[Federal Register Volume 78, Number 13 (Friday, January 18, 2013)]
[Rules and Regulations]
[Pages 4211-4291]
From the Federal Register Online via the Government Printing Office [www.gpo.gov]
[FR Doc No: 2013-00819]
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Vol. 78
Friday,
No. 13
January 18, 2013
Part II
Department of Commerce
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Patent and Trademark Office
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37 CFR Parts 1, 41, and 42
Setting and Adjusting Patent Fees; Final Rule
Federal Register / Vol. 78 , No. 13 / Friday, January 18, 2013 /
Rules and Regulations
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DEPARTMENT OF COMMERCE
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: Final rule.
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SUMMARY: The United States Patent and Trademark Office (Office or
USPTO) sets or adjusts patent fees in this rulemaking as authorized by
the Leahy-Smith America Invents Act (Act or AIA). The 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 application pendency, improve patent quality,
and upgrade the Office's patent business information technology (IT)
capability and infrastructure. The fees also will further key policy
considerations. The Office also reduces fees for micro entities under
section 10(b) of the Act by 75 percent in this rulemaking and extends
the existing fee discount of 50 percent for small entities to
additional fees in this rulemaking.
DATES: This rule is effective on March 19, 2013, except for amendments
to Sec. 1.18(a)(1), (b)(1), (c)(1), and (d)(1) (patent issue and
publication fees); Sec. 1.21(h)(1) (fee for recording a patent
assignment electronically); Sec. 1.482(a)(1)(i)(A), (a)(1)(ii)(A), and
(a)(2)(i) (international application filing, processing and search
fees); and Sec. 1.445(a)(1)(i)(A), (a)(2)(i), (a)(3)(i), and (a)(4)(i)
(international application transmittal and search fees), which will be
effective on January 1, 2014.
FOR FURTHER INFORMATION CONTACT: Michelle Picard, Office of the Chief
Financial Officer, by telephone at (571) 272-6354 or by email at
michelle.picard@uspto.gov; or Dianne Buie, Office of Planning and
Budget, by telephone at (571) 272-6301 or by email at
dianne.buie@uspto.gov.
SUPPLEMENTARY INFORMATION: This rule was proposed in a notice of
proposed rulemaking published at 77 FR 55028 (Sept. 6, 2012)
(hereinafter NPRM).
Table of Contents
I. Executive Summary
II. Legal Framework
III. Rulemaking Goals and Strategies
IV. Fee Setting Methodology
V. Individual Fee Rationale
VI. Discussion of Comments
VII. Discussion of Specific Rules
VIII. Rulemaking Considerations
I. Executive Summary
A. Purpose of This Action
Section 10 of the Leahy-Smith America Invents Act 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. See Section 10 of the
Act, Public Law 112-29, 125 Stat. at 316-17. 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 in this final rule 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 application
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. To reduce the backlog and decrease patent application pendency,
the USPTO must examine significantly more patent applications than it
receives each year for the next several years. Bringing the number of
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, requires the Office to collect more aggregate revenue
than it estimates that it will collect at existing fee rates. The
Office estimates that the additional aggregate revenue derived from
this fee schedule will enable a decrease in total patent application
pendency by 11.3 months during the five-year planning horizon (fiscal
year (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 this fee schedule also will recover the cost to
begin building a three-month patent operating reserve. The Office
estimates that the patent operating reserve will accumulate almost two
months of patent operating expenses by the end of the five-year
planning horizon (FY 2013-FY 2017) and will reach the three-month
target in FY 2018, thereby continuing to build a sustainable funding
model that will aid the Office in maintaining shorter pendency and an
optimal patent application inventory.
Additionally, the fee schedule in this final rule will advance key
policy considerations while taking into account the cost of individual
services. For example, the rule includes multipart and staged fees for
requests for continued examination (RCEs), appeals, and contested
cases, all of which aim to increase patent prosecution options for
applicants. Also, this rule includes a new 75 percent fee reduction for
micro entities and expands 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.
B. Summary of Provisions Impacted by This Action
This final rule sets or adjusts 351 patent fees--93 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 93 large
entity fees, 71 are adjusted, 18 are set at existing fee amounts, and 4
were first proposed in the preceding NPRM. Of the 94 small entity fees,
85 are adjusted, 5 are set at existing fee amounts, and 4 were first
proposed in the NPRM. There are 93 new micro entity fees first proposed
in the NPRM that are set at a reduction of 75 percent from the large
entity fee amounts. Of the 71 fees that are not entity-specific, 9 are
adjusted in this rule, and 62 are set at existing fee amounts.
In all, once effective, the routine fees to obtain a patent (i.e.,
filing, search, examination, publication, and issue fees) will decrease
by at least 23 percent under this final rule 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 87 percent of the
fees eligible for a discount under section 10(b). Additional
information describing
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the adjustments is included in Part V. Individual Fee Rationale section
of Supplementary Information for this final rulemaking.
C. Summary of Costs and Benefits of This Action
The Office prepared a Regulatory Impact Analysis (RIA) to consider
the costs and benefits of this final rule over a five-year period (FY
2013-FY 2017). In the RIA developed for the NPRM, the Office offered a
discussion of monetized and qualitative costs that could be derived
from the proposed patent fee schedule. The Office made several
inferences using internal data and relevant academic literature. Upon
further review of the proposed rulemaking and source materials, and
consistent with OMB Circular A-4, Regulatory Analysis, as discussed
further in the RIA, the USPTO no longer monetizes costs and benefits in
the final rule or the RIA. Rather, this final rule for the purposes of
regulatory review is considered to be a transfer payment from one group
to another, and discussion of all costs and benefits is qualitative in
nature. Thus, the RIA for this final rule outlines the transfer and
assesses the qualitative benefits and costs that accrue to patent
applicants, patent holders, and other patent stakeholders in the United
States. The RIA includes a qualitative comparison of the final fee
schedule to the current fee schedule (Baseline) and to three other
alternatives considered. The RIA assesses the change in qualitative
costs or benefits related to the changes in the final fee schedule
using certain key indicators when comparing the Baseline. The RIA
concludes that the patent fee schedule set forth in this final rule has
the most significant net benefit among the alternatives considered. See
Table 1. The complete RIA is available for review at http://www.uspto.gov/aia_implementation/fees.jsp#heading-1.
Table 1--Final Patent Fee Schedule Costs and Benefits, Cumulative FY
2013--FY 2017
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Transfers
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Transfers................................. $13,993 million
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Qualitative Costs and Benefits
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Costs:
Cost of patent operations............. Minimal
Lost patent value from a decrease in Minimal
patent applications.
Benefit:
Increase in private patent value from Significant
a decrease in pendency.
Fee Schedule Design Benefits.......... Moderate
(Significant, Moderate, Not
Significant).
Decreased Uncertainty Effect.......... Significant
(Significant, Moderate, Not
Significant).
Net Benefit........................... Significant
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To assess the qualitative benefits of the final fee schedule, the
Office considered how the value of a patent would increase under the
final fee schedule, as well as benefits from improving the fee schedule
design and benefits from decreased uncertainty. When patent application
pendency decreases, a patentee holds the exclusive right to the
invention sooner, which increases the private value of that patent.
Because the outcomes of this final rule will decrease patent
application pendency, the Office expects that the private patent value
will increase considerably, relative to the Baseline. Likewise, the
design of the final fee schedule offers benefits relating to the three
policy factors considered for setting individual fees as described in
Part III of this final rule, namely, fostering innovation, facilitating
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
final fee schedule continues to foster innovation and ease access to
the patent system. The final fee schedule also continues to offer
incentives and disincentives to engage in certain activities that
facilitate 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, extension of time fees,
and excess claims fees remain in place to facilitate the prompt
conclusion of prosecution of an application. The final fee schedule
likewise includes multipart and staged fees for RCEs, appeals, and
contested cases, all of which aim to increase patent prosecution
options for applicants. The qualitative benefits of the fee schedule
design include new options for applicants to reduce their front-end
costs for some services (e.g., appeals) until they have more
information to determine the best prosecution option for their
innovation. Lastly, shortening pendency reduces uncertainty regarding
the claimed invention and scope of patent rights for patentees,
competitors, and new entrants. Reducing uncertainty has a significant
benefit in terms of clarity of patent rights, freedom to innovate, and
the efficient operation of markets for technology.
To assess the qualitative costs of the final fee schedule, the
Office assessed the costs of its patent operations. The Office's cost
of patent operations varies depending on the number of incoming patent
applications and the amount of resources available. As discussed in
Part IV. Fee Setting Methodology (see Step 1), the cost of operations
included in this final rule also reduced slightly from that estimated
in the NPRM. See Table 1.
For FY 2013--FY 2015, the Office continues to project an annual
increase in the number of serialized patent application filings, though
the increases to some fees in the new fee structure may result in a
slightly slower growth rate than that estimated under the Baseline.
Nevertheless, the Office estimated that new patent application filings
would return to the same annual growth rate anticipated in the absence
of fee increases beginning in FY 2016. Overall, the demand for patent
application services is generally inelastic (see USPTO Section 10 Fee
Setting--Description of Elasticity Estimates,'' at http://www.uspto.gov/aia_implementation/fees.jsp#heading-1), and even with
these slight decreases, the total number of patent applications filed
is projected to grow year-after-year. The Office considered the cost
associated with this slight reduction in patent applications filed as a
reduction to the benefit of the increased patent value when assessing
the overall net benefit of the final fee schedule. See Table 1.
Additional details describing the benefits and costs of the final
fee schedule are available in the RIA at http://www.uspto.gov/aia_implementation/fees.jsp#heading-1.
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
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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. The Office's current fee structure includes statutory fees (set
by Congress) that provide lower, below cost fees on the front end of
the patent process (e.g., filing, searching, and examination fees),
which are in turn balanced out by higher, above cost fees on the back
end (i.e., issue and maintenance fees). This balance enables the Office
to provide lower costs to enter the patent system, making it easier for
inventors to pursue patents for their innovations, and these lower
front-end fees are off-set by higher back-end fees. Congress set this
balance when it established the existing statutory fee structure, and
the Office continues to follow this model with the fee structure in
this final rule, because a key policy consideration is to foster
innovation by facilitating access to the patent system. 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 prospectively 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. Section 10(b) of the Act
requires the Office to reduce by 75 percent the fees for micro entities
that are set or adjusted under Section 10(a) for filing, searching,
examining, issuing, appealing, and maintaining patent applications and
patents. In a separate rulemaking, pursuant to 35 U.S.C. 123, the
Office implemented the micro entity provisions of the AIA. See 77 FR
75019 (Dec. 19, 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 patent 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 to 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 submitted a written report on September 24, 2012, setting
forth in detail the comments, advice, and recommendations of the
committee regarding the proposed fees. The report is available for
review at http://www.uspto.gov/aia_implementation/fees.jsp#heading-1.
The Office considered and analyzed the comments, advice, and
recommendations received from the PPAC before publishing this final
rule. The Office's response to the PPAC's report is available in the
Discussion of Comments at Part VI of this rulemaking.
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 that 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 for 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 FY 2013 President's 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 mission 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, decreasing patent
application pendency, improving patent quality, and upgrading the
Office's patent IT business capability and infrastructure.
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 and in decreasing patent application
pendency--both of which stall the delivery of innovative
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goods and services to market and impede economic growth and the
creation of high-paying jobs. This rule positions the USPTO to reduce
the patent application backlog and decrease patent application
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 aggregate revenue to recover the aggregate cost to
maintain USPTO operations and accomplish USPTO strategic goals. Two
overriding principles motivate the Office in this regard: (1) Operating
with 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 decreasing patent application
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 Consumer Price Index (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 authorized 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 Budgets (see FY 2013 and FY 2014 President's Budget Requests at
http://www.uspto.gov/about/stratplan/budget/index.jsp) delineate the
annual plans and prospective aggregate costs to execute the initiatives
in the Strategic Plan. One of these costs is the growth 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 fee schedule
in this final rule 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. By implementing
this fee schedule, the USPTO anticipates that the three-month patent
operating reserve will be achieved in FY 2018.
The fees in this final rule 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 $2.479 billion after accounting for an offset to spending
from other income of $23 million and a withdrawal from the operating
reserve of $28 million. The final fee schedule should generate $2.479
billion in aggregate revenue to offset these costs. Once the Office
transitions to the fee levels set forth in this final rule, it
estimates an additional $11.5 billion in aggregate revenue will be
generated from FY 2014 through FY 2017 to recover the total aggregate
cost over the same time period--$11.1 billion in operating costs and
$0.4 billion in a three-month operating reserve. (See Table 3 in Part
IV, Step 2 of this rule.)
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 that 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.
In past 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 and long
patent application pendency. Decreasing pendency increases the private
value of a patent because the faster a patent is granted, the more
quickly the patent owner 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
patentee's claims.
To reduce the backlog and decrease patent application 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, requires the Office to 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 final rule will result in an average first
action patent application pendency of 10 months in FY 2016, an average
total pendency of 20 months in FY 2017, and a reduced patent
application backlog and inventory of approximately 335,000 patent
applications by FY 2016. This would be a significant improvement over
the 21.9 months and 32.4 months for average first action patent
application pendency and average total pendency, respectively, at the
end of FY 2012. Under this final rule, the patent application backlog
is also expected to decrease significantly from the 608,300
applications in inventory as of the end of FY 2012.
In addition to timeliness of patent protection, the quality of
application review is critical to ensure that the value of an issued
patent is high. 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. Through this final rule,
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
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applications, improved hiring processes, and guidelines for examiners
to address clarity issues in patent applications. The Office also will
continue to encourage interviews between applicants and examiners to
help clarify allowable subject matter early in the examination process
and to encourage interviews later in prosecution to resolve outstanding
issues. Lastly, the Office will 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.
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 this fee
structure will 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 final 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. This fee schedule recovers the
aggregate cost to the Office of operations, while also considering the
individual cost of each service provided. This includes consideration
that some applicants may use particular services in a more costly
manner than other applicants (e.g., patent applications cost more to
process when more claims are filed). The final 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 focused 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 a decrease 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 sets 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
provides 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 sets 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. After a patent is granted, a patent owner is better positioned,
as opposed to at the time of filing a patent application, to more
closely assess the expected value of an invention, which is a
consideration in determining whether to pay maintenance fees to keep
the patent protecting the invention 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 fee structure in this final rule 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
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 than other
applicants.
3. Offering Patent Prosecution Options to Applicants
The final fee schedule provides applicants with flexible and cost-
effective options for seeking patent protection. For example, the
Office is setting multipart and staged fees for RCEs, appeals, and
contested cases. The Office breaks the RCE fee into two parts. The fee
for a first RCE is set more than 30 percent below cost to facilitate
access to the service and in recognition that most applicants using
RCEs only require one per application. The fee for a second and
subsequent RCE is set only slightly below cost 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 under appeal
is either allowed or reopened rather than being forwarded to the Patent
Trial and Appeal Board (PTAB). Finally, the establishment of multipart
and staged fees for contested cases improves access to these
proceedings while removing low quality patents from the patent system.
Summary of Rationale and Purpose of the Final Rule
The final patent fee schedule 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 final rule provides 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 application pendency, improving patent
quality, and upgrading the patent business IT capability and
infrastructure. Additionally, in this final rule, the Office considered
individual fees by evaluating its historical cost (where available) and
considering the policy factors of fostering innovation, facilitating
effective administration of
[[Page 4217]]
the patent system, and offering patent prosecution options to
applicants.
IV. Fee Setting Methodology
As explained in the NPRM, there are three iterative and
interrelated steps involved in developing the fees:
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.
A description of how the USPTO carries out these three steps is set
forth in turn. Where key projections or inputs have changed since the
NPRM, the Office explains the reasons underlying the revised estimates.
Step 1: Determine Prospective Aggregate Costs
Calculating aggregate costs is accomplished primarily through the
routine USPTO budget planning and formulation process. The Budget is a
five-year plan (that the Office prepares and updates 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
approximately 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 in the section of the annual budget entitled, ``USPTO
Fee Collection Estimates/Ranges.'' See annual budget available at
http://www.uspto.gov/about/stratplan/budget/index.jsp. 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
application pendency model that estimates patent production output
based on actual historical data and input assumptions, such as incoming
patent applications, examiner attrition rates, and overtime hours. An
overview of the model and a simulation tool is available at http://www.uspto.gov/patents/stats/patent_pend_model.jsp. Further
information, including a more detailed description of inputs, outputs,
and key data relationships, is available from the Office upon request.
The second activity is to calculate the aggregate costs to execute
the requirements. In developing its annual budgets, the Office first
looks at the cost of status quo operations (the base requirements). The
base requirements (e.g., salaries for employees on-board) are adjusted
for anticipated pay raises and inflationary increases for the periods
FY 2013-FY 2017 (examples of the detailed calculations and assumptions
for this adjustment to base are available in the annual Budgets). 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 FY 2013 President's Budget). Finally, the Office estimates its
three-month target operating reserve level based on this aggregate cost
calculation for the year to determine if operating reserve adjustments
are necessary.
The estimate for the FY 2013 aggregate costs contained in this
final rule ($2.479 billion) is $125 million less than the estimate
contained in the NPRM ($2.604 billion). The Office lowered its
aggregate cost estimate in response to public comments expressing a
desire for the Office to achieve its goals over a longer timeframe and
to incorporate additional efficiencies into operations. In some
instances, the Office was also able to use more recent data. The most
significant factors affecting the reduction in aggregate costs include:
(1) Decreasing the amount deposited into the operating reserve as well
as extending the timeframe for reaching the target amount of the
operating reserve, and (2) lengthening the timeframe for achieving
pendency goals and optimal inventory levels, and accounting for other
changes related to operational costs and efficiencies. Each is
discussed in turn.
First, the Office decided to slow the growth of the operating
reserve, as well as reduce the amount of fees deposited into the
operating reserve during FY 2013, in response to public and PPAC
comments. See response to PPAC Comment 6 and Public Comments 18 and 19.
The Office is slowing the growth of the operating reserve due to a
reduction in aggregate revenue, as explained in more detail in Step 2,
below. In the NPRM, the Office estimated reaching a target operating
reserve level of three months in FY 2017. In this final rule, the
adjustments to aggregate revenue and fee amounts have slowed the pace
for reaching the three month operating reserve target to beyond the
five-year planning period (approximately FY 2018). (See PPAC Comments
6, 7, 11, 14, 16, and 23; and Public Comments 2, 18, 41, 42, 43, and 45
for additional information). When estimating aggregate costs for the
NPRM, the Office planned to deposit $73 million in the operating
reserve in FY 2013. In the updated estimate of aggregate costs
calculated for this final rule, the Office plans to use $28 million of
operating reserve funds in FY 2013. The net change of activity results
in a decrease of aggregate costs associated with the operating reserve
of $101 million.
The Office is using funds from the operating reserve in FY 2013 due
to two main components of aggregate cost--an increase in the cost of
existing base requirements and the timing of implementing the fees
included in the final rule. As discussed in more detail below, the
Office experienced historically low examiner attrition rates (the rate
at which examiners left the Office). This lower than planned attrition
rate resulted in additional higher paid examiners on board during FY
2013, increasing the aggregate cost of base requirements of patent
examination (existing examiners on board). Additionally, the Office
will publish this final rule one month later than originally
anticipated in the NPRM (April instead of March 2013). This later
publication date reduces the amount of revenue originally estimated to
be
[[Page 4218]]
collected during FY 2013. Further, the Office anticipates a ``bubble''
of fee payments paid at the current fee rates, prior to the effective
date of the fees in this final rule. This ``bubble'' is typical in
years with fee changes. Therefore, these situations require the Office
to use the operating reserve in FY 2013, whereas in FY 2014 through FY
2017, the Office estimates it will deposit funds in the operating
reserve.
Second, many public comments and the PPAC report strongly urged the
Office to achieve the 10 month first action patent application pendency
and the 20 month total patent application pendency goals more gradually
than proposed, and to achieve a ``soft landing'' to reach the optimal
patent application inventory and workforce levels at a slower rate than
proposed. See PPAC Comment 7 and Public Comment 2. During FY 2012, the
Office examined more patent applications than it initially anticipated,
in part because of historically low attrition rates. In the NPRM, the
Office anticipated an attrition of 5.8 percent in FY 2013, but in the
final rule, the Office now anticipates an attrition rate of 4.0 percent
in FY 2013 (the same attrition rate the Office experienced in FY 2012).
In response to comments and to capitalize on the historically low
attrition rates, the Office is recalibrating its examination capacity
during the five-year planning period of this final rule by reducing the
number of examiners that are hired, increasing the amount of overtime
allotted for production, and hiring more experienced examiners. Instead
of planning to hire 1,500 patent examiners in FY 2013 (as the NPRM
estimated), the Office now plans to hire 1,000 patent examiners in FY
2013. The Office also reevaluated its hiring plans in FY 2013 to
include hiring more patent examiners with greater IP experience and
knowledge, thus making this smaller number of hires more productive
sooner than originally expected. This recalibration results in a more
costly examiner production capacity (because the more experienced hires
are paid a higher salary) in the beginning (FY 2013 and FY 2014) of the
five-year planning period when comparing the net operating requirements
(see Table 3) per production unit (see Table 2) in the final rule to
that in the NPRM. However, as the Office begins reaping the benefits of
the overtime and hiring recalibration, the examiner production capacity
begins to cost less in FY 2015, so that the total net operating cost
per production unit over the five-year planning period is less in the
final rule than in the NPRM. For example, in FY 2013, the net operating
requirements per production unit are approximately $4,200 in this final
rule ($2.507 billion divided by 596,200 production units) compared to
approximately $4,100 in the NPRM. In FY 2015, the net operating
requirements per production unit are approximately $4,020 in this final
rule ($2.779 billion divided by 691,300 production units) compared to
approximately $4,046 in the NPRM. This initial increase in aggregate
cost is necessary to establish the examination capacity needed to
achieve the ``soft landing'' referred to in the comments from the PPAC
and the public.
