[Federal Register Volume 70, Number 38 (Monday, February 28, 2005)]
[Proposed Rules]
[Pages 9570-9573]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 05-3743]


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

DEPARTMENT OF COMMERCE

United States Patent and Trademark Office

37 CFR Part 1

[Docket No.: 2005-P-055]
RIN 0651-AB87


Changes to the Practice for Handling Patent Applications Filed 
Without the Appropriate Fees

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Notice of proposed rulemaking.

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

SUMMARY: Among other changes to patent and trademark fees, the 
Consolidated Appropriations Act, 2005 (Consolidated Appropriations 
Act), splits the patent application filing fee into a separate filing 
fee, search fee and examination fee, and requires an additional fee 
(application size fee) for applications whose specification and 
drawings exceed 100 sheets of paper, during fiscal years 2005 and 2006. 
The United States Patent and Trademark Office is in this notice 
proposing changes in the Office's practice for handling patent 
applications filed without the appropriate filing, search, and 
examination fees. The Office has implemented the changes to the patent 
fees provided in the Consolidated Appropriations Act in a separate 
rulemaking.

DATES: Comment Deadline Date: To be ensured of consideration, written 
comments must be received on or before March 30, 2005. No public 
hearing will be held.

[[Page 9571]]


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 via the 
Office Internet Web site (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: Among other changes, 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 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. The Consolidated 
Appropriations Act also provides that the provisions of 35 U.S.C. 
111(a) for payment of the fee for filing the application apply to the 
payment of the examination fee (35 U.S.C. 41(a)(3)) and search fee (35 
U.S.C. 41(d)(1)) in an application filed under 35 U.S.C. 111(a), and 
that the provisions of 35 U.S.C. 371(d) for the payment of the national 
fee apply to the payment of the examination fee (35 U.S.C. 41(a)(3)) 
and search fee (35 U.S.C. 41(d)(1)) in an international application 
filed under the Patent Cooperation Treaty (PCT) and entering the 
national stage under 35 U.S.C. 371. See 35 U.S.C. 41(a)(3) and 
41(d)(1)(C). Thus, the examination fee and search fee are due on filing 
in an application filed under 35 U.S.C. 111(a) or on commencement of 
the national stage in a PCT international application, but may be paid 
at a later time if paid within such period and under such conditions 
(including payment of a surcharge) as may be prescribed by the 
Director. See H.R. Rep. 108-241, at 16 (2003) (H.R. Rep. 108-241 
contains an analysis and discussion of an identical provision in H.R. 
1561, 108th Cong. (2004)).
    In view of the revised patent fee structure during fiscal years 
2005 and 2006 set forth in the Consolidated Appropriations Act, the 
Office is proposing the following changes in Office practice for 
handling patent applications filed without the appropriate fees: That 
is, the filing fee, search fee, and examination fee.
    The Office is proposing to: (1) Require the surcharge under Sec.  
1.16(f) in any application filed under 35 U.S.C. 111(a) in which the 
search fee or examination fee is paid on a date later than the filing 
date; and (2) require the surcharge under Sec.  1.492(h) in any 
application filed under the PCT in which the search fee or examination 
fee is paid on a date later than thirty months from the priority date. 
This change is because the Consolidated Appropriations Act splits the 
former patent application filing (or national) fee into a separate 
filing (or national) fee, search fee and examination fee during fiscal 
years 2005 and 2006. The filing of an application which lacks any of 
the basic filing (or national) fee, the search fee, the examination 
fee, or oath or declaration requires the Office to issue a notice to 
file the missing parts (or requirements) of the application.
    The Office is also proposing to eliminate the processing and 
retention fee (Sec.  1.21(l)) practice. The processing and retention 
fee practice permits an applicant to file an application without the 
basic filing fee (which formerly covered the cost of the initial 
processing of an application and part of the cost of the search and 
examination of an application) and pay only the processing and 
retention fee set forth in Sec.  1.21(l) in order for the application 
to be used as a basis for foreign filing and benefit claims under 35 
U.S.C. 120 and Sec.  1.78(a). Under the revised patent fee structure 
set forth in the Consolidated Appropriations Act, the basic filing fee 
covers only the cost of the initial processing of an application. Thus, 
the Office is proposing to require payment of the basic filing fee 
(rather than just the current processing and retention fee set forth in 
Sec.  1.21(l)) to retain the application. Since the Office must retain 
an application to permit benefit of the application to be claimed under 
35 U.S.C. 120 and Sec.  1.78 in a subsequent nonprovisional or 
international application, the Office is also proposing to require 
payment of the basic filing fee (rather than just the current 
processing and retention fee set forth in Sec.  1.21(l)) to permit 
benefit of the application to be claimed under 35 U.S.C. 120 and Sec.  
1.78 in a subsequent nonprovisional or international application.
    The Office is also implementing the provision in 35 U.S.C. 
41(a)(1)(G) for the Office to prescribe the paper size equivalent of an 
application filed in whole or in part in an electronic medium for 
purposes of the application size fee specified in 35 U.S.C. 41(a)(1)(G) 
(Sec.  1.16(s) and Sec.  1.492(j)). A 21.6 cm by 27.9 cm (8 \1/2\ by 11 
inches) sheet of paper with a top margin of 2.0 cm (\3/4\ inch), a left 
side margin of 2.5 cm (1 inch), a right side margin of 2.0 cm (\3/4\ 
inch), and a bottom margin of 2.0 cm (\3/4\ inch)), will contain about 
30 lines of double-spaced text, with each line having about 50 to 65 
characters. An ASCII text (the only format permitted by Sec.  1.52(e)) 
document containing 30 lines of text, each line having about 50 to 65 
characters, will be slightly less than two kilobytes in size. 
Therefore, the Office is proposing that each two kilobytes of content 
submitted on an electronic medium shall be counted as a sheet of paper 
for purposes of the application size fee specified in 35 U.S.C. 
41(a)(1)(G) (Sec.  1.16(s) and Sec.  1.492(j)).

