Changes to the Practice for Handling Patent Applications Filed Without the Appropriate Fees, 30360-30366 [05-10585]

Agencies

• DEPARTMENT OF COMMERCE
• United States Patent and Trademark Office
• Patent and Trademark Office

[Federal Register Volume 70, Number 101 (Thursday, May 26, 2005)]
[Rules and Regulations]
[Pages 30360-30366]
From the Federal Register Online via the Government Printing Office [www.gpo.gov]
[FR Doc No: 05-10585]


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DEPARTMENT OF COMMERCE

United States Patent and Trademark Office

37 CFR Part 1

[Docket No.: 2005-P-055]
RIN 0651-AB87


Changes to the Practice for Handling Patent Applications Filed 
Without the Appropriate Fees

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Final rule.

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SUMMARY: Among other changes to patent and trademark fees, the 
Consolidated Appropriations Act, 2005 (Consolidated Appropriations 
Act), splits the former patent application basic filing fee into a 
separate basic filing (or basic national) fee, search fee and 
examination fee, and requires an

[[Page 30361]]

additional fee (application size fee) for applications whose 
specification and drawings exceed 100 sheets of paper, during fiscal 
years 2005 and 2006. The United States Patent and Trademark Office is 
changing its practice for handling patent applications filed without 
the appropriate basic filing (or basic national) fee, search fee and 
examination fee.

DATES: Effective Date: July 1, 2005.
    Applicability Dates: The change to 37 CFR 1.78 applies to any 
application that claims benefit of an application under 35 U.S.C. 
111(a) in which the processing and retention fee in now former 37 CFR 
1.21(l) was not paid before July 1, 2005. The change to 37 CFR 1.16(f) 
applies to any application under 35 U.S.C. 111(a) filed on or after 
July 1, 2005. The change to 37 CFR 1.492(h) applies to any 
international application in which the basic national fee was not paid 
before July 1, 2005.

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: Mail Stop 
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: Among other changes, 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. 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)).
    In view of the revised patent fee structure during fiscal years 
2005 and 2006 set forth in the Consolidated Appropriations Act, the 
Office is adopting the following changes in Office practice for 
handling patent applications filed without the appropriate fees: That 
is, the basic filing (or basic national) fee, search fee, and 
examination fee.
    The Office is adopting changes to: (1) Require the surcharge under 
Sec.  1.16(f) in any application filed under 35 U.S.C. 111(a) in which 
any of the basic filing fee, the search fee, or the examination fee are 
paid on a date later than the filing date of the application; and (2) 
require the surcharge under Sec.  1.492(h) in any application filed 
under the PCT in which either of the search fee or the examination fee 
are paid after the date of the commencement of the national stage 
(Sec.  1.491(a)). This change is because the Consolidated 
Appropriations Act splits the former patent application basic filing 
(or basic national) fee into a separate basic filing (or basic 
national) fee, search fee and examination fee during fiscal years 2005 
and 2006. The filing of an application which lacks either the search 
fee or the examination fee requires the Office to issue a notice to 
file the missing parts (or requirements) of the application.
    The Office is also eliminating the processing and retention fee 
(Sec.  1.21(l)) practice. The processing and retention fee practice 
permitted an applicant to file an application without the basic filing 
fee (which formerly covered the cost of the initial processing of an 
application and part of the cost of the search and examination of an 
application) and pay only the processing and retention fee set forth in 
former Sec.  1.21(l) in order for the application to be used as a basis 
for foreign filing and benefit claims under 35 U.S.C. 120 and Sec.  
1.78(a). Under the revised patent fee structure set forth in the 
Consolidated Appropriations Act, the basic filing fee covers only the 
cost of the initial processing of an application. Thus, the Office is 
requiring payment of the basic filing fee (rather than just the 
processing and retention fee set forth in former Sec.  1.21(l)) to 
retain the application.
    Since the Office must retain an application to permit benefit of 
the application to be claimed under 35 U.S.C. 120 and Sec.  1.78 in a 
subsequent nonprovisional or international application, the Office is 
also requiring payment of the basic filing fee (rather than just the 
processing and retention fee set forth in former Sec.  1.21(l)) to 
permit benefit of the application to be claimed under 35 U.S.C. 120 and 
Sec.  1.78 in a subsequent nonprovisional or international application.
    The Office is also implementing the provision in 35 U.S.C. 
41(a)(1)(G) to prescribe the paper size equivalent of an application 
filed in whole or in part in an electronic medium for purposes of the 
application size fee specified in 35 U.S.C. 41(a)(1)(G) (Sec.  1.16(s) 
and Sec.  1.492(j)). A 21.6 cm by 27.9 cm (8\1/2\ by 11 inches) sheet 
of paper with a top margin of 2.0 cm (\3/4\ inch), a left side margin 
of 2.5 cm (1 inch), a right side margin of 2.0 cm (\3/4\ inch), and a 
bottom margin of 2.0 cm (\3/4\ inch), will contain about 30 lines of 
text with double line spacing, with each line having about 50 to 65 
characters. An ASCII text (the only format permitted by Sec.  1.52(e)) 
document containing 30 lines of text, each line having about 50 to 65 
characters, will be slightly less than two kilobytes in size. Since the 
Office permits text with a line spacing of 1\1/2\ (notwithstanding that 
ASCII does not permit 1\1/2\ line spacing), the Office is providing 
that each three kilobytes (rounding up) of content submitted on an 
electronic medium shall be counted as a sheet of paper for purposes of 
the application size fee specified in 35 U.S.C. 41(a)(1)(G) (Sec.  
1.16(s) and Sec.  1.492(j)).

