[Federal Register Volume 70, Number 20 (Tuesday, February 1, 2005)]
[Rules and Regulations]
[Pages 5053-5055]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 05-1850]



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DEPARTMENT OF COMMERCE

Patent and Trademark Office

37 CFR Part 1

[Docket No.: 2005-P-052]
RIN 0651-AB84


Revision of Search and Examination Fees for Patent Cooperation 
Treaty Applications Entering the National Stage in the United States

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Interim rule.

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SUMMARY: Among other changes to patent and trademark fees, the 
Consolidated Appropriations Act, 2005 (Consolidated Appropriations 
Act), splits the national fee for Patent Cooperation Treaty (PCT) 
applications entering the national stage into a separate national fee, 
search fee and examination fee, during fiscal years 2005 and 2006. The 
Office is in this notice reducing the search fee and examination fee 
for certain PCT applications entering the national stage. The Office 
has implemented the changes to the patent fees provided in the 
Consolidated Appropriations Act in a separate final rule.

DATES: Effective Date: February 1, 2005.
    Applicability Date: The changes in this interim rule apply to all 
international applications entering the national stage under 35 U.S.C. 
371 for which the basic national fee specified in 35 U.S.C. 41 is paid 
on or after December 8, 2004.
    Comment Deadline Date: To be ensured of consideration, written 
comments must be received on or before April 4, 2005. No public hearing 
will be held.

ADDRESSES: Comments should be sent by electronic mail message over the 
Internet addressed to [email protected]. Comments may also be 
submitted by mail addressed to: Mail Stop Comments--Patents, 
Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450, or 
by facsimile to (571) 273-7735, marked to the attention of Robert W. 
Bahr. Although comments may be submitted by mail or facsimile, the 
Office prefers to receive comments via the Internet. If comments are 
submitted by mail, the Office prefers that the comments be submitted on 
a DOS formatted 3\1/2\ inch disk accompanied by a paper copy.
    Comments may also be sent by electronic mail message over the 
Internet via the Federal eRulemaking Portal. See the Federal 
eRulemaking Portal Web site (http://www.regulations.gov) for additional 
instructions on providing comments via the Federal eRulemaking Portal.
    The comments will be available for public inspection at the Office 
of the Commissioner for Patents, located in Madison East, Tenth Floor, 
600 Dulany Street, Alexandria, Virginia, and will be available through 
anonymous file transfer protocol (ftp) via the Internet (address: 
http://www.uspto.gov). Because comments will be made available for 
public inspection, information that is not desired to be made public, 
such as an address or phone number, should not be included in the 
comments.

FOR FURTHER INFORMATION CONTACT: Robert W. Bahr, Senior Patent 
Attorney, Office of the Deputy Commissioner for Patent Examination 
Policy, by telephone at (571) 272-8800, by mail addressed to: Mail Stop 
Comments--Patents, Commissioner for Patents, P.O. Box 1450, Alexandria, 
VA 22313-1450, or by facsimile to (571) 273-7735, marked to the 
attention of Robert W. Bahr.

SUPPLEMENTARY INFORMATION: The Consolidated Appropriations Act (section 
801 of Division B) provides that 35 U.S.C. 41(a), (b), and (d) shall be 
administered in a manner that revises patent application fees (35 
U.S.C. 41(a)) and patent maintenance fees (35 U.S.C. 41(b)), and 
provides for a separate filing or national fee (35 U.S.C. 41(a)), 
search fee (35 U.S.C. 41(d)(1)), and examination fee (35 U.S.C. 
41(a)(3)) during fiscal years 2005 and 2006. See Public Law 108-447, 
118 Stat. 2809 (2004). The Consolidated Appropriations Act provides a 
fee of $500.00 for the search of the national stage of each 
international application (Section 803(c)(1) of Division B) and a fee 
of $200.00 for the examination of the national stage of each 
international application (35 U.S.C. 41(a)(3)(D)) during fiscal years 
2005 and 2006.
    35 U.S.C. 376 provides that: ``[t]he Director may also refund any 
part of the search fee, the national fee, the preliminary examination 
fee and any additional fees, where he determines such refund to be 
warranted.'' See 35 U.S.C. 376(b). Under the authority provided in 35 
U.S.C. 376: (1) The Office will refund the entire search fee less 
$100.00 ($50.00 for small entities) if the search fee as set forth in 
Sec. Sec.  1.445(a)(2) and (a)(3) has been paid on the international 
application to the United States Patent and Trademark Office as an 
International Searching Authority for all of the claims presented in 
the application entering the national stage; and (2) the Office will 
refund $100.00 ($50.00 for small entities) if an international search 
report on the international application has been prepared and is 
provided to the Office no later than the time at which the search fee 
is paid. In addition, under the authority provided in 35 U.S.C. 376, 
the Office will refund the entire examination fee less $100.00 ($50.00 
for small entities) if an international preliminary examination report 
on the international application prepared by the United States 
International Preliminary Examining Authority states that the criteria 
of novelty, inventive step (non-obviousness), and industrial 
applicability, as defined in PCT Article 33(1) to (4) have been 
satisfied for all of the claims presented in the application entering 
the national stage.