The ``soft landing'' is evident when looking at the more gradual
increase in production units over four years (596,200 in FY 2013
increasing to 698,500 in FY 2016) in this final rule (see Table 2)
compared to the rapid increase in the NPRM over three years (620,600 in
FY 2013 increasing to 694,200 in FY 2015). Also, maintaining fewer
examiners on board throughout and at the end of the five-year planning
horizon (7,800 in FY 2017 in the final rule compared to 8,200 in FY
2017 in the NPRM) permits the Office to use production overtime as a
lever to arrive at the future ``soft landing'' when evaluating actual
inputs impacting the production modeling (application filing levels,
examiner attrition rates, and production levels).
While the examination costs marginally increase in the early years
due to the higher cost of base examination capacity (because the Office
has greater expenses associated with having more examiners than
initially projected from lower attrition rates and more experienced
examiners), the Office has more than offset this increase by reducing
patent operational costs in other areas such as deferring slightly some
IT investment plans and leveraging operational efficiencies, consistent
with public comments and a routine annual review and update of the
patent operating and budget plans. See PPAC Comment 7 and Public
Comment 2. In addition, in the time between the publication of the NPRM
and the formulation of this final rule, additional information
concerning key inputs to the patent application pendency model became
available, so the Office revised certain projections as discussed
below.
For example, after reviewing FY 2012 filing data and RGDP
information available after the NPRM published (see Step 2: Calculate
Prospective Aggregate Revenue), the Office lowered its estimates for
the level of demand of patent products and services (application filing
levels). In the NPRM, the Office projected a growth rate of 6.0 percent
in FY 2013-FY 2014; 5.5 percent in FY 2015-FY 2016; and 5.0 percent in
FY 2017. Based on actual filing data from FY 2012, the Office now
believes that a projected growth rate of 5.0 percent for each of FY
2013-FY 2017 is appropriate in this final rule. This means that
examiner production capacity and aggregate costs are reduced because
somewhat fewer patent applications are projected to be filed, and the
work associated with those applications is less, as compared to the
NRPM projections.
Many of the key inputs affecting lower aggregate costs and revenue
are summarized in Table 2.
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 *.................. 558,900 586,800 616,200 647,000 679,300
Growth Rate **.................. 5.0% 5.0% 5.0% 5.0% 5.0%
Production Units................ 596,200 655,200 691,300 698,500 641,300
End of Year Backlog............. 566,800 486,500 398,900 334,300 358,500
Examination Capacity **......... 8,500 8,400 8,200 8,000 7,800
Performance Measures (UPR):
Avg. First Action Pendency 18.0 15.8 12.9 10.5 10.0
(Months)...................
Avg. Total Pendency (Months) 30.1 26.1 23.7 21.0 18.8
----------------------------------------------------------------------------------------------------------------
* 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, is not
adjusted for price elasticity.
[[Page 4219]]
Overall, the Office estimates that during FY 2013, patent
operations will cost $2.530 billion, including $1.761 billion for
patent examination activities; $340 million for IT systems, support,
and infrastructure contributing to patent operations; $58 million for
activities related to patent appeals and the new AIA inter partes
dispute actions; $48 million for activities related to IP protection,
policy, and enforcement; and $323 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 $23 million in other income
associated with reimbursable agreements (offsets to spending) and using
$28 million from the operating reserve during FY 2013 to sustain
operations. Detailed descriptions of operating requirements are located
in the USPTO annual budgets (see http://www.uspto.gov/about/stratplan/budget/index.jsp). Table 2 above provides key underlying production
workload projections and assumptions used to calculate aggregate cost.
Table 3 presents the total budgetary requirements (prospective
aggregate cost) for FY 2013 through FY 2017.
Table 3--Estimated Annual Aggregate Costs and Final Fee Schedule Aggregate Revenues
--------------------------------------------------------------------------------------------------------------------------------------------------------
(In millions)
-------------------------------------------------------------------------------
FY 2013 FY 2014 FY 2015 FY 2016 FY 2017
------------------------------------------------------------------------------------------------------------------------------------------
Aggregate Cost Estimate:
Planned Operating Requirements........................ $2,530 $2,739 $2,802 $2,852 $2,815
Less Other Income *............................... (23) (23) (23) (23) (23)
Net Operating Requirements................................ 2,507 2,716 2,779 2,829 2,792
Planned Deposit in Operating Reserve...................... (28) 90 92 98 117
Total Aggregate Cost Estimate..................... 2,479 2,806 2,871 2,927 2,909
Aggregate Revenue Estimate **............................. 2,479 2,806 2,871 2,927 2,909
Cumulative Operating Reserve Balance......................
Target Operating Reserve.............................. 633 685 701 713 704
Operating Reserve Ending FY 2012 Balance $112......... 84 174 266 364 481
Over/(Under) Target Balance***........................ (549) (511) (435) (349) (223)
--------------------------------------------------------------------------------------------------------------------------------------------------------
* 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 $23 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.
*** The Office estimates that it will meet the three-month operating reserve target in FY 2018.
Step 2: Calculate Prospective Aggregate Revenue
As described in Step 1, the USPTO's annual requirements-based
budgets include the aggregate prospective cost of planned production,
new initiatives, and an operating reserve planned 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. The estimate for the FY 2013 aggregate
revenue contained in this final rule ($2.479 billion) is $125 million
less than the estimate contained in the NPRM ($2.604 billion). As
discussed in more detail in Step 1, the Office has lowered its
aggregate cost estimate in response to public comments expressing a
desire for the Office to achieve its goals over a longer timeframe and
to incorporate additional efficiencies into operations. This reduction
in aggregate costs requires a corresponding reduction in aggregate
revenue. The most significant factors affecting the reduction in
aggregate revenues include: (1) Decreasing fee amounts (see PPAC
Comments 6, 7, 11, 14, 16, and 23; and Public Comments 2, 18, 41, 42,
43, and 45 for additional information); (2) publishing this final rule
one month later than originally anticipated in the NPRM (April instead
of March 2013) and thereby reducing the amount of revenue originally
estimated to be collected during FY 2013; and (3) lengthening the
timeframe for achieving pendency goals and optimal inventory levels
(see Step 1, above for additional information). Following is a
discussion of the methodology used to calculate aggregate revenue.
As explained in the NPRM, to calculate the aggregate revenue
estimates, the Office first analyzes relevant factors and indicators to
determine prospective fee workload volumes (e.g., number of
applications and requests for services and products) 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.
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. RGDP
growth is factored into estimates of patent application levels. RGDP is
anticipated to grow approximately three percent for FY 2013 based on
OMB and CBO estimates provided in February and January of 2012,
respectively. CBO prepared updated economic guidance in August 2012,
temporarily altering its projection methodology to reflect heightened
uncertainty over fiscal policy conditions and concerns. The August 2012
CBO estimates envision various economic scenarios instead of a single
point estimate as CBO typically prepared. Nonetheless, the Office made
calculations based on CBO's August 2012 estimates and they had a
negligible impact on forecasts of the Office's workloads given the +/-
5 percent outer bounds discussed below.
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.
[[Page 4220]]
The Office's methodology to estimate aggregate revenue was updated
to consider two new elements related setting and adjusting fees using
the new section 10 fee setting authority. The first includes
adjustments to fee workload estimates as a result of changes in demand
for services. In the past, fees that comprise a majority of the
Office's aggregate revenue (e.g., filing, search, examination, issue,
and maintenance) were adjusted based on minimal CPI increases. In this
rule, the Office is both increasing and decreasing fees by amounts
larger than it experienced with CPI increases in the past. Therefore,
the Office considered impacts of applicant and patentee behavior in
response to the fee changes. The second incorporates the new discount
for micro entity applicants and patentees. The introduction of the new
micro entity fees required the Office to estimate how many small entity
applicants and patentees would pay fees at micro entity rates. Each of
these elements is discussed in turn below.
Elasticity and Application Filing Levels
The economic indicators discussed previously correlate with patent
application filings, which, with adjustments for elasticity, are a key
driver of patent fees. As discussed previously, in the NPRM, the Office
projected an application filing growth rate of 6.0 percent in FY 2013--
FY 2014, 5.5 percent in FY 2015--FY 2016, and 5.0 percent in FY 2017.
After reviewing actual FY 2012 filing data and other economic
indicators discussed herein, the Office lowered its estimates for the
level of demand of patent products and services (application filing
levels). The Office now believes that a projected growth rate of 5.0
percent for each of FY 2013--FY 2017 is appropriate in this final rule.
The Office also considered how applicant behavior in response to
fee (price) changes included in this final rule would impact the
application filing demand referenced above. 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#heading-1. Some of the information on which the Office based
its elasticity estimates are copyrighted materials and are available
for inspection at the USPTO.
Using the information contained in the ``Description of Elasticity
Estimates'' document, the Office estimated that 1.3 percent fewer new
(serialized) applications than the number estimated to be filed in the
absence of a fee increase would be filed during FY 2013 as patent
filers adjusted to the new fees, specifically the increase in the total
filing, search, and examination fees for most applicants. The Office
further estimated that 2.7 percent fewer new patent applications would
be filed during FY 2014, and 4.0 percent fewer new patent applications
would be filed during FY 2015. However, the Office estimated that new
(serialized) patent application filings would return to the same annual
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 even with these slight decreases, the total
aggregate revenue received from patent applications filed is projected
to grow year-after-year.
Micro Entity Applicants
The introduction of a new class of applicants, called micro
entities, requires a change to aggregate revenue estimations, and the
Office 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 75019 (Dec.
19, 2012). 35 U.S.C. 123, which sets forth the requirements that must
be met in order for an applicant to 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 (except for applications resulting from prior employment as
defined in section 123(b)); (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 also shall
include 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(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 revised the rules of practice in patent cases to
implement these micro entity provisions of the Leahy-Smith America
Invents Act in a separate rulemaking. See 77 FR 75019 (Dec. 19, 2012).
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. A series of
computations led to the estimate that 31 percent of small entity
applicants will be micro entities. The first set of computations
estimated the number of persons who would qualify for micro entity
status under Section 123(a). The Office began by estimating 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
[[Page 4221]]
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 United States and 1.9 percent were granted to individuals from
other countries. These figures refer to patents 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 United States 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 micro entity 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) 2011 (the year most recently
reported by the Bureau of the Census) was $50,054. See Income, Poverty,
and Health Insurance Coverage in the United States: 2011, at 5 and 33
(Table A-1) (Sept. 2012) available at http://www.census.gov/prod/2012pubs/p60-243.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 $150,162.
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 ($150,162 for CY 2011).
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
satisfy the income requirements for micro entity fee reductions, and
that income alone 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 35 U.S.C.
123(a)(1), (a)(2), and (a)(3) is 9,264 (6,656 from the United States
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)
based upon an assignment, grant, or conveyance or an obligation to
grant, assign, or convey to an entity with income exceeding the limit
in section 123(a)(3). 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 grants (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 the Office 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 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. The Office used these
estimates (7.8 percent and 6.2 percent) to calculate the portion of fee
workloads (e.g., number of application filings, patent issues, and
maintenance fees paid) that should be multiplied by the new micro
entity fee amounts to include in the estimate for aggregate revenue.
Aggregate Revenue Estimate Ranges
When calculating aggregate revenue, the USPTO prepares a high-to-
low range of fee collection estimates that includes a +/- 5 percent
outer bounds to account for: the inherent uncertainty, sensitivity, and
volatility of predicting fluctuations in the economy and market
environment; interpreting policy and
[[Page 4222]]
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 will be effective on April 1, 2013, except for the following
fee changes which will be effective on January 1, 2014: Sec.
1.18(a)(1), (b)(1), (c)(1), and (d)(1) (patent issue and publication
fees); Sec. 1.21(h)(1) (fee for recording a patent assignment
electronically); Sec. 1.482(a)(1)(i)(A), (a)(1)(ii)(A), and (a)(2)(i)
(international application filing, processing and search fees); and
fees included in Sec. 1.445(a)(1)(i)(A), (a)(2)(i), (a)(3)(i), and
(a)(4)(i) (international application transmittal and search fees).
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 timeframe. Calculating
individual fees is an iterative process that encompasses many
variables. The historical cost estimates associated with individual
fees is one variable that the USPTO considers to inform fee setting.
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 final rulemaking for supplemental examination, 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. See Changes to
Implement the Supplemental Examination Provisions of the Leahy-Smith
America Invents Act and To Revise Reexamination Fees, 77 FR 48828 (Aug.
14, 2012).
In other cases, ABI historical cost information related to similar
processes is 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 costs, 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 Changes to Implement Inter Partes Review Proceedings,
Post-Grant Review Proceedings, and Transitional Program for Covered
Business Method Patents, 77 FR 48680 (Aug. 14, 2012).
Besides using cost data as a point of reference for setting
individual fee amounts, the USPTO also uses various policy factors
discussed in Part III. Rulemaking Goals and Strategies 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 patent
fees will recover the prospective aggregate cost of its patent
operations. However, each individual 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 fees are set to balance several key policy factors:
fostering innovation, facilitating effective administration of the
patent 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.
[[Page 4223]]
For the purpose of discussing the changes in this rule, the
rationale for setting or adjusting 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 (B)); 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 (C)). 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 fee change 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 presents the
current fees for large and small entities and the final fees for large,
small, and micro entities. The table also includes the dollar and
percent changes between current fees and final fees for large entity
fees only as well as 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 this 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 changes 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.,
and 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 in 35 U.S.C. 41(h)(1), and a micro
entity is defined in 35 U.S.C. 123.
Currently, the small entity discount is only available for
statutory fees provided under 35 U.S.C. 41(a), (b), and (d)(1). Section
10(b) extends the discount to some patent fees not contained in 35
U.S.C. 41(a), (b), and (d)(1). Thus, in this final rule, the Office
applies the discount to a number of fees that currently do not receive
the small entity discount. There is only one fee for which a small
entity discount is currently offered that is ineligible for a small
entity discount under the final fee schedule: the fee for a statutory
disclaimer under 37 CFR 1.20(d). This fee is currently $160 for a large
entity and $80 for a small entity. In this final rule, this fee is $160
for all entities (i.e., large, small, and micro) because this
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 PTAB 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 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.
For purposes of discussion within this section, where new micro
entity fees are set, it is expected that an applicant or a 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--all three
of which are due upon filing an application.
Table 4--Patent Fee Changes
[By greater than plus or minus 5 percent and 10 dollars]
----------------------------------------------------------------------------------------------------------------
Current fees Final fees Dollar change Percent change
-----------------------------------------------------------------------
Fee description Large (small) Large (small) Large (small) Large (small)
[micro] entity [micro] entity [micro] entity [micro] entity
----------------------------------------------------------------------------------------------------------------
(1) Fees 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%]
----------------------------------------------------------------------------------------------------------------
(2) Fees set below cost recovery:
----------------------------------------------------------------------------------------------------------------
Basic Filing Fee--Utility............... $390 $280 -$110 -28%
($195) ($140) (-$55) (-28%)
[[Page 4224]]
[N/A] [$70] [-$125] [-64%]
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%]
Total Basic Filing, Search, and Exam-- $1,260 $1,600 +$340 +27%
Utility................................
($630) ($800) (+170) (+27%)
[N/A] [$400] [-$230] [-37%]
First Request for Continued Examination $930 $1,200 +$270 +29%
(RCE)..................................
($465) ($600) (+$135) (+29%)
[N/A] [$300] [-$165] [-35%]
Second and Subsequent RCEs (NEW)........ $930 $1,700 +$770 +83%
($465) ($850) (+$385) (+83%)
[N/A] [$425] [-$40] [-9%]
Notice of Appeal........................ $630 $800 +$170 +27%
($315) ($400) (+$85) (+27%)
[N/A] [$200] [-$115] [-37%]
Filing a Brief in Support of an Appeal $630 $0 -$630 -100%
in Application or Ex Parte
Reexamination Proceeding...............
($315) ($0) (-$315) (-100%)
[N/A] [$0] [-$315] [-100%]
Appeal Forwarding Fee for Appeal in $2,000 +$2,000 N/A
Examination or Ex Parte Reexamination
Proceeding or Filing a Brief in Support
of an Appeal in Inter Partes
Reexamination (NEW)....................
NEW ($1,000) (+$1,000) (N/A)
[$500] [+$500] [N/A]
Total Appeal Fees (Paid before Examiner $1,260 $800 -$460 -37%
Answer)................................
($630) ($400) (-$230) (-37%)
[N/A] [$200] [-$430] [-68%]
Total Appeal Fees (Paid after Examiner $1,260 $2,800 +$1,540 +122%
Answer)................................
($630) ($1,400) (+$770) (+122%)
[N/A] [$700] [+$70] [+11%]
Ex Parte Reexamination.................. $17,750 $12,000 -$5,750 -32%
(N/A) ($6,000) (-$11,750) (-66%)
[N/A] [$3,000] [-$14,750] [-83%]
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%)
[N/A] [$1,100] [-$4,040] [-79%]
Ex Parte Reexamination Ordered as a $16,120 $12,100 -$4,020 -25%
Result of a Supplemental Examination
Proceeding.............................
(N/A) ($6,050) (-$10,070) (-62%)
[N/A] [$3,025] [-$13,095] [-81%]
Total Supplemental Examination Fees..... $21,260 $16,500 -$4,760 -22%
(N/A) ($8,250) (-$13,010) (-61%)
[N/A] [$4,125] [-$17,135] [-81%]
Inter Partes Review Request--Up to 20 $9,000 +$9,000 N/A
Claims (Per Claim Fee for Each Claim in
Excess of 20 is $200) (NEW)............
NEW (N/A) (N/A) (N/A)
[N/A] [N/A] [N/A]
Inter Partes Review Post Institution $14,000 +$14,000 N/A
Fee--Up to 15 Claims (Per Claim Fee for
Each Claim in Excess of 15 is $400)
(NEW)..................................
NEW (N/A) (N/A) (N/A)
[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
Claim in Excess of 20 is $600).........
(N/A) (N/A) (N/A) (N/A)
[N/A] [N/A] [N/A] [N/A]
Post-Grant Review or Covered Business $12,000 +$12,000 N/A
Method Patent Review Request--Up to 20
Claims (Per Claim Fee for Each Claim in
Excess of 20 is $250) (NEW)............
NEW (N/A) (N/A) (N/A)
[N/A] [N/A] [N/A]
[[Page 4225]]
Post-Grant Review or Covered Business $18,000 +$18,000 N/A
Method Patent Review Post Institution
Fee--Up to 15 Claims (Per Claim Fee for
Each Claim in Excess of 15 is $550)
(NEW)..................................
NEW (N/A) (N/A) (N/A)
[N/A] [N/A] [N/A]
Total Post-Grant Review or Covered $35,800 $30,000 -$5,800 -16%
Business Method Patent Fees (For
Current Fees, Per Claim Fee for Each
Claim in Excess of 20 is $800).........
(N/A) (N/A) (N/A) (N/A)
[N/A] [N/A] [N/A] [N/A]
----------------------------------------------------------------------------------------------------------------
(3) Fees set above cost recovery:
----------------------------------------------------------------------------------------------------------------
Publication Fee for Early, Voluntary, or $300 $0 -$300 -100%
Normal Publication (Pre Grant
Publication or PG Pub).................
(N/A) ($0) (-$300) (-100%)
[N/A] [$0] [-$300] [-100%]
Utility Issue Fee....................... $1,770 $960 -$810 -46%
($885) ($480) (-$405) (-46%
[N/A] [$240] [-$645] [-73%]
Combined Total--Pre-grant Publication $2,070 $960 -$1,110 -54%
and Issue Fee--Utility.................
($1,185) ($480) (-$705) (-59%)
[N/A] [$240] [-$895] [-77%]
Maintenance Fee Due at 3.5 Years (1st $1,150 $1,600 +$450 +39%
Stage).................................
($575) ($800) (+$225) (+39%)
[N/A] [$400] [-$175] [-30%]
Maintenance Fee Due at 7.5 Years (2nd $2,900 $3,600 +$700 +24%
Stage).................................
($1,450) ($1,800) (+$350) (+24%)
[N/A] [$900] [-$550] [-38%]
Maintenance Fee Due at 11.5 Years (3rd $4,810 $7,400 +$2,590 +54%
Stage).................................
($2,405) ($3,700) (+$1,295) (+54%)
[N/A] [$1,850] [-$555] [-23%]
----------------------------------------------------------------------------------------------------------------
(4) Fees not 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 $570 $600 +$30 +5%
($285) ($300) (+$15) (+5%)
[N/A] [$150] [-$135] [-47%]
Extensions for Response within 3rd Month $1,290 $1,400 +$110 +9%
($645) ($700) (+$55) (+9%)
[N/A] [$350] [-$295] [-46%]
Extensions for Response within 4th Month $2,010 $2,200 +$190 +9%
($1,005) ($1,100) (+$95) (+9%)
[N/A] [$550] [-$455] [-45%]
Extensions for Response within 5th Month $2,730 $3,000 +$270 +10%
($1,365) ($1,500) (+$135) (+10%)
[N/A] [$750] [-$615] [-45%]
Utility Application Size Fee--For each $320 $400 +$80 +25%
Additional 50 Sheets that Exceed 100
Sheets.................................
