Changes To Implement the Patent Fee Related Provisions of the Consolidated Appropriations Act, 2005, 3880-3892 [05-1377]

Download as PDF 3880 Federal Register / Vol. 70, No. 17 / Thursday, January 27, 2005 / Rules and Regulations State, local, or tribal government, in the aggregate, or by the private sector of $100,000,000 or more in any one year. Though this rule will not result in such an expenditure, we do discuss the effects of this rule elsewhere in this preamble. Taking of Private Property This rule will not effect a taking of private property or otherwise have taking implications under Executive Order 12630, Governmental Actions and Interference with Constitutionally Protected Property Rights. Civil Justice Reform This rule meets applicable standards in sections 3(a) and 3(b)(2) of Executive Order 12988, Civil Justice Reform, to minimize litigation, eliminate ambiguity, and reduce burden. Protection of Children We have analyzed this rule under Executive Order 13045, Protection of Children from Environmental Health Risks and Safety Risks. This rule is not an economically significant rule and does not create an environmental risk to health or risk to safety that may disproportionately affect children. Indian Tribal Governments This rule does not have tribal implications under Executive Order 13175, Consultation and Coordination with Indian Tribal Governments, because it does not have a substantial direct effect on one or more Indian tribes, on the relationship between the Federal Government and Indian tribes, or on the distribution of power and responsibilities between the Federal Government and Indian tribes. Energy Effects We have analyzed this rule under Executive Order 13211, Actions Concerning Regulations That Significantly Affect Energy Supply, Distribution, or Use. We have determined that it is not a ‘‘significant energy action’’ under that order because it is not a ‘‘significant regulatory action’’ under Executive Order 12866 and is not likely to have a significant adverse effect on the supply, distribution, or use of energy. The Administrator of the Office of Information and Regulatory Affairs has not designated it as a significant energy action. Therefore, it does not require a Statement of Energy Effects under Executive Order 13211. Technical Standards 19:04 Jan 26, 2005 Environment We have analyzed this rule under Commandant Instruction M16475.lD, which guides the Coast Guard in complying with the National Environmental Policy Act of 1969 (NEPA) (42 U.S.C. 4321–4370f), and have concluded that there are no factors in this case that would limit the use of a categorical exclusion under section 2.B.2 of the Instruction. Therefore, this rule is categorically excluded, under figure 2–1, paragraph (34)(h), of the Instruction, from further environmental documentation. As a special local regulation issued in conjunction with a marine parade, this rule satisfies the requirements of paragraph (34)(h). Under figure 2–1, paragraph (34)(h), of the instruction, an ‘‘Environmental Analysis Check List’’ and a draft ‘‘Categorical Exclusion Determination’’ are not required for this rule. List of Subjects in 33 CFR Part 100 Regattas and marine parades. I For the reasons discussed in the preamble, the Coast Guard amends 33 CFR part 100 as follows: Jkt 205001 north of a line drawn along latitude 27° 51′ 18″ N. The regulated area includes the following in their entirety: Hillsborough Cut ‘‘D’’ Channel, Seddon Channel and the Hillsborough River south of the John F. Kennedy Bridge. Coordinates Reference Datum, NAD 1983. (e) Special Local Regulations. (1) Entry into the regulated area is prohibited to all commercial marine traffic from 9 a.m. to 2:30 p.m. EST on January 29, 2005. (2) The regulated area is an idle speed, ‘‘no wake’’ zone. (3) All vessels within the regulated area shall stay clear of and give way to all vessels in parade formation in the Gasparilla Marine Parade. (4) When within the marked channels of the parade route, vessels participating in the Gasparilla Marine Parade may not exceed the minimum speed necessary to maintain steerage. (5) Jet skis and vessels without mechanical propulsion are prohibited from the parade route. (6) Northbound vessels in excess of 80 feet in length without mooring arrangements made prior to January 29, 2005, are prohibited from entering Seddon Channel unless the vessel is officially entered in the Gasparilla Marine Parade. All northbound vessels in excess of 80 feet without prior mooring arrangements and not officially entered in the Gasparilla Marine Parade, must use the alternate route through Sparkman Channel. W.E. Justice, Captain, U.S. Coast Guard, Acting Commander, Seventh Coast Guard District. [FR Doc. 05–1509 Filed 1–26–05; 8:45 am] BILLING CODE 4910–15–P DEPARTMENT OF COMMERCE Patent and Trademark Office PART 100—SAFETY OF LIFE ON NAVIGABLE WATERS 1. The authority citation for part 100 continues to read as follows: I Authority: 33 U.S.C. 1233; Department of Homeland Security Delegation No. 0170.1. 2. From 9 a.m. on January 29, 2005, until 2:30 p.m. on February 5, 2005, in § 100.734, suspend paragraphs (a), (b) and (c), and add new paragraphs (d) and (e) to read as follows: I § 100.734 Annual Gasparilla Marine Parade; Hillsborough Bay, Tampa, FL. * The National Technology Transfer and Advancement Act (NTTAA) (15 U.S.C. 272 note) directs agencies to use VerDate jul<14>2003 voluntary consensus standards in their regulatory activities unless the agency provides Congress, through the Office of Management and Budget, with an explanation of why using these standards would be inconsistent with applicable law or otherwise impractical. Voluntary consensus standards are technical standards (e.g., specifications of materials, performance, design, or operation; test methods; sampling procedures; and related management systems practices) that are developed or adopted by voluntary consensus standards bodies. This rule does not use technical standards. Therefore, we did not consider the use of voluntary consensus standards. * * * * (d) Regulated area. A regulated area is established consisting of all waters of Hillsborough Bay and its tributaries PO 00000 Frm 00026 Fmt 4700 Sfmt 4700 37 CFR Parts 1 and 41 [Docket No. 2003–P–026] RIN 0651–AB54 Changes To Implement the Patent Fee Related Provisions of the Consolidated Appropriations Act, 2005 United States Patent and Trademark Office, Commerce. ACTION: Final rule. AGENCY: SUMMARY: The Consolidated Appropriations Act, 2005 (Consolidated Appropriations Act), revises patent fees in general, and provides for a search fee and examination fee that are separate E:\FR\FM\27JAR1.SGM 27JAR1 Federal Register / Vol. 70, No. 17 / Thursday, January 27, 2005 / Rules and Regulations from the filing fee, during fiscal years 2005 and 2006. This final rule revises the patent fees set forth in the rules of practice to conform them to the patent fees set forth in the Consolidated Appropriations Act. DATES: Effective Date: December 8, 2004. Applicability Date: The changes in this final rule apply to all patents (including patents in reexamination proceedings), whenever granted, and to all patent applications pending on or after December 8, 2004. FOR FURTHER INFORMATION CONTACT: Robert W. Bahr, Senior Patent Attorney, Office of the Deputy Commissioner for Patent Examination Policy, by telephone at (571) 272–8800, by mail addressed to: Box Comments—Patents, Commissioner for Patents, P.O. Box 1450, Alexandria, VA, 22313–1450, or by facsimile to (571) 273–7735, marked to the attention of Robert W. Bahr. SUPPLEMENTARY INFORMATION: The Consolidated Appropriations Act (section 801 of Division B) provides that 35 U.S.C. 41(a), (b), and (d) shall be administered in a manner that revises patent application fees (35 U.S.C. 41(a)) and patent maintenance fees (35 U.S.C. 41(b)), and provides for a separate filing fee (35 U.S.C. 41(a)), search fee (35 U.S.C. 41(d)(1)), and examination fee (35 U.S.C. 41(a)(3)) during fiscal years 2005 and 2006. See Pub. L. 108–447, 118 Stat. 2809 (2004). This final rule revises the patent fees set forth in the rules of practice in title 37 of the Code of Federal Regulations (CFR) to conform them to the patent fees set forth in the Consolidated Appropriations Act. The citations to 35 U.S.C. 41 in this final rule are citations to 35 U.S.C. 41 as it is being administered during fiscal years 2005 and 2006 pursuant to the Consolidated Appropriations Act. The Consolidated Appropriations Act also provides that the provisions of 35 U.S.C. 111(a) for payment of the fee for filing the application apply to the payment of the examination fee (35 U.S.C. 41(a)(3)) and search fee (35 U.S.C. 41(d)(1)) in an application filed under 35 U.S.C. 111(a), and that the provisions of 35 U.S.C. 371(d) for the payment of the national fee apply to the payment of the examination fee (35 U.S.C. 41(a)(3)) and search fee (35 U.S.C. 41(d)(1)) in an international application filed under the Patent Cooperation Treaty (PCT) and entering the national stage under 35 U.S.C. 371. See 35 U.S.C. 41(a)(3) and 41(d)(1)(C). Thus, the examination fee and search fee are due on filing in an application filed under 35 U.S.C. 111(a) or on commencement of the national stage in a PCT international application, but VerDate jul<14>2003 19:04 Jan 26, 2005 Jkt 205001 may be paid at a later time if paid within such period and under such conditions (including payment of a surcharge) as may be prescribed by the Director. See H. R. Rep. 108–241, at 16 (2003) (H. R. Rep. 108–241 contains an analysis and discussion of an identical provision in H.R. 1561, 108th Cong. (2004)). The Consolidated Appropriations Act also provides that the small entity reduction set forth in 35 U.S.C. 41(h)(1) also applies to the search fee provided for in 35 U.S.C. 41(d)(1) (35 U.S.C. 41(h)(1)), and provides that the filing fee charged under 35 U.S.C. 41(a)(1)(A) shall be reduced by 75 percent with respect to its application to any small entity ‘‘if the application is filed by electronic means as prescribed by the Director’’ (35 U.S.C. 41(h)(3)). Since 35 U.S.C. 41(h)(3) applies only to the filing fee charged under 35 U.S.C. 41(a)(1)(A) (the filing fee for a nonprovisional original utility application), the 75 percent fee reduction set forth in 35 U.S.C. 41(h)(3) does not apply to design or plant applications, reissue applications, or provisional applications. The Consolidated Appropriations Act also provides that the Office may, by regulation, provide for a refund of: (1) Any part of the excess claims fee specified in 35 U.S.C. 41(a)(2) for any claim that is canceled before an examination on the merits has been made of the application under 35 U.S.C. 131; (2) any part of the search fee for any applicant who files a written declaration of express abandonment as prescribed by the Office before an examination has been made of the application under 35 U.S.C. 131; and (3) any part of the search fee for any applicant who provides a search report that meets the conditions prescribed by the Office. This final rule does not contain changes to the rules of practice to implement the provisions for a refund of any part of the excess claims fee specified in 35 U.S.C. 41(a)(2) for any claim that is canceled before an examination on the merits has been made of the application under 35 U.S.C. 131, and any part of the search fee for any applicant who files a written declaration of express abandonment as prescribed by the Office before an examination has been made of the application under 35 U.S.C. 131. The revised patent fees specified in 35 U.S.C. 41 apply to all patents, whenever granted, and to all applications pending on or filed after December 8, 2004, except as follows: The provisions of 35 U.S.C. 41(a)(1) (filing fee and application size fee), 35 U.S.C. 41(a)(3) (examination fee), and 35 U.S.C. PO 00000 Frm 00027 Fmt 4700 Sfmt 4700 3881 41(d)(1) (search fee) apply only to applications for patent filed under 35 U.S.C. 111 on or after December 8, 2004, and to international applications entering the national stage under 35 U.S.C. 371 for which the basic national fee specified in 35 U.S.C. 41 was not paid before December 8, 2004. In addition, the provisions of 35 U.S.C. 41(a)(2) (excess claims fee) apply only as to those claims in independent form and those claims (whether independent or dependent) that, after taking into account the claims that have been canceled, are in excess of the number of claims in independent form and claims (whether independent or dependent), respectively, for which the excess claims fee specified in 35 U.S.C. 41 was paid before December 8, 2004. The applicable fee amount is the fee amount in effect on the day the fee is paid (in full). The day a fee is paid is the date of receipt of the fee payment in the Office under § 1.6, or the date reflected on a proper certificate of mailing or transmission on the fee payment, where such a certificate is authorized under § 1.8. Use of a certificate of mailing or transmission is not authorized for items that are specifically excluded from the provisions of § 1.8: e.g., the filing of a national or international application for a patent. See § 1.8(a)(2). The date of receipt under 37 CFR 1.6 of patentrelated correspondence delivered by the ‘‘Express Mail Post Office to Addressee’’ service of the United States Postal Service (USPS) is the date of deposit of the correspondence with the USPS. See §§ 1.6(a)(2) and 1.10(a)(1). The date of deposit with the USPS is shown by the ‘‘date-in’’ on the ‘‘Express Mail’’ mailing label or other official USPS notation. See § 1.10(a)(2). Discussion of Specific Rules Title 37 of the Code of Federal Regulations, Parts 1 and 41, are amended as follows: Section 1.16: Section 1.16 is amended to set forth the application filing, excess claims, search, examination, and application size fees as specified in 35 U.S.C. 41(a) and (d)(1) as amended by the Consolidated Appropriations Act. Sections 1.16(a) through (e) set forth the basic filing fees under the Consolidated Appropriations Act for applications filed under 35 U.S.C. 111 on or after December 8, 2004: (1) The basic filing fee for an original nonprovisional utility application is $300.00 ($150.00 for a small entity, and $75.00 for a small entity if the application is submitted in compliance with the Office electronic filing system); (2) the basic filing fee for an original E:\FR\FM\27JAR1.SGM 27JAR1 3882 Federal Register / Vol. 70, No. 17 / Thursday, January 27, 2005 / Rules and Regulations design application is $200.00 ($100.00 for a small entity); (3) the basic filing fee for an original nonprovisional plant application is $200.00 ($100.00 for a small entity); (4) the basic filing fee for a provisional application is $200.00 ($100.00 for a small entity); and (5) the basic filing fee for a reissue application is $300.00 ($150.00 for a small entity). See 35 U.S.C. 41(a)(1)(A) through (E). The Consolidated Appropriations Act (Section 803(b)(1)(B)(i) of Division B) provides that the basic filing fees specified in 35 U.S.C. 41(a)(1) (except for the filing fee specified in 35 U.S.C. 41(a)(1)(D) for a provisional application) apply only to applications filed on or after December 8, 2004. Therefore, § 1.16 also sets forth the basic filing fee for applications filed under 35 U.S.C. 111 before December 8, 2004: (1) The basic filing fee for an original nonprovisional utility application and for a reissue application is $790.00 ($395.00 for a small entity); (2) the basic filing fee for an original design application is $350.00 ($175.00 for a small entity); and (3) the basic filing fee for an original nonprovisional plant application is $550.00 ($275.00 for a small entity). See Revision of Patent Fees for Fiscal Year 2005, 69 FR 52604 (Aug. 27, 2004) (final rule), and Certain Fees to be Adjusted, 1285 Off. Gaz. Pat. Office 185 (Aug. 31, 2004) (notice). These basic filing fees apply to applications filed before December 8, 2004, even if the basic filing fee is not paid until on or after December 8, 2004. The Consolidated Appropriations Act (Section 803(b)(1)(B)(ii) of Division B) also provides that the basic filing fee for a provisional application applies to all provisional applications filed before, on, or after December 8, 2004, in which the filing fee was not paid before December 8, 2004. Section 1.16(f) sets forth the late filing surcharge for a nonprovisional application, and § 1.16(g) sets forth the late filing surcharge for a provisional application (formerly in §§ 1.16(e) and (l), respectively). See also §§ 1.53(f) and (g), respectively. Section 1.16(h) sets forth the excess claims fee for each independent claim in excess of three; namely, $200 ($100 for a small entity) for each claim in independent form in excess of three. See 35 U.S.C. 41(a)(2)(A). Section 1.16(i) sets forth the excess claims fee for each claim (whether dependent or independent) in excess of twenty; namely, $50 ($25 for a small entity) for each claim (whether dependent or independent) in excess of twenty. See 35 U.S.C. 41(a)(2)(B). The excess claims fees specified in § 1.16 apply to applications filed before VerDate jul<14>2003 19:04 Jan 26, 2005 Jkt 205001 December 8, 2004, and to applications pending on or after December 8, 2004. The Consolidated Appropriations Act (Section 803(b)(1)(C) of Division B) provides that the excess claims fees specified in 35 U.S.C. 41(a)(2) shall apply only as to those claims (independent or dependent) that, after taking into account any claims that have been canceled, are in excess of the number of claims for which the excess claims fee specified in 35 U.S.C. 41 was paid before December 8, 2004. Thus, the Office will charge the excess claims fees specified in § 1.16(h) and (i) if an applicant in an application filed before and pending on or after December 8, 2004, adds a claim (independent or total) in excess of the number of claims (independent or total) for which the excess claims fee was previously paid (under the current or a previous fee schedule). Specifically, the excess claims fees specified in § 1.16(h) and (i) apply to any excess claims fee paid on or after December 8, 2004, regardless of the filing date of the application and regardless of the date on which the claim necessitating the excess claims fee payment was added to the application. For example, in an application (nonsmall entity) that contains six independent claims and thirty total claims for which the excess claims fee specified in § 1.16 was previously paid: (1) No excess claims fee is due if the applicant cancels ten claims, two of which are independent, and adds ten claims, two of which are independent; (2) the excess claims fee for a seventh independent claim ($200.00) is due if the applicant cancels ten claims, two of which are independent, and adds ten claims, three of which are independent; (3) the excess claims fee for a thirty-first claim ($50.00) is due if the applicant cancels ten claims, two of which are independent, and adds eleven claims, two of which are independent; and (4) the excess claims fees for a seventh independent claim ($200.00) and a thirty-first claim ($50.00) are due if the applicant cancels ten claims, two of which are independent, and adds eleven claims, three of which are independent. The excess claims fees specified in § 1.16(h) and (i) also apply to all reissue applications pending on or after December 8, 2004. Under 35 U.S.C. 41(a)(2) as amended by the Consolidated Appropriations Act, the claims in the original patent are not taken into account in determining the excess claims fee for a reissue application. Under ‘‘former’’ 35 U.S.C. 41, excess claims fees were required in reissue applications for each claim in independent form in excess of the PO 00000 Frm 00028 Fmt 4700 Sfmt 4700 number of independent claims of the original patent, and for each claim (whether independent or dependent) in excess of twenty and also in excess of the number of claims of the original patent. Thus (in addition to excess claims under ‘‘former’’ 35 U.S.C. 41 for which the excess claims fee was not paid before December 8, 2004), the excess claims fees specified in § 1.16(h) and (i) are required for each independent claim in excess of three that is presented in a reissue application on or after December 8, 2004, and for each claim (whether independent or dependent) in excess of twenty that is presented in a reissue application on or after December 8, 2004. Section 1.16(j) sets forth the fee for an application that contains a multiple dependent claim (formerly in § 1.16(d)). See 35 U.S.C. 41(a)(2)(C). Sections 1.16(k), (l), (m), and (n) set forth the search fees as provided for in the Consolidated Appropriations Act (Section 803(c)(1) of Division B) for applications filed under 35 U.S.C. 111(a) on or after December 8, 2004. The Consolidated Appropriations Act provides for the following search fees during fiscal years 2005 and 2006: (1) $500.00 for the search of each application for an original patent, except for design, plant, provisional, or international application; (2) $100.00 for the search of each application for an original design patent; (3) $300.00 for the search of each application for an original plant patent; and (4) $500.00 for the search of each application for the reissue of a patent. These search fee amounts supersede the search fee setting provisions of 35 U.S.C. 41(d)(1)(A) and (B) (which authorize the Office to set a cost-recovery based search fee, with a number of limitations), but do not supersede provisions for the payment of search fees in 35 U.S.C. 41(d)(1)(C), the refund authorization provisions in 35 U.S.C. 41(d)(1)(D), and the small entity reduction provisions in 35 U.S.C. 41(h)(1). Sections 1.16(o), (p), (q), and (r) set forth the examination fees specified in 35 U.S.C. 41(a)(3) for applications filed under 35 U.S.C. 111(a) on or after December 8, 2004: (1) The examination fee for each application for an original patent, except for design, plant, or provisional applications, is $200.00 ($100.00 for a small entity); (2) the examination fee for each application for an original design patent is $130.00 ($65.00 for a small entity); (3) the examination fee for each application for an original plant patent is $160.00 ($80.00 for a small entity); and (4) the examination fee for each application for E:\FR\FM\27JAR1.SGM 27JAR1 Federal Register / Vol. 70, No. 17 / Thursday, January 27, 2005 / Rules and Regulations the reissue of a patent is $600.00 ($300.00 for a small entity). Section 1.16(s) sets forth the fee for any application (including any provisional applications and any reissue application) filed under 35 U.S.C. 111 on or after December 8, 2004, the specification and drawings of which, excluding any sequence listing or computer program listing filed in an electronic medium as prescribed by the Director (see § 1.52(f)), exceed 100 sheets of paper (the ‘‘application size fee’’). The application size fee set forth in § 1.16(s) is $250.00 ($125.00 for a small entity) for each additional 50 sheets or fraction thereof. See 35 U.S.C. 41(a)(1)(G). The provision in 35 U.S.C. 41(a)(1)(G) for the Office to prescribe the paper size equivalent of an application filed in whole or in part in an electronic medium for purposes of the fee specified in 35 U.S.C. 41(a)(1)(G) (§ 1.16(s)) will be implemented in a separate rule making. In situations in which a payment submitted for the fees due on filing in a nonprovisional application filed under 35 U.S.C. 111(a) is insufficient and the