[Federal Register Volume 73, Number 107 (Tuesday, June 3, 2008)]
[Proposed Rules]
[Pages 31655-31663]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: E8-12364]


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DEPARTMENT OF COMMERCE

Patent and Trademark Office

37 CFR Parts 1 and 41

[Docket No. PTO-C02008-0004]
RIN 0651-AC21


Revision of Patent Fees for Fiscal Year 2009

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Proposed rule.

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SUMMARY: The United States Patent and Trademark Office (Office) is 
proposing to adjust certain patent fee amounts for fiscal year 2009 to 
reflect fluctuations in the Consumer Price Index (CPI). The patent 
statute provides for the annual CPI adjustment of patent fees set by 
statute to recover the higher costs associated with doing business.

DATES: Written comments must be received on or before July 3, 2008. No 
public hearing will be held.

[[Page 31656]]


ADDRESSES: You may submit comments, identified by RIN number RIN 0651-
AC21, by any of the following methods:
     Federal eRulemaking Portal: http://www.regulations.gov. 
Follow the instructions for submitting comments.
     E-mail: [email protected]. Include RIN number RIN 
0651-AC21 in the subject line of the message.
     Fax: (571) 273-6299, marked to the attention of Walter 
Schlueter.
     Mail: Director of the U.S. Patent and Trademark Office, 
P.O. Box 1450, Alexandria, VA 22313-1450, marked to the attention of 
Walter Schlueter.
    Instructions: All submissions received must include the agency name 
and Regulatory Information Number (RIN) for this proposed rule making. 
For additional information on the rule making process, see the heading 
of the SUPPLEMENTARY INFORMATION section of this document.

FOR FURTHER INFORMATION CONTACT: Walter Schlueter by e-mail at 
[email protected], by telephone at (571) 272-6299, or by fax 
at (571) 273-6299.

SUPPLEMENTARY INFORMATION: The Office is proposing to adjust certain 
patent fees in accordance with the applicable provisions of title 35, 
United States Code, as amended by the Consolidated Appropriations Act 
(Pub. L. 108-447, 118 Stat. 2809 (2004)).
    Background: Statutory Provisions: Patent fees are set by or under 
the authority provided in 35 U.S.C. 41, 119, 120, 132(b), 156, 157(a), 
255, 302, 311, 376, section 532(a)(2) of the Uruguay Round Agreements 
Act (URAA) (Pub. L. 103-465, Sec.  532(a)(2), 108 Stat. 4809, 4985 
(1994)), and section 4506 of the American Inventors Protection Act of 
1999 (AIPA) (Pub. L. 106-113, 113 Stat. 1501, 1501A-565 (1999)). For 
fees paid under 35 U.S.C. 41(a) and (b) and 132(b), independent 
inventors, small business concerns, and nonprofit organizations who 
meet the requirements of 35 U.S.C. 41(h)(1) are entitled to a fifty-
percent reduction.
    Section 41(d) of title 35, United States Code, authorizes the 
Director to establish fees for all other processing, services, or 
materials related to patents to recover the average cost of providing 
these services or materials, except for the fees for recording a 
document affecting title, for each photocopy, for each black and white 
copy of a patent, and for standard library service.
    Section 41(f) of title 35, United States Code, provides that fees 
established under 35 U.S.C. 41(a) and (b) may be adjusted on October 1, 
1992, and every year thereafter, to reflect fluctuations in the CPI 
over the previous twelve months.
    Section 41(g) of title 35, United States Code, provides that new 
fee amounts established by the Director under 35 U.S.C. 41 may take 
effect thirty days after notice in the Federal Register and the 
Official Gazette of the United States Patent and Trademark Office.
    The fiscal year 2005 Consolidated Appropriations Act (section 801 
of Division B) provided 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. See Pub. L. 108-447, 118 Stat. 2809, 2924-
30 (2004). The patent and trademark fee provisions of the fiscal year 
2005 Consolidated Appropriations Act were extended through September 
30, 2008, by subsequent legislation. See Pub. L. 110-161, 121 Stat. 
1844 (2007), Pub. L. 110-149, 121 Stat. 1819 (2007), Pub. L. 110-137, 
121 Stat. 1454 (2007), Pub. L. 110-116, 121 Stat. 1295 (2007), Pub. L. 
110-92, 121 Stat. 989 (2007), Pub. L. 110-5, 121 Stat. 8 (2007), Pub. 
L. 109-383, 120 Stat. 2678 (2006), Pub. L. 109-369, 120 Stat. 2642 
(2006), and Pub. L. 109-289, 120 Stat. 1257 (2006). The Office 
anticipates the introduction and enactment of legislation that would 
extend the patent and trademark fee provisions of the fiscal year 2005 
Consolidated Appropriations Act through fiscal year 2009.
    Fee Adjustment Level: The patent statutory fees established by 35 
U.S.C. 41(a) and (b) are proposed to be adjusted to reflect 
fluctuations occurring during the twelve-month period from October 1, 
2007, through September 30, 2008, correspondingly, in the Consumer 
Price Index for All Urban Consumers (CPI-U). The Office of Management 
and Budget has advised that in calculating these fluctuations, the 
Office should use CPI-U data as determined by the Secretary of Labor. 
In accordance with previous fee-setting methodology, the Office bases 
this fee adjustment on the Administration's projected CPI-U for the 
twelve-month period ending September 30, 2008, which is 4.0 percent. 
Based on this projected CPI-U, patent statutory fees are proposed to be 
adjusted by 4.0 percent. Before the final fee amounts are published, 
the fee amounts may be adjusted based on actual fluctuations in the 
CPI-U published by the Secretary of Labor.
    The fee amounts were rounded by applying standard arithmetic rules 
so that the amounts rounded will be convenient to the user. Fees for 
other than a small entity of $100 or more were rounded to the nearest 
$10. Fees of less than $100 were rounded to an even number so that any 
comparable small entity fee will be a whole number.
    General Procedures: Any fee amount that is paid on or after the 
effective date of the proposed fee adjustment would be subject to the 
new fees then in effect. The amount of the fee to be paid will be 
determined by the time of filing. The time of filing will be determined 
either according to the date of receipt in the Office (37 CFR 1.6) or 
the date reflected on a proper Certificate of Mailing or Transmission, 
where such a certificate is authorized under 37 CFR 1.8. Use of a 
Certificate of Mailing or Transmission is not authorized for items that 
are specifically excluded from the provisions of 37 CFR 1.8. Items for 
which a Certificate of Mailing or Transmission under 37 CFR 1.8 is not 
authorized include, for example, filing of national and international 
applications for patents. See 37 CFR 1.8(a)(2).
    Patent-related correspondence delivered by the ``Express Mail Post 
Office to Addressee'' service of the United States Postal Service 
(USPS) is considered filed or received in the Office on the date of 
deposit with the USPS. See 37 CFR 1.10(a)(1). The date of deposit with 
the USPS is shown by the ``date-in'' on the ``Express Mail'' mailing 
label or other official USPS notation.
    To ensure clarity in the implementation of the proposed new fees, a 
discussion of specific sections is set forth below.

