[Federal Register Volume 70, Number 118 (Tuesday, June 21, 2005)]
[Proposed Rules]
[Pages 35571-35573]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 05-12198]


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DEPARTMENT OF COMMERCE

United States Patent and Trademark Office

37 CFR Part 1

[Docket No.: 2004-P-038]
RIN 0651-AB79


Changes To Implement the Patent Search Fee Refund Provisions of 
the Consolidated Appropriations Act, 2005

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Notice of proposed rule making.

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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. The Consolidated Appropriations 
Act also provides that the United States Patent and Trademark Office 
(Office) may refund part or all of the excess claim fee and the search 
fee in certain situations. This notice proposes changes to the rules of 
practice to implement the provisions for refunding the search fee for 
applicants who file a written declaration of express abandonment before 
an examination has been made of the application.

Comment Deadline Date:  To be ensured of consideration, written 
comments must be received on or before August 22, 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 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 Office may, by regulation, 
provide for a refund of: (1) Any part of the excess claim fee specified 
in 35 U.S.C. 41(a)(2) for any claim that is canceled before an 
examination on the merits has been made of the application under 35 
U.S.C. 131; (2) any part of the search fee for any applicant who files 
a written declaration of express abandonment as prescribed by the 
Office before an examination has been made of the application under 35 
U.S.C. 131; and (3) any part of the search fee for any applicant who 
provides a search report that meets the conditions prescribed by the 
Office. The Office is proposing to revise the rules of practice to 
implement the provisions for a refund of the search fee for any 
applicant who files a written declaration of express abandonment as 
prescribed by the Office before an examination has been made of the 
application under 35 U.S.C. 131.

Discussion of Specific Rules

    Title 37 of the Code of Federal Regulations, Part 1, is proposed to 
be amended as follows:
    Section 1.138: Section 1.138(c) is amended to change ``section'' 
(i.e., Sec.  1.138) to ``paragraph'' (i.e., Sec.  1.138(c)) to clarify 
that a petition to expressly abandon an application to avoid 
publication of an application is filed under Sec.  1.138(c) (rather 
than Sec.  1.138).
    Section 1.138 is also amended to include a new paragraph (d), which 
implements the provision in 35 U.S.C. 41(d)(1)(D) that the Office may 
provide for a refund of any part of the search fee ``for any applicant 
who files a written declaration of express abandonment as prescribed by 
the Director before an examination has been made of the application 
under [35 U.S.C.] 131.'' Section 1.138(d) specifically provides that an 
applicant seeking to abandon an application filed under 35 U.S.C. 
111(a) and Sec.  1.53(b) on or after December 8, 2004, to obtain a 
refund of any search fee paid in the application must submit a petition 
and declaration of express abandonment in sufficient time to permit the 
appropriate officials to recognize the abandonment before the 
application has been taken up for examination.
    The Office will consider an application to be ``taken up for 
examination'' for purposes of 35 U.S.C. 41(d)(1)(D) and Sec.  1.138(d) 
when the application is placed on the examiner's docket for action. 
Since the patent fee provisions of the Consolidated Appropriations Act 
expire (in the absence of subsequent legislation) on September 30, 2006 
(at the end of fiscal year 2006), the patent fee structure provided for 
in the Consolidated Appropriations Act will be in effect for less than 
two years (in the absence of subsequent legislation). Thus, the 
information technology investment necessary to permit an application to 
be considered ``taken up for examination'' at some later point in time 
(e.g., based upon the anticipated time to first action in the class/
subclass to which the application is assigned) for purposes of 35 
U.S.C. 41(d)(1)(D) and Sec.  1.138(d) is not warranted in the absence 
of the enactment of legislation which makes the patent fee structure 
provided for in the Consolidated Appropriations Act permanent.
    A petition under Sec.  1.138(d) will be granted when it is 
recognized in sufficient time to process the abandonment before the 
application has been taken up for examination and will

