[Federal Register Volume 70, Number 117 (Monday, June 20, 2005)]
[Rules and Regulations]
[Pages 35375-35378]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 05-12087]


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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: Final 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 
United States Patent and Trademark Office (Office) is reducing the 
search fee and examination fee for certain PCT applications entering 
the national stage.

DATES: Effective date: July 1, 2005.
    Applicability Date: The changes in this final rule apply to any 
search fee paid on or after July 1, 2005, and to any examination fee 
paid on or after July 1, 2005, in an international application entering 
the national stage under 35 U.S.C. 371 for which the basic national fee 
specified in 35 U.S.C. 41 was paid on or after December 8, 2004.

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 Pub. L. 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 if an 
international preliminary examination report on the international 
application prepared by the United States International Preliminary 
Examining Authority or a written

[[Page 35376]]

opinion on the international application prepared by the United States 
International Searching Authority states that the criteria of novelty, 
inventive step (non-obviousness), and industrial applicability, as 
defined in PCT Article 33(1) to (4) (PCT Article 33(1) to (4) criteria) 
have been satisfied for all of the claims presented in the application 
entering the national stage; (2) 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.  1.445(a)(2) has been paid on the international 
application to the United States Patent and Trademark Office as an 
International Searching Authority; and (3) the Office will refund 
$100.00 ($50.00 for small entities) if an international search report 
on the international application has been prepared by an International 
Searching Authority other than the United States International 
Searching Authority 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 if an international preliminary examination report on 
the international application prepared by the United States 
International Preliminary Examining Authority or a written opinion on 
the international application prepared by the United States 
International Searching Authority states that the PCT Article 33(1) to 
(4) criteria 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)(1) provides that the search fee for an 
international application entering the national stage under 35 U.S.C. 
371 is $0.00 (small or non-small entity), if an international 
preliminary examination report on the international application 
prepared by the United States International Preliminary Examining 
Authority or a written opinion on the international application 
prepared by the United States International Searching Authority states 
that the PCT Article 33(1) to (4) criteria have been satisfied for all 
of the claims presented in the application entering the national stage. 
Section 1.492(b)(2) provides that 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.  
1.445(a)(2) has been paid on the international application to the 
United States Patent and Trademark Office as an International Searching 
Authority. Section 1.492(b)(3) provides that 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 by an 
International Searching Authority other than the United States 
International Searching Authority and is provided to the Office. If the 
search fee is paid in the amount specified in Sec.  1.492(b)(3) on the 
date of the commencement of the national stage (Sec.  1.491(a)), but an 
international search report on the international application prepared 
by an International Searching Authority other than the United States 
International Searching Authority is provided to the Office after the 
date of the commencement of the national stage, the surcharge under 
Sec.  1.492(h) for filing any of the search fee, the examination fee, 
or the oath or declaration after the date of the commencement of the 
national stage (if applicable) will be due because the application was 
not entitled to the search fee specified in Sec.  1.492(b)(3) on the 
date of the commencement of the national stage. Section 1.492(b)(4) 
provides that 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)(1) provides that the examination fee for an 
international application entering the national stage under 35 U.S.C. 
371 is $0.00 (small or non-small entity), if an international 
preliminary examination report on the international application 
prepared by the United States International Preliminary Examining 
Authority or a written opinion on the international application 
prepared by the United States International Searching Authority states 
that the PCT Article 33(1) to (4) criteria have been satisfied for all 
of the claims presented in the application entering the national stage. 
Section 1.492(c)(2) provides that 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(b) is amended to revise its references 
to Sec.  1.492 to reflect the changes in Sec.  1.492 by which national 
stage applications having paid therein the search fee as set forth in 
Sec.  1.492(b)(1) and the examination fee as set forth in Sec.  
1.492(c)(1) 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. Section 1.496(b) is also amended 
to provide that such national stage applications will be advanced out 
of turn for examination (rather than taken up out of order).
    Response to comments: The Office published an interim rule revising 
search and examination fees for international applications entering the 
national stage in the United States and inviting comments on the 
revised search and examination fees. See Revision of Search and 
Examination Fees for Patent Cooperation Treaty Applications Entering 
the National Stage in the United States, 70 FR 5053 (Feb. 1, 2005), 
1292 Off. Gaz. Pat. Office 21 (Mar. 1, 2005) (interim rule). The Office 
received three written comments (from an intellectual property 
organization, and patent practitioners) in response to this notice. The 
comments and the Office's responses to the comments follow:
    Comment 1: One comment suggested that there should be greater 
search fee and examination fee reductions for applications entering the 
national stage in the United States with an international search report 
and international preliminary examination report provided by the United 
States Patent and Trademark Office acting as an International Searching 
Authority and International Preliminary Examining Authority, especially 
where an international preliminary examination report is positive, and 
for applications entering the national stage in the United States with 
an international search report and international preliminary 
examination report provided by other offices acting as an International 
Searching Authority. The comment argued that such greater fee 
reductions would be consistent with the greater fee reductions for such 
applications provided by 35 U.S.C. 41(a) prior to enactment of the 
Consolidated Appropriations Act, would encourage applicants to use the 
PCT system, and would further the implementation of the United States 
Patent and Trademark Office 21st Century Strategic Plan.
    Response: The Office will reduce the search fee to $0.00 and the 
examination fee to $0.00 where an international preliminary examination 
report on the international application prepared by the United States 
International Preliminary Examining Authority or a written opinion on 
the international