Discussion of Specific Rules

    37 CFR 1.16 National application filing, search, and examination 
fees: Section 1.16, paragraphs (a) through (e), (h) through (k), and 
(m) through (s), if revised as proposed, would adjust fees established 
therein to reflect fluctuations in the CPI.
    37 CFR 1.17 Patent application and reexamination processing fees: 
Section 1.17, paragraphs (a)(2) through (a)(5), (l), and (m), if 
revised as proposed, would adjust fees established therein to reflect 
fluctuations in the CPI.
    37 CFR 1.18 Patent post allowance (including issue) fees: Section 
1.18, paragraphs (a) through (c), if revised as proposed, would adjust 
fees established therein to reflect fluctuations in the CPI.
    37 CFR 1.20 Post issuance fees: Section 1.20, paragraphs (c)(3), 
(c)(4), and (d) through (g), if revised as proposed, would adjust fees 
established therein to reflect fluctuations in the CPI.

[[Page 31657]]

    37 CFR 1.492 National stage fees: Section 1.492, paragraphs (a), 
(b)(3), (b)(4), (c)(2), (d) through (f), and (j), if revised as 
proposed, would adjust fees established therein to reflect fluctuations 
in the CPI.
    37 CFR 41.20 Fees: Section 41.20, paragraphs (b)(1) through (b)(3), 
if revised as proposed, would adjust fees established therein to 
reflect fluctuations in the CPI.
    Alternative Fee Amounts if Legislation Extending the Patent and 
Trademark Fee Provisions of the Fiscal Year 2005 Consolidated 
Appropriations Act is Not Enacted: If legislation that would extend the 
patent and trademark fee provisions of the fiscal year 2005 
Consolidated Appropriations Act into fiscal year 2009 is not enacted, 
patent fees under 35 U.S.C. 41(a), (b), and (d) will become the patent 
fees in effect in the absence of the fiscal year 2005 Consolidated 
Appropriations Act. The Office is therefore also proposing to adjust 
the patent fees under 35 U.S.C. 41(a), (b), and (d) that would be in 
effect in the absence of the fiscal year 2005 Consolidated 
Appropriations Act for fiscal year 2009 to reflect fluctuations in the 
Consumer Price Index (CPI). The following table (Table 1) sets out the 
proposed fee amounts in the event that legislation extending the patent 
and trademark fee provisions of the fiscal year 2005 Consolidated 
Appropriations Act into fiscal year 2009 is not enacted.

                                                     Table 1
----------------------------------------------------------------------------------------------------------------
                                                                               Proposed fee       Proposed fee
               37 CFR sec.                               Fee                amount (non-small    amount (small
                                                                                 entity)            entity)
----------------------------------------------------------------------------------------------------------------
1.16(a).................................  Basic filing fee--utility                   $840.00            $420.00
                                           application.
1.16(b).................................  Independent claims in excess of               94.00              47.00
                                           three.
1.16(d).................................  Multiple dependent claim........             320.00             160.00
1.16(f).................................  Basic filing fee--design                     370.00             185.00
                                           application.
1.16(g).................................  Basic filing fee--plant                      590.00             295.00
                                           application.
1.16(h).................................  Basic filing fee--reissue                    840.00             420.00
                                           application.
1.16(i).................................  Independent claims in excess of               94.00              47.00
                                           three--reissue.
1.16(k).................................  Basic filing fee--provisional                170.00              85.00
                                           application.
1.17(a)(2)..............................  Extension for response within                460.00             230.00
                                           second month.
1.17(a)(3)..............................  Extension for response within              1,050.00             525.00
                                           third month.
1.17(a)(4)..............................  Extension for response within              1,640.00             820.00
                                           fourth month.
1.17(a)(5)..............................  Extension for response within              2,230.00           1,115.00
                                           fifth month.
1.17(m).................................  Petition to revive--                       1,470.00             735.00
                                           unintentionally abandoned
                                           application.
1.18(a).................................  Issue fee--utility application..           1,470.00             735.00
1.18(b).................................  Issue fee--design application...             520.00             260.00
1.18(c).................................  Issue fee--plant application....             710.00             355.00
1.20(e).................................  Maintenance fee--due at 3.5                1,010.00             505.00
                                           years.
1.20(f).................................  Maintenance fee--due at 7.5                2,300.00           1,150.00
                                           years.
1.20(g).................................  Maintenance fee--due at 11.5               3,550.00           1,775.00
                                           years.
1.492(a)(1).............................  IPEA--U.S.......................             800.00             400.00
1.492(a)(2).............................  ISA--U.S........................             840.00             420.00
1.492(a)(3).............................  USPTO not ISA or IPEA...........           1,190.00             595.00
1.492(a)(5).............................  Filing with EPO or JPO search              1,020.00             510.00
                                           report.
1.492(b)................................  Independent claims in excess of               94.00              47.00
                                           three.
1.492(d)................................  Multiple dependent claim........             320.00             160.00
41.20(b)(1).............................  Notice of appeal................             360.00             180.00
41.20(b)(2).............................  Brief in support of an appeal...             360.00             180.00
41.20(b)(3).............................  Request for oral hearing........             320.00             160.00
----------------------------------------------------------------------------------------------------------------

