[Federal Register Volume 69, Number 166 (Friday, August 27, 2004)]
[Rules and Regulations]
[Pages 52604-52606]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 04-19562]


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DEPARTMENT OF COMMERCE

United States Patent and Trademark Office

37 CFR Parts 1 and 41

[Docket No. 2003-C-027]
RIN 0651-AB70


Revision of Patent Fees for Fiscal Year 2005

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Final rule.

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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. The Director is authorized to adjust 
these fees annually by the CPI to recover the higher costs associated 
with doing business.

DATE: Effective October 1, 2004.

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 final 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)).
    A proposed rule notice was published at 69 FR 25861 on May 10, 
2004, which requested comments by June 9, 2004. No comments were 
received.
    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 final 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.
    In addition, certain rules on fees associated with practices of the 
Board of Patent Appeals and Interferences are being consolidated in a 
new part 41 of 37 CFR. These changes were made in accordance with 
applicable provisions set forth in the final rule notice Rules of 
Practice Before the Board of Patent Appeals and Interferences published 
at 69 FR 49960 on August 12, 2004.

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) 
will 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 3.01 percent. Based on this projected CPI-U, patent statutory 
fees will be adjusted by 3.01 percent.
    Certain patent processing fees established under 35 U.S.C. 41(d), 
119, 120, 132(b), 376, and Pub. L. 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 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 
fee adjustment 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, 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.

[[Page 52605]]

    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 1.16 National Application Filing Fees

    Section 1.16, paragraphs (a), (b), (d), and (f) through (i), 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), (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 1.492 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.

37 CFR 41.20 Fees

    Section 41.20, paragraphs (b)(1) through (b)(3), are revised to 
adjust fees established therein to reflect fluctuations in the CPI.

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 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 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.
    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 final 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 $2 to a maximum of $100 under the final 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 range from a minimum of $1 to a maximum of $50 under the 
final rule. The sole exception under this final rule is the fee set 
forth under 37 CFR 1.17(t), which does not qualify for a small entity 
fee reduction. The fee increase for 37 CFR 1.17(t) is $40.
    Accordingly, the final rule does not have a significant economic 
impact on a substantial number of small entities.

List of Subjects

37 CFR Part 1

    Administrative practice and procedure, Biologies, Courts, Freedom 
of Information, Invention and patents, Reporting and recordkeeping 
requirements, Small businesses.

37 CFR Part 41

    Administrative practice and procedure, Inventions and patents, 
Lawyers.


0
For the reasons set forth in the preamble, we are amending title 37 of 
the Code of Federal Regulations, parts 1 and 41 as set forth below.

PART 1--RULES OF PRACTICE IN PATENT CASES

0
1. The authority citation for 37 CFR part 1 continues to read as 
follows:

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


0
2. Section 1.16 is 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)): $395.00
By other than a small entity: $790.00

    (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)): $44.00
By other than a small entity: $88.00
* * * * *
    (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)): $150.00
By other than a small entity : $300.00
* * * * *
    (f) Basic fee for filing each design application:

By a small entity (Sec.  1.27 (a)): $175.00
By other than a small entity: $350.00

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

By a small entity (Sec.  1.27(a)): $275.00
By other than a small entity: $550.00

    (h) Basic fee for filing each reissue application:

By a small entity (Sec.  1.27(a)): $395.00
By other than a small entity: $790.00
    (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)): $44.00
By other than a small entity: $88.00
* * * * *

0
3. Section 1.17 is amended by revising paragraphs (a)(2) through(a)(5), 
(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)): $215.00
By other than a small entity: $430.00

    (3) For reply within third month:

By a small entity (Sec.  1.27(a)): $490.00
By other than a small entity: $980.00

    (4) For reply within fourth month:

By a small entity (Sec.  1.27(a)): $765.00
By other than a small entity: $1,530.00

    (5) For reply within fifth month:

By a small entity (Sec.  1.27(a)): $1,040.00
By other than a small entity: $2,080.00
* * * * *
    (e) To request continued examination pursuant to Sec.  1.114:

By a small entity (Sec.  1.27(a)): $395.00
By other than a small entity: $790.00
* * * * *

[[Page 52606]]

    (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)): $685.00
By other than a small entity: $1,370.00
* * * * *
    (r) For entry of a submission after final rejection under Sec.  
1.129(a):

By a small entity (Sec.  1.27(a)): $395.00
By other than a small entity: $790.00

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

By a small entity (Sec.  1.27(a)): $395.00
By other than a small entity: $790.00

    (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): $1,370.00

0
4. 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)): $685.00
By other than a small entity: $1,370.00

    (b) Issue fee for issuing a design patent:

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)): $330.00
By other than a small entity: $660.00
* * * * *

0
5. 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)): $470.00
By other than a small: $940.00

    (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)): $1,075.00
By other than a small entity: $2,150.00

    (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)): $1,660.00
By other than a small entity: $3,320.00
* * * * *
0
6. 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) * * *
    (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)): $375.00
By other than a small entity: $750.00

    (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)): $395.00
By other than a small entity: $790.00

    (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)): $555.00
By other than a small entity: $1,110.00
* * * * *
    (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)): $475.00
By other than a small entity: $950.00

    (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)): $44.00
By other than a small entity: $88.00
* * * * *
    (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)): $150.00
By other than a small entity: $300.00
* * * * *

PART 41--PRACTICE BEFORE THE BOARD OF PATENT APPEALS AND 
INTERFERENCES

0
1. The authority citation for 37 CFR part 41 continues to read as 
follows:

    Authority: 35 U.S.C. 2(b)(2), 3(a)(2)(A), 21, 23, 32, 41, 134, 
135, unless otherwise noted.


0
2. Section 41.20 is amended by revising paragraphs (b)(1) through 
(b)(3) to read as follows:


Sec.  41.20  Fees.

* * * * *
    (b) Appeal Fees.
    (1) For filing a notice of appeal from the examiner to the Board:

By a small entity (Sec.  1.27(a) of this title): $170.00
By other than a small entity: $340.00

    (2) 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) of this title): $170.00
By other than a small entity: $340.00

    (3) For filing a request for an oral hearing before the Board in an 
appeal under 35 U.S.C. 134:

By a small entity (Sec.  1.27(a) of this title): $170.00
By other than a small entity: $340.00

    Dated: August 23, 2004.
Jon W. Dudas,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
[FR Doc. 04-19562 Filed 8-26-04; 8:45 am]
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