[Federal Register Volume 73, Number 158 (Thursday, August 14, 2008)]
[Rules and Regulations]
[Pages 47534-47542]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: E8-18822]


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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: Final rule.

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SUMMARY: The United States Patent and Trademark Office (Office) is 
adjusting 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. In addition, 
the Office is correcting the addresses for maintenance fee payments and 
correspondence, and deposit account replenishments.

DATES: Effective Date: October 2, 2008.

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 adjusting certain patent fee 
amounts 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)). In addition, this final rule 
changes the addresses for maintenance fee payments and correspondence, 
and deposit account replenishments. The addresses are being changed to 
reflect the current addresses that should be used.

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 fee 
amounts 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 Public Law 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 Public Law 110-161, 
121 Stat. 1844 (2007), Public Law 110-149, 121 Stat. 1819 (2007), 
Public Law 110-137, 121 Stat. 1454 (2007), Public Law 110-116, 121 
Stat. 1295 (2007), Public Law 110-92, 121 Stat. 989 (2007), Public Law 
110-5, 121 Stat. 8 (2007), Public Law 109-383, 120 Stat. 2678 (2006), 
Public Law 109-369, 120 Stat. 2642 (2006), and Public Law 109-289, 120 
Stat. 1257 (2006). Legislation is pending before Congress which, if 
enacted, would extend the patent and trademark fee provisions of the 
fiscal year 2005 Consolidated Appropriations Act through fiscal year 
2009 (through September 30, 2009). See S. 3182, 110th Cong. (2008).
    Fee Adjustment Level: The patent statutory fee amounts established 
by 35 U.S.C. 41(a) and (b) are 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 CPI-U for the twelve-month period ending 
September 30, 2008.
    The Office published a notice proposing to adjust the patent fees 
charged under 35 U.S.C. 41(a), (b), and (d)(1) for fiscal year 2009 to 
reflect fluctuations in the CPI. See Revision of Patent Fees for Fiscal 
Year 2009, 73 FR 31655 (June 3, 2008), 1331 Off. Gaz. Pat. Office 97 
(June 24, 2008) (proposed rule). While the proposed rule specified fee 
amounts based upon a projected CPI-U of 4.0 percent, the proposed rule 
indicated that the fee amounts adopted in a final rule may be based 
upon the actual fluctuations in the CPI-U as determined by the 
Secretary of Labor. See Revision of Patent Fees for Fiscal Year 2009, 
73 FR at 31656, 1331-4 Off. Gaz. Pat. Office at 98. After the date the 
proposed rule was published, the projected CPI-U for the twelve-month 
period prior to the enactment of the fee amount adjustments has 
increased from 4.0 percent to 5.0 percent. Thus, this final rule 
adjusts the patent fees charged under 35 U.S.C. 41(a), (b), and (d)(1) 
by 5.0 percent based upon the current projected fluctuation in the CPI-
U.
    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

[[Page 47535]]

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 fee adjustment is subject to the new fees 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 new fee amounts and 
change of addresses, a discussion of specific sections is set forth 
below.