Rulemaking Considerations

A. Initial Regulatory Flexibility Analysis

    1. Description of the reasons that action by the agency is being 
considered: The Office is proposing to adjust the patent fees set under 
35 U.S.C. 41(a) and (b) to ensure proper funding for effective Office 
operations. The patent fee CPI adjustment is a routine adjustment that 
has generally occurred on an annual basis to recover the higher costs 
of Office's operations that occur due to the increase in the price of 
products and services. The lack of proper funding for effective Office 
operations would result in a significant increase in patent pendency 
levels.
    2. Succinct statement of the objectives of, and legal basis for, 
the proposed rules: The objective of the proposed change is to adjust 
patent fees set under 35 U.S.C. 41(a) and (b) to recover the higher 
costs of Office operations. Patent fees are set by or under the 
authority provided in 35 U.S.C. 41, 119, 120, 132(b), 156, 157(a), 255, 
302, 311, 376, section 532(a)(2) of the URAA, and 4506 of the AIPA. 35 
U.S.C. 41(f) provides that fees established under 35 U.S.C. 41(a) and 
(b) may be adjusted every year to reflect fluctuations in the CPI over 
the previous twelve months.
    3. Description and estimate of the number of affected small 
entities: The Small Business Administration (SBA) small business size 
standards applicable to most analyses conducted to comply with the 
Regulatory Flexibility Act are set forth in 13 CFR 121.201. These 
regulations generally define small businesses as those with fewer than 
a maximum number of employees or less than a specified level of annual 
receipts for the entity's industrial sector or North American Industry 
Classification System (NAICS) code. The Office, however, has formally 
adopted an alternate size standard as the size standard for the purpose 
of conducting an analysis or making a certification under the 
Regulatory Flexibility Act for patent-related regulations. See Business 
Size Standard for Purposes of United States Patent and Trademark Office 
Regulatory Flexibility Analysis for Patent-Related Regulations, 71 FR 
67109 (Nov. 20, 2006), 1313 Off. Gaz. Pat. Office 60 (Dec. 12, 2006). 
This alternate small business size standard is the previously 
established size standard that identifies the criteria entities must 
meet to be entitled to pay reduced patent fees. See 13 CFR 121.802. If 
patent applicants identify themselves on

[[Page 31658]]

the patent application as qualifying for reduced patent fees, the 
Office captures this data in the Patent Application Location and 
Monitoring (PALM) database system, which tracks information on each 
patent application submitted to the Office.
    Unlike the SBA small business size standards set forth in 13 CFR 
121.201, this size standard is not industry-specific. Specifically, the 
Office'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. See Business Size Standard for Purposes of United States 
Patent and Trademark Office Regulatory Flexibility Analysis for Patent-
Related Regulations, 71 FR at 67112, 1313 Off. Gaz. Pat. Office at 63.
    The changes in this proposed rule will apply to any small entity 
that files a patent application, or has a pending patent application or 
unexpired patent. The changes in this proposed rule will specifically 
apply when an applicant or patentee pays an application filing or 
national stage entry fee, search fee, examination fee, excess or 
multiple dependent claim fee, application size fee, extension of time 
fee, notice of appeal fee, appeal brief fee, request for an oral 
hearing fee, disclaimer fee, petition to revive fee, issue fee, or 
patent maintenance fee. The following table (Table 2) indicates the 
applicable fee, the number of small entity payments of the fee received 
by the Office in fiscal year 2007 (number of small entities who paid 
the applicable fee in fiscal year 2007), the current small entity fee 
amount, the proposed small entity fee amount, and the net amount of the 
small entity fee adjustment.