($160) ($200) (+$40) (+25%)
[N/A] [$100] [-$60] [-38%]
Independent Claims in Excess of 3....... $250 $420 +$170 +68%
($125) ($210) (+$85) (+68%)
[N/A] [$105] [-$20] [-16%]
Claims in Excess of 20.................. $62 $80 +$18 +29%
($31) ($40) (+$9) (+29%)
[N/A] [$20] [-$11] [-35%]
Multiple Dependent Claim................ $460 $780 +$320 +70%
($230) ($390) (+$160) (+70%)
[N/A] [$195] [-$35] [-15%]
Correct Inventorship After First Action $600 +$600 N/A
on the Merits (NEW)....................
NEW ($300) (+$300) (N/A)
[$150] [+$150] [N/A]
[[Page 4226]]
Derivation Petition Fee................. $400 $400 $0 0%
(N/A) N/A (N/A) (N/A)
[N/A] N/A [N/A] [N/A]
Assignments Submitted Electronically $40 $0 -$40 -100%
(NEW)..................................
(N/A) (N/A) (N/A) (N/A)
[N/A] [N/A] [N/A] [N/A]
Assignments Not Submitted Electronically $40 $40 $0 0%
(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 fee is set at cost recovery. This fee supports 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 change
follows.
Request for Prioritized Examination:
Table 5--Request for Prioritized Examination Fee Changes
----------------------------------------------------------------------------------------------------------------
Current fees Final fees Dollar change Percent change
-----------------------------------------------------------------------
Fee information Large (small) Large (small) Large (small) Large (small)
[micro] entity [micro] entity [micro] entity [micro] 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 37 CFR
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
offer patent prosecution options to applicants to provide applicants
greater control over the timing of examination of their applications.
The procedure thereby 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 greater than 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 sets the large entity fee at cost ($4,000), instead of
further increasing the fee to subsidize the new micro entity discount.
The Office will recover this subsidy through other fees that are 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.
[[Page 4227]]
(2) Fees To Be Set Below Cost Recovery
There are eight fees that the Office sets 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 are increased from current fee
rates under this rule, the Office is not increasing ``pre-grant'' fees
(e.g., filing, search, and examination) to avoid creating a barrier to
entry as otherwise might have been created if fees were set to recover
the full cost of the activity. The 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 and
contested case activities. A discussion of the rationale for each fee
adjustment follows.
Basic Filing, Search, and Examination--Utility:
Table 7--Basic Filing, Search, and Examination--Utility Fee Changes
----------------------------------------------------------------------------------------------------------------
Current fees Final fees Dollar change Percent change
-----------------------------------------------------------------------
Fee description Large (small) Large (small) Large (small) Large (small)
[micro] entity [micro] entity [micro] entity [micro] entity
----------------------------------------------------------------------------------------------------------------
Basic Filing Fee--Utility............... $390 $280 -$110 -28%
($195) ($140) (-$55) (-28%)
[N/A] [$70] [-$125] [-64%]
Utiliity 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%]
Total Basic Filing, Search, and Exam-- $1,260 $1,600 +$340 +27%
Utility................................
($630) ($800) (+170) (+27%)
[N/A] [$400] [-$230] [-37%]
----------------------------------------------------------------------------------------------------------------
Table 8--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 requires filing, search,
and examination fees to be paid upon filing. 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
processing, searching, and examining a patent application, while the
fee for a small entity application recovers around 17 percent of the
average unit cost. The Office subsidizes the below-price filing,
search, and examination fees through higher ``back-end'' fees, for
example, above cost issue and maintenance fees. The Office maintains
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
(see Table 8). Approximately half of those costs are estimated to occur
in the examination stage (see Table 8), but only 20 percent of the
total filing, search, and examination fees are derived from the
examination fee (see Table 9). To adjust this fee structure and help
stabilize the USPTO funding model, the Office is increasing the total
filing, search, and examination fees and realigning 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 9--Utility Basic Filing, Search, and Examination--Current,
Proposed, and Final Fee Information
------------------------------------------------------------------------
Current $/% of Final $/% of
Proposed fee information Total Total
------------------------------------------------------------------------
Basic Filing Fee--Utility........... $390/31% $280/17%
Utility Search Fee.................. $620/49% $600/38%
Utility Examination Fee............. $250/20% $720/45%
-----------------------------------
Total Fees...................... $1,260/100% $1,600/100%
------------------------------------------------------------------------
[[Page 4228]]
In this rule, the Office sets the combined total fee for filing,
search, and examination at $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 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 to file for a
patent. 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 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 non-final and final actions. At the same time,
the overall increase in filing, search, and examination fees helps to
stabilize the Office's revenue stream by collecting more revenue when
an application is filed from all patent applicants, instead of
collecting revenue when a patent is later published or issued from only
successful applicants. Also, while the Office increases application
fees, reducing the pre-grant publication and issue fees offsets these
increases.
As discussed above, based on economic indicators, the Office
projects a 5.0 percent growth rate in application filings for each year
from FY 2013 to FY 2017. Additionally, the Office recognizes that some
applicants may choose to reduce the number of applications filed in
response to this increase in fees. Based on elasticity estimates, the
Office anticipates that this impact will be relatively short-term,
lasting for the first two and a half years after the fee increase. The
Office estimated that applicants would file 1.3 percent fewer new
(serialized) 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 estimated
that 2.7 percent fewer new patent applications would be filed during FY
2014 and 4.0 percent fewer new patent applications would be filed
during FY 2015 in response to the fee adjustment. Despite this decrease
in new patent applications filed when compared to the number filed
absent the fee increase, the Office estimated that the overall number
of patent applications filed would continue to grow each year, albeit
at a lower growth rate in FY 2013 through FY 2015. The Office estimated
that beginning in FY 2016, the growth in patent applications filed
would return to the same levels anticipated in the absence of a fee
increase. To the extent that there is some impact on filings, the
Office determined that the benefits of the fee changes outweigh the
temporary cost of fewer patent filings. The additional revenue
generated from the increase in fees provides sufficient resources to
decrease pendency. The reduction in pendency is estimated to increase
private patent value by shortening the time for an invention to be
commercialized or otherwise obtain value from the exclusive right for
the technology. Additional information about this estimate 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 and benefit analysis included in 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 10--First Request for Continued Examination (RCE) Fee Changes
----------------------------------------------------------------------------------------------------------------
Current fees Final fees Dollar change Percent change
-----------------------------------------------------------------------
Fee description Large (small) Large (small) Large (small) Large (small)
[micro] entity [micro] entity [micro] entity [micro] entity
----------------------------------------------------------------------------------------------------------------
First Request for Continued Examination $930 $1,200 +$270 +29%
(RCE)..................................
($465) ($600) (+$135) (+29%)
[N/A] [$300] [-$165] [-35%]
----------------------------------------------------------------------------------------------------------------
Table 11--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 60% 43% 51%
new 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
[[Page 4229]]
application. In FY 2011 and FY 2012, 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 for
a second or subsequent RCE. Given this data, it is reasonable to expect
that most outstanding issues are resolved with the first RCE.
In this final rule, the Office divides the fee for RCEs into two
parts: (1) A lower fee for a first RCE; and (2) a second, higher fee
for a second or subsequent RCE. The Office divided this RCE fee
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 effective administration
of the patent system and offer patent prosecution options to
applicants.
The large entity fee for the first RCE is set approximately 36
percent below cost recovery at $1,200 to advance innovation by easing
the burden on an applicant needing to resolve outstanding items with an
examiner. The USPTO calculated the large entity cost for an RCE at
$1,882 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 RCE fee in the current fee
structure is set at 74 percent of the total fees for filing, search,
and examination ($930 divided by $1,260). The fee relationship of a
first RCE to total fees for filing, search, and examination set herein
remains the same at 75 percent ($1,200 divided by $1,600).
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 set below
cost recovery and less than the fee set for the first, and second and
subsequent RCEs (see appeal fee information in a following section).
The USPTO chose 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 current RCE fee into two parts, the
Office is piloting other ways to address RCEs. Specifically, the Office
is operating 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 (QPIDS) 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 the need for applicants to file an RCE.
The second initiative, called the After Final Consideration Pilot
(AFCP), 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. The Office believes these two pilot
programs should reduce the need for RCEs and thereby enable applicants
to secure a patent through a single application filing.
Apart from these pilot programs, the USPTO is collaborating with
the PPAC on an RCE outreach effort. The objective of this initiative is
to identify the reasons why applicants file RCEs, identify any
practices for avoiding unnecessary RCEs, and explore new programs or
changes in current programs that could reduce the need for some RCEs.
The Office recently issued a request for comments on RCE practice in
the Federal Register (see 77 FR 72830 (Dec. 6, 2012)) as a part of this
multi-step approach to address concerns with respect to RCE practice
and engage in related efforts directed at reducing patent application
pendency.
Request for Continued Examination (RCE)--Second and Subsequent
Request (New):
Table 12--Second and Subsequent Request for Continued Examination (RCE) Fee Changes
----------------------------------------------------------------------------------------------------------------
Current fees Final fees Dollar change Percent change
-----------------------------------------------------------------------
Fee description Large (small) Large (small) Large (small) Large (small)
[micro] entity [micro] entity [micro] entity [micro] entity
----------------------------------------------------------------------------------------------------------------
Second and Subsequent Requests for $930 $1,700 +$770 +83%
Continued Examination (RCE) (NEW)......
($465) ($850) (+$385) (+83%)
[N/A] [$425] [-$40] [-9%]
----------------------------------------------------------------------------------------------------------------
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 60% 43% 51%
new 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, as the cost to process an RCE is on average,
half of the cost to prosecute a new application................................................................
----------------------------------------------------------------------------------------------------------------
As discussed previously, in this rule, the Office divides the fee
for RCEs into two parts: (1) A lower fee for a first RCE; and (2) a
second, higher fee for a second or subsequent RCE. Multipart RCE fees
demonstrate how the Office seeks to
[[Page 4230]]
facilitate effective administration of the patent system and offer
patent prosecution options to applicants. The Office divided this RCE
fee because, as noted above, approximately 30 percent of RCEs are for a
second or subsequent RCE, which indicates that most applicants
generally need only one RCE to resolve outstanding issues with the
examiner.
The Office sets the large entity fee for second and subsequent RCEs
at $1,700, which is about 10 percent below cost recovery. The USPTO
calculated the large entity cost for an RCE at $1,882 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 recognizes that an RCE may be less costly to examine
than a new continuing application in certain situations. However, the
patent fee structure is designed such that the costs associated with
the processing and examination of a new or continuing application are
recovered by issue and maintenance fees, allowing for a fee
significantly below cost recovery. To avoid setting higher issue and
maintenance fees to offset the cost of processing second and subsequent
RCEs, the fees for those RCEs are set closer to cost recovery. The
Office determined that increasing the issue and/or maintenance fees to
offset lower than cost recovery second and subsequent RCEs fees would
cause the majority of filers (who do not seek more than one RCE) to
subsidize services provided to the small minority of filers who seek
two or more RCEs. The Office does not believe such subsidization would
be an optimal result.
As discussed earlier, 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 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 chose 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.
Appeal Fees (Partially New):
Table 14--Appeal Fee Changes
----------------------------------------------------------------------------------------------------------------
Current fees Final fees Dollar change Percent change
-----------------------------------------------------------------------
Fee description Large (small) Large (small) Large (small) Large (small)
[micro] entity [micro] entity [micro] entity [micro] entity
----------------------------------------------------------------------------------------------------------------
Notice of Appeal........................ $630 $800 +$170 +27%
($315) ($400) (+$85) (+27%)
[N/A] [$200] [-$115] [-37%]
Filing a Brief in Support of an Appeal $630 $0 -$630 -100%
in Application or Ex Parte
Reexamination Proceeding...............
($315) ($0) (-$315) (-100%)
[N/A] [$0] [-$315] [-100%]
Appeal Forwarding Fee for Appeal in $2,000 N/A N/A
Examination or Ex Parte Reexamination
Proceeding or Filing a Brief in Support
of an Appeal in Inter Partes
Reexamination (NEW)....................
NEW ($1,000) (N/A) (N/A)
[$500] [N/A] [N/A]
-----------------------------------------------------------------------
Total Appeal Fees................... $1,260 $800 -$460 -37%
(paid before Examiner Answer).......
($630) ($400) (-$230) (-37%)
[N/A] [$200] [-$430] [-68%]
-----------------------------------------------------------------------
Total Appeal Fees................... $1,260 $2,800 +$1,540 +122%
(paid after Examiner Answer).......
($630) ($1,400) (+$770) (+122%)
[N/A] [$700] [+$70] [+11%]
----------------------------------------------------------------------------------------------------------------
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 (PTAB).. $4,799 $4,960 $5,008
Filing a Brief in Support of an Appeal....................
Appeal Forwarding Fee.....................................
----------------------------------------------------------------------------------------------------------------
An applicant who disagrees with an examiner's final rejection may
appeal to the PTAB 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 claims in the
parent application were previously rejected.
Within two months from the date of filing a notice of appeal, an
appellant must file a Brief. Then, the examiner must file an Examiner's
Answer. After the Examiner's Answer is mailed, the appeal file is
forwarded to the PTAB for review.
Currently, a large entity applicant pays $630 to file a notice of
appeal and another $630 when filing a Brief--a total
[[Page 4231]]
of $1,260. These current fees only recover approximately 25 percent of
the Office's cost of an appeal. In this final rule, the Office
increases appeal fees to reduce the gap between fees and cost. At the
same time, the Office offers patent prosecution options to applicants
and stages 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.
In the NPRM, the Office proposed to set a $1,000 notice of appeal
fee and a $0 fee when filing the brief. After evaluating comments
received from the PPAC and the public, the Office is adjusting the
notice of appeal fee down to $800 and setting the $0 fee when filing
the brief. 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 PTAB for a decision. The
Office further sets a $2,000 fee to forward the appeal file--containing
the appellant's Brief and the Examiner's Answer--to the PTAB for
review. This fee is the same as the Office proposed in the NPRM. Under
this fee structure, 28 percent of the fee would be paid at the time of
notice of appeal, and the remaining 72 percent would be paid after the
Examiner's Answer, but only if the appeal is forwarded to the PTAB. The
Office estimates that less than 5 percent of applicants who receive
final rejections will pay the full fee ($2,800) required to forward an
appeal to PTAB. This fee 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 PTAB, a large entity
appellant would pay only $800 to obtain an Examiner's Answer, 37
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 PTAB. This patent prosecution option
allows applicants to make critical decisions at multiple points in the
patent prosecution process. Also, 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 PTAB.
Ex Parte Reexamination:
Table 16--Ex Parte Reexamination Fee Changes
----------------------------------------------------------------------------------------------------------------
Current fees Final fees Dollar change Percent change
-----------------------------------------------------------------------
Fee Description Large (small) Large (small) Large (small) Large (small)
[micro] entity [micro] entity [micro] entity [micro] entity
----------------------------------------------------------------------------------------------------------------
Ex Parte Reexamination.................. $17,750 $12,000 -$5,750 -32%
(N/A) ($6,000) (-$11,750) (-66%)
[N/A] [$3,000] [-$14,750] [-83%]
----------------------------------------------------------------------------------------------------------------
Table 17--Ex Parte Reexamination Historical Cost Information
----------------------------------------------------------------------------------------------------------------
Historical unit cost information FY 2011 FY 2010 FY 2009
----------------------------------------------------------------------------------------------------------------
Ex Parte Reexamination.................................... $19,626 $16,648 $17,162
----------------------------------------------------------------------------------------------------------------
Table 18--Ex Parte Reexamination Prospective Cost Information
------------------------------------------------------------------------
Prospective cost information FY 2013
------------------------------------------------------------------------
Supplemental Examination Fee Methodology for Final $17,750
Rule (77 FR 48828 (Aug. 14, 2012)) available at http://www.uspto.gov/aia_implementation/supp_exam_fee_meth_fr.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 an ex parte
reexamination of the patent for the relevant claims.
After noting a disparity between the previous ex parte
reexamination fee ($2,520) and the cost of completing the proceeding
($17,750), the Office increased the fee using its authority under 35
U.S.C. section 41(d). (See Changes To Implement the Supplemental
Examination Provisions of the Leahy-Smith America Invents Act and To
Revise Reexamination Fees, 77 FR 48828 (Aug. 14, 2012)).
In the NPRM, the Office proposed setting the ex parte reexamination
fee at $15,000, which is 15 percent below the Office's cost of
conducting the proceeding, and introduced new small and micro entity
discounts for an ex parte reexamination (in accordance with section 10,
third party requestors are not eligible for the micro entity
discounts).
In this final rule, the Office further reduces the large entity fee
for ex parte reexamination from $15,000 (as proposed in the NPRM) to
$12,000, which is 32 percent below the Office's cost of conducting the
proceeding. Setting the fee below cost permits easier access to the ex
parte reexamination process, which benefits the patent system and
patent quality by removing low quality patents.
The ex parte reexamination fee is due at the time of filing,
however, it is in essence a two-part fee. First, part of the ex parte
reexamination fee helps to recover the costs for analyzing the request
and drafting the decision whether to grant or deny ex parte
reexamination. This is based on the fee set forth in 37 CFR 1.20(c)(7)
for a denied request for ex parte reexamination ($3,600, $1,800 for a
small entity, and $900 for a micro entity patentee). Second, the
remaining part of the fee helps to recover the costs for conducting ex
parte reexamination if the request for ex parte reexamination is
[[Page 4232]]
granted. This is based on the ex parte reexamination fee set forth in
37 CFR 1.20(c)(1) less the fee set forth in 37 CFR 1.20(c)(7) for a
denied request for ex parte reexamination ($12,000 less $3,600 equals
$8,400 for a large entity; $6,000 less $1,800 equals $4,200 for a small
entity; and $3,000 less $900 equals $2,100 for a micro entity
patentee).
Supplemental Examination:
Table 19--Supplemental Examination Fee Changes
----------------------------------------------------------------------------------------------------------------
Current fees Final fees Dollar change Percent change
-----------------------------------------------------------------------
Fee description Large ( small) Large ( small) Large ( small) Large ( small)
[micro] entity [micro] entity [micro] entity [micro] entity
----------------------------------------------------------------------------------------------------------------
Processing and Treating a Request for $5,140 $4,400 -$740 -14%
Supplemental Examination--Up to 20 (N/A) ($2,200) (-$2,940) (-57%)
Sheets................................. [N/A] [$1,100] [-$4,040] [-79%]
Ex Parte Reexamination Ordered as a $16,120 $12,100 -$4,020 -25%
Result of a Supplemental Examination (N/A) ($6,050) (-$10,070) (-62%)
Proceeding............................. [N/A] [$3,025] [-$13,095] [-81%]
-----------------------------------------------------------------------
Total Supplemental Examination Fees. $21,260 $16,500 -$4,760 -22%
(N/A) ($8,250) (-$13,010) (-61%)
[N/A] [$4,125] [-$17,135] [-81%]
----------------------------------------------------------------------------------------------------------------
Table 20--Supplemental Examination Prospective Cost Information
------------------------------------------------------------------------
Prospective cost information FY 2013
------------------------------------------------------------------------
Supplemental Examination Fee Methodology for Final Rule (77 FR 48828
(Aug. 14, 2012)) available at http://www.uspto.gov/aia_implementation/supp_exam_fee_meth_fr.pdf
------------------------------------------------------------------------
Supplemental Examination Request *...................... $5,180
Supplemental Examination Reexamination.................. 16,120
---------------
Total Supplemental Examination Costs................ 21,300
------------------------------------------------------------------------
* In the final rule, the Office estimated its fiscal year 2013 cost for
processing and treating a request for supplemental examination to be
$5,180. The Office also estimated that the document size fees will
recover an average of $40 per request for supplemental examination.
Therefore, the Office added new Sec. 1.20(k)(1) to set a fee of
$5,140 for processing and treating a request for supplemental
examination (the estimated 2013 cost amount rounded to the nearest ten
dollars minus $40).
------------------------------------------------------------------------
Supplemental examination is a new proceeding created by the AIA
with an effective date of September 16, 2012 (see Changes To Implement
the Supplemental Examination Provisions of the Leahy-Smith America
Invents Act and To Revise Reexamination Fees, 77 FR 48828 (Aug. 14,
2012)). 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 inequitable conduct challenges to the patent. 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 during the application
process that needs to be corrected.
The current fees for the request for supplemental examination and
the ex parte reexamination ordered as a result of a supplemental
examination proceeding are $5,140 and $16,120, respectively, as set
using the Office's authority under 35 U.S.C. 41(d).
In the NPRM, the Office proposed to adjust supplemental examination
fees to 15 percent below cost at $18,000 ($4,400 for the request and
$13,600 for the reexamination). After updating the patent operating
plans and corresponding aggregate costs in response to public comments,
the Office determined that it could reduce the supplemental examination
fee further while continuing to ensure that the aggregate revenue
equals aggregate cost. In this rule, the Office is reducing the fee for
conducting an ex parte reexamination ordered as a result of a
supplemental examination to $12,100 and setting the total supplemental
examination fees at $16,500 ($4,400 for the request and $12,100 for the
reexamination), which is 22 percent below the Office's cost for these
services.
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 effective administration of the patent system by providing
patentees with a procedure to immunize a patent from an inequitable
conduct challenge.