[[Page 35572]]

be denied when it is not recognized in sufficient time to process the 
abandonment before the application has been taken up for examination. 
This will avert the situation in which an applicant files a declaration 
of express abandonment to obtain a refund of the search fee, the 
request for a refund of the search fee is not granted because the 
declaration of express abandonment is not processed before the 
application has been taken up for examination, the applicant then 
wishes to rescind the declaration of express abandonment upon learning 
that the declaration of express abandonment was not processed before 
the application was taken up for examination, and the Office cannot 
revive the application (once the declaration of express abandonment is 
recognized) because the application was expressly and intentionally 
abandoned by the applicant.
    The Patent Application Locating and Monitoring (PALM) system 
maintains computerized contents records of all patent applications and 
reexaminations. An application has been placed on the examiner's docket 
for action (i.e., ``taken up for examination'' for purposes of Sec.  
1.138(d)) once the status of the application is ``Case Docketed to 
Examiner in GAU'' (has a status code of 030 or higher) as shown in 
PALM.
    The Patent Application Information Retrieval (PAIR) system is a 
system that provides public access to PALM for patents and applications 
that have been published. The PAIR system does not provide public 
access to information concerning applications that are maintained in 
confidence under 35 U.S.C. 122(a). The private side of PAIR, however, 
can be used by an applicant to access confidential information about 
his or her pending application. To access the private side of PAIR, a 
customer number must be associated with the correspondence address for 
the application, and the user of the system must have a digital 
certificate. For further information, contact the Customer Support 
Center of the Electronic Business Center at (703) 305-3028 or toll free 
at (866) 217-9197.
    Section 1.138(d) also provides that if a request for refund of any 
search fee paid in the application is not filed with the declaration of 
express abandonment under Sec.  1.138(d) or within two months (not 
extendable) from the date on which the declaration of express 
abandonment under Sec.  1.138(d) was filed, the Office may retain the 
entire search fee paid in the application. Finally, Sec.  1.138(d) 
provides that if a declaration of express abandonment under Sec.  
1.138(d) is not filed in sufficient time to process the abandonment 
before the application has been taken up for examination, the Office 
will not refund any part of the search fee paid in the application 
except as provided in Sec.  1.26.

Rule Making Considerations

    Regulatory Flexibility Act: For the reasons set forth herein, the 
Deputy General Counsel for General Law of the United States Patent and 
Trademark Office has certified to the Chief Counsel for Advocacy of the 
Small Business Administration that changes proposed in this notice will 
not have a significant economic impact on a substantial number of small 
entities. See 5 U.S.C. 605(b). This notice proposes changes to the 
rules of practice to implement the provisions for a refund of the 
search fee for any applicant who files a written declaration of express 
abandonment as prescribed by the Office before an examination has been 
made of the application under 35 U.S.C. 131. The changes proposed in 
this notice would not impose any additional fees or requirements on any 
patent applicant. Rather, the changes proposed in this notice would 
only provide for a refund of search fees for patent applicants (small 
or non-small entity) in certain situations.
    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 changes proposed in this notice concern 
the procedures for refunding the search fee for any applicant who files 
a written declaration of express abandonment before an examination has 
been made of the application under 35 U.S.C. 131. The collections of 
information involved in this notice have been reviewed and previously 
approved by OMB under the following OMB control numbers: 0651-0031 and 
0651-0032. The United States Patent and Trademark Office is 
resubmitting the information collections package to OMB for its review 
and approval because the changes in this notice do affect the 
information collection requirements associated with the information 
collection under these OMB control numbers.
    The title, description and respondent description of the 
information collections under OMB control numbers 0651-0031 and 0651-
0032 are shown below with estimates of the annual reporting burdens. 
Included in the estimates is the time for reviewing instructions, 
gathering and maintaining the data needed, and completing and reviewing 
the collection of information.
    OMB Number: 0651-0031.
    Title: Patent Processing (Updating).
    Form Numbers: PTO/SB/08A, PTO/SB/08B, PTO/SB/17i, PTO/SB/17p, PTO/
SB/21-27, PTO/SB/30-37, PTO/SB/42-43, PTO/SB/61-64, PTO/SB/64a, PTO/SB/
67-68, PTO/SB/91-92, PTO/SB/96-97, PTO-2053-A/B, PTO-2054-A/B, PTO-
2055-A/B, PTOL-413A.
    Type of Review: Approved through July of 2006.
    Affected Public: Individuals or households, business or other for-
profit institutions, not-for-profit Institutions, farms, Federal 
government and State, local and tribal governments.
    Estimated Number of Respondents: 2,284,439.
    Estimated Time Per Response: 1 minute and 48 seconds to 8 hours.
    Estimated Total Annual Burden Hours: 2,732,441 hours.
    Needs and Uses: During the processing of an application for a 
patent, the applicant/agent may be required or desire to submit 
additional information to the United States Patent and Trademark Office 
concerning the examination of a specific application. The specific 
information required or which may be submitted includes: Information 
Disclosures and citation, requests for extensions of time, the 
establishment of small entity status, abandonment and revival of 
abandoned applications, disclaimers, appeals, expedited examination of 
design applications, transmittal forms, requests to inspect, copy and 
access patent applications, publication requests, and certificates of 
mailing, transmittals, and submission of priority documents and 
amendments.
    OMB Number: 0651-0032.
    Title: Initial Patent Application.
    Form Number: PTO/SB/01-07, PTO/SB/13PCT, PTO/SB/16-19, PTO/SB/29 
and 29A, PTO/SB/101-110, Electronic New Utility and Provisional 
Application Forms.
    Type of Review: Approved through July of 2006.
    Affected Public: Individuals or households, Business or Other For-
Profit Institutions, Not-for-Profit Institutions, Farms, Federal 
government, and state, local, or tribal governments.
    Estimated Number of Respondents: 454,287.