Discussion of Specific Rules

    37 CFR 1.1 Addresses for non-trademark correspondence with the 
United States Patent and Trademark Office. Section 1.1, paragraph (d), 
is revised to change the maintenance fee payment and correspondence 
address.
    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), is revised to 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), (l), and (m), is revised to 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), is revised to 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), is revised to adjust fees established 
therein to reflect fluctuations in the CPI.
    37 CFR 1.25 Deposit accounts: Section 1.25, paragraph (c)(3), is 
revised to change the deposit account replenishment address. In 
addition, paragraph (c)(4) is removed.
    37 CFR 1.492 National stage fees: Section 1.492, paragraphs (a), 
(b)(3), (b)(4), (c)(2), (d) through (f), and (j), is revised to adjust 
fees established therein to reflect fluctuations in the CPI.
    37 CFR 41.20 Fees: Section 41.20, paragraphs (b)(1) through (b)(3), 
is revised to 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. In that event, the Office will publish a final rule 
adjusting the patent fees under 35 U.S.C. 41(a), (b), and (d) in effect 
in the absence of the fiscal year 2005 Consolidated Appropriations Act 
to reflect fluctuations in the Consumer Price Index (CPI-U). The 
following table (Table 1) sets out the fee amounts that would be 
published in a final rule 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
----------------------------------------------------------------------------------------------------------------
                                                                             Alternative fee    Alternative fee
               37 CFR Sec.                               Fee                  amount  (non-      amount  (small
                                                                              small entity)         entity)
----------------------------------------------------------------------------------------------------------------
1.16(a).................................  Basic filing fee--utility                    850.00             425.00
                                           application.
1.16(b).................................  Independent claims in excess of               94.00              47.00
                                           three.
1.16(d).................................  Multiple dependent claim........             330.00             165.00
1.16(f).................................  Basic filing fee--design                     380.00             190.00
                                           application.
1.16(g).................................  Basic filing fee--plant                      600.00             300.00
                                           application.
1.16(h).................................  Basic filing fee--reissue                    850.00             425.00
                                           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)(1)..............................  Extension for response within                120.00              60.00
                                           first month.
1.17(a)(2)..............................  Extension for response within                480.00             240.00
                                           second month.
1.17(a)(3)..............................  Extension for response within              1,100.00             550.00
                                           third month.
1.17(a)(4)..............................  Extension for response within              1,720.00             860.00
                                           fourth month.
1.17(a)(5)..............................  Extension for response within              2,340.00           1,170.00
                                           fifth month.
1.17(m).................................  Petition to revive--                       1,480.00             740.00
                                           unintentionally abandoned
                                           application.
1.18(a).................................  Issue fee--utility application..           1,480.00             740.00
1.18(b).................................  Issue fee--design application...             530.00             265.00
1.18(c).................................  Issue fee--plant application....             710.00             355.00
1.20(e).................................  Maintenance fee--due at 3.5                1,020.00             510.00
                                           years.
1.20(f).................................  Maintenance fee--due at 7.5                2,320.00           1,160.00
                                           years.
1.20(g).................................  Maintenance fee--due at 11.5               3,580.00           1,790.00
                                           years.
1.492(a)(1).............................  IPEA--U.S.......................             810.00             405.00
1.492(a)(2).............................  ISA--U.S........................             850.00             425.00
1.492(a)(3).............................  USPTO not ISA or IPEA...........           1,200.00             600.00
1.492(a)(5).............................  Filing with EPO or JPO search              1,030.00             515.00
                                           report.
1.492(b)................................  Independent claims in excess of               94.00              47.00
                                           three.
1.492(d)................................  Multiple dependent claim........             330.00             165.00
41.20(b)(1).............................  Notice of appeal................             370.00             185.00
41.20(b)(2).............................  Brief in support of an appeal...             370.00             185.00

[[Page 47536]]

 
41.20(b)(3).............................  Request for oral hearing........             330.00             165.00
----------------------------------------------------------------------------------------------------------------

    Response to Comments: As discussed previously, the Office published 
a notice proposing to adjust the patent fees charged under 35 U.S.C. 
41(a), (b), and (d)(1) for fiscal year 2009 to reflect fluctuations in 
the CPI. See Revision of Patent Fees for Fiscal Year 2009, 73 FR 31655 
et seq., 1331-4 Off. Gaz. Pat. Office 97 et seq. The Office received 
one comment (from an individual) in response to this notice. The 
comment stated that small entity fees should not be increased, but 
rather should be reduced.
    The small entity reduction amounts are provided by 35 U.S.C. 
41(h)(1) (``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'') and 41(h)(3) (``[t]he fee charged 
under [35 U.S.C. 41](a)(l)(A) shall be reduced by 75 percent with 
respect to its application to any entity to which [35 U.S.C. 41(h)(1)] 
applies, if the application is filed by electronic means as prescribed 
by the Director''). The Office has no authority to change (increase or 
reduce) the percentage by which the patent fees charged under 35 U.S.C. 
41(a), (b), and (d)(1) are reduced for small entities. The Office also 
has no authority to adjust the patent fee amounts specified in [35 
U.S.C. 41](a), (b) and (d)(1) to reflect fluctuations in the CPI (which 
is necessary to recover the higher costs associated with doing 
business) only with respect to non-small entities.