                                                     Table 2
----------------------------------------------------------------------------------------------------------------
                                                    Fiscal year
                                                    2007 small      Current fee    Proposed fee         Fee
                       Fee                            entity          amount          amount        adjustment
                                                     payments
----------------------------------------------------------------------------------------------------------------
Basic filing fee--utility application--                   41,519           75.00           80.00            5.00
 electronic filing..............................
Basic filing fee--utility application (on or              45,832          155.00          160.00            5.00
 after December 8, 2004)........................
Basic filing fee--utility application (before                 66          405.00          420.00           15.00
 December 8, 2004)..............................
Basic filing fee--design application (on or               12,846          105.00          110.00            5.00
 after December 8, 2004)........................
Basic filing fee--design application (before                  11          180.00          185.00            5.00
 December 8, 2004)..............................
Basic filing fee--plant application (on or after             327          105.00          110.00            5.00
 December 8, 2004)..............................
Basic filing fee--plant application (before                    0          285.00          295.00           10.00
 December 8, 2004)..............................
Basic filing fee--provisional application.......          83,712          105.00          110.00            5.00
Basic filing fee--reissue application (on or                 181          155.00          160.00            5.00
 after December 8, 2004)........................
Basic filing fee--reissue application (before                  1          405.00          420.00           15.00
 December 8, 2004)..............................
Independent claims in excess of three...........          26,418          105.00          110.00            5.00
Claims in excess of 20..........................          41,100           25.00           26.00            1.00
Multiple dependent claim........................           2,503          185.00          190.00            5.00
Search fee--utility application (on or after              86,469          255.00          265.00           10.00
 December 8, 2004)..............................
Search fee--plant application (on or after                   326          155.00          160.00            5.00
 December 8, 2004)..............................
Search fee--reissue application (on or after                 180          255.00          265.00           10.00
 December 8, 2004)..............................
Examination fee--utility application (on or               86,658          105.00          110.00            5.00
 after December 8, 2004)........................
Examination fee--design application (on or after          12,615           65.00           70.00            5.00
 December 8, 2004)..............................
Examination fee--plant application (on or after              327           80.00           85.00            5.00
 December 8, 2004)..............................
Examination fee--reissue application (on or                  191          310.00          320.00           10.00
 after December 8, 2004)........................
Application size fee greater than 100 pages.....           5,469          130.00          135.00            5.00
Extension for response within second month......          17,339          230.00          235.00            5.00
Extension for response within third month.......          23,818          525.00          540.00           15.00
Extension for response within fourth month......           2,277          820.00          845.00           25.00
Extension for response within fifth month.......           2,700        1,115.00        1,150.00           35.00
Petition to revive--unavoidably abandoned                    174          255.00          265.00           10.00
 application....................................
Petition to revive--unintentionally abandoned              3,271          770.00          800.00           30.00
 application....................................
Issue fee--utility application..................          33,718          720.00          750.00           30.00
Issue fee--design application...................          10,398          410.00          425.00           15.00
Issue fee--plant application....................             298          565.00          590.00           25.00
Reexamination independent claims in excess of                 37          105.00          110.00            5.00
 three..........................................
Reexamination claims in excess of 20............              45           25.00           26.00            1.00
Statutory disclaimer............................           6,248           65.00           70.00            5.00
Maintenance fee--due at 3.5 years...............          32,577          465.00          485.00           20.00
Maintenance fee--due at 7.5 years...............          20,981        1,180.00        1,225.00           45.00
Maintenance fee--due at 11.5 years..............           8,130        1,955.00        2,035.00           80.00
Filing of PCT application--USPTO ISA--national            11,807          155.00          160.00            5.00
 stage..........................................
National stage search fee--search report to                8,440          205.00          215.00           10.00
 USPTO..........................................
National stage search fee--all other situations.           1,029          255.00          265.00           10.00
National stage examination fee--all other                 11,262          105.00          110.00            5.00
 situations.....................................
Independent claims in excess of three...........           3,272          105.00          110.00            5.00
Claims in excess of 20..........................           5,913           25.00           26.00            1.00
Multiple dependent claim........................           1,178          185.00          190.00            5.00
Application size fee greater than 100 pages.....             573          130.00          135.00            5.00
Notice of appeal................................           5,978          255.00          265.00           10.00
Brief in support of an appeal...................           2,640          255.00          265.00           10.00
Request for oral hearing........................             233          515.00          535.00           20.00
----------------------------------------------------------------------------------------------------------------


[[Page 31659]]

    The Office has also been advised that a number of small entity 
applicants and patentees do not claim small entity status for various 
reasons. See Business Size Standard for Purposes of United States 
Patent and Trademark Office Regulatory Flexibility Analysis for Patent-
Related Regulations, 71 FR at 67110, 1313 Off. Gaz. Pat. Office at 61. 
Therefore, the Office is also considering all other entities paying 
patent fees as well. The following table (Table 3) indicates the 
applicable fee, the number of non-small entity payments of the fee 
received by the Office in fiscal year 2007 (number of non-small 
entities who paid the applicable fee in fiscal year 2007), the current 
non-small entity fee amount, the proposed non-small entity fee amount, 
and the net amount of the non-small entity fee adjustment.