Inter Partes Review:
[[Page 4233]]
Table 21-- Inter Partes Review Fee Changes
----------------------------------------------------------------------------------------------------------------
Current fees Final fees Dollar change Percent change
-----------------------------------------------------------------------
Fee description Large (small) Large (small) Large (small) Large (small)
[micro] entity [micro] entity [micro] entity [micro] entity
----------------------------------------------------------------------------------------------------------------
Inter Partes Review Request--Up to 20 NEW $9,000 N/A N/A
Claims (Per Claim Fee for Each Claim in (N/A) (N/A) (N/A)
Excess of 20 is $200) (NEW)............ [N/A] [N/A] [N/A]
Inter Partes Review Post Institution NEW $14,000 N/A N/A
Fee--Up to 15 Claims (Per Claim Fee for (N/A) (N/A) (N/A)
Each Claim in Excess of 15 is $400) [N/A] [N/A] [N/A]
(NEW)..................................
-----------------------------------------------------------------------
Total Inter Partes Review Fees (For $27,200 $23,000 -$4,200 -15%
Current Fees, Per Claim Fee for (N/A) (N/A) (N/A) (N/A)
Each Claim in Excess of 20 is $600) [N/A] [N/A] [N/A] [N/A]
----------------------------------------------------------------------------------------------------------------
Table 22--Inter Partes Review Prospective Cost Information
------------------------------------------------------------------------
------------------------------------------------------------------------
Prospective cost information FY 2013
------------------------------------------------------------------------
The Total Inter Partes Review cost calculation of $27,200 included in
Changes to Implement Inter Partes Review Proceedings, Post-Grant Review
Proceedings, and Transitional Program for Covered Business Method
Patents, 77 FR 48680 (Aug. 14, 2012) is available for review at http://www.gpo.gov/fdsys/pkg/FR-2012-08-14/pdf/2012-17906.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 $10,500 > 20 = $200
20 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
with an effective date of September 16, 2012 (see Changes to Implement
Inter Partes Review Proceedings, Post-Grant Review Proceedings, and
Transitional Program for Covered Business Method Patents 77 FR 48680
(Aug. 14, 2012). Inter partes review 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 when a third party files a petition nine
months after the grant of a patent. 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. If the review is instituted and not dismissed, the PTAB
will issue a final determination within one year of institution. The
period can be extended for good cause for up to six months from the
date of one year after instituting the review.
In this final rule, the Office sets the inter partes review fees at
a level below the Office's cost recovery and improves the fee payment
structure. The Office sets four separate fees for inter partes review,
which a petitioner would pay upon filing a petition. The Office also
chooses to return fees for post-institution services should a review
not be instituted. Similarly, the Office establishes that fees paid for
post-institution review of a large number of claims will be returned if
the Office only institutes the review of a subset of the requested
claims.
The USPTO sets 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 sets 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 sets 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 review. Likewise, the
Office sets 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 entire excess claims fee 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 the Office did not review.
For example, under this final rule, if a party requests inter
partes review of 52 claims, the petitioner would pay a single fee up
front comprising two parts and totaling $44,200. The first part is for
determining whether to institute the review and would include the base
fee ($9,000) plus a fee of $200 for each of the additional 32 claims
(52 minus 20), which equates to an additional $6,400 for a total review
request fee of $15,400 ($9,000 plus $6,400). The second part of the fee
is for when the review is instituted and includes the base fee of
$14,000 plus a fee of $400 for each of the additional 37 claims (52
minus 15),
[[Page 4234]]
which equates to an additional $14,800 for a total post institution fee
of $28,800 ($14,000 plus $14,800). In addition, under this 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
portion of the fee covering the trial would be returned (i.e., the base
post-institution fee of $14,000 as well as the $14,800 for claims over
15, for a total of $28,800).
The Office sets 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 approach also considers certain policy factors, such as
fostering innovation by facilitating greater access to the inter partes
review proceedings and thereby removing low quality patents from the
patent system.
Post-Grant Review or Covered Business Method Patent Review:
Table 23--Post-Grant Review or Covered Business Method Patent Review Fee Changes
----------------------------------------------------------------------------------------------------------------
Current fees Final fees Dollar change Percent change
-----------------------------------------------------------------------
Fee description Large (small) Large (small) Large (small) Large (small)
[micro] entity [micro] entity [micro] entity [micro] entity
----------------------------------------------------------------------------------------------------------------
Post-Grant Review or Covered Business NEW $12,000 N/A N/A
Method Patent Review Request--Up to 20 (N/A) (N/A) (N/A)
Claims (Per Claim Fee for Each Claim in [N/A] [N/A] [N/A]
Excess of 20 is $250) (NEW)............
Post-Grant Review or Covered Business NEW $18,000 N/A N/A
Method Patent Review Post Institution (N/A) (N/A) (N/A)
Fee--Up to 15 Claims (Per Claim Fee for [N/A] [N/A] [N/A]
Each Claim in Excess of 15 is $550)
(NEW)..................................
-----------------------------------------------------------------------
Total Post-Grant Review or Covered $35,800 $30,000 -$5,800 -16%
Business Method Patent Review Fees (N/A) (N/A) (N/A) (N/A)
(For Current Fees, Per Claim Fee [N/A] [N/A] [N/A] [N/A]
for Each Claim in Excess of 20 is
$800)..............................
----------------------------------------------------------------------------------------------------------------
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 included in
Changes to Implement Inter Partes Review Proceedings, Post-Grant Review
Proceedings, and Transitional Program for Covered Business Method
Patents, 77 FR 48680 (Aug. 14, 2012) is available for review at http://www.gpo.gov/fdsys/pkg/FR-2012-08-14/pdf/2012-17906.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 $14,700 > 20 = $250
Business Method Patent Review
Request--up to 20 claims...........
Post-Grant Review or Covered 21,100 > 15 = $550
Business 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 with
an effective date of September 16, 2012 (see Changes to Implement Inter
Partes Review Proceedings, Post-Grant Review Proceedings, and
Transitional Program for Covered Business Method Patents, 77 FR 48680
(Aug. 14, 2012)). Post-grant review 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 a 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 review is instituted
and not dismissed, the PTAB 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 this final rule, the Office sets the post-grant review fee at a
level below the Office's cost recovery and improves the fee payment
structure. The Office sets four separate fees for post-grant review,
which the petitioner would pay upon filing a petition for post-grant
review. The Office also chooses to return fees for post-institution
services if a review is not instituted. Similarly, the Office
establishes that fees paid for a post-institution review of a large
[[Page 4235]]
number of claims will be returned if the Office only institutes the
review of a subset of the requested claims. The same structure and fees
apply for covered business method review.
The Office sets 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 sets 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 sets 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 sets a per claim fee of $550 for review of
each claim in excess of 15 during the post-institution review. 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 this final rule, a party seeking post-grant
review of 52 claims would pay a single fee up front comprising two
parts and totaling $58,350. The first part is for determining whether
to institute the review and would include the base fee ($12,000) plus a
fee of $250 for each of the additional 32 claims (52 minus 20), which
equates to an additional $8,000 for a total review request fee of
$20,000 ($12,000 plus $8,000). The second part of the fee is for when
the review is instituted and includes the base fee of $18,000 plus a
fee of $550 for each of the additional 37 claims (52 minus 15), which
equates to an additional $20,350 for a total post institution fee of
$38,350 ($18,000 plus $20,350). In addition, under this rule, 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 $38,350 ($20,350 for claims over 15, as well as the
base $18,000 post-institution fee).
The Office sets 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 approach also considers certain policy factors, such as
fostering innovation through facilitating greater access to the post-
grant review proceedings and thereby removes low quality patents from
the patent system.
Pre Grant Publication (PGPub) Fee:
Table 25--Pre Grant Publication (PGPub) Fee Changes
----------------------------------------------------------------------------------------------------------------
Current fees Final fees Dollar change Percent change
-----------------------------------------------------------------------
Fee description Large (small) Large (small) Large (small) Large (small)
[micro] entity [micro] entity [micro] entity [micro] entity
----------------------------------------------------------------------------------------------------------------
Publication Fee for Early, Voluntary, or $300 $0 -$300 -100%
Normal Publication.....................
Publication Fee for Republication....... 300 300 0 0%
----------------------------------------------------------------------------------------------------------------
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 effective
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 applicants
and innovators in the patent system.
Given that publishing a patent application 18 months after its
earliest effective filing date benefits the IP system more than
individual applicants, the Office reduces 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 ($340
increase, less this $300 decrease is a net $40 increase--or 3 percent--
to apply for a patent and publish the application). However, to allow
the Office to recover sufficient revenue to pay for the projected cost
of patent operations in FY 2013, the effective date of the proposed
reduction to the PGPub fee is January 1, 2014.
The PGPub fee for republication of a patent application
(1.18(d)(2)) is not adjusted, but is set at the existing rate of $300.
The Office keeps this fee at its existing rate for each patent
application that must be published again after a first publication for
$0.
[[Page 4236]]
(3) Fees To Be Set Above Cost Recovery
There are two fees that the Office sets 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 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 system
and reduce the backlog of patent applications. A discussion of the
rationale for each change follows.
Issue Fees:
Table 27--Issue Fee Changes
----------------------------------------------------------------------------------------------------------------
Current fees Final fees Dollar change Percent change
-----------------------------------------------------------------------
Fee description Large (small) Large (small) Large (small) Large (small)
[micro] entity [micro] entity [micro] entity [micro] entity
----------------------------------------------------------------------------------------------------------------
Utility Issue Fee....................... +$1,770 +$960 -$810 -46%
(+$885) (+$480) (-$405) (-46%)
[N/A] [+$240] [-$645] [-73%]
----------------------------------------------------------------------------------------------------------------
Table 28--Issue Fee Historical Cost Information
----------------------------------------------------------------------------------------------------------------
Historical unit cost information FY 2011 FY 2010 FY 2009
-------------------------------------------------------------------------------------------------
Utility Issue Fee............................. $257 $231 $224
----------------------------------------------------------------------------------------------------------------
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 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
$1,770, 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 the 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 will help inventors
financially at a time when the marketability of their invention is less
certain. Additionally, 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
decreases the large entity issue fee to $960. This amount is about
twice the cost of both publishing an application (which is 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. The Office is adjusting the issue fee in two
steps. First, the Office sets the issue fee at $1,780 and makes
available a 50 percent discount for small entities and a 75 percent
discount for micro entities. Second, the Office decreases the large
entity issue fee to $960 effective January 1, 2014, and continues to
make available discounts for small and micro entities.
It should be noted that only 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 Final fees Dollar change Percent change
-----------------------------------------------------------------------
Fee description Large (small) Large (small) Large (small) Large (small)
[micro] entity [micro] entity [micro] entity [micro] entity
----------------------------------------------------------------------------------------------------------------
Maintenance Fee Due at 3.5 Years (1st $1,150 $1,600 +$450 +39%
Stage)................................. ($575) ($800) (+$225) (+39%)
[N/A] [$400] [$-175] [-30%]
Maintenance Fee Due at 7.5 Years (2nd $2,900 $3,600 +$700 +24%
Stage)................................. ($1,450) ($1,800) (+$350) (+24%)
[N/A] [$900] [-$550] [-38%]
Maintenance Fee Due at 11.5 Years (3rd $4,810 $7,400 +$2,590 +54%
Stage)................................. ($2,405) ($3,700) (+$1,295) (+54%)
[N/A] [$1,850] [-$555] [-23%]
----------------------------------------------------------------------------------------------------------------
[[Page 4237]]
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 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 higher than the fees for
renewing their patent rights. 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 increases 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.
Therefore, under a progressively higher maintenance fee schedule, a
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 that 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 the public may utilize the invention 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 RIA, which is available for review at http://www.uspto.gov/aia_implementation/fees.jsp.
The Office increases the first, second, and third stage maintenance
fees to $1,600, $3,600, and $7,400, respectively. These increases are
commensurate with the subsidies offered for prosecution of a patent
application and align with the fee setting strategy of fostering
innovation by setting front-end fees below cost. The increase also
ensures that the USPTO has sufficient aggregate revenue to recover the
aggregate cost of operations and implement goals and objectives.
(4) Fees That Are Not Set Using Cost Data as an Indicator
Fees in this category include those 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 Part III. Rulemaking Goals and Strategies, 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.
Extension of Time Fees:
Table 31--Extension of Time Fee Changes
----------------------------------------------------------------------------------------------------------------
Current fees Final fees Dollar change Percent change
-----------------------------------------------------------------------
Fee description Large (small) Large (small) Large (small) Large (small)
[micro] entity [micro] entity [micro] entity [micro] entity
----------------------------------------------------------------------------------------------------------------
Extension for Response within 1st Month. $150 $200 +$50 +33%
($75) ($100) (+$25) (+33%)
[N/A] [$50] [-$25] [-33%]
Extension for Response within 2nd Month. $570 $600 +$30 +5%
($285) ($300) (+$15) (+5%)
[N/A] [$150] [-$135] [-47%]
Extension for Response within 3rd Month. $1,290 $1,400 +$110 +9%
($645) ($700) (+$55) (+9%)
[N/A] [$350] [-$295] [-46%]
Extension for Response within 4th Month. $2,010 $2,200 +$190 +9%
($1,005) ($1,100) (+$95) (+9%)
[N/A] [$550] [-$455] [-45%]
[[Page 4238]]
Extension for Response within 5th Month. $2,730 $3,000 +$270 +10%
($1,365) ($1,500) (+$135) (+10%)
[N/A] [$750] [-$615] [-45%]
----------------------------------------------------------------------------------------------------------------
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 increases these fees to facilitate an efficient and prompt
conclusion of application processing, which benefits the Office's
compact prosecution initiatives and reduces patent application
pendency.
Application Size Fees:
Table 32--Application Size Fee Changes
----------------------------------------------------------------------------------------------------------------
Current fees Final fees Dollar change Percent change
-----------------------------------------------------------------------
Fee description Large (small) Large (small) Large (small) Large (small)
[micro] entity [micro] entity [micro] entity [micro] entity
----------------------------------------------------------------------------------------------------------------
Application Size Fee--For each $320 $400 +$80 +25%
Additional 50 Sheets that Exceed 100 ($160) ($200) (+$40) (+25%)
Sheets................................. [N/A] [$100] [-$60] [-38%]
----------------------------------------------------------------------------------------------------------------
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 increases 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.
Excess Claims:
Table 33--Excess Claims Fee Changes
----------------------------------------------------------------------------------------------------------------
Current fees Final fees Dollar change Percent change
-----------------------------------------------------------------------
Fee description Large (small) Large (small) Large (small) Large (small)
[micro] entity [micro] entity [micro] entity [micro] 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.................. $62 $80 +$18 +29%
($31) ($40) (+$9) (+29%)
[N/A] [$20] [-$11] [-35%]
Multiple Dependent Claim................ $460 $780 +$320 +70%
($230) ($390) (+$160) (+70%)
[N/A] [$195] [-$35] [-15%]
----------------------------------------------------------------------------------------------------------------
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 patent fee structure has maintained excess claim fees since at
least 1982, and the result has been that most applications now contain
three or fewer independent claims and twenty or fewer total claims.
Applicants who feel they need more than this number of independent or
total claims may continue to present them by paying the applicable
excess claims fee. While the former excess claims fee amount encouraged
most applicants to present three or fewer independent claims and twenty
or fewer total claims, it was not sufficient to discourage some
applicants from presenting a copious number of
[[Page 4239]]
claims for apparent tactical reasons, nor did the former excess claims
fee reflect the excess burden associated with examining those claims.
See, e.g., Rules of Practice for Trials Before the Patent Trial and
Appeal Board and Judicial Review of Patent Trial and Appeal Board
Decisions, 77 FR 48612, 48659-60 (Aug. 14, 2012) (noting that the
number of claims often impacts the complexity of the request and
increases the demands placed on the deciding officials in
administrative proceedings). Thus, the Office is adopting excess claims
fee amounts that are aimed to permit applicants to include excess
claims when necessary to obtain an appropriate scope of coverage for an
invention, while deterring applicants from routinely presenting a
copious number of claims merely for apparent tactical reasons.
In this final rule, the Office sets the 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 also increased 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 unambiguous claims will enable prompt conclusion of
application processing, because more succinct applications facilitate
faster examination with an expectation of fewer errors.
Correct Inventorship After First Action on the Merits (New):
Table 34--Correct Inventorship After First Action on the Merits Fee Changes
----------------------------------------------------------------------------------------------------------------
Current fees Final fees Dollar change Percent change
-----------------------------------------------------------------------
Fee description Large (small) Large (small) Large (small) Large (small)
[micro] entity [micro] entity [micro] entity [micro] entity
----------------------------------------------------------------------------------------------------------------
Correct Inventorship After First Action NEW $600 N/A N/A
on the Merits (NEW).................... ($300) (N/A) (N/A)
[$150] [N/A] [N/A]
----------------------------------------------------------------------------------------------------------------
It is necessary for the Office 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 35 U.S.C. 102 and 103,
as well as reconsider the possibility of double patenting.
In the NPRM, the Office proposed a $1,000 fee to correct
inventorship after the first action on the merits. In this final rule,
after carefully considering comments from the PPAC and the public, the
Office sets the fee to correct inventorship after the first action on
the merits at $600, 40 percent less than the $1,000 proposed in the
NPRM. The inventorship correction fee is set 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 also will help offset the costs incurred
by the Office when there is a change in inventorship.
Additionally, in the NPRM, the Office proposed that the correction
of inventorship fee be paid in all circumstances when inventors were
added or deleted, because requiring the fee only to add inventors would
encourage applicants to err in favor of naming too many persons as
inventors, which would complicate the examination process (e.g., it
could complicate double patenting searches). In this final rule, the
Office is adding an exception when inventors are deleted due to the
cancellation of claims. This final rule requires a fee to accompany a
request to correct or change the inventorship filed after an Office
action on the merits, unless the request is accompanied by a statement
that the request to correct or change the inventorship is due solely to
the cancelation of claims in the application.
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 action on the
merits) to avoid this fee. Otherwise, the Office will incur the costs
during examination related to the change in inventorship.
Derivation Proceeding:
Table 35--Derivation Proceeding Fee Changes
----------------------------------------------------------------------------------------------------------------
Current fees Final fees Dollar change Percent change
-----------------------------------------------------------------------
Fee description Large (small) Large (small) Large (small) Large (small)
[micro] entity [micro] entity [micro] entity [micro] entity
----------------------------------------------------------------------------------------------------------------
Derivation petition fee................. $400 $400 $0 0%
(N/A) (N/A) (N/A) (N/A)
[N/A] [N/A] [N/A] [N/A]
----------------------------------------------------------------------------------------------------------------
A derivation proceeding is a new trial proceeding conducted at the
PTAB 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
[[Page 4240]]
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.
In this final rule, the Office sets the derivation petition fee at
$400. The Office estimates the $400 petition fee will recover the
Office's cost to process a petition for derivation.
Assignments Submitted Electronically Fee (New):
Table 36--Fee Changes for Assignments Submitted Electronically
----------------------------------------------------------------------------------------------------------------
Current fees Final fees Dollar change Percent change
-----------------------------------------------------------------------
Fee description Large (small) Large (small) Large (small) Large (small)
[micro] entity [micro] entity [micro] entity [micro] entity
----------------------------------------------------------------------------------------------------------------
Assignments Submitted Electronically $40 $0 -$40 -100%
(NEW).................................. (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 that it receives, and the recording serves as
public notice of patent ownership.
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 foster innovation.
Therefore, more complete patent assignment records will produce a
number of benefits for the public and IP stakeholders. The public will
have a more comprehensive understanding of which entities hold and
maintain U.S. patent rights. Patenting inventors and companies will
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 2012, over 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 is setting two fees for
recording an assignment. When an assignment is submitted using the
Office's electronic system, the Office sets 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 sets the fee at the current
amount of $40. Providing patent prosecution options for applicants
benefits a majority of owners who typically record assignments. In
addition, the patent prosecution options for applicants 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 Changes (or Changes of Less Than Plus or Minus 5
Percent and 10 Dollars)
The Office sets all other categories of fees not discussed above at
existing fee rates or at slightly adjusted rates (i.e., less than plus
or minus 5 percent and 10 dollars) rounded to the nearest ten dollars
by applying standard arithmetic rules. The resulting 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
discipline fees, are already set at appropriate levels to achieve the
Office's goals expressed in this rulemaking. A listing of all fees that
are adjusted in this rule is included in the Table of Patent Fee
Changes available at http://www.uspto.gov/aia_implementation/fees.jsp#heading-1.
D. Overall Comparison of the Final Patent Fee Schedule to the Current
Fees
Overall, once effective, the total amount of fees under this final
rule 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 (23 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 (12
percent) and eventually begins increasing after a second RCE (5
percent) (see Tables 38 and 39). The staging of appeal fees in this
rule offers similar decreases in the total fees paid when filing a
notice of appeal. Under the final fee schedule, the total fees for both
filing an appeal and to obtain a basic patent decrease from the current
fee schedule (27 percent) (see Table 40). If the appeal is forwarded to
the PTAB for a decision after the Examiner's Answer, then the total
fees increase (17 percent) (see Table 40). Once an applicant has
obtained a basic patent,
[[Page 4241]]
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 (24 percent) (see Table 41). This
structure reflects the key policy considerations of fostering
innovation, facilitating effective administration of the patent system,
and offering patent prosecution options to applicants. Additional
details about each of these payment structures are outlined below. In
this section, the Office assumes, for the purpose of comparison between
the current and final fee schedule, that all fees are as of their
stated effective dates in this final rule. For example, comparisons
between the current and final issue and PGPub fees are based on the
final fees as they will become effective beginning on January 1, 2014.
