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