Rulemaking Considerations

A. Final Regulatory Flexibility Analysis

    1. Description of the reasons that action by the Office is being 
considered: The Office is adjusting 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 
the 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 final rule: The objective of the 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 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 final 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 rule 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 new small entity fee amount, and the net amount of the 
small entity fee adjustment.

[[Page 47537]]



                                                     Table 2
----------------------------------------------------------------------------------------------------------------
                                       Fiscal year 2007
                 Fee                     small entity    Former fee amount     Adjusted fee      Fee adjustment
                                           payments                               amount
----------------------------------------------------------------------------------------------------------------
Basic filing fee--utility                        41,519              75.00              82.00               7.00
 application--electronic filing.....
Basic filing fee--utility                        45,832             155.00             165.00              10.00
 application (on or after December
 8, 2004)...........................
Basic filing fee--utility                            66             405.00             425.00              20.00
 application (before December 8,
 2004)..............................
Basic filing fee--design application             12,846             105.00             110.00               5.00
 (on or after December 8, 2004).....
Basic filing fee--design application                 11             180.00             190.00              10.00
 (before December 8, 2004)..........
Basic filing fee--plant application                 327             105.00             110.00               5.00
 (on or after December 8, 2004).....
Basic filing fee--plant application                   0             285.00             300.00              15.00
 (before December 8, 2004)..........
Basic filing fee--provisional                    83,712             105.00             110.00               5.00
 application........................
Basic filing fee--reissue                           181             155.00             165.00              10.00
 application (on or after December
 8, 2004)...........................
Basic filing fee--reissue                             1             405.00             425.00              20.00
 application (before December 8,
 2004)..............................
Independent claims in excess of                  26,418             105.00             110.00               5.00
 three..............................
Claims in excess of 20..............             41,100              25.00              26.00               1.00
Multiple dependent claim............              2,503             185.00             195.00              10.00
Search fee--utility application (on              86,469             255.00             270.00              15.00
 or after December 8, 2004).........
Search fee--plant application (on or                326             155.00             165.00              10.00
 after December 8, 2004)............
Search fee--reissue application (on                 180             255.00             270.00              15.00
 or after December 8, 2004).........
Examination fee--utility application             86,658             105.00             110.00               5.00
 (on or after December 8, 2004).....
Examination fee--design application              12,615              65.00              70.00               5.00
 (on or after December 8, 2004).....
Examination fee--plant application                  327              80.00              85.00               5.00
 (on or after December 8, 2004).....
Examination fee--reissue application                191             310.00             325.00              15.00
 (on or after December 8, 2004).....
Application size fee greater than                 5,469             130.00             135.00               5.00
 100 pages..........................
Extension for response within first              30,722              60.00              65.00               5.00
 month..............................
Extension for response within second             17,339             230.00             245.00              15.00
 month..............................
Extension for response within third              23,818             525.00             555.00              30.00
 month..............................
Extension for response within fourth              2,277             820.00             865.00              45.00
 month..............................
Extension for response within fifth               2,700           1,115.00           1,175.00              60.00
 month..............................
Petition to revive--unavoidably                     174             255.00             270.00              15.00
 abandoned application..............
Petition to revive--unintentionally               3,271             770.00             810.00              40.00
 abandoned application..............
Issue fee--utility application......             33,718             720.00             755.00              35.00
Issue fee--design application.......             10,398             410.00             430.00              20.00
Issue fee--plant application........                298             565.00             595.00              30.00
Reexamination independent claims in                  37             105.00             110.00               5.00
 excess of 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             490.00              25.00
Maintenance fee--due at 7.5 years...             20,981           1,180.00           1,240.00              60.00
Maintenance fee--due at 11.5 years..              8,130           1,955.00           2,055.00             100.00
Filing of PCT application--USPTO                 11,807             155.00             165.00              10.00
 ISA--national stage................
National stage search fee--search                 8,440             205.00             215.00              10.00
 report to USPTO....................
National stage search fee--all other              1,029             255.00             270.00              15.00
 situations.........................
National stage examination fee--all              11,262             105.00             110.00               5.00
 other situations...................
Independent claims in excess of                   3,272             105.00             110.00               5.00
 three..............................
Claims in excess of 20..............              5,913              25.00              26.00               1.00
Multiple dependent claim............              1,178             185.00             195.00              10.00
Application size fee greater than                   573             130.00             135.00               5.00
 100 pages..........................
Notice of appeal....................              5,978             255.00             270.00              15.00
Brief in support of an appeal.......              2,640             255.00             270.00              15.00
Request for oral hearing............                233             515.00             540.00              25.00
----------------------------------------------------------------------------------------------------------------