                                                     Table 3
----------------------------------------------------------------------------------------------------------------
                                                    Fiscal year
                                                  2007 non-small    Current fee    Proposed fee         Fee
                       Fee                            entity          amount          amount        adjustment
                                                     payments
----------------------------------------------------------------------------------------------------------------
Basic filing fee--utility application (on or             209,577          310.00          320.00           10.00
 after December 8, 2004)........................
Basic filing fee--utility application (before                311          810.00          840.00           30.00
 December 8, 2004)..............................
Basic filing fee--design application (on or               13,400          210.00          220.00           10.00
 after December 8, 2004)........................
Basic filing fee--design application (before                  72          360.00          370.00           10.00
 December 8, 2004)..............................
Basic filing fee--plant application (on or after             680          210.00          220.00           10.00
 December 8, 2004)..............................
Basic filing fee--plant application (before                    0          570.00          590.00           20.00
 December 8, 2004)..............................
Basic filing fee--provisional application.......          47,925          210.00          220.00           10.00
Basic filing fee--reissue application (on or                 689          310.00          320.00           10.00
 after December 8, 2004)........................
Basic filing fee--reissue application (before                  1          810.00          840.00           30.00
 December 8, 2004)..............................
Independent claims in excess of three...........          77,135          210.00          220.00           10.00
Claims in excess of 20..........................         102,973           50.00           52.00            2.00
Multiple dependent claim........................           5,944          370.00          380.00           10.00
Search fee--utility application (on or after             209,135          510.00          530.00           20.00
 December 8, 2004)..............................
Search fee--plant application (on or after                   681          310.00          320.00           10.00
 December 8, 2004)..............................
Search fee--reissue application (on or after                 688          510.00          530.00           20.00
 December 8, 2004)..............................
Examination fee--utility application (on or              209,465          210.00          220.00           10.00
 after December 8, 2004)........................
Examination fee--design application (on or after          13,261          130.00          140.00           10.00
 December 8, 2004)..............................
Examination fee--plant application (on or after              681          160.00          170.00           10.00
 December 8, 2004)..............................
Examination fee--reissue application (on or                  707          620.00          640.00           20.00
 after December 8, 2004)........................
Application size fee greater than 100 pages.....          11,257          260.00          270.00           10.00
Extension for response within second month......          42,308          460.00          470.00           10.00
Extension for response within third month.......          41,489        1,050.00        1,080.00           30.00
Extension for response within fourth month......           3,105        1,640.00        1,690.00           50.00
Extension for response within fifth month.......           3,482        2,230.00        2,300.00           70.00
Petition to revive--unavoidably abandoned                    127          510.00          530.00           20.00
 application....................................
Petition to revive--unintentionally abandoned              4,180        1,540.00        1,600.00           60.00
 application....................................
Issue fee--utility application..................         122,251        1,440.00        1,500.00           60.00
Issue fee--design application...................          12,433          820.00          850.00           30.00
Issue fee--plant application....................             673        1,130.00        1,180.00           50.00
Reexamination independent claims in excess of                132          210.00          220.00           10.00
 three..........................................
Reexamination claims in excess of 20............             151           50.00           52.00            2.00
Statutory disclaimer............................          21,218          130.00          140.00           10.00
Maintenance fee--due at 3.5 years...............         125,653          930.00          970.00           40.00
Maintenance fee--due at 7.5 years...............          88,487        2,360.00        2,450.00           90.00
Maintenance fee--due at 11.5 years..............          42,193        3,910.00        4,070.00          160.00
Filing of PCT application--USPTO ISA--national            41,842          310.00          320.00           10.00
 stage..........................................
National stage search fee--search report to               38,457          410.00          430.00           20.00
 USPTO..........................................
National stage search fee--all other situations.           2,429          510.00          530.00           20.00
National stage examination fee--all other                 41,044          210.00          220.00           10.00
 situations.....................................
Independent claims in excess of three...........           9,367          210.00          220.00           10.00
Claims in excess of 20..........................          14,983           50.00           52.00            2.00
Multiple dependent claim........................           3,998          370.00          380.00           10.00
Application size fee greater than 100 pages.....           2,102          260.00          270.00           10.00
Notice of appeal................................          21,646          510.00          530.00           20.00
Brief in support of an appeal...................          11,950          510.00          530.00           20.00
Request for oral hearing........................             736        1,030.00        1,070.00           40.00
----------------------------------------------------------------------------------------------------------------

    4. Description of the projected reporting, recordkeeping and other 
compliance requirements of the proposed rules, including an estimate of 
the classes of small entities which will be subject to the requirement 
and the type of professional skills necessary for preparation of the 
report or record: This notice does not propose any reporting, 
recordkeeping and other compliance requirements. This notice proposes 
only to adjust patent fees (as discussed previously) to reflect changes 
in the CPI.
    5. Description of any significant alternatives to the proposed 
rules which accomplish the stated objectives of applicable statutes and 
which minimize any significant economic impact of the proposed rules on 
small entities: The alternative of not adjusting patent fees would have 
a lesser economic impact on small entities, but would not accomplish 
the stated objectives of applicable statutes. The Office is proposing 
to adjust the patent fees to ensure proper funding for effective Office 
operations. The patent fee CPI adjustment is a routine adjustment that 
has generally occurred on an annual basis to recover the higher costs 
of

[[Page 31660]]

Office's operations that occur due to the increase in the price of 
products and services. The lack of proper funding for effective Office 
operations would result in a significant increase in patent pendency 
levels.
    6. Identification, to the extent practicable, of all relevant 
Federal rules which may duplicate, overlap or conflict with the 
proposed rules: The Office is the sole agency of the United States 
Government responsible for administering the provisions of title 35, 
United States Code, pertaining to examination and granting patents. 
Therefore, no other federal, state, or local entity shares jurisdiction 
over the examination and granting patents.
    Other countries, however, have their own patent laws, and an entity 
desiring a patent in a particular country must make an application for 
patent in that country, in accordance with the applicable law. Although 
the potential for overlap exists internationally, this cannot be 
avoided except by treaty (such as the Paris Convention for the 
Protection of Industrial Property, or the Patent Cooperation Treaty 
(PCT)).
    Nevertheless, the Office believes that there are no other 
duplicative or overlapping rules.

B. Executive Order 13132 (Federalism)

    This rulemaking does not contain policies with federalism 
implications sufficient to warrant preparation of a Federalism 
Assessment under Executive Order 13132 (Aug. 4, 1999).

C. Executive Order 12866 (Regulatory Planning and Review)

    This rulemaking has been determined to be significant for purposes 
of Executive Order 12866 (Sept. 30, 1993), as amended by Executive 
Order 13258 (Feb. 26, 2002) and Executive Order 13422 (Jan. 18, 2007).

