Department of Commerce
Patent and Trademark Office
37 CFR Parts 1, 2, and 7
[Docket No. 950501124-5185-02]
RIN 0651-AA74
Revision of Patent and Trademark Fees
Agency: Patent and Trademark Office, Commerce.
Action: Final Rule.
Summary: The Patent and Trademark Office (PTO) is amending the rules of
practice in patent and trademark cases, Parts 1, 2 and 7 of title 37,
Code of Federal Regulations, to adjust certain patent and trademark fee
amounts to reflect fluctuations in the Consumer Price Index (CPI) and to
recover costs of operation, and is amending the requirements for
recording documents on the Government Register. This rule also includes
information relating to the availability of patent and trademark
information products provided by the PTO.
Effective Date: October 1, 1995.
For Further Information Contact: Robert Kopson by telephone at (703)
305-8510, fax at (703) 305-8525, or by mail marked to his attention and
addressed to the Commissioner of Patents and Trademarks, Washington,
D.C. 20231.
Supplementary Information: This rule change is designed to adjust PTO
fees in accordance with the applicable provisions of title 35, United
States Code; section 31 of the Trademark (Lanham) Act of 1946 (15 U.S.C.
1113); and section 10101 of the Omnibus Budget Reconciliation Act of
1990 (as amended by section 8001 of Public Law 103-66), all as amended
by the Patent and Trademark Office Authorization Act of 1991 (Public Law
102-204).
The cover sheet referenced in 37 CFR 7.1 (c) must be in a format
approved by the Office. The Office of Public Records will maintain a
list of approved formats that will meet this requirement. Contact the
Office of Public Records at (703) 308-9743 regarding specific questions
relating to this requirement and to seek approval of additional formats.
BACKGROUND
Statutory Provisions
Patent fees are authorized by 35 U.S.C. 41 and 35 U.S.C. 376. A fifty
percent reduction in the fees paid under 35 U.S.C. 41(a) and (b) by
independent inventors, small business concerns, and nonprofit
organizations who meet prescribed definitions is required by 35 U.S.C.
41(h).
Subsection 41(f) of title 35, United States Code, provides that fees
established under 35 U.S.C. 41(a) and (b) may be adjusted on October 1,
1992, and every year thereafter, to reflect fluctuations in the Consumer
Price Index (CPI) over the previous 12 months.
Section 10101 of the Omnibus Budget Reconciliation Act of 1990
(amended by section 8001 of Public Law 103-66) provides that there shall
be a surcharge on all fees established under 35 U.S.C. 41(a) and (b) to
collect $111 million in fiscal year 1996.
Subsection 41(d) of title 35, United States Code, authorizes the
Commissioner to establish fees for all other processing, services, or
materials related to patents to recover the average cost of providing
these services or materials, except for the fees for recording a
document affecting title, for each photocopy, and for each black and
white copy of a patent.
Section 376 of title 35, United States Code, authorizes the
Commissioner to set fees for patent applications filed under the Patent
Cooperation Treaty (PCT).
Subsection 41(g) of title 35, United States Code, provides that new
fee amounts established by the Commissioner under section 41 may take
effect thirty days after notice in the Federal Register and the Official
Gazette of the Patent and Trademark Office.
Section 31 of the Trademark (Lanham) Act of 1946, as amended (15
U.S.C. 1113), authorizes the Commissioner to establish fees for the
filing and processing of an application for the registration of a
trademark or other mark, and for all other services and materials
relating to trademarks and other marks.
Section 31(a) of the Trademark (Lanham) Act of 1946 (15 U.S.C.
1113(a)), as amended, allows trademark fees to be adjusted once each
year to reflect, in the aggregate, any fluctuations during the preceding
12 months in the CPI.
Section 31 also allows new trademark fee amounts to take effect
thirty days after notice in the Federal Register and the Official
Gazette of the United States Patent and Trademark Office.
Recovery Level Determinations
This rule adjusts patent and trademark fees for a planned recovery of
$643,014,000 in fiscal year 1996, as proposed in the Administration's
budget request to the Congress.
