[Federal Register Volume 77, Number 172 (Wednesday, September 5, 2012)]
[Rules and Regulations]
[Pages 54360-54367]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2012-21974]


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DEPARTMENT OF COMMERCE

Patent and Trademark Office

37 CFR Parts 1 and 41

[PTO-C-2011-0007]
RIN 0651-AC55


CPI Adjustment of Patent Fees for Fiscal Year 2013

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Final rule.

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SUMMARY: The United States Patent and Trademark Office (Office or 
USPTO) is adjusting certain patent fee amounts for fiscal year 2013 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 as 
reflected by the CPI.

DATES: This final rule is effective on October 5, 2012.

FOR FURTHER INFORMATION CONTACT: Gilda Lee by email at 
[email protected], by telephone at (571) 272-8698, or by fax at (571) 
273-8698.

SUPPLEMENTARY INFORMATION: 

Executive Summary

    Purpose: Section 41(f) of Title 35 of the United States Code 
provides the USPTO with the authority to adjust certain statutory 
patent fees to reflect fluctuations during the preceding twelve months 
in the Consumer Price Index (CPI). The purpose of this provision is to 
allow the USPTO to recover higher costs of providing services as 
reflected by the CPI. This final rule sets forth which fees will be 
adjusted and how the adjustment is calculated based on the current 
fluctuation in the CPI over the twelve months preceding this notice.
    Summary of Major Provisions: The USPTO is adjusting certain patent 
fees in accordance with 35 U.S.C. 41(f), as amended by the Consolidated 
Appropriations Act (Pub. L. 108-447, 118 Stat. 2809 (2004)) and the 
Leahy-Smith America Invents Act (Pub. L. 112-29). The fee increase 
helps the USPTO to meet its strategic goals and maintain effective and 
efficient operation of the patent system.
    Costs and Benefits: This rulemaking is not economically significant 
as that term is defined in Executive Order 12866 (Sept. 30, 1993).

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.
    The USPTO published a notice proposing to adjust the patent fees 
charged under 35 U.S.C. 41(a) and (b) for fiscal year 2013 to reflect 
fluctuations in the CPI on May 14, 2012.
    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 Omnibus Appropriations Act, 2009, extended the 
patent and trademark fee provisions of the fiscal year 2005 
Consolidated Appropriations Act through September 30, 2011. See Public 
Law 112-4, 125 Stat. 6 (2011); Public Law 111-322, 124 Stat. 3518 
(2010); Public Law 111-317, 124 Stat. 3454 (2010); Public Law 111-290, 
124 Stat. 3063 (2010); Public Law 111-242, 124 Stat. 2607 (2010); 
Public Law 111-224, 124 Stat. 2385 (2010); Public Law 111-117, 123 
Stat. 3034 (2009); Public Law 111-8, 123 Stat. 524 (2009); Public Law 
111-6, 123 Stat. 522 (2009); Public Law 111-5, 123 Stat. 115 (2009); 
Public Law 110-329, 122 Stat. 3574 (2008); 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). The Leahy-Smith America Invents Act, enacted September 16, 
2011, codified the patent and trademark fee provisions of the fiscal 
year 2005 Consolidated Appropriations Act.
    Section 11 of the Leahy-Smith America Invents Act provides for a 
surcharge of fifteen percent, rounded by standard arithmetic rules, on 
all fees charged or authorized by 35 U.S.C. 41(a), (b), and (d)(1), as 
well as by 35 U.S.C. 132(b). Section 11 of the Act provides that this 
fifteen percent surcharge is effective ten days after the date of 
enactment (i.e., September 26, 2011). Section 11 also provides that 
this fifteen percent surcharge shall terminate, with respect to a fee 
to which the surcharge applies, on the effective date of the setting or 
adjustment of that fee pursuant to the exercise of the authority under 
section 10 of the Act for the first time with respect to that fee. 
Section 10 fee-setting will be implemented in a future separate 
rulemaking.
    As for this rulemaking, Section 41(f) of Title 35, United States 
Code, provides that fees established under 35 U.S.C. 41(a) and (b) may 
be adjusted on October 1, 1992, and every year thereafter, to reflect 
fluctuations in the Consumer Price Index over the previous twelve 
months. If the annual change in CPI is one percent or less, no fee 
adjustment for CPI fluctuations will be pursued.
    This CPI increase will be implemented on October 1, 2012. This 
interim increase in fees is necessary to allow the USPTO to meet its 
strategic goals within the time frame outlined in the FY 2013 
President's Budget. The interim fee increase is a bridge to provide 
resources until the USPTO exercises its fee-setting authority and 
develops a new fee structure that will provide sufficient financial 
resources in the long term. An adequately funded USPTO will optimize 
the administration of the U.S. intellectual property system, and 
thereby move innovation to the marketplace more quickly, creating and 
sustaining U.S. jobs and enhancing the health and living standards of 
Americans.
    Fee Adjustment Level: The patent statutory fees established by 35 
U.S.C. 41(a) and (b) are adjusted to reflect the most recent 
fluctuations occurring during the twelve-month period prior to 
publication of the final rule implementing this CPI adjustment, as 
measured by the Consumer Price Index for All Urban Consumers (CPI-U). 
The Office of Management and Budget (OMB) has advised that in 
calculating these fluctuations, the USPTO should use CPI-U data as 
determined by the Secretary of Labor, which is found at