Discussion of Specific Rules

    Title 37 of the Code of Federal Regulations, Part 1, is proposed to 
be amended as follows:
    Section 1.16: Section 1.16(f) is proposed to be amended to require 
a surcharge if any of the basic filing fee, the search fee, the 
examination fee, or oath or declaration is filed in a nonprovisional 
application on a date later than the filing date of the application. 
Section 1.16(s) is proposed to be amended to include a cross reference 
to Sec.  1.52(f).
    Section 1.21: Section 1.21 is proposed to be amended to remove and 
reserve paragraph (l), which set forth the fee for

[[Page 9572]]

processing and retaining an application in which the basic filing fee 
has not been paid.
    Section 1.52: Section 1.52(f)(1) is proposed to be amended to 
provide that for purposes of determining the application size fee 
required by Sec.  1.16(s) or Sec.  1.492(j), for an application the 
specification and drawings of which (excluding any sequence listing in 
compliance with Sec.  1.821(c) or (e), and any computer program listing 
filed in an electronic medium in compliance with Sec. Sec.  1.52(e) and 
1.96) are submitted in whole or in part on an electronic medium other 
than the Office electronic filing system, each two kilobytes of content 
submitted on an electronic medium shall be counted as a sheet of paper.
    Section 1.53: Section 1.53(f)(5) is proposed to be amended to 
provide that if the applicant does not pay the basic filing fee during 
the pendency of the application, the Office may dispose of the 
application.
    Section 1.78: Section 1.78(a)(1) is proposed to be amended to 
provide that to claim the benefit of a prior-filed nonprovisional 
application under 35 U.S.C. 120 and Sec.  1.78(a) in a subsequent 
nonprovisional or international application, the prior-filed 
nonprovisional application must be entitled to a filing date as set 
forth in Sec.  1.53(b) or Sec.  1.53(d) and have paid therein the basic 
filing fee set forth in Sec.  1.16 within the pendency of the 
application.
    Section 1.492: Section 1.492(h) is proposed to be amended to 
require a surcharge if any of the search fee, the examination fee, or 
the oath or declaration is filed later than thirty months from the 
priority date. Section 1.492(j) is proposed to be amended to include a 
cross reference to Sec.  1.52(f).