The patent statutory fees established by 35 U.S.C. 41(a) and (b) are
being adjusted on October 1, 1995, to reflect any fluctuations occurring
during the previous 12 months in the Consumer Price Index (CPI-U). In
calculating these fluctuations, the Office of Management and Budget
(OMB) has determined that the PTO should use CPI-U data as determined by
the Secretary of Labor. However, the Department of Labor does not make
public the CPI-U until approximately 21 days after the end of the month
being calculated. Therefore, the latest CPI-U information available is
for the month of May 1995. In accordance with previous rulemaking
methodology, the PTO uses the Administration's projected CPI-U for the
12-month period ending September 30, 1995, which is 3.2 percent. Based
on this projection, patent statutory fees will be adjusted by 3.2
percent. Before the final fee schedule is published, the fees may be
slightly adjusted based on actual data available from the Department of
Labor.
Certain non-statutory patent processing fees established under 35
U.S.C. 41(d) and PCT processing fees established under 35 U.S.C. 376 are
being adjusted to recover their estimated average costs in fiscal year
1996. Three patent service fees that are set by statute will not be
adjusted. The three fees that are not being adjusted are assignment
recording fees, printed patent copy fees and photocopy charge fees.
Certain trademark service fees established under 15 U.S.C. 1113 are
being adjusted to recover their estimated average costs in fiscal year
1996.
The fee amounts were rounded by applying standard arithmetic rules so
that the amounts rounded would be convenient to the user. Fees of $100
or more were rounded to the nearest $10. Fees between $2 and $99 were
rounded to an even number so that the comparable small entity fee would
be a whole number.
Workload Projections
Determination of workloads varies by fee. Principal workload
projection techniques are as follows:
Patent application workloads are projected from statistical
regression models using recent application filing trends. Patent issues
are projected from an in-house patent production model and reflect
examiner production achievements and goals. Patent maintenance fee
workloads utilize patents issued 3.5, 7.5 and 11.5 years prior to
payment and assume payment rates of 79 percent, 55 percent and 32
percent, respectively. Service fee workloads follow linear trends from
prior years' activities.
General Procedures
Any fee amount that is paid on or after the effective date of the fee
increase would be subject to the new fees then in effect. For purposes
of determining the amount of the fee to be paid, the date of mailing
indicated on a proper Certificate of Mailing or Transmission, where
authorized under 37 CFR 1.8, will be considered to be the date of
receipt in the PTO. A Certificate of Mailing or Transmission under
Section 1.8 is not "proper" for items which are specifically excluded
from the provisions of Section 1.8. Section 1.8 should be consulted for
those items for which a Certificate of Mailing or Transmission is not
"proper." Such items include, inter alia, the filing of national and
international applications for patents and the filing of trademark
applications. However, the provisions of 37 CFR 1.10 relating to filing
papers and fees with an "Express Mail" certificate do apply to any paper
or fee (including patent and trademark applications) to be filed in the
PTO. If an application or fee is filed by "Express Mail" with a proper
certificate dated on or after the effective date of the rules, as
amended, the amount of the fee to be paid would be the fee established
by the amended rules.
A notice of final rulemaking was published at 60 FR 20195 (April 25,
1995) wherein several new fee provisions were made to implement the
20-year patent term and provisional applications. Language changes were
made in 37 CFR 1.16(a), (b), (d), (f), and (g) which are reproduced in
this final rule package. In addition, fees involving 37 CFR 1.17(r) and
(s) are being adjusted by changes in the CPI to remain equal to the
basic filing fee for a utility patent application.
PTO Information Dissemination Products
The PTO provides information to the public in the Patent Search Room
and the Trademark Search Library in Arlington, Virginia, and at 78
Patent and Trademark Depository Libraries around the country. A list of
the libraries is included in each issue of the Official Gazette of the
Patent and Trademark Office. In addition, a number of patent and
trademark search tools and document-delivery products, published on
paper and on various machine-readable media, are sold directly to the
public.
Printed PTO publications may be ordered from the Government Printing
Office (GPO) or one of its Book Stores located throughout the country. A
list of patent and trademark-related publications with current prices
and ordering information is available from the GPO (Subject Bibliography
SB 021).
Superintendent of Documents
P.O. Box 371984
Pittsburgh, Pa. 15250-7954
Voice: 202-512-1800
Fax: 202-512-2250
Machine-readable publications, including magnetic tapes and CD-ROMs,
may be ordered directly from the PTO. A printed catalog of
machine-readable products, including current prices and ordering
information, is available from the Office of Information Products
Development.