[[Page 54361]]

``http://www.bls.gov/cpi/''. In accordance with the above description 
of the statutory fee adjustment, the USPTO is adjusting patent 
statutory fee amounts based on the Administration's CPI-U for the 
twelve-month period ending June 30, 2012.
    The fees other than small entity patent statutory fees have been 
adjusted based on the June 2011 to June 2012 annual CPI-U increase of 
1.7%. These fee amounts were then rounded by applying standard 
arithmetic rules so that the resulting amounts will be consistent 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 the 
nearest even number so that any comparable small entity fee will be a 
whole number. The small entity fee amounts are 50% of the other than 
small entity fee amounts.
    General Procedures: Any fee amount adjusted by the final rule that 
is paid on or after the effective date of the fee adjustment enacted by 
the final rule is subject to the new fees in effect. The amount of the 
fee to be paid for a given item will be determined by the time of 
filing of that item with the Office. 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 USPTO 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 fees, a 
discussion of specific sections is set forth below.

Discussion of Specific Rules

    37 CFR 1.16 National application filing, and examination fees: 
Section 1.16, paragraphs (a) through (e), (h) through (j) and (o) 
through (s), is revised to adjust fees established therein to reflect 
fluctuations in the CPI-U. See Table 1.
    37 CFR 1.17 Patent application and reexamination processing fees: 
Section 1.17, paragraphs (a)(1) through (a)(5), (l), and (m), is 
revised to adjust fees established therein to reflect fluctuations in 
the CPI-U. See Table 1.
    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-U. See Table 1.
    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-U. See Table 1.
    37 CFR 1.492 National stage fees: Section 1.492, paragraphs (a), 
(c)(2), (d) through (f) and (j), is revised to adjust fees established 
therein to reflect fluctuations in the CPI-U. See Table 1.
    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-U. See Table 1.
    Fee Amount Adjustments: Table 1 shows the adjusted patent statutory 
fee amounts and fee adjustments based on the June 2011 to June 2012 
annual CPI-U increase of 1.7%. The other than small entity fee amounts 
have been adjusted by 1.7%. These fee amounts were then rounded by 
applying standard arithmetic rules. 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 the nearest even number. The small entity fee amounts 
are 50% of the large entity fee amounts.

                     Table 1--Fee Adjustment Calculations Based on CPI-U Adjustment of 1.7%
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       37 CFR             Fee title        Current fee  amount        New fee  amount         Fee  adjustment
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1.16(a)(1).........  Filing of Utility   $380                     $390                    $10
                      Patent             Small Entity             SE $195                 SE $5
                      Application (on    (SE) $190
                      or after 12/8/
                      2004).
1.16(a)(1).........  Filing of Utility   $95                      $98                     $3
                      Patent
                      Application
                      (electronic
                      filing for small
                      entities) (on or
                      after 12/8/2004).
1.16(b)(1).........  Filing of Design    $250                     $250                    $0
                      Patent             SE $125                  SE $125                 SE $0
                      Application (on
                      or after 12/8/
                      2004).
1.16(b)(1).........  Filing of Design    $250                     $250                    $0
                      Patent             SE $125                  SE $125                 SE $0
                      Application
                      (Continued
                      Prosecution
                      Application) (on
                      or after 12/8/
                      2004).
1.16(c)(1).........  Filing of Plant     $250                     $250                    $0
                      Patent             SE $125                  SE $125                 SE $0
                      Application (on
                      or after 12/8/
                      2004).
1.16(d)............  Provisional         $250                     $250                    $0
                      Application        SE $125                  SE $125                 SE $0
                      Filing.
1.16(e)(1).........  Filing of Reissue   $380                     $390                    $10
                      Patent             SE $190                  SE $195                 SE $5
                      Application (on
                      or after 12/8/
                      2004).
1.16(e)(1).........  Filing of Reissue   $380                     $390                    $10
                      Patent             SE $190                  SE $195                 SE $5
                      Application (CPA)
                      (on or after 12/8/
                      2004).
1.16(h)............  Independent Claims  $250                     $250                    $0
                      in Excess of       SE $125                  SE $125                 SE $0
                      Three.
1.16(h)............  Reissue             $250                     $250                    $0
                      Independent        SE $125                  SE $125                 SE $0
                      Claims in Excess
                      of Three.
1.16(i)............  Claims in Excess    $60                      $62                     $2
                      of Twenty.         SE $30                   SE $31                  SE $1
1.16(i)............  Reissue Total       $60                      $62                     $2
                      Claims in Excess   SE $30                   SE $31                  SE $1
                      of Twenty.
1.16(j)............  Multiple Dependent  $450                     $460                    $10
                      Claims.            SE $225                  SE $230                 SE $5

