[Federal Register Volume 88, Number 58 (Monday, March 27, 2023)]
[Rules and Regulations]
[Pages 18052-18054]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2023-06289]


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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 
the DOCX format, except for design, plant, or provisional applications. 
The effective date of this new fee was most recently delayed in a

[[Page 18053]]

final rule published in the Federal Register on December 29, 2022 and 
was scheduled to become effective on April 3, 2023. Through this final 
rule, the USPTO is delaying the effective date of this fee until June 
30, 2023.

DATES: This final rule is effective June 30, 2023. As of March 27, 
2023, the effective date of amendatory instruction 2.i. (affecting 37 
CFR 1.16(u)), published at 85 FR 46932 on August 3, 2020, and delayed 
at 86 FR 66192, November 22, 2021, and at 87 FR 80073, December 29, 
2022, and as further amended at 88 FR 17147, March 22, 2023, is further 
delayed until June 30, 2023. The change to 37 CFR 1.16(u) in amendatory 
instruction 2.i., published at 85 FR 46932 on August 3, 2020, is 
applicable only to nonprovisional utility applications filed under 35 
U.S.C. 111 for an original patent on or after June 30, 2023.

FOR FURTHER INFORMATION CONTACT: Mark O. Polutta, Senior Legal Advisor, 
Office of Patent Legal Administration, 571-272-7709; or Eugenia A. 
Jones, Senior Legal Advisor, Office of Patent Legal Administration, 
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 
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 the 
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 the DOCX format.
    The USPTO conducted two pilot programs for filing applications in 
the 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 the DOCX format in EFS-Web to all users in 
September 2017. In 2018, the USPTO launched the 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 the 
DOCX format in the Patent Center since April 2020. Information about 
the Patent Center is available at www.uspto.gov/PatentCenter. The USPTO 
continues to hold many discussions and training sessions 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 June 30, 2023. The further delay will give 
applicants more time to adjust to filing patent applications in the 
DOCX format.
    Applicants are strongly encouraged to begin filing patent 
applications in the DOCX format before the new effective date of the 
fee. Applicants are also reminded that they can file test submissions 
through the Patent Center training mode to practice filing in DOCX. 
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). 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. 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.  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 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. In Sec.  1.16, amend paragraph (u) introductory text by removing 
``April 3,

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2023'' and adding ``June 30, 2023'' in its place.

Katherine K. Vidal,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
[FR Doc. 2023-06289 Filed 3-24-23; 8:45 am]
BILLING CODE 3510-16-P