applicant has not specified the fees to which the payment is to be applied, the Office will apply the payment in the following order until the payment is expended: (1st) the basic filing fee (§ 1.16(a), (b), (c), or (e)); (2nd) the application size fee (§ 1.16(s)); (3rd) the late filing surcharge (§ 1.16(f)); (4th) the processing fee for an application filed in a language other than English (§ 1.17(i)); (5th) the search fee (§ 1.16(k), (l), (m), or (n)); (6th) the examination fee (§ 1.16(o), (p), (q), or (r); and (7th) the excess claims fee (§§ 1.16(h), (i), and (j)). In situations in which a payment submitted for the fees due on filing in a provisional application filed under 35 U.S.C. 111(b) is insufficient and the applicant has not specified the fees to which the payment is to be applied, the Office will apply the payment in the following order until the payment is expended: (1st) the basic filing fee (§ 1.16(d)); (2nd) the application size fee (§ 1.16(s)); and (3rd) the late filing surcharge (§ 1.16(g)). Since the basic filing fee, search fee, and examination fee under the new patent fee structure are often referred to as the ‘‘filing fee,’’ the Office will treat a deposit account authorization to charge ‘‘the filing fee’’ as an authorization to charge the applicable fees under 1.16 (the basic filing fee, search fee, examination fee, any excess claims fee, and any application size fee) to the deposit account, and will treat a deposit account authorization to charge ‘‘the basic filing fee’’ as an authorization VerDate jul<14>2003 19:04 Jan 26, 2005 Jkt 205001 to charge the applicable basic filing fee, search fee, and examination fee to the deposit account. Any deposit account authorization to charge the filing fee but not the search fee or examination fee must specifically limit the authorization by reference to one or more of paragraphs (a) through (e) of § 1.16. The filing and processing fees for international applications filed under 35 U.S.C. 363 are covered in §§ 1.445 and 1.482, and the national fees (including search and examination fees) for applications entering the national stage under 35 U.S.C. 371 from international applications are covered in § 1.492. Section 1.17: Section 1.17 is amended to set forth the application processing fees as specified in 35 U.S.C. 41(a) as amended by the Consolidated Appropriations Act. Section 1.17(a) sets forth the extension fees for a petition for an extension of time under 35 U.S.C. 41(a)(8) and § 1.136(a): (1) the petition fee for reply within the first month is $120.00 ($60.00 for a small entity); (2) the petition fee for reply within the second month is $450.00 ($225.00 for a small entity); (3) the petition fee for reply within the third month is $1,020.00 ($510.00 for a small entity); (4) the petition fee for reply within the fourth month is $1,590.00 ($795.00 for a small entity); and (5) the petition fee for reply within the fifth month is $2,160.00 ($1,080.00 for a small entity). See 35 U.S.C. 41(a)(8). Sections 1.17(l) and (m) set forth petition fees for the revival of abandoned applications, the delayed payment of issue fees, or the delayed response by the patent owner in reexamination proceedings: (1) the fee under the unavoidable standard provided for in § 1.137(a) is $500.00 ($250.00 for a small entity) (§ 1.17(l)); and (2) the fee under the unintentional standard provided for in § 1.137(b) is $1,500.00 ($750 for a small entity) (§ 1.17(m)). See 35 U.S.C. 41(a)(7). The Consolidated Appropriations Act does not revise the fees for: (1) A request for continued examination under 35 U.S.C. 132(b) and § 1.114; (2) a submission after final rejection under § 1.129(a); or (3) each additional invention to be examined under § 1.129(b). Therefore: (1) the fee for a request for continued examination under 35 U.S.C. 132(b) and § 1.114 remains at $790.00 ($395.00 for a small entity); (2) the fee for a submission after final rejection under § 1.129(a) remains at $790.00 ($395.00 for a small entity); and (3) the fee for each additional invention to be examined under § 1.129(b) remains at $790.00 ($395.00 for a small entity). See Revision of PO 00000 Frm 00029 Fmt 4700 Sfmt 4700 3883 Patent Fees for Fiscal Year 2004, 69 FR at 52604, and Certain Fees to be Adjusted, 1285 Off. Gaz. Pat. Office at 186. Section 1.18: Section 1.18 is amended to set forth the patent issue fees as specified in 35 U.S.C. 41(a)(4) as amended by the Consolidated Appropriations Act: (1) The fee for issuing an original utility patent or for issuing a reissue patent is $1,400.00 ($700.00 for a small entity); (2) the fee for issuing an original design patent is $800.00 ($400.00 for a small entity); and (3) the fee for issuing an original plant patent is $1,100.00 ($550.00). See 35 U.S.C. 41(a)(4). Section 1.20: Section 1.20 is amended to provide that excess claims fees as specified in 35 U.S.C. 41(a)(2) as amended by the Consolidated Appropriations Act are applicable to excess claims proposed to be added to a patent by their presentation during a reexamination proceeding. Under ‘‘former’’ 35 U.S.C. 41, excess claims fees were included as part of the ‘‘application’’ filing fee under 35 U.S.C. 41(a)(1), and thus did not apply during reexamination proceedings. The Consolidated Appropriations Act does not include the excess claims as part of the ‘‘application’’ filing fee under 35 U.S.C. 41(a)(1), but separately provides for excess claims fees in 35 U.S.C. 41(a)(2) (as being in addition to the filing fee in 35 U.S.C. 41(a)(1)). 35 U.S.C. 41(a)(2) provides that an excess claims fee is due ‘‘on filing or on presentation at any other time’’ (e.g., during a reexamination proceeding) of an independent claim in excess of three or of a claim (whether independent or dependent) in excess of twenty. See H. R. Rep. 108–241, at 15 (‘‘[t]he excess claims fees required by [35 U.S.C.] 41(a)(2) are due at the time of presentation of the claim for which payment is required (whether on filing or at a later time) in the application or reexamination proceeding’’). Section 1.20(c)(3) specifically requires $200 ($100 for a small entity) for each claim in independent form in excess of three that is also in excess of the number of claims in independent form in the patent under reexamination. Section 1.20(c)(4) specifically requires $50 ($25 for a small entity) for each claim (whether dependent or independent) in excess of twenty that is also in excess of the number of claims in the patent under reexamination. A claim that has been disclaimed under 35 U.S.C. 253 and § 1.321(a) as of the date of filing of the request for reexamination is not considered to be a claim in the patent under reexamination for purposes of excess claims fee E:\FR\FM\27JAR1.SGM 27JAR1 3884 Federal Register / Vol. 70, No. 17 / Thursday, January 27, 2005 / Rules and Regulations calculations. Section 1.20(c)(5) provides that if the excess claims fees required by § 1.20(c)(3) and (c)(4) are not paid with the request for reexamination or on later presentation of the claims for which the excess claims fees are due, the fees required by § 1.20(c)(3) and (c)(4) must be paid or the claims canceled by amendment prior to the expiration of the time period set for reply by the Office in any notice of fee deficiency. The excess claims fees specified in § 1.20(c) apply to all patents, whenever granted, for each independent claim in excess of three and also in excess of the number of independent claims in the patent or for each claim (whether independent or dependent) in excess of twenty and also in excess of the number of claims in the patent that is presented in a reexamination proceeding on or after December 8, 2004 (since no excess claims fee was due under 35 U.S.C. 41 for any claim presented during a reexamination proceeding before December 8, 2004). For example, in a patent (non-small entity) that contains (including as a result of a previous reexamination proceeding) six independent claims and thirty total claims: (1) No excess claims fee is due if the patent owner cancels ten claims, two of which are independent, and adds ten claims, two of which are independent; (2) the excess claims fee for a seventh independent claim ($200.00) is due if the patent owner cancels ten claims, two of which are independent, and adds ten claims, three of which are independent; (3) the excess claims fee for a thirty-first claim ($50.00) is due if the patent owner cancels ten claims, two of which are independent, and adds eleven claims, two of which are independent; and (4) the excess claims fees for a seventh independent claim ($200.00) and a thirty-first claim ($50.00) are due if the patent owner cancels ten claims, two of which are independent, and adds eleven claims, three of which are independent. Section 1.20(d) sets forth the fee for filing a disclaimer under 35 U.S.C. 253 and § 1.321 in a patent application or patent: $130.00 ($65 for a small entity). See 35 U.S.C. 41(a)(5). Sections 1.20(e), (f), and (g) are amended to set forth the patent maintenance fees as specified in 35 U.S.C. 41(b) as amended by the Consolidated Appropriations Act: (1) the first maintenance fee due at three years and six months after grant is $900.00 ($450.00 for a small entity); (2) the second maintenance fee due at seven years and six months after grant is $2,300.00 ($1,150.00 for a small entity); and (3) the third maintenance fee due at eleven years and six months VerDate jul<14>2003 19:04 Jan 26, 2005 Jkt 205001 after grant is $3,800.00 ($1,900.00 for a small entity). See 35 U.S.C. 41(b). Section 1.27: Section 1.27(b) is amended to implement the provision of 35 U.S.C. 41(h)(3), which provides that the fee charged under 35 U.S.C. 41(a)(1)(A) shall be reduced by 75 percent with respect to its application to any small entity ‘‘if the application is filed by electronic means as prescribed by the Director.’’ See 35 U.S.C. 41(h)(3). Since 35 U.S.C. 41(h)(3) applies only to the filing fee charged under 35 U.S.C. 41(a)(1)(A) (the filing fee for a nonprovisional original utility application under 35 U.S.C. 111(a)), its 75 percent fee reduction does not apply to design or plant applications, reissue applications, or provisional applications. In any event, the Office electronic filing system does not currently provide for design or plant applications, or for international applications filed under the PCT which are entering the national stage under 35 U.S.C. 371. Section 1.27(b)(1) contains the preexisting provisions of § 1.27(b). Section 1.27(b)(2) provides that submission of an original utility application in compliance with the Office electronic filing system by an applicant who has properly asserted entitlement to small entity status pursuant to § 1.27(c) in the particular original utility application allows the payment of a reduced filing fee pursuant to 35 U.S.C. 41(h)(3) (currently $75.00). Section 1.27(c) is amended to revise its reference to §§ 1.16 and 1.492 to reflect the corresponding changes to §§ 1.16 and 1.492. Section 1.33: Section 1.33(c) is amended to re-insert text that was inadvertently deleted in the final rule Changes to Representation of Others Before the United States Patent and Trademark Office, 69 FR 35427 (June 24, 2004). Section 1.51: Section 1.51(b)(4) is amended to indicate that a complete application under §§ 1.53(b) or 1.53(d) (nonprovisional applications filed under 35 U.S.C. 111(a)) includes the prescribed filing fee, search fee, examination fee, and application size fee. Section 1.51(c)(4) is amended to indicate that a complete application under § 1.53(c) (provisional applications filed under 35 U.S.C. 111(b)) includes the prescribed filing fee and application size fee. Section 1.52: Section 1.52(f)(1) is added to provide that any sequence listing in an electronic medium in compliance with §§ 1.52(e) and 1.821(c) or (e), and any computer program listing filed in an electronic medium in compliance with §§ 1.52(e) and 1.96, PO 00000 Frm 00030 Fmt 4700 Sfmt 4700 will be excluded when determining the application size fee required by § 1.16(s) or § 1.492(j). See 35 U.S.C. 41(a)(1)(G) (which provides that a sequence listing or a computer program listing is excluded if filed in an electronic medium as prescribed by the Director). Section 1.52(f)(2) is added to provide that the paper size equivalent of the specification and drawings of an application submitted via the Office electronic filing system will be considered to be the number of sheets of paper present in the specification and drawings of the application when entered into the Office file wrapper (currently in the Office image file wrapper system) after being rendered by the Office electronic filing system for purposes of computing the application size fee required by § 1.16(s). See 35 U.S.C. 41(a)(1)(G) (which provides that the Director shall prescribe the paper size equivalent of an application filed in an electronic medium). Section 1.52(f)(2) further provides that any sequence listing in compliance with § 1.821(c) or (e), and any computer program listing in compliance with § 1.96, submitted via the Office electronic filing system will be excluded when determining the application size fee required by § 1.16(s) if the listing is submitted in American Standard Code for Information Interchange (ASCII) text as part of an associated file of the application. That is, for applications filed via the Office electronic filing system, a sequence listing or a computer program listing is ‘‘filed in an electronic medium as prescribed by the Director’’ for purposes of 35 U.S.C. 41(a)(1)(G) only if the listing is submitted in ASCII text as part of an associated file of the application. Thus, for example, sequence listings or computer program listings submitted via the Office electronic filing system in Portable Document Format (PDF) as part of the specification or as Tagg(ed) Image File Format (TIFF) drawing files would not be excluded when determining the application size fee required by § 1.16(s) or § 1.492(j). Section 1.53: Sections 1.53(c), (f) and (g) are amended to revise their references to § 1.16 to reflect the corresponding changes to § 1.16. Section 1.53(f) is further amended to provide for any application under § 1.53(b), or any continued prosecution application (CPA) under § 1.53(d) (for design applications), that does not also include the search fee and the examination fee. Section 1.53(f) specifically provides that if an application under § 1.53(b) or a CPA under § 1.53(d) does not include the search fee and the examination fee: (1) E:\FR\FM\27JAR1.SGM 27JAR1 Federal Register / Vol. 70, No. 17 / Thursday, January 27, 2005 / Rules and Regulations Applicant will be notified and given a period of time within which to pay the search fee and examination fee to avoid abandonment if applicant has provided a correspondence address (§ 1.33(a)); and (2) applicant has two months from the filing date of the application within which to pay the search fee and examination fee to avoid abandonment if applicant has not provided a correspondence address. Section 1.53(f) is also amended to include the provisions formerly in § 1.16(m) that if the excess claims fees required by §§ 1.16(h) and (i) and multiple dependent claim fee required by § 1.16(j) are not paid on filing or on later presentation of the claims for which the excess claims or multiple dependent claim fees are due, the fees required by §§ 1.16(h), (i), and (j) must be paid or the claims canceled by amendment prior to the expiration of the time period set for reply by the Office in any notice of fee deficiency in order to avoid abandonment. Section 1.53(f) is also amended to provide that if the application size fee required by § 1.16(s) (if any) is not paid on filing or on later presentation of the amendment necessitating a fee or additional fee under § 1.16(s), the fee required by § 1.16(s) must be paid prior to the expiration of the time period set for reply by the Office in any notice of fee deficiency in order to avoid abandonment. The submission of an amendment in reply to any Office action or notice which necessitates an application size fee or additional application size fee under § 1.16(s) and which does not also include the requisite application size fee under § 1.16(s) is a reply having an omission under § 1.703(c)(7), which will result in a reduction of any patent term adjustment by the number of days (if any) beginning on the day after the date the reply lacking the requisite application size under § 1.16(s) was filed and ending no earlier than the date that the requisite application size fee under § 1.16(s) was filed. See § 1.703(c)(7). Section 1.53(g) is also amended to provide that if the application size fee required by § 1.16(s) (if any) is not paid on filing, the fee required by § 1.16(s) must be paid prior to the expiration of the time period set for reply by the Office in any notice of fee deficiency in order to avoid abandonment. Section 1.69: Section 1.69 is amended to correct typographical errors. Section 1.75: Section 1.75(c) is amended to revise its reference to § 1.16 to reflect the corresponding changes to § 1.16. VerDate jul<14>2003 19:04 Jan 26, 2005 Jkt 205001 Section 1.78: Section 1.78(a) is amended to revise its reference to § 1.16 to reflect the corresponding changes to § 1.16. Section 1.84: Section 1.84(y) is amended to correct an errant crossreference to former § 1.174. Section 1.111: Section 1.111(a)(2)(i) is amended to correct a typographical error. Section 1.136: Section 1.136(b) is amended to correct an errant crossreference to former § 1.645. Section 1.211: Section 1.211 is amended to revise its reference to § 1.16 to reflect the corresponding changes to § 1.16. Section 1.211 is also amended to provide that the Office may delay publishing any application until it includes any application size fee required by the Office under § 1.16(s) or § 1.492(j). Section 1.324: Section 1.324(a) is amended to correct an errant crossreference to former § 1.634. Section 1.445: Section 1.445(a) is amended to provide that the search fee set forth in § 1.445(a)(2)(i) is applicable only if a corresponding prior United States national application has been filed under 35 U.S.C. 111(a) and the basic filing fee, search fee, and the examination fee have been paid therein. Section 1.492: Section 1.492 is amended to set forth the basic national, search, and examination fees for an international application entering the national stage under 35 U.S.C. 371. Section 1.492(a) sets forth the basic national fee for an international application entering the national stage under 35 U.S.C. 371: $300.00 ($150.00 for a small entity). See 35 U.S.C. 41(a)(1)(F). Section 1.492(b) sets forth the search fees for an international application entering the national stage under 35 U.S.C. 371. The Consolidated Appropriations Act (Section 803(c)(1) of Division B) provides a search fee of $500.00 ($250 for a small entity) for the search of the national stage of each international application during fiscal years 2005 and 2006. Section 1.492(c) sets forth the examination fee for an international application entering the national stage under 35 U.S.C. 371: $200.00 ($100.00 for a small entity). See 35 U.S.C. 41(a)(3). The basic national fee, search fee, and examination fee specified in § 1.492(a), (b), and (c) apply only to international applications entering the national stage under 35 U.S.C. 371 for which the basic national fee specified in 35 U.S.C. 41 was not paid before December 8, 2004. Section 1.492 does not also specify the basic national fee for an international PO 00000 Frm 00031 Fmt 4700 Sfmt 4700 3885 application entering the national stage under 35 U.S.C. 371 for which the basic national fee specified in 35 U.S.C. 41 was paid before December 8, 2004, because (by definition) the basic national fee for such an application was paid before the effective date of the Consolidated Appropriations Act and this final rule. Section 1.492(d) sets forth the excess claims fee for each independent claim in excess of three; namely, $200 ($100 for a small entity) for each claim in independent form in excess of three. See 35 U.S.C. 41(a)(2)(A). Section 1.492(e) sets forth the excess claims fee for each claim (whether dependent or independent) in excess of twenty; namely, $50 ($25 for a small entity) for each claim (whether dependent or independent) in excess of twenty. See 35 U.S.C. 41(a)(2)(B). Section 1.492(f) sets forth the fee for an application that contains a multiple dependent claim (formerly in § 1.492(d)). See 35 U.S.C. 41(a)(2)(C). Section 1.492(g) provides that if the excess claims fees required by § 1.492(d) and (e) and multiple dependent claim fee required by § 1.492(f) are not paid with the basic national fee or on later presentation of the claims for which the excess claims or multiple dependent claim fees are due, the fees required by § 1.492(d), (e), and (f) must be paid or the claims canceled by amendment prior to the expiration of the time period set for reply by the Office in any notice of fee deficiency in order to avoid abandonment. Section 1.492(h) sets forth the surcharge for filing the oath or declaration later than thirty months from the priority date pursuant to § 1.495(c) (formerly in § 1.492(e)). Section 1.492(i) sets forth the processing fee for filing an English translation of an international application or of any annexes to an international preliminary examination report later than thirty months after the priority date (§§ 1.495(c) and (e)) (formerly in § 1.492(f)). Section 1.492(j) sets forth the fee for any international application for which the basic national fee was not paid before December 8, 2004, the specification and drawings of which, excluding any sequence listing or computer program listing filed in an electronic medium as prescribed by the Director (see § 1.52(f)), exceed 100 sheets of paper (the ‘‘application size fee’’). The application size fee set forth in § 1.492(j) is $250.00 ($125.00 for a small entity) for each additional 50 sheets or fraction thereof. See 35 U.S.C. 41(a)(1)(G). E:\FR\FM\27JAR1.SGM 27JAR1 3886 Federal Register / Vol. 70, No. 17 / Thursday, January 27, 2005 / Rules and Regulations In situations in which a payment submitted for the fees due in an international application entering the national stage under 35 U.S.C. 371 and § 1.495 is insufficient and the applicant has not specified the fees to which the payment is to be applied, the Office will apply the payment in the following order until the payment is expended: (1st) the basic national fee (§ 1.492(a)); (2nd) the application size fee (§ 1.492(j)); (3rd) the surcharge for filing the oath or declaration later than thirty months from the priority date (§ 1.492(h)); (4th) the processing fee for filing an English translation later than thirty months after the priority date (§ 1.492(i)); (5th) the search fee (§ 1.492(b)); (6th) the examination fee (§ 1.492(c)); and (7th) the excess claims fee (§§ 1.492(d), (e), and (f)). Section 1.495: Section 1.495(c) is subdivided into § 1.495(c)(1) through (c)(4). Section 1.495(c)(1) provides that if applicant complies with § 1.495(b) before expiration of thirty months from the priority date, the Office will notify the applicant if he or she has omitted any of: (1) A translation of the international application, as filed, into the English language, if it was originally filed in another language (35 U.S.C. 371(c)(2)); (2) the oath or declaration of the inventor (35 U.S.C. 371(c)(4) and § 1.497), if a declaration of inventorship in compliance