United States Patent and Trademark Office OG Notices: 01 March 2005
DEPARTMENT OF COMMERCE
Patent and Trademark Office
37 CFR Part 1
Docket No.: 2005-P-052
RIN 0651-AB84
Revision of Search and Examination Fees for
Patent Cooperation Treaty Applications
Entering the National Stage in the United States
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Interim rule.
SUMMARY: Among other changes to patent and trademark fees, the
Consolidated Appropriations Act, 2005 (Consolidated Appropriations
Act), splits the national fee for Patent Cooperation Treaty (PCT)
applications entering the national stage into a separate national fee,
search fee and examination fee, during fiscal years 2005 and 2006. The
Office is in this notice reducing the search fee and examination fee
for certain PCT applications entering the national stage. The Office
has implemented the changes to the patent fees provided in the
Consolidated Appropriations Act in a separate final rule.
DATES: Effective Date: February 1, 2005.
Applicability Date: The changes in this interim rule apply to all
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 is paid
on or after December 8, 2004.
Comment Deadline Date: To be ensured of consideration, written
comments must be received on or before April 4, 2005. No public hearing
will be held.
ADDRESSES: Comments should be sent by electronic mail message over the
Internet addressed to AB84.Comments@uspto.gov. Comments may also be
submitted 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. Although comments may be submitted by mail or facsimile, the
Office prefers to receive comments via the Internet. If comments are
submitted by mail, the Office prefers that the comments be submitted on
a DOS formatted 3 1/2 inch disk accompanied by a paper copy.
Comments may also be sent by electronic mail message over the
Internet via the Federal eRulemaking Portal. See the Federal
eRulemaking Portal Web site (http://www.regulations.gov) for additional
instructions on providing comments via the Federal eRulemaking Portal.
The comments will be available for public inspection at the Office
of the Commissioner for Patents, located in Madison East, Tenth Floor,
600 Dulany Street, Alexandria, Virginia, and will be available through
anonymous file transfer protocol (ftp) via the Internet (address:
http://www.uspto.gov). Because comments will be made available for
public inspection, information that is not desired to be made public,
such as an address or phone number, should not be included in the
comments.
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: 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 or national fee (35 U.S.C. 41(a)),
search fee (35 U.S.C. 41(d)(1)), and examination fee (35 U.S.C.
1(a)(3)) during fiscal years 2005 and 2006. See Public Law 108-447,
118 Stat. 2809 (2004). The Consolidated Appropriations Act provides a
fee of $500.00 for the search of the national stage of each
international application (Section 803(c)(1) of Division B) and a fee
of $200.00 for the examination of the national stage of each
international application (35 U.S.C. 41(a)(3)(D)) during fiscal years
2005 and 2006.
35 U.S.C. 376 provides that: "[t]he Director may also refund any
part of the search fee, the national fee, the preliminary examination
fee and any additional fees, where he determines such refund to be
warranted.'' See 35 U.S.C. 376(b). Under the authority provided in 35
U.S.C. 376: (1) The Office will refund the entire search fee less
$100.00 ($50.00 for small entities) if the search fee as set forth in
Secs. 1.445(a)(2) and (a)(3) has been paid on the international
application to the United States Patent and Trademark Office as an
International Searching Authority for all of the claims presented in
the application entering the national stage; and (2) the Office will
refund $100.00 ($50.00 for small entities) if an international search
report on the international application has been prepared and is
provided to the Office no later than the time at which the search fee
is paid. In addition, under the authority provided in 35 U.S.C. 376,
the Office will refund the entire examination fee less $100.00 ($50.00
for small entities) if an international preliminary examination report
on the international application prepared by the United States
International Preliminary Examining Authority states that the criteria
of novelty, inventive step (non-obviousness), and industrial
applicability, as defined in PCT Article 33(1) to (4) have been
satisfied for all of the claims presented in the application entering
the national stage.
Discussion of Specific Rules
Title 37 of the Code of Federal Regulations, Part 1, is amended as
follows:
Section 1.492: Section 1.492(b) sets forth the search fees for an
international application entering the national stage under 35 U.S.C.
371. Section 1.492(b) is amended to provide that: (1) The search fee
for an international application entering the national stage under 35
U.S.C. 371 is $100.00 ($50.00 for a small entity) if the search fee as
set forth in Secs. 1.445(a)(2) and (a)(3) has been paid on the
international application to the United States Patent and Trademark
Office as an International Searching Authority for all of the claims
presented in the application entering the national stage; (2) the
search fee for an international application entering the national stage
under 35 U.S.C. 371 is $400.00 ($200.00 for a small entity) if an
international search report on the international application has been
prepared and is provided to the Office no later than the time at which
the search fee is paid; and (3) the search fee for an international
application entering the national stage under 35 U.S.C. 371 is $500.00
($250.00 for a small entity) in all other situations.
Section 1.492(c) sets forth the examination fee for an
international application entering the national stage under 35 U.S.C.
371. Section 1.492(c) is amended to provide that: (1) The examination
fee for an international application entering the national stage under
35 U.S.C. 371 is $100.00 ($50.00 for a small entity), if an
international preliminary examination report on the international
application prepared by the United States International Preliminary
Examining Authority states that the criteria of novelty, inventive step
(non-obviousness), and industrial
applicability, as defined in PCT Article 33(1) to (4), have been
satisfied for all of the claims presented in the application entering
the national stage; and (2) the examination fee for an international
application entering the national stage under 35 U.S.C. 371 is $200.00
($100.00 for a small entity) in all other situations.
Section 1.496: Section 1.496 is amended to revise its references to
Sec. 1.492 to reflect the changes in Sec. 1.492.