Discussion of Specific Rules

    Title 37 of the Code of Federal Regulations, Part 1, is amended as 
follows:
    Section 1.492: Section 1.492(b) sets forth the search fees for an 
international application entering the national stage under 35 U.S.C. 
371. Section 1.492(b) is amended to provide that: (1) The search fee 
for an international application entering the national stage under 35 
U.S.C. 371 is $100.00 ($50.00 for a small entity) if the search fee as 
set forth in Sec. Sec.  1.445(a)(2) and (a)(3) has been paid on the 
international application to the United States Patent and Trademark 
Office as an International Searching Authority for all of the claims 
presented in the application entering the national stage; (2) the 
search fee for an international application entering the national stage 
under 35 U.S.C. 371 is $400.00 ($200.00 for a small entity) if an 
international search report on the international application has been 
prepared and is provided to the Office no later than the time at which 
the search fee is paid; and (3) the search fee for an international 
application entering the national stage under 35 U.S.C. 371 is $500.00 
($250.00 for a small entity) in all other situations.
    Section 1.492(c) sets forth the examination fee for an 
international application entering the national stage under 35 U.S.C. 
371. Section 1.492(c) is amended to provide that: (1) The examination 
fee for an international application entering the national stage under 
35 U.S.C. 371 is $100.00 ($50.00 for a small entity), if an 
international preliminary examination report on the international 
application prepared by the United States International Preliminary 
Examining Authority states that the criteria of novelty, inventive step 
(non-obviousness), and industrial

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applicability, as defined in PCT Article 33(1) to (4), have been 
satisfied for all of the claims presented in the application entering 
the national stage; and (2) the examination fee for an international 
application entering the national stage under 35 U.S.C. 371 is $200.00 
($100.00 for a small entity) in all other situations.
    Section 1.496: Section 1.496 is amended to revise its references to 
Sec.  1.492 to reflect the changes in Sec.  1.492.

Rule Making Considerations

    Administrative Procedure Act: Pursuant to its authority under 35 
U.S.C. 376(b), the Office has reduced the patent fees set forth in 
Sec.  1.492 to less than the amount specified in 35 U.S.C. 41. Existing 
rights and obligations are not otherwise changed. The Office has good 
cause to implement this fee reduction without prior notice and comment. 
It is in the public interest to immediately implement the reduced 
search and examination fees because delay in the adoption of these fee 
reductions would cause harm to those applicants who currently meet the 
conditions for entitlement to a fee reduction. Without immediate 
implementation, applicants who are currently filing search and 
examination fees in order to avoid abandonment of their applications 
will be unnecessarily paying higher search and examination fees. The 
Office believes the public wants these new reduced fees to become 
effective as soon as possible as the public should benefit from the 
efficiencies and savings resulting therefrom. In addition, the Office 
believes that prior notice and comment is unnecessary because it does 
not expect the public to object to the reduction of search and 
examination fees. Moreover, the Office does not believe the public 
needs time to conform its conduct so as to avoid violation of these 
regulations. In order to give the public the immediate benefit of the 
Office's decision to reduce specified search and examination fees, the 
Office finds, pursuant to the authority provided at 5 U.S.C. 553(b)(B), 
good cause to adopt this change without prior notice and an opportunity 
for public comment, as such procedures are contrary to the public 
interest. See Nat. Customs Brokers & Forwarders Ass'n v. U.S., 59 F.3d 
1219, 1223-24 (Fed. Cir. 1995).
    Nothing in this or any other law requires delayed implementation of 
the fee reductions. 35 U.S.C. 41(g) provides that: ``[n]o fee 
established by the Director under [35 U.S.C. 41] shall take effect 
until at least 30 days after notice of the fee has been published in 
the Federal Register and in the Official Gazette of the Patent and 
Trademark Office.'' Since the reduced search fees and examination fees 
specified in Sec. Sec.  1.492(b) and (c) are established by the Office 
on the basis of the Office's authority under 35 U.S.C. 376(b) (rather 
than the authority in 35 U.S.C. 41), the thirty-day advance publication 
requirement of 35 U.S.C. 41(g) does not apply to the reduced search 
fees and examination fees specified in Sec.  1.492(b) and (c).
    Accordingly, the changes in this interim rule may be adopted 
without prior notice and opportunity for public comment under 5 U.S.C. 
553(b) and (c), or thirty-day advance publication under 5 U.S.C. 553(d) 
or 35 U.S.C. 41(g).
    Regulatory Flexibility Act: As prior notice and an opportunity for 
public comment are not required pursuant to 5 U.S.C. 553 (or any other 
law), neither a regulatory flexibility analysis nor a certification 
under the Regulatory Flexibility Act (5 U.S.C. 601 et seq.) are 
required. See 5 U.S.C. 603.
    Executive Order 13132: This rule making does not contain policies 
with federalism implications sufficient to warrant preparation of a 
Federalism Assessment under Executive Order 13132 (Aug. 4, 1999).
    Executive Order 12866: This rule making has been determined to be 
not significant for purposes of Executive Order 12866 (Sept. 30, 1993).
    Paperwork Reduction Act: This interim rule involves information 
collection requirements that are subject to review by the Office of 
Management and Budget (OMB) under the Paperwork Reduction Act of 1995 
(44 U.S.C. 3501 et seq.). The collection of information involved in 
this interim rule has been reviewed and previously approved by OMB 
under the following control number: 0651-0021. The Office is not 
resubmitting an information collection package to OMB for its review 
and approval because the changes in this interim rule do not affect the 
information collection requirements associated with the information 
collection under this OMB control number.
    Interested persons are requested to send comments regarding this 
information collection, including suggestions for reducing this burden, 
to Robert J. Spar, Director, Office of Patent Legal Administration, 
United States Patent and Trademark Office, P.O. Box 1450, Alexandria, 
VA 22313-1450, or to the Office of Information and Regulatory Affairs 
of OMB, New Executive Office Building, 725 17th Street, NW., Room 
10235, Washington, DC 20503, Attention: Desk Officer for the United 
States Patent and Trademark Office.
    Notwithstanding any other provision of law, no person is required 
to respond to nor shall a person be subject to a penalty for failure to 
comply with a collection of information subject to the requirements of 
the Paperwork Reduction Act unless that collection of information 
displays a currently valid OMB control number.