US Patent and Trademark Office
Office of Information Products Development
Crystal Park 3, Room 412
Washington, D.C. 20231
Voice: 703-308-0322
Fax: 703-308-0493
The catalog of machine-readable products is published in the Official
Gazette of the Patent and Trademark Office in late December each year
and may also be viewed on, or downloaded from, the PTO electronic
bulletin board (703-305-8950, 8/no/1) or from the PTO's home page on the
Internet (http://www.uspto.gov/).
In order to ensure clarity in the implementation of the new fees, a
discussion of specific sections is set forth below.
Discussion of Specific Rules
37 CFR 1.16 National application filing fees.
Section 1.16, paragraphs (a), (b), (d), and (f)-(i), is revised to
adjust fees established therein to reflect fluctuations in the CPI.
Section 1.16, paragraphs (a), (b), (d), and (g) include language
changes relating to provisional patent applications (see 60 FR 20195,
dated April 25, 1995).
37 CFR 1.17 Patent application processing fees.
Section 1.17, paragraphs (b)-(g) (m), (r), and (s), is revised to
adjust fees established therein to reflect fluctuations in the CPI.
Section 1.17, paragraphs (j) and (n)-(p), is revised to adjust fees
established therein to recover costs.
37 CFR 1.18 Patent issue fees.
Section 1.18, paragraphs (a)-(c), is revised to adjust fees
established therein to reflect fluctuations in the CPI.
37 CFR 1.19 Document supply fees.
Section 1.19, paragraphs (a)(1)(ii) and (a)(1)(iii), is revised to
amend the language to reflect the PTO's most recent business practices.
Section 1.19, paragraph (b)(1), is revised to adjust fees established
therein to reflect fluctuations in the CPI.
37 CFR 1.20 Post-issuance fees.
Section 1.20, paragraphs (c), (i), and (j), is revised to adjust fees
established therein to recover costs.
Section 1.20, paragraphs (e)-(g), is revised to adjust fees
established therein to reflect fluctuations in the CPI.
37 CFR 1.21 Miscellaneous fees and charges.
Section 1.21, paragraph (a)(1), is revised to adjust fees established
therein to recover costs.
37 CFR 1.445 International application filing, processing, and search
fees.
Section 1.445, paragraph (a), is revised to adjust the fees
authorized by 35 U.S.C. 376 to recover costs.
37 CFR 1.482 International preliminary examination fees.
Section 1.482, paragraphs (a)(1)(i), (a)(1)(ii), and (a)(2)(ii), is
revised to adjust the fees authorized by 35 U.S.C. 376 to recover costs.
37 CFR 1.492 National stage fees.
Section 1.492, paragraphs (a), (b) and (d), is revised to adjust fees
established therein to reflect fluctuations in the CPI.
37 CFR 2.6 Trademark fees.
Section 2.6, paragraphs (b)(1)(ii) and (b)(1)(iii), is revised to
amend the language to reflect the PTO's most recent business practices.
Section 2.6, paragraph (b)(2), is revised to adjust fees therein to
recover costs.
37 CFR 7.1 Requirements
Section 7.1, is revised to designate the current language as
paragraph (a), and to add new paragraphs (b)-(j) to clarify that the
requirements for patent and patent application assignment documents,
including the requirement for the fee set forth in 1.21(h), submitted
for recording also apply to instruments submitted for recording on the
Government Register. Sections 7.1(b)-(d) and (f)-(i) contain language
similar to that in 3.21, 3.28, 3.31, 3.34, 3.26, 3.27, and 3.41,
respectively.
Section 7.1(b), is added to provide that an instrument relating to a
patent must identify the patent by the patent number, that an instrument
relating to a national patent application must identify the national
patent application by the application number (consisting of the series
code and the serial number, e.g., 07/123,456) or the serial number and
filing date, that an instrument relating to an international patent
application which designates the United States of America must identify
the international application by the international application number
(e.g., PCT/US90/01234), and that if an assignment is executed
concurrently with, or subsequent to, the execution of the patent
application, but before the patent application is filed, it must
identify the patent application by its date of execution, name of each
inventor, and title of the invention so that there can be no mistake as
to the patent application intended.