with § 1.497 has not been previously submitted in the international application under PCT Rule 4.17(iv) within the time limits provided for in PCT Rule 26ter.1; (3) the search fee set forth in § 1.492(b); (4) the examination fee set forth in § 1.492(c); and (5) any application size fee set forth in § 1.492(j). Section 1.495(c)(2) provides that a notice under § 1.495(c)(1) will set a period of time within which applicant must provide any omitted translation, oath or declaration of the inventor, search fee set forth in § 1.492(b), examination fee set forth in § 1.492(c), and any application size fee set forth in § 1.492(j) in order to prevent abandonment of the application. Section 1.495(c)(3) and (c)(4) contain existing provisions of § 1.495(c). Section 41.20: Section 41.20(b) sets forth appeal fees: (1) The fee for filing a notice of appeal from the examiner to the Board of Patent Appeals and Interferences is $500.00 ($250.00 for a small entity); (2) the additional fee for filing a brief in support of an appeal is $500.00 ($250.00 for a small entity); and (3) the additional fee 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 is $1,000.00 VerDate jul<14>2003 19:04 Jan 26, 2005 Jkt 205001 ($500.00 for a small entity). See 35 U.S.C. 41(a)(6). Rule Making Considerations Administrative Procedure Act: The changes in this final rule merely revise the rules of practice to conform to the patent fees specified in 35 U.S.C. 41 as amended by the Consolidated Appropriations Act (Pub. L. 108–447). Therefore, these rule changes involve interpretive rules or rules of agency practice and procedure under 5 U.S.C. 553(b)(A). See Bachow Communications Inc. v. FCC, 237 F.3d 683, 690 (D.C. Cir. 2001); Paralyzed Veterans of America v. West, 138 F.3d 1434, 1436 (Fed. Cir. 1998); Komjathy v. National Transportation Safety Board, 832 F.2d 1294, 1296–97 (D.C. Cir. 1987). Accordingly, the changes in this final rule may be adopted without prior notice and opportunity for public comment under 5 U.S.C. 553(b) and (c), or thirty-day advance publication under 5 U.S.C. 553(d) or 35 U.S.C. 41(g). Regulatory Flexibility Act: As prior notice and an opportunity for public comment are not required pursuant to 5 U.S.C. 553 (or any other law), neither a regulatory flexibility analysis nor a certification under the Regulatory Flexibility Act (5 U.S.C. 601 et seq.) are required. See 5 U.S.C. 603. Executive Order 13132: This rule making does not contain policies with federalism implications sufficient to warrant preparation of a Federalism Assessment under Executive Order 13132 (Aug. 4, 1999). Executive Order 12866: This rule making has been determined to be not significant for purposes of Executive Order 12866 (Sept. 30, 1993). Paperwork Reduction Act: This final rule involves information collection requirements that are subject to review by the Office of Management and Budget (OMB) under the Paperwork Reduction Act of 1995 (44 U.S.C. 3501 et seq.). The collections of information involved in this final rule have been reviewed and previously approved by OMB under the following control numbers: 0651–0016, 0651–0021, 0651– 0031, 0651–0032, and 0651–0033. The Office is not resubmitting information collection packages to OMB for its review and approval because the changes in this final rule do not affect the information collection requirements associated with the information collections under these OMB control numbers. The title, description and respondent description of each of the information collections are shown below with an estimate of each of the annual reporting burdens. Included in each estimate is PO 00000 Frm 00032 Fmt 4700 Sfmt 4700 the time for reviewing instructions, gathering and maintaining the data needed, and completing and reviewing the collection of information. OMB Number: 0651–0016. Title: Rules for Patent Maintenance Fees. Form Numbers: PTO/SB/45/47/65/66. Type of Review: Approved through May of 2006. Affected Public: Individuals or Households, Business or Other ForProfit Institutions, Not-For-Profit Institutions and Federal Government. Estimated Number of Respondents: 348,140. Estimated Time Per Response: Between 20 seconds and 8 hours. Estimated Total Annual Burden Hours: 30,735 hours. Needs and Uses: Maintenance fees are required to maintain a patent, except for design or plant patents, in force under 35 U.S.C. 41(b). Payment of maintenance fees are required at 31⁄2, 71⁄2 and 111⁄2 years after the grant of the patent. A patent number and application number of the patent on which maintenance fees are paid are required in order to ensure proper crediting of such payments. OMB Number: 0651–0021. Title: Patent Cooperation Treaty. Form Numbers: PCT/RO/101, PCT/ RO/134, PCT/IPEA/401, PTO–1382, PTO–1390, PTO/SB/61/PCT, PTO/SB/ 64/PCT, PCT/Model of power of attorney, PCT/Model of general power of attorney. Type of Review: Approved through March of 2007. Affected Public: Individuals or Households, Business or Other ForProfit Institutions, Not-for-Profit Institutions, Farms, Federal Government, and State, Local or Tribal Government. Estimated Number of Respondents: 355,655. Estimated Time Per Response: Between 15 minutes and 8 hours. Estimated Total Annual Burden Hours: 347,889. Needs and Uses: The information collected is required by the Patent Cooperation Treaty (PCT). The general purpose of the PCT is to simplify the filing of patent applications on the same invention in different countries. It provides for a centralized filing procedure and a standardized application format. OMB Number: 0651–0031. Title: Patent Processing (Updating). Form Numbers: PTO/SB/08A, PTO/ SB/08B, PTO/SB/17i, PTO/SB/17p, PTO/SB/21–27, PTO/SB/30–37, PTO/ SB/42–43, PTO/SB/61–64, PTO/SB/64a, E:\FR\FM\27JAR1.SGM 27JAR1 Federal Register / Vol. 70, No. 17 / Thursday, January 27, 2005 / Rules and Regulations PTO/SB/67–68, PTO/SB/91–92, PTO/ SB/96–97, PTO–2053–A/B, PTO–2054– A/B, PTO–2055–A/B, PTOL–413A. Type of Review: Approved through July of 2006. Affected Public: Individuals or Households, Business or Other ForProfit Institutions, Not-for-Profit Institutions, Farms, Federal Government and State, Local and Tribal Governments. Estimated Number of Respondents: 2,281,439. Estimated Time Per Response: 1 minute and 48 seconds to 8 hours. Estimated Total Annual Burden Hours: 2,731,841 hours. Needs and Uses: During the processing for an application for a patent, the applicant/agent may be required or desire to submit additional information to the United States Patent and Trademark Office concerning the examination of a specific application. The specific information required or which may be submitted includes: Information disclosure statements and citations, requests for extensions of time, the establishment of small entity status; abandonment and revival of abandoned applications, disclaimers, requests for expedited examination of design applications, transmittal forms, requests to inspect, copy and access patent applications, nonpublication requests, certificates of mailing or transmission, submission of priority documents and amendments. OMB Number: 0651–0032. Title: Initial Patent Application. Form Number: PTO/SB/01–07, PTO/ SB/13PCT, PTO/SB/16–19, PTO/SB/29 and 29A, PTO/SB/101–110, Electronic New Utility and Provisional Application Forms. Type of Review: Approved through July of 2006. Affected Public: Individuals or Households, Business or Other ForProfit Institutions, Not-For-Profit Institutions, Farms, Federal Government, and State, Local, or Tribal Governments. Estimated Number of Respondents: 454,287. Estimated Time Per Response: 22 minutes to 10 hours and 45 minutes. Estimated Total Annual Burden Hours: 4,171,568 hours. Needs and Uses: The purpose of this information collection is to permit the Office to determine whether an application meets the criteria set forth in the patent statute and regulations. The standard Fee Transmittal form, New Utility Patent Application Transmittal form, New Design Patent Application Transmittal form, New Plant Patent VerDate jul<14>2003 19:04 Jan 26, 2005 Jkt 205001 Application Transmittal form, Declaration, Provisional Application Cover Sheet, and Plant Patent Application Declaration will assist applicants in complying with the requirements of the patent statute and regulations, and will further assist the Office in processing and examination of the application. OMB Number: 0651–0033. Title: Post Allowance and Refiling. Form Numbers: PTO/SB/44, PTO/SB/ 50–51, PTO/SB/51S, PTO/SB/52–53, PTO/SB/56–58, PTOL–85B. Type of Review: Approved through April of 2007. Affected Public: Individuals or Households, Business or Other ForProfit Institutions, Not-For-Profit Institutions, Farms, State, Local and Tribal Governments, and Federal Government. Estimated Number of Respondents: 223,411. Estimated Time Per Response: 1.8 minutes to 2 hours. Estimated Total Annual Burden Hours: 67,261 hours. Needs and Uses: This collection of information is required to administer the patent laws pursuant to Title 35, U.S.C., concerning the issuance of patents and related actions including correcting errors in printed patents, refiling of patent applications, requesting reexamination of a patent, and requesting a reissue patent to correct an error in a patent. The affected public includes any individual or institution whose application for a patent has been allowed or who takes action as covered by the applicable rules. Comments are invited on: (1) Whether the collection of information is necessary for proper performance of the functions of the agency; (2) the accuracy of the agency’s estimate of the burden; (3) ways to enhance the quality, utility, and clarity of the information to be collected; and (4) ways to minimize the burden of the collection of information to respondents. Interested persons are requested to send comments regarding these information collections, including suggestions for reducing this burden, to Robert J. Spar, Director, Office of Patent Legal Administration, United States Patent and Trademark Office, P.O. Box 1450, Alexandria, VA 22313–1450, or to the Office of Information and Regulatory Affairs of OMB, New Executive Office Building, 725 17th Street, NW., Room 10235, Washington, DC 20503, Attention: Desk Officer for the United States Patent and Trademark Office. Notwithstanding any other provision of law, no person is required to respond PO 00000 Frm 00033 Fmt 4700 Sfmt 4700 3887 to nor shall a person be subject to a penalty for failure to comply with a collection of information subject to the requirements of the Paperwork Reduction Act unless that collection of information displays a currently valid OMB control number. List of Subjects 37 CFR Part 1 Administrative practice and procedure, Courts, Freedom of information, Inventions and patents, Reporting and recordkeeping requirements, Small businesses. 37 CFR Part 41 Administrative practice and procedure, Inventions and patents, Lawyers. For the reasons set forth in the preamble, 37 CFR Parts 1 and 41 are amended as follows: I PART 1—RULES OF PRACTICE IN PATENT CASES 1. The authority citation for 37 CFR Part 1 continues to read as follows: I Authority: 35 U.S.C. 2(b)(2). 2. Section 1.16 is revised to read as follows: I § 1.16 National application filing, search, and examination fees. (a) Basic fee for filing each application under 35 U.S.C. 111 for an original patent, except design, plant, or provisional applications: (1) For an application filed on or after December 8, 2004: By a small entity (§ 1.27(a)) if the application is submitted in compliance with the Office electronic filing system (§ 1.27(b)(2))—$75.00. By a small entity (§ 1.27(a))—$150.00. By other than a small entity—$300.00. (2) For an application filed before December 8, 2004: By a small entity (§ 1.27(a))—$395.00. By other than a small entity—$790.00. (b) Basic fee for filing each application for an original design patent: (1) For an application filed on or after December 8, 2004: By a small entity (§ 1.27(a))—$100.00. By other than a small entity—$200.00. (2) For an application filed before December 8, 2004: By a small entity (§ 1.27(a))—$175.00. By other than a small entity—$350.00. (c) Basic fee for filing each application for an original plant patent: (1) For an application filed on or after December 8, 2004: By a small entity (§ 1.27(a))—$100.00. By other than a small entity—$200.00. E:\FR\FM\27JAR1.SGM 27JAR1 3888 Federal Register / Vol. 70, No. 17 / Thursday, January 27, 2005 / Rules and Regulations (2) For an application filed before December 8, 2004: By a small entity (§ 1.27(a))—$275.00. By other than a small entity—$550.00. (d) Basic fee for filing each provisional application: By a small entity (§ 1.27(a))—$100.00. By other than a small entity—$200.00. (e) Basic fee for filing each application for the reissue of a patent: (1) For an application filed on or after December 8, 2004: By a small entity (§ 1.27(a))—$150.00. By other than a small entity—$300.00. (2) For an application filed before December 8, 2004: By a small entity (§ 1.27(a))—$395.00. By other than a small entity—$790.00. (f) Surcharge for filing the basic filing fee or oath or declaration on a date later than the filing date of the application, except provisional applications: By a small entity (§ 1.27(a))—$65.00. By other than a small entity—$130.00. (g) Surcharge for filing the basic filing fee or cover sheet (§ 1.51(c)(1)) on a date later than the filing date of the provisional application: By a small entity (§ 1.27(a))—$25.00. By other than a small entity—$50.00. (h) In addition to the basic filing fee in an application, other than a provisional application, for filing or later presentation at any other time of each claim in independent form in excess of 3: By a small entity (§ 1.27(a))—$100.00. By other than a small entity—$200.00. (i) In addition to the basic filing fee in an application, other than a provisional application, for filing or later presentation at any other time of each claim (whether dependent or independent) in excess of 20 (note that § 1.75(c) indicates how multiple dependent claims are considered for fee calculation purposes): By a small entity (§ 1.27(a))—$25.00. By other than a small entity—$50.00. (j) In addition to the basic filing fee in an application, other than a provisional application, that contains, or is amended to contain, a multiple dependent claim, per application: By a small entity (§ 1.27(a))—$180.00. By other than a small entity—$360.00. (k) Search fee for each application filed under 35 U.S.C. 111 on or after December 8, 2004, for an original patent, except design, plant, or provisional applications: By a small entity (§ 1.27(a))—$250.00. By other than a small entity—$500.00. (l) Search fee for each application filed on or after December 8, 2004, for an original design patent: By a small entity (§ 1.27(a))—$50.00. By other than a small entity—$100.00. (m) Search fee for each application filed on or after December 8, 2004, for an original plant patent: VerDate jul<14>2003 19:04 Jan 26, 2005 Jkt 205001 By a small entity (§ 1.27(a))—$150.00. By other than a small entity—$300.00. (n) Search fee for each application filed on or after December 8, 2004, for the reissue of a patent: By a small entity (§ 1.27(a))—$250.00. By other than a small entity—$500.00. (o) Examination fee for each application filed under 35 U.S.C. 111 on or after December 8, 2004, for an original patent, except design, plant, or provisional applications: By a small entity (§ 1.27(a))—$100.00. By other than a small entity—$200.00. (p) Examination fee for each application filed on or after December 8, 2004, for an original design patent: By a small entity (§ 1.27(a))—$65.00. By other than a small entity—$130.00. (q) Examination fee for each application filed on or after December 8, 2004, for an original plant patent: By a small entity (§ 1.27(a))—$80.00. By other than a small entity—$160.00. (r) Examination fee for each application filed on or after December 8, 2004, for the reissue of a patent: By a small entity (§ 1.27(a))—$300.00. By other than a small entity—$600.00. (s) Application size fee for any application under 35 U.S.C. 111 filed on or after December 8, 2004, the specification and drawings of which exceed 100 sheets of paper, for each additional 50 sheets or fraction thereof: By a small entity (§ 1.27(a))—$125.00. By other than a small entity—$250.00. Note to § 1.16: See §§ 1.445, 1.482 and 1.492 for international application filing and processing fees. 3. Section 1.17 is amended by revising paragraphs (a), (l) and (m) to read as follows: I § 1.17 Patent application and reexamination processing fees. (a) Extension fees pursuant to § 1.136(a): (1) For reply within first month: By a small entity (§ 1.27(a))—$60.00. By other than a small entity—$120.00. (2) For reply within second month: By a small entity (§ 1.27(a))—$225.00. By other than a small entity—$450.00. (3) For reply within third month: By a small entity (§ 1.27(a))—$510.00. By other than a small entity— $1,020.00. (4) For reply within fourth month: By a small entity (§ 1.27(a))—$795.00. By other than a small entity— $1,590.00. (5) For reply within fifth month: By a small entity (§ 1.27(a))— $1,080.00. By other than a small entity— $2,160.00. * * * * * PO 00000 Frm 00034 Fmt 4700 Sfmt 4700 (l) For filing a petition for the revival of an unavoidably abandoned application under 35 U.S.C. 111, 133, 364, or 371, for the unavoidably delayed payment of the issue fee under 35 U.S.C. 151, or for the revival of an unavoidably terminated reexamination proceeding under 35 U.S.C. 133 (§ 1.137(a)): By a small entity (§ 1.27(a))—$250.00. By other than a small entity—$500.00. (m) For filing a petition for the revival of an unintentionally abandoned application, for the unintentionally delayed payment of the fee for issuing a patent, or for the revival of an unintentionally terminated reexamination proceeding under 35 U.S.C. 41(a)(7) (§ 1.137(b)): By a small entity (§ 1.27(a))—$750.00. By other than a small entity— $1,500.00. * * * * * I 4. Section 1.18 is amended by revising paragraphs (a) through (c) to read as follows: § 1.18 Patent post allowance (including issue) fees. (a) Issue fee for issuing each original patent, except a design or plant patent, or for issuing each reissue patent: By a small entity (§ 1.27(a))—$700.00. By other than a small entity— $1,400.00. (b) Issue fee for issuing an original design patent: By a small entity (§ 1.27(a))—$400.00. By other than a small entity—$800.00. (c) Issue fee for issuing an original plant patent: By a small entity (§ 1.27(a))—$550.00. By other than a small entity— $1,100.00. * * * * * I 5. Section 1.20 is amended by revising paragraphs (c) through (g) to read as follows: § 1.20 Post issuance fees. * * * * * (c) In reexamination proceedings (1) For filing a request for ex parte reexamination (§ 1.510(a))—$2,520.00. (2) For filing a request for inter partes reexamination (§ 1.915(a))—$8,800.00. (3) For filing with a request for reexamination or later presentation at any other time of each claim in independent form in excess of 3 and also in excess of the number of claims in independent form in the patent under reexamination: By a small entity (§ 1.27(a))—$100.00. By other than a small entity—$200.00. (4) For filing with a request for reexamination or later presentation at any other time of each claim (whether dependent or independent) in excess of E:\FR\FM\27JAR1.SGM 27JAR1 Federal Register / Vol. 70, No. 17 / Thursday, January 27, 2005 / Rules and Regulations 20 and also in excess of the number of claims in the patent under reexamination (note that § 1.75(c) indicates how multiple dependent claims are considered for fee calculation purposes): By a small entity (§ 1.27(a))—$25.00. By other than a small entity—$50.00. (5) If the excess claims fees required by paragraphs (c)(3) and (c)(4) are not paid with the request for reexamination or on later presentation of the claims for which the excess claims fees are due, the fees required by paragraphs (c)(3) and (c)(4) must be paid or the claims canceled by amendment prior to the expiration of the time period set for reply by the Office in any notice of fee deficiency in order to avoid abandonment. (d) For filing each statutory disclaimer (§ 1.321): By a small entity (§ 1.27(a))—$65.00. By other than a small entity—$130.00. (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 being due by three years and six months after the original grant: By a small entity (§ 1.27(a))—$450.00. By other than a small entity—$900.00. (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 being due by seven years and six months after the original grant: By a small entity (§ 1.27(a))— $1,150.00. By other than a small entity— $2,300.00. (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 being due by eleven years and six months after the original grant: By a small entity (§ 1.27(a))— $1,900.00. By other than a small entity— $3,800.00. * * * * * I 6. Section 1.27 is amended by revising paragraphs (b) and (c)(3) to read as follows: (1) A small entity, as defined in paragraph (a) of this section, who has properly asserted entitlement to small entity status pursuant to paragraph (c) of this section will be accorded small entity status by the Office in the particular application or patent in which entitlement to small entity status was asserted. Establishment of small entity status allows the payment of certain reduced patent fees pursuant to 35 U.S.C. 41(h)(1). (2) Submission of an original utility application in compliance with the Office electronic filing system by an applicant who has properly asserted entitlement to small entity status pursuant to paragraph (c) of this section in that application allows the payment of a reduced filing fee pursuant to 35 U.S.C. 41(h)(3). (c) * * * (3) Assertion by payment of the small entity basic filing or basic national fee. The payment, by any party, of the exact amount of one of the small entity basic filing fees set forth in §§ 1.16(a), 1.16(b), 1.16(c), 1.16(d), 1.16(e), or the small entity basic national fee set forth in § 1.492(a), will be treated as a written assertion of entitlement to small entity status even if the type of basic filing or basic national fee is inadvertently selected in error. (i) If the Office accords small entity status based on payment of a small entity basic filing or basic national fee under paragraph (c)(3) of this section that is not applicable to that application, any balance of the small entity fee that is applicable to that application will be due along with the appropriate surcharge set forth in § 1.16(f), or § 1.16(g). (ii) The payment of any small entity fee other than those set forth in paragraph (c)(3) of this section (whether in the exact fee amount or not) will not be treated as a written assertion of entitlement to small entity status and will not be sufficient to establish small entity status in an application or a patent. * * * * * I 7. Section 1.33 is amended by revising paragraph (c) to read as follows: § 1.27 Definition of small entities and establishing status as a small entity to permit payment of small entity fees; when a determination of entitlement to small entity status and notification of loss of entitlement to small entity status are required; fraud on the Office. * * * * * * (b) Establishment of small entity status permits payment of reduced fees. VerDate jul<14>2003 19:04 Jan 26, 2005 Jkt 205001 § 1.33 Correspondence respecting patent applications, reexamination proceedings, and other