[Federal Register Volume 77, Number 173 (Thursday, September 6, 2012)]
[Proposed Rules]
[Pages 55027-55085]
From the Federal Register Online via the Government Printing Office [www.gpo.gov]
[FR Doc No: 2012-21698]



[[Page 55027]]

Vol. 77

Thursday,

No. 173

September 6, 2012

Part III





Department of Commerce





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United States Patent and Trademark Office





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37 CFR Parts 1, 41, and 42





Setting and Adjusting Patent Fees; Proposed Rule

Federal Register / Vol. 77 , No. 173 / Thursday, September 6, 2012 / 
Proposed Rules

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DEPARTMENT OF COMMERCE

United States Patent and Trademark Office

37 CFR Parts 1, 41, and 42

[Docket No. PTO-C-2011-0008]
RIN 0651-AC54


Setting and Adjusting Patent Fees

AGENCY: United States Patent and Trademark Office, Department of 
Commerce.

ACTION: Notice of proposed rulemaking.

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SUMMARY: The United States Patent and Trademark Office (Office or 
USPTO) proposes to set or adjust patent fees as authorized by the 
Leahy-Smith America Invents Act (Act or AIA). The proposed fees will 
provide the Office with a sufficient amount of aggregate revenue to 
recover its aggregate cost of patent operations, while helping the 
Office implement a sustainable funding model, reduce the current patent 
application backlog, decrease patent pendency, improve patent quality, 
and upgrade the Office's patent business information technology (IT) 
capability and infrastructure. The Office also proposes to reduce fees 
for micro entities under section 10(b) of the Act (75 percent 
discount). The proposed fees also will further key policy 
considerations. For example, the proposal includes multipart and staged 
fees for requests for continued examination and appeals, both of which 
aim to increase patent prosecution options for applicants.

DATES: The Office solicits comments from the public on this proposed 
rulemaking. Written comments must be received on or before November 5, 
2012 to ensure consideration.

ADDRESSES: Comments should be sent by electronic mail message over the 
Internet addressed to: fee.setting@uspto.gov. Comments may also be 
submitted by postal mail addressed to: Mail Stop--Office of the Chief 
Financial Officer, Director of the United States Patent and Trademark 
Office, P.O. Box 1450, Alexandria, VA 22313-1450, marked to the 
attention of ``Michelle Picard.'' 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.
    Although comments may be submitted by postal mail, the Office 
prefers to receive comments by electronic mail message over the 
Internet, which allows the Office to more easily share comments with 
the public. Electronic comments are preferred to be submitted in plain 
text, but also may be submitted in ADOBE[supreg] portable document 
format or MICROSOFT WORD[supreg] format. Comments not submitted 
electronically should be submitted on paper in a format that 
facilitates convenient digital scanning into ADOBE[supreg] portable 
document format.
    The comments will be available for public inspection via the 
Office's Internet Web site (http://www.uspto.gov). Because comments 
will be made available for public inspection, information that the 
submitter does not desire to make public, such as an address or phone 
number, should not be included in the comments.

FOR FURTHER INFORMATION CONTACT: Michelle Picard, Office of the Chief 
Financial Officer, by telephone at (571) 272-6354; or Dianne Buie, 
Office of Planning and Budget, by telephone at (571) 272-6301.

SUPPLEMENTARY INFORMATION:

I. Executive Summary

A. Purpose of This Action

    The Office proposes these rules under section 10 of the Act 
(section 10), which authorizes the Director of the USPTO to set or 
adjust by rule any patent fee established, authorized, or charged under 
Title 35, United States Code (U.S.C.) for any services performed by, or 
materials furnished by, the Office. Section 10 prescribes that fees may 
be set or adjusted only to recover the aggregate estimated costs to the 
Office for processing, activities, services, and materials relating to 
patents, including administrative costs to the Office with respect to 
such patent operations. Section 10 authority includes flexibility to 
set individual fees in a way that furthers key policy considerations, 
while taking into account the cost of the respective services. Section 
10 also establishes certain procedural requirements for setting or 
adjusting fee regulations, such as public hearings and input from the 
Patent Public Advisory Committee and oversight by Congress.
    The fee schedule proposed under section 10 in this rulemaking will 
recover the aggregate estimated costs of the Office while achieving 
strategic and operational goals, such as implementing a sustainable 
funding model, reducing the current patent application backlog, 
decreasing patent pendency, improving patent quality, and upgrading the 
patent IT business capability and infrastructure.
    The United States economy depends on high quality and timely 
patents to protect new ideas and investments for business and job 
growth. The Office estimates that the additional aggregate revenue 
derived from the proposed fee schedule will enable a decrease in total 
patent pendency by 12 months for the five-year planning horizon (FY 
2013-FY 2017), thus permitting a patentee to obtain a patent sooner 
than he or she would have under the status quo fee schedule. The 
additional revenue from the proposed fee schedule will also recover the 
aggregate cost of building a three-month patent operating reserve by FY 
2017, thereby continuing to build a sustainable funding model that will 
aid the Office in maintaining shorter pendency and a smaller backlog.
    The proposed rule will also advance key policy considerations, 
while taking into account the cost of individual services. For example, 
the proposal includes multipart and staged fees for requests for 
continued examination and appeals, both of which aim to increase patent 
prosecution options for applicants. Also, this rule would include a new 
75 percent fee reduction for micro entities, and expand the 
availability of the 50 percent fee reduction for small entities as 
required under section 10, providing small entities a discount on more 
than 25 patent fees that do not currently qualify for a small entity 
discount. All in all, as a result of these proposed adjustments to 
patent fees, for all applicants the routine fees to obtain a patent 
(i.e., filing, search, examination, publication, and issue fees) will 
decrease by at least 22 percent relative to the current fee schedule.

B. Parallel Rulemaking

    January and February 2012 Proposed Rules. In January and February 
2012, the Office proposed rules setting fees for the new patent-related 
services authorized by the Act using its rulemaking authority under 35 
U.S.C. 41(d). The Office proposed those rules under section 41(d) 
because fees for the new patent-related services must be in place one 
year from the AIA's enactment (September 16, 2012) and because the 
Office would not finish with its section 10 rulemaking by that date.
    Unlike section 10 of the Act, section 41(d) of title 35 of the 
U.S.C. requires the Office to set fees for processing, services, or 
materials relating to patents at amounts to recover the estimated 
average cost to the Office of the particular processing, activity, 
service, or material per action (as opposed to the aggregate cost of 
all processing,

[[Page 55029]]

activities, services and material). 35 U.S.C. 41(d)(2). On January 5, 
2012 (77 FR 448), the Office proposed fees for filing third party 
submissions; on January 25, 2012 (77 FR 3666), the Office proposed fees 
for ex parte reexaminations and supplemental examinations; on February 
9, 2012 (77 FR 6879), the Office proposed fees for inter partes 
reviews, post-grant reviews, covered business method reviews, and 
derivation proceedings. Collectively, these rules are referred to 
herein as the ``January and February 2012 Proposed Rules.''
    The fees proposed in the January and February 2012 Proposed Rules 
are set to recover the Office's costs per action under section 41(d), 
as opposed to the Office's aggregate costs for all patent-related 
activities under section 10. The Office intends to finalize fees 
proposed in the January and February 2012 Proposed Rules within the 
coming months to meet its implementation obligations under the Act to 
institute certain new services. However, the Office anticipates that 
the fees in those final rules will only be needed on a temporary basis, 
from September 16, 2012, until this rulemaking becomes final. The 
instant notice of proposed rulemaking (NPRM) does not reopen the 
comment period for the January and February 2012 Proposed Rules. 
Rather, this NPRM establishes a different comment period for setting 
and adjusting fees under section 10. In sum, this parallel rulemaking 
is necessary so that the Office can comply with both the Act's one-year 
deadline for instituting certain new services, and commence the 
lengthier process under section 10 for setting or adjusting fees for 
all of the Office's patent processing, activities, services, and 
material. The Office provides additional information about the AIA 
implementation effort, including how the components of the AIA relate 
to one another, on its Web site, http://www.uspto.gov/aia_implementation/index.jsp.
    Proposed CPI Rule. Similarly, in a separate rulemaking, the USPTO 
proposed to adjust certain patent fee amounts to reflect fluctuations 
in the Consumer Price Index (CPI) under 35 U.S.C. 41(f). See 77 FR 8331 
(May 14, 2012). This increase in fees is necessary for the USPTO to 
reach its strategic goals within the time frame outlined in the USPTO 
FY 2013 President's Budget (Budget). The fee increase in the CPI 
rulemaking is planned as a bridge to provide resources until the 
instant section 10 rulemaking (this NPRM) becomes final (at which time 
the anticipated section 10 fees would supersede the fees in the CPI 
rulemaking). The proposed rule for the CPI adjustment sets forth 
particular fees to be adjusted and describes how the adjustment will be 
calculated based on the fluctuation in the CPI over the twelve months 
preceding the issuance of the final CPI rule. The aggregate revenue 
estimates presented in this section 10 proposed rule reflect an 
estimate of a CPI increase of 1.9 percent, which was the figure 
included in the Budget and the initial patent fee proposal delivered to 
the Patent Public Advisory Committee on February 7, 2012. The 
hypothetical fee rates based on this estimated CPI and used to estimate 
the aggregate revenue are included in the documents titled USPTO 
Section 10 Fee Setting--Aggregate Revenue Estimates at http://www.uspto.gov/aia_implementation/fees.jsp#heading-1. The USPTO 
aggregate revenue estimate will be updated in the section 10 final rule 
to reflect the actual CPI rates included in the CPI final rule. The 
individual fee amounts proposed in this rule are not dependent on the 
final CPI fee rates and may be considered independent of the CPI 
increase. Except as otherwise noted, the current fees (baseline or 
status quo) included herein for comparative purposes include the 
January and February 2012 Proposed Rule fee amounts (as adjusted by the 
final rule) but not estimated CPI fee amounts.
    The parallel rulemakings discussed in this section work in concert 
to meet the requirements of the AIA and secure the financial resources 
necessary to advance the Office's goals.

C. Summary of Provisions Impacted by This Action

    The Office proposes to set or adjust 352 patent fees--94 apply to 
large entities (any reference herein to ``large entity'' includes all 
entities other than small or micro entities), 94 to small entities, 93 
to micro entities, and 71 are not entity-specific. Of the 94 large 
entity fees, 66 are being adjusted, 19 are set at existing fee amounts, 
and 9 are newly proposed in this rule. Of the 94 small entity fees, 80 
are being adjusted, 5 are set at existing fee amounts, and 9 are newly 
proposed in this rule. There are 93 new micro entity fees being set at 
a reduction of 75 percent from the large entity fee amounts. Of the 71 
fees that are not entity-specific, 6 are either being adjusted or set 
as new fees in this rule and 65 are set at existing fee amounts.
    In all, the routine fees to obtain a patent (i.e., filing, search, 
examination, publication, and issue fees) will decrease by 22 percent 
under this NPRM relative to the current fee schedule. Also, despite 
increases in some fees, applicants who meet the new micro entity 
definition will pay less than the amount paid for small entity fees 
under the current fee schedule for 88 percent of the fees eligible for 
a discount under section 10(b). Additional information describing the 
adjustments is included in Part V: Individual Fee Rationale section of 
Supplementary Information in this rulemaking.

D. Summary of Costs and Benefits of This Action

    The Office prepared a Regulatory Impact Analysis (RIA) to analyze 
the costs and benefits of this NPRM over a five-year period. This 
analysis includes a comparison of the proposed fee schedule to the 
current fee schedule (baseline) (which is defined to include the 
January and February 2012 Proposed Rules fee amounts, as adjusted by 
the final rules) and to three other alternatives described in the RIA. 
The Office considered both monetized and qualitative costs and 
benefits. Monetized costs and benefits have effects that the Office can 
express in dollar values. Qualitative costs and benefits have effects 
that are difficult to express in either dollar or numerical values. The 
complete RIA is available for review at http://www.uspto.gov/aia_implementation/fees.jsp#heading-1.
    The RIA concluded that the proposed patent fee schedule has the 
largest net benefit. The incremental net monetized benefit to patent 
applicants, patent holders, other patent stakeholders, and society of 
the proposed fee schedule is nearly seven billion dollars (assuming a 7 
percent discount rate) for the five-year period. The most significant 
incremental benefit is the increase in the average value of a patent 
that stems from a decrease in patent application pendency (the time it 
takes to have a patent application examined). The Office estimates that 
total patent application pendency will decrease by 12 months during the 
time period of this analysis, thereby permitting a patentee to obtain a 
patent sooner than he or she would have under the Baseline (status quo 
fee schedule). The proposed fee schedule also has qualitative benefits 
including fee schedule design benefits and a decrease in uncertainty of 
patent rights, as discussed below. See Table 1.

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 Table 1--Proposed Patent Fee Schedule Costs and Benefits, Cumulative FY
                              2013-FY 2017
------------------------------------------------------------------------
                                                        Total
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  Monetized Costs and Benefits--3% Discount Rate (dollars in millions)
------------------------------------------------------------------------
Benefits:
    Increase in private patent value from a  $6,921
     decrease in pendency.
Costs:
    Cost of patent operations..............  ($765)
    Lost patent value from a decrease in     ($166)
     patent applications.
Net Benefit................................  $5,990
------------------------------------------------------------------------
  Monetized Costs and Benefits--7% Discount Rate (dollars in millions)
------------------------------------------------------------------------
Benefits:
    Increase in private patent value from a  $7,694
     decrease in pendency.
Costs:
    Cost of patent operations..............  ($682)
    Lost patent value from a decrease in     ($135)
     patent applications.
Net Benefit (Cost).........................  $6,877
------------------------------------------------------------------------
                     Qualitative Costs and Benefits
------------------------------------------------------------------------
Costs:
    No qualitative costs...................  n/a
Benefit:
    Fee Schedule Design Benefits             Moderate
     (Significant, Moderate, Not
     Significant).
    Decreased Uncertainty Effect             Significant
     (Significant, Moderate, Not
     Significant).
------------------------------------------------------------------------

    To estimate the monetized benefits of the proposed fee schedule, 
the Office considered how the value of a patent would increase under 
the proposed fee schedule. When patent application pendency decreases, 
a patentee holds the exclusive right to the invention sooner, which 
would increase the private value of that patent. Because the outcomes 
of this proposed rule would decrease patent pendency by 12 months 
during the time period of the analysis, the Office expects the private 
patent value will increase, relative to the baseline. This benefit 
helps to speed the commercialization of new technologies and the jobs 
they can create. See Table 1.
    The Office also estimated the incremental increase in the costs of 
its patent operations to determine the monetized costs of the proposed 
fee schedule. The most significant incremental costs of patent 
operations are (1) the increased patent examination capacity to work on 
the large backlog of patent applications in inventory, thus reducing 
patent application pendency; and (2) building a three-month patent 
operating reserve by FY 2017 to support a sustainable funding model. 
See Table 1.
    In addition, the Office expects that this proposed rule will result 
in a short-term reduction in patent applications filed due to the new 
pricing. The Office estimates that 1.3 percent fewer applications than 
the number estimated to be filed in the absence of a fee increase will 
be filed during FY 2013. The Office further estimates that 2.7 percent 
fewer patent applications will be filed during FY 2014 and 4.0 percent 
fewer patent applications beginning in FY 2015 as patent filers adjust 
to the new fees, specifically the increase in the total filing, search, 
and examination fees for most applicants. However, the Office estimates 
that patent application filings will return to the same growth rate 
anticipated in the absence of a fee increase beginning in FY 2016. 
Overall, the demand for patent application services is generally 
inelastic and the number of patent applications filed will continue to 
grow year-over-year. An estimate of the monetized cost to patent 
applicants, other patent stakeholders, and society associated with this 
reduction in patent applications filed was also subtracted from the 
benefit of the increased patent value when estimating the overall net 
benefit of the proposed fee schedule. See Table 1.
    When considering the qualitative benefits of the proposed fee 
schedule, the Office assessed the impact of the rule on two factors: 
fee schedule design and decreasing uncertainty. First, the design of 
the proposed fee schedule offers benefits relating to the three policy 
factors considered for setting individual fees as described in Part III 
of this NPRM, namely fostering innovation, facilitating the effective 
administration of the patent system; and offering patent prosecution 
options to applicants. By maintaining the current fee setting 
philosophy of keeping front-end fees below the cost of application 
processing and recovering revenue from back-end fees, the proposed fee 
schedule continues to foster innovation and ease access to the patent 
system. The fee schedule design continues to offer incentives and 
disincentives to engage in certain activities that facilitate the 
effective administration of the patent system and help reduce the 
amount of time it takes to have a patent application examined. For 
example, application size fees, extensions of time fees, and excess 
claims fees remain in place to facilitate the prompt conclusion of 
prosecution of an application. The proposal includes multipart and 
staged fees for requests for continued examination and appeals, both of 
which aim to increase patent prosecution options for applicants. 
Second, by decreasing pendency, this action provides the applicant and 
other potential innovators with greater certainty through clearly 
defined and an unambiguous scope of patent rights. This increase in 
certainty and clarity in patent rights has an overall positive impact 
on the freedom to innovate and the market for technology.
    The RIA found that the proposed fee schedule generates the largest 
net benefit based on the analysis of the costs and benefits of: (a) the 
proposed fee schedule; (b) the no-action alternative (baseline); and 
(c) the three other alternatives. Additional details describing the 
costs and benefits is available in the RIA at http://www.uspto.gov/aia_implementation/fees.jsp#heading-1.

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II. Legal Framework

A. Leahy-Smith America Invents Act--Section 10

    The Leahy-Smith America Invents Act was enacted into law on 
September 16, 2011. See Public Law 112-29, 125 Stat. 284. Section 10(a) 
of the Act authorizes the Director of the Office to set or adjust by 
rule any patent fee established, authorized, or charged under Title 35, 
U.S.C. for any services performed by, or materials furnished by, the 
Office. Fees under 35 U.S.C. may be set or adjusted only to recover the 
aggregate estimated cost to the Office for processing, activities, 
services, and materials related to patents, including administrative 
costs to the Office with respect to such patent operations. See 125 
Stat. at 316. Provided that the fees in the aggregate achieve overall 
aggregate cost recovery, the Director may set individual fees under 
section 10 at, below, or above their respective cost. Section 10(e) of 
the Act requires the Director to publish the final fee rule in the 
Federal Register and the Official Gazette of the Patent and Trademark 
Office at least 45 days before the final fees become effective. Section 
10(i) terminates the Director's authority to set or adjust any fee 
under section 10(a) upon the expiration of the seven-year period that 
began on September 16, 2011.

B. Small Entity Fee Reduction

    Section 10(b) of the AIA requires the Office to reduce by 50 
percent the fees for small entities that are set or adjusted under 
section 10(a) for filing, searching, examining, issuing, appealing, and 
maintaining patent applications and patents.

C. Micro Entity Fee Reduction

    Section 10(g) of the AIA amends Chapter 11 of Title 35, U.S.C. to 
add section 123 concerning micro entities. The Act provides that the 
Office must reduce by 75 percent the fees for micro entities for 
filing, searching, examining, issuing, appealing, and maintaining 
patent applications and patents. The implementing procedures for the 
provisions of 35 U.S.C. 123 are proposed in a separate rulemaking. See 
77 FR 31806 (May 30, 2012).

D. Patent Public Advisory Committee Role

    The Secretary of Commerce established the Patent Public Advisory 
Committee (PPAC) under the American Inventors Protection Act of 1999. 
35 U.S.C. 5. The PPAC advises the Under Secretary of Commerce for 
Intellectual Property and Director of the USPTO on the management, 
policies, goals, performance, budget, and user fees of patent 
operations.
    When adopting fees under section 10 of the Act, the Director must 
provide the PPAC with the proposed fees at least 45 days prior to 
publishing the proposed fees in the Federal Register. The PPAC then has 
at least 30 days within which to deliberate, consider, and comment on 
the proposal, as well as hold public hearing(s) on the proposed fees. 
The PPAC must make a written report available to the public of the 
comments, advice, and recommendations of the committee regarding the 
proposed fees before the Office issues any final fees. The Office will 
consider and analyze any comments, advice, or recommendations received 
from the PPAC before finally setting or adjusting fees.
    Consistent with this framework, on February 7, 2012, the Director 
notified the PPAC of the Office's intent to set or adjust patent fees 
and submitted a preliminary patent fee proposal with supporting 
materials. The preliminary patent fee proposal and associated materials 
are available at http://www.uspto.gov/about/advisory/ppac/. The PPAC 
held two public hearings: one in Alexandria, Virginia, on February 15, 
2012; and another in Sunnyvale, California, on February 23, 2012. 
Transcripts of these hearings and comments submitted to the PPAC in 
writing are available for review at http://www.uspto.gov/about/advisory/ppac/. The PPAC is considering public comments from these 
hearings and will make available to the public a written report setting 
forth in detail the comments, advice, and recommendations of the 
committee regarding the preliminary proposed fees. The PPAC is 
scheduled to release its report no later than August 2012. The Office 
will consider and analyze any comments, advice, or recommendations 
received from the PPAC before publishing a final rule.

III. Rulemaking Goals and Strategies

    Consistent with the Office's goals and obligations under the AIA, 
the overall strategy of this rulemaking is to ensure the fee schedule 
generates sufficient revenue to recover aggregate costs. Another 
strategy is to set individual fees to further key policy considerations 
while taking into account the cost of the particular service. As to the 
strategy of balancing aggregate revenue and aggregate cost, this rule 
will provide sufficient revenue to implement two significant USPTO 
goals: (1) Implement a sustainable funding model for operations; and 
(2) optimize patent timeliness and quality. As to the strategy of 
setting individual fees to further key policy considerations, the 
policy factors contemplated are: (1) Fostering innovation; (2) 
facilitating effective administration of the patent system; and (3) 
offering patent prosecution options to applicants.
    These fee schedule goals and strategies are consistent with 
strategic goals and objectives detailed in the USPTO 2010-2015 
Strategic Plan (Strategic Plan) that is available at http://www.uspto.gov/about/stratplan/USPTO_2010-2015_Strategic_Plan.pdf, as 
amended by Appendix 1 of the Budget, available at http://www.uspto.gov/about/stratplan/budget/fy13pbr.pdf) (collectively 
referred to herein as ``Strategic Goals''). The Strategic Plan defines 
the USPTO's missions and long-term goals and presents the actions the 
Office will take to realize those goals. The significant actions the 
Office describes in the Strategic Plan that are specific to the goals 
of this rulemaking are implementing a sustainable funding model, 
reducing the patent application backlog and pendency, and improving 
patent quality and IT.
    Likewise, the fee schedule goals and strategies also support the 
Strategy for American Innovation--an Administration initiative first 
released in September 2009 and updated in February 2011 that is 
available at http://www.whitehouse.gov/innovation/strategy. The 
Strategy for American Innovation recognizes innovation as the 
foundation of American economic growth and national competitiveness. 
Economic growth in advanced economies like the United States' is driven 
by creating new and better ways of producing goods and services, a 
process that triggers new and productive investments, which is the 
cornerstone of economic growth. Achieving the Strategy for American 
Innovation depends, in part, on the USPTO's success in reducing the 
patent application backlog (the number of applications awaiting 
examiner action) and pendency (the time it takes to have a patent 
application examined)--both of which stall the delivery of innovative 
goods and services to market and impede economic growth and the 
creation of high-paying jobs. This rule positions the USPTO to reduce 
the backlog and pendency.

A. Ensure the Overall Fee Schedule Generates Sufficient Revenue to 
Recover Aggregate Cost

    The first fee setting strategy is to ensure that the fee schedule 
generates sufficient multi-year aggregate revenue to recover the 
aggregate cost to maintain

[[Page 55032]]

USPTO operations and accomplish USPTO strategic goals. Two overriding 
principles, found in the Strategic Plan, motivate the Office here: (1) 
Operating within a more sustainable funding model than in the past to 
avoid disruptions caused by fluctuations in the economy; and (2) 
accomplishing strategic goals, including the imperatives of reducing 
the patent application backlog and pendency. Each principle is 
discussed in greater detail below.
1. Implement a Sustainable Funding Model for Operations
    As explained in the Strategic Plan, the Office's objective of 
implementing a sustainable funding model for operations will facilitate 
USPTO's long-term operational and financial planning and enable the 
Office to adapt to changes in the economy and in operational workload.
    Since 1982, patent fees that generate most of the patent revenue 
(e.g., filing, search, examination, issue, and maintenance fees) have 
been set by statute, and the Office could adjust these fees only to 
reflect changes in the CPI for All Urban Consumers, as determined by 
the Secretary of Labor. Because these fees were set by statute, the 
USPTO could not realign or adjust them to quickly and effectively 
respond to market demand or changes in processing costs other than for 
the CPI. Over the years, these constraints led to funding variations 
and shortfalls. Section 10 of the AIA changed this fee adjustment model 
and authorizes the USPTO to set or adjust patent fees within the 
regulatory process so that the Office will be better able to respond to 
its rapidly growing workload.
    The Budget delineates the annual plans and prospective aggregate 
costs to execute the initiatives in the Strategic Plan. One of these 
costs is the creation of a three-month patent operating reserve to 
allow effective management of the U.S. patent system and responsiveness 
to changes in the economy, unanticipated production workload, and 
revenue changes, while maintaining operations and effectuating long-
term strategies. The Office evaluated the optimal size of the operating 
reserve by examining specific risk factors. There are two main factors 
that create a risk of volatility in patent operations--spending levels 
and revenue streams. After reviewing other organizations' operating 
reserves, the Office found that a fully fee-funded organization such as 
the USPTO should maintain a minimum of a three-month operating reserve. 
The fees proposed here will gradually build the three-month operating 
reserve. The USPTO will assess the patent operating reserve balance 
against its target balance annually and, at least every two years, will 
evaluate whether the target balance continues to be sufficient to 
provide the stability in funding needed by the Office. If the proposed 
fee structure is implemented, then the USPTO anticipates that the 
three-month patent operating reserve would be achieved in FY 2017.
    The proposed fees will provide the USPTO with sufficient aggregate 
revenue to recover the aggregate cost to operate the Office while 
improving the patent system. During FY 2013, patent operations will 
cost $2.604 billion (including an offset to spending from other income 
of $18 million and a deposit in the operating reserve of $73 million). 
The proposed fee schedule should generate $2.604 billion in aggregate 
revenue to offset these costs. Once the Office transitions to the 
proposed fee levels, it estimates an additional $11.8 billion in 
aggregate revenue will be generated from FY 2014 through FY 2017 to 
recover the total aggregate cost over the same time period--$11.2 
billion in operating costs and $0.6 billion in a three-month operating 
reserve. (See Table 3 in Part IV, Step 2 of this NPRM.)
    Under the new fee structure, as in the past, the Office will 
continue to regularly review its operating budgets and long-range plans 
to ensure the USPTO uses patent fees prudently.
2. Optimize Patent Quality and Timeliness
    The Office developed the strategic goal of optimizing patent 
quality and timeliness in response to intellectual property (IP) 
community feedback, the Strategy for American Innovation, and in 
recognition that a sound, efficient, and effective IP system is 
essential for technological innovation and for patent holders to reap 
the benefits of patent protection.
    Over the past several years, a steady increase in incoming patent 
applications and insufficient patent examiner hiring due to multi-year 
funding shortfalls has led to a large patent application backlog (the 
number of applications awaiting examiner action) and a long patent 
application pendency (the time it takes to have a patent application 
examined). Reducing pendency increases the private value of a patent 
because the more quickly a patent is granted, the more quickly the 
holder can commercialize the innovation. Shorter pendency also allows 
for earlier disclosure of the scope of the patent, which reduces 
uncertainty for the patentee, potential competitors, and additional 
innovators regarding patent rights and the validity of the patentees' 
claims.
    To reduce the backlog and pendency, the USPTO must examine 
significantly more patent applications than it receives each year for 
the next several years. Bringing the applications in the backlog down 
to a manageable level, while at the same time keeping pace with the new 
patent applications expected to be filed each year, will require that 
the Office collect more aggregate revenue than it estimates that it 
will collect at existing fee rates. The Office needs this additional 
revenue to hire additional patent examiners, improve the patent 
business IT capability and infrastructure, and implement other programs 
to optimize the timeliness of patent examination. This proposed 
rulemaking will result in an average first action patent pendency of 10 
months in FY 2015, an average total pendency of 20 months in FY 2016, 
and a reduced patent application backlog and inventory of approximately 
350,000 patent applications by FY 2015. This would be a significant 
improvement over the 22.6 months and 34.1 months for average first 
action patent pendency and average total pendency, respectively, as of 
March 2012. Under this proposed rule, the patent application backlog is 
also expected to decrease significantly from the 644,775 applications 
in inventory as of March 2012.
    In addition to timeliness of patent protection, the quality of 
application review is critical to ensure the value of an issued patent. 
Quality issuance of patents provides certainty in the market and allows 
businesses and innovators to make informed and timely decisions on 
product and service development. Under the proposed action, the Office 
will continue to improve patent quality through comprehensive training 
for new and experienced examiners, an expanded and enhanced ombudsmen 
program to help resolve questions about applications, improved hiring 
processes, and guidelines for examiners to address clarity issues in 
patent applications--all actions intended to place quality at the top 
of USPTO's priorities. The Office will continue to encourage interviews 
to help clarify allowable subject matter early in the examination 
process, and to encourage interviews later in prosecution to resolve 
outstanding issues. The Office will also continue to reengineer the 
examination process, and to monitor and measure examination using a 
comprehensive set of metrics that analyze the quality of the entire 
process.

[[Page 55033]]

    In addition to direct improvements to patent quality and 
timeliness, the USPTO's development and implementation of the patent 
end-to-end processing system using the revenue generated from the 
proposed fee structure will also improve the efficiency of the patent 
system. The IT architecture and systems in place currently are obsolete 
and difficult to maintain, leaving the USPTO highly vulnerable to 
disruptions in patent operations. Additionally, the current IT systems 
require patent employees and external stakeholders to perform labor-
intensive business processes manually, decreasing the efficiency of the 
patent system. This proposed rule provides the Office with sufficient 
revenue to modernize its IT systems so that the majority of 
applications are submitted, handled, and prosecuted electronically. 
Improved automation will benefit both the Office and innovation 
community.

B. Set Individual Fees to Further Key Policy Considerations, While 
Taking Into Account the Costs of the Particular Service

    The second fee setting strategy is to set individual fees to 
further key policy considerations, while taking into account the cost 
of the associated service or activity. The proposed fee schedule 
recovers the aggregate cost to the Office, while also considering the 
individual cost of each service provided. This includes consideration 
that some applicants may use particular services in a much more costly 
manner than other applicants (e.g., patent applications cost more to 
process when more claims are filed). The proposed fee schedule 
considers three key policy factors: (1) Fostering innovation; (2) 
facilitating effective administration of the patent system; and (3) 
offering patent prosecution options to applicants. The Office is 
focusing on these policy factors because each promotes particular 
aspects of the U.S. patent system. Fostering innovation is an important 
policy factor to ensure that access to the U.S. patent system is 
without significant barriers to entry and innovation is incentivized by 
granting inventors certain short-term exclusive rights to stimulate 
additional inventive activity. Facilitating effective administration of 
the patent system is important to influence efficient patent 
prosecution, resulting in compact prosecution and reduction in the time 
it takes to obtain a patent. In addition, the Office recognizes that 
patent prosecution is not a one-size-fits-all process and therefore, 
where feasible, the Office endeavors to fulfill its third policy factor 
of offering patent prosecution options to applicants. Each of these 
policy factors is discussed in greater detail below.
1. Fostering Innovation
    To encourage innovators to take advantage of patent protection, the 
Office proposes to set basic ``front-end'' fees (e.g., filing, search, 
and examination) below the actual cost of carrying out these 
activities. Likewise, consistent with the requirements in the Act, the 
Office proposes providing fee reductions for small and micro entity 
innovators to facilitate access to the patent system. Setting front-end 
and small and micro entity fees below cost requires, however, that 
other fees be set above cost. To that end, the Office proposes to set 
basic ``back-end'' fees (e.g., issue and maintenance) in excess of 
costs to recoup revenue not collected by front-end and small and micro 
entity fees. Charging higher back-end fees also fosters innovation and 
benefits the overall patent system when patent owners more closely 
assess the expected value of an existing patent over its life, and 
determine whether to pay maintenance fees to keep the patent in force. 
Expiration of a patent makes the subject matter of the patent available 
in the public domain for subsequent commercialization. Determining the 
appropriate balance between front-end and back-end fees is a critical 
component of aligning the Office's costs and revenues.
2. Facilitating Effective Administration of the Patent System
    The proposed fee structure helps facilitate effective 
administration of the patent system by encouraging applicants or patent 
holders to engage in certain activities that facilitate an effective 
patent system. In particular, setting fees at the particular levels 
proposed here will: (1) Encourage the submission of applications or 
other actions that enable examiners to provide prompt, quality interim 
and final decisions; (2) encourage the prompt conclusion of prosecution 
of an application, which results in pendency reduction, faster 
dissemination of information, and certainty in patented inventions; and 
(3) help recover the additional costs imposed by some applicants' more 
intensive use of certain services that strain the patent system.
3. Offering Patent Prosecution Options to Applicants
    The proposed fee schedule also provides applicants with flexible 
and cost-effective options for seeking patent protection. For example, 
in September 2011, the Office implemented prioritized examination for 
utility and plant applications, as specified in provisions of section 
11(h) of the Act, to offer applicants the choice of a fast track 
examination for an additional fee. (See Changes To Implement the 
Prioritized Examination Track (Track I) of the Enhanced Examination 
Timing Control Procedures, 76 FR 6369 (Feb. 4, 2011)). In this proposed 
rule, the Office proposes multipart and staged fees for requests for 
continued examination (RCE) and appeals. The Office proposes to set the 
RCE fee in two parts. The first RCE fee would be set below cost to 
facilitate access to the service and in recognition that most 
applicants using RCEs only require one per application. The fee for the 
second and subsequent requests would be set at cost recovery as an 
option for those who require multiple RCEs. Likewise, the staging of 
appeal fees allows applicants to pay less in situations when an 
application is either allowed or reopened before being forwarded to the 
Board of Patent Appeals and Interferences (BPAI) (to become the Patent 
Trial and Appeal Board (PTAB) on September 16, 2012). This patent 
prosecution option allows applicants to make critical decisions at 
multiple points in the patent prosecution process.
Summary of Rationale and Purpose of the Proposed Rulemaking
    The patent fee schedule proposed here will produce aggregate 
revenues to recover the aggregate costs of the USPTO, including for its 
management of strategic goals, objectives, and initiatives in FY 2013 
and beyond. Using the two Strategic Plan goals (implementing a 
sustainable funding model for operations and optimizing patent quality 
and timeliness) as a foundation, the proposed rule would provide 
sufficient aggregate revenue to recover the aggregate cost of patent 
operations, including implementing a sustainable funding model, 
reducing the current patent application backlog, decreasing patent 
pendency, improving patent quality, and upgrading the patent business 
IT capability and infrastructure. Additionally, in this rule, the 
Office considers each individual fee by evaluating its historical cost 
and considering the policy factors of fostering innovation, 
facilitating the effective administration of the patent system, and 
offering patent prosecution options to applicants.

IV. Fee Setting Methodology

    There are three primary steps involved in developing the proposed 
fees:

[[Page 55034]]

    Step 1: Determine the prospective aggregate costs of patent 
operations over the five-year period, including the cost of 
implementing new initiatives to achieve strategic goals and objectives.
    Step 2: Calculate the prospective revenue streams derived from the 
individual fee amounts (from Step 3) that will collectively recover the 
prospective aggregate cost over the five-year period.
    Step 3: Set or adjust individual fee amounts to collectively 
(through executing Step 2) recover projected aggregate cost over the 
five-year period, while furthering key policy considerations.
    These three steps are iterative and interrelated. Following is a 
description of how the USPTO carries out these three steps.

