[Federal Register Volume 71, Number 47 (Friday, March 10, 2006)]
[Rules and Regulations]
[Pages 12281-12285]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 06-2333]


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DEPARTMENT OF COMMERCE

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: 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 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 claims fee and the search 
fee in certain situations. This final rule revises 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.

DATES: Effective Date: March 10, 2006.
    Applicability Date: The changes in this final rule apply to any 
patent application filed under 35 U.S.C. 111(a) on or after December 8, 
2004, in which a petition under 37 CFR 1.138(d) to expressly abandon 
the application was filed on or after March 10, 2006.

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 claims 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. This final rule revises the rules of practice to implement the 
provision 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, and the provision for a refund of the excess claims fee for any 
claim that is canceled before an examination on the merits 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 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

[[Page 12282]]

examination has been made of the application under [35 U.S.C.] 131'' 
(and in part the provision in 35 U.S.C. 41(a)(2) that the Office may 
provide for a refund of any part of the excess claims fee ``for any 
claim that is canceled before an examination on the merits, as 
prescribed by the Director, 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 the search fee and excess claims fee paid in the application, 
must submit a petition and declaration of express abandonment before an 
examination has been made of the application.
    A petition under Sec.  1.138(d) will be granted if it was filed 
before an examination has been made of the application and will be 
denied if it was not filed before an examination has been made of the 
application. This will avert the situation in which an applicant files 
a declaration of express abandonment to obtain a refund of the search 
fee and excess claims fee, the request for a refund is not granted 
because the declaration of express abandonment was not filed before an 
examination has been made of the application, the applicant then wishes 
to rescind the declaration of express abandonment upon learning that 
the declaration of express abandonment was not filed before an 
examination has been made of the application, 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.
    An ``examination has been made of the application'' for purposes of 
Sec.  1.138(d) once an action (e.g., restriction or election of species 
requirement, requirement for information under Sec.  1.105, first 
Office action on the merits, notice of Allowability or allowance, or 
action under Ex parte Quayle, 1935 Dec. Comm'r Pat. 11 (1935)) is shown 
in PALM as having been counted. For purposes of Sec.  1.138(d), 
``before'' means occurring earlier in time, in that if a petition under 
Sec.  1.138(d) is filed and an action is counted on the same day, the 
petition under Sec.  1.138(d) was not filed before an examination has 
been made of the application. In addition, the date indicated on any 
certificate of mailing or transmission under Sec.  1.8 will not be 
taken into account in determining whether a petition under Sec.  
1.138(d) was filed before an examination has been made of the 
application. The Office recommends that petitions under Sec.  1.138(d) 
be submitted by facsimile to 703-305-8568 using the Office's ``Petition 
for Express Abandonment to Obtain a Refund'' form (PTO/SB/24B) to avoid 
delays in receiving and processing the petition under Sec.  1.138(d).
    The Patent Application Locating and Monitoring (PALM) system 
maintains computerized contents records of all patent applications and 
reexamination proceedings. The PALM system will show a status higher 
than 031 once an action has been counted. If the status of an 
application as shown in PALM is higher than 031 before or on the day 
that the petition under Sec.  1.138(d) was filed, the petition under 
Sec.  1.138(d) will be denied and the search fee and excess claims fee 
will not be refunded.
    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 (571) 272-4100 or toll free 
at (866) 217-9197.
    Section 1.138(d) also provides that if a request for refund of the 
search fee and excess claims 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 and excess claims 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 before an 
examination has been made of the application, the Office will not 
refund any part of the search fee or excess claims fee paid in the 
application except as provided in Sec.  1.26.
    A petition under Sec.  1.138(d) may not be effective to stop 
publication of an application unless the petition under Sec.  1.138(d) 
is granted and the abandonment processed before technical preparations 
for publication of the application has begun. Technical preparations 
for publication of an application generally begin four months prior to 
the projected date of publication.
    Response to Comments: The Office published a notice proposing 
changes to implement the patent search fee refund provisions of the 
Consolidated Appropriations Act, 2005. See Changes to Implement the 
Patent Search Fee Refund Provisions of the Consolidated Appropriations 
Act, 2005, 70 FR 35571 (Jun. 21, 2005), 1296 Off. Gaz. Pat. Office 69 
(Jul. 12, 2005) (proposed rule). The Office received four written 
comments (from an intellectual property organization, law firm, and 
patent practitioners) in response to this notice. The comments and the 
Office's responses to the comments follow:
    Comment 1: Several comments argued that the Office's decision to 
limit search fee refunds to applications that have been abandoned 
before being placed on an examiner's docket or before being taken up 
for examination was inconsistent with the Consolidated Appropriations 
Act, which provides for a search fee refund if the application is 
abandoned ``before an examination has been made of the application.'' 
The comments further argued that the Office cannot use information 
technology issues as a justification for not implementing this 
provision. Several other comments argued that the Office's decision to 
limit search fee refunds to applications that have been abandoned 
before being placed on an examiner's docket will result in only limited 
use of the process, which in turn would result in the Office needing to 
examine more applications than it would otherwise need to examine.
    Response: The Consolidated Appropriations Act permits, but does not 
require, the Office to refund, or develop procedures to refund, search 
fees or excess claims fees. See 35 U.S.C. 41(a)(2) and (d)(1)(D) 
(``[t]he Director may by regulation provide for a refund'') (emphasis 
added). The Consolidated Appropriations Act (35 U.S.C. 41(d)(1)(D)) 
gives the Office the authority to fix the time by which an application 
must be expressly abandoned for the applicant to obtain a refund of the 
search fee. 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)). The ``before an examination has been made of 
the application under [35 U.S.C.] 131'' provision (search fees) simply 
places a restriction on this authority, in that the Office does not 
have the authority to refund, or develop procedures to refund, the 
search fee in an application in which the written declaration of 
express abandonment is not filed before an