proceedings. * * * * (c) All notices, official letters, and other communications for the patent owner or owners in a reexamination proceeding will be directed to the attorney or agent of record (see § 1.32(b)) in the patent file at the address listed on the register of patent attorneys and agents maintained pursuant to §§ 11.5 PO 00000 Frm 00035 Fmt 4700 Sfmt 4700 3889 and 11.11 of this subchapter, or, if no attorney or agent is of record, to the patent owner or owners at the address or addresses of record. Amendments and other papers filed in a reexamination proceeding on behalf of the patent owner must be signed by the patent owner, or if there is more than one owner by all the owners, or by an attorney or agent of record in the patent file, or by a registered attorney or agent not of record who acts in a representative capacity under the provisions of § 1.34. Double correspondence with the patent owner or owners and the patent owner’s attorney or agent, or with more than one attorney or agent, will not be undertaken. If more than one attorney or agent is of record and a correspondence address has not been specified, correspondence will be held with the last attorney or agent made of record. * * * * * I 8. Section 1.51 is amended by revising paragraphs (b)(4) and (c)(4) to read as follows: § 1.51 General requisites of an application. * * * * * (b) * * * (4) The prescribed filing fee, search fee, examination fee, and application size fee, see § 1.16. (c) * * * (4) The prescribed filing fee and application size fee, see § 1.16. * * * * * I 9. Section 1.52 is amended by revising the heading and adding paragraph (f) to read as follows: § 1.52 Language, paper, writing, margins, compact disc specifications. * * * * * (f)(1) Any sequence listing in an electronic medium in compliance with §§ 1.52(e) and 1.821(c) or (e), and any computer program listing filed in an electronic medium in compliance with §§ 1.52(e) and 1.96, will be excluded when determining the application size fee required by § 1.16(s) or § 1.492(j). (2) Except as otherwise provided in this paragraph, the paper size equivalent of the specification and drawings of an application submitted via the Office electronic filing system will be considered to be the number of sheets of paper present in the specification and drawings of the application when entered into the Office file wrapper after being rendered by the Office electronic filing system for purposes of computing the application size fee required by § 1.16(s). Any sequence listing in compliance with § 1.821(c) or (e), and any computer program listing in E:\FR\FM\27JAR1.SGM 27JAR1 3890 Federal Register / Vol. 70, No. 17 / Thursday, January 27, 2005 / Rules and Regulations compliance with § 1.96, submitted via the Office electronic filing system will be excluded when determining the application size fee required by § 1.16(s) if the listing is submitted in ACSII text as part of an associated file. I 10. Section 1.53 is amended by revising paragraphs (c)(3), (f) and (g) to read as follows: § 1.53 Application number, filing date, and completion of application. * * * * * (c) * * * (3) A provisional application filed under paragraph (c) of this section may be converted to a nonprovisional application filed under paragraph (b) of this section and accorded the original filing date of the provisional application. The conversion of a provisional application to a nonprovisional application will not result in either the refund of any fee properly paid in the provisional application or the application of any such fee to the filing fee, or any other fee, for the nonprovisional application. Conversion of a provisional application to a nonprovisional application under this paragraph will result in the term of any patent to issue from the application being measured from at least the filing date of the provisional application for which conversion is requested. Thus, applicants should consider avoiding this adverse patent term impact by filing a nonprovisional application claiming the benefit of the provisional application under 35 U.S.C. 119(e) (rather than converting the provisional application into a nonprovisional application pursuant to this paragraph). A request to convert a provisional application to a nonprovisional application must be accompanied by the fee set forth in § 1.17(i) and an amendment including at least one claim as prescribed by the second paragraph of 35 U.S.C. 112, unless the provisional application under paragraph (c) of this section otherwise contains at least one claim as prescribed by the second paragraph of 35 U.S.C. 112. The nonprovisional application resulting from conversion of a provisional application must also include the filing fee, search fee, and examination fee for a nonprovisional application, an oath or declaration by the applicant pursuant to §§ 1.63, 1.162, or 1.175, and the surcharge required by § 1.16(f) if either the basic filing fee for a nonprovisional application or the oath or declaration was not present on the filing date accorded the resulting nonprovisional application (i.e., the filing date of the original provisional application). A request to convert a provisional VerDate jul<14>2003 19:04 Jan 26, 2005 Jkt 205001 application to a nonprovisional application must also be filed prior to the earliest of: (i) Abandonment of the provisional application filed under paragraph (c) of this section; or (ii) Expiration of twelve months after the filing date of the provisional application filed under paragraph (c) of this section. * * * * * (f) Completion of application subsequent to filing—Nonprovisional (including continued prosecution or reissue) application. (1) If an application which has been accorded a filing date pursuant to paragraph (b) or (d) of this section does not include the basic filing fee, the search fee, or the examination fee, or if an application which has been accorded a filing date pursuant to paragraph (b) of this section does not include an oath or declaration by the applicant pursuant to §§ 1.63, 1.162 or § 1.175, and applicant has provided a correspondence address (§ 1.33(a)), applicant will be notified and given a period of time within which to pay the basic filing fee, search fee, and examination fee, file an oath or declaration in an application under paragraph (b) of this section, and pay the surcharge if required by § 1.16(f) to avoid abandonment. (2) If an application which has been accorded a filing date pursuant to paragraph (b) of this section does not include the basic filing fee, the search fee, the examination fee, or an oath or declaration by the applicant pursuant to §§ 1.63, 1.162 or § 1.175, and applicant has not provided a correspondence address (§ 1.33(a)), applicant has two months from the filing date of the application within which to pay the basic filing fee, search fee, and examination fee, file an oath or declaration, and pay the surcharge if required by § 1.16(f) to avoid abandonment. (3) If the excess claims fees required by §§ 1.16(h) and (i) and multiple dependent claim fee required by § 1.16(j) are not paid on filing or on later presentation of the claims for which the excess claims or multiple dependent claim fees are due, the fees required by §§ 1.16(h), (i), and (j) must be paid or the claims canceled by amendment prior to the expiration of the time period set for reply by the Office in any notice of fee deficiency. If the application size fee required by § 1.16(s) (if any) is not paid on filing or on later presentation of the amendment necessitating a fee or additional fee under § 1.16(s), the fee required by § 1.16(s) must be paid prior PO 00000 Frm 00036 Fmt 4700 Sfmt 4700 to the expiration of the time period set for reply by the Office in any notice of fee deficiency in order to avoid abandonment. (4) This paragraph applies to continuation or divisional applications under paragraphs (b) or (d) of this section and to continuation-in-part applications under paragraph (b) of this section. See § 1.63(d) concerning the submission of a copy of the oath or declaration from the prior application for a continuation or divisional application under paragraph (b) of this section. (5) If applicant does not pay one of the basic filing or the processing and retention fees (§ 1.21(l)) during the pendency of the application, the Office may dispose of the application. (g) Completion of application subsequent to filing—Provisional application. (1) If a provisional application which has been accorded a filing date pursuant to paragraph (c) of this section does not include the cover sheet required by § 1.51(c)(1) or the basic filing fee (§ 1.16(d)), and applicant has provided a correspondence address (§ 1.33(a)), applicant will be notified and given a period of time within which to pay the basic filing fee, file a cover sheet (§ 1.51(c)(1)), and pay the surcharge required by § 1.16(g) to avoid abandonment. (2) If a provisional application which has been accorded a filing date pursuant to paragraph (c) of this section does not include the cover sheet required by § 1.51(c)(1) or the basic filing fee (§ 1.16(d)), and applicant has not provided a correspondence address (§ 1.33(a)), applicant has two months from the filing date of the application within which to pay the basic filing fee, file a cover sheet (§ 1.51(c)(1)), and pay the surcharge required by § 1.16(g) to avoid abandonment. (3) If the application size fee required by § 1.16(s) (if any) is not paid on filing, the fee required by § 1.16(s) must be paid prior to the expiration of the time period set for reply by the Office in any notice of fee deficiency in order to avoid abandonment. (4) If applicant does not pay the basic filing fee during the pendency of the application, the Office may dispose of the application. * * * * * I 11. Section 1.69 is amended by revising paragraph (b) to read as follows: § 1.69 Foreign language oaths and declarations. * * * * * (b) Unless the text of any oath or declaration in a language other than E:\FR\FM\27JAR1.SGM 27JAR1 Federal Register / Vol. 70, No. 17 / Thursday, January 27, 2005 / Rules and Regulations English is in a form provided by the Patent and Trademark Office or in accordance with PCT Rule 4.17(iv), it must be accompanied by an English translation together with a statement that the translation is accurate, except that in the case of an oath or declaration filed under § 1.63, the translation may be filed in the Office no later than two months from the date applicant is notified to file the translation. I 12. Section 1.75 is amended by revising paragraph (c) to read as follows: § 1.75 Claim(s). * * * * * (c) One or more claims may be presented in dependent form, referring back to and further limiting another claim or claims in the same application. Any dependent claim which refers to more than one other claim (‘‘multiple dependent claim’’) shall refer to such other claims in the alternative only. A multiple dependent claim shall not serve as a basis for any other multiple dependent claim. For fee calculation purposes under § 1.16, a multiple dependent claim will be considered to be that number of claims to which direct reference is made therein. For fee calculation purposes also, any claim depending from a multiple dependent claim will be considered to be that number of claims to which direct reference is made in that multiple dependent claim. In addition to the other filing fees, any original application which is filed with, or is amended to include, multiple dependent claims must have paid therein the fee set forth in § 1.16(j). Claims in dependent form shall be construed to include all the limitations of the claim incorporated by reference into the dependent claim. A multiple dependent claim shall be construed to incorporate by reference all the limitations of each of the particular claims in relation to which it is being considered. * * * * * I 13. Section 1.78 is amended by revising paragraph (a)(4) to read as follows: § 1.78 Claiming benefit of earlier filing date and cross-references to other applications. (a) * * * (4) A nonprovisional application, other than for a design patent, or an international application designating the United States of America may claim an invention disclosed in one or more prior-filed provisional applications. In order for an application to claim the benefit of one or more prior-filed provisional applications, each priorfiled provisional application must name VerDate jul<14>2003 19:04 Jan 26, 2005 Jkt 205001 3891 as an inventor at least one inventor named in the later-filed application and disclose the named inventor’s invention claimed in at least one claim of the later-filed application in the manner provided by the first paragraph of 35 U.S.C. 112. In addition, each prior-filed provisional application must be entitled to a filing date as set forth in § 1.53(c), and the basic filing fee set forth in § 1.16(d) must be paid within the time period set forth in § 1.53(g). * * * * * I 14. Section 1.84 is amended by revising paragraph (y) to read as follows: application size fee required by the Office under § 1.16(s) or § 1.492(j), a specification having papers in compliance with § 1.52 and an abstract (§ 1.72(b)), drawings in compliance with § 1.84, and a sequence listing in compliance with §§ 1.821 through 1.825 (if applicable), and until any petition under § 1.47 is granted. * * * * * I 18. Section 1.324 is amended by revising the second sentence of paragraph (a) to read as follows: § 1.84 (a) * * * A petition to correct inventorship of a patent involved in an interference must comply with the requirements of this section and must be accompanied by a motion under § 41.121(a)(2) or § 41.121(a)(3) of this title. * * * * * I 19. Section 1.445 is amended by revising paragraph (a)(2) to read as follows: Standards for drawings. * * * * * (y) Types of drawings. See § 1.152 for design drawings, § 1.165 for plant drawings, and § 1.173(a)(2) for reissue drawings. I 15. Section 1.111 is amended by revising the first sentence of paragraph (a)(2)(i) to read as follows: § 1.111 Reply by applicant or patent owner to a non-final Office action. (a) * * * (2) * * * (i) A reply that is supplemental to a reply that is in compliance with § 1.111(b) will not be entered as a matter of right except as provided in paragraph (a)(2)(ii) of this section. * * * * * * * * I 16. Section 1.136 is amended by revising the fourth sentence of paragraph (b) to read as follows: § 1.136 Extensions of time. * * * * * (b) * * * See § 1.304 for extensions of time to appeal to the U.S. Court of Appeals for the Federal Circuit or to commence a civil action; § 1.550(c) for extensions of time in ex parte reexamination proceedings; § 1.956 for extensions of time in inter partes reexamination proceedings; and §§ 41.4(a) and 41.121(a)(3) of this title for extensions of time in contested cases before the Board of Patent Appeals and Interferences. * * * * * * * * I 17. Section 1.211 is amended by revising paragraph (c) to read as follows: § 1.211 Publication of applications. * * * * * (c) An application filed under 35 U.S.C. 111(a) will not be published until it includes the basic filing fee (§ 1.16(a) or 1.16(c)), any English translation required by § 1.52(d), and an executed oath or declaration under § 1.63. The Office may delay publishing any application until it includes any PO 00000 Frm 00037 Fmt 4700 Sfmt 4700 § 1.324 Correction of inventorship in patent, pursuant to 35 U.S.C. 256. § 1.445 International application filing, processing and search fees. (a) * * * (2) A search fee (see 35 U.S.C. 361(d) and PCT Rule 16): (i) If a corresponding prior United States national application under 35 U.S.C. 111(a) has been filed on or after December 8, 2004, the basic filing fee under § 1.16(a), search fee under § 1.16(k), and examination fee under § 1.16(o) have been paid therein, and the corresponding prior United States national application is identified by application number, if known, or if the application number is not known by the filing date, title, and name of applicant (and preferably the application docket number), in the international application or accompanying papers at the time of filing the international application—$300.00. (ii) If a corresponding prior United States national application under 35 U.S.C. 111(a) has been filed before December 8, 2004, the basic filing fee under § 1.16 has been paid therein, and the corresponding prior United States national application is identified by application number, if known, or if the application number is not known by the filing date, title, and name of applicant (and preferably the application docket number), in the international application or accompanying papers at the time of filing the international application—$300.00. (iii) For all situations not provided for in paragraphs (a)(2)(i) or (a)(2)(ii) of this section—$1000.00. * * * * * E:\FR\FM\27JAR1.SGM 27JAR1 3892 Federal Register / Vol. 70, No. 17 / Thursday, January 27, 2005 / Rules and Regulations 20. Section 1.492 is revised to read as follows: I § 1.492 National stage fees. The following fees and charges are established for international applications entering the national stage under 35 U.S.C. 371: (a) The basic national fee for an international application entering the national stage under 35 U.S.C. 371 if the basic national fee was not paid before December 8, 2004: By a small entity (§ 1.27(a))—$150.00. By other than a small entity—$300.00. (b) Search fee for an international application entering the national stage under 35 U.S.C. 371 if the basic national fee was not paid before December 8, 2004: By a small entity (§ 1.27(a))—$250.00. By other than a small entity—$500.00. (c) The examination fee for an international application entering the national stage under 35 U.S.C. 371 if the basic national fee was not paid before December 8, 2004: By a small entity (§ 1.27(a))—$100.00. By other than a small entity—$200.00. (d) In addition to the basic national fee, for filing or on later presentation at any other time of each claim in independent form in excess of 3: By a small entity (§ 1.27(a))—$100.00. By other than a small entity—$200.00. (e) In addition to the basic national fee, for filing or on later presentation at any other time of each claim (whether dependent or independent) in excess of 20 (note that § 1.75(c) indicates how multiple dependent claims are considered for fee calculation purposes): By a small entity (§ 1.27(a))—$25.00. By other than a small entity—$50.00. (f) In addition to the basic national fee, if the application contains, or is amended to contain, a multiple dependent claim, per application: By a small entity (§ 1.27(a))—$180.00. By other than a small entity—$360.00. (g) If the excess claims fees required by paragraphs (d) and (e) of this section and multiple dependent claim fee required by paragraph (f) of this section are not paid with the basic national fee or on later presentation of the claims for which the excess claims or multiple dependent claim fees are due, the fees required by paragraphs (d), (e), and (f) of this section must be paid or the claims canceled by amendment prior to the expiration of the time period set for reply by the Office in any notice of fee deficiency in order to avoid abandonment. (h) Surcharge for filing the oath or declaration later than thirty months from the priority date pursuant to § 1.495(c): VerDate jul<14>2003 19:04 Jan 26, 2005 Jkt 205001 By a small entity (§ 1.27(a))—$65.00. By other than a small entity—$130.00. (i) For filing an English translation of an international application or of any annexes to an international preliminary examination report later than thirty months after the priority date (§§ 1.495(c) and (e))—$130.00. (j) Application size fee for any international application for which the basic national fee was not paid before December 8, 2004, the specification and drawings of which exceed 100 sheets of paper, for each additional 50 sheets or fraction thereof: By a small entity (§ 1.27(a))—$125.00. By other than a small entity—$250.00. I 21. Section 1.495 is amended by revising paragraph (c) to read as follows: § 1.495 Entering the national stage in the United States of America. * * * * * (c)(1) If applicant complies with paragraph (b) of this section before expiration of thirty months from the priority date, the Office will notify the applicant if he or she has omitted any of: (i) A translation of the international application, as filed, into the English language, if it was originally filed in another language (35 U.S.C. 371(c)(2)); (ii) The oath or declaration of the inventor (35 U.S.C. 371(c)(4) and § 1.497), if a declaration of inventorship in compliance with § 1.497 has not been previously submitted in the international application under PCT Rule 4.17(iv) within the time limits provided for in PCT Rule 26ter.1; (iii) The search fee set forth in § 1.492(b); (iv) The examination fee set forth in § 1.492(c); and (v) Any application size fee required by § 1.492(j). (2) A notice under paragraph (c)(1) of this section will set a period of time within which applicant must provide any omitted translation, oath or declaration of the inventor, search fee set forth in § 1.492(b), examination fee set forth in § 1.492(c), and any application size fee required by § 1.492(j) in order to avoid abandonment of the application. (3) The payment of the processing fee set forth in § 1.492(i) is required for acceptance of an English translation later than the expiration of thirty months after the priority date. The payment of the surcharge set forth in § 1.492(h) is required for acceptance of the oath or declaration of the inventor later than the expiration of thirty months after the priority date. (4) A ‘‘Sequence Listing’’ need not be translated if the ‘‘Sequence Listing’’ PO 00000 Frm 00038 Fmt 4700 Sfmt 4700 complies with PCT Rule 12.1(d) and the description complies with PCT Rule 5.2(b). * * * * * PART 41—PRACTICE BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES 22. The authority citation for 37 CFR Part 41 continues to read as follows: I Authority: 35 U.S.C. 2(b)(2), 3(a)(2)(A), 21, 23, 32, 41, 134, 135. 23. Section 41.20 is amended by revising paragraph (b) to read as follows: I § 41.20 Fees. * * * * * (b) Appeal fees. (1) For filing a notice of appeal from the examiner to the Board: By a small entity (§ 1.27(a) of this title)—$250.00. By other than a small entity—$500.00. (2) In addition to the fee for filing a notice of appeal, for filing a brief in support of an appeal: By a small entity (§ 1.27(a) of this title)—$250.00. By other than a small entity—$500.00. (3) For filing a request for an oral hearing before the Board in an appeal under 35 U.S.C. 134: By a small entity (§ 1.27(a) of this title)—$500.00. By other than a small entity— $1,000.00. Dated: January 18, 2005. Jon W. Dudas, Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office. [FR Doc. 05–1377 Filed 1–26–05; 8:45 am] BILLING CODE 3510–16–P DEPARTMENT OF VETERANS AFFAIRS 38 CFR Part 36 RIN 2900–AL23 Loan Guaranty: Implementation of Public Law 107–103 Department of Veterans Affairs. Final rule. AGENCY: ACTION: SUMMARY: This document affirms, with one modification, an amendment to the Department of Veterans Affairs (VA) loan guaranty regulations implementing sections 401 through 404 of the Veterans Education and Benefits Expansion Act of 2001. The amendment incorporates into the regulations the following statutory changes: an increase in the maximum amount of loan guaranty E:\FR\FM\27JAR1.SGM 27JAR1