Discussion of Specific Rules

    Title 37 of the Code of Federal Regulations, Part 1, is amended as 
follows:
    Section 1.16: Section 1.16(f) is amended to require a surcharge if 
any of the basic filing fee, the search fee, the examination fee, or 
the oath or declaration is filed in a nonprovisional application on a 
date later than the filing date of the application. Section 1.16(s) is 
amended to include a cross-reference to Sec.  1.52(f).
    Section 1.21: Section 1.21 is amended to remove and reserve 
paragraph (l), which set forth the fee for processing and retaining an 
application in which the basic filing fee has not been paid.
    Section 1.52: Section 1.52(f)(1) is amended to provide that for 
purposes of determining the application size fee required by Sec.  
1.16(s) or Sec.  1.492(j), for an application the specification 
(including claims) and drawings of which (excluding any sequence 
listing in compliance with Sec.  1.821(c) or (e), and any computer 
program listing filed in an

[[Page 30362]]

electronic medium in compliance with Sec. Sec.  1.52(e) and 1.96), are 
submitted in whole or in part on an electronic medium other than the 
Office electronic filing system, each three kilobytes of content 
submitted on an electronic medium shall be counted as a sheet of paper.
    Section 1.53(f)(2) is amended to provide for purposes of 
determining the application size fee required by Sec.  1.16(s), the 
paper size equivalent of an application submitted via the Office 
electronic filing system will be considered to be equal to seventy-five 
percent of 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.
    Section 1.53: Section 1.53(d)(3) is amended to correct the 
references to the design application basic filing fee (set forth in 
Sec.  1.16(b)), and add references to the design application search fee 
(set forth in Sec.  1.16(l)) and examination fee (set forth in Sec.  
1.16(p)). Section 1.53(f)(5) is amended to provide that if the 
applicant does not pay the basic filing fee during the pendency of the 
application, the Office may dispose of the application.
    Section 1.78: Section 1.78(a)(1) is amended to provide that to 
claim the benefit of a prior-filed nonprovisional application under 35 
U.S.C. 120 and Sec.  1.78(a) in a subsequent nonprovisional or 
international application, the prior-filed nonprovisional application 
must be entitled to a filing date as set forth in Sec.  1.53(b) or 
Sec.  1.53(d) and have paid therein the basic filing fee set forth in 
Sec.  1.16 within the pendency of the application.
    Section 1.492: Section 1.492(h) is amended to require a surcharge 
if any of the search fee, the examination fee, or the oath or 
declaration is filed after the date of the commencement of the national 
stage (Sec.  1.491(a)). Section 1.492(j) is amended to include a cross-
reference to Sec.  1.52(f).
    Section 1.495: Section 1.495(c)(1)(i) is amended to reinsert the 
language concerning the publication of the international application 
previously submitted under 35 U.S.C. 154(d) under Sec.  1.417. This 
language was inadvertently deleted in the final rule to implement the 
Consolidated Appropriations Act. See Changes to Implement the Patent 
Fee Related Provisions of the Consolidated Appropriations Act, 2005, 70 
FR 3880 (Jan. 27, 2005), 1291 Off. Gaz. Pat. Office 133 (Feb. 22, 2005) 
(final rule). Section 1.495(c)(1)(i) is amended to replace ``the oath 
or declaration'' with ``any of the search fee, the examination fee, or 
the oath or declaration'' for consistency with the change to Sec.  
1.492.
    Response to comments: The Office published a notice proposing 
changes to the Office's practice for handling patent applications filed 
without the appropriate fees. See Changes to the Practice for Handling 
Patent Applications Filed Without the Appropriate Fees, 70 FR 9570 
(Feb. 28, 2005), 1292 Off. Gaz. Pat. Office 143 (Mar. 22, 2005) 
(proposed rule). The Office received seven written comments (from 
intellectual property organizations, patent practitioners, and the 
general public) in response to this notice. The comments and the 
Office's responses to the comments follow:
    Comment 1: Several comments suggested that the elimination of the 
processing and retention fee practice is effectively a fee increase, 