Section 7.1(c), is added to provide that each instrument submitted to
the PTO for recording must be accompanied by a cover sheet referring to
those patent applications and patents against which the instrument is to
be recorded, that one set of instruments and cover sheets to be recorded
should be filed, and that if an instrument to be recorded is not
accompanied by a completed cover sheet, the instrument and any
incomplete cover sheet will be returned for proper completion of a cover
sheet and resubmission of the instrument and a completed cover sheet.
Section 7.1(d), is added to provide that each cover sheet must
contain: (1) the name of the party conveying the interest; (2) the name
and address of the party receiving the interest; (3) a description of
the interest conveyed or transaction to be recorded; (4) each
application number or patent number against which the instrument is to
be recorded, or an indication that the instrument is filed together with
a patent application; (5) the name and address of the party to whom
correspondence concerning the request to record the instrument should be
mailed; (6) the number of applications or patents identified in the
cover sheet and the total fee; (7) the date the instrument was executed;
(8) a statement by the party submitting the instrument that to the best
of the person's knowledge and belief, the information contained on the
cover sheet is true and correct and any copy submitted is a true copy of
the original instrument; and (9) the signature of the party submitting
the instrument.
Section 7.1(e), is added that each patent cover sheet required by
paragraph (c) of this section seeking to record a governmental interest
as provided by paragraph (a) of this section must: (1) indicate that the
instrument is to be recorded on the governmental register, and, if
applicable, that the instrument is to be recorded on the Secret
Register. See 7.7, and (2) indicate, if applicable, that the
instrument to be recorded is not an instrument affecting title. See
paragraph (j) of this section.
Section 7.1 (f), is added to provide for the correction of errors in
the cover sheet. Specifically, 7.1(e), provides that an error in a
cover sheet recorded pursuant to this Part will be corrected only if:
(1) the error is apparent when the cover sheet is compared with the
recorded instrument to which it pertains, and (2) a corrected cover
sheet accompanied by the recording fee set forth in paragraph (i) of
this section and either the original recorded instrument or a copy of
the original recorded instrument is filed for recordation.
Section 7.1(g), is added to provide that the Office will accept and
record non-English language instruments only if accompanied by a
verified English translation signed by the individual making the
translation.
Section 7.1(h), is added to provide that instruments and cover sheets
to be recorded should be addressed to the Commissioner of Patents and
Trademarks, Box Assignment, Washington, D.C. 20231.
Section 7.1(i), is added to provide that all requests, except as
provided by paragraph (j) of this section, to record instruments must be
accompanied by the recording fee set forth in 1.21(h) of this
chapter, and that the fee set forth in 1.21(h) of this chapter is
required for each application and patent against which the instrument is
recorded as identified in the cover sheet.
Section 7.1 (j), is added to provide that no fee is required for each
patent application and patent against which an instrument required by
Executive Order 9424 (3 CFR 1943-1948 Comp.) to be filed if: (1) the
instrument does not affect title and is so identified in the cover sheet
(see paragraph (e) of this section); and (2) the cover sheet is filed in
a format approved by the Office.
Response to Comments on the Rules
A notice of proposed rulemaking to adjust certain patent and
trademark fee amounts and to amend the requirements for recording an
assignment to apply to documents forwarded for recording on the
Government Register was published in the Federal Register on May 26,
1995, at 60 FR 27934, and in the Official Gazette of the United States
Patent and Trademark Office on May 30, 1995, at 1174 OG 134.
A public hearing was held June 29, 1995. Nine comments were received
and considered in adopting the rules set forth herein. No oral testimony
was presented.
Comments: Two respondents stated that the proposed inflationary increase
of patent and trademark fees is unnecessary because the PTO is already
operating at a surplus.
Response: Current PTO resources include carryover funds from fiscal year
1994. These carryover funds are partly unobligated balances to be
carried forward, but primarily advanced fee payments for work to be done
in fiscal year 1995. Furthermore, this carryover includes fee income
generated from trademark-related products and services which, according
to 35 U.S.C. 42(c), may be used only for trademark-related activities.
Therefore, to recover all costs associated with the processing of patent
applications, and to remain consistent with the current rate of
inflation, the PTO is increasing certain patent fees by 3.2 percent as
authorized by 35 U.S.C. 41(f).
In addition, two trademark service fees were proposed to be
increased. The adopted fee amounts will recover the average cost of
providing the service as authorized by 35 U.S.C. 41(d), and will also
remain consistent with the equivalent patent service fee amounts.