Agencies

[Federal Register Volume 70, Number 17 (Thursday, January 27, 2005)]
[Rules and Regulations]
[Pages 3880-3892]
From the Federal Register Online via the Government Printing Office [www.gpo.gov]
[FR Doc No: 05-1377]


=======================================================================
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DEPARTMENT OF COMMERCE

Patent and Trademark Office

37 CFR Parts 1 and 41

[Docket No. 2003-P-026]
RIN 0651-AB54


Changes To Implement the Patent Fee Related Provisions of the 
Consolidated Appropriations Act, 2005

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Final rule.

-----------------------------------------------------------------------

SUMMARY: The Consolidated Appropriations Act, 2005 (Consolidated 
Appropriations Act), revises patent fees in general, and provides for a 
search fee and examination fee that are separate

[[Page 3881]]

from the filing fee, during fiscal years 2005 and 2006. This final rule 
revises the patent fees set forth in the rules of practice to conform 
them to the patent fees set forth in the Consolidated Appropriations 
Act.

DATES: Effective Date: December 8, 2004.
    Applicability Date: The changes in this final rule apply to all 
patents (including patents in reexamination proceedings), whenever 
granted, and to all patent applications pending on or after December 8, 
2004.

FOR FURTHER INFORMATION CONTACT: Robert W. Bahr, Senior Patent 
Attorney, Office of the Deputy Commissioner for Patent Examination 
Policy, by telephone at (571) 272-8800, by mail addressed to: Box 
Comments--Patents, Commissioner for Patents, P.O. Box 1450, Alexandria, 
VA, 22313-1450, or by facsimile to (571) 273-7735, marked to the 
attention of Robert W. Bahr.

SUPPLEMENTARY INFORMATION: The Consolidated Appropriations Act (section 
801 of Division B) provides that 35 U.S.C. 41(a), (b), and (d) shall be 
administered in a manner that revises patent application fees (35 
U.S.C. 41(a)) and patent maintenance fees (35 U.S.C. 41(b)), and 
provides for a separate filing fee (35 U.S.C. 41(a)), search fee (35 
U.S.C. 41(d)(1)), and examination fee (35 U.S.C. 41(a)(3)) during 
fiscal years 2005 and 2006. See Pub. L. 108-447, 118 Stat. 2809 (2004). 
This final rule revises the patent fees set forth in the rules of 
practice in title 37 of the Code of Federal Regulations (CFR) to 
conform them to the patent fees set forth in the Consolidated 
Appropriations Act. The citations to 35 U.S.C. 41 in this final rule 
are citations to 35 U.S.C. 41 as it is being administered during fiscal 
years 2005 and 2006 pursuant to the Consolidated Appropriations Act.
    The Consolidated Appropriations Act also provides that the 
provisions of 35 U.S.C. 111(a) for payment of the fee for filing the 
application apply to the payment of the examination fee (35 U.S.C. 
41(a)(3)) and search fee (35 U.S.C. 41(d)(1)) in an application filed 
under 35 U.S.C. 111(a), and that the provisions of 35 U.S.C. 371(d) for 
the payment of the national fee apply to the payment of the examination 
fee (35 U.S.C. 41(a)(3)) and search fee (35 U.S.C. 41(d)(1)) in an 
international application filed under the Patent Cooperation Treaty 
(PCT) and entering the national stage under 35 U.S.C. 371. See 35 
U.S.C. 41(a)(3) and 41(d)(1)(C). Thus, the examination fee and search 
fee are due on filing in an application filed under 35 U.S.C. 111(a) or 
on commencement of the national stage in a PCT international 
application, but may be paid at a later time if paid within such period 
and under such conditions (including payment of a surcharge) as may be 
prescribed by the Director. See H. R. Rep. 108-241, at 16 (2003) (H. R. 
Rep. 108-241 contains an analysis and discussion of an identical 
provision in H.R. 1561, 108th Cong. (2004)).
    The Consolidated Appropriations Act also provides that the small 
entity reduction set forth in 35 U.S.C. 41(h)(1) also applies to the 
search fee provided for in 35 U.S.C. 41(d)(1) (35 U.S.C. 41(h)(1)), and 
provides that the filing fee charged under 35 U.S.C. 41(a)(1)(A) shall 
be reduced by 75 percent with respect to its application to any small 
entity ``if the application is filed by electronic means as prescribed 
by the Director'' (35 U.S.C. 41(h)(3)). Since 35 U.S.C. 41(h)(3) 
applies only to the filing fee charged under 35 U.S.C. 41(a)(1)(A) (the 
filing fee for a nonprovisional original utility application), the 75 
percent fee reduction set forth in 35 U.S.C. 41(h)(3) does not apply to 
design or plant applications, reissue applications, or provisional 
applications.
    The Consolidated Appropriations Act also provides that the Office 
may, by regulation, provide for a refund of: (1) Any part of the excess 
claims fee specified in 35 U.S.C. 41(a)(2) for any claim that is 
canceled before an examination on the merits has been made of the 
application under 35 U.S.C. 131; (2) any part of the search fee for any 
applicant who files a written declaration of express abandonment as 
prescribed by the Office before an examination has been made of the 
application under 35 U.S.C. 131; and (3) any part of the search fee for 
any applicant who provides a search report that meets the conditions 
prescribed by the Office. This final rule does not contain changes to 
the rules of practice to implement the provisions for a refund of any 
part of the excess claims fee specified in 35 U.S.C. 41(a)(2) for any 
claim that is canceled before an examination on the merits has been 
made of the application under 35 U.S.C. 131, and any part of the search 
fee for any applicant who files a written declaration of express 
abandonment as prescribed by the Office before an examination has been 
made of the application under 35 U.S.C. 131.
    The revised patent fees specified in 35 U.S.C. 41 apply to all 
patents, whenever granted, and to all applications pending on or filed 
after December 8, 2004, except as follows: The provisions of 35 U.S.C. 
41(a)(1) (filing fee and application size fee), 35 U.S.C. 41(a)(3) 
(examination fee), and 35 U.S.C. 41(d)(1) (search fee) apply only to 
applications for patent filed under 35 U.S.C. 111 on or after December 
8, 2004, and to international applications entering the national stage 
under 35 U.S.C. 371 for which the basic national fee specified in 35 
U.S.C. 41 was not paid before December 8, 2004. In addition, the 
provisions of 35 U.S.C. 41(a)(2) (excess claims fee) apply only as to 
those claims in independent form and those claims (whether independent 
or dependent) that, after taking into account the claims that have been 
canceled, are in excess of the number of claims in independent form and 
claims (whether independent or dependent), respectively, for which the 
excess claims fee specified in 35 U.S.C. 41 was paid before December 8, 
2004.
    The applicable fee amount is the fee amount in effect on the day 
the fee is paid (in full). The day a fee is paid is the date of receipt 
of the fee payment in the Office under Sec.  1.6, or the date reflected 
on a proper certificate of mailing or transmission on the fee payment, 
where such a certificate is authorized under Sec.  1.8. Use of a 
certificate of mailing or transmission is not authorized for items that 
are specifically excluded from the provisions of Sec.  1.8: e.g., the 
filing of a national or international application for a patent. See 
Sec.  1.8(a)(2). The date of receipt under 37 CFR 1.6 of patent-related 
correspondence delivered by the ``Express Mail Post Office to 
Addressee'' service of the United States Postal Service (USPS) is the 
date of deposit of the correspondence with the USPS. See Sec. Sec.  
1.6(a)(2) and 1.10(a)(1). The date of deposit with the USPS is shown by 
the ``date-in'' on the ``Express Mail'' mailing label or other official 
USPS notation. See Sec.  1.10(a)(2).