Step 1: Determine Prospective Aggregate Costs

    Calculating aggregate costs is accomplished primarily through the 
routine USPTO budget formulation process. The Budget is a five-year 
plan (that the Office prepares annually) for carrying out base programs 
and implementing the strategic goals and objectives. The first activity 
performed to determine prospective aggregate cost is to project the 
level of demand for patent products and services. Demand for products 
and services depends on many factors, including domestic and global 
economic activity. The USPTO also takes into account overseas patenting 
activities, policies and legislation, and known process efficiencies. 
Because examination costs are 70 percent of the total patent operating 
cost, a primary production workload driver is the number of patent 
application filings (i.e., incoming work to the Office). The Office 
looks at indicators such as the expected growth in Real Gross Domestic 
Product (RGDP), the leading indicator to incoming patent applications, 
to estimate prospective workload. RGDP is reported by the Bureau of 
Economic Analysis (www.bea.gov), and is forecasted each February by the 
Office of Management and Budget (OMB) (www.omb.gov) in the Economic and 
Budget Analyses section of the Analytical Perspectives, and each 
January by the Congressional Budget Office (CBO) (www.cbo.gov) in the 
Budget and Economic Outlook. A description of the Office's methodology 
for using RGDP can be found at pages 36 and 37 of the Budget. The 
expected change in the required production workload must then be 
compared to the current examination production capacity to determine 
any required staffing and operating cost (e.g., salaries, workload 
processing contracts, and printing) adjustments. The Office uses a 
patent pendency model that estimates patent production output based on 
actual historical data and input assumptions, such as incoming patent 
applications and overtime hours. An overview of the model, including a 
description of inputs, outputs, key data relationships, and a 
simulation tool is available at http://www.uspto.gov/patents/stats/patent_pend_model.jsp.
    The second activity is to calculate the aggregate costs to execute 
the requirements. In developing its Budget, the Office first looks at 
the cost of status quo operations (the base requirements). The base 
requirements are adjusted for anticipated pay raises and inflationary 
increases for the periods FY 2013-FY 2017 (detailed calculations and 
assumptions for this adjustment to base are available in Exhibit 8 and 
Exhibit 9 of the Budget). The Office then estimates the prospective 
cost for expected changes in production workload and new initiatives 
over the same period of time (refer to ``Program Changes by Sub-
Activity'' sections of the Budget). The Office reduces cost estimates 
for completed initiatives and known cost savings expected over the same 
five-year horizon (see page 9 of the Budget). Finally, the Office 
estimates its three-month target operating reserve level based on this 
aggregate cost calculation for year to determine if operating reserve 
adjustments are necessary.
    The Budget identifies that during FY 2013, patent operations will 
cost $2.549 billion (see page 31 of the Budget), including $1.733 
billion for patent examination activities; $362 million for IT systems, 
support, and infrastructure contributing to patent operations; $61 
million for activities related to patent appeals and the new AIA inter 
partes dispute actions; $30 million for activities related to IP 
protection, policy, and enforcement; and $363 million for general 
support costs necessary for patent operations (e.g., rent, utilities, 
legal, financial, human resources, and other administrative services). 
In addition, the Office estimates collecting $18 million in other 
income associated with reimbursable agreements (offsets to spending) 
and depositing $73 million during FY 2013 toward the cost of building 
the patent operating reserve to sustain operations. The operating 
reserve estimate in this NPRM is different than the estimate included 
in the Budget. The estimate included in the Budget is consistent with 
the estimate included in the initial proposal to PPAC on February 7, 
2012, and has been reduced in this NPRM in response to public feedback 
provided to the PPAC. A detailed description of the operating 
requirements and related aggregate cost is located in the Budget. Table 
2 below provides key underlying production workload projections and 
assumptions from the Budget used to calculate aggregate cost. Table 3 
presents the total budgetary requirements (prospective aggregate cost) 
for FY 2013 through FY 2017.

                        Table 2--Patent Production Workload Projections--FY 2013-FY 2017
----------------------------------------------------------------------------------------------------------------
   Utility, plant, and reissue
              (UPR)                   FY 2013         FY 2014         FY 2015         FY 2016         FY 2017
----------------------------------------------------------------------------------------------------------------
Applications*...................         565,300         599,200         632,200         666,900         700,300
Growth Rate**...................            6.0%            6.0%            5.5%            5.5%            5.0%
Production Units................         620,600         671,900         694,200         645,200         656,200
End of Year Backlog.............         529,100         421,600         329,500         328,400         358,000
Examination Capacity**..........           8,700           8,600           8,300           8,300           8,200
Performance Measures (UPR)......  ..............  ..............  ..............  ..............  ..............
Avg. First Action Pendency                  16.9            15.9            10.1             9.4             9.4
 (Months).......................
Avg. Total Pendency (Months)....            30.1            24.6            22.9            18.3            18.1
----------------------------------------------------------------------------------------------------------------
* In this table, the patent application filing data includes requests for continued examination (RCEs).
** In this table, demand for patent examination services, which is used to calculate aggregate cost in the FY
  2013 President's Budget, is not adjusted for price elasticity.


[[Page 55035]]


                                 Table 3--Estimated Annual Aggregate Costs and Proposed Fee Schedule Aggregate Revenues
--------------------------------------------------------------------------------------------------------------------------------------------------------
                                                                                               (Dollars in millions)
                                                         -----------------------------------------------------------------------------------------------
                                                              FY 2012         FY 2013         FY 2014         FY 2015         FY 2016         FY 2017
--------------------------------------------------------------------------------------------------------------------------------------------------------
Aggregate Cost Estimate
Planned Operating Requirements..........................  ..............          $2,549          $2,702          $2,809          $2,846          $2,945
    Less Other Income\*\................................  ..............            (18)            (18)            (18)            (18)            (18)
Net Operating Requirements..............................  ..............           2,531           2,684           2,791           2,828           2,927
Planned Deposit in Operating Reserve....................  ..............              73             200             143             125              95
    Total Aggregate Cost Estimate.......................  ..............           2,604           2,884           2,934           2,953           3,022
Aggregate Revenue Estimate\**\..........................  ..............           2,604           2,884           2,934           2,953           3,022
Cumulative Operating Reserve Balance
Target Operating Reserve................................  ..............             637             676             702             712             736
Operating Reserve Ending Balance........................            $121             194             394             537             662             757
Over/(Under) Target Balance.............................  ..............           (443)           (282)           (165)            (50)              21
--------------------------------------------------------------------------------------------------------------------------------------------------------
* The Office collects other income associated with reimbursable agreements (offsets to spending) and recoveries of funds obligated in prior years in the
  amount of approximately $18 million each year.
** The proposed fee schedule will generate less revenue compared to the FY 2013 President's Budget in an effort to slow the growth of the operating
  reserve over the next five years.

Step 2: Calculate Prospective Aggregate Revenue

    As described in ``Step 1,'' the USPTO's FY 2013 requirements-based 
budget includes the aggregate prospective cost of planned production, 
new initiatives, and an operating reserve required for the Office to 
realize its strategic goals and objectives for the next five years. The 
aggregate prospective cost becomes the target aggregate revenue level 
that the new fee schedule must generate in a given year and over the 
five-year planning horizon. To calculate the aggregate revenue 
estimates, the Office first analyzes relevant factors and indicators to 
calculate or determine prospective fee workload (e.g., number of 
applications and requests for services and products), growth, and 
resulting fee workload volumes (quantities) for the five-year planning 
horizon. Economic activity is an important consideration when 
developing workload and revenue forecasts for the USPTO's products and 
services because economic conditions affect patenting activity, as most 
recently exhibited in the recession of 2009 when incoming workloads and 
renewal rates declined.
    The Office considers economic activity when developing fee 
workloads and aggregate revenue forecasts for its products and 
services. Major economic indicators include the overall condition of 
the U.S. and global economies, spending on research and development 
activities, and investments that lead to the commercialization of new 
products and services. The most relevant economic indicator that the 
Office uses is the RGDP, which is the broadest measure of economic 
activity and is anticipated to grow approximately three percent for FY 
2013 based on OMB and CBO estimates.
    These indicators correlate with patent application filings, which 
are a key driver of patent fees. Economic indicators also provide 
insight into market conditions and the management of IP portfolios, 
which influence application processing requests and post-issuance 
decisions to maintain patent protection. When developing fee workload 
forecasts, the Office considers other influential factors including 
overseas activity, policies and legislation, process efficiencies, and 
anticipated applicant behavior.
    Anticipated applicant behavior in response to fee changes is 
measured using an economic principle known as elasticity, which for the 
purpose of this action means how sensitive applicants and patentees are 
to fee amounts or price changes. If elasticity is low enough (i.e., 
demand is inelastic), when fees increase, patent activities will 
decrease only slightly in response thereto, and overall revenues will 
still increase. Conversely, if elasticity is high enough (i.e., demand 
is elastic), when fees increase, patenting activities will decrease 
significantly enough in response thereto such that overall revenues 
will decrease. When developing fee forecasts, the Office accounts for 
how applicant behavior will change at different fee amounts projected 
for the various patent services. Additional detail about the Office's 
elasticity estimates is available in ``USPTO Section 10 Fee Setting--
Description of Elasticity Estimates,'' at http://www.uspto.gov/aia_implementation/fees.jsp. Some of the information on which the Office 
based its elasticity estimates are copyrighted materials and are 
available for inspection at the USPTO.
Micro Entity Applicants
    The introduction of a new class of applicants, called micro 
entities, requires a change to aggregate revenue estimations, and the 
Office has refined its workload and fee collection estimates to include 
this new applicant class. See 35 U.S.C. 123; see also Changes to 
Implement Micro Entity Status for Paying Patent Fees, 77 FR 31806 (May 
30, 2012) . 35 U.S.C. 123, which sets forth how an applicant can claim 
the micro entity discount, provides two bases under which an applicant 
may establish micro entity status.
    First, section 123(a) provides that the term ``micro entity'' means 
an applicant who makes a certification that the applicant: (1) 
Qualifies as a small entity as defined in 37 CFR 1.27; (2) has not been 
named as an inventor on more than four previously filed patent 
applications, other than applications filed in another country, 
provisional applications under 35 U.S.C. 111(b), or international 
applications for which the basic national fee under 35 U.S.C. 41(a) was 
not paid; (3) did not, in the calendar year preceding the calendar year 
in which the applicable fee is being paid, have a gross income 
exceeding three times the median household income for that preceding 
calendar year; and (4) has not assigned, granted, or conveyed, and is 
not under an obligation by contract or law to assign, grant, or convey, 
a license or other ownership interest in the application concerned to 
an entity that had a gross income exceeding the income limit described 
in (3).
    Second, 35 U.S.C. 123(d) provides that a micro entity shall also 
include an applicant who certifies that: (1) The applicant's employer, 
from which the applicant obtains the majority of the

[[Page 55036]]

applicant's income, is an institution of higher education as defined in 
section 101(a) of the Higher Education Act of 1965 (20 U.S.C. 1001(a)); 
or (2) the applicant has assigned, granted, conveyed, or is under an 
obligation by contract or law, to assign, grant, or convey, a license 
or other ownership interest in the particular applications to such an 
institution of higher education.
    The Office estimates that when micro entity discounts on patent 
fees are available, 31 percent of small entity applications will be 
micro entity applications, under the criteria set forth in section 
123(a) and (d). In making this estimate, the Office considered several 
factors, including historical data on patents granted. The Office began 
with patent grant data, because the best available biographic data on 
applicant type (e.g., independent inventor and domestic universities) 
comes from patent grant data in the Office's database.
    The Office first estimated the number of individuals who were 
granted patents in FY 2011. There were 221,350 utility patents granted 
in FY 2011 as reported in the FY 2011 USPTO Performance and 
Accountability Report (PAR). The PAR is available for review at http://www.uspto.gov/about/stratplan/ar/2011/index.jsp. The Office's Patent 
Technology Monitoring Team (PTMT) provides data showing the split 
between domestic and foreign patent grants. (It should be noted that 
PTMT's data is based on the calendar year not the fiscal year.) PTMT's 
data is available at http://www.uspto.gov/web/offices/ac/ido/oeip/taf/all_tech.htm#PartA1_1b. From this data, the Office found that 5.0 
percent of utility patents granted in FY 2011 were granted to 
individuals in the U.S. and 1.9 percent were granted to individuals 
from other countries, where the individuals were not listed in the 
USPTO database as associated with a company. These individuals would 
likely meet the criteria under section 123(a)(1) (small entity status). 
Using this information, the Office estimates that individuals in the 
U.S. received 11,068 utility patents (221,350 times 5.0 percent) in FY 
2011, and that individuals from other countries received 4,206 utility 
patents (221,350 times 1.9 percent). In total, the Office estimates 
that 15,274 (11,068 plus 4,206) patents were granted to individuals in 
FY 2011.
    Concerning the application threshold in 35 U.S.C. 123(a)(2), the 
Office's Patent Application Locating and Monitoring (PALM) database 
reports that 62 percent of both foreign and domestic small entity 
applicants filed fewer than 5 applications in FY 2009. As stated above, 
an estimated 15,274 patent grants were to individuals both domestic 
(11,068) and foreign (4,206). Using this information, the Office 
estimates that 6,862 (11,068 times 62 percent) patents will be granted 
to domestic applicants who meet the thresholds for micro entity status 
set forth in sections 123(a)(1) and 123(a)(2), while 2,608 (4,206 times 
62 percent) patents will be granted to foreign applicants who meet the 
same thresholds.
    Concerning the income threshold in 35 U.S.C. 123(a)(3), the median 
household income for calendar year (CY) 2010 (the year most recently 
reported by the Bureau of the Census) was $49,445. See Income, Poverty, 
and Health Insurance Coverage in the United States: 2010, at 5 and 33 
(Table A-1) (Sept. 2011) available at http://www.census.gov/prod/2011pubs/p60-239.pdf. (The Office will indicate conspicuously on its 
Web site the median household income reported by the Bureau of the 
Census and the income level that is three times the median household 
income for the calendar year most recently reported.) Thus, the income 
level specified in 35 U.S.C. 1.29(a)(3) and (a)(4) (three times the 
median household income) is $148,335.
    The Internal Revenue Service (IRS) records show that in 2009 about 
97 percent of individuals (as proxied by the total number of IRS form 
filings) reported adjusted gross income of less than $200,000, and 
about 87 percent of individuals reported adjusted gross income of less 
than $100,000. See Table 1.1 at: http://www.irs.gov/taxstats/indtaxstats/article/0,,id=96981,00.html. Using this information, the 
Office estimates that 6,656 (6,862 times 97 percent) of patents granted 
to individuals from the U.S. will be for individuals under the gross 
income threshold of the micro entity definition ($148,335 for CY 2010). 
The Office uses 97 percent as the best available estimate of the 
maximum number of individuals who satisfy the income limit. Median 
household income and gross income levels are not readily available for 
the country of origin for all foreign individuals. Therefore, the 
Office conservatively estimates that all foreign individuals will 
qualify for micro entity fee reductions, and income should not limit 
their eligibility. Using the best available data, as presented above, 
the Office estimates that the total number of individuals who meet the 
thresholds set forth in 123(a)(1), (a)(2), and (a)(3) is 9,264 (6,656 
from the U.S. and 2,608 foreign).
    The 9,264 figure represents a reasonable approximation of the 
number of patents granted annually to persons who would qualify as 
micro entities under section 123(a). There is no data available to 
indicate how many persons would be excluded under section 123(a)(4). 
However, the Office's approach with the other components of section 
123(a) is sufficiently conservative to mitigate the risks of not 
capturing this population. Likewise, while a small company could 
qualify as a micro entity under section 123(a), the above calculation 
of individuals represents a reasonable overall approximation because 
the estimate of affected individuals is sufficiently conservative.
    Turning to 35 U.S.C. 123(d), the most recent data available on 
university patent grants is from CY 2008. Reviewing the data from CY 
2001-CY 2008, the Office estimates that domestic universities account 
for approximately 1.9 percent of all patent grants. The Office is using 
this figure as a reasonable approximation for the number of micro 
entity applicants expected under section 123(d), which covers 
applicants who are employed by universities or who have assigned their 
invention to a university. Applying this information to FY 2011, the 
Office estimates that universities received 4,206 (221,350 times 1.9 
percent) of the patents granted in FY 2011. The data on university 
patent grants is available at: http://www.uspto.gov/web/offices/ac/ido/oeip/taf/univ/asgn/table_1_2008.htm.
    To combine 123(a) and 123(d), the Office adds the estimated number 
of patents granted that could meet the micro entity definition for 
individuals (9,264) and for university employees (4,206) to obtain a 
total of 13,470 patent grants. The Office divides 13,470 micro entity 
patents by the 43,827 small entity patents in FY 2011 (per the Office's 
PALM database) to calculate that approximately 31 percent of small 
entity patents will be micro entity patents. The Office expects a 
uniform distribution of micro entities across all application types. No 
data exists to suggest otherwise. Likewise, the Office applies the 31 
percent estimate to both filings and grants because it expects a 
uniform distribution of micro entities among both applicants and 
patentees, and no data exists to suggest otherwise. Thus, the Office 
estimates that 31 percent of all small entity applicants will qualify 
as micro entity applicants.
    In recent years, small entity applicants made up approximately 25 
percent of utility filings and 20 percent of utility patent grants (per 
the PALM

[[Page 55037]]

database). Given that utility filings are the largest category of 
application types, for forecasting purposes, the Office uses utility 
filing data as representative of the universe of patent application 
filings. Applying the 31 percent estimate for the number of micro 
entities, the Office estimates that micro entities will account for 7.8 
percent (25 percent times 31 percent) of all filings, and 6.2 percent 
(20 percent times 31 percent) of all grants.
Aggregate Revenue Estimate Ranges
    To calculate aggregate revenue, the USPTO prepares a high-to-low 
range of fee collection estimates that includes a +/- 5 outer bounds to 
account for: the inherent uncertainty, sensitivity, and volatility of 
predicting fluctuations in the economy and market environment; 
interpreting policy and process efficiencies; and developing fee 
workload and fee collection estimates from assumptions. The Office used 
5 percent because historically the Office's actual revenue collections 
have typically been within 5 percent of the projected revenue. 
Additional detail about the Office's aggregate revenue, including 
projected workloads by fee, is available in ``USPTO Section 10 Fee 
Setting--Aggregate Revenue Estimates Alternative 1: Proposed 
Alternative--Set and Adjust Section 10 Fees'' available at http://www.uspto.gov/aia_implementation/fees.jsp.
Summary
    Patent fees are collected for patent related services and products 
at different points in time within the patent application examination 
process and over the life of the pending patent application and granted 
patent. Approximately half of all patent fee collections are from issue 
and maintenance fees, which subsidize filing, search, and examination 
activities. Changes in application filing levels immediately impact 
current year fee collections, because fewer patent application filings 
means the Office collects fewer fees to devote to production-related 
costs, such as additional examining staff and overtime. The resulting 
reduction in production activities creates an out-year revenue impact 
because less production output in one year results in fewer issue and 
maintenance fee payments in future years.
    The USPTO's five-year estimated aggregate patent fee revenue (see 
``Aggregate Revenue Estimate'' in Table 3) is based on the number of 
patent applications it expects to receive for a given fiscal year, work 
it expects to process in a given fiscal year (an indicator for workload 
of patent issue fees), expected examination and process requests for 
the fiscal year, and the expected number of post-issuance decisions to 
maintain patent protection over that same fiscal year. Within the 
iterative process for estimating aggregate revenue, the Office adjusts 
individual fees up or down based on cost and policy decisions (see Step 
3: Set Specific Fee Amounts), estimates the effective dates of new fee 
rates, and then multiplies the resulting fees by appropriate workload 
volumes to calculate a revenue estimate for each fee. To calculate the 
aggregate revenue, the Office assumes that all new fee rates, except 
for changes to sections 1.18(a) through (d) (patent issue and 
publication fees) and 1.21(h)(1) and 1.21(h)(2) (recording patent 
assignments), would be effective March 1, 2013. Fee changes for 
sections 1.18(a) through (d) (patent issue and publication fees) and 
1.21(h)(1) and 1.21(h)(2) (recording patent assignments) are assumed to 
become effective on January 1, 2014. Using these figures, the USPTO 
sums the individual fee revenue estimates, and the result is a total 
aggregate revenue estimate for a given year (see Table 3).

Step 3: Set Specific Fee Amounts

    Once the Office finalizes the annual requirements and aggregate 
prospective costs for a given year during the budget formulation 
process, the Office sets specific fee amounts that, together, will 
derive the aggregate revenue required to recover the estimated 
aggregate prospective costs during that time frame. Calculating 
individual fees is an iterative process that encompasses many 
variables. One variable that USPTO considers to inform fee setting is 
the historical cost estimates associated with individual fees. The 
Office's Activity-Based Information (ABI) provides historical cost for 
an organization's activities and outputs by individual fee using the 
activity-based costing (ABC) methodology. ABC is commonly used for fee 
setting throughout the Federal Government. Additional information about 
the methodology, including the cost components related to respective 
fees, is available at http://www.uspto.gov/aia_implementation/fees.jsp#heading-1 in the document titled ``USPTO Section 10 Fee 
Setting--Activity-Based Information and Costing Methodology.'' The 
USPTO provides data for FY 2009-FY 2011 because the Office finds that 
reviewing the trend of ABI historical cost information is the most 
useful way to inform fee setting. The underlying ABI data are available 
for public inspection at the USPTO.
    When the Office implements a new process or service, historical ABI 
data is typically not available. However, the Office will use the 
historical cost of a similar process or procedure as a starting point 
to calculate the cost of a new activity or service. For example, as 
described in the proposed rulemaking, Changes to Implement the 
Supplemental Examination Provisions of the Leahy-Smith America Invents 
Act, 77 FR 3666 (Jan. 25, 2012), the Office used the ABI historical 
cost for ex parte reexamination procedures as a starting point for 
calculating the prospective cost to implement the new supplemental 
examination procedures.
    In other cases, ABI historical cost information related to similar 
processes are not available, and the Office estimates cost by 
calculating the resources necessary to execute the new process. To do 
so, the Office estimates the amount of time (in hours) and necessary 
skill level to complete an activity. The USPTO then multiplies the 
estimated amount of time by the hourly wage(s) of the persons required 
at each skill level and adds the administrative and indirect cost rates 
(derived from ABI historical cost data) to this base cost estimate to 
calculate the full cost of the activity. One-time costs, such as IT, 
training, or facilities, are added to the full cost estimate to obtain 
the total cost of providing the new process or service. Lastly, the 
USPTO applies a rate of inflation to estimate the prospective unit 
cost. For example, the Office used this methodology to calculate the 
costs associated with the new inter partes and post grant review 
processes. (See 77 FR 6879, (Feb. 9, 2012).
    This cost data serves as a point of reference for setting 
individual fee amounts. The USPTO also uses various policy factors 
discussed in the Rulemaking Goals and Strategies section of this NPRM 
to inform fee setting. Fees are set to allow the Office to recover its 
aggregate costs, while furthering key policy considerations. The 
following section describes the rationale for setting fee rates at 
specific amounts.

V. Individual Fee Rationale

    The Office projects the aggregate revenue generated from the 
proposed patent fees will recover the prospective aggregate cost of its 
patent operations. However, each individual proposed fee is not 
necessarily set equal to the estimated cost of performing the 
activities related to the fee. Instead, as described in Part III. 
Rulemaking Goals and Strategies, some of the proposed fees are set to 
balance several key policy factors: fostering innovation, facilitating 
effective administration of the patent

[[Page 55038]]

system, and offering patent prosecution options to applicants. As also 
described in Part III, executing these policy factors in the patent fee 
schedule is consistent with the Strategy for American Innovation and 
the goals and objectives outlined in the Strategic Plan. Once the key 
policy factors are considered, fees are set at, above, or below 
individual cost recovery levels for the activity or service provided.
    For the purpose of discussing the changes in this rule, the 
rationale for proposing to set or adjust individual fees are grouped 
into two major categories: (1) Fees where large entity amounts changed 
from the current amount by greater than plus or minus 5 percent and 10 
dollars (described below in section (A)); and (2) fees where large 
entity amounts stayed the same or did not change by greater than plus 
or minus 5 percent and 10 dollars (described below in section (B). The 
purpose of the categorization is to identify large fee changes for the 
reader and provide an individual fee rationale for such changes. The 
categorization is based on changes in large entity fee amounts because 
percentage changes for small entity fees that are in place today would 
be the same as the percentage change for the large entity, and the 
dollar change would be half of that of the large entity change. 
Therefore, there will never be an instance where the small entity fee 
change meets the greater than plus or minus 5 percent and 10 dollars 
criteria and a large entity does not.
    The ``USPTO Section 10 Fee Setting--Table of Patent Fee Changes'' 
is available at http://www.uspto.gov/aia_implementation/fees.jsp and 
the tables in Part VI. The table of patent fee changes includes the 
current fees for large and small entities and the proposed fees for 
large, small, and micro entities with the dollar and percent changes in 
large entity fees and the FY 2011, FY 2010, and FY 2009 unit costs. The 
Discussion of Specific Rules in this rulemaking contains a complete 
listing of fees that are set or adjusted in the proposed patent fee 
schedule.

A. Discounts for Small and Micro Entity Applicants

    The fees described below include discounts for small and micro 
entity applicants as required by section 10. The current small entity 
discount scheme will change when fees are set in accordance with 
section 10. That is, section 10(a) provides that the USPTO can set or 
adjust ``any fee established, authorized or charged under'' Title 35, 
U.S.C. In turn, section 10(b) of the Act provides that fees set or 
adjusted under section 10(a) authority for ``filing, searching, 
examining, issuing, appealing, and maintaining patent applications and 
patents'' will be reduced by 50 percent for small entities and 75 
percent for micro entities. A small entity is defined as currently set 
forth in 35 U.S.C. 41(h)(1), and a micro entity is defined in section 
123.
    Currently, the small entity discount is only available for 
statutory fees provided under sections 41(a) and (b). Section 10(b) 
extends the discount to some patent fees not contained in section 41(a) 
and (b). Thus, the Office will apply the discount to a number of fees 
that currently do not receive the small entity discount. Only one fee 
for which a small entity discount is currently offered will be 
ineligible for that discount under the proposed fee schedule (the fee 
for a statutory disclaimer under 37 CFR 1.20(d), which is currently 
$160 for a large entity and $80 for a small entity), because the 
particular fee does not fall under one of the six categories of patent 
fees set forth in section 10(b).
    Additionally, the new contested case proceedings created under the 
Act (inter partes review, post grant review, covered business method 
patent review, and derivation proceedings) are trial services, not 
appeals. As such, the fees for these services do not fall under any of 
the six categories under section 10(b), and therefore are not eligible 
for discounts. Appeals before the BPAI involve contests to an 
examiner's findings. The new trial services, however, determine whether 
a patent should have been granted. They involve discovery, including 
cross-examination of witnesses. Further, the AIA amends sections of 
Title 35 that specifically reference ``appeals,'' while separately 
discussing inter partes review, post grant review, and derivation 
proceedings, highlighting that these new services are not appeals. See 
section 7 of the AIA (amending 35 U.S.C. 6).

B. Fees With Proposed Changes of Greater Than Plus or Minus 5 Percent 
and 10 Dollars

    For those fees that are proposed to change by greater than plus or 
minus 5 percent and 10 dollars, the individual fee rationale discussion 
is divided into four general subcategories: (1) Fees to be set at cost 
recovery; (2) fees to be set below cost recovery; (3) fees to be set 
above cost recovery; and (4) fees that are not set using cost data as 
an indicator. Table 4 contains a summary of the individual fees that 
are discussed in each of the subcategories referenced above.
    As discussed above, for purposes of comparing amounts in the 
individual fee rationale discussion, the Office has also included the 
fees proposed previously using the USPTO's existing 35 U.S.C. 41(d)(2) 
fee authority in the baseline (status quo). See 77 FR 982 (Jan. 6, 
2012), 77 FR 3666 (Jan. 25, 2012), 77 FR 6879 (Feb. 9, 2012), 77 FR 
7028 (Feb. 10, 2012), and 77 FR 7060 (Feb. 10, 2012). The fees proposed 
in these January and February 2012 Proposed Rules (as adjusted by the 
final rules) are included in the ``current'' fee column and denoted 
with (*). This NPRM does not reopen the comment period for any of the 
January and February 2012 Proposed Rules. It is anticipated that those 
rules will be finalized in the coming months. This NPRM establishes a 
different comment period for setting or adjusting all patent fees under 
section 10 of the AIA. The Office anticipates finalizing this 
rulemaking after the January and February 2012 Proposed Rules are 
finalized.
    In addition, for purposes of discussion within this section, where 
new micro entity fees are proposed, it is expected that an applicant or 
patent holder would have paid the current small entity fee (or large 
entity in the event there is not a small entity fee) and dollar and 
percent changes are calculated from the current small entity fee amount 
(or large entity fee, where applicable).
    It should be noted that the ``Utility Search Fee'' listed below 
does not meet the ``change by greater than plus or minus 5 percent and 
10 dollars'' threshold, but is nonetheless included in the discussion 
for comparison of total filing, search, and examination fees.

[[Page 55039]]



                                     Table 4--Patent Fees Proposed To Change
                            [By greater than plus or minus 5 percent and 10 dollars]
----------------------------------------------------------------------------------------------------------------
                                                Current fees    Proposed fees   Dollar change    Percent change
Fee description                                         Large           Large           Large              Large
                                                      (small)         (small)         (small)            (small)
                                                      [micro]         [micro]         [micro]            [micro]
                                                       entity          entity          entity             entity
----------------------------------------------------------------------------------------------------------------
                                       (1) Fees To Be Set at Cost Recovery
----------------------------------------------------------------------------------------------------------------
Request for Prioritized Examination..........          $4,800          $4,000           -$800               -17%
                                                     ($2,400)        ($2,000)         (-$400)             (-17%)
                                                        [N/A]        [$1,000]       [-$1,400]             [-58%]
----------------------------------------------------------------------------------------------------------------
                                                         $930          $1,700           +$770               +83%
Second and Subsequent RCEs (NEW).............          ($465)          ($850)         (+$385)             (+83%)
                                                        [N/A]          [$425]          [-$40]              [-9%]
----------------------------------------------------------------------------------------------------------------
                                     (2) Fees To Be Set Below Cost Recovery
----------------------------------------------------------------------------------------------------------------
Basic Filing Fee--Utility....................            $380            $280           -$100               -26%
                                                       ($190)          ($140)          (-$50)             (-26%)
                                                        [N/A]           [$70]         [-$120]             [-63%]
----------------------------------------------------------------------------------------------------------------
Utility Search Fee...........................            $620            $600            -$20                -3%
                                                       ($310)          ($300)          (-$10)              (-3%)
                                                        [N/A]          [$150]         [-$160]             [-52%]
----------------------------------------------------------------------------------------------------------------
Utility Examination Fee......................            $250            $720           +$470              +188%
                                                       ($125)          ($360)         (+$235)            (+188%)
                                                        [N/A]          [$180]          [+$55]             [+44%]
                                              ------------------------------------------------------------------
    Basic Filing, Search, and Exam--Utility            $1,250          $1,600           +$350               +28%
     (Total).................................
                                                       ($625)          ($800)         (+$175)             (+28%)
                                                        [N/A]          [$400]         [-$225]             [-36%]
----------------------------------------------------------------------------------------------------------------
First Request for Continued Examination (RCE)            $930          $1,200           +$270               +29%
                                                       ($465)          ($600)         (+$135)               +29%
                                                        [N/A]          [$300]         [-$165]             [-35%]
----------------------------------------------------------------------------------------------------------------
Notice of Appeal.............................            $620          $1,000           +$380               +61%
                                                       ($310)          ($500)         (+$190)             (+61%)
                                                        [N/A]          [$250]          [-$60]             [-19%]
Filing a Brief in Support of an Appeal in                $620              $0           -$620              -100%
 Application or Ex Parte Reexamination
 Proceeding..................................
                                                       ($310)            ($0)         (-$310)            (-100%)
                                                        [N/A]            [$0]         [-$310]            [-100%]
----------------------------------------------------------------------------------------------------------------
Appeal Forwarding Fee for Appeal in                       N/A          $2,000         +$2,000                N/A
 Examination or Ex Parte Reexamination                  (N/A)        ($1,000)       (+$1,000)              (N/A)
 Proceeding or Filing a Brief in Support of             [N/A]          [$500]         [+$500]              [N/A]
 an Appeal in Inter Partes Reexamination
 (NEW).......................................
                                              ------------------------------------------------------------------
    Total Appeal Fees (Paid before Examiner            $1,240          $1,000           -$240               -19%
     Answer).................................
                                                       ($620)          ($500)         (-$120)             (-19%)
                                                        [N/A]          [$250]         [-$370]             [-60%]
                                              ------------------------------------------------------------------
Total Appeal Fees (Paid after Examiner                 $1,240          $3,000          +$1760              +142%
 Answer).....................................
                                                       ($620)        ($1,500)         (+$880)            (+142%)
                                                        [N/A]          [$750]         [+$130]             [+21%]
----------------------------------------------------------------------------------------------------------------
Ex Parte Reexamination.......................        *$17,750         $15,000         -$2,750               -15%
                                                        (N/A)        ($7,500)      (-$10,250)             (-58%)
                                                        [N/A]        [$3,750]      [-$14,000]             [-79%]
Processing and Treating a Request for                 *$5,140          $4,400           -$740               -14%
 Supplemental Examination--Up to 20 Sheets              (N/A)        ($2,200)       (-$2,940)             (-57%)
 (NEW).......................................           [N/A]        [$1,100]       [-$4,040]             [-79%]
Ex Parte Reexamination Ordered as a Result of        *$16,120         $13,600         -$2,520               -16%
 a Supplemental Examination Proceeding (NEW).           (N/A)        ($6,800)       (-$9,320)             (-58%)
                                                        [N/A]        [$3,400]      [-$12,720]             [-79%]
                                              ------------------------------------------------------------------
    Total Supplemental Examination Fees......        *$21,300         $18,000         -$3,330               -15%

[[Page 55040]]

 
                                                        (N/A)        ($9,000)      (-$12,300)             (-58%)
                                                        [N/A]        [$4,500]      [-$16,800]             [-79%]
----------------------------------------------------------------------------------------------------------------
Inter Partes Review Request--Up to 20 Claims              NEW          $9,000         +$9,000                N/A
 (Per Claim Fee for Each Claim in Excess of                             (N/A)           (N/A)              (N/A)
 20 is $200).................................                           [N/A]           [N/A]              [N/A]
----------------------------------------------------------------------------------------------------------------
Inter Partes Review Post Institution Fee--Up              NEW         $14,000         $14,000                N/A
 to 15 Claims (Per Claim Fee for Each Claim                             (N/A)           (N/A)              (N/A)
 in Excess of 15 is $400)....................                           [N/A]           [N/A]              [N/A]
                                              ------------------------------------------------------------------
    Total Inter Partes Review Fees (NEW) (For        *$27,200         $23,000         -$4,200               -15%
     Current Fees, Per Claim Fee for Each               (N/A)           (N/A)           (N/A)              (N/A)
     Claim in Excess of 20 is $600)..........           [N/A]           [N/A]           [N/A]              [N/A]
----------------------------------------------------------------------------------------------------------------
Post Grant Review or Covered Business Method              NEW         $12,000        +$12,000                N/A
 Patent Review Request--Up to 20 Claims (Per                            (N/A)           (N/A)              (N/A)
 Claim Fee for Each Claim in Excess of 20 is                            [N/A]           [N/A]              [N/A]
 $250).......................................
----------------------------------------------------------------------------------------------------------------
Post Grant Review or Covered Business Method              NEW         $18,000         $18,000                N/A
 Patent Review Post Institution Fee--Up to 15                           (N/A)           (N/A)              (N/A)
 Claims (Per Claim Fee for Each Claim in                                [N/A]           [N/A]              [N/A]
 Excess of 15 is $550).......................
    Total Post Grant Review or Covered               *$35,800         $30,000         -$5,800               -16%
     Business Method Patent Fees (NEW) (For             (N/A)           (N/A)           (N/A)              (N/A)
     Current Fees, Per Claim Fee for Each               [N/A]           [N/A]           [N/A]              [N/A]
     Claim in Excess of 20 is $800)..........
----------------------------------------------------------------------------------------------------------------
                                     (3) Fees To Be Set Above Cost Recovery
----------------------------------------------------------------------------------------------------------------
Publication Fee for Early, Voluntary, or                 $300              $0           -$300              -100%
 Normal Publication (Pre Grant Publication or           (N/A)            ($0)         (-$300)            (-100%)
 PG Pub).....................................           [N/A]            [$0]         [-$300]            [-100%]
----------------------------------------------------------------------------------------------------------------
Utility Issue Fee............................          $1,740            $960           -$780               -45%
                                                       ($870)          ($480)         (-$390)             (-45%)
                                                        [N/A]          [$240]         [-$630]             [-72%]
Combined Total--Pre-grant Publication and              $2,040            $960         -$1,080               -53%
 Issue Fee--Utility..........................        ($1,170)          ($480)         (-$690)             (-59%)
                                                        [N/A]          [$240]         [-$930]             [-79%]
----------------------------------------------------------------------------------------------------------------
Maintenance Fee Due at 3.5 Years (1st Stage).          $1,130          $1,600           +$470               +42%
                                                       ($565)          ($800)         (+$235)             (+42%)
                                                        [N/A]          [$400]         [-$165]             [-29%]
Maintenance Fee Due at 7.5 Years (2nd Stage).          $2,850          $3,600           +$750               +26%
                                                     ($1,425)        ($1,800)         (+$375)             (+26%)
                                                        [N/A]          [$900]         [-$525]             [-37%]
Maintenance Fee Due at 11.5 Years (3rd Stage)          $4,730          $7,400         +$2,670               +56%
                                                     ($2,365)        ($3,700)       (+$1,335)             (+56%)
                                                        [N/A]        [$1,850]         [-$515]             [-22%]
----------------------------------------------------------------------------------------------------------------
                          (4) Fees That Will Not Be Set Using Cost Data as an Indicator
----------------------------------------------------------------------------------------------------------------
Extensions for Response within 1st Month.....            $150            $200            +$50               +33%
                                                        ($75)          ($100)          (+$25)             (+33%)
                                                        [N/A]           [$50]          [-$25]             [-33%]
----------------------------------------------------------------------------------------------------------------
Extensions for Response within 2nd Month.....            $560            $600            +$40                +7%
                                                       ($280)          ($300)          (+$20)              (+7%)

[[Page 55041]]