[[Page 35573]]

    Estimated Time Per Response: 22 minutes to 10 hours and 45 minutes.
    Estimated Total Annual Burden Hours: 4,171,568 hours.
    Needs and Uses: The purpose of this information collection is to 
permit the Office to determine whether an application meets the 
criteria set forth in the patent statute and regulations. The standard 
Fee Transmittal form, New Utility Patent Application Transmittal form, 
New Design Patent Application Transmittal form, New Plant Patent 
Application Transmittal form, Declaration, Provisional Application 
Cover Sheet, and Plant Patent Application Declaration will assist 
applicants in complying with the requirements of the patent statute and 
regulations, and will further assist the Office in processing and 
examination of the application.
    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 record keeping 
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 1.138 is amended by revising paragraph (c) and adding 
paragraph (d) to read as follows:


Sec.  1.138  Express abandonment.

* * * * *
    (c) An applicant seeking to abandon an application to avoid 
publication of the application (see Sec.  1.211(a)(1)) must submit a 
declaration of express abandonment by way of a petition under this 
paragraph including the fee set forth in Sec.  1.17(h) in sufficient 
time to permit the appropriate officials to recognize the abandonment 
and remove the application from the publication process. Applicants 
should expect that the petition will not be granted and the application 
will be published in regular course unless such declaration of express 
abandonment and petition are received by the appropriate officials more 
than four weeks prior to the projected date of publication.
    (d) An applicant seeking to abandon an application filed under 35 
U.S.C. 111(a) and Sec.  1.53(b) on or after December 8, 2004, to obtain 
a refund of any search fee paid in the application must submit a 
declaration of express abandonment by way of a petition under this 
paragraph in sufficient time to permit the appropriate officials to 
recognize the abandonment before the application has been taken up for 
examination. If a request for refund of any search fee paid in the 
application is not filed with the declaration of express abandonment 
under this paragraph or within two months from the date on which the 
declaration of express abandonment under this paragraph was filed, the 
Office may retain the entire search fee paid in the application. This 
two-month period is not extendable. If a petition and declaration of 
express abandonment under this paragraph are not filed and granted 
before the application has been taken up for examination, the Office 
will not refund any part of the search fee paid in the application 
except as provided in Sec.  1.26.

    Dated: June 15, 2005.
Jon W. Dudas,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
[FR Doc. 05-12198 Filed 6-20-05; 8:45 am]
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