[[Page 35377]]

application prepared by the United States International Searching 
Authority states that the PCT Article 33(1) to (4) criteria have been 
satisfied for all of the claims presented in the application entering 
the national stage (Sec.  1.496(b)). The Office considers a search fee 
reduction to $100.00 ($50.00 for a small entity) for other applications 
entering the national stage in the United States with an international 
search report provided by the United States Patent and Trademark Office 
acting as an International Searching Authority to be appropriate. This 
search fee reduction (to $100.00, or $50.00 for a small entity) is 
significant, and the Office will be required to conduct additional 
searching during the course of examining an international application 
in which the PCT Article 33(1) to (4) criteria have not been satisfied 
for all of the claims presented in the application entering the 
national stage.
    The Office reduced the search fee to $400.00 ($200.00 for a small 
entity) for applications entering the national stage in the United 
States with an international search report provided by an International 
Searching Authority other than the United States Patent and Trademark 
Office. The United States Patent and Trademark Office 21st Century 
Strategic Plan contemplates significant national stage search fee 
reductions for international applications in which the international 
search report was done by an intellectual property authority with which 
the United States Patent and Trademark Office has a multilateral or 
bilateral search exchange agreement. The multilateral or bilateral 
search exchange agreements contemplated by the United States Patent and 
Trademark Office 21st Century Strategic Plan, however, are not 
currently in place. Therefore, a greater reduction in the search fee 
for applications entering the national stage in the United States with 
an international search report provided by an International Searching 
Authority other than the United States Patent and Trademark Office is 
not warranted at this time.
    Comment 2: One comment noted that the search fees and examination 
fees in Sec.  1.492 appear to apply only to international applications 
entering the national stage in the United States under 35 U.S.C. 371. 
The comment questioned whether the reduced search fees would also apply 
to a continuation application filed under 35 U.S.C. 111(a) of an 
international application (i.e., a bypass continuation application), or 
a continuation application filed under 35 U.S.C. 111(a) of an 
international application that entered the national stage in the United 
States under 35 U.S.C. 371.
    Response: The search fees and examination fees in Sec.  1.492 apply 
only to international applications entering the national stage in the 
United States under 35 U.S.C. 371. The search fees and examination fees 
in Sec.  1.492 do not apply to any application filed under 35 U.S.C. 
111(a), including continuation applications of an international 
application (i.e., a bypass continuation application), or continuation 
applications of an international application that entered the national 
stage in the United States under 35 U.S.C. 371.
    Comment 3: One comment noted that Sec.  1.492(c)(1) provides a 
reduced examination fee where the international preliminary examination 
report satisfies PCT Article 33(1) to (4) criteria for an application 
entering the national stage, but contends that the Office frequently 
delays issuance of the international preliminary examination report 
until after thirty months from the priority date, which effectively 
nullifies the examination reduction. The comment suggested revising 
Sec.  1.492(c)(1) by also providing this reduced examination fee for 
applications entering the U.S. national stage where the international 
preliminary examination report is overdue.
    Response: If the Office delays issuance of the international 
preliminary examination report until after thirty months from the 
priority date, and the international preliminary examination report 
states that the PCT Article 33(1) to (4) criteria have been satisfied 
for all of the claims presented in the application entering the 
national stage, the applicant may request a refund of the search fee 
and the examination fee. The Office will grant such a request for 
refund, however, only where the delay in issuance of the international 
preliminary examination report was the Office's fault (e.g., the Office 
will not grant a refund where the delay was due to applicant delays, or 
delays by another International Searching Authority).
    Comment 4: One comment noted that Sec.  1.496(b) appears to 
prohibit formal changes which may be necessary, and does not specify 
any specific time frame within which the application must be taken up 
for examination. The comment suggested revising Sec.  1.496 to permit 
changes to the application except for the claims, and provide that such 
applications will be taken up within three months of completion of the 
requirements of Sec.  1.495(b) and (c).
    Response: The Office did not propose substantive changes to Sec.  
1.496(b). The Office will revise Sec.  1.496(b) to indicate that such 
national stage applications ``will be advanced out of turn for 
examination.'' The Office will also consider the suggestion to amend 
Sec.  1.496(b) to permit additional changes to the application in a 
future rule making.

