Revision of Patent and Trademark Fees for Fiscal Year 2002

AGENCY:

United States Patent and Trademark Office, Commerce.

ACTION:

Notice of proposed rulemaking.

SUMMARY:

The United States Patent and Trademark Office (referred to as “we”, “us”, or “our” in this document) is proposing to adjust certain patent fee amounts and a trademark fee amount to reflect fluctuations in the Consumer Price Index (CPI). Also, we are proposing to adjust, by a corresponding amount, a few patent fees that track the affected fees. Our Director is authorized to adjust these fees annually by the CPI to recover the higher costs associated with doing business. In addition, we are proposing to change the maintenance fee correspondence address to better serve our customers, and amend a fee to reflect current business practice. These proposed amendments would keep our fees aligned with the CPI and streamline administrative matters.

DATES:

Comments must be submitted on or before June 12, 2001.

ADDRESSES:

Comments may be submitted by e-mail addressed to matthew.lee@uspto.gov. Comments may also be submitted by mail addressed to: Office of Finance, Crystal Park One, Suite 802, Washington, DC, 20231, or by fax to (703) 305-8007, marked to the attention of Matthew Lee.

FOR FURTHER INFORMATION CONTACT:

Matthew Lee by e-mail at matthew.lee@uspto.gov, by telephone at (703) 305-8051, or by fax at (703) 305-8007.

SUPPLEMENTARY INFORMATION:

This proposed rule would adjust our fees in accordance with the applicable provisions of title 35, United States Code, as amended by the Consolidated Appropriations Act, Fiscal Year 2000 (which incorporated the Intellectual Property and Communications Omnibus Reform Act of 1999) (Public Law 106-113); and section 1113 of title 15, United States Code. This proposed rule would also adjust, by a corresponding amount, a few patent fees (37 CFR 1.17(e), (r), (s), and (t)) that track statutory fees (either 37 CFR 1.16(a) or 1.17(m)).

In addition, this proposed rule would change the maintenance fee correspondence address. The address change for maintenance fee payments would benefit our customers by allowing the payments to be processed within 24 hours of receipt, rather than the current time frame of three to five days. Likewise, the funds would be deposited more quickly with the United States Treasury. The address change for other communications related to maintenance fees would permit us to respond in a timelier manner. Maintenance fee correspondence received at the Box M Fee” address would be forwarded to the appropriate address in § 1.1(d) for an indefinite period of time.

Background

Statutory Provisions

Patent fees are authorized by 35 U.S.C. 41 and 35 U.S.C. 376. For fees paid under 35 U.S.C. 41 (a) and (b), independent inventors, small business concerns, and nonprofit organizations who meet the requirements of 35 U.S.C. 41(h)(1) are entitled to a fifty-percent reduction.

Subsection 41(f) of title 35, United States Code, provides that fees established under 35 U.S.C. 41 (a) and (b) may be adjusted on October 1, 1992, and every year thereafter, to reflect fluctuations in the CPI over the previous twelve months.

Subsection 41(d) of title 35, United States Code, authorizes the Director to establish fees for all other processing, services, or materials related to patents to recover the average cost of providing these services or materials, except for the fees for recording a document affecting title, for each photocopy, for each black and white copy of a patent, and for library services.

Section 376 of title 35, United States Code, authorizes the Director to set fees for patent applications filed under the Patent Cooperation Treaty (PCT).

Subsection 41(g) of title 35, United States Code, provides that new fee amounts established by the Director under section 41 may take effect thirty days after notice in the Federal Register and the Official Gazette of the United States Patent and Trademark Office.

Section 1113 of title 15, United States Code, authorizes the Director to establish fees for the filing and processing of an application for the registration of a trademark or other mark, and for all other services and materials relating to trademarks and other marks.

Subsection 1113(a) of title 15, United States Code, allows trademark fees to be adjusted once each year to reflect, in the aggregate, any fluctuations during the preceding twelve months in the CPI.

Subsection 1113(a) also allows new trademark fee amounts to take effect thirty days after notice in the Federal Register and the Official Gazette of the United States Patent and Trademark Office.

Fee Adjustment Level

The patent statutory fees established by 35 U.S.C. 41 (a) and (b) are proposed to be adjusted on October 1, 2001, to reflect any fluctuations occurring during the previous twelve months in the Consumer Price Index for all urban consumers (CPI-U). In calculating these fluctuations, the Office of Management and Budget (OMB) has determined that we should use CPI-U data as determined by the Secretary of Labor. In accordance with previous fee-setting methodology, we use the Administration's projected CPI-U for the twelve-month period ending September 30, 2001, which is 3.6 percent. Based on this projection, patent statutory fees are proposed to be adjusted by 3.6 percent. Before the final fee amounts are published, the fees may be adjusted slightly based on updated data available from the Secretary of Labor.

Certain patent processing fees established under 35 U.S.C. 41(d), 119, 120, 132(b), 376, and Public Law 103-465 (the Uruguay Round Agreements Act) are proposed to be adjusted to reflect fluctuations in the CPI.

A trademark processing fee established under 15 U.S.C. 1113 is proposed to be adjusted to reflect fluctuations in the CPI.

