[Federal Register Volume 73, Number 118 (Wednesday, June 18, 2008)]
[Proposed Rules]
[Pages 34672-34676]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: E8-13730]


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DEPARTMENT OF COMMERCE

Patent and Trademark Office

37 CFR Part 1

[Docket No.: PTO-P-2008-0023]
RIN 0651-AC28


Fiscal Year 2009 Changes to Patent Cooperation Treaty Transmittal 
and Search Fees

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Notice of proposed rulemaking.

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SUMMARY: The United States Patent and Trademark Office (Office) is 
proposing to revise the rules of practice to adjust the transmittal and 
search fees for international applications filed under the Patent 
Cooperation Treaty (PCT). The Office is proposing to adjust the PCT 
transmittal and search fees to recover the estimated average cost to 
the Office of processing PCT international applications and preparing 
international search reports and written opinions for PCT international 
applications.

DATES: Written comments must be received on or before August 18, 2008. 
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) 273-0459, marked to the attention of Boris Milef, 
Office of the Deputy Commissioner for Patent Examination Policy. 
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

[[Page 34673]]

Madison East, Tenth Floor, 600 Dulany Street, Alexandria, Virginia, and 
will be available through anonymous file transfer protocol (ftp) via 
the Internet (http://www.uspto.gov). Because comments will be made 
available for public inspection, information that the submitter does 
not desire to make public, such as an address or phone number, should 
not be included in the comments.

FOR FURTHER INFORMATION CONTACT: Boris Milef, Legal Examiner, Office of 
PCT Legal Administration, Office of the Deputy Commissioner for Patent 
Examination Policy, by telephone at (571) 272-3288; or by mail 
addressed to: Box Comments Patents, Commissioner for Patents, P.O. Box 
1450, Alexandria, VA 22313-1450.

SUPPLEMENTARY INFORMATION: The PCT enables United States applicants to 
file one application (an international or PCT application) in a 
standardized format in English in a Receiving Office (either the United 
States Patent and Trademark Office or the International Bureau of the 
World Intellectual Property Organization (WIPO)) and have that 
application acknowledged as a regular national or regional filing by 
PCT member countries. See Manual of Patent Examining Procedure (MPEP) 
Sec.  1801 (8th ed. 2001) (Rev. 6, Sept. 2007). The primary benefit of 
the PCT system is the ability to delay the expense of submitting papers 
and fees to the PCT national offices. See MPEP 1893.
    The Office acts as a Receiving Office (RO) for United States 
residents and nationals. See 35 U.S.C. 361(a), 37 CFR 1.412(a), and 
MPEP 1801. An RO functions as the filing and formalities review 
organization for international applications. See MPEP 1801. The Office, 
in its capacity as a PCT Receiving Office, received over 50,000 
international applications in each of fiscal years 2006 and 2007. The 
Office also acts as an International Searching Authority (ISA). See 35 
U.S.C. 362(a), 37 CFR 1.413(a), and MPEP 1840. The primary functions of 
an ISA are to establish: (1) International search reports, and (2) 
written opinions of the ISA. See MPEP 1840.
    The transmittal and search fees for an international application 
are provided for in 35 U.S.C. 376. See 35 U.S.C. 376 (the Office ``may 
also charge'' a ``transmittal fee,'' ``search fee,'' ``supplemental 
search fee,'' and ``any additional fees'' (35 U.S.C. 376(a)), and the 
``amounts of [these] fees * * * shall be prescribed by the Director'' 
(35 U.S.C. 376(b)). In addition, 35 U.S.C. 41(d) provides that fee 
amounts set by the Office ``recover the estimated average cost to the 
Office of such processing, services, or materials.'' See 35 U.S.C. 
41(d). The Office has no basis for maintaining the PCT transmittal, 
search, and supplemental search fees at amounts less than that 
necessary to recover the estimated average cost to the Office of 
performing these functions for PCT international applications. 
Therefore, the Office is proposing to adjust the PCT transmittal fee 
and search fees to recover the estimated average cost to the Office of 
processing PCT international applications and preparing international 
search reports and written opinions for PCT international applications. 
The Office's cost analysis for these activities reveals that the 
average cost of the initial processing of PCT international 
applications is slightly over $415.00 and the average cost of search 
and preparation of ISA search reports or written opinions for 
international applications and for a supplemental search is slightly 
over $2,225.00 for each invention.

