[Federal Register Volume 89, Number 65 (Wednesday, April 3, 2024)]
[Proposed Rules]
[Pages 23226-23291]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2024-06250]



[[Page 23225]]

Vol. 89

Wednesday,

No. 65

April 3, 2024

Part IV





Department of Commerce





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Patent and Trademark Office





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37 CFR Parts 1, 41, and 42





Setting and Adjusting Patent Fees During Fiscal Year 2025; Proposed 
Rule

  Federal Register / Vol. 89 , No. 65 / Wednesday, April 3, 2024 / 
Proposed Rules  

[[Page 23226]]


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DEPARTMENT OF COMMERCE

Patent and Trademark Office

37 CFR Parts 1, 41, and 42

[Docket No. PTO-P-2022-0033]
RIN 0651-AD64


Setting and Adjusting Patent Fees During Fiscal Year 2025

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

ACTION: Notice of proposed rulemaking.

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SUMMARY: The United States Patent and Trademark Office (USPTO) proposes 
to set or adjust patent fees as authorized by the Leahy-Smith America 
Invents Act (AIA), as amended by the Study of Underrepresented Classes 
Chasing Engineering and Science Success Act of 2018 (SUCCESS Act). The 
proposed fee adjustments are needed to provide the USPTO with 
sufficient aggregate revenue to recover the aggregate costs of patent 
operations in future years (based on assumptions and estimates found in 
the agency's Fiscal Year 2025 Congressional Justification (FY 2025 
Budget)), including implementing the USPTO 2022-2026 Strategic Plan 
(Strategic Plan).

DATES: The USPTO solicits comments from the public on this proposed 
rule. Written comments must be received on or before June 3, 2024 to 
ensure consideration.

ADDRESSES: Written comments on proposed patent fees must be submitted 
through the Federal eRulemaking Portal at https://www.regulations.gov. 
To submit comments via the portal, commenters should go to https://www.regulations.gov/docket/PTO-P-2022-0033 or enter docket number PTO-
P-2022-0033 on the https://www.regulations.gov homepage and select the 
``Search'' button. The site will provide search results listing all 
documents associated with this docket. Commenters can find a reference 
to this document and select the ``Comment'' button, complete the 
required fields, and enter or attach their comments. Attachments to 
electronic comments will be accepted in Adobe portable document format 
(PDF) or Microsoft Word format. Because comments will be made available 
for public inspection, information that the submitter does not desire 
to make public, such as an address or phone number, should not be 
included in the comments.
    Visit the Federal eRulemaking Portal for additional instructions on 
providing comments via the portal. If electronic submission of comments 
is not possible, please contact the USPTO using the contact information 
below in the FOR FURTHER INFORMATION CONTACT section of this document 
for special instructions.

FOR FURTHER INFORMATION CONTACT: Brendan Hourigan, Director, Office of 
Planning and Budget, at 571-272-8966, or [email protected]; or 
C. Brett Lockard, Director, Forecasting and Analysis Division, at 571-
272-0928, or [email protected].

SUPPLEMENTARY INFORMATION:

I. Executive Summary

A. Introduction

    The USPTO publishes this notice of proposed rulemaking (NPRM or 
proposed rule) under section 10 of the AIA (section 10), Public Law 
112-29, 125 Stat. 284, as amended by the SUCCESS Act, Public Law 115-
273, 132 Stat. 4158, which authorizes the Under Secretary of Commerce 
for Intellectual Property and Director of the USPTO to set or adjust by 
rule any patent fee established, authorized, or charged under title 35 
of the United States Code (U.S.C.) for any services performed, or 
materials furnished, by the agency. Section 10 prescribes that fees may 
be set or adjusted only to recover the aggregate estimated costs to the 
USPTO for processing, activities, services, and materials relating to 
patents, including administrative costs with respect to such patent 
fees. Section 10 authority includes flexibility to set individual fees 
in a way that furthers key policy factors, while considering the cost 
of the respective services. Section 10 also establishes certain 
procedural requirements for setting or adjusting fee regulations, such 
as public hearings and input from the Patent Public Advisory Committee 
(PPAC) and congressional oversight. PPAC held a public hearing on the 
USPTO's preliminary patent fee proposals on May 18, 2023, and released 
a report (PPAC Report) on August 14, 2023, containing its comments, 
advice, and recommendations on the preliminary fee proposals. The USPTO 
considered and analyzed the PPAC Report before publishing the fee 
proposals in this NPRM.

B. Purpose of This Action

    Based on a biennial review of fees, costs, and revenues that began 
in fiscal year (FY) 2021, the USPTO concluded that fee adjustments are 
necessary to provide the agency with sufficient financial resources to 
facilitate the effective administration of the U.S. patent system, 
including implementing the USPTO 2022-2026 Strategic Plan, available on 
the agency website at https://www.uspto.gov/StrategicPlan. The USPTO 
reviewed and analyzed the overall balance between the agency's 
estimated revenue and costs over the next five years (based on current 
projections) under this proposed rule. The proposed fees will help 
stabilize the USPTO's finances by offsetting the forecasted increase in 
aggregate costs and maintaining the patent operating reserve in the 
desired operating range. The patent operating reserve mitigates 
financing risk and enables the agency to deliver reliable and 
predictable service levels, while positioning it to undertake 
initiatives that encourage participation in the innovation ecosystem.
    The individual fee proposals align with the USPTO's strategic goals 
and its fee structure philosophy, including the agency's four key fee 
setting policy factors: (1) promote innovation strategies; (2) align 
fees with the full costs of products and services; (3) facilitate 
effective administration of the U.S. patent system; and (4) offer 
application processing options as discussed in detail in Part IV: 
Rulemaking Goals and Strategies. The proposed fee adjustments will 
enable the USPTO to accomplish its mission to drive U.S. innovation, 
inclusive capitalism, and global competitiveness. The USPTO's goal is 
to drive innovation, entrepreneurship, and creativity for the benefit 
of all Americans and people around the world.

C. Summary of Provisions Impacted by This Action

    The USPTO proposes to set or adjust 455 patent fees for 
undiscounted, small, and micro entities (any reference herein to 
``undiscounted entity'' includes all entities other than those with 
established entitlement to either a small or micro entity fee discount, 
see Part II: Legal Framework for more information), including the 
introduction of 73 new fees.
    Overall, the routine fees to obtain a patent (i.e., filing, search, 
examination, and issue fees) will increase under this NPRM relative to 
the current fee schedule to ensure financial sustainability and 
accommodate increases needed to improve the predictability and 
reliability of patent intellectual property (IP) protection (discussed 
in detail below). Applicants who meet the eligibility criteria for 
small or micro entity discounts will continue to pay a reduced fee for 
the fees eligible for discount under AIA section 10(b). Additional 
information describing the proposed fee adjustments is included in Part 
V: Individual Fee Rationale in this rulemaking and in the

[[Page 23227]]

``Table of Patent Fees--Current, Proposed, and Unit Cost'' (Table of 
Patent Fees) available on the fee setting section of the USPTO website 
at https://www.uspto.gov/FeeSettingAndAdjusting.

D. Summary of Costs and Benefits of This Action

    This proposed rule is economically significant and requires a 
Regulatory Impact Analysis (RIA) under Executive Order 12866 Regulatory 
Planning and Review, (Sept. 30, 1993). The USPTO prepared an RIA to 
analyze the costs and benefits of the NPRM over a five-year period, FY 
2025-2029. The RIA includes an analysis of how well the four 
alternatives align with the rulemaking strategies and goals, which are 
comprised of strategic priorities (goals, objectives, and key 
performance strategies) from the Strategic Plan; and fee setting policy 
factors. From this conceptual framework, the USPTO assessed the 
absolute and relative qualitative costs and benefits of each 
alternative. Consistent with OMB Circular A-4, ``Regulatory Analysis,'' 
this proposed rule involves a transfer payment from one group to 
another. The USPTO recognizes that it is very difficult to precisely 
monetize and quantify social costs and benefits resulting from 
deadweight loss of a transfer rule such as this proposed rule. The 
costs and benefits identified and analyzed in the RIA are strictly 
qualitative. Qualitative costs and benefits have effects that are 
difficult to express in either dollar or numerical values. Monetized 
costs and benefits, on the other hand, have effects that can be 
expressed in dollar values. The USPTO did not identify any monetized 
costs and benefits of this proposed rule, but found this proposed rule 
has significant qualitative benefits and only minimal costs.
    The qualitative costs and benefits that the RIA assesses are: (1) 
fee schedule design--a measure of how well the fee schedule aligns to 
the key fee setting policy factors; and (2) securing aggregate revenue 
to recover aggregate cost--a measure of whether the alternative 
provides adequate revenue to support the core mission and strategic 
priorities described in the NPRM, Strategic Plan, and FY 2025 Budget. 
Based on the costs and benefits identified and analyzed in the RIA, the 
fee schedule proposed in this NPRM offers the highest net benefits. As 
described throughout this document, the proposed fee schedule maintains 
the existing balance of below cost entry fees (e.g., filing, search, 
and examination) and above cost maintenance fees as one approach to 
foster innovation. Further, as detailed in Part V: Individual Fee 
Rationale, the proposed fee changes are targeted in support of one or 
more fee setting policy factors. Lastly, this proposed rule secures the 
aggregate revenue needed to maintain patent operations and achieve the 
strategic priorities encompassed in the rulemaking goals and strategies 
(see Part IV: Rulemaking Goals and Strategies). The proposed fee 
schedule produces sufficient aggregate revenue to fund the strategic 
objectives to issue and maintain robust and reliable patents; improve 
patent application pendency; optimize the patent application process to 
enable efficiencies for applicants and other stakeholders; and enhance 
internal processes to prevent fraudulent and abusive behaviors that do 
not embody the USPTO's mission. Table 1 summarizes the RIA results. 
Additional details describing the costs and benefits can be found in 
the RIA, available on the fee setting section of the USPTO website at 
https://www.uspto.gov/FeeSettingAndAdjusting.

 Table 1--Proposed Patent Fee Schedule Costs and Benefits, Cumulative FY
                                2025-2029
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      Qualitative costs and benefits
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Costs:                                      ............................
  Fee Schedule Design.....................  Minimal.
Benefits:                                   ............................
  Secure Aggregate Revenue to Recover       Significant.
   Aggregate Costs.
  Fee Schedule Design.....................  Significant.
Net Benefit...............................  Significant benefit.
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II. Legal Framework

A. Leahy-Smith America Invents Act--Section 10

    The AIA was enacted into law on September 16, 2011. Public Law 112-
29, 125 Stat. 284. Section 10(a) of the AIA authorizes the Director of 
the USPTO to set or adjust by rule any patent fee established, 
authorized, or charged under 35 U.S.C. for any services performed or 
materials furnished by the agency. Fees under 35 U.S.C. may be set or 
adjusted only to recover the aggregate estimated costs to the USPTO for 
processing, activities, services, and materials related to patents, 
including administrative costs to the agency with respect to such 
patent operations. See 125 Stat. at 316. Provided that fees in the 
aggregate achieve overall aggregate cost recovery, the Director may set 
individual fees under section 10 at, below, or above their respective 
cost. Section 10(e) requires the Director to publish the final fee rule 
in the Federal Register and the USPTO's Official Gazette at least 45 
days before the final fees become effective.
    Section 10 authorized the USPTO to set or adjust patent fees within 
the regulatory process. The USPTO has used the AIA's fee setting 
authority to achieve its key fee setting policy factors and to generate 
the aggregate revenue needed to recover the aggregate costs of 
operations and strategic patent priorities in final rules published in 
FY 2013 (Setting and Adjusting Patent Fees, 78 FR 4212 (Jan. 18, 
2013)), FY 2018 (Setting and Adjusting Patent Fees During Fiscal Year 
2017, 82 FR 52780 (Nov. 14, 2017)), and FY 2020 (Setting and Adjusting 
Patent Fees During Fiscal Year 2020, 85 FR 46932 (Aug. 3, 2020) (FY 
2020 Final Rule)).

B. The Study of Underrepresented Classes Chasing Engineering and 
Science Success Act of 2018

    The SUCCESS Act was enacted into law on October 31, 2018. See 
Public Law 115-273, 132 Stat. 4158. Section 4 of the SUCCESS Act 
amended section 10(i)(2) of the AIA by striking ``7-year'' and 
inserting ``15-year'' in reference to the expiration of fee setting 
authority. Therefore, updated section 10(i) terminates the Director's 
authority to set or adjust any fee under section 10(a) upon expiration 
of the 15-year period that began on September 16, 2011, and ends on 
September 16, 2026.

C. Unleashing American Innovators Act of 2022

    On December 29, 2022, the President signed into law the 
Consolidated Appropriations Act, 2023, which included the Unleashing 
American Innovators Act (UAIA). The UAIA increased fee discounts for 
small entities from 50% to 60% and fee discounts for micro entities 
from 75% to 80% for fees for filing, searching, examining, issuing, 
appealing, and maintaining patent applications and patents. The UAIA 
also increased fee discounts for small entities from 75% to 80% for 
filing a basic, nonprovisional utility application electronically. See 
Consolidated Appropriations Act, 2023, Public Law 117-328; Reducing 
Patent Fees for Small Entities and Micro Entities Under the Unleashing 
American Innovators Act of 2022, 88 FR 17147 (Mar. 22, 2023).

D. Small Entity Fee Reduction

    Section 10(b) of the AIA, as amended by the UAIA, requires the 
USPTO to reduce by 60% the fees for small entities that are set or 
adjusted under section 10(a) for filing, searching, examining, issuing, 
appealing, and maintaining patent applications and patents.

[[Page 23228]]

E. Micro Entity Fee Reduction

    Section 10(g) of the AIA amended 35 U.S.C. chapter 11, by adding 
section 123 concerning micro entities. The AIA, as amended by the UAIA, 
provides that the USPTO must reduce by 80% the fees for micro entities 
for filing, searching, examining, issuing, appealing, and maintaining 
patent applications and patents.

F. Patent Public Advisory Committee Role

    The Secretary of Commerce established PPAC under the American 
Inventors Protection Act of 1999. See 35 U.S.C. 5. PPAC advises the 
Director of the USPTO on the management, policies, goals, performance, 
budget, and user fees of patent operations.
    When adopting fees under section 10, the Director must provide PPAC 
the proposed fees at least 45 days prior to publishing in the Federal 
Register. PPAC then has 30 days to deliberate, consider, and comment on 
the proposal, as well as hold public hearing(s) on the proposed fees. 
Then, before the USPTO issues any final fees, PPAC must make a written 
report available to the public of the comments, advice, and 
recommendations of the committee regarding the proposed fees. The USPTO 
must consider and analyze any comments, advice, or recommendations 
received from PPAC before finally setting or adjusting fees.
    Consistent with this framework, on April 20, 2023, the Director 
notified PPAC of the USPTO's intent to set or adjust patent fees and 
submitted a preliminary patent fee proposal with supporting materials. 
The preliminary patent fee proposal and associated materials are 
available on the fee setting section of the USPTO website at https://www.uspto.gov/FeeSettingAndAdjusting. PPAC held a public hearing at the 
USPTO's headquarters in Alexandria, Virginia, on May 18, 2023, where 
members of the public were given an opportunity to provide oral 
testimony. Transcripts of the hearing are available for review on the 
USPTO website at https://www.uspto.gov/sites/default/files/documents/PPAC_Hearing_Transcript-20230518.pdf. Members of the public were also 
given an opportunity to submit written comments for PPAC to consider, 
and these comments are available on Regulations.gov at https://www.regulations.gov/document/PTO-P-2023-0017-0001. On August 14, 2023, 
PPAC issued a written report setting forth in detail their comments, 
advice, and recommendations regarding the preliminary proposed fees. 
The report is available on the USPTO website at https://www.uspto.gov/sites/default/files/documents/PPAC-Report-on-2023-Fee-Proposal.docx. 
The USPTO considered and analyzed all comments, advice, and 
recommendations received from PPAC before publishing this NPRM. Further 
discussion of the PPAC Report can be found in Part IV: Rulemaking Goals 
and Strategies and Part V: Individual Fee Rationale.

III. Estimating Aggregate Costs and Revenues

    Section 10 prescribes that patent fees may be set or adjusted only 
to recover the aggregate estimated costs to the USPTO for processing, 
activities, services, and materials relating to patents, including 
administrative costs with respect to such patent fees. The following is 
a description of how the USPTO calculates aggregate costs and revenue.

Step 1: Estimating Prospective Aggregate Costs

    Estimating prospective aggregate costs is accomplished primarily 
through the annual USPTO budget formulation process. The annual budget 
is a five-year plan for carrying out base programs and new initiatives 
to deliver on the USPTO's statutory mission and implement strategic 
goals and objectives. First, the USPTO projects the level of demand for 
patent products and services. Demand for products and services depends 
on many factors that are subject to change, including domestic and 
global economic activity. The USPTO also considers overseas patenting 
activities, policies and legislation, and known process efficiencies. 
Because filing, search, and examination costs are the largest share of 
the total patent operating costs, a primary production workload driver 
is the number of patent application filings (i.e., incoming work to the 
USPTO). The USPTO looks at indicators such as the expected growth in 
Real Gross Domestic Product (RGDP), a leading indicator of incoming 
patent applications, to estimate prospective workload. RGDP is reported 
by the Bureau of Economic Analysis (www.bea.gov) and is forecasted each 
February by the OMB (www.omb.gov) in the Economic and Budget Analyses 
section of the Analytical Perspectives and twice annually by the 
Congressional Budget Office (CBO) (www.cbo.gov) in the Budget and 
Economic Outlook.
    The expected production workload must then be compared to the 
current examination production capacity to determine any required 
staffing and operating cost (e.g., salaries, workload processing 
contracts, and publication) adjustments. The USPTO uses a patent 
pendency model to estimate patent production output based on actual 
historical data and input assumptions, such as incoming patent 
applications and overtime hours. An overview of the model, including a 
description of inputs, outputs, key data relationships, and a 
simulation tool is available at https://www.uspto.gov/learning-and-resources/statistics/patent-pendency-model.
    Next, the USPTO calculates budgetary spending requirements based on 
the prospective aggregate costs of patent operations. First, the USPTO 
estimates the prospective costs of status quo operations (base 
requirements). Then, the base requirements are adjusted for anticipated 
pay increases and inflationary increases for the budget year and four 
outyears. The USPTO then estimates the prospective costs for expected 
changes in production workload and new initiatives over the same 
period. The USPTO reduces cost estimates for completed initiatives and 
known cost savings expected over the same five-year horizon. A detailed 
description of the budgetary requirements, aggregate costs, and related 
assumptions for the Patents program is available in the FY 2025 Budget.
    The USPTO estimates that the Patents program will cost $3.973 
billion in FY 2025, including $2.835 billion for patent examining; $90 
million for patent trial and appeals; $159 million for patent 
information resources; $24 million for activities related to IP 
protection, policy, and enforcement; and $866 million for general 
support costs necessary for patent operations (e.g., the patent share 
of rent, utilities, legal, financial, human resources, other 
administrative services, and Office-wide information technology (IT) 
infrastructure and IT support costs). See Appendix II of the FY 2025 
Budget. In addition, the USPTO will transfer $2 million to the 
Department of Commerce Inspector General for audit support.
    Table 2 below provides key underlying production workload 
projections and assumptions from the FY 2025 Budget used to calculate 
aggregate costs. Table 3 (see Step 2) presents the total budgetary 
requirements (prospective aggregate costs) for FY 2025 through FY 2029 
and the estimated collections and operating reserve balances that would 
result from the proposed adjustments contained in this NPRM. These 
projections are based on point-in-time estimates and assumptions that 
are subject to change. There is considerable uncertainty in

[[Page 23229]]

out-year budgetary requirements. There are risks that could materialize 
over the next several years (e.g., adjustments to examination capacity, 
recompetition of contracts, changes in workload, inflationary 
increases, etc.) that could increase the USPTO's budgetary requirements 
in the short- to medium-term. These estimates are refreshed annually in 
the production of the USPTO's budget.

                          Table 2--Patent Production Workload Projections, FY 2025-2029
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       Utility, plant, and reissue (UPR)           FY 2025      FY 2026      FY 2027      FY 2028      FY 2029
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Applications *.................................      609,400      615,400      623,600      629,600      642,200
Application growth rate........................         2.1%         1.0%         1.3%         1.0%         2.0%
Production units **............................      557,000      577,300      602,300      621,100      639,000
Unexamined patent application backlog..........      817,900      820,200      811,600      789,400      780,000
Examination capacity ***.......................        8,833        9,276        9,589        9,867       10,135
Performance measures (UPR):
    Average first action pendency (Months).....         20.7         20.7         21.0         20.6         21.3
    Average total pendency (months)............         26.1         27.2         26.6         26.4         25.7
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* In this table, the patent application filing data includes requests for continued examination.
** Each serial new (i.e., non-request for continued examination) application carries 1 production unit or 2.0
  counts, a fraction of which is awarded for each major Office action type. In most but not all cases, requests
  for continued examination carry a fraction of a production unit (e.g., 1.75 counts) and the credit for a first
  action is reduced by a corresponding amount.
*** In this table, Examination Capacity is the UPR examiners onboard at end-of-year, as described in the FY 2025
  Budget.

Step 2: Estimating Prospective Aggregate Revenue

    As described above in Step 1, the USPTO's prospective aggregate 
costs (as presented in the FY 2025 Budget) include budgetary 
requirements related to planned production, anticipated new 
initiatives, and a contribution to the patent operating reserve 
required for the USPTO to maintain patent operations and realize its 
strategic goals and objectives for the next five years. The prospective 
aggregate costs become the target aggregate revenue level that the new 
fee schedule must generate in a given year over the five-year planning 
horizon. To estimate aggregate revenue, the USPTO references the 
production models used to estimate aggregate costs and analyzes 
relevant factors and indicators to calculate or determine prospective 
fee workloads (e.g., number of applications and requests for services 
and products).
    Economic activity is an important consideration when developing 
workload and revenue forecasts for patent products and services because 
economic conditions affect patenting activity. Major economic 
indicators include the overall condition of the U.S. and global 
economies, spending on research and development activities, and 
investments that lead to the commercialization of new products and 
services. These indicators correlate with patent application filings, 
which are a key driver of patent fees. Economic indicators also provide 
insight into market conditions and the management of IP portfolios, 
which influence application processing requests and post-issuance 
decisions to maintain patent protection. When developing fee workload 
forecasts, the USPTO considers other influential factors including 
overseas activity, policies and legislation, court decisions, process 
efficiencies, and anticipated applicant behavior.
    Anticipated applicant behavior in response to fee changes is 
measured using an economic principle known as elasticity, which for the 
purpose of this proposal measures how sensitive applicants and 
patentees are to changes in fee amounts. The higher the elasticity 
measure (in absolute value), the greater the applicant response to the 
relevant fee change. If elasticity is low enough (i.e., demand is 
inelastic or the elasticity measure is less than one in absolute 
value), a fee increase will lead to only a relatively small decrease in 
patent activities, and overall revenues will still increase. 
Conversely, if elasticity is high enough (i.e., demand is elastic or 
the elasticity measure is greater than one in absolute value), a fee 
increase will lead to a relatively large decrease in patenting 
activities such that overall revenues will decrease. When developing 
fee forecasts, the USPTO accounts for how applicant behavior will 
change at different fee amounts projected for the various patent 
services. The USPTO previously analyzed elasticity for nine broad 
patent fee categories: filing/search/examination fees, excess 
independent claims fees, excess total claims fees, application size 
(excess page) fees, issue fees, request for continued examination (RCE) 
fees, appeal fees, AIA trial fees, and maintenance fees, including 
distinctions by entity size where applicable. Additional information 
about how the USPTO estimates elasticity is provided in ``Setting and 
Adjusting Patent Fees during Fiscal Year 2020--Description of 
Elasticity Estimates,'' available on the USPTO website at https://www.uspto.gov/sites/default/files/documents/Elasticity_Appendix.docx.
    Patent fees are collected for patent-related services and products 
at different points in time within the patent application examination 
process and over the life of the pending patent application and granted 
patent. Maintenance fee payments account for about half of all patent 
fee collections and subsidize the cost of filing, search, and 
examination activities. Changes in application filing levels 
immediately impact current year fee collections, because fewer patent 
application filings mean the USPTO collects fewer fees. The resulting 
reduction in production activities also creates an out-year revenue 
impact because less production output in one year results in fewer 
issue and maintenance fee payments in future years.
    The USPTO's five-year estimated aggregate patent fee revenue (see 
table 3) is based on the number of patent applications it expects to 
receive for a given fiscal year, work it expects to process in a given 
fiscal year (an indicator of patent issue fee workloads), expected 
examination and process requests for the fiscal year, and the expected 
number of post-issuance decisions to maintain patent protection over 
that same fiscal year. Within the iterative process for estimating 
aggregate revenue, the USPTO adjusts individual fee rates up or down 
based on cost and policy decisions, estimates the effective dates of 
new fee rates, and then multiplies the resulting fee rates by workload 
volumes (including elasticity adjustments) to calculate a revenue 
estimate for each fee. For the aggregate

[[Page 23230]]

revenue estimates shown below, the USPTO assumes that all proposed fee 
rates will become effective on January 18, 2025. Using these figures, 
the USPTO sums the individual fee revenue estimates, and the result is 
a total aggregate revenue estimate for a given year (see table 3). The 
aggregate revenue estimate also includes collecting $50 million 
annually in other income associated with recoveries and reimbursable 
agreements (offsets to spending).

                                 Table 3--Patent Financial Outlook, FY 2025-2029
----------------------------------------------------------------------------------------------------------------
                                                                       Dollars in millions
                                                ----------------------------------------------------------------
                                                   FY 2025      FY 2026      FY 2027      FY 2028      FY 2029
----------------------------------------------------------------------------------------------------------------
Projected fee collections......................        3,972        4,238        4,338        4,305        4,314
Other income...................................           50           50           50           50           50
Total projected fee collections and other              4,022        4,288        4,388        4,355        4,364
 income........................................
Budgetary requirements.........................        3,975        4,102        4,268        4,431        4,600
Funding to (+) and from (-) operating reserve..           47          186          120         (76)        (236)
End-of-year operating reserve balance..........          840        1,028        1,148        1,074          837
Over/(under) minimum level.....................          522          700          807          720          469
Over/(under) optimal level.....................         (35)          126          209           99        (175)
----------------------------------------------------------------------------------------------------------------

IV. Rulemaking Goals and Strategies

A. Fee Setting Strategy

    The strategy of this proposed rule is to establish a fee schedule 
that generates sufficient multi-year revenue to recover the aggregate 
costs of maintaining USPTO patent operations. The overriding principles 
behind this strategy are to operate within a sustainable funding model 
that supports the USPTO's strategic goals and objectives, such as 
optimizing patent application pendency through the promotion of 
efficient operations and filing behaviors, issuing robust and reliable 
patents, and encouraging access to the patent system for all 
stakeholders.
    The USPTO assessed this proposed rule for alignment with four key 
fee setting policy factors that promote a particular aspect of the U.S. 
patent system: (1) Promoting innovation strategies seeks to ensure 
barriers to entry into the U.S. patent system remain low, and 
innovation is incentivized by granting inventors certain short-term 
exclusive rights to stimulate additional inventive activity; (2) 
Aligning fees with the full costs of products and services recognizes 
that some applicants may use particular services in a more costly 
manner than other applicants (e.g., patent applications cost more to 
process when more claims are filed); (3) Facilitating the effective 
administration of the U.S. patent system seeks to encourage patent 
prosecution strategies that promote efficient patent prosecution, 
resulting in compact prosecution and reduction in the time it takes to 
obtain a patent; and (4) Recognizing that patent prosecution is not a 
one-size-fits-all process and, where feasible, offering application 
processing options. Part V: Individual Fee Rationale describes the 
reasoning for setting and adjusting individual fees, including the 
design benefits of the proposed fee schedule. The RIA, available on the 
fee setting section of the USPTO website at https://www.uspto.gov/FeeSettingAndAdjusting, also discusses fee schedule design benefits.

B. Fee Setting Considerations

    The balance of this sub-section presents the specific fee setting 
considerations the USPTO reviewed in developing the proposed patent fee 
schedule: (1) historical cost of providing individual services; (2) the 
balance between projected costs and revenue to meet the USPTO's 
operational needs and strategic goals; (3) ensuring sustainable 
funding; and (4) PPAC's comments, advice, and recommendations on the 
USPTO's initial fee setting proposal. Collectively, these 
considerations inform USPTO's chosen rulemaking strategy.
1. Historical Cost of Providing Individual Services
    The USPTO sets individual fee rates to further key policy 
considerations while considering the cost of a particular service. For 
instance, the USPTO has a longstanding practice of setting basic 
filing, search, and examination (``front-end'') fees below the actual 
cost of processing and examining applications to encourage innovators 
to take advantage of patent rights and protections.
    The USPTO considers unit cost data provided by its Activity Based 
Information (ABI) program to decide how to best align fees with the 
full cost of products and services. Using historical cost data and 
forecasted application demands, the USPTO can align fees to the costs 
of specific patent products and services. Additional information on the 
USPTO's costing methodology in addition to the last three years of 
historical cost data is provided in the document titled ``Setting and 
Adjusting Patent Fees during Fiscal Year 2025--Activity Based 
Information and Patent Fee Unit Expense Methodology,'' available on the 
fee setting section of the USPTO website at https://www.uspto.gov/FeeSettingAndAdjusting. Part V: Individual Fee Rationale describes the 
reasoning and anticipated benefits for setting some individual fees at 
cost, below cost, or above cost such that the USPTO recovers the 
aggregate costs of providing services through aggregate fee 
collections.
2. Balancing Projected Costs and Revenue
    In developing this proposed patent fee schedule, the USPTO 
considered its current estimates of future year workload demands, fee 
collections, and costs to maintain core USPTO operations and meet its 
strategic goals, as found in the FY 2025 Budget and the Strategic Plan. 
The USPTO's strategic goals include: (1) driving inclusive U.S. 
innovation and global competitiveness, (2) promoting the efficient 
delivery of reliable IP rights, (3) promoting the protection of IP 
against new and persistent threats, (4) bringing innovation to impact, 
and (5) generating impactful employee and customer experiences by 
maximizing agency operations. The following subsections provide details 
regarding updated revenue and cost estimates, cost-saving efforts taken 
by the USPTO, and planned strategic improvements.
a. Updated Revenue and Cost Estimates
    Projected revenue from the current fee schedule is insufficient to 
meet future budgetary requirements (costs) due largely to unforeseen 
economic and

[[Page 23231]]

policy factors since the USPTO last exercised its rulemaking authority 
to set patent fees in the FY 2020 Final Rule. As further discussed 
below, increased fee discounts for small and micro entities under the 
UAIA have reduced revenue estimates. Higher-than-expected inflation in 
the broader U.S. economy and government-wide pay raises have increased 
the USPTO's forecasted operating costs. Also, the USPTO has undertaken 
efforts to increase special pay rates and offer other incentives to 
recruit and retain examiners and other employees in patent specific job 
series in order to remain competitive in the job market for science, 
technology, engineering, and mathematics (STEM) workers. Absent the 
proposed increase in fees, the USPTO will be unable to collect 
sufficient fees at current fee rates to recover aggregate operating 
costs necessary to finance ongoing operations.
    On December 29, 2022, the President signed into law the 
Consolidated Appropriations Act, 2023, which included the UAIA. The law 
reduced barriers to entry into the patent system by increasing small 
entity discounts from 50% to 60% and micro entity discounts from 75% to 
80%. The USPTO estimated as part of its Fiscal Year 2024 Congressional 
Justification (FY 2024 Budget) that these discounts would reduce 
projected fee collections by $74 million in FY 2023 (partial year 
impact) and at least $100 million per year beginning in FY 2024 (full 
year impact). In addition to increased entity discounts, the UAIA 
increases costs through its provision that requires that the USPTO 
establish a new Southeast Regional Office and four new community 
outreach offices--including one in northern New England. The USPTO must 
also conduct a study to determine whether additional offices are 
required to achieve AIA mandates and to increase participation of 
underrepresented inventors in the patent system.
    Higher-than-expected inflation in 2021 and 2022 in the broader U.S. 
economy increased the USPTO's operating costs above previous estimates 
for labor and nonlabor activities such as benefits, service contracts, 
and equipment. Salaries and benefits comprise 70% of all patent-related 
costs, and employee pay raises enacted across all U.S. government 
agencies--including the USPTO--in 2023 and 2024 were much larger than 
previously budgeted. Federal General Schedule (GS) pay was raised by 
4.6% in 2023 and 5.2% in 2024; before 2023 the last time GS pay was 
raised by at least 4% was in 2004. The FY 2025 Budget includes an 
estimated 2.0% civilian pay raise planned in calendar year (CY) 2025 
and assumed 3.0% civilian pay raises in CY 2026-29, as well as 
inflationary increases for other labor and nonlabor activities.
    Similarly, the USPTO seeks to adjust the patent special rate table 
(pay) for the first time since 2007. In 2007 the special rate table was 
set 11.4% to 31.4% above the GS pay table for the Washington, DC area 
because patent-related job fields require a highly educated and 
technical STEM workforce. This specialization has historically posed 
recruitment challenges for the agency, and the increased pay rates kept 
the USPTO competitive with private sector compensation opportunities. 
The differential above the general schedule has diminished over the 
years--to 0.0% to 20.5% in 2023 because of cost-of-living-adjustments 
to the GS pay scale that were not similarly applied to the special rate 
table--reducing the USPTO's competitive edge amongst both private and 
other Federal agencies. The objective of the special rate table change 
is to provide competitive compensation to patent employees, thereby 
reducing attrition and enhancing recruitment of qualified talent.
    The USPTO's recruitment and retention efforts go beyond adjustments 
to examiner pay. In support of its strategic goal of generating 
impactful employee and customer experiences by maximizing agency 
operations, the USPTO strives to be a model employer through its 
diversity, equity, inclusion, and accessibility (DEIA) practices. The 
agency will build upon its existing diversity and foster greater 
inclusion to empower the USPTO workforce to serve the IP community 
successfully. The USPTO will research and implement leading-edge 
practices related to hiring, development, advancement, accessibility, 
and retention, based on behavioral science research and data, to better 
integrate DEIA practices throughout the agency.
b. Cost-Saving Measures
    The USPTO recognizes that fees cannot simply increase for every 
improvement deemed desirable. The USPTO has a responsibility to 
stakeholders to pursue strategic opportunities for improvement in an 
efficient, cost-conscious manner. Likewise, the USPTO recognizes its 
obligation to gain operational efficiency and reduce spending when 
appropriate.
    The USPTO's FY 2025 Budget submission includes cost reducing 
measures such as releasing leased space in Northern Virginia and a 
moderate reduction in overall IT spending. In FY 2025, the USPTO 
estimates $4,569 million in total spending for patent and trademark 
operations. This is a $122 million net increase from the agency's FY 
2024 estimated spending level of $4,447 million. The net increase 
includes a $224 million upward adjustment for prescribed inflation and 
other adjustments, and a $102 million downward adjustment in program 
spending and other realized efficiencies. This estimate builds on the 
$40 million in annual real estate savings assumed in the FY 2024 Budget 
submission to include additional annual cost savings of $12 million 
through releasing more leased space in Northern Virginia. The combined 
reduction in real estate space amounts to almost 1 million square feet 
and an estimated annual cost savings of approximately $52 million. 
Also, the USPTO is actively pursuing IT cost containment. The FY 2025 
budget includes a relatively flat IT spending profile despite upward 
pressure from inflation, supply chain disruptions, and government-wide 
pay raises; ongoing IT improvements that offer business value to fee-
paying customers; and data storage costs increasing proportionally with 
the USPTO's forecasted growth in patent and trademark applications. The 
USPTO will achieve this cost containment goal via modern equipment in a 
new data center that will cost less to maintain and by retiring legacy 
IT systems. Both of these cost containment measures will further 
improve the USPTO's cybersecurity posture and increase system 
resiliency.
c. Efficient Delivery of Reliable IP Rights: Quality, Backlog, and 
Pendency
    The USPTO continuously works to improve patent quality, 
particularly the predictability, reliability, and robustness of issued 
patents. See the USPTO's Quality Metrics web page, https://www.uspto.gov/patents/quality-metrics, for more information on patent 
quality including (1) statutory compliance measures, (2) process 
measures, and (3) perception measures. The USPTO's strategic goal to 
``promote the efficient delivery of reliable IP rights'' recognizes the 
importance of innovation as the foundation of American economic growth 
and global competitiveness as well as the role the USPTO plays in 
encouraging these principles. The USPTO is committed to improving 
pendency to deliver timely, efficient services that help innovators 
bring their ideas and products to impact more quickly and efficiently. 
The USPTO diligently works to balance timely examination with 
improvements in patent quality; particularly, the

[[Page 23232]]

robustness and reliability of issued patents while remaining mindful 
that patent applications are becoming increasingly more complex and 
that technologies are converging. To address these challenges, the 
USPTO must continue to develop and equip examiners with additional 
guidance, training, tools, advanced technology, and procedural 
resources.
    The USPTO is pursuing initiatives to enhance patent quality and the 
clarity and completeness of the official record during prosecution of 
an application, including encouraging applicants to begin filing patent 
applications in DOCX format, automating pre-examination procedures, 
expanding examiner training, and working on additional guidance for 
examiners and the PTAB. Current guidance initiatives include refresher 
guidance on obviousness under 35 U.S.C. 103 and enablement under 35 
U.S.C. 112, and new guidance on how examiners should analyze 
inventorship issues for artificial intelligence (AI)-assisted 
inventions. See Updated Guidance for Making a Proper Determination of 
Obviousness, 89 FR 14449 (February 27, 2024); Guidelines for Assessing 
Enablement in Utility Applications and Patents in View of the Supreme 
Court Decision in Amgen Inc. et al. v. Sanofi et al., 89 FR 1563 
(December 21, 2023); Inventorship Guidance for AI-Assisted Inventions, 
89 FR 10043 (February 13, 2024). The USPTO is also increasing patent 
examination quality and efficiency via initiatives such as the Global 
Dossier Initiative (see https://www.uspto.gov/patents/basics/international-protection/global-dossier-initiative), and by providing 
examiners with advanced technologies and tools for identifying prior 
art, such as the artificial intelligence (AI)-based ``More Like This'' 
and ``Similarity Search'' features in the Patents End-to-End (PE2E) 
search suite (see 1494 Off. Gaz. Pat. Office 251 (January 11, 2022) and 
1504 Off. Gaz. Pat. Office 359 (November 15, 2022)). More information 
on the USPTO's AI initiatives, including the Artificial Intelligence 
(AI) and Emerging Technologies Partnership, is available at https://www.uspto.gov/initiatives/artificial-intelligence.
    The USPTO recognizes that optimal pendency helps inventors and 
investors bring innovation to impact. The growing demand for patent 
services requires that the USPTO embrace new ways of delivering these 
critical IP services. Therefore, the USPTO is also working to identify 
policies, process changes, and technologies to improve patent pendency. 
Some of these efforts will focus on operational improvements to the 
patent examination process, including aligning the patent workforce 
with the incoming workload in the most efficient manner. Other efforts 
will target improvements to how applicants and other customers engage 
with the USPTO and navigate the prosecution process. For example, the 
USPTO has enhanced its website to increase access to our resources and 
enhance customer service for inventors and practitioners, including 
modernizing and updating the Patent Basics and Patents Petitions pages, 
adding a Virtual Assistant on select pages, and providing an updated 
and modern general website search tool. The USPTO has also upgraded its 
computer systems, including transitioning from legacy systems to Patent 
Center for the electronic filing and management of patent applications 
in November 2023. Patent Center, a web-based platform that allows users 
to file and manage patent applications and requests, provides improved 
system performance and a more intuitive user interface for an enhanced 
user experience. The USPTO is committed to continuously improving the 
customer experience on our websites to enhance and modernize 
accessibility, design, and overall satisfaction in our digital space. 
For information on additional enhancements to our online services, 
visit our web improvements page at https://www.uspto.gov/about-us/website-improvements. Effecting the changes in the examination process 
needed to ensure the issuance of reliable patents, while also issuing 
those patents in a timely manner, means recognizing a potential 
increase in the core operating costs for future years.
    Another major component of the overall patent process that has seen 
an increase in operating costs is the work carried out by the Patent 
Trial and Appeal Board (PTAB) and the Central Reexamination Unit (CRU). 
These units play a key role in providing an efficient system for 
amending or voiding any patent claims that overreach and stunt 
innovation, inclusive capitalism, and global competitiveness. To ensure 
that post-issuance challenges to patent rights through the PTAB and the 
CRU help protect innovation and investments to commercialize 
innovation, the USPTO will invest in new tools and resources that 
increase communication, knowledge sharing, and collective problem 
solving. These strategic investments will enable the USPTO to identify 
and continue to implement guidelines and best practices to serve the 
patent system.
3. Sustainable Funding
    All aspects of estimating the five-year forecast for aggregate 
cost, aggregate revenue, and the patent operating reserve are 
inherently uncertain because they are based on numerous, multifaceted 
planning assumptions predicated on external indicators of economic IP 
activity to forecast demand, as well as internal workload drivers 
derived from production models. Maintaining a viable operating reserve 
is a key consideration as the USPTO sets patent fees. To mitigate the 
risk of uncertain demand, the USPTO maintains a patent operating 
reserve. The U.S. Government Accountability Office (GAO) considers 
operating reserves a best practice for user fee-funded government 
agencies like the USPTO. The patent operating reserve enables the USPTO 
to align fees and costs over a longer horizon and to improve its 
preparation for, and adjustment to, fluctuations in actual fee 
collections and spending.
    The USPTO manages the operating reserve within a range of 
acceptable balances and assesses its options when projected balances 
fall either below or above that range. Minimum planning targets are 
intended to address immediate, unplanned changes in the economic or 
operating environments as the reserve builds to the optimal level. The 
minimum and optimal planning targets are reviewed every three years to 
ensure the reserve operating range (between minimum and optimal 
targets) mitigates the severity of an array of financial risks. Based 
on the current risk environment, including various risk factors such as 
economic and funding uncertainty and the high percentage of fixed costs 
in the Patents program, the USPTO established a minimum planning level 
of 8% of total spending--about one month's operating expenses 
(estimated at $318 million and $368 million between FY 2025 through FY 
2029)--and an optimal long-range target of 22% of total spending--about 
three months' operating expenses (estimated at $875 million and $1,012 
million between FY 2025 through FY 2029).
    Based on current cost and revenue assumptions in the FY 2025 
Budget, the USPTO forecast that in FY 2024 estimated aggregate costs 
will exceed aggregate revenue and the operating reserve will be used to 
maintain operations. The fee proposals contained in this NPRM are 
projected to increase patent fee collections to the point that they 
exceed spending requirements, and forecasted excess fee collections 
will replenish the patent operating reserve each year from FY 2025 
through FY