Further, 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
from application filing (i.e., filing, search, examination,
publication, and issue) under the final 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 $2,070 to $960 (a decrease
of $1,110) more than offsets the increase in large entity filing,
search, and examination fees from $1,260 to $1,600 (an increase of
$340). The net effect is a $770 (or 23 percent) decrease in total fees
paid under the final fee structure when compared to the current fee
structure. This fosters innovation by reducing the cost to obtain a
basic patent.
Table 37--Comparison of Final Patent Fee Schedule to the Current Patent
Fees From Filing Through Issue
------------------------------------------------------------------------
Fee Current Final
------------------------------------------------------------------------
Filing, Search, and Examination..................... $1,260 $1,600
Pre-Grant Publication and Issue..................... 2,070 960
-------------------
Total............................................. 3,330 2,560
------------------------------------------------------------------------
When an application for a first RCE is submitted to complete
prosecution, the total fees from application 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 final fee schedule, including a first RCE, is a
$500 (or 12 percent) decrease in total fees paid under the final fee
structure when compared to the current fee structure, as shown in Table
38.
Table 38--Comparison of the Final Patent Fees to the Current Patent Fees
With One RCE
------------------------------------------------------------------------
Fee Current Final
------------------------------------------------------------------------
Filing, Search, and Examination..................... $1,260 $1,600
First RCE........................................... 930 1,200
Pre-Grant Publication and Issue..................... 2,070 960
-------------------
Total............................................. 4,260 3,760
------------------------------------------------------------------------
When adding a second RCE to prosecution, the total fees increase
slightly, by $270 (or 5 percent), as shown in Table 39.
Table 39--Comparison of the Final Patent Fees to the Current Patent Fees
With Two RCEs
------------------------------------------------------------------------
Fee Current Final
------------------------------------------------------------------------
Filing, Search, and Examination..................... $1,260 $1,600
First RCE........................................... 930 1,200
Second and subsequent RCE........................... 930 1,700
Pre-Grant Publication and Issue..................... 2,070 960
-------------------
Total............................................. 5,190 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 brief 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 $1,230 (or 27 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 $770
(or 17 percent) more than would be paid today for an appeal decision.
However, under this final rule, 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.
Table 40--Comparison of the Final Patent Fees and Current Patent Fees,
With an Appeal
------------------------------------------------------------------------
Fee Current Final
------------------------------------------------------------------------
Filing, Search, and Examination..................... $1,260 $1,600
Notice of Appeal and Filing a Brief................. 1,260 800
Pre-Grant Publication and Issue..................... 2,070 960
-------------------
Subtotal for Fees Paid Before Examiner's Answer... 4,590 3,360
Appeal Forwarding Fee............................... NEW 2,000
-------------------
Subtotal for Fees if Appeal is Forwarded to Board 4,590 5,360
for Decision.....................................
------------------------------------------------------------------------
3. Maintenance Fees Increase
When a patent holder begins maintaining an issued patent, he or she
will pay $320 (7 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 $380
(5 percent) more than is paid today under the current fee schedule.
When a patent is maintained to full term, a patent holder will pay
$2,970 (24 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 Final Patent Fee Schedules to the Current
Fees, Life of Patent
------------------------------------------------------------------------
Fee Current Final
------------------------------------------------------------------------
Filing, Search, and Examination..................... $1,260 $1,600
Pre-Grant Publication and Issue..................... 2,070 960
-------------------
Total Through Issue............................... 3,330 2,560
First Stage Maintenance--3.5 years.................. 1,150 1,600
-------------------
Cumulative Subtotal............................... 4,480 4,160
Second Stage Maintenance--7.5 years................. 2,900 3,600
-------------------
Cumulative Subtotal............................... 7,380 7,760
[[Page 4242]]
Third Stage Maintenance--11.5 years................. 4,810 7,400
-------------------
Total Fees for Life of Patent................... 12,190 15,160
------------------------------------------------------------------------
VI. Discussion of Comments
A. Patent Public Advisory Committee Fee Setting Report
Consistent with section 10(d) of the Leahy-Smith America Invents
Act, the PPAC submitted a written report setting forth in detail the
comments, advice, and recommendation of the committee regarding the
proposed fees published in the NPRM on September 24, 2012. The report
is available at http://www.uspto.gov/aia_implementation/fees.jsp#heading-1. The Office considered the PPAC's comments, advice,
and recommendations on fees proposed in the NPRM before setting or
adjusting fees in this final rule, as further discussed below.
General Fee Setting Considerations
General Fee Setting Approach
PPAC Comment 1: The PPAC commented overall that the fees included
in the NPRM represent an improvement over the February 2012 Proposal.
The PPAC also endorsed an increase in fees above the level set by the
15 percent surcharge effective in 2011, recognizing that the current
level of receipts are insufficient to allow the Office to improve
patent operations, provide the service patent applicants deserve, and
make critical infrastructure improvements. The PPAC stated that it
endorses the fees in general, though it also believes some fees are
higher than expected for an initial fee setting effort.
Response: The USPTO appreciates the PPAC's endorsement of the
Office's plan to set fees to meet its aggregate costs, including costs
for implementing key strategic initiatives, such as to decrease patent
application pendency and reduce the patent application backlog, to
improve the quality of patent examination, and to update patent
information technology systems that benefit both the Office and
applicants. It is important for the Office to reduce the patent
application backlog so that the Office can maintain an optimal patent
application inventory that provides applicants with 10 months first
action pendency and 20 months total pendency. These pendency goals were
developed in consultation with patent stakeholders when the Office
established the Strategic Plan. To meet its aggregate costs, the Office
requires additional funds (2 percent increase in total aggregate
revenue) beyond the amount provided by the 15 percent surcharge. With
the increased fees, the Office will not only reduce the amount of time
it takes to examine a patent application, but also create a sustainable
funding model for the Office. Prior to AIA section 10 fee setting
authority, the Office was authorized to adjust certain statutory fees
only to reflect changes in the CPI for All Urban Consumers, and that
limited authority did not allow the USPTO to recover increased
processing costs or adjust to changes in demand for services related to
those fees. The Office responds to the PPAC's comments on the amounts
of particular fees in the sections below.
Behavioral Incentives
PPAC Comment 2: The PPAC advised that while some use of fees to
encourage or discourage behavior may be appropriate, significant use of
this ability to set fees at high levels to discourage actions is not
recommended because it is not clear that the USPTO will always take
into consideration the factors driving applicant behavior, and because
those factors may be at cross-purposes with particular desires of the
USPTO. The PPAC also commented that fee structures that depart from
strict cost recovery can engender either beneficial or perverse
incentives to all actors within our patent system.
Response: The Office fully and carefully considered factors
incentivizing both applicant and Office behavior in setting the final
patent fees. In doing so, the Office conducted considerable outreach to
stakeholders, and made numerous changes from its February 2012 proposal
as a result of input from stakeholders. The Office carefully explained
its rationale and motivation in the NPRM for each fee that the Office
proposed to change by more than 5 percent and more than ten dollars.
Additionally, as further explained in the RIA, the Office
considered and rejected a cost recovery fee structure because the
Office determined that a strict, fee-by-fee based cost recovery fee
structure would fail to foster innovation in accordance with the
Office's fee setting strategy. The Office found that using a strict
cost recovery model would greatly increase barriers to entry into the
patent system because filing, search, and examination fees would
increase significantly, resulting in a loss of private patent value due
to a decrease in the number of patent applications filed.
Simultaneously, maintenance fees would be set significantly lower and
patent holders would maintain their patents longer, reducing incentives
to release patents of minimal value into the public domain for others
to use for follow-on invention. The Office determined that it will
better effectuate its mission of fostering innovation by setting fees
to recover costs in the aggregate while incentivizing compact patent
prosecution. Where the Office deviated from cost recovery for a
particular fee, it has fully considered the behavioral effects of such
departures.
PPAC Comment 3: The PPAC commented that the Office should ensure
that applicants are not saddled with the cost of internal operational
inefficiencies, as that may reduce the Office's incentives to improve
its efficiency.
Response: The Office created the final fee structure in order to
set fees at optimal levels to improve the Office's services and to
enhance operational efficiency. The Office also continuously reviews
its own internal processes and behaviors to improve operational
inefficiencies. These regular reviews of internal operations and
behaviors were institutionalized as a priority. For example, the Office
established a Patent Process Reengineering Team (Team) in June 2010 to
review and evaluate pre-examination, examination, and post-examination
processes. The Team delivered redesigned and streamlined processes--
with recommendations for improvements--to USPTO senior leadership and
the Patents End-To-End (PE2E) software engineering team. Specifically,
the Team produced more than 250 individual process improvement
recommendations in the areas of: Increased electronic application
filing and management, processing standardization and consistency (with
both domestic and international standards), accurate and easy
measurement of core metrics, examination quality, customer
satisfaction, and reduced risk exposure. Where the best tool for
improvement included information technology, the Office incorporated
the recommendations for improved processes into the PE2E program
development plan.
The Office already implemented many of the Team's recommendations.
For example, the Office gained efficiency in the terminal disclaimer
process, resulting in pendency reduction for over 40,000 applications
by an average of 30 days. Also, the USPTO improved internal operations
and Office behavior through the First
[[Page 4243]]
Action Interview Pilot Program, which benefits applicants by advancing
the prosecution of applications and enhancing the interactions between
the applicant and examiner early in the process to facilitate a more
compact prosecution.
The Office will continue to evaluate all AIA and patent operational
procedures and make efficiency improvements accordingly. In addition,
the AIA requires the Office to consult with the PPAC annually to
determine if any fees set using section 10(a) should be reduced. After
such consultation, the Office may reduce fees. See AIA section 10(c).
In the future, the Office will work with the PPAC to determine if any
improvements in operational efficiency warrant a reduction in fees set
or adjusted in this rulemaking.
Fee Setting Elasticity
PPAC Comment 4: The PPAC commented that the proposed system of
slightly raising filing, search, and examination fees while lowering
the issue and publication fees, is sensible. The PPAC also comment that
the balance of fees distributed between the front-end and back-end
continues to be preserved so that the reduced front-end fees encourage
applicants to enter the patent system. The PPAC nevertheless advised
that raising pre-issue fees like filing, search, and examination may
still (at the margins) discourage some otherwise meritorious patent
filings. Based on its discussions with applicants, including large
corporations and small and start-up entities, the PPAC anticipated some
decrease in the demand for patent filings. The PPAC advised that
increases in fees will strain some patenting budgets and commented that
it continues to be concerned that fee changes will have a greater
impact on filing and payment of maintenance fees than projected. The
PPAC recognized that generating adequate funds is essential, yet
advised that it must be balanced with the public policy of ensuring
access to intellectual property coverage.
Response: The Office appreciates the PPAC's support for this
overall structure for fees. Although the Office shares the PPAC's
concern about any impact of increased filing, search, and examination
fees on the number of prospective patent applications filed, the
Office's elasticity analysis indicates that the potential impact is
small and that filings will likely continue to grow over the next five
years, even if at a somewhat lesser rate than if there were no fee
increases. Further, to the extent there is some impact on filings, the
Office believes that the benefits of the fee changes outweigh the
temporary cost of fewer patent filings. The additional revenue
generated from the increase in fees will provide sufficient resources
for the Office to reduce the backlog and decrease pendency. The
decrease in pendency is estimated to increase private patent value by
shortening the time for an invention to be commercialized or otherwise
obtain value from the exclusive right for the technology.
The Office also notes that filing, search, and examination fees are
increased, and issue and publication fees are decreased in this final
rule. As explained in detail in this rulemaking and the RIA, the
filing, search, examination, publication and issue fees, once effective
and taken together, are reduced by at least 23 percent for all
successful applicants (with a much greater reduction for small and
micro entity applicants), and this reduction may allow applicants on
limited budgets to file and prosecute more patent applications under
the new fee structure. Therefore, an applicant who expects a high
likelihood of an application being issued may be more likely to file a
patent application under the new fee schedule.
As discussed above, based on economic indicators, the Office
expects a 5.0 percent annual growth rate in filings for FY 2013 through
FY 2017. Based on elasticity computations, the Office conservatively
believes that the growth rate in application filings may be somewhat
lower (compared to the rate of growth in the absence of a fee increase)
in the first few years under this final rule. Along with this
rulemaking and the RIA, the Office provided an estimate of elasticity
to address whether and how applicants might be sensitive to price (fee)
changes, and included an estimate of the impact on application filing
levels. See ``USPTO Section 10 Fee Setting--Description of Elasticity
Estimates'' available at http://www.uspto.gov/aia_implementation/fees.jsp#heading-1. The Office conservatively estimated that,
initially, the fees under the final rule would cause a small decrease
in the demand for patenting activity due to the fee adjustments (a 1.3
percent decrease in FY 2013, a 2.7 percent decrease in FY 2014, and a
4.0 percent decrease in FY 2015-FY 2017). Even with these short term
decreases at the margin, the Office still expects to receive an
increasing number of new (serialized) application filings during later
years. The Office has projected that it will take in sufficient
revenue, despite the elasticity of some fees, to recover aggregate
costs under the final fee schedule.
PPAC Comment 5: In reviewing the Office's experience with ``Track
1,'' the PPAC noted that fewer applicants participated in that program
than originally anticipated. The PPAC cautioned that the Track 1
experience seems relevant to the new programs under the AIA, and that
the Office's elasticity assumptions may be overly optimistic.
Response: Track 1 created a new and optional expedited examination
service for certain applicants who were willing to pay an extra fee.
The Office considered the effects of the Track 1 fee levels on
applicants' use of that service in its analysis of the fees in this
rulemaking. The Track 1 program experience is only of limited
usefulness when considering elasticity of fees in this final rule.
Unlike core application services, the Track 1 service is optional for
applicants. The Track 1 fee level was set by Section 11(h) of the AIA
and implemented by a rule that reflected that statutory provision.
Ordinarily for elasticity estimates about a service, there would need
to be some change in price and some observation about demand in the
face of that price change. With only one data point so far (the initial
fee set by the AIA), it is difficult to extrapolate meaningful
elasticity estimates from the Track 1 program to date.
Operating Reserve
PPAC Comment 6: The PPAC agreed that the creation of an operating
reserve is a sound business practice to allow for continuity of service
and the ability to complete long-term plans more effectively and
efficiently. The PPAC also commented that three months seems to be a
good size for the reserve. The PPAC, nevertheless, expressed concern
that access to spend all generated funds, as a part of the annual
appropriations process, is not assured under the AIA. The PPAC
recommended that the Office continue to grow the operating reserve
gradually, while also allowing for a longer period to monitor
Congressional support.
Response: The Office agrees with the PPAC that having an operating
reserve is a sound and needed business practice. The Government
Accountability Office's (GAO's) review of the USPTO's fee setting
process (reported to the Chairman of the Committee on Appropriations)
also substantiated the need for maintaining an operating reserve. The
GAO found that it ``is consistent with our previous reporting that an
operating reserve is important for fee-funded programs to match fee
collections to average program costs over time and because
[[Page 4244]]
program costs do not necessarily decline with a drop in fee
collections.'' (See New User Fee Design Presents Opportunities to Build
on Transparency and Communication Success, GAO-12-514R (Apr. 25, 2012)
available at http://www.gao.gov/products/GAO-12-514R.) An operating
reserve promotes confidence in the United States IP system by providing
a mechanism to absorb and respond to temporary changes in the economy
and USPTO's operating and financial environments. Without an operating
reserve, agencies can be unnecessarily thrown into short-term cash flow
stress like that which the USPTO experienced in FY 2009 due to the
economic recession and in FY 2010 due to the delay in the authorization
of spending authority for the fees collected from patent applicants
during the rebound from FY 2009.
An operating reserve consists of funds already available for the
USPTO to spend. Congress has already appropriated the money in USPTO's
operating reserve, and therefore no additional appropriation is
required for USPTO to use the operating reserve. Thus, the operating
reserve is available to ameliorate the short-term problem of under-
collection in a given year.
The Office also agrees with the PPAC that it is prudent to grow
this three-month operating reserve in a gradual manner. The fee
structure in this final rule seeks to achieve that prudent growth by
extending the period of growth by another year (to FY 2018), as
compared to the timeframe proposed in the September NPRM (FY 2017).
This extension of the time period for growing the operating reserve is
the result of reducing fee amounts in the final rule in response to
comments from the PPAC and the public and is consistent with the number
of patent examiners the Office plans to hire in FY 2013 to achieve a
``soft landing'' with respect to the patent application inventory and
workforce level as discussed further in the response to PPAC Comment 7.
Finally, as to whether the USPTO will be able to spend all funds
collected in excess of the USPTO's specified annual overall
appropriation amount, Section 22 of the AIA provides that such
collections are deposited in a new Patent and Trademark Fee Reserve
Fund (created by the AIA) that is available to the USPTO subject to
procedures provided in appropriations acts. In any given year, if the
USPTO collects fees beyond the specified annual overall appropriated
amount, those fees will be deposited into the Patent and Trademark Fee
Reserve Fund. In fiscal year 2012 (the first full year after AIA), the
USPTO appropriations bill included procedures permitting it to spend
fees deposited in the Patent and Trademark Fee Reserve Fund. The Office
has no reason to believe the same will not hold true for fiscal year
2013 and beyond. The Office will continue to work closely with Congress
to ensure full access to fees paid by patent applicants and patentees,
consistent with the AIA.
Pendency Goals
PPAC Comment 7: The PPAC commented that it supports decreasing
pendency, and stated that while the proposed decreased pendency times
are laudable, there is nothing magical about the pendency timeframes
(i.e., 10 months first action pendency and 20 months total pendency).
For future years, the PPAC advised that it will be important to reach a
properly balanced inventory level of patent applications pending at the
Office that is appropriate for the workforce level. The inventory
should be low enough to achieve desired decreased pendency and high
enough to accommodate potential fluctuations in application filings,
retention of examiners, and changes in RCE filings stemming from the
programs being instituted by the USPTO. The PPAC refers to this desired
end state as a ``soft landing.''
Response: Optimizing patent quality and timely issuance of patents
provides greater legal certainty. The longer it takes to review a
patent application, the longer it takes for the benefit of the IP
protection to accrue. Failure to complete the examination in a timely
manner creates uncertainty regarding the scope and timing of any IP
rights. This not only impacts patent applicants, but it also has a
negative impact on other innovators and businesses in that field that
are awaiting the outcome of the pending application.
As the IP environment becomes increasingly global, applicants are
increasing their foreign patent application filings in multiple
countries. Obtaining a first action about 10 months from filing
provides patent applicants with important information about the status
of their application so that they can determine whether to file in
other countries before the expiration of the 12-month date to maintain
priority. This leads to more strategic patent application filings and
reduces user resources spent on unnecessary filings in patent offices
worldwide.
The USPTO worked closely with stakeholders and responded to their
concerns in establishing the targets of 10 months first action pendency
and 20 months total pendency in the Strategic Plan. The PPAC gave its
support to these pendency timeframes in their 2009 Annual Report, which
commended then Secretary of Commerce Gary Locke and Under Secretary and
Director David Kappos for their efforts to reduce first action pendency
to ten months. PPAC likewise indicated in its report that the PPAC
would like to work with the Office and the innovation community to
reduce overall pendency to twenty months as the ultimate goal with
reasonable intermediate targets and timelines.
The Office has a long-term plan to reduce the patent application
backlog to a steady-state of about 350,000 unexamined applications, and
to decrease first action patent application pendency to 10 months and
total patent application pendency to 20 months. The Office agrees with
the PPAC regarding the need for a ``soft landing'' when planning for
these goals in the out years. The Office is very aware that as the
patent application backlog and pendency drop, it is important to ensure
that the Office reaches the right balance of application inventory and
staff size. The Office has considered the PPAC's comment and
reevaluated its long-term plan, recognizing the substantial progress
and efficiencies made to date and taking into account historically low
attrition rates, higher production levels, and the need to ensure that
continued backlog progress does not result in inventory levels
decreasing to a point where there is inadequate work on hand for some
employees. Thus, as an initial measure, the Office is reducing the
number of patent examiners it plans to hire in FY 2013 from 1,500 to
1,000. This change substantially reduces the risk of excessively low
inventory, yet also increases the possibility that it will take longer
to reach the ideal inventory and pendency levels. Under this approach,
patent production modeling indicates conservatively that the reduction
in hiring may cause ideal inventory levels to occur in FY 2016 and
patent application pendency targets for first action and total by FY
2016 and FY 2017, respectively. In response to comments and in an
abundance of caution, the Office is thus changing the timeframe in
which it estimates it will reach its ideal patent application inventory
target to FY 2016, first action patent application pendency target to
FY 2016, and the total patent application pendency target to FY 2017.
The Office recognizes that this adjustment keeps the Office on track
for meeting its goals while further avoiding any risk of excessively
low inventory.
PPAC Comment 8: The PPAC noted that a pendency timeframe of 10
months to first action and 20 months total pendency may result in
applicants and
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examiners not being aware of some prior art at the time of the first
office action on the merits. As a result, the PPAC stated that the
Office might incorrectly issue a patent.
Response: Prior to 2000, the Office did not routinely publish
pending patent applications, and instead only publicly disclosed
pending applications under special circumstances. Since 2000, the
Office has generally published applications 18 months from their
earliest effective filing date. See 35 U.S.C. 122(b).