Rule Making Considerations
Administrative Procedure Act: Pursuant to its authority under 35
U.S.C. 376(b), the Office has reduced the patent fees set forth in
Sec. 1.492 to less than the amount specified in 35 U.S.C. 41. Existing
rights and obligations are not otherwise changed. The Office has good
cause to implement this fee reduction without prior notice and comment.
It is in the public interest to immediately implement the reduced
search and examination fees because delay in the adoption of these fee
reductions would cause harm to those applicants who currently meet the
conditions for entitlement to a fee reduction. Without immediate
implementation, applicants who are currently filing search and
examination fees in order to avoid abandonment of their applications
will be unnecessarily paying higher search and examination fees. The
Office believes the public wants these new reduced fees to become
effective as soon as possible as the public should benefit from the
efficiencies and savings resulting therefrom. In addition, the Office
believes that prior notice and comment is unnecessary because it does
not expect the public to object to the reduction of search and
examination fees. Moreover, the Office does not believe the public
needs time to conform its conduct so as to avoid violation of these
regulations. In order to give the public the immediate benefit of the
Office's decision to reduce specified search and examination fees, the
Office finds, pursuant to the authority provided at 5 U.S.C. 553(b)(B),
good cause to adopt this change without prior notice and an opportunity
for public comment, as such procedures are contrary to the public
interest. See Nat. Customs Brokers & Forwarders Ass'n v. U.S., 59 F.3d
1219, 1223-24 (Fed. Cir. 1995).
Nothing in this or any other law requires delayed implementation of
the fee reductions. 35 U.S.C. 41(g) provides that: "[n]o fee
established by the Director under [35 U.S.C. 41] shall take effect
until at least 30 days after notice of the fee has been published in
the Federal Register and in the Official Gazette of the Patent and
Trademark Office." Since the reduced search fees and examination fees
specified in Secs. 1.492(b) and (c) are established by the Office
on the basis of the Office's authority under 35 U.S.C. 376(b) (rather
than the authority in 35 U.S.C. 41), the thirty-day advance publication
requirement of 35 U.S.C. 41(g) does not apply to the reduced search
fees and examination fees specified in Sec. 1.492(b) and (c).
Accordingly, the changes in this interim 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 interim 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 collection of information involved in
this interim rule has been reviewed and previously approved by OMB
under the following control number: 0651-0021. The Office is not
resubmitting an information collection package to OMB for its review
and approval because the changes in this interim rule do not affect the
information collection requirements associated with the information
collection under this OMB control number.
Interested persons are requested to send comments regarding this
information collection, 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 in 37 CFR Part 1
Administrative practice and procedure, Courts, Freedom of
Information, Inventions and patents, Reporting and recordkeeping
requirements, Small businesses.
For the reasons set forth in the preamble, 37 CFR part 1 is amended as
follows:
PART 1 - RULES OF PRACTICE IN PATENT CASES
1. The authority citation for 37 CFR part 1 continues to read as
follows:
Authority: 35 U.S.C. 2(b)(2).
2. Section 1.492 is amended by revising paragraphs (b) and (c) to read
as follows:
Sec. 1.492 National stage fees.
* * * * *
(b) Search fee for an international application entering the
national stage under 35 U.S.C. 371 if the basic national fee was not
paid before December 8, 2004:
(1) If the search fee as set forth in Secs. 1.445(a)(2) has
been paid on the international application to the United States Patent
and Trademark Office as an International Searching Authority:
By a small entity (Sec. 1.27(a)).....$50.00
By other than a small entity..........$100.00
(2) If an international search report on the international
application has been prepared and is provided to the Office no later
than the time at which the search fee is paid:
By a small entity (Sec. 1.27(a)).....$200.00
By other than a small entity..........$400.00
(3) In all situations not provided for in paragraphs (b)(1) or
(b)(2) of this section:
By a small entity (Sec. 1.27(a)).....$250.00
By other than a small entity..........$500.00
(c) The examination fee for an international application entering
the national stage under 35 U.S.C. 371 if the basic national fee was
not paid before December 8, 2004:
(1) If an international preliminary examination report on the
international application prepared by the United States International
Preliminary Examining Authority states that the
criteria of novelty, inventive step (non-obviousness), and industrial
applicability, as defined in PCT Article 33(1) to (4) have been
satisfied for all of the claims presented in the application entering
the national stage:
By a small entity (Sec. 1.27(a)).....$50.00
By other than a small entity..........$100.00
(2) In all situations not provided for in paragraph (c)(1) of this
section:
By a small entity (Sec. 1.27(a)).....$100.00
By other than a small entity..........$200.00
* * * * *
3. Section 1.496 is amended by revising paragraph (b) to read as
follows:
Sec. 1.496 Examination of international applications in the national
stage.
* * * * *
(b) A national stage application filed under 35 U.S.C. 371 may have
paid therein the examination fee as set forth in Sec. 1.492(c)(1) if
it contains, or is amended to contain, at the time of entry into the
national stage, only claims which have been indicated in an
international preliminary examination report prepared by the United
States Patent and Trademark Office as satisfying the criteria of PCT
Article 33(1) through (4) as to novelty, inventive step and industrial
applicability. Such national stage applications in which the
examination fee as set forth in Sec. 1.492(c)(1) has been paid may be
amended subsequent to the date of entry into the national stage only to
the extent necessary to eliminate objections as to form or to cancel
rejected claims. Such national stage applications in which the
examination fee as set forth in Sec. 1.492(c)(1) has been paid will be
taken up out of order.
January 24, 2005 JON W. DUDAS
Under Secretary of Commerce for
Intellectual Property and Director of the
United States Patent and Trademark Office