and as such is not simply an interpretative or procedural rule change. 
Several comments also suggested that the elimination of the processing 
and retention fee practice is effectively a fee increase that should 
not be adopted without sufficient justification.
    Response: The processing and retention fee practice was adopted in 
April of 1984. See Revision of Patent Practice, 49 FR 548 (Jan. 4, 
1984) (final rule), and Proposed Revision of Patent Practice, 48 FR 
39016 (Aug. 26, 1983) (proposed rule). This fee ($100.00 in 1984, or 
one-third of the $300.00 basic filing (non-small entity) in effect in 
April of 1984) was designed to cover the costs of initial processing 
and retention of an application that was abandoned prior to payment (or 
due to non-payment) of the basic filing fee. The Office proposed 
eliminating the processing and retention fee practice during the 
implementation of the provisional application practice provided for in 
the Uruguay Round Agreements Act, Pub. L. 103-465, 108 Stat. 4809 
(1994), but ultimately decided to retain the processing and retention 
fee practice. See Changes to Implement 20-Year Patent Term and 
Provisional Applications, 60 FR 20195, 20197 (Apr. 25, 1995) (final 
rule), and Changes to Implement 20-Year Patent Term and Provisional 
Applications, 59 FR 63951, 63952 (Dec. 12, 1994) (proposed rule). The 
Office has determined that it is now appropriate to eliminate the 
processing and retention fee practice in view of provisional 
application practice and the changes to the patent fee structure in the 
Consolidated Appropriations Act.
    The Consolidated Appropriations Act provides that (during fiscal 
years 2005 and 2006) 35 U.S.C. 41(a)(1) shall be administered as though 
that provision reads: ``[t]he Director shall charge * * * [o]n filing 
each application for an original patent, except for design, plant, or 
provisional applications, $300.'' See 35 U.S.C. 41(a)(1)(A). 35 U.S.C. 
111(a) provides (in part) that: [t]he application must be accompanied 
by the fee required by law.'' See 35 U.S.C. 111(a)(3). Thus, 35 U.S.C. 
41(a)(1) and 111 require the Office to charge and the applicant to pay 
(inter alia) the basic filing fee in a nonprovisional application. 
While a processing and retention fee practice may have been appropriate 
under a fee structure in which the filing fee was designed to cover the 
initial processing, the search, and the examination of an application, 
it is not consistent with the patent fee structure provided in the 
Consolidated Appropriations Act to maintain an ``alternative'' 
processing and retention fee practice when the patent fee structure 
provided in the Consolidated Appropriations Act sets forth a filing fee 
that is separate from a search fee and an examination fee and is 
designed to cover the initial processing of an application.
    Further, the elimination of the processing and retention fee 
practice does not constitute a substantive change requiring notice-and-
comment rule making under the Administrative Procedure Act. The change 
does not ``encode a substantive value judgment,'' but simply 
discontinues the purely procedural practice of retaining a copy of an 
application for which the statutory filing fee had not been paid. See 
Pub. Citizen v. Dep't of State, 276 F.3d 634, 640 (D.C. Cir. 2002) (the 
focus in determining whether a rule falls under the procedural 
exemption of 5 U.S.C. 553(b)(A) is on asking whether the rule encodes a 
substantive value judgment). As a result of the change, applicants will 
not be able to require the Office to retain a copy of an application 
unless they resort to another existing procedure (e.g., filing a 
provisional application instead of a nonprovisional application, or 
just paying the filing fee pay in the nonprovisional application). 
While the use of such an alternative procedure may result in a higher 
cost to the applicant, ``an otherwise-procedural rule does not become a 
substantive one, for notice-and-comment purposes, simply because it 
imposes a burden on regulated parties.'' James V. Hurson Associates v. 
Glickman, 222 F.3d. 277, 281 (D.C. Cir. 2000).
    Finally, notwithstanding that the Office maintains that these rule 
changes involve interpretative rules, or rules of agency practice and 
procedure under 5 U.S.C. 553(b)(A), it should be noted that

