United States Patent and Trademark Office OG Notices: 12 July 2005
DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
37 CFR Part 1
[Docket No.: 2004-P-038]
RIN 0651-AB79
Changes To Implement the Patent
Search Fee Refund Provisions of the
Consolidated Appropriations Act, 2005
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Notice of proposed rule making.
SUMMARY: Among other changes to patent and trademark fees, the
Consolidated Appropriations Act, 2005 (Consolidated Appropriations
Act), splits the patent application filing fee into a separate filing
fee, search fee and examination fee. The Consolidated Appropriations
Act also provides that the United States Patent and Trademark Office
(Office) may refund part or all of the excess claim fee and the search
fee in certain situations. This notice proposes changes to the rules of
practice to implement the provisions for refunding the search fee for
applicants who file a written declaration of express abandonment before
an examination has been made of the application.
Comment Deadline Date: To be ensured of consideration, written
comments must be received on or before August 22, 2005. No public
hearing will be held.
ADDRESSES: Comments should be sent by electronic mail message over the
Internet addressed to AB79.Comments@uspto.gov. Comments may also be
submitted by mail addressed to: Mail Stop Comments - Patents,
Commissioner for Patents, P.O. Box 1450, Alexandria, VA, 22313-1450, or
by facsimile to (571) 273-7735, marked to the attention of Robert W.
Bahr. Although comments may be submitted by mail or facsimile, the
Office prefers to receive comments via the Internet. If comments are
submitted by mail, the Office prefers that the comments be submitted on
a DOS formatted 3 1/2 inch disk accompanied by a paper copy.
Comments may also be sent by electronic mail message over the
Internet via the Federal eRulemaking Portal. See the Federal
eRulemaking Portal Web site (http://www.regulations.gov) for additional
instructions on providing comments via the Federal eRulemaking Portal.
The comments will be available for public inspection at the Office
of the Commissioner for Patents, located in Madison East, Tenth Floor,
600 Dulany Street, Alexandria, Virginia, and will be available via the
Office Internet Web site (address: http://www.uspto.gov). Because
comments will be made available for public inspection, information that
is not desired to be made public, such as an address or phone number,
should not be included in the comments.
FOR FURTHER INFORMATION CONTACT: Robert W. Bahr, Senior Patent
Attorney, Office of the Deputy Commissioner for Patent Examination
Policy, by telephone at (571) 272-8800, by mail addressed to: Mail Stop
Comments - Patents, Commissioner for Patents, P.O. Box 1450, Alexandria,
VA, 22313-1450, or by facsimile to (571) 273-7735, marked to the
attention of Robert W. Bahr.
SUPPLEMENTARY INFORMATION: Among other changes, the Consolidated
Appropriations Act (section 801 of Division B) provides that 35 U.S.C.
41(a), (b), and (d) shall be administered in a manner that revises
patent application fees (35 U.S.C. 41(a)) and patent maintenance fees
(35 U.S.C. 41(b)), and provides for a separate filing fee (35 U.S.C.
41(a)), search fee (35 U.S.C. 41(d)(1)), and examination fee (35 U.S.C.
41(a)(3)) during fiscal years 2005 and 2006. The Consolidated
Appropriations Act also provides that the Office may, by regulation,
provide for a refund of: (1) Any part of the excess claim fee specified
in 35 U.S.C. 41(a)(2) for any claim that is canceled before an
examination on the merits has been made of the application under 35
U.S.C. 131; (2) any part of the search fee for any applicant who files
a written declaration of express abandonment as prescribed by the
Office before an examination has been made of the application under 35
U.S.C. 131; and (3) any part of the search fee for any applicant who
provides a search report that meets the conditions prescribed by the
Office. The Office is proposing to revise the rules of practice to
implement the provisions for a refund of the search fee for any
applicant who files a written declaration of express abandonment as
prescribed by the Office before an examination has been made of the
application under 35 U.S.C. 131.
Discussion of Specific Rules
Title 37 of the Code of Federal Regulations, Part 1, is proposed to
be amended as follows:
Section 1.138: Section 1.138(c) is amended to change "section"
(i.e., Sec. 1.138) to "paragraph" (i.e., Sec. 1.138(c)) to clarify
that a petition to expressly abandon an application to avoid
publication of an application is filed under Sec. 1.138(c) (rather
than Sec. 1.138).
Section 1.138 is also amended to include a new paragraph (d), which
implements the provision in 35 U.S.C. 41(d)(1)(D) that the Office may
provide for a refund of any part of the search fee "for any applicant
who files a written declaration of express abandonment as prescribed by
the Director before an examination has been made of the application
under [35 U.S.C.] 131." Section 1.138(d) specifically provides that 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, to obtain a
refund of any search fee paid in the application must submit a petition
and declaration of express abandonment in sufficient time to permit the
appropriate officials to recognize the abandonment before the
application has been taken up for examination.
The Office will consider an application to be "taken up for
examination" for purposes of 35 U.S.C. 41(d)(1)(D) and Sec. 1.138(d)
when the application is placed on the examiner's docket for action.