D. Executive Order 13175 (Tribal Consultation)

    This rulemaking will not: (1) Have substantial direct effects on 
one or more Indian tribes; (2) impose substantial direct compliance 
costs on Indian tribal governments; or (3) preempt tribal law. 
Therefore, a tribal summary impact statement is not required under 
Executive Order 13175 (Nov. 6, 2000).

E. Executive Order 13211 (Energy Effects)

    This rulemaking is not a significant energy action under Executive 
Order 13211 because this rulemaking is not likely to have a significant 
adverse effect on the supply, distribution, or use of energy. 
Therefore, a Statement of Energy Effects is not required under 
Executive Order 13211 (May 18, 2001).

F. Executive Order 12988 (Civil Justice Reform)

    This rulemaking meets applicable standards to minimize litigation, 
eliminate ambiguity, and reduce burden as set forth in sections 3(a) 
and 3(b)(2) of Executive Order 12988 (Feb. 5, 1996).

G. Executive Order 13045 (Protection of Children)

    This rulemaking is not an economically significant rule and does 
not concern an environmental risk to health or safety that may 
disproportionately affect children under Executive Order 13045 (Apr. 
21, 1997).

H. Executive Order 12630 (Taking of Private Property)

    This rulemaking will not effect a taking of private property or 
otherwise have taking implications under Executive Order 12630 (Mar. 
15, 1988).

I. Congressional Review Act

    Under the Congressional Review Act provisions of the Small Business 
Regulatory Enforcement Fairness Act of 1996 (5 U.S.C. 801 et seq.), 
prior to issuing any final rule, the United States Patent and Trademark 
Office will submit a report containing the final rule and other 
required information to the U.S. Senate, the U.S. House of 
Representatives and the Comptroller General of the Government 
Accountability Office. The changes proposed in this notice are not 
expected to result in an annual effect on the economy of 100 million 
dollars or more, a major increase in costs or prices, or significant 
adverse effects on competition, employment, investment, productivity, 
innovation, or the ability of United States-based enterprises to 
compete with foreign-based enterprises in domestic and export markets. 
Therefore, this rulemaking is not likely to result in a ``major rule'' 
as defined in 5 U.S.C. 804(2).

J. Unfunded Mandates Reform Act of 1995:

    The changes proposed in this notice do not involve a Federal 
intergovernmental mandate that will result in the expenditure by State, 
local, and tribal governments, in the aggregate, of 100 million dollars 
(as adjusted) or more in any one year, or a Federal private sector 
mandate that will result in the expenditure by the private sector of 
100 million dollars (as adjusted) or more in any one year, and will not 
significantly or uniquely affect small governments. Therefore, no 
actions are necessary under the provisions of the Unfunded Mandates 
Reform Act of 1995. See 2 U.S.C. 1501 et seq.

K. National Environmental Policy Act

    This rulemaking will not have any effect on the quality of 
environment and is thus categorically excluded from review under the 
National Environmental Policy Act of 1969. See 42 U.S.C. 4321 et seq.

L. National Technology Transfer and Advancement Act

    The requirements of section 12(d) of the National Technology 
Transfer and Advancement Act of 1995 (15 U.S.C. 272 note) are 
inapplicable because this rulemaking does not contain provisions which 
involve the use of technical standards.

M. Paperwork Reduction Act

    This proposed 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 collections of information involved in this proposed rule 
have been reviewed and approved by OMB under OMB control numbers 0651-
0016, 0651-0021, 0651-0031, 0651-0032, and 0651-0033. The Office is not 
resubmitting information collection packages to OMB for its review and 
approval at this time because the changes proposed in this notice 
revise the fees for existing information collection requirements 
associated with the information collections under OMB control numbers 
0651-0016, 0651-0021, 0651-0031, 0651-0032, and 0651-0033. The Office 
will submit fee revision changes for OMB control numbers 0651-0016, 
0651-0021, 0651-0031, 0651-0032, and 0651-0033 to OMB for review if the 
changes proposed in this notice are adopted.
    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

[[Page 31661]]

20503, Attention: Desk Officer for the Patent and Trademark Office; and 
(2) Robert A. Clarke, 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

37 CFR Part 1

    Administrative practice and procedure, Courts, Freedom of 
Information, Inventions and patents, Reporting and recordkeeping 
requirements, Small businesses.

37 CFR Part 41

    Administrative practice and procedure, Inventions and patents, 
Lawyers.

    For the reasons set forth in the preamble, 37 CFR parts 1 and 41 
are 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 1.16 is amended by revising paragraphs (a) through (e), 
(h) through (k), and (m) through (s) to read as follows:


Sec.  1.16  National application filing, search, and examination fees.

    (a) Basic fee for filing each application under 35 U.S.C. 111 for 
an original patent, except design, plant, or provisional applications:
    (1) For an application filed on or after December 8, 2004:

By a small entity (Sec.   1.27(a)) if the application is          $80.00
 submitted in compliance with the Office electronic filing
 system (Sec.   1.27(b)(2))..................................
By a small entity (Sec.   1.27(a))...........................     160.00
By other than a small entity.................................     320.00
 

    (2) For an application filed before December 8, 2004:

By a small entity (Sec.   1.27(a))...........................    $420.00
By other than a small entity.................................     840.00
 

    (b) Basic fee for filing each application for an original design 
patent:
    (1) For an application filed on or after December 8, 2004:

By a small entity (Sec.   1.27(a))...........................    $110.00
By other than a small entity.................................     220.00
 

    (2) For an application filed before December 8, 2004:

By a small entity (Sec.   1.27(a))...........................    $185.00
By other than a small entity.................................     370.00
 