 
                                                        [N/A]          [$150]         [-$130]             [-46%]
----------------------------------------------------------------------------------------------------------------
Extensions for Response within 3rd Month.....          $1,270          $1,400           +$130               +10%
                                                       ($635)          ($700)          (+$65)             (+10%)
                                                        [N/A]          [$350]         [-$285]             [-45%]
----------------------------------------------------------------------------------------------------------------
Extensions for Response within 4th Month.....          $1,980          $2,200           +$220               +11%
                                                       ($990)        ($1,100)         (+$110)             (+11%)
                                                        [N/A]          [$550]         [-$440]             [-44%]
----------------------------------------------------------------------------------------------------------------
Extensions for Response within 5th Month.....          $2,690          $3,000           +$310               +12%
                                                     ($1,345)        ($1,500)         (+$155)             (+12%)
                                                        [N/A]          [$750]         [-$595]             [-44%]
----------------------------------------------------------------------------------------------------------------
Utility Application Size Fee--For each                   $310            $400            +$90               +29%
 Additional 50 Sheets that Exceed 100 Sheets.          ($155)          ($200)          (+$45)             (+29%)
                                                        [N/A]          [$100]          [-$55]             [-35%]
----------------------------------------------------------------------------------------------------------------
Independent Claims in Excess of 3............            $250            $420           +$170               +68%
                                                       ($125)          ($210)          (+$85)             (+68%)
                                                        [N/A]          [$105]          [-$20]             [-16%]
----------------------------------------------------------------------------------------------------------------
Claims in Excess of 20.......................             $60             $80            +$20               +33%
                                                        ($30)           ($40)          (+$10)             (+33%)
                                                        [N/A]           [$20]          [-$10]             [-33%]
----------------------------------------------------------------------------------------------------------------
Multiple Dependent Claim.....................            $450            $780           +$330               +73%
                                                       ($225)          ($390)         (+$165)             (+73%)
                                                        [N/A]          [$195]         >[-$30]             [-13%]
----------------------------------------------------------------------------------------------------------------
Correct Inventorship After First Action on                N/A          $1,000         +$1,000                N/A
 the Merits (NEW)............................           (N/A)          ($500)         (+$500)              (N/A)
                                                        [N/A]          [$250]         [+$250]              [N/A]
----------------------------------------------------------------------------------------------------------------
Derivation Petition Fee (NEW)................           *$400            $400              $0                 0%
                                                        (N/A)           (N/A)           (N/A)              (N/A)
                                                        [N/A]           [N/A]           [N/A]              [N/A]
----------------------------------------------------------------------------------------------------------------
Derivation Institution and Trial Fee (NEW)...             N/A              $0              $0                N/A
                                                        (N/A)            ($0)            ($0)              (N/A)
                                                        [N/A]            [$0]            [$0]              [N/A]
----------------------------------------------------------------------------------------------------------------
Assignments Submitted Electronically (NEW)...             $40              $0            -$40              -100%
                                                        (N/A)           (N/A)           (N/A)              (N/A)
                                                        [N/A]           [N/A]           [N/A]              [N/A]
----------------------------------------------------------------------------------------------------------------
Assignments Not Submitted Electronically                  $40             $40              $0                 0%
 (NEW).......................................
                                                        (N/A)           (N/A)           (N/A)              (N/A)
                                                        [N/A]           [N/A]           [N/A]              [N/A]
----------------------------------------------------------------------------------------------------------------

(1) Fees To Be Set at Cost Recovery
    The following two fees are set at cost recovery. These fees support 
the policy factor of ``offering patent prosecution options to 
applicants'' by providing applicants with flexibilities in seeking 
patent protection. A discussion of the rationale for the proposed 
changes follows.
    Request for Prioritized Examination:

[[Page 55042]]



                            Table 5--Request for Prioritized Examination Fee Changes
----------------------------------------------------------------------------------------------------------------
                                                Current fees    Proposed fees   Dollar change    Percent change
Fee information                                         Large           Large           Large              Large
                                                      (small)         (small)         (small)            (small)
                                                      [micro]         [micro]         [micro]            [micro]
                                                       entity          entity          entity             entity
----------------------------------------------------------------------------------------------------------------
Request for Prioritized Examination..........          $4,800          $4,000           -$800               -17%
                                                     ($2,400)        ($2,000)         (-$400)             (-17%)
                                                        [N/A]        [$1,000]       [-$1,400]             [-58%]
----------------------------------------------------------------------------------------------------------------



      Table 6--Request for Prioritized Examination Cost Information
------------------------------------------------------------------------
                    Cost information                         FY 2011
------------------------------------------------------------------------
Cost Calculation is available in the proposed rule               $4,000
 published in the Federal Register Changes To Implement
 the Prioritized Examination Track (Track I) of the
 Enhanced Examination Timing Control Procedures, 76 FR
 6369 (Feb. 4, 2011)...................................
------------------------------------------------------------------------

    A patent applicant may seek prioritized examination at the time of 
filing an original utility or plant application or a continuation 
application thereof or upon filing an RCE in compliance with section 
1.114. A single request for prioritized examination may be granted for 
an RCE in a plant or utility application. When in the prioritized 
examination track, an application will be accorded special status 
during prosecution until a final disposition is reached. The target for 
prioritized examination is to provide a final disposition within twelve 
months, on average, of prioritized status being granted. This 
prioritized examination procedure is part of an effort by the USPTO to 
provide patent applicants patent prosecution options with greater 
control over the timing of examination of their applications. The 
procedure enables applicants to have greater certainty in their patent 
rights sooner.
    The AIA established the current large and small entity fees for 
prioritized examination, which the Office put in place in 2011. See 
Changes To Implement the Prioritized Examination Track (Track I) of the 
Enhanced Examination Timing Control Procedures Under the Leahy-Smith 
America Invents Act, 76 FR 59050 (Sept. 23, 2011). The large entity fee 
is above the Office's cost to process a single prioritized examination 
request to subsidize the fee revenue lost from providing small entity 
applicants a 50 percent discount from the large entity fee. The cost 
calculation for the prioritized examination fees is available in the 
proposed rule. See Changes To Implement the Prioritized Examination 
Track (Track I) of the Enhanced Examination Timing Control Procedures, 
76 FR 6369 (Feb. 4, 2011). The higher large entity fee, coupled with 
the lower small entity fee, recovers the Office's total cost for 
conducting all prioritized examinations.
    Under section 10, micro entities are eligible to receive a 75 
percent discount from the large entity fee for prioritized examination. 
Here, the Office proposes to set the large entity fee at cost ($4,000), 
instead of further increasing the fee to subsidize the new micro entity 
discount. This amount is the same as that which was proposed in the 
initial fee schedule delivered to the PPAC on February 7, 2012. The 
Office proposes to recover this subsidy through other fees that will be 
set above cost recovery, rather than through a separate, higher, large 
entity fee for prioritized examinations. The Office believes this 
system will foster innovation and allow for ease of entry into the 
patent system. Setting the large entity prioritized examination fee 
further above cost would contradict this policy factor and hinder fast 
patent protection for large entity applicants.
    Request for Continued Examination (RCE)--Second and Subsequent 
Request (New):

               Table 7--Second and Subsequent Request for Continued Examination (RCE) Fee Changes
----------------------------------------------------------------------------------------------------------------
                                                Current fees    Proposed fees   Dollar change    Percent change
Fee description                                         Large           Large           Large              Large
                                                      (small)         (small)         (small)            (small)
                                                      [micro]         [micro]         [micro]            [micro]
                                                       entity          entity          entity             entity
----------------------------------------------------------------------------------------------------------------
Second and Subsequent Requests for Continued             $930          $1,700           +$770               +83%
 Examination (RCE) (NEW).....................          ($465)          ($850)         (+$385)             (+83%)
                                                        [N/A]          [$425]          [-$40]              [-9%]
----------------------------------------------------------------------------------------------------------------


                  Table 8--Request for Continued Examination (RCE) Historical Cost Information
----------------------------------------------------------------------------------------------------------------
                Historical unit cost information                      FY 2011         FY 2010         FY 2009
----------------------------------------------------------------------------------------------------------------
Request for Continued Examination (RCE).........................          $2,070          $1,696          $1,881
Percentage of RCE cost compared to the cost to process a new                 60%             43%             51%
 application....................................................
----------------------------------------------------------------------------------------------------------------

[[Page 55043]]

 
The historical unit cost information is calculated by subtracting the cost to complete a single application with
 no RCEs from the cost to complete a single application with one RCE. A description of the cost components is
 available for review in the ``Section 10 Fee Setting--Activity-Based Information and Costing Methodology''
 document. It is reasonable to expect that the cost to the Office to complete a single RCE should be less than
 the cost to complete a new application because an RCE is continuing from work already performed on the original
 application. The Office's historical cost data demonstrates this, with the cost to process an RCE being, on
 average, half of the cost to prosecute a new application.......................................................
----------------------------------------------------------------------------------------------------------------

    An applicant may file an RCE in an application that is under final 
rejection (i.e., prosecution is closed) by filing a submission and 
paying a specified fee within the requisite time period. Applicants 
typically file an RCE when they choose to continue to prosecute an 
application before the examiner, rather than appeal a rejection or 
abandon the application. In FY 2011, about 30 percent of applications 
filed were for RCEs. Generally, around 70 percent of RCE applications 
filed in a year are for first RCEs and the remaining 30 percent are a 
second or subsequent RCE. Given this data, it is reasonable to expect 
that most outstanding issues are resolved with the first RCE. Those 
applications that cannot be completed with the first RCE do not 
facilitate an effective administration of the patent system with the 
prompt conclusion of patent prosecution.
    On February 7, 2012, the Office delivered to the PPAC a proposed 
RCE fee of $1,700. In response to stakeholder feedback on both the 
individual fee level and the growth rate of the patent operating 
reserve, the Office now proposes to divide the fee for RCEs into two 
parts: (1) A fee for a first RCE; and (2) a second, higher fee for a 
second or subsequent RCE. The Office proposes this RCE fee division 
because, as noted above, based on historical cost information, 70 
percent of RCEs are for the first RCE, which indicates that applicants 
need modest additional time to resolve the outstanding issues with the 
examiner. The proposed multipart RCE fees demonstrate how the Office 
seeks to facilitate the effective administration of the patent system 
and offer patent prosecution options to applicants.
    The large entity fee for the first RCE would be set about 30 
percent below cost recovery at $1,200 to advance innovation by easing 
the burden on an applicant needing to resolve the outstanding items 
with an examiner. The Office proposes to set the fee for the second and 
subsequent RCEs at the same amount as initially delivered to PPAC, 
i.e., $1,700, which is estimated to be at cost recovery. Setting the 
second and subsequent RCE fees higher than the fee for the first RCE 
helps to recover costs for activities that strain the patent system.
    The USPTO calculated the large entity cost at $1,700 (rounded) by 
averaging historical costs after estimating the incremental cost to 
complete a single application with one RCE compared to the cost to 
complete an application with no RCE. The Office used a three-year 
average to estimate the cost of a single RCE in lieu of using only FY 
2011 data, because the trend in historical data shows that the cost to 
process an RCE increased in FY 2011, and the Office believes this 
increase is due to an anomaly caused by the Clearing the Oldest Patent 
Application (COPA) initiative, as described in the FY 2011 USPTO 
Performance and Accountability Report, available at http://www.uspto.gov/about/stratplan/ar/2011/mda_02_03.html.
    When an applicant does not agree with a final rejection notice, the 
applicant has the option to file a notice of appeal, for which the fee 
is also proposed to be set below cost recovery and less than the fee 
proposed for the first, and second and subsequent, RCEs (see appeal fee 
information in the following section). The USPTO proposes this fee 
relationship to ensure that all applicants have viable options to 
dispute a final rejection when they believe the examiner has erred. 
These patent prosecution options allow applicants to make critical 
decisions at multiple points in the patent prosecution process.
(2) Fees To Be Set Below Cost Recovery
    There are seven types of fees that the Office proposes to be set 
below cost recovery that meet the greater than plus or minus 5 percent 
and 10 dollars criteria. The policy factors relevant to setting fees 
below cost recovery are fostering innovation and offering patent 
prosecution options to applicants. Applying these policy factors to set 
fees below cost recovery benefits the patent system by keeping the fees 
low and making patent filing and prosecution more available to 
applicants, thus fostering innovation. Although many fees would 
increase from current fee rates under this proposed rule, the Office is 
not proposing to increase ``pre-grant'' fees (e.g., filing, search, and 
examination) enough to create the same barrier to entry as otherwise 
would have been created if fees were to recover the full cost of the 
activity. The proposed fee schedule offers patent prosecution options 
to provide applicants flexible and cost-effective options for seeking 
and completing patent protection. This strategy provides multipart and 
staged fees for certain patent prosecution activities. A discussion of 
the rationale for each proposed fee adjustment follows.
    Basic Filing, Search, and Examination--Utility:

                       Table 9--Basic Filing, Search, and Examination--Utility Fee Changes
----------------------------------------------------------------------------------------------------------------
                                                Current fees    Proposed fees   Dollar change    Percent change
Fee description                                         Large           Large           Large              Large
                                                      (small)         (small)         (small)            (small)
                                                      [micro]         [micro]         [micro]            [micro]
                                                       entity          entity          entity             entity
----------------------------------------------------------------------------------------------------------------
Basic Filing Fee--Utility....................            $380            $280           -$100               -26%
                                                       ($190)          ($140)          (-$50)             (-26%)
                                                        [N/A]           [$70]         [-$120]             [-63%]
----------------------------------------------------------------------------------------------------------------

[[Page 55044]]

 
Utility Search Fee...........................            $620            $600            -$20                -3%
                                                       ($310)          ($300)          (-$10)              (-3%)
                                                        [N/A]          [$150]         [-$160]             [-52%]
----------------------------------------------------------------------------------------------------------------
Utility Examination Fee......................            $250            $720           +$470              +188%
                                                       ($125)          ($360)         (+$235)            (+188%)
                                                        [N/A]          [$180]          [+$55]             [+44%]
----------------------------------------------------------------------------------------------------------------
    Basic Filing, Search, and Exam--Utility            $1,250          $1,600           +$350               +28%
     (Total).................................          ($625)          ($800)         (+$175)             (+28%)
                                                        [N/A]          [$400]         [-$225]             [-36%]
----------------------------------------------------------------------------------------------------------------


            Table 10--Basic Filing, Search, and Examination--Utility Fee Historical Cost Information
----------------------------------------------------------------------------------------------------------------
                                                                   FY 2011  $/%    FY 2010  $/%    FY 2009  $/%
                Historical unit cost information                     of total        of total        of total
----------------------------------------------------------------------------------------------------------------
Basic Filing Fee--Utility.......................................         $234/6%         $243/6%         $241/7%
Utility Search Fee..............................................      $1,521/43%      $1,694/43%      $1,520/41%
Utility Examination Fee.........................................      $1,814/51%      $1,969/51%      $1,904/52%
                                                                 -----------------------------------------------
    Total Unit Cost.............................................     $3,569/100%     $3,906/100%     $3,665/100%
----------------------------------------------------------------------------------------------------------------

    A non-provisional application for a patent includes filing, search, 
and examination fees. Currently, the large entity basic filing, search, 
and examination fees for a utility patent recover slightly more than 
one-third of the average unit cost for prosecuting a patent 
application, while a small entity application recovers around 17 
percent of the average unit cost. The Office proposes to maintain this 
``back-end'' subsidy of ``front-end'' fees structure to achieve the 
policy goal of fostering innovation.
    The current fee rates and respective costs associated with each 
stage of patent prosecution are out of alignment. For example, on 
average, 94 percent of the costs associated with filing, searching, and 
examining an application occur in the search and examination stages. 
Approximately half of those costs are estimated to occur in the 
examination stage, but only 20 percent of the total filing, search, and 
examination fees are derived from the examination fee (see Table 11). 
To adjust this fee structure and help stabilize the USPTO funding 
model, the Office proposes to increase the total filing, search, and 
examination fees and to realign the fee rates to more closely track the 
cost pattern by stage of prosecution (i.e., filing, search, and 
examination), while keeping each stage below actual cost.

          Table 11--Utility Basic Filing, Search, and Examination--Current and Proposed Fee Information
----------------------------------------------------------------------------------------------------------------
                                                                                    Proposed to
                    Proposed fee information                      Current $/% of    PPAC $/% of    Proposed $/%
                                                                       total           total         of total
----------------------------------------------------------------------------------------------------------------
Basic Filing Fee--Utility.......................................        $380/30%        $400/22%        $280/17%
Utility Search Fee..............................................        $620/50%        $660/36%        $600/38%
Utility Examination Fee.........................................        $250/20%        $780/42%        $720/45%
                                                                 -----------------------------------------------
    Total Fees..................................................     $1,250/100%     $1,840/100%     $1,600/100%
----------------------------------------------------------------------------------------------------------------

    On February 7, 2012, the Office delivered to the PPAC a proposed 
combined total fee for filing, search, and examination of $1,840. In 
response to stakeholder feedback on both the individual fee level and 
the growth rate of the patent operating reserve, the Office now 
proposes to reduce the combined fees from the initial proposal ($1,840) 
to $1,600. This adjustment keeps the cost of entering the patent system 
at or below cost for large, small, and new micro entity applicants--45 
percent, 22 percent, and 11 percent of FY 2011 total cost, 
respectively. Likewise, the proposed adjustment for filing, search, and 
examination fees continues to ensure that these initial fees remain a 
small part (10 percent) of the cost to apply for patent protection when 
compared to the average legal fees. The filing, search, and examination 
fees are also only 10 percent of the total fees paid for a patent 
through maintenance to full term (i.e., filing, search, examination, 
issue, and maintenance).
    The overall increase in filing, search, and examination fees 
facilitates the effective administration of the patent system, because 
it encourages applicants to submit only the most thoughtful and 
unambiguous applications, therefore facilitating examiners' ability to 
provide prompt, quality interim and final decisions. At the same time, 
it helps to

[[Page 55045]]

stabilize the Office's revenue stream by collecting additional revenue 
when an application is filed, instead of when it is later published or 
issued. Also, while the Office proposes to increase these application 
fees, reducing the pre-grant publication and issue fees will offset 
that increase. In addition, as the patent IT systems continue to 
improve, the Office is also contemplating providing additional fee 
discounts to encourage applicants to use the new IT systems, when 
available, and the Office welcomes public comment on the possibility of 
these discounts.
    The Office recognizes that some applicants may choose to reduce the 
number of applications filed in response to this proposed increase in 
fees. However, the Office anticipates that this impact will be 
relatively short-term; lasting for the first two and a half years of 
the fee increase. The Office estimates that applicants will file 1.3 
percent fewer patent applications during FY 2013 than the number 
estimated to be filed in the absence of a fee increase (with new fee 
schedule implementation for half the fiscal year). The Office estimates 
that 2.7 percent fewer patent applications will be filed during FY 2014 
and 4.0 percent fewer patent applications beginning in FY 2015, in 
response to the proposed fee adjustment. However, despite the decrease 
in patent applications filed when compared to the number filed absent 
this proposed fee increase, the Office estimates that the overall 
number of patent applications filed will continue to grow each year, 
albeit at a lower growth rate in FY 2013 through FY 2015. The Office 
estimates that beginning in FY 2016 the growth in patent applications 
filed will return to the same levels anticipated in the absence of a 
fee increase. Additional information about this estimate, including the 
calculation methodology, is available at http://www.uspto.gov/aia_implementation/fees.jsp, in a document entitled ``USPTO Section 10 Fee 
Setting--Description of Elasticity Estimates.'' The economic impact of 
this proposed adjustment is further considered in the cost-benefit 
calculation of the Regulatory Impact Analysis, available at http://www.uspto.gov/aia_implementation/fees.jsp.
    It should be noted that utility patent fees are referenced in this 
section to simplify the discussion of the fee rationale. However, the 
rationale also applies to the filing, search, and examination fee 
changes for design, plant, reissue, and PCT national stage fees as 
outlined in the ``USPTO Section 10 Fee Setting--Table of Patent Fee 
Changes.''
    Request for Continued Examination (RCE)--First Request:

                       Table 12--First Request for Continued Examination (RCE) Fee Changes
----------------------------------------------------------------------------------------------------------------
                                                Current fees    Proposed fees   Dollar change    Percent change
Fee description                                         Large           Large           Large              Large
                                                      (small)         (small)         (small)            (small)
                                                      [micro]         [micro]         [micro]            [micro]
                                                       entity          entity          entity             entity
----------------------------------------------------------------------------------------------------------------
First Request for Continued Examination (RCE)            $930          $1,200           +$270               +29%
                                                       ($465)          ($600)         (+$135)             (+29%)
                                                        [N/A]          [$300]         [-$165]             [-35%]
----------------------------------------------------------------------------------------------------------------


                  Table 13--Request for Continued Examination (RCE) Historical Cost Information
----------------------------------------------------------------------------------------------------------------
                Historical unit cost information                      FY 2011         FY 2010         FY 2009
----------------------------------------------------------------------------------------------------------------
Request for Continued Examination (RCE).........................          $2,070          $1,696          $1,881
Percentage of RCE cost compared to the cost to process a new                 60%             43%             51%
 application....................................................
----------------------------------------------------------------------------------------------------------------
The historical unit cost information is calculated by subtracting the cost to complete a single application with
 no RCEs from the cost to complete a single application with one RCE. A description of the cost components is
 available for review in the ``Section 10 Fee Setting--Activity-Based Information and Costing Methodology''
 document. It is reasonable to expect that the cost to the Office to complete a single RCE should be less than
 the cost to complete a new application because an RCE is continuing from work already performed on the original
 application. The Office's historical cost data demonstrates this, with the cost to process an RCE being, on
 average, half of the cost to prosecute a new application.......................................................
----------------------------------------------------------------------------------------------------------------

    An applicant may file an RCE in an application that is under final 
rejection (i.e., prosecution is closed) by filing a submission and 
paying a specified fee within the requisite time period. Applicants 
typically file an RCE when they choose to continue to prosecute an 
application before the examiner, rather than appeal a rejection or 
abandon the application. In FY 2011, about 30 percent of applications 
filed were for RCEs. Generally, around 70 percent of RCE applications 
filed in a year are for first RCEs and the remaining 30 percent are a 
second or subsequent RCE. Given this data, it is reasonable to expect 
that most outstanding issues are resolved with the first RCE.
    On February 7, the Office delivered to the PPAC a proposed RCE fee 
of $1,700. In response to stakeholder feedback on both the individual 
fee level and the growth rate of the patent operating reserve, the 
Office now proposes to divide the fees for RCE into two parts: (1) a 
fee for a first RCE; and (2) a second, higher fee for a second or 
subsequent RCE. The Office is proposing this RCE fee division because, 
as stated before, 70 percent of RCEs are for the first RCE, which 
indicates that applicants need modest additional time to resolve the 
outstanding issues with the examiner. Multipart RCE fees demonstrate 
how the Office seeks to facilitate the effective administration of the 
patent system and offer patent prosecution options to applicants.
    The large entity fee for the first RCE would be set about 30 
percent below cost recovery at $1,200 to advance innovation by easing 
the burden on an applicant needing to resolve the outstanding items 
with an examiner. This amount is a reduction from the $1,700 fee 
included in the February 7, 2012, initial proposal to PPAC.
    The USPTO has calculated the large entity cost at $1,700 (rounded) 
by averaging historical costs after

[[Page 55046]]

estimating the incremental cost to complete a single application with 
one RCE compared to the cost to complete an application with no RCE. 
The Office used a three-year average to estimate the cost of a single 
RCE in lieu of using only FY 2011 data, because the trend in historical 
data shows that the cost to process an RCE increased in FY 2011, and 
the Office believes this increase is due to an anomaly caused by the 
Clearing the Oldest Patent Application (COPA) initiative, as described 
in the FY 2011 USPTO Performance and Accountability Report, available 
at http://www.uspto.gov/about/stratplan/ar/2011/mda_02_03.html.
    When an applicant does not agree with a final rejection notice, the 
applicant has the option to file a notice of appeal as an alternative 
to filing an RCE. The fee to file a notice of appeal is also proposed 
to be set below cost recovery and less than the fee proposed for the 
first, and second and subsequent, RCEs (see appeal fee information in 
the following section). The USPTO proposes this fee relationship to 
ensure all applicants have viable options to dispute a final rejection 
when they believe the examiner has erred. These patent prosecution 
options allow applicants to make critical decisions at multiple points 
in the patent prosecution process.
    In addition to dividing the RCEs fees, the Office is exploring 
other ways to address RCEs. Specifically, the Office recently announced 
two pilot programs that aim to avoid the need to file an RCE by 
permitting: (i) An Information Disclosure Statement to be submitted 
after payment of the issue fee; and (ii) further consideration of after 
final responses.
    The first initiative, called Quick Path Information Disclosure 
Statement (IDS) Pilot, permits an applicant to file an IDS after a 
final rejection and gives the examiner time to consider whether 
prosecution should be reopened. If the items of information in the IDS 
do not require prosecution to be reopened, the application will return 
to issue, thereby eliminating need for an RCE.
    The second initiative, called the After Final Consideration Pilot, 
authorizes a limited amount of non-production time for examiners to 
consider responses filed after a final rejection with the goal of 
achieving compact prosecution and increased collaboration between 
examiners and stakeholders. Accordingly, the Office is hopeful for the 
success of these two pilot programs to reduce the number of RCEs and 
thereby enable applicants to secure a patent through a single 
application filing.
    Appeal Fees (Partially New):

                                          Table 14--Appeal Fee Changes
----------------------------------------------------------------------------------------------------------------
                                                Current fees    Proposed fees   Dollar change    Percent change
Fee description                                         Large           Large           Large              Large
                                                      (small)         (small)         (small)            (small)
                                                      [micro]         [micro]         [micro]            [micro]
                                                       entity          entity          entity             entity
----------------------------------------------------------------------------------------------------------------
Notice of Appeal.............................            $620          $1,000           +$380               +61%
                                                       ($310)          ($500)         (+$190)             (+61%)
                                                        [N/A]          [$250]          [-$60]             [-19%]
----------------------------------------------------------------------------------------------------------------
Filing a Brief in Support of an Appeal in                $620              $0           -$620              -100%
 Application or Ex Parte Reexamination                 ($310)            ($0)         (-$310)            (-100%)
 Proceeding..................................           [N/A]            [$0]         [-$310]            [-100%]
----------------------------------------------------------------------------------------------------------------
Appeal Forwarding Fee for Appeal in                       N/A          $2,000         +$2,000                N/A
 Examination or Ex Parte Reexamination                  (N/A)        ($1,000)       (+$1,000)              (N/A)
 Proceeding or Filing a Brief in Support of             [N/A]          [$500]         [+$500]              [N/A]
 an Appeal in Inter Partes Reexamination
 (NEW).......................................
                                              ------------------------------------------------------------------
    Total Appeal Fees                                  $1,240          $1,000           -$240               -19%
    (paid before Examiner Answer)............          ($620)          ($500)         (-$120)             (-19%)
                                                        [N/A]          [$250]         [-$370]             [-60%]
                                              ------------------------------------------------------------------
    Total Appeal Fees                                  $1,240          $3,000         +$1,760              +142%
    (paid after Examiner Answer).............          ($620)        ($1,500)         (+$880)            (+142%)
                                                        [N/A]          [$750]         [+$130]             [+21%]
----------------------------------------------------------------------------------------------------------------


                                Table 15--Appeal Fee Historical Cost Information
----------------------------------------------------------------------------------------------------------------
               Historical unit cost information                    FY 2011          FY 2010          FY 2009
----------------------------------------------------------------------------------------------------------------
Notice of Appeal to Patent Trial and Appeal Board
Filing a Brief in Support of an Appeal                                 $4,799           $4,960           $5,008
Appeal Forwarding Fee
----------------------------------------------------------------------------------------------------------------

    An applicant who disagrees with an examiner's final rejection may 
appeal to the BPAI by filing a notice of appeal and the required fee 
within the time period provided. An applicant likewise may file a 
notice of appeal after the applicant's claim(s) has/have been twice 
rejected, regardless of whether the claim(s) has/have been finally 
rejected. Further, an applicant may file a notice of appeal after a 
first rejection in a continuing application if any of the

[[Page 55047]]

claims in the parent application were previously rejected.
    Within two months from the date of filing the notice of appeal, the 
appellant must file a Brief. Then, the examiner must file an Examiner's 
Answer. After the Answer is mailed, the appeal file is forwarded to the 
BPAI for review.
    Currently, a large entity applicant pays $620 to file a notice of 
appeal and another $620 when filing a brief--a total of $1,240. These 
current fees only recover 25 percent of the Office's cost of an appeal. 
The Office proposes to increase appeal fees to reduce the gap between 
fees and cost. At the same time, the Office proposes to offer patent 
prosecution options to applicants and stage the appeal fees to recover 
additional cost at later points in time and thereby minimize the cost 
impacts on applicants associated with withdrawn final rejections.
    The Office proposes a $1,000 notice of appeal fee and a $0 fee when 
filing the brief. Both of these actions would occur prior to the 
preparation of an Examiner's Answer (and forwarding of the appeal to 
the BPAI). The Office recognizes that after some notices of appeal are 
filed, the matter is resolved, and there is no need to take the 
ultimate step of forwarding the appeal to the BPAI for a decision. The 
Office further proposes a $2,000 fee to forward the appeal file--
containing the appellant's Brief and the Examiner's Answer--to the BPAI 
for review. Under this proposed fee structure, one-third of the fee 
would be paid at the time of notice of appeal, and the remaining two-
thirds would be paid after the Examiner's Answer, but only if the 
appeal is then forwarded to the BPAI. This fee payment structure allows 
the appellant to reduce the amount invested in the appeal process until 
receiving the Examiner's Answer. In fact, when prosecution issues are 
resolved after the notice of appeal and before forwarding an appeal to 
the BPAI, a large entity appellant would pay only $1,000 to obtain an 
Examiner's Answer--19 percent less than under the current fee 
structure.
    Staging the appeal fees in this manner allows applicants to pay 
less in situations when an application is either allowed or reopened 
instead of being forwarded to the BPAI. This patent prosecution option 
allows applicants to make critical decisions at multiple points in the 
patent prosecution process.
    When considering the proposed appeal fees, the Office evaluated 
several options to minimize the cost to applicants. For example, it 
contemplated refunding certain appeal fees if the appeal was not 
forwarded to the BPAI. However, under the current refund statutory 
authority, the Office can only refund all or part of a fee paid by 
mistake or in excess of the fee due. See 35 U.S.C. 42(d). Neither of 
these conditions would apply when the issues raised on appeal are 
resolved and the appeal is not forwarded to the BPAI because the matter 
is resolved.
    On February 7, 2012, the Office delivered to PPAC a fee proposal 
that included two appeal fee payment features: (1) Staging the appeal-
related fees so that cost impacts on some applicants are minimized; and 
(2) paying a $0 pre-grant publication (PGPub) and issue fee if the 
examiner withdraws a final rejection prior to an appeal being forwarded 
to the BPAI.
    While the staging features delivered to PPAC are included in this 
proposed rule, after reevaluating the $0 PGPub and Issue fee, the 
Office decided against proposing it here. Sometimes mistakes or errors 
in prosecution are not self-evident, and sometimes examiners properly 
consider After Final amendments and allow the application even after 
the applicant has filed an appeal. Accordingly, when operating with a 
$0 PGPub and Issue fee, the Office had planned to implement a case-by-
case review process to evaluate the root cause of why the applicant 
filed an appeal. This process would increase the Office's cost of 
operations without realizing counterbalancing benefits.
    Additionally, a $0 PGPub and issue fee would eliminate the need for 
the notice of issue fee payment and could impact when applicants 
receive notice that their applications will proceed to issue. The 
Office understands that the timing of issuance is extremely important 
in managing a business, and that timing may be critically important 
when an applicant intends to file a continuing application. In view of 
these considerations and risks, the Office decided not to propose a $0 
PGPub and issue fee here.
    Finally, just as the Office is exploring ways to minimize 
unnecessary RCE filings, the Office is likewise exploring other 
options, including pilot programs, in an effort to reduce the need to 
appeal to the BPAI.
    Ex Parte Reexamination:

                                  Table 16--Ex Parte Reexamination Fee Changes
----------------------------------------------------------------------------------------------------------------
                                                Current fees    Proposed fees   Dollar change    Percent change
Fee description                                         Large           Large           Large              Large
                                                      (small)         (small)         (small)            (small)
                                                      [micro]         [micro]         [micro]            [micro]
                                                       entity          entity          entity             entity
----------------------------------------------------------------------------------------------------------------
Ex Parte Reexamination.......................        *$17,750         $15,000         -$2,750               -15%
                                                        (N/A)        ($7,500)      (-$10,250)             (-58%)
                                                        [N/A]        [$3,750]      [-$14,000]            [-79%]
----------------------------------------------------------------------------------------------------------------
* For purposes of comparing amounts, where a new fee has been proposed under 35 U.S.C. 41(d)(2) in the January
  and February 2012 Proposed Rules, that proposed fee (as adjusted by the final rule) is included in the current
  fee column and denoted with (*).


                          Table 17--Ex Parte Reexamination Historical Cost Information
----------------------------------------------------------------------------------------------------------------
               Historical unit cost information                    FY 2011          FY 2010          FY 2009
----------------------------------------------------------------------------------------------------------------
Ex Parte Reexamination.......................................         $19,626          $16,647          $17,162
----------------------------------------------------------------------------------------------------------------


[[Page 55048]]


      Table 18--Ex Parte Reexamination Prospective Cost Information
------------------------------------------------------------------------
              Prospective cost information                   FY 2013
------------------------------------------------------------------------
Cost Calculation, 77 FR 3666 (Jan. 25, 2012) available          $17,750
 at http://www.uspto.gov/aia_implementation/cost_calc_supplemental_exam.pdf..........................
------------------------------------------------------------------------

    Any person (including anonymously) may file a petition for the ex 
parte reexamination of a patent that has been issued. The Office 
initially determines if the petition presents ``a substantial new 
question of patentability'' as to the challenged claims. If such a new 
question has been presented, the Office will order a reexamination of 
the patent for the relevant claims.
    Currently, the ex parte reexamination fee is $2,520. 37 CFR 1.20. 
However, while examining its costs to estimate the cost of a 
supplemental examination (pursuant to section 41(d)), the Office found 
that its current ex parte reexamination fee does not recover the 
Office's costs for that service. In fact, the Office incurs about seven 
times the amount of the current fee for an ex parte reexamination. 
Accordingly, to remedy this discrepancy, in January 2012, the Office 
proposed to set the ex parte reexamination fee under section 41(d) at 
$17,750, which recovers the Office's costs for the ex parte 
reexamination (Changes To Implement the Supplemental Examination 
Provisions of the Leahy-Smith America Invents Act and To Revise 
Reexamination Fees, 77 FR 3666 (Jan. 25, 2012)).
    On February 7, 2012, the Office delivered to the PPAC a fee 
proposal under section 10 of the AIA proposing setting the large entity 
fee at the same amount as proposed in the January and February 2012 
Proposed Rules (i.e., $17,750) and introducing new small and micro 
entity discounts for an ex parte reexamination. However, in accordance 
with section 10, third party requestors are not eligible for the micro 
entity discounts.
    In response to stakeholder feedback on both the individual fee 
level and the growth rate of the patent operating reserve in the 
initial proposal, the Office now proposes to reduce the large entity 
fee for ex parte reexamination to $15,000, which is 15 percent below 
the Office's cost of conducting the proceeding. Setting the fee below 
cost will reduce the growth rate of the operating reserve and permit 
easier access to the ex parte reexamination process, which benefits the 
patent system and patent quality by removing low quality patents.
    Supplemental Examination:

                                 Table 19--Supplemental Examination Fee Changes
----------------------------------------------------------------------------------------------------------------
                                                Current fees    Proposed fees   Dollar change    Percent change
Fee description                                         Large           Large           Large              Large
                                                      (small)         (small)         (small)            (small)
                                                      [micro]         [micro]         [micro]            [micro]
                                                       entity          entity          entity             entity
----------------------------------------------------------------------------------------------------------------
Processing and Treating a Request for                 *$5,140          $4,400           -$740               -14%
 Supplemental Examination--Up to 20 Sheets              (N/A)        ($2,200)       (-$2,940)             (-57%)
 (NEW).......................................           [N/A]        [$1,100]       [-$4,040]             [-79%]
----------------------------------------------------------------------------------------------------------------
Ex Parte Reexamination Ordered as a Result of        *$16,120         $13,600         -$2,520               -16%
 a Supplemental Examination Proceeding (NEW).           (N/A)        ($6,800)       (-$9,320)             (-58%)
                                                        [N/A]        [$3,400]      [-$12,720]             [-79%]
                                              ------------------------------------------------------------------
    Total Supplemental Examination Fees......        *$21,300         $18,000         -$3,330               -15%
                                                        (N/A)        ($9,000)      (-$12,300)             (-58%)
                                                        [N/A]        [$4,500]      [-$16,800]            [-79%]
----------------------------------------------------------------------------------------------------------------
* For purposes of comparing amounts, where a new fee has been proposed under 35 U.S.C. 41(d)(2) in the January
  and February 2012 Proposed Rules, that proposed fee (as adjusted by the final rule) is included in the current
  fee column and denoted with (*).