[[Page 23233]]

2027. Based on this forecast, the USPTO will achieve its optimal level 
of three months operating requirements for the patent operating reserve 
in FY 2026. The USPTO then expects to use the patent operating reserve 
to fund operating expenses in FY 2028 and FY 2029 as the current 
projection for fee collection growth slows but projected patent 
spending requirements continue to increase.
    These projections are based on point-in-time estimates and 
assumptions that are subject to change. For instance, the budget 
includes assumptions about filing levels, renewal rates, whether the 
President will authorize or Congress will mandate employee pay raises, 
the productivity of the workforce, and many other factors. A change in 
any of these factors could have a significant cumulative impact on 
reserve balances. As seen in table 3, set forth in Part III: Estimating 
Aggregate Costs and Revenue, the operating reserve balance can change 
significantly over a five-year planning horizon, underscoring the 
USPTO's financial vulnerability to varying risk factors and the 
importance of fee setting authority.
    The USPTO will continue to evaluate long-term planning assumptions 
to determine the appropriate course of action beyond FY 2027 to ensure 
the Patents program is not vulnerable to changes in the economy that 
reduce annual revenue, unexpected cost increases, and other financial 
risks. The USPTO will also continue to assess the patent operating 
reserve balance against its target balance annually, and at least every 
three years, the USPTO will evaluate whether the minimum and optimal 
target balance remain sufficient to provide the stable funding the 
USPTO needs. Per the USPTO's operating reserve policy, if the operating 
reserve balance is projected to exceed the optimal level by 10% for two 
consecutive years, the USPTO will consider fee reductions. The USPTO 
will continue to regularly review its operating budgets and long-range 
plans to ensure the prudent use of patent fees.
4. Comments, Advice, and Recommendations From PPAC
    In the report prepared in accordance with the AIA fee setting 
authority (available on the USPTO website at https://www.uspto.gov/sites/default/files/documents/PPAC-Report-on-2023-Fee-Proposal.docx) 
PPAC supports the USPTO in seeking adequate revenue to recover the 
costs for the USPTO fulfill its role in supporting the country's 
innovation ecosystem. In addition, PPAC recognizes that ``the USPTO is 
in the best position to assess its own needs and balance the tradeoffs 
in setting individual fees.'' PPAC Report at 6. PPAC expressed general 
support for the increase in patent fees, noting that timely, high-
quality search and examination requires an appropriately compensated 
work force with adequate time to complete the search and examination 
process, as well as reliable, state of the art IT infrastructure. 
However, PPAC expressed concerns over some of the individual proposed 
fee adjustments and their potential impacts on patent applicants and 
holders. In general, PPAC urged the USPTO to provide more detail and 
justification on how additional revenue will be used to increase patent 
quality and reliability. The USPTO has included additional information 
in this NPRM to further address some of the concerns of PPAC and the 
public. See Part V: Individual Fee Rationale.
    Regarding the proposed changes to fees for excess claims, PPAC 
expressed support for the proposed fee increases. However, they also 
emphasized their belief that the public wants more certainty that the 
revenue generated from an increased fee will go toward examination and 
giving examiners additional time to evaluate such cases. The USPTO 
appreciates this concern and the current patent examination production 
time approach provides examiners with additional time to review excess 
claims. The proposed fees would contribute to recovering the costs to 
the USPTO for this additional examination time.
    PPAC expressed support for the proposed decreases to fees for 
extensions of time for provisional applications. PPAC also expressed 
support for the proposals to increase suspension of action fees and 
fees for unintentional delay petitions. Part V: Individual Fee 
Rationale provides more details on these proposals.
    In general, PPAC expressed support for the USPTO's proposal to 
implement a tiered fee structure for information disclosure statements 
(IDSs). PPAC recommended a legislative proposal to clarify inequitable 
conduct rules, which may have a significant impact on applicant 
behavior. They noted that under the current inequitable conduct case 
law, there is increased pressure on practitioners to cite every 
possible reference if they do not want to risk the practitioner's right 
to practice or the enforceability of the patent. The USPTO appreciates 
this suggestion and will give it further consideration. PPAC also 
recommended that if any additional fees are paid, the additional money 
should go to allowing examiners more time to consider the additional 
references. The USPTO notes that it is current USPTO policy to provide 
examiners with additional time to review large IDSs and the proposed 
fees would pay for this additional time. Only 13% of applications 
contain 50 or more applicant-provided citations, and thus would incur 
one of these proposed fees. The proposal would place the service costs 
of large IDSs on those applicants who file them.
    PPAC supports the proposal to create a third tier for requests for 
continued examination (RCEs). PPAC notes that the proposed increases 
would ``allow the costs of continued examinations to be recovered 
directly from those applicants requesting multiple RCEs, instead of 
relying on other fees to subsidize the costs.'' PPAC Report at 4.
    The report noted opposition to the proposed fee for electronically 
submitted assignments. PPAC argues that transparency of patent 
ownership is key to patent data integrity and a fee for assignment 
recordation would be an impediment to keeping assignment data up to 
date. The USPTO's initial fee proposal was designed to reduce the 
number of frivolous assignment submissions. However, the USPTO agrees 
with PPAC's assessment that keeping up-to-date assignment data 
outweighs the processing efficiency gains the USPTO expects from the 
proposal. Therefore, the USPTO is dropping its proposal to raise the 
recordation fee for an electronically submitted assignment. PPAC 
expressed conditional support for the continuing applications proposal 
if the USPTO drops the year three provision and only requires the 
proposed fee for year seven or after. PPAC's rationale for this 
modification is that three years is too short of a period, as there may 
not be an Office action at this point in prosecution, particularly if 
the application is in the national stage of an international 
application filed under the Patent Cooperation Treaty (PCT) or is 
classified in an art area with significant backlog. In response to 
these concerns the USPTO notes that as of April 2023, traditional total 
pendency is 2.1 years, which is below the three-year threshold for the 
first tier of the proposal. However, in view of PPAC's concerns about 
pendency, and the admittedly longer pendency for PCT applications, the 
USPTO proposes to modify the tiers to slide the threshold dates later 
in time. This NPRM therefore proposes the first tier at five years and 
the second tier at eight years. See Parts V: Individual Fee Rationale 
and VI: Discussion of Specific Rules for further details regarding the 
modification of this proposal.

[[Page 23234]]

    Regarding the proposed fee for the After Final Consideration Pilot 
Program (AFCP 2.0), PPAC expressed the view that this proposal is 
problematic as it requires paying a fee with no guarantee of an 
interview. PPAC offered support for an AFCP 2.0 fee if: (1) the program 
is changed such that the applicant is guaranteed an interview; or (2) 
under the current program, a fee is assessed only if the interview is 
granted. The USPTO recognizes PPAC's concern but notes that the AFCP 
2.0 program is costly to the agency and is heavily used by applicants; 
more than half of after-final responses come via this program. The 
costs of this program are currently subsidized by other fees. While the 
USPTO appreciates that some applicants may be unwilling to pay for a 
program that may not result in a favorable outcome or an interview with 
the examiner, the USPTO must make its patentability decisions in 
accordance with the appropriate legal standards that govern the USPTO 
and incurs costs to provide the service regardless of the outcome. The 
USPTO notes that a significant portion of the cost for AFCP 2.0 comes 
from the initial consideration of the request by the patent examiner. 
If the USPTO is unable to recover the cost of the AFCP 2.0 program from 
participants, it will need to consider terminating the program due to 
its cost. See Part V: Individual Fee Rationale for additional details 
regarding this proposal.
    PPAC expressed a lack of support for the proposal to increase fees 
for design applications, recommending the USPTO prioritize addressing 
pendency issues before applying increased fees, as many design 
applicants are already paying expedited fees beyond the basic filing, 
search, and examination fees, given the current pendency. PPAC also 
suggests that the USPTO's concerns about recovering its costs in the 
design area could be addressed by a change in the law that allows for 
the implementation of maintenance fees for design patents. The USPTO 
acknowledges PPAC's concern regarding design application pendency and 
recognizes that some design applicants are paying expedited fees. 
Recovering more of the design costs from design applicants better 
aligns fees to the cost of services performed by the USPTO, and it also 
incents design applicants to make more appropriate economic decisions. 
With respect to PPAC's concern about expedited fees, in FY 2022 about 
19% of design applicants requested expedited handling. See Part V: 
Individual Fee Rationale for additional details regarding the rationale 
for increasing design patent fees.
    Regarding the patent term adjustment (PTA) proposal, PPAC offered 
support for increasing the fee if the proposal is modified such that no 
fee is assessed by the USPTO if a PTA adjustment is made due to a USPTO 
calculation error. The USPTO notes that a fee for this applicant-
requested service has been in place since calendar year 2000 and has 
only increased $10 since enacted. Moreover, this fee helps recover a 
portion of the costs for applicant-requested manual redeterminations of 
PTA under 35 U.S.C. 154(b). While there are about 500 service requests 
each year, many concern the IDS safe harbor under 37 Code of Federal 
Regulations (CFR) 1.704(d)(1) and thus could have been avoided if the 
applicant had used the USPTO-provided form (PTO/SB/133) to invoke the 
safe harbor. With respect to PPAC's suggestion of adding a refund 
component to the proposal, the USPTO's rationale for this fee increase 
is to recover a greater percentage of the costs associated with the 
service that are incurred regardless of the outcome.
    PPAC expressed general support for the patent term extension (PTE) 
proposal but suggested the USPTO consider if such a large increase in 
the fees is optimal, particularly the initial fee given start-up 
companies may be resource constrained. By law, this service is only 
available to owners of patents on certain human drugs, food or color 
additives, medical devices, animal drugs, and veterinary biological 
products, and is designed to restore some patent term that was lost 
while awaiting premarket government approval from a regulatory agency. 
Because such development and premarketing activities are extremely 
expensive, it is unlikely that any resource-constrained companies would 
qualify for PTE services.
    PPAC expressed a lack of support for the terminal disclaimer 
proposal, noting disagreement with the USPTO's justification and 
suggesting that the fee will place an unfair burden on filers with 
limited resources who may be tempted to give up patent term in exchange 
for a less expensive and more compact prosecution. While the USPTO 
appreciates PPAC's concerns, the agency believes that under-resourced 
applicants are unlikely to be affected by these fees, as a double 
patenting rejection necessitating a terminal disclaimer would not be 
made unless they had sufficient resources to file multiple applications 
with closely-related subject matter. This presumption is supported by 
data collected by the USPTO that shows only about 1% of terminal 
disclaimers are filed by micro entities.
    PPAC expressed a lack of support for the proposed fee for 
requesting additional words in an inter partes or post-grant petition, 
noting that it may favor well-resourced petitioners given the added 
expense to prepare longer papers. After careful consideration of the 
comments and recommendations provided in the PPAC Report and in 
testimony at the public hearing, the USPTO has decided to withdraw this 
proposal.
    PPAC expressed a lack of support for the proposal to establish a 
new fee for parties requesting a review of a PTAB decision by the 
Director. PPAC felt a fee was not warranted because a review by the 
Director ensures the PTAB decisions are consistent. PPAC also expressed 
concern that adding a fee for this previously free service may 
adversely affect individual inventors and small company applicants. In 
response to these concerns, the USPTO has provided additional 
justification and data. Part V: Individual Fee Rationale offers this 
additional information.
    In summary, the USPTO appreciates the general support by PPAC and 
its stakeholders for an increase in patent fees sufficient for 
aggregate fees to recover aggregate costs. After careful consideration 
of the comments, concerns, and suggestions provided in the report, and 
keeping in mind the goals of this proposed rule, the USPTO elected to 
make changes to three of the fee proposals initially presented to PPAC. 
The fee structure proposed herein will ultimately allow the USPTO to 
maintain patent operations and continue its path towards achieving the 
goals and objectives laid out in the Strategic Plan. The USPTO looks 
forward to receiving additional comments on this revised proposal 
during the public comment period.

C. Summary of Rationale and Purpose of the Proposed Rule

    The USPTO estimates that the proposed patent fee schedule will 
produce sufficient aggregate revenues to recover the aggregate costs of 
patent operations and ensure financial sustainability for effective 
administration of the patent system. This proposed rule aligns with the 
USPTO's four key fee setting policy factors and supports the USPTO's 
mission-focused strategic goals.

V. Individual Fee Rationale

    The USPTO projects that aggregate revenue generated from the 
proposed patent fees will recover the prospective

[[Page 23235]]

aggregate costs of patent operations as laid out in the FY 2025 Budget. 
As detailed previously, PPAC recognizes the importance of ensuring the 
USPTO's financial sustainability, stating that, ``[t]o support its role 
in the country's innovation system, the USPTO requires adequate 
funding.'' PPAC Report at 5. PPAC also acknowledges the need to fund 
additional strategic investments, commenting that ``[t]imely, high-
quality search and examination require an appropriately compensated 
work force with adequate time to complete the same, supported by state 
of the art and reliable IT infrastructure.'' PPAC Report at 5-6.
    The USPTO did not set each individual proposed fee necessarily 
equal to the estimated costs of performing activities related to the 
fee. Instead, as described in Part IV: Rulemaking Goals and Strategies, 
some proposed fees are set at, above, or below their unit costs to 
balance four key fee setting policy factors: (1) promoting innovation 
strategies; (2) aligning fees with the full costs of products and 
services; (3) facilitating effective administration of the U.S. patent 
system; and (4) offering application processing options. For example, 
the agency sets many initial filing fees below unit cost to promote 
innovation strategies by removing barriers to entry to the patent 
system. To balance the aggregate revenue loss of fees set below cost, 
the USPTO must set other fees above cost in areas less likely to reduce 
inventorship (e.g., maintenance).
    For some fees proposed in this NPRM, such as extension of time 
fees, the USPTO does not maintain individual historical cost data for 
services provided; instead, the agency considers the policy factors 
described in Part IV: Rulemaking Goals and Strategies to inform fee 
setting. For example, facilitating effective administration of the U.S. 
patent system enables the USPTO to: (1) foster an environment where 
USPTO personnel can provide and applicants can receive prompt, quality 
interim and final decisions; (2) encourage the prompt conclusion of 
prosecuting an application, resulting in pendency reduction and faster 
dissemination of patented information; and (3) help recover costs for 
activities that strain the patent system.
    The proposed fee changes are grouped into three categories: (A) an 
across-the board-adjustment to patent fees; (B) an adjustment to front-
end fees; and (C) targeted fees. Part VI: Discussion of Specific Rules 
contains a complete listing of fees set or adjusted in the proposed 
patent fee schedule, including small and micro entity fees. This 
information is also listed in the Table of Patent Fees available on the 
fee setting section of the USPTO website at https://www.uspto.gov/FeeSettingAndAdjusting.
    This proposed rule includes one procedural amendment (D) expanding 
the applicability of the rule allowing applicants to obtain a refund of 
search and excess claims fees paid in an application through express 
abandonment.

A. Across-the-Board Adjustment to Patent Fees

    The broader U.S. economy has experienced higher-than-expected 
inflation the last two years and, in turn, increased USPTO operating 
costs relative to baseline estimates for labor and nonlabor activities 
such as benefits, service contracts, and equipment. Also, the agency's 
estimates of future costs in the FY 2025 Budget include a 2.0% civilian 
pay raise planned in CY 2025 and an assumption of 3.0% civilian pay 
raises in CY 2026-29, as well as inflationary increases for other labor 
and nonlabor activities. To keep the USPTO on a stable financial track 
sufficient to recover the aggregate costs of patent operations and to 
support the agency's strategic objectives, the USPTO proposes 
adjusting, by approximately 5%, all patent fees not covered by the 
targeted adjustments discussed in section C. The USPTO estimates that 
new fees would not be implemented until FY 2025, more than four years 
after the agency's last fee adjustment in October 2020. A 5% across-
the-board increase in 2025 would be equivalent to just a 1.2% annual 
increase, well below the prevailing inflation rate the last few years. 
The agency is not proposing a larger across-the-board increase in line 
with inflation because the across-the-board adjustment is intended to 
supplement the additional revenue collected from the targeted 
adjustments. Also, the USPTO will continue its ongoing efforts to 
improve operational efficiency and reduce spending when appropriate.
    The 5% across-the-board adjustment strikes an appropriate balance 
between projected aggregate revenue and aggregate costs based on the 
assumptions used to develop the point-in-time estimates that support 
this NPRM. If changes to the assumptions underlying the USPTO's cost 
and revenue estimates result in significant changes to the financial 
outlook, the agency will refine the size of the across-the-board 
adjustment, either upward or downward, such that fees are set at a 
level that secures aggregate cost recovery and ensures a reasonable 
pace for operating reserve growth to the optimal level.
    For patent fees with small and micro entity fee reductions, the 
proposed undiscounted fee is rounded up or down to the nearest $5 by 
applying standard arithmetic rules. The resulting proposed fee amounts 
are more convenient to patent users and permit the USPTO to set small 
and micro entity fees at whole dollar amounts when applying applicable 
fee reductions. Therefore, some smaller fees will not change since a 5% 
increase would round down to the current fee, while other fees would 
change by slightly more or less than 5%, depending on rounding. For 
patent fees that do not have small and micro entity fee reductions, the 
proposed fees are rounded to the nearest dollar by applying standard 
arithmetic rules. The proposed fee adjustments in this category are 
listed in the Table of Patent Fees available on the fee setting section 
of the USPTO website at https://www.uspto.gov/FeeSettingAndAdjusting.

B. Adjustment to Front-End Patent Fees

    The USPTO proposes to adjust all filing, search, and examination 
fees not covered by the targeted adjustments as discussed in section C 
by an additional 5% on top of the 5% across-the-board adjustment, for a 
total front-end increase of 10%. The current fee schedule, implemented 
by the FY 2020 Final Rule, set filing, search, and examination fees 
below the costs of performing these services to achieve low barriers to 
entry into the innovation ecosystem. These front-end fees are 
subsidized by other fee collections, primarily maintenance fees. This 
proposal will marginally recover some, but not all, additional filing, 
search, and examination costs earlier in the patent life cycle, thus 
mitigating the risk of potentially lower maintenance fee payments in 
the future while remaining consistent with a low barrier to entry 
policy.
    Similar to the across-the-board adjustment, for fees that have 
small and micro entity fee reductions, the undiscounted fee is rounded 
up or down to the nearest $5 by applying standard arithmetic rules. 
Therefore, the proposed fee rates may not be precisely 10% higher than 
the current fee rates. The proposed fee adjustments in this category 
are listed in the Table of Patent Fees available on the fee setting 
section of the USPTO website at https://www.uspto.gov/FeeSettingAndAdjusting.

[[Page 23236]]

C. Targeted Adjustments to Patent Fees

    The USPTO proposes the following fee adjustments for the reasons 
stated below. The proposed fees are based on changes in undiscounted 
fee amounts; the percentage changes for small and micro entity fees 
would be the same as the percentage change for the undiscounted fee 
rate, and the dollar change would be 40% or 20% of the undiscounted 
change. A discussion of the rationale for each fee is divided into 14 
categories according to function, as follows:
1. After Final Consideration Pilot Program 2.0

                                                Table 4--After Final Consideration Pilot Program 2.0 Fees
--------------------------------------------------------------------------------------------------------------------------------------------------------
                                                                                                        Proposed      Dollar      Percent      FY 2022
               Description                           Entity type                   Current fee            fee         change       change     unit cost
--------------------------------------------------------------------------------------------------------------------------------------------------------
Consideration of AFCP 2.0 request.......  Undiscounted....................  New.....................         $500          n/a          n/a          n/a
Consideration of AFCP 2.0 request.......  Small...........................  New.....................          200          n/a          n/a          n/a
Consideration of AFCP 2.0 request.......  Micro...........................  New.....................          100          n/a          n/a          n/a
--------------------------------------------------------------------------------------------------------------------------------------------------------

    The USPTO proposes a new fee for participation in the AFCP 2.0. The 
agency created this program in May 2013 and has renewed it repeatedly. 
There is currently no fee for participation in this program. See After 
Final Consideration Pilot Program 2.0, 78 FR 29117 (May 17, 2013), and 
the program's section of the USPTO website at https://www.uspto.gov/patents/initiatives/after-final-consideration-pilot-20.
    Under customary examination practice, after the close of 
prosecution, amendments that will place the application either in 
condition for allowance or in better form for appeal may be entered, 
and the applicant may also hold an interview with the examiner. See 37 
CFR 1.116(b) and section 714.12 of Manual of Patent Examining Procedure 
(MPEP) (9th ed., Rev. 07.2022, February 2023), which may be viewed on 
or downloaded from the USPTO website at https://www.uspto.gov/MPEP or 
https://mpep.uspto.gov. The AFCP 2.0 was designed to encourage 
continued collaboration between examiners and applicants after close of 
prosecution and reduce pendency by avoiding RCEs and continued 
prosecution applications (CPA). The program requires that applicants 
submit a response with a nonbroadening amendment to at least one 
independent claim, and in return, affords the examiner additional time 
to consider the response. See Guidelines for Consideration of Responses 
After Final Rejection under 37 CFR 1.116(b) under the AFCP 2.0, 
available on the USPTO website at https://www.uspto.gov/sites/default/files/patents/init_events/afcp_guidelines.pdf. If the response will 
require further search and/or consideration that would take longer than 
the allotted time, the examiner will not admit the request under the 
program. Otherwise, if the response meets the program requirements, the 
examiner will consider the response, and will either: (1) mail a notice 
of allowance if the application is in condition for allowance or (2) 
contact the applicant to schedule an interview to discuss the amendment 
if the application is not in condition for allowance.
    The AFCP 2.0 program offers several benefits to participating 
applicants. Under customary practice, after a final rejection, 
applicants have no right to unrestricted further prosecution. The AFCP 
2.0 provides a participating applicant an opportunity to potentially 
have the examiner consider an amendment that would otherwise not be 
considered at this stage, possibly precluding the need to file an RCE 
or a CPA. This consideration saves applicants the higher fees 
associated with those filings and, in the case of the RCEs, saves 
applicants from patent term adjustment consequences. See MPEP section 
2731 for more information on patent term adjustment. Moreover, 
participation in the program is not necessary to hold an interview 
after final rejection, or to have an amendment filed and entered after 
close of prosecution, see MPEP sections 713.09 and 714.13. An AFCP 2.0 
request should be filed only when an applicant would like to file a 
substantive amendment after close of prosecution that may require 
additional time for an examiner to consider and/or search.
    The AFCP 2.0 is a popular program; since 2016, applicants have 
filed more than 60,000 requests annually. These requests make up over 
half of the USPTO's after-final responses during this time. Due to its 
popularity, costs to administer the AFCP 2.0 are significant. In FY 
2022, the USPTO estimates more than $15 million in incurred costs 
associated with examiners considering the AFCP 2.0 submissions. This 
cost is in addition to the cost for examiners to initially consider the 
AFCP 2.0 request and any consultation costs with supervisors and 
primary examiners. These examination costs represent time that could 
otherwise be used to examine new applications.
    The USPTO is reconsidering the policy choice of continuing to offer 
the AFCP 2.0 program for free without recouping costs from applicants 
utilizing it. As noted by the Government Accountability Office (GAO) in 
Federal User Fees: A Design Guide, Report No. GAO-08-386SP (May 2008), 
available at https://www.gao.gov/products/gao-08-386sp:

    If those benefiting from a service do not bear the full social 
cost of the service, they may seek to have the government provide 
more of the service than is economically efficient. User fees may 
also foster production efficiency by increasing awareness of the 
costs of publicly provided services and therefore increasing 
incentives to reduce costs where possible.

    Thus, without a fee to recover the cost of the program, the agency 
is considering not renewing (i.e., terminating) the program. A large 
part of the AFCP 2.0's popularity is due to economic inefficiencies 
where participants receive program benefits for only a fraction of the 
program's costs (because applicants pay only indirectly via future 
maintenance fees). That said, the USPTO also recognizes that the 
program has some indirect benefits to the patent system by reducing 
overall pendency. If there is sufficient public support for the 
proposed fees, the improved economic efficiencies of aligning fees with 
direct beneficiaries (program participants), together with indirect 
benefits, would favor continuing the program. Accordingly, the USPTO is 
proposing to charge fees for filing a request for consideration under 
the AFCP 2.0: $500 for undiscounted applications, $200 for applications 
receiving a small entity discount, and $100 for applications receiving 
a micro entity discount.
    At this time, the USPTO is not proposing any further changes to the 
AFCP 2.0. For example, the agency will not change the program to 
guarantee an

[[Page 23237]]

examiner interview if an AFCP 2.0 request is admitted under the 
program. The USPTO appreciates that some applicants may be unwilling to 
pay for a program that might not result in a favorable outcome or 
guarantee an examiner interview. Regardless of the outcome, the agency 
incurs costs to provide the service and must make its patentability 
decisions in accordance with appropriate legal standards. A significant 
portion of the AFCP 2.0's cost is initial consideration of the request 
by the patent examiner. Moreover, as noted previously, applicants may 
file amendments and participate in interviews after a final rejection 
without filing an AFCP 2.0 request. Further, a majority of the AFCP 2.0 
requests (60% for utility and 80% for design) meet program 
requirements, meaning that either the application is allowed or an 
interview is granted.
    The USPTO expects the percentage of compliant AFCP 2.0 requests to 
increase as applicants become more selective with the amendments filed, 
due to the fee. Accordingly, the agency does not expect a significant 
percentage of applicants to pay the fee without an opportunity for 
either allowance of the application or an interview with an examiner. 
Also, since undiscounted entities have historically filed 83% of all 
AFCP 2.0 requests, the USPTO does not anticipate the proposed fees 
having a disproportionate impact on small or micro entities.
2. Continuing Application Fees

                                                          Table 5--Continuing Application Fees
--------------------------------------------------------------------------------------------------------------------------------------------------------
                                                                                                        Proposed      Dollar      Percent      FY 2022
               Description                           Entity type                   Current fee            fee         change       change     unit cost
--------------------------------------------------------------------------------------------------------------------------------------------------------
Filing an application or presentation of  Undiscounted....................  New.....................       $2,200          n/a          n/a          n/a
 benefit claim more than five years
 after earliest benefit date.
Filing an application or presentation of  Small...........................  New.....................          880          n/a          n/a          n/a
 benefit claim more than five years
 after earliest benefit date.
Filing an application or presentation of  Micro...........................  New.....................          440          n/a          n/a          n/a
 benefit claim more than five years
 after earliest benefit date.
Filing an application or presentation of  Undiscounted....................  New.....................        3,500          n/a          n/a          n/a
 benefit claim more than eight years
 after earliest benefit date.
Filing an application or presentation of  Small...........................  New.....................        1,400          n/a          n/a          n/a
 benefit claim more than eight years
 after earliest benefit date.
Filing an application or presentation of  Micro...........................  New.....................          700          n/a          n/a          n/a
 benefit claim more than eight years
 after earliest benefit date.
--------------------------------------------------------------------------------------------------------------------------------------------------------

    The USPTO is proposing new fees in Sec.  1.17(w) for presenting 
certain benefit claims in nonprovisional applications. These new fees 
would apply to nonprovisional applications (``later-filed'' 
applications) that have an actual filing date more than five years, or 
more than eight years, later than the earliest filing date for which 
benefit is claimed under 35 U.S.C. 120, 121, 365(c), or 386(c), and 
Sec.  1.78(d) (the ``Earliest Benefit Date'' (EBD)). When the later-
filed application is a utility or plant patent application, the EBD is 
also the date from which the 20-year patent term is calculated under 35 
U.S.C. 154(a)(2). The EBD is also known as the ``patent term filing 
date.'' For more information about benefit claims, see MPEP 210 and 211 
et seq., for more information about the patent term filing date see 
MPEP 804 subsection I.B.1(a), and for more information about patent 
term, see MPEP 2701.
    The proposed fee set forth in Sec.  1.17(w)(1) would be due when 
the later-filed application's EBD is more than five years, and no more 
than eight years, earlier than its actual filing date, and would be 
$2,200 for undiscounted applications, $880 for applications receiving a 
small entity discount, and $440 for applications receiving a micro 
entity discount. The proposed fee set forth in Sec.  1.17(w)(2) would 
be due when the later-filed application's EBD is more than eight years 
earlier than its actual filing date, and would be $3,500 for 
undiscounted applications, $1,400 for applications receiving a small 
entity discount, and $700 for applications receiving a micro entity 
discount.
    Payment of these fees would be required at the time a prompting 
benefit claim (i.e., a benefit claim that causes the EBD of the later-
filed application to be more than five or eight years earlier than its 
actual filing date) is presented in the later-filed application. If the 
prompting benefit claim is presented at the time of filing the later-
filed application, the applicable Sec.  1.17(w) fee would be due at 
filing. If the prompting benefit claim is presented at a later time, 
the applicable Sec.  1.17(w) fee would be due concurrently with the 
presentation of the prompting benefit claim. If the later presentation 
of the prompting benefit claim is by way of a petition for acceptance 
of an unintentionally delayed benefit claim under Sec.  1.78(e), the 
applicable Sec.  1.17(w) fee would be due in addition to the petition 
fee under Sec.  1.17(m).
    Because the proposed fees in Sec.  1.17(w) are based on the 
application's EBD, presenting multiple benefit claims at the same time 
will not incur multiple fees. However, if benefit claims are presented 
at multiple times during an application's pendency, a second fee may be 
due if the later-presented benefit claim changes the application's EBD 
to be more than eight years earlier than the actual filing date. In 
this situation, the amount due under Sec.  1.17(w)(2) for the later 
presentation will reflect any prior payment under Sec.  1.17(w)(1) for 
the earlier presentation. For instance, if the fee under Sec.  
1.17(w)(1) was paid at the time of filing, and a prompting benefit 
claim requiring payment of the Sec.  1.17(w)(2) fee is presented at a 
later time, the additional amount owed is the difference between the 
current fee amount stated in Sec.  1.17(w)(2) and the amount of the 
previous payment under Sec.  1.17(w)(1).
    The following examples illustrate the most common situations 
anticipated to require payment of the proposed fees under Sec.  
1.17(w). For purposes of these examples, the agency assumes that all 
requirements for claiming benefit under 35 U.S.C. 119, 120, 121, 
365(c), or 386(c), and Sec.  1.78 are satisfied, and that all fees are 
paid at the undiscounted rates listed in table 5, supra.
    Example 1: Application A is a nonprovisional application filed on 
July 7, 2025. The Application Data Sheet (ADS) present upon A's filing 
contains a benefit claim under 35 U.S.C. 120 to nonprovisional 
application N filed on February 3, 2020, which is the only benefit 
claim in the application. A's EBD is February 3, 2020, which is more 
than five years, and no more than eight

[[Page 23238]]

years, earlier than A's actual filing date of July 7, 2025. In this 
example, the Sec.  1.17(w)(1) fee of $2,200 is due upon A's filing.
    Example 2: Application B is a nonprovisional application filed on 
July 8, 2025. The ADS present upon B's filing contains a benefit claim 
under 35 U.S.C. 120 to nonprovisional application O filed on February 
4, 2021, and a benefit claim under 35 U.S.C. 119(e) to provisional 
application P filed on March 11, 2020. The USPTO's records indicate 
that O also contains a benefit claim under 35 U.S.C. 119(e) to 
provisional application P. In this situation, P's filing date is not 
the EBD, because Sec.  1.17(w) does not encompass benefit claims under 
35 U.S.C. 119(e). Instead, B's EBD is February 4, 2021, which is less 
than five years earlier than B's actual filing date of July 8, 2025. In 
this example, no fee would be due under Sec.  1.17(w).
    Example 3: Application C is a nonprovisional application filed on 
July 9, 2025. The ADS present upon C's filing contains benefit claims 
under 35 U.S.C. 120 to nonprovisional application Q filed on February 
5, 2020, and to nonprovisional application R filed on March 12, 2019. 
C's EBD is March 12, 2019, which is more than five years, and no more 
than eight years, earlier than C's actual filing date of July 9, 2025. 
In this example, the Sec.  1.17(w)(1) fee of $2,200 is due upon C's 
filing.
    Example 4: Application D is a nonprovisional application filed on 
August 10, 2028. The ADS present upon D's filing does not contain any 
benefit claims. Two months after D's filing, the applicant files a 
second ADS containing a benefit claim under 35 U.S.C. 120 to 
nonprovisional application S filed on February 6, 2020, which is the 
only benefit claim in the application. Because this newly added benefit 
claim causes D's EBD to become February 6, 2020, which is more than 
eight years earlier than D's actual filing date of August 10, 2028, the 
Sec.  1.17(w)(2) fee of $3,500 is due upon filing of the second ADS.
    Example 5: Application E is a nonprovisional application filed on 
August 11, 2028. The ADS present upon E's filing does not contain any 
benefit claims. Eighteen months after E's filing, the applicant files a 
second ADS containing a benefit claim under 35 U.S.C. 120 to 
nonprovisional application T filed on February 7, 2020, which is the 
only benefit claim in the application. Because this newly added benefit 
claim causes E's EBD to become February 7, 2020, which is more than 
eight years earlier than E's actual filing date of August 11, 2028, the 
Sec.  1.17(w)(2) fee of $3,500 is due upon filing of the second ADS. In 
addition, because this benefit claim is delayed (not submitted within 
the required time period in Sec.  1.78(d)), a petition for acceptance 
of an unintentionally delayed benefit claim under Sec.  1.78(e) and the 
petition fee under Sec.  1.17(m) are also required.
    Example 6: Application F is a nonprovisional application filed on 
August 14, 2028. The ADS present upon F's filing contains a benefit 
claim under 35 U.S.C. 120 to nonprovisional application U filed on 
April 18, 2023, which is the only benefit claim in the application. F's 
EBD is April 18, 2023, which is more than five years, and no more than 
eight years, earlier than F's actual filing date of August 14, 2028. 
Accordingly, the Sec.  1.17(w)(1) fee of $2,200 is due upon F's filing. 
Two months after F's filing, the applicant files a second ADS 
containing a benefit claim under 35 U.S.C. 120 nonprovisional 
application V filed on February 10, 2020. This newly added benefit 
claim causes F's EBD to become February 10, 2020, which is more than 
eight years earlier than F's actual filing date of August 14, 2028, and 
thus prompts the fee in Sec.  1.17(w)(2). Because the fee in Sec.  
1.17(w)(1) was previously paid, the previous payment is subtracted from 
the amount now due under Sec.  1.17(w)(2). Accordingly, the amount due 
upon filing of the second ADS is $1,300 (the current fee amount of 
$3,500 set forth in Sec.  1.17(w)(2) less the $2,200 previously paid 
under Sec.  1.17(w)(1)).
    The proposed fees will recover more costs related to continuing 
applications from filers of such applications, encourage more efficient 
filing and prosecution behaviors, and partially offset foregone 
maintenance fee revenue resulting from later-filed continuing 
applications.
    Continuing applications, which include continuation, divisional, 
and continuation-in-part applications filed under the conditions 
specified in 35 U.S.C. 120, 121, 365(c), or 386(c) and Sec.  1.78, 
represent a large and increasing share of patent applications. From FY 
2010 to FY 2022, total serialized filings rose about 44%, including a 
moderate increase in noncontinuing applications (about 25%) and a large 
increase in continuing applications (about 100%), due almost entirely 
to increased continuation filings. Since FY 2010, divisional and 
continuation-in-part applications remained flat at annual levels of 
about 22,000 and 19,000, respectively. However, continuation 
applications have tripled, from about 40,000 in FY 2010 to about 
122,800 in FY 2022, and now represent about 34% of serialized filings.
    The volume and rapid increase of continuing applications negatively 
impacts the USPTO's workload and docketing practices. For example, it 
is difficult for the agency to balance patent resources between the 
examination of ``new'' (i.e., noncontinuing) applications disclosing 
new technology and innovations, and continuing applications, which, in 
some cases, are a repetition of previously examined applications either 
issued as patents or that have become abandoned. See e.g., FY 2021 
pendency statistics review presented at the PPAC quarterly meeting on 
Nov. 18, 2021, available on the USPTO website at https://www.uspto.gov/sites/default/files/documents/20211115-PPAC-FY21-pendency-stats-review.pdf (note that about 80% of continuations have a patented 
parent).
    Continuing applications filed long after their EBD are less likely 
to have a patent term long enough for the USPTO to recover the costs of 
its search and examination. The patent fee structure is designed to 
encourage innovation by maintaining low barriers to entry, which the 
agency accomplishes by keeping initial filing fees for utility, plant, 
and design applications below the costs for preexamination, search, and 
examination. The USPTO recovers the remaining cost of performing the 
work from maintenance fee payments made after issuance of a utility 
patent. See e.g., the FY 2022 Agency Financial Report at 45-46, 
available on the USPTO website at https://www.uspto.gov/AnnualReport. 
Maintenance fees are due 3.5 years, 7.5 years, and 11.5 years from the 
issue date of a utility patent. See 35 U.S.C. 41(b)(1). During FY 2022, 
maintenance fees collected from utility patentees represented 53.8% of 
patent revenue, about one-third of which derived from payment of the 
11.5-year fee. This revenue is vital to providing the necessary 
aggregate financing to fund patent operations. Thus, the fees proposed 
in this NPRM help compensate the USPTO for foregone maintenance fee 
revenue from continuing applications filed long enough after their EBD 
for their term to be less than 11.5 years.
    If future workloads for continuing applications were to remain 
steady at FY 2022 levels, about 16% of continuing applications 
(approximately 22,000) would pay the proposed Sec.  1.17(w)(1) fee, and 
an additional 11% of continuing applications (approximately 15,000) 
would pay the proposed Sec.  1.17(w)(2) fee. Based on FY

[[Page 23239]]

2022 data, of the applications that would be affected by this proposal, 
about 69% are undiscounted, about 30% receive a small entity discount, 
and about 1% receive a micro entity discount. The USPTO also 
anticipates that the proposed fees will be relatively technology-
neutral, with the most affected area being Technology Center 3700 
(which examines technologies including mechanical engineering, 
manufacturing, gaming, and medical devices/processes) because it 
receives a much higher proportion of late-filed continuing applications 
than other areas.
3. Design Application Fees

                                                            Table 6--Design Application Fees
--------------------------------------------------------------------------------------------------------------------------------------------------------
                                                                                                        Proposed      Dollar      Percent      FY 2022
                  Description                                  Entity type               Current fee      fee         change       change     unit cost
--------------------------------------------------------------------------------------------------------------------------------------------------------
Basic filing fee--Design.......................  Undiscounted..........................         $220         $300          $80           36         $250
Basic filing fee--Design.......................  Small.................................           88          120           32           36          250
Basic filing fee--Design.......................  Micro.................................           44           60           16           36          250
Basic filing fee--Design CPA...................  Undiscounted..........................          220          300           80           36          930
Basic filing fee--Design CPA...................  Small.................................           88          120           32           36          930
Basic filing fee--Design CPA...................  Micro.................................           44           60           16           36          930
Design search fee or Design CPA search fee.....  Undiscounted..........................          160          300          140           88          574
Design search fee or Design CPA search fee.....  Small.................................           64          120           56           88          574
Design search fee or Design CPA search fee.....  Micro.................................           32           60           28           88          574
Design examination fee or Design CPA             Undiscounted..........................          640          700           60            9          835
 examination fee.
Design examination fee or Design CPA             Small.................................          256          280           24            9          835
 examination fee.
Design examination fee or Design CPA             Micro.................................          128          140           12            9          835
 examination fee.
Design issue fee...............................  Undiscounted..........................          740        1,300          560           76          574
Design issue fee...............................  Small.................................          296          520          224           76          574
Design issue fee...............................  Micro.................................          148          260          112           76          574
Hague design issue fee.........................  Undiscounted..........................          740        1,300          560           76          n/a
Hague design issue fee.........................  Small.................................          296          520          224           76          n/a
Hague design issue fee.........................  Micro.................................          148          260          112           76          n/a
International Design Application First Part      Undiscounted..........................        1,020        1,300          280           27          n/a
 U.S. Designation Fee.
International Design Application First Part      Small.................................          408          520          112           27          n/a
 U.S. Designation Fee.
International Design Application First Part      Micro.................................          204          260           56           27          n/a
 U.S. Designation Fee.
(Part II Designation Fee) Issue Fee Paid         Undiscounted..........................          740        1,300          560           76          n/a
 Through the International Bureau in an
 International Design Application.
(Part II Designation Fee) Issue Fee Paid         Small.................................          296          520          224           76          n/a
 Through the International Bureau in an
 International Design Application.
(Part II Designation Fee) Issue Fee Paid         Micro.................................          148          260          112           76          n/a
 Through the International Bureau in an
 International Design Application.
--------------------------------------------------------------------------------------------------------------------------------------------------------

    The USPTO is proposing increases in the fees for filing, search, 
examination, and issuance of design patent applications. These 
proposals adjust the fees to account for inflationary cost increases, 
and to recover a larger portion of design costs from design applicants.
    The proposed design fee increases will affect national design 
application filings and international design application filings that 
designate the United States under the Geneva Act of the Hague Agreement 
Concerning the International Registration of Industrial Designs, July 
2, 1999 (``Hague Agreement'').
    As shown in the table above, the combined total of filing, search, 
examination, and issue fees for a design application that proceeds to 
issuance would increase from $1,760 to $2,600 for undiscounted 
applications, from $704 to $1,040 for applications receiving a small 
entity discount, and from $352 to $520 for applications receiving a 
micro entity discount. Note that under the Hague Agreement and its 
implementing regulations in the United States, including Sec.  1.1031, 
the required fees (known as ``designation fees'') for international 
design application filings that designate the United States are set by 
reference to the national fees. Thus, the first part of the designation 
fee corresponds to the sum of the filing fee, search fee, and 
examination fee, and the second part of the designation fee corresponds 
to the issue fee. See MPEP 2910 for more information about 
international design application fees.
    Despite these increases, the proposed fees will not achieve full 
recovery of design costs. On an individual basis, the proposed fees 
including the issue fee do not fully recover the cost of examining and 
issuing a design application even when the applicant paid the 
undiscounted rate. On an aggregate basis, design fee payments will not 
fully recover design costs because most design applications qualify for 
discounted fees. For example, of the design applications filed in FY 
2023, 28% paid the micro entity fee amount, 38% paid the small entity 
fee amount, and only 34% paid the undiscounted fee amounts. The USPTO 
is required by law to reduce most patent fees by 60% for small entities 
and by 80% for micro entities. See Part II: Legal Framework, supra. As 
a result of the heavy use of these discounts by design applicants, the 
USPTO's collections from design fees have been significantly below 
design costs for more than 10 years. For example, based on the most 
recently

[[Page 23240]]

available cost data (FY 2022), the unit cost for a design application 
was $2,233, and for a design Continued Prosecution Application, $2,913. 
The collections (in the same year) from design fees averaged only 
$1,125 per application, resulting in an average shortfall of about 
$1,108 per application. Assuming the unit cost remains the same in FY 
2023, the average shortfall would increase to about $1,220 per 
application based on FY 2023 collections from design fees, which 
averaged only $1,013 per application.
    Because USPTO operations are financed solely by user fees, the 
agency must make up the shortfall in the design area through fees set 
in other patent areas. While the USPTO has raised design fees twice in 
the last 10 years, those increases were not large enough to eliminate 
the shortfall over the long term. Thus, design costs continue to be 
subsidized by other fees, primarily utility patent maintenance fees. 
This subsidy has grown in recent years, as shown in figure 1. The graph 
depicts average fee collections per design application (``average 
collections'') in dark gray, and the average shortfall or subsidy per 
design application (``average subsidy'') in light gray. The average 
subsidy in FY 2022 was $1,108, and in FY 2023 was $1,220 (estimated 
based on FY 2022 unit cost).