Comments: Seven respondents objected to the proposal to amend the
requirements for recording an assignment to apply to documents forwarded
for recording on the Government Register. The respondents stated that
not only are Government agencies required by Executive Order 9424 to
forward an assignment to the PTO for recordation, but also the PTO lacks
the authority under Title 35 of the United States Code to impose a fee
for recording an assignment on the Government Register.
Response: 35 U.S.C. 41(d)(1) provides that the Commissioner shall charge
a fee of $40 per property for recording any document affecting title. An
assignment is a document affecting title. Therefore, the Office must
require a $40 recording fee for recording any assignment, even those
being recorded on the Government Register. If a document to be recorded
on the Government Register does not affect title and if it is
accompanied by the appropriate cover sheet, then no fee is required.
Other Considerations
This final rule change is in conformity with the requirements of
Executive Order 12612, and the Paperwork Reduction Act of 1980, 44
U.S.C. 3501, et seq. This rulemaking contains no information collection
within the meaning of the Paperwork Reduction Act. This final rule has
been determined not to be significant for purposes of Executive Order
12866.
The PTO has determined that this final rule change has no Federalism
implications affecting the relationship between the National Government
and the States as outlined in Executive Order 12612.
The Assistant General Counsel for Legislation and Regulation of the
Department of Commerce has certified to the Chief Counsel for Advocacy,
Small Business Administration, that the final rule change would not have
a significant impact on a substantial number of small entities
(Regulatory Flexibility Act, Pub. L. 96-354). The final rule change
increases fees to reflect the change in the CPI as authorized by 35
U.S.C. 41(f). Further, the principal impact of the major patent fees has
already been taken into account in 35 U.S.C. 41(h), which provides small
entities with a 50-percent reduction in the major patent fees.
A comparison of existing and new fee amounts is included as an
Appendix to this notice of final rulemaking.
Lists of Subjects
37 CFR Part 1
Administrative practice and procedure, Inventions and patents,
Reporting and record keeping requirements, Small businesses.
37 CFR Part 2
Administrative practice and procedure, Courts, Lawyers, Trademarks.
37 CFR Part 7
Administrative practice and procedure, Inventions and patents,
Reporting and record keeping requirements.
For the reasons set forth in the preamble, the PTO is amending title
37 of the Code of Federal Regulations, Chapter 1, Part 1, as set forth
below.
Part 1 - Rules of Practice in Patent Cases
1. The authority citation for 37 CFR Part 1 would continue to read as
follows:
Authority: 35 U.S.C. 6, unless otherwise noted.
2. Section 1.16 is amended by revising paragraphs (a), (b), (d), and (f)
through (i), to read as follows:
1.16 National application filing fees.
(a) Basic fee for filing each application for an original patent, except
provisional, design or plant applications:
By a small entity ( 1.9(f)) $375.00
By other than a small entity $750.00
(b) In addition to the basic filing fee in an original application,
except provisional applications, for filing or later presentation of
each independent claim in excess of 3:
By a small entity ( 1.9(f)) $39.00
By other than a small entity $78.00
*****
(d) In addition to the basic filing fee in an original application,
except provisional applications, if the application contains, or is
amended to contain, a multiple dependent claim(s), per application:
By a small entity ( 1.9(f)) $125.00
By other than a small entity $250.00
(If the additional fees required by paragraphs (b), (c), and (d) of
this section are not paid on filing or on later presentation of the
claims for which the additional fees are due, they must be paid or the
claims canceled by amendment prior to the expiration of the time period
set for response by the Office in any notice of fee deficiency.)
*****
(f) Basic fee for filing each design application
By a small entity ( 1.9(f)) $155.00
By other than a small entity $310.00
(g) Basic fee for filing each plant application, except provisional
applications:
By a small entity ( 1.9(f)) $255.00
By other than a small entity $510.00
(h) Basic fee for filing each reissue application:
By a small entity ( 1.9(f)) $375.00
By other than a small entity $750.00
(i) In addition to the basic filing fee in a reissue application, for
filing or later presentation of each independent claim which is in
excess of the number of independent claims in the original patent:
By a small entity ( 1.9(f)) $39.00
By other than a small entity $78.00
*****
3. Section 1.17 is amended by revising paragraphs (b) through (g), (j),
(m) through (p), (r), and (s) to read as follows:
