[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]
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