[[Page 54362]]

 
1.16(o)............  Utility Patent      $250                     $250                    $0
                      Examination.       SE $125                  SE $125                 SE $0
1.16(p)............  Design Patent       $160                     $160                    $0
                      Examination.       SE $80                   SE $80                  SE $0
1.16(q)............  Plant Patent        $200                     $200                    $0
                      Examination.       SE $100                  SE $100                 SE $0
1.16(r)............  Reissue Patent      $750                     $760                    $10
                      Examination.       SE $375                  SE $380                 SE $5
1.16(s)............  Utility             $310                     $320                    $10
                      Application Size   SE $155                  SE $160                 SE $5
                      Fee--For each
                      additional 50
                      sheets that
                      exceeds 100
                      sheets.
1.16(s)............  Design Application  $310                     $320                    $10
                      Size Fee--For      SE $155                  SE $160                 SE $5
                      each additional
                      50 sheets that
                      exceeds 100
                      sheets.
1.16(s)............  Plant Application   $310                     $320                    $10
                      Size Fee--For      SE $155                  SE $160                 SE $5
                      each additional
                      50 sheets that
                      exceeds 100
                      sheets.
1.16(s)............  Reissue             $310                     $320                    $10
                      Application Size   SE $155                  SE $160                 SE $5
                      Fee--For each
                      additional 50
                      sheets that
                      exceeds 100
                      sheets.
1.16(s)............  Provisional         $310                     $320                    $10
                      Application Size   SE $155                  SE $160                 SE $5
                      Fee--For each
                      additional 50
                      sheets that
                      exceeds 100
                      sheets.
1.17(a)(1).........  Extension for       $150                     $150                    $0
                      Response within    SE $75                   SE $75                  SE $0
                      First Month.
1.17(a)(2).........  Extension for       $560                     $570                    $10
                      Response within    SE $280                  SE $285                 SE $5
                      Second Month.
1.17(a)(3).........  Extension for       $1,270                   $1,290                  $20
                      Response within    SE $635                  SE $645                 $10
                      Third Month.
1.17(a)(4).........  Extension for       $1,980                   $2,010                  $30
                      Response within    SE $990                  SE $1,005               SE $15
                      Fourth Month.
1.17(a)(5).........  Extension for       $2,690                   $2,730                  $40
                      Resonse within     SE $1,345                SE $1,365               SE $20
                      Fifth Month.
1.17(l)............  Petition to Revive  $620                     $630                    $10
                      Unavoidably        SE $310                  SE $315                 SE $5
                      Abandoned
                      Application.
1.17(m)............  Petition to Revive  $1,860                   $1,890                  $30
                      Unintentionally    SE $930                  SE $945                 SE $15
                      Abandoned
                      Application.
1.18(a)............  Utility Issue.....  $1,740                   $1,770                  $30
                                         SE $870                  SE $885                 SE $15
1.18(a)............  Reissue Issue.....  $1,740                   $1,770                  $30
                                         SE $870                  SE $885                 SE $15
1.18(b)............  Design Issue......  $990                     $1,010                  $20
                                         SE $495                  SE $505                 SE $10
1.18(c)............  Plant Issue.......  $1,370                   $1,390                  $20
                                         SE $685                  SE $695                 SE $10
1.20(c)(3).........  Reexamination       $250                     $250                    $0
                      Independent        SE $125                  SE $125                 SE $0
                      Claims in Excess
                      of Three.
1.20(c)(4).........  Reexamination       $60                      $62                     $2
                      Total Claims in    SE $30                   SE $31                  SE $1
                      Excess of Twenty.
1.20(d)............  Statutory           $160                     $160                    $0
                      Disclaimer.        SE $80                   SE $80                  SE $0
1.20(e)............  First Stage         $1,130                   $1,150                  $20
                      Maintenance.       SE $565                  SE $575                 SE $10
1.20(f)............  Second Stage        $2,850                   $2,900                  $50
                      Maintenance.       SE $1,425                SE $1,450               SE $25
1.20(g)............  Third Stage         $4,730                   $4,810                  $80
                      Maintenance.       SE $2,365                SE $2,405               SE $40
1.492(a)...........  Filing of PCT       $380                     $390                    $10
                      National Stage     SE $190                  SE $195                 SE $5
                      Application.
1.492(b)(3)........  PCT National Stage  $490                     $500                    $10
                      Search Search      SE $245                  SE $250                 SE $5
                      Report Prepared
                      and Provided to
                      USPTO.
1.492(b)(4)........  PCT National Stage  $620                     $630                    $10
                      Search--All Other  SE $310                  SE $315                 SE $5
                      Situations.
1.492(c)(2)........  PCT National Stage  $250                     $250                    $0
                      Examination--All   SE $125                  SE $125                 SE $0
                      Other Situations.
1.492(d)...........  Independent Claims  $250                     $250                    $0
                      in Excess of       SE $125                  SE $125                 SE $0
                      Three.
1.492(e)...........  Total Claims in     $60                      $62                     $2
                      Excess of Twenty.  SE $30                   SE $31                  SE $1
1.492(f)...........  Multiple Dependent  $450                     $460                    $10
                      Claims.            SE $225                  SE $230                 SE $5
1.492(j)...........  PCT National Stage  $310                     $320                    $10
                      Application Size   SE $155                  SE $160                 SE $5
                      Fee.
41.20(b)(1)........  Notice of Appeal..  $620                     $630                    $10
                                         SE $310                  SE $315                 SE $5