1.17 Patent application processing fees.
*****
(b) Extension fee for response within second month pursuant to
1.136(a):
By a small entity ( 1.9(f)) $190.00
By other than a small entity $380.00
(c) Extension fee for response within third month pursuant to
1.136(a):
By a small entity ( 1.9(f)) $450.00
By other than a small entity $900.00
(d) Extension fee for response within fourth month pursuant to
1.136(a):
By a small entity ( 1.9(f)) $700.00
By other than a small entity $1,400.00
(e) For filing a notice of appeal from the examiner to the Board of
Patent Appeals and Interferences:
By a small entity ( 1.9(f)) $145.00
By other than a small entity $290.00
(f) In addition to the fee for filing a notice of appeal, for filing a
brief in support of an appeal:
By a small entity ( 1.9 (f)) $145.00
By other than a small entity $290.00
(g) For filing a request for an oral hearing before the Board of Patent
Appeals and Interferences in an appeal under 35 U.S.C. 134:
By a small entity ( 1.9(f)) $125.00
By other than a small entity $250.00
*****
(j) For filing a petition to institute a public use proceeding under
1.292 $1,430.00
*****
(m) For filing a petition:
(1) For revival of an unintentionally abandoned application, or
(2) For the unintentionally delayed payment of the fee for issuing a
patent:
By a small entity ( 1.9(f)) $625.00
By other than a small entity $1,250.00
(n) For requesting publication of a statutory invention registration
prior to the mailing of the first examiner's action pursuant to
1.104--$870.00 reduced by the amount of the application basic filing fee
paid.
(o) For requesting publication of a statutory invention registration
after the mailing of the first examiner's action pursuant to
1.104--$1,740.00 reduced by the amount of the application basic filing
fee paid.
(p) For submission of an information disclosure statement under
1.97(c) $220.00
*****
(r) For entry of a submission after final rejection under 1.129(a):
By a small entity ( 1.9(f)) $375.00
By other than a small entity $750.00
(s) For each additional invention requested to be examined under
1.129(b):
By a small entity ( 1.9(f)) $375.00
By other than a small entity $750.00
4. Section 1.18 is revised to read as follows:
1.18 Patent issue fees.
(a) Issue fee for issuing each original or reissue patent, except a
design or plant patent:
By a small entity ( 1.9(f)) $625.00
By other than a small entity $1,250.00
(b) Issue fee for issuing a design patent:
By a small entity ( 1.9(f)) $215.00
By other than a small entity $430.00
(c) Issue fee for issuing a plant patent:
By a small entity ( 1.9(f)) $315.00
By other than a small entity $630.00
5. Section 1.19 is amended by revising paragraphs (a)(1)(ii),
(a)(1)(iii), (b)(1)(i), and (b)(1)(ii) to read as follows:
1.19 Document supply fees.
*****
(a) ***
(1) ***
*****
(ii) Overnight delivery to PTO Box or
overnight fax $6.00
(iii) Expedited service for copy ordered by expedited mail or fax
delivery service and delivered to the customer within two workdays
$25.00
*****
(b) ***
(1) ***
(i) Regular service $15.00
(ii) Expedited regular service $30.00
*****
6. Section 1.20 is amended by revising paragraphs (c), (e) through (g),
(i)(1), (i)(2), and (j) to read as follows:
1.20 Post issuance fees.
*****
(c) For filing a request for reexamination
( 1.510(a)) $2,390.00
*****
(e) For maintaining an original or reissue patent, except a design or
plant patent, based on an application filed on or after December 12,
1980, in force beyond four years; the fee is due by three years and six
months after the original grant
By a small entity ( 1.9(f)) $495.00
By other than a small entity $990.00
(f) For maintaining an original or reissue patent, except a design or
plant patent, based on an application filed on or after December 12,
1980, in force beyond eight years; the fee is due by seven years and six
months after the original grant
By a small entity ( 1.9(f)) $995.00
By other than a small entity $1,990.00
(g) For maintaining an original or reissue patent, except a design or
plant patent, based on an application filed on or after December 12,
1980, in force beyond twelve years; the fee is due by eleven years and
six months after the original grant
By a small entity ( 1.9(f)) $1,495.00
By other than a small entity $2,990.00
*****
(i) ***
(1) unavoidable $660.00
(2) unintentional $1,550.00
*****
(j) For filing an application for extension of the term of a patent (
1.740) $1,060.00
7. Section 1.21 is amended by revising paragraph (a)(1) to read as
follows:
