[Federal Register Volume 88, Number 108 (Tuesday, June 6, 2023)]
[Rules and Regulations]
[Pages 36956-36958]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2023-11917]


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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) 
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 final 
rule published in the Federal Register on March 27, 2023, and was 
scheduled to become effective on June 30, 2023. Through this final 
rule, the USPTO is delaying the effective date of this fee until 
January 17, 2024.

DATES: This final rule is effective on January 17, 2024. As of June 6, 
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 on November 22, 2021, and at 87 FR 80073 on December 29, 
2022; and as further amended at 88 FR 17147 on March 22, 2023; and 
thereafter delayed at 88 FR 18052 on March 27, 2023, is further delayed 
until January 17, 2024. 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 January 17, 2024.

FOR FURTHER INFORMATION CONTACT: Mark O. Polutta, Senior Legal Advisor, 
Office of Patent Legal Administration, at

[[Page 36957]]

571-272-7709; or Eugenia A. Jones, Senior Legal Advisor, Office of 
Patent Legal Administration, at 571-272-7727. You can also send 
inquiries 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 During 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.
    Currently, applicants may file patent applications in the DOCX 
format through EFS-Web and Patent Center. The USPTO plans to retire 
EFS-Web and therefore encourages stakeholders and applicants to review 
the information about Patent Center 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 January 17, 2024. This further delay will give the 
USPTO an opportunity, through a separate Federal Register Notice, to 
invite and consider public comments on a proposed information 
collection pertaining to the impact of the Sec.  1.16(u) fee on the 
filing of nonprovisional utility applications under 35 U.S.C. 111, 
including continuing applications. As required by the Paperwork 
Reduction Act of 1995 (PRA), the USPTO will submit the proposed 
information collection together with a summary of any received comments 
to the Office of Management and Budget for review under the PRA. 
Federal Register Notices published by the USPTO pertaining to the PRA 
are available at www.uspto.gov/learning-and-resources/federal-register-notices/federal-register-notices-2023. The USPTO expects that this 
delay will afford sufficient time to complete the PRA clearance 
process.
    This delay will also provide applicants more time to adjust to 
filing patent applications in the DOCX format. Applicants are 
encouraged to begin filing patent applications in the DOCX format 
before the new effective date of the fee. The USPTO also reminds 
applicants 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 the USPTO hosts 
are 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 an 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 the 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, as well as provide the USPTO 
sufficient time to complete the PRA clearance process for the new fee. 
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 
the 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, as well as provide the USPTO sufficient 
time to complete the PRA clearance process for the new fee.
    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 PRA (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 USPTO 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 
``June 30,

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2023'' and adding ``January 17, 2024'' 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. 2023-11917 Filed 6-5-23; 8:45 am]
BILLING CODE 3510-16-P