Discussion of Specific Rules

    Title 37 of the Code of Federal Regulations, part 1, is proposed to 
be amended as follows:
    Section 1.445: Section 1.445(a)(1) is proposed to be amended to 
change the transmittal fee from $300.00 to $415.00. Section 1.445(a)(2) 
is proposed to be amended to change the search fee from $1,800.00 to 
$2,225.00. Section 1.445(a)(3) is proposed to be amended to change the 
supplemental search fee from $1,800.00 to $2,225.00.

Rule Making Considerations

A. Initial Regulatory Flexibility Analysis

    1. Description of the reasons that action by the agency is being 
considered: The Office is proposing to revise the rules of practice to 
adjust the transmittal and search fees for international applications 
filed under the PCT. The Office is proposing to adjust the PCT 
transmittal and search fees to recover the estimated average cost to 
the Office of processing PCT international applications and preparing 
international search reports and written opinions for PCT international 
applications.
    2. Succinct statement of the objectives of, and legal basis for, 
the proposed rules: The Office is proposing to adjust the PCT 
transmittal and search fees to recover the estimated average cost to 
the Office of processing PCT international applications and preparing 
international search reports and written opinions for PCT international 
applications. The changes proposed in this notice are authorized by 35 
U.S.C. 41(d) and 376.
    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 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 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.

[[Page 34674]]

    The changes in this proposed rule will apply to any small entity 
who files a PCT international application in the United States 
Receiving Office and who requests a search by the United States 
International Searching Authority. The Office received between 52,000 
and 53,000 PCT international applications in each of fiscal years 2006 
and 2007. There is no provision in 35 U.S.C. 376 (or elsewhere) for a 
small entity reduction for the transmittal or search fees for an 
international application. Thus, PCT applicants do not indicate and the 
Office does not record whether a PCT application is by a small entity 
or a non-small entity. The Office's PALM and Revenue Accounting and 
Management (RAM) systems indicate that 12,043 of the PCT international 
applications in fiscal year 2006 claim priority to a prior application 
(nonprovisional or provisional) that has small entity status, and that 
2,559 of the PCT international applications in fiscal year 2006 do not 
claim priority to any prior nonprovisional application or provisional 
application. The Office's PALM and RAM systems indicate that 12,716 of 
the PCT international applications in fiscal year 2007 claim priority 
to a prior application (nonprovisional or provisional) that has small 
entity status, and that 4,016 of the PCT international applications in 
fiscal year 2007 do not claim priority to any prior nonprovisional 
application or provisional application.
    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 the PCT transmittal and search fees. As discussed 
previously, there is no provision in 35 U.S.C. 376 (or elsewhere) for a 
small entity reduction for the search fees for an international 
application. The following table (Table 1) indicates the PCT 
international stage fee, the number of payments of the fee received by 
the Office in fiscal year 2007 (number of entities who paid the 
applicable fee in fiscal year 2007), the current fee amount, the 
proposed fee amount, and the net amount of the fee adjustment.