[[Page 12283]]

examination has been made of the application under 35 U.S.C. 131.
    Nevertheless, the Office is seeking to maximize any benefit that 
may be obtained by the authority in 35 U.S.C. 41(d)(1)(D) to refund the 
search fee and excess claims fee in applications that are expressly 
abandoned before an examination has been made of the application under 
35 U.S.C. 131. Therefore, the Office is revising Sec.  1.138(d) to 
change ``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'' to ``must submit a 
declaration of express abandonment by way of a petition under this 
paragraph before an examination has been made of the application,'' and 
is providing that an ``examination has been made of the application'' 
for purposes of Sec.  1.138(d) once an action (e.g., restriction or 
election of species requirement, requirement for information under 
Sec.  1.105, first Office action on the merits, notice of Allowability 
or allowance, or action under Ex parte Quayle, 1935 Dec. Comm'r Pat. 11 
(1935)) is shown in PALM as having been counted.
    Comment 2: Several comments suggested that the Office should also 
refund the excess claims fees paid in an application if the application 
is expressly abandoned under Sec.  1.138(d).
    Response: Section 1.138(d) has been revised to provide that the 
Office will also refund the excess claims fees paid in an application 
if the application is expressly abandoned under Sec.  1.138(d).
    Comment 3: One comment requested confirmation that no petition or 
other fee is required for a petition under Sec.  1.138(d) to expressly 
abandon an application.
    Response: No petition or other fee is required for a petition under 
Sec.  1.138(d) to expressly abandon an application.
    Comment 4: One comment argued that the term ``any search fee'' was 
unclear and should be replaced with ``the entire search fee'' if the 
Office plans to refund the entire search fee paid in the application.
    Response: Section 1.138(d) has been revised to replace the term 
``any search fee'' with ``the search fee.''
    Comment 5: One comment argued that: (1) Pro se inventors without 
knowledge of customer numbers and private PAIR will not be able to 
access their application to determine whether it has been placed on an 
examiner's docket; (2) it is not clear which docketing date will 
control for transferred applications as the original docket assignment 
may be changed after the transfer; (3) the proposed rule does not 
address the filing of a request for a continued examination in the 
application; and (4) the time at which an application is placed on an 
examiner's docket varies dramatically from Art Unit to Art Unit and 
from Technology Center to Technology Center. One comment suggested a 
rule that set a fixed time period within which the applicant may 
expressly abandon the application and obtain a refund of the search 
fee, with the Office notifying an applicant if the application would be 
taken up for action prior to the expiration of such fixed time period. 
Another comment suggested that the Office can avoid a significant 
information technology investment by just having the petition examiners 
use the telephone or electronic mail message to determine an 
application has been taken up for action. The comment also suggested 
that the Office simply have the examiner place an entry on the PALM 
system when a particular application was taken up for action.
    Response: The Office is revising Sec.  1.138(d) to change ``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'' to ``must submit a declaration of express abandonment 
by way of a petition under this paragraph before an examination has 
been made of the application,'' and is providing that an ``examination 
has been made of the application'' for purposes of Sec.  1.138(d) once 
an action (e.g., restriction or election of species requirement, 
requirement for information under Sec.  1.105, first Office action on 
the merits, notice of Allowability or allowance, or action under Ex 
parte Quayle, 1935 Dec. Comm'r Pat. 11 (1935)) is shown in PALM as 
having been counted. As discussed previously, an implementation of the 
search fee refund provisions of the Consolidated Appropriations Act 
that requires a significant information technology investment (e.g., 
the ability to generate notices to the applicant when an application is 
about to be taken up for action) 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.