Figure 1: Subsidization of Design Applications Over Time
[GRAPHIC] [TIFF OMITTED] TP03AP24.044

    The patent fee structure is designed to encourage innovation by 
maintaining low barriers to entry into the patent system. The USPTO 
accomplishes this goal by keeping initial filing fees for utility, 
plant, and design applications below the agency's costs for 
preexamination, search, and examination, and by recovering remaining 
costs of performing the work from maintenance fee payments made after 
issuance of a utility patent. See e.g., the FY 2022 Agency Financial 
Report at 45-46, available on the USPTO website at https://www.uspto.gov/AnnualReport. Although the USPTO is not permitted to 
establish maintenance fees for design or plant patents (see 35 U.S.C. 
41(b)(3)), the maintenance fees it collects from utility patentees 
represented 53.8% of patent revenue in FY 2022. This revenue is vital 
to providing the necessary aggregate revenue to recover the aggregate 
cost of patent operations.
    Because design fee payors do not bear the full costs of design 
services, a disconnect between fees and costs, as currently exists in 
the design patent area, can lead to overuse of discounted services. See 
e.g., Federal User Fees: A Design Guide, Report No. GAO-08-386SP (May 
2008), available at https://www.gao.gov/products/gao-08-386sp, and the 
Patent and Trademark Office: New User Fee Design Presents Opportunities 
to Build on Transparency and Communication Success, Report No. GAO-12-
514R (April 2012), available at https://www.gao.gov/products/gao-12-514r.
    Historically, this difference between design fees and design costs 
did not result in a significant subsidy because the annual volume of 
design applications was much lower than the annual volume of issued 
utility patents. Since 2014, however, the number of design applications 
has surged 50% (from 36,254 in FY 2014 to 54,476 in FY 2022) while the 
number of issued utility patents (and thus the volume of potential 
future maintenance fees) has increased only 7% (from 303,930 in FY 2014 
to 325,455 in FY 2022). See e.g., FY 2022 Workload Table 1, available 
on the USPTO website at https://www.uspto.gov/AnnualReport. Moreover, 
virtually all growth in design application filings is attributable to 
applications in which discounted fees are paid. From FY 2014 to FY 
2022, the number of undiscounted design applications filed did not 
increase, but the number of small entity applications increased 24%, 
and the number of micro entity applications increased 313%. As a 
result, the entity spread for design applications changed dramatically. 
For example, in FY 2014, the entity spread for design applications was 
50% undiscounted, 40% small

[[Page 23241]]

entity, and 10% micro entity; during FY 2022, the entity spread for 
design applications was 35% undiscounted, 35% small entity, and 30% 
micro entity. In contrast, the entity spread in utility application 
filings has remained the same from FY 2014 to FY 2022, at about 72% 
undiscounted, 24% small entity, and 4% micro entity.
    The combination of these factors makes it challenging for the USPTO 
to balance the setting of design fees that appropriately encourage 
innovation while also incenting design applicants to make appropriate 
economic decisions and not overuse design services. For example, based 
on the FY 2022 unit cost and assuming that filing volume and entity 
spread remain stable, recovering the full cost of design services from 
design applicants would require total fees of about $4,000 for 
undiscounted applications. Abruptly raising fees to these levels could 
discourage innovation, so the USPTO is proposing a more moderate 
increase to $2,600 for undiscounted applications. After considering all 
relevant factors, the agency believes the proposed design fee increases 
strike a balance that still encourages innovation while bringing in 
increased revenue to recover more design costs.
4. Excess Claims Fees

                                                               Table 7--Excess Claims Fees
--------------------------------------------------------------------------------------------------------------------------------------------------------
                                                                                                        Proposed      Dollar      Percent      FY 2022
                  Description                                  Entity type               Current fee      fee         change       change     unit cost
--------------------------------------------------------------------------------------------------------------------------------------------------------
Each independent claim in excess of three......  Undiscounted..........................         $480         $600         $120           25          n/a
Each independent claim in excess of three......  Small.................................          192          240           48           25          n/a
Each independent claim in excess of three......  Micro.................................           96          120           24           25          n/a
Each reissue independent claim in excess of      Undiscounted..........................          480          600          120           25          n/a
 three.
Each reissue independent claim in excess of      Small.................................          192          240           48           25          n/a
 three.
Each reissue independent claim in excess of      Micro.................................           96          120           24           25          n/a
 three.
Each claim in excess of 20.....................  Undiscounted..........................          100          200          100          100          n/a
Each claim in excess of 20.....................  Small.................................           40           80           40          100          n/a
Each claim in excess of 20.....................  Micro.................................           20           40           20          100          n/a
Each reissue claim in excess of 20.............  Undiscounted..........................          100          200          100          100          n/a
Each reissue claim in excess of 20.............  Small.................................           40           80           40          100          n/a
Each reissue claim in excess of 20.............  Micro.................................           20           40           20          100          n/a
Each reexamination independent claim in excess   Undiscounted..........................          480          600          120           25          n/a
 of three and also in excess of the number of
 such claims in the patent under reexamination.
Each reexamination independent claim in excess   Small.................................          192          240           48           25          n/a
 of three and also in excess of the number of
 such claims in the patent under reexamination.
Each reexamination independent claim in excess   Micro.................................           96          120           24           25          n/a
 of three and also in excess of the number of
 such claims in the patent under reexamination.
Each reexamination claim in excess of 20 and     Undiscounted..........................          100          200          100          100          n/a
 also in excess of the number of claims in the
 patent under reexamination.
Each reexamination claim in excess of 20 and     Small.................................           40           80           40          100          n/a
 also in excess of the number of claims in the
 patent under reexamination.
Each reexamination claim in excess of 20 and     Micro.................................           20           40           20          100          n/a
 also in excess of the number of claims in the
 patent under reexamination.
--------------------------------------------------------------------------------------------------------------------------------------------------------

    Under Sec.  1.16(h) and (i), the USPTO charges a fee for filing, or 
later presenting at any other time, each independent claim in excess of 
three, as well as each claim (whether dependent or independent) in 
excess of 20. The agency proposes to increase the Sec.  1.16(h) and (i) 
excess claims fees. The Sec.  1.16(j) multiple dependent claim fee is 
part of the across-the-board adjustment and not included in this 
targeted proposal as well as the counterpart excess claims fees 
applicable to reexamination proceedings and applications that are the 
national stage of an international application filed under the Patent 
Cooperation Treaty. These changes would provide more revenue to help 
recover the additional search and examination costs associated with 
excess claims, as well as prosecution costs not covered by front-end 
fees. These changes would also promote compact prosecution, and the 
USPTO believes applicants motivated by costs would be incentivized to 
not file excess claims. In FY 2021, only about 15% of applications 
contained more than 20 total claims, and about 8% of applications 
contained more than three independent claims.
    The USPTO has increased excess claim fees several times during the 
last 20 years, which has been very effective at reducing excess claims 
from their peak in the early 2000s. A high frequency of applications 
filed with exactly 20 claims and a very low frequency of applications 
with claim counts exceeding 20 to help promote compact prosecution. In 
absence of the agency's proposed increases to excess claims fees, it 
anticipates that excess claims numbers would increase in response to 
proposed fees for certain continuing applications discussed previously 
in this proposal.
    Continuing application and excess claim fees are naturally linked 
and likely to have counterbalancing effects. For example, an increase 
in continuing applications could result from raising only excess claims 
fees, and an increase in excess claims could result from raising only 
the fee for continuing applications (even in specific, lesser-occurring 
situations). The proposed increases in excess claims fees are intended 
to avert the latter scenario.
    An applicant who files a nonprovisional utility application having 
three independent claims and 40 claims total--double the Sec.  1.16(i) 
total claim-count threshold--is required to pay the Sec.  1.16(i) fee 
for 20 excess claims.

[[Page 23242]]

Under the USPTO's proposed fee rates, an application with double the 20 
total claim-count threshold would require an excess claims fee payment 
that equals the combined proposed fee amounts for filing, search, and 
examination. In other words, a double-sized application (three 
independent claims and 40 claims total) would require double the 
combined total in applicable fees for filing, search, and examination.
5. Extension of Time for Provisional Application Fees

                                               Table 8--Extension of Time for Provisional Application Fees
--------------------------------------------------------------------------------------------------------------------------------------------------------
                                                                                                        Proposed      Dollar      Percent      FY 2022
                  Description                                  Entity type               Current fee      fee         change       change     unit cost
--------------------------------------------------------------------------------------------------------------------------------------------------------
Extension for response within first month,       Undiscounted..........................         $220          $50        -$170          -77          n/a
 provisional application.
Extension for response within first month,       Small.................................           88           20          -68          -77          n/a
 provisional application.
Extension for response within first month,       Micro.................................           44           10          -34          -77          n/a
 provisional application.
Extension for response within second month,      Undiscounted..........................          640          100         -540          -84          n/a
 provisional application.
Extension for response within second month,      Small.................................          256           40         -216          -84          n/a
 provisional application.
Extension for response within second month,      Micro.................................          128           20         -108          -84          n/a
 provisional application.
Extension for response within third month,       Undiscounted..........................        1,480          200       -1,280          -86          n/a
 provisional application.
Extension for response within third month,       Small.................................          592           80         -512          -86          n/a
 provisional application.
Extension for response within third month,       Micro.................................          296           40         -256          -86          n/a
 provisional application.
Extension for response within fourth month,      Undiscounted..........................        2,320          400       -1,920          -83          n/a
 provisional application.
Extension for response within fourth month,      Small.................................          928          160         -768          -83          n/a
 provisional application.
Extension for response within fourth month,      Micro.................................          464           80         -384          -83          n/a
 provisional application.
Extension for response within fifth month,       Undiscounted..........................        3,160          800       -2,360          -75          n/a
 provisional application.
Extension for response within fifth month,       Small.................................        1,264          320         -944          -75          n/a
 provisional application.
Extension for response within fifth month,       Micro.................................          632          160         -472          -75          n/a
 provisional application.
--------------------------------------------------------------------------------------------------------------------------------------------------------

    The USPTO proposes a separate extension of time (EOT) fee structure 
for provisional applications in which fees would be decreased from 
current amounts by an average of 81%. Under EOT practice, if an 
applicant is required to reply within a nonstatutory or shortened 
statutory time period, the applicant may normally petition to extend 
the time period for reply with the requisite fee. The time extension 
may be up to the earlier of the expiration of any maximum period set by 
statute or five months after the time period set for reply, if a 
petition for an EOT under Sec.  1.136(a), including the EOT fee set in 
Sec.  1.17(a), is filed.
    Currently, the EOT fees specified in Sec.  1.17(a) apply equally to 
both provisional and nonprovisional applications. The USPTO proposes an 
average 81% EOT fee decrease in provisional applications under a new 
paragraph (u) of Sec.  1.17, with an additional proposal that Sec.  
1.136(a) be amended to refer to EOT fees under both Sec.  1.17(a) and 
new Sec.  1.17(u). For patent applications other than provisional 
applications, the EOT fee structure retained under Sec.  1.17(a) would 
be increased by 5%, in accordance with the across-the-board proposal.
    With fees reduced by 81% on average, the proposed separate EOT fee 
structure for provisional applications would benefit filers in all 
entity status categories. The agency envisions that micro entity 
provisional application filers would benefit most. As explained in the 
Director's April 20, 2023, letter to PPAC:

    ``The USPTO's fee review concluded that applicants who have 
certified micro entity status in provisional applications are more 
than twice as likely to request EOT as compared to other applicants. 
Thus, we are proposing reduced EOT fees for provisional applications 
by an average of 81% to reduce financial and entry barriers and 
further foster inclusive innovation.''

    Some micro entity applicants need time extensions to accommodate 
attempts to meet additional formality requirements associated with 
establishing micro entity status. Another consideration favoring this 
proposal is that provisional applications are not examined; therefore, 
there is less urgency to expedite processing.
6. Information Disclosure Statement Size Fees

[[Page 23243]]



                                                   Table 9--Information Disclosure Statement Size Fees
--------------------------------------------------------------------------------------------------------------------------------------------------------
                                                                                                                      Dollar      Percent      FY 2022
             Description                       Entity type               Current fee            Proposed fee          change       change     unit cost
--------------------------------------------------------------------------------------------------------------------------------------------------------
Filing an Information Disclosure      Undiscounted................  New.................  $200...................          n/a          n/a          n/a
 Statement that causes the
 cumulative number of applicant-
 provided items of information to
 exceed 50 but not exceed 100.
Filing an Information Disclosure      Undiscounted................  New.................  $500, less any amount            n/a          n/a          n/a
 Statement that causes the                                                                 previously paid.
 cumulative number of applicant-
 provided items of information to
 exceed 100 but not exceed 200.
Filing an Information Disclosure      Undiscounted................  New.................  $800, less any amounts           n/a          n/a          n/a
 Statement that causes the                                                                 previously paid.
 cumulative number of applicant-
 provided items of information to
 exceed 200.
--------------------------------------------------------------------------------------------------------------------------------------------------------

    Sections 1.97 and 1.555 provide applicants and patent owners the 
opportunity to submit an information disclosure statement (IDS) 
containing items of information for consideration by the examiner. In a 
patent application, to be considered, the IDS must meet the timing 
requirements of Sec.  1.97 and the content requirements of Sec.  1.98. 
In a reexamination proceeding, the IDS must meet the content 
requirements of Sec.  1.98(a). There are no specific regulatory limits 
to the number of items of information that may be included in an IDS. 
Most applications contain relatively few items of information submitted 
by applicants for consideration. Approximately 77% of applications have 
fewer than 25 applicant-cited items of information submitted during 
prosecution.
    The USPTO receives large IDS submissions in a small percentage of 
applications. Based on the agency's most recent data, in approximately 
13% of applications applicants submit over 50 total items of 
information and in 8% of applications applicants submit over 100 items 
of information. In an even smaller subset of applications, the number 
of applicant-submitted items can be quite large, sometimes in the 
thousands or even tens of thousands.
    In many instances, these large IDS submissions contain clearly 
irrelevant, marginally relevant, or cumulative information. It is 
onerous for examiners and hinders the USPTO's statutory obligation to 
timely examine applications under 35 U.S.C. 154 to consider large 
numbers of clearly irrelevant, marginally relevant, or cumulative 
information. Additionally, large IDS submissions are costly for the 
agency to consider. Therefore, the USPTO suggests, as a best practice, 
that applicants and patent owners avoid filing large IDS submissions by 
eliminating clearly irrelevant, marginally relevant, or cumulative 
information. See MPEP 2004, item 13.
    In 2006, the USPTO attempted to address large IDS submissions by 
proposing new requirements, including that IDSs with more than twenty 
citations be accompanied by an explanation of relevance. See Changes To 
Information Disclosure Statement Requirements and Other Related 
Matters, 71 FR 38808 (July 10, 2006). The proposal was not adopted; 
instead, to provide some relief for examiners burdened with large IDS 
submissions, the agency began providing examiners additional time to 
consider large IDS submissions in applications.
    On average, the USPTO provides examiners approximately 80,000 
additional hours each year to consider large IDS submissions in 
applications, costing the agency $10 million annually. As there is 
currently no fee for large IDS submissions, this cost is subsidized 
generally by patent fees, primarily maintenance fees collected for 
patents that resulted from applications that did not contain large IDS 
submissions.
    Accordingly, to have applicants and patent owners filing large IDS 
submissions cover more of the associated costs, the USPTO proposes to 
amend Sec.  1.17 to implement a new IDS size fee based on the 
cumulative number of items of information submitted by an applicant or 
patent owner during the pendency of the application or reexamination 
proceeding. The proposed IDS size fee sets forth: (1) a first amount 
($200) for a cumulative number of applicant-provided or patent-owner 
provided items of information in excess of 50; (2) a second amount 
($500) for a cumulative number of applicant-provided or patent-owner 
provided items of information in excess of 100 but not exceeding 200, 
less any amount previously paid; and (3) a third amount ($800) for a 
cumulative number of applicant-provided or patent owner provided items 
of information in excess of 200, less any amounts previously paid.
    For example, if an applicant submits a single IDS during 
prosecution with 101 items of information, the applicant would pay $500 
under the proposed new Sec.  1.17(v)(2) for exceeding 100 items of 
information, but not exceeding 200. In another example, if an applicant 
files a first IDS with 51 items of information, they would pay $200 
under proposed new Sec.  1.17(v)(1) for exceeding 50 items of 
information, but not exceeding 100. Subsequently, in that same 
application, if the applicant files a second IDS with 50 items of 
information, the cumulative number of items of information in the 
application would be 101. The applicant would then pay $500 under 
proposed new Sec.  1.17(v)(2) for exceeding 100 items of information, 
but not exceeding 200, less the $200 previously paid under proposed new 
Sec.  1.17(v)(1), for a total of $300.
    Further, in that same application, if the applicant files a third 
IDS with 100 items of information, the cumulative number of items of 
information in the application would be 201. The applicant would then 
pay $800 under proposed new Sec.  1.17(v)(3) for exceeding 200 items of 
information, less the $200 previously paid under proposed new Sec.  
1.17(v)(1) and less the $300 previously paid under proposed new Sec.  
1.17(v)(2), for a total of $300. Thus, in this example, the applicant 
would pay a combined IDS size fee of $800 for the three IDSs filed 
during the pendency of the application.
    Additionally, the USPTO is proposing to amend Sec.  1.98(a) to 
include a new content requirement for an IDS that will facilitate 
implementation of the proposed IDS size fee. Specifically, the USPTO is 
proposing to require that an IDS contain a clear written assertion by 
applicant and patent owner that the IDS is accompanied by the 
appropriate IDS size fee, or that no IDS size fee is required. This 
assertion is necessary because it ensures the record is clear as

[[Page 23244]]

to which fee the applicant or patent owner believes may be due (or that 
no fee may be due), with the IDS so the examiner can promptly ascertain 
whether the IDS is compliant. There would be no specific language 
required for the written assertion, but it should be readily 
identifiable on the IDS and clearly convey the applicable IDS size fee.
    The agency envisions modifying USPTO Form PTO/SB/08 to include the 
requisite written assertion stylized as a set of check boxes 
corresponding to each potential IDS size fee, along with an additional 
box indicating that no IDS size fee is due. Since the form must be 
signed in accordance with Sec.  1.33(b), certifications under 
Sec. Sec.  1.4 and 11.18 apply. Applicants and patent owners would be 
strongly advised to use the PTO/SB/08 form, but it will not be 
required. The USPTO does not foresee general authorizations to charge 
fees or a specific authorization to charge any applicable IDS size fee 
as a compliant written assertion under the proposed requirement. It 
would be the applicant's and patent owner's responsibility to track the 
cumulative number of items of information submitted in the application 
and provide a written assertion of any applicable IDS size fee due. In 
accordance with Sec.  1.97(i), an IDS filed in an application without 
the written assertion or the necessary IDS size fee will be placed in 
the file, but not considered by the agency. The applicant may then file 
a new IDS accompanied by the written assertion or necessary IDS size 
fee, but the date the new IDS is filed will be the date of the IDS for 
purposes of determining compliance with Sec.  1.97. See MPEP 609.05(a). 
An IDS filed in a reexamination proceeding without the written 
assertion or the necessary IDS size fee will be placed in the file and 
will remain of record, but the IDS will not be considered.
    Applicants are reminded that the duty of disclosure under 
Sec. Sec.  1.56 and 1.555 only requires the submission of information 
material to patentability to the USPTO. Material information is 
described in Sec. Sec.  1.56(b) and 1.555(b) as information that is not 
cumulative to information already of record and (1) establishes, by 
itself or in combination with other information, a prima facie case of 
unpatentability of a claim; or (2) it refutes, or is inconsistent with, 
a position the applicant takes in: (i) opposing an argument of 
unpatentability relied on by the USPTO, or (ii) asserting an argument 
of patentability. The United States Court of Appeals for the Federal 
Circuit uses an even higher standard for materiality than the Sec.  
1.56(b) and 1.555(b) standards by requiring ``but-for'' materiality, 
such that the USPTO would not have allowed a claim had it been aware of 
the undisclosed information. Neither the Sec.  1.56(b) and 1.555(b) 
standards nor the Federal Circuit's ``but-for'' standard require the 
submission of clearly irrelevant or marginally relevant information.
    The USPTO does not believe the proposed IDS size fee will have a 
large impact on patent applicants or owners. As stated previously, a 
majority of applicants do not submit large amounts of information for 
consideration. Based on current IDS filing volume, only 13% of 
applications will require the first-tier IDS size fee for submitting 
over 50 items of information. Even fewer applications will be subject 
to the succeeding two tiers, as only approximately 8% of applications 
contain over 100 items of information, and about 4% contain over 200 
items of information. Additionally, the fee should not 
disproportionately impact small and micro entities. During FY 2022, 
small entities accounted for only 25% of applications that would incur 
a fee, while micro entities made up less than 1%. By placing more of 
the service costs for considering IDS submissions totaling over 50 
items of information on the applicants who file such IDS submissions, 
less costs will be borne across the patent system.
7. Patent Term Adjustment Fees

                                                          Table 10--Patent Term Adjustment Fees
--------------------------------------------------------------------------------------------------------------------------------------------------------
                                                                                                                   Dollar        Percent    FY 2022 unit
                 Description                               Entity type               Current fee  Proposed fee     change        change         cost
--------------------------------------------------------------------------------------------------------------------------------------------------------
Filing an application for patent term         Undiscounted........................         $210          $300           $90            43          $745
 adjustment.
--------------------------------------------------------------------------------------------------------------------------------------------------------

    The USPTO is proposing a fee increase from $210 to $300 for filing 
an application for patent term adjustment under Sec.  1.705(b), which 
allows patentees of utility and plant patents to request 
reconsideration of the patent term adjustment indicated on the face of 
the patent. This proposal adjusts the fee for inflation and supports 
the USPTO's fee setting policy of aligning fees with costs.
    This service and fee were introduced in September 2000 as part of a 
rule package implementing the patent term adjustment provisions of 35 
U.S.C. 154(b), which were created by the Uruguay Round Agreements Act 
(Pub. L. 103-465, 108 Stat. 4809 (1994)) and amended by the American 
Inventors Protection Act of 1999 (Pub. L. 106-113, 113 Stat. 1501, 
1501A-552 through 1501A-591 (1999)). See Changes to Implement Patent 
Term Adjustment Under Twenty-Year Patent Term, 65 FR 56366 (Sept. 18, 
2000). Under 35 U.S.C. 154(b), patent term adjustment is a complex 
statutory scheme that compensates utility and plant patent owners for 
certain application processing delays that would otherwise reduce a 
patent's term. See MPEP 2730 through 2732 for more information 
regarding grounds for adjustment, the adjustment period, and reductions 
in the adjustment period due to applicant failures to engage in 
reasonable efforts to conclude prosecution of an application.
    In accordance with these laws and their implementing regulations, 
the USPTO determines applicable patent term adjustment at the time of 
issuing each utility and plant patent and indicates such adjustment on 
the face of the patent. These determinations are performed using a 
computer program that relies upon information in the agency's patent 
application data repository--formerly Patent Application Locating and 
Monitoring, now the One Patent Service Gateway (OPSG). This information 
includes the type of document (e.g., an amendment or a notice of 
allowance) and the relevant date (e.g., for an amendment, the date of 
receipt in the USPTO). Applicants may use Patent Center to check the 
accuracy of the data entered in the OPSG throughout the examination 
process and are encouraged to notify the agency of any detected errors 
prior to allowance. See e.g., MPEP 2733 for guidance about checking 
records and reporting errors (note, Patent Center replaced the Patent 
Application Information Retrieval system discussed in the MPEP).
    If the patentee disagrees with the adjustment indicated on the 
patent, they may file a request for reconsideration of patent term 
adjustment under Sec.  1.705(b) which must filed within two months of 
the date the patent was granted. The

[[Page 23245]]

request (also called an application) must include the patentee's 
requested patent term adjustment and a supporting statement of facts 
and be accompanied by the fee specified in Sec.  1.18(e). In response 
to a request, the USPTO will conduct a manual redetermination of the 
patent term adjustment, which may result in (1) an amount of patent 
term adjustment that is the amount of patent term adjustment requested 
by the applicant; (2) the same amount of patent term adjustment as 
indicated in the patent (i.e., no change); or (3) a different amount of 
patent term adjustment that may be higher or lower than the patent term 
adjustment indicated on the patent. More information regarding 
determination and reconsideration of patent term adjustment is 
available in MPEP 2733 and 2734.
    When introduced in 2000, the agency set the fee for requests for 
reconsideration of patent term adjustment at $200, and since then has 
increased this fee only $10. See Changes To Implement Patent Term 
Adjustment Under Twenty-Year Patent Term, 65 FR 56366 (Sep. 18, 2000); 
FY 2020 Final Rule. If the agency had adjusted the fee for inflation as 
measured by the Consumer Price Index since the fee's introduction, it 
would be $351 as of June 2023. The USPTO's proposed increase to $300 is 
15% below the inflation-adjusted original fee. Thus, the proposed fee 
represents a partial recovery of the inflation-adjusted original fee. 
Moreover, the proposed fee will remain significantly less than the unit 
cost of this service ($745 in FY 2022). While this fee does not qualify 
for entity discounts, the proposed increase will not disproportionately 
impact small and micro entities. Based on data from FY 2021 and FY 
2022, small entities file about 19% of PTA reconsideration requests, 
and micro entities only 1%.
    This service has a low volume of about 500 requests each year, 
meaning that patentees are requesting reconsideration of patent term 
adjustment in only 0.15% of issued patents (since FY 2019, the USPTO 
has issued over 325,000 utility and plant patents annually). This low 
volume is due partly to the USPTO's improvements to its computer 
program over the years, and partly to applicant diligence when 
submitting and reviewing papers. For example, as described previously, 
applicants are encouraged to bring any detected errors in OPSG data to 
the agency's attention before allowance. In addition, applicants can 
improve the accuracy of the USPTO's records (which, in turn, improves 
the accuracy of the computer program's determinations) by using the 
proper document codes when filing papers. See e.g., Standardization of 
the Patent Term Adjustment Statement Regarding Information Disclosure 
Statements, 88 FR 39172 (Jun. 15, 2023), which explains how using the 
agency's form and document code when filing a ``safe harbor'' statement 
for an IDS enhances the accuracy of the USPTO's automated process for 
calculating patent term adjustment when the ``safe harbor'' provisions 
of Sec.  1.704(d) are involved.
8. Patent Term Extension Fees

                                                          Table 11--Patent Term Extension Fees
--------------------------------------------------------------------------------------------------------------------------------------------------------
                                                                                                        Proposed      Dollar      Percent      FY 2022
                  Description                                  Entity type               Current fee      fee         change       change     unit cost
--------------------------------------------------------------------------------------------------------------------------------------------------------
Application for extension of term of patent....  Undiscounted..........................       $1,180       $6,700       $5,520          468       $2,581
Initial application for interim extension (see   Undiscounted..........................          440        1,320          880          200        2,347
 37 CFR 1.790).
Subsequent application for interim extension     Undiscounted..........................          230          680          450          196        2,347
 (see 37 CFR 1.790).
Supplemental redetermination after notice of     Undiscounted..........................          New        1,440          n/a          n/a          n/a
 final determination.
--------------------------------------------------------------------------------------------------------------------------------------------------------

    The USPTO is proposing fee increases for filing applications for 
patent term extension and applications for interim extensions under 35 
U.S.C. 156, and is also proposing a new fee for requesting a 
supplemental redetermination of the patent term extension in a pending 
application for patent term extension. These proposals adjust fees for 
inflation and reflect the full cost of these services and also supports 
the agency's fee setting policy of aligning fees with costs.
    The patent term extension service and fee were introduced in 
October 1984 as part of initial operating guidelines established after 
enactment of the patent term extension provisions of 35 U.S.C. 156 in 
the Drug Price Competition and Patent Term Restoration Act of 1984 
(Pub. L. 98-417, 98 Stat. 1585 (1984)) (Hatch-Waxman Act). See 
Guidelines for Extension of Patent Term under 35 U.S.C. 156, 1047 OG 16 
(Oct. 9, 1984). In brief, patent term extensions under 35 U.S.C. 156 
enable owners of patents claiming certain products subject to premarket 
regulatory review to restore to the terms of those patents some of the 
time lost while awaiting premarket government approval for the products 
from a regulatory agency. The products eligible for patent term 
extension services under 35 U.S.C. 156 include human drug products, 
medical devices, animal drugs, and food or color additive products, all 
of which are regulated by the FDA, and veterinary biological products, 
which are regulated by the United States Department of Agriculture 
(USDA). See MPEP 2750 for more information regarding the legislative 
history and scope of the Hatch-Waxman Act with respect to patent term 
extensions.
    In accordance with this law and its implementing regulations, the 
patent owner must file an application for patent term extension with 
the USPTO within a short time after the product receives permission for 
commercial marketing or use from the applicable regulatory agency (the 
FDA or USDA). See MPEP 2754 et seq. Upon receipt, the USPTO reviews the 
application, the applicant, the patent, and the claimed product or 
process and then works with the applicable regulatory agency to 
evaluate compliance with the statutory requirements for a patent term 
extension under 35 U.S.C. 156. While it is the USPTO's responsibility 
to decide whether an applicant has satisfied statutory requirements and 
whether the patent qualifies for patent term extension, the applicable 
regulatory agency possesses expertise and records regarding some 
statutory requirements and has certain direct responsibilities under 35 
U.S.C. 156 for determining length of the regulatory review period. See 
MPEP 2756 for a more detailed explanation of how the USPTO works with 
these regulatory agencies to determine a patent's eligibility for 
patent term extension under 35 U.S.C. 156. Once the USPTO has received 
the necessary information from the regulatory agency, it determines the

[[Page 23246]]

applicable patent term extension (if any) and formulates a Notice of 
Final Determination or determination of ineligibility, reviews any 
responses or reconsideration requests received from the patent owner, 
and then prepares a Final Determination or certificate as appropriate. 
See MPEP 2755 through 2759 for an explanation of this process. Because 
of the coordination and communication required between the USPTO and 
the appropriate regulatory agency, and the complexity of the legal 
determinations involved, it often takes two or more years to reach a 
Final Determination or determination of ineligibility. The time 
required varies greatly depending on the individual circumstances of 
each application.
    When introduced in 1984, the fee for this service was set at $750 
and since then has increased to only $1,180. See e.g., Guidelines for 
Extension of Patent Term Under 35 U.S.C. 156, 1047 OG 16 (Oct. 9, 
1984), Rules for Extension of Patent Term, 52 FR 9386 (Mar. 24, 1987), 
and FY 2020 Final Rule. If the original fee were adjusted for inflation 
as measured by the CPI, it would be $2,173 as of June 2023. Moreover, 
the complexity and cost of this service has increased over time due to 
the subject matter and legal expertise required to evaluate the 
statutory requirements. Thus, the USPTO is proposing to raise the fee 
for this service from $1,180 to $6,700.
    While the proposed fee is greater than the reported unit cost, the 
USPTO did not begin formally tracking the unit cost of this service (as 
a separate service through the ABI program) until midway through FY 
2021. Prior to FY 2018 the service volume was quite low at about 42 
applications each year. Since then, volume has averaged 100-plus 
applications each year. Accordingly, because the ABI for patent term 
extension is based on limited data, the currently reported unit cost is 
believed to be significantly lower than the actual cost of providing 
the service. As the amount of service information increases with time, 
the USPTO expects that the unit cost determined by the ABI program will 
more closely align with the actual cost.
    The USPTO is also proposing a new service fee that would apply to 
the approximate one-third of applications for patent term extension in 
which the user files a response that includes a terminal disclaimer 
after receiving the Notice of Final Determination. The submission of 
terminal disclaimers at this late stage in the review process affects 
the patent term, requiring the USPTO to engage in a substantial amount 
of rework to recalculate the applicable patent term extension and make 
a supplemental redetermination of the appropriate extension in view of 
the disclaimer. These submissions became more common after the Federal 
Circuit's decision in Gilead Sciences, Inc. v. Natco Pharma Ltd., 753 
F.3d 1208 (Fed. Cir. 2014), which made it clear that the extended term 
of a patent can be affected by a terminal disclaimer filed against a 
later-issued but earlier-expiring reference patent, and after a 2015 
presentation by USPTO personnel at a public meeting discussing the 
Gilead decision. See Safekeeping of 35 U.S.C. 156 Extensions 
presentation from the USPTO Biotechnology/Chemical/Pharmaceutical 
Customer Partnership Meeting on April 7, 2015, available at https://www.aipla.org/docs/default-source/committee-documents/bcp-files/pte-for-4-7-15-bcp.pdf?sfvrsn=868807b4_2. These submissions are expected to 
become more common in the future, because of In re Cellect, 81 F.4th 
1216, 2023 U.S.P.Q.2d 1011 (Fed. Cir. 2023), in which the Federal 
Circuit explained that patent term adjustment and patent term extension 
are treated differently with respect to nonstatutory double patenting 
and terminal disclaimers. Currently, beneficiaries of this rework 
receive this additional service for free because the cost is subsidized 
by other users (e.g., by unrelated fee collections from other patent 
applicants and owners). In accordance with user fee design principles, 
the USPTO is proposing a new fee of $1,440 to cover the costs of this 
service, to be paid by users who benefit from it.
    The USPTO is also proposing to increase the fees for filing 
applications for interim patent term extensions under Sec.  1.790. This 
service and fees were introduced in 1994 in response to an amendment of 
the Hatch-Waxman Act that added 35 U.S.C. 156(d)(5). See MPEP 2750 and 
Guidelines for Interim Extension Under 35 U.S.C. 156(d)(5) of a Patent 
Term Prior To Regulatory Approval of a Product for Commercial Marketing 
or Use--Public Law 103-179 (Dec. 3, 1993), 1159 OG 12 (Feb. 1, 1994). 
Interim patent extension under 35 U.S.C. 156(d)(5) is available for a 
patent claiming a product which is undergoing the approval phase of 
regulatory review as defined in 35 U.S.C. 156(g), if the patent is 
expected to expire before approval is granted. The application of an 
interim patent extension is very similar to an application for patent 
term extension, with a similar evaluation process, except the USPTO is 
not required to seek the advice of the regulatory agency. See MPEP 
2755.02 for more information regarding this service.
    The interim extension service has a very low volume of about 20 or 
fewer applications each year, but it is costly and requires special 
handling due to the subject matter and legal expertise required to 
evaluate the statutory requirements. The USPTO is proposing to raise 
the fees from $440 to $1,320 for the initial (first) application for an 
interim extension of patent term, and from $230 to $680 for each 
subsequent application. This fee increase will help recover the 
agency's costs of performing this service. Upon its introduction in 
1993, the fees for this service were set at $400 for an initial 
application and $200 for subsequent applications, and have increased by 
only $40 and $30, respectively, since. See FY 2020 Final Rule. The 
proposed fee amounts remain significantly less than the agency's costs 
of providing the service; as of FY 2022, the unit cost was $2,347.
    No patent term extension-related fees are eligible for entity 
discounts. The users of these services are typically large 
pharmaceutical and medical device companies due to the expense required 
to develop and obtain marketing approval for such inventions, in 
addition to limits on service availability set forth in 35 U.S.C. 156. 
For example, over the last 40 years, 81% of applications for patent 
term extension concerned human drug products, 15% concerned medical 
devices, 3% concerned animal drugs, and about 1% concerned food or 
color additive products or veterinary biological products. See e.g., 
the USPTO website at https://www.uspto.gov/patents/laws/patent-term-extension/patent-terms-extended-under-35-usc-156, which provides a list 
of patents that have been extended via this service. Additionally, the 
costs for regulatory approval of these products are extremely high. For 
example, as reported by the CBO, three recent studies estimated the 
average research and development costs per new drug to range from $0.8 
billion to $2.3 billion. See Congressional Budget Office, Research and 
Development in the Pharmaceutical Industry, Report No. 57126 pp. 15 and 
16 (April 2021), available at https://www.cbo.gov/publication/57126. It 
is not clear whether the figures reported in these studies included FDA 
user fees, which are currently between $1.6 million and $3.2 million as 
a one-time sum, with an additional annual program fee of $393,933. See 
e.g., the FDA's user fee page for prescription drugs at https://www.fda.gov/industry/fda-user-fee-programs/prescription-drug-user-fee-amendments. Thus, when compared to

[[Page 23247]]

either FDA user fees or the research and development costs required to 
develop a new drug and obtain marketing approval, the proposed fees to 
obtain a patent term extension for the patent covering such a new drug 
are quite small.
9. Request for Continued Examination Fees

                                                    Table 12--Request for Continued Examination Fees
--------------------------------------------------------------------------------------------------------------------------------------------------------
                                                                                                        Proposed      Dollar      Percent      FY 2022
                  Description                                  Entity type               Current fee      fee         change       change     unit cost
--------------------------------------------------------------------------------------------------------------------------------------------------------
Request for continued examination (RCE)--1st     Undiscounted..........................       $1,360       $1,500         $140           10       $3,059
 request (see 37 CFR 1.114).
Request for continued examination (RCE)--1st     Small.................................          544          600           56           10        3,059
 request (see 37 CFR 1.114).
Request for continued examination (RCE)--1st     Micro.................................          272          300           28           10        3,059
 request (see 37 CFR 1.114).
Request for continued examination (RCE)--2nd     Undiscounted..........................        2,000        2,500          500           25        2,191
 request (see 37 CFR 1.114).
Request for continued examination (RCE)--2nd     Small.................................          800        1,000          200           25        2,191
 request (see 37 CFR 1.114).
Request for continued examination (RCE)--2nd     Micro.................................          400          500          100           25        2,191
 request (see 37 CFR 1.114).
Request for continued examination (RCE)--3rd     Undiscounted..........................        2,000        3,600        1,600           80        2,169
 and subsequent request (see 37 CFR 1.114).
Request for continued examination (RCE)--3rd     Small.................................          800        1,440          640           80        2,169
 and subsequent request (see 37 CFR 1.114).
Request for continued examination (RCE)--3rd     Micro.................................          400          720          320           80        2,169
 and subsequent request (see 37 CFR 1.114).
--------------------------------------------------------------------------------------------------------------------------------------------------------