As noted in the response to the PPAC Comment 7, the first action
pendency and total pendency goals at 10 months and 20 months,
respectively, were developed in consultation with patent stakeholders
when the Office established the Strategic Plan. The Office appreciates
that a pendency goal of 10 months to first action may result in some
prior art (in the form of other applications) being published after
issuing the first Office action in a particular application. However,
prior to the adoption of 18-month publication in 2000, the Office
examined applications knowing that the full range of potential prior
art might not yet be available. And with the adoption of 18-month
publication, the only way the Office could avoid examining an
application before all applicable prior art had been published would be
to delay examination until after eighteen months from the priority date
of any potentially relevant application and/or revise 35 U.S.C. 122(b)
to eliminate the exceptions to 18-month publication. These are not
feasible options. Moreover, the risk of missing relevant prior art is
lessened because many applications are published in fewer than 18
months because the 18-month publication deadline is computed from the
earliest filed application, and many applications are outgrowths of an
earlier filed application. Because there is general support from the
Office's stakeholders on both decreasing pendency generally and the 10
month goal specifically, notwithstanding a limited risk of some prior
art not being known publicly, the Office has thus decided to maintain
10 months as the targeted date of a first Office action.
Individual Fee Categories
Prioritized Examination
PPAC Comment 9: The PPAC commented that the Office's efforts to
make the Track 1 option more accessible to applicants by lowering the
fee is an encouraging step, but advises that the Office should closely
monitor demand for Track 1 applications and offer additional downward
fee adjustments to determine the optimal fee rate and improve access to
this service.
Response: The Office will continue to monitor the demand for the
Track 1 prioritized examination program to see if the demand increases
with the decrease in the fee. At the same time, the Office will
continue to monitor the pendency associated with the traditional
examination path to ensure that any potential changes in the demand for
the Track 1 prioritized examination program do not impact the pendency
for the traditional examination path. The fee for the prioritized
examination program is intended to closely recover the cost of the
program so as not to impact the level of examination resources of the
traditional ``track.''
Request for Continued Examination (RCE)
PPAC Comment 10: The PPAC expressed a variety of operational
concerns about the way the Office perceives and handles RCEs as part of
the patent prosecution process. The PPAC advised that: (i) There are
incentives on both sides to file RCEs (applicants continue to need to
achieve allowance, examiners get further (albeit reduced) counts for
RCE prosecution, and the pendency of RCEs is not included in the
traditional pendency numbers); and (ii) the increasing backlog of RCEs
generates further patent term adjustments for a large number of
applicants. The PPAC recommended that the Office consider these factors
as it considers any proposed increase in RCE fees. These concerns also
underlie the PPAC's comment that RCE fees set too high may
disincentivize the Office to improve its efficiency. The PPAC
recommended that a small increase in the fee for an RCE might be
appropriate, but the fee should align more closely with the Office's
associated costs and the fee should be less than the fees for new or
continuing applications. The PPAC further recommended that the higher
fee for second and subsequent RCEs should be reduced because these RCEs
are easier and cheaper to examine and any number of continuations may
be filed at the same cost per continuation. The PPAC finally
recommended that the USPTO should continue to find ways to reduce
applicants' need for RCEs, rather than increase fees for filing an RCE.
Response: The Office appreciates the PPAC's comments about the
operational aspects of RCEs, and looks forward to continuing to work
with the PPAC on potential operational improvements. In setting the
proposed fee levels, the Office determined that approximately 70
percent of applicants that file an RCE file only one RCE. The first RCE
fee ($1,200 for large entities) was set at a level lower than both the
average historic cost of performing the services associated with an RCE
($1,882) and the fee for filing a continuing application ($1,600 for
large entities), as well as much lower than the average historic cost
of services associated with examining a new patent application
($3,713). Because the Office set the fee for the first RCE below the
cost to process it, the Office must recoup that cost elsewhere. Since
most applicants resolve their issues with the first RCE, the Office
determined that applicants that file more than one RCE are using the
patent system more extensively than those who file zero or only one
RCE. Therefore, the Office determined that the cost to review
applications with two or more RCEs should not be subsidized with other
back-end fees to the same extent as applications with a first RCE,
newly filed applications, or other continuing applications.
Nevertheless, the fee set for the second and subsequent RCE ($1,700 for
large entities) is still lower than the average historic cost of the
Office processing an RCE ($1,882), thus retaining the Office's
incentives to work toward additional examination efficiencies,
consistent with the PPAC's comments.
Regarding the relationship between RCEs and continuing
applications, the Office did not include a second, higher fee for
second and subsequent continuing applications because RCEs and
continuing applications are not completely interchangeable. The Office
increased the fee for second and subsequent RCEs ($1,700 for large
entities) to recover the cost associated with processing more than one
RCE and to keep the fee sufficiently close to the filing, search, and
examination fee for a continuing application ($1,600 for large
entities). The Office determined that the fee differential between a
continuing application and a second and subsequent RCE ($100) would
likely not be a significant factor in an applicant's choice between a
second or subsequent RCE and a continuing application, and instead the
differing characteristics in the two types of continuing applications
would be the overriding factor in whether the applicant files an RCE or
a continuing application. Moreover, RCEs are not subject to excess
claims or excess page fees. Thus, RCEs may cost less than continuations
in many instances.
While an RCE may be less costly to examine than a new continuing
application in certain situations, the
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patent fee structure is designed such that the costs associated with
the processing and examination of a new or continuing application are
also recovered by issue and maintenance fees, allowing for lower than
cost recovery continuing application fee amounts. The Office continued
this subsidization design with the fee for a first RCE. In fact, the
fee for a first RCE ($1,200 for large entities) is set at 75 percent
($1,200 divided by $1,600) of the total fees for filing, search, and
examination set herein. This fee relationship is the same as exists in
the current fee structure because an RCE fee is 74 percent of the total
fees for filing, search, and examination ($930 divided by $1,260). To
avoid charging higher issue and maintenance fees to offset the cost of
processing second and subsequent RCEs, the fees for those RCEs are
instead set closer to cost recovery. Increasing the issue and/or
maintenance fees to offset lower than cost recovery second and
subsequent RCEs would cause the majority of filers (who do not seek
more than one RCE) to subsidize services provided to the small minority
of filers who seek two or more RCEs. The Office does not believe such
subsidization would be an optimal result.
The Office understands the PPAC's operational point that a higher
inventory and longer pendency of RCEs could generate additional PTA.
The Office notes that the RCE fees set in this rule will generate the
revenue necessary to reduce inventory and pendency levels overall so as
to potentially reduce the amount of PTA earned.
Regarding the variety of operational concerns that centered on
examination practices associated with second office actions and final
rejections, second office actions in current practice are not
automatically made final. In an instance where the examiner introduces
a new ground of rejection that is neither necessitated by applicant's
amendment of the claims nor based on information submitted in an
information disclosure statement filed during the period set forth in
37 CFR 1.97(c) with the fee set forth in 37 CFR 1.17(p), another non
final action is appropriate. If the applicant receives a final action
that they believe to be premature, the question should be raised to the
examiner and/or supervisory patent examiner (SPE) while the application
is still pending before the primary examiner. The issue of whether a
final rejection is premature is not sufficient grounds for appeal, or
basis of complaint before the Patent Trial and Appeal Board. It is
rather reviewable by petition under 37 CFR 1.181. Additionally, the
applicant has the option to request an interview with the examiner,
consistent with MPEP 713, and to request a review of identified matters
on appeal in an appeal conference prior to the filing of an appeal
brief.
Regarding pendency calculations, the Office presents multiple
application pendency numbers on the Patent Dashboard in the USPTO Data
Visualization Center at http://www.uspto.gov/dashboards/patents/main.dashxml. There, the Office publishes traditional total pendency
both with and without RCEs, as well as the pendency for RCEs alone. The
Office also publishes the backlog for RCEs. The Office presents data on
the growth in RCE filings, the inventory of RCEs, and the pendency
associated with RCEs. The USPTO is continuing efforts to reduce the
number of situations in which applicants might be required to file RCEs
to address the existing backlog of pending unexamined RCEs. The USPTO
initiated two new pilot programs--the AFCP and the QPIDS Pilots--as a
means to reduce RCE filings (see http://www.uspto.gov/patents/init_events/index.jsp). While it is still too early to predict the
effectiveness of these programs, short-term analysis has shown that
each pilot is already having a positive impact on reducing the need to
file a RCE.
In addition to these on-going efforts, the USPTO is continuing
training efforts to emphasize compact prosecution practices such as
interview training. The USPTO is also collaborating with the PPAC on an
RCE outreach effort. The objective of this initiative is to identify
reasons for filing RCEs, identify practices for avoiding unnecessary
RCEs, and explore new programs or changes in current programs that
could reduce the need for RCEs. As a part of this effort, the Office
recently issued a request for comments on RCE practice in the Federal
Register (see 77 FR 72830 (Dec. 6, 2012)). This multi-step approach to
address stakeholder concerns with respect to RCE practice is directed
at reducing patent application pendency, including the impact of RCEs
on such pendency.
Appeals
PPAC Comment 11: The PPAC commented that the Office's elimination
of the fee for the submission of a brief is a positive step forward.
The PPAC otherwise commented that appeal fees in general are too high
given that some applicants must file an appeal due to examination
problems. The PPAC also commented that a Notice of Appeal is frequently
utilized as an extension of time and that the Office should set the fee
to recognize this usage. The PPAC also commented that in some instances
applicants are forced to pay extensions of time or file a notice of
appeal due to slow Office treatment of an after final submission. The
PPAC recommended lowering the Notice of Appeal fee to around its
current post-surcharge amount (for example $750), and charging the
increased amount for forwarding the brief to the Board.
Response: The Office appreciates the PPAC's support for eliminating
the fee for submitting an appeal brief. Also, the Office is
implementing the PPAC's recommendation for lowering the Notice of
Appeal fee in this final rule. The Office is lowering the fee for a
Notice of Appeal to $800 (large entity) from the $1,000 (large entity)
proposed in the NPRM and the Office will leave the fee for forwarding
an appeal to the PTAB at the originally proposed $2,000 (large entity).
Given the high cost to the Office of the appeals process, the fee
adjustments are necessary to decrease the gap between cost of the
appeal service and fee in order to improve the financial sustainability
of the Office. As appeals are sometimes necessary due to differences of
opinion between an applicant and the examiner, the Office has coupled
the higher fees with a new staged fee structure to ease the cost impact
on applicants when prosecution is reopened following submission of the
appeal brief. The Office estimates that about two-thirds of applicants
who appeal final rejections will pay only the $800 (large entity)
notice of appeal fee, which is less than would be paid in the same
situation under the current fee structure ($1,260 for large entities).
The Office likewise estimates that only one-third of applicants who
appeal final rejections will pay the additional $2,000 appeal
forwarding fee, which, in total with the notice of appeal fees ($800
plus $2,000 equals $2,800), is 43 percent less than the average
historical cost of providing appeal services ($4,922). The Office
recognizes that total fees to receive an appeal decision from the PTAB
will more than double. However, the Office estimates that less than 5
percent of applicants who receive final rejections will be paying both
the notice of appeal and the appeal forwarding fee.
Regarding appeals being filed due to examination problems, in the
appeals decided on their merits by the PTAB, over 65 percent result in
affirmance of at least some of the rejected claims (see http://www.uspto.gov/ip/boards/bpai/stats/receipts/fy2012_sep_e.jsp). This
data demonstrates that the PTAB is affirming a larger percentage of
rejected claims than it reverses. The Office
[[Page 4247]]
believes that the affirmance rate would be much lower if there were
significant problems with the examination process.
Likewise, Office data shows there is not a large problem with the
timely treatment of an after final submission. During FY 2012, after
final amendments were acted upon by the Office in an average of 8.8
days, and only 4.6 percent took over four weeks to be addressed. In
fact, 60 percent of after final amendments were addressed within one
week. Also, if an applicant files a response to a final rejection
within two months of the date of the final rejection, the shortened
statutory period will expire at three months from the date of the final
rejection or on the date the advisory action is mailed, whichever is
later, thus minimizing the need for any extensions.
PPAC Comment 12: The PPAC recommended that the Office enhance its
provisions for resolution of problems in the examination of
applications. For example, the PPAC recommended that the Office permit
real-time applicant participation in pre-appeal brief conferences or a
more robust ombudsman or SPE review of cases.
Response: The internal processes for conducting both pre-appeal and
appeal conferences are undergoing an in-depth internal review. The
Office is currently evaluating process improvement recommendations. In
the meantime, the current process addresses some of the comments raised
by the PPAC. For example, a Technology Center-designated conferee, a
SPE, and the examiner participate in pre-appeal or appeal conferences
to review the applicant's remarks and the examiner's rejections. In
addition, when the Patents Ombudsman Program receives an inquiry from
an applicant/attorney/agent regarding a legitimate problem in the
prosecution of an application, an Ombudsman Representative in the
Technology Center (TC) handling that application will request that the
SPE review the application with particular attention on the issue
raised. As appropriate, a Quality Assurance Specialist (QAS) in that TC
also might get involved at the request of the SPE. Once the SPE has
reviewed the application, he/she will close the loop directly with the
applicant/attorney/agent who initiated the inquiry.
Ex Parte Reexamination
PPAC Comment 13: The PPAC noted that the fee for an ex parte
reexamination increased significantly, from $2,520 to $17,750, and was
proposed to be reduced to $15,000 in the NRPM. The PPAC questioned why
the Office did not see the disparity between costs and fees for ex
parte reexamination earlier, and work with Congress to correct the
disparity.
Response: The ex parte reexamination fees were adjusted on a cost
recovery basis in the supplemental examination final rule using
authority in 35 U.S.C. 41(d) because fees for this new AIA service were
required to be in place one year from the AIA's enactment (September
16, 2012), and because the Office would not finish with the section 10
rulemaking by that date. (See Changes to Implement the Supplemental
Examination Provisions of the Leahy-Smith America Invents Act and to
Revise Reexamination Fees, 77 FR at 48831 and 48851). Given that
supplemental examination and ex parte reexamination are such closely
related services, the Office elected to adjust the fee for filing a
request for ex parte reexamination and to set a fee for petitions filed
in ex parte and inter partes reexamination proceedings to more
accurately reflect the cost of these processes when it set the fees for
supplemental examination. The Office has been aware of the disparity
between its costs for conducting ex parte reexamination and the former
ex parte reexamination fee for a number of years. The Office, however,
wanted to ensure that this disparity was not unique to one or a few
fiscal years before moving to adjust reexamination fees. Accordingly,
the Office did not seek to adjust the ex parte reexamination fees
earlier.
PPAC Comment 14: The PPAC questioned why ex parte reexamination has
a high cost when it is a procedure with minimal processes (for example,
it involves no testimony and no interaction with third parties). The
PPAC noted that the cost [fee] for reviewing the petition ($1,800) is
higher than the proposed fee for the entire initial examination
($1,600) and commented that the costs related to all aspects of the ex
parte reexamination process seem high. The PPAC recommended that there
should be ways to provide for more straight forward decision-making and
streamline the review process to lower costs.
Response: Petitions in reexamination proceedings generally involve
issues of greater complexity and greater number of issues than other
patent-related petitions. See Changes to Implement the Supplemental
Examination Provisions of the Leahy-Smith America Invents Act and to
Revise Reexamination Fees, 77 FR at 48837. As a result, these
proceedings are more expensive on average for the Office to administer.
Nonetheless, after updating the patent operating plans and
corresponding aggregate costs in response to public comments, the
Office determined it could reduce the ex parte reexamination fee while
continuing to ensure that the aggregate revenue equals aggregate cost.
In this final rule, the Office is reducing the fee for ex parte
reexamination (proposed at a total of $15,000 for large entities) to
$12,000 (large entity), which is 32 percent below the Office's cost for
these services. The Office also notes that this rulemaking applies
small and micro entity reductions to the ex parte reexamination fee,
resulting in discounts of 50 percent for small entities and 75 percent
for micro entity patentees.
PPAC Comment 15: The PPAC advised that the Office should construct
a more streamlined, pay-as-you-go approach to reexamination. The PPAC
recommended that the Office break the ex parte reexamination fee into
two parts: (1) Petition; and (2) reexamination. If nonpayment for
reexamination following the grant of a petition is a concern, the PPAC
recommended several methods to ensure that the Office receives payment.
Response: The ex parte reexamination fee is in essence a two-part
fee: (1) Part of the ex parte reexamination fee helps to recover the
costs for analyzing the request and drafting the decision whether to
grant or deny ex parte reexamination; this is based on the fee set
forth in 37 CFR 1.20(c)(7) for a denied request for ex parte
reexamination ($3,600, $1,800 for a small entity, and $900 for a micro
entity patentee); and (2) the remaining part of the fee helps to
recover the costs for conducting ex parte reexamination if the request
for ex parte reexamination is granted; this is based on the ex parte
reexamination fee set forth in 37 CFR 1.20(c)(1) less the fee set forth
in 37 CFR 1.20(c)(7) for a denied request for ex parte reexamination
($12,000 less $3,600 or $8,400 for a large entity; $6,000 less $1,800
or $4,200 for a small entity; and $3,000 less $900 or $2,100 for a
micro entity patentee). Rather than adopt a pay-as-you-go approach in
ex parte reexamination, the Office adopted a process of charging the
total fee up front and then refunding the balance of the fee if the
request for ex parte reexamination is denied. This approach avoids the
delays and complications of collecting a separate fee for conducting ex
parte reexamination if the request for ex parte reexamination is
granted. While PPAC's other payment collection suggestions may be
valid, the Office's historical approach of collecting the full fee in
advance, and issuing refunds as needed, completely avoids the delays
and risks related to nonpayment of fees following the grant of a
request for ex
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parte reexamination and helps ensure efficient processing of an ex
parte reexamination.
Supplemental Examination
PPAC Comment 16: The PPAC commented that the fees for supplemental
examinations are too high. The PPAC questioned the Office's underlying
cost assumptions, suggesting that the basis of the estimate should have
been limited to patentee-initiated reexaminations, not all ex parte
reexaminations. The PPAC recommended that the Office publish estimates
of historic costs for patentee-initiated reexaminations for comparison
purposes.
Response: The supplemental examination fees were set on a cost
recovery basis in the final rule to implement supplemental examination.
See Changes to Implement the Supplemental Examination Provisions of the
Leahy-Smith America Invents Act and to Revise Reexamination Fees, 77 FR
48828 (Aug. 14, 2012). The supplemental examination final rule adopted
fees for supplemental examination as follows: (1) $5,140 for processing
and treating a request for supplemental examination; (2) $16,120 for
conducting ex parte reexamination ordered as a result of a supplemental
examination; (3) $170 for each non-patent document between 21 and 50
pages in length; and (4) $280 for each additional 50-page increment or
a fraction thereof, per document. See id. at 48831 and 48851. The cost
calculations relating to the supplemental examination final rule were
published by the Office (``Cost Calculations for Supplemental
Examination and Reexamination'') at http://www.uspto.gov/aia_implementation/patents.jsp#heading-9. The Office does not separately
track the time taken by the examiners to process and analyze patentee-
initiated ex parte reexaminations versus third party-requested ex parte
reexaminations. The Office determined via consultation with the Central
Reexamination Unit (CRU) managers that the examiner time required for
patentee-initiated requests and third party-requested ex parte
reexaminations is about the same, and thus the costs to the Office for
either type of request for ex parte reexamination are about the same.
See page 13 of ``Cost Calculations for Supplemental Examination and
Reexamination''.
The NPRM proposed to adjust supplemental examination fees to
reduce, below full cost recovery, both the fee for processing and
treating a request for supplemental examination and the fee for
conducting ex parte reexamination ordered as a result of a supplemental
examination, in total by 16 percent. After updating the patent
operating plans and corresponding aggregate costs in response to public
comments, the Office determined it could reduce the supplemental
examination fee further while continuing to ensure that the aggregate
revenue equals aggregate cost. In this final rule, the Office is
reducing the large entity fee for conducting ex parte reexamination
ordered as a result of a supplemental examination (proposed at $13,600)
to $12,100. Therefore, this final rule sets the total fees for
supplemental examination at $16,500 ($4,400 for processing and treating
a request for supplemental examination plus the $12,100, excluding any
applicable document size fees), which is 23 percent below the Office's
cost for these services. Any reductions beyond this level would require
increases to other fee(s) to ensure the overall fee structure provides
cost recovery in the aggregate. This rulemaking also sets forth small
(50 percent) and micro entity (75 percent) reductions to all of the
supplemental examination fees.
PPAC Comment 17: The PPAC recommended that a pay-per-reference
system for each reference over twelve submitted in a supplemental
examination request would be more effective than the currently proposed
maximum reference rule. The PPAC also recommended that the Office
should permit a patentee one supplemental examination request per
issued patent, regardless of the number of references submitted.
Response: The procedures governing the supplemental examination
process provided for in the AIA were adopted in the supplemental
examination final rule. See Changes to Implement the Supplemental
Examination Provisions of the Leahy-Smith America Invents Act and to
Revise Reexamination Fees, 77 FR 48828 (Aug. 14, 2012). As explained in
that rule, the Office placed a limit on the number of items of
information that may be submitted with a request for supplemental
examination because the Office must conclude a supplemental examination
within three months of the date on which the request for supplemental
examination is filed. The Office set the limit at twelve items of
information because ninety-three percent of the requests for ex parte
reexamination filed in FY 2011 included twelve or fewer documents. See
Changes to Implement the Supplemental Examination Provisions of the
Leahy-Smith America Invents Act and to Revise Reexamination Fees, 77 FR
at 48830. This rulemaking addresses only the fee for supplemental
examination (reducing it by 23 percent and adding a small entity
discount of 50 percent and a micro entity discount of 75 percent), and
does not propose to change the requirements for a request for
supplemental examination, such as the number of items of information
that may be included in a request for supplemental examination.