[[Page 30363]]

the elimination of the processing and retention fee practice was first 
published for public comment as provided for in 5 U.S.C. 553(b) prior 
to adoption of the rule changes to eliminate the processing and 
retention fee practice.
    Comment 2: One comment suggested that whether to retain or 
eliminate the processing and retention fee practice is a decision for 
Congress and not the Office.
    Response: As discussed, 35 U.S.C. 41(a)(1) and 111 require the 
Office to charge and the applicant to pay (inter alia) the basic filing 
fee in a nonprovisional application. The patent statute does not 
provide either for a processing and retention fee as an alternative to 
the basic filing fee or for a processing and retention fee practice.
    Comment 3: One comment suggested that applicants may file a patent 
application without a fee and if a continuation application is filed 
within a short period of time, there is a statutory right to claim the 
benefit of the prior-filed application.
    Response: As discussed, 35 U.S.C. 41(a)(1) and 111 require the 
Office to charge and the applicant to pay (inter alia) the basic filing 
fee in a nonprovisional application. There is no ``statutory right'' to 
file an application without paying the basic filing fee, regardless of 
whether a continuation application that claims the benefit of the 
prior-filed application is ever filed.
    Comment 4: One comment suggested that the Office should not 
``burn'' an application file wrapper simply because the applicant has 
not paid the basic filing fee, and further suggested that an electronic 
copy of an application will continue to exist even if the Office 
``burns'' a paper copy of the application file wrapper.
    Response: The Office did not indicate that it would ``burn'' or 
necessarily remove from its paper or electronic records those 
applications in which the basic filing fee has not been paid. The 
Office is simply providing that if the applicant does not pay the basic 
filing fee during the pendency of a nonprovisional application, the 
Office may dispose of the application. Put simply, the Office is not 
obligating itself to retain an abandoned nonprovisional application 
among its records (paper or electronic) if the applicant does not pay 
at least the basic filing fee during the pendency of the application.
    Comment 5: One comment suggested that language of Sec.  1.16 and 
Sec.  1.492(h) was not consistent with the discussion of those sections 
in the preamble, and requested clarification of the proposed changes to 
Sec.  1.16 and Sec.  1.492(h).
    Response: Section 1.16(f) requires a surcharge in any application 
filed under 35 U.S.C. 111(a) in which any of the basic filing fee, the 
search fee, or the examination fee is paid on a date later than the 
filing date of the application. Section 1.492(h) requires a surcharge 
in any application filed under the PCT in which either of the search 
fee or the examination fee is paid after the date of the commencement 
of the national stage (Sec.  1.491(a)).
    Comment 6: Several comments suggested that the proposed provision 
that each two kilobytes of content submitted on an electronic medium 
shall be counted as a sheet of paper is too low. One comment gave an 
example of a 21,496 kilobyte table that prints as 5,081 pages, which if 
submitted on a compact disc would be treated as 10,748 pages.
    Response: In view of the four kilobytes per page ratio of the table 
provided as an example, it appears that the lines of the table are 
single spaced. The rules of practice provide for either 1\1/2\ or 
double line spacing, but not for single line spacing. See Sec.  
1.52(b)(2)(i). However, since the rules of practice provide for 1\1/2\ 
line spacing, the Office is revising this provision to indicate that 