1.21 Miscellaneous fees and charges.
*****
(a) ***
(1) For admission to examination for registration to practice: fee
payable upon application $310.00
*****
8. Section 1.445 is amended by revising paragraph (a) to read as follows:
1.445 International application filing, processing and search fees.
(a) The following fees and charges for international applications are
established by the Commissioner under the authority of 35 U.S.C. 376:
(1) A transmittal fee (see 35 U.S.C. 361(d) and PCT Rule 14)
$220.00
(2) A search fee (see 35 U.S.C. 361(d) and PCT Rule 16) where:
(i) No corresponding prior United States national application with basic
filing fee has been filed $660.00
(ii) A corresponding prior United States national application with basic
filing fee has been filed $430.00
(3) A supplemental search fee when required, per additional invention
$190.00
*****
9. Section 1.482 is amended by revising paragraphs (a)(1)(i),
(a)(1)(ii), and (a)(2)(ii) to read as follows:
1.482 International preliminary examination fees.
(a) ***
(1) A preliminary examination fee is due on filing the Demand:
(i) Where an international search fee as set forth in 1.445(a)(2) has
been paid on the international application to the United States Patent
and Trademark Office as an International Searching Authority, a
preliminary examination
fee of $470.00
(ii) Where the International Searching Authority for the international
application was an authority other than the United States Patent and
Trademark Office, a preliminary examination fee of $710.00
(2) ***
(ii) Where the International Searching Authority for the international
application was an authority other than the United States Patent and
Trademark Office $250.00
*****
10. Section 1.492 is amended by revising paragraphs (a), (b), and (d) to
read as follows:
1.492 National stage fees.
*****
(a) The basic national fee:
(1) Where an international preliminary examination fee as set forth
in 1.482 has been paid on the international application to the United
States Patent and Trademark Office:
By a small entity ( 1.9(f)) $340.00
By other than a small entity $680.00
(2) Where no international preliminary examination fee as set forth
in 1.482 has been paid to the United States Patent and Trademark
Office, but an international search fee as set forth in 1.445(a)(2)
has been paid on the international application to the United States
Patent and Trademark Office as an International Searching Authority:
By a small entity ( 1.9(f)) $375.00
By other than a small entity $750.00
(3) Where no international preliminary examination fee as set forth
in 1.482 has been paid and no international search fee as set forth
in 1.445(a)(2) has been paid on the international application to the
United States Patent and Trademark Office:
By a small entity ( 1.9(f)) $505.00
By other than a small entity $1,010.00
(4) Where an international preliminary examination fee as set forth
in 1.482 has been paid to the United States Patent and Trademark
Office and the international preliminary examination report states that
the criteria of novelty, inventive step (non-obviousness), and
industrial applicability, as defined in PCT Article 33 (1) to (4) have
been satisfied for all the claims presented in the application entering
the national stage (see 1.496(b)):
By a small entity ( 1.9(f)) $47.00
By other than a small entity $94.00
(5) Where a search report on the international application has been
prepared by the European Patent Office or the Japanese Patent Office:
By a small entity ( 1.9(f)) $440.00
By other than a small entity $880.00
(b) In addition to the basic national fee, for filing or later
presentation of each independent claim in excess of 3:
By a small entity ( 1.9(f)) $39.00
By other than a small entity $78.00
*****
(d) In addition to the basic national fee, if the application contains,
or is amended to contain, a multiple dependent claim(s), per application:
By a small entity ( 1.9(f)) $125.00
By other than a small entity $250.00
*****
Part 2 - Rules of Practice in Trademark Cases
1. The authority citation for 37 CFR Part 2 would continue to read as
follows:
Authority: 15 U.S.C. 1123; 35 U.S.C. 6, unless otherwise noted.