[[Page 54363]]

 
41.20(b)(2)........  Filing a Brief in   $620                     $630                    $10
                      Support of an      SE $310                  SE $315                 SE $5
                      Appeal.
41.20(b)(3)........  Request for Oral    $1,240                   $1,260                  $20
                      Hearing.           SE $620                  SE $630                 SE $10
----------------------------------------------------------------------------------------------------------------

    Comment and Response to Comment: The USPTO published a notice 
proposing to adjust the patent fees charged under 35 U.S.C. 41(a) and 
(b) for fiscal year 2013 to reflect fluctuations in the CPI. The Office 
received one comment in response to the proposed rule. The commenter 
supports the proposed CPI adjustment of fees for FY 2013 as an interim 
fee increase until the USPTO exercises its fee-setting authority under 
Section 10 of the AIA. However, because of the significant 
administrative burdens on corporations and patent law firms to adjust 
their internal systems for paying fees and correctly advising clients 
of fee increases, it is suggested there should not be more than one fee 
adjustment per year. The commenter suggests that in future years, CPI 
adjustments and Section 10 adjustments should be timed so as to avoid 
having two separate adjustments in the same year. The Office's response 
is patent fees are being set under 35 U.S.C. 41(a) and (b) to ensure 
proper funding for effective operations. As previously discussed, this 
interim increase in fees is necessary to allow the USPTO to meet its 
strategic goals within the time frame outlined in the FY 2013 
President's Budget. In the future, the USPTO does not anticipate 
routinely adjusting patent fees more than once per fiscal year.