     Table 20--Supplemental Examination Prospective Cost Information
------------------------------------------------------------------------
              Prospective cost information                    FY 2013
------------------------------------------------------------------------
Cost calculation 77 FR 3666 (Jan. 25, 2012) available at http://www.uspto.gov/aia_implementation/cost_calc_supplemental_exam.pdf
------------------------------------------------------------------------
Supplemental Examination Request........................          $5,180
Supplemental Examination Reexamination..................         $16,120
                                                         ---------------
    Total Supplemental Examination Costs................         $21,300
------------------------------------------------------------------------

    A patent owner may request a supplemental examination of a patent 
by the Office to consider, reconsider, or correct information believed 
to be relevant to the patent. This proceeding will help the patent 
owner preempt challenges to the patent during litigation. The need for 
this proceeding arises only after a patent owner recognizes that there 
is information that should have been brought to the attention of the 
Office to consider or reconsider during the application process, or 
information submitted

[[Page 55049]]

during the application process that needs to be corrected.
    The January and February 2012 Proposed Rules (as adjusted by the 
final rule), using section 41(d), proposed to set the fees for the 
request for supplemental examination and the ex parte reexamination 
ordered as a result of a supplemental examination proceeding at $5,140 
and $16,120, respectively.
    On February 7, 2012, the Office delivered to the PPAC proposed fees 
of $7,000 and $20,000, respectively, using section 10 of the AIA, for 
the request for supplemental examination and the ex parte reexamination 
ordered as a result of a supplemental examination proceeding. This 
increase was proposed to encourage applicants to submit applications 
with all relevant information during initial examination, which 
facilitates compact patent prosecution. In response to stakeholder 
feedback on both the individual fee level and the growth rate of the 
patent operating reserve in the initial proposal, the Office now 
proposes to reduce these fees to $4,400 and $13,600, respectively. The 
Office believes these reduced fee amounts continue to be sufficient to 
encourage applicants to submit applications with all relevant 
information during initial examination, yet low enough to facilitate 
the effective administration of the patent system by providing 
patentees with an alternative to the court system for addressing 
inequitable conduct. The Office proposes to set total supplemental 
examination fees of $18,000, 15 percent below cost and 30 percent less 
than the total of $27,000 included in the proposal delivered to PPAC on 
February 7, 2012.
    Inter Partes Review:

                                    Table 21--Inter Partes Review Fee Changes
----------------------------------------------------------------------------------------------------------------
                                                Current fees    Proposed fees   Dollar change    Percent change
Fee description                                         Large           Large           Large              Large
                                                      (small)         (small)         (small)            (small)
                                                      [micro]         [micro]         [micro]            [micro]
                                                       entity          entity          entity             entity
----------------------------------------------------------------------------------------------------------------
Inter Partes Review Request--Up to 20 Claims              NEW          $9,000         +$9,000                N/A
 (Per Claim Fee for Each Claim in Excess of                             (N/A)           (N/A)              (N/A)
 20 is $200).................................                           [N/A]           [N/A]              [N/A]
----------------------------------------------------------------------------------------------------------------
Inter Partes Review Post Institution Fee--Up              NEW         $14,000        +$14,000                N/A
 to 15 Claims (Per Claim Fee for Each Claim                             (N/A)           (N/A)              (N/A)
 in Excess of 15 is $400)....................                           [N/A]           [N/A]              [N/A]
                                              ------------------------------------------------------------------
    Total Inter Partes Review Fees (For              *$27,200         $23,000         -$4,200               -15%
     Current Fees, per Claim Fee for Each               (N/A)           (N/A)           (N/A)              (N/A)
     Claim in Excess of 20 is $600)..........           [N/A]           [N/A]           [N/A]             [N/A]
----------------------------------------------------------------------------------------------------------------
* For purposes of comparing amounts, where a new fee has been proposed under 35 U.S.C. 41(d)(2) in the January
  and February 2012 Proposed Rules, that proposed fee (as adjusted by the final rule) is included in the current
  fee column and denoted with (*).


       Table 22--Inter Partes Review Prospective Cost Information
------------------------------------------------------------------------
 
------------------------------------------------------------------------
              Prospective Cost Information                    FY 2013
------------------------------------------------------------------------
The Total Inter Partes Review cost calculation of $27,200, 77 FR 6879,
 (Feb. 9, 2012) is available for review at http://www.uspto.gov/aia_implementation/rin-0651-ac70.pdf. The Office estimated that 35 hours of
 Judge time would be required during review and used this as the basis
 for estimating the cost for the Inter Partes Review. The IT-related
 costs are included in the Review Request portion of the fee.
------------------------------------------------------------------------
               Description                   Base cost    Per claim cost
------------------------------------------------------------------------
Inter Partes Review Request--up to 20            $10,500      >20 = $200
 claims.................................
Inter Partes Review Post Institution             $16,700      >15 = $400
 Fee--up to 15 claims...................
                                         -------------------------------
    Total Inter Partes Review Costs.....         $27,200             N/A
------------------------------------------------------------------------

    Inter partes review is a new trial proceeding created by the AIA 
that allows the Office to review the patentability of one or more 
claims in a patent only on a ground that could be raised under 35 
U.S.C. 102 or 103, and only on the basis of prior art consisting of 
patents or printed publications. The inter partes review process begins 
with a third party filing a petition. An inter partes review may be 
instituted upon a showing that there is a reasonable likelihood that 
the petitioner would prevail with respect to at least one claim 
challenged.
    In February 2012, the Office proposed setting a single fee for 
inter partes review pursuant to 35 U.S.C. 41(d), at a level to recover 
the Office's entire cost of conducting such proceeding. (See 77 FR 6879 
(Feb. 9, 2012)); (See also 77 FR 7041 (Feb. 10, 2012)). Under that 
proposal, the fee for an inter partes review would be based on the 
number of claims for which review is sought, with the entire fee due on 
filing of the petition. A petitioner could file a petition seeking 
review of up to 20 claims for the base fee of $27,200. Fees would 
increase for each additional 10 claims. For example, an inter partes 
review of 51 to 60 claims would have cost $68,000 (See 77 FR 7050 (Feb. 
10, 2012)).
    On February 7, 2012, the Office delivered to the PPAC a fee 
proposal under section 10 setting the fees at the same amount as 
proposed in the February 2012 Proposed Rule. In

[[Page 55050]]

response to stakeholder feedback on the individual fee levels, the 
structure of the proposed inter partes review fees, and the overall 
growth rate of the patent operating reserve in the initial proposal, 
with this rulemaking, the Office now proposes to set the inter partes 
review fees at a level below the Office's cost recovery and to improve 
the fee payment structure.
    The Office now proposes to set four separate fees for inter partes 
review, which the petitioner would pay upon filing a petition. The 
Office also proposes to return fees for post-institution services 
should a petition not be instituted. Similarly, the Office proposes 
that fees paid for post-institution review of a large number of claims 
be returned if the Office only institutes the review of a subset of the 
requested claims.
    The USPTO proposes to set the fee for an inter partes review 
petition at $9,000 for up to 20 claims. This fee would not be returned 
or refunded to the petitioner even if the review is not instituted.
    In addition, the USPTO proposes to set a per claim fee of $200 for 
each claim requested for review in excess of 20. This fee would not be 
returned or refunded to the petitioner if the review is not instituted 
or if the institution is limited to a subset of the requested claims.
    The USPTO also proposes to set the inter partes review post-
institution fee at $14,000, for a review of up to 15 claims. This fee 
would be returned to the petitioner if the Office does not institute a 
trial.
    Likewise, the Office proposes to set a per claim fee of $400 for 
review of each claim in excess of 15 during the post-institution trial. 
The entire post-institution fee would be returned to the petitioner if 
the Office does not institute a review. The excess claims fees would be 
returned if review of l5 or fewer claims is instituted. If the Office 
reviews more than 15 claims, but fewer than all of the requested 
claims, it would return part of the fee for each claim the Office did 
not review.
    For example, under this proposal, if a party requests inter partes 
review of 52 claims, the petitioner would pay $44,200 ($9,000 plus 32 
[52 minus 20] times $200 equals $15,400; plus $14,000 plus 37 [52 minus 
15] times $400 equals $28,800; for a total of $44,200). This amount is 
35 percent less than what the petitioner would pay under either the 
February 2012 Proposed Rule or the initial proposal to PPAC in February 
2012. In addition, under this proposed rule, if the petitioner seeks 
review of 52 claims, but the Office only institutes review of 40 
claims, the Office would return $4,800 (it did not institute review of 
the 41st through 52nd claim for which review was requested). 
Alternatively, if the review is not instituted at all, the Office would 
return the entire $28,800 for claims over 15 as well as the base 
$14,000 post-institution fee.
    The Office proposes to maintain these two claim thresholds--one for 
petitions (up to 20 claims) and the other for the post-institution 
trials (up to 15 claims)--because it anticipates that it will not 
institute review of 25 percent of claims for which review is requested. 
The Office bases this approach on its analysis of the initial inter 
partes reexaminations filed after September 15, 2011, as well as the 
new opportunity for patent owners to file a response to the petition 
before the Office determines whether and for which claims to institute 
review.
    This proposal also considers certain policy factors, such as 
fostering innovation through facilitating greater access to the inter 
partes review proceedings because certainty of patent rights benefits 
the overall IP system.
    Post Grant Review or Covered Business Method Patent Review:

                Table 23--Post Grant Review or Covered Business Method Patent Review Fee Changes
----------------------------------------------------------------------------------------------------------------
                 Fee description                   Current fees    Proposed fees   Dollar change  Percent change
                                                           Large           Large           Large           Large
                                                         (small)         (small)         (small)         (small)
                                                         [micro]         [micro]         [micro]         [micro]
                                                          entity          entity          entity          entity
----------------------------------------------------------------------------------------------------------------
Post Grant Review or Covered Business Method                 NEW         $12,000        +$12,000             N/A
 Patent Review Request--Up to 20 Claims (Per                               (N/A)           (N/A)           (N/A)
 Claim Fee for Each Claim in Excess of 20 is                               [N/A]           [N/A]           [N/A]
 $250)..........................................
Post Grant Review or Covered Business Method                 NEW         $18,000         $18,000             N/A
 Patent Review Post Institution Fee--Up to 15                              (N/A)           (N/A)           (N/A)
 Claims (Per Claim Fee for Each Claim in Excess                            [N/A]           [N/A]           [N/A]
 of 15 is $550).................................
                                                 ---------------------------------------------------------------
    Total Post Grant Review or Covered Business        * $35,800         $30,000         -$5,800            -16%
     Method Patent Review Fees (For Current                (N/A)           (N/A)           (N/A)           (N/A)
     Fees, Per Claim Fee for Each Claim in                 [N/A]           [N/A]           [N/A]           [N/A]
     Excess of 20 is $800)......................
----------------------------------------------------------------------------------------------------------------
* For purposes of comparing amounts, where a new fee has been proposed under 35 U.S.C. 41(d)(2) in the January
  and February 2012 Proposed Rules, that proposed fee (as adjusted by the final rule) is included in the current
  fee column and denoted with (*).


[[Page 55051]]


  Table 24--Post Grant Review or Covered Business Method Patent Review
                      Prospective Cost Information
------------------------------------------------------------------------
 
------------------------------------------------------------------------
Prospective cost information                                     FY 2013
------------------------------------------------------------------------
The Total Post Grant Review cost calculation of $35,800, 77 FR 6879,
 (Feb. 9, 2012) is available for review at http://www.uspto.gov/aia_implementation/rin-0651-ac70.pdf. The Office estimated that 50 hours of
 Judge time would be required during review and used this as the basis
 for estimating the cost for the Post Grant Review. The IT-related costs
 are included in the Review Request portion of the fee..................
------------------------------------------------------------------------
               Description                   Base cost    Per claim cost
------------------------------------------------------------------------
Post Grant Review or Covered Business            $14,700     > 20 = $250
 Method Patent Review Request--up to 20
 claims.................................
Post Grant Review or Covered Business            $21,100     > 15 = $550
 Method Patent Review Post Institution
 Fee--up to 15 claims...................
                                         -------------------------------
    Total Post Grant Review Costs.......         $35,800             N/A
------------------------------------------------------------------------

    Post grant review is a new trial proceeding created by the AIA that 
allows the Office to review the patentability of one or more claims in 
a patent on any ground that could be raised under 35 U.S.C. 282(b)(2) 
and (b)(3) in effect on September 16, 2012. The post grant review 
process begins when a third party files a petition within nine months 
of the grant of the patent. A post grant review may be instituted upon 
a showing that it is more likely than not that at least one challenged 
claim is unpatentable or that the petition raises an unsettled legal 
question that is important to other patents or patent applications. If 
the trial is instituted and not dismissed, the Board will issue a final 
determination within one year of institution. This period can be 
extended for good cause for up to six months from the date of one year 
after instituting the review.
    In February 2012, the Office proposed under 35 U.S.C. 41(d) to set 
a single fee for post grant review at a level to recover the entire 
cost of conducting the proceeding based on the number of claims under 
review, with the entire fee due on filing of the petition. (See Changes 
To Implement Post-Grant Review Proceedings, 77 FR 7060 (Feb. 9, 2012)). 
The Office proposed a base fee of $35,800 for a post grant review of up 
to 20 claims. In addition, the Office proposed a structure of 
escalating fees for each additional 10 claims. For example, a post 
grant review of 51 to 60 claims would cost $89,500 (See 77 FR 7060, 
7070).
    On February 7, 2012, the Office submitted to the PPAC a fee 
proposed under section 10 setting the fees at the same amount as the 
February 2012 proposed rule. In response to stakeholder feedback on the 
individual fee levels, alternative post grant review fee structures, 
and overall growth rate of the patent operating reserve in the initial 
proposal, the Office now proposes to set the post grant review fee at a 
level below the Office's cost recovery and to improve the fee payment 
structure.
    The Office proposes here to set four separate fees for post grant 
review, which the petitioner would pay upon filing a petition for post 
grant review. The Office also proposes to return fees for post-
institution services if a review is not instituted. Similarly, the 
Office proposes that fees paid for a post-institution review of a large 
number of claims be returned if the Office only institutes the review 
of a subset of the requested claims. The Office proposes the same 
structure and fees apply for covered business method review.
    The Office proposes to set the fee for a post grant review petition 
at $12,000 for up to 20 claims. This fee would not be returned or 
refunded to the petitioner even if the review is not instituted by the 
Office.
    In addition, the Office proposes a per claim fee of $250 for each 
claim in excess of 20. This fee would not be returned or refunded to 
the petitioner if the review is not instituted, or if the institution 
is limited to a subset of the requested claims.
    The USPTO also proposes a post grant review post-institution fee at 
$18,000, for post-institution review of up to 15 claims. This fee would 
be returned to the petitioner if the Office does not institute a 
review.
    Likewise, the Office proposes to set a per claim fee of $550 for 
review of each claim in excess of 15 during the post-institution trial. 
The entire fee would be returned to the petitioner if the Office does 
not institute a review. The excess claims fees would be returned if 
review of 15 or fewer claims is instituted. If the Office reviews more 
than 15 claims, but fewer than all of the requested claims, it would 
return part of the fee for each claim that was not instituted.
    For example, under the proposal here, a party seeking post grant 
review of 52 claims would pay $58,350 ($12,000 plus 32 [52 minus 20] 
times $250 equals $20,000; plus $18,000 plus 37 [52 minus 15] times 
$550 equals $38,350; for a total of $58,350). This amount is 35 percent 
less than the petitioner would pay under the February 2012 Proposed 
Rule and the initial proposal to PPAC in February 2012. In addition, 
under this proposal, if the petitioner requests review of 52 claims, 
but the Office only institutes review of 40 claims, then the Office 
would return $6,600 (it did not institute review of the 41st through 
52nd claims for which review was requested). Alternatively, if a review 
is not instituted at all, the Office would return the entire $38,350 
for claims over 15, as well as the base $18,000 post-institution fee.
    The Office proposes to maintain two different claim thresholds--one 
for petition (up to 20 claims) and the other for the post-institution 
trials (up to 15 claims)--because it anticipates that it will not 
institute a review of 25 percent of claims for which review is 
requested. The Office bases this approach on its analysis of the 
initial inter partes reexaminations filed after September 15, 2011, as 
well as the new opportunity for patent owners to file a response to the 
petition before the Office determines whether and for which claims to 
institute review.
    The adjustments proposed here also consider certain policy factors, 
such as fostering innovation through facilitating greater access to the 
post grant review proceedings because certainty of patent rights 
benefits the overall IP system.
    Pre Grant Publication (PGPub) Fee:

[[Page 55052]]



                               Table 25--Pre Grant Publication (PGPub) Fee Changes
----------------------------------------------------------------------------------------------------------------
                                                Current fees    Proposed fees   Dollar change    Percent change
Fee description                                         Large           Large           Large              Large
                                                      (small)         (small)         (small)            (small)
                                                      [micro]         [micro]         [micro]            [micro]
                                                       entity          entity          entity             entity
----------------------------------------------------------------------------------------------------------------
Publication Fee for Early, Voluntary, or                 $300              $0           -$300               100%
 Normal Publication..........................           (N/A)            ($0)         (-$300)            (-100%)
                                                        [N/A]            [$0]         [-$300]            [-100%]
                                              ------------------------------------------------------------------
Publication Fee for Republication............            $300            $300              $0                 0%
                                                        (N/A)           (N/A)           (N/A)              (N/A)
                                                        [N/A]           [N/A]           [N/A]              [N/A]
----------------------------------------------------------------------------------------------------------------


                       Table 26--Pre Grant Publication (PGPub) Historical Cost Information
----------------------------------------------------------------------------------------------------------------
               Historical unit cost information                    FY 2011          FY 2010          FY 2009
----------------------------------------------------------------------------------------------------------------
Publication Fee for Early, Voluntary, or Normal Publication..            $181             $158             $243
----------------------------------------------------------------------------------------------------------------

    With certain exceptions, each nonprovisional utility and plant 
patent application is published 18 months from the earliest filing 
date. The fee for this pre-grant publication (PGPub) is paid only after 
a patent is granted. If a patent is never granted, the applicant does 
not pay the fee for PGPub. Once the Office determines that the 
invention claimed in a patent application is patentable, the Office 
sends a notice of allowance to the applicant, outlining the patent 
application publication fees due, along with the patent issue fee. The 
applicant must pay these publication and issue fees three months from 
the date of the notice of allowance to avoid abandoning the 
application.
    Currently, the PGPub fee is set at $300 and collects over one and a 
half times the cost to publish a patent application. The IP system 
benefits from publishing patent applications; disclosing information 
publicly stimulates research and development, as well as subsequent 
commercialization through further development or refinement of an 
invention. Therefore, a lower PGPub fee would benefit both the 
applicant and innovators in the patent system.
    Given that publishing a patent application 18 months after its 
receipt benefits the IP system more than individual applicants, the 
Office proposes to reduce the PGPub fee to $0. Reducing this fee also 
helps rebalance the fee structure and offsets the proposed increases to 
filing, search, and examination fees ($350 increase, less this $300 
decrease is a net $50 increase--or 3 percent--to apply for a patent and 
publish the application). This proposed change is consistent with the 
initial proposal delivered to PPAC on February 7, 2012.
    It should be noted that the PGPub fee for republication of a patent 
application (1.18(d)(2)) is not proposed to be adjusted, but will be 
set at the existing rate of $300. The Office proposes to keep this fee 
at its existing rate for each patent application that must be published 
again after a first publication for $0.
(3) Fees To Be Set Above Cost Recovery
    There are two types of fees that the Office proposes to set above 
cost recovery that meet the greater than plus or minus 5 percent and 10 
dollars criteria. The policy factor relevant to setting fees above cost 
recovery is fostering innovation. Back-end fees (e.g., issue and 
maintenance fees) work in concert with front-end fees. The above-cost, 
back-end fees allow the Office to recover the revenue required to 
subsidize the cost of entry into the patent and reduce the backlog of 
patent applications. A discussion of the rationale for each proposed 
change follows.
    Issue Fees:

                                           Table 27--Issue Fee Changes
----------------------------------------------------------------------------------------------------------------
                                                Current fees    Proposed fees   Dollar change    Percent change
Fee description                                         Large           Large           Large              Large
                                                      (small)         (small)         (small)            (small)
                                                      [micro]         [micro]         [micro]            [micro]
                                                       entity          entity          entity             entity
----------------------------------------------------------------------------------------------------------------
Utility Issue Fee............................          $1,740            $960           -$780               -45%
                                                       ($870)          ($480)         (-$390)             (-45%)
                                                        [N/A]          [$240]         [-$630]             [-72%]
----------------------------------------------------------------------------------------------------------------


                                 Table 28--Issue Fee Historical Cost Information
----------------------------------------------------------------------------------------------------------------
               Historical unit cost information                    FY 2011          FY 2010          FY 2009
----------------------------------------------------------------------------------------------------------------
Utility Issue Fee............................................            $257             $231             $224
----------------------------------------------------------------------------------------------------------------


[[Page 55053]]

    Once the Office determines that the invention claimed in a patent 
application is patentable, the USPTO sends a notice of allowance to the 
applicant outlining the patent application publication and patent issue 
fees due. The applicant must pay the publication and issue fees three 
months from the date of the notice of allowance to avoid abandoning of 
the application.
    In setting fees due after completing prosecution at a level higher 
than cost, front-end fees can be maintained below cost, thereby 
fostering innovation. Currently, the large entity issue fee is set at 
$1,740, which is seven times more than the cost of issuing a patent. 
This fee recovers revenue, but it also poses a challenge to applicants 
at time of allowance. When the issue fee is due, patent owners possess 
less information about the value of their invention than they do a few 
years later. Lowering issue fees would consequently help inventors 
financially at a time when the marketability of their invention is less 
certain. Finally, setting the PGPub fee at $0 as discussed above, and 
recovering the combined cost of publishing and issuing an application 
through only the issue fee benefits small and micro entity innovators. 
The 50 percent discount for small entities and 75 percent discount for 
micro entities are not available for the publication fee, but are 
available for the issue fee. Thus, there are benefits to both the IP 
system and the applicant when the issue fees are set at an amount lower 
than the current fee amount, but still above cost recovery.
    To both maintain the beneficial aspects of this back-end subsidy 
model and realign the balance of the fee structure, the Office proposes 
to decrease the large entity issue fee to $960. This amount is about 
twice the cost of both publishing an application (which is proposed to 
be set below cost at $0) and issuing a patent. This fee adjustment is 
over a 50 percent decrease from the amount currently paid for both the 
PGPub and issue fees together and is the amount initially proposed in 
the fee schedule delivered to the PPAC on February 7, 2012.
    It should be noted that utility issue fees are referenced in this 
section to simplify the discussion of the fee rationale; however, the 
rationale is applicable to the issue fee changes for design, plant, and 
reissue fees as outlined in the ``USPTO Section 10 Fee Setting--Table 
of Patent Fee Changes''.
    Maintenance Fees:

                                        Table 29--Maintenance Fee Changes
----------------------------------------------------------------------------------------------------------------
                                                Current fees    Proposed fees   Dollar change    Percent change
Fee description                                         Large           Large           Large              Large
                                                      (small)         (small)         (small)            (small)
                                                      [micro]         [micro]         [micro]            [micro]
                                                       entity          entity          entity             entity
----------------------------------------------------------------------------------------------------------------
Maintenance Fee Due at 3.5 Years (1st Stage).          $1,130          $1,600           +$470               +42%
                                                       ($565)          ($800)         (+$235)             (+42%)
                                                        [N/A]          [$400]         [-$165]             [-29%]
----------------------------------------------------------------------------------------------------------------
Maintenance Fee Due at 7.5 Years (2nd Stage).          $2,850          $3,600           +$750               +26%
                                                     ($1,425)        ($1,800)         (+$375)             (+26%)
                                                        [N/A]          [$900]         [-$525]             [-37%]
----------------------------------------------------------------------------------------------------------------
Maintenance Fee Due at 11.5 Years (3rd Stage)          $4,730          $7,400         +$2,670               +56%
                                                     ($2,365)        ($3,700)       (+$1,335)             (+56%)
                                                        [N/A]        [$1,850]         [-$515]             [-22%]
----------------------------------------------------------------------------------------------------------------


                              Table 30--Maintenance Fee Historical Cost Information
----------------------------------------------------------------------------------------------------------------
                Historical unit cost information                    FY 2011\*\        FY 2010         FY 2009
----------------------------------------------------------------------------------------------------------------
Maintenance Fee Due at 3.5 Years (1st Stage)....................  ..............              $1              $2
Maintenance Fee Due at 7.5 Years (2nd Stage)....................  ..............              $1              $2
Maintenance Fee Due at 11.5 Years (3rd Stage)...................  ..............              $1              $2
----------------------------------------------------------------------------------------------------------------
\*\ Beginning in FY 2011, the Office determined that the maintenance fee activity was in support of the process
  application fees activity and its associated fees. Therefore, the Office reassigned these costs accordingly,
  and no longer estimates a unit cost for maintenance fee activities. Additional information about the
  methodology for determining the cost of performing the Office's activities, including the cost components
  related to respective fees, available at http://www.uspto.gov/aia_implementation/fees.jsp#heading-1 in the
  document titled ``USPTO Section 10 Fee Setting--Activity-Based Information and Costing Methodology.''

    Maintenance fees must be paid at defined intervals--3.5 years, 7.5 
years, and 11.5 years--after the Office grants a utility patent in 
order to keep the patent in force. Maintaining a patent costs the 
Office very little. However, maintenance fees benefit the Office and 
the patent system by generating revenue that permits the Office to keep 
front-end patent prosecution fees below cost and to subsidize the cost 
of prosecution for small and micro entity innovators.
    Additionally, maintenance fees will be paid only by patent owners 
who believe the value of their patent is much higher than this fee for 
renewing these patent rights, thus when not renewed the subject matter 
of the patent can be utilized freely. On this score, setting early 
maintenance fees lower than later maintenance fees mitigates 
uncertainty associated with the value of the patent. As the value 
becomes more certain over time, the maintenance fee should (and does) 
increase, because patent owners have more information about the 
commercial value of the patented invention and can more readily decide 
whether the benefit of a patent outweighs the cost of the fee. For 
example, when a patent holder pays the first stage maintenance fee at 
3.5 years, the holder has less information about the commercial value 
of the patent than when the holder pays the third stage maintenance fee 
at 11.5 years.
    Therefore, under a progressively higher maintenance fee schedule, a

[[Page 55054]]

patent holder is positioned to perform an individual cost-benefit 
analysis to determine if the patent is at least as valuable as the 
maintenance fee payment. When the patent holder determines the patent 
benefit (value) outweighs the cost (maintenance fee), the holder will 
likely continue to maintain the patent. Conversely, when the patent 
holder determines that the benefit is less than the cost, the holder 
likely will not maintain the patent to full term. When the patent 
expires, the subject matter of the patent is no longer held with 
exclusive patent rights and subsequent stakeholders may utilize the 
idea from the public domain and work to extend its innovation or 
commercialization. More information on the economic costs and benefits 
of patent renewal can be found in the rulemaking Regulatory Impact 
Analysis, which is available for review at http://www.uspto.gov/aia_implementation/fees.jsp.
    The Office proposes to increase the first, second, and third stage 
maintenance fees to $1,600, $3,600, and $7,400, respectively. This 
increase is commensurate with the subsidies offered for prosecution of 
a patent application and aligns with the fee setting strategy of 
fostering innovation by setting front-end fees below cost. The increase 
also ensures the USPTO has sufficient aggregate revenue to recover the 
aggregate cost of operations and implement goals and objectives.
    On February 7, 2012, the Office delivered to the PPAC proposed fees 
of $1,600, $3,600, and $7,600 for the first, second, and third stage 
maintenance fees respectively. In response to stakeholder feedback on 
both the individual fee levels and the growth rate of the patent 
operating reserve, the Office now proposes to decrease the third stage 
maintenance fee to $7,400 while maintaining the first and second stage 
maintenance fees at the rates proposed to the PPAC.
(4) Fees That Are Not Set Using Cost Data as an Indicator
    Fees in this category include those proposed fees for which the 
USPTO does not typically maintain historical cost information separate 
from that included in the average overall cost of activities during 
patent prosecution or did not refer to cost information for setting the 
particular fee. Instead, the Office evaluates the policy factors 
described in Rulemaking Goals and Strategies, Part III above, to inform 
fee setting. Some of these fees are based on the size and complexity of 
an application and help the Office to effectively administer the patent 
system by encouraging applicants to engage in certain activities. 
Setting fees at particular levels can: (1) Encourage the submission of 
applications or other actions which lead to more efficient processing 
where examiners can provide, and applicants can receive, prompt, 
quality interim and final decisions; (2) encourage the prompt 
conclusion of prosecuting an application, resulting in pendency 
reduction and the faster dissemination of patented information; and (3) 
help recover costs for activities that strain the patent system.
    There are six types of fees in this category. A discussion of the 
rationale for each proposed change follows.
    Extensions of Time Fees:

                                    Table 31--Extensions of Time Fee Changes
----------------------------------------------------------------------------------------------------------------
                                                Current fees    Proposed fees   Dollar change    Percent change
Fee description                                         Large           Large           Large              Large
                                                      (small)         (small)         (small)            (small)
                                                      [micro]         [micro]         [micro]            [micro]
                                                       entity          entity          entity             entity
----------------------------------------------------------------------------------------------------------------
Extensions for Response within 1st Month.....            $150            $200            +$50               +33%
                                                        ($75)          ($100)          [+$25]             (+33%)
                                                        [N/A]           [$50]          [-$25]             [-33%]
----------------------------------------------------------------------------------------------------------------
Extensions for Response within 2nd Month.....            $560            $600            +$40                +7%
                                                       ($280)          ($300)          [+$20]              (+7%)
                                                        [N/A]          [$150]         [-$130]             [-46%]
----------------------------------------------------------------------------------------------------------------
Extensions for Response within 3rd Month.....          $1,270          $1,400           +$130               +10%
                                                       ($635)          ($700)          [+$65]             (+10%)
                                                        [N/A]          [$350]         [-$285]             [-45%]
----------------------------------------------------------------------------------------------------------------
Extensions for Response within 4th Month.....          $1,980          $2,200           +$220               +11%
                                                       ($990)        ($1,100)         [+$110]             (+11%)
                                                        [N/A]          [$550]         [-$440]             [-44%]
----------------------------------------------------------------------------------------------------------------
Extensions for Response within 5th Month.....          $2,690          $2,000           +$310               +12%
                                                     ($1,345)        ($1,500)         [+$155]             (+12%)
                                                        [N/A]          [$750]         [-$595]             [-44%]
----------------------------------------------------------------------------------------------------------------

    If an applicant must reply within a non-statutory or shortened 
statutory time period, the applicant can extend the reply time period 
by filing a petition for an extension of time and paying the requisite 
fee. Extensions of time may be automatically authorized at the time an 
application is filed or requested as needed during prosecution. The 
USPTO proposes to increase these fees to facilitate an efficient and 
prompt conclusion of application processing, which benefits the 
Office's compact prosecution initiatives and reduces patent pendency. 
The fees proposed in this rulemaking are the same as those included in 
the proposal delivered to the PPAC on February 7, 2012.
    Application Size Fees:

[[Page 55055]]



                                     Table 32--Application Size Fee Changes
----------------------------------------------------------------------------------------------------------------
                                                Current fees    Proposed fees   Dollar change    Percent change
Fee description                                         Large           Large           Large              Large
                                                      (small)         (small)         (small)            (small)
                                                      [micro]         [micro]         [micro]            [micro]
                                                       entity          entity          entity             entity
----------------------------------------------------------------------------------------------------------------
Application Size Fee--For each Additional 50             $310            $400            +$90               +29%
 Sheets that Exceed 100 Sheets...............          ($155)          ($200)          (+$45)             (+29%)
                                                        [N/A]          [$100]          [-$55]             [-35%]
----------------------------------------------------------------------------------------------------------------

    Currently, the Office charges an additional fee for any application 
where the specification and drawings together exceed 100 sheets of 
paper. The application size fee applies for each additional 50 sheets 
of paper or fraction thereof. The USPTO proposes to increase the 
application size fee to facilitate an efficient and compact application 
examination process, which benefits the applicant and the effective 
administration of patent prosecution. Succinct applications facilitate 
faster examination with an expectation of fewer errors. The fees 
proposed in this rulemaking are the same as those included in the 
proposal delivered to the PPAC on February 7, 2012.
    Excess Claims:

                                       Table 33--Excess Claims Fee Changes
----------------------------------------------------------------------------------------------------------------
                                                Current fees    Proposed fees   Dollar change    Percent change
Fee description                                         Large           Large           Large              Large
                                                      (small)         (small)         (small)            (small)
                                                      [micro]         [micro]         [micro]            [micro]
                                                       entity          entity          entity             entity
----------------------------------------------------------------------------------------------------------------
Independent Claims in Excess of 3............            $250            $420           +$170               +68%
                                                       ($125)          ($210)          (+$85)             (+68%)
                                                        [N/A]          [$105]          [-$20]             [-16%]
----------------------------------------------------------------------------------------------------------------
Claims in Excess of 20.......................             $60             $80            +$20               +33%
                                                        ($30)           ($40)          (+$10)             (+33%)
                                                        [N/A]           [$20]          [-$10]             [-33%]
----------------------------------------------------------------------------------------------------------------
Multiple Dependent Claim.....................            $450            $780           +$330               +73%
                                                       ($225)          ($390)         (+$165)             (+73%)
                                                        [N/A]          [$195]          [-$30]             [-13%]
----------------------------------------------------------------------------------------------------------------

    Currently, the Office charges a fee for filing, or later presenting 
at any other time, each independent claim in excess of 3, as well as 
each claim (whether dependent or independent) in excess of 20. In 
addition, any original application that is filed with, or amended to 
include, multiple dependent claims must pay the multiple dependent 
claim fee. Generally, a multiple dependent claim is a dependent claim 
which refers back in the alternative to more than one preceding 
independent or dependent claim.
    The Office proposes to increase claim fees to facilitate an 
efficient and compact application examination process, which benefits 
the applicant and the USPTO through more effective administration of 
patent prosecution. Filing applications with the most prudent number of 
claims will enable prompt conclusion of application processing, because 
more succinct applications facilitate faster examination with an 
expectation of fewer errors.
    On February 7, 2012, the Office delivered to the PPAC proposed 
excess claims fee amounts higher than those proposed here. 
Specifically, the Office proposed setting the fee for independent 
claims in excess of three to $460, for claims in excess of 20 to $100, 
and for multiple dependent claims to $860. In response to stakeholder 
feedback about the amount of the increases to excess claims and the 
growth rate of the patent operating reserve, the Office now proposes to 
set fees for independent claims in excess of three to $420, for claims 
in excess of 20 to $80, and for multiple dependent claims to $780. The 
Office proposes to increase the excess claims fees to facilitate an 
efficient and compact application examination process, which benefits 
the applicant and the effective administration of the patent system. 
Succinct applications with a prudent number of unambiguous claims 
facilitate faster examination with an expectation of fewer errors 
during examination.
    Correct inventorship after first action on the merits (New):

[[Page 55056]]



                   Table 34--Correct Inventorship After First Action on the Merits Fee Changes
----------------------------------------------------------------------------------------------------------------
                                                Current fees    Proposed fees   Dollar change    Percent change
Fee description                                         Large           Large           Large              Large
                                                      (small)         (small)         (small)            (small)
                                                      [micro]         [micro]         [micro]            [micro]
                                                       entity          entity          entity             entity
----------------------------------------------------------------------------------------------------------------
Correct Inventorship After First Action on                N/A          $1,000         +$1,000                N/A
 the Merits (NEW)............................           (N/A)          ($500)         (+$500)              (N/A)
                                                        [N/A]          [$250]         [+$250]              [N/A]
----------------------------------------------------------------------------------------------------------------

    The Office needs to know who the inventors are to prepare patent 
application publications, conduct examination under 35 U.S.C. 102 and 
103, and prevent double patenting. Changes to inventorship (e.g., 
adding previously unnamed persons as inventors or removing persons 
previously named as inventors) cause additional work for the Office. 
For instance, the Office may need to repeat prior art searches and/or 
reconsider patentability under sections 102 and 103, as well as 
reconsider the possibility of double patenting.
    On February 7, 2012, the Office delivered to the PPAC two proposed 
fees: (1) a $3,000 fee to file an oath and declaration up to the notice 
of allowance; and (2) a $1,700 fee to correct inventorship during 
examination where it had not been provided before examination started. 
In response to stakeholder feedback, the Office now proposes to 
eliminate the $3,000 filing fee and reduce the $1,700 inventorship 
correction fee to $1,000. The inventorship correction fee is proposed 
to encourage reasonable diligence and a bona fide effort to ascertain 
the actual inventorship as early as possible and to provide that 
information to the Office prior to examination. The fee will also help 
offset the costs incurred by the Office when there is a change in 
inventorship.
    The Office appreciates that inventorship may change as the result 
of a restriction requirement by the Office. Where inventorship changes 
as a result of a restriction requirement, the applicant should file a 
request to correct inventorship promptly (prior to first Office action 
on the merits) to avoid this fee for requests to correct inventorship 
in an application after the first Office action on the merits. 
Otherwise, the Office will incur the costs during examination related 
to the change in inventorship. Accordingly, the fee for requests to 
correct inventorship in an application after the first Office action on 
the merits fee would be required.
    Derivation proceeding (New):

                                   Table 35--Derivation Proceeding Fee Changes
----------------------------------------------------------------------------------------------------------------
                                                Current fees    Proposed fees   Dollar change    Percent change
Fee description                                         Large           Large           Large              Large
                                                      (small)         (small)         (small)            (small)
                                                      [micro]         [micro]         [micro]            [micro]
                                                       entity          entity          entity             entity
----------------------------------------------------------------------------------------------------------------
Derivation petition fee (NEW)................           *$400            $400              $0                 0%
                                                        (N/A)           (N/A)           (N/A)              (N/A)
                                                        [N/A]           [N/A]           [N/A]              [N/A]
                                              ------------------------------------------------------------------
Derivation institution and trial fee (NEW)...             N/A              $0              $0                N/A
                                                        (N/A)            ($0)            ($0)              (N/A)
                                                        [N/A]            [$0]            [$0]              [N/A]
----------------------------------------------------------------------------------------------------------------
* For purposes of comparing amounts, where a new fee has been proposed under 35 U.S.C. 41(d)(2) in the January
  and February 2012 Proposed Rules, that proposed fee is included in the current fee column and denoted with
  (*).