Discussion of Specific Rules

    Title 37 of the Code of Federal Regulations, Parts 1 and 41, are 
amended as follows:
    Section 1.16: Section 1.16 is amended to set forth the application 
filing, excess claims, search, examination, and application size fees 
as specified in 35 U.S.C. 41(a) and (d)(1) as amended by the 
Consolidated Appropriations Act.
    Sections 1.16(a) through (e) set forth the basic filing fees under 
the Consolidated Appropriations Act for applications filed under 35 
U.S.C. 111 on or after December 8, 2004: (1) The basic filing fee for 
an original nonprovisional utility application is $300.00 ($150.00 for 
a small entity, and $75.00 for a small entity if the application is 
submitted in compliance with the Office electronic filing system); (2) 
the basic filing fee for an original

[[Page 3882]]

design application is $200.00 ($100.00 for a small entity); (3) the 
basic filing fee for an original nonprovisional plant application is 
$200.00 ($100.00 for a small entity); (4) the basic filing fee for a 
provisional application is $200.00 ($100.00 for a small entity); and 
(5) the basic filing fee for a reissue application is $300.00 ($150.00 
for a small entity). See 35 U.S.C. 41(a)(1)(A) through (E).
    The Consolidated Appropriations Act (Section 803(b)(1)(B)(i) of 
Division B) provides that the basic filing fees specified in 35 U.S.C. 
41(a)(1) (except for the filing fee specified in 35 U.S.C. 41(a)(1)(D) 
for a provisional application) apply only to applications filed on or 
after December 8, 2004. Therefore, Sec.  1.16 also sets forth the basic 
filing fee for applications filed under 35 U.S.C. 111 before December 
8, 2004: (1) The basic filing fee for an original nonprovisional 
utility application and for a reissue application is $790.00 ($395.00 
for a small entity); (2) the basic filing fee for an original design 
application is $350.00 ($175.00 for a small entity); and (3) the basic 
filing fee for an original nonprovisional plant application is $550.00 
($275.00 for a small entity). See Revision of Patent Fees for Fiscal 
Year 2005, 69 FR 52604 (Aug. 27, 2004) (final rule), and Certain Fees 
to be Adjusted, 1285 Off. Gaz. Pat. Office 185 (Aug. 31, 2004) 
(notice). These basic filing fees apply to applications filed before 
December 8, 2004, even if the basic filing fee is not paid until on or 
after December 8, 2004. The Consolidated Appropriations Act (Section 
803(b)(1)(B)(ii) of Division B) also provides that the basic filing fee 
for a provisional application applies to all provisional applications 
filed before, on, or after December 8, 2004, in which the filing fee 
was not paid before December 8, 2004.
    Section 1.16(f) sets forth the late filing surcharge for a 
nonprovisional application, and Sec.  1.16(g) sets forth the late 
filing surcharge for a provisional application (formerly in Sec. Sec.  
1.16(e) and (l), respectively). See also Sec. Sec.  1.53(f) and (g), 
respectively.
    Section 1.16(h) sets forth the excess claims fee for each 
independent claim in excess of three; namely, $200 ($100 for a small 
entity) for each claim in independent form in excess of three. See 35 
U.S.C. 41(a)(2)(A).
    Section 1.16(i) sets forth the excess claims fee for each claim 
(whether dependent or independent) in excess of twenty; namely, $50 
($25 for a small entity) for each claim (whether dependent or 
independent) in excess of twenty. See 35 U.S.C. 41(a)(2)(B).
    The excess claims fees specified in Sec.  1.16 apply to 
applications filed before December 8, 2004, and to applications pending 
on or after December 8, 2004. The Consolidated Appropriations Act 
(Section 803(b)(1)(C) of Division B) provides that the excess claims 
fees specified in 35 U.S.C. 41(a)(2) shall apply only as to those 
claims (independent or dependent) that, after taking into account any 
claims that have been canceled, are in excess of the number of claims 
for which the excess claims fee specified in 35 U.S.C. 41 was paid 
before December 8, 2004. Thus, the Office will charge the excess claims 
fees specified in Sec.  1.16(h) and (i) if an applicant in an 
application filed before and pending on or after December 8, 2004, adds 
a claim (independent or total) in excess of the number of claims 
(independent or total) for which the excess claims fee was previously 
paid (under the current or a previous fee schedule). Specifically, the 
excess claims fees specified in Sec.  1.16(h) and (i) apply to any 
excess claims fee paid on or after December 8, 2004, regardless of the 
filing date of the application and regardless of the date on which the 
claim necessitating the excess claims fee payment was added to the 
application. For example, in an application (non-small entity) that 
contains six independent claims and thirty total claims for which the 
excess claims fee specified in Sec.  1.16 was previously paid: (1) No 
excess claims fee is due if the applicant cancels ten claims, two of 
which are independent, and adds ten claims, two of which are 
independent; (2) the excess claims fee for a seventh independent claim 
($200.00) is due if the applicant cancels ten claims, two of which are 
independent, and adds ten claims, three of which are independent; (3) 
the excess claims fee for a thirty-first claim ($50.00) is due if the 
applicant cancels ten claims, two of which are independent, and adds 
eleven claims, two of which are independent; and (4) the excess claims 
fees for a seventh independent claim ($200.00) and a thirty-first claim 
($50.00) are due if the applicant cancels ten claims, two of which are 
independent, and adds eleven claims, three of which are independent.
    The excess claims fees specified in Sec.  1.16(h) and (i) also 
apply to all reissue applications pending on or after December 8, 2004. 
Under 35 U.S.C. 41(a)(2) as amended by the Consolidated Appropriations 
Act, the claims in the original patent are not taken into account in 
determining the excess claims fee for a reissue application. Under 
``former'' 35 U.S.C. 41, excess claims fees were required in reissue 
applications for each claim in independent form in excess of the number 
of independent claims of the original patent, and for each claim 
(whether independent or dependent) in excess of twenty and also in 
excess of the number of claims of the original patent. Thus (in 
addition to excess claims under ``former'' 35 U.S.C. 41 for which the 
excess claims fee was not paid before December 8, 2004), the excess 
claims fees specified in Sec.  1.16(h) and (i) are required for each 
independent claim in excess of three that is presented in a reissue 
application on or after December 8, 2004, and for each claim (whether 
independent or dependent) in excess of twenty that is presented in a 
reissue application on or after December 8, 2004.
    Section 1.16(j) sets forth the fee for an application that contains 
a multiple dependent claim (formerly in Sec.  1.16(d)). See 35 U.S.C. 
41(a)(2)(C).
    Sections 1.16(k), (l), (m), and (n) set forth the search fees as 
provided for in the Consolidated Appropriations Act (Section 803(c)(1) 
of Division B) for applications filed under 35 U.S.C. 111(a) on or 
after December 8, 2004. The Consolidated Appropriations Act provides 
for the following search fees during fiscal years 2005 and 2006: (1) 
$500.00 for the search of each application for an original patent, 
except for design, plant, provisional, or international application; 
(2) $100.00 for the search of each application for an original design 
patent; (3) $300.00 for the search of each application for an original 
plant patent; and (4) $500.00 for the search of each application for 
the reissue of a patent. These search fee amounts supersede the search 
fee setting provisions of 35 U.S.C. 41(d)(1)(A) and (B) (which 
authorize the Office to set a cost-recovery based search fee, with a 
number of limitations), but do not supersede provisions for the payment 
of search fees in 35 U.S.C. 41(d)(1)(C), the refund authorization 
provisions in 35 U.S.C. 41(d)(1)(D), and the small entity reduction 
provisions in 35 U.S.C. 41(h)(1).
    Sections 1.16(o), (p), (q), and (r) set forth the examination fees 
specified in 35 U.S.C. 41(a)(3) for applications filed under 35 U.S.C. 
111(a) on or after December 8, 2004: (1) The examination fee for each 
application for an original patent, except for design, plant, or 
provisional applications, is $200.00 ($100.00 for a small entity); (2) 
the examination fee for each application for an original design patent 
is $130.00 ($65.00 for a small entity); (3) the examination fee for 
each application for an original plant patent is $160.00 ($80.00 for a 
small entity); and (4) the examination fee for each application for

[[Page 3883]]

the reissue of a patent is $600.00 ($300.00 for a small entity).
    Section 1.16(s) sets forth the fee for any application (including 
any provisional applications and any reissue application) filed under 
35 U.S.C. 111 on or after December 8, 2004, the specification and 
drawings of which, excluding any sequence listing or computer program 
listing filed in an electronic medium as prescribed by the Director 
(see Sec.  1.52(f)), exceed 100 sheets of paper (the ``application size 
fee''). The application size fee set forth in Sec.  1.16(s) is $250.00 
($125.00 for a small entity) for each additional 50 sheets or fraction 
thereof. See 35 U.S.C. 41(a)(1)(G).
    The provision in 35 U.S.C. 41(a)(1)(G) for the Office to prescribe 
the paper size equivalent of an application filed in whole or in part 
in an electronic medium for purposes of the fee specified in 35 U.S.C. 
41(a)(1)(G) (Sec.  1.16(s)) will be implemented in a separate rule 
making.
    In situations in which a payment submitted for the fees due on 
filing in a nonprovisional application filed under 35 U.S.C. 111(a) is 
insufficient and the applicant has not specified the fees to which the 
payment is to be applied, the Office will apply the payment in the 
following order until the payment is expended: (1st) the basic filing 
fee (Sec.  1.16(a), (b), (c), or (e)); (2nd) the application size fee 
(Sec.  1.16(s)); (3rd) the late filing surcharge (Sec.  1.16(f)); (4th) 
the processing fee for an application filed in a language other than 
English (Sec.  1.17(i)); (5th) the search fee (Sec.  1.16(k), (l), (m), 
or (n)); (6th) the examination fee (Sec.  1.16(o), (p), (q), or (r); 
and (7th) the excess claims fee (Sec. Sec.  1.16(h), (i), and (j)). In 
situations in which a payment submitted for the fees due on filing in a 
provisional application filed under 35 U.S.C. 111(b) is insufficient 
and the applicant has not specified the fees to which the payment is to 
be applied, the Office will apply the payment in the following order 
until the payment is expended: (1st) the basic filing fee (Sec.  
1.16(d)); (2nd) the application size fee (Sec.  1.16(s)); and (3rd) the 
late filing surcharge (Sec.  1.16(g)).
    Since the basic filing fee, search fee, and examination fee under 
the new patent fee structure are often referred to as the ``filing 
fee,'' the Office will treat a deposit account authorization to charge 
``the filing fee'' as an authorization to charge the applicable fees 
under 1.16 (the basic filing fee, search fee, examination fee, any 
excess claims fee, and any application size fee) to the deposit 
account, and will treat a deposit account authorization to charge ``the 
basic filing fee'' as an authorization to charge the applicable basic 
filing fee, search fee, and examination fee to the deposit account. Any 
deposit account authorization to charge the filing fee but not the 
search fee or examination fee must specifically limit the authorization 
by reference to one or more of paragraphs (a) through (e) of Sec.  
1.16.
    The filing and processing fees for international applications filed 
under 35 U.S.C. 363 are covered in Sec. Sec.  1.445 and 1.482, and the 
national fees (including search and examination fees) for applications 
entering the national stage under 35 U.S.C. 371 from international 
applications are covered in Sec.  1.492.
    Section 1.17: Section 1.17 is amended to set forth the application 
processing fees as specified in 35 U.S.C. 41(a) as amended by the 
Consolidated Appropriations Act.
    Section 1.17(a) sets forth the extension fees for a petition for an 
extension of time under 35 U.S.C. 41(a)(8) and Sec.  1.136(a): (1) the 
petition fee for reply within the first month is $120.00 ($60.00 for a 
small entity); (2) the petition fee for reply within the second month 
is $450.00 ($225.00 for a small entity); (3) the petition fee for reply 
within the third month is $1,020.00 ($510.00 for a small entity); (4) 
the petition fee for reply within the fourth month is $1,590.00 
($795.00 for a small entity); and (5) the petition fee for reply within 
the fifth month is $2,160.00 ($1,080.00 for a small entity). See 35 
U.S.C. 41(a)(8).
    Sections 1.17(l) and (m) set forth petition fees for the revival of 
abandoned applications, the delayed payment of issue fees, or the 
delayed response by the patent owner in reexamination proceedings: (1) 
the fee under the unavoidable standard provided for in Sec.  1.137(a) 
is $500.00 ($250.00 for a small entity) (Sec.  1.17(l)); and (2) the 
fee under the unintentional standard provided for in Sec.  1.137(b) is 
$1,500.00 ($750 for a small entity) (Sec.  1.17(m)). See 35 U.S.C. 
41(a)(7).
    The Consolidated Appropriations Act does not revise the fees for: 
(1) A request for continued examination under 35 U.S.C. 132(b) and 
Sec.  1.114; (2) a submission after final rejection under Sec.  
1.129(a); or (3) each additional invention to be examined under Sec.  
1.129(b). Therefore: (1) the fee for a request for continued 
examination under 35 U.S.C. 132(b) and Sec.  1.114 remains at $790.00 
($395.00 for a small entity); (2) the fee for a submission after final 
rejection under Sec.  1.129(a) remains at $790.00 ($395.00 for a small 
entity); and (3) the fee for each additional invention to be examined 
under Sec.  1.129(b) remains at $790.00 ($395.00 for a small entity). 
See Revision of Patent Fees for Fiscal Year 2004, 69 FR at 52604, and 
Certain Fees to be Adjusted, 1285 Off. Gaz. Pat. Office at 186.
    Section 1.18: Section 1.18 is amended to set forth the patent issue 
fees as specified in 35 U.S.C. 41(a)(4) as amended by the Consolidated 
Appropriations Act: (1) The fee for issuing an original utility patent 
or for issuing a reissue patent is $1,400.00 ($700.00 for a small 
entity); (2) the fee for issuing an original design patent is $800.00 
($400.00 for a small entity); and (3) the fee for issuing an original 
plant patent is $1,100.00 ($550.00). See 35 U.S.C. 41(a)(4).
    Section 1.20: Section 1.20 is amended to provide that excess claims 
fees as specified in 35 U.S.C. 41(a)(2) as amended by the Consolidated 
Appropriations Act are applicable to excess claims proposed to be added 
to a patent by their presentation during a reexamination proceeding. 
Under ``former'' 35 U.S.C. 41, excess claims fees were included as part 
of the ``application'' filing fee under 35 U.S.C. 41(a)(1), and thus 
did not apply during reexamination proceedings. The Consolidated 
Appropriations Act does not include the excess claims as part of the 
``application'' filing fee under 35 U.S.C. 41(a)(1), but separately 
provides for excess claims fees in 35 U.S.C. 41(a)(2) (as being in 
addition to the filing fee in 35 U.S.C. 41(a)(1)). 35 U.S.C. 41(a)(2) 
provides that an excess claims fee is due ``on filing or on 
presentation at any other time'' (e.g., during a reexamination 
proceeding) of an independent claim in excess of three or of a claim 
(whether independent or dependent) in excess of twenty. See H. R. Rep. 
108-241, at 15 (``[t]he excess claims fees required by [35 U.S.C.] 
41(a)(2) are due at the time of presentation of the claim for which 
payment is required (whether on filing or at a later time) in the 
application or reexamination proceeding'').
    Section 1.20(c)(3) specifically requires $200 ($100 for a small 
entity) for each claim in independent form in excess of three that is 
also in excess of the number of claims in independent form in the 
patent under reexamination. Section 1.20(c)(4) specifically requires 
$50 ($25 for a small entity) for each claim (whether dependent or 
independent) in excess of twenty that is also in excess of the number 
of claims in the patent under reexamination. A claim that has been 
disclaimed under 35 U.S.C. 253 and Sec.  1.321(a) as of the date of 
filing of the request for reexamination is not considered to be a claim 
in the patent under reexamination for purposes of excess claims fee