PPAC Comment 18: The PPAC commented that many in the applicant
community view supplemental examination as akin to reviews of
information disclosure statements (IDSs) after a final rejection. With
that usage in mind, the PPAC recommended that the fees for supplemental
examination be reduced to levels similar to original examination fees.
Response: The Office determined that the supplemental examination
process is more analogous to an ex parte reexamination process than a
review of an IDS after a final rejection. In both supplemental
examination and ex parte reexamination, the Office must determine
whether a substantial new question of patentability is raised in the
request within three months of the filing date of the request.
Supplemental examination, however, is further enhanced to involve the
review of information in addition to the patents and printed
publications provided for in ex parte reexamination practice.
Therefore, in the supplemental examination final rule, the Office based
its estimate of the cost of supplemental examination proceedings on its
costs for ex parte reexamination proceedings.
Inter Partes Review, Post-Grant Review, and Covered Business Methods
Review
PPAC Comment 19: The PPAC commented that the new inter partes
review, post-grant review, and covered business method review request
and institution fees are the right balance between cost recovery and
incentive for use. The PPAC supported the Office's decision to set
these fees at the proposed rates, even though the PPAC received several
public comments suggesting that high fees would lessen the use of these
proceedings to remove improperly granted patents from the patent
system. The PPAC commented that it supports the USPTO's decision to
break the fee into two parts, but advises the Office to consider a more
granular pay-as-you-go approach.
Response: The Office appreciates the PPAC's support for the inter
partes review, post-grant review, and covered business method review
fee rates. The AIA requires that the Office establish
[[Page 4249]]
fees for inter partes review, post-grant review, and covered business
method review to be paid by the person requesting the review. The fees
paid by the person requesting the review are to be set considering the
aggregate costs of the review. The statutory framework requires the
full fee to be paid in advance and refunds issued as needed. Therefore,
the Office is not instituting a pay-as-you-go fee structure for these
services.
PPAC Comment 20: The PPAC commented that the Office has resisted
calls for more structured and automatic discovery in the inter partes
review, post-grant review, and covered business method review
proceedings and that this will be the most significant driver of costs
for these contested cases. The PPAC recommended that the Office work to
streamline the structure of proceedings.
Response: The Office's final rules for inter partes review, post-
grant review, and covered business method review affirmatively embrace
the calls for more structured and automatic discovery by providing for
mandatory initial disclosures, default cross-examination times, a model
order regarding e-discovery, and guidelines for cross-examination. See
Changes to Implement Inter Partes Review Proceedings, Post-Grant Review
Proceedings, and Transitional Program for Covered Business Method
Patents, 77 FR 48680 (Aug. 14, 2012). Additionally, the final rules
provide that the parties to a contested case may agree to discovery
amongst themselves as a way of streamlining the structure and conduct
of the proceeding. The Office will be monitoring these new services and
will consider feedback from the user community on how the services are
being implemented and whether any improvements can be made to these
procedures.
Maintenance Fees
PPAC Comment 21: The PPAC commented that it generally supports the
maintenance fee scheme proposed in the NPRM and that individual fees
are reasonable because patentees should have a better sense of the
value of the intellectual property as time progresses after patent
grant. However, the PPAC questioned the fee increase proposed for the
third stage maintenance fee. The PPAC advised that the increase to the
third stage maintenance fee may have a greater adverse effect on demand
(and therefore revenue) than the Office projected. Given the AIA's
requirement to review fees at least annually, the PPAC recommended that
the Office closely monitor the effects of the third stage maintenance
fee increase and make adjustments to the fee level as needed.
Response: The Office appreciates PPAC's general support for the
maintenance fee changes, and agrees with the need for continuous future
monitoring. The Office will work with the PPAC to review available data
on maintenance fee payments on a regular basis, and will be prepared to
make adjustments to the fee levels as needed. The Office recognizes the
PPAC's concern with the third stage maintenance fee in particular and
will continue to monitor whether there is any adverse effect on demand
due to the increase in that fee. The Office has closely considered this
potential effect in its aggregate revenue calculation and analysis of
elasticity associated with paying maintenance fees. The Office notes
that the third stage maintenance fee is assessed when the patent holder
should have maximum information about the value of the patent and can
best make an informed decision about whether the value of that patent
justifies the amount of the fee when considering the expected future
income from the protection. Further, the increase in the third stage
maintenance fee allows the Office to provide a fee structure where
earlier fees, paid when the patentee has much less information about
the value of the patent, can be reduced, so as to reduce the barriers
to filing a patent application. By contrast, lowering the third stage
maintenance fee would necessitate raising an earlier stage fee in order
to remain at overall cost recovery.
Excess Claims
PPAC Comment 22: The PPAC commented that the increase in excess
claim fees is unwarranted due to the relative ease with which excess
claims can be searched by examiners, the necessity of more claims of
varying scope in today's legal environment, and the fact that other
patent offices allow applicants to take advantage of multiple dependent
claims. The PPAC recommends that the fees be reduced from the rates
proposed in the NPRM.
Response: The Office realizes that excess claims can be useful to
inventors in today's legal environment, but points out that excess
claiming is a burden to the patent system and the Office. Excess
claiming slows the examination process and increases patent application
pendency, without contributing materially to the Office's goal of
fostering innovation. The Office therefore concluded that an increase
in fees for excess claims will benefit the patent system and the
Office.
Moreover, the patent fee structure has had a fee for ``excess
claims'' (i.e., independent claims in excess of three and total claims
in excess of twenty) since at least 1982, and the result is that most
applications now contain three or fewer independent claims and twenty
or fewer total claims. Applicants who feel they need more than this
number of independent or total claims may continue to present them by
paying the applicable excess claims fee. While the former excess claims
fee amount encouraged most applicants to present three or fewer
independent claims and twenty or fewer total claims, it was not
sufficient to discourage some applicants from presenting a copious
number of claims for apparent tactical reasons, and nor did the fees
reflect the excess burden associated with examining those claims. See,
e.g., Rules of Practice for Trials Before the Patent Trial and Appeal
Board and Judicial Review of Patent Trial and Appeal Board Decisions,
77 FR 48612, 48659-60 (Aug. 14, 2012) (noting that the number of claims
often impacts the complexity of the request and increases the demands
placed on the deciding officials in administrative proceedings). Thus,
the Office is adopting excess claims fee amounts designed to permit
applicants to include excess claims when necessary to obtain an
appropriate scope of coverage for an invention, but to deter applicants
from routinely presenting a copious number of claims merely for
tactical reasons.
Finally, while U.S. practice does not permit a multiple dependent
claim to depend from another multiple dependent claim (35 U.S.C.
112(e)), this does not impact the applicable excess claims fee as a
multiple dependent claim or any claim depending therefrom is considered
a separate dependent claim for purposes of computing the required
excess claims fee. See 35 U.S.C. 41(a)(2)(B).
Oath and Declaration Fees and Correct Inventorship
PPAC Comment 23: The PPAC applauded the Office's elimination of the
fee for filing an oath or declaration, first proposed in February 2012.
The PPAC also stated that the $1,000 fee to correct inventorship is
unwarranted, commenting that a fee for changing inventorship stemming
from a restriction requirement or amendments to the claims does not
seem appropriate and that enlargement of inventorship (which might
require a further search) is what matters. The PPAC recommended that
the Office charge a fee only to correct inventorship that adds an
inventor after the first Office action.
[[Page 4250]]
Response: Changes to inventorship (e.g., adding previously unnamed
persons as inventors or removing persons previously named as inventors)
after examination has started can cause additional work for the Office.
This additional work is necessary regardless of whether the change to
the inventorship is the correction of an error in naming inventors, or
is due to changes to the claims resulting from an amendment during
examination. The inventorship correction fee also is necessary to
encourage a bona fide effort to ascertain the actual inventorship as
early as possible and to provide that information to the Office prior
to examination. However, after carefully considering comments from the
PPAC and the public, the Office is reducing the change of inventorship
fee in this final rule to $600 (large entity) from the $1,000 (large
entity) fee proposed in the NPRM. After this reduction, the revenue
generated by this fee will continue to offset the costs incurred by the
Office when there is a change in inventorship. Additionally, the Office
proposed for this fee to be paid when inventors are added or deleted,
because requiring the fee only to add inventors will encourage
applicants to err in favor of naming too many persons as inventors,
which would complicate the examination process (e.g., it could
complicate double patenting searches). After further consideration of
the PPAC report and other public comments, in this final rule, the
Office is requiring a fee to accompany a request to correct or change
the inventorship filed after the Office action on the merits, unless
the request is accompanied by a statement that the request to correct
or change the inventorship is due solely to the cancelation of claims
in the application.
B. Public Comments in Response to the Notice of Proposed Rulemaking
The Office received 28 written submissions in response to the
proposed rulemaking from intellectual property organizations, not-for-
profit or academic or research institutions, law firms, and
individuals. The summaries of comments and the Office's responses to
the written comments follow.
General Fee Setting Considerations
General Fee Setting Approach
Comment 1: Several commenters expressed support for the Office's
overall fee setting approach, including the goals for implementing a
sustainable funding model and optimizing patent timeliness (i.e., first
action pendency of 10 months and total pendency of 20 months) and
quality. Specifically, one commenter stated that the fee changes are a
step in the right direction. Another commenter supported the Office's
efforts to reduce the patent application and appeal backlog and
commended the Office's success to date. Noting that extended patent
application pendency hinders progress and weakens the motivation to
invent, one of the commenters stated that the proposed fees will
benefit the USPTO and help expedite the application process for those
seeking a patent, thereby advancing technology.
Response: The USPTO appreciates the endorsement from the commenters
and is committed to achieving the goals developed in consultation with
the stakeholder community as set forth in the Strategic Plan. The fee
schedule in this final rule provides the Office with a sufficient
amount of aggregate revenue to recover the aggregate cost of patent
operations while implementing key strategic initiatives, such as
decreasing patent application pendency, reducing the patent application
backlog, improving the quality of patent examination, and updating
patent information technology systems. The decrease in pendency,
reduction in the backlog, and improvement in patent information
technology systems will speed the delivery of innovative goods and
services to market and facilitate economic growth and the creation of
jobs. Likewise, improving the quality of patent examination strengthens
the U.S. patent system.
Comment 2: A commenter stated that the patent application pendency
targets of first action pendency of 10 months by FY 2015 and total
pendency of 20 months by FY 2016 reflect appropriate long-term goals
for the Office. The commenter further stated that applicants will
benefit from the early indication of the likely scope of patent
coverage and the speedier issuance of a patent, which can allow them to
more confidently invest in the commercialization of (or obtain
financing for) their innovations. The commenter suggested that
competitors of the patentee also will benefit by knowing where they may
safely target their commercial activities and investments. The
commenter continued to support the pendency goals by explaining that
patent applicants need an indication of their prospects for receiving a
patent in time for them to consider whether and where to file outside
the United States. The commenter explained that under the Paris
Convention for the Protection of Industrial Property, applicants have
only one year in which to file and claim the priority of their first
filing--for applicants who did not first file a provisional application
or other priority application--and that receiving a first action at 10
months will allow them to decide whether to file abroad and to take
steps to achieve such filings. The commenter stated strong support for
the 10 months first action pendency and 20 months total pendency goals
and welcomed the proposed lengthening of the timeframes for achieving
the goals. The commenter further stated that the Office should not need
to change the 10 and 20 month patent application pendency goals in
order to provide a ``soft landing'' (in reference to the PPAC Fee
Setting Report). Instead, the commenter suggested that the Office has
many other tools (e.g., increasing/decreasing overtime, monitoring
filing activity, or adjusting hiring) at its disposal to calibrate the
throughput in specific art areas and is confident that the Office can
reasonably achieve both the pendency goals and a ``soft landing.''
Response: The Office appreciates the feedback and endorsement for
the 10 and 20 pendency month goals, which were developed in
consultation with the stakeholder community when the Office established
the Strategic Plan. As part of the Office's planning for achieving
these goals and a ``soft landing'' for the optimal patent application
inventory level, the Office has recalibrated its short-term plans to
take into consideration comments from the public as well as new
information, such as higher examiner production levels, historically
low attrition rates, and the substantial progress the Office has
already achieved to date. Consistent with plans to manage a ``soft
landing'' and avoid an excessively low inventory, the Office has
changed the timeframe in which it estimates it will reach its ideal
pendency goals to FY 2016 and FY 2017 for first action pendency and
total pendency, respectively, but with the recognition that the USPTO
may well be within 1 to 2 months of its goal (or that it may fully
reach it) in FY 2015 and FY 2016, respectively.
Comment 3: One commenter questioned why the Office incorporated the
cost of a photocopy at $.25 per page and the cost of a black and white
copy of a patent at $3.00 into its fee setting process under the AIA,
given that the Office's costs for providing these services has not
changed in years.
Response: The Office included the fees associated with a photocopy
($.25 per page) and a black and white copy of a patent ($3.00) into the
patent fee schedule. The Office is setting the fees at the existing fee
rates because the Office's data in support of the unit cost
[[Page 4251]]
for these services is not current. Therefore, the Office determined it
was best to set the fees at existing rates until such time that it
assesses more current information.
Comment 4: A commenter questioned the need for a $200 electronic
filing incentive.
Response: Section 10(h) of the Leahy-Smith America Invents Act
(AIA) provides for the establishment of a $400 ($200 for small entity)
fee for any patent application filed by mail, rather than via the
Office's electronic filing system (EFS-Web). The overriding purpose for
this fee is to encourage applicants to file electronically, which
facilitates more effective administration of the patent system. The
Office began collecting the electronic filing incentive fee on November
15, 2011, and does not have the authority to change the fee established
by the AIA. Once the fee is collected by the USPTO, it must be
deposited in the United States Department of the Treasury and is not
available to the USPTO for spending.
Comment 5: A commenter suggested that the Office's continued
reliance on a fee schedule that is heavily dependent on post-allowance
fees is flawed and continues to put the Agency in an unstable financial
position. A commenter argued that the optimal fee schedule should
consider the incentives and social welfare of patent applicants and
society as well as the USPTO's need for financial sustainability. The
commenter proposed that the Office consider further increasing filing,
search, and examination fees to better align these fees with the costs
of these services and to decrease the Office's reliance on post-
allowance fees. Further, the commenter stated that being overly
dependent on post-allowance fees that only materialize if the Office
decides to grant patent applications creates an incentive for the
Office to grant an unnecessarily large number of patents and
potentially invalid patents. The commenter cited a forthcoming academic
study that supports this theory.
Response: As noted in this rulemaking, Congress and the USPTO have
long promoted a fee structure that fosters innovation by removing
barriers to entry into the patent system through lower front-end fees
(set well below cost) and higher back-end fees. The lower front-end
fees facilitate entry into the patent system, and in so doing,
encourage the disclosure of information on new inventions and ideas to
the public. Higher back-end fees not only help to recoup costs incurred
at the front-end of the process, but also foster innovation by
encouraging patent holders to assess the costs and benefits of
maintaining their patent at various points over the 20 year term of the
patent (i.e., 3.5 years, 7.5 years, and 11.5 years) when maintenance
fees are due. This helps to ensure that low value patents are released
back into the public domain for subsequent commercialization. The
Office carefully considered many factors discussed in this final rule
to determine that the increases to filing, search, and examination fees
are adequate to secure the needed aggregate revenue to recover
examination costs while continuing to foster innovation.
The Office has conducted extensive short- and long-term analyses of
historical costs using the Office's activity-based cost data, budget
execution data, allowance rates, strategic and operational goals, and
elasticity estimates to mitigate risks to its financial stability.
These analyses revealed that the vast majority of the USPTO's past
financial stressors were the result of unforeseeable circumstances that
were typically short-term in nature (e.g., receiving an authorized
spending level lower than that requested of Congress, proposed
surcharges or fee rate increases that were not enacted, unanticipated
dips in revenue due to broader economic conditions, etc.). These kinds
of pressures were generally felt within a given fiscal year, and were
best addressed through fiscal year spending adjustments. Attempting to
mitigate these pressures by increasing allowance rates would have done
nothing to alleviate such short-term concerns, because the maintenance
fees would not have been collected until years later. The operating
reserve presented in this final rule better establishes a sustainable
funding model to respond to these types of short-term circumstances.
Moreover, the Office's fee schedule and financial positions are not
the drivers of patent examination practice. While there is a direct
correlation between the number of patents granted and future
maintenance fee collections, patent examiners make independent
patentability determinations in accordance with statutory requirements
by comparing the prior art to the claimed invention as a whole, without
regard to budgetary pressures of the USPTO. Furthermore, the training
patent examiners receive is not varied depending on the Office's fee
structure or financial status.
Lastly, with regard to the ``forthcoming academic study,'' the
commenters acknowledged that they ``cannot absolutely conclude * * *
that the Office's fee structure has truly caused an increase in
granting behavior.'' The Office also points out that there is no data
or policy basis to support the argument that examination practices are
the result of the Office's fee structure or financial position.
Comment 6: A commenter suggested that while a financially
constrained USPTO could increase fees in an effort to cover its
expenses, the duration of the fee setting process limits the ability of
the Office to immediately augment its revenue through fee increases.
Thus, the commenter suggested that the Office may turn to granting
patents in an effort to increase fee collections, even with fee setting
authority.
Response: The Office does not and will not grant more patents as a
financial tool to increase fee collections. As discussed in Comment 5,
above, the statutory requirements governing patent examination do not
permit such a strategy. In addition, the Office considered the timeline
for setting and adjusting fees under the AIA in its financial plans. In
the event the Office finds itself unexpectedly financially constrained,
the Office will adjust spending accordingly and use the operating
reserve if needed to manage through the timeframe required to adjust
fees.
Comment 7: A commenter suggested that the Office divert maintenance
fees to a special fund which would be limited to subsidizing the
filing, search, and examination costs for small and micro inventors.
Response: The Office does not have the legal authority to create a
special fund in which to deposit maintenance fees. However, under the
fee structure included in this final rule, maintenance fees paid by
large, small, and micro entity inventors (patentees) will be used in
part to subsidize the filing, search, and examination costs for all
applicants including small and micro entity inventors.
Comment 8: A commenter suggested that the Office should reduce the
proposed fee levels. The commenter noted that as proposed in the NPRM,
routine patent fees through issue decrease by 22 percent. The commenter
added however, that when factoring in the total fees paid through third
stage maintenance, total fees paid increase by 26.3 percent in FY 2013
and 20.9 percent in FY 2014 when the issue fee decrease becomes
effective. The commenter further encouraged the Office to accelerate
the effective dates of several fees, including the issue fee estimated
in the NPRM to take effect on January 1, 2014.
Response: The commenter is correct in stating that, once effective,
the
[[Page 4252]]
routine patent fees through issue for a large entity proposed in the
NPRM decreased by 22 percent (decreases by 23 percent in this final
rule), whereas in FY 2014, when coupled with the three maintenance
fees, the total fees increased by 26 percent (increases by 24 percent
in this final rule). This is consistent with the policy factor of
fostering innovation, which guided decisions for setting the proposed
fee levels. That is, the Office proposed to set front-end fees below
cost and set back-end fees above cost to recoup the front-end subsidy.
A front-end subsidy encourages patent application filings and the
disclosure of new technology to foster innovation.
When setting the effective date for fee changes, the USPTO takes
various factors into consideration, including the number of patent
applications it expects to receive and the amount of work it expects to
process (e.g., an indicator for workload of patent issue fees). This
enables the USPTO to calculate the aggregate revenue for each fiscal
year. To allow the Office to recover sufficient revenue to pay for the
projected costs for FY 2013, the effective date of the proposed
reduction to the issue fee and a few other fees has been set at January
1, 2014. Accelerating this effective date would put the Office at risk
of collecting insufficient revenue in FY 2013 to meet its operating
expenses.
Finally, based on the current timeline for examining and issuing a
patent, the delayed implementation date for the reduction in the issue
and publication fees (January 1, 2014) generally aligns with the timing
of the increase in filing, search, and examination fees so that patent
applicants paying the current (lower) filing, search, and examination
fees prior to FY 2013 will continue to pay the current (higher) issue
and publication fees. On the other hand, successful patent applicants
benefiting from the reduced issue and publication fees in FY 2014 will
be more likely to have paid the increased filing, search, and
examination fees effective shortly after the publication of this final
rule.
Comment 9: A commenter noted that the Office's goal of ``fostering
innovation'' fails to take into account the externalities that marginal
(i.e., low value) patents impose on producing companies, other
innovators, and the public, which over time contribute to the failure
of the disclosure function by lowering the quality of patents.
Response: The USPTO is committed to optimizing the quality of the
patents it issues, as well as the timeliness. As noted in the Strategic
Plan, the Office has taken numerous actions to measure and improve
quality. Through collaboration with the PPAC, and with participation
from the entire patent community, the USPTO developed a comprehensive
set of metrics that are used to monitor patent quality from start to
finish. These quality metrics are reported to stakeholders on a monthly
basis via the performance dashboard on the USPTO's Web site (see the
Patent Dashboard in the USPTO Data Visualization Center available at
http://www.uspto.gov/dashboards/patents/main.dashxml).
In addition, one of the policy factors contemplated in USPTO fee
setting is to foster innovation by providing fee levels that encourage,
not discourage, innovation. Economic evidence has shown that patents
are one important means by which innovators can profit from their
research and development efforts, and the patent filing decision
normally comes at the beginning of the innovation process, when
uncertainty over commercial viability is highest. The fee setting
approach adopted by the Office allows for more experimentation earlier
in the process by innovators, while also recognizing that other fees
charged later in the process (i.e., issue and maintenance fees) will
require the innovator to make decisions about the economic value of
continuing with the patenting process. In this way, and through the
added investment that the USPTO fee structure will allow the Office to
make in improving quality and timeliness of examination, the system
will minimize the sort of marginal patents mentioned as a concern in
the comment.
