DEPARTMENT OF COMMERCE             Billing Code:  3510-16-M



Patent and Trademark Office



37 CFR Part 1



[Docket No. 960417113-6186-02]



RIN 0651-AA82



Revision of Patent Fees for Fiscal Year 1997



AGENCY:  Patent and Trademark Office, Commerce.



ACTION:  Notice of Final Rulemaking.



SUMMARY:  The Patent and Trademark Office (PTO) is amending the

rules of practice in patent cases to adjust certain patent fee

amounts to reflect fluctuations in the Consumer Price Index (CPI)

and to recover costs of operation.



EFFECTIVE DATE:  October 1, 1996.



FOR FURTHER INFORMATION CONTACT:  Robert Harris by telephone at

(703) 305-8510, fax at (703) 305-8525, e-mail at rharris@uspto.gov,

or by mail marked to his attention and addressed to the U.S. Patent

and Trademark Office, Office of Planning and Evaluation, Crystal

Park 1, Suite 1107,

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; 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).



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 $115 million in fiscal year 1997.



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.



Recovery Level Determinations



This rule adjusts patent fees for a planned recovery of

$716,723,000 in fiscal year 1997, 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, 1996, to reflect any fluctuations

occurring during the previous 12 months in the Consumer Price Index

for all urban consumers (CPI-U).  In calculating these

fluctuations, the Office of Mangement 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 June 1996.  In accordance with

previous rulemaking methodology, the PTO uses the Administration's

projected CPI-U for the 12-month period ending September 30, 1996,

which is 3.1 percent.  Based on this projection, patent statutory

fees will be adjusted by 3.1 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 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.



The final 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 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.



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.  Further, section 1.16, is revised to remove the

undesignated text following paragraph (d), and add a new paragraph

(k) including the provisions of such deleted undesignated text.  In

addition,

 1.16(k) is also applicable to any additional fees required by

1.16(i) and (j).



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 1.20  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, paragraph (a)(1), is revised to establish a non-

refundable application fee which reflects the costs of processing

an application for the registration examination.  Currently, the

PTO evaluates and processes the applications of individuals who do

not qualify for admission or those who withdraw from the

examination, but generally refunds the examination fee to such

applicants.  Thus, other fee payers bear the costs of this

evaluation and processing.  This amendment will shift the expense

of evaluating applications to all applicants.  In order to offset

the application fee, the examination fee will be slightly

decreased.



Section 1.21, paragraphs (a)(3) and (a)(6), 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.



Response to Comments on the Rules



A notice of proposed rulemaking to adjust patent fee amounts was

published in the Federal Register on May 1, 1996, at 61 FR 19224

and in the Official Gazette of the United States Patent and

Trademark Office on May 7, 1996, at 1186 OG 14.



A public hearing was held on June 5, 1996.  Two comments were

received and considered in adopting the rules set forth herein.  No

oral testimony was presented.



Comment:  One respondent stated that the PTO should not adjust

patent fee amounts using the U.S. Department of Labor's Consumer

Price Index (CPI).  The respondent stated that the CPI does not

reflect a true or accurate index of increasing consumer prices.



Response:  The PTO is required by law to base its inflationary fee

increases on fluctuations in the CPI over the 12 months prior to

the effective date of the fee increase.  However, if the Department

of Labor modifies the definition or changes the method of

calculating the Consumer Price Index for all urban consumers (CPI-

U), which is the version of the CPI that OMB has determined the PTO

should use, future PTO inflationary fee increases could be based on

the revised index.



Comment:  One respondent stated that the patent extension fees set

in 37 CFR 1.17(a) through (d) should be reduced by at least 50

percent for patent applications filed on or after June 8, 1995.



Response:  Patent extension fees were set in statute by Congress in

1982 with the enactment of

Public Law 97-247.  The PTO does not have the authority to offer a

50 percent discount for all patent applications filed on or after

June 8, 1995.



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 will

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 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 in 37 CFR Part 1



Administrative practice and procedure, Inventions and patents,

Reporting and recordkeeping requirements, Small businesses.



For the reasons set forth in the preamble, the PTO is amending

title 37 of the Code of Federal Regulations, Part 1, as set forth

below.



            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. 6, unless otherwise noted.