[[Page 3884]]

calculations. Section 1.20(c)(5) provides that if the excess claims 
fees required by Sec.  1.20(c)(3) and (c)(4) are not paid with the 
request for reexamination or on later presentation of the claims for 
which the excess claims fees are due, the fees required by Sec.  
1.20(c)(3) and (c)(4) must be paid or the claims canceled by amendment 
prior to the expiration of the time period set for reply by the Office 
in any notice of fee deficiency.
    The excess claims fees specified in Sec.  1.20(c) apply to all 
patents, whenever granted, for each independent claim in excess of 
three and also in excess of the number of independent claims in the 
patent or for each claim (whether independent or dependent) in excess 
of twenty and also in excess of the number of claims in the patent that 
is presented in a reexamination proceeding on or after December 8, 2004 
(since no excess claims fee was due under 35 U.S.C. 41 for any claim 
presented during a reexamination proceeding before December 8, 2004). 
For example, in a patent (non-small entity) that contains (including as 
a result of a previous reexamination proceeding) six independent claims 
and thirty total claims: (1) No excess claims fee is due if the patent 
owner cancels ten claims, two of which are independent, and adds ten 
claims, two of which are independent; (2) the excess claims fee for a 
seventh independent claim ($200.00) is due if the patent owner cancels 
ten claims, two of which are independent, and adds ten claims, three of 
which are independent; (3) the excess claims fee for a thirty-first 
claim ($50.00) is due if the patent owner cancels ten claims, two of 
which are independent, and adds eleven claims, two of which are 
independent; and (4) the excess claims fees for a seventh independent 
claim ($200.00) and a thirty-first claim ($50.00) are due if the patent 
owner cancels ten claims, two of which are independent, and adds eleven 
claims, three of which are independent.
    Section 1.20(d) sets forth the fee for filing a disclaimer under 35 
U.S.C. 253 and Sec.  1.321 in a patent application or patent: $130.00 
($65 for a small entity). See 35 U.S.C. 41(a)(5).
    Sections 1.20(e), (f), and (g) are amended to set forth the patent 
maintenance fees as specified in 35 U.S.C. 41(b) as amended by the 
Consolidated Appropriations Act: (1) the first maintenance fee due at 
three years and six months after grant is $900.00 ($450.00 for a small 
entity); (2) the second maintenance fee due at seven years and six 
months after grant is $2,300.00 ($1,150.00 for a small entity); and (3) 
the third maintenance fee due at eleven years and six months after 
grant is $3,800.00 ($1,900.00 for a small entity). See 35 U.S.C. 41(b).
    Section 1.27: Section 1.27(b) is amended to implement the provision 
of 35 U.S.C. 41(h)(3), which provides that the fee charged under 35 
U.S.C. 41(a)(1)(A) shall be reduced by 75 percent with respect to its 
application to any small entity ``if the application is filed by 
electronic means as prescribed by the Director.'' See 35 U.S.C. 
41(h)(3). Since 35 U.S.C. 41(h)(3) applies only to the filing fee 
charged under 35 U.S.C. 41(a)(1)(A) (the filing fee for a 
nonprovisional original utility application under 35 U.S.C. 111(a)), 
its 75 percent fee reduction does not apply to design or plant 
applications, reissue applications, or provisional applications. In any 
event, the Office electronic filing system does not currently provide 
for design or plant applications, or for international applications 
filed under the PCT which are entering the national stage under 35 
U.S.C. 371.
    Section 1.27(b)(1) contains the preexisting provisions of Sec.  
1.27(b). Section 1.27(b)(2) provides that submission of an original 
utility application in compliance with the Office electronic filing 
system by an applicant who has properly asserted entitlement to small 
entity status pursuant to Sec.  1.27(c) in the particular original 
utility application allows the payment of a reduced filing fee pursuant 
to 35 U.S.C. 41(h)(3) (currently $75.00).
    Section 1.27(c) is amended to revise its reference to Sec. Sec.  
1.16 and 1.492 to reflect the corresponding changes to Sec. Sec.  1.16 
and 1.492.
    Section 1.33: Section 1.33(c) is amended to re-insert text that was 
inadvertently deleted in the final rule Changes to Representation of 
Others Before the United States Patent and Trademark Office, 69 FR 
35427 (June 24, 2004).
    Section 1.51: Section 1.51(b)(4) is amended to indicate that a 
complete application under Sec. Sec.  1.53(b) or 1.53(d) 
(nonprovisional applications filed under 35 U.S.C. 111(a)) includes the 
prescribed filing fee, search fee, examination fee, and application 
size fee. Section 1.51(c)(4) is amended to indicate that a complete 
application under Sec.  1.53(c) (provisional applications filed under 
35 U.S.C. 111(b)) includes the prescribed filing fee and application 
size fee.
    Section 1.52: Section 1.52(f)(1) is added to provide that any 
sequence listing in an electronic medium in compliance with Sec. Sec.  
1.52(e) and 1.821(c) or (e), and any computer program listing filed in 
an electronic medium in compliance with Sec. Sec.  1.52(e) and 1.96, 
will be excluded when determining the application size fee required by 
Sec.  1.16(s) or Sec.  1.492(j). See 35 U.S.C. 41(a)(1)(G) (which 
provides that a sequence listing or a computer program listing is 
excluded if filed in an electronic medium as prescribed by the 
Director).
    Section 1.52(f)(2) is added to provide that the paper size 
equivalent of the specification and drawings of an application 
submitted via the Office electronic filing system will be considered to 
be the number of sheets of paper present in the specification and 
drawings of the application when entered into the Office file wrapper 
(currently in the Office image file wrapper system) after being 
rendered by the Office electronic filing system for purposes of 
computing the application size fee required by Sec.  1.16(s). See 35 
U.S.C. 41(a)(1)(G) (which provides that the Director shall prescribe 
the paper size equivalent of an application filed in an electronic 
medium). Section 1.52(f)(2) further provides that any sequence listing 
in compliance with Sec.  1.821(c) or (e), and any computer program 
listing in compliance with Sec.  1.96, submitted via the Office 
electronic filing system will be excluded when determining the 
application size fee required by Sec.  1.16(s) if the listing is 
submitted in American Standard Code for Information Interchange (ASCII) 
text as part of an associated file of the application. That is, for 
applications filed via the Office electronic filing system, a sequence 
listing or a computer program listing is ``filed in an electronic 
medium as prescribed by the Director'' for purposes of 35 U.S.C. 
41(a)(1)(G) only if the listing is submitted in ASCII text as part of 
an associated file of the application. Thus, for example, sequence 
listings or computer program listings submitted via the Office 
electronic filing system in Portable Document Format (PDF) as part of 
the specification or as Tagg(ed) Image File Format (TIFF) drawing files 
would not be excluded when determining the application size fee 
required by Sec.  1.16(s) or Sec.  1.492(j).
    Section 1.53: Sections 1.53(c), (f) and (g) are amended to revise 
their references to Sec.  1.16 to reflect the corresponding changes to 
Sec.  1.16.
    Section 1.53(f) is further amended to provide for any application 
under Sec.  1.53(b), or any continued prosecution application (CPA) 
under Sec.  1.53(d) (for design applications), that does not also 
include the search fee and the examination fee. Section 1.53(f) 
specifically provides that if an application under Sec.  1.53(b) or a 
CPA under Sec.  1.53(d) does not include the search fee and the 
examination fee: (1)

[[Page 3885]]

Applicant will be notified and given a period of time within which to 
pay the search fee and examination fee to avoid abandonment if 
applicant has provided a correspondence address (Sec.  1.33(a)); and 
(2) applicant has two months from the filing date of the application 
within which to pay the search fee and examination fee to avoid 
abandonment if applicant has not provided a correspondence address.
    Section 1.53(f) is also amended to include the provisions formerly 
in Sec.  1.16(m) that if the excess claims fees required by Sec. Sec.  
1.16(h) and (i) and multiple dependent claim fee required by Sec.  
1.16(j) are not paid on filing or on later presentation of the claims 
for which the excess claims or multiple dependent claim fees are due, 
the fees required by Sec. Sec.  1.16(h), (i), and (j) must be paid or 
the claims canceled by amendment prior to the expiration of the time 
period set for reply by the Office in any notice of fee deficiency in 
order to avoid abandonment.
    Section 1.53(f) is also amended to provide that if the application 
size fee required by Sec.  1.16(s) (if any) is not paid on filing or on 
later presentation of the amendment necessitating a fee or additional 
fee under Sec.  1.16(s), the fee required by Sec.  1.16(s) must be paid 
prior to the expiration of the time period set for reply by the Office 
in any notice of fee deficiency in order to avoid abandonment. The 
submission of an amendment in reply to any Office action or notice 
which necessitates an application size fee or additional application 
size fee under Sec.  1.16(s) and which does not also include the 
requisite application size fee under Sec.  1.16(s) is a reply having an 
omission under Sec.  1.703(c)(7), which will result in a reduction of 
any patent term adjustment by the number of days (if any) beginning on 
the day after the date the reply lacking the requisite application size 
under Sec.  1.16(s) was filed and ending no earlier than the date that 
the requisite application size fee under Sec.  1.16(s) was filed. See 
Sec.  1.703(c)(7).
    Section 1.53(g) is also amended to provide that if the application 
size fee required by Sec.  1.16(s) (if any) is not paid on filing, the 
fee required by Sec.  1.16(s) must be paid prior to the expiration of 
the time period set for reply by the Office in any notice of fee 
deficiency in order to avoid abandonment.
    Section 1.69: Section 1.69 is amended to correct typographical 
errors.
    Section 1.75: Section 1.75(c) is amended to revise its reference to 
Sec.  1.16 to reflect the corresponding changes to Sec.  1.16.
    Section 1.78: Section 1.78(a) is amended to revise its reference to 
Sec.  1.16 to reflect the corresponding changes to Sec.  1.16.
    Section 1.84: Section 1.84(y) is amended to correct an errant 
cross-reference to former Sec.  1.174.
    Section 1.111: Section 1.111(a)(2)(i) is amended to correct a 
typographical error.
    Section 1.136: Section 1.136(b) is amended to correct an errant 
cross-reference to former Sec.  1.645.
    Section 1.211: Section 1.211 is amended to revise its reference to 
Sec.  1.16 to reflect the corresponding changes to Sec.  1.16. Section 
1.211 is also amended to provide that the Office may delay publishing 
any application until it includes any application size fee required by 
the Office under Sec.  1.16(s) or Sec.  1.492(j).
    Section 1.324: Section 1.324(a) is amended to correct an errant 
cross-reference to former Sec.  1.634.
    Section 1.445: Section 1.445(a) is amended to provide that the 
search fee set forth in Sec.  1.445(a)(2)(i) is applicable only if a 
corresponding prior United States national application has been filed 
under 35 U.S.C. 111(a) and the basic filing fee, search fee, and the 
examination fee have been paid therein.
    Section 1.492: Section 1.492 is amended to set forth the basic 
national, search, and examination fees for an international application 
entering the national stage under 35 U.S.C. 371.
    Section 1.492(a) sets forth the basic national fee for an 
international application entering the national stage under 35 U.S.C. 
371: $300.00 ($150.00 for a small entity). See 35 U.S.C. 41(a)(1)(F).
    Section 1.492(b) sets forth the search fees for an international 
application entering the national stage under 35 U.S.C. 371. The 
Consolidated Appropriations Act (Section 803(c)(1) of Division B) 
provides a search fee of $500.00 ($250 for a small entity) for the 
search of the national stage of each international application during 
fiscal years 2005 and 2006.
    Section 1.492(c) sets forth the examination fee for an 
international application entering the national stage under 35 U.S.C. 
371: $200.00 ($100.00 for a small entity). See 35 U.S.C. 41(a)(3).
    The basic national fee, search fee, and examination fee specified 
in Sec.  1.492(a), (b), and (c) apply only to international 
applications entering the national stage under 35 U.S.C. 371 for which 
the basic national fee specified in 35 U.S.C. 41 was not paid before 
December 8, 2004. Section 1.492 does not also specify the basic 
national fee for an international application entering the national 
stage under 35 U.S.C. 371 for which the basic national fee specified in 
35 U.S.C. 41 was paid before December 8, 2004, because (by definition) 
the basic national fee for such an application was paid before the 
effective date of the Consolidated Appropriations Act and this final 
rule.
    Section 1.492(d) sets forth the excess claims fee for each 
independent claim in excess of three; namely, $200 ($100 for a small 
entity) for each claim in independent form in excess of three. See 35 
U.S.C. 41(a)(2)(A).
    Section 1.492(e) sets forth the excess claims fee for each claim 
(whether dependent or independent) in excess of twenty; namely, $50 
($25 for a small entity) for each claim (whether dependent or 
independent) in excess of twenty. See 35 U.S.C. 41(a)(2)(B).
    Section 1.492(f) sets forth the fee for an application that 
contains a multiple dependent claim (formerly in Sec.  1.492(d)). See 
35 U.S.C. 41(a)(2)(C).
    Section 1.492(g) provides that if the excess claims fees required 
by Sec.  1.492(d) and (e) and multiple dependent claim fee required by 
Sec.  1.492(f) are not paid with the basic national fee or on later 
presentation of the claims for which the excess claims or multiple 
dependent claim fees are due, the fees required by Sec.  1.492(d), (e), 
and (f) must be paid or the claims canceled by amendment prior to the 
expiration of the time period set for reply by the Office in any notice 
of fee deficiency in order to avoid abandonment.
    Section 1.492(h) sets forth the surcharge for filing the oath or 
declaration later than thirty months from the priority date pursuant to 
Sec.  1.495(c) (formerly in Sec.  1.492(e)).
    Section 1.492(i) sets forth the processing fee for filing an 
English translation of an international application or of any annexes 
to an international preliminary examination report later than thirty 
months after the priority date (Sec. Sec.  1.495(c) and (e)) (formerly 
in Sec.  1.492(f)).
    Section 1.492(j) sets forth the fee for any international 
application for which the basic national fee was not paid before 
December 8, 2004, the specification and drawings of which, excluding 
any sequence listing or computer program listing filed in an electronic 
medium as prescribed by the Director (see Sec.  1.52(f)), exceed 100 
sheets of paper (the ``application size fee''). The application size 
fee set forth in Sec.  1.492(j) is $250.00 ($125.00 for a small entity) 
for each additional 50 sheets or fraction thereof. See 35 U.S.C. 
41(a)(1)(G).

[[Page 3886]]

    In situations in which a payment submitted for the fees due in an 
international application entering the national stage under 35 U.S.C. 
371 and Sec.  1.495 is insufficient and the applicant has not specified 
the fees to which the payment is to be applied, the Office will apply 
the payment in the following order until the payment is expended: (1st) 
the basic national fee (Sec.  1.492(a)); (2nd) the application size fee 
(Sec.  1.492(j)); (3rd) the surcharge for filing the oath or 
declaration later than thirty months from the priority date (Sec.  
1.492(h)); (4th) the processing fee for filing an English translation 
later than thirty months after the priority date (Sec.  1.492(i)); 
(5th) the search fee (Sec.  1.492(b)); (6th) the examination fee (Sec.  
1.492(c)); and (7th) the excess claims fee (Sec. Sec.  1.492(d), (e), 
and (f)).
    Section 1.495: Section 1.495(c) is subdivided into Sec.  
1.495(c)(1) through (c)(4). Section 1.495(c)(1) provides that if 
applicant complies with Sec.  1.495(b) before expiration of thirty 
months from the priority date, the Office will notify the applicant if 
he or she has omitted any of: (1) A translation of the international 
application, as filed, into the English language, if it was originally 
filed in another language (35 U.S.C. 371(c)(2)); (2) the oath or 
declaration of the inventor (35 U.S.C. 371(c)(4) and Sec.  1.497), if a 
declaration of inventorship in compliance with Sec.  1.497 has not been 
previously submitted in the international application under PCT Rule 
4.17(iv) within the time limits provided for in PCT Rule 26ter.1; (3) 
the search fee set forth in Sec.  1.492(b); (4) the examination fee set 
forth in Sec.  1.492(c); and (5) any application size fee set forth in 
Sec.  1.492(j). Section 1.495(c)(2) provides that a notice under Sec.  
1.495(c)(1) will set a period of time within which applicant must 
provide any omitted translation, oath or declaration of the inventor, 
search fee set forth in Sec.  1.492(b), examination fee set forth in 
Sec.  1.492(c), and any application size fee set forth in Sec.  
1.492(j) in order to prevent abandonment of the application. Section 
1.495(c)(3) and (c)(4) contain existing provisions of Sec.  1.495(c).
    Section 41.20: Section 41.20(b) sets forth appeal fees: (1) The fee 
for filing a notice of appeal from the examiner to the Board of Patent 
Appeals and Interferences is $500.00 ($250.00 for a small entity); (2) 
the additional fee for filing a brief in support of an appeal is 
$500.00 ($250.00 for a small entity); and (3) the additional fee 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 is $1,000.00 
($500.00 for a small entity). See 35 U.S.C. 41(a)(6).

Rule Making Considerations

    Administrative Procedure Act: The changes in this final rule merely 
revise the rules of practice to conform to the patent fees specified in 
35 U.S.C. 41 as amended by the Consolidated Appropriations Act (Pub. L. 
108-447). Therefore, these rule changes involve interpretive rules or 
rules of agency practice and procedure under 5 U.S.C. 553(b)(A). See 
Bachow Communications Inc. v. FCC, 237 F.3d 683, 690 (D.C. Cir. 2001); 
Paralyzed Veterans of America v. West, 138 F.3d 1434, 1436 (Fed. Cir. 
1998); Komjathy v. National Transportation Safety Board, 832 F.2d 1294, 
1296-97 (D.C. Cir. 1987). Accordingly, the changes in this final rule 
may be adopted without prior notice and opportunity for public comment 
under 5 U.S.C. 553(b) and (c), or thirty-day advance publication under 
5 U.S.C. 553(d) or 35 U.S.C. 41(g).
    Regulatory Flexibility Act: As prior notice and an opportunity for 
public comment are not required pursuant to 5 U.S.C. 553 (or any other 
law), neither a regulatory flexibility analysis nor a certification 
under the Regulatory Flexibility Act (5 U.S.C. 601 et seq.) are 
required. See 5 U.S.C. 603.
    Executive Order 13132: This rule making does not contain policies 
with federalism implications sufficient to warrant preparation of a 
Federalism Assessment under Executive Order 13132 (Aug. 4, 1999).
    Executive Order 12866: This rule making has been determined to be 
not significant for purposes of Executive Order 12866 (Sept. 30, 1993).
    Paperwork Reduction Act: This final rule involves information 
collection requirements that are subject to review by the Office of 
Management and Budget (OMB) under the Paperwork Reduction Act of 1995 
(44 U.S.C. 3501 et seq.). The collections of information involved in 
this final rule have been reviewed and previously approved by OMB under 
the following control numbers: 0651-0016, 0651-0021, 0651-0031, 0651-
0032, and 0651-0033. The Office is not resubmitting information 
collection packages to OMB for its review and approval because the 
changes in this final rule do not affect the information collection 
requirements associated with the information collections under these 
OMB control numbers.
    The title, description and respondent description of each of the 
information collections are shown below with an estimate of each of the 
annual reporting burdens. Included in each estimate is the time for 
reviewing instructions, gathering and maintaining the data needed, and 
completing and reviewing the collection of information.