    For utility and plant applications where prosecution is closed 
(e.g., a final rejection has been mailed), the applicant may file an 
RCE and pay a specified fee within the requisite time period. 
Applicants typically file an RCE when they choose to continue 
prosecution before an examiner, rather than appeal a rejection or 
abandon the application. Prior to application abandonment, applicants 
may also file a continuing application to extend prosecution rather 
than file an RCE. The USPTO's proposal would split the existing RCE 
fees into three parts--a fee for a first RCE, a higher fee for a second 
RCE, and a still higher fee for third and subsequent RCEs filed in a 
single patent application.
    Since FY 2013, the USPTO has split RCE fees into two parts: (1) a 
fee for a first RCE; and (2) a second, higher fee for a second or 
subsequent RCE. See Setting and Adjusting Patent Fees, 78 FR 4212 (Jan. 
18, 2013). The USPTO's FY 2017 fee setting rulemaking maintained the 
undiscounted fee for a first RCE well below cost but set the 
undiscounted fee for second and subsequent RCEs at 19% above cost. See 
Setting and Adjusting Patent Fees During Fiscal Year 2017, 82 FR 52780 
(Nov. 14, 2017). The initial RCE fee from FY 2017 would have required 
an applicant without any entity status discount to file four RCEs to 
mostly recover the USPTO's costs for treating all RCE filings.
    These costs have increased annually since FY 2017. In fact, the 
current undiscounted fee for second and subsequent RCEs is set so far 
below cost that no amount of RCE filings would recapture the USPTO's 
costs of providing the service. Under this proposal to trifurcate the 
RCE fee structure, the undiscounted fee for a first RCE would be more 
than 50% below cost, and the undiscounted fee for a second RCE would be 
just above cost. The undiscounted fee for third and subsequent RCEs 
would be enough above cost that a third RCE from an applicant with no 
entity status discount, combined with the fees for filing the first two 
RCEs, would cover agency costs for treating all three RCEs.
    Of course, applicants do not file multiple RCEs all at once, and 
the USPTO's costs typically rise over time due to inflationary factors. 
Under the proposed new trifurcated fee structure, by the time an 
applicant pays the third and subsequent RCE fee, it--when combined with 
the first two RCE fees--would likely not cover the USPTO's costs for 
treating all three RCEs. In addition, RCEs filed by applicants with an 
established entitlement to an entity status discount would never 
approach covering the agency's costs, regardless of the number of RCEs 
filed.
    During FY 2011, when the agency's fee schedule set only one RCE 
fee, RCE filings comprised about 30% of all RCE and utility patent 
application filings collectively. In FY 2018, RCE filings comprised 29% 
of the total despite the bifurcated fee structure introduced in FY 
2013. The RCE filing percentage declined to 25% in FY 2021 and 23% in 
FY 2022. It is unlikely these recent decreases resulted from the 
bifurcated fee structure, as the RCE filing percentage was hardly 
affected in the years immediately following FY 2013.
    By reducing RCE filings in favor of appeal or reaching agreement 
with an examiner, the proposed higher fee for RCEs filed subsequent to 
the first RCE should help promote more compact prosecutions. Higher 
fees for successively filed RCEs also address the inequities of 
providing further subsidies to those who make greater use of the patent 
system. As explained in the USPTO's FY 2013 rulemaking at 78 FR 4212, 
4245 (Jan. 18, 2013), because the USPTO set the fee for the first RCE 
below the cost to process it, the agency must recoup that cost 
elsewhere. Since most applicants resolve their issues with the first 
RCE, the agency determined that applicants that file more than one RCE 
are using the patent system more extensively than those who file zero 
or only one RCE. Therefore, the USPTO determined that the cost to 
review applications with multiple RCEs should not be subsidized with 
other back-end fees to the same extent as applications with a first 
RCE, newly filed applications, or other continuing applications. This 
proposal would promote compact prosecution and more appropriately 
dispense the low barrier to entry feature of below cost front end fees.
    In FY 2011, around 70% of RCE applications were for first RCEs, 
with

[[Page 23248]]

the remaining 30% for a second or subsequent RCE. Based on FY 2021 and 
FY 2022 data, approximately 72% of current RCE filings are first RCEs, 
19% are second RCEs, and the remaining 9% are third or subsequent RCEs. 
If this proposal has its intended effect, less than 9% of RCE filings 
would qualify for the highest fee tier for third and subsequent RCEs.
    As previously described, the undiscounted fee for a first RCE would 
be more than 50% below cost, and the undiscounted fee for a second RCE 
would be above cost. Accordingly, undiscounted fees paid for two RCEs 
would be 24% below cost for treating two RCEs. Under this proposal, it 
is not until the third and subsequent undiscounted RCEs, combined with 
fees for the first two RCEs, that the USPTO would recover its costs.
    An applicant in a position to file a third RCE likely has undergone 
years of patent prosecution, and they could avoid the higher fee by 
appealing the examiner's rejection(s) should no agreement be reached to 
put the application in condition for allowance. Prolonged, years-long 
prosecution could result in patent expiration prior to maintenance fee 
payment, especially the third scheduled maintenance fee--another factor 
in the USPTO's proposal to limit excessive RCE filings.
    That said, some applicants may see value in prolonged prosecution. 
Whereas the scope of an issued patent is fixed and avoiding patent 
infringement can be assessed by competitors, a patent that may result 
in the future from a pending application is harder to assess in that 
regard. Accordingly, the USPTO does not expect to eliminate third and 
subsequent RCE filings but envisions that the higher fee will help 
reduce their number.
10. Suspension of Action Fees

                                                           Table 13--Suspension of Action Fees
--------------------------------------------------------------------------------------------------------------------------------------------------------
                                                                                                        Proposed      Dollar      Percent      FY 2022
                  Description                                  Entity type               Current fee      fee         change       change     unit cost
--------------------------------------------------------------------------------------------------------------------------------------------------------
First request for suspension of action.........  Undiscounted..........................         $220         $300          $80           36          n/a
First request for suspension of action.........  Small.................................           88          120           32           36          n/a
First request for suspension of action.........  Micro.................................           44           60           16           36          n/a
Subsequent request for suspension of action....  Undiscounted..........................          220          450          230          105          n/a
Subsequent request for suspension of action....  Small.................................           88          180           92          105          n/a
Subsequent request for suspension of action....  Micro.................................           44           90           46          105          n/a
--------------------------------------------------------------------------------------------------------------------------------------------------------

    The USPTO proposes to create a new tiered fee structure for 
requests for suspension of action under Sec.  1.103(a). Specifically, 
the agency seeks to increase the undiscounted fee for a first 
suspension request to $300 and establish a new fee of $450 
(undiscounted) for the second or subsequent requests in the same 
application. The fee increase for the first request is targeted at 
shifting the cost of the service to those applicants requesting 
suspensions, thereby reducing subsidization from other fees. This 
increase will not affect fees for suspensions of action requested at 
the time of filing CPA under Sec.  1.103(b) or an RCE under Sec.  
1.103(c).
    Currently, Sec.  1.103(a) permits applicants to request a 
suspension of action for a period not exceeding six months for good and 
sufficient cause. The patent examiner typically decides the first 
request for suspension. Second and subsequent requests require 
Technology Center director approval. Due to the heightened approval 
level, these requests cost the USPTO more to process. As such, in order 
to recoup the additional cost of the second and subsequent requests, 
the agency is proposing to charge a higher fee for these requests. 
Additionally, as more requests for suspension are requested and 
granted, the longer the pendency of the application.
    The USPTO receives approximately 2,500 requests for suspension 
under Sec.  1.103(a) each year. Of those requests, 86% are filed by 
undiscounted entities, 12% by small entities, and 2% by micro entities. 
Given the availability of entity discounts, the USPTO believes this fee 
increase will generally have a negligible impact on small and micro 
entities.
11. Terminal Disclaimer Fees

                                                           Table 14--Terminal Disclaimer Fees
--------------------------------------------------------------------------------------------------------------------------------------------------------
                                                                                                        Proposed      Dollar      Percent      FY 2022
                  Description                                  Entity type               Current fee      fee         change       change     unit cost
--------------------------------------------------------------------------------------------------------------------------------------------------------
Terminal disclaimer, filed prior to the first    Undiscounted..........................         $170         $200          $30           18          n/a
 action on the merits.
Terminal disclaimer, filed prior to a final      Undiscounted..........................          170          500          330          194          n/a
 action or allowance.
Terminal disclaimer, filed after final or        Undiscounted..........................          170          800          630          371          n/a
 allowance.
Terminal disclaimer, filed on or after a notice  Undiscounted..........................          170        1,100          930          547          n/a
 of appeal.
Terminal disclaimer, filed in a patented case    Undiscounted..........................          170        1,400        1,230          724          n/a
 or in an application for reissue.
--------------------------------------------------------------------------------------------------------------------------------------------------------

    The USPTO proposes to create a new tiered fee structure for 
terminal disclaimers, specifically splitting Sec.  1.20(d) into two 
parts.
    The first part, in proposed Sec.  1.20(d)(1), would apply only to 
statutory disclaimers under 35 U.S.C. 253(a) and Sec.  1.321(a). As 
explained in MPEP 1490, a statutory disclaimer is a statement in which 
a patent owner relinquishes legal rights to one or more claims of a 
patent. The proposed fee for filing such a statutory disclaimer would 
be increased slightly (from $170 to $179) as part of the across-the-
board fee increase.
    The second part, in proposed Sec.  1.20(d)(2), would apply only to

[[Page 23249]]

terminal disclaimers under 35 U.S.C. 253(b) and Sec.  1.321. As 
explained in MPEP 1490, a terminal disclaimer is a statement in which a 
patentee or applicant disclaims or dedicates to the public the entire 
term or any terminal part of the term of a patent, or of a patent to be 
granted when filed in an application. The proposed fees for filing such 
terminal disclaimers would be increased as described in this section 
and would vary depending on the stage of examination of the application 
in which the terminal disclaimer is filed. In particular, proposed 
Sec.  1.20(d)(2) would create five tiers of fees for filing terminal 
disclaimers, beginning at $200 for the first tier and increasing by 
$300 for each subsequent tier.
    1. The first-tier fee of $200 is set forth in proposed Sec.  
1.20(d)(2)(i), and would be required upon the filing of a terminal 
disclaimer in a non-reissue application before the mailing of a first 
Office action on the merits.
    2. The second-tier fee of $500 is set forth in proposed Sec.  
1.20(d)(2)(ii) and would be required upon the filing of a terminal 
disclaimer in a non-reissue application after the period specified in 
Sec.  1.20(d)(2)(i) and before the mailing date of any final action 
under Sec.  1.113, a notice of allowance under Sec.  1.311, or an 
action that otherwise closes prosecution in the application.
    3. The third-tier fee of $800 is set forth in proposed Sec.  
1.20(d)(2)(iii) and would be required upon the filing of a terminal 
disclaimer in a non-reissue application after the period specified in 
Sec.  1.20(d)(2)(ii) and before any submission of a notice of appeal 
under Sec.  41.31.
    4. The fourth-tier fee of $1,100 is set forth in proposed Sec.  
1.20(d)(2)(iv) and would be required upon the filing of a terminal 
disclaimer in a non-reissue application on or after the submission of a 
notice of appeal under Sec.  41.31.
    5. The fifth-tier fee of $1,400 is set forth in proposed Sec.  
1.20(d)(2)(v) and would be required upon the filing of a terminal 
disclaimer in a patent, or in an application for reissue of a patent.
    These fee increases and the tiered structure in proposed Sec.  
1.20(d)(2) are focused on encouraging applicants to promptly address 
double patenting issues that arise during prosecution, which will then 
promote more efficient patent examination by reducing unnecessary 
costs. The proposals will also foster greater public certainty by 
providing earlier notice of when the patent term will end.
    Patent applications and patents are subject to the doctrine of 
nonstatutory double patenting to prevent both the unjust timewise 
extension of the right to exclude and multiple infringement suits by 
different parties. These situations may arise from the granting of 
multiple patents with patentably indistinct claims where the patents 
have a common owner, applicant, or inventor, or where the patents are 
not commonly owned but are subject to a joint research agreement. See 
MPEP 804 for a more extensive discussion of the doctrine of 
nonstatutory double patenting. An applicant may avoid or overcome a 
nonstatutory double patenting rejection by filing a terminal disclaimer 
in the application or proceeding in which the rejection is anticipated 
or actually made. As explained in MPEP 804.02, the use of a terminal 
disclaimer in overcoming a nonstatutory double patenting rejection is 
in the public interest because it encourages the disclosure of 
additional developments, the earlier filing of applications, and the 
earlier expiration of patents whereby the inventions covered become 
freely available to the public.
    Filing terminal disclaimers early in prosecution reduces the amount 
of time examiners must spend on nonstatutory double patenting analyses. 
Because double patenting rejections are made on a claim-by-claim basis, 
an examiner must compare each claim of the application being examined 
against each claim of the reference patent or application. As explained 
in MPEP 804 subsection II.B, this comparison includes construing the 
reference claims and determining whether an anticipation analysis or 
obviousness analysis is appropriate for each examined claim. Examiners 
may spend a substantial amount of time on these analyses and must 
repeat the process for each reference patent or application used in a 
double patenting rejection. If an applicant files terminal disclaimers 
prior to the first action on the merits, the examiner can avoid the 
time-intensive double patenting analyses that would otherwise be 
required. Further, if an applicant does not file a terminal disclaimer 
after a rejection has been made, the examiner will often have to repeat 
the analysis one or more times. Double patenting rejections may need to 
be modified throughout prosecution based on amendments to the claims 
under examination and, in the case of a provisional rejection, 
amendments to the claims of the reference application. If a terminal 
disclaimer is not promptly filed, the examiner may have to repeat the 
analysis in a final rejection and at appeal, and the time spent 
repeating this analysis detracts from the total time available to 
review the application for other issues such as patentability over the 
art and compliance with 35 U.S.C. 112.
    Terminal disclaimers filed in patents and applications for reissue 
are subject to the highest fee tier in proposed Sec.  1.20(d)(2)(v) to 
more strongly encourage the earlier filing of such disclaimers given 
the public interest in knowing exactly when the term will end, 
particularly as disclaimer filings during this time period are often 
motivated by the patent owner's plans to assert the patent. Relatively 
few disclaimers are filed during this time period (approximately 40 to 
80 a year, or about 1% of all terminal disclaimers). Moreover, terminal 
disclaimers in patented cases require additional processing such as 
printing the terminal disclaimer data in the Official Gazette; and 
incorporating the notice of the terminal disclaimer published in the 
Official Gazette into the specification of the patent as required by 
Sec.  1.321(a). See MPEP 1490(IV) for more information about this 
additional processing by the USPTO's Certificates of Correction Branch.
    Other than requiring payment of the fifth-tier fee in Sec.  
1.20(d)(2)(v), this proposed rule will not change the processing of 
terminal disclaimers after issuance or the conditions under which a 
terminal disclaimer may be filed in a patent when the patent is 
involved in a post-grant proceeding at the USPTO such as a 
reexamination or a proceeding before the Patent Trial and Appeal Board 
under part 42 of 37 CFR (e.g., inter partes review). See MPEP 1490(III) 
for more information about filing a disclaimer in a patent or 
reexamination proceeding.
    Based on workload numbers from the last five full fiscal years (FY 
2018 through FY 2022), about 63,000 terminal disclaimers are filed 
annually. Of these, about 6% would incur the first-tier fee in Sec.  
1.20(d)(2)(i), about 65% would incur the second-tier fee in Sec.  
1.20(d)(2)(ii), about 28% would incur the third-tier fee in Sec.  
1.20(d)(2)(iii), slightly less than 1% would incur the fourth-tier fee 
in Sec.  1.20(d)(2)(iv), and approximately 0.1% would incur the fifth-
tier fee in proposed Sec.  1.20(d)(2)(v). After implementation of the 
proposed fees, the USPTO anticipates that applicants will file earlier 
terminal disclaimers, particularly those currently filed in the time 
periods that fall into the third and fourth tiers.
    While these fees do not qualify for entity discounts, the proposed 
fees are not expected to disproportionately impact small and micro 
entities based on current trends in filing continuation applications 
and terminal disclaimers. For instance, because about 80% of

[[Page 23250]]

continuation applications have a patented parent, in general they may 
be more likely than non-continuing applications to raise double 
patenting issues requiring filing of a terminal disclaimer. Thus, it is 
reasonable to expect that terminal disclaimer filings would be somewhat 
proportional to continuation filings (the correlation is not exact, 
because double patenting may also arise in noncontinuing applications, 
as explained in MPEP 804). This expectation is supported by the USPTO's 
workload data for FY 2021 and FY 2022, which indicate that small 
entities file about 25% of continuation applications and about 26% of 
terminal disclaimers each year. Micro entities are much less affected, 
in that they file about 8% of continuation applications but only about 
1% of terminal disclaimers each year. Thus, the anticipated impact of 
the proposed terminal disclaimer fees on small entities is the same as 
what would be expected based on their respective share of continuation 
application filings, and micro entities are much less likely to be 
impacted.
    The USPTO also anticipates that the proposed fees will be 
relatively technology-neutral. Slightly higher impacts may occur in 
technology areas examined in Technology Center 1600 (biotechnology and 
organic chemistry) and Technology Center 2400 (computer networks, 
multiplex, cable, and cryptography/security).
12. Unintentional Delay Petition Fees

                                                       Table 15--Unintentional Delay Petition Fees
--------------------------------------------------------------------------------------------------------------------------------------------------------
                                                                                                        Proposed      Dollar      Percent      FY 2022
                  Description                                  Entity type               Current fee      fee         change       change     unit cost
--------------------------------------------------------------------------------------------------------------------------------------------------------
Petition for the delayed payment of the fee for  Undiscounted..........................       $2,100       $2,200         $100            5         $161
 maintaining a patent in force, delay less than
 or equal to two years.
Petition for the delayed payment of the fee for  Small.................................          840          880           40            5          161
 maintaining a patent in force, delay less than
 or equal to two years.
Petition for the delayed payment of the fee for  Micro.................................          420          440           20            5          161
 maintaining a patent in force, delay less than
 or equal to two years.
Petition for the delayed payment of the fee for  Undiscounted..........................        2,100        3,000          900           43          n/a
 maintaining a patent in force, delay greater
 than two years.
Petition for the delayed payment of the fee for  Small.................................          840        1,200          360           43          n/a
 maintaining a patent in force, delay greater
 than two years.
Petition for the delayed payment of the fee for  Micro.................................          420          600          180           43          n/a
 maintaining a patent in force, delay greater
 than two years.
Petition for revival of an abandoned             Undiscounted..........................        2,100        2,200          100            5          376
 application for a patent, for the delayed
 payment of the fee for issuing each patent, or
 for the delayed response by the patent owner
 in any reexamination proceeding, delay less
 than or equal to two years.
Petition for revival of an abandoned             Small.................................          840          880           40            5          376
 application for a patent, for the delayed
 payment of the fee for issuing each patent, or
 for the delayed response by the patent owner
 in any reexamination proceeding, delay less
 than or equal to two years.
Petition for revival of an abandoned             Micro.................................          420          440           20            5          376
 application for a patent, for the delayed
 payment of the fee for issuing each patent, or
 for the delayed response by the patent owner
 in any reexamination proceeding, delay less
 than or equal to two years.
Petition for revival of an abandoned             Undiscounted..........................        2,100        3,000          900           43          n/a
 application for a patent, for the delayed
 payment of the fee for issuing each patent, or
 for the delayed response by the patent owner
 in any reexamination proceeding, delay greater
 than two years.
Petition for revival of an abandoned             Small.................................          840        1,200          360           43          n/a
 application for a patent, for the delayed
 payment of the fee for issuing each patent, or
 for the delayed response by the patent owner
 in any reexamination proceeding, delay greater
 than two years.
Petition for revival of an abandoned             Micro.................................          420          600          180           43          n/a
 application for a patent, for the delayed
 payment of the fee for issuing each patent, or
 for the delayed response by the patent owner
 in any reexamination proceeding, delay greater
 than two years.
Petition for the delayed submission of a         Undiscounted..........................        2,100        2,200          100            5          376
 priority or benefit claim, delay less than or
 equal to two years.
Petition for the delayed submission of a         Small.................................          840          880           40            5          376
 priority or benefit claim, delay less than or
 equal to two years.

[[Page 23251]]

 
Petition for the delayed submission of a         Micro.................................          420          440           20            5          376
 priority or benefit claim, delay less than or
 equal to two years.
Petition for the delayed submission of a         Undiscounted..........................        2,100        3,000          900           43          n/a
 priority or benefit claim, delay greater than
 two years.
Petition for the delayed submission of a         Small.................................          840        1,200          360           43          n/a
 priority or benefit claim, delay greater than
 two years.
Petition for the delayed submission of a         Micro.................................          420          600          180           43          n/a
 priority or benefit claim, delay greater than
 two years.
Petition to excuse applicant's failure to act    Undiscounted..........................        2,100        2,200          100            5          n/a
 within prescribed time limits in an
 international design application, delay less
 than or equal to two years.
Petition to excuse applicant's failure to act    Small.................................          840          880           40            5          n/a
 within prescribed time limits in an
 international design application, delay less
 than or equal to two years.
Petition to excuse applicant's failure to act    Micro.................................          420          440           20            5          n/a
 within prescribed time limits in an
 international design application, delay less
 than or equal to two years.
Petition to excuse applicant's failure to act    Undiscounted..........................        2,100        3,000          900           43          n/a
 within prescribed time limits in an
 international design application, delay
 greater than two years.
Petition to excuse applicant's failure to act    Small.................................          840        1,200          360           43          n/a
 within prescribed time limits in an
 international design application, delay
 greater than two years.
Petition to excuse applicant's failure to act    Micro.................................          420          600          180           43          n/a
 within prescribed time limits in an
 international design application, delay
 greater than two years.
--------------------------------------------------------------------------------------------------------------------------------------------------------

    During FY 2020, the USPTO issued a notice to clarify when 
additional information is required to support a petition for 
unintentional delay. See Clarification of the Practice for Requiring 
Additional Information in Petitions Filed in Patent Applications and 
Patents Based on Unintentional Delay, 85 FR 12222 (March 2, 2020) (2020 
Notice). Petitions based on unintentional delay include petitions 
seeking revival of an abandoned application, acceptance of a delayed 
maintenance fee payment, and acceptance of a delayed priority or 
benefit claim. The 2020 Notice clarified that ``any applicant filing a 
petition to revive an abandoned application under Sec.  1.137 more than 
two years after the date of abandonment, any patentee filing a petition 
to accept a delayed maintenance fee under Sec.  1.378 more than two 
years after the date of expiration for nonpayment of a maintenance fee, 
and any applicant or patent owner filing a petition to accept a delayed 
priority or benefit claim under Sec.  1.55(e) or Sec.  1.78(c) and (e) 
more than two years after the due date of the priority or benefit claim 
should expect to be required to provide an additional explanation of 
the circumstances surrounding the delay that establishes that the 
entire delay was unintentional.'' Id at 12223.
    As the evidentiary requirements for these petitions have increased, 
the costs to review and treat these petitions have also increased due 
to the higher level of review needed to consider the additional 
explanation. Accordingly, the USPTO seeks to create a new higher fee 
for petitions based on unintentional delay over two years to recover 
their additional associated costs. The higher fee should encourage 
timely petition filings and avoid delays in the examination process. 
The new higher fee would apply to petitions under Sec.  1.78(c) and (e) 
to accept a delayed benefit claim submitted more than two years after 
the date the benefit claim was due; under Sec.  1.55(e) to accept a 
delayed priority claim more than two years after the date the foreign 
priority claim was due; under Sec.  1.137 to revive an abandoned 
application or reexamination proceeding more than two years after the 
date of abandonment; under Sec.  1.378 to seek reinstatement of an 
expired patent more than two years after the date of expiration for 
nonpayment of a maintenance fee; and under Sec.  1.1051 to excuse an 
applicant's failure to act within prescribed time limits in an 
international design application.
    The USPTO receives approximately 12,000 petitions each year based 
upon the unintentional standard (FY 2021, 12,752 petitions; FY 2022, 
11,755 petitions). About 10% of these petitions (1,200) have a delay of 
more than two years. Therefore, the higher cost for petitions having a 
delay of greater than two years should not have a significant impact on 
patent applicants overall. The increased fee will help ensure those 
applicants requesting the service pay its costs, thereby reducing 
subsidization from other patent applicants.
13. America Invents Act Trial Fees

                                                                Table 16--AIA Trial Fees
--------------------------------------------------------------------------------------------------------------------------------------------------------
                                                                                                        Proposed      Dollar      Percent      FY 2022
                  Description                                  Entity type               Current fee      fee         change       change     unit cost
--------------------------------------------------------------------------------------------------------------------------------------------------------
Inter partes review request fee--Up to 20        Undiscounted..........................      $19,000      $23,750       $4,750           25      $21,980
 claims.
Inter partes review post-institution fee--Up to  Undiscounted..........................       22,500       28,125        5,625           25       37,563
 20 claims.

[[Page 23252]]

 
Inter partes review request of each claim in     Undiscounted..........................          375          470           95           25          n/a
 excess of 20.
Inter partes post-institution request of each    Undiscounted..........................          750          940          190           25          n/a
 claim in excess of 20.
Post-grant or covered business method review     Undiscounted..........................       20,000       25,000        5,000           25       37,683
 request fee--Up to 20 claims.
Post-grant or covered business method review     Undiscounted..........................       27,500       34,375        6,875           25       49,198
 post-institution fee--Up to 20 claims.
Post-grant or covered business method review     Undiscounted..........................          475          595          120           25          n/a
 request of each claim in excess of 20.
Post-grant or covered business method review     Undiscounted..........................        1,050        1,315          265           25          n/a
 post-institution request of each claim in
 excess of 20.
--------------------------------------------------------------------------------------------------------------------------------------------------------

    The USPTO proposes increasing existing fees for AIA trial 
proceedings by 25%. Under 35 U.S.C. 311(a) and 321(a), the USPTO 
Director must establish reasonable fees for inter partes and post-grant 
review in relation to their aggregate costs. The proposed fee increases 
will better align the fee rates charged to petitioners with the actual 
costs borne by the USPTO in providing these proceedings. This proposed 
change will help the PTAB maintain the appropriate level of judicial 
and administrative resources to continue providing high-quality and 
timely decisions for AIA trials.
14. Request for Review of a PTAB Decision by the Director

                                          Table 17--Request for Review of a PTAB Decision by the Director Fees
--------------------------------------------------------------------------------------------------------------------------------------------------------
                                                                                                        Proposed      Dollar      Percent      FY 2022
                  Description                                  Entity type               Current fee      fee         change       change     unit cost
--------------------------------------------------------------------------------------------------------------------------------------------------------
Request for review of a PTAB decision by the     Undiscounted..........................          New         $440          n/a          n/a          n/a
 Director.
--------------------------------------------------------------------------------------------------------------------------------------------------------

    The USPTO proposes to charge a new fee in AIA trial proceedings 
under part 42 to parties requesting Director Review of the PTAB's: (1) 
decision whether to institute a trial; (2) final written decision; or 
(3) decision granting a request for rehearing from either the Board's 
decision whether to institute trial or the Board's final written 
decision. The proposed fee is set at the same rate as a petition to the 
Chief Judge in ex parte appeals and is designed to partially recover 
the USPTO's costs for conducting Director Reviews. The proposed fee is 
part of the agency's ongoing efforts to formalize the Director Review 
process developed in response to the Supreme Court's decision in United 
States v. Arthrex, Inc. and furthers the USPTO's goals of promoting 
innovation through consistent, transparent decision-making and the 
issuance and maintenance of reliable patents.
    More specifically, the Director of the USPTO is a statutory member 
of the PTAB. See 35 U.S.C. 6(a). On June 21, 2021, the Supreme Court 
issued a decision in United States v. Arthrex, Inc., and explained that 
``constitutional principles chart a clear course: Decisions by 
[administrative patent judges (APJs)] must be subject to review by the 
Director.'' See 141 S. Ct. 1970, 1986 (2021). Following the statutory 
authority provided to the Director by Congress and the constitutional 
principles explained by the Supreme Court, the USPTO set forth an 
interim process for Director Review, which has been updated 
periodically. The agency sought public feedback on the interim process 
and is using feedback to promulgate rules.
    As a part of the interim process, when the USPTO receives a 
Director Review request from a party to an AIA proceeding, the request 
is processed and routed to an advisory committee that assists with 
Director Review. The committee includes at least 11 representatives 
from various USPTO business units who serve at the Director's 
discretion. Members independently review each request and associated 
case materials, and the committee meets regularly to recommend which 
requests for review should be granted. The Director considers each 
request, its case materials, and the committee's recommendation in 
determining whether to grant or deny review. When the Director 
determines to grant review, personnel from various USPTO business units 
assist in case processing and in issuing and publicizing the Director 
Review decision.
    Given the number of agency personnel involved in Director Review, 
the USPTO expects its costs to be significantly higher than the 
proposed fee. The agency plans to formally capture and evaluate these 
costs in the future.

D. Amendment to Obtaining a Refund Through Express Abandonment

    The USPTO proposes amending paragraph (d) of Sec.  1.138, which 
permits an applicant to obtain a refund of the search and excess claims 
fees that were paid in an application by submitting a petition and 
declaration of express abandonment before an examination has been made 
of the application. The current rule permits such refunds only in 
nonprovisional applications filed under 35 U.S.C. 111(a) and Sec.  
1.53(b). The proposed amendment would expand the applicability of the 
rule to permit such refunds in national stage applications filed under 
35 U.S.C. 371.
    The amendment would also clarify that refunds of search and excess 
claim fee payments under these provisions are limited to the search and 
excess claim fees set forth in Sec.  1.16 (which apply to applications 
filed under 35 U.S.C. 111(a) and Sec.  1.53(b)) and search and excess 
claim fees set forth in Sec.  1.492 (which apply to national stage

[[Page 23253]]

applications filed under 35 U.S.C. 371). No refunds would be permitted 
of any search fees paid under Sec.  1.445 during the international 
stage of an application filed under the PCT, even if such an 
application later enters the national stage under 35 U.S.C. 371.
    The petition process and the conditions under which a refund will 
be granted will not otherwise change. See MPEP 711.01 subsection III 
for more information. The proposed amendment would put national stage 
applications on the same footing as applications filed under 35 U.S.C. 
111(a) when an application is expressly abandoned prior to examination.

VI. Discussion of Specific Rules

    The following part shows the Code of Federal Regulations proposed 
fee amendments. The discussion below includes all proposed fee 
amendments and all proposed changes to the CFR text.
    Title 37 of the CFR, parts 1, 41, and 42, are proposed to be 
amended as follows:

Section 1.16

    Section 1.16 is proposed to be amended by revising paragraphs (a) 
through (s) and (u) to set forth national application filing, search, 
examination, and related fees as authorized under section 10 of the 
AIA. The changes to the fee amounts indicated in Sec.  1.16 are shown 
in table 18.

                                       Table 18--Section 1.16 Fee Changes
----------------------------------------------------------------------------------------------------------------
                                Fee                                                                    Proposed
         CFR section            code        Description             Entity type         Current fee      fee
----------------------------------------------------------------------------------------------------------------
1.16(a).....................     1011  Basic filing fee--    Undiscounted.............         $320         $350
                                        Utility (paper
                                        filing also
                                        requires non-
                                        electronic filing
                                        fee under 1.16(t)).
1.16(a).....................     2011  Basic filing fee--    Small....................          128          140
                                        Utility (paper
                                        filing also
                                        requires non-
                                        electronic filing
                                        fee under 1.16(t)).
1.16(a).....................     3011  Basic filing fee--    Micro....................           64           70
                                        Utility (paper
                                        filing also
                                        requires non-
                                        electronic filing
                                        fee under 1.16(t)).
1.16(a).....................     4011  Basic filing fee--    Small....................           64           70
                                        Utility (electronic
                                        filing for small
                                        entities).
1.16(b).....................     1012  Basic filing fee--    Undiscounted.............          220          300
                                        Design.
1.16(b).....................     2012  Basic filing fee--    Small....................           88          120
                                        Design.
1.16(b).....................     3012  Basic filing fee--    Micro....................           44           60
                                        Design.
1.16(b).....................     1017  Basic filing fee--    Undiscounted.............          220          300
                                        Design CPA.
1.16(b).....................     2017  Basic filing fee--    Small....................           88          120
                                        Design CPA.
1.16(b).....................     3017  Basic filing fee--    Micro....................           44           60
                                        Design CPA.
1.16(c).....................     1013  Basic filing fee--    Undiscounted.............          220          240
                                        Plant.
1.16(c).....................     2013  Basic filing fee--    Small....................           88           96
                                        Plant.
1.16(c).....................     3013  Basic filing fee--    Micro....................           44           48
                                        Plant.
1.16(d).....................     1005  Provisional           Undiscounted.............          300          315
                                        application filing
                                        fee.
1.16(d).....................     2005  Provisional           Small....................          120          126
                                        application filing
                                        fee.
1.16(d).....................     3005  Provisional           Micro....................           60           63
                                        application filing
                                        fee.
1.16(e).....................     1014  Basic filing fee--    Undiscounted.............          320          350
                                        Reissue.
1.16(e).....................     2014  Basic filing fee--    Small....................          128          140
                                        Reissue.
1.16(e).....................     3014  Basic filing fee--    Micro....................           64           70
                                        Reissue.
1.16(e).....................     1019  Basic filing fee--    Undiscounted.............          320          350
                                        Reissue (Design
                                        CPA).
1.16(e).....................     2019  Basic filing fee--    Small....................          128          140
                                        Reissue (Design
                                        CPA).
1.16(e).....................     3019  Basic filing fee--    Micro....................           64           70
                                        Reissue (Design
                                        CPA).
1.16(f).....................     1051  Surcharge--Late       Undiscounted.............          160          170
                                        filing fee, search
                                        fee, examination
                                        fee, inventor's
                                        oath or
                                        declaration, or
                                        application filed
                                        without at least
                                        one claim or by
                                        reference.
1.16(f).....................     2051  Surcharge--Late       Small....................           64           68
                                        filing fee, search
                                        fee, examination
                                        fee, inventor's
                                        oath or
                                        declaration, or
                                        application filed
                                        without at least
                                        one claim or by
                                        reference.
1.16(f).....................     3051  Surcharge--Late       Micro....................           32           34
                                        filing fee, search
                                        fee, examination
                                        fee, inventor's
                                        oath or
                                        declaration, or
                                        application filed
                                        without at least
                                        one claim or by
                                        reference.
1.16(g).....................     1052  Surcharge--Late       Undiscounted.............           60           65
                                        provisional filing
                                        fee or cover sheet.
1.16(g).....................     2052  Surcharge--Late       Small....................           24           26
                                        provisional filing
                                        fee or cover sheet.
1.16(g).....................     3052  Surcharge--Late       Micro....................           12           13
                                        provisional filing
                                        fee or cover sheet.
1.16(h).....................     1201  Each independent      Undiscounted.............          480          600
                                        claim in excess of
                                        three.
1.16(h).....................     2201  Each independent      Small....................          192          240
                                        claim in excess of
                                        three.
1.16(h).....................     3201  Each independent      Micro....................           96          120
                                        claim in excess of
                                        three.
1.16(h).....................     1204  Each reissue          Undiscounted.............          480          600
                                        independent claim
                                        in excess of three.
1.16(h).....................     2204  Each reissue          Small....................          192          240
                                        independent claim
                                        in excess of three.
1.16(h).....................     3204  Each reissue          Micro....................           96          120
                                        independent claim
                                        in excess of three.
1.16(i).....................     1202  Each claim in excess  Undiscounted.............          100          200
                                        of 20.
1.16(i).....................     2202  Each claim in excess  Small....................           40           80
                                        of 20.
1.16(i).....................     3202  Each claim in excess  Micro....................           20           40
                                        of 20.
1.16(i).....................     1205  Each reissue claim    Undiscounted.............          100          200
                                        in excess of 20.
1.16(i).....................     2205  Each reissue claim    Small....................           40           80
                                        in excess of 20.
1.16(i).....................     3205  Each reissue claim    Micro....................           20           40
                                        in excess of 20.
1.16(j).....................     1203  Multiple dependent    Undiscounted.............          860          905
                                        claim.
1.16(j).....................     2203  Multiple dependent    Small....................          344          362
                                        claim.
1.16(j).....................     3203  Multiple dependent    Micro....................          172          181
                                        claim.
1.16(k).....................     1111  Utility search fee..  Undiscounted.............          700          770
1.16(k).....................     2111  Utility search fee..  Small....................          280          308
1.16(k).....................     3111  Utility search fee..  Micro....................          140          154
1.16(l).....................     1112  Design search fee or  Undiscounted.............          160          300
                                        Design CPA search
                                        fee.

[[Page 23254]]

 
1.16(l).....................     2112  Design search fee or  Small....................           64          120
                                        Design CPA search
                                        fee.
1.16(l).....................     3112  Design search fee or  Micro....................           32           60
                                        Design CPA search
                                        fee.
1.16(m).....................     1113  Plant search fee....  Undiscounted.............          440          485
1.16(m).....................     2113  Plant search fee....  Small....................          176          194
1.16(m).....................     3113  Plant search fee....  Micro....................           88           97
1.16(n).....................     1114  Reissue search fee    Undiscounted.............          700          770
                                        or Reissue (Design
                                        CPA) search fee.
1.16(n).....................     2114  Reissue search fee    Small....................          280          308
                                        or Reissue (Design
                                        CPA) search fee.
1.16(n).....................     3114  Reissue search fee    Micro....................          140          154
                                        or Reissue (Design
                                        CPA) search fee.
1.16(o).....................     1311  Utility examination   Undiscounted.............          800          880
                                        fee.
1.16(o).....................     2311  Utility examination   Small....................          320          352
                                        fee.
1.16(o).....................     3311  Utility examination   Micro....................          160          176
                                        fee.
1.16(p).....................     1312  Design examination    Undiscounted.............          640          700
                                        fee or Design CPA
                                        examination fee.
1.16(p).....................     2312  Design examination    Small....................          256          280
                                        fee or Design CPA
                                        examination fee.
1.16(p).....................     3312  Design examination    Micro....................          128          140
                                        fee or Design CPA
                                        examination fee.
1.16(q).....................     1313  Plant examination     Undiscounted.............          660          725
                                        fee.
1.16(q).....................     2313  Plant examination     Small....................          264          290
                                        fee.
1.16(q).....................     3313  Plant examination     Micro....................          132          145
                                        fee.
1.16(r).....................     1314  Reissue examination   Undiscounted.............        2,320        2,550
                                        fee or Reissue
                                        (Design CPA)
                                        examination fee.
1.16(r).....................     2314  Reissue examination   Small....................          928        1,020
                                        fee or Reissue
                                        (Design CPA)
                                        examination fee.
1.16(r).....................     3314  Reissue examination   Micro....................          464          510
                                        fee or Reissue
                                        (Design CPA)
                                        examination fee.
1.16(s).....................     1082  Design application    Undiscounted.............          420          440
                                        size fee--for each
                                        additional 50
                                        sheets that exceeds
                                        100 sheets.
1.16(s).....................     2082  Design application    Small....................          168          176
                                        size fee--for each
                                        additional 50
                                        sheets that exceeds
                                        100 sheets.
1.16(s).....................     3082  Design application    Micro....................           84           88
                                        size fee--for each
                                        additional 50
                                        sheets that exceeds
                                        100 sheets.
1.16(s).....................     1083  Plant application     Undiscounted.............          420          440
                                        size fee--for each
                                        additional 50
                                        sheets that exceeds
                                        100 sheets.
1.16(s).....................     2083  Plant application     Small....................          168          176
                                        size fee--for each
                                        additional 50
                                        sheets that exceeds
                                        100 sheets.
1.16(s).....................     3083  Plant application     Micro....................           84           88
                                        size fee--for each
                                        additional 50
                                        sheets that exceeds
                                        100 sheets.
1.16(s).....................     1085  Provisional           Undiscounted.............          420          440
                                        application size
                                        fee--for each
                                        additional 50
                                        sheets that exceeds
                                        100 sheets.
1.16(s).....................     2085  Provisional           Small....................          168          176
                                        application size
                                        fee--for each
                                        additional 50
                                        sheets that exceeds
                                        100 sheets.
1.16(s).....................     3085  Provisional           Micro....................           84           88
                                        application size
                                        fee--for each
                                        additional 50
                                        sheets that exceeds
                                        100 sheets.
1.16(s).....................     1084  Reissue application   Undiscounted.............          420          440
                                        size fee--for each
                                        additional 50
                                        sheets that exceeds
                                        100 sheets.
1.16(s).....................     2084  Reissue application   Small....................          168          176
                                        size fee--for each
                                        additional 50
                                        sheets that exceeds
                                        100 sheets.
1.16(s).....................     3084  Reissue application   Micro....................           84           88
                                        size fee--for each
                                        additional 50
                                        sheets that exceeds
                                        100 sheets.
1.16(s).....................     1081  Utility application   Undiscounted.............          420          440
                                        size fee--for each
                                        additional 50
                                        sheets that exceeds
                                        100 sheets.
1.16(s).....................     2081  Utility application   Small....................          168          176
                                        size fee--for each
                                        additional 50
                                        sheets that exceeds
                                        100 sheets.
1.16(s).....................     3081  Utility application   Micro....................           84           88
                                        size fee--for each
                                        additional 50
                                        sheets that exceeds
                                        100 sheets.
1.16(u).....................     1054  Non-DOCX Filing       Undiscounted.............          400          420
                                        Surcharge Fee.
1.16(u).....................     2054  Non-DOCX Filing       Small....................          160          168
                                        Surcharge Fee.
1.16(u).....................     3054  Non-DOCX Filing       Micro....................           80           84
                                        Surcharge Fee.
----------------------------------------------------------------------------------------------------------------

Section 1.17

    Section 1.17 is proposed to be amended by revising paragraphs (a), 
(c) through (i), (k), (m), and (o) through (t); and adding paragraphs 
(u), (v), (w), and (x) to set forth application processing fees as 
authorized under section 10 of the AIA. The changes to the fee amounts 
indicated in Sec.  1.17 are shown in table 19.
    The USPTO proposes to revise the introductory text of paragraph (a) 
to exclude provisional applications filed under 1.53(c).
    The USPTO proposes to revise paragraph (e)(2) to include only the 
second request for continued examination and adding paragraph (e)(3) to 
create a fee for third and subsequent requests for continued 
examination. The USPTO proposes to revise paragraph (g) by splitting it 
into two paragraphs (g)(1) and (2). Proposed paragraph (g)(1) would be 
the same as existing paragraph (g) except for the removal of Sec.  
1.103(a) from its coverage. Proposed new paragraphs (g)(2)(i) and (ii) 
would specify the fees for filing a first request pursuant to Sec.  
1.103(a) respectively. The USPTO proposes to add paragraphs (m)(1) 
through (3) to

[[Page 23255]]

create tiered fees for unintentionally delayed petitions based on the 
length of the delay.
    The USPTO proposes to add paragraphs (u) through (x). Paragraph (u) 
creates a lower fee for extension fees pursuant to Sec.  1.136(a) in 
provisional applications filed under Sec.  1.53(c). Paragraph (v) 
creates fees for information disclosure statements filed under Sec.  
1.97. Paragraph (w) creates fees for presenting a benefit claim in a 
nonprovisional application under 35 U.S.C. 120, 121, 365(c), or 386(c) 
and Sec.  1.78(d). Paragraph (x) creates a fee for the After Final 
Consideration Pilot Program 2.0.