    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 has also considered 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

[[Page 47538]]

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 revised non-small entity fee amount, and the net amount of 
the non-small entity fee adjustment.

                                                     Table 3
----------------------------------------------------------------------------------------------------------------
                                       Fiscal year 2007
                 Fee                   non-small entity  Former fee amount     Adjusted fee      Fee adjustment
                                           payments                               amount
----------------------------------------------------------------------------------------------------------------
Basic filing fee--utility                       209,577             310.00             330.00              20.00
 application (on or after December
 8, 2004)...........................
Basic filing fee--utility                           311             810.00             850.00              40.00
 application (before December 8,
 2004)..............................
Basic filing fee--design application             13,400             210.00             220.00              10.00
 (on or after December 8, 2004).....
Basic filing fee--design application                 72             360.00             380.00              20.00
 (before December 8, 2004)..........
Basic filing fee--plant application                 680             210.00             220.00              10.00
 (on or after December 8, 2004).....
Basic filing fee--plant application                   0             570.00             600.00              30.00
 (before December 8, 2004)..........
Basic filing fee--provisional                    47,925             210.00             220.00              10.00
 application........................
Basic filing fee--reissue                           689             310.00             330.00              20.00
 application (on or after December
 8, 2004)...........................
Basic filing fee--reissue                             1             810.00             850.00              40.00
 application (before December 8,
 2004)..............................
Independent claims in excess of                  77,135             210.00             220.00              10.00
 three..............................
Claims in excess of 20..............            102,973              50.00              52.00               2.00
Multiple dependent claim............              5,944             370.00             390.00              20.00
Search fee--utility application (on             209,135             510.00             540.00              30.00
 or after December 8, 2004).........
Search fee--plant application (on or                681             310.00             330.00              20.00
 after December 8, 2004)............
Search fee--reissue application (on                 688             510.00             540.00              30.00
 or after December 8, 2004).........
Examination fee--utility application            209,465             210.00             220.00              10.00
 (on or after December 8, 2004).....
Examination fee--design application              13,261             130.00             140.00              10.00
 (on or after December 8, 2004).....
Examination fee--plant application                  681             160.00             170.00              10.00
 (on or after December 8, 2004).....
Examination fee--reissue application                707             620.00             650.00              30.00
 (on or after December 8, 2004).....
Application size fee greater than                11,257             260.00             270.00              10.00
 100 pages..........................
Extension for response within first              88,684             120.00             130.00              10.00
 month..............................
Extension for response within second             42,308             460.00             490.00              30.00
 month..............................
Extension for response within third              41,489           1,050.00           1,110.00              60.00
 month..............................
Extension for response within fourth              3,105           1,640.00           1,730.00              90.00
 month..............................
Extension for response within fifth               3,482           2,230.00           2,350.00             120.00
 month..............................
Petition to revive--unavoidably                     127             510.00             540.00              30.00
 abandoned application..............
Petition to revive--unintentionally               4,180           1,540.00           1,620.00              80.00
 abandoned application..............
Issue fee--utility application......            122,251           1,440.00           1,510.00              70.00
Issue fee--design application.......             12,433             820.00             860.00              40.00
Issue fee--plant application........                673           1,130.00           1,190.00              60.00
Reexamination independent claims in                 132             210.00             220.00              10.00
 excess of 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             980.00              50.00
Maintenance fee--due at 7.5 years...             88,487           2,360.00           2,480.00             120.00
Maintenance fee--due at 11.5 years..             42,193           3,910.00           4,110.00             200.00
Filing of PCT application--USPTO                 41,842             310.00             330.00              20.00
 ISA--national stage................
National stage search fee--search                38,457             410.00             430.00              20.00
 report to USPTO....................
National stage search fee--all other              2,429             510.00             540.00              30.00
 situations.........................
National stage examination fee--all              41,044             210.00             220.00              10.00
 other situations...................
Independent claims in excess of                   9,367             210.00             220.00              10.00
 three..............................
Claims in excess of 20..............             14,983              50.00              52.00               2.00
Multiple dependent claim............              3,998             370.00             390.00              20.00
Application size fee greater than                 2,102             260.00             270.00              10.00
 100 pages..........................
Notice of appeal....................             21,646             510.00             540.00              30.00
Brief in support of an appeal.......             11,950             510.00             540.00              30.00
Request for oral hearing............                736           1,030.00           1,080.00              50.00
----------------------------------------------------------------------------------------------------------------