2.    Section 1.16 is amended by revising

 paragraphs (a), (b), (d), (f) through (i), and

 adding a new paragraph (m) before the note 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))                    $385.00

  By other than a small entity                    $770.00



(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))                     $40.00

  By other than a small entity                     $80.00



*****



(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))                    $130.00

  By other than a small entity                    $260.00



*****



(f)       Basic fee for filing each design application

  By a small entity ( 1.9(f))                    $160.00

  By other than a small entity                    $320.00



(g)    Basic fee for filing each plant application,

  except provisional applications:

  By a small entity ( 1.9(f))                    $265.00

  By other than a small entity                    $530.00



(h)    Basic fee for filing each reissue

  application:

  By a small entity ( 1.9(f))                    $385.00

  By other than a small entity                    $770.00



(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))                     $40.00

  By other than a small entity                     $80.00



*****



(m)    If the additional fees required by

  paragraphs (b), (c), (d), (i) and (j) 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 must be canceled by amendment, prior to

  the expiration of the time period set for reply

  by the Office in any notice of fee deficiency.



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))                    $195.00

  By other than a small entity                    $390.00



(c)    Extension fee for response within third

  month pursuant to

   1.136(a):

  By a small entity ( 1.9(f))                    $465.00

  By other than a small entity                    $930.00



(d)    Extension fee for response within fourth

  month pursuant to

   1.136(a):

  By a small entity ( 1.9(f))                    $735.00

  By other than a small entity                  $1,470.00



(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))                    $150.00

  By other than a small entity                    $300.00



(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))                   $150.00

  By other than a small entity                    $300.00



(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))                    $130.00

  By other than a small entity                    $260.00



*****



(j)For filing a petition to institute a public use proceeding under  1.292

  $1,470.00



*****



(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))                 $645.00

     By other than a small entity               $1,290.00



(n)    For requesting publication of a statutory

  invention registration prior to the mailing of the

  first examiner's action pursuant to  1.104--$900.00

  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--

  $1,790.00 reduced by the amount of the application

  basic filing fee paid.



(p)For submission of an information disclosure statement under  1.97(c)

  $230.00



*****



(r)    For entry of a submission after final

  rejection under 1.129(a):

  By a small entity ( 1.9(f))                    $385.00

  By other than a small entity                    $770.00



(s)    For each additional invention requested to

  be examined under 1.129(b):

  By a small entity ( 1.9(f))                    $385.00

  By other than a small entity                    $770.00



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))                    $645.00

  By other than a small entity                  $1,290.00



(b)    Issue fee for issuing a design patent:

  By a small entity ( 1.9(f))                    $220.00

  By other than a small entity                    $440.00



(c)    Issue fee for issuing a plant patent:

  By a small entity ( 1.9(f))                    $325.00

  By other than a small entity                    $650.00



5.    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))

  $2,460.00



*****



(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))                    $510.00

  By other than a small entity                  $1,020.00



(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))                  $1,025.00

  By other than a small entity                  $2,050.00



(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))                  $1,540.00

  By other than a small entity                  $3,080.00



*****



(i)                                                 ***

  (1) unavoidable                                 $680.00

  (2) unintentional                             $1,600.00



(j)                                                 ***

  (1) Application for extension under 1.740    $1,090.00

  (2) Initial application for interim extension

     under 1.790                                  $410.00

  (3) Subsequent application for interim extension

     under 1.790                                  $210.00



6.    Section 1.21 is amended by revising paragraph

 (a)(1), (a)(3), and (a)(6) to read as follows:



 1.21  Miscellaneous fees and charges.



*****



(a)                                                 ***



  (1)For admission to examination for registration to practice:

     (i)               Application Fee (non-refundable)  $40.00

     (ii)                  Registration examination fee  $300.00

     

*****



  (3)                    For reinstatement to practice     $40.00



*****

     

  (6)For requesting regrading of an examination under  10.7(c):

     (i)Regrading of morning section (PTO Practice and Procedure)  $225.00

     (ii)Regrading of afternoon section (Claim Drafting) $530.00



*****



7.    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)                                      $230.00



  (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                     $440.00

     (ii)For all situations not provided for in (a)(2)(i) of this section

       $680.00



  (3)A supplemental search fee when required, per additional invention

     $200.00



*****



8.    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$480.00

     (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      $730.00



  (2)                                         ***

     (ii)Where the International Searching Authority for the international

       application was an authority other than the United States Patent

       and Trademark Office                       $260.00



*****



9.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))                  $350.00

     By other than a small entity                  $700.00

  

  (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))                  $385.00

     By other than a small entity                  $770.00



  (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))                  $520.00

     By other than a small entity                $1,040.00



  (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))                   $48.00

     By other than a small entity                   $96.00

  

  (5)Where a search report on the international ap

     plication has been prepared by the European

     Patent Office or the Japanese Patent Office:

     By a small entity ( 1.9(f))                  $455.00

     By other than a small entity                  $910.00

  

(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))                     $40.00

  By other than a small entity                     $80.00



*****



(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))                    $130.00

  By other than a small entity                    $260.00

  

*****

Date:  July 24, 1996     Bruce A. Lehman
                         Assistant Secretary of Commerce and
                            Commissioner of Patents and Trademarks