    A derivation proceeding is a new trial proceeding conducted at the 
BPAI to determine whether an inventor named in an earlier application 
derived the claimed invention from an inventor named in the 
petitioner's application; and whether the earlier application claiming 
such invention was authorized. An applicant subject to the first-
inventor-to-file provisions may file a petition to institute a 
derivation proceeding only within one year of the first publication of 
a claim to an invention that is the same or substantially the same as 
the earlier application's claim to the invention. The petition must be 
supported by substantial evidence that the claimed invention was 
derived from an inventor named in the petitioner's application.
    On February 10, 2012, the Office proposed under 35 U.S.C. 41(d) 
procedures for derivation proceedings before the BPAI. (Changes To 
Implement Derivation Proceedings, 77 FR 7028 (Feb. 10, 2012)). In that 
action, the Office proposed the $400 derivation petition fee. On 
February 7, 2012, the Office provided an initial fee proposal to the 
PPAC with the same fee, $400. Here, the Office proposes to retain the 
$400 derivation petition fee and to set an additional fee of $0 for a 
derivation institution and trial.
    The Office estimates the $400 petition fee will recover its cost to 
process a petition for derivation. The Office also estimates that its 
costs for determining whether to institute and conducting a trial are 
approximately $40,000. However, the Office does not propose to recover 
the full cost of instituting and conducting the trial from the 
petitioner. Instead, by charging a $0 trial fee, the Office seeks to 
promote issuing patents to the actual inventor and to discourage a 
situation where another had derived the invention from the actual 
inventor and sought a patent on the derived invention. As there is no 
requirement for fees in derivation proceedings under the AIA, the 
Office has flexibility in setting the timing and amount of the

[[Page 55057]]

fee(s) that may be required for derivation.
    Assignments Submitted Electronically Fee (New):

                         Table 36--Fee Changes for Assignments Submitted Electronically
----------------------------------------------------------------------------------------------------------------
                                                Current fees    Proposed fees   Dollar change    Percent change
Fee description                                         Large           Large           Large              Large
                                                      (small)         (small)         (small)            (small)
                                                      [micro]         [micro]         [micro]            [micro]
                                                       entity          entity          entity             entity
----------------------------------------------------------------------------------------------------------------
Assignments Submitted Electronically (NEW)...             $40              $0            -$40              -100%
                                                        (N/A)           (N/A)           (N/A)              (N/A)
                                                        [N/A]           [N/A]           [N/A]              [N/A]
                                              ------------------------------------------------------------------
Assignments Not Submitted Electronically                  $40             $40              $0                 0%
 (NEW).......................................
                                                        (N/A)           (N/A)           (N/A)              (N/A)
                                                        [N/A]           [N/A]           [N/A]              [N/A]
----------------------------------------------------------------------------------------------------------------
Note: The current fee amount is $40 for submitting an assignment to the Office, regardless of method of
  submission.

    Ownership of a patent gives the patent owner the right to exclude 
others from making, using, offering for sale, selling, or importing 
into the U.S. the invention claimed in a patent. Patent law provides 
for the transfer or sale of a patent, or of an application for patent, 
by an instrument in writing (i.e., an assignment). When executing an 
assignment, the patent owner may assign (e.g., transfer) the total or a 
percentage of interest, rights, and title of a patent to an assignee. 
When there is a completed assignment, the assignee becomes the owner of 
the patent and has the same rights of the original patentee. The Office 
records assignments sent to it, and the recording serves as public 
notice.
    Assignment records are an important part of the business cycle--
markets operate most efficiently when buyers and sellers can locate one 
another. If assignment records are incomplete, the business and 
research and development cycles could be disrupted because buyers face 
difficulty finding sellers, and potential innovators may not have a 
thorough understanding of the marketplace they are considering 
entering. The Office recognizes that complete patent assignment data 
disseminated to the public provides certainty in the technology space 
and helps to encourage innovation.
    Therefore, more complete patent assignment records would produce a 
number of benefits for the public and IP stakeholders. The public would 
have a more comprehensive understanding of which entities hold and 
maintain U.S. patent rights. Patenting inventors and companies would 
better understand the competitive environment in which they are 
operating, allowing them to better allocate their own research and 
development resources, more efficiently obtain licenses, and accurately 
value patent portfolios.
    Currently, a patent owner must pay $40 to record the assignment of 
patent rights. During FY 2011 approximately 90 percent of assignments 
were submitted electronically. This fee could be viewed as a barrier to 
those involved in patent and application assignments. Given that patent 
applications, patents, and the completeness of the patent record play 
an important role in the markets for innovation and the long-term 
health of the U.S. economy, the Office proposes to set two fees for 
recording an assignment. When an assignment is submitted using the 
Office's electronic system, the Office proposes to set the fee at $0. 
When an assignment is sent to the Office in a manner other than using 
the Office's electronic system, the Office proposes to set the fee at 
the current amount of $40. Providing these patent prosecution options 
for applicants benefits a majority of owners who typically record 
assignments. In addition, the patent prosecution options for applicants 
also benefit the overall IP system by reducing the financial barrier 
for recording patent ownership information and facilitating a more 
complete record of assigned applications and grants.

C. Fees With No Proposed Changes (or Changes of Less Than Plus or Minus 
5 Percent and 10 Dollars)

    The Office proposes to set all other categories of fees not 
discussed above at existing fee rates or at adjusted slightly fees 
(i.e., less than plus or minus 5 percent and 10 dollars) to be rounded 
to the nearest ten dollars by applying standard arithmetic rules. The 
resulting proposed fee amounts will be convenient to patent users and 
permit the Office to set micro entity fees at whole dollar amounts when 
applying the fee reduction. These other fees, such as those related to 
disclosing patent information to the public (excluding the PGPub fee) 
and patent attorney/agent enrollment and discipline fees, are already 
set at appropriate levels to achieve the Office's goals expressed in 
this rulemaking.

D. Overall Comparison of the Proposed Patent Fee Schedule to the 
Current Fees

    Overall, the total amount of fees under this proposed rule that 
would be added together to obtain a basic patent decreases when 
compared to the total fees paid for the same services under the current 
fee schedule. This decrease is substantial (22 percent) from 
application to issue (see Table 37). When additional processing options 
such as RCEs are included, the decrease becomes smaller after the first 
RCE (11 percent) and eventually begins increasing after a second RCE (6 
percent) (see Tables 38 and 39). The staging of appeal fees proposed in 
this rule offers similar decreases in the total fees paid when filing a 
notice of appeal. Under the proposed fee schedule, the total fees for 
both filing an appeal and to obtain a basic patent decrease from the 
current fee schedule (21 percent) (see Table 40). If the appeal is 
forwarded to the BPAI for a decision after the Examiner's Answer, then 
the total fees increase (23 percent) (see Table 40). Once an applicant 
has obtained a basic patent, the cost to maintain it remains 
substantially the same through the second stage maintenance fee. 
However, at the third stage maintenance fee, once the patent holder has 
more information on the value of the patent, the total fees increase 
(26 percent) (see Table 41). This structure reflects the key policy 
considerations for fostering innovation, facilitating effective 
administration of the patent system, and offering patent

[[Page 55058]]

prosecution options to applicants. Additional details about each of 
these payment structures are outlined below. To simplify the comparison 
among fee schedules, the time value of money has not been estimated in 
the examples below.
1. Routine Application Processing Fees and First RCE Fees Decrease
    The total amount paid for routine fees to obtain a basic patent 
(i.e., filing, search, examination, publication, and issue) under the 
proposed fee structure will decrease compared to the current fee 
structure, as shown in Table 37. This overall decrease is possible 
because the decrease in pre-grant patent application publication and 
issue fees from $2,040 to $960 (a decrease of $1,080) more than offsets 
the increase in large entity filing, search, and examination fees from 
$1,250 to $1,600 (an increase of $350). The net effect is a $730 (or 22 
percent) decrease in total fees paid under the proposed fee structure 
when compared to the current fee structure. This fosters innovation by 
reducing the cost to obtain a basic successful patent.

    Table 37--Comparison of Proposed Patent Fee Schedule to the Current Patent Fees From Filing Through Issue
----------------------------------------------------------------------------------------------------------------
                                                                                  Proposed on 2/    Proposed in
                               Fee                                    Current         7/2012         this NPRM
----------------------------------------------------------------------------------------------------------------
Filing, Search, and Examination.................................          $1,250          $1,840          $1,600
Pre-Grant Publication and Issue.................................           2,040             960             960
                                                                 -----------------------------------------------
    Total.......................................................           3,290           2,800           2,560
----------------------------------------------------------------------------------------------------------------

    When an application for a first RCE is submitted to complete 
prosecution, the total fees beginning with filing to obtain a basic 
patent continue to remain less than would be paid under the current fee 
schedule. This overall decrease continues to be possible because of the 
decrease in pre-grant patent application publication and issue fees. 
The net effect of the proposed fee schedule, including a first RCE, is 
a $460 (or 11 percent) decrease in total fees paid under the proposed 
fee structure when compared to the current fee structure, as shown in 
Table 38.

 Table 38--Comparison of the Proposed Patent Fees to the Current Patent Fees From Filing Through Issue with One
                                                       RCE
----------------------------------------------------------------------------------------------------------------
                                                                                  Proposed on 2/    Proposed in
                               Fee                                    Current         7/2012         this NPRM
----------------------------------------------------------------------------------------------------------------
Filing, Search, and Examination.................................          $1,250          $1,840          $1,600
First RCE.......................................................             930           1,700           1,200
Pre-Grant Publication and Issue.................................           2,040             960             960
                                                                 -----------------------------------------------
    Total.......................................................           4,220           4,500           3,760
----------------------------------------------------------------------------------------------------------------

    When adding a second RCE to prosecution, the total fees increase 
slightly, by $310 (or 6 percent), as shown in Table 39. However, the 
proposed total fees from applicant filing are $740 (or 12 percent) less 
than the total fees included in the proposal delivered to PPAC on 
February 7, 2012.

            Table 39--Comparison of the Proposed Patent Fees to the Current Patent Fees with Two RCEs
----------------------------------------------------------------------------------------------------------------
                                                                                  Proposed on 2/    Proposed in
                               Fee                                    Current         7/2012         this NPRM
----------------------------------------------------------------------------------------------------------------
Filing, Search, and Examination.................................          $1,250          $1,840          $1,600
First RCE.......................................................             930           1,700           1,200
Second and subsequent RCE.......................................             930           1,700           1,700
Pre-Grant Publication and Issue.................................           2,040             960             960
                                                                 -----------------------------------------------
    Total.......................................................           5,150           6,200           5,460
----------------------------------------------------------------------------------------------------------------

2. Initial Appeals Fees Decrease
    Instead of filing an RCE, an applicant may choose to file a notice 
of appeal. When adding the notice of appeal and the briefing filing 
fees (allowing the applicant to receive the Examiner's Answer) to the 
fees to obtain a basic patent, the total fees from application filing 
decrease by $970 (or 21 percent) from the current total fees. If the 
prosecution issues are not resolved prior to forwarding an appeal to 
the Board, the fees increase because the Office proposes to recover 
more of the appeals cost. In that instance, fees will increase by 
$1,030 (or 23 percent) more than would be paid today for an appeal 
decision. However, under this new proposal, the staging of fees allows 
the applicant to pay less than under the current fee schedule in 
situations where an application is either allowed or prosecution is 
reopened before being forwarded to the Board. The proposed total fees 
from applicant filing are $1,240 (or 18 percent) less than the total 
fees included in the proposal that the Office delivered to PPAC on 
February 7, 2012.

[[Page 55059]]



            Table 40--Comparison of the Proposed Patent Fees and Current Patent Fees, with an Appeal
----------------------------------------------------------------------------------------------------------------
                                                                                  Proposed on 2/    Proposed in
                               Fee                                    Current         7/2012         this NPRM
----------------------------------------------------------------------------------------------------------------
Filing, Search, and Examination.................................          $1,250          $1,840          $1,600
Notice of Appeal and Filing a Brief.............................           1,240           1,500           1,000
Pre-Grant Publication and Issue.................................           2,040             960             960
                                                                 -----------------------------------------------
    Subtotal for Fees paid before Examiner's Answer.............           4,530           4,300           3,560
----------------------------------------------------------------------------------------------------------------
Appeal Forwarding Fee...........................................             NEW           2,500           2,000
                                                                 -----------------------------------------------
    Subtotal for Fees if Appeal is Forwarded to Board for                  4,530           6,800           5,560
     Decision...................................................
----------------------------------------------------------------------------------------------------------------

3. Maintenance Fees Increase
    When a patent holder begins maintaining an issued patent, he or she 
will pay $260, (or 6 percent) less than is paid under the current fee 
schedule from initial application filing through the first stage. To 
maintain the patent through second stage, a patent holder will pay $490 
(large entity), or 7 percent more than is paid today under the current 
fee schedule. When a patent is maintained for full term, a patent 
holder will pay $3,160 (or 26 percent) more than would be paid under 
the current fee schedule. The most significant maintenance fee increase 
occurs after holding a patent for 11.5 years, which is when a patent 
holder will be in a better position to determine whether the benefit 
(value) from the patent exceeds the cost (maintenance fee) to maintain 
the patent.

          Table 41--Comparison of the Proposed Patent Fee Schedules to the Current Fees, Life of Patent
----------------------------------------------------------------------------------------------------------------
                                                                                  Proposed on 2/    Proposed in
                               Fee                                    Current         7/2012         this NPRM
----------------------------------------------------------------------------------------------------------------
Filing, Search, and Examination.................................          $1,250          $1,840          $1,600
Pre-Grant Publication and Issue.................................           2,040             960             960
                                                                 -----------------------------------------------
    Total Through Issue.........................................           3,290           2,800           2,560
----------------------------------------------------------------------------------------------------------------
First Stage Maintenance--3.5 years..............................           1,130           1,600           1,600
                                                                 -----------------------------------------------
        Cumulative Subtotal.....................................           4,420           4,400           4,160
----------------------------------------------------------------------------------------------------------------
Second Stage Maintenance--7.5 years.............................           2,850           3,600           3,600
                                                                 -----------------------------------------------
        Cumulative Subtotal.....................................           7,270           8,000           7,760
----------------------------------------------------------------------------------------------------------------
Third Stage Maintenance--11.5 years.............................           4,730           7,600           7,400
                                                                 -----------------------------------------------
            Total Fees for Life of Patent.......................          12,000          15,600          15,160
----------------------------------------------------------------------------------------------------------------

VI. Discussion of Specific Rules

    Title 37 of the Code of Federal Regulations, Parts 1 and 41, are 
proposed to be amended as follows:
    Section 1.16: Sections 1.16(a)(1), (b)(1), (c)(1), (d), (e)(1), (f) 
through (s) would be amended to set forth the application filing, 
excess claims, search, examination, and application size fees for 
patent applications filed as authorized under section 10 of the Act. 
This section would no longer distinguish between applications filed 
before or after December 8, 2004, because section 11 of the AIA no 
longer makes the distinction. The changes to the fee amounts indicated 
in section 1.16 are shown in Table 42.

                                                                        Table 42
--------------------------------------------------------------------------------------------------------------------------------------------------------
                                                                                          Current fees (dollars)          Proposed fees (dollars)
             CFR section                  Fee code                Description           ----------------------------------------------------------------
                                                                                            Large        Small        Large        Small        Micro
--------------------------------------------------------------------------------------------------------------------------------------------------------
1.16(a)(1)..........................    1011/2011/3011  Basic Filing Fee--Utility......          380          190          280          140           70
1.16(a)(1)..........................              4011  Basic Filing Fee--Utility                n/a           95          n/a           70          n/a
                                                         (electronic filing for small
                                                         entities).
1.16(b)(1)..........................    1012/2012/3012  Basic Filing Fee--Design.......          250          125          180           90           45
1.16(b)(1)..........................    1017/2017/3017  Basic Filing Fee--Design (CPA).          250          125          180           90           45
1.16(c)(1)..........................    1013/2013/3013  Basic Filing Fee--Plant........          250          125          180           90           45
1.16(d).............................    1005/2005/3005  Provisional Application Filing           250          125          260          130           65
                                                         Fee.
1.16(e)(1)..........................    1014/2014/3014  Basic Filing Fee--Reissue......          380          190          280          140           70
1.16(e)(1)..........................    1019/2019/3019  Basic Filing Fee--Reissue (CPA)          380          190          280          140           70

[[Page 55060]]

 
1.16(f).............................    1051/2051/3051  Surcharge--Late Filing Fee,              130           65          140           70           35
                                                         Search Fee, Examination Fee or
                                                         Oath or Declaration.
1.16(g).............................    1052/2052/3052  Surcharge--Late Provisional               50           25           60           30           15
                                                         Filing Fee or cover sheet.
1.16(h).............................    1201/2201/3201  Independent Claims in Excess of          250          125          420          210          105
                                                         Three.
1.16(h).............................    1204/2204/3204  Reissue Independent Claims in            250          125          420          210          105
                                                         Excess of Three.
1.16(i).............................    1202/2202/3202  Claims in Excess of 20.........           60           30           80           40           20
1.16(i).............................    1205/2205/3205  Reissue Claims in Excess of 20.           60           30           80           40           20
1.16(j).............................    1203/2203/3203  Multiple Dependent Claim.......          450          225          780          390          195
1.16(k).............................    1111/2111/3111  Utility Search Fee.............          620          310          600          300          150
1.16(l).............................    1112/2112/3112  Design Search Fee..............          120           60          120           60           30
1.16(m).............................    1113/2113/3113  Plant Search Fee...............          380          190          380          190           95
1.16(n).............................    1114/2114/3114  Reissue Search Fee.............          620          310          600          300          150
1.16(o).............................    1311/2311/3311  Utility Examination Fee........          250          125          720          360          180
1.16(p).............................    1312/2312/3312  Design Examination Fee.........          160           80          460          230          115
1.16(q).............................    1313/2313/3313  Plant Examination Fee..........          200          100          580          290          145
1.16(r).............................    1314/2314/3314  Reissue Examination Fee........          750          375        2,160        1,080          540
1.16(s).............................    1081/2081/3081  Utility Application Size Fee--           310          155          400          200          100
                                                         For Each Additional 50 Sheets
                                                         That Exceeds 100 Sheets.
1.16(s).............................    1082/2082/3082  Design Application Size........          310          155          400          200          100
                                                        Fee--For Each Additional 50
                                                         Sheets That Exceeds 100 Sheets.
1.16(s).............................    1083/2083/3083  Plant Application Size Fee--For          310          155          400          200          100
                                                         Each Additional 50 Sheets That
                                                         Exceeds 100 Sheets.
1.16(s).............................    1084/2084/3084  Reissue Application Size.......          310          155          400          200          100
                                                        Fee--For Each Additional 50
                                                         Sheets That Exceeds 100 Sheets.
1.16(s).............................    1085/2085/3085  Provisional Application Size             310          155          400          200          100
                                                         Fee--For Each Additional 50
                                                         Sheets That Exceeds 100 Sheets.
--------------------------------------------------------------------------------------------------------------------------------------------------------

    Section 1.17: Sections 1.17(a)(1) through (a)(5), (c), (e) through 
(t) would be amended and (d) and (e) would be added to set forth the 
application processing fees as authorized under section 10 of the Act. 
The changes to the fee amounts indicated in section 1.17 are shown in 
Table 43.

                                                                        Table 43
--------------------------------------------------------------------------------------------------------------------------------------------------------
                                                                                          Current fees  (dollars)         Proposed fees  (dollars)
             CFR section                  Fee Code                Description           ----------------------------------------------------------------
                                                                                            Large        Small        Large        Small        Micro
--------------------------------------------------------------------------------------------------------------------------------------------------------
1.17(a)(1)..........................    1251/2251/3251  Extension for Response Within            150           75          200          100           50
                                                         First Month.
1.17(a)(2)..........................    1252/2252/3252  Extension for Response Within            560          280          600          300          150
                                                         Second Month.
1.17(a)(3)..........................    1253/2253/3253  Extension for Response Within          1,270          635        1,400          700          350
                                                         Third Month.
1.17(a)(4)..........................    1254/2254/3254  Extension for Response Within          1,980          990        2,200        1,100          550
                                                         Fourth Month.
1.17(a)(5)..........................    1255/2255/3255  Extension for Response Within          2,690        1,345        3,000        1,500          750
                                                         Fifth Month.
1.17(c).............................    1817/2817/3817  Request for Prioritized                4,800        2,400        4,000        2,000        1,000
                                                         Examination.
1.17(d).............................               NEW  Correct Inventorship After               NEW          NEW        1,000          500          250
                                                         First Action on Merits.

[[Page 55061]]

 
1.17(e).............................    1801/2801/3801  Request for Continued                    930          465        1,200          600          300
                                                         Examination (RCE) (1st
                                                         request) (see 37 CFR 1.114).
1.17(e).............................               NEW  Request for Continued                    NEW          NEW        1,700          850          425
                                                         Examination (RCE) (2nd and
                                                         subsequent request).
1.17(f).............................    1462/2462/3462  Petitions Requiring the                  400          n/a          400          200          100
                                                         Petition Fee Set Forth in 37
                                                         CFR 1.17(f) (Group I).
1.17(g).............................    1463/2463/3463  Petitions Requiring the                  200          n/a          200          100           50
                                                         Petition Fee Set Forth in 37
                                                         CFR 1.17(g) (Group II).
1.17(h).............................    1464/2464/3464  Petitions Requiring the                  130          n/a          140           70           35
                                                         Petition Fee Set Forth in 37
                                                         CFR 1.17(h) (Group III).
1.17(i).............................    1053/2053/3053  Non-English Specification......          130          n/a          140           70           35
1.17(i).............................              1808  Processing Fee, Except in                130          n/a          130          n/a          n/a
                                                         Provisional Applications.
1.17(i).............................              1803  Request for Voluntary                    130          n/a          130          n/a          n/a
                                                         Publication or Republication.
1.17(k).............................              1802  Request for Expedited                    900          n/a          900          450          225
                                                         Examination of a Design
                                                         Application.
1.17(l).............................    1452/2452/3452  Petition to Revive Unavoidably           620          310          640          320          160
                                                         Abandoned Application.
1.17(m).............................    1453/2453/3453  Petition to Revive                     1,860          930        1,900          950          475
                                                         Unintentionally Abandoned
                                                         Application.
1.17(p).............................    1806/2806/3806  Submission of an Information             180          n/a          180           90           45
                                                         Disclosure Statement.
1.17(q).............................              1807  Processing Fee for Provisional            50          n/a           50          n/a          n/a
                                                         Applications.
1.17(r).............................    1809/2809/3809  Filing a Submission After Final          810          405          840          420          210
                                                         Rejection (see 37 CFR
                                                         1.129(a)).
1.17(s).............................    1810/2810/3810  For Each Additional Invention            810          405          840          420          210
                                                         to be Examined (see 37 CFR
                                                         1.129(b)).
1.17(t).............................    1454/2454/3454  Acceptance of an                       1,410          n/a        1,420          710          355
                                                         Unintentionally Delayed Claim
                                                         for Priority, or for Filing a
                                                         Request for the Restoration of
                                                         the Right of Priority.
--------------------------------------------------------------------------------------------------------------------------------------------------------

Sec.  1.17  Patent application and reexamination processing fees.

    (d) For correction of inventorship in an application after the 
first Office action on the merits:

By a micro entity (Sec.   1.29(a)).........................      $250.00
By a small entity (Sec.   1.27(a)).........................      $500.00
By other than a small or micro entity......................    $1,000.00
 

Sec.  1.17  Patent application and reexamination processing fees.

    (e) To request continued examination pursuant to Sec.  1.114:
    (1) For filing a first request for continued examination pursuant 
to Sec.  1.114 in an application:

By a micro entity..........................................      $300.00
By a small entity (Sec.   1.27(a) of this title)...........      $600.00
By other than a small or micro entity......................    $1,200.00
 

    (2) For filing a second or subsequent request for continued 
examination pursuant to Sec.  1.114 in an application:

By a micro entity..........................................      $425.00
By a small entity (Sec.   1.27(a) of the title)............      $850.00
By other than a small or micro entity......................    $1,700.00
 

    Section 1.18: Sections 1.18(a) through (f) would be amended to set 
forth the patent issue fees as authorized under section 10 of the Act. 
The changes to the fee amounts indicated in Sec.  1.18 are shown in 
Table 44.

                                                                        Table 44
--------------------------------------------------------------------------------------------------------------------------------------------------------
                                                                                          Current fees  (dollars)         Proposed fees  (dollars)
             CFR section                  Fee code                Description           ----------------------------------------------------------------
                                                                                            Large        Small        Large        Small        Micro
--------------------------------------------------------------------------------------------------------------------------------------------------------
1.18(a).............................    1501/2501/3501  Utility Issue Fee..............        1,740          870          960          480          240

[[Page 55062]]

 
1.18(a).............................    1511/2511/3511  Reissue Issue Fee..............        1,740          870          960          480          240
1.18(b).............................    1502/2502/3502  Design Issue Fee...............          990          495          560          280          140
1.18(c).............................    1503/2503/3503  Plant Issue Fee................        1,370          685          760          380          190
1.18(d)(1)..........................              1504  Publication Fee for Early,               300          n/a            0          n/a          n/a
                                                         Voluntary, or Normal
                                                         Publication.
1.18(d)(2)..........................              1505  Publication Fee for                      300          n/a          300          n/a          n/a
                                                         Republication.
1.18(e).............................              1455  Filing an Application for                200          n/a          200          n/a          n/a
                                                         Patent Term Adjustment.
1.18(f).............................              1456  Request for Reinstatement of             400          n/a          400          n/a          n/a
                                                         Term Reduced.
--------------------------------------------------------------------------------------------------------------------------------------------------------

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

(d)(1) Publication fee.....................................        $0.00
(d)(2) Republication fee (Sec.   1.221(a)).................      $300.00
 

    Section 1.19: Sections 1.19(a)(1) through (a)(3), (b)(1)(i)(A) 
through (b)(1)(i)(D), (b)(1)(ii)(A), (b)(1)(ii)(B), (b)(1)(ii)(C), 
(b)(2)(i)(A), (b)(2)(i)(B), (b)(2)(ii), (b)(3), (b)(4), and (c) through 
(g) would be amended to set forth the patent document supply fees as 
authorized under section 10 of the Act. The changes to the fee amounts 
set are indicated in Sec.  1.19 are shown in Table 45.

                                                                        Table 45
--------------------------------------------------------------------------------------------------------------------------------------------------------
                                                                                           Current fees with CPI          Proposed fees  (dollars)
                                                                                                 (dollars)        --------------------------------------
             CFR section                  Fee code                Description           --------------------------
                                                                                            Large        Small        Large        Small        Micro
--------------------------------------------------------------------------------------------------------------------------------------------------------
1.19(a)(1)..........................              8001  Printed Copy of Patent w/o                 3          n/a            3          n/a          n/a
                                                         Color, Delivery by USPS, USPTO
                                                         Box, or Electronic Means.
1.19(a)(2)..........................              8003  Printed Copy of Plant Patent in           15          n/a           15          n/a          n/a
                                                         Color.
1.19(a)(3)..........................              8004  Color Copy of Patent (other               25          n/a           25          n/a          n/a
                                                         than plant patent) or SIR
                                                         Containing a Color Drawing.
1.19(a)(1)..........................              8005  Patent Application Publication             3          n/a            3          n/a          n/a
                                                         (PAP).
1.19(b)(1)(i)(A)....................              8007  Copy of Patent Application as             20          n/a           20          n/a          n/a
                                                         Filed.
1.19(b)(1)(i)(B)....................              8008  Copy of Patent-Related File              200          n/a          200          n/a          n/a
                                                         Wrapper and Contents of 400 or
                                                         Fewer Pages, if Provided on
                                                         Paper.
1.19(b)(1)(i)(C)....................              8009  Additional Fee for Each                   40          n/a           40          n/a          n/a
                                                         Additional 100 Pages of Patent-
                                                         Related File Wrapper and
                                                         (Paper) Contents, or Portion
                                                         Thereof.
1.19(b)(1)(i)(D)....................              8010  Individual Application                    25          n/a           25          n/a          n/a
                                                         Documents, Other Than
                                                         Application as Filed, per
                                                         Document.
1.19(b)(1)(ii)(A)...................              8007  Copy of Patent Application as             20          n/a           20          n/a          n/a
                                                         Filed.
1.19(b)(1)(ii)(B)...................              8011  Copy of Patent-Related File               55          n/a           55          n/a          n/a
                                                         Wrapper and Contents if
                                                         Provided Electronically or on
                                                         a Physical Electronic Medium
                                                         as Specified in 1.19(b)(1)(ii).
1.19(b)(1)(ii)(C)...................              8012  Additional Fee for Each                   15          n/a           15          n/a          n/a
                                                         Continuing Physical Electronic
                                                         Medium in Single Order of
                                                         1.19(b)(1)(ii)(B).
1.19(b)(1)(iii)(A)..................              8007  Copy of Patent Application as             20          n/a           20          n/a          n/a
                                                         Filed.

[[Page 55063]]

 
1.19(b)(1)(iii)(B)..................              8011  Copy of Patent-Related File               55          n/a           55          n/a          n/a
                                                         Wrapper and Contents if
                                                         Provided Electronically or on
                                                         a Physical Electronic Medium.
1.19(b)(2)(i)(A)....................              8041  Copy of Patent-Related File               55          n/a           55          n/a          n/a
                                                         Wrapper Contents That Were
                                                         Submitted and Are Stored on
                                                         Compact Disk or Other
                                                         Electronic Form (e.g., compact
                                                         disks stored in artifact
                                                         folder), Other Than as
                                                         Available in 1.19(b)(1); First
                                                         Physical Electronic Medium in
                                                         a Single Order.
1.19(b)(2)(i)(B)....................              8042  Additional Fee for Each                   15          n/a           15          n/a          n/a
                                                         Continuing Copy of Patent-
                                                         Related File Wrapper Contents
                                                         as Specified in
                                                         1.19(b)(2)(i)(A).
1.19(b)(2)(ii)......................              8043  Copy of Patent-Related File               55          n/a           55          n/a          n/a
                                                         Wrapper Contents That Were
                                                         Submitted and are Stored on
                                                         Compact Disk, or Other
                                                         Electronic Form, Other Than as
                                                         Available in 1.19(b)(1); If
                                                         Provided Electronically Other
                                                         Than on a Physical Electronic
                                                         Medium, per Order.
1.19(b)(3)..........................              8013  Copy of Office Records, Except            25          n/a           25          n/a          n/a
                                                         Copies of Applications as
                                                         Filed.
1.19(b)(4)..........................              8014  For Assignment Records,                   25          n/a           25          n/a          n/a
                                                         Abstract of Title and
                                                         Certification, per Patent.
1.19(c).............................              8904  Library Service................           50          n/a           50          n/a          n/a
1.19(d).............................              8015  List of U.S. Patents and SIRs              3          n/a            3          n/a          n/a
                                                         in Subclass.
1.19(e).............................              8016  Uncertified Statement re Status           10          n/a           10          n/a          n/a
                                                         of Maintenance Fee Payments.
1.19(f).............................              8017  Copy of Non-U.S. Document......           25          n/a           25          n/a          n/a
1.19(g).............................              8050  Petitions for Documents In Form      at cost          n/a      at cost          n/a          n/a
                                                         Other Than That Provided By
                                                         This Part, or In Form Other
                                                         Than That Generally Provided
                                                         by Director, to be Decided in
                                                         Accordance With Merits.
--------------------------------------------------------------------------------------------------------------------------------------------------------

    Section 1.20: Sections 1.20(a), (b), (c)(1) through (c)(4), (c)(6), 
(c)(7), (d) through (k) would be amended to set forth the reexamination 
excess claims fees, disclaimer fees, and maintenance fees as authorized 
under section 10 of the Act. The changes to the fee amounts indicated 
in Sec.  1.20 are shown in Table 46.

                                                                        Table 46
--------------------------------------------------------------------------------------------------------------------------------------------------------
                                                                                          Current fees  (dollars)         Proposed fees  (dollars)
             CFR section                  Fee code                Description           ----------------------------------------------------------------
                                                                                            Large        Small        Large        Small        Micro
--------------------------------------------------------------------------------------------------------------------------------------------------------
1.20(a).............................              1811  Certificate of Correction......          100          n/a          100          n/a          n/a
1.20(b).............................              1816  Processing Fee for Correcting            130          n/a          130          n/a          n/a
                                                         Inventorship in a Patent.
1.20(c)(1)..........................              1812  Request for Ex Parte                   2,520          n/a       15,000        7,500        3,750
                                                         Reexamination.

[[Page 55064]]

 
1.20(c)(3)..........................    1821/2821/3821  Reexamination Independent                250          125          420          210          105
                                                         Claims in Excess of Three and
                                                         also in Excess of the Number
                                                         of Such Claims in the Patent
                                                         Under Reexamination.
1.20(c)(4)..........................    1822/2822/3822  Reexamination Claims in Excess            60           30           80           40           20
                                                         of 20 and Also in Excess of
                                                         the Number of Claims in the
                                                         Patent Under Reexamination.
1.20(c)(6)..........................               NEW  Filing a Petition in a                   NEW          NEW        1,940          970          485
                                                         Reexamination Proceeding,
                                                         Except for Those Specifically
                                                         Enumerated in Sec.  Sec.
                                                         1.550(i) and 1.937(d).
1.20(c)(7)..........................              1812  For a Refused Request for Ex             830          n/a        3,600        1,800          900
                                                         parte Reexamination Under Sec.
                                                           1.510 (included in the
                                                         request for ex parte
                                                         reexamination fee).
1.20(d).............................         1814/2814  Statutory Disclaimer, Including          160           80          160          n/a          n/a
                                                         Terminal Disclaimer.
1.20(e).............................    1551/2551/3551  Maintenance Fee Due at 3.5             1,130          565        1,600          800          400
                                                         Years.
1.20(f).............................    1552/2552/3552  Maintenance Fee Due at 7.5             2,850        1,425        3,600        1,800          900
                                                         Years.
1.20(g).............................    1553/2553/3553  Maintenance Fee Due at 11.5            4,730        2,365        7,400        3,700        1,850
                                                         Years.
1.20(h).............................    1554/2554/3554  Maintenance Fee Surcharge--3.5.          150           75          160           80           40
                                                        Years--Late Payment Within 6
                                                         Months.
1.20(h).............................    1555/2555/3555  Maintenance Fee Surcharge--7.5.          150           75          160           80           40
                                                        Years--Late Payment Within 6
                                                         Months.
1.20(h).............................    1556/2556/3556  Maintenance Fee Surcharge--11.5          150           75          160           80           40
                                                        Years--Late Payment Within 6
                                                         Months.
1.20(i)(1)..........................    1557/2557/3557  Maintenance Fee Surcharge After          700          n/a          700          350          175
                                                         Expiration--Late Payment is
                                                         Unavoidable.
1.20(i)(2)..........................    1558/2558/3558  Maintenance Fee Surcharge After        1,640          n/a        1,640          820          410
                                                         Expiration--Late Payment is
                                                         Unintentional.
1.20(j)(1)..........................              1457  Extension of Term of Patent....        1,120          n/a        1,120          n/a          n/a
1.20(j)(2)..........................              1458  Initial Application for Interim          420          n/a          420          n/a          n/a
                                                         Extension (see 37 CFR 1.790).
1.20(j)(3)..........................              1459  Subsequent Application for               220          n/a          220          n/a          n/a
                                                         Interim Extension (see 37 CFR
                                                         1.790).
1.20(k)(1)..........................               NEW  Processing and Treating a                NEW          NEW        4,400        2,200        1,100
                                                         Request for Supplemental
                                                         Examination.
1.20(k)(2)..........................               NEW  Ex Parte Reexamination Ordered           NEW          NEW       13,600        6,800        3,400
                                                         as a Result of a Supplemental
                                                         Examination Proceeding.
1.20(k)(3)(i).......................               NEW  For Processing and Treating, in          NEW          NEW          180           90           45
                                                         a Supplemental Examination
                                                         Proceeding, a Non-Patent
                                                         Document Over 20 Sheets in
                                                         Length, per Document Between
                                                         21-50 Pages.

[[Page 55065]]

 
1.20(k)(3)(ii)......................               NEW  For Processing and Treating, in          NEW          NEW          280          140           70
                                                         a Supplemental Examination
                                                         Proceeding, a Non-Patent
                                                         Document Over 20 Sheets in
                                                         Length, per Document for Each
                                                         Additional 50 Sheets or
                                                         Fraction Thereof.
--------------------------------------------------------------------------------------------------------------------------------------------------------

    Section 1.21: Sections 1.21(a)(1)(i), (a)(1)(ii)(A), (a)(1)(ii)(B), 
(a)(10), (a)(2), (a)(4), (a)(4)(i), (a)(5)(i), (a)(5)(ii), (a)(7)(i) 
through (a)(7)(iv), (a)(8), (a)(9)(i), (a)(9)(ii), (a)(10), (b)(3), 
(e), (g) through (k), and (n) would be amended to set forth 
miscellaneous fees and charges as authorized under section 10 of the 
Act. The changes to the fee amounts indicated in Sec.  1.21 are shown 
in Table 47.