The fee amounts were rounded by applying standard arithmetic rules so that the amounts rounded would be convenient to the user. Fees for other than a small entity of $100 or more were rounded to the nearest $10. Fees of less than $100 were rounded to an even number so that any comparable small entity fee would be a whole number.

General Procedures

Any fee amount that is paid on or after the effective date of the proposed fee increase would be subject to the new fees then in effect. The amount of the fee to be paid will be determined by the time of filing. The time of filing will be determined either according to the date of receipt in our office or the date reflected on a proper Certificate of Mailing or Transmission, where such a certificate is authorized under 37 CFR 1.8. Use of a Certificate of Mailing or Transmission is not authorized for items that are specifically excluded from the provisions of § 1.8. Items for which a Certificate of Mailing or Transmission under § 1.8 are not authorized include, for example, for filing of Continued Prosecution Applications (CPAs) under § 1.53(d) and other national and international applications for patents. See 37 CFR 1.8(a)(2).

Under 37 CFR 1.10(a), any correspondence delivered by the “Express Mail Post Office to Addressee” service of the United States Postal Service (USPS) is considered filed or received in our office on the date of deposit with the USPS. The date of deposit with the USPS is shown by the “date-in” on the “Express Mail” mailing label or other official USPS notation.

To ensure clarity in the implementation of the new fees, a discussion of specific sections is set forth below.

Discussion of Specific Rules

37 CFR 1.1 Addresses for Correspondence With the United States Patent and Trademark Office

Section 1.1, paragraphs (a) and (d), if revised as proposed, would change the maintenance fee correspondence address.

37 CFR 1.16 National Application Filing Fees

Section 1.16, paragraphs (a), (b), (d), (f) through (i), and (k), if revised as proposed, would adjust fees established therein to reflect fluctuations in the CPI.

37 CFR 1.17 Patent Application and Reexamination Processing Fees

Section 1.17, paragraphs (a)(2) through (a)(5), (b) through (e), (m), and (r) through (t), if revised as proposed, would adjust fees established therein to reflect fluctuations in the CPI.

37 CFR 1.18 Patent Post Allowance (Including Issue) Fees

Section 1.18, paragraphs (a) through (c), if revised as proposed, would adjust fees established therein to reflect fluctuations in the CPI.

37 CFR 1.20 Post Issuance Fees

Section 1.20, paragraphs (e) through (g), if revised as proposed, would adjust fees established therein to reflect fluctuations in the CPI.

37 CFR 1.21 Miscellaneous Fees and Charges

Section 1.21, paragraph (o), if revised as proposed, would be removed and reserved to reflect current business practice. We no longer use or provide access to the Automated Patent System.

37 CFR 1.492 National Stage Fees

Section 1.492, paragraphs (a)(1) through (a)(3), (a)(5), (b), and (d), if revised as proposed, would adjust fees established therein to reflect fluctuations in the CPI.

37 CFR 2.6 Trademark Fees

Section 2.6, paragraph (a)(1), if revised as proposed, would adjust the fee established therein to reflect fluctuations in the CPI.

Other Considerations

This proposed rule contains no information collection requirements within the meaning of the Paperwork Reduction Act of 1995, 44 U.S.C. 3501 et seq. This proposed rule has been determined to be not significant for purposes of Executive Order 12866. This proposed rule does not contain policies with Federalism implications sufficient to warrant preparation of a Federalism Assessment under Executive Order 13132 (August 4, 1999).

The Assistant General Counsel for Legislation and Regulation of the Department of Commerce has certified to the Chief Counsel for Advocacy, Small Business Administration, that the proposed rule change would not have a significant economic impact on a substantial number of small entities (Regulatory Flexibility Act, 5 U.S.C. 605(b)). The proposed rule change increases fees to reflect the change in the CPI as authorized by 35 U.S.C. 41(f). Further, the principal impact of the major patent fees has already been taken into account in 35 U.S.C. 41(h)(1), which provides small entities with a fifty-percent reduction in the major patent fees. The USPTO received approximately 92,000 patent applications last year from small entities. Since the average small entity fee would increase by less than $14.00, with a minimum increase of $2.00 and a maximum increase of $55.00, there will not be a significant economic impact on a substantial number of small entities due to this proposed rule change.

A comparison of existing and proposed fee amounts is included as an appendix to this notice of proposed rulemaking.

Lists of Subjects

37 CFR Part 1

• Administrative practice and procedure
• Inventions and patents
• Reporting and recordkeeping requirements
• Small businesses

37 CFR Part 2

• Administrative practice and procedure
• Courts
• Lawyers
• Trademarks

For the reasons set forth in the preamble, we are proposing to amend title 37 of the Code of Federal Regulations, Parts 1 and 2, as set forth below.

PART 1—RULES OF PRACTICE IN PATENT CASES

1. The authority citation for 37 CFR Part 1 would continue to read as follows:

Authority: 35 U.S.C. 2(b)(2), unless otherwise noted.

2. Section 1.1 is proposed to be amended by revising paragraphs (a) introductory text and (d) to read as follows:

PART 2—RULES OF PRACTICE IN TRADEMARK CASES

1. The authority citation for 37 CFR Part 2 would continue to read as follows:

Authority: 15 U.S.C. 1123; 35 U.S.C. 6, unless otherwise noted.

2. Section 2.6 is proposed to be amended by revising paragraph (a)(1) to read as follows: