Department of Commerce
Patent and Trademark Office
37 CFR Parts 1 and 2
[Docket No. 970410086-7174-02]
RIN 0651-AA92
Revision of Patent and Trademark Fees
for Fiscal Year 1998
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, to adjust certain patent fee and
trademark service fee amounts to reflect fluctuations in the Consumer
Price Index (CPI) and to recover costs of operation.
Effective Date: October 1, 1997.
For Further Information Contact: Matthew Lee by telephone at (703)
305-8051, fax at (703) 305-8007, or by mail marked to his attention and
addressed to the Commissioner of Patents and Trademarks, Office of
Finance, Crystal Park 1, Suite 802, 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).
When the "Revision of Patent and Trademark Fees for Fiscal Year 1998"
was published as a proposed rule, the PTO assumed that the fee revisions
would not become effective until after the "1996 Changes to Patent
Practice and Procedure" (hereinafter "Miscellaneous Changes"). See 61 FR
49819 (September 23, 1996) (proposed Miscellaneous Changes rule). The
changes proposed in the fee revision notice of proposed rulemaking have
been modified to take into account that the fee revision rule will
become effective before the Miscellaneous Changes rulemaking.
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 $119 million in fiscal year 1998.
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
preceeding twelve 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 Patent and Trademark Office.
Recovery Level Determinations
This rule adjusts patent fee and trademark service fee amounts for a
planned recovery of $748,320,000 in fiscal year 1998, 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) will
be adjusted on October 1, 1997, to reflect any fluctuations occurring
during the previous twelve months in the Consumer Price Index for all
urban consumers (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
twenty-one days after the end of the month being calculated. Therefore,
the latest CPI-U information available is for the month of June 1997. In
accordance with previous rulemaking methodology, the PTO uses the
Administration's projected CPI-U for the twelve-month period ending
September 30, 1997, which is 2.6 percent. Based on this projection,
patent statutory fees will be adjusted by 2.6 percent. Before the final
fee schedule is published, the fees may be adjusted slightly based on
updated 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
will be adjusted to recover their estimated average costs in fiscal year
1998.
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 will
be adjusted to recover their estimated average costs in fiscal year 1998.
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 any comparable small entity fee would
be a whole number.
Workload Projections
Determination of workload 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 78 percent, 54 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 using the "Express Mail" service of the United States Postal
Service (USPS) 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 date of deposit with the USPS (shown
by the "date in" on the "Express Mail" mailing label) which is 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.
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) through (i), is revised
to adjust fees established therein to reflect fluctuations in the CPI.
37 CFR 1.17 Patent application processing fees.
Section 1.17, paragraphs (b) through (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) through (p), is revised to
adjust fees established therein to recover costs.
37 CFR 1.18 Patent issue fees.
Section 1.18, paragraphs (a) through (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)(2) and (a)(3), is revised to adjust fees
established therein to recover costs.
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) through (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, paragraphs (a)(1)(ii), (a)(6) and (j), 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 and reflect current business practices.
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)(4) and (b)(10), is revised to adjust fees
established therein to recover costs.
Response to Comments on the Rules
A notice of proposed rulemaking to adjust patent fee and trademark fee
service amounts was published in the Federal Register on May 7, 1997, at
62 FR 24865 and in the Official Gazette of the United States Patent and
Trademark Office on May 27, 1997, at 1198 OG 97.
Comment: A respondent stated that many of the elements comprising the
U.S. Department of Labor's Consumer Price Index (CPI) have no effect on
PTO's costs of operation. The respondent also stated that fee increases
should reflect only that portion of the CPI affecting PTO's costs of
operation.
Response: The PTO is required by law to base its inflationary fee
increases on fluctuations in the CPI over the twelve months prior to the
effective date of the fee increase. While it is true that some of the
elements that constitute the CPI have no effect on the cost of
operations of the PTO, the CPI itself has considerable impact on the
PTO. Salary increases for Federal employees have increased at rates that
closely match the CPI, and employee compensation alone accounts for over
55 percent of PTO's annual costs. The PTO, just like any other public or
private organization, must procure supplies, pay rent and utilities, and
incur numerous other expenses in the course of operations.
Unfortunately, these costs rarely decline with each passing year.
Comment: A respondent stated that the PTO should adjust fees that are
less than $100 in increments of at least $5 to avoid having amounts
which make the calculation of fees inconvenient to the users.
Response: In the Recovery Level Determinations section of this rule
package, it states that "Fees between $2 and $99 were rounded to an even
number so that any comparable small entity fee would be a whole number."
This rounding methodology enables the PTO to set large and small entity
fee amounts which are convenient overall to the users.
Other Considerations
This rulemaking contains no information collection within the meaning of
the Paperwork Reduction Act of 1995, 44 U.S.C. 3501 et seq. This rule
has been determined to be not significant for purposes of Executive
Order 12866. The PTO has determined that this 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 rule change would not have a
significant impact on a substantial number of small entities (Regulatory
Flexibility Act, 5 U.S.C. 605(b)). The 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
fifty percent reduction in the major patent fees.
A comparison of existing and new fee amounts is included as an
Appendix to this final rule.
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
For the reasons set forth in the preamble, the PTO is amending title 37
of the Code of Federal Regulations, Parts 1 and 2, 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)) $395.00
By other than a small entity $790.00
(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)) $41.00
By other than a small entity $82.00
*****
(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)) $135.00
By other than a small entity $270.00
*****
(f) Basic fee for filing each design application
By a small entity ( 1.9(f)) $165.00
By other than a small entity $330.00
(g) Basic fee for filing each plant application, except provisional
applications:
By a small entity ( 1.9(f)) $270.00
By other than a small entity $540.00
(h) Basic fee for filing each reissue application:
By a small entity ( 1.9(f)) $395.00
By other than a small entity $790.00
(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)) $41.00
By other than a small entity $82.00
*****
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)) $200.00
By other than a small entity $400.00
(c) Extension fee for response within third month pursuant to
1.136(a):
By a small entity ( 1.9(f)) $475.00
By other than a small entity $950.00
(d) Extension fee for response within fourth month pursuant to
1.136(a):
By a small entity ( 1.9(f)) $755.00
By other than a small entity $1,510.00
(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)) $155.00
By other than a small entity $310.00
(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)) $155.00
By other than a small entity $310.00
(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)) $135.00
By other than a small entity $270.00
*****
(j) For filing a petition to institute a public use proceeding under
1.292 $1,510.00
*****
(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)) $660.00
By other than a small entity $1,320.00
(n) For requesting publication of a statutory invention registration
prior to the mailing of the first examiner's action pursuant to
1.104--$920.00 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--$1,840.00 reduced by the amount of the application basic filing
fee paid.
(p) For submission of an information disclosure statement under
1.97(c) $240.00
*****
(r) For entry of a submission after final rejection under 1.129(a):
By a small entity ( 1.9(f)) $395.00
By other than a small entity $790.00
(s) For each additional invention requested to be examined under
1.129(b):
By a small entity ( 1.9(f)) $395.00
By other than a small entity $790.00
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)) $660.00
By other than a small entity $1,320.00
(b) Issue fee for issuing a design patent:
By a small entity ( 1.9(f)) $225.00
By other than a small entity $450.00
(c) Issue fee for issuing a plant patent:
By a small entity ( 1.9(f)) $335.00
By other than a small entity $670.00
5. Section 1.19 is amended by revising paragraphs (a)(2) and (a)(3) to
read as follows:
1.19 Document supply fees.
(a)***
(2) Printed copy of a plant patent in color $15.00
(3) Copy of a utility patent or statutory invention registration
containing color drawing (see 1.84(a)(2)) $25.00
*****
6. Section 1.20 is amended by revising paragraphs (c), (e) through (g),
(i)(1), (i)(2), and (j)(1) through (j)(3) to read as follows:
1.20 Post issuance fees.
*****
(c) For filing a request for reexamination
( 1.510(a)) $2,520.00
*****
(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)) $525.00
By other than a small entity $1,050.00
(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)) $1,050.00
By other than a small entity $2,100.00
(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)) $1,580.00
By other than a small entity $3,160.00
*****
(i) ***
(1) Unavoidable $700.00
(2) Unintentional $1,640.00
(j) ***
(1) Application for extension under 1.740 $1,120.00
(2) Initial application for interim extension
under 1.790 $420.00
(3) Subsequent application for interim extension
under 1.790 $220.00
7. Section 1.21 is amended by revising paragraphs (a)(1)(ii), (a)(6) and
(j) to read as follows:
1.21 Miscellaneous fees and charges.
(a) ***
(1) ***
(ii) Registration examination fee $310.00
*****
(6) For requesting regrading of an examination under 10.7(c):
(i)Regrading of morning section (PTO Practice
and Procedure) $230.00
(ii) Regrading of afternoon section (Claim
Drafting) $540.00
*****
(j) Labor charges for services, per hour or fraction
thereof $40.00
*****
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) $240.00
(2) A search fee (see 35 U.S.C. 361(d) and PCT Rule 16):
(i) Where a corresponding prior United States National application filed
under 35 U.S.C. 111(a) with the filing fee under 37 CFR 1.16(a) has been
filed $450.00
(ii) For all situations not provided for in (a)(2)(i) of this section
$700.00
(3) A supplemental search fee when required, per additional invention
$210.00
*****
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) ***
(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 $490.00
(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 $750.00
(2) ***
(ii) Where the International Searching Authority for the international
application was an authority other than the United States Patent and
Trademark Office $270.00
*****
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)) $360.00
By other than a small entity $720.00
(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)) $395.00
By other than a small entity $790.00
(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)) $535.00
By other than a small entity $1,070.00
(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)) $49.00
By other than a small entity $98.00
(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)) $465.00
By other than a small entity $930.00
(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)) $41.00
By other than a small entity $82.00
*****
(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)) $135.00
By other than a small entity $270.00
*****
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)(4) and (b)(10) to
read as follows:
2.6 Trademark fees.
*****
(b) Trademark service fees.
*****
(4) Certified copy of a registered mark, showing title and/or status:
(i) Regular service $15.00
(ii) Expedited local service $30.00
*****
(10) Labor charges for services, per hour or fraction
thereof $40.00
*****
July 22, 1997 BRUCE A. LEHMAN
Assistant Secretary of Commerce and
Commissioner of Patents and Trademarks