[Federal Register Volume 76, Number 220 (Tuesday, November 15, 2011)]
[Rules and Regulations]
[Pages 70651-70653]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2011-29462]


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DEPARTMENT OF COMMERCE

Patent and Trademark Office

37 CFR Part 1

[Docket No. PTO-P-2011-0065]
RIN 0651-AC64


Fee for Filing a Patent Application Other Than by the Electronic 
Filing System

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Final rule.

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SUMMARY: The Leahy-Smith America Invents Act provides an additional fee 
of $400 for applications not filed electronically. This final rule 
revises the rules of practice to include the fee for applications not 
filed electronically.

DATES: Effective Date: November 15, 2011.

FOR FURTHER INFORMATION CONTACT: James J. Engel, Senior Legal Advisor, 
Office of Patent Legal Administration, Office of the Associate 
Commissioner for Patent Examination Policy, by telephone at (571) 272-
7725; or by mail addressed to: Mail Stop Comments Patents, Commissioner 
for Patents, P.O. Box 1450, Alexandria, VA 22313-1450.

SUPPLEMENTARY INFORMATION: Section 10(h) of the Leahy-Smith America 
Invents Act provides that an additional fee of $400 shall be 
established for each application for an original (i.e., non-reissue) 
patent, except for a design, plant, or provisional application, that is 
not filed by electronic means as prescribed by the Director of the 
United States Patent and Trademark Office (USPTO). See Public Law 112-
29, 125 Stat. 283, 319 (2011). Section 10(h) also provides that this 
fee is reduced by 50 percent for small entities under 35 U.S.C. 
41(h)(1). See id. Section 10(h) also provides that this new fee is 
effective on November 15, 2011 (sixty days after the date of enactment 
of the Leahy-Smith America Invents Act). See id. This final rule 
revises 37 CFR 1.16 and 1.445 to include the fee for applications not 
filed electronically.
    The USPTO encourages applicants to file their applications via its 
electronic filing system (EFS-Web) to avoid the fee provided for by 
section 10(h) of the Leahy-Smith America Invents Act. Information 
concerning electronic filing via EFS-Web is available from the USPTO's 
Patent Electronic Business Center (EBC) at http://www.uspto.gov/patents/process/file/efs/index.jsp.

[[Page 70652]]

Section-by-Section Discussion

    Title 37 of the Code of Federal Regulations, Part 1, is amended as 
follows:
    Section 1.16: Section 1.16(t) is added to require the non-
electronic filing fee of $400 ($200 for a small entity) for any 
application under 35 U.S.C. 111(a) (i.e., any nonprovisional 
application) that is filed on or after November 15, 2011, other than by 
the USPTO's electronic filing system (EFS-Web), except for a reissue, 
design, or plant application.
    Section 1.445: The introductory text of Sec.  1.445(a) is amended 
to add ``by law or'' prior to ``by the Director under the authority of 
35 U.S.C. 376'' because the fee for filing an application other than by 
the USPTO's electronic filing system is established by law (section 
10(h) of the Leahy-Smith America Invents Act). Section 1.445(a) is 
amended to set out the current transmittal fee as a basic fee in Sec.  
1.445(a)(1)(i) and to add a new Sec.  1.445(a)(1)(ii) setting out the 
non-electronic filing fee of $400 ($200 for a small entity) for any 
Patent Cooperation Treaty (PCT) international application designating 
the United States of America that is filed on or after November 15, 
2011, other than by the USPTO's electronic filing system (EFS-Web), 
except for a plant application. Section 1.445(a)(1)(ii) does not 
contain a reference to reissue, design, or provisional applications as 
these types of applications cannot be filed via the PCT. While Sec.  
1.445(a)(1)(ii) contains a reference to plant applications, the USPTO 
advises against filing a plant application under the PCT because many 
countries do not consider this subject matter to be patent-eligible, 
and the color drawings or color photographs that are often necessary 
for plant applications (Sec.  1.165(b)) are not permitted in PCT 
international applications (PCT Applicant's Guide (] 5.159) (Oct. 
2011)).
    The USPTO will consider applications filed with the USPTO via the 
Department of Defense Secret Internet Protocol Router Network (SIPRNET) 
as filed via the USPTO's electronic filing system for purposes of Sec.  
1.16(t) and Sec.  1.445(a)(1)(ii).