Rule Making Considerations

    Administrative Procedure Act: Nothing in this or any other law 
requires delayed implementation of the fee reductions in this final 
rule. 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. It is in the public interest to implement the 
reduced search and examination fees without delay 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. 
Otherwise, 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 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 benefit of the 
Office's decision to reduce specified search and examination fees 
without delay, the Office finds, pursuant to the authority provided at 
5 U.S.C. 553(d), good cause to adopt this change without thirty-day 
advance publication as such a delay would be contrary to the public 
interest.
    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.  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 final rule may be adopted without 
thirty-day

[[Page 35378]]

advance publication under 5 U.S.C. 553(d) or 35 U.S.C. 41(g).
    Regulatory Flexibility Act: The Deputy General Counsel for General 
Law of the United States Patent and Trademark Office certifies to the 
Chief Counsel for Advocacy of the Small Business Administration that 
this final rule, Revision of Search and Examination Fees for Patent 
Cooperation Treaty Applications Entering the National Stage in the 
United States (RIN 0651-AB84), will not have a significant economic 
impact on a substantial number of small entities. See 5 U.S.C. 605(b). 
Pursuant to its authority under 35 U.S.C. 376(b), the Office is 
reducing the patent fees set forth in Sec.  1.492 to less than the 
amount specified in 35 U.S.C. 41. The changes in this final rule will 
not impose any additional fees or requirements on any patent applicant. 
Rather, the changes in this final rule would eliminate search and 
examination fees for patent applicants (for both small and non-small 
entities) in specific situations where the Office performed the search 
and/or examination at the international stage of the PCT application.
    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 final 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 final 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 final 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

37 CFR Part 1

    Administrative practice and procedure, Courts, Freedom of 
Information, Inventions and patents, Reporting and record keeping 
requirements, Small Businesses.


0
For the reasons set forth in the preamble, the interim rule amending 37 
CFR Part 1 which was published at 70 FR 5053-5056 on February 1, 2005, 
is adopted as final with the following changes:

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 an international preliminary examination report on the 
international application prepared by the United States International 
Preliminary Examining Authority or a written opinion on the 
international application prepared by the United States International 
Searching 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:

By a small entity (Sec.   1.27(a))...........................      $0.00
By other than a small entity.................................      $0.00
 

    (2) If the 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))...........................     $50.00
By other than a small entity.................................    $100.00
 

    (3) If an international search report on the international 
application has been prepared by an International Searching Authority 
other than the United States International Searching Authority and is 
provided, or has been previously communicated by the International 
Bureau, to the Office:

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

    (4) In all situations not provided for in paragraphs (b)(1), 
(b)(2), or (b)(3) 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 or a written opinion on the 
international application prepared by the United States International 
Searching 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:

By a small entity (Sec.   1.27(a))...........................      $0.00
By other than a small entity.................................      $0.00
 

    (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) National stage applications having paid therein the search fee 
as set forth in Sec.  1.492(b)(1) and the examination fee as set forth 
in Sec.  1.492(c)(1) 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 will be advanced out of turn for examination.

    Date: June 10, 2005.
Jon W. Dudas,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
[FR Doc. 05-12087 Filed 6-17-05; 8:45 am]
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