                                                                        Table 47
--------------------------------------------------------------------------------------------------------------------------------------------------------
                                                                                          Current fees  (dollars)         Proposed fees  (dollars)
             CFR section                  Fee code                Description           ----------------------------------------------------------------
                                                                                            Large        Small        Large        Small        Micro
--------------------------------------------------------------------------------------------------------------------------------------------------------
1.21(a)(1)(i).......................              9001  Application Fee (non-                     40          n/a           40          n/a          n/a
                                                         refundable).
1.21(a)(1)(ii)(A)...................              9010  For Test Administration by               200          n/a          200          n/a          n/a
                                                         Commercial Entity.
1.21(a)(1)(ii)(B)...................              9011  For Test Administration by the           450          n/a          450          n/a          n/a
                                                         USPTO.
1.21(a)(2)..........................              9003  Registration to Practice or              100          n/a          100          n/a          n/a
                                                         Grant of Limited Recognition
                                                         under Sec.   11.9(b) or (c).
1.21(a)(2)..........................              9025  Registration to Practice for             100          n/a          100          n/a          n/a
                                                         Change of Practitioner Type.
1.21(a)(4)..........................              9005  Certificate of Good Standing as           10          n/a           10          n/a          n/a
                                                         an Attorney or Agent.
1.21(a)(4)(i).......................              9006  Certificate of Good Standing as           20          n/a           20          n/a          n/a
                                                         an Attorney or Agent, Suitable
                                                         for Framing.
1.21(a)(5)(i).......................              9012  Review of Decision by the                130          n/a          130          n/a          n/a
                                                         Director of Enrollment and
                                                         Discipline under Sec.
                                                         11.2(c).
1.21(a)(5)(ii)......................              9013  Review of Decision of the                130          n/a          130          n/a          n/a
                                                         Director of Enrollment and
                                                         Discipline under Sec.
                                                         11.2(d).
1.21(a)(7)(i).......................              9015  Annual Fee for Registered                118          n/a          120          n/a          n/a
                                                         Attorney or Agent in Active
                                                         Status.
1.21(a)(7)(ii)......................              9016  Annual Fee for Registered                 25          n/a           25          n/a          n/a
                                                         Attorney or Agent in Voluntary
                                                         Inactive Status.
1.21(a)(7)(iii).....................              9017  Requesting Restoration to                 50          n/a           50          n/a          n/a
                                                         Active Status from Voluntary
                                                         Inactive Status.
1.21(a)(7)(iv)......................              9018  Balance of Annual Fee Due upon            93          n/a          100          n/a          n/a
                                                         Restoration to Active Status
                                                         from Voluntary Inactive Status.
1.21(a)(8)..........................              9019  Annual Fee for Individual                118          n/a          120          n/a          n/a
                                                         Granted Limited Recognition.
1.21(a)(9)(i).......................              9020  Delinquency Fee for Annual Fee.           50          n/a           50          n/a          n/a
1.21(a)(9)(ii)......................              9004  Reinstatement to Practice......          100          n/a          100          n/a          n/a
1.21(a)(10).........................              9014  Application Fee for Person             1,600          n/a        1,600          n/a          n/a
                                                         Disciplined, Convicted of a
                                                         Felony or Certain Misdemeanors
                                                         under Sec.   11.7(h).
1.21(e).............................              8020  International Type Search                 40          n/a           40          n/a          n/a
                                                         Report.

[[Page 55066]]

 
1.21(g).............................              8902  Self-Service Copy Charge, per           0.25          n/a         0.25          n/a          n/a
                                                         Page.
1.21(h)(1)..........................               NEW  Recording Each Patent                    NEW          NEW            0          n/a          n/a
                                                         Assignment, Agreement or Other
                                                         Paper, per Property if
                                                         Submitted Electronically.
1.21(h)(2)..........................              8021  Recording Each Patent                     40          n/a           40          n/a          n/a
                                                         Assignment, Agreement or Other
                                                         Paper, per Property if not
                                                         Submitted Electronically.
1.21(i).............................              8022  Publication in Official Gazette           25          n/a           25          n/a          n/a
1.21(j).............................              8023  Labor Charges for Services, per           40          n/a           40          n/a          n/a
                                                         Hour or Fraction Thereof.
1.21(k).............................              8024  Unspecified Other Services,          at cost          n/a      at cost          n/a          n/a
                                                         Excluding Labor.
1.21(k).............................              9024  Unspecified Other Services,          at cost          n/a      at cost          n/a          n/a
                                                         Excluding Labor.
1.21(n).............................              8026  Handling Fee for Incomplete or           130          n/a          130          n/a          n/a
                                                         Improper Application.
--------------------------------------------------------------------------------------------------------------------------------------------------------

Sec.  1.21  Miscellaneous fees and charges.

    (h) For recording each assignment, agreement, or other paper 
relating to the property in a patent or application, per property:

(1) If submitted electronically............................        $0.00
(2) If not submitted electronically........................       $40.00
 

    Section 1.445: Sections 1.445(a)(1) through (a)(4) would be amended 
to set forth the international application filing, processing, and 
search fees as authorized under section 10 of the Act. The changes to 
the fee amounts indicated in Sec.  1.445 are shown in Table 48.

                                                                        Table 48
--------------------------------------------------------------------------------------------------------------------------------------------------------
                                                                                          Current fees  (dollars)         Proposed fees  (dollars)
             CFR section                  Fee code                Description           ----------------------------------------------------------------
                                                                                            Large        Small        Large        Small        Micro
--------------------------------------------------------------------------------------------------------------------------------------------------------
1.445(a)(1).........................              1601  PCT International Stage                  240          n/a          240          120           60
                                                         Transmittal Tee.
1.445(a)(2).........................              1602  PCT International Stage Search         2,080          n/a        2,080        1,040          520
                                                         Fee--Regardless of Whether
                                                         There is a Corresponding
                                                         Application (see 35 U.S.C.
                                                         361(d) and PCT Rule 16).
1.445(a)(3).........................              1604  PCT International Stage                2,080          n/a        2,080        1,040          520
                                                         Supplemental Search Fee When
                                                         Required, per Additional
                                                         Invention.
1.445(a)(4).........................              1621  Transmitting Application to              240          n/a          240          120           60
                                                         International Bureau to Act as
                                                         Receiving Office.
--------------------------------------------------------------------------------------------------------------------------------------------------------

    Section 1.482: Sections 1.482(a)(1) and (a)(2) would be amended to 
set forth the international application filing, processing, and search 
fees as authorized under section 10 of the Act. The changes to the fee 
amounts indicated in Sec.  1.445 are shown in Table 49.

                                                                        Table 49
--------------------------------------------------------------------------------------------------------------------------------------------------------
                                                                                          Current fees  (dollars)         Proposed fees  (dollars)
             CFR section                  Fee code                Description           ----------------------------------------------------------------
                                                                                            Large        Small        Large        Small        Micro
--------------------------------------------------------------------------------------------------------------------------------------------------------
1.482(a)(1)(i)......................              1605  PCT International Stage                  600          n/a          600          300          150
                                                         Preliminary Examination Fee--
                                                         U.S. was the ISA.

[[Page 55067]]

 
1.482(a)(1)(ii).....................              1606  PCT International Stage                  750          n/a          760          380          190
                                                         Preliminary Examination Fee--
                                                         U.S. was not the ISA.
1.482(a)(2).........................              1607  PCT International Stage                  600          n/a          600          300          150
                                                         Supplemental Examination Fee
                                                         per Additional Invention.
--------------------------------------------------------------------------------------------------------------------------------------------------------

    Section 1.492: Sections 1.492(a), (b)(1) through (b)(4), (c)(2), 
(d) through (f), (h), (i) and (j) would be amended to set forth the 
application filing, excess claims, search, examination, and application 
size fees for international patent applications entering the national 
stage as authorized under section 10 of the Act. The changes to the fee 
amounts indicated in Sec.  1.492 are shown in Table 50.

                                                                        Table 50
--------------------------------------------------------------------------------------------------------------------------------------------------------
                                                                                          Current fees  (dollars)         Proposed fees  (dollars)
             CFR section                  Fee code                Description           ----------------------------------------------------------------
                                                                                            Large        Small        Large        Small        Micro
--------------------------------------------------------------------------------------------------------------------------------------------------------
1.492(a)............................         1631/2631  Basic PCT National Stage Fee...          380          190          280          140           70
1.492(b)(1).........................         1640/2640  PCT National Stage Search Fee--            0            0            0            0            0
                                                         U.S. was the ISA or IPEA and
                                                         All Claims Satisfy PCT Article
                                                         33(1)-(4).
1.492(b)(2).........................         1641/2641  PCT National Stage Search Fee--          120           60          120           60           30
                                                         U.S. was the ISA.
1.492(b)(3).........................         1642/2642  PCT National Stage Search Fee--          490          245          480          240          120
                                                         Search Report Prepared and
                                                         Provided to USPTO.
1.492(b)(4).........................         1632/2632  PCT National Stage Search Fee--          620          310          600          300          150
                                                         All Other Situations.
1.492(c)(1).........................         1643/2643  PCT National Stage Examination             0            0            0            0            0
                                                         Fee--U.S. was the ISA or IPEA
                                                         and All Claims Satisfy PCT
                                                         Article 33(1)-(4).
1.492(c)(2).........................         1633/2633  National Stage Examination Fee--         250          125          720          360          180
                                                         All Other Situations.
1.492(d)............................         1614/2614  PCT National Stage Claims--              250          125          420          210          105
                                                         Extra Independent (over three).
1.492(e)............................         1615/2615  PCT National Stage Claims--               60           30           80           40           20
                                                         Extra Total (over 20).
1.492(f)............................         1616/2616  PCT National Stage Claims--              450          225          780          390          195
                                                         Multiple Dependent.
1.492(h)............................         1617/2617  Search Fee, Examination Fee or           130           65          140           70           35
                                                         Oath or Declaration After
                                                         Thirty Months From Priority
                                                         Date.
1.492(i)............................         1618/2618  English Translation After                130          n/a          140           70           35
                                                         Thirty Months From Priority
                                                         Date.
1.492(j)............................         1681/2681  PCT National Stage Application           310          155          400          200          100
                                                         Size Fee--for Each Additional
                                                         50 Sheets that Exceeds 100
                                                         Sheets.
--------------------------------------------------------------------------------------------------------------------------------------------------------

    Section 41.20: Sections 41.20(a) and (b)(1) through (b)(4) would be 
amended to set forth the appeal fees as authorized under section 10 of 
the Act. The changes to the fee amounts indicated in Sec.  41.20 are 
shown in Table 51.

[[Page 55068]]



                                                                        Table 51
--------------------------------------------------------------------------------------------------------------------------------------------------------
                                                                                          Current fees  (dollars)         Proposed fees  (dollars)
             CFR section                  Fee code                Description           ----------------------------------------------------------------
                                                                                            Large        Small        Large        Small        Micro
--------------------------------------------------------------------------------------------------------------------------------------------------------
41.20(a)............................              1405  Petitions to the Chief                   400          n/a          400          n/a          n/a
                                                         Administrative Patent Judge
                                                         under 37 CFR 41.3.
41.20(b)(1).........................         1401/2401  Notice of Appeal...............          620          310        1,000          500          250
41.20(b)(2)(i)......................         1402/2402  Filing a Brief in Support of an          620          310            0            0            0
                                                         Appeal in an Application or Ex
                                                         Parte Reexamination Proceeding.
41.20(b)(2)(ii).....................               NEW  Filing a Brief in Support of an          NEW          NEW        2,000        1,000          500
                                                         Appeal in an Inter Partes
                                                         Reexamination Proceeding.
41.20(b)(3).........................         1403/2403  Request for Oral Hearing.......        1,240          620        1,300          650          325
41.20(b)(4).........................               NEW  Forwarding an Appeal in an               NEW          NEW        2,000        1,000          500
                                                         Application or Ex Parte
                                                         Reexamination Proceeding to
                                                         the Board.
--------------------------------------------------------------------------------------------------------------------------------------------------------

    Section 41.20 Fees: Section 41.20 would be amended by revising 
paragraphs (a) and (b) to read as follows:


Sec.  41.20  Fees.

* * * * *
    (a) Petition fee. The fee for filing a petition under this part is 
$400.00.
    (b) Appeal fees.
    (1) For filing a notice of appeal from the examiner to the Board:

By a micro entity (Sec.   1.29(a)).........................      $250.00
By a small entity (Sec.   1.27(a)).........................      $500.00
By other than a small or micro entity......................    $1,000.00
 

    (2)(i) For filing a brief in support of an appeal in an application 
or ex parte reexamination proceeding: $0.00.
    (ii) In addition to the fee for filing a notice of appeal, for 
filing a brief in support of an appeal in an inter partes reexamination 
proceeding:

By a micro entity (Sec.   1.29(a)).........................      $500.00
By a small entity (Sec.   1.27(a)).........................    $1,000.00
By other than a small or micro entity......................    $2,000.00
 

    (3) For filing a request for an oral hearing before the Board in an 
appeal under 35 U.S.C. 134:

By a micro entity (Sec.   1.29(a)).........................      $325.00
By a small entity (Sec.   1.27(a)).........................      $650.00
By other than a small or micro entity......................    $1,300.00
 

    (4) In addition to the fee for filing a notice of appeal, for 
forwarding an appeal in an application or ex parte reexamination 
proceeding to the Board:

By a micro entity (Sec.   1.29(a)).........................      $500.00
By a small entity (Sec.   1.27(a)).........................    $1,000.00
By other than a small or micro entity......................    $2,000.00
 

    Section 41.37: Section 41.37 would be amended by revising 
paragraphs (a) and (b) to read as follows:


Sec.  41.37  Appeal brief.

    (a) Timing. Appellant must file a brief under this section within 
two months from the date of filing the notice of appeal under Sec.  
41.31. The appeal brief fee in an application or ex parte reexamination 
proceeding is $0.00, but if the appeal results in an Examiner's Answer, 
the appeal forwarding fee set forth in Sec.  41.20(b)(4) must be paid 
within the time period specified in Sec.  41.48 to avoid dismissal of 
an appeal.
    (b) Failure to file a brief. On failure to file the brief within 
the period specified in paragraph (a) of this section, the appeal will 
stand dismissed.
* * * * *
    Section 41.45: Section 41.45 would be added to read as follows:


Sec.  41.45  Appeal forwarding fee.

    (a) Timing. Appellant in an application or ex parte reexamination 
proceeding must pay the fee set forth in Sec.  41.20(b)(4) within the 
later of two months from the date of either the examiner's answer, or a 
decision refusing to grant a petition under Sec.  1.181 of this title 
to designate a new ground of rejection in an examiner's answer.
    (b) Failure to pay appeal forwarding fee. On failure to pay the fee 
set forth in Sec.  41.20(b)(4) within the period specified in paragraph 
(a) of this section, the appeal will stand dismissed.
    (c) Extensions of time. Extensions of time under Sec.  1.136(a) of 
this title for patent applications are not applicable to the time 
period set forth in this section. See Sec.  1.136(b) of this title for 
extensions of time to reply for patent applications and Sec.  1.550(c) 
of this title for extensions of time to reply for ex parte 
reexamination proceedings.
    Section 42.15: Sections 42.15 (a) through (d) would be amended to 
set forth the inter partes review and post-grant review or covered 
business method patent review of patent fees as authorized under 
section 10 of the Act. The changes to the fee amounts indicated in 
Sec.  42.15 are shown in Table 52.

                                                                        Table 52
--------------------------------------------------------------------------------------------------------------------------------------------------------
                                                                                               Current fees               Proposed fees (dollars)
             CFR section                  Fee code                Description           ----------------------------------------------------------------
                                                                                            Large        Small        Large        Small        Micro
--------------------------------------------------------------------------------------------------------------------------------------------------------
42.15(a)(1).........................               NEW  Inter Partes Review Request Fee          NEW          NEW        9,000          n/a          n/a
42.15(a)(2).........................               NEW  Inter Partes Review Post-                NEW          NEW       14,000          n/a          n/a
                                                         Institution Fee.

[[Page 55069]]

 
42.15(a)(3).........................               NEW  In Addition to the Inter Partes          NEW          NEW          200          n/a          n/a
                                                         Review Request Fee, for
                                                         Requesting Review of Each
                                                         Claim in Excess of 20.
42.15(a)(4).........................               NEW  In addition to the Inter Partes          NEW          NEW          400          n/a          n/a
                                                         Post-Institution Fee, for
                                                         Requesting Review of Each
                                                         Claim in Excess of 15.
42.15(b)(1).........................               NEW  Post Grant or Covered Business           NEW          NEW       12,000          n/a          n/a
                                                         Method Patent Review Request
                                                         Fee.
42.15(b)(2).........................               NEW  Post Grant or Covered Business           NEW          NEW       18,000          n/a          n/a
                                                         Method Patent Review Post-
                                                         Institution Fee.
42.15(b)(3).........................               NEW  In Addition to the Post Grant            NEW          NEW          250          n/a          n/a
                                                         or Covered Business Method
                                                         Patent Review Request Fee, for
                                                         Requesting Review of Each
                                                         Claim in Excess of 20.
42.15(b)(4).........................               NEW  In Addition to the Post Grant            NEW          NEW          550          n/a          n/a
                                                         or Covered Business Method
                                                         Patent Review Post-Institution
                                                         Fee, for Requesting Review of
                                                         Each Claim in Excess of 15.
42.15(c)(1).........................               NEW  Derivation Petition............          NEW          NEW          400          n/a          n/a
42.15(c)(2).........................               NEW  Derivation Institution and               NEW          NEW            0            0            0
                                                         Trial Fee.
42.15(d)............................               NEW  Request to Make a Settlement             NEW          NEW          400          n/a          n/a
                                                         Agreement Available.
--------------------------------------------------------------------------------------------------------------------------------------------------------

    Section 42.15: Section 42.15 would be added to read as follows:


Sec.  42.15  Fees.

    (a) On filing a petition for inter partes review of a patent, 
payment of the following fees are due:

(1) Inter Partes Review request fee........................    $9,000.00
(2) Inter Partes Review Post-Institution fee...............   $14,000.00
(3) In addition to the Inter Partes Review request fee, for      $200.00
 requesting review of each claim in excess of 20...........
(4) In addition to the Inter Partes Post-Institution             $400.00
 request fee, for requesting review of each claim in excess
 of 15.....................................................
 

    (b) On filing a petition for post-grant review or covered business 
method patent review of a patent, payment of the following fees are 
due:

(1) Post Grant or Covered Business Method Patent Review       $12,000.00
 request fee...............................................
(2) Post Grant or Covered Business Method Patent Review       $18,000.00
 Post-Institution fee......................................
(3) In addition to the Post Grant or Covered Business            $250.00
 Method Patent Review request fee, for requesting review of
 each claim in excess of 20................................
(4) In addition to the Post Grant or Covered Business            $550.00
 Method Patent Review request fee Post-Institution request
 fee, for requesting review of each claim in excess of 15..
 

    (c) On the filing of a petition for a derivation proceeding, 
payment of the following fees is due:

 
(1) Derivation petition fee................................      $400.00
(2) Derivation institution and trial fee...................        $0.00
 

    (d) Any request requiring payment of a fee under this part, 
including a written request to make a settlement agreement available: 
$400.00

Rulemaking Considerations

A. Regulatory Flexibility Act

    The USPTO publishes this Initial Regulatory Flexibility Analysis 
(IRFA) as required by the Regulatory Flexibility Act (RFA) (5 U.S.C. 
601 et seq.) to examine the impact of the Office's proposed rules 
implementing the fee-setting provisions of the Leahy-Smith America 
Invents Act (Pub. L. 112-29, 125 Stat. 284) (the Act) on small entities 
and to seek the public's views. Under the RFA, whenever an agency is 
required by 5 U.S.C. 553 (or any other law) to publish a notice of 
proposed rulemaking (NPRM), the agency must prepare and make available 
for public comment an IRFA, unless the agency certifies under 5 U.S.C. 
605(b) that the proposed rule, if implemented, will not have a 
significant economic impact on a substantial number of small entities. 
5 U.S.C. 603, 605.
    While the Office welcomes all comments on this IRFA, it 
particularly seeks comments describing the type and extent of the 
impact of the proposed patent fees on commenters' specific businesses. 
In describing the impact, the Office requests biographic detail about 
the impacted businesses or concerns, including the size, average annual 
revenue, past patent activity (e.g., applications submitted, contested 
cases pursued, maintenance fees paid, patents abandoned, etc.), and 
planned patent activity of the impacted business or concern, where 
feasible. The Office will use this information to further assess the 
impact of the proposed rule on small entities. Where possible, comments 
should also describe any recommended

[[Page 55070]]

alternative methods of setting and adjusting patent fees that would 
further reduce the impact on small entities.
    Items 1-5 below discuss the five items specified in 5 U.S.C. 
603(b)(1)-(5) to be addressed in an IRFA. Item 6 below discusses 
alternatives to this proposal that the Office considered.
1. A Description of the Reasons Why the Action by the agency Is Being 
Considered
    Section 10 of the Act authorizes the Director of the USPTO to set 
or adjust by rule any patent fee established, authorized, or charged 
under title 35, U.S.C., for any services performed, or materials 
furnished, by the Office. Section 10 prescribes that patent fees may be 
set or adjusted only to recover the aggregate estimated costs to the 
Office for processing, activities, services, and materials relating to 
patents, including administrative costs to the Office with respect to 
such patent fees. The proposed fee schedule will recover the aggregate 
cost of patent operations while facilitating the effective 
administration of the U.S. patent system. The reasons why the 
rulemaking is being considered are further discussed in section 6.i 
below and elsewhere in this IRFA and the NPRM.
2. The Objectives of, and Legal Basis for, the Proposed Rule
    The objective of the proposed rules is to implement the fee setting 
provisions of section 10 of the Act by setting or adjusting patent fees 
to recover the aggregate cost of patent operations, including 
administrative costs, while facilitating the effective administration 
of the U.S. patent system. The Act strengthened the patent system by 
affording the USPTO the ``resources it requires to clear the still 
sizeable backlog of patent applications and move forward to deliver to 
all American inventors the first rate service they deserve.'' H.R. Rep. 
No. 112-98(I), at 163 (2011). In setting fees under the Act, the Office 
seeks to secure a sufficient amount of aggregate revenue to recover the 
aggregate cost of patent operations, including for achieving strategic 
and operational goals, such as reducing the current patent application 
backlog, decreasing patent pendency, improving patent quality, 
upgrading its patent business information technology (IT) capability 
and infrastructure, and implementing a sustainable funding model. As 
part of these efforts, the Office will use a portion of the patent fees 
to establish a patent operating reserve, a step toward achieving the 
Office's financial sustainability goals. In addition, the Office 
proposes to include multipart and staged fees for requests for 
continued examination and appeals, both of which aim to foster 
innovation and increase prosecution options. Additional information on 
the Office's strategic goals may be found in the USPTO 2010-2015 
Strategic Plan, available at http://www.uspto.gov/about/stratplan/USPTO_2010 2015_Strategic_Plan.pdf. Additional information on the 
Office's goals and operating requirements may be found in the USPTO FY 
2013 President's Budget (Budget), available at http://www.uspto.gov/about/stratplan/budget/fy13pbr.pdr. The legal basis for the proposed 
rules is section 10 of the Act.
3. A Description of and, Where Feasible, an Estimate of the Number of 
Small Entities To Which the Proposed Rule Will Apply
SBA Size Standard
    The Small Business Act (SBA) size standards applicable to most 
analyses conducted to comply with the RFA are set forth in 13 CFR 
121.201. These regulations generally define small businesses as those 
with less than a specified maximum number of employees or less than a 
specified level of annual receipts for the entity's industrial sector 
or North American Industry Classification System (NAICS) code. As 
provided by the RFA, and after consulting with the Small Business 
Administration, the Office formally adopted an alternate size standard 
for the purpose of conducting an analysis or making a certification 
under the RFA for patent-related regulations. See Business Size 
Standard for Purposes of United States Patent and Trademark Office 
Regulatory Flexibility Analysis for Patent-Related Regulations, 71 FR 
67109 (Nov. 20, 2006), 1313 Off. Gaz. Pat. Office 60 (Dec. 12, 2006). 
The Office's alternate small business size standard consists of SBA's 
previously established size standard for entities entitled to pay 
reduced patent fees. See 13 CFR 121.802.
    Unlike SBA's generally applicable small business size standards, 
the size standard for the USPTO is not industry-specific. The Office's 
definition of a small business concern for RFA purposes is a business 
or other concern that: (1) meets the SBA's definition of a ``business 
concern or concern'' set forth in 13 CFR 121.105; and (2) meets the 
size standards set forth in 13 CFR 121.802 for the purpose of paying 
reduced patent fees, namely, an entity: (a) Whose number of employees, 
including affiliates, does not exceed 500 persons; and (b) which has 
not assigned, granted, conveyed, or licensed (and is under no 
obligation to do so) any rights in the invention to any person who made 
it and could not be classified as an independent inventor, or to any 
concern that would not qualify as a nonprofit organization or a small 
business concern under this definition. See Business Size Standard for 
Purposes of United States Patent and Trademark Office Regulatory 
Flexibility Analysis for Patent-Related Regulations, 71 FR 67109 (Nov. 
20, 2006), 1313 Off. Gaz. Pat. Office at 63 (Dec. 12, 2006).
    If a patent applicant self-identifies on a patent application as 
qualifying as a small entity for reduced patent fees under the Office's 
alternative size standard, the Office captures this data in the Patent 
Application Location and Monitoring (PALM) database system, which 
tracks information on each patent application submitted to the Office.
Small Entities Affected by This Rule
Small Entity Defined
    The Act provides that fees set or adjusted under section 10(a) 
``for filing, searching, examining, issuing, appealing, and maintaining 
patent applications and patents shall be reduced by 50 percent'' with 
respect to the application of such fees to any ``small entity'' (as 
defined in 37 CFR 1.27) that qualifies for reduced fees under 35 U.S.C. 
41(h)(1). 35 U.S.C. 41(h)(1), in turn, provides that certain patent 
fees ``shall be reduced by 50 percent'' for a small business concern as 
defined by section 3 of the SBA, and to any independent inventor or 
nonprofit organization as defined in regulations described by the 
Director.
Micro Entity Defined
    Section 10(g) of the Act creates a new category of entity called a 
``micro entity.'' 35 U.S.C. 123; see also 125 Stat. at 318-19. Section 
10(b) of the Act provides that the fees set or adjusted under section 
10(a) ``for filing, searching, examining, issuing, appealing, and 
maintaining patent applications and patents shall be reduced * * * by 
75 percent with respect to the application of such fees to any micro 
entity as defined by [new 35 U.S.C.] 123.'' 125 Stat. at 315-17.
    35 U.S.C. 123(a) defines a ``micro entity'' as an applicant who 
certifies that the applicant: (1) Qualifies as a small entity as 
defined in 37 CFR 1.27; (2) has not been named as an inventor on more 
than four previously filed patent applications, other than applications 
filed in another country, provisional applications under 35 U.S.C. 
111(b), or Patent Cooperation

[[Page 55071]]

Treaty (PCT) applications for which the basic national fee under 35 
U.S.C. 41(a) was not paid; (3) did not, in the calendar year preceding 
the calendar year in which the applicable fee is being paid, have a 
gross income, as defined in section 61(a) of the Internal Revenue Code 
of 1986 (26 U.S.C. 61(a)), exceeding three times the median household 
income for that preceding calendar year, as most recently reported by 
the Bureau of the Census; and (4) has not assigned, granted, conveyed, 
and is not under an obligation by contract or law, to assign, grant, or 
convey, a license or other ownership interest in the application 
concerned to an entity exceeding the income limit set forth in (3) 
above. See 125 Stat. at 318.
    35 U.S.C. 123(d) also defines a ``micro entity'' as an applicant 
who certifies that: (1) The applicant's employer, from which the 
applicant obtains the majority of the applicant's income, is an 
institution of higher education as defined in section 101(1) of the 
Higher Education Act of 1965 (20 U.S.C. 1001(a)); or (2) the applicant 
has assigned, granted, conveyed, or is under an obligation by contract 
or law, to assign, grant, or convey, a license or other ownership 
interest in the particular applications to such an institution of 
higher education.
Estimate of Number of Small Entities Affected
    The changes in the proposed rules will apply to any entity, 
including small and micro entities, that pays any patent fee set forth 
in the notice of proposed rulemaking. The reduced fee rates (50 percent 
for small entities and 75 percent for micro entities) will apply to any 
small entity asserting small entity status and to any micro entity 
certifying micro entity status for filing, searching, examining, 
issuing, appealing, and maintaining patent applications and patents.
    The Office reviews historical data to estimate the percentages of 
application filings asserting small entity status. Table 53 presents a 
summary of such small entity filings by type of application (utility, 
reissue, plant, design) over the last five years.

                        Table 53--Number of Patent Applications Filed in Last Five Years*
----------------------------------------------------------------------------------------------------------------
                                  FY 2011**     FY 2010      FY 2009      FY 2008      FY 2007        Average
----------------------------------------------------------------------------------------------------------------
Utility:
    All........................      504,089      479,332      458,901      466,258      439,578         469,632
    Small......................      126,878      122,329      113,244      116,891      112,953         118,459
    % Small....................         25.2         25.5         24.7         25.1         25.7            25.2
Reissue:
    All........................        1,139        1,138        1,035        1,080        1,057           1,090
    Small......................          265          235          237          258          238             247
    % Small....................         23.3         20.7         22.9         23.9         22.5            22.6
Plant:
    All........................        1,106        1,013          988        1,331        1,002           1,088
    Small......................          574          472          429          480          358             463
    % Small....................         51.9         46.6         43.4         36.1         35.7            42.7
Design:
    All........................       30,270       28,577       25,575       28,217       26,693          27,866
    Small......................       14,699       15,133       14,591       14,373       14,620          14,683
    % Small....................         48.6         53.0         57.1         50.9         54.8            52.9
��������������������������������
    Total:
        All....................      536,604      510,060      486,499      496,886      468,330         499,676
        Small..................      142,416      138,169      128,501      132,002      128,169         133,851
        % Small................         26.5         27.1         26.4         26.6         27.4            26.8
----------------------------------------------------------------------------------------------------------------
* The patent application filing data in this table includes RCEs.
** FY 2011 application data are preliminary and will be finalized in the FY 2012 Performance and Accountability
  Report (PAR).

    Because the percentage of small entity filings varies widely 
between application types, the Office has averaged the small entity 
filing rates over the past five years for those application types in 
order to estimate future filing rates by small and micro entities. 
Those average rates appear in the last column of Table 53. The Office 
estimates that small entity filing rates will continue for the next 
five years at these average historic rates.
    The Office forecasts the number of projected patent applications 
(i.e., workload) for the next five years using a combination of 
historical data, economic analysis, and subject matter expertise. The 
Office estimates that utility, plant, and reissue (UPR) patent 
application filings would grow by 6.0 percent each year in FY 2013 and 
FY 2014, by 5.5 percent each year in FY 2015 and FY 2016, and by 5.0 
percent in FY 2017. The Office forecasts design patent applications 
independently of UPR applications because they exhibit different 
behavior. The Office also previously estimated that design patent 
application filings would grow by 2.0 percent each year in FY 2013 and 
FY 2017. These filing estimates, however, are established prior to an 
analysis of elasticity based on fee adjustments. The Budget (page 36, 
``USPTO Fee Collection Estimates/Ranges'') further describes the 
Office's workload forecasting methodology, which involves reviewing 
economic factors and other relevant indicators about the intellectual 
property environment. Exhibit 12 of the Budget presents additional 
performance goals and measurement data, including the forecasted patent 
application filing growth rate as described above.
    Using the estimated filings for the next five years, the average 
historic rates of small entity filings, and the Office's elasticity 
estimates, Table 53 presents the Office's estimates of the number of 
patent application filings by all applicants, including small entities, 
over the next five fiscal years by application type. As stated in Part 
V. of this NPRM, and taking into account elasticity, the Office 
estimates that applicants will file 1.3 percent fewer patent 
applications during FY 2013 than the number estimated to be filed in 
the absence of a fee increase (with new fee schedule implementation for 
half the fiscal year). The Office further estimates that 2.7 percent 
fewer patent

[[Page 55072]]

applications will be filed during FY 2014 and 4.0 percent fewer patent 
applications beginning in FY 2015, in response to the proposed fee 
adjustment. Beginning in FY 2016, the growth in patent applications 
filed will return the same levels anticipated in the absence of a fee 
increase. The Office's estimate of the number of patent application 
filings by small entities represents an upper bound. Some entities may 
file more than one application in a given year.
    The Office has undertaken an elasticity analysis to examine how fee 
adjustments may impact small entities, and in particular, whether 
increases in fees would result in some such entities not submitting 
applications. Elasticity measures how sensitive patent applicants and 
patentees are to fee amounts or changes. If elasticity is low enough 
(demand is inelastic), then fee increases will not reduce patenting 
activity enough to negatively impact overall revenues. If elasticity is 
high enough (demand is elastic), then increasing fees will decrease 
patenting activity enough to decrease revenue. The Office analyzes 
elasticity at the overall filing level across all patent applicants 
regardless of entity size. Additional information about elasticity 
estimates is available at http://www.uspto.gov/aia_implementation/fees.jspheading-1 in the document entitled ``USPTO Section 10 
Fee Setting--Description of Elasticity Estimates.'' Table 53 reflects 
estimates for total numbers of applicants, including the portion of 
small entity applicants; these estimates include reductions in the 
application growth rate (as described in the previous paragraph) based 
on the estimated elasticity effect included in Table 2 of the 
aforementioned Description of Elasticity Estimates document. This 
estimated elasticity effect is multiplied by the estimated number of 
patent applications in the absence of a fee increase to obtain the 
estimates in Table 54. See the appendix on elasticity for additional 
detail on the Office's elasticity estimates and methodology.