Relatedly, disclosure, both in quality and in the timeliness of
arrival, is also improved by the new fee structure, since the
innovation community will receive better information, earlier in time.
Finally, increased maintenance fees, as set in this final rule, should
help to mitigate the externalities created by marginal patents. If the
patents are truly of a low-value, patent holders will elect not to
maintain them for as long, thus making them available in the public
domain sooner than they might have been under a lower maintenance fee
schedule.
Comment 10: A commenter is concerned that shifting fees to be
higher at the front-end and lower at the back-end will ultimately
discourage some applicants from filing otherwise worthy patent
applications, and will impede the dissemination and publication of
potentially useful inventions, removing them from public discourse. The
commenter suggested reducing filing, search, and examination fees and/
or shifting a higher proportion of the fees to the back end.
Response: While the filing, search, and examination fees in the
final fee schedule increase, once effective, the total basic fees for
obtaining a patent (i.e., filing, search, examination, publication, and
issue) decrease by 23 percent. As discussed in the Office's response to
PPAC Comment 4, the Office shares the commenters concern about the
impact of increased filing, search, and examination fees on the number
of prospective patent applications filed. However, the Office's
elasticity analysis indicates that the potential impact is small and
that filings will continue to grow over the next five years, even if at
a somewhat lesser rate for the first few years. Additionally, while
some applicants may choose not to file low value patent applications
due to the increased combined filing, search, and examination fees,
there are other means by which an applicant may disclose his or her
invention (e.g., manufacturing the product). Therefore, when combined
with the above mentioned elasticity analysis, the Office expects that
the impact to public disclosure will not be significant. Further, to
the extent there is some impact on filings, the Office has determined
that the benefits of the fee changes outweigh the temporary cost of
fewer patent filings. The additional revenue generated from the
increase in fees provides sufficient resources to decrease patent
application pendency. The reduction in patent application pendency is
estimated to increase private patent value by shortening the time for
an invention to be commercialized or otherwise obtain value from the
exclusive right for the technology. Given this overall benefit to the
patent system taken as a whole, the Office is setting and adjusting the
total filing, search, and examination fees ($1,600 for a large entity)
as proposed in the NPRM.
Comment 11: A commenter commended the Office for its willingness to
be flexible in the application of its new fee setting authority. The
commenter also urged the Office to keep the overarching goal of patent
quality in the forefront of the discussion with the pendency and fiscal
goals. The commenter further stated that the user community remains
open to supporting reasonably justified fee increases and procedural
changes that are aimed at producing high quality, valid, and
enforceable patents.
Response: The USPTO appreciates the commenter's support for its
exercise of fee setting authority. The USPTO's first strategic goal is
to optimize patent quality and timeliness. To fulfill this goal, the
Office established a set of
[[Page 4253]]
strategic objectives to decrease patent application pendency and reduce
the patent application backlog, as well as to measure and improve
patent quality. Over the past several years, the Office has made
significant progress on a set of initiatives that aim to improve patent
quality. In collaboration with the patent examiners' union, the Office
has developed a new work credit system that gives examiners more time
to review the merits of patent applications before making their
decisions. The Office also implemented new performance standards that
place a greater emphasis on examiners interacting with applicants
earlier in the process in order to clarify claims and enhance the
quality of patent reviews. At the same time, the Office is committed to
building a highly-skilled and capable examining corps, implementing
improved hiring practices with a focus on recruiting experienced IP
professionals, and providing comprehensive training to both new and
experienced examiners.
As the Office implements these and other quality initiatives it is
ensuring accountability and tracking progress by initiating 21st
century analysis, measurement, and tracking of patent quality. Indeed,
the Office developed a comprehensive set of metrics that are used to
monitor quality from start to finish. These quality metrics are
reported to stakeholders on a monthly basis via the performance
dashboard on the USPTO's Web site. See http://www.uspto.gov/dashboards/patents/main.dashxml.
Comment 12: The Office received several comments about the patent
application pendency goals and the relationship to the availability of
prior art. One commenter suggested that the USPTO's goal to reduce
first action pendency to 10 months may have the unintended consequences
of increasing the uncertainty of the patenting process and potentially
reducing the quality of patents, given that there may be ``hidden''
prior art since patent applications are not published until 18 months
after the filing date. The commenter recommended that either the first
action pendency goal be relaxed to 20 months, or that the USPTO allow
applicants to postpone paying search and examination fees for up to 18
months. Another commenter disagreed with this idea asserting that the
statement in the PPAC Fee Setting Report regarding the possibility that
there may be prior art that is unknown to both an applicant and the
Office under the patent application pendency goals of 10 and 20 months
is not persuasive. The commenter further explained that while it is
true that claims may be allowed that could later be found unpatentable
based on subsequently published prior art, the situation has existed
for years and patent applicants and the public have enhanced mechanisms
to bring such prior art to bear on such claims.
Response: The Office agrees with the second commenter's approach to
pendency goals and prior art. As noted in the Office's response to PPAC
Comment 8, the Office recognizes that some prior art may not be
available to the Office before the first Office action on the merits;
however, the Office has general support from stakeholders for pursuing
a 10 month first action pendency and believes that the risk is
mitigated because many patent applications are published in fewer than
18 months. The 18-month publication deadline is computed from the
earliest filed application, and many applications are outgrowths of an
earlier filed application, which increases the probability that the
prior art was already published. Regarding the suggestion to postpone
paying search and examination fees for up to 18 months, ``staging'' of
fee payments is an idea that the Office may explore in the future.
Given the significant change in the revenue stream for a fee structure
modification of this magnitude, the Office believes it is better to
first achieve greater financial stability through a sufficient
operating reserve and then solicit feedback and ideas from the public
via a formal request for comments regarding staged fees. Moreover, the
realignment of the individual fees for filing, search, and examination
to their respective costs in this final rule prepares the Office to
entertain a future staged fee schedule if it was a structure the Office
and its stakeholders determined was viable.
Comment 13: A commenter questioned the Office's conclusion that
application filings will increase as a result of the proposed changes,
especially for small entities. Another commenter suggested that the
increased patent fees will discourage independent inventors from filing
applications and maintaining patents.
Response: Under the final patent fee structure, large and small
entities will pay increased filing fees (i.e., fees for filing, search,
and examination). This is counter-balanced in that most successful
applicants, regardless of entity status and once effective, will pay
less in fees (23 percent for large entities) through the issuance of
their patent under the new fee structure. Additionally, the micro
entity discount will become available with the new fee structure,
mitigating costs significantly for a subset of small entities. However,
the Office recognizes that the increased filing fees for large and
small entities may discourage some applicants from filing applications.
The Office accounted for this impact through the analysis of
elasticity. Using publicly available data, the Office incorporated
elasticity estimates into its projections and forecasts. The data used
does not permit the Office to disaggregate elasticity effects by entity
size (e.g., large, small, or micro). The increase in filing fees to
large and small entities is expected to reduce moderately the
anticipated growth rate of future patent application filings in the
short term, but it is not expected to cause a decline in the total
number of new (serialized) application filings. The Office expects that
filing levels, including for micro entities, will return to the same
levels anticipated (across all entity sizes) in the absence of a fee
increase by FY 2016. This analysis is described in detail in the
supplemental document on elasticity available at http://www.uspto.gov/aia_implementation/fees.jsp.
Comment 14: One commenter believed that higher fees should be
accompanied with good or better published patent content. The commenter
suggested that the Office use fees to maintain its current high quality
of patent data, specifically text accuracy.
Response: Providing high quality patent data and information is a
priority for the USPTO. The new patent fee structure is designed to
ensure that the USPTO generates sufficient revenue to recover its
aggregate costs, including those costs associated with the Office's
multi-year effort to improve its patent IT systems. Through the PE2E
modernization effort, the USPTO will improve both the efficiency and
effectiveness of its patent IT systems and business processes, while at
the same time continue providing high quality patent information to the
public.
The PE2E system seeks to improve the USPTO's image-to-text
conversion capabilities. To do so, the USPTO plans to engage a number
of solutions moving forward that will further enhance the Office's
character recognition capabilities and the accuracy of the converted
text. In addition to better enabling the Office to convert documents to
text, PE2E is exploring ways to receive text directly from the
applicant, with a focus on solutions that will both minimize the burden
on USPTO's stakeholders and improve the quality of text received by the
Office.
[[Page 4254]]
Comment 15: A commenter believes that the increased fees would have
a negative impact on many businesses. The commenter stated that some
companies may have to use research and development money to cover the
cost of patent fee increases. The commenter claimed that this diversion
of resources would inhibit innovation and job creation in America's
technology sector. Additionally, the commenter noted that the proposed
fees increase the total cost of filing, prosecuting, and maintaining
patents, and that the Office already increased most of its fees by 15
percent in 2011 and then again in October 2012. The commenter
recommended that the fees for filing, prosecuting, and maintaining a
patent be held constant at the current level and extra claims fees also
remain constant until the CPI justifies another increase.
Response: The Office analyzed the costs and benefits of this final
fee schedule and three alternative fee schedules in comparison to the
Baseline (status quo or current fee schedule) in the RIA. See http://www.uspto.gov/aia_implementation/fees.jsp. The Office determined that
it must increase fees to meet its aggregate costs while implementing
key strategic initiatives, including costs to reduce patent application
pendency and the backlog, to improve the quality of patent examination,
and to update patent information technology systems that benefit both
the Office and the applicant. The Office understands that innovation is
critical for economic growth and national competitiveness because it
brings new goods and services to market. The Office weighed the cost of
increasing fees against the benefit of reducing the patent application
backlog so that the Office can provide applicants with 10 months first
action pendency and 20 months total pendency. The Office also
recognizes that there may be a reduction to the growth of new
application filings; however, the Office has also determined that the
benefits of the fee changes outweigh the temporary cost of slower
growth in patent filings. The fee structure set forth in this final
rule thus encourages innovation and facilitates job creation.
To meet its aggregate costs, the Office requires additional funds
(2 percent increase in total aggregate revenue) beyond the amount
provided by the 15 percent surcharge. The additional revenue generated
from the increase in fees provides sufficient resources to decrease
patent application pendency, and the reduction in pendency is estimated
to increase private patent value by shortening the time for an
invention to be commercialized or otherwise obtain value from the
exclusive right for the technology.
Comment 16: One commenter suggested that the Office retrain
administrative staff to become operational staff (i.e., patent
examiners) in order to clear the backlog and to reduce overhead.
Response: For patent examiner positions, the USPTO recruits
engineers, chemists, microbiologists, physicists, and biologists that
have successfully completed all requirements for an undergraduate or
higher degree at an accredited college or university. In addition, for
some disciplines, the USPTO specifies a minimum number of hours of
required course content. For candidates seeking employment above entry
level, the Office requires professional experience in an appropriate
field, graduate education in the field, and/or law school.
The USPTO's administrative personnel generally have educational
backgrounds that do not qualify them to fulfill patent examiner
positions, e.g., accounting, economics, statistics, etc. Moreover, it
is impossible to run an agency without personnel who perform human
resources, information technology and other administrative functions
necessary to the operation of the Office. Finally, administrative
personnel meeting the patent examiner requirements have applied and
become examiners in the past and may continue to apply for vacant
patent examiner positions.
The Office anticipates that the new fee schedule will provide
sufficient revenue to hire the optimal number of patent examiners
needed to reduce the patent application backlog and decrease patent
application pendency. Further, the Office will continue to seek cost
savings and greater efficiency from its entire staff, including
administrative personnel.
Comment 17: A commenter suggested that the Office's cost estimate
of $1,860 for a patent search is too high, at least in part, because of
inefficient operations.
Response: The Office provides the historical costs of the major
patent fees, including the methodology used to determine the cost of
the fees in a supplemental document entitled, ``USPTO Section 10 Fee
Setting--Activity-Based Information and Costing Methodology'' available
at http://www.uspto.gov/aia_implementation/fees.jsp#heading-1. This
document shows the search fee costs associated with the examination of
a patent application for FY 2009 ($1,520), FY 2010 ($1,694) and FY 2011
($1,521) in addition to further detail on the activity costs and the
fee calculations.
In 2009, the USPTO's cost management program was recognized as a
federal best practice in an independent review, and the Office
continues to use these best practices to calculate the cost data that
has informed the fee setting process. In addition to using sound cost
accounting practices, the Office continues to regularly review its
annual requirements-based operating budgets and long-range plans to
ensure that the Office operates efficiently. Further, the AIA includes
a mandate for the Director of the USPTO to annually consult with the
PPAC on the ``advisability of reducing any fees'' (see section 10(c)).
This annual consultation will be informed by both cost accounting data
and any efficiency gains the Office realizes while providing patent
services.
Operating Reserve
Comment 18: The Office received several comments about building the
three-month operating reserve too quickly. One of the commenters stated
that contributing 3 percent to 7 percent of collected fees each year
builds the operating reserve too quickly at a high cost to current
applicants who face budget constraints. Similarly, another commenter
stated that since applicants are already paying higher fees in order to
help meet the USPTO's other goals, the operating reserve should be
built more gradually to avoid current applicants carrying too much of
the burden. A commenter further stated that carefully building and
managing a three-month operating reserve is a reasonable fiscal goal
and that the commenter appreciated the balanced approached of the
modification in the NPRM from the February 2012 proposal, specifically
lengthening the target date for achieving full-funding by two years.
However, the commenter also stated that a $200 million increase planned
for the operating reserve in FY 2014 in the NPRM is too aggressive and
suggested a more appropriate goal would be to permit the operating
reserve to achieve the three-month goal over six years. Finally,
another commenter further suggested that the plan for building the
operating reserve is too quick and establishing a longer timeframe
would permit the USPTO to lower the fees for post-grant proceedings,
making these prosecution options more accessible to small businesses
and non-profit entities.
Response: The Office welcomes support for its financial
sustainability and operating reserve goals. As noted in the response to
PPAC Comment 6, the
[[Page 4255]]
Office extended the growth period of the three-month operating reserve
by one year (to FY 2018) compared to the timeframe proposed in the
NPRM. The Office believes that this timeframe achieves a reasonable
balance between growth that is gradual enough to limit the burden on
applicants and rapid enough to reach the target reserve and provide
necessary financial stability in a reasonable timeframe. Additionally,
in this final rule, the Office sets fees for two proceedings at lower
amounts than were proposed in the NPRM. These fee reductions are for ex
parte reexamination (from $15,000 to $12,000) and reexamination ordered
as a part of supplemental examination (from $13,600 to $12,100).
Comment 19: A commenter expressed concerns that building the
operating reserve so quickly could make it a convenient target for
congressional confiscation of fees, and another commenter suggested
that the USPTO consider delaying build-up of its operating reserve
until such time that any potential fee diversion by the Congress is
prohibited. A different commenter suggested that the Office should take
every precaution to ensure the fees paid by users are not vulnerable to
sequestration or diversion and, if either becomes a reality, the Office
should immediately stop building the operating reserve until a
mechanism can be found to protect the funds.
Response: As noted in the response to PPAC Comment 6, the AIA
mitigates the issue of fee diversion by stipulating that USPTO's excess
collections are to be deposited into the new Patent and Trademark Fee
Reserve Fund rather than into the general Treasury, and are available
for USPTO purposes as provided for in the Office's annual
appropriations bill. The Office will continue to work closely with
Congress to ensure full access to fees paid by patent applicants and
patentees, consistent with the AIA. In addition, as previously
mentioned, the Office has slowed the growth of the operating reserve.
Comment 20: A commenter noted that there may be several potential
surges in fee activity during the course of implementing the AIA, which
would likely lead to ``bubbles'' of fee payments that could be used as
a source of funds for building the operating reserve.
Response: The Office anticipates ``bubbles'' of fee payments in
advance of this new fee schedule taking effect, similar to the surge in
collections experienced in late FY 2011 after the passage of the AIA
and the implementation of the 15 percent surcharge in FY 2012. Unlike
the ``bubble'' at the end of FY 2011, however, the ``bubbles'' that the
Office anticipates for FY 2013 as a result of this final rule and for
FY 2014 relating to implementation of those fees set to take effect on
January 1, 2014, will be experienced within the respective fiscal
years. These anomalies (``bubbles'') are considered in the Office's
projected FY 2013 and FY 2014 aggregate revenue collections, including
the estimated operating reserve levels.
Small, Micro, and Independent Inventor Matters
Comment 21: The Office received several comments about the impact
of fees on small entities and the provision of small and micro entity
discounts. One commenter questioned whether the USPTO is providing
micro entities with a 75 percent discount. Several commenters expressed
support for small and micro entity fees, and some welcomed any further
fee reductions, with one commenter proposing that the discount for
small entities should be increased to one-third of large entity fee
rates instead of one-half. A commenter stated that it is inconsistent
to allow small entities (and micro entities) to file applications with
reduced filing fees but not allow reduced reexamination fees. One
commenter expressed general support for the fee proposal, particularly
for the manner in which the rule allocates fees based on an applicant's
ability to pay (e.g., large entities pay more) and the front-end/back-
end subsidy structure. Lastly, one commenter recommended that the USPTO
set aside a small fraction of large entity fee collections for outreach
to small businesses.
Response: Congress authorized micro entity fee reductions and an
enhanced list of small entity fee reductions to permit greater access
to the patent system by these entities. Section 10(b) of the AIA states
that the ``fees set or adjusted under subsection (a)'' for the
specified patent services ``shall be reduced by 50 percent with respect
to the application of such fees to any small entity that qualifies for
reduced fees under section 41(h)(1) of title 35, United States Code.''
(Pub. L. 112-29, section 10). Therefore, the Office has no legal
authority to change the size of the discount for small entities from 50
percent. Section 10(g) of the AIA further reduced the fee burden for
some small entities by adding section 123 to chapter 11 of title 35 to
define a new micro entity class of applicants. Section 10(b) of the AIA
further states that ``fees set or adjusted under subsection (a)'' for
the specified patent services ``shall be reduced by 75 percent with
respect to the application of such fees to any micro entity as defined
in section 123.''
Under the authority of section 10(b) of the AIA, the Office sets
small and micro entity fee rates for filing, searching, examining,
issuing, appealing, and maintaining patent applications and patents;
these rates amount to a 50 percent reduction for small entities and a
75 percent reduction for micro entities. Fee reductions for
reexamination services are included under the authority of section
10(b). In this final rule, the Office sets or adjusts 351 patent fees,
including 94 small entity fees set at a reduction of 50 percent and 93
micro entity fees set at a reduction of 75 percent from the large
entity fee amounts.
The USPTO continues to work with companies, legal associations,
inventor organizations and others to provide inventors and small
businesses with contacts, information and assistance. The Office
supports several programs to help both small businesses and independent
inventors, including the Small Business Education Campaign and pro bono
programs. More information on these programs and others designed to
support small businesses is available at http://www.uspto.gov/smallbusiness/about/ and also http://www.uspto.gov/inventors/proseprobono/index.jsp.
The AIA directs the USPTO to work with intellectual property law
associations across the country to establish pro bono programs for
financially under-resourced inventors and small businesses. A pilot
program in Minnesota was launched in June 2010 to provide legal
services to help such individuals and businesses obtain solid patent
protection. Another pro bono pilot program was launched in Denver
during FY 2012. More regional pro bono programs are planned for 2013.
Outreach to small businesses and independent inventors is included in
the Office's annual patent operating budget, so a portion of all fees
collected contributes to this outreach effort.
Comment 22: Several commenters suggested that discounts to small
and micro entities should be extended to inter partes reviews, post-
grant reviews, and covered business method patent reviews, with one of
the commenters asserting that if the fees are too high, small and micro
entities will be driven out of the market in favor of large
corporations. One of the commenters disagreed with the USPTO's
interpretation of section 10(b) of the AIA, and argued that neither the
text of section 10(b) nor any other provision of the AIA limits the
USPTO from offering reduced fees or lowering fees for
[[Page 4256]]
services not enumerated in that section. The commenter stated that,
even if the USPTO's interpretation is correct, the Director has broad
authority to lower fees for the administrative trials to allow greater
access for entities such as small businesses and non-profits that may
otherwise not be able to participate. Other commenters suggested
providing non-profit organizations similar or greater discounts on
post-grant review and inter partes review fees, with one commenter
suggesting these proceedings would be prohibitively expensive for non-
profit organizations. Another commenter applauded the Office's work to
reduce certain fees (from those set under the Office's section 41(d)(2)
authority), especially the ex parte reexamination fees for small and
micro entities. However, the commenter expressed concern that the
proposed fees would create a disincentive for some third parties (e.g.,
public interest groups) to challenge patents, and urged the Office to
provide reduced fees for small and micro entities, specifically for
not-for-profit organizations.
Response: The express authority of section 10(b) refers to fees for
supplemental examination, reexamination, and petition, but not to
administrative trials like inter partes review, post-grant review, and
covered business methods review. Further, because the administrative
trials are new services for which the Office has no historical cost
basis, setting these fees too far below their prospective cost is
risky. The Office designed the new procedures around Congressional
intent for the AIA. In many cases, these services are an alternative to
even more expensive litigation. Further, many of these services,
including post-grant review and inter partes review, provide for
refunds if the Office does not elect to institute a proceeding, which
could significantly lower the cost.
The Office's authority to set fees is coupled with the requirement