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

Agencies

• DEPARTMENT OF COMMERCE
• Patent and Trademark Office

[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.

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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