                     Table 54--Estimated Numbers of Patent Applications in FY 2013--FY 2017
----------------------------------------------------------------------------------------------------------------
                                      FY 2012
                                     (current)     FY 2013      FY 2014      FY 2015      FY 2016      FY 2017
----------------------------------------------------------------------------------------------------------------
Utility:
    All...........................      531,551      554,650      578,603      600,571      633,667      665,406
    Small.........................      134,571      141,669      147,881      153,490      161,951      170,063
Reissue:
    All...........................          690          685          678          672          692          713
    Small.........................          152          151          149          148          152          157
Plant
    All...........................        1,044        1,034        1,024        1,014        1,024        1,036
    Small.........................          522          517          512          507          512          518
Design:
    All...........................       32,062       31,994       31,910       31,810       32,446       33,094
    Small.........................       16,031       15,997       15,955       15,905       16,223       16,547
                                   -----------------------------------------------------------------------------
    Total
        All.......................      565,347      588,363      612,215      634,067      667,829      700,249
        Small.....................      151,276      158,334      164,497      170,051      178,837      187,285
----------------------------------------------------------------------------------------------------------------

4. A Description of the Projected Reporting, Recordkeeping and Other 
Compliance Requirements of the Proposed Rule, Including an Estimate of 
the Classes of Small Entities Which Will Be Subject to the Requirement 
and Type of Professional Skills Necessary for Preparation of the Report 
or Record
    If implemented, this rule will not change the burden of existing 
reporting and recordkeeping requirements for payment of fees. The 
current requirements for small entities will continue to apply to small 
entities. The process to assess whether an entity can claim micro 
entity status requires the same skill currently required to assess 
whether an entity can claim small entity status. The projected 
reporting and recordkeeping requirements for an entity to certify 
eligibility for micro entity fee reductions are minimal (namely, a 
brief certification). These minimal requirements will not require any 
professional skills beyond those required to file and prosecute an 
application. Therefore, the professional skills necessary to file and 
prosecute an application through issue and maintenance remain unchanged 
under this proposal. This action proposes only to adjust patent fees 
and not to set procedures for asserting small or micro entity status, 
as previously discussed.
    The full proposed fee schedule (see Part VI. Discussion of Specific 
Rules) is set forth in this NPRM. The proposed fee schedule sets or 
adjusts 352 patent fees. This fee schedule includes 9 new fees for 
which there are no small or micro entity fee reductions, 94 fees for 
which there are small entity fee reductions, and 93 fees for which 
there are micro entity fee reductions. One fee, Statutory Disclaimer 
(37 CFR 1.20(d)), was formerly eligible for a small entity fee 
reduction, but is no longer eligible for such reduction under section 
10(b) of the Act. Similarly, Basic Filing Fee--Utility (37 CFR 
1.16(a)(1), electronic filing for small entities), is set expressly for 
small entities in section 10(h) of the Act, and there is no 
corresponding large or micro entity fee.
    Commensurate with changes to large entity fees, small entities will 
pay more than they do currently for 48 percent of the fees currently 
eligible for the 50 percent fee reduction. However, more fees are 
reduced for small entities under the Act. As a result, they will pay 
less than they do currently for 43 percent of the fees eligible for the 
50 percent reduction (5 percent of the fees stay the same and the 
balance are newly proposed fees). Additionally, micro entities are 
eligible for fee reductions of 75 percent. Compared to what they would 
have paid as small entities under the current fee schedule, micro 
entities will pay less for 88 percent of the fees eligible for 
reduction.
5. Identification, to the Extent Practicable, of All Relevant Federal 
Rules Which May Duplicate, Overlap, or Conflict With the Proposed Rules
    The USPTO is the sole agency of the United States Government 
responsible for administering the provisions of title 35, United States 
Code, pertaining to

[[Page 55073]]

examining and granting patents. It is solely responsible for issuing 
rules to comply with section 10 of the AIA. No other Federal, state, or 
local entity has jurisdiction over the examination and granting of 
patents.
    Other countries, however, have their own patent laws, and an entity 
desiring a patent in a particular country must make an application for 
patent in that country, in accordance with the applicable law. Although 
the potential for overlap exists internationally, this cannot be 
avoided except by treaty (such as the Paris Convention for the 
Protection of Industrial Property, or the PCT). Nevertheless, the USPTO 
believes that there are no other duplicative or overlapping rules.
6. Description of Any Significant Alternatives to the Proposed Rules 
Which Accomplish the Stated Objectives of Applicable Statutes and Which 
Minimize Any Significant Economic Impact of the Proposed Rules on Small 
Entities
    The USPTO considered several alternative approaches to the 
proposal, discussed below, including retaining current fees, full cost 
recovery of fees, an across-the-board adjustment to fees, and the 
proposal submitted to the Patent Public Advisory Committee (PPAC) on 
February 7, 2012. The discussion begins with a description of the 
proposal in this rulemaking.
i. Alternative 1: Proposed Alternative--Set and Adjust Section 10 Fees
    The USPTO chose the alternative proposed herein because it will 
enable the Office to achieve its goals effectively and efficiently 
without unduly burdening small entities, erecting barriers to entry, or 
stifling incentives to innovate. The alternative proposed here achieves 
the aggregate revenue needed for the Office to offset aggregate costs, 
and is therefore beneficial to all entities that seek patent 
protection. Also, the alternative proposed here offers small entities a 
50 percent fee reduction and micro entities a 75 percent fee reduction. 
As discussed in Item 4 above, the proposed fee schedule includes a 
total of 94 reduced fees for small entities and 93 reduced fees for 
micro entities. Compared to the current patent fee schedule, small 
entities will see 34 small entity fees decrease and micro entities will 
see 74 fees decrease (when compared to the rate they would have paid as 
a small entity under the current fee schedule).
    Given the three-month operating reserve target estimated to be 
achieved in FY 2017 under this proposed alternative, small and micro 
entities would pay some higher fees than under some of the other 
alternatives considered. However, the fees are not as high as those 
initially proposed to PPAC (Alternative 4), which achieved the three-
month target operating reserve in FY 2015. Instead, in this 
alternative, the Office decided to slow the growth of the operating 
reserve and lower key fee amounts in response to comments and feedback 
the PPAC received from IP stakeholders and other interested members of 
the public during and following the PPAC fee setting hearings.
    The proposed alternative secures the Office's required revenue to 
meet its aggregate costs, while meeting the strategic goals of patent 
pendency and patent application backlog reduction that will benefit all 
applicants, and especially small and micro entities. Pendency is one of 
the most important factors in an analysis of patent fee proposal 
alternatives. Reducing patent pendency increases the private value of 
patents because patents are granted sooner, thus allowing patent 
holders to more quickly commercialize their innovations. Reducing 
pendency may also allow for earlier disclosure of information and scope 
of protection, which reduces uncertainty regarding the scope of patent 
rights and validity of claims for patentees, competitors, and new 
entrants. All patent applicants should benefit from the reduced 
pendency that will be realized under the proposed alternative. While 
some of the other alternatives discussed make progress toward the 
pendency (and related backlog reduction) goal, the proposed alternative 
is the only one that does so in a way that does not pose undue costs on 
patent applicants and holders while still achieving the Office's other 
strategic goals.
    The proposed alternative is also uniquely responsive to stakeholder 
feedback in ways the other alternatives are not, including multipart 
and staged fees for requests for continued examination, appeals, and 
several of the new trial proceedings, including inter partes review and 
post grant review. These inclusions in the proposed alternative aim to 
foster innovation and increase patent prosecution options for 
applicants and patent holders, as discussed in the Part V: Individual 
Fee Rationale section of Supplementary Information in this NPRM. Two 
examples illustrate how the proposed fee structure is responsive to 
stakeholder feedback. First, the Office proposes two fees for RCEs. The 
fee for an initial RCE is set below cost; the second and any subsequent 
RCEs are set above the amount of the first RCE, but also estimated to 
be at cost recovery. This structure recognizes stakeholder feedback and 
Office data about how commonplace RCEs have become as a path to patent 
protection. A lower first RCE fee continues to allow for use of this 
option, when necessary; only the more intensive use of this process, 
which impacts compact prosecution, requires higher fees. Second, the 
Office proposes to stage the payment of the appeal fees to recover 
additional cost at later points in time and thereby minimize the cost 
impacts on applicants associated with withdrawn final rejections. The 
Office proposes (1) a $1,000 notice of appeal fee, (2) a $0 fee when 
filing the brief, and (3) a $2,000 fee when forwarding the appeal 
file--containing the appellant's Brief and the Examiner's Answer--to 
the BPAI for review. This structure aims to: provide patent prosecution 
options for applicants and appellants, stabilize the fee structure by 
recovering cost at the points in time where appeals cost is the most 
significant, and seek ways to minimize the cost impact on applicants 
associated with withdrawn rejections.
    When estimating aggregate revenue, the Office used a 1.9 percent 
CPI increase (which was the figure included in the Budget) to estimate 
the amount of aggregate revenue from October 1, 2012 to an estimated 
date (primarily March 1, 2013, except for issue, pre-grant publication, 
and assignment fee changes on January 1, 2014) the proposed fees in 
this rule could be made final. The Office also included the fees in the 
January and February 2012 Proposed Rules (as adjusted by the final 
rules) in the aggregate revenue calculation. The proposed fee schedule 
for this rulemaking, as compared to existing fees (labeled Alternative 
1--Proposed Alternative--Set and Adjust Section 10 Fees) is available 
at http://www.uspto.gov/aia_implementation/fees.jspheading-1, 
in the document entitled ``USPTO Section 10 Fee Setting--IRFA Tables''. 
Fee changes for small and micro entities are included in the tables. 
For the purpose of calculating the dollar and percent fee change, fees 
for micro entities are compared to current fees for small entities. For 
the comparison between proposed fees and current fees, as noted above, 
the ``current fees'' column displays the fees that went into effect on 
September 16, 2011, and include the fees proposed in the January and 
February 2012 Proposed Rules (as adjusted by the final rules), but 
unlike the aggregate revenue estimates, do not include an estimated CPI 
fee amount.

[[Page 55074]]

ii. Other Alternatives Considered
    In addition to the proposed fee schedule set forth in Alternative 
1, above, the Office considered several other alternative approaches.
a. Alternative 2: Fee Cost Recovery
    The USPTO considered setting most individual large entity fees at 
the cost of performing the activities related to the particular 
service, while implementing the small and micro entity fee reductions 
for eligible fees. Fees that are not typically set using cost data as 
an indicator have been set at current rates. Under this alternative, 
maintenance fees are set at a level sufficient to ensure the Office is 
able to recover the cost of mandatory expenses and offset the revenue 
loss from small and micro entity discounts (approximately half of the 
current maintenance fee rates). Additional information about the 
methodology for determining the cost of performing the activities, 
including the cost components related to respective fees, is available 
for review at http://www.uspto.gov/aia_implementation/ 
fees.jspheading-1 in the document titled ``USPTO Section 10 
Fee Setting--Activity-Based Information and Costing Methodology.'' When 
estimating aggregate revenue, the Office used a 1.9 percent CPI 
increase (which was the figure included in the Budget) to estimate the 
amount of aggregate revenue from October 1, 2012 to an estimated date 
(March 1, 2013) the proposed fees in this rule could be made final. The 
Office also included the fees in the January and February 2012 Proposed 
Rules (as adjusted by the final rules) in the aggregate revenue 
calculation.
    It is common practice in the Federal Government to set a particular 
fee at a level to recover the cost of that service. In OMB Circular A-
25: User Charges, the OMB states that user charges (fees) should be 
sufficient to recover the full cost to the Federal Government of 
providing the particular service, resource, or good, when the 
Government is acting in its capacity as sovereign. However, the Office 
projects a significant revenue shortfall under this alternative, 
defeating the goals of this rulemaking.
    First, this alternative would not provide sufficient funds to 
offset the required fee reductions for small and micro entities. Even 
after adjusting maintenance fees upward, aggregate revenue would suffer 
considerably. In response, it would be necessary for the Office to 
reduce operating costs (i.e., examination capacity (hiring), IT system 
upgrades, and various other initiatives), the loss of which would 
negatively impact meeting the financial, strategic, and policy goals of 
this rulemaking.
    Moreover, this alternative presents significant barriers to seeking 
patent protection, because front-end fees would increase significantly 
for all applicants, even with small and micro entity fee reductions. 
The high costs of entry into the patent system could lead to a 
significant decrease in the incentives to invest in innovative 
activities among all entities, and especially for small and micro 
entities. Likewise, there would be no improvements in fee design, such 
as the multipart RCE fees or staging the appeal fees included in 
Alternative 1.
    In sum, this alternative is inadequate to accomplish any of the 
goals and strategies as stated in Part III of this rulemaking and so 
the Office has not adopted it.
    The fee schedule for Alternative 2: Fee Cost Recovery is available 
at http://www.uspto.gov/aia_implementation/fees.jsp#heading-1, in the 
document entitled ``USPTO Section 10 Fee Setting--IRFA Tables.'' Fee 
changes for small and micro entities are included in the tables. For 
the purpose of calculation the dollar and percent fee change, fees for 
micro entities are compared to current fees for small entities. For the 
comparison between proposed fees and current fees, the ``current fees'' 
column displays the fees that went into effect on September 16, 2011, 
and include the fees proposed in the January and February 2012 Proposed 
Rules (as adjusted by the final rules), but does not include an 
estimated CPI fee amount.
b. Alternative 3: Across-the-Board Adjustment
    In some past years, and as estimated to begin on October 1, 2012 
(see 77 FR 8831 (May 14, 2012)), the USPTO used its authority to adjust 
statutory fees annually according to changes in the consumer price 
index (CPI), which is a commonly used measure of inflation. Building on 
this prior approach, Alternative 3 would set fees by applying a 6.7 
percent, multi-year, across-the-board inflationary increase to the 
baseline (status quo) beginning in FY 2013. The increase would be in 
addition to the CPI increase described in the aforementioned proposed 
rule. The 6.7 percent represents the estimated cumulative inflationary 
adjustment from FY 2013 through FY 2016. The Office selected this time 
period to represent the fiscal year in which the fees would be 
effective through the fiscal year in which the operating reserve will 
be approaching the target level. As estimated by the Congressional 
Budget Office, projected inflationary rates by fiscal year are: 1.4 
percent in FY 2013, 1.5 percent in FY 2014, 1.6 percent in FY 2015, and 
2.0 percent in FY 2016. Each percentage rate for a given year applies 
to the following year, e.g., a 1.4 percent increase for FY 2013 is 
applied to FY 2014. These rates are multiplied together to account for 
the compounding effect occurring from year-to-year; the rounded result 
is 6.7 percent. When estimating aggregate revenue, the Office used a 
1.9 percent CPI increase (which was the figure included in the Budget) 
to estimate the amount of aggregate revenue from October 1, 2012 to an 
estimated date (March 1, 2013) the proposed fees in this rule could be 
made final. The Office also included the fees in the January and 
February 2012 Proposed Rules (as adjusted by the final rules) in the 
aggregate revenue calculation.
    Under this alternative, the Office would not collect enough revenue 
to achieve strategic goals identified in Part III and within the 
timeframes identified in the Budget. This alternative would implement 
the small and micro entity fee reductions for eligible fees, but would 
also retain the same fee relationships and subsidization policies as 
the status quo (baseline) alternative. There would be no improvements 
in fee design, such as the multipart RCE fees or staging the appeal 
fees included in Alternative 1. Further, when looking at the aggregate 
revenue generated from this alternative, the Office projects that 
patent pendency would not change compared to the status quo. This means 
that while patent pendency and application backlog will first start to 
decrease due to the hiring initiative in FY 2012 (1,500 examiners), it 
would thereafter increase because adequate funding would not be 
available to continue hiring to increase examination capacity to work 
off the patent application backlog, keep pace with new incoming 
applications, and build an adequate operating reserve.
    The fee schedule for Alternative 3: Across-the-Board Adjustment is 
available at http://www.uspto.gov/aia_implementation/fees.jsp#heading-1, in the document entitled ``USPTO Section 10 Fee Setting--IRFA 
Tables.'' Fee changes for small and micro entities are included in the 
tables. For the purpose of calculating the dollar and percent fee 
change, fees for micro entities are compared to current fees for small 
entities. For the comparison between proposed fees and current fees, 
the ``current fees'' column displays the fees that went into effect on 
September 16, 2011, and include the fees proposed

[[Page 55075]]

in the January and February 2012 Proposed Rules (as adjusted by the 
final rule), but does not include an estimated CPI fee amount.
c. Alternative 4: Initial Proposal to the PPAC
    The fee structure initially delivered to the PPAC on February 7, 
2012, and published during the public hearings in February 2012, which 
is consistent with the Budget, would achieve the USPTO's strategic 
goals and objectives, including reducing backlog and pendency.
    This alternative is nearly the same as the proposed Alternative 1. 
As described in Part V. of this NPRM, some fees would be set to achieve 
cost recovery for specific patent-related services, while many others 
would be set either below or above cost. For example, like alternatives 
1 and 3, under this alternative the Office would subsidize front-end 
fees set below cost (e.g., file, search, and examination) by setting 
back-end fees (e.g., issue and maintenance) above cost to enable a low 
cost of entry into the patent system. In some cases, fee rates would be 
set at a level during patent prosecution so that an applicant pays 
certain fees at a point in time relative to the amount of information 
available to make a decision about proceeding. Specifically, fees would 
be set low during prosecution when there is less certainty about the 
value of an applicant's invention, then begin to rise gradually 
starting at issue and continuing through maintenance fees at different 
stages of the patent lifecycle (e.g., 3.5, 7.5, and 11.5 years) when a 
patent holder has greater certainty in the value of the invention. This 
structure also considers the relationship among individual fees and the 
cost of operational processes, including some targeted adjustments to 
fees where the gap between cost and current fees is greatest.
    The fee schedule for this alternative would achieve higher revenue 
than each of the other alternatives considered. It would permit the 
Office to fund the operating reserve at a rapid pace, reaching its 
three-month target level in FY 2015. When estimating aggregate revenue, 
the Office used a 1.9 percent CPI increase (which was the figure 
included in the Budget) to estimate the amount of aggregate revenue 
from October 1, 2012, to an estimated date (primarily March 1, 2013, 
except for issue and pre-grant publication fee changes on January 1, 
2014) the proposed fees in this rule could be made final. The Office 
also included the fees in the January and February 2012 Proposed Rules 
in the aggregate revenue calculation.
    However, during the PPAC hearings and comment period, stakeholders 
raised concerns about the rate of growth associated with the operating 
reserve. While most of the Office's stakeholders agree with the need 
for an operating reserve, many raised concerns about the need to reach 
the target so quickly. Stakeholders opined that such a rate of growth 
would impose too great of a burden on the patent user community. Many 
were also concerned that the fee rates associated with achieving the 
operating reserve target so quickly would be too high. Although this 
alternative would meet the Office's revenue goals, the Office 
ultimately rejected this alternative because it would have a greater 
economic impact on all entities (including small and micro entities) 
than the alternative proposed in this NPRM. A modified version of this 
alternative (with a number of lower fees) became the proposed 
alternative in this rulemaking.
    The fee schedule for Alternative 4: Initial Proposal to PPAC is 
available at http://www.uspto.gov/aia_implementation/fees.jsp#heading-1, in the document entitled ``USPTO Section 10 Fee Setting--IRFA 
Tables.'' Fee changes for small and micro entities are included in the 
tables. For the purpose of calculation the dollar and percent fee 
change, fees for micro entities are compared to current fees for small 
entities. For the comparison between proposed fees and current fees, 
the ``current fees'' column displays the fees that went into effect on 
September 16, 2011, and include the fees proposed in the January and 
February 2012 Proposed Rules, but does not include an estimated CPI fee 
amount.
d. Alternative 5: Retain Current Fees (Status Quo)
    The Office considered a no-action alternative. This alternative 
would retain the status quo, meaning that the Office would not expand 
the range of fees eligible for a small entity discount (50 percent), 
nor would it go a step further and provide micro entities with the 75 
percent fee reduction that Congress provided in section 10 of the Act. 
This approach would not provide sufficient aggregate revenue to 
accomplish the Office's goals as set forth in Part III of this NPRM or 
the Strategic Plan, including hiring the examiners needed to decrease 
the backlog of patent applications, meeting patent pendency goals, 
improving patent quality, advancing IT initiatives, and achieving 
sustainable funding. When estimating aggregate revenue, the Office 
included the fees proposed in the January and February 2012 Proposed 
Rules (as adjusted by the final rules) in the aggregate revenue 
calculation.
    The status quo alternative would be detrimental to micro entities, 
because the proposed rule includes a 75 percent fee reduction for micro 
entities that will result in those applicants paying less under the 
proposed fee structure than they would under the status quo. Moreover, 
small entities generally would be harmed because fewer small entity 
discounts would be available.
    The status quo approach would result in inadequate funding for 
effective patent operations. It would result in increased patent 
pendency levels and patent application backlog. It would also prevent 
the USPTO from meeting the goals in its strategic plan that are 
designed to achieve greater efficiency and improve patent quality. 
These results would negatively impact small entities just as they would 
negatively impact all other patent applicants. While the Office would 
continue to operate and make some progress toward its goals, the 
progress would be much slower, and in some cases, initial improvements 
would be eradicated in the out-years (e.g., patent pendency and the 
backlog would increase in the out-years as the Office fails to increase 
examination capacity to keep up with incoming applications). Likewise, 
IT improvement activities would continue, but at a slower rate due to 
funding limitations.
iii. Alternatives Specified by the RFA
    The RFA provides that an agency also consider four specified 
``alternatives'' or approaches, namely: (1) Establishing different 
compliance or reporting requirements or timetables that take into 
account the resources available to small entities; (2) clarifying, 
consolidating, or simplifying compliance and reporting requirements 
under the rule for small entities; (3) using performance rather than 
design standards; and (4) exempting small entities from coverage of the 
rule, or any part thereof. 5 U.S.C. 604(c). The USPTO discusses each of 
these specified alternatives or approaches below, and describes how 
this notice of proposed rulemaking is adopting these approaches.
Differing Requirements
    As discussed above, the changes proposed in this rulemaking would 
establish differing requirements for small and micro entities that take 
into account the reduced resources available to them. Specifically, 
micro entities would pay a 75 percent reduction in patent fees under 
this proposal.
    For non-micro small entities, this proposal would not only retain 
the

[[Page 55076]]

existing 50 percent patent fee reduction but also expand the 
availability of such small entity fee reductions to 26 patent fees that 
currently are not eligible for small entity reductions. The increased 
availability of fee reductions for both small and micro entities arises 
from the fact that section 10(b) of the Act provides that reductions 
apply to all fees for ``filing, searching, examining, issuing, 
appealing, and maintaining patent applications and patents.'' Prior to 
the AIA, small entity fee reductions applied only to fees set under 35 
U.S.C. 41(a) and 41(b). By increasing the scope of fees eligible for 
reductions, the AIA allows the USPTO to do more to ease burdens and 
reduce the entry barriers for small and micro entities to take part in 
the patent system.
    This rulemaking sets fee levels but does not set or alter 
procedural requirements for asserting small or micro entity status. To 
pay reduced patent fees, small entities must merely assert small entity 
status to pay reduced patent fees. The small entity may make this 
assertion by either checking a box on the transmittal form, ``Applicant 
claims small entity status,'' or by paying the small entity fee 
exactly. The Office is similarly proposing that a micro entity submit a 
form certifying micro entity status. (Changes to Implement Micro Entity 
Status for Paying Patent Fees, 77 FR 31806 (May 30, 2012)). These 
proposed rules do not change any reporting requirements for any small 
entity. For both small and micro entities, the burden to establish 
their status is nominal (making an assertion or submitting a 
certification), and the benefit of the fee reductions (50 percent for 
small entities and 75 percent for micro entities) is significant.
    This proposed rule makes the best use of differing requirements for 
small and micro entities. It also makes the best use of the redesigned 
fee structure, as discussed further below.
Clarification, Consolidation, or Simplification of Requirements
    The proposed changes here also clarify, consolidate, and simplify 
the current requirements. These changes incorporate certain options to 
stage fees (break fees into multiple parts), so that applicants can 
space out the payment of fees and make decisions about some fees at 
late stages in the application process when they have more information. 
Applicants also can receive partial refunds when some parts of a 
service prove not to be needed.
    For example, the Office proposes that appeal fees be spread out 
across different stages of the appeal process so that an applicant can 
pay a smaller fee to initiate the appeal, and then not pay for the bulk 
of the appeal fee until if and when the appeal is forwarded to the BPAI 
after the Examiner's Answer is filed. Thus, if a small or micro entity 
initiates an appeal, but the appeal does not go forward because the 
examiner withdraws the rejection, the small entity will pay less for 
the appeal process than under the current fee structure (where the bulk 
of the appeal fees would be paid up front even if the appeal does not 
go forward). In another example, the Office proposes to set fees for 
the administrative trials (inter partes review, post grant review, and 
covered business method review) before the BPAI to be paid in multiple 
parts. With inter partes review, for instance, the Office proposes to 
return fees for post-institution services should a petition not be 
instituted. Similarly, the Office proposes that fees paid for post-
institution review of a large number of claims be returned if the 
Office only institutes the review of a subset of the requested claims. 
These options for staging and splitting fees into multiple parts will 
benefit small and micro entities, who will be able to spread out their 
payments of fees and in some instances, potentially receive refunds of 
fees where only a portion of a particular service is ultimately 
provided. See proposed 41.20 and 42.15.
    This proposed rule makes the best use of this alternative approach. 
No other alternative considered above includes the full range of 
redesign features.
Performance Standards
    Performance standards do not apply to the current rulemaking.
Exemption for Small Entities
    The proposed changes here include a new 75 percent reduction in 
fees for micro entities, and an expansion of the 50 percent reduction 
in fees for small entities. The Office considered exempting small and 
micro entities from paying patent fees, but determined that the USPTO 
would lack statutory authority for this approach. Section 10(b) of the 
Act provides that ``fees set or adjusted under subsection (a) for 
filing, searching, examining, issuing, appealing, and maintaining 
patent applications and patents shall be reduced by 50 percent [for 
small entities] and shall be reduced by 75 percent [for micro 
entities].'' (Emphasis added). Neither the AIA nor any other statute 
authorizes the USPTO simply to exempt small or micro entities, as a 
class of applicants, from paying patent fees.

B. Executive Order 12866 (Regulatory Planning and Review)

    This rulemaking has been determined to be economically significant 
for purposes of Executive Order 12866 (Sept. 30, 1993), as amended by 
Executive Order 13258 (Feb. 26, 2002) and Executive Order 13422 (Jan. 
18, 2007). The Office has developed a RIA as required for rulemakings 
deemed to be economically significant. The complete RIA is available at 
http://www.uspto.gov/aia_implementation/fees.jsp#heading-1.

C. Executive Order 13563 (Improving Regulation and Regulatory Review)

    The Office has complied with Executive Order 13563. Specifically, 
the Office has, to the extent feasible and applicable: (1) Made a 
reasoned determination that the benefits justify the costs of the rule; 
(2) tailored the rule to impose the least burden on society consistent 
with obtaining the regulatory objectives; (3) selected a regulatory 
approach that maximizes net benefits; (4) specified performance 
objectives; (5) identified and assessed available alternatives; (6) 
involved the public in an open exchange of information and perspectives 
among experts in relevant disciplines, affected stakeholders in the 
private sector, and the public as a whole, and provided on-line access 
to the rulemaking docket; (7) attempted to promote coordination, 
simplification, and harmonization across Government agencies and 
identified goals designed to promote innovation; (8) considered 
approaches that reduce burdens and maintain flexibility and freedom of 
choice for the public; and (9) ensured the objectivity of scientific 
and technological information and processes.

D. Executive Order 13132 (Federalism)

    This rulemaking does not contain policies with federalism 
implications sufficient to warrant preparation of a Federalism 
Assessment under Executive Order 13132 (Aug. 4, 1999).

E. Congressional Review Act

    Under the Congressional Review Act provisions of the Small Business 
Regulatory Enforcement Fairness Act of 1996 (5 U.S.C. 801-808), prior 
to issuing any final rule, the United States Patent and Trademark 
Office will submit a report containing the final rule and other 
required information to the U.S. Senate, the U.S. House of 
Representatives, and the Comptroller General of the Government 
Accountability Office.

[[Page 55077]]

F. Unfunded Mandates Reform Act of 1995

    The changes proposed in this notice do not involve a Federal 
intergovernmental mandate that will result in the expenditure by state, 
local, and tribal governments, in the aggregate, of 100 million dollars 
(as adjusted) or more in any one year, or a Federal private sector 
mandate that will result in the expenditure by the private sector of 
100 million dollars (as adjusted) or more in any one year, and will not 
significantly or uniquely affect small governments. Therefore, no 
actions are necessary under the provisions of the Unfunded Mandates 
Reform Act of 1995. See 2 U.S.C. 1501-1571.

G. Paperwork Reduction Act

    The Paperwork Reduction Act of 1995 (PRA) (44 U.S.C. 3501-3549) 
requires that the USPTO considers the impact of paperwork and other 
information collection burdens imposed on the public. This proposed 
rule involves information collection requirements that are subject to 
review by the Office of Management and Budget (OMB) under the PRA. The 
collection of information involved in this notice has been submitted to 
OMB as a new information collection under OMB control number 0651-00xx. 
The proposed collection will be available at the OMB's Information 
Collection Review Web site at: www.reginfo.gov/public/do/PRAMain.
1. Summary
    This notice of proposed rulemaking proposes both collecting two 
fees not specifically delineated in an existing information collection 
request (listed in Table (A) below) and amending the fees in several 
current information collections previously approved by OMB (listed in 
Table (B) below). The USPTO is consolidating these fee burdens in order 
to allow for fee burden adjustments to be requested through a single 
fee information collection package entitled ``America Invents Act 
Section 10 Patent Fee Adjustments.'' This new, consolidated collection 
will result in the unavoidable double counting of certain fees for a 
short period of time. The USPTO will update the fee burden inventory in 
existing information collections to correct the double counting by 
submitting non-substantive change requests in each of the currently 
existing information collection requests (in Table (B) below) with the 
appropriate fee adjustments. Nothing associated with either this 
rulemaking or this information collection request alters the existing 
non-fee burden of any response to any information collection. However, 
because a change in some fees will change the aggregate demand for 
certain services, the total number of responses for some information 
collections will change, which in turn will change the total number of 
burden hours (defined as the total hour burden of a collection 
multiplied by the total responses) and respondent cost burden (burden 
hours multiplied by the attorney cost per hour) for some collections. 
These changes are detailed in the supporting statement for this 
information collection, and the USPTO will update the existing 
information collections to account for this change when submitting the 
non-substantive change requests described above.
    (A) Fees Included in this New Information Collection Request

----------------------------------------------------------------------------------------------------------------
                                       Amount (Large     Amount (Small     Amount (Micro
                Fee                       Entity)           Entity)           Entity)            Regulation
----------------------------------------------------------------------------------------------------------------
Correct Inventorship after First            $1,000.00           $500.00           $250.00  37 CFR 1.17(d)
 Action on the Merits.
Petitions to Chief APJ Under 37 CFR              $400              $400              $400  37 CFR 41.3
 41.3.
----------------------------------------------------------------------------------------------------------------

 (B) Existing & Pending Collections Amended under the Proposed 
Rulemaking
(1) 0651-0012 Admittance to Practice and Roster of Registered Patent 
Attorneys and Agents Admitted to Practice Before the USPTO
(2) 0651-0016 Rules for Patent Maintenance Fees
(3) 0651-0020 Patent Term Extension
(4) 0651-0021 Patent Cooperation Treaty
(5) 0651-0027 Recording Assignments
(6) 0651-0031 Patent Processing (Updating)
(7) 0651-0032 Initial Patent Applications
(8) 0651-0033 Post Allowance and Refiling
(9) 0651-0036 Statutory Invention Registration
(10) 0651-0059 Certain Patent Petitions Requiring a Fee (formerly 
Patent Petitions Charging the Fee Under 37 CFR 1.17(f))
(11) 0651-0063 Board of Patent Appeals and Interferences (BPAI) Actions
(12) 0651-0064 Patent Reexaminations
(13) 0651-00xx Patent Review and Derivation Proceedings
(14) 0651-00xx Matters Related to Patent Appeals
2. Data
    Section 10 of the Act authorizes the Director of the USPTO to set 
or adjust all patent fees established, authorized, or charged under 
Title 35 of the U.S. Code. Agency fees associated with information 
collections are considered to be part of the burden of the collection 
of information. The data associated with this information collection 
request is summarized below and provided in additional detail in the 
supporting statement for this information collection request, available 
through the Information Collection Review Web site (www.reginfo.gov/public/do/PRAMain).
    Section 10 also provides for the creation of a ``micro entity 
status.'' The information collection associated with micro entity 
status will be addressed in a separate proposed rulemaking and a 
separate PRA analysis.
    Needs and Uses: The Agency is authorized to collect these fees by 
Section 10 of the Act. The public uses this information collection to 
pay their required fees and communicate with the Office regarding their 
applications and patents procedures. The Agency uses these fees to 
process respondents' applications and patents, to process applicants' 
requests for various procedures in application and post-grant patent 
processing, and to provide all associated services of the Office.
    OMB Number: 0651-00xx.
    Title: America Invents Act Section 10 Patent Fee Adjustments.
    Form Numbers: None.
    Type of Review: New Collection.
    Likely Respondents/Affected Public: Individuals or households, 
businesses or other for-profit institutions, not-for-profit 
institutions, farms, Federal Government, and state, local, or tribal 
governments.
A. Estimates For All Fees, Including Both Information Added In This 
Collection And Information In Existing And Pending Collections
    Estimated Number of Respondents For All Fees: 5,832,472 responses 
per year.
    Estimated Time per Response For All Fees: Except as noted below for 
the two fees added to this collection, this

[[Page 55078]]

information collection will not result in any change in any time per 
response.
    Estimated Total Annual (Hour) Respondent Cost Burden for All Fees: 
Except as noted below for the two fees added to this collection, this 
information collection will not result in any change in any information 
requirements associated with fees set or amended by this proposed 
rulemaking. Other than the two fees added to this collection, the only 
change in the total annual (hour) respondent cost burden results from 
the change in responses, which is a result of two factors. First, 
because the change in a fee for a particular service may cause a change 
in demand for that service, the total number of respondents for each 
service might change, altering the total annual (hour) respondent cost 
burden for fees covered under approved collections. This change has 
been fully detailed in the supporting statement and its appendices. 
Second, response numbers of current inventories have been updated to 
reflect the Office's most recent estimates.
    Estimated Total Annual (Non-Hour) Respondent Cost Burden for All 
Fees: $2,594,521,312. The USPTO estimates that the total fees 
associated with this collection, representing all fees collected across 
the full panoply of patent processing services provided by the Office, 
will be approximately $2,594,521,210 per year. (This number is 
different than the total revenue cited elsewhere in this rule because 
PRA estimates have been calculated by taking an average over three 
years of estimated responses and because not every fee adjusted in this 
rulemaking constitutes a burden under the PRA (e.g., self-service 
copying fees).) The amount of these fees is a $358,711,017 change from 
the fee amounts currently in the USPTO PRA inventory. Of this, 
$349,621,825 directly results from this proposed rulemaking and 
$9,089,192 results from non-rulemaking factors. Additionally, the USPTO 
estimates that $102 of additional postage cost associated with the 
items added in this collection will result from this collection. 
Because the postage costs for items in existing collections have not 
been altered by this rulemaking, they are not part of the burden of 
this rulemaking.
B. Estimates for Fees not Specifically Delineated in an Existing 
Information Collection Request (A Subset of All Fees in Part A. Above)
    Estimated Number of Respondents for Information Added In This 
Collection: 665 responses per year.
    Estimated Time Per Response For Information Added In This 
Collection: The USPTO estimates that it will take the public between 2 
and 4 hours to gather the necessary information, prepare the 
appropriate form or other documents, and submit the information to the 
USPTO.
    Estimated Total Annual Respondent Burden Hours For Information 
Added In This Collection: 1,660 hours per year.
    Estimated Total Annual (Hour) Respondent Cost Burden For 
Information Added In This Collection: $615,860 per year.
    Estimated Annual (Non-Hour) Respondent Cost Burden For Information 
Added In This Collection: $493,852 per year. Of this amount, $427,750 
directly results from this rulemaking, $66,000 results from non-
rulemaking factors, and $102 results from postage.
3. Solicitation
    The agency is soliciting comments to: (1) Evaluate whether the 
proposed information requirement is necessary for the proper 
performance of the functions of the agency, including whether the 
information will have practical utility; (2) evaluate the accuracy of 
the agency's estimate of the burden; (3) enhance the quality, utility, 
and clarity of the information to be collected; and (4) minimize the 
burden of collecting the information on those who are to respond, 
including by using appropriate automated, electronic, mechanical, or 
other technological collection techniques or other forms of information 
technology.
    Interested persons are requested to send comments regarding this 
information collection by November 5, 2012 to: (1) The Office of 
Information and Regulatory Affairs, Office of Management and Budget, 
New Executive Office Building, Room 10202, 725 17th Street NW., 
Washington, DC 20503, Attention: Nicholas A. Fraser, the Desk Officer 
for the United States Patent and Trademark Office, and via email at 
nfraser@omb.eop.gov; and (2) Michelle Picard via email to 
fee.setting@uspto.gov, or by mail addressed to: Mail Stop--Office of 
the Chief Financial Officer, Director of the United States Patent and 
Trademark Office, P.O. Box 1450, Alexandria, VA 22313-1450, marked to 
the attention of Michelle Picard.
    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.