    OMB Number: 0651-0016.
    Title: Rules for Patent Maintenance Fees.
    Form Numbers: PTO/SB/45/47/65/66.
    Type of Review: Approved through May of 2006.
    Affected Public: Individuals or Households, Business or Other For-
Profit Institutions, Not-For-Profit Institutions and Federal 
Government.
    Estimated Number of Respondents: 348,140.
    Estimated Time Per Response: Between 20 seconds and 8 hours.
    Estimated Total Annual Burden Hours: 30,735 hours.
    Needs and Uses: Maintenance fees are required to maintain a patent, 
except for design or plant patents, in force under 35 U.S.C. 41(b). 
Payment of maintenance fees are required at 3\1/2\, 7\1/2\ and 11\1/2\ 
years after the grant of the patent. A patent number and application 
number of the patent on which maintenance fees are paid are required in 
order to ensure proper crediting of such payments.

    OMB Number: 0651-0021.
    Title: Patent Cooperation Treaty.
    Form Numbers: PCT/RO/101, PCT/RO/134, PCT/IPEA/401, PTO-1382, PTO-
1390, PTO/SB/61/PCT, PTO/SB/64/PCT, PCT/Model of power of attorney, 
PCT/Model of general power of attorney.
    Type of Review: Approved through March of 2007.
    Affected Public: Individuals or Households, Business or Other For-
Profit Institutions, Not-for-Profit Institutions, Farms, Federal 
Government, and State, Local or Tribal Government.
    Estimated Number of Respondents: 355,655.
    Estimated Time Per Response: Between 15 minutes and 8 hours.
    Estimated Total Annual Burden Hours: 347,889.
    Needs and Uses: The information collected is required by the Patent 
Cooperation Treaty (PCT). The general purpose of the PCT is to simplify 
the filing of patent applications on the same invention in different 
countries. It provides for a centralized filing procedure and a 
standardized application format.

    OMB Number: 0651-0031.
    Title: Patent Processing (Updating).
    Form Numbers: PTO/SB/08A, PTO/SB/08B, PTO/SB/17i, PTO/SB/17p, PTO/
SB/21-27, PTO/SB/30-37, PTO/SB/42-43, PTO/SB/61-64, PTO/SB/64a,

[[Page 3887]]

PTO/SB/67-68, PTO/SB/91-92, PTO/SB/96-97, PTO-2053-A/B, PTO-2054-A/B, 
PTO-2055-A/B, PTOL-413A.
    Type of Review: Approved through July of 2006.
    Affected Public: Individuals or Households, Business or Other For-
Profit Institutions, Not-for-Profit Institutions, Farms, Federal 
Government and State, Local and Tribal Governments.
    Estimated Number of Respondents: 2,281,439.
    Estimated Time Per Response: 1 minute and 48 seconds to 8 hours.
    Estimated Total Annual Burden Hours: 2,731,841 hours.
    Needs and Uses: During the processing for an application for a 
patent, the applicant/agent may be required or desire to submit 
additional information to the United States Patent and Trademark Office 
concerning the examination of a specific application. The specific 
information required or which may be submitted includes: Information 
disclosure statements and citations, requests for extensions of time, 
the establishment of small entity status; abandonment and revival of 
abandoned applications, disclaimers, requests for expedited examination 
of design applications, transmittal forms, requests to inspect, copy 
and access patent applications, nonpublication requests, certificates 
of mailing or transmission, submission of priority documents and 
amendments.

    OMB Number: 0651-0032.
    Title: Initial Patent Application.
    Form Number: PTO/SB/01-07, PTO/SB/13PCT, PTO/SB/16-19, PTO/SB/29 
and 29A, PTO/SB/101-110, Electronic New Utility and Provisional 
Application Forms.
    Type of Review: Approved through July of 2006.
    Affected Public: Individuals or Households, Business or Other For-
Profit Institutions, Not-For-Profit Institutions, Farms, Federal 
Government, and State, Local, or Tribal Governments.
    Estimated Number of Respondents: 454,287.
    Estimated Time Per Response: 22 minutes to 10 hours and 45 minutes.
    Estimated Total Annual Burden Hours: 4,171,568 hours.
    Needs and Uses: The purpose of this information collection is to 
permit the Office to determine whether an application meets the 
criteria set forth in the patent statute and regulations. The standard 
Fee Transmittal form, New Utility Patent Application Transmittal form, 
New Design Patent Application Transmittal form, New Plant Patent 
Application Transmittal form, Declaration, Provisional Application 
Cover Sheet, and Plant Patent Application Declaration will assist 
applicants in complying with the requirements of the patent statute and 
regulations, and will further assist the Office in processing and 
examination of the application.

    OMB Number: 0651-0033.
    Title: Post Allowance and Refiling.
    Form Numbers: PTO/SB/44, PTO/SB/50-51, PTO/SB/51S, PTO/SB/52-53, 
PTO/SB/56-58, PTOL-85B.
    Type of Review: Approved through April of 2007.
    Affected Public: Individuals or Households, Business or Other For-
Profit Institutions, Not-For-Profit Institutions, Farms, State, Local 
and Tribal Governments, and Federal Government.
    Estimated Number of Respondents: 223,411.
    Estimated Time Per Response: 1.8 minutes to 2 hours.
    Estimated Total Annual Burden Hours: 67,261 hours.
    Needs and Uses: This collection of information is required to 
administer the patent laws pursuant to Title 35, U.S.C., concerning the 
issuance of patents and related actions including correcting errors in 
printed patents, refiling of patent applications, requesting 
reexamination of a patent, and requesting a reissue patent to correct 
an error in a patent. The affected public includes any individual or 
institution whose application for a patent has been allowed or who 
takes action as covered by the applicable rules.
    Comments are invited on: (1) Whether the collection of information 
is necessary for proper performance of the functions of the agency; (2) 
the accuracy of the agency's estimate of the burden; (3) ways to 
enhance the quality, utility, and clarity of the information to be 
collected; and (4) ways to minimize the burden of the collection of 
information to respondents.
    Interested persons are requested to send comments regarding these 
information collections, including suggestions for reducing this 
burden, to Robert J. Spar, Director, Office of Patent Legal 
Administration, United States Patent and Trademark Office, P.O. Box 
1450, Alexandria, VA 22313-1450, or to the Office of Information and 
Regulatory Affairs of OMB, New Executive Office Building, 725 17th 
Street, NW., Room 10235, Washington, DC 20503, Attention: Desk Officer 
for the United States Patent and Trademark Office.
    Notwithstanding any other provision of law, no person is required 
to respond to nor shall a person be subject to a penalty for failure to 
comply with a collection of information subject to the requirements of 
the Paperwork Reduction Act unless that collection of information 
displays a currently valid OMB control number.

List of Subjects

37 CFR Part 1

    Administrative practice and procedure, Courts, Freedom of 
information, Inventions and patents, Reporting and recordkeeping 
requirements, Small businesses.

37 CFR Part 41

    Administrative practice and procedure, Inventions and patents, 
Lawyers.


0
For the reasons set forth in the preamble, 37 CFR Parts 1 and 41 are 
amended as follows:

PART 1--RULES OF PRACTICE IN PATENT CASES

0
1. The authority citation for 37 CFR Part 1 continues to read as 
follows:

    Authority: 35 U.S.C. 2(b)(2).

0
2. Section 1.16 is revised to read as follows:


Sec.  1.16  National application filing, search, and examination fees.

    (a) Basic fee for filing each application under 35 U.S.C. 111 for 
an original patent, except design, plant, or provisional applications:
    (1) For an application filed on or after December 8, 2004:
    By a small entity (Sec.  1.27(a)) if the application is submitted 
in compliance with the Office electronic filing system (Sec.  
1.27(b)(2))--$75.00.
    By a small entity (Sec.  1.27(a))--$150.00.
    By other than a small entity--$300.00.
    (2) For an application filed before December 8, 2004:
    By a small entity (Sec.  1.27(a))--$395.00.
    By other than a small entity--$790.00.
    (b) Basic fee for filing each application for an original design 
patent:
    (1) For an application filed on or after December 8, 2004:
    By a small entity (Sec.  1.27(a))--$100.00.
    By other than a small entity--$200.00.
    (2) For an application filed before December 8, 2004:
    By a small entity (Sec.  1.27(a))--$175.00.
    By other than a small entity--$350.00.
    (c) Basic fee for filing each application for an original plant 
patent:
    (1) For an application filed on or after December 8, 2004:
    By a small entity (Sec.  1.27(a))--$100.00.
    By other than a small entity--$200.00.

[[Page 3888]]

    (2) For an application filed before December 8, 2004:
    By a small entity (Sec.  1.27(a))--$275.00.
    By other than a small entity--$550.00.
    (d) Basic fee for filing each provisional application:
    By a small entity (Sec.  1.27(a))--$100.00.
    By other than a small entity--$200.00.
    (e) Basic fee for filing each application for the reissue of a 
patent:
    (1) For an application filed on or after December 8, 2004:
    By a small entity (Sec.  1.27(a))--$150.00.
    By other than a small entity--$300.00.
    (2) For an application filed before December 8, 2004:
    By a small entity (Sec.  1.27(a))--$395.00.
    By other than a small entity--$790.00.
    (f) Surcharge for filing the basic filing fee or oath or 
declaration on a date later than the filing date of the application, 
except provisional applications:
    By a small entity (Sec.  1.27(a))--$65.00.
    By other than a small entity--$130.00.
    (g) Surcharge for filing the basic filing fee or cover sheet (Sec.  
1.51(c)(1)) on a date later than the filing date of the provisional 
application:
    By a small entity (Sec.  1.27(a))--$25.00.
    By other than a small entity--$50.00.
    (h) In addition to the basic filing fee in an application, other 
than a provisional application, for filing or later presentation at any 
other time of each claim in independent form in excess of 3:
    By a small entity (Sec.  1.27(a))--$100.00.
    By other than a small entity--$200.00.
    (i) In addition to the basic filing fee in an application, other 
than a provisional application, for filing or later presentation at any 
other time of each claim (whether dependent or independent) in excess 
of 20 (note that Sec.  1.75(c) indicates how multiple dependent claims 
are considered for fee calculation purposes):
    By a small entity (Sec.  1.27(a))--$25.00.
    By other than a small entity--$50.00.
    (j) In addition to the basic filing fee in an application, other 
than a provisional application, that contains, or is amended to 
contain, a multiple dependent claim, per application:
    By a small entity (Sec.  1.27(a))--$180.00.
    By other than a small entity--$360.00.
    (k) Search fee for each application filed under 35 U.S.C. 111 on or 
after December 8, 2004, for an original patent, except design, plant, 
or provisional applications:
    By a small entity (Sec.  1.27(a))--$250.00.
    By other than a small entity--$500.00.
    (l) Search fee for each application filed on or after December 8, 
2004, for an original design patent:
    By a small entity (Sec.  1.27(a))--$50.00.
    By other than a small entity--$100.00.
    (m) Search fee for each application filed on or after December 8, 
2004, for an original plant patent:
    By a small entity (Sec.  1.27(a))--$150.00.
    By other than a small entity--$300.00.
    (n) Search fee for each application filed on or after December 8, 
2004, for the reissue of a patent:
    By a small entity (Sec.  1.27(a))--$250.00.
    By other than a small entity--$500.00.
    (o) Examination fee for each application filed under 35 U.S.C. 111 
on or after December 8, 2004, for an original patent, except design, 
plant, or provisional applications:
    By a small entity (Sec.  1.27(a))--$100.00.
    By other than a small entity--$200.00.
    (p) Examination fee for each application filed on or after December 
8, 2004, for an original design patent:
    By a small entity (Sec.  1.27(a))--$65.00.
    By other than a small entity--$130.00.
    (q) Examination fee for each application filed on or after December 
8, 2004, for an original plant patent:
    By a small entity (Sec.  1.27(a))--$80.00.
    By other than a small entity--$160.00.
    (r) Examination fee for each application filed on or after December 
8, 2004, for the reissue of a patent:
    By a small entity (Sec.  1.27(a))--$300.00.
    By other than a small entity--$600.00.
    (s) Application size fee for any application under 35 U.S.C. 111 
filed on or after December 8, 2004, the specification and drawings of 
which exceed 100 sheets of paper, for each additional 50 sheets or 
fraction thereof:
    By a small entity (Sec.  1.27(a))--$125.00.
    By other than a small entity--$250.00.

    Note to Sec.  1.16: See Sec. Sec.  1.445, 1.482 and 1.492 for 
international application filing and processing fees.


0
3. Section 1.17 is amended by revising paragraphs (a), (l) and (m) to 
read as follows:


Sec.  1.17  Patent application and reexamination processing fees.

    (a) Extension fees pursuant to Sec.  1.136(a):
    (1) For reply within first month:
    By a small entity (Sec.  1.27(a))--$60.00.
    By other than a small entity--$120.00.
    (2) For reply within second month:
    By a small entity (Sec.  1.27(a))--$225.00.
    By other than a small entity--$450.00.
    (3) For reply within third month:
    By a small entity (Sec.  1.27(a))--$510.00.
    By other than a small entity--$1,020.00.
    (4) For reply within fourth month:
    By a small entity (Sec.  1.27(a))--$795.00.
    By other than a small entity--$1,590.00.
    (5) For reply within fifth month:
    By a small entity (Sec.  1.27(a))--$1,080.00.
    By other than a small entity--$2,160.00.
* * * * *
    (l) For filing a petition for the revival of an unavoidably 
abandoned application under 35 U.S.C. 111, 133, 364, or 371, for the 
unavoidably delayed payment of the issue fee under 35 U.S.C. 151, or 
for the revival of an unavoidably terminated reexamination proceeding 
under 35 U.S.C. 133 (Sec.  1.137(a)):
    By a small entity (Sec.  1.27(a))--$250.00.
    By other than a small entity--$500.00.
    (m) For filing a petition for the revival of an unintentionally 
abandoned application, for the unintentionally delayed payment of the 
fee for issuing a patent, or for the revival of an unintentionally 
terminated reexamination proceeding under 35 U.S.C. 41(a)(7) (Sec.  
1.137(b)):
    By a small entity (Sec.  1.27(a))--$750.00.
    By other than a small entity--$1,500.00.
* * * * *

0
4. Section 1.18 is amended by revising paragraphs (a) through (c) to 
read as follows:


Sec.  1.18  Patent post allowance (including issue) fees.

    (a) Issue fee for issuing each original patent, except a design or 
plant patent, or for issuing each reissue patent:
    By a small entity (Sec.  1.27(a))--$700.00.
    By other than a small entity--$1,400.00.
    (b) Issue fee for issuing an original design patent:
    By a small entity (Sec.  1.27(a))--$400.00.
    By other than a small entity--$800.00.
    (c) Issue fee for issuing an original plant patent:
    By a small entity (Sec.  1.27(a))--$550.00.
    By other than a small entity--$1,100.00.
* * * * *

0
5. Section 1.20 is amended by revising paragraphs (c) through (g) to 
read as follows:


Sec.  1.20  Post issuance fees.

* * * * *
    (c) In reexamination proceedings
    (1) For filing a request for ex parte reexamination (Sec.  
1.510(a))--$2,520.00.
    (2) For filing a request for inter partes reexamination (Sec.  
1.915(a))--$8,800.00.
    (3) For filing with a request for reexamination or later 
presentation at any other time of each claim in independent form in 
excess of 3 and also in excess of the number of claims in independent 
form in the patent under reexamination:
    By a small entity (Sec.  1.27(a))--$100.00.
    By other than a small entity--$200.00.
    (4) For filing with a request for reexamination or later 
presentation at any other time of each claim (whether dependent or 
independent) in excess of

[[Page 3889]]

20 and also in excess of the number of claims in the patent under 
reexamination (note that Sec.  1.75(c) indicates how multiple dependent 
claims are considered for fee calculation purposes):
    By a small entity (Sec.  1.27(a))--$25.00.
    By other than a small entity--$50.00.
    (5) If the excess claims fees required by paragraphs (c)(3) and 
(c)(4) are not paid with the request for reexamination or on later 
presentation of the claims for which the excess claims fees are due, 
the fees required by paragraphs (c)(3) and (c)(4) must be paid or the 
claims canceled by amendment prior to the expiration of the time period 
set for reply by the Office in any notice of fee deficiency in order to 
avoid abandonment.
    (d) For filing each statutory disclaimer (Sec.  1.321):
    By a small entity (Sec.  1.27(a))--$65.00.
    By other than a small entity--$130.00.
    (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 being due by three years and 
six months after the original grant:
    By a small entity (Sec.  1.27(a))--$450.00.
    By other than a small entity--$900.00.
    (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 being due by seven years and 
six months after the original grant:
    By a small entity (Sec.  1.27(a))--$1,150.00.
    By other than a small entity--$2,300.00.
    (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 being due by eleven years 
and six months after the original grant:
    By a small entity (Sec.  1.27(a))--$1,900.00.
    By other than a small entity--$3,800.00.
* * * * *

0
6. Section 1.27 is amended by revising paragraphs (b) and (c)(3) to 
read as follows:


Sec.  1.27  Definition of small entities and establishing status as a 
small entity to permit payment of small entity fees; when a 
determination of entitlement to small entity status and notification of 
loss of entitlement to small entity status are required; fraud on the 
Office.

* * * * *
    (b) Establishment of small entity status permits payment of reduced 
fees.
    (1) A small entity, as defined in paragraph (a) of this section, 
who has properly asserted entitlement to small entity status pursuant 
to paragraph (c) of this section will be accorded small entity status 
by the Office in the particular application or patent in which 
entitlement to small entity status was asserted. Establishment of small 
entity status allows the payment of certain reduced patent fees 
pursuant to 35 U.S.C. 41(h)(1).
    (2) Submission of an original utility application in compliance 
with the Office electronic filing system by an applicant who has 
properly asserted entitlement to small entity status pursuant to 
paragraph (c) of this section in that application allows the payment of 
a reduced filing fee pursuant to 35 U.S.C. 41(h)(3).
    (c) * * *
    (3) Assertio
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