                                       Table 19--Section 1.17 Fee Changes
----------------------------------------------------------------------------------------------------------------
                                 Fee                                                                   Proposed
         CFR section             code        Description             Entity type        Current fee      fee
----------------------------------------------------------------------------------------------------------------
1.17(a)(1)...................     1251  Extension for         Undiscounted............         $220         $230
                                         response within
                                         first month, except
                                         provisional
                                         applications.
1.17(a)(1)...................     2251  Extension for         Small...................           88           92
                                         response within
                                         first month, except
                                         provisional
                                         applications.
1.17(a)(1)...................     3251  Extension for         Micro...................           44           46
                                         response within
                                         first month, except
                                         provisional
                                         applications.
1.17(a)(2)...................     1252  Extension for         Undiscounted............          640          670
                                         response within
                                         second month,
                                         except provisional
                                         applications.
1.17(a)(2)...................     2252  Extension for         Small...................          256          268
                                         response within
                                         second month,
                                         except provisional
                                         applications.
1.17(a)(2)...................     3252  Extension for         Micro...................          128          134
                                         response within
                                         second month,
                                         except provisional
                                         applications.
1.17(a)(3)...................     1253  Extension for         Undiscounted............        1,480        1,555
                                         response within
                                         third month, except
                                         provisional
                                         applications.
1.17(a)(3)...................     2253  Extension for         Small...................          592          622
                                         response within
                                         third month, except
                                         provisional
                                         applications.
1.17(a)(3)...................     3253  Extension for         Micro...................          296          311
                                         response within
                                         third month, except
                                         provisional
                                         applications.
1.17(a)(4)...................     1254  Extension for         Undiscounted............        2,320        2,435
                                         response within
                                         fourth month,
                                         except provisional
                                         applications.
1.17(a)(4)...................     2254  Extension for         Small...................          928          974
                                         response within
                                         fourth month,
                                         except provisional
                                         applications.
1.17(a)(4)...................     3254  Extension for         Micro...................          464          487
                                         response within
                                         fourth month,
                                         except provisional
                                         applications.
1.17(a)(5)...................     1255  Extension for         Undiscounted............        3,160        3,320
                                         response within
                                         fifth month, except
                                         provisional
                                         applications.
1.17(a)(5)...................     2255  Extension for         Small...................        1,264        1,328
                                         response within
                                         fifth month, except
                                         provisional
                                         applications.
1.17(a)(5)...................     3255  Extension for         Micro...................          632          664
                                         response within
                                         fifth month, except
                                         provisional
                                         applications.
1.17(c)......................     1817  Request for           Undiscounted............        4,200        4,410
                                         prioritized
                                         examination.
1.17(c)......................     2817  Request for           Small...................        1,680        1,764
                                         prioritized
                                         examination.
1.17(c)......................     3817  Request for           Micro...................          840          882
                                         prioritized
                                         examination.
1.17(d)......................     1819  Correction of         Undiscounted............          640          670
                                         inventorship after
                                         first action on
                                         merits.
1.17(d)......................     2819  Correction of         Small...................          256          268
                                         inventorship after
                                         first action on
                                         merits.
1.17(d)......................     3819  Correction of         Micro...................          128          134
                                         inventorship after
                                         first action on
                                         merits.
1.17(e)(1)...................     1801  Request for           Undiscounted............        1,360        1,500
                                         continued
                                         examination (RCE)--
                                         1st request (see 37
                                         CFR 1.114).
1.17(e)(1)...................     2801  Request for           Small...................          544          600
                                         continued
                                         examination (RCE)--
                                         1st request (see 37
                                         CFR 1.114).
1.17(e)(1)...................     3801  Request for           Micro...................          272          300
                                         continued
                                         examination (RCE)--
                                         1st request (see 37
                                         CFR 1.114).
1.17(e)(2)...................     1820  Request for           Undiscounted............        2,000        2,500
                                         continued
                                         examination (RCE)--
                                         2nd request (see 37
                                         CFR 1.114).
1.17(e)(2)...................     2820  Request for           Small...................          800        1,000
                                         continued
                                         examination (RCE)--
                                         2nd request (see 37
                                         CFR 1.114).
1.17(e)(2)...................     3820  Request for           Micro...................          400          500
                                         continued
                                         examination (RCE)--
                                         2nd request (see 37
                                         CFR 1.114).
1.17(e)(3)...................      New  Request for           Undiscounted............        2,000        3,600
                                         continued
                                         examination (RCE)--
                                         3rd and subsequent
                                         request (see 37 CFR
                                         1.114).
1.17(e)(3)...................      New  Request for           Small...................          800        1,440
                                         continued
                                         examination (RCE)--
                                         3rd and subsequent
                                         request (see 37 CFR
                                         1.114).
1.17(e)(3)...................      New  Request for           Micro...................          400          720
                                         continued
                                         examination (RCE)--
                                         3rd and subsequent
                                         request (see 37 CFR
                                         1.114).
1.17(f)......................     1462  Petitions requiring   Undiscounted............          420          440
                                         the petition fee
                                         set forth in 37 CFR
                                         1.17(f) (Group I).
1.17(f)......................     2462  Petitions requiring   Small...................          168          176
                                         the petition fee
                                         set forth in 37 CFR
                                         1.17(f) (Group I).
1.17(f)......................     3462  Petitions requiring   Micro...................           84           88
                                         the petition fee
                                         set forth in 37 CFR
                                         1.17(f) (Group I).
1.17(g)(1)...................     1463  Petitions requiring   Undiscounted............          220          230
                                         the petition fee
                                         set forth in 37 CFR
                                         1.17(g) (Group II),
                                         except suspension
                                         of action.

[[Page 23256]]

 
1.17(g)(1)...................     2463  Petitions requiring   Small...................           88           92
                                         the petition fee
                                         set forth in 37 CFR
                                         1.17(g) (Group II),
                                         except suspension
                                         of action.
1.17(g)(1)...................     3463  Petitions requiring   Micro...................           44           46
                                         the petition fee
                                         set forth in 37 CFR
                                         1.17(g) (Group II),
                                         except suspension
                                         of action.
1.17(g)(2)(i)................      New  First request for     Undiscounted............          220          300
                                         suspension of
                                         action.
1.17(g)(2)(i)................      New  First request for     Small...................           88          120
                                         suspension of
                                         action.
1.17(g)(2)(i)................      New  First request for     Micro...................           44           60
                                         suspension of
                                         action.
1.17(g)(2)(ii)...............      New  Subsequent request    Undiscounted............          220          450
                                         for suspension of
                                         action.
1.17(g)(2)(ii)...............      New  Subsequent request    Small...................           88          180
                                         for suspension of
                                         action.
1.17(g)(2)(ii)...............      New  Subsequent request    Micro...................           44           90
                                         for suspension of
                                         action.
1.17(h)......................     1464  Petitions requiring   Undiscounted............          140          145
                                         the petition fee
                                         set forth in 37 CFR
                                         1.17(h) (Group III).
1.17(h)......................     2464  Petitions requiring   Small...................           56           58
                                         the petition fee
                                         set forth in 37 CFR
                                         1.17(h) (Group III).
1.17(h)......................     3464  Petitions requiring   Micro...................           28           29
                                         the petition fee
                                         set forth in 37 CFR
                                         1.17(h) (Group III).
1.17(i)(1)...................     1053  Non-English           Undiscounted............          140          145
                                         translation.
1.17(i)(1)...................     2053  Non-English           Small...................           56           58
                                         translation.
1.17(i)(1)...................     3053  Non-English           Micro...................           28           29
                                         translation.
1.17(i)(1)...................     1830  Processing fee,       Undiscounted............          140          145
                                         except in
                                         provisional
                                         applications.
1.17(i)(1)...................     2830  Processing fee,       Small...................           56           58
                                         except in
                                         provisional
                                         applications.
1.17(i)(1)...................     3830  Processing fee,       Micro...................           28           29
                                         except in
                                         provisional
                                         applications.
1.17(i)(2)...................     1808  Other publication     Undiscounted............          140          147
                                         processing fee.
1.17(i)(2)...................     2808  Other publication     Small...................          140          147
                                         processing fee.
1.17(i)(2)...................     3808  Other publication     Micro...................          140          147
                                         processing fee.
1.17(i)(2)...................     1803  Request for           Undiscounted............          140          147
                                         voluntary
                                         publication or
                                         republication.
1.17(i)(2)...................     2803  Request for           Small...................          140          147
                                         voluntary
                                         publication or
                                         republication.
1.17(i)(2)...................     3803  Request for           Micro...................          140          147
                                         voluntary
                                         publication or
                                         republication.
1.17(k)......................     1802  Request for           Undiscounted............        1,600        1,680
                                         expedited
                                         examination of a
                                         design application.
1.17(k)......................     2802  Request for           Small...................          640          672
                                         expedited
                                         examination of a
                                         design application.
1.17(k)......................     3802  Request for           Micro...................          320          336
                                         expedited
                                         examination of a
                                         design application.
1.17(m)(1)...................      New  Petition for the      Undiscounted............        2,100        3,000
                                         delayed payment of
                                         the fee for
                                         maintaining a
                                         patent in force,
                                         delay greater than
                                         two years.
1.17(m)(1)...................      New  Petition for the      Small...................          840        1,200
                                         delayed payment of
                                         the fee for
                                         maintaining a
                                         patent in force,
                                         delay greater than
                                         two years.
1.17(m)(1)...................      New  Petition for the      Micro...................          420          600
                                         delayed payment of
                                         the fee for
                                         maintaining a
                                         patent in force,
                                         delay greater than
                                         two years.
1.17(m)(2)...................     1558  Petition for the      Undiscounted............        2,100        2,200
                                         delayed payment of
                                         the fee for
                                         maintaining a
                                         patent in force,
                                         delay less than or
                                         equal to two years.
1.17(m)(2)...................     2558  Petition for the      Small...................          840          880
                                         delayed payment of
                                         the fee for
                                         maintaining a
                                         patent in force,
                                         delay less than or
                                         equal to two years.
1.17(m)(2)...................     3558  Petition for the      Micro...................          420          440
                                         delayed payment of
                                         the fee for
                                         maintaining a
                                         patent in force,
                                         delay less than or
                                         equal to two years.
1.17(m)(1)...................      New  Petition for revival  Undiscounted............        2,100        3,000
                                         of an abandoned
                                         application for a
                                         patent, for the
                                         delayed payment of
                                         the fee for issuing
                                         each patent, or for
                                         the delayed
                                         response by the
                                         patent owner in any
                                         reexamination
                                         proceeding, delay
                                         greater than two
                                         years.
1.17(m)(1)...................      New  Petition for revival  Small...................          840        1,200
                                         of an abandoned
                                         application for a
                                         patent, for the
                                         delayed payment of
                                         the fee for issuing
                                         each patent, or for
                                         the delayed
                                         response by the
                                         patent owner in any
                                         reexamination
                                         proceeding, delay
                                         greater than two
                                         years.
1.17(m)(1)...................      New  Petition for revival  Micro...................          420          600
                                         of an abandoned
                                         application for a
                                         patent, for the
                                         delayed payment of
                                         the fee for issuing
                                         each patent, or for
                                         the delayed
                                         response by the
                                         patent owner in any
                                         reexamination
                                         proceeding, delay
                                         greater than two
                                         years.
1.17(m)(2)...................     1453  Petition for revival  Undiscounted............        2,100        2,200
                                         of an abandoned
                                         application for a
                                         patent, for the
                                         delayed payment of
                                         the fee for issuing
                                         each patent, or for
                                         the delayed
                                         response by the
                                         patent owner in any
                                         reexamination
                                         proceeding, delay
                                         less than or equal
                                         to two years.
1.17(m)(2)...................     2453  Petition for revival  Small...................          840          880
                                         of an abandoned
                                         application for a
                                         patent, for the
                                         delayed payment of
                                         the fee for issuing
                                         each patent, or for
                                         the delayed
                                         response by the
                                         patent owner in any
                                         reexamination
                                         proceeding, delay
                                         less than or equal
                                         to two years.
1.17(m)(2)...................     3453  Petition for revival  Micro...................          420          440
                                         of an abandoned
                                         application for a
                                         patent, for the
                                         delayed payment of
                                         the fee for issuing
                                         each patent, or for
                                         the delayed
                                         response by the
                                         patent owner in any
                                         reexamination
                                         proceeding, delay
                                         less than or equal
                                         to two years.
1.17(m)(1)...................      New  Petition for the      Undiscounted............        2,100        3,000
                                         delayed submission
                                         of a priority or
                                         benefit claim,
                                         delay greater than
                                         two years.
1.17(m)(1)...................      New  Petition for the      Small...................          840        1,200
                                         delayed submission
                                         of a priority or
                                         benefit claim,
                                         delay greater than
                                         two years.

[[Page 23257]]

 
1.17(m)(1)...................      New  Petition for the      Micro...................          420          600
                                         delayed submission
                                         of a priority or
                                         benefit claim,
                                         delay greater than
                                         two years.
1.17(m)(2)...................     1454  Petition for the      Undiscounted............        2,100        2,200
                                         delayed submission
                                         of a priority or
                                         benefit claim,
                                         delay less than or
                                         equal to two years.
1.17(m)(2)...................     2454  Petition for the      Small...................          840          880
                                         delayed submission
                                         of a priority or
                                         benefit claim,
                                         delay less than or
                                         equal to two years.
1.17(m)(2)...................     3454  Petition for the      Micro...................          420          440
                                         delayed submission
                                         of a priority or
                                         benefit claim,
                                         delay less than or
                                         equal to two years.
1.17(m)(1)...................      New  Petition to excuse    Undiscounted............        2,100        3,000
                                         applicant's failure
                                         to act within
                                         prescribed time
                                         limits in an
                                         international
                                         design application,
                                         delay greater than
                                         two years.
1.17(m)(1)...................      New  Petition to excuse    Small...................          840        1,200
                                         applicant's failure
                                         to act within
                                         prescribed time
                                         limits in an
                                         international
                                         design application,
                                         delay greater than
                                         two years.
1.17(m)(1)...................      New  Petition to excuse    Micro...................          420          600
                                         applicant's failure
                                         to act within
                                         prescribed time
                                         limits in an
                                         international
                                         design application,
                                         delay greater than
                                         two years.
1.17(m)(2)...................     1784  Petition to excuse    Undiscounted............        2,100        2,200
                                         applicant's failure
                                         to act within
                                         prescribed time
                                         limits in an
                                         international
                                         design application,
                                         delay less than or
                                         equal to two years.
1.17(m)(2)...................     2784  Petition to excuse    Small...................          840          880
                                         applicant's failure
                                         to act within
                                         prescribed time
                                         limits in an
                                         international
                                         design application,
                                         delay less than or
                                         equal to two years.
1.17(m)(2)...................     3784  Petition to excuse    Micro...................          420          440
                                         applicant's failure
                                         to act within
                                         prescribed time
                                         limits in an
                                         international
                                         design application,
                                         delay less than or
                                         equal to two years.
1.17(m)(3)...................     1628  Petition for the      Undiscounted............        2,100        2,200
                                         extension of the
                                         twelve-month (six-
                                         month for designs)
                                         period for filing a
                                         subsequent
                                         application.
1.17(m)(3)...................     2628  Petition for the      Small...................          840          880
                                         extension of the
                                         twelve-month (six-
                                         month for designs)
                                         period for filing a
                                         subsequent
                                         application.
1.17(m)(3)...................     3628  Petition for the      Micro...................          420          440
                                         extension of the
                                         twelve-month (six-
                                         month for designs)
                                         period for filing a
                                         subsequent
                                         application.
1.17(o)......................     1818  Document fee for      Undiscounted............          180          190
                                         third-party
                                         submissions (see 37
                                         CFR 1.290(f)).
1.17(o)......................     2818  Document fee for      Small...................           72           76
                                         third-party
                                         submissions (see 37
                                         CFR 1.290(f)).
1.17(p)......................     1806  Submission of an      Undiscounted............          260          275
                                         Information
                                         Disclosure
                                         Statement.
1.17(p)......................     2806  Submission of an      Small...................          104          110
                                         Information
                                         Disclosure
                                         Statement.
1.17(p)......................     3806  Submission of an      Micro...................           52           55
                                         Information
                                         Disclosure
                                         Statement.
1.17(q)......................     1807  Processing fee for    Undiscounted............           50           53
                                         provisional
                                         applications.
1.17(q)......................     2807  Processing fee for    Small...................           50           53
                                         provisional
                                         applications.
1.17(q)......................     3807  Processing fee for    Micro...................           50           53
                                         provisional
                                         applications.
1.17(r)......................     1809  Filing a submission   Undiscounted............          880          925
                                         after final
                                         rejection (see 37
                                         CFR 1.129(a)).
1.17(r)......................     2809  Filing a submission   Small...................          352          370
                                         after final
                                         rejection (see 37
                                         CFR 1.129(a)).
1.17(r)......................     3809  Filing a submission   Micro...................          176          185
                                         after final
                                         rejection (see 37
                                         CFR 1.129(a)).
1.17(s)......................     1810  For each additional   Undiscounted............          880          925
                                         invention to be
                                         examined (see 37
                                         CFR 1.129(b)).
1.17(s)......................     2810  For each additional   Small...................          352          370
                                         invention to be
                                         examined (see 37
                                         CFR 1.129(b)).
1.17(s)......................     3810  For each additional   Micro...................          176          185
                                         invention to be
                                         examined (see 37
                                         CFR 1.129(b)).
1.17(t)......................     1783  Petition to convert   Undiscounted............          180          190
                                         an international
                                         design application
                                         to a design
                                         application under
                                         35 U.S.C. chapter
                                         16.
1.17(t)......................     2783  Petition to convert   Small...................           72           76
                                         an international
                                         design application
                                         to a design
                                         application under
                                         35 U.S.C. chapter
                                         16.
1.17(t)......................     3783  Petition to convert   Micro...................           36           38
                                         an international
                                         design application
                                         to a design
                                         application under
                                         35 U.S.C. chapter
                                         16.
1.17(u)(1)...................      New  Extension for         Undiscounted............          220           50
                                         response within
                                         first month,
                                         provisional
                                         application.
1.17(u)(1)...................      New  Extension for         Small...................           88           20
                                         response within
                                         first month,
                                         provisional
                                         application.
1.17(u)(1)...................      New  Extension for         Micro...................           44           10
                                         response within
                                         first month,
                                         provisional
                                         application.
1.17(u)(2)...................      New  Extension for         Undiscounted............          640          100
                                         response within
                                         second month,
                                         provisional
                                         application.
1.17(u)(2)...................      New  Extension for         Small...................          256           40
                                         response within
                                         second month,
                                         provisional
                                         application.
1.17(u)(2)...................      New  Extension for         Micro...................          128           20
                                         response within
                                         second month,
                                         provisional
                                         application.
1.17(u)(3)...................      New  Extension for         Undiscounted............        1,480          200
                                         response within
                                         third month,
                                         provisional
                                         application.
1.17(u)(3)...................      New  Extension for         Small...................          592           80
                                         response within
                                         third month,
                                         provisional
                                         application.

[[Page 23258]]

 
1.17(u)(3)...................      New  Extension for         Micro...................          296           40
                                         response within
                                         third month,
                                         provisional
                                         application.
1.17(u)(4)...................      New  Extension for         Undiscounted............        2,320          400
                                         response within
                                         fourth month,
                                         provisional
                                         application.
1.17(u)(4)...................      New  Extension for         Small...................          928          160
                                         response within
                                         fourth month,
                                         provisional
                                         application.
1.17(u)(4)...................      New  Extension for         Micro...................          464           80
                                         response within
                                         fourth month,
                                         provisional
                                         application.
1.17(u)(5)...................      New  Extension for         Undiscounted............        3,160          800
                                         response within
                                         fifth month,
                                         provisional
                                         application.
1.17(u)(5)...................      New  Extension for         Small...................        1,264          320
                                         response within
                                         fifth month,
                                         provisional
                                         application.
1.17(u)(5)...................      New  Extension for         Micro...................          632          160
                                         response within
                                         fifth month,
                                         provisional
                                         application.
1.17(v)(1)...................      New  First time filing an  Undiscounted............          n/a          200
                                         Information
                                         Disclosure
                                         Statement that
                                         causes the
                                         cumulative number
                                         of applicant-
                                         provided citations
                                         to exceed 50.
1.17(v)(1)...................      New  First time filing an  Small...................          n/a          200
                                         Information
                                         Disclosure
                                         Statement that
                                         causes the
                                         cumulative number
                                         of applicant-
                                         provided citations
                                         to exceed 50.
1.17(v)(1)...................      New  First time filing an  Micro...................          n/a          200
                                         Information
                                         Disclosure
                                         Statement that
                                         causes the
                                         cumulative number
                                         of applicant-
                                         provided citations
                                         to exceed 50.
1.17(v)(2)...................      New  Filing an             Undiscounted............          n/a          300
                                         Information
                                         Disclosure
                                         Statement that
                                         causes the
                                         cumulative number
                                         of applicant-
                                         provided citations
                                         to exceed 100.
1.17(v)(2)...................      New  Filing an             Small...................          n/a          300
                                         Information
                                         Disclosure
                                         Statement that
                                         causes the
                                         cumulative number
                                         of applicant-
                                         provided citations
                                         to exceed 100.
1.17(v)(2)...................      New  Filing an             Micro...................          n/a          300
                                         Information
                                         Disclosure
                                         Statement that
                                         causes the
                                         cumulative number
                                         of applicant-
                                         provided citations
                                         to exceed 100.
1.17(v)(3)...................      New  Filing an             Undiscounted............          n/a          300
                                         Information
                                         Disclosure
                                         Statement that
                                         causes the
                                         cumulative number
                                         of applicant-
                                         provided citations
                                         to exceed 200.
1.17(v)(3)...................      New  Filing an             Small...................          n/a          300
                                         Information
                                         Disclosure
                                         Statement that
                                         causes the
                                         cumulative number
                                         of applicant-
                                         provided citations
                                         to exceed 200.
1.17(v)(3)...................      New  Filing an             Micro...................          n/a          300
                                         Information
                                         Disclosure
                                         Statement that
                                         causes the
                                         cumulative number
                                         of applicant-
                                         provided citations
                                         to exceed 200.
1.17(w)(1)...................      New  Filing an             Undiscounted............          n/a        2,200
                                         application or
                                         presentation of
                                         benefit claim more
                                         than five years
                                         after earliest
                                         benefit date.
1.17(w)(1)...................      New  Filing an             Small...................          n/a          880
                                         application or
                                         presentation of
                                         benefit claim more
                                         than five years
                                         after earliest
                                         benefit date.
1.17(w)(1)...................      New  Filing an             Micro...................          n/a          440
                                         application or
                                         presentation of
                                         benefit claim more
                                         than five years
                                         after earliest
                                         benefit date.
1.17(w)(2)...................      New  Filing an             Undiscounted............          n/a        3,500
                                         application or
                                         presentation of
                                         benefit claim more
                                         than eight years
                                         after earliest
                                         benefit date.
1.17(w)(2)...................      New  Filing an             Small...................          n/a        1,400
                                         application or
                                         presentation of
                                         benefit claim more
                                         than eight years
                                         after earliest
                                         benefit date.
1.17(w)(2)...................      New  Filing an             Micro...................          n/a          700
                                         application or
                                         presentation of
                                         benefit claim more
                                         than eight years
                                         after earliest
                                         benefit date.
1.17(x)......................      New  Consideration of      Undiscounted............          n/a          500
                                         AFCP 2.0 request.
1.17(x)......................      New  Consideration of      Small...................          n/a          200
                                         AFCP 2.0 request.
1.17(x)......................      New  Consideration of      Micro...................          n/a          100
                                         AFCP 2.0 request.
----------------------------------------------------------------------------------------------------------------

Section 1.18

    Section 1.18 is proposed to be amended by revising paragraphs (a) 
through (f) to set forth patent issue fees as authorized under section 
10 of the AIA. The changes to the fee amounts indicated in Sec.  1.18 
are shown in table 20.

                                       Table 20--Section 1.18 Fee Changes
----------------------------------------------------------------------------------------------------------------
                                  Fee                                                                  Proposed
          CFR section             code       Description             Entity type        Current fee      fee
----------------------------------------------------------------------------------------------------------------
1.18(a).......................     1511  Reissue issue fee..  Undiscounted............       $1,200       $1,260
1.18(a).......................     2511  Reissue issue fee..  Small...................          480          504

[[Page 23259]]

 
1.18(a).......................     3511  Reissue issue fee..  Micro...................          240          252
1.18(a).......................     1501  Utility issue fee..  Undiscounted............        1,200        1,260
1.18(a).......................     2501  Utility issue fee..  Small...................          480          504
1.18(a).......................     3501  Utility issue fee..  Micro...................          240          252
1.18(b)(1)....................     1502  Design issue fee...  Undiscounted............          740        1,300
1.18(b)(1)....................     2502  Design issue fee...  Small...................          296          520
1.18(b)(1)....................     3502  Design issue fee...  Micro...................          148          260
1.18(b)(1)....................     1509  Hague design issue   Undiscounted............          740        1,300
                                          fee.
1.18(b)(1)....................     2509  Hague design issue   Small...................          296          520
                                          fee.
1.18(b)(1)....................     3509  Hague design issue   Micro...................          148          260
                                          fee.
1.18(c).......................     1503  Plant issue fee....  Undiscounted............          840          880
1.18(c).......................     2503  Plant issue fee....  Small...................          336          352
1.18(c).......................     3503  Plant issue fee....  Micro...................          168          176
1.18(d)(3)....................     1505  Publication fee for  Undiscounted............          320          336
                                          republication.
1.18(d)(3)....................     2505  Publication fee for  Small...................          320          336
                                          republication.
1.18(d)(3)....................     3505  Publication fee for  Micro...................          320          336
                                          republication.
1.18(e).......................     1455  Filing an            Undiscounted............          210          300
                                          application for
                                          patent term
                                          adjustment.
1.18(e).......................     2455  Filing an            Small...................          210          300
                                          application for
                                          patent term
                                          adjustment.
1.18(e).......................     3455  Filing an            Micro...................          210          300
                                          application for
                                          patent term
                                          adjustment.
1.18(f).......................     1456  Request for          Undiscounted............          420          440
                                          reinstatement of
                                          term reduced.
1.18(f).......................     2456  Request for          Small...................          420          440
                                          reinstatement of
                                          term reduced.
1.18(f).......................     3456  Request for          Micro...................          420          440
                                          reinstatement of
                                          term reduced.
----------------------------------------------------------------------------------------------------------------

Section 1.19

    Section 1.19 is proposed to be amended by revising paragraphs (a), 
(b), and (f) to set forth document supply fees as authorized under 
section 10 of the AIA. The changes to the fee amounts indicated in 
Sec.  1.19 are shown in table 21.

                                       Table 21--Section 1.19 Fee Changes
----------------------------------------------------------------------------------------------------------------
                                  Fee                                                                  Proposed
          CFR section             code       Description             Entity type        Current fee      fee
----------------------------------------------------------------------------------------------------------------
1.19(a)(2)....................     8003  Printed copy of      Undiscounted............          $15          $16
                                          plant patent in
                                          color.
1.19(b)(1)(i)(A) and (ii)(A)..     8007  Copy of patent       Undiscounted............           35           37
                                          application as
                                          filed.
1.19(b)(1)(i)(B)..............     8051  Copy patent file     Undiscounted............          290          305
                                          wrapper, paper
                                          medium, any number
                                          of sheets.
1.19(b)(1)(i)(D)..............     8010  Individual           Undiscounted............           25           26
                                          application
                                          documents, other
                                          than application
                                          as filed, per
                                          document.
1.19(b)(1)(ii)(B).............     8052  Copy patent file     Undiscounted............           60           63
                                          wrapper,
                                          electronic medium,
                                          any size or
                                          provided
                                          electronically.
1.19(b)(3)....................     8013  Copy of office       Undiscounted............           25           26
                                          records, except
                                          copies of
                                          applications as
                                          filed.
1.19(b)(4)....................     8014  For assignment       Undiscounted............           35           37
                                          records, abstract
                                          of title and
                                          certification, per
                                          patent.
1.19(f).......................     8017  Copy of non-U.S.     Undiscounted............           25           26
                                          document.
----------------------------------------------------------------------------------------------------------------

Section 1.20

    Section 1.20 is proposed to be amended by revising paragraphs (a) 
through (h), (j), and (k) to set forth post issuance fees as authorized 
under section 10 of the AIA. The changes to the fee amounts indicated 
in Sec.  1.20 are shown in table 22.
    The USPTO proposes to revise the introductory text to paragraph (d) 
and to add paragraphs (d)(1) and (d)(2)(i) through (v) to create 
separate tiered fees for terminal disclaimers under Sec.  1.321.
    The USPTO proposes to add paragraph (j)(4) to create a fee for 
requesting supplemental redetermination after Notice of Final 
Determination.

                                       Table 22--Section 1.20 Fee Changes
----------------------------------------------------------------------------------------------------------------
                                 Fee                                                                   Proposed
         CFR section             code        Description             Entity type        Current fee      fee
----------------------------------------------------------------------------------------------------------------
1.20(a)......................     1811  Certificate of        Undiscounted............         $160         $168
                                         correction.
1.20(a)......................     2811  Certificate of        Small...................          160          168
                                         correction.
1.20(a)......................     3811  Certificate of        Micro...................          160          168
                                         correction.
1.20(b)......................     1816  Processing fee for    Undiscounted............          160          168
                                         correcting
                                         inventorship in a
                                         patent.
1.20(b)......................     2816  Processing fee for    Small...................          160          168
                                         correcting
                                         inventorship in a
                                         patent.
1.20(b)......................     3816  Processing fee for    Micro...................          160          168
                                         correcting
                                         inventorship in a
                                         patent.
1.20(c)(1)(i)................     1831  Ex parte              Undiscounted............        6,300        6,615
                                         reexamination (Sec.
                                           1.510(a))
                                         streamlined.

[[Page 23260]]

 
1.20(c)(1)(i)................     2831  Ex parte              Small...................        2,520        2,646
                                         reexamination (Sec.
                                           1.510(a))
                                         streamlined.
1.20(c)(1)(i)................     3831  Ex parte              Micro...................        1,260        1,323
                                         reexamination (Sec.
                                           1.510(a))
                                         streamlined.
1.20(c)(2)...................     1812  Ex parte              Undiscounted............       12,600       13,230
                                         reexamination (Sec.
                                           1.510(a)) non-
                                         streamlined.
1.20(c)(2)...................     2812  Ex parte              Small...................        5,040        5,292
                                         reexamination (Sec.
                                           1.510(a)) non-
                                         streamlined.
1.20(c)(2)...................     3812  Ex parte              Micro...................        2,520        2,646
                                         reexamination (Sec.
                                           1.510(a)) non-
                                         streamlined.
1.20(c)(3)...................     1821  Each reexamination    Undiscounted............          480          600
                                         independent claim
                                         in excess of three
                                         and also in excess
                                         of the number of
                                         such claims in the
                                         patent under
                                         reexamination.
1.20(c)(3)...................     2821  Each reexamination    Small...................          192          240
                                         independent claim
                                         in excess of three
                                         and also in excess
                                         of the number of
                                         such claims in the
                                         patent under
                                         reexamination.
1.20(c)(3)...................     3821  Each reexamination    Micro...................           96          120
                                         independent claim
                                         in excess of three
                                         and also in excess
                                         of the number of
                                         such claims in the
                                         patent under
                                         reexamination.
1.20(c)(4)...................     1822  Each reexamination    Undiscounted............          100          200
                                         claim in excess of
                                         20 and also in
                                         excess of the
                                         number of claims in
                                         the patent under
                                         reexamination.
1.20(c)(4)...................     2822  Each reexamination    Small...................           40           80
                                         claim in excess of
                                         20 and also in
                                         excess of the
                                         number of claims in
                                         the patent under
                                         reexamination.
1.20(c)(4)...................     3822  Each reexamination    Micro...................           20           40
                                         claim in excess of
                                         20 and also in
                                         excess of the
                                         number of claims in
                                         the patent under
                                         reexamination.
1.20(c)(6)...................     1824  Petitions in a        Undiscounted............        2,040        2,140
                                         reexamination
                                         proceeding, except
                                         for those
                                         specifically
                                         enumerated in 37
                                         CFR 1.550(i) and
                                         1.937(d).
1.20(c)(6)...................     2824  Petitions in a        Small...................          816          856
                                         reexamination
                                         proceeding, except
                                         for those
                                         specifically
                                         enumerated in 37
                                         CFR 1.550(i) and
                                         1.937(d).
1.20(c)(6)...................     3824  Petitions in a        Micro...................          408          428
                                         reexamination
                                         proceeding, except
                                         for those
                                         specifically
                                         enumerated in 37
                                         CFR 1.550(i) and
                                         1.937(d).
1.20(d)(1)...................     1814  Statutory             Undiscounted............          170          179
                                         disclaimer,
                                         excluding terminal
                                         disclaimer.
1.20(d)(1)...................     2814  Statutory             Small...................          170          179
                                         disclaimer,
                                         excluding terminal
                                         disclaimer.
1.20(d)(1)...................     3814  Statutory             Micro...................          170          179
                                         disclaimer,
                                         excluding terminal
                                         disclaimer.
1.20(d)(2)(i)................      New  Terminal disclaimer,  Undiscounted............          170          200
                                         filed prior to the
                                         first action on the
                                         merits.
1.20(d)(2)(i)................      New  Terminal disclaimer,  Small...................          170          200
                                         filed prior to the
                                         first action on the
                                         merits.
1.20(d)(2)(i)................      New  Terminal disclaimer,  Micro...................          170          200
                                         filed prior to the
                                         first action on the
                                         merits.
1.20(d)(2)(ii)...............      New  Terminal disclaimer,  Undiscounted............          170          500
                                         filed prior to a
                                         final action or
                                         allowance.
1.20(d)(2)(ii)...............      New  Terminal disclaimer,  Small...................          170          500
                                         filed prior to a
                                         final action or
                                         allowance.
1.20(d)(2)(ii)...............      New  Terminal disclaimer,  Micro...................          170          500
                                         filed prior to a
                                         final action or
                                         allowance.
1.20(d)(2)(iii)..............      New  Terminal disclaimer,  Undiscounted............          170          800
                                         filed after final
                                         or allowance.
1.20(d)(2)(iii)..............      New  Terminal disclaimer,  Small...................          170          800
                                         filed after final
                                         or allowance.
1.20(d)(2)(iii)..............      New  Terminal disclaimer,  Micro...................          170          800
                                         filed after final
                                         or allowance.
1.20(d)(2)(iv)...............      New  Terminal disclaimer,  Undiscounted............          170        1,100
                                         filed on or after a
                                         notice of appeal.
1.20(d)(2)(iv)...............      New  Terminal disclaimer,  Small...................          170        1,100
                                         filed on or after a
                                         notice of appeal.
1.20(d)(2)(iv)...............      New  Terminal disclaimer,  Micro...................          170        1,100
                                         filed on or after a
                                         notice of appeal.
1.20(d)(2)(v)................      New  Terminal disclaimer,  Undiscounted............          170        1,400
                                         filed in a patented
                                         case or in an
                                         application for
                                         reissue.
1.20(d)(2)(v)................      New  Terminal disclaimer,  Small...................          170        1,400
                                         filed in a patented
                                         case or in an
                                         application for
                                         reissue.
1.20(d)(2)(v)................      New  Terminal disclaimer,  Micro...................          170        1,400
                                         filed in a patented
                                         case or in an
                                         application for
                                         reissue.
1.20(e)......................     1551  For maintaining an    Undiscounted............        2,000        2,100
                                         original or any
                                         reissue patent, due
                                         at 3.5 years.
1.20(e)......................     2551  For maintaining an    Small...................          800          840
                                         original or any
                                         reissue patent, due
                                         at 3.5 years.
1.20(e)......................     3551  For maintaining an    Micro...................          400          420
                                         original or any
                                         reissue patent, due
                                         at 3.5 years.
1.20(f)......................     1552  For maintaining an    Undiscounted............        3,760        3,950
                                         original or any
                                         reissue patent, due
                                         at 7.5 years.
1.20(f)......................     2552  For maintaining an    Small...................        1,504        1,580
                                         original or any
                                         reissue patent, due
                                         at 7.5 years.
1.20(f)......................     3552  For maintaining an    Micro...................          752          790
                                         original or any
                                         reissue patent, due
                                         at 7.5 years.
1.20(g)......................     1553  For maintaining an    Undiscounted............        7,700        8,085
                                         original or any
                                         reissue patent, due
                                         at 11.5 years.
1.20(g)......................     2553  For maintaining an    Small...................        3,080        3,234
                                         original or any
                                         reissue patent, due
                                         at 11.5 years.
1.20(g)......................     3553  For maintaining an    Micro...................        1,540        1,617
                                         original or any
                                         reissue patent, due
                                         at 11.5 years.
1.20(h)......................     1554  Surcharge--3.5 year-- Undiscounted............          500          525
                                         late payment within
                                         6 months.
1.20(h)......................     2554  Surcharge--3.5 year-- Small...................          200          210
                                         late payment within
                                         6 months.
1.20(h)......................     3554  Surcharge--3.5 year-- Micro...................          100          105
                                         late payment within
                                         6 months.
1.20(h)......................     1555  Surcharge--7.5 year-- Undiscounted............          500          525
                                         late payment within
                                         6 months.
1.20(h)......................     2555  Surcharge--7.5 year-- Small...................          200          210
                                         late payment within
                                         6 months.
1.20(h)......................     3555  Surcharge--7.5 year-- Micro...................          100          105
                                         late payment within
                                         6 months.