37 CFR Part 42

    Trial practice before the Patent Trial and Appeal Board.
    For the reasons set forth in the preamble, 37 CFR parts 1, 41, and 
42 are proposed to be 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 1.16 is amended by revising paragraphs (a) through (s) 
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:

By a micro entity (Sec.   1.29(a)).........................       $70.00
By a small entity (Sec.   1.27(a)).........................      $140.00
By a small entity (Sec.   1.27(a)) if the application is          $70.00
 submitted in compliance with the Office electronic filing
 system (Sec.   1.27(b)(2))................................
By other than a small or micro entity......................      $280.00
 

    (b) Basic fee for filing each application for an original design 
patent:

 
 
 
By a micro entity (Sec.   1.29(a)).........................       $45.00
By a small entity (Sec.   1.27(a)).........................       $90.00
By other than a small or micro entity......................      $180.00
 

    (c) Basic fee for filing each application for an original plant 
patent:

 
 
 
By a micro entity (Sec.   1.29(a)).........................       $45.00
By a small entity (Sec.   1.27(a)).........................       $90.00
By other than a small or micro entity......................      $180.00
 

    (d) Basic fee for filing each provisional application:

 
 
 
By a micro entity (Sec.   1.29(a)).........................       $65.00
By a small entity (Sec.   1.27(a)).........................      $130.00
By other than a small or micro entity......................      $260.00
 

    (e) Basic fee for filing each application for the reissue of a 
patent:

[[Page 55079]]



 
 
 
By a micro entity (Sec.   1.29(a)).........................       $70.00
By a small entity (Sec.   1.27(a)).........................      $140.00
By other than a small or micro entity......................      $280.00
 

    (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 micro entity (Sec.   1.29(a)).........................       $35.00
By a small entity (Sec.   1.27(a)).........................       $70.00
By other than a small or micro entity......................      $140.00
 

    (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 micro entity (Sec.   1.29(a)).........................       $15.00
By a small entity (Sec.   1.27(a)).........................       $30.00
By other than a small or micro entity......................       $60.00
 

    (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 micro entity (Sec.   1.29(a)).........................      $105.00
By a small entity (Sec.   1.27(a)).........................      $210.00
By other than a small or micro entity......................      $420.00
 

    (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 micro entity (Sec.   1.29(a)).........................       $20.00
By a small entity (Sec.   1.27(a)).........................       $40.00
By other than a small or micro entity......................       $80.00
 

    (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 micro entity (Sec.   1.29(a)).........................      $195.00
By a small entity (Sec.   1.27(a)).........................      $390.00
By other than a small or micro entity......................      $780.00
 

    (k) Search fee for each application filed under 35 U.S.C. 111 for 
an original patent, except design, plant, or provisional applications:

 
 
 
By a micro entity (Sec.   1.29(a)).........................      $150.00
By a small entity (Sec.   1.27(a)).........................      $300.00
By other than a small or micro entity......................      $600.00
 

    (l) Search fee for each application for an original design patent:

 
 
 
By a micro entity (Sec.   1.29(a)).........................       $30.00
By a small entity (Sec.   1.27(a)).........................       $60.00
By other than a small or micro entity......................      $120.00
 

    (m) Search fee for each application for an original plant patent:

 
 
 
By a micro entity (Sec.   1.29(a)).........................       $95.00
By a small entity (Sec.   1.27(a)).........................      $190.00
By other than a small or micro entity......................      $380.00
 

    (n) Search fee for each application for the reissue of a patent:

 
 
 
By a micro entity (Sec.   1.29(a)).........................      $150.00
By a small entity (Sec.   1.27(a)).........................      $300.00
By other than a small or micro entity......................      $600.00
 

    (o) Examination fee for each application filed under 35 U.S.C. 111 
for an original patent, except design, plant, or provisional 
applications:

 
 
 
By a micro entity (Sec.   1.29(a)).........................      $180.00
By a small entity (Sec.   1.27(a)).........................      $360.00
By other than a small or micro entity......................      $720.00
 

    (p) Examination fee for each application for an original design 
patent:

 
 
 
By a micro entity (Sec.   1.29(a)).........................      $115.00
By a small entity (Sec.   1.27(a)).........................      $230.00
By other than a small or micro entity......................      $460.00
 

    (q) Examination fee for each application for an original plant 
patent:

 
 
 
By a micro entity (Sec.   1.29(a)).........................      $145.00
By a small entity (Sec.   1.27(a)).........................      $290.00
By other than a small or micro entity......................      $580.00
 

    (r) Examination fee for each application for the reissue of a 
patent:

 
 
 
By a micro entity (Sec.   1.29(a)).........................      $540.00
By a small entity (Sec.   1.27(a)).........................    $1,080.00
By other than a small or micro entity......................    $2,160.00
 

    (s) Application size fee for any application filed under 35 U.S.C. 
111 for the specification and drawings which exceed 100 sheets of 
paper, for each additional 50 sheets or fraction thereof:

 
 
 
By a micro entity (Sec.   1.29(a)).........................      $100.00
By a small entity (Sec.   1.27(a)).........................      $200.00
By other than a small or micro entity......................      $400.00
 

* * * * *
    3. Section 1.17 is amended by revising paragraphs (a) through (i), 
removing and reserving paragraph (j), and revising paragraphs (k) 
through (m) and (p) through (t) 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 micro entity (Sec.   1.29(a)).........................       $50.00
By a small entity (Sec.   1.27(a)).........................      $100.00
By other than a small or micro entity......................      $200.00
 

    (2) For reply within second month:

By a micro entity (Sec.   1.29(a)).........................      $150.00
By a small entity (Sec.   1.27(a)).........................      $300.00
By other than a small or micro entity......................      $600.00
 

    (3) For reply within third month:

By a micro entity (Sec.   1.29(a)).........................      $350.00
By a small entity (Sec.   1.27(a)).........................      $700.00
By other than a small or micro entity......................    $1,400.00
 

    (4) For reply within fourth month:

By a micro entity (Sec.   1.29(a)).........................      $550.00
By a small entity (Sec.   1.27(a)).........................    $1,100.00
By other than a small or micro entity......................    $2,200.00
 

    (5) For reply within fifth month:

By a micro entity (Sec.   1.29(a)).........................      $750.00
By a small entity (Sec.   1.27(a)).........................    $1,500.00
By other than a small or micro entity......................    $3,000.00
 

    (b) For fees in proceedings before the Board of Patent Appeals and 
Interferences, see Sec.  41.20 of this title.
    (c) For filing a request for prioritized examination under Sec.  
1.102(e):

By a micro entity (Sec.   1.29(a)).........................    $1,000.00
By a small entity (Sec.   1.27(a)).........................    $2,000.00
By other than a small or micro entity......................    $4,000.00
 

    (d) For correction of inventorship in an application after the 
first Office action on the merits:

By a micro entity (Sec.   1.29(a)).........................      $250.00
By a small entity (Sec.   1.27(a)).........................      $500.00
By other than a small or micro entity......................    $1,000.00
 

    (e) To request continued examination pursuant to Sec.  1.114:
    (1) For filing a first request for continued examination pursuant 
to Sec.  1.114 in an application:

By a micro entity..........................................      $300.00
By a small entity (Sec.   1.27(a)).........................      $600.00
By other than a small or micro entity......................    $1,200.00
 

    (2) For filing a second or subsequent request for continued 
examination pursuant to Sec.  1.114 in an application:

By a micro entity..........................................      $425.00
By a small entity (Sec.   1.27(a)).........................      $850.00
By other than a small or micro entity......................    $1,700.00
 

    (f) For filing a petition under one of the following sections which 
refers to this paragraph:

By a micro entity (Sec.   1.29(a)).........................      $100.00
By a small entity (Sec.   1.27(a)).........................      $200.00

[[Page 55080]]

 
By other than a small or micro entity......................      $400.00
 

    Sec.  1.36(a)--for revocation of a power of attorney by fewer than 
all of the applicants.
    Sec.  1.53(e)--to accord a filing date.
    Sec.  1.57(a)--to accord a filing date.
    Sec.  1.182--for decision on a question not specifically provided 
for.
    Sec.  1.183--to suspend the rules.
    Sec.  1.378(e)--for reconsideration of decision on petition 
refusing to accept delayed payment of maintenance fee in an expired 
patent.
    Sec.  1.741(b)--to accord a filing date to an application under 
Sec.  1.740 for extension of a patent term.
    (g) For filing a petition under one of the following sections which 
refers to this paragraph:

By a micro entity (Sec.   1.29(a)).........................       $50.00
By a small entity (Sec.   1.27(a)).........................      $100.00
By other than a small or micro entity......................      $200.00
 

    Sec.  1.12--for access to an assignment record.
    Sec.  1.14--for access to an application.
    Sec.  1.47--for filing by other than all the inventors or a person 
not the inventor.
    Sec.  1.59--for expungement of information.
    Sec.  1.103(a)--to suspend action in an application.
    Sec.  1.136(b)--for review of a request for extension of time when 
the provisions of Sec.  1.136 (a) are not available.
    Sec.  1.295--for review of refusal to publish a statutory invention 
registration.
    Sec.  1.296--to withdraw a request for publication of a statutory 
invention registration filed on or after the date the notice of intent 
to publish issued.
    Sec.  1.377--for review of decision refusing to accept and record 
payment of a maintenance fee filed prior to expiration of a patent.
    Sec.  1.550(c)--for patent owner requests for extension of time in 
ex parte reexamination proceedings.
    Sec.  1.956--for patent owner requests for extension of time in 
inters partes reexamination proceedings.
    Sec.  5.12--for expedited handling of a foreign filing license.
    Sec.  5.15--for changing the scope of a license.
    Sec.  5.25--for retroactive license.
    (h) For filing a petition under one of the following sections which 
refers to this paragraph:

By a micro entity (Sec.   1.29(a)).........................       $35.00
By a small entity (Sec.   1.27(a)).........................       $70.00
By other than a small or micro entity......................      $140.00
 

    Sec.  1.19(g)--to request documents in a form other than provided 
in this part.
    Sec.  1.84--for accepting color drawings or photographs.
    Sec.  1.91--for entry of a model or exhibit.
    Sec.  1.102(d)--to make an application special.
    Sec.  1.138(c)--to expressly abandon an application to avoid 
publication.
    Sec.  1.313--to withdraw an application from issue.
    Sec.  1.314--to defer issuance of a patent.
    (i) Processing fee for taking action under one of the following 
sections which refers to this paragraph:

By a micro entity (Sec.   1.29(a)).........................       $35.00
By a small entity (Sec.   1.27(a)).........................       $70.00
By other than a small or micro entity......................      $140.00
 

    Sec.  1.28(c)(3)--for processing a non-itemized fee deficiency 
based on an error in small entity status.
    Sec.  1.41--for supplying the name or names of the inventor or 
inventors after the filing date without an oath or declaration as 
prescribed by Sec.  1.63, except in provisional applications.
    Sec.  1.48--for correcting inventorship, except in provisional 
applications.
    Sec.  1.52(d)--for processing a nonprovisional application filed 
with a specification in a language other than English.
    Sec.  1.53(b)(3)--to convert a provisional application filed under 
Sec.  1.53(c) into a nonprovisional application under Sec.  1.53(b).
    Sec.  1.55--for entry of late priority papers.
    Sec.  1.71(g)(2)--for processing a belated amendment under Sec.  
1.71(g).
    Sec.  1.99(e)--for processing a belated submission under Sec.  
1.99.
    Sec.  1.102(e)--for requesting prioritized examination of an 
application.
    Sec.  1.103(b)--for requesting limited suspension of action, 
continued prosecution application for a design patent (Sec.  1.53(d)).
    Sec.  1.103(c)--for requesting limited suspension of action, 
request for continued examination (Sec.  1.114).
    Sec.  1.103(d)--for requesting deferred examination of an 
application.
    Sec.  1.217--for processing a redacted copy of a paper submitted in 
the file of an application in which a redacted copy was submitted for 
the patent application publication.
    Sec.  1.221--for requesting voluntary publication or republication 
of an application.
    Sec.  1.291(c)(5)--for processing a second or subsequent protest by 
the same real party in interest.
    Sec.  1.497(d)--for filing an oath or declaration pursuant to 35 
U.S.C. 371(c)(4) naming an inventive entity different from the 
inventive entity set forth in the international stage.
    Sec.  3.81--for a patent to issue to assignee, assignment submitted 
after payment of the issue fee.
    (j) [Reserved]
    (k) For filing a request for expedited examination under Sec.  
1.155(a):

By a micro entity (Sec.   1.29(a)).........................      $225.00
By a small entity (Sec.   1.27(a)).........................      $450.00
By other than a small or micro entity......................      $900.00
 

    (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 micro entity (Sec.   1.29(a)).........................      $160.00
By a small entity (Sec.   1.27(a)).........................      $320.00
By other than a small or micro entity......................      $640.00
 

    (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 micro entity (Sec.   1.29(a)).........................      $475.00
By a small entity (Sec.   1.27(a)).........................      $950.00
By other than a small or micro entity......................    $1,900.00
 

* * * * *
    (p) For an information disclosure statement under Sec.  1.97(c) or 
(d) or a submission under Sec.  1.9:

By a micro entity (Sec.   1.29(a)).........................       $45.00
By a small entity (Sec.   1.27(a)).........................       $90.00
By other than a small or micro entity......................      $180.00
 

    (q) Processing fee for taking action under one of the following 
sections which refers to this paragraph: $50.00
    Sec.  1.41--to supply the name or names of the inventor or 
inventors after the filing date without a cover sheet as prescribed by 
Sec.  1.51(c)(1) in a provisional application Sec.  1.48--for 
correction of inventorship in a provisional application.
    Sec.  1.53(c)(2)--to convert a nonprovisional application filed 
under Sec.  1.53(b) to a provisional application under Sec.  1.53(c)
    (r) For entry of a submission after final rejection under Sec.  
1.129(a):

By a micro entity (Sec.   1.29(a)).........................      $210.00
By a small entity (Sec.   1.27(a)).........................      $420.00
By other than a small or micro entity......................      $840.00
 

    (s) For each additional invention requested to be examined under 
Sec.  1.129(b):

By a micro entity (Sec.   1.29(a)).........................      $210.00
By a small entity (Sec.   1.27(a)).........................      $420.00
By other than a small or micro entity......................      $840.00
 

    (t) For the acceptance of an unintentionally delayed claim for

[[Page 55081]]

priority under 35 U.S.C. 119, 120, 121, or 365(a) or (c) (Sec. Sec.  
1.55 and 1.78) or for filing a request for the restoration of the right 
of priority under:

By a micro entity (Sec.   1.29(a)).........................      $355.00
By a small entity (Sec.   1.27(a)).........................      $710.00
By other than a small or micro entity......................    $1,420.00
 

    4. Section 1.18 is revised 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 micro entity (Sec.   1.29(a)).........................      $240.00
By a small entity (Sec.   1.27(a)).........................      $480.00
By other than a small or micro entity......................      $960.00
 

    (b) Issue fee for issuing an original design patent:

By a micro entity (Sec.   1.29(a)).........................      $140.00
By a small entity (Sec.   1.27(a)).........................      $280.00
By other than a small or micro entity......................      $560.00
 

    (c) Issue fee for issuing an original plant patent:

By a micro entity (Sec.   1.29(a)).........................      $190.00
By a small entity (Sec.   1.27(a)).........................      $380.00
By other than a small or micro entity......................      $760.00
 

    (d)

Publication fee............................................        $0.00
Republication fee (Sec.   1.221(a))........................      $300.00
 

    (e) For filing an application for patent term adjustment under 
Sec.  1.705: $200.00
    (f) For filing a request for reinstatement of all or part of the 
term reduced pursuant to Sec.  1.704(b) in an application for patent 
term adjustment under Sec.  1.705: $400.00
    5. Section 1.19 is revised to read as follows:


Sec.  1.19  Document Supply Fees.

    The United States Patent and Trademark Office will supply copies of 
the following patent-related documents upon payment of the fees 
indicated. Paper copies will be in black and white unless the original 
document is in color, a color copy is requested and the fee for a color 
copy is paid.
    (a) Uncertified copies of patent application publications and 
patents:
    (1) Printed copy of the paper portion of a patent application 
publication or patent including a design patent, statutory invention 
registration, or defensive publication document. Service includes 
preparation of copies by the Office within two to three business days 
and delivery by United States Postal Service; and preparation of copies 
by the Office within one business day of receipt and delivery to an 
Office Box or by electronic means (e.g., facsimile, electronic mail): 
$3.00
    (2) Printed copy of a plant patent in color: $15.00
    (3) Color copy of a patent (other than a plant patent) or statutory 
invention registration containing a color drawing: $25.00
    (b) Copies of Office documents to be provided in paper, or in 
electronic form, as determined by the Director (for other patent-
related materials see Sec.  1.21(k)):
    (1) Copy of a patent application as filed, or a patent-related file 
wrapper and contents, stored in paper in a paper file wrapper, in an 
image format in an image file wrapper, or if color documents, stored in 
paper in an Artifact Folder:
    (i) If provided on paper:
    (A) Application as filed: $20.00
    (B) File wrapper and contents of 400 or fewer pages: $200.00
    (C) Additional fee for each additional 100 pages or portion thereof 
of file wrapper and contents: $40.00
    (D) Individual application documents, other than application as 
filed, per document: $25.00
    (ii) If provided on compact disc or other physical electronic 
medium in single order:
    (A) Application as filed: $20.00
    (B) File wrapper and contents, first physical electronic medium: 
$55.00
    (C) Additional fee for each continuing physical electronic medium 
in the single order of paragraph (b)(1)(ii)(B) of this section: $15.00
    (iii) If provided electronically (e.g., by electronic transmission) 
other than on a physical electronic medium as specified in paragraph 
(b)(1)(ii) of this section:
    (A) Application as filed: $20.00
    (B) File wrapper and contents: $55.00
    (iv) If provided to a foreign intellectual property office pursuant 
to a priority document exchange agreement (see Sec.  1.14 (h)(1)): 
$0.00
    (2) Copy of patent-related file wrapper contents that were 
submitted and are stored on compact disc or other electronic form 
(e.g., compact discs stored in an Artifact Folder), other than as 
available in paragraph (b)(1) of this section:
    (i) If provided on compact disc or other physical electronic medium 
in a single order:
    (A) First physical electronic medium in a single order: $55.00
    (B) Additional fee for each continuing physical electronic medium 
in the single order of paragraph (b)(2)(i) of this section: $15.00
    (ii) If provided electronically other than on a physical electronic 
medium per order: $55.00
    (3) Copy of Office records, except copies available under paragraph 
(b)(1) or (2) of this section: $25.00
    (4) For assignment records, abstract of title and certification, 
per patent: $25.00
    (c) Library service (35 U.S.C. 13): For providing to libraries 
copies of all patents issued annually, per annum: $50.00
    (d) For list of all United States patents and statutory invention 
registrations in a subclass: $3.00
    (e) Uncertified statement as to status of the payment of 
maintenance fees due on a patent or expiration of a patent: $10.00
    (f) Uncertified copy of a non-United States patent document, per 
document: $25.00
    (g) Petitions for documents in a form other than that provided by 
this part, or in a form other than that generally provided by the 
Director, will be decided in accordance with the merits of each 
situation. Any petition seeking a decision under this section must be 
accompanied by the petition fee set forth in Sec.  1.17 (h) and, if the 
petition is granted, the documents will be provided at cost.
    6. Section 1.20 is revised to read as follows:


Sec.  1.20  Post issuance fees.

    (a) For providing a certificate of correction for applicant's 
mistake (Sec.  1.323): $100.00.
    (b) Processing fee for correcting inventorship in a patent (Sec.  
1.324): $130.00.
    (c) In reexamination proceedings:
    (1) For filing a request for ex parte reexamination (Sec.  
1.510(a)):

By a micro entity (Sec.   1.29(a)).........................    $3,750.00
By a small entity (Sec.   1.27(a)).........................    $7,500.00
By other than a small or micro entity......................   $15,000.00
 

    (2) [Reserved]
    (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 micro entity (Sec.   1.29(a)).........................      $105.00
By a small entity (Sec.   1.27(a)).........................      $210.00
By other than a small or micro entity......................      $420.00
 

    (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 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):

[[Page 55082]]



By a micro entity (Sec.   1.29(a)).........................       $20.00
By a small entity (Sec.   1.27(a)).........................       $40.00
By other than a small or micro entity......................       $80.00
 

    (5) If the excess claims fees required by paragraphs (c)(3) and (4) 
of this section 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 (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.
    (6) For filing a petition in a reexamination proceeding, except for 
those specifically enumerated in Sec. Sec.  1.550(i) and 1.937(d):

By a micro entity (Sec.   1.29(a)).........................      $485.00
By a small entity (Sec.   1.27(a)).........................      $970.00
By other than a small or micro entity......................    $1,940.00
 

    (7) For a refused request for ex parte reexamination under Sec.  
1.510 (included in the request for ex parte reexamination fee):

By a micro entity (Sec.   1.29(a)).........................      $900.00
By a small entity (Sec.   1.27(a)).........................    $1,800.00
By other than a small or micro entity......................    $3,600.00
 

    (d) For filing each statutory disclaimer (Sec.  1.321):

By other than a small or micro entity......................      $160.00
 

    (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 micro entity (Sec.   1.29(a)).........................      $400.00
By a small entity (Sec.   1.27(a)).........................      $800.00
By other than a small or micro entity......................    $1,600.00
 

    (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 micro entity (Sec.   1.29(a)).........................      $900.00
By a small entity (Sec.   1.27(a)).........................    $1,800.00
By other than a small or micro entity......................    $3,600.00
 

    (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 micro entity (Sec.   1.29(a)).........................    $1,850.00
By a small entity (Sec.   1.27(a)).........................    $3,700.00
By other than a small or micro entity......................    $7,400.00
 

    (h) Surcharge for paying a maintenance fee during the six-month 
grace period following the expiration of three years and six months, 
seven years and six months, and eleven years and six months after the 
date of the original grant of a patent based on an application filed on 
or after December 12, 1980:

By a micro entity (Sec.   1.29(a)).........................       $40.00
By a small entity (Sec.   1.27(a)).........................       $80.00
By other than a small or micro entity......................      $160.00
 

    (i) Surcharge for accepting a maintenance fee after expiration of a 
patent for non-timely payment of a maintenance fee where the delay in 
payment is shown to the satisfaction of the Director to have been--
    (1) Unavoidable:

By a micro entity (Sec.   1.29(a)).........................      $175.00
By a small entity (Sec.   1.27(a)).........................      $350.00
By other than a small or micro entity......................      $700.00
 

    (2) Unintentional:

By a micro entity (Sec.   1.29(a)).........................      $410.00
By a small entity (Sec.   1.27(a)).........................      $820.00
By other than a small or micro entity......................    $1,640.00
 

    (j) For filing an application for extension of the term of a patent
    (1) Application for extension under Sec.  1.740: $1,120.00
    (2) Initial application for interim extension under Sec.  1.790: 
$420.00
    (3) Subsequent application for interim extension under Sec.  1.790: 
$220.00
    (k) In supplemental examination proceedings:
    (1) For processing and treating a request for supplemental 
examination:

By a micro entity (Sec.   1.29(a)).........................    $1,100.00
By a small entity (Sec.   1.27(a)).........................    $2,200.00
By other than a small or micro entity......................    $4,400.00
 

    (2) For ex parte reexamination ordered as a result of a 
supplemental examination proceeding:

By a micro entity (Sec.   1.29(a)).........................    $3,400.00
By a small entity (Sec.   1.27(a)).........................    $6,800.00
By other than a small or micro entity......................   $13,600.00
 

    (3) For processing and treating, in a supplemental examination 
proceeding, a non-patent document over 20 sheets in length, per 
document:
    (i) Between 21 and 50 sheets:

By a micro entity (Sec.   1.29(a)).........................       $45.00
By a small entity (Sec.   1.27(a)).........................       $90.00
By other than a small or micro entity......................      $180.00
 

    (ii) For each additional 50 sheets or a fraction thereof:

By a micro entity (Sec.   1.29(a)).........................       $70.00
By a small entity (Sec.   1.27(a)).........................      $140.00
By other than a small or micro entity......................      $280.00
 

    7. Section 1.21 is amended by:
    a. Revising paragraph (a);
    b. Removing and reserving paragraph (d);
    c. Revising paragraph (e);
    d. Revising paragraphs (g) through (k);
    e. Revising paragraph (n); and
    f. Removing paragraph (o).
    The revisions read as follows:


Sec.  1.21  Miscellaneous fees and charges.

* * * * *
    (a) Registration of attorneys and agents:
    (l) For admission to examination for registration to practice:
    (i) Application Fee (non-refundable): $40.00
    (ii) Registration examination fee.
    (A) For test administration by commercial entity: $200.00
    (B) For test administration by the USPTO: $450.00
    (2) On registration to practice or grant of limited recognition 
under Sec.  11.9(b) or (c): $100.00
    (3) [Reserved]
    (4) For certificate of good standing as an attorney or agent: 
$10.00
    (i) Suitable for framing: $20.00
    (ii) [Reserved]
    (5) For review of decision:
    (i) By the Director of Enrollment and Discipline under Sec.  
11.2(c): $130.00
    (ii) Of the Director of Enrollment and Discipline under Sec.  
11.2(d): $130.00
    (6) [Reserved]
    (7) Annual practitioner maintenance fee for registered attorney or 
agent.
    (i) Active Status: $120.00
    (ii) Voluntary Inactive Status: $25.00
    (iii) Fee for requesting restoration to active status from 
voluntary inactive status: $50.00
    (iv) Balance due upon restoration to active status from voluntary 
inactive status: $100.00
    (8) Annual practitioner maintenance fee for individual granted 
limited recognition: $120.00
    (9)(i) Delinquency fee: $50.00
    (ii) Administrative reinstatement fee: $100.00
    (10) On application by a person for recognition or registration 
after disbarment or suspension on ethical grounds, or resignation 
pending disciplinary proceedings in any other jurisdiction; on 
application by a person for recognition or registration who is 
asserting rehabilitation from prior conduct that resulted in an adverse 
decision in the Office regarding the person's moral character; and on 
application by a person for recognition or registration after being 
convicted of a felony or crime involving moral turpitude or breach of 
fiduciary duty; on petition for reinstatement by a person

[[Page 55083]]

excluded or suspended on ethical grounds, or excluded on consent from 
practice before the Office: $1,600.00
* * * * *
    (e) International type search reports: For preparing an 
international type search report of an international type search made 
at the time of the first action on the merits in a national patent 
application: $40.00
    (g) Self-service copy charge, per page: $0.25
    (h) For recording each assignment, agreement, or other paper 
relating to the property in a patent or application, per property:
    (1) If submitted electronically: $0.00
    (2) If not submitted electronically: $40.00
    (i) Publication in Official Gazette: For publication in the 
Official Gazette of a notice of the availability of an application or a 
patent for licensing or sale: Each application or patent: $25.00
    (j) Labor charges for services, per hour or fraction thereof: 
$40.00
    (k) For items and services that the Director finds may be supplied, 
for which fees are not specified by statute or by this part, such 
charges as may be determined by the Director with respect to each such 
item or service: Actual cost
* * * * *
    (n) For handling an application in which proceedings are terminated 
pursuant to Sec.  1.53(e); $130.00
    8. Section 1.445 is amended by revising paragraph (a) introductory 
text and paragraphs (a)(1)(i), (a)(2) through (4), and (b) to read as 
follows:


Sec.  1.445  International application filing, processing and search 
fees.

    (a) The following fees and charges for international applications 
are established by law or by the Director under the authority of 35 
U.S.C. 376:
    (1) A transmittal fee (see 35 U.S.C. 361(d) and PCT Rule 14) 
consisting of:
    (i) A basic portion:

By a micro entity (Sec.   1.29(a)).........................       $60.00
By a small entity (Sec.   1.27(a)).........................      $120.00
By other than a small or micro entity......................      $240.00
 

* * * * *
    (2) A search fee (see 35 U.S.C. 361(d) and PCT Rule 16):

By a micro entity (Sec.   1.29(a)).........................      $520.00
By a small entity (Sec.   1.27(a)).........................    $1,040.00
By other than a small or micro entity......................    $2,080.00
 

    (3) A supplemental search fee when required, per additional 
invention:

By a micro entity (Sec.   1.29(a)).........................      $520.00
By a small entity (Sec.   1.27(a)).........................    $1,040.00
By other than a small or micro entity......................    $2,080.00
 

    (4) A fee equivalent to the transmittal fee in paragraph (a)(1) of 
this section for transmittal of an international application to the 
International Bureau for processing in its capacity as a Receiving 
Office (PCT Rule 19.4):

By a micro entity (Sec.   1.29(a)).........................       $60.00
By a small entity (Sec.   1.27(a)).........................      $120.00
By other than a small or micro entity......................      $240.00
 

    (b) The international filing fee shall be as prescribed in PCT Rule 
15.
    9. Section 1.482 is revised to read as follows:


Sec.  1.482  International preliminary examination fees.

    (a) The following fees and charges for international preliminary 
examination are established by the Director under the authority of 35 
U.S.C. 376:
    (1) The following preliminary examination fee is due on filing the 
Demand:
    (i) If an international search fee as set forth in Sec.  
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 micro entity (Sec.   1.29(a)).........................      $150.00
By a small entity (Sec.   1.27(a)).........................      $300.00
By other than a small or micro entity......................      $600.00
 

    (ii) If the International Searching Authority for the international 
application was an authority other than the United States Patent and 
Trademark:

By a micro entity (Sec.   1.29(a)).........................      $190.00
By a small entity (Sec.   1.27(a)).........................      $380.00
By other than a small or micro entity......................      $760.00
 

    (2) An additional preliminary examination fee when required, per 
additional invention:

By a micro entity (Sec.   1.29(a)).........................      $150.00
By a small entity (Sec.   1.27(a)).........................      $300.00
By other than a small or micro entity......................      $600.00
 

    (b) The handling fee is due on filing the Demand and shall be 
prescribed in PCT Rule 57.
    10. Section 1.492 is revised to read as follows:


Sec.  1.492  National stage fees.

    The following fees and charges are established for international 
applications entering the national stage under 35 U.S.C. 371:
    (a) The basic national fee for an international application 
entering the national stage under 35 U.S.C. 371:

By a micro entity (Sec.   1.29(a)).........................       $70.00
By a small entity (Sec.   1.27(a)).........................      $140.00
By other than a small or micro entity......................      $280.00
 

    (b) Search fee for an international application entering the 
national stage under 35 U.S.C. 371:
    (1) If an international preliminary examination report on the 
international application prepared by the United States International 
Preliminary Examining Authority or a written opinion on the 
international application prepared by the United States International 
Searching 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 micro entity (Sec.   1.29(a)).........................        $0.00
By a small entity (Sec.   1.27(a)).........................        $0.00
By other than a small or micro entity......................        $0.00
 

    (2) If the search fee as set forth in Sec.  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 micro entity (Sec.   1.29(a)).........................       $30.00
By a small entity (Sec.   1.27(a)).........................       $60.00
By other than a small or micro entity......................      $120.00
 

    (3) If an international search report on the international 
application has been prepared by an International Searching Authority 
other than the United States International Searching Authority and is 
provided, or has been previously communicated by the International 
Bureau, to the Office:

By a micro entity (Sec.   1.29(a)).........................      $120.00
By a small entity (Sec.   1.27(a)).........................      $240.00
By other than a small or micro entity......................      $480.00
 

    (4) In all situations not provided for in paragraphs (b)(1), (2), 
or (3) of this section:

By a micro entity (Sec.   1.29(a)).........................      $150.00
By a small entity (Sec.   1.27(a)).........................      $300.00
By other than a small or micro entity......................      $600.00
 

    (c) The examination fee for an international application entering 
the national stage under 35 U.S.C. 371:
    (1) If an international preliminary examination report on the 
international application prepared by the United States International 
Preliminary Examining Authority or a written opinion on the 
international application prepared by the United States International 
Searching 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 micro entity (Sec.   1.29(a)).........................        $0.00
By a small entity (Sec.   1.27(a)).........................        $0.00
By other than a small or micro entity......................        $0.00
 


[[Page 55084]]

    (2) In all situations not provided for in paragraph (c)(1) of this 
section:

By a micro entity (Sec.   1.29(a)).........................      $180.00
By a small entity (Sec.   1.27(a)).........................      $360.00
By other than a small or micro entity......................      $720.00
 

    (d) In addition to the basic national fee, for filing or on later 
presentation at any other time of each claim in independent form in 
excess of 3:

By a micro entity (Sec.   1.29(a)).........................      $105.00
By a small entity (Sec.   1.27(a)).........................      $210.00
By other than a small or micro entity......................      $420.00
 

    (e) In addition to the basic national fee, for filing or on later 
presentation at any other time of each claim (whether dependent or 
independent) in excess of 20 (note that Sec.  1.75(c) indicates how 
multiple dependent claims are considered for fee calculation purposes):

By a micro entity (Sec.   1.29(a)).........................       $20.00
By a small entity (Sec.   1.27(a)).........................       $40.00
By other than a small or micro entity......................       $80.00
 

    (f) In addition to the basic national fee, if the application 
contains, or is amended to contain, a multiple dependent claim, per 
application:

By a micro entity (Sec.   1.29(a)).........................      $195.00
By a small entity (Sec.   1.27(a)).........................      $390.00
By other than a small or micro entity......................      $780.00
 

    (g) If the excess claims fees required by paragraphs (d) and (e) of 
this section and multiple dependent claim fee required by paragraph (f) 
of this section are not paid with the basic national fee or on later 
presentation of the claims for which excess claims or multiple 
dependent claim fees are due, the fees required by paragraphs (d), (e), 
and (f) of this section must be paid or the claims canceled by 
amendment prior to the expiration of the time period set for reply by 
the Office in any notice of fee deficiency in order to avoid 
abandonment.
    (h) Surcharge for filing 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 micro entity (Sec.   1.29(a)).........................       $35.00
By a small entity (Sec.   1.27(a)).........................       $70.00
By other than a small or micro entity......................      $140.00
 

    (i) For filing an English translation of an international 
application or any annexes to an international preliminary examination 
report later than thirty months after the priority date (Sec.  1.495(c) 
and (e)):

By a micro entity (Sec.   1.29(a)).........................       $35.00
By a small entity (Sec.   1.27(a)).........................       $70.00
By other than a small or micro entity......................      $140.00
 

    (j) Application size fee for any international application, the 
specification and drawings of which exceed 100 sheets of paper, for 
each additional 50 sheets or fraction thereof:

By a micro entity (Sec.   1.29(a)).........................      $100.00
By a small entity (Sec.   1.27(a)).........................      $200.00
By other than a small or micro entity......................      $400.00
 

PART 41--PRACTICE BEFORE THE BOARD OF PATENT APPEALS AND 
INTERFERENCES

    11. The authority citation for part 41 continues to read as 
follows:

    Authority: 35 U.S.C. 2(b)(2), 3(a)(2)(A), 21, 23, 32, 41, 134, 
135.

    12. Section 41.20 is revised to read as follows:


Sec.  41.20  Fees.

    (a) Petition fee. The fee for filing a petition under this part is: 
$400.00
    (b) Appeal fees. (1) For filing a notice of appeal from the 
examiner to the Patent Trial and Appeal Board:

By a micro entity (Sec.   1.29(a)).........................      $250.00
By a small entity (Sec.   1.27(a)).........................      $500.00
By other than a small or micro entity......................    $1,000.00
 

    (2)(i) For filing a brief in support of an appeal in an application 
or ex parte reexamination proceeding: $0.00
    (ii) In addition to the fee for filing a notice of appeal, for 
filing a brief in support of an appeal in an inter partes reexamination 
proceeding:

By a micro entity (Sec.   1.29(a)).........................      $500.00
By a small entity (Sec.   1.27(a)).........................    $1,000.00
By other than a small or micro entity......................    $2,000.00
 

    (3) For filing a request for an oral hearing before the Board in an 
appeal under 35 U.S.C. 134:

By a micro entity (Sec.   1.29(a)).........................      $325.00
By a small entity (Sec.   1.27(a)).........................      $650.00
By other than a small or micro entity......................    $1,300.00
 

    (4) In addition to the fee for filing a notice of appeal, for 
forwarding an appeal in an application or ex parte reexamination 
proceeding to the Board:

By a micro entity (Sec.   1.29(a)).........................      $500.00
By a small entity (Sec.   1.27(a)).........................    $1,000.00
By other than a small or micro entity......................    $2,000.00
 

    13. Section 41.37 is amended by revising paragraphs (a) and (b) to 
read as follows:


Sec.  41.37  Appeal brief.

    (a) Timing. Appellant must file a brief under this section within 
two months from the date of filing the notice of appeal under Sec.  
41.31. The appeal brief fee in an application or ex parte reexamination 
proceeding is $0.00, but if the appeal results in an examiner's answer, 
the appeal forwarding fee set forth in Sec.  41.20(b)(4) must be paid 
within the time period specified in Sec.  41.48 to avoid dismissal of 
an appeal.
    (b) Failure to file a brief. On failure to file the brief within 
the period specified in paragraph (a) of this section, the appeal will 
stand dismissed.
* * * * *
    14. Section 41.45 is added to read as follows:


Sec.  41.45  Appeal forwarding fee.

    (a) Timing. Appellant in an application or ex parte reexamination 
proceeding must pay the fee set forth in Sec.  41.20(b)(4) within the 
later of two months from the date of either the examiner's answer, or a 
decision refusing to grant a petition under Sec.  1.181 of this chapter 
to designate a new ground of rejection in an examiner's answer.
    (b) Failure to pay appeal forwarding fee. On failure to fee set 
forth in Sec.  41.20(b)(4) within the period specified in paragraph (a) 
of this section, the appeal will stand dismissed.
    (c) Extensions of time. Extensions of time under Sec.  1.136(a) of 
this title for patent applications are not applicable to the time 
period set forth in this section. See Sec.  1.136(b) of this title for 
extensions of time to reply for patent applications and Sec.  1.550(c) 
of this title for extensions of time to reply for ex parte 
reexamination proceedings.

PART 42--TRIAL PRACTICE BEFORE THE PATENT TRIAL AND APPEAL BOARD

    15. The authority citation for part 42 continues to read as 
follows:

    Authority: 35 U.S.C. 2(b)(2), 6, 21, 23, 41,135, 311, 312, 316, 
321-326 and Leahy-Smith America Invents Act, Pub. L. 112-29, 
sections 6(c), 6(f) and 18, 125 Stat. 284, 304, 311, and 329 (2011).

    16. Section 42.15, as added at August 14, 2012, at 77 FR 48669, 
effective September 16, 2012, is revised to read as follows:


Sec.  42.15  Fees

    (a) On filing a petition for inter partes review of a patent, 
payment of the following fees are due:
    (1) Inter Partes Review request fee: $9,000.00
    (2) Inter Partes Review Post-Institution fee: $14,000.00
    (3) In addition to the Inter Partes Review request fee, for 
requesting review of each claim in excess of 20: $200.00
    (4) In addition to the Inter Partes Post-Institution request fee, 
for requesting

[[Page 55085]]

review of each claim in excess of 15: $400.00
    (b) On filing a petition for post-grant review or covered business 
method patent review of a patent, payment of the following fees are 
due:
    (1) Post Grant or Covered Business Method Patent Review request 
fee: $12,000.00
    (2) Post Grant or Covered Business Method Patent Review Post-
Institution fee: $18,000.00
    (3) In addition to the Post Grant or Covered Business Method Patent 
Review request fee, for requesting review of each claim in excess of 
20: $250.00
    (4) In addition to the Post Grant or Covered Business Method Patent 
Review request fee Post-Institution request fee, for requesting review 
of each claim in excess of 15: $550.00
    (c) On the filing of a petition for a derivation proceeding, 
payment of the following fees is due:
    (1) Derivation petition fee: $400.00
    (2) Derivation institution and trial fee: $0.00
    (d) Any request requiring payment of a fee under this part, 
including a written request to make a settlement agreement available: 
$400.00

    Dated: August 29, 2012.
Deborah S. Cohn,
Commissioner for Trademarks, United States Patent and Trademark Office.
[FR Doc. 2012-21698 Filed 9-4-12; 8:45 am]
BILLING CODE 3510-16-P