Rulemaking Considerations

    Administrative Procedure Act: The changes proposed in this notice 
relate solely to the procedures to be followed in prosecuting a patent 
application: i.e., the procedures for paying the fees due upon filing 
an application for patent. This notice does not propose any change to 
the amount of fees charged by the Office. Specifically, the changes 
proposed in this notice concern the procedures for payment of the 
filing fee, search fee, and examination fee, and setting forth which 
fees must be paid in order for a nonprovisional application to be 
processed and retained by the Office such that it may be used as the 
basis for foreign filing and for benefit claims under 35 U.S.C. 120 and 
Sec.  1.78(a). Therefore, these rule changes involve interpretive 
rules, or rules of agency practice and procedure under 5 U.S.C. 
553(b)(A). See Bachow Communications Inc. v. FCC, 237 F.3d 683, 690 
(D.C. Cir. 2001) (rules governing an application process are ``rules of 
agency organization, procedure, or practice'' and are exempt from the 
Administrative Procedure Act's notice and comment requirement); see 
also Merck & Co., Inc. v. Kessler, 80 F.3d 1543, 1549-50, 38 USPQ2d 
1347, 1351 (Fed. Cir. 1996) (the rules of practice promulgated under 
the authority of former 35 U.S.C. 6(a) (now in 35 U.S.C. 2(b)(2)) are 
not substantive rules (to which the notice and comment requirements of 
the Administrative Procedure Act apply)), and Fressola v. Manbeck, 36 
USPQ2d 1211, 1215 (D.D.C. 1995) (``it is doubtful whether any of the 
rules formulated to govern patent and trade-mark practice are other 
than `interpretative rules, general statements of policy, * * * 
procedure, or practice.' '') (quoting C.W. Ooms, The United States 
Patent Office and the Administrative Procedure Act, 38 Trademark Rep. 
149, 153 (1948)).
    Under the Office's pre-existing ``missing parts'' or ``missing 
requirements'' practice, an applicant was required to pay a surcharge 
if the basic filing fee was not present on filing in an application 
filed under 35 U.S.C. 111 or if the basic national fee was not present 
on the date of commencement of the national stage of processing in a 
PCT application entering the national stage under 35 U.S.C. 371. The 
Consolidated Appropriations Act split the patent application filing (or 
national) fee into a separate filing (or national) fee, search fee and 
examination fee. Therefore, the proposed replacement of the basic 
filing (or national) fee in Sec. Sec.  1.16 and 1.492 with the basic 
filing (or national) fee, the search fee, or the examination fee is 
simply a procedural change that is necessary to maintain (or restore) 
the status quo ante with respect to the Office's pre-existing ``missing 
parts'' or ``missing requirements'' practice.
    The processing and retention fee practice allows applicants to file 
an application without the filing fee and to pay only a processing and 
retention fee in order for the application to be used as a basis for 
foreign filing and for priority under 35 U.S.C. 120. Under the revised 
patent fee structure set forth in the Consolidated Appropriations Act 
(which split the filing fee into a separate filing, search fee and 
examination fee), the filing fee covers the cost of the initial 
processing and retention of an application. Thus, requiring payment of 
the basic filing fee under the Consolidated Appropriations Act in order 
for an application to be used as a basis for foreign filing and for 
priority under 35 U.S.C. 120 is more compatible with the filing fee 
scheme set forth in the Consolidated Appropriations Act than is 
continuing the processing and retention fee practice.
    The Consolidated Appropriations Act provides for the Office to 
prescribe the paper size equivalent of an application filed in whole or 
in part in an electronic medium for purposes of the application size 
fee specified in 35 U.S.C. 41(a)(1)(G). Thus, setting a paper size 
equivalent based upon the number of kilobytes of content that can fit 
onto a sheet of paper (given the current requirements for applications 
filed in part on CD and for paper size and margins) simply sets forth 
the procedures for determining the paper size equivalent of an 
application filed in whole or in part in an electronic medium for 
purposes of the application size fee.
    Accordingly, prior notice and opportunity for public comment are 
not required pursuant to 5 U.S.C. 553(b) or (c) (or any other law). 
Nevertheless, the Office is providing this opportunity for public 
comment on the changes proposed in this notice because the Office 
desires the benefit of public comment on these proposed changes.
    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), an initial regulatory flexibility analysis under the Regulatory 
Flexibility Act (5 U.S.C. 601 et seq.) is not 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 notice involves information 
collection requirements which 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 collections of information involved in 
this notice have been reviewed and previously approved by OMB under OMB 
control numbers: 0651-0021, 0651-0031, and 0651-0032. The United States 
Patent and Trademark Office is not resubmitting any information 
collection package to OMB for its review and approval because the 
changes in this notice do not affect the information collection 
requirements associated with the information collection under these OMB 
control

[[Page 9573]]

numbers. The changes proposed in this notice concern the procedures for 
payment of the filing fee, search fee, examination fee, and the 
application size fee, including setting forth which fees must be paid 
in order for an application to be processed and retained by the Office 
such that it may be used as the basis for foreign filing and for 
benefit claims under 35 U.S.C. 120 and Sec.  1.78(a).
    Interested persons are requested to send comments regarding these 
information collections, including suggestions for reducing this 
burden, to Robert J. Spar, Director, Office of Patent Legal 
Administration, Commissioner for Patents, P.O. Box 1450, Alexandria, VA 
22313-1450, or to the Office of Information and Regulatory Affairs, 
Office of Management and Budget, New Executive Office Building, Room 
10235, 725 17th Street, NW., Washington, DC 20503, Attention: Desk 
Officer for the 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.