Rulemaking Considerations

 Final Regulatory Flexibility Analysis

    The Office has prepared the following Final Regulatory Flexibility 
Analysis.
    1. Description of the reasons that action by the agency is being 
considered: The USPTO is adjusting the patent fees set under 35 U.S.C. 
41(a) and (b) to ensure proper funding for effective operations. The 
patent fee CPI adjustment under 35 U.S.C. 41(f) is a routine adjustment 
that has generally occurred on an annual basis when necessary to 
recover the higher costs of USPTO operations that occur due to the 
increase in the price of products and services.
    2. Statement of the objectives of, and legal basis for, the final 
rule: 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. The objective of the 
change is to adjust patent fees set under 35 U.S.C. 41(a) and (b) as an 
annual, routine step in order to recover the higher costs of USPTO 
operations as reflected by the CPI. 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. Statement of Significant Issues Raised by the Public Comments in 
Response to the IRFA and the Office's Response to Such Issues: The 
Office received no comments concerning the Initial Regulatory 
Flexibility Act analysis.
    4. 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 USPTO, however, has formally 
adopted, with SBA approval, 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 USPTO 
captures this data in the Patent Application Location and Monitoring 
(PALM) database system, which tracks information on each patent 
application submitted to the USPTO.
    Unlike the general SBA small business size standards set forth in 
13 CFR 121.201, USPTO's approved alternative size standard is not 
industry-specific. Specifically, the USPTO 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 (November 20, 
2006), 1313 Off. Gaz. Pat. Office at 63 (December 12, 2006).
    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 final rule will specifically 
apply when an applicant or patentee pays an application filing or 
national stage entry fee, search fee, examination fee, extension of 
time fee, notice of appeal fee, appeal brief fee, request for an oral 
hearing fee, petition to revive fee, issue fee, or patent maintenance 
fee.
    The USPTO has 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 (November 20, 2006), 1313 Off. Gaz. Pat. 
Office at 61 (December 12, 2006). Therefore, the USPTO is also 
considering all other entities paying patent fees to be small entities 
as well in an effort to capture the impact on all

[[Page 54364]]

small entity applicants whether they claim that status or not. While 
the USPTO does not record the number of small entity filers in a given 
year, the USPTO estimates that in FY 2011, of the patent fees where a 
small entity discount is available, 3,980,519 patent fees were paid, 
out of which 1,190,558 fees claimed the small entity discount.
    5. 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 skills necessary for preparation of the report or record: 
This final rule does not require any reporting or recordkeeping or 
incorporate other compliance requirements. This final rule only adjusts 
patent fees (as discussed previously) to reflect changes in the CPI.
    6. 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 the applicable statutes. The USPTO is making a small 
adjustment to patent fees, under 35 U.S.C. 41(f), to ensure proper 
funding for effective operations in light of changes in the CPI. The 
patent fee CPI adjustment is a routine adjustment that has generally 
occurred on an annual basis to recover the higher costs of USPTO 
operations that occur due to increases in the price of products and 
services. This CPI adjustment helps the Office maintain effective 
operations and decrease patent pendency levels.
    7. Identification, to the extent practicable, of all relevant 
Federal rules which may duplicate, overlap or conflict with the final 
rule: The USPTO 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 and there are no duplicative, 
overlapping or conflicting rules.
    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 USPTO believes that there are no other 
duplicative or overlapping rules.

B. Executive Order 13132 (Federalism)

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

C. Executive Order 12866 (Regulatory Planning and Review)

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

D. Executive Order 13563 (Improving Regulation and Regulatory Review)

    The Office has complied with Executive Order 13563. Specifically, 
the Office 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 rulemaking 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.

E. 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).

F. 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).

G. 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).

H. 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).

I. 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).

J. 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 has submitted 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 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).

K. 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

[[Page 54365]]

Mandates Reform Act of 1995. See 2 U.S.C. 1501 et seq.

L. 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.

M. National Technology Transfer and Advancement Act

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

N. Paperwork Reduction Act

    This final 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 final rule have 
been reviewed and approved by OMB. The Office is not resubmitting 
information collection requests 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, 0651-0024, 0651-0031, 
0651-0032, 0651-0033, 0651-0063, and 0651-0064. The USPTO will submit 
to OMB fee revision changes for OMB control numbers 0651-0016, 0651-
0021, 0651-0024, 0651-0031, 0651-0032, 0651-0033, 0651-0063, and 0651-
0064 at the time these collections are submitted to OMB for renewal.
    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 record keeping 
requirements, Small businesses.

