[Federal Register Volume 86, Number 222 (Monday, November 22, 2021)]
[Rules and Regulations]
[Pages 66192-66193]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2021-25368]



[[Page 66192]]

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DEPARTMENT OF COMMERCE

Patent and Trademark Office

37 CFR Part 1

[Docket No.: PTO-P-2018-0031]
RIN 0651-AD31


Setting and Adjusting Patent Fees During Fiscal Year 2020

AGENCY: United States Patent and Trademark Office, Department of 
Commerce.

ACTION: Final rule; delay of effective date and final rule.

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SUMMARY: The United States Patent and Trademark Office (USPTO or 
Office) published a final rule in the Federal Register on August 3, 
2020, that includes a fee for patent applications that are not filed in 
DOCX format, except for design, plant, or provisional applications. 
This new fee was scheduled to become effective on January 1, 2022. 
Through this final rule, the USPTO is delaying the effective date of 
this fee until January 1, 2023.

DATES: As of November 22, 2021, the effective date of amendatory 
instruction 2.i. (affecting 37 CFR 1.16(u)), published at 85 FR 46932 
on August 3, 2020, is delayed until January 1, 2023. This final rule is 
effective January 1, 2023.

FOR FURTHER INFORMATION CONTACT: Mark O. Polutta, Senior Legal Advisor, 
Office of Patent Legal Administration, at 571-272-7709; or Eugenia A. 
Jones, Senior Legal Advisor, Office of Patent Legal Administration, at 
571-272-7727. You can also send inquiries by email to 
[email protected].

SUPPLEMENTARY INFORMATION: On August 3, 2020, the USPTO published a 
final rule in the Federal Register that included a new fee set forth in 
Sec.  1.16(u) with an effective date of January 1, 2022. See Setting 
and Adjusting Patent Fees in Fiscal Year 2020, 85 FR 46932. As 
specified in Sec.  1.16(u), the fee is due for any application filed on 
or after January 1, 2022, under 35 U.S.C. 111 for an original patent--
except design, plant, or provisional applications--where the 
specification, claims, and/or abstract do not conform to the USPTO 
requirements for submission in DOCX format. Therefore, the fee is due 
for nonprovisional utility applications filed under 35 U.S.C. 111, 
including continuing applications, that are not filed in DOCX format.
    The USPTO conducted two pilot programs for filing applications in 
DOCX format. The eMod Text Pilot Program was conducted between August 
2016 and September 2017. The USPTO then expanded the ability to file 
patent applications in DOCX format in EFS-Web to all users in September 
2017. In 2018, the USPTO launched Patent Center and conducted the 
Patent Center Text Pilot Program from June 2018 through April 2020. All 
applicants have been able to file applications in DOCX format in Patent 
Center since April 2020. Information about Patent Center is available 
at www.uspto.gov/patents/apply/patent-center. In addition, the USPTO 
has held many discussions with stakeholders to ensure a fair and 
reasonable transition to the DOCX format.
    The USPTO is delaying the effective date of the fee set forth in 
Sec.  1.16(u) until January 1, 2023. The delay will enable the USPTO to 
provide enhanced testing of its information technology systems as more 
users file in DOCX. The delay also will give applicants more time to 
adjust to filing patent applications in DOCX format.
    Applicants are strongly encouraged to begin filing patent 
applications in DOCX format before the new effective date of the fee. 
Applicants are also reminded that they can file test submissions 
through Patent Center training mode to practice filing in DOCX. In 
addition, prior to the new effective date of the fee, the USPTO plans 
to provide an additional testing opportunity for applicants to file 
patent applications in DOCX format to encourage more applicants to 
acclimate to the process. Details of the opportunity will be announced 
in a forthcoming notice. Furthermore, applicants who have not yet taken 
advantage of the DOCX training sessions hosted by the USPTO are 
strongly encouraged to do so. Information on filing application 
documents in DOCX and a link to the DOCX training sessions are 
available at www.uspto.gov/patents/docx.

Rulemaking Requirements

    A. Administrative Procedure Act: This final rule revises the 
effective date of a final rule published on August 3, 2020, 
implementing a non-DOCX filing surcharge fee, and is a rule of agency 
practice and procedure pursuant to 5 U.S.C. 553(b)(A). See JEM Broad. 
Co. v. F.C.C., 22 F.3d 32 (D.C. Cir. 1994) (``[T]he `critical feature' 
of the procedural exception [in 5 U.S.C. 553(b)(A)] `is that it covers 
agency actions that do not themselves alter the rights or interests of 
parties, although [they] may alter the manner in which the parties 
present themselves or their viewpoints to the agency.' '' (quoting 
Batterton v. Marshall, 648 F.2d 694, 707 (D.C. Cir. 1980))); see also 
Bachow Commc'ns Inc. v. F.C.C., 237 F.3d 683, 690 (D.C. Cir. 2001) 
(rules governing an application process are procedural under the 
Administrative Procedure Act); Inova Alexandria Hosp. v. Shalala, 244 
F.3d 342, 350 (4th Cir. 2001) (rules for handling appeals were 
procedural where they did not change the substantive standard for 
reviewing claims). Accordingly, prior notice and opportunity for public 
comment are not required pursuant to 5 U.S.C. 553(b) or (c) (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 rulemaking for 
``interpretative rules, general statements of policy, or rules of 
agency organization, procedure, or practice'' (quoting 5 U.S.C. 
553(b)(A))).
    Moreover, the Director of the USPTO, pursuant to authority at 5 
U.S.C. 553(b)(B), finds good cause to adopt the change to the effective 
date of Sec.  1.16(u) in this final rule without prior notice and an 
opportunity for public comment, as such procedures would be 
impracticable and contrary to the public interest. The change to the 
effective date will provide the public an opportunity to more fully 
comprehend the nature of, and prepare to comply with, the DOCX format 
before the new fee is effective. Delay of this provision to provide 
prior notice and comment procedures is also impracticable because it 
would allow Sec.  1.16(u) to go into effect before the public is ready 
for the DOCX format. In addition, the Director finds good cause under 5 
U.S.C. 553(d)(3) to waive the 30-day delay in effectiveness of this 
rule. Immediate implementation of the delay in effective date of the 
fee is in the public interest because it will provide the public an 
opportunity to more fully comprehend the nature of, and prepare to 
comply with, the DOCX format before the new fee in Sec.  1.16(u) is 
effective.
    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 12866 (Regulatory Planning and Review): This 
rulemaking has been determined to be not significant for purposes of 
Executive Order 12866 (Sept. 30, 1993).
    D. Paperwork Reduction Act: The Paperwork Reduction Act of 1995 (44 
U.S.C. 3507(d)) requires that the USPTO consider the impact of 
paperwork and other information collection burdens imposed on the 
public. The USPTO has determined that there are no new

[[Page 66193]]

requirements for information collection associated with this final 
rule.

List of Subjects for 37 CFR Part 1

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

    For the reasons stated in the preamble, the Office amends 37 CFR 
part 1 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.


Sec.  1.16  [Amended]

0
2. Amend Sec.  1.16 in paragraph (u) introductory text by removing 
``January 1, 2022'' and adding ``January 1, 2023'' in its place.

Andrew Hirshfeld,
Commissioner for Patents, Performing the Functions and Duties of the 
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
[FR Doc. 2021-25368 Filed 11-19-21; 8:45 am]
BILLING CODE 3510-16-P