    4. Description of the reporting, recordkeeping and other compliance 
requirements of the final rule, including an estimate of the classes of 
small entities which will be subject to the requirement and the type of 
professional

[[Page 47539]]

skills necessary for preparation of the report or record: This rule 
does not require any reporting or recordkeeping or incorporate other 
compliance requirements. This rule only adjusts patent fees (as 
discussed previously) to reflect changes in the CPI.
    5. Description of any significant alternatives to the final rule 
which accomplish the stated objectives of applicable statutes and which 
minimize any significant economic impact of the rule 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 adjusting the patent 
fee amounts 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 
the 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 final 
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 final 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 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.), the 
United States Patent and Trademark Office has submitted a report 
containing the final rule and other required information to the United 
States Senate, the United States House of Representatives and the 
Comptroller General of the Government Accountability Office. The 
changes in this final rule will not 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 final rule is not a ``major rule'' 
as defined in 5 U.S.C. 804(2).

J. Unfunded Mandates Reform Act of 1995

    The changes in this final rule 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 rule making does not contain provisions which 
involve the use of technical standards.

M. Paperwork Reduction Act

    This 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 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 but will update the fee amounts 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 at the time these collections are resubmitted to OMB for renewal.

[[Page 47540]]

    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.

0
For the reasons set forth in the preamble, 37 CFR parts 1 and 41 are 
amended as follows:

PART 1--RULES OF PRACTICE IN PATENT CASES

0
1. The authority citation for 37 CFR part 1 continues to read as 
follows:

    Authority: 35 U.S.C. 2(b)(2).


0
2. Section 1.1 is amended by revising paragraph (d) to read as follows:


Sec.  1.1  Addresses for non-trademark correspondence with the United 
States Patent and Trademark Office.

* * * * *
    (d) Payments of maintenance fees in patents not submitted 
electronically over the Internet, and correspondence related to 
maintenance fees may be addressed to: Director of the United States 
Patent and Trademark Office, Attn: Maintenance Fee, 2051 Jamieson 
Avenue, Suite 300, Alexandria, Virginia 22314.
* * * * *

0
3. Part 1 of 37 CFR is amended immediately after the undesignated 
center heading ``Fees and Payment of Money'' to include the following 
authority citation:

    Authority: Secs. 1.16 to 1.22 also issued under 35 U.S.C. 41, 
111, 119, 120, 132(b), 156, 157, 255, 302, and 311, and Public Laws 
103-465, and 106-113.