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 in this final rule will not have a 
significant economic impact on a substantial number of small entities. 
See 5 U.S.C. 605(b). This final rule changes the rules of practice to 
implement the provisions for a refund of the search fee and excess 
claims 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 in this final 
rule would not impose any additional fees or requirements on any patent 
applicant. Rather, the changes in this final rule only provide for a 
refund of the search fee and excess claims fee 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 final rule 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 in this final rule concern the procedures for refunding the 
search fee and excess claims 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 final rule 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 final rule do affect the information 
collection requirements associated with the information collection 
under these OMB control numbers.

[[Page 12284]]

    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, POOL-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.
    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.
    Comments are invited on: (1) Whether the collection of information 
is necessary for proper performance of the functions of the agency; (2) 
the accuracy of the agency's estimate of the burden; (3) ways to 
enhance the quality, utility, and clarity of the information to be 
collected; and (4) ways to minimize the burden of the collection of 
information to respondents.
    Interested persons are requested to send comments regarding these 
information collections, including suggestions for reducing this 
burden, to: (1) The Office of Information and Regulatory Affairs, 
Office of Management and Budget, New Executive Office Building, Room 
10202, 725 17th Street, NW., Washington, DC 20503, Attention: Desk 
Officer for the Patent and Trademark Office; and (2) Robert J. Spar, 
Director, Office of Patent Legal Administration, Commissioner for 
Patents, P.O. Box 1450, Alexandria, VA 22313-1450.
    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.

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 1.138 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 the search fee and excess claims fee paid in the 
application, must submit a declaration of express abandonment by way of 
a petition under this paragraph before an examination has been made of 
the application. The date indicated on any certificate of mailing or 
transmission under Sec.  1.8 will not be taken into account in 
determining whether a petition under Sec.  1.138(d) was filed before an 
examination has been made of the application. If a request for refund 
of the search fee and excess claims 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 and excess claims 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 before an 
examination has been made of the application, the Office will not 
refund any part of the search fee and excess claims fee paid in the 
application except as provided in Sec.  1.26.


[[Page 12285]]


    Dated: March 2, 2006.
Jon W. Dudas,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
[FR Doc. 06-2333 Filed 3-9-06; 8:45 am]
BILLING CODE 3510-16-P