each three kilobytes of content submitted on an electronic medium shall 
be counted as a sheet of paper (notwithstanding that ASCII does not 
provide for 1\1/2\ line spacing).
    Comment 7: Several comments suggested that the proposed provision 
that each two kilobytes of content submitted on an electronic medium 
shall be counted as a sheet of paper, being based solely on ASCII text 
content, fails to appreciate that Tagg(ed) Image File Format (TIFF) 
drawings sheets are usually far larger than two kilobytes per page. 
Another comment suggested that a typical electronic drawing will 
measure at least 50 kilobytes, and often will range from 100 to 200 
kilobytes.
    Response: The rules of practice do not provide for the submission 
of either drawings sheets or any TIFF application documents on a 
compact disc. See Sec. Sec.  1.52(e)(1) and (e)(3). Applicants may 
submit TIFF drawings sheets in an application submitted via the Office 
electronic filing system; however, the provisions of Sec.  1.52(f)(1) 
that each three kilobytes of content submitted on an electronic medium 
shall be counted as a sheet of paper does not apply to an application 
submitted via the Office electronic filing system.
    Comment 8: One comment questioned whether the provisions of Sec.  
1.52(f)(1) were limited to tables, since sequence and computer program 
listings are excluded. The comment further suggested that, if the 
provisions of Sec.  1.52(f)(1) have broader applicability, then it has 
discriminatory effect based on subject matter of the patent application 
because chemical patent applications and, in particular, pharmaceutical 
patent applications are treated unfavorably under the provisions of 
Sec.  1.52(f)(1). The comment indicated that these applications tend to 
have an extensive number of embedded chemical structures, and the 
electronic size of images such as ChemDraw structures, PDF tables and 
the like, which have significantly higher byte totals when compared to 
the ASCII text used for the calculations. The comment gave an example 
of an application having a total of 68 pages but an electronic size of 
640 kilobytes (which would be treated as 340 pages if each two 
kilobytes were treated as equal to one page).
    Response: Section 1.52(e) currently limits the application 
documents that may be submitted on compact disc to computer program 
listings, sequence listings, and tables. See Sec.  1.52(e)(1). 
Therefore, for an application submitted in compliance with the rules of 
practice (Sec.  1.52(e)), the provisions of Sec.  1.52(f)(1) that each 
three kilobytes of content submitted on an electronic medium shall be 
counted as a sheet of paper would apply only to tables. If an applicant 
submitted other application documents on a compact disc in violation of 
Sec.  1.52(e)(1), and/or in a format not permitted by Sec.  1.52(e)(3) 
(i.e., in a format other than ASCII), any unfavorable treatment would 
be due to the applicant's failure to follow the rules of practice and 
not due to any action on the part of the Office.
    Comment 9: One comment suggested that the Office should consider a 
flat processing fee for electronic medium submissions that would 
compensate the Office for any additional work. Another comment 
suggested that there be an upper limit to the fees similar to that 
provided for by Part 8 of the Administration Instructions (AI) under 
the Patent Cooperation Treaty.
    Response: The Office does not consider a ``flat processing fee'' or 
an ``upper limit'' to be appropriate. 35 U.S.C. 41(a)(1)(G) authorizes 
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 
application size fee specified in 35 U.S.C. 41(a)(1)(G), not to create 
a new application size fee regime for applications filed in whole or in 
part in an electronic medium.
    Comment 10: Several comments suggested that the Office should