[[Page 23261]]

 
1.20(h)......................     1556  Surcharge--11.5       Undiscounted............          500          525
                                         year--late payment
                                         within 6 months.
1.20(h)......................     2556  Surcharge--11.5       Small...................          200          210
                                         year--late payment
                                         within 6 months.
1.20(h)......................     3556  Surcharge--11.5       Micro...................          100          105
                                         year--late payment
                                         within 6 months.
1.20(j)(1)...................     1457  Application for       Undiscounted............        1,180        6,700
                                         extension of term
                                         of patent.
1.20(j)(1)...................     2457  Application for       Small...................        1,180        6,700
                                         extension of term
                                         of patent.
1.20(j)(1)...................     3457  Application for       Micro...................        1,180        6,700
                                         extension of term
                                         of patent.
1.20(j)(2)...................     1458  Initial application   Undiscounted............          440        1,320
                                         for interim
                                         extension (see 37
                                         CFR 1.790).
1.20(j)(2)...................     2458  Initial application   Small...................          440        1,320
                                         for interim
                                         extension (see 37
                                         CFR 1.790).
1.20(j)(2)...................     3458  Initial application   Micro...................          440        1,320
                                         for interim
                                         extension (see 37
                                         CFR 1.790).
1.20(j)(3)...................     1459  Subsequent            Undiscounted............          230          680
                                         application for
                                         interim extension
                                         (see 37 CFR 1.790).
1.20(j)(3)...................     2459  Subsequent            Small...................          230          680
                                         application for
                                         interim extension
                                         (see 37 CFR 1.790).
1.20(j)(3)...................     3459  Subsequent            Micro...................          230          680
                                         application for
                                         interim extension
                                         (see 37 CFR 1.790).
1.20(j)(4)...................      New  Supplemental          Undiscounted............          n/a        1,440
                                         redetermination
                                         after notice of
                                         final determination.
1.20(j)(4)...................      New  Supplemental          Small...................          n/a        1,440
                                         redetermination
                                         after notice of
                                         final determination.
1.20(j)(4)...................      New  Supplemental          Micro...................          n/a        1,440
                                         redetermination
                                         after notice of
                                         final determination.
1.20(k)(1)...................     1826  Request for           Undiscounted............        4,620        4,850
                                         supplemental
                                         examination.
1.20(k)(1)...................     2826  Request for           Small...................        1,848        1,940
                                         supplemental
                                         examination.
1.20(k)(1)...................     3826  Request for           Micro...................          924          970
                                         supplemental
                                         examination.
1.20(k)(2)...................     1827  Reexamination         Undiscounted............       12,700       13,335
                                         ordered as a result
                                         of supplemental
                                         examination.
1.20(k)(2)...................     2827  Reexamination         Small...................        5,080        5,334
                                         ordered as a result
                                         of supplemental
                                         examination.
1.20(k)(2)...................     3827  Reexamination         Micro...................        2,540        2,667
                                         ordered as a result
                                         of supplemental
                                         examination.
1.20(k)(3)(i)................     1828  Supplemental          Undiscounted............          180          190
                                         examination
                                         document size fee--
                                         for nonpatent
                                         document having
                                         between 21 and 50
                                         sheets.
1.20(k)(3)(i)................     2828  Supplemental          Small...................           72           76
                                         examination
                                         document size fee--
                                         for nonpatent
                                         document having
                                         between 21 and 50
                                         sheets.
1.20(k)(3)(i)................     3828  Supplemental          Micro...................           36           38
                                         examination
                                         document size fee--
                                         for nonpatent
                                         document having
                                         between 21 and 50
                                         sheets.
1.20(k)(3)(ii)...............     1829  Supplemental          Undiscounted............          300          315
                                         examination
                                         document size fee--
                                         for each additional
                                         50 sheets or a
                                         fraction thereof in
                                         a nonpatent
                                         document.
1.20(k)(3)(ii)...............     2829  Supplemental          Small...................          120          126
                                         examination
                                         document size fee--
                                         for each additional
                                         50 sheets or a
                                         fraction thereof in
                                         a nonpatent
                                         document.
1.20(k)(3)(ii)...............     3829  Supplemental          Micro...................           60           63
                                         examination
                                         document size fee--
                                         for each additional
                                         50 sheets or a
                                         fraction thereof in
                                         a nonpatent
                                         document.
----------------------------------------------------------------------------------------------------------------

Section 1.21

    Section 1.21 is proposed to be amended by revising paragraphs (a), 
(e), (h), (i), and (n) through (q) to set forth miscellaneous fees and 
charges as authorized under section 10 of the AIA. The changes to the 
fee amounts indicated in Sec.  1.21 are shown in table 23.

                                       Table 23--Section 1.21 Fee Changes
----------------------------------------------------------------------------------------------------------------
                                  Fee                                                                  Proposed
          CFR section             code       Description             Entity type        Current fee      fee
----------------------------------------------------------------------------------------------------------------
1.21(a)(1)(i).................     9001  Application fee      Undiscounted............         $110         $116
                                          (non-refundable).
1.21(a)(1)(ii)(A).............     9010  For test             Undiscounted............          210          221
                                          administration by
                                          commercial entity.
1.21(a)(1)(iii)...............     9029  For USPTO-           Undiscounted............          470          494
                                          administered
                                          review of
                                          registration
                                          examination.
1.21(a)(1)(iv)................     9030  Request for          Undiscounted............          115          121
                                          extension of time
                                          in which to
                                          schedule
                                          examination for
                                          registration to
                                          practice (non-
                                          refundable).
1.21(a)(2)(i).................     9003  On registration to   Undiscounted............          210          221
                                          practice under
                                          Sec.   11.6.
1.21(a)(2)(ii)................     9026  On grant of limited  Undiscounted............          210          221
                                          recognition under
                                          Sec.   11.9(b).
1.21(a)(4)(i).................     9005  Certificate of good  Undiscounted............           40           42
                                          standing as an
                                          attorney or agent,
                                          standard.
1.21(a)(4)(ii)................     9006  Certificate of good  Undiscounted............           50           53
                                          standing as an
                                          attorney or agent,
                                          suitable for
                                          framing.
1.21(a)(5)(i).................     9012  Review of decision   Undiscounted............          420          440
                                          by the Director of
                                          Enrollment and
                                          Discipline under
                                          Sec.   11.2(c).
1.21(a)(5)(ii)................     9013  Review of decision   Undiscounted............          420          440
                                          of the Director of
                                          Enrollment and
                                          Discipline under
                                          Sec.   11.2(d).
1.21(a)(6)(ii)................     9028  For USPTO-assisted   Undiscounted............           70           74
                                          change of address
                                          within the Office
                                          of Enrollment and
                                          Discipline
                                          Information System.
1.21(a)(9)(i).................     9020  Delinquency fee....  Undiscounted............           50           53
1.21(a)(9)(ii)................     9004  Administrative       Undiscounted............          210          221
                                          reinstatement fee.

[[Page 23262]]

 
1.21(a)(10)...................     9014  On petition for      Undiscounted............        1,680        1,764
                                          reinstatement by a
                                          person excluded or
                                          suspended on
                                          ethical grounds,
                                          or excluded on
                                          consent from
                                          practice before
                                          the Office.
1.21(e).......................     8020  International type   Undiscounted............           40           42
                                          search report.
1.21(h)(2)....................     8021  Recording each       Undiscounted............           50           53
                                          patent assignment,
                                          agreement or other
                                          paper, per
                                          property--if not
                                          submitted
                                          electronically.
1.21(i).......................     8022  Publication in       Undiscounted............           25           26
                                          Official Gazette.
1.21(n).......................     8026  Handling fee for     Undiscounted............          140          147
                                          incomplete or
                                          improper
                                          application.
1.21(o)(1)....................     1091  Submission of        Undiscounted............        1,060        1,115
                                          sequence listings
                                          of 300MB to 800MB.
1.21(o)(1)....................     2091  Submission of        Small...................          424          446
                                          sequence listings
                                          of 300MB to 800MB.
1.21(o)(1)....................     3091  Submission of        Micro...................          212          223
                                          sequence listings
                                          of 300MB to 800MB.
1.21(o)(2)....................     1092  Submission of        Undiscounted............       10,500       11,025
                                          sequence listings
                                          of more than 800MB.
1.21(o)(2)....................     2092  Submission of        Small...................        4,200        4,410
                                          sequence listings
                                          of more than 800MB.
1.21(o)(2)....................     3092  Submission of        Micro...................        2,100        2,205
                                          sequence listings
                                          of more than 800MB.
1.21(p).......................     8053  Additional fee for   Undiscounted............           40           42
                                          overnight delivery.
1.21(q).......................     8054  Additional fee for   Undiscounted............          170          179
                                          expedited service.
----------------------------------------------------------------------------------------------------------------

Section 1.78

    Section 1.78 is proposed to be amended by revising paragraph 
(d)(3)(i) to include the fee cited in Sec.  1.17(w) as one of the 
requirements that must be submitted during the pendency of the later-
filed application.
    The USPTO proposes to revise paragraph (e)(2) to add the applicable 
fee in Sec.  1.17(w) to the list of required items that must accompany 
a petition to accept an unintentionally delayed claim under 35 U.S.C. 
120, 121, 365(c), or 386(c) for the benefit of a prior-filed 
application.

Section 1.97

    Section 1.97 is proposed to be amended by revising paragraph (a) to 
require the proposed information disclosure statement size fee under 
Sec.  1.17(v) for an information disclosure statement in compliance 
with Sec.  1.98 to be considered by the USPTO during the pendency of 
the application.

Section 1.98

    Section 1.98 is proposed to be amended by revising the introductory 
text in paragraph (a) to include paragraph (a)(4) in the items that 
shall be included with any information disclosure statement.
    The USPTO proposes to add paragraph (a)(4), which will require a 
clear written assertion that the information disclosure statement is 
accompanied by the applicable information disclosure statement size fee 
under Sec.  1.17(v) or a clear written assertion that no information 
disclosure statement size fee under Sec.  1.17(v) is required.

Section 1.136

    Section 1.136 is proposed to be amended by revising paragraph 
(a)(1) to include the addition of the fee set in Sec.  1.17(u) in 
extensions of time.

Section 1.138

    Section 1.138 is proposed to be amended by revising paragraph (d) 
to expand the applicability of the express abandonment rule to permit 
such refunds in national stage applications filed under 35 U.S.C. 371. 
The current rule permits such refunds only in nonprovisional 
applications filed under 35 U.S.C. 111(a) and Sec.  1.53(b). Paragraph 
(d) is also proposed to be amended to clarify that refunds of search 
and excess claim fee payments under these provisions are limited to the 
search and excess claim fees set forth in Sec.  1.16 (which apply to 
applications filed under 35 U.S.C. 111(a) and Sec.  1.53(b)) and search 
and excess claim fees set forth in Sec.  1.492 (which apply to national 
stage applications filed under 35 U.S.C. 371). Paragraph (d) is also 
proposed to be amended to clarify that refunds of search and excess 
claim fee payments under these provisions are limited to the search and 
excess claim fees set forth in Sec.  1.16 (which apply to applications 
filed under 35 U.S.C. 111(a) and Sec.  1.53(b)) and search and excess 
claim fees set forth in Sec.  1.492 (which apply to national stage 
applications filed under 35 U.S.C. 371).

Section 1.445

    Section 1.445 is proposed to be amended by revising and 
republishing paragraph (a) to set forth international filing, 
processing, and search fees as authorized under section 10 of the AIA. 
The changes to the fee amounts indicated in Sec.  1.445 are shown in 
table 24. The proposed fees are for or an international application 
having a receipt date that is on or after the effective date of the 
final rule. Fees previously provided for in paragraphs (a)(1)(i)(A), 
(a)(2)(i), and (a)(3)(i) for international applications having a 
receipt date that is on or after December 29, 2023 will be redesignated 
as (a)(1)(i)(B), (a)(2)(ii), and (a)(3)(ii) and will apply to 
international applications having a receipt date that is on or after 
December 29, 2022 and before the effective date of the final rule. 
Other paragraphs under paragraphs (a)(1) through (3) are proposed to be 
redesignated to accommodate these proposed changes.

                                       Table 24--Section 1.445 Fee Changes
----------------------------------------------------------------------------------------------------------------
                                  Fee                                                                  Proposed
          CFR section             code       Description             Entity type        Current fee      fee
----------------------------------------------------------------------------------------------------------------
1.445(a)(1)(i)(A).............     1601  Transmittal fee....  Undiscounted............         $260         $285
1.445(a)(1)(i)(A).............     2601  Transmittal fee....  Small...................          104          114
1.445(a)(1)(i)(A).............     3601  Transmittal fee....  Micro...................           52           57
1.445(a)(2)(i)................     1602  Search fee--         Undiscounted............        2,180        2,400
                                          regardless of
                                          whether there is a
                                          corresponding
                                          application (see
                                          35 U.S.C. 361(d)
                                          and PCT Rule 16).

[[Page 23263]]

 
1.445(a)(2)(i)................     2602  Search fee--         Small...................          872          960
                                          regardless of
                                          whether there is a
                                          corresponding
                                          application (see
                                          35 U.S.C. 361(d)
                                          and PCT Rule 16).
1.445(a)(2)(i)................     3602  Search fee--         Micro...................          436          480
                                          regardless of
                                          whether there is a
                                          corresponding
                                          application (see
                                          35 U.S.C. 361(d)
                                          and PCT Rule 16).
1.445(a)(3)(i)................     1604  Supplemental search  Undiscounted............        2,180        2,400
                                          fee when required,
                                          per additional
                                          invention.
1.445(a)(3)(i)................     2604  Supplemental search  Small...................          872          960
                                          fee when required,
                                          per additional
                                          invention.
1.445(a)(3)(i)................     3604  Supplemental search  Micro...................          436          480
                                          fee when required,
                                          per additional
                                          invention.
1.445(a)(4)...................     1621  Transmitting         Undiscounted............          260          285
                                          application to
                                          Intl. Bureau to
                                          act as receiving
                                          office.
1.445(a)(4)...................     2621  Transmitting         Small...................          104          114
                                          application to
                                          Intl. Bureau to
                                          act as receiving
                                          office.
1.445(a)(4)...................     3621  Transmitting         Micro...................           52           57
                                          application to
                                          Intl. Bureau to
                                          act as receiving
                                          office.
1.445(a)(5)...................     1627  Late furnishing fee  Undiscounted............          320          335
                                          for providing a
                                          sequence listing
                                          in response to an
                                          invitation under
                                          PCT rule 13ter.
1.445(a)(5)...................     2627  Late furnishing fee  Small...................          128          134
                                          for providing a
                                          sequence listing
                                          in response to an
                                          invitation under
                                          PCT rule 13ter.
1.445(a)(5)...................     3627  Late furnishing fee  Micro...................           64           67
                                          for providing a
                                          sequence listing
                                          in response to an
                                          invitation under
                                          PCT rule 13ter.
----------------------------------------------------------------------------------------------------------------

Section 1.482

    Section 1.482 is proposed to be amended by revising paragraphs (a) 
and (c) to set forth international preliminary examination and 
processing fees for international patent applications entering the 
international stage as authorized under section 10 of the AIA. The 
changes to the fee amounts indicated in Sec.  1.482 are shown in table 
25.

                                       Table 25--Section 1.482 Fee Changes
----------------------------------------------------------------------------------------------------------------
                                 Fee                                                                   Proposed
         CFR section             code        Description             Entity type        Current fee      fee
----------------------------------------------------------------------------------------------------------------
1.482(a)(1)(i)...............     1605  Preliminary           Undiscounted............         $640         $705
                                         examination fee--
                                         U.S. was the ISA.
1.482(a)(1)(i)...............     2605  Preliminary           Small...................          256          282
                                         examination fee--
                                         U.S. was the ISA.
1.482(a)(1)(i)...............     3605  Preliminary           Micro...................          128          141
                                         examination fee--
                                         U.S. was the ISA.
1.482(a)(1)(ii)..............     1606  Preliminary           Undiscounted............          800          880
                                         examination fee--
                                         U.S. was not the
                                         ISA.
1.482(a)(1)(ii)..............     2606  Preliminary           Small...................          320          352
                                         examination fee--
                                         U.S. was not the
                                         ISA.
1.482(a)(1)(ii)..............     3606  Preliminary           Micro...................          160          176
                                         examination fee--
                                         U.S. was not the
                                         ISA.
1.482(a)(2)..................     1607  Supplemental          Undiscounted............          640          705
                                         examination fee per
                                         additional
                                         invention.
1.482(a)(2)..................     2607  Supplemental          Small...................          256          282
                                         examination fee per
                                         additional
                                         invention.
1.482(a)(2)..................     3607  Supplemental          Micro...................          128          141
                                         examination fee per
                                         additional
                                         invention.
1.482(c).....................     1627  Late furnishing fee   Undiscounted............          320          335
                                         for providing a
                                         sequence listing in
                                         response to an
                                         invitation under
                                         PCT rule 13ter.
1.482(c).....................     2627  Late furnishing fee   Small...................          128          134
                                         for providing a
                                         sequence listing in
                                         response to an
                                         invitation under
                                         PCT rule 13ter.
1.482(c).....................     3627  Late furnishing fee   Micro...................           64           67
                                         for providing a
                                         sequence listing in
                                         response to an
                                         invitation under
                                         PCT rule 13ter.
----------------------------------------------------------------------------------------------------------------

Section 1.492

    Section 1.492 is proposed to be amended by revising paragraphs (a) 
through (f) and (h) through (j) to set forth national stage fees for 
international patent applications as authorized under section 10 of the 
AIA. The changes to the fee amounts indicated in Sec.  1.492 are shown 
in table 26.

                                       Table 26--Section 1.492 Fee Changes
----------------------------------------------------------------------------------------------------------------
                                 Fee                                                                   Proposed
         CFR section             code        Description             Entity type        Current fee      fee
----------------------------------------------------------------------------------------------------------------
1.492(a).....................     1631  Basic national stage  Undiscounted............         $320         $350
                                         fee.
1.492(a).....................     2631  Basic national stage  Small...................          128          140
                                         fee.
1.492(a).....................     3631  Basic national stage  Micro...................           64           70
                                         fee.
1.492(b)(2)..................     1641  National stage        Undiscounted............          140          145
                                         search fee--U.S.
                                         was the ISA.
1.492(b)(2)..................     2641  National stage        Small...................           56           58
                                         search fee--U.S.
                                         was the ISA.
1.492(b)(2)..................     3641  National stage        Micro...................           28           29
                                         search fee--U.S.
                                         was the ISA.
1.492(b)(3)..................     1642  National stage        Undiscounted............          540          565
                                         search fee--search
                                         report prepared and
                                         provided to USPTO.

[[Page 23264]]

 
1.492(b)(3)..................     2642  National stage        Small...................          216          226
                                         search fee--search
                                         report prepared and
                                         provided to USPTO.
1.492(b)(3)..................     3642  National stage        Micro...................          108          113
                                         search fee--search
                                         report prepared and
                                         provided to USPTO.
1.492(b)(4)..................     1632  National stage        Undiscounted............          700          770
                                         search fee--all
                                         other situations.
1.492(b)(4)..................     2632  National stage        Small...................          280          308
                                         search fee--all
                                         other situations.
1.492(b)(4)..................     3632  National stage        Micro...................          140          154
                                         search fee--all
                                         other situations.
1.492(c)(2)..................     1633  National stage        Undiscounted............          800          880
                                         examination fee--
                                         all other
                                         situations.
1.492(c)(2)..................     2633  National stage        Small...................          320          352
                                         examination fee--
                                         all other
                                         situations.
1.492(c)(2)..................     3633  National stage        Micro...................          160          176
                                         examination fee--
                                         all other
                                         situations.
1.492(d).....................     1614  Each independent      Undiscounted............          480          600
                                         claim in excess of
                                         three.
1.492(d).....................     2614  Each independent      Small...................          192          240
                                         claim in excess of
                                         three.
1.492(d).....................     3614  Each independent      Micro...................           96          120
                                         claim in excess of
                                         three.
1.492(e).....................     1615  Each claim in excess  Undiscounted............          100          200
                                         of 20.
1.492(e).....................     2615  Each claim in excess  Small...................           40           80
                                         of 20.
1.492(e).....................     3615  Each claim in excess  Micro...................           20           40
                                         of 20.
1.492(f).....................     1616  Multiple dependent    Undiscounted............          860          905
                                         claim.
1.492(f).....................     2616  Multiple dependent    Small...................          344          362
                                         claim.
1.492(f).....................     3616  Multiple dependent    Micro...................          172          181
                                         claim.
1.492(h).....................     1617  Search fee,           Undiscounted............          160          170
                                         examination fee or
                                         oath or declaration
                                         after the date of
                                         commencement of the
                                         national stage.
1.492(h).....................     2617  Search fee,           Small...................           64           68
                                         examination fee or
                                         oath or declaration
                                         after the date of
                                         commencement of the
                                         national stage.
1.492(h).....................     3617  Search fee,           Micro...................           32           34
                                         examination fee or
                                         oath or declaration
                                         after the date of
                                         commencement of the
                                         national stage.
1.492(i).....................     1618  English translation   Undiscounted............          140          145
                                         after thirty months
                                         from priority date.
1.492(i).....................     2618  English translation   Small...................           56           58
                                         after thirty months
                                         from priority date.
1.492(i).....................     3618  English translation   Micro...................           28           29
                                         after thirty months
                                         from priority date.
1.492(j).....................     1681  National stage        Undiscounted............          420          440
                                         application size
                                         fee--for each
                                         additional 50
                                         sheets that exceeds
                                         100 sheets.
1.492(j).....................     2681  National stage        Small...................          168          176
                                         application size
                                         fee--for each
                                         additional 50
                                         sheets that exceeds
                                         100 sheets.
1.492(j).....................     3681  National stage        Micro...................           84           88
                                         application size
                                         fee--for each
                                         additional 50
                                         sheets that exceeds
                                         100 sheets.
----------------------------------------------------------------------------------------------------------------

Section 1.555

    Section 1.555 is proposed to be amended by revising paragraph (a) 
to require the proposed information disclosure statement size fee under 
Sec.  1.17(v) for an information disclosure statement in compliance 
with Sec.  1.98 to be considered by the USPTO during the pendency of 
the reexamination proceeding.

Section 1.1031

    Section 1.1031 is proposed to be amended by revising paragraph (a) 
to set forth international design application fees as authorized under 
section 10 of the AIA. The changes to the fee amounts indicated in 
Sec.  1.1031 are shown in table 27.

                                      Table 27--Section 1.1031 Fee Changes
----------------------------------------------------------------------------------------------------------------
                                 Fee                                                                   Proposed
         CFR section             code        Description             Entity type        Current fee      fee
----------------------------------------------------------------------------------------------------------------
1.1031(a)....................     1781  Hague international   Undiscounted............         $120         $125
                                         design application--
                                         transmittal fee.
1.1031(a)....................     2781  Hague international   Small...................           48           50
                                         design application--
                                         transmittal fee.
1.1031(a)....................     3781  Hague international   Micro...................           24           25
                                         design application--
                                         transmittal fee.
----------------------------------------------------------------------------------------------------------------

Section 41.20

    Section 41.20 is proposed to be amended by revising paragraphs (a) 
and (b) to set forth petition and appeal fees as authorized under 
section 10 of the AIA. The changes to the fee amounts indicated in 
Sec.  41.20 are shown in table 28.

                                       Table 28--Section 41.20 Fee Changes
----------------------------------------------------------------------------------------------------------------
                                 Fee                                                                   Proposed
         CFR section             code        Description             Entity type        Current fee      fee
----------------------------------------------------------------------------------------------------------------
41.20(a).....................     1405  Petitions to the      Undiscounted............         $420         $440
                                         Chief
                                         Administrative
                                         Patent Judge under
                                         37 CFR 41.3.
41.20(a).....................     2405  Petitions to the      Small...................          420          440
                                         Chief
                                         Administrative
                                         Patent Judge under
                                         37 CFR 41.3.

[[Page 23265]]

 
41.20(a).....................     3405  Petitions to the      Micro...................          420          440
                                         Chief
                                         Administrative
                                         Patent Judge under
                                         37 CFR 41.3.
41.20(b)(1)..................     1401  Notice of appeal....  Undiscounted............          840          880
41.20(b)(1)..................     2401  Notice of appeal....  Small...................          336          352
41.20(b)(1)..................     3401  Notice of appeal....  Micro...................          168          176
41.20(b)(2)(ii)..............     1404  Filing a brief in     Undiscounted............        2,100        2,200
                                         support of an
                                         appeal in an inter
                                         partes
                                         reexamination
                                         proceeding.
41.20(b)(2)(ii)..............     2404  Filing a brief in     Small...................          840          880
                                         support of an
                                         appeal in an inter
                                         partes
                                         reexamination
                                         proceeding.
41.20(b)(2)(ii)..............     3404  Filing a brief in     Micro...................          420          440
                                         support of an
                                         appeal in an inter
                                         partes
                                         reexamination
                                         proceeding.
41.20(b)(3)..................     1403  Request for oral      Undiscounted............        1,360        1,430
                                         hearing.
41.20(b)(3)..................     2403  Request for oral      Small...................          544          572
                                         hearing.
41.20(b)(3)..................     3403  Request for oral      Micro...................          272          286
                                         hearing.
41.20(b)(4)..................     1413  Forwarding an appeal  Undiscounted............        2,360        2,480
                                         in an application
                                         or ex parte
                                         reexamination
                                         proceeding to the
                                         Board.
41.20(b)(4)..................     2413  Forwarding an appeal  Small...................          944          992
                                         in an application
                                         or ex parte
                                         reexamination
                                         proceeding to the
                                         Board.
41.20(b)(4)..................     3413  Forwarding an appeal  Micro...................          472          496
                                         in an application
                                         or ex parte
                                         reexamination
                                         proceeding to the
                                         Board.
----------------------------------------------------------------------------------------------------------------

Section 42.15

    Section 42.15 is proposed to be amended by revising paragraphs (a) 
through (e) and adding paragraph (f) to set forth inter partes review 
and post-grant review or covered business method patent review of a 
patent fees as authorized under section 10 of the AIA. The changes to 
the fee amounts indicated in Sec.  42.15 are shown in table 29.

                                       Table 29--Section 42.15 Fee Changes
----------------------------------------------------------------------------------------------------------------
                                 Fee                                                                   Proposed
         CFR section             code        Description             Entity type        Current fee      fee
----------------------------------------------------------------------------------------------------------------
42.15(a)(1)..................     1406  Inter partes review   Undiscounted............      $19,000      $23,750
                                         request fee--Up to
                                         20 claims.
42.15(a)(2)..................     1414  Inter partes review   Undiscounted............       22,500       28,125
                                         post-institution
                                         fee--Up to 20
                                         claims.
42.15(a)(3)..................     1407  Inter partes review   Undiscounted............          375          470
                                         request of each
                                         claim in excess of
                                         20.
42.15(a)(4)..................     1415  Inter partes post-    Undiscounted............          750          940
                                         institution request
                                         of each claim in
                                         excess of 20.
42.15(b)(1)..................     1408  Post-grant or         Undiscounted............       20,000       25,000
                                         covered business
                                         method review
                                         request fee--Up to
                                         20 claims.
42.15(b)(2)..................     1416  Post-grant or         Undiscounted............       27,500       34,375
                                         covered business
                                         method review post-
                                         institution fee--Up
                                         to 20 claims.
42.15(b)(3)..................     1409  Post-grant or         Undiscounted............          475          595
                                         covered business
                                         method review
                                         request of each
                                         claim in excess of
                                         20.
42.15(b)(4)..................     1417  Post-grant or         Undiscounted............        1,050        1,315
                                         covered business
                                         method review post-
                                         institution request
                                         of each claim in
                                         excess of 20.
42.15(c)(1)..................     1412  Petition for a        Undiscounted............          420          440
                                         derivation
                                         proceeding.
42.15(d).....................     1411  Request to make a     Undiscounted............          420          440
                                         settlement
                                         agreement available
                                         and other requests
                                         filed in a patent
                                         trial proceeding.
42.15(e).....................     1418  Pro hac vice          Undiscounted............          250          263
                                         admission fee.
42.15(f).....................      New  Request for review    Undiscounted............          n/a          440
                                         of a PTAB decision
                                         by the Director.
----------------------------------------------------------------------------------------------------------------

VII. Rulemaking Considerations

A. America Invents Act

    This proposed rule seeks to set or adjust fees under section 10(a) 
of the AIA as amended by the SUCCESS Act, Public Law 115-273, 132 Stat. 
4158. Section 10(a) of the AIA authorizes the Director of the USPTO to 
set or adjust by rule any patent fee established, authorized, or 
charged under 35 U.S.C. for any services performed, or materials 
furnished, by the USPTO. The SUCCESS Act extends the USPTO fee setting 
authority until September 2026. Section 10 prescribes that fees may be 
set or adjusted only to recover the aggregate estimated cost to the 
USPTO for processing, activities, services, and materials relating to 
patents, including administrative costs of the agency with respect to 
such patent fees. Section 10 authority includes flexibility to set 
individual fees in a way that furthers key policy factors, while taking 
into account the cost of the respective services. Section 10(e) of the 
AIA sets forth the general requirements for rulemakings that set or 
adjust fees under this authority. In particular, section 10(e)(1) 
requires the Director to publish in the Federal Register any proposed 
fee change under section 10 and include in such publication the 
specific rationale and purpose for the proposal, including the possible 
expectations or benefits resulting from the proposed change. For such 
rulemakings, the AIA requires that the USPTO provide a public comment 
period of not less than 45 days.
    PPAC advises the Under Secretary of Commerce for Intellectual 
Property and Director of the USPTO on the management, policies, goals, 
performance, budget, and user fees of

[[Page 23266]]

patent operations. When proposing fees under section 10 of the AIA, the 
Director must provide PPAC with the proposed fees at least 45 days 
prior to publishing the proposed fees in the Federal Register. PPAC 
then has at least 30 days within which to deliberate, consider, and 
comment on the proposal, as well as hold public hearing(s) on the 
proposed fees. PPAC must provide a written report to the public 
detailing the committee's comments, advice, and recommendations 
regarding the proposed fees before the USPTO issues a final rule. The 
USPTO must consider and analyze any comments, advice, or 
recommendations received from PPAC before setting or adjusting fees.
    Consistent with this framework, on April 20, 2023, the Director 
notified PPAC of the USPTO's intent to set or adjust patent fees and 
submitted a preliminary patent fee proposal with supporting materials. 
The preliminary patent fee proposal and associated materials are 
available on the fee setting section of the USPTO website at https://www.uspto.gov/FeeSettingAndAdjusting. PPAC held a public hearing at the 
USPTO's headquarters in Alexandria, Virginia, on May 18, 2023, where 
members of the public were given the opportunity to provide oral 
testimony. Transcripts of the hearing are available for review on the 
USPTO website at https://www.uspto.gov/sites/default/files/documents/PPAC_Hearing_Transcript-20230518.pdf. Members of the public were also 
given the opportunity to submit written comments for PPAC to consider 
and these comments are available on Regulations.gov at https://www.regulations.gov/document/PTO-P-2023-0017-0001. On August 14, 2023, 
PPAC released a written report setting forth in detail their comments, 
advice, and recommendations regarding the preliminary proposed fees. 
The PPAC Report is available on the USPTO website at https://www.uspto.gov/sites/default/files/documents/PPAC-Report-on-2023-Fee-Proposal.docx. The USPTO considered and analyzed all comments, advice, 
and recommendations received from PPAC before publishing this NPRM.

B. Regulatory Flexibility Act (RFA)

    The USPTO publishes this Initial Regulatory Flexibility Analysis 
(IRFA) as required by the RFA (5 U.S.C. 601 et seq.) to examine the 
impact of this proposed rule on small entities. Under the RFA, whenever 
an agency is required by 5 U.S.C. 553 (or any other law) to publish an 
NPRM, the agency must prepare and make available for public comment an 
IRFA, unless the agency certifies under 5 U.S.C. 605(b) that this 
proposed rule, if implemented, will not have a significant economic 
impact on a substantial number of small entities. Given that this 
proposed fee schedule is projected to result in $2,050 million in 
additional aggregate revenue over the current fee schedule (baseline) 
for the period including FY 2025 to FY 2029, the USPTO acknowledges 
that the fee adjustments proposed will impact all entities seeking 
patent protection and could have a significant impact on small and 
micro entities. The $2,050 million in additional aggregate revenue 
results from an additional $301 million in FY 2025, $434 million in FY 
2026, $437 million in FY 2027, $437 million in FY 2028, and $441 
million in FY 2029.
    While the USPTO welcomes all comments on this IRFA, it particularly 
seeks comments describing the type and extent of the impact of the 
proposed patent fees on commenters' specific businesses. In describing 
the impact, the USPTO requests biographic detail about the impacted 
businesses or concerns, including the size, average annual revenue, 
past patent activity (e.g., applications submitted, contested cases 
pursued, maintenance fees paid, patents abandoned, etc.), and planned 
patent activity of the impacted business or concern, where feasible. 
The USPTO will use this information to further assess the impact of 
this proposed rule on small entities. Where possible, comments should 
also describe any recommended alternative methods of setting and 
adjusting patent fees that would further reduce the impact on small 
entities.
    Items 1-5 below discuss the five items specified in 5 U.S.C. 
603(b)(1)-(5) to be addressed in an IRFA. Item 6 below discusses the 
alternatives to this proposal that were considered.
    1. A description of the reasons why the action by the agency is 
being considered.
    Section 10 of the AIA authorizes the Director of the USPTO to set 
or adjust by rule any patent fee established, authorized, or charged 
under 35 U.S.C, for any services performed, or materials furnished, by 
the USPTO. Section 10 prescribes that patent fees may be set or 
adjusted only to recover the aggregate estimated costs for processing, 
activities, services, and materials relating to patents, including 
USPTO administrative costs with respect to such patent fees. This 
proposed fee schedule will recover the aggregate costs of patent 
operations while enabling the USPTO to predictably finance the agency's 
daily operations and mitigate financial risks.
    2. The objectives of, and legal basis for, the proposed rule.
    Since its inception, the AIA strengthened the patent system by 
affording the USPTO the ``resources it requires to clear the still 
sizeable backlog of patent applications and move forward to deliver to 
all American inventors the first rate service they deserve.'' H.R. Rep. 
No. 112-98(I), at 163 (2011). The objective of this proposed rule is to 
set or adjust patent fees under section 10 of the AIA to recover the 
aggregate costs of patent operations and secure sufficient revenue to 
deliver efficient and reliable services to the USPTO's stakeholders. 
The fee revenue would help to promote clear, enforceable patents that 
are essential to economic growth, global competitiveness, and promoting 
innovation. Additional information on the USPTO's goals and operating 
requirements may be found in the ``USPTO FY 2025 President's Budget 
Request,'' available on the USPTO website at https://www.uspto.gov/about-us/performance-and-planning/budget-and-financial-information.
    3. A description of and, where feasible, an estimate of the number 
of small entities to which the proposed rule will apply.
a. SBA Size Standard
    The Small Business Act (SBA) size standards applicable to most 
analyses conducted to comply with the RFA are set forth in 13 CFR 
121.201. These regulations generally define small businesses as those 
with less than a specified 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. As 
provided by the RFA, and after consulting with the Small Business 
Administration, the USPTO formally adopted an alternate size standard 
for the purpose of conducting an analysis or making a certification 
under the RFA 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, 67109 (Nov. 20, 2006), 1313 Off. Gaz. Pat. Office 37, 60 (Dec. 
12, 2006). The USPTO's alternate small business size standard consists 
of the SBA's previously established size standard for entities entitled 
to pay reduced patent fees. See 13 CFR 121.802.
    Unlike the SBA's generally applicable small business size 
standards, the size standard for the USPTO is not industry-specific. 
The USPTO's definition of a small business concern for RFA

[[Page 23267]]

purposes is a business or other concern that: (1) meets the SBA's 
definition of a ``business concern or concern'' set forth in Sec.  
121.105, and (2) meets the size standards set forth in Sec.  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) that 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 that would not qualify as a nonprofit 
organization or a small business concern under this definition. See 71 
FR at 67109, 1313 Off. Gaz. Pat. Office 60.
    A patent applicant can self-identify on a patent application as 
qualifying as a small entity or may provide certification of micro 
entity status for reduced patent fees under the USPTO's alternative 
size standard. The data is captured and tracked for each patent 
application submitted.
b. Small Entity Defined
    The AIA, as amended by the UAIA, provides that fees set or adjusted 
under section 10(a) ``for filing, searching, examining, issuing, 
appealing, and maintaining patent applications and patents shall be 
reduced by 60 percent'' with respect to the application of such fees to 
any ``small entity'' (as defined in Sec.  1.27) that qualifies for 
reduced fees under 35 U.S.C. 41(h)(1). In turn, 125 Stat. at 316-17. 35 
U.S.C. 41(h)(1) provides that certain patent fees ``shall be reduced by 
60 percent'' for a small business concern as defined by section 3 of 
the SBA, and to any independent inventor or nonprofit organization as 
defined in regulations described by the Director.
c. Micro Entity Defined
    Section 10(g) of the AIA created a new category of entity called a 
``micro entity.'' 35 U.S.C. 123; see also 125 Stat. at 318-19. Section 
10(b) of the AIA, as amended by the UAIA, provides that the fees set or 
adjusted under section 10(a) ``for filing, searching, examining, 
issuing, appealing, and maintaining patent applications and patents 
shall be reduced by 80 percent with respect to the application of such 
fees to any micro entity as defined by 35 U.S. Code 123.'' 125 Stat. at 
315-17. 35 U.S.C. 123(a) defines a ``micro entity'' as an applicant who 
makes a certification that the applicant: (1) qualifies as a small 
entity as defined in Sec.  1.27; (2) has not been named as an inventor 
on more than four previously filed patent applications, other than 
applications filed in another country, provisional applications under 
35 U.S.C. 111(b), 35 U.S.C. 111(b), or Patent Cooperation Treaty (PCT) 
applications for which the basic national fee under 35 U.S.C. 41(a) was 
not paid; (3) did not, in the calendar year preceding the calendar year 
in which the applicable fee is being paid, have a gross income, as 
defined in section 61(a) of the Internal Revenue Code of 1986 (26 
U.S.C. 61(a)), exceeding three times the median household income for 
that preceding calendar year, as most recently reported by the Bureau 
of the Census; and (4) has not assigned, granted, or conveyed, and is 
not under an obligation by contract or law, to assign, grant, or 
convey, a license or other ownership interest in the application 
concerned to an entity exceeding the income limit set forth in (3) 
above. See 125 Stat. at 318; see also https://www.uspto.gov/PatentMicroEntity. 35 U.S.C. 123(d) also defines a ``micro'' as an 
applicant who certifies that: (1) The applicant's employer, from which 
the applicant obtains the majority of the applicant's income, is an 
institution of higher education as defined in section 101(a) of the 
Higher Education Act of 1965 (20 U.S.C. 1001(a)); or (2) the applicant 
has assigned, granted, conveyed, or is under an obligation by contract 
or law, to assign, grant, or convey, a license or other ownership 
interest in the particular applications to such an institution of 
higher education.
d. Estimate of Number of Small Entities Affected
    The changes in this proposed rule will apply to any entity, 
including small and micro entities, that pays any patent fee set forth 
in the NPRM. The reduced fee rates (60% for small entities and 80% for 
micro entities) will continue to apply to any small entity asserting 
small entity status and to any micro entity certifying micro entity 
status for filing, searching, examining, issuing, appealing, and 
maintaining patent applications and patents.
    The USPTO reviews historical data to estimate the percentages of 
application filings asserting small entity status. Table 30 presents a 
summary of such small entity filings by type of application (utility, 
reissue, plant, design) over the last five years.

                     Table 30--Number of Patent Applications Filed in the Last Five Years *
----------------------------------------------------------------------------------------------------------------
                                                   FY2020       FY2021       FY2022      FY2023 **     Average
----------------------------------------------------------------------------------------------------------------
Utility:
    All.......................................      607,496      594,078      590,086       594,858      596,630
    Small.....................................      139,064      142,488      140,131       142,646      141,082
    % Small...................................        22.9%        24.0%        23.7%         24.0%        23.6%
    Micro.....................................       19,408       19,927       18,467        17,559       18,840
    % Micro...................................         3.2%         3.4%         3.1%          3.0%         3.2%
Reissue:
    All.......................................        1,204        1,195        1,245         1,115        1,190
    Small.....................................          363          381          394           381          380
    % Small...................................        30.1%        31.9%        31.6%         34.2%        31.9%
    Micro.....................................           31           19           33            14           24
    % Micro...................................         2.6%         1.6%         2.7%          1.3%         2.0%
Plant:
    All.......................................        1,043          945          933           865          947
    Small.....................................          504          424          444           415          447
    % Small...................................        48.3%        44.9%        47.6%         48.0%        47.2%
    Micro.....................................            7            6           10             5            7
    % Micro...................................         0.7%         0.6%         1.1%          0.6%         0.7%
Design:
    All.......................................       50,002       56,086       55,670        54,659       54,104
    Small.....................................       19,035       19,892       18,935        20,354       19,554
    % Small...................................        38.1%        35.5%        34.0%         37.2%        36.1%
    Micro.....................................        9,042       15,154       14,466        14,239       13,225

[[Page 23268]]

 
    % Micro...................................        18.1%        27.0%        26.0%         26.1%        24.4%
----------------------------------------------------------------------------------------------------------------
* The patent application filing data in this table includes RCEs.
** FY 2023 application filing data are preliminary and will be finalized in the FY 2024 Annual Financial Report
  (AFR) and Annual Performance Plan and Annual Performance Report (APPR).

    Because the percentage of small entity filings varies widely 
between application types, the USPTO has averaged the small entity 
filing rates over the past five years for those application types to 
estimate future filing rates by small and micro entities. Those average 
rates appear in the last column of table 30. The USPTO estimates that 
small entity filing rates will continue for the next five years at 
these average historic rates.
    The USPTO forecasts the number of projected patent applications 
(i.e., workload) for the next five years using a combination of 
historical data, economic analysis, and subject matter expertise. The 
USPTO estimates that UPR patent application filings will grow by 0.4% 
in FY 2024 and about 1.5% per year on average from FY 2025 through FY 
2029. Design patent applications are forecast independently of UPR 
applications because they exhibit different filing behaviors.
    Using the estimated filings for the next five years, and the 
average historic rates of small entity filings, table 31 presents the 
USPTO's estimates of the number of patent application filings by all 
applicants, including small and micro entities, over the next five 
fiscal years by application type.
    The USPTO has previously undertaken an elasticity analysis to 
examine if fee adjustments may impact small entities and whether 
increases in fees would result in some such entities not submitting 
applications. Elasticity measures how sensitive demand for services by 
patent applicants and patentees is to fee changes. If elasticity is low 
enough (demand is inelastic), then fee increases will not reduce 
patenting activity enough to negatively impact overall revenues. If 
elasticity is high enough (demand is elastic), then increasing fees 
will decrease patenting activity enough to decrease revenue. The USPTO 
analyzed elasticity at the overall filing level across all patent 
applicants with regard to entity size and estimated the potential 
impact to patent application filings across entities. Additional 
information about how the USPTO estimates elasticity is provided in 
``Setting and Adjusting Patent Fees during Fiscal Year 2020--
Description of Elasticity Estimates,'' available on the USPTO website 
at https://www.uspto.gov/sites/default/files/documents/Elasticity_Appendix.docx.