    (c) Basic fee for filing each application for an original plant 
patent:
    (1) For an application filed on or after December 8, 2004:

By a small entity (Sec.   1.27(a))...........................    $110.00
By other than a small entity.................................     220.00
 

    (2) For an application filed before December 8, 2004:

By a small entity (Sec.   1.27(a))...........................    $295.00
By other than a small entity.................................     590.00
 

    (d) Basic fee for filing each provisional application:

By a small entity (Sec.   1.27(a))...........................    $110.00
By other than a small entity.................................     220.00
 

    (e) Basic fee for filing each application for the reissue of a 
patent:
    (1) For an application filed on or after December 8, 2004:

By a small entity (Sec.   1.27(a))...........................    $160.00
By other than a small entity.................................     320.00
 

    (2) For an application filed before December 8, 2004:

By a small entity (Sec.   1.27(a))...........................    $420.00
By other than a small entity.................................     840.00
 

* * * * *
    (h) In addition to the basic filing fee in an application, other 
than a provisional application, for filing or later presentation at any 
other time of each claim in independent form in excess of 3:

By a small entity (Sec.   1.27(a))...........................    $110.00
By other than a small entity.................................     220.00
 

    (i) In addition to the basic filing fee in an application, other 
than a provisional application, for filing or later presentation at any 
other time of each claim (whether dependent or independent) in excess 
of 20 (note that Sec.  1.75(c) indicates how multiple dependent claims 
are considered for fee calculation purposes):

By a small entity (Sec.   1.27(a))...........................     $26.00
By other than a small entity.................................      52.00
 

    (j) In addition to the basic filing fee in an application, other 
than a provisional application, that contains, or is amended to 
contain, a multiple dependent claim, per application:

By a small entity (Sec.   1.27(a))...........................    $190.00
By other than a small entity.................................     380.00
 

    (k) Search fee for each application filed under 35 U.S.C. 111 on or 
after December 8, 2004, for an original patent, except design, plant, 
or provisional applications:

By a small entity (Sec.   1.27(a))...........................    $265.00
By other than a small entity.................................     530.00
 

* * * * *
    (m) Search fee for each application filed on or after December 8, 
2004, for an original plant patent:

By a small entity (Sec.   1.27(a))...........................    $160.00
By other than a small entity.................................     320.00
 

    (n) Search fee for each application filed on or after December 8, 
2004, for the reissue of a patent:

By a small entity (Sec.   1.27(a))...........................    $265.00
By other than a small entity.................................     530.00
 

    (o) Examination fee for each application filed under 35 U.S.C. 111 
on or after December 8, 2004, for an original patent, except design, 
plant, or provisional applications:

By a small entity (Sec.   1.27(a))...........................    $110.00
By other than a small entity.................................     220.00
 

    (p) Examination fee for each application filed on or after December 
8, 2004, for an original design patent:

By a small entity (Sec.   1.27(a))...........................     $70.00
By other than a small entity.................................     140.00
 

    (q) Examination fee for each application filed on or after December 
8, 2004, for an original plant patent:

By a small entity (Sec.   1.27(a))...........................     $85.00
By other than a small entity.................................     170.00
 

    (r) Examination fee for each application filed on or after December 
8, 2004, for the reissue of a patent:

By a small entity (Sec.   1.27(a))...........................    $320.00
By other than a small entity.................................     640.00
 

    (s) Application size fee for any application under 35 U.S.C. 111 
filed on or after December 8, 2004, the specification and drawings of 
which exceed 100 sheets of paper, for each additional 50 sheets or 
fraction thereof:

By a small entity (Sec.   1.27(a))...........................    $135.00
By other than a small entity.................................     270.00
 

* * * * *
    3. Section 1.17 is amended by revising paragraphs (a)(2) through 
(a)(5), (l), and (m) to read as follows:


Sec.  1.17  Patent application and reexamination processing fees.

    (a) * * *
    (2) For reply within second month:

By a small entity (Sec.   1.27(a))...........................    $235.00
By other than a small entity.................................     470.00
 

    (3) For reply within third month:

By a small entity (Sec.   1.27(a))...........................    $540.00
By other than a small entity.................................   1,080.00
 

    (4) For reply within fourth month:

By a small entity (Sec.   1.27(a))...........................    $845.00
By other than a small entity.................................   1,690.00
 

    (5) For reply within fifth month:

By a small entity (Sec.   1.27(a))...........................  $1,150.00
By other than a small entity.................................   2,300.00
 

* * * * *
    (l) For filing a petition for the revival of an unavoidably 
abandoned application under 35 U.S.C. 111, 133,

[[Page 31662]]

364, or 371, for the unavoidably delayed payment of the issue fee under 
35 U.S.C. 151, or for the revival of an unavoidably terminated 
reexamination proceeding under 35 U.S.C. 133 (Sec.  1.137(a)):

By a small entity (Sec.   1.27(a))...........................    $265.00
By other than a small entity.................................     530.00
 

    (m) For filing a petition for the revival of an unintentionally 
abandoned application, for the unintentionally delayed payment of the 
fee for issuing a patent, or for the revival of an unintentionally 
terminated reexamination proceeding under 35 U.S.C. 41(a)(7) (Sec.  
1.137(b)):

By a small entity (Sec.   1.27(a))...........................    $800.00
By other than a small entity.................................   1,600.00
 

* * * * *
    4. Section 1.18 is amended by revising paragraphs (a) through (c) 
to read as follows:


Sec.  1.18  Patent post allowance (including issue) fees.