[[Page 30364]]

reconsider the provisions of proposed Sec.  1.52(f)(1) (that each two 
kilobytes of content submitted on an electronic medium shall be counted 
as a sheet of paper) in light of the Office's stated goal to increase 
the number of electronic submissions.
    Response: The Office has a goal of increasing usage of its 
electronic filing system. The Office is revising Sec.  1.52(f)(2) to 
provide that the paper size equivalent of the specification (including 
claims) and drawings of an application submitted via the Office 
electronic filing system will be considered to be seventy-five percent 
of the number of sheets of paper present in the specification 
(including claims) and drawings of the application when entered into 
the Office file wrapper after being rendered by the Office electronic 
filing system for purposes of determining the application size fee 
required by Sec.  1.16(s). This change is being made to ensure that 
number of sheets of paper present in the specification (including 
claims) and drawings of the application when entered into the Office 
file wrapper after being rendered by the Office electronic filing 
system does not exceed the number of pages in the application when 
printed out by the applicant. The filing of application documents on 
compact disc as permitted by Sec.  1.52(e), however, is not germane to 
the Office's goal of increasing usage of its electronic filing system.

Rule Making Considerations

    Administrative Procedure Act: The changes in this final rule relate 
solely to the procedures to be followed in prosecuting a patent 
application, i.e., the procedures for paying the fees due upon filing 
an application for patent. This final rule does not change the amount 
of fees charged by the Office. Specifically, the changes in this final 
rule concern the procedures for payment of the filing fee, search fee, 
and examination fee, and setting forth which fees must be paid in order 
for a nonprovisional application to be processed and retained by the 
Office such that it may be used as the basis for foreign filing and for 
benefit claims under 35 U.S.C. 120 and Sec.  1.78(a). Therefore, these 
rule changes involve interpretative 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) (rules governing an 
application process are ``rules of agency organization, procedure, or 
practice'' and are exempt from the Administrative Procedure Act's 
notice and comment requirement) and JEM Broadcasting Co. v. FCC, 22 
F.3d 320, 327 (D.C. Cir. 1994) (rule under which any flawed application 
is summarily dismissed without allowing the applicant to correct its 
error is merely procedural despite its sometimes harsh effects on 
applicants); see also Merck & Co., Inc. v. Kessler, 80 F.3d 1543, 1549-
50, 38 USPQ2d 1347, 1351 (Fed. Cir. 1996) (the rules of practice 
promulgated under the authority of former 35 U.S.C. 6(a) (now in 35 
U.S.C. 2(b)(2)) are not substantive rules (to which the notice and 
comment requirements of the Administrative Procedure Act apply)), and 
Fressola v. Manbeck, 36 USPQ2d 1211, 1215 (D.D.C. 1995) (``it is 
doubtful whether any of the rules formulated to govern patent and 
trade-mark practice are other than `interpretative rules, general 
statements of policy, * * * procedure, or practice.' '') (quoting C.W. 
Ooms, The United States Patent Office and the Administrative Procedure 
Act, 38 Trademark Rep. 149, 153 (1948)).
    Under the Office's pre-existing ``missing parts'' practice, an 
applicant was required to pay a surcharge if the basic filing fee was 
not present on filing in an application. The Consolidated 
Appropriations Act splits the patent application basic filing (or basic 
national) fee into a separate basic filing (or basic national) fee, 
search fee and examination fee. Therefore, the replacement of the basic 
filing fee with the basic filing fee, the search fee, or the 
examination fee is simply a procedural change that is necessary to 
maintain (or restore) the status quo ante with respect to the Office's 
pre-existing ``missing parts'' practice.
    The processing and retention fee practice allows applicants to file 
an application without the filing fee and to pay only a processing and 
retention fee in order for the application to be used as a basis for 
foreign filing and for priority under 35 U.S.C. 120. Under the revised 
patent fee structure set forth in the Consolidated Appropriations Act 
(which splits the filing fee into a separate filing, search fee and 
examination fee), the filing fee covers the cost of the initial 
processing and retention of an application. Thus, requiring payment of 
the basic filing fee under the Consolidated Appropriations Act in order 
for the Office to process and retain an application such that the 
application may be used as a basis for foreign filing and for priority 
under 35 U.S.C. 120 is more consistent with the filing fee scheme set 
forth in the Consolidated Appropriations Act than is continuing the 
processing and retention fee practice.
    The Consolidated Appropriations Act provides 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 calculating the 
application size fee specified in 35 U.S.C. 41(a)(1)(G). Thus, setting 
a paper size equivalent based upon the number of kilobytes of content 
that can fit onto a sheet of paper (given the current requirements for 
applications filed in part on a compact disc and for paper size and 
margins) simply sets forth the procedures for determining the paper 
size equivalent of an application filed in whole or in part in an 
electronic medium for purposes of calculating the application size fee.
    Accordingly, prior notice and opportunity for public comment are 
not required pursuant to 5 U.S.C. 553(b) or (c) (or any other law).
    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 notice involves information 
collection requirements which 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 notice have been reviewed and previously approved by OMB under OMB 
control numbers: 0651-0021, 0651-0031, and 0651-0032. The United States 
Patent and Trademark Office is not resubmitting any information 
collection package to OMB for its review and approval because the 
changes in this notice do not affect the information collection 
requirements associated with the information collection under these OMB 
control numbers. The changes in this notice concern the procedures for 
payment of the filing fee, search fee, examination fee, and the 
application size fee, including setting forth which fees must be paid 
in order for an application to be processed and retained by the Office 
such that it may be used as the basis for foreign filing and for 
benefit claims under 35 U.S.C. 120 and 1.78(a).
    Interested persons are requested to send comments regarding these