                        Table 31--Estimated Numbers of Patent Applications, FY 2024-2029
----------------------------------------------------------------------------------------------------------------
                                      FY 2024
                                     (current)     FY 2025      FY 2026      FY 2027      FY 2028      FY 2029
----------------------------------------------------------------------------------------------------------------
Utility--All......................      595,315      607,897      613,902      622,038      628,036      641,784
Reissue--All......................          640          660          680          700          700          700
Plant--All........................          860          860          860          860          860          860
Design--All.......................       54,986       57,185       59,472       62,446       65,568       68,847
    Total--All....................      651,801      666,602      674,914      686,044      695,164      712,191
----------------------------------------------------------------------------------------------------------------

    4. A description of the projected reporting, recordkeeping, and 
other compliance requirements of the proposed rule, including an 
estimate of the classes of small entities which will be subject to the 
requirement and type of professional skills necessary for preparation 
of the report or record.
    If implemented, this proposed rule will not change the burden of 
existing reporting and recordkeeping requirements for payment of fees. 
The current requirements for small and micro entities will continue to 
apply. Therefore, the professional skills necessary to file and 
prosecute an application through issue and maintenance remain unchanged 
under this proposal. This action proposes only to adjust patent fees 
and not to set procedures for asserting small entity status or 
certifying micro entity status, as previously discussed.
    The full proposed fee schedule (see Part VI: Discussion of Specific 
Rules) is set forth in the NPRM. The proposed fee schedule sets or 
adjusts 455 patent fees in total. This includes 73 new fees.
    5. Identification, to the extent practicable, of all relevant 
Federal rules which may duplicate, overlap, or conflict with the 
proposed rules.
    The USPTO is the sole agency of the U.S. Government responsible for 
administering the provisions of 35 U.S.C. pertaining to examining and 
granting patents. It is solely responsible for issuing rules to comply 
with section 10 of the AIA. No other Federal, State, or local entity 
has jurisdiction over the examination and granting of patents.
    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 PCT). Nevertheless, the USPTO 
believes that there are no other duplicative or overlapping rules.
    6. A description of any significant alternatives to the proposed 
rules which accomplish the stated objectives of applicable statutes and 
which minimize any significant economic impact of the proposed rules on 
small entities.
    The USPTO considered several alternative approaches to this 
proposed rule, discussed below, including full cost recovery for 
individual services, an across-the-board adjustment to fees, and a 
baseline (current fee rates). The discussion here begins with a 
description of the fee schedule adopted for this proposed rule.
a. Alternative 1: Proposed Alternative--Set and Adjust Patent Fees
    The alternative proposed herein secures the USPTO's required 
revenue to facilitate the effective administration of the U.S. patent 
system, including implementing the Strategic Plan. The revenue will 
allow the USPTO to

[[Page 23269]]

continue to balance timely examination--to help innovators bring their 
ideas and products to impact more quickly and efficiently--with 
improvements in patent quality--particularly, the robustness and 
reliability of issued patents--and ensure the USPTO can resource 
mission success. This will benefit all applicants, including small and 
micro entities, without undue burden to patent applicants and holders, 
barriers to entry, or reduced incentives to innovate. This alternative 
maintains small and micro entity discounts. Compared to the current fee 
schedule, there are no new small or micro entity fee codes being 
extended to existing undiscounted fee rates and none are being 
eliminated.
    As discussed throughout this document, the fee changes proposed in 
this alternative are moderate compared to other alternatives. Given 
that the proposed fee schedule will result in increased aggregate 
revenue under this alternative, small and micro entities would pay 
higher fees when compared to the current fee schedule (Alternative 4).
    In summary, the fees to obtain a patent will increase. All fees are 
subject to the 5% across-the-board increase. In addition to the across-
the-board increase, some fees will be subject to a larger increase. For 
example, the fee rate for a first RCE will increase by 10%, the second 
RCE by 25%, and third and subsequent RCEs by 80%, respectively. Also, 
AIA trial fees will increase 25% to better align the fee rates charged 
with the actual costs borne by the USPTO to provide these proceedings 
and so PTAB can continue to maintain the appropriate level of judicial 
and administrative resources to continue to provide high-quality and 
timely decisions for AIA trials.
    Adjusting the patent fee schedule as proposed in this NPRM allows 
the USPTO to implement the patent-related strategic goals and 
objectives documented in the Strategic Plan and to carry out 
requirements as described in the FY 2025 Budget. Specifically, the 
revenue from this alternative is sufficient to recover the aggregate 
costs of patent operations and to support the strategic objectives to 
issue and maintain robust and reliable patents; improve patent 
application pendency; optimize the patent application process to enable 
efficiencies for applicants and other stakeholders; and enhance 
internal processes to prevent fraudulent and abusive behaviors that do 
not embody the USPTO's mission. Alternative 1 focuses on building 
resiliency against financial shocks by maintaining the minimum 
operating reserve balance (approximately one month of operating 
expenses) while building the operating reserve balance to the optimal 
reserve target (approximately three months of operating expenses). 
While the other alternatives discussed facilitate progress toward some 
of the USPTO's goals, the proposed alternative is the only one that 
does so in a way that does not impose undue costs on patent applicants 
and holders.
    The fee schedule for Alternative 1: Proposed Alternative-Set and 
Adjust Patent Fees is available on the fee setting section of the USPTO 
website at https://www.uspto.gov/FeeSettingAndAdjusting, in the 
document titled ``Setting and Adjusting Patent Fees During Fiscal Year 
2025--IRFA Tables.'' For the comparison between proposed fees under 
Alternative 1 and current fees, the ``current fees'' column displays 
the fees that are in effect as of the publication of this NPRM. This 
column is used to calculate dollar and percent fee change compared to 
proposed fees.
b. Other Alternatives Considered
    In addition to the proposed fee schedule set forth in Alternative 1 
above, several other alternative approaches were considered. For each 
alternative considered, the USPTO calculated proposed fees and the 
resulting revenue derived by each alternative scenario. The proposed 
fees and their corresponding revenue tables are available on the fee 
setting section of the USPTO website at https://www.uspto.gov/FeeSettingAndAdjusting. Please note, only the fees outlined in 
Alternative 1 are proposed in this NPRM; other scenarios are shown only 
to demonstrate the analysis of other options.
Alternative 2: Unit Cost Recovery
    It is common practice in the Federal Government to set individual 
fees at a level sufficient to recover the cost of that single service. 
In fact, official guidance on user fees, as cited in OMB Circular A-25, 
``User Charges,'' states that user charges (fees) should be sufficient 
to recover the full cost to the Federal Government of providing the 
particular service, resource, or good, when the government is acting in 
its capacity as sovereign.
    As such, the USPTO considered setting most individual undiscounted 
fees at the historical cost of performing the activities related to the 
particular service in FY 2022. The USPTO recognizes that using FY 2022 
costs to set fee rates beginning in FY 2025 does not account for 
inflationary factors that would likely increase costs and necessitate 
higher fees in the out-years. However, the USPTO contends that the FY 
2022 data is the best unit cost data available to inform this analysis.
    There are several complexities in achieving individual fee unit 
cost recovery for the patent fee schedule. The most significant is the 
AIA requirement to provide a 60% discount on fees to small entities and 
an 80% discount on fees to micro entities. To account for this 
requirement, this alternative retains existing small and micro entity 
discounts where eligible under AIA authority. To provide these 
discounts and still generate sufficient revenue to recover the 
anticipated budgetary requirements over the five-year period, 
maintenance fees must be set significantly above unit cost under this 
alternative. Note that the USPTO no longer collects activity-based 
information for maintenance fees, and previous year unit costs were 
negligible.
    Except for maintenance fees, this alternative sets fees for which 
there is no FY 2022 cost data at current rates. For the small number of 
services that have a variable fee, the aggregate revenue table does not 
list a fee. Instead, for those services with an estimated workload, the 
workload is listed in dollars rather than units to develop revenue 
estimates. Fees without either a fixed fee rate or a workload estimate 
are assumed to provide zero revenue.
    Alternative 2 does not align well with the strategic and policy 
goals of this proposed rule. Front-end services (i.e., filing, search, 
and examination) are costlier for the USPTO to perform than back-end 
services (i.e., issuance and maintenance), but both the current (the 
Baseline) and proposed fee schedule (Alternative 1) are structured to 
collect fees at filing below the cost and more fees further along in 
the process, when the patent owner has better information about a 
patent's value, rather than at the time of filing, when applicants are 
less certain about the value of their invention. Setting fees at the 
cost of the service under Alternative 2 would reverse the long-
established policy to set front-end fees below cost to foster 
innovation and would create a barrier for entry into the patent system.
    The USPTO has estimated the potential quantitative elasticity 
impacts for application filings (e.g., filing, search, and examination 
fees), maintenance renewals (all three stages), and other major fee 
categories. Results of this analysis indicate that a high cost of entry 
into the patent system could lead to a significant decrease in the 
incentives to invest in innovative

[[Page 23270]]

activities among all entities, especially for small and micro entities. 
Under the current fee schedule, maintenance fees subsidize all 
applications. By setting fees to recover the cost of each service at 
each point in the application process, the USPTO is effectively 
charging high fees for every patent application, meaning those 
applicants who have less information about the patentability of their 
claims or the market value of their invention may be less likely to 
pursue patent prosecution. The ultimate effect of these changes in 
behavior is likely to stifle innovation. While the loss of the front-
end subsidy designed to promote innovation strategies is the most 
obvious cost of this alternative, the impacts of much costlier patent 
processing options (e.g., RCEs and appeals) are also noticeable.
    Similarly, the USPTO suspects that patent renewal rates could 
change as well, given fee reductions for maintenance fees at each of 
the three stages. While some innovators and firms may choose to file 
fewer applications given the higher front-end costs, others, whose 
claims are allowed or upheld, may seek to fully maximize the benefits 
of obtaining a patent by keeping those patents in force for longer than 
they would have previously (i.e., under the baseline). In the 
aggregate, patents that are maintained beyond their useful life weaken 
the IP system by slowing the rate of public accessibility and follow-on 
inventions, which is contrary to the USPTO's policy factor of promoting 
innovation strategies. In sum, this alternative is inadequate to 
accomplish the goals as stated in Part IV: Rulemaking Goals and 
Strategies.
    The fee schedule for Alternative 2: Unit Cost Recovery is available 
on the fee setting section of the USPTO website at https://www.uspto.gov/FeeSettingAndAdjusting, in the document titled ``Setting 
and Adjusting Patent Fees During Fiscal Year 2025--IRFA Tables.'' For 
the comparison between proposed (unit cost recovery) fees and current 
fees, the ``current fees'' column displays the fees that are in effect 
as of the publication of this NPRM. This column is used to calculate 
dollar and percent fee change compared to proposed fees.
Alternative 3: Across-the-Board Adjustment
    In years past, the USPTO used its authority to adjust statutory 
fees annually according to increases in the consumer price index (CPI), 
which is a commonly used measure of inflation. Building on this prior 
approach and incorporating the additional authority under the AIA to 
set small and micro entity fees, Alternative 3 would set fees by 
applying a one-time 12.5%, across-the-board inflationary increase to 
the baseline (current fees) beginning in FY 2025. A 12.5% increase 
represents the change in revenue needed to achieve the aggregate 
revenue necessary to recover the aggregate costs laid out in the FY 
2025 Budget.
    Under this alternative, nearly every existing fee would be 
increased, no new fees would be introduced, and no fees would be 
discontinued or reduced. This alternative maintains the status quo 
ratio of front-end and back-end fees, given that all fees would be 
adjusted by the same escalation factor, thereby promoting innovation 
strategies and allowing applicants to gain access to the patent system 
through fees set below cost while patent holders pay issue and 
maintenance fees above cost to subsidize the below-cost front-end fees. 
Alternative 3 nevertheless fails to implement policy factors and 
deliver benefits beyond what exists in the Baseline fee schedule (e.g., 
no fee adjustments to offer new patent prosecution options or 
facilitate more effective administration of the patent system).
    The fee schedule for Alternative 3: Across-the-Board Adjustment is 
available on the fee setting section of the USPTO website at https://www.uspto.gov/FeeSettingAndAdjusting, in the document titled ``Setting 
and Adjusting Patent Fees During Fiscal Year 2025--IRFA Tables.'' For 
the comparison between proposed (across-the-board adjustment) fees and 
current fees, the ``current fees'' column displays the fees that are in 
effect as of the publication of this NPRM. This column is used to 
calculate dollar and percent fee change compared to proposed fees.
Alternative 4: Baseline (Current Fee Schedule)
    The USPTO considered a no-action alternative. This alternative 
would retain the status quo, meaning that the USPTO would continue the 
small and micro entity discounts that the Congress provided in section 
10 of the AIA, as amended by the UAIA, and maintain the fees that 
became effective on December 29, 2022.
    Alternative 4 would not secure aggregate revenue to recover the 
aggregate costs laid out in the FY 2025 Budget. Under this alternative, 
the USPTO only expects to collect sufficient revenue to continue 
executing some, not all, of the patent priorities. For example, the 
USPTO plans to hire approximately 800 to 850 patent examiners in FY 
2024 through FY 2025, and between 700 and 900 patent examiners in FY 
2026 through FY 2029 (averaging 350 over estimated attrition levels) 
during the five-year planning horizon. This additional examination 
capacity will allow the agency to improve patent reliability and 
maintain patent term adjustment (PTA) compliance rates. Alternative 4 
provides neither sufficient resources to hire the same number of 
examiners nor sufficient resources to continue building the patent 
operating reserve to its optimal level in the five-year planning 
horizon. In fact, current estimates project that under the Baseline fee 
schedule, the USPTO would withdraw funds from the patent operating 
reserve in every year, until the reserve is exhausted during FY 2027. 
This approach would not provide sufficient aggregate revenue to 
accomplish the USPTO's rulemaking goals as stated in Part IV: 
Rulemaking Goals and Strategies. IT improvements, progress on timely 
processing and quality, and other improvement activities would 
continue, but at a significantly slower rate as increases in core 
patent examination costs crowd out funding for other improvements. 
Likewise, without a fee increase, the USPTO would deplete its operating 
reserves, leaving the USPTO vulnerable to fiscal and economic events. 
This would expose core operations to unacceptable levels of financial 
risk and would position the USPTO to have to return to making 
inefficient, short-term funding decisions.
Alternatives Specified by the RFA
    The RFA provides that an agency also consider four specified 
``alternatives'' or approaches, namely: (i) establishing different 
compliance or reporting requirements or timetables that take into 
account the resources available to small entities; (ii) clarifying, 
consolidating, or simplifying compliance and reporting requirements 
under the rule for small entities; (iii) using performance rather than 
design standards; and (iv) exempting small entities from coverage of 
the rule, or any part thereof. 5 U.S.C. 604(c). The USPTO discusses 
each of these specified alternatives or approaches below and describes 
how this NPRM is adopting these approaches.
i. Differing Requirements
    As discussed above, the changes proposed in this proposed rule 
would continue existing fee discounts for small and micro entities that 
take into account the reduced resources available to them as well as 
offer new discounts when applicable under AIA authority. Specifically, 
micro entities would continue to receive an 80% reduction in

[[Page 23271]]

most patent fees under this proposal and small entities that do not 
qualify as micro entities would continue to receive a 60% reduction in 
most patent fees.
    This proposed rule sets fee levels but does not set or alter 
procedural requirements for asserting small or micro entity status. To 
pay reduced patent fees, small entities must merely assert small entity 
status to pay reduced patent fees. The small entity may make this 
assertion by either checking a box on the transmittal form, ``Applicant 
claims small entity status,'' or by paying the basic filing or basic 
national small entity fee exactly. The process to claim micro entity 
status is similar in that eligible entities need only submit a written 
certification of their status prior to or at the time a reduced fee is 
paid. This proposed rule does not change any reporting requirements for 
any small or micro entity. For both small and micro entities, the 
burden to establish their status is nominal (making an assertion or 
submitting a certification) and the benefit of the fee reductions (60% 
for small entities and 80% for micro entities) is significant.
    This proposed rule makes the best use of differing requirements for 
small and micro entities. It also makes the best use of the redesigned 
fee structure, as discussed further below.
ii. Clarification, Consolidation, or Simplification of Requirements
    This proposed rule pertains to setting or adjusting patent fees. 
Any compliance or reporting requirements proposed in this rule are de 
minimis and necessary to implement lower proposed fees. Therefore, any 
clarifications, consolidations, or simplifications to compliance and 
reporting requirements for small entities are not applicable or would 
not achieve the objectives of this rulemaking.
iii. Performance Standards
    Performance standards do not apply to the current proposed rule.
iv. Exemption for Small and Micro Entities
    The proposed changes here maintain a 60% reduction in fees for 
small entities and an 80% reduction in fees for micro entities. The 
USPTO considered exempting small and micro entities from paying 
increased patent fees but determined that the USPTO would lack 
statutory authority for this approach. Section 10(b) of the AIA, as 
amended by the UAIA, provides that ``fees set or adjusted under 
subsection (a) for filing, searching, examining, issuing, appealing, 
and maintaining patent applications and patents shall be reduced by 60 
percent [for small entities] and shall be reduced by 80 percent [for 
micro entities]'' (emphasis added). Neither the AIA, UAIA, nor any 
other statute authorizes the USPTO simply to exempt small or micro 
entities, as a class of applicants, from paying increased patent fees.

C. Executive Order 12866 (Regulatory Planning and Review)

    This proposed rule has been determined to be economically 
significant for purposes of Executive Order (E.O.) 12866 (Sept. 30, 
1993), as amended by E.O. 14094 (April 6, 2023), Modernizing Regulatory 
Review. The USPTO has developed an RIA as required for rulemakings 
deemed to be economically significant. The complete RIA is available on 
the fee setting section of the USPTO website at https://www.uspto.gov/FeeSettingAndAdjusting.

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

    The USPTO has complied with E.O. 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 proposed rule; (2) tailored the proposed 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 online 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 13132 (Federalism)

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

F. 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 E.O. 
13175 (Nov. 6, 2000).

G. Executive Order 13211 (Energy Effects)

    This rulemaking is not a significant energy action under E.O. 13211 
because this proposed 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 E.O. 
13211 (May 18, 2001).

H. 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 E.O. 12988 (Feb. 5, 1996).

I. Executive Order 13045 (Protection of Children)

    This rulemaking does not concern an environmental risk to health or 
safety that may disproportionately affect children under E.O. 13045 
(Apr. 21, 1997).

J. Executive Order 12630 (Taking of Private Property)

    This rulemaking will not affect a taking of private property or 
otherwise have taking implications under E.O. 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.), 
prior to issuing any final rule, the United States Patent and Trademark 
Office will submit a report containing the rule and other required 
information to the United States Senate, the United States House of 
Representatives, and the Comptroller General of the Government 
Accountability Office. The changes in this proposed rule are expected 
to result in an annual effect on the economy of $100 million 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 
proposed rule is a ``major rule'' as defined in 5 U.S.C. 804(2).

[[Page 23272]]

L. Unfunded Mandates Reform Act of 1995

    The proposed changes set forth in this rulemaking 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 (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 (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

    This rulemaking 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 1969. 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 not 
applicable because this rulemaking does not contain provisions which 
involve the use of technical standards.

O. Paperwork Reduction Act

    The Paperwork Reduction Act of 1995 (44 U.S.C. 3501 et seq.) 
requires that the USPTO consider the impact of paperwork and other 
information collection burdens imposed on the public. This proposed 
rule involves information collection requirements which are subject to 
review by the OMB under the Paperwork Reduction Act of 1995 (44 U.S.C. 
3501-3549). The collection of information involved in this proposed 
rule has been reviewed and previously approved by OMB under control 
numbers 0651-0012, 0651-0016, 0651-0017, 0651-0020, 0651-0021, 0651-
0022, 0651-0024, 0651-0027, 0651-0031, 0651-0032, 0651-0033, 0651-0034, 
0651-0035, 0651-0059, 0651-0062, 0651-0063, 0651-0064, 0651-0069, 0651-
0073, and 0651-0075.
    Notwithstanding any other provision of law, no person is required 
to respond to nor shall any 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.

P. E-Government Act Compliance

    The USPTO is committed to compliance with the E-Government Act to 
promote the use of the internet and other information technologies, to 
provide increased opportunities for citizen access to government 
information and services, and for other purposes.

List of Subjects

37 CFR Part 1

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

37 CFR Part 41

    Administrative practice and procedure, Inventions and patents, 
Lawyers, Reporting and recordkeeping requirements.

37 CFR Part 42

    Administrative practice and procedure, Inventions and patents, 
Lawyers.

    For the reasons set forth in the preamble, 37 CFR parts 1, 41, and 
42 are proposed to be amended as follows:

PART 1--RULES OF PRACTICE IN PATENT CASES

0
1. The authority citation for 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 revising the tables in paragraphs (a) 
through (s) and (u) to read as follows:


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

    (a) * * *

                        Table 1 to Paragraph (a)
------------------------------------------------------------------------
 
------------------------------------------------------------------------
By a micro entity (Sec.   1.29)............................       $70.00
By a small entity (Sec.   1.27(a)).........................       140.00
By a small entity (Sec.   1.27(a)) if the application is           70.00
 submitted in compliance with the USPTO electronic filing
 system (Sec.   1.27(b)(2))................................
By other than a small or micro entity......................       350.00
------------------------------------------------------------------------

    (b) * * *

                        Table 2 to Paragraph (b)
------------------------------------------------------------------------
 
------------------------------------------------------------------------
By a micro entity (Sec.   1.29)............................       $60.00
By a small entity (Sec.   1.27(a)).........................       120.00
By other than a small or micro entity......................       300.00
------------------------------------------------------------------------

    (c) * * *

                        Table 3 to Paragraph (c)
------------------------------------------------------------------------
 
------------------------------------------------------------------------
By a micro entity (Sec.   1.29)............................       $48.00
By a small entity (Sec.   1.27(a)).........................        96.00
By other than a small or micro entity......................       240.00
------------------------------------------------------------------------


[[Page 23273]]

    (d) * * *

                        Table 4 to Paragraph (d)
------------------------------------------------------------------------
 
------------------------------------------------------------------------
By a micro entity (Sec.   1.29)............................       $63.00
By a small entity (Sec.   1.27(a)).........................       126.00
By other than a small or micro entity......................       315.00
------------------------------------------------------------------------

    (e) * * *

                        Table 5 to Paragraph (e)
------------------------------------------------------------------------
 
------------------------------------------------------------------------
By a micro entity (Sec.   1.29)............................       $70.00
By a small entity (Sec.   1.27(a)).........................       140.00
By other than a small or micro entity......................       350.00
------------------------------------------------------------------------

    (f) * * *

                        Table 6 to Paragraph (f)
------------------------------------------------------------------------
 
------------------------------------------------------------------------
By a micro entity (Sec.   1.29)............................       $34.00
By a small entity (Sec.   1.27(a)).........................        68.00
By other than a small or micro entity......................       170.00
------------------------------------------------------------------------

    (g) * * *

                        Table 7 to Paragraph (g)
------------------------------------------------------------------------
 
------------------------------------------------------------------------
By a micro entity (Sec.   1.29)............................       $13.00
By a small entity (Sec.   1.27(a)).........................        26.00
By other than a small or micro entity......................        65.00
------------------------------------------------------------------------

    (h) * * *

                        Table 8 to Paragraph (h)
------------------------------------------------------------------------
 
------------------------------------------------------------------------
By a micro entity (Sec.   1.29)............................      $120.00
By a small entity (Sec.   1.27(a)).........................       240.00
By other than a small or micro entity......................       600.00
------------------------------------------------------------------------

    (i) * * *

                        Table 9 to Paragraph (i)
------------------------------------------------------------------------
 
------------------------------------------------------------------------
By a micro entity (Sec.   1.29)............................       $40.00
By a small entity (Sec.   1.27(a)).........................        80.00
By other than a small or micro entity......................       200.00
------------------------------------------------------------------------

    (j) * * *

                        Table 10 to Paragraph (j)
------------------------------------------------------------------------
 
------------------------------------------------------------------------
By a micro entity (Sec.   1.29)............................      $181.00
By a small entity (Sec.   1.27(a)).........................       362.00
By other than a small or micro entity......................       905.00
------------------------------------------------------------------------

    (k) * * *

                        Table 11 to Paragraph (k)
------------------------------------------------------------------------
 
------------------------------------------------------------------------
By a micro entity (Sec.   1.29)............................      $154.00
By a small entity (Sec.   1.27(a)).........................       308.00

[[Page 23274]]

 
By other than a small or micro entity......................       770.00
------------------------------------------------------------------------

    (l) * * *

                        Table 12 to Paragraph (l)
------------------------------------------------------------------------
 
------------------------------------------------------------------------
By a micro entity (Sec.   1.29)............................       $60.00
By a small entity (Sec.   1.27(a)).........................       120.00
By other than a small or micro entity......................       300.00
------------------------------------------------------------------------

    (m) * * *

                        Table 13 to Paragraph (m)
------------------------------------------------------------------------
 
------------------------------------------------------------------------
By a micro entity (Sec.   1.29)............................       $97.00
By a small entity (Sec.   1.27(a)).........................       194.00
By other than a small or micro entity......................       485.00
------------------------------------------------------------------------

    (n) * * *

                        Table 14 to Paragraph (n)
------------------------------------------------------------------------
 
------------------------------------------------------------------------
By a micro entity (Sec.   1.29)............................      $154.00
By a small entity (Sec.   1.27(a)).........................       308.00
By other than a small or micro entity......................       770.00
------------------------------------------------------------------------

    (o) * * *

                        Table 15 to Paragraph (o)
------------------------------------------------------------------------
 
------------------------------------------------------------------------
By a micro entity (Sec.   1.29)............................      $176.00
By a small entity (Sec.   1.27(a)).........................       352.00
By other than a small or micro entity......................       880.00
------------------------------------------------------------------------

    (p) * * *

                        Table 16 to Paragraph (p)
------------------------------------------------------------------------
 
------------------------------------------------------------------------
By a micro entity (Sec.   1.29)............................      $140.00
By a small entity (Sec.   1.27(a)).........................       280.00
By other than a small or micro entity......................       700.00
------------------------------------------------------------------------

    (q) * * *

                        Table 17 to Paragraph (q)
------------------------------------------------------------------------
 
------------------------------------------------------------------------
By a micro entity (Sec.   1.29)............................      $145.00
By a small entity (Sec.   1.27(a)).........................       290.00
By other than a small or micro entity......................       725.00
------------------------------------------------------------------------

    (r) * * *

[[Page 23275]]



                        Table 18 to Paragraph (r)
------------------------------------------------------------------------
 
------------------------------------------------------------------------
By a micro entity (Sec.   1.29)............................      $510.00
By a small entity (Sec.   1.27(a)).........................     1,020.00
By other than a small or micro entity......................     2,550.00
------------------------------------------------------------------------

    (s) * * *

                        Table 19 to Paragraph (s)
------------------------------------------------------------------------
 
------------------------------------------------------------------------
By a micro entity (Sec.   1.29)............................       $88.00
By a small entity (Sec.   1.27(a)).........................       176.00
By other than a small or micro entity......................       440.00
------------------------------------------------------------------------

* * * * *
    (u) * * *

                        Table 21 to Paragraph (u)
------------------------------------------------------------------------
 
------------------------------------------------------------------------
By a micro entity (Sec.   1.29)............................       $84.00
By a small entity (Sec.   1.27(a)).........................       168.00
By other than a small or micro entity......................       420.00
------------------------------------------------------------------------

0
3. Section 1.17 is amended by:
0
a. Revising paragraph (a) introductory text;
0
b. Revising the tables in paragraphs (a)(1) through (5), (c), (d), 
(e)(1);
0
c. Revising paragraph (e)(2);
0
d. Adding paragraph (e)(3);
0
e. Revising the table in paragraph (f);
0
f. Revising paragraph (g);
0
g. Revising the tables in paragraphs (h), (i)(1) and (2), and (k);
0
h. Revising paragraph (m);
0
i. Revising the tables in paragraphs (o) and (p);
0
j. Revising paragraph (q);
0
k. Revising the tables in paragraphs (r) through (t); and
0
l. Adding paragraphs (u) through (x).
    The revisions and additions read as follows:


Sec.  1.17  Patent application and reexamination processing fees.

    (a) Extension fees pursuant to Sec.  1.136(a), except in 
provisional applications filed under Sec.  1.53(c):
    (1) * * *

                       Table 1 to Paragraph (a)(1)
------------------------------------------------------------------------
 
------------------------------------------------------------------------
By a micro entity (Sec.   1.29)............................       $46.00
By a small entity (Sec.   1.27(a)).........................        92.00
By other than a small or micro entity......................       230.00
------------------------------------------------------------------------

    (2) * * *

                       Table 2 to Paragraph (a)(2)
------------------------------------------------------------------------
 
------------------------------------------------------------------------
By a micro entity (Sec.   1.29)............................      $134.00
By a small entity (Sec.   1.27(a)).........................       268.00
By other than a small or micro entity......................       670.00
------------------------------------------------------------------------

    (3) * * *

                       Table 3 to Paragraph (a)(3)
------------------------------------------------------------------------
 
------------------------------------------------------------------------
By a micro entity (Sec.   1.29)............................      $311.00
By a small entity (Sec.   1.27(a)).........................       622.00
By other than a small or micro entity......................     1,555.00
------------------------------------------------------------------------

    (4) * * *

                       Table 4 to Paragraph (a)(4)
------------------------------------------------------------------------
 
------------------------------------------------------------------------
By a micro entity (Sec.   1.29)............................      $487.00
By a small entity (Sec.   1.27(a)).........................       974.00
By other than a small or micro entity......................     2,435.00
------------------------------------------------------------------------


[[Page 23276]]

    (5) * * *

                       Table 5 to Paragraph (a)(5)
------------------------------------------------------------------------
 
------------------------------------------------------------------------
By a micro entity (Sec.   1.29)............................      $664.00
By a small entity (Sec.   1.27(a)).........................     1,328.00
By other than a small or micro entity......................     3,320.00
------------------------------------------------------------------------

* * * * *
    (c) * * *

                        Table 6 to Paragraph (c)
------------------------------------------------------------------------
 
------------------------------------------------------------------------
By a micro entity (Sec.   1.29)............................      $882.00
By a small entity (Sec.   1.27(a)).........................     1,764.00
By other than a small or micro entity......................     4,410.00
------------------------------------------------------------------------

    (d) * * *

                        Table 7 to Paragraph (d)
------------------------------------------------------------------------
 
------------------------------------------------------------------------
By a micro entity (Sec.   1.29)............................      $134.00
By a small entity (Sec.   1.27(a)).........................       268.00
By other than a small or micro entity......................       670.00
------------------------------------------------------------------------

    (e) * * *
    (1) * * *

                       Table 8 to Paragraph (e)(1)
------------------------------------------------------------------------
 
------------------------------------------------------------------------
By a micro entity (Sec.   1.29)............................      $300.00
By a small entity (Sec.   1.27(a)).........................       600.00
By other than a small or micro entity......................     1,500.00
------------------------------------------------------------------------

    (2) For filing a second request for continued examination pursuant 
to Sec.  1.114 in an application:

                       Table 9 to Paragraph (e)(2)
------------------------------------------------------------------------
 
------------------------------------------------------------------------
By a micro entity (Sec.   1.29)............................      $500.00
By a small entity (Sec.   1.27(a)).........................     1,000.00
By other than a small or micro entity......................     2,500.00
------------------------------------------------------------------------

    (3) For filing a third or subsequent request for continued 
examination pursuant to Sec.  1.114 in an application:

                      Table 10 to Paragraph (e)(3)
------------------------------------------------------------------------
 
------------------------------------------------------------------------
By a micro entity (Sec.   1.29)............................      $720.00
By a small entity (Sec.   1.27(a)).........................     1,440.00
By other than a small or micro entity......................     3,600.00
------------------------------------------------------------------------

    (f) * * *

                        Table 11 to Paragraph (f)
------------------------------------------------------------------------
 
------------------------------------------------------------------------
By a micro entity (Sec.   1.29)............................       $88.00
By a small entity (Sec.   1.27(a)).........................       176.00
By other than a small or micro entity......................       440.00
------------------------------------------------------------------------
Note 1 to table 11 to paragraph (f):
Sec.   1.36(a)--for revocation of a power of attorney by fewer than all
  of the applicants.
Sec.   1.53(e)--to accord a filing date.
Sec.   1.182--for decision on a question not specifically provided for
  in an application for patent.

[[Page 23277]]

 
Sec.   1.183--to suspend the rules in an application for patent.
Sec.   1.741(b)--to accord a filing date to an application under Sec.
  1.740 for extension of a patent term.
Sec.   1.1023--to review the filing date of an international design
  application.

    (g)(1) For filing a petition under one of the following sections 
which refers to this paragraph (g):

                      Table 12 to Paragraph (g)(1)
------------------------------------------------------------------------
 
------------------------------------------------------------------------
By a micro entity (Sec.   1.29)............................       $46.00
By a small entity (Sec.   1.27(a)).........................        92.00
By other than a small or micro entity......................       230.00
------------------------------------------------------------------------
Note 2 to table 12 to paragraph (g)(1):
Sec.   1.12--for access to an assignment record.
Sec.   1.14--for access to an application.
Sec.   1.46--for filing an application on behalf of an inventor by a
  person who otherwise shows sufficient proprietary interest in the
  matter.
Sec.   1.55(f)--for filing a belated certified copy of a foreign
  application.
Sec.   1.55(g)--for filing a belated certified copy of a foreign
  application.
Sec.   1.57(a)--for filing a belated certified copy of a foreign
  application.
Sec.   1.59--for expungement of information.
Sec.   1.136(b)--for review of a request for extension of time when the
  provisions of Sec.   1.136(a) are not available.
Sec.   1.377--for review of decision refusing to accept and record
  payment of a maintenance fee filed prior to expiration of a patent.
Sec.   1.550(c)--for patent owner requests for extension of time in ex
  parte reexamination proceedings.
Sec.   1.956--for patent owner requests for extension of time in inter
  partes reexamination proceedings.
Sec.   5.12 of this chapter--for expedited handling of a foreign filing
  license.
Sec.   5.15 of this chapter--for changing the scope of a license.
Sec.   5.25 of this chapter--for retroactive license.

    (2) For filing a petition to suspend action in an application under 
Sec.  1.103(a):
    (i) For filing a first request for suspension pursuant to Sec.  
1.103(a) in an application:

                     Table 13 to Paragraph (g)(2)(i)
------------------------------------------------------------------------
 
------------------------------------------------------------------------
By a micro entity (Sec.   1.29)............................       $60.00
By a small entity (Sec.   1.27(a)).........................       120.00
By other than a small or micro entity......................       300.00
------------------------------------------------------------------------

    (ii) For filing a second or subsequent request for suspension 
pursuant to Sec.  1.103(a) in an application:

                    Table 14 to Paragraph (g)(2)(ii)
------------------------------------------------------------------------
 
------------------------------------------------------------------------
By a micro entity (Sec.   1.29)............................       $90.00
By a small entity (Sec.   1.27(a)).........................       180.00
By other than a small or micro entity......................       450.00
------------------------------------------------------------------------

    (h) * * *

                        Table 15 to Paragraph (h)
------------------------------------------------------------------------
 
------------------------------------------------------------------------
By a micro entity (Sec.   1.29)............................       $29.00
By a small entity (Sec.   1.27(a)).........................        58.00
By other than a small or micro entity......................       145.00
------------------------------------------------------------------------
Note 3 to table 15 to paragraph (h):
Sec.   1.84--for accepting color drawings or photographs.
Sec.   1.91--for entry of a model or exhibit.
Sec.   1.102(d)--to make an application special.
Sec.   1.138(c)--to expressly abandon an application to avoid
  publication.
Sec.   1.313--to withdraw an application from issue.
Sec.   1.314--to defer issuance of a patent.

    (i) * * *
    (1) * * *

[[Page 23278]]



                      Table 16 to Paragraph (i)(1)
------------------------------------------------------------------------
 
------------------------------------------------------------------------
By a micro entity (Sec.   1.29)............................       $29.00
By a small entity (Sec.   1.27(a)).........................        58.00
By other than a small or micro entity......................       145.00
------------------------------------------------------------------------
Note 4 to table 16 to paragraph (i)(1):
Sec.   1.28(c)(3)--for processing a non-itemized fee deficiency based on
  an error in small entity status.
Sec.   1.29(k)(3)--for processing a non-itemized fee deficiency based on
  an error in micro entity status.
Sec.   1.41--for supplying the name or names of the inventor or joint
  inventors in an application without either an application data sheet
  or the inventor's oath or declaration, except in provisional
  applications.
Sec.   1.48--for correcting inventorship, except in provisional
  applications.
Sec.   1.52(d)--for processing a nonprovisional application filed with a
  specification in a language other than English.
Sec.   1.53(c)(3)--to convert a provisional application filed under Sec.
    1.53(c) into a nonprovisional application under Sec.   1.53(b).
Sec.   1.71(g)(2)--for processing a belated amendment under Sec.
  1.71(g).
Sec.   1.102(e)--for requesting prioritized examination of an
  application.
Sec.   1.103(b)--for requesting limited suspension of action, continued
  prosecution application for a design patent (Sec.   1.53(d)).
Sec.   1.103(c)--for requesting limited suspension of action, request
  for continued examination (Sec.   1.114).
Sec.   1.103(d)--for requesting deferred examination of an application.
Sec.   1.291(c)(5)--for processing a second or subsequent protest by the
  same real party in interest.
Sec.   3.81of this chapter--for a patent to issue to assignee,
  assignment submitted after payment of the issue fee.

    (2) * * *

                      Table 17 to Paragraph (i)(2)
------------------------------------------------------------------------
 
------------------------------------------------------------------------
By a micro entity (Sec.   1.29)............................      $147.00
By a small entity (Sec.   1.27(a)).........................       147.00
By other than a small or micro entity......................       147.00
------------------------------------------------------------------------
Note 5 to table 17 to paragraph (i)(2):
Sec.   1.217--for processing a redacted copy of a paper submitted in the
  file of an application in which a redacted copy was submitted for the
  patent application publication.
Sec.   1.221--for requesting voluntary publication or republication of
  an application.

* * * * *
    (k) * * *

                        Table 18 to Paragraph (k)
------------------------------------------------------------------------
 
------------------------------------------------------------------------
By a micro entity (Sec.   1.29)............................      $336.00
By a small entity (Sec.   1.27(a)).........................       672.00
By other than a small or micro entity......................     1,680.00
------------------------------------------------------------------------

* * * * *
    (m)(1) For filing a petition under one of the following sections 
which refers to this paragraph (m), when the petition is filed more 
than two years after the date when the required action was due:

                      Table 19 to Paragraph (m)(1)
------------------------------------------------------------------------
 
------------------------------------------------------------------------
By a micro entity (Sec.   1.29)............................      $600.00
By a small entity (Sec.   1.27(a)).........................     1,200.00
By other than a small or micro entity......................     3,000.00
------------------------------------------------------------------------
Note 6 to table 19 to paragraph (m)(1):
Sec.   1.55(e)--for the delayed submission of a priority claim, when the
  petition is filed more than two years after the date when the priority
  claim was due.
Sec.   1.78(c) or (e)--for the delayed submission of a benefit claim,
  when the petition is filed more than two years after the date when the
  benefit claim was due.
Sec.   1.137--for filing a petition for the revival of an abandoned
  application for a patent, or for the delayed payment of the fee for
  issuing each patent, when the petition is filed more than two years
  after the abandonment of the application.
Sec.   1.137--for filing a petition for the revival of a reexamination
  proceeding that was terminated or limited due to a delayed response by
  the patent owner, when the petition is filed more than two years after
  the termination or limitation of the reexamination proceeding.
Sec.   1.378--for filing a petition to accept a delayed payment of the
  fee for maintaining a patent in force, when the petition is filed more
  than two years after the patent expiration date.
Sec.   1.1051--for filing a petition to excuse an applicant's failure to
  act within prescribed time limits in an international design
  application, when the petition is filed more than two years after the
  abandonment of the application.

