by the Director on October 1, 1992, and 
every year thereafter, to reflect any fluctuations occurring during the 
previous 12 months in the Consumer Price Index, as determined by the 
Secretary of Labor'').
    The proposed rule increases fees to reflect the change in the CPI 
as authorized by 35 U.S.C. 41(f). The fee increases would range from a 
minimum of $10 to a maximum of $40 under the proposed rule.
    Under 35 U.S.C. 41(h)(1) small entities are accorded a fifty-
percent reduction in most patent fees. Consequently, the small entity 
fee increases would range from a minimum of $5 to a maximum of $20 
under the proposed rule. The sole exception under this proposed rule 
package is the fee set forth under 35 CFR 1.17(t), which does not 
qualify for a small entity fee reduction. The fee increase for 35 CFR 
1.17(t) is only $10.
    Accordingly, the proposed rule does not have a significant economic 
impact on a substantial number of small entities.

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), (g), and (h) 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)).....................      $390.00
    By other than a small entity...........................      $780.00
 

* * * * *

(g) Basic fee for filing each plant application, except
 provisional applications:
    By a small entity (Sec.   1.27(a)).....................      $270.00
    By other than a small entity...........................      $540.00
(h) Basic fee for filing each reissue application:
    By a small entity (Sec.   1.27(a)).....................      $390.00
    By other than a small entity...........................      $780.00
 

* * * * *
    3. Section 1.17 is proposed to be amended by revising paragraphs 
(a)(3) through (a)(5), (e), (m), and (r) through (t) to read as 
follows:


Sec.  1.17  Patent application and reexamination processing fees.

    (a) * * *
    (1) * * *
    (2) * * *

(3) For reply within third month:
    By a small entity (Sec.   1.27(a)).....................      $480.00
    By other than a small entity...........................      $960.00
(4) For reply within fourth month:
    By a small entity (Sec.   1.27(a)).....................      $750.00
    By other than a small entity...........................    $1,500.00
(5) For reply within fifth month:
    By a small entity (Sec.   1.27(a)).....................    $1,020.00
    By other than a small entity...........................    $2,040.00
 

* * * * *

(e) To request continued examination pursuant to Sec.
 1.114:
    By a small entity (Sec.   1.27(a)).....................      $390.00
    By other than a small entity...........................      $780.00
 

* * * * *

(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)).....................      $670.00
    By other than a small entity...........................    $1,340.00
 

* * * * *

(r) For entry of a submission after final rejection under
 Sec.   1.129(a):
    By a small entity (Sec.   1.27(a)).....................      $390.00
    By other than a small entity...........................      $780.00
(s) For each additional invention requested to be examined
 under Sec.   1.129(b):
    By a small entity (Sec.   1.27(a)).....................      $390.00
    By other than a small entity...........................      $780.00
(t) For the acceptance of an unintentionally delayed claim
 for priority under 35 U.S.C. 119, 120, 121, or 365(a) or
 (c):
    (Sec.  Sec.   1.55 and 1.78)...........................    $1,340.00
 

    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)).....................      $670.00
    By other than a small entity...........................    $1,340.00
(b) Issue fee for issuing a design patent:

[[Page 25864]]

 
    By a small entity (Sec.   1.27(a)).....................      $245.00
    By other than a small entity...........................      $490.00
(c) Issue fee for issuing a plant patent:
    By a small entity (Sec.   1.27(a)).....................      $325.00
    By other than a small entity...........................      $650.00
 

* * * * *
    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.

* * * * *

(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)).....................      $460.00
    By other than a small entity...........................      $920.00
    (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)).....................    $1,055.00
    By other than a small entity...........................    $2,110.00
(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)).....................    $1,630.00
    By other than a small entity...........................    $3,260.00
 

* * * * *
    6. Section 1.492 is proposed to be amended by revising paragraphs 
(a)(1) through (a)(3) and (a)(5) 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)).....................      $390.00
    By other than a small entity...........................      $780.00
(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)).....................      $545.00
    By other than a small entity...........................    $1,090.00
 

* * * * *

(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)).....................      $465.00
    By other than a small entity...........................      $930.00
 

* * * * *

    Dated: May 4, 2004.
Jon W. Dudas,
Acting Under Secretary of Commerce for Intellectual Property and Acting 
Director of the United States Patent and Trademark Office.
[FR Doc. 04-10572 Filed 5-7-04; 8:45 am]
BILLING CODE 3510-16-P