List of Subjects in 37 CFR Part 1

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

0
For the reasons set forth in the preamble, 37 CFR part 1 is amended as 
follows:

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(b)(2).

0
2. Section 1.492 is amended by revising paragraphs (b) and (c) to read 
as follows:


Sec.  1.492  National stage fees.

* * * * *
    (b) Search fee for an international application entering the 
national stage under 35 U.S.C. 371 if the basic national fee was not 
paid before December 8, 2004:
    (1) If the search fee as set forth in Sec. 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))...........................     $50.00
By other than a small entity.................................    $100.00
 

    (2) If an international search report on the international 
application has been prepared and is provided to the Office no later 
than the time at which the search fee is paid:

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

    (3) In all situations not provided for in paragraphs (b)(1) or 
(b)(2) of this section:

By a small entity (Sec.   1.27(a))...........................    $250.00
By other than a small entity.................................    $500.00
 

    (c) The examination fee for an international application entering 
the national stage under 35 U.S.C. 371 if the basic national fee was 
not paid before December 8, 2004:
    (1) If an international preliminary examination report on the 
international application prepared by the United States International 
Preliminary Examining Authority states that the

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criteria of novelty, inventive step (non-obviousness), and industrial 
applicability, as defined in PCT Article 33(1) to (4) have been 
satisfied for all of the claims presented in the application entering 
the national stage:

By a small entity (Sec.   1.27(a))...........................     $50.00
By other than a small entity.................................    $100.00
 

    (2) In all situations not provided for in paragraph (c)(1) of this 
section:

By a small entity (Sec.   1.27(a))...........................    $100.00
By other than a small entity.................................    $200.00
 

* * * * *

0
3. Section 1.496 is amended by revising paragraph (b) to read as 
follows:


Sec.  1.496  Examination of international applications in the national 
stage.

* * * * *
    (b) A national stage application filed under 35 U.S.C. 371 may have 
paid therein the examination fee as set forth in Sec.  1.492(c)(1) if 
it contains, or is amended to contain, at the time of entry into the 
national stage, only claims which have been indicated in an 
international preliminary examination report prepared by the United 
States Patent and Trademark Office as satisfying the criteria of PCT 
Article 33(1) through (4) as to novelty, inventive step and industrial 
applicability. Such national stage applications in which the 
examination fee as set forth in Sec.  1.492(c)(1) has been paid may be 
amended subsequent to the date of entry into the national stage only to 
the extent necessary to eliminate objections as to form or to cancel 
rejected claims. Such national stage applications in which the 
examination fee as set forth in Sec.  1.492(c)(1) has been paid will be 
taken up out of order.

    Dated: January 24, 2005.
Jon W. Dudas,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
[FR Doc. 05-1850 Filed 1-31-05; 8:45 am]
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