Since the patent fee provisions of the Consolidated Appropriations Act
expire (in the absence of subsequent legislation) on September 30, 2006
(at the end of fiscal year 2006), the patent fee structure provided for
in the Consolidated Appropriations Act will be in effect for less than
two years (in the absence of subsequent legislation). Thus, the
information technology investment necessary to permit an application to
be considered "taken up for examination" at some later point in time
(e.g., based upon the anticipated time to first action in the class/
subclass to which the application is assigned) for purposes of 35
U.S.C. 41(d)(1)(D) and Sec. 1.138(d) is not warranted in the absence
of the enactment of legislation which makes the patent fee structure
provided for in the Consolidated Appropriations Act permanent.
A petition under Sec. 1.138(d) will be granted when it is
recognized in sufficient time to process the abandonment before the
application has been taken up for examination and will
be denied when it is not recognized in sufficient time to process the
abandonment before the application has been taken up for examination.
This will avert the situation in which an applicant files a declaration
of express abandonment to obtain a refund of the search fee, the
request for a refund of the search fee is not granted because the
declaration of express abandonment is not processed before the
application has been taken up for examination, the applicant then
wishes to rescind the declaration of express abandonment upon learning
that the declaration of express abandonment was not processed before
the application was taken up for examination, and the Office cannot
revive the application (once the declaration of express abandonment is
recognized) because the application was expressly and intentionally
abandoned by the applicant.
The Patent Application Locating and Monitoring (PALM) system
maintains computerized contents records of all patent applications and
reexaminations. An application has been placed on the examiner's docket
for action (i.e., "taken up for examination" for purposes of Sec.
1.138(d)) once the status of the application is "Case Docketed to
Examiner in GAU" (has a status code of 030 or higher) as shown in
PALM.
The Patent Application Information Retrieval (PAIR) system is a
system that provides public access to PALM for patents and applications
that have been published. The PAIR system does not provide public
access to information concerning applications that are maintained in
confidence under 35 U.S.C. 122(a). The private side of PAIR, however,
can be used by an applicant to access confidential information about
his or her pending application. To access the private side of PAIR, a
customer number must be associated with the correspondence address for
the application, and the user of the system must have a digital
certificate. For further information, contact the Customer Support
Center of the Electronic Business Center at (703) 305-3028 or toll free
at (866) 217-9197.
Section 1.138(d) also provides that if a request for refund of any
search fee paid in the application is not filed with the declaration of
express abandonment under Sec. 1.138(d) or within two months (not
extendable) from the date on which the declaration of express
abandonment under Sec. 1.138(d) was filed, the Office may retain the
entire search fee paid in the application. Finally, Sec. 1.138(d)
provides that if a declaration of express abandonment under Sec.
1.138(d) is not filed in sufficient time to process the abandonment
before the application has been taken up for examination, the Office
will not refund any part of the search fee paid in the application
except as provided in Sec. 1.26.
Rule Making Considerations
Regulatory Flexibility Act: For the reasons set forth herein, the
Deputy General Counsel for General Law of the United States Patent and
Trademark Office has certified to the Chief Counsel for Advocacy of the
Small Business Administration that changes proposed in this notice will
not have a significant economic impact on a substantial number of small
entities. See 5 U.S.C. 605(b). This notice proposes changes to the
rules of practice to implement the provisions for a refund of the
search fee for any applicant who files a written declaration of express
abandonment as prescribed by the Office before an examination has been
made of the application under 35 U.S.C. 131. The changes proposed in
this notice would not impose any additional fees or requirements on any
patent applicant. Rather, the changes proposed in this notice would
only provide for a refund of search fees for patent applicants (small
or non-small entity) in certain situations.
Executive Order 13132: This rule making does not contain policies
with federalism implications sufficient to warrant preparation of a
Federalism Assessment under Executive Order 13132 (Aug. 4, 1999).
Executive Order 12866: This rule making has been determined to be
not significant for purposes of Executive Order 12866 (Sept. 30, 1993).
Paperwork Reduction Act: This notice involves information
collection requirements which are subject to review by the Office of
Management and Budget (OMB) under the Paperwork Reduction Act of 1995
(44 U.S.C. 3501 et seq.). The changes proposed in this notice concern
the procedures for refunding the search fee for any applicant who files
a written declaration of express abandonment before an examination has
been made of the application under 35 U.S.C. 131. The collections of
information involved in this notice have been reviewed and previously
approved by OMB under the following OMB control numbers: 0651-0031 and
0651-0032. The United States Patent and Trademark Office is
resubmitting the information collections package to OMB for its review
and approval because the changes in this notice do affect the
information collection requirements associated with the information
collection under these OMB control numbers.
The title, description and respondent description of the
information collections under OMB control numbers 0651-0031 and 0651-
0032 are shown below with estimates of the annual reporting burdens.
Included in the estimates is the time for reviewing instructions,
gathering and maintaining the data needed, and completing and reviewing
the collection of information.