                                                     Table 1
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                                       Fiscal year 2007     Current fee        Proposed fee
                 Fee                       payments            amount             amount         Fee adjustment
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Transmittal Fee.....................            $54,335            $300.00            $415.00            $115.00
Search Fee..........................             30,965           1,800.00           2,225.00             425.00
Supplemental Search Fee.............                941           1,800.00           2,225.00             425.00
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    The PCT international search fee and supplemental search fee were 
adjusted from $1,000.00 to $1,800.00 in November of 2007. See April 
2007 Revision of Patent Cooperation Treaty Procedures, 72 FR 51559 
(Sept. 10, 2007), 1323 Off. Gaz. Pat. Office 26 (Oct. 2, 2007) (final 
rule). Thus, the change to the search and supplemental search fee 
proposed in this notice is a $425.00 increase over the current search 
fee and supplemental search fee set in November of 2007, and a 
$1,225.00 increase over the search fee and supplemental search fee that 
was in effect prior to November of 2007.
    The PCT does not preclude United States applicants from filing 
patent applications directly in the patent offices of those countries 
which are Contracting States of the PCT (with or without previously 
having filed a regular national application under 35 U.S.C. 111(a) or 
111(b) in the United States) and taking advantage of the priority 
rights and other advantages provided under the Paris Convention and the 
World Trade Organization (WTO) administered Agreement on Trade-Related 
Aspects of Intellectual Property (TRIPs Agreement). See MPEP 1801. That 
is, the PCT is not the exclusive mechanism for seeking patent 
protection in foreign countries, but is instead simply an optional 
alternative route available to United States patent applicants for 
seeking patent protection in those countries that are Contracting 
States of the PCT. See id.
    In addition, an applicant filing an international application under 
the PCT in the United States Receiving Office (the United States Patent 
and Trademark Office) is not required to use the United States Patent 
and Trademark Office as the International Searching Authority. The 
European Patent Office (except for applications containing business 
method claims) or the Korean Intellectual Property Office may be 
selected as the International Searching Authority for international 
applications filed in the United States Receiving Office. The 
applicable search fee if the European Patent Office is selected as the 
International Searching Authority European is currently $2,496.00 (set 
by the European Patent Office), and the applicable search fee if the 
Korean Intellectual Property Office is selected as the International 
Searching Authority is currently $244.00 (set by the Korean 
Intellectual Property Office).
    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 the PCT transmittal 
and search fees would have a lesser economic impact on small entities, 
but would not accomplish the stated objectives of applicable statutes. 
See 35 U.S.C. 41(d) (requires that fees set by the Office recover the 
estimated average cost to the Office of the processing, services, or 
materials).
    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 of patents.
    The Office previously proposed changes to adjust the patent fees 
set by statute to reflect fluctuations in the Consumer Price Index 
(CPI). See Revision of Patent Fees for Fiscal Year 2009, 73 FR 31655 
(June 3, 2008) (proposed rule). The changes proposed in that rule 
making do not duplicate, overlap, or conflict with the changes proposed 
in this notice.
    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 PCT). Nevertheless, the 
Office believes

[[Page 34675]]

that there are no other duplicative or overlapping rules.
    B. Executive Order 13132 (Federalism): 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).
    C. Executive Order 12866 (Regulatory Planning and Review): This 
rule making 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 rule making 
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 rule making is not 
a significant energy action under Executive Order 13211 because this 
rule making 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 rule making 
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 rule making 
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 rule 
making 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 rule making 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 rule making 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 rule making does not contain provisions which involve the use of 
technical standards.
    M. Paperwork Reduction Act: The changes proposed in this notice 
involve 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 collection of 
information involved in this notice has been reviewed and approved by 
OMB under OMB control number 0651-0021. The Office is not resubmitting 
an information collection package to OMB for its review and approval 
because the changes proposed in this notice concern revised fees for 
existing information collection requirements associated with the 
information collection under OMB control number 0651-0021. The Office 
will submit fee revision changes to the inventory of the information 
collection under OMB control number 0651-0021 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 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 in 37 CFR Part 1

    Administrative practice and procedure, Courts, Freedom of 
Information, Inventions and patents, Reporting and record keeping 
requirements, Small Businesses.

    Accordingly, the Office proposes to amend 37 CFR part 1 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. Subpart C of 37 CFR part 1 is amended immediately before the 
undesignated center heading ``General Information'' to include the 
following authority citation:

    Authority: Sections 1.401 through 1.499 also issued under 35 
U.S.C. 351 through 376.

    3. Section 1.445 is amended by revising paragraphs (a)(1), (a)(2) 
and (a)(3) to read as follows:

Sec.  1.445  International application filing, processing and search 
fees.

    (a) * * *

[[Page 34676]]



(1) A transmittal fee (see 35 U.S.C. 361(d) and PCT Rule 14)     $415.00
(2) A search fee (see 35 U.S.C. 361(d) and PCT Rule 16).....    2,225.00
(3) A supplemental search fee when required, per additional     $,225.00
 invention..................................................
 

* * * * *

    Dated: June 12, 2008.
Jon W. Dudas,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
 [FR Doc. E8-13730 Filed 6-17-08; 8:45 am]
BILLING CODE 3510-16-P