0
4. 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          $82.00
 submitted in compliance with the Office electronic filing
 system (Sec.   1.27(b)(2))..................................
By a small entity (Sec.   1.27(a))...........................    $165.00
By other than a small entity.................................    $330.00
 

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

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

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

    (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))...........................    $300.00
By other than a small entity.................................    $600.00
 

    (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))...........................    $165.00
By other than a small entity.................................    $330.00
 

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

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

* * * * *
    (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))...........................    $195.00
By other than a small entity.................................    $390.00
 

    (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))...........................    $270.00
By other than a small entity.................................    $540.00
 

* * * * *
    (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))...........................    $165.00
By other than a small entity.................................    $330.00
 

    (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))...........................    $270.00
By other than a small entity.................................    $540.00
 

    (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))...........................    $325.00
By other than a small entity.................................    $650.00
 

    (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
 

* * * * *

0
5. Section 1.17 is amended by revising paragraphs (a), (l), and (m) to 
read as follows:

[[Page 47541]]

Sec.  1.17  Patent application and reexamination processing fees.

    (a) Extension fees pursuant to Sec.  1.136(a):
    (1) For reply within first month:

By a small entity (Sec.   1.27(a))...........................     $65.00
By other than a small entity.................................    $130.00
 

    (2) For reply within second month:

By a small entity (Sec.   1.27(a))...........................    $245.00
By other than a small entity.................................    $490.00
 

    (3) For reply within third month:

By a small entity (Sec.   1.27(a))...........................    $555.00
By other than a small entity.................................  $1,110.00
 

    (4) For reply within fourth month:

By a small entity (Sec.   1.27(a))...........................    $865.00
By other than a small entity.................................  $1,730.00
 

    (5) For reply within fifth month:

By a small entity (Sec.   1.27(a))...........................  $1,175.00
By other than a small entity.................................  $2,350.00
 

* * * * *
    (l) For filing a petition for the revival of an unavoidably 
abandoned application under 35 U.S.C. 111, 133, 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))...........................    $270.00
By other than a small entity.................................    $540.00
 

    (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))...........................    $810.00
By other than a small entity.................................  $1,620.00
 

* * * * *

0
6. 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))...........................    $755.00
By other than a small entity.................................  $1,510.00
 

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

By a small entity (Sec.   1.27(a))...........................    $430.00
By other than a small entity.................................    $860.00
 

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

By a small entity (Sec.   1.27(a))...........................    $595.00
By other than a small entity.................................  $1,190.00
 

* * * * *

0
7. 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))...........................    $490.00
By other than a small entity.................................    $980.00
 

    (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))...........................  $1,240.00
By other than a small entity.................................  $2,480.00
 

    (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))...........................  $2,055.00
By other than a small entity.................................  $4,110.00
 

* * * * *
0
8. Section 1.25 is amended by removing paragraph (c)(4) and revising 
paragraph (c)(3) to read as follows:


Sec.  1.25  Deposit accounts.

* * * * *
    (c) * * *
    (3) A payment to replenish a deposit account may be addressed to: 
Director of the United States Patent and Trademark Office, Attn: 
Deposit Accounts, 2051 Jamieson Avenue, Suite 300, Alexandria, Virginia 
22314.

0
9. 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))...........................    $165.00
By other than a small entity.................................    $330.00
 

    (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))...........................    $270.00
By other than a small entity.................................    $540.00
 

    (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))...........................    $195.00
By other than a small entity.................................    $390.00
 

* * * * *
    (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

[[Page 47542]]

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

0
10. 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.

0
11. 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).............    $270.00
By other than a small entity.................................    $540.00
 

    (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).............    $270.00
By other than a small entity.................................    $540.00
 

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


    Dated: August 8, 2008.
Margaret J. A. Peterlin,
Deputy Under Secretary of Commerce for Intellectual Property and Deputy 
Director of the United States Patent and Trademark Office.
[FR Doc. E8-18822 Filed 8-13-08; 8:45 am]
BILLING CODE 3510-16-P