    (2) For filing a petition under Sec.  1.55(e), Sec.  1.78(c), Sec.  
1.78(e), Sec.  1.137, Sec.  1.1051, or Sec.  1.378, when the petition 
is filed before the time period specified in paragraph (m)(1) of this 
section:

[[Page 23279]]



                      Table 20 to Paragraph (m)(2)
------------------------------------------------------------------------
 
------------------------------------------------------------------------
By a micro entity (Sec.   1.29)............................      $440.00
By a small entity (Sec.   1.27(a)).........................       880.00
By other than a small or micro entity......................     2,200.00
------------------------------------------------------------------------

    (3) For filing a petition under Sec.  1.55(c), Sec.  1.78(b), or 
Sec.  1.452 for the extension of the 12-month (six-month for designs) 
period for filing a subsequent application:

                      Table 21 to Paragraph (m)(3)
------------------------------------------------------------------------
 
------------------------------------------------------------------------
By a micro entity (Sec.   1.29)............................      $440.00
By a small entity (Sec.   1.27(a)).........................       880.00
By other than a small or micro entity......................     2,200.00
------------------------------------------------------------------------

* * * * *
    (o) * * *

                        Table 22 to Paragraph (o)
------------------------------------------------------------------------
 
------------------------------------------------------------------------
By a small entity (Sec.   1.27(a)) or micro entity (Sec.          $76.00
 1.29).....................................................
By other than a small or micro entity......................       190.00
------------------------------------------------------------------------

    (p) * * *

                        Table 23 to Paragraph (p)
------------------------------------------------------------------------
 
------------------------------------------------------------------------
By a micro entity (Sec.   1.29)............................       $55.00
By a small entity (Sec.   1.27(a)).........................       110.00
By other than a small or micro entity......................       275.00
------------------------------------------------------------------------

    (q) Processing fee for taking action under one of the following 
sections which refers to this paragraph (q): $53.00.
    (1) Section 1.41--to supply the name or names of the inventor or 
inventors after the filing date without a cover sheet as prescribed by 
Sec.  1.51(c)(1) in a provisional application.
    (2) Section 1.48--for correction of inventorship in a provisional 
application.
    (3) Section 1.53(c)(2)--to convert a nonprovisional application 
filed under Sec.  1.53(b) to a provisional application under Sec.  
1.53(c).
    (r) * * *

                        Table 24 to Paragraph (r)
------------------------------------------------------------------------
 
------------------------------------------------------------------------
By a micro entity (Sec.   1.29)............................      $185.00
By a small entity (Sec.   1.27(a)).........................       370.00
By other than a small or micro entity......................       925.00
------------------------------------------------------------------------

    (s) * * *

                        Table 25 to Paragraph (s)
------------------------------------------------------------------------
 
------------------------------------------------------------------------
By a micro entity (Sec.   1.29)............................      $185.00
By a small entity (Sec.   1.27(a)).........................       370.00
By other than a small or micro entity......................       925.00
------------------------------------------------------------------------

    (t) * * *

                        Table 26 to Paragraph (t)
------------------------------------------------------------------------
 
------------------------------------------------------------------------
By a micro entity (Sec.   1.29)............................       $38.00
By a small entity (Sec.   1.27(a)).........................        76.00
By other than a small or micro entity......................       190.00
------------------------------------------------------------------------


[[Page 23280]]

    (u) Extension fees pursuant to Sec.  1.136(a) in provisional 
applications filed under Sec.  1.53(c):
    (1) For reply within first month:

                      Table 27 to Paragraph (u)(1)
------------------------------------------------------------------------
 
------------------------------------------------------------------------
By a micro entity (Sec.   1.29)............................       $10.00
By a small entity (Sec.   1.27(a)).........................        20.00
By other than a small or micro entity......................        50.00
------------------------------------------------------------------------

    (2) For reply within second month:

                      Table 28 to Paragraph (u)(2)
------------------------------------------------------------------------
 
------------------------------------------------------------------------
By a micro entity (Sec.   1.29)............................       $20.00
By a small entity (Sec.   1.27(a)).........................        40.00
By other than a small or micro entity......................       100.00
------------------------------------------------------------------------

    (3) For reply within third month:

                      Table 29 to Paragraph (u)(3)
------------------------------------------------------------------------
 
------------------------------------------------------------------------
By a micro entity (Sec.   1.29)............................       $40.00
By a small entity (Sec.   1.27(a)).........................        80.00
By other than a small or micro entity......................       200.00
------------------------------------------------------------------------

    (4) For reply within fourth month:

                      Table 30 to Paragraph (u)(4)
------------------------------------------------------------------------
 
------------------------------------------------------------------------
By a micro entity (Sec.   1.29)............................       $80.00
By a small entity (Sec.   1.27(a)).........................       160.00
By other than a small or micro entity......................       400.00
------------------------------------------------------------------------

    (5) For reply within fifth month:

                      Table 31 to Paragraph (u)(5)
------------------------------------------------------------------------
 
------------------------------------------------------------------------
By a micro entity (Sec.   1.29)............................      $160.00
By a small entity (Sec.   1.27(a)).........................       320.00
By other than a small or micro entity......................       800.00
------------------------------------------------------------------------

    (v) Information disclosure statement size fee for an information 
disclosure statement filed under Sec.  1.97 that, inclusive of the 
number of applicant-provided or patent owner-provided items of 
information listed under Sec.  1.98(a)(1) on the information disclosure 
statement, causes the cumulative number of applicant-provided or patent 
owner-provided items of information under Sec.  1.98(a)(1) during the 
pendency of the application or reexamination proceeding to:
    (1) Exceed 50 but not exceed 100. . . . . .$200;
    (2) Exceed 100 but not exceed 200. . . . . .$500, less any amount 
previously paid under paragraph (v)(1) of this section; and
    (3) Exceed 200. . . . . .$800, less any amounts previously paid 
under paragraphs (v)(1) and/or (2) of this section.
    (w) Additional fee for presenting a benefit claim in a 
nonprovisional application under 35 U.S.C. 120, 121, 365(c), or 386(c) 
and Sec.  1.78(d):
    (1) When the actual filing date of the nonprovisional application 
in which the benefit claim is presented is more than 5 years and no 
more than 8 years from the earliest filing date for which benefit is 
claimed under 35 U.S.C. 120, 121, 365(c), or 386(c) and Sec.  1.78(d):

                      Table 32 to Paragraph (w)(1)
------------------------------------------------------------------------
 
------------------------------------------------------------------------
By a micro entity (Sec.   1.29)............................      $440.00
By a small entity (Sec.   1.27(a)).........................       880.00
By other than a small or micro entity......................     2,200.00
------------------------------------------------------------------------

    (2) When the actual filing date of the nonprovisional application 
in which the benefit claim is presented is more than 8 years from the 
earliest filing date for which benefit is claimed under 35 U.S.C. 120, 
121, 365(c), or 386(c) and

[[Page 23281]]

Sec.  1.78(d), the amount shown in this paragraph is due, less any 
amount previously paid under paragraph (w)(1) of this section:

                      Table 33 to Paragraph (w)(2)
------------------------------------------------------------------------
 
------------------------------------------------------------------------
By a micro entity (Sec.   1.29)............................      $700.00
By a small entity (Sec.   1.27(a)).........................     1,400.00
By other than a small or micro entity......................     3,500.00
------------------------------------------------------------------------

    (x) For submission of a request for consideration under the After 
Final Consideration Pilot Program 2.0:

                        Table 34 to Paragraph (x)
------------------------------------------------------------------------
 
------------------------------------------------------------------------
By a micro entity (Sec.   1.29)............................      $100.00
By a small entity (Sec.   1.27(a)).........................       200.00
By other than a small or micro entity......................       500.00
------------------------------------------------------------------------

0
4. Section 1.18 is amended by:
0
a. Revising the tables in paragraphs (a), (b)(1), and (c); and
0
b. Revising paragraphs (d)(2) and (3), (e), and (f).
    The revisions read as follows:


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

    (a) * * *

                        Table 1 to Paragraph (a)
------------------------------------------------------------------------
 
------------------------------------------------------------------------
By a micro entity (Sec.   1.29)............................      $252.00
By a small entity (Sec.   1.27(a)).........................       504.00
By other than a small or micro entity......................     1,260.00
------------------------------------------------------------------------

    (b)(1) * * *

                       Table 2 to Paragraph (b)(1)
------------------------------------------------------------------------
 
------------------------------------------------------------------------
By a micro entity (Sec.   1.29)............................       260.00
By a small entity (Sec.   1.27(a)).........................       520.00
By other than a small or micro entity......................     1,300.00
------------------------------------------------------------------------

* * * * *
    (c) * * *

                        Table 3 to Paragraph (c)
------------------------------------------------------------------------
 
------------------------------------------------------------------------
By a micro entity (Sec.   1.29)............................      $176.00
By a small entity (Sec.   1.27(a)).........................       352.00
By other than a small or micro entity......................       880.00
------------------------------------------------------------------------

    (d)(1) * * *
    (2) Publication fee before January 1, 2014: $320.00
    (3) Republication fee (Sec.  1.221(a)): $336.00
    (e) For filing an application for patent term adjustment under 
Sec.  1.705: $300.00
    (f) For filing a request for reinstatement of all or part of the 
term reduced pursuant to Sec.  1.704(b) in an application for patent 
term adjustment under Sec.  1.705: $440.00
0
5. Section 1.19 is amended by revising paragraphs (a)(2), (b)(1)(i)(A), 
(B), and (D), (b)(1)(ii)(A) and (B), (b)(3) and (4), and (f) to read as 
follows:


Sec.  1.19  Document supply fees.

* * * * *
    (a) * * *
    (2) Printed copy of a plant patent in color: $16.00
* * * * *
    (b) * * *
    (1) * * *
    (i) * * *
    (A) Application as filed: $37.00
    (B) Copy Patent File Wrapper, Paper Medium, Any Number of Sheets: 
$305.00.
* * * * *
    (D) Individual application documents, other than application as 
filed, per document: $26.00
    (ii) * * *
    (A) Application as filed: $37.00
    (B) Copy Patent File Wrapper, Electronic, Any Medium, Any Size: 
$63.00
* * * * *
    (3) Copy of Office records, except copies available under paragraph 
(b)(1) or (2) of this section: $26.00
    (4) For assignment records, abstract of title and certification, 
per patent: $37.00
* * * * *
    (f) Uncertified copy of a non-United States patent document, per 
document: $26.00
* * * * *
0
6. Section 1.20 is amended by:
0
a. Revising paragraphs (a) and (b);
0
b. Revising the tables in (c)(1)(i) through (c)(4) and (c)(6);

[[Page 23282]]

0
c. Revising paragraph (d);
0
d. Revising the tables in paragraphs (e) through (h);
0
e. Revising paragraph (j); and
0
f. Revising the tables in (k)(1) and (2) and (k)(3)(i) and (ii).
    The revisions read as follows:


Sec.  1.20  Post-issuance fees.

    (a) For providing a certificate of correction for an applicant's 
mistake (Sec.  1.323): $168.00.
    (b) Processing fee for correcting inventorship in a patent (Sec.  
1.324): $168.00.
    (c) * * *
    (1)(i) * * *

                     Table 1 to Paragraph (c)(1)(i)
------------------------------------------------------------------------
 
------------------------------------------------------------------------
By a micro entity (Sec.   1.29)............................    $1,323.00
By a small entity (Sec.   1.27(a)).........................     2,646.00
By other than a small or micro entity......................     6,615.00
------------------------------------------------------------------------

* * * * *
    (2) * * *

                       Table 2 to Paragraph (c)(2)
------------------------------------------------------------------------
 
------------------------------------------------------------------------
By a micro entity (Sec.   1.29)............................    $2,646.00
By a small entity (Sec.   1.27(a)).........................     5,292.00
By other than a small or micro entity......................    13,320.00
------------------------------------------------------------------------

    (3) * * *

                       Table 3 to Paragraph (c)(3)
------------------------------------------------------------------------
 
------------------------------------------------------------------------
By a micro entity (Sec.   1.29)............................      $120.00
By a small entity (Sec.   1.27(a)).........................       240.00
By other than a small or micro entity......................       600.00
------------------------------------------------------------------------

    (4) * * *

                       Table 4 to Paragraph (c)(4)
------------------------------------------------------------------------
 
------------------------------------------------------------------------
By a micro entity (Sec.   1.29)............................       $40.00
By a small entity (Sec.   1.27(a)).........................        80.00
By other than a small or micro entity......................       200.00
------------------------------------------------------------------------

* * * * *
    (6) * * *

                       Table 5 to Paragraph (c)(6)
------------------------------------------------------------------------
 
------------------------------------------------------------------------
By a micro entity (Sec.   1.29)............................      $428.00
By a small entity (Sec.   1.27(a)).........................       856.00
By other than a small or micro entity......................     2,140.00
------------------------------------------------------------------------

* * * * *
    (d) For filing statutory and terminal disclaimers.
    (1) For filing each statutory disclaimer under Sec.  1.321(a), 
other than a terminal disclaimer: $179.00.
    (2) For filing each terminal disclaimer under Sec.  1.321:
    (i) In a non-reissue application before the mailing of a first 
Office action on the merits $200.00;
    (ii) In a non-reissue application after the period specified in 
paragraph (d)(2)(i) of this section and before the mailing date of any 
of a final action under Sec.  1.113, a notice of allowance under Sec.  
1.311, or an action that otherwise closes prosecution in the 
application $500.00;
    (iii) In a non-reissue application after the period specified in 
paragraph (d)(2)(ii) of this section, and before any submission of a 
notice of appeal under Sec.  41.31 $800.00;
    (iv) In a non-reissue application on or after the submission of a 
notice of appeal under Sec.  41.31 $1,100.00; and
    (v) In a patent or application for reissue $1,400.00.
    (e) * * *

                        Table 7 to Paragraph (e)
------------------------------------------------------------------------
 
------------------------------------------------------------------------
By a micro entity (Sec.   1.29)............................      $420.00
By a small entity (Sec.   1.27(a)).........................       840.00
By other than a small or micro entity......................     2,100.00
------------------------------------------------------------------------


[[Page 23283]]

    (f) * * *

                        Table 8 to Paragraph (f)
------------------------------------------------------------------------
 
------------------------------------------------------------------------
By a micro entity (Sec.   1.29)............................      $790.00
By a small entity (Sec.   1.27(a)).........................     1,580.00
By other than a small or micro entity......................     3,950.00
------------------------------------------------------------------------

    (g) * * *

                        Table 9 to Paragraph (g)
------------------------------------------------------------------------
 
------------------------------------------------------------------------
By a micro entity (Sec.   1.29)............................    $1,617.00
By a small entity (Sec.   1.27(a)).........................     3,234.00
By other than a small or micro entity......................     8,805.00
------------------------------------------------------------------------

    (h) * * *

                        Table 10 to Paragraph (h)
------------------------------------------------------------------------
 
------------------------------------------------------------------------
By a micro entity (Sec.   1.29)............................      $105.00
By a small entity (Sec.   1.27(a)).........................       210.00
By other than a small or micro entity......................       525.00
------------------------------------------------------------------------

* * * * *
    (j) For filing an application for extension of the term of a 
patent:
    (1) Application for extension under Sec.  1.740: $6,700.00
    (2) Initial application for interim extension under Sec.  1.790: 
$1,320.00
    (3) Subsequent application for interim extension under Sec.  1.790: 
$680.00
    (4) Requesting supplemental redetermination after notice of final 
determination: $1,440.00
    (k) * * *
    (1) * * *

                      Table 11 to Paragraph (k)(1)
------------------------------------------------------------------------
 
------------------------------------------------------------------------
By a micro entity (Sec.   1.29)............................      $970.00
By a small entity (Sec.   1.27(a)).........................     1,940.00
By other than a small or micro entity......................     4,850.00
------------------------------------------------------------------------

    (2) * * *

                      Table 12 to Paragraph (k)(2)
------------------------------------------------------------------------
 
------------------------------------------------------------------------
By a micro entity (Sec.   1.29)............................    $2,667.00
By a small entity (Sec.   1.27(a)).........................     5,334.00
By other than a small or micro entity......................    13,335.00
------------------------------------------------------------------------

    (3) * * *
    (i) * * *

                     Table 13 to Paragraph (k)(3)(i)
------------------------------------------------------------------------
 
------------------------------------------------------------------------
By a micro entity (Sec.   1.29)............................       $38.00
By a small entity (Sec.   1.27(a)).........................        76.00
By other than a small or micro entity......................       190.00
------------------------------------------------------------------------

    (ii) * * *

                    Table 15 to Paragraph (k)(3)(ii)
------------------------------------------------------------------------
 
------------------------------------------------------------------------
By a micro entity (Sec.   1.29)............................       $63.00
By a small entity (Sec.   1.27(a)).........................       126.00
By other than a small or micro entity......................       315.00
------------------------------------------------------------------------

0
7. Section 1.21 is amended by:
0
a. Revising paragraphs (a)(1)(i), (a)(1)(ii)(A), (a)(1)(iii) and (iv), 
(a)(2)(i) and (ii), (a)(4)(i) and (ii), (a)(5)(i) and

[[Page 23284]]

(ii), (a)(6)(ii), (a)(9)(i) and (ii), (a)(10), (e), (h)(2), (i), and 
(n);
0
b. Revising the tables in paragraphs (o)(1) and (2); and
0
c. Revising paragraphs (p) and (q).
    The revisions read as follows:


Sec.  1.21  Miscellaneous fees and charges.

* * * * *
    (a) * * *
    (l) * * *
    (i) Application Fee (non-refundable): $116.00.
    (ii) * * *
    (A) For test administration by commercial entity: $221.00.
* * * * *
    (iii) For USPTO-administered review of registration examination: 
$494.00.
    (iv) Request for extension of time in which to schedule examination 
for registration to practice (non-refundable): $121.00
    (2) * * *
    (i) On registration to practice under Sec.  11.6 of this chapter: 
$221.00.
    (ii) On grant of limited recognition under Sec.  11.9(b) of this 
chapter: $221.00.
* * * * *
    (4) * * *
    (i) Standard: $42.00
    (ii) Suitable for framing: $53.00
    (5) * * *
    (i) By the Director of Enrollment and Discipline under Sec.  
11.2(c) of this chapter: $440.00
    (ii) Of the Director of Enrollment and Discipline under Sec.  
11.2(d) of this chapter: $440.00
    (6) * * *
    (i) * * *
    (ii) For USPTO-assisted change of address: $74.00
* * * * *
    (9) * * *
    (i) Delinquency fee: $53.00
    (ii) Administrative reinstatement fee: $221.00
    (10) On application by a person for recognition or registration 
after disbarment or suspension on ethical grounds, or resignation 
pending disciplinary proceedings in any other jurisdiction; on 
application by a person for recognition or registration who is 
asserting rehabilitation from prior conduct that resulted in an adverse 
decision in the Office regarding the person's moral character; on 
application by a person for recognition or registration after being 
convicted of a felony or crime involving moral turpitude or breach of 
fiduciary duty; and on petition for reinstatement by a person excluded 
or suspended on ethical grounds, or excluded on consent from practice 
before the Office: $1,764.00
* * * * *
    (e) International type search reports: For preparing an 
international type search report of an international type search made 
at the time of the first action on the merits in a national patent 
application: $42.00
* * * * *
    (h) * * *
    (1) * * *
    (2) If not submitted electronically: $53.00
    (i) Publication in Official Gazette: For publication in the 
Official Gazette of a notice of the availability of an application or a 
patent for licensing or sale: Each application or patent: $26.00
* * * * *
    (n) For handling an application in which proceedings are terminated 
pursuant to Sec.  1.53(e): $147.00
    (o) * * *
    (1) * * *

                       Table 1 to Paragraph (o)(1)
------------------------------------------------------------------------
 
------------------------------------------------------------------------
By a micro entity (Sec.   1.29)............................      $223.00
By a small entity (Sec.   1.27(a)).........................       446.00
By other than a small or micro entity......................     1,115.00
------------------------------------------------------------------------

    (2) * * *

                       Table 2 to Paragraph (o)(2)
------------------------------------------------------------------------
 
------------------------------------------------------------------------
By a micro entity (Sec.   1.29)............................    $2,205.00
By a small entity (Sec.   1.27(a)).........................     4,410.00
By other than a small or micro entity......................    11,025.00
------------------------------------------------------------------------

    (p) Additional Fee for Overnight Delivery: $42.00
    (q) Additional fee for expedited service: $179.00
0
8. Section 1.78 is amended by revising paragraphs (d)(3)(i) and (e)(2) 
to read as follows:


Sec.  1.78  Claiming benefit of earlier filing date and cross-
references to other applications.

* * * * *
    (d) * * *
    (3)(i) The reference required by 35 U.S.C. 120 and paragraph (d)(2) 
of this section, and the applicable fee set forth in Sec.  1.17(w), 
must be submitted during the pendency of the later-filed application.
* * * * *
    (e) * * *
    (2) The petition fee as set forth in Sec.  1.17(m), and the 
applicable fee set forth in Sec.  1.17(w); and
* * * * *
0
9. Section 1.97 is amended by revising paragraph (a) to read as 
follows:


Sec.  1.97  Filing of information disclosure statement.

    (a) In order for an applicant for a patent or for a reissue of a 
patent to have an information disclosure statement in compliance with 
Sec.  1.98 considered by the Office during the pendency of the 
application, the information disclosure statement must satisfy one of 
paragraphs (b), (c), or (d) of this section and be accompanied by any 
applicable information disclosure statement size fee under Sec.  
1.17(v).
* * * * *
0
10. Section 1.98 is amended by revising paragraph (a) introductory text 
and adding paragraph (a)(4) to read as follows:


Sec.  1.98  Content of information disclosure statement.

    (a) Any information disclosure statement filed under Sec.  1.97 
shall include the items listed in paragraphs (a)(1) through (4) of this 
section.
* * * * *
    (4) A clear written assertion that the information disclosure 
statement is accompanied by the applicable information disclosure 
statement size fee under Sec.  1.17(v) or a clear written assertion 
that no information disclosure statement size fee under Sec.  1.17(v) 
is required.
* * * * *

[[Page 23285]]

0
11. Section 1.136 is amended by revising paragraph (a)(1) introductory 
text to read as follows:


Sec.  1.136  Extensions of time.

    (a)(1) If an applicant is required to reply within a nonstatutory 
or shortened statutory time period, applicant may extend the time 
period for reply up to the earlier of the expiration of any maximum 
period set by statute or five months after the time period set for 
reply, if a petition for an extension of time and the fee set in Sec.  
1.17(a) or (u) are filed, unless:
* * * * *
0
12. Section 1.138 is amended by revising paragraph (d) to read as 
follows:


Sec.  1.138  Express abandonment.

* * * * *
    (d) An applicant seeking to abandon an application filed under 35 
U.S.C. 111(a) and Sec.  1.53(b) on or after December 8, 2004, or a 
national stage application under 35 U.S.C. 371 in which the basic 
national fee was paid on or after December 8, 2004 to obtain a refund 
of the search fee and excess claims fee paid in the application, must 
submit a declaration of express abandonment by way of a petition under 
this paragraph before an examination has been made of the application. 
The date indicated on any certificate of mailing or transmission under 
Sec.  1.8 will not be taken into account in determining whether a 
petition under Sec.  1.138(d) was filed before an examination has been 
made of the application. Refunds under this paragraph are limited to 
the search fees and excess claim fees set forth in Sec. Sec.  1.16 and 
1.492. If a request for refund of the search fee and excess claims fee 
paid in the application is not filed with the declaration of express 
abandonment under this paragraph or within two months from the date on 
which the declaration of express abandonment under this paragraph was 
filed, the Office may retain the entire search fee and excess claims 
fee paid in the application. This two-month period is not extendable. 
If a petition and declaration of express abandonment under this 
paragraph are not filed before an examination has been made of the 
application, the Office will not refund any part of the search fee and 
excess claims fee paid in the application except as provided in Sec.  
1.26.
0
13. Section 1.445 is amended by revising and republishing paragraph (a) 
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:
    (A) For an international application having a receipt date that is 
on or after [EFFECTIVE DATE OF FINAL RULE]:

                    Table 1 to Paragraph (a)(1)(i)(A)
------------------------------------------------------------------------
 
------------------------------------------------------------------------
By a micro entity (Sec.   1.29)............................       $57.00
By a small entity (Sec.   1.27(a)).........................       114.00
By other than a small or micro entity......................       285.00
------------------------------------------------------------------------

    (B) For an international application having a receipt date that is 
on or after December 29, 2022, and before [EFFECTIVE DATE OF FINAL 
RULE]:

                    Table 2 to Paragraph (a)(1)(i)(B)
------------------------------------------------------------------------
 
------------------------------------------------------------------------
By a micro entity (Sec.   1.29)............................       $52.00
By a small entity (Sec.   1.27(a)).........................       104.00
By other than a small or micro entity......................       260.00
------------------------------------------------------------------------

    (C) For an international application having a receipt date that is 
on or after October 2, 2020, and before December 29, 2022:

                    Table 3 to Paragraph (a)(1)(i)(C)
------------------------------------------------------------------------
 
------------------------------------------------------------------------
By a micro entity (Sec.   1.29)............................       $65.00
By a small entity (Sec.   1.27(a)).........................       130.00
By other than a small or micro entity......................       260.00
------------------------------------------------------------------------

    (D) For an international application having a receipt date that is 
on or after January 1, 2014, and before October 2, 2020:

                    Table 4 to Paragraph (a)(1)(i)(D)
------------------------------------------------------------------------
 
------------------------------------------------------------------------
By a micro entity (Sec.   1.29)............................       $60.00
By a small entity (Sec.   1.27(a)).........................       120.00
By other than a small or micro entity......................       240.00
------------------------------------------------------------------------

    (E) For an international application having a receipt date that is 
before January 1, 2014: $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 USPTO patent electronic 
filing system, except for a plant application:

[[Page 23286]]



                     Table 5 to Paragraph (a)(1)(ii)
------------------------------------------------------------------------
 
------------------------------------------------------------------------
By a small entity (Sec.   1.27(a)).........................       200.00
By other than a small or micro entity......................       400.00
------------------------------------------------------------------------

    (2) A search fee (see 35 U.S.C. 361(d) and PCT Rule 16):
    (i) For an international application having a receipt date that is 
on or after [EFFECTIVE DATE OF FINAL RULE]:

                     Table 6 to Paragraph (a)(2)(i)
------------------------------------------------------------------------
 
------------------------------------------------------------------------
By a micro entity (Sec.   1.29)............................      $480.00
By a small entity (Sec.   1.27(a)).........................       960.00
By other than a small or micro entity......................     2,400.00
------------------------------------------------------------------------

    (ii) For an international application having a receipt date that is 
on or after April 1, 2023, and before [EFFECTIVE DATE OF FINAL RULE]:

                     Table 7 to Paragraph (a)(2)(ii)
------------------------------------------------------------------------
 
------------------------------------------------------------------------
By a micro entity (Sec.   1.29)............................      $436.00
By a small entity (Sec.   1.27(a)).........................       872.00
By other than a small or micro entity......................     2,180.00
------------------------------------------------------------------------

    (iii) For an international application having a receipt date that 
is on or after October 2, 2020, and before April 1, 2023:

                    Table 8 to Paragraph (a)(2)(iii)
------------------------------------------------------------------------
 
------------------------------------------------------------------------
By a micro entity (Sec.   1.29)............................      $545.00
By a small entity (Sec.   1.27(a)).........................     1,090.00
By other than a small or micro entity......................     2,180.00
------------------------------------------------------------------------

    (iv) For an international application having a receipt date that is 
on or after January 1, 2014, and before October 2, 2020:

                     Table 9 to Paragraph (a)(2)(iv)
------------------------------------------------------------------------
 
------------------------------------------------------------------------
By a micro entity (Sec.   1.29)............................      $520.00
By a small entity (Sec.   1.27(a)).........................     1,040.00
By other than a small or micro entity......................     2,080.00
------------------------------------------------------------------------

    (v) For an international application having a receipt date that is 
before January 1, 2014: $2,080.00
    (3) A supplemental search fee when required, per additional 
invention:
    (i) For an international application having a receipt date that is 
on or after [EFFECTIVE DATE OF FINAL RULE]:

                     Table 10 to Paragraph (a)(3)(i)
------------------------------------------------------------------------
 
------------------------------------------------------------------------
By a micro entity (Sec.   1.29)............................      $480.00
By a small entity (Sec.   1.27(a)).........................       960.00
By other than a small or micro entity......................     2,400.00
------------------------------------------------------------------------

    (ii) For an international application having a receipt date that is 
on or after April 1, 2023, and before [EFFECTIVE DATE OF FINAL RULE]:

                    Table 11 to Paragraph (a)(3)(ii)
------------------------------------------------------------------------
 
------------------------------------------------------------------------
By a micro entity (Sec.   1.29)............................      $436.00
By a small entity (Sec.   1.27(a)).........................       872.00
By other than a small or micro entity......................     2,180.00
------------------------------------------------------------------------


[[Page 23287]]

    (iii) For an international application having a receipt date that 
is on or after October 2, 2020, and before April 1, 2023:

                    Table 12 to Paragraph (a)(3)(iii)
------------------------------------------------------------------------
 
------------------------------------------------------------------------
By a micro entity (Sec.   1.29)............................      $545.00
By a small entity (Sec.   1.27(a)).........................     1,090.00
By other than a small or micro entity......................     2,180.00
------------------------------------------------------------------------

    (iv) For an international application having a receipt date that is 
on or after January 1, 2014, and before October 2, 2020:

                    Table 13 to Paragraph (a)(3)(iv)
------------------------------------------------------------------------
 
------------------------------------------------------------------------
By a micro entity (Sec.   1.29)............................      $520.00
By a small entity (Sec.   1.27(a)).........................     1,040.00
By other than a small or micro entity......................     2,080.00
------------------------------------------------------------------------

    (v) For an international application having a receipt date that is 
before January 1, 2014: $2,080.00
    (4) A fee equivalent to the transmittal fee in paragraph (a)(1) of 
this section that would apply if the USPTO was the Receiving Office for 
transmittal of an international application to the International Bureau 
for processing in its capacity as a Receiving Office (PCT Rule 19.4).
    (5) Late furnishing fee for providing a sequence listing in 
response to an invitation under PCT Rule 13ter:

                      Table 14 to Paragraph (a)(5)
------------------------------------------------------------------------
 
------------------------------------------------------------------------
By a micro entity (Sec.   1.29)............................       $67.00
By a small entity (Sec.   1.27(a)).........................       134.00
By other than a small or micro entity......................       335.00
------------------------------------------------------------------------

    (6) Late payment fee pursuant to PCT Rule 16bis.2.
* * * * *
0
14. Section 1.482 is amended by revising the tables in paragraphs 
(a)(1)(i) and (ii), (a)(2), and (c) to read as follows:


Sec.  1.482  International preliminary examination and processing fees.

    (a) * * *
    (1) * * *
    (i) * * *

                     Table 1 to Paragraph (a)(1)(i)
------------------------------------------------------------------------
 
------------------------------------------------------------------------
By a micro entity (Sec.   1.29)............................      $141.00
By a small entity (Sec.   1.27(a)).........................       282.00
By other than a small or micro entity......................       705.00
------------------------------------------------------------------------

    (ii) * * *

                     Table 2 to Paragraph (a)(1)(ii)
------------------------------------------------------------------------
 
------------------------------------------------------------------------
By a micro entity (Sec.   1.29)............................      $176.00
By a small entity (Sec.   1.27(a)).........................       352.00
By other than a small or micro entity......................       880.00
------------------------------------------------------------------------

    (2) * * *

                       Table 3 to Paragraph (a)(2)
------------------------------------------------------------------------
 
------------------------------------------------------------------------
By a micro entity (Sec.   1.29)............................      $141.00
By a small entity (Sec.   1.27(a)).........................       282.00
By other than a small or micro entity......................       705.00
------------------------------------------------------------------------

* * * * *
    (c) * * *

                        Table 4 to Paragraph (c)
------------------------------------------------------------------------
 
------------------------------------------------------------------------
By a micro entity (Sec.   1.29)............................       $67.00

[[Page 23288]]

 
By a small entity (Sec.   1.27(a)).........................       134.00
By other than a small or micro entity......................       335.00
------------------------------------------------------------------------

0
15. Section 1.492 is amended by revising the tables in paragraphs (a), 
(b)(2) through (4), (c)(2), (d) through (f), and (h) through (j) to 
read as follows.


Sec.  1.492  National stage fees.

* * * * *
    (a) * * *

                        Table 1 to Paragraph (a)
------------------------------------------------------------------------
 
------------------------------------------------------------------------
By a micro entity (Sec.   1.29)............................       $70.00
By a small entity (Sec.   1.27(a)).........................       140.00
By other than a small or micro entity......................       350.00
------------------------------------------------------------------------

    (b) * * *
    (2) * * *

                       Table 3 to Paragraph (b)(2)
------------------------------------------------------------------------
 
------------------------------------------------------------------------
By a micro entity (Sec.   1.29)............................       $29.00
By a small entity (Sec.   1.27(a)).........................        58.00
By other than a small or micro entity......................       145.00
------------------------------------------------------------------------

    (3) * * *

                       Table 4 to Paragraph (b)(3)
------------------------------------------------------------------------
 
------------------------------------------------------------------------
By a micro entity (Sec.   1.29)............................      $113.00
By a small entity (Sec.   1.27(a)).........................       226.00
By other than a small or micro entity......................       565.00
------------------------------------------------------------------------

    (4) * * *

                       Table 5 to Paragraph (b)(4)
------------------------------------------------------------------------
 
------------------------------------------------------------------------
By a micro entity (Sec.   1.29)............................      $154.00
By a small entity (Sec.   1.27(a)).........................       308.00
By other than a small or micro entity......................       770.00
------------------------------------------------------------------------

    (c) * * *
    (2) * * *

                       Table 7 to Paragraph (c)(2)
------------------------------------------------------------------------
 
------------------------------------------------------------------------
By a micro entity (Sec.   1.29)............................      $176.00
By a small entity (Sec.   1.27(a)).........................       352.00
By other than a small or micro entity......................       880.00
------------------------------------------------------------------------

    (d) * * *

                        Table 8 to Paragraph (d)
------------------------------------------------------------------------
 
------------------------------------------------------------------------
By a micro entity (Sec.   1.29)............................      $120.00
By a small entity (Sec.   1.27(a)).........................       240.00
By other than a small or micro entity......................       600.00
------------------------------------------------------------------------

    (e) * * *

                        Table 9 to Paragraph (e)
------------------------------------------------------------------------
 
------------------------------------------------------------------------
By a micro entity (Sec.   1.29)............................       $40.00
By a small entity (Sec.   1.27(a)).........................        80.00

[[Page 23289]]

 
By other than a small or micro entity......................       200.00
------------------------------------------------------------------------

    (f) * * *

                        Table 10 to Paragraph (f)
------------------------------------------------------------------------
 
------------------------------------------------------------------------
By a micro entity (Sec.   1.29)............................      $181.00
By a small entity (Sec.   1.27(a)).........................       362.00
By other than a small or micro entity......................       905.00
------------------------------------------------------------------------

* * * * *
    (h) * * *

                        Table 11 to Paragraph (h)
------------------------------------------------------------------------
 
------------------------------------------------------------------------
By a micro entity (Sec.   1.29)............................       $34.00
By a small entity (Sec.   1.27(a)).........................        68.00
By other than a small or micro entity......................       170.00
------------------------------------------------------------------------

    (i) * * *

                        Table 12 to Paragraph (i)
------------------------------------------------------------------------
 
------------------------------------------------------------------------
By a micro entity (Sec.   1.29)............................       $29.00
By a small entity (Sec.   1.27(a)).........................        58.00
By other than a small or micro entity......................       145.00
------------------------------------------------------------------------

    (j) * * *

                        Table 13 to Paragraph (j)
------------------------------------------------------------------------
 
------------------------------------------------------------------------
By a micro entity (Sec.   1.29)............................       $88.00
By a small entity (Sec.   1.27(a)).........................       176.00
By other than a small or micro entity......................       440.00
------------------------------------------------------------------------

0
16. Section 1.555 is amended by revising paragraph (a) to read as 
follows:


Sec.  1.555  Information material to patentability in ex parte 
reexamination and inter partes reexamination proceedings.

    (a) A patent by its very nature is affected with a public interest. 
The public interest is best served, and the most effective 
reexamination occurs when, at the time a reexamination proceeding is 
being conducted, the Office is aware of and evaluates the teachings of 
all information material to patentability in a reexamination 
proceeding. Each individual associated with the patent owner in a 
reexamination proceeding has a duty of candor and good faith in dealing 
with the Office, which includes a duty to disclose to the Office all 
information known to that individual to be material to patentability in 
a reexamination proceeding. The individuals who have a duty to disclose 
to the Office all information known to them to be material to 
patentability in a reexamination proceeding are the patent owner, each 
attorney or agent who represents the patent owner, and every other 
individual who is substantively involved on behalf of the patent owner 
in a reexamination proceeding. The duty to disclose the information 
exists with respect to each claim pending in the reexamination 
proceeding until the claim is cancelled. Information material to the 
patentability of a cancelled claim need not be submitted if the 
information is not material to patentability of any claim remaining 
under consideration in the reexamination proceeding. The duty to 
disclose all information known to be material to patentability in a 
reexamination proceeding is deemed to be satisfied if all information 
known to be material to patentability of any claim in the patent after 
issuance of the reexamination certificate was cited by the Office or 
submitted to the Office in an information disclosure statement. 
However, the duties of candor, good faith, and disclosure have not been 
complied with if any fraud on the Office was practiced or attempted or 
the duty of disclosure was violated through bad faith or intentional 
misconduct by, or on behalf of, the patent owner in the reexamination 
proceeding. Any information disclosure statement must be filed with the 
items listed in Sec.  1.98(a) as applied to individuals associated with 
the patent owner in a reexamination proceeding, should be filed within 
two months of the date of the order for reexamination, or as soon 
thereafter as possible, and be accompanied by any applicable 
information disclosure statement size fee under Sec.  1.17(v).
* * * * *
0
16. Section 1.1031 is amended by revising the table in paragraph (a) to 
read as follows:


Sec.  1.1031  International design application fees.

    (a) * * *

[[Page 23290]]



                        Table 1 to Paragraph (a)
------------------------------------------------------------------------
 
------------------------------------------------------------------------
By a micro entity (Sec.   1.29)............................       $25.00
By a small entity (Sec.   1.27(a)).........................        50.00
By other than a small or micro entity......................       125.00
------------------------------------------------------------------------

* * * * *

PART 41--PRACTICE BEFORE THE PATENT TRIAL AND APPEAL BOARD

0
17. The authority citation for 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, and Public Law 112-29.

0
18. Section 41.20 is amended by:
0
a. Revising paragraph (a); and
0
b. Revising the tables in paragraphs (b)(1), (b)(2)(ii), and (b)(3) and 
(4).
    The revisions read as follows:


Sec.  41.20  Fees.

    (a) Petition fee. The fee for filing petitions to the Chief 
Administrative Patent Judge under Sec.  41.3 is: $440.00
    (b) * * *
    (1) * * *

                       Table 1 to Paragraph (b)(1)
------------------------------------------------------------------------
 
------------------------------------------------------------------------
By a micro entity (Sec.   1.29)............................      $176.00
By a small entity (Sec.   1.27(a)).........................       352.00
By other than a small or micro entity......................       880.00
------------------------------------------------------------------------

    (2) * * *
    (ii) * * *

                     Table 2 to Paragraph (b)(2)(ii)
------------------------------------------------------------------------
 
------------------------------------------------------------------------
By a micro entity (Sec.   1.29)............................      $440.00
By a small entity (Sec.   1.27(a)).........................       880.00
By other than a small or micro entity......................     2,200.00
------------------------------------------------------------------------

    (3) * * *

                       Table 3 to Paragraph (b)(3)
------------------------------------------------------------------------
 
------------------------------------------------------------------------
By a micro entity (Sec.   1.29)............................      $286.00
By a small entity (Sec.   1.27(a)).........................       572.00
By other than a small or micro entity......................     1,430.00
------------------------------------------------------------------------

    (4) * * *

                       Table 4 to Paragraph (b)(4)
------------------------------------------------------------------------
 
------------------------------------------------------------------------
By a micro entity (Sec.   1.29)............................      $496.00
By a small entity (Sec.   1.27(a)).........................       992.00
By other than a small or micro entity......................     2,480.00
------------------------------------------------------------------------

PART 42--TRIAL PRACTICE BEFORE THE PATENT TRIAL AND APPEAL BOARD

0
19. The authority citation for part 42 continues to read as follows:

    Authority: 35 U.S.C. 2(b)(2), 6, 21, 23, 41, 135, 311, 312, 316, 
321-326; Pub. L. 112-29, 125 Stat. 284; and Pub. L. 112-274, 126 
Stat. 2456.

0
20. Section 42.15 is amended by:
0
a. Revising paragraphs (a)(1) through (4), (b)(1) through (4), (c)(1), 
(d), and (e); and
0
b. Adding paragraph (f).
    The revisions and addition read as follows:


Sec.  42.15  Fees.

    (a) * * *
    (1) Inter Partes Review request fee--up to 20 claims: $23,750.00
    (2) Inter Partes Review Post-Institution fee--up to 20 claims: 
$28,125.00
    (3) In addition to the Inter Partes Review request fee, for 
requesting a review of each claim in excess of 20: $470.00
    (4) In addition to the Inter Partes Post-Institution request fee, 
for requesting a review of each claim in excess of 20: $940.00
    (b) * * *
    (1) Post-Grant or Covered Business Method Patent Review request 
fee--up to 20 claims: $25,000.00
    (2) Post-Grant or Covered Business Method Patent Review Post-
Institution fee--up to 20 claims: $34,375.00

[[Page 23291]]

    (3) In addition to the Post-Grant or Covered Business Method Patent 
Review request fee, for requesting a review of each claim in excess of 
20: $595.00
    (4) In addition to the Post-Grant or Covered Business Method Patent 
Review Post-Institution fee, for requesting a review of each claim in 
excess of 20: $1,315.00
    (c) * * *
    (1) Derivation petition fee: $440.00
* * * * *
    (d) Any request requiring payment of a fee under this part, 
including a written request to make a settlement agreement available: 
$440.00
    (e) Fee for non-registered practitioners to appear pro hac vice 
before the Patent Trial and Appeal Board: $263.00
    (f) Fee for requesting a review of a Patent Trial and Appeal Board 
decision by the Director: $440.

Katherine Kelly Vidal,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
[FR Doc. 2024-06250 Filed 4-2-24; 8:45 am]
BILLING CODE 3510-16-P