2. Section 2.6 is amended by revising paragraphs (b)(1)(ii),
(b)(1)(iii), (b)(2)(i), and (b)(2)(ii) to read as follows:
2.6 Trademark fees.
*****
(b) ***
(1) ***
*****
(ii) Overnight delivery to PTO Box or overnight
fax $6.00
(iii) Expedited service for copy ordered by expedited mail or fax
delivery service and delivered to the customer within two work days
$25.00
*****
(2) ***
(i) Regular service $15.00
(ii) Expedited local service $30.00
*****
Part 7 - Register of Government Interests in Patents
1. The authority citation for 37 CFR Part 7 would continue to read as
follows:
Authority: E.O. 9424, February 18, 1944, 9 FR 1959; 3 CFR 1943-1948 Comp.
2. Section 7.1 is revised to read as follows:
a) Executive Order 9424 (3 CFR 1943-1948 Comp.) requires the several
departments and other executive agencies of the Government, including
Government-owned or Government-controlled corporations, to forward
promptly to the Commissioner of Patents and Trademarks for recording all
licenses, assignments, or other interests of the Government in or under
patents or applications for patents.
(b) An instrument relating to a patent must identify the patent by the
patent number. An instrument relating to a national patent application
must identify the national patent application by the application number
(consisting of the series code and the serial number, e.g., 07/123,456)
or the serial number and filing date. An instrument relating to an
international patent application which designates the United States of
America must identify the international application by the international
application number (e.g., PCT/US90/01234). If an assignment is executed
concurrently with, or subsequent to, the execution of the patent
application, but before the patent application is filed, it must
identify the patent application by its date of execution, name of each
inventor, and title of the invention so that there can be no mistake as
to the patent application intended.
(c) Each instrument submitted to the Office for recording must be
accompanied by at least one cover sheet as specified in paragraph (d) of
this section referring to those patent applications and patents against
which the instrument is to be recorded. Only one set of instruments and
cover sheets to be recorded should be filed. If an instrument to be
recorded is not accompanied by a completed cover sheet, the instrument
and any incomplete cover sheet will be returned for proper completion of
a cover sheet and resubmission of the instrument and a completed cover
sheet.
(d) Each cover sheet required by paragraph (c) of this section must
contain:
(1) the name of the party conveying the interest;
(2) the name and address of the party receiving the interest;
(3) a description of the interest conveyed or transaction to be
recorded;
(4) each application number or patent number against which the
instrument is to be recorded, or an indication that the instrument is
filed together with a patent application;
(5) the name and address of the party to whom correspondence
concerning the request to record the instrument should be mailed;
(6) the number of applications or patents identified in the cover
sheet and the total fee;
(7) the date the instrument was executed;
(8) a statement by the party submitting the instrument that to the
best of the person's knowledge and belief, the information contained on
the cover sheet is true and correct and any copy submitted is a true
copy of the original instrument; and
(9) the signature of the party submitting the instrument.
(e) Each patent cover sheet required by paragraph (c) of this section
seeking to record a governmental interest as provided by paragraph (a)
of this section must:
(1) indicate that the instrument is to be recorded on the
governmental register, and, if applicable, that the instrument is to be
recorded on the Secret Register. See 7.7.
(2) indicate, if applicable, that the instrument to be recorded is
not an instrument affecting title. See paragraph (j) of this section.
(f) An error in a cover sheet recorded pursuant to this Part will be
corrected only if:
(1) the error is apparent when the cover sheet is compared with the
recorded instrument to which it pertains, and
(2) a corrected cover sheet accompanied by the recording fee set
forth in paragraph (i) of this section and either the original recorded
instrument or a copy of the original recorded instrument is filed for
recordation.
(g) The Office will accept and record non-English language instruments
only if accompanied by a verified English translation signed by the
individual making the translation.
(h) Instruments and cover sheets to be recorded should be addressed to
the Commissioner of Patents and Trademarks, Box Assignment, Washington,
D.C. 20231.
(i) All requests to record instruments must be accompanied by the
appropriate fee. Except as provided in paragraph (j) of this section, a
recording fee set forth in 1.21(h) of this chapter fee is required
for each application and patent against which the instrument is recorded
as identified in the cover sheet.
(j) No fee is required for each patent application and patent against
which an instrument required by Executive Order 9424 (3 CFR 1943 - 1948
Comp.) to be filed if:
(1) the instrument does not affect title and is so identified in the
cover sheet (see paragraph (e) of this section); and
(2) the cover sheet is filed in a format approved by the Office.
August 4, 1995 BRUCE A. LEHMAN
Secretary of Commerce and
Commissioner of Patents and Trademarks