OMB Number: 0651-0031.
Title: Patent Processing (Updating).
Form Numbers: PTO/SB/08A, PTO/SB/08B, PTO/SB/17i, PTO/SB/17p,
PTO/SB/21-27, PTO/SB/30-37, PTO/SB/42-43, PTO/SB/61-64, PTO/SB/64a,
PTO/SB/67-68, PTO/SB/91-92, PTO/SB/96-97, PTO-2053-A/B, PTO-2054-A/B,
PTO-2055-A/B, PTOL-413A.
Type of Review: Approved through July of 2006.
Affected Public: Individuals or households, business or other for-
profit institutions, not-for-profit Institutions, farms, Federal
government and State, local and tribal governments.
Estimated Number of Respondents: 2,284,439.
Estimated Time Per Response: 1 minute and 48 seconds to 8 hours.
Estimated Total Annual Burden Hours: 2,732,441 hours.
Needs and Uses: During the processing of an application for a
patent, the applicant/agent may be required or desire to submit
additional information to the United States Patent and Trademark Office
concerning the examination of a specific application. The specific
information required or which may be submitted includes: Information
Disclosures and citation, requests for extensions of time, the
establishment of small entity status, abandonment and revival of
abandoned applications, disclaimers, appeals, expedited examination of
design applications, transmittal forms, requests to inspect, copy and
access patent applications, publication requests, and certificates of
mailing, transmittals, and submission of priority documents and
amendments.
OMB Number: 0651-0032.
Title: Initial Patent Application.
Form Number: PTO/SB/01-07, PTO/SB/13PCT, PTO/SB/16-19, PTO/SB/29
and 29A, PTO/SB/101-110, Electronic New Utility and Provisional
Application Forms.
Type of Review: Approved through July of 2006.
Affected Public: Individuals or households, Business or Other For-
Profit Institutions, Not-for-Profit Institutions, Farms, Federal
government, and state, local, or tribal governments.
Estimated Number of Respondents: 454,287.
Estimated Time Per Response: 22 minutes to 10 hours and 45 minutes.
Estimated Total Annual Burden Hours: 4,171,568 hours.
Needs and Uses: The purpose of this information collection is to
permit the Office to determine whether an application meets the
criteria set forth in the patent statute and regulations. The standard
Fee Transmittal form, New Utility Patent Application Transmittal form,
New Design Patent Application Transmittal form, New Plant Patent
Application Transmittal form, Declaration, Provisional Application
Cover Sheet, and Plant Patent Application Declaration will assist
applicants in complying with the requirements of the patent statute and
regulations, and will further assist the Office in processing and
examination of the application.
Interested persons are requested to send comments regarding these
information collections, including suggestions for reducing this
burden, to Robert J. Spar, Director, Office of Patent Legal
Administration, Commissioner for Patents, P.O. Box 1450, Alexandria, VA
22313-1450, or to the Office of Information and Regulatory Affairs,
Office of Management and Budget, New Executive Office Building, Room
10235, 725 17th Street, NW., Washington, DC 20503, Attention: Desk
Officer for the Patent and Trademark Office.
Notwithstanding any other provision of law, no person is required
to respond to nor shall a person be subject to a penalty for failure to
comply with a collection of information subject to the requirements of
the Paperwork Reduction Act unless that collection of information
displays a currently valid OMB control number.
List of Subjects in 37 CFR Part 1
Administrative practice and procedure, Courts, Freedom of
Information, Inventions and patents, Reporting and record keeping
requirements, Small Businesses.
For the reasons set forth in the preamble, 37 CFR Part 1 is
proposed to be amended as follows:
PART 1 - RULES OF PRACTICE IN PATENT CASES
1. The authority citation for 37 CFR Part 1 continues to read as
follows:
Authority: 35 U.S.C. 2(b)(2).
2. Section 1.138 is amended by revising paragraph (c) and adding
paragraph (d) to read as follows:
Sec. 1.138 Express abandonment.
* * * * *
(c) An applicant seeking to abandon an application to avoid
publication of the application (see Sec. 1.211(a)(1)) must submit a
declaration of express abandonment by way of a petition under this
paragraph including the fee set forth in Sec. 1.17(h) in sufficient
time to permit the appropriate officials to recognize the abandonment
and remove the application from the publication process. Applicants
should expect that the petition will not be granted and the application
will be published in regular course unless such declaration of express
abandonment and petition are received by the appropriate officials more
than four weeks prior to the projected date of publication.
(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, to obtain
a refund of any search fee paid in the application must submit a
declaration of express abandonment by way of a petition under this
paragraph in sufficient time to permit the appropriate officials to
recognize the abandonment before the application has been taken up for
examination. If a request for refund of any search 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 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 and granted
before the application has been taken up for examination, the Office
will not refund any part of the search fee paid in the application
except as provided in Sec. 1.26.
June 15, 2005 JON W. DUDAS
Under Secretary of Commerce for
Intellectual Property and Director of the
United States Patent and Trademark Office