    (a) Issue fee for issuing each original patent, except a design or 
plant patent, or for issuing each reissue patent:

By a small entity (Sec.   1.27(a))...........................    $750.00
By other than a small entity.................................   1,500.00
 

    (b) Issue fee for issuing an original design patent:

By a small entity (Sec.   1.27(a))...........................    $425.00
By other than a small entity.................................     850.00
 

    (c) Issue fee for issuing an original plant patent:

By a small entity (Sec.   1.27(a))...........................    $590.00
By other than a small entity.................................   1,180.00
 

* * * * *
    5. Section 1.20 is amended by revising paragraphs (c)(3), (c)(4), 
and (d) through (g) to read as follows:


Sec.  1.20  Post issuance fees.

* * * * *
    (c) * * *
    (3) For filing with a request for reexamination or later 
presentation at any other time of each claim in independent form in 
excess of 3 and also in excess of the number of claims in independent 
form in the patent under reexamination:

By a small entity (Sec.   1.27(a))...........................    $110.00
By other than a small entity.................................     220.00
 

    (4) For filing with a request for reexamination or later 
presentation at any other time of each claim (whether dependent or 
independent) in excess of 20 and also in excess of the number of claims 
in the patent under reexamination (note that Sec.  1.75(c) indicates 
how multiple dependent claims are considered for fee calculation 
purposes):

By a small entity (Sec.   1.27(a))...........................     $26.00
By other than a small entity.................................      52.00
 

* * * * *
    (d) For filing each statutory disclaimer (Sec.  1.321):

By a small entity (Sec.   1.27(a))...........................     $70.00
By other than a small entity.................................     140.00
 

    (e) For maintaining an original or reissue patent, except a design 
or plant patent, based on an application filed on or after December 12, 
1980, in force beyond four years, the fee being due by three years and 
six months after the original grant:

By a small entity (Sec.   1.27(a))...........................    $485.00
By other than a small entity.................................     970.00
 

    (f) For maintaining an original or reissue patent, except a design 
or plant patent, based on an application filed on or after December 12, 
1980, in force beyond eight years, the fee being due by seven years and 
six months after the original grant:

By a small entity (Sec.   1.27(a))...........................  $1,225.00
By other than a small entity.................................   2,450.00
 

    (g) For maintaining an original or reissue patent, except a design 
or plant patent, based on an application filed on or after December 12, 
1980, in force beyond twelve years, the fee being due by eleven years 
and six months after the original grant:

By a small entity (Sec.   1.27(a))...........................  $2,035.00
By other than a small entity.................................   4,070.00
 

* * * * *
    6. Section 1.492 is amended by revising paragraphs (a), (b)(3), 
(b)(4), (c)(2), (d) through (f) and (j) to read as follows:


Sec.  1.492  National stage fees.

* * * * *
    (a) The basic national 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:

By a small entity (Sec.   1.27(a))...........................    $160.00
By other than a small entity.................................     320.00
 

    (b) * * *
    (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))...........................    $215.00
By other than a small entity.................................     430.00
 

    (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))...........................    $265.00
By other than a small entity.................................     530.00
 

    (c) * * *
    (2) In all situations not provided for in paragraph (c)(1) of this 
section:

By a small entity (Sec.   1.27(a))...........................    $110.00
By other than a small entity.................................     220.00
 

    (d) In addition to the basic national fee, for filing or on later 
presentation at any other time of each claim in independent form in 
excess of 3:

By a small entity (Sec.   1.27(a))...........................    $110.00
By other than a small entity.................................     220.00
 

    (e) In addition to the basic national fee, for filing or on later 
presentation at any other time of each claim (whether dependent or 
independent) in excess of 20 (note that Sec.  1.75(c) indicates how 
multiple dependent claims are considered for fee calculation purposes):

By a small entity (Sec.   1.27(a))...........................     $26.00
By other than a small entity.................................      52.00
 

    (f) In addition to the basic national fee, if the application 
contains, or is amended to contain, a multiple dependent claim, per 
application:

By a small entity (Sec.   1.27(a))...........................    $190.00
By other than a small entity.................................     380.00
 

* * * * *
    (j) Application size fee for any international application for 
which the basic national fee was not paid before December 8, 2004, the 
specification and drawings of which exceed 100 sheets of paper, for 
each additional 50 sheets or fraction thereof:

By a small entity (Sec.   1.27(a))...........................    $135.00
By other than a small entity.................................     270.00
 

PART 41--PRACTICE BEFORE THE BOARD OF PATENT APPEALS AND 
INTERFERENCES

    7. The authority citation for 37 CFR part 41 continues to read as 
follows:

    Authority: 35 U.S.C. 2(b)(2), 3(a)(2)(A), 21, 23, 32, 41, 134, 
135.
    8. Section 41.20 is amended by revising paragraph (b) to read as 
follows:


Sec.  41.20  Fees.

* * * * *
    (b) Appeal fees.
    (1) For filing a notice of appeal from the examiner to the Board:

By a small entity (Sec.   1.27(a) of this title).............    $265.00
By other than a small entity.................................     530.00
 

    (2) In addition to the fee for filing a notice of appeal, for 
filing a brief in support of an appeal:

By a small entity (Sec.   1.27(a) of this title).............    $265.00
By other than a small entity.................................     530.00
 

    (3) For filing a request for an oral hearing before the Board in an 
appeal under 35 U.S.C. 134:

By a small entity (Sec.   1.27(a))...........................    $535.00
By other than a small entity.................................   1,070.00
 



[[Page 31663]]

    Dated: May 29, 2008.
Jon W. Dudas,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
[FR Doc. E8-12364 Filed 6-2-08; 8:45 am]
BILLING CODE 3510-16-P