37 CFR Part 41

    Administrative practice and procedure, Inventions and patents, 
Lawyers.
    For the reasons set forth in the preamble, 37 CFR parts 1 and 41 
are to be 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 1.16 is amended by revising paragraphs (a) through (e), (h) 
through (j), and (o) 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          $98.00
 submitted in compliance with the Office electronic filing
 system (Sec.   1.27(b)(2)):
By a small entity (Sec.   1.27(a))..........................     $195.00
By other than a small entity................................     $390.00
 

    (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))..........................     $125.00
By other than a small entity................................     $250.00
 

    (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))..........................     $125.00
By other than a small entity................................     $250.00
 

    (d) Basic fee for filing each provisional application:

By a small entity (Sec.   1.27(a))..........................     $125.00
By other than a small entity................................     $250.00
 

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

* * * * *
    (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))..........................     $125.00
By other than a small entity................................     $250.00
 

    (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))..........................      $31.00
By other than a small entity................................      $62.00
 

    (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))..........................     $230.00
By other than a small entity................................     $460.00
 

* * * * *
    (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))..........................     $125.00
By other than a small entity................................     $250.00
 

    (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))..........................      $80.00
By other than a small entity................................     $160.00
 

    (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))..........................     $100.00
By other than a small entity................................     $200.00
 

    (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))..........................     $380.00
By other than a small entity................................     $760.00
 

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

* * * * *

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


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))..........................      $75.00
By other than a small entity................................     $150.00
(2) For reply within second month:
By a small entity (Sec.   1.27(a))..........................     $285.00
By other than a small entity................................     $570.00
(3) For reply within third month:
By a small entity (Sec.   1.27(a))..........................     $645.00
By other than a small entity................................   $1,290.00
(4) For reply within fourth month:
By a small entity (Sec.   1.27(a))..........................   $1,005.00

[[Page 54366]]

 
By other than a small entity................................   $2,010.00
(5) For reply within fifth month:
By a small entity (Sec.   1.27(a))..........................   $1,365.00
By other than a small entity................................   $2,730.00
 

* * * * *
    (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))..........................     $315.00
By other than a small entity................................     $630.00
 

    (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))..........................     $945.00
By other than a small entity................................   $1,890.00
 

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


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

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

By a small entity (Sec.   1.27(a))..........................     $885.00
By other than a small entity................................   $1,770.00
 

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

By a small entity (Sec.   1.27(a))..........................     $505.00
By other than a small entity................................   $1,010.00
 

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

By a small entity (Sec.   1.27(a))..........................     $695.00
By other than a small entity................................   $1,390.00
 

* * * * *

0
5. Section 1.20 is amended by revising paragraphs (c)(3), (c)(4), and 
(d) through (g) to read as follows:


Sec.  1.20  Post issuance fees.

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

By a small entity (Sec.   1.27(a))..........................     $125.00
By other than a small entity................................     $250.00
 

    (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))..........................      $31.00
By other than a small entity................................      $62.00
 

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

By a small entity (Sec.   1.27(a))..........................      $80.00
By other than a small entity................................     $160.00
 

    (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))..........................     $575.00
By other than a small entity................................   $1,150.00
 

    (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))..........................   $1,450.00
By other than a small entity................................   $2,900.00
 

    (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))..........................   $2,405.00
By other than a small entity................................   $4,810.00
 

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


Sec.  1.492  National stage fees.

* * * * *
    (a) The basic national fee for an international application 
entering the national stage under 35 U.S.C. 371 if the basic national 
fee was not paid before December 8, 2004:

By a small entity (Sec.   1.27(a))..........................     $195.00
By other than a small entity................................     $390.00
 

    (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))..........................     $250.00
By other than a small entity................................     $500.00
 

    (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))..........................     $315.00
By other than a small entity................................     $630.00
 

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

By a small entity (Sec.   1.27(a))..........................     $125.00
By other than a small entity................................     $250.00
 

    (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))..........................     $125.00
By other than a small entity................................     $250.00
 

    (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))..........................      $31.00
By other than a small entity................................      $62.00
 

    (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))..........................     $230.00
By other than a small entity................................     $460.00
 

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

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

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

0
7. The authority citation for 37 CFR part 41 continues to read as 
follows:

    Authority: 35 U.S.C. 2(b)(2), 3(a)(2)(A), 21, 23, 32, 41, 134, 
135.

0
8. Section 41.20 is amended by revising paragraph (b) to read as 
follows:


Sec.  41.20  Fees.

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

By a small entity (Sec.   1.27(a) of this title)............     $315.00
By other than a small entity................................     $630.00
 

    (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)............     $315.00

[[Page 54367]]

 
By other than a small entity................................     $630.00
 

    (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))..........................     $630.00
By other than a small entity................................   $1,260.00
 


    Dated: August 31, 2012.
Deborah S. Cohn,
Commissioner for Trademarks, United States Patent and Trademark Office.
[FR Doc. 2012-21974 Filed 9-4-12; 8:45 am]
BILLING CODE 3510-16-P