Rule Making Considerations

    A. Administrative Procedure Act (APA): Section 10(h) of the Leahy-
Smith America Invents Act provides that an additional fee of $400 ($200 
for a small entity) shall be established for each application for an 
original (i.e., non-reissue) patent, except for a design, plant, or 
provisional application, that is not filed by electronic means as 
prescribed by the Director of the USPTO. The changes in this final rule 
simply reiterate the provisions of section 10(h) of the Leahy-Smith 
America Invents Act and are thus merely interpretative. See Gray 
Panthers Advocacy Comm. v. Sullivan, 936 F.2d 1284, 1291-1292 (DC Cir. 
1991) (regulation that reiterates statutory language does not require 
notice and comment procedures). Accordingly, prior notice and an 
opportunity for public comment are not required pursuant to 5 U.S.C. 
553(b)(A) or any other law. See Cooper Techs. Co. v. Dudas, 536 F.3d 
1330, 1336-37 (Fed. Cir. 2008) (stating that 5 U.S.C. 553, and thus 35 
U.S.C. 2(b)(2)(B), do not require notice and comment rule making for 
``interpretative rules, general statements of policy, or rules of 
agency organization, procedure, or practice.'') (quoting 5 U.S.C. 
553(b)(A)). In addition, thirty-day advance publication is not required 
pursuant to 5 U.S.C. 553(d) or any other law. See 5 U.S.C. 553(d) 
(requiring thirty-day advance publication for substantive rules).
    B. Regulatory Flexibility Act: As prior notice and an opportunity 
for public comment are not required pursuant to 5 U.S.C. 553 or any 
other law, neither a regulatory flexibility analysis nor a 
certification under the Regulatory Flexibility Act (5 U.S.C. 601 et 
seq.) is required. See 5 U.S.C. 603.
    C. 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).
    D. Executive Order 12866 (Regulatory Planning and Review): This 
rule making has been determined not 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).
    E. Executive Order 13563 (Improving Regulation and Regulatory 
Review): The USPTO has complied with Executive Order 13563 (Jan. 18, 
2011). Specifically, the USPTO has, to the extent feasible and 
applicable: (1) Made a reasoned determination that the benefits justify 
the costs of the rule; (2) tailored the rule to impose the least burden 
on society consistent with obtaining the regulatory objectives; (3) 
selected a regulatory approach that maximizes net benefits; (4) 
specified performance objectives; (5) identified and assessed available 
alternatives; (6) involved the public in an open exchange of 
information and perspectives among experts in relevant disciplines, 
affected stakeholders in the private sector, and the public as a whole, 
and provided on-line access to the rule making docket; (7) attempted to 
promote coordination, simplification, and harmonization across 
government agencies and identified goals designed to promote 
innovation; (8) considered approaches that reduce burdens and maintain 
flexibility and freedom of choice for the public; and (9) ensured the 
objectivity of scientific and technological information and processes.
    F. 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 
government; or (3) preempt tribal law. Therefore, a tribal summary 
impact statement is not required under Executive Order 13175 (Nov. 6, 
2000).
    G. Executive Order 13211 (Energy Effect): This rule making is not 
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).
    H. 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).
    I. 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).
    J. 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).
    K. 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 USPTO will submit a report containing 
this 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 change in this rule making is 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,

[[Page 70653]]

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 expected to result 
in a ``major rule'' as defined in 5 U.S.C. 804(2).
    L. 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.
    M. National Environmental Policy Act: The rule making will not have 
any effect on the quality of the environment and is thus categorically 
excluded from review under the National Environmental Policy Act of 
1968. See 42 U.S.C. 4321 et seq.
    N. 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 involve the use of technical standards.
    O. Paperwork Reduction Act: This rule making 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.). As discussed previously, the changes in this 
final rule simply reiterate the provisions of section 10(h) of the 
Leahy-Smith America Invents Act. The collection of information involved 
in this rule making has been reviewed and previously approved by OMB 
under OMB control numbers 0651-0021 and 0651-0032. This notice does not 
add any additional information collection requirements for patent 
applicants or patentees. Therefore, the USPTO is not resubmitting 
information collection packages to OMB for its review and approval 
because the changes proposed in this notice do not affect the 
information collection requirements associated with the information 
collections under OMB control numbers 0651-0021 and 0651-0032. The 
USPTO will update fee calculations for the currently approved 
information collections associated with this rule making upon 
submission to the OMB of the renewals of those information collections.
    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 recordkeeping 
requirements, Small businesses, and Biologics.

    For the reasons set forth in the preamble, 37 CFR part 1 is amended 
as follows:

PART 1--RULES OF PRACTICE IN PATENT CASES

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

    Authority: 35 U.S.C. 2(b)(2), unless otherwise noted.

0
2. Section 1.16 is amended by adding paragraph (t) to read as follows:


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

* * * * *
    (t) Non-electronic filing fee for any application under 35 U.S.C. 
111(a) that is filed on or after November 15, 2011, other than by the 
Office electronic filing system, except for a reissue, design, or plant 
application:

 
 
 
By a small entity (Sec.   1.27(a))...........................    $200.00
By other than a small entity.................................    $400.00
 

* * * * *


0
3. Section 1.445 is amended by revising paragraph (a) introductory text 
and paragraph (a)(1) to read as follows:


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

    (a) The following fees and charges for international applications 
are established by law or by the Director under the authority of 35 
U.S.C. 376:
    (1) A transmittal fee (see 35 U.S.C. 361(d) and PCT Rule 14) 
consisting of:

 
 
 
(i) A basic portion..........................................    $240.00
 

    (ii) A non-electronic filing fee portion for any international 
application designating the United States of America that is filed on 
or after November 15, 2011, other than by the Office electronic filing 
system, except for a plant application:

 
 
 
By a small entity (Sec.   1.27(a))...........................    $200.00
By other than a small entity.................................    $400.00
 

* * * * *

    Dated: November 7, 2011.
David J. Kappos,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
[FR Doc. 2011-29462 Filed 11-14-11; 8:45 am]
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