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

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).

    2. Section 1.16 is amended by revising paragraphs (f) and (s) to 
read as follows:


Sec.  1.16  National application filing, search, and examination fees.

* * * * *
    (f) Surcharge for filing any of the basic filing fee, the search 
fee, the examination fee, or oath or declaration on a date later than 
the filing date of the application, except provisional applications:

By a small entity (Sec.  1.27(a))--$65.00
By other than a small entity--$130.00
* * * * *
    (s) Application size fee for any application under 35 U.S.C. 111 
filed on or after December 8, 2004, the specification and drawings of 
which exceed 100 sheets of paper, for each additional 50 sheets or 
fraction thereof (see Sec.  1.52(f) for applications submitted in whole 
or in part on an electronic medium):

By a small entity (Sec.  1.27(a))--$125.00
By other than a small entity--$250.00
* * * * *
    3. Section 1.21 is amended by removing and reserving paragraph (l):


Sec.  1.21  Miscellaneous fees and charges.

* * * * *
    (l) [Reserved]
* * * * *
    4. Section 1.52 is amended by revising paragraph (f)(1) to read as 
follows:


Sec.  1.52  Language, paper, writing, margins, compact disc 
specifications.

* * * * *
    (f)(1) Any sequence listing in an electronic medium in compliance 
with Sec. Sec.  1.52(e) and 1.821(c) or (e), and any computer program 
listing filed in an electronic medium in compliance with Sec. Sec.  
1.52(e) and 1.96, will be excluded when determining the application 
size fee required by Sec.  1.16(s) or Sec.  1.492(j). For purposes of 
determining the application size fee required by Sec.  1.16(s) or Sec.  
1.492(j), for an application the specification and drawings of which, 
excluding any sequence listing in compliance with Sec.  1.821(c) or 
(e), and any computer program listing filed in an electronic medium in 
compliance with Sec. Sec.  1.52(e) and 1.96, are submitted in whole or 
in part on an electronic medium other than the Office electronic filing 
system, each two kilobytes of content submitted on an electronic medium 
shall be counted as a sheet of paper.
* * * * *
    5. Section 1.53 is amended by revising paragraph (f)(5) to read as 
follows:


Sec.  1.53  Application number, filing date, and completion of 
application.

* * * * *
    (f) * * *
    (5) If applicant does not pay the basic filing fee during the 
pendency of the application, the Office may dispose of the application.
* * * * *
    6. Section 1.78 is amended by removing paragraph (a)(1)(iii) and 
revising paragraph (a)(1)(ii) to read as follows:


Sec.  1.78  Claiming benefit of earlier filing date and cross 
references to other applications.

    (a)(1) * * *
    (ii) Entitled to a filing date as set forth in Sec.  1.53(b) or 
Sec.  1.53(d) and have paid therein the basic filing fee set forth in 
Sec.  1.16 within the pendency of the application.
* * * * *
    7. Section 1.492 is amended by revising paragraphs (h) and (j) to 
read as follows:


Sec.  1.492  National stage fees.

* * * * *
    (h) Surcharge for filing any of the search fee, the examination 
fee, or the oath or declaration later than thirty months from the 
priority date pursuant to Sec.  1.495(c):

By a small entity (Sec.  1.27(a))--$65.00
By other than a small entity--$130.00
* * * * *
    (j) Application size fee for any international application for 
which the basic national fee was not paid before December 8, 2004, the 
specification and drawings of which exceed 100 sheets of paper, for 
each additional 50 sheets or fraction thereof (see Sec.  1.52(f) for 
applications submitted in whole or in part on an electronic medium):

By a small entity (Sec.  1.27(a))--$125.00
By other than a small entity--$250.00

    Dated: February 22, 2005.
Jon W. Dudas,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
[FR Doc. 05-3743 Filed 2-25-05; 8:45 am]
BILLING CODE 3510-16-P