[Federal Register Volume 71, Number 129 (Thursday, July 6, 2006)]
[Notices]
[Pages 38388-38389]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: E6-10564]


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DEPARTMENT OF COMMERCE

Patent and Trademark Office

[Docket No.: PTO-P-2006-0034]


Size Standard for Purposes of United States Patent and Trademark 
Office Regulatory Flexibility Analysis for Patent-Related Regulations

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Request for comments.

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SUMMARY: The United States Patent and Trademark Office (USPTO) uses the 
Small Business Administration (SBA) size standard for the purpose of 
paying reduced patent fees as its size standard when conducting an 
analysis or making a certification under the Regulatory Flexibility Act 
for patent-related regulations. The Small Business Administration 
Office of Advocacy (SBA-Advocacy) has questioned whether this is the 
appropriate size standard for conducting an analysis or making a 
certification under the Regulatory Flexibility Act. Pursuant to the 
Regulatory Flexibility Act, the USPTO is providing this opportunity for 
public comment on the establishment of

[[Page 38389]]

the SBA's definition of ``small business concern'' for the purpose of 
paying reduced patent fees as the definition of ``small business 
concern'' for Regulatory Flexibility Act purposes for patent-related 
regulations.
    Comment Deadline Date: To be ensured of consideration, written 
comments must be received on or before August 7, 2006. 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 Christina T. 
Donnell. Although comments may be submitted by mail or facsimile, the 
Office prefers to receive comments via the Internet.
    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: Christina T. Donnell, Senior Petition 
Attorney, Office of Petitions, Office of the Deputy Commissioner for 
Patent Examination Policy, by telephone at (571) 272-3211, 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 Christina T. Donnell.

SUPPLEMENTARY INFORMATION: The patent statute provides that ``fees 
charged under [35 U.S.C. 41](a), (b) and (d)(1) shall be reduced by 50 
percent with respect to their application to any small business concern 
as defined under section 3 of the Small Business Act, and to any 
independent inventor or nonprofit organization as defined in 
regulations issued by the Director.'' 35 U.S.C. 41(h)(1). The SBA 
defines a small business concern for the purpose of paying reduced 
patent fees as one: ``(a) Whose number of employees, including 
affiliates, does not exceed 500 persons; and (b) Which has not 
assigned, granted, conveyed, or licensed (and is under no obligation to 
do so) any rights in the invention to any person who made it and could 
not be classified as an independent inventor, or to any concern which 
would not qualify as a non-profit organization or a small business 
concern under this section.'' 13 CFR 121.802.
    The USPTO uses the SBA size standard for the purpose of paying 
reduced patent fees in 13 CFR 121.802 as the size standard when 
conducting an analysis or making a certification under the Regulatory 
Flexibility Act for patent-related regulations. See e.g., Changes To 
Support Implementation of the United States Patent and Trademark Office 
21st Century Strategic Plan, 69 FR 56481, 56530 (Sept 21, 2004) 
(discussion indicating that small entities for purposes of Regulatory 
Flexibility Act are considered a subset of the small entities for 
purposes of paying reduced patent fees). The SBA-Advocacy, however, has 
questioned whether the USPTO's size standard is under-inclusive because 
it excludes ``any business concern that has assigned, granted, 
conveyed, or licensed (and is under no obligation to do so) any rights 
in the invention to any person who made it and could not be classified 
as an independent inventor, or to any concern which would not qualify 
as a non-profit organization or a small business concern under [13 CFR 
121.802].'' 13 CFR 121.802(b).
    The size standard set forth in 13 CFR 121.802 is the size standard 
``for the purpose of paying reduced patent fees'' and thus appears to 
be limited to payment of patent fees. See 13 CFR 121.801. The SBA small 
business size standards are set forth in 13 CFR 121.201. The USPTO uses 
the SBA size standard for the purpose of paying reduced patent fees as 
its size standard when conducting an analysis or making a certification 
under the Regulatory Flexibility Act because the USPTO has no business 
need (other than to conduct an analysis or make a certification under 
the Regulatory Flexibility Act) to collect information from patentees 
and patent applicants concerning whether they are a small business 
concern using the size standards set forth in 13 CFR 121.201, and thus, 
the USPTO does not collect this information. The USPTO is proposing to 
use the size standard set forth in 13 CFR 121.802 as its size standard 
when conducting an analysis or making a certification under the 
Regulatory Flexibility Act to avoid the need to collect information 
from patentees and patent applicants concerning whether they are a 
small business concern using the size standards set forth in 13 CFR 
121.201.
    The Regulatory Flexibility Act permits an agency head to establish, 
for purposes of Regulatory Flexibility Act analysis and certification, 
one or more definitions of ``small business concern'' that are 
appropriate to the activities of the agency, after consultation with 
the Office of Advocacy of the Small Business Administration and after 
opportunity for public comment. See 5 U.S.C. 601(3) and 13 CFR 
121.903(c). Therefore, the USPTO is publishing for comment a definition 
of small business concern for purposes of the USPTO conducting an 
analysis or making a certification under the Regulatory Flexibility Act 
for patent-related regulations. Specifically, the USPTO's definition of 
small business concern for Regulatory Flexibility Act purposes is a 
business or other concern that: (1) Meets the SBA's definition of a 
``business concern or concern'' set forth in 13 CFR 121.105; and (2) 
meets the size standards set forth in 13 CFR 121.802 for the purpose of 
paying reduced patent fees, namely an entity: (a) Whose number of 
employees, including affiliates, does not exceed 500 persons; and (b) 
which has not assigned, granted, conveyed, or licensed (and is under no 
obligation to do so) any rights in the invention to any person who made 
it and could not be classified as an independent inventor, or to any 
concern which would not qualify as a non-profit organization or a small 
business concern under this definition.

    Dated: June 28, 2006.
Jon W. Dudas,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
[FR Doc. E6-10564 Filed 7-5-06; 8:45 am]
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