[[Page 30365]]

information collections, including suggestions for reducing this 
burden, to Robert J. Spar, Director, Office of Patent Legal 
Administration, Commissioner for Patents, P.O. Box 1450, Alexandria, VA 
22313-1450, or to the Office of Information and Regulatory Affairs, 
Office of Management and Budget, New Executive Office Building, Room 
10235, 725 17th Street, NW., Washington, DC 20503, Attention: Desk 
Officer for the 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 in 37 CFR Part 1

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

0
For the reasons set forth in the preamble, 37 CFR part 1 is 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 amended by revising paragraphs (f) and (s) to read 
as follows:


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

* * * * *
    (f) Surcharge for filing any of the basic filing fee, the search 
fee, the examination fee, or the 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
* * * * *
    (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 (see Sec.  1.52(f) for applications submitted in whole 
or in part on an electronic medium):

By a small entity (Sec.  1.27(a))--$125.00
By other than a small entity--$250.00
* * * * *


Sec.  1.21  [Amended]

0
3. Section 1.21 is amended by removing and reserving paragraph (l).

0
4. Section 1.52 is amended by revising paragraph (f) to read as 
follows:


Sec.  1.52  Language, paper, writing, margins, compact disc 
specifications.

* * * * *
    (f)(1) 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). For purposes of 
determining the application size fee required by Sec.  1.16(s) or Sec.  
1.492(j), for an application the specification and drawings of which, 
excluding any sequence listing in compliance with Sec.  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, are submitted in whole or 
in part on an electronic medium other than the Office electronic filing 
system, each three kilobytes of content submitted on an electronic 
medium shall be counted as a sheet of paper.
    (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 seventy-five percent of 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 determining the application size fee 
required by Sec.  1.16(s). 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 ASCII text as part of an 
associated file.
* * * * *

0
5. Section 1.53 is amended by revising paragraphs (d)(3) and (f)(5) to 
read as follows:


Sec.  1.53  Application number, filing date, and completion of 
application.

* * * * *
    (d) * * *
    (3) The filing fee, search fee, and examination fee for a continued 
prosecution application filed under this paragraph are the basic filing 
fee as set forth in Sec.  1.16(b), the search fee as set forth in Sec.  
1.16(l), and the examination fee as set forth in Sec.  1.16(p).
* * * * *
    (f) * * *
    (5) If applicant does not pay the basic filing fee during the 
pendency of the application, the Office may dispose of the application.
* * * * *

0
6. Section 1.78 is amended by removing paragraph (a)(1)(iii) and 
revising paragraph (a)(1)(ii) to read as follows:


Sec.  1.78  Claiming benefit of earlier filing date and cross 
references to other applications.

    (a)(1) * * *
    (ii) Entitled to a filing date as set forth in Sec.  1.53(b) or 
Sec.  1.53(d) and have paid therein the basic filing fee set forth in 
Sec.  1.16 within the pendency of the application.
* * * * *

0
7. Section 1.492 is amended by revising paragraphs (h) and (j) to read 
as follows:


Sec.  1.492  National stage fees.

* * * * *
    (h) Surcharge for filing any of the search fee, the examination 
fee, or the oath or declaration after the date of the commencement of 
the national stage (Sec.  1.491(a)) pursuant to Sec.  1.495(c):

By a small entity (Sec.  1.27(a))--$65.00
By other than a small entity--$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 (see Sec.  1.52(f) for 
applications submitted in whole or in part on an electronic medium):

By a small entity (Sec.  1.27(a))--$125.00
By other than a small entity--$250.00

0
8. Section 1.495 is amended by revising paragraphs (c)(1)(i) and (c)(3) 
to read as follows:


Sec.  1.495  Entering the national stage in the United States of 
America.

* * * * *
    (c)(1) * * *
    (i) A translation of the international application, as filed, into 
the English language, if it was originally filed in another language 
and if any English language translation of the publication of the 
international application previously submitted under 35 U.S.C. 154(d) 
(Sec.  1.417) is not also a translation of the international 
application as filed (35 U.S.C. 371(c)(2));
* * * * *

[[Page 30366]]

    (3) The payment of the processing fee set forth in Sec.  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 Sec.  1.492(h) is required for acceptance of any 
of the search fee, the examination fee, or the oath or declaration of 
the inventor after the date of the commencement of the national stage 
(Sec.  1.491(a)).
* * * * *

    Dated: May 19, 2005.
Jon W. Dudas,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
[FR Doc. 05-10585 Filed 5-25-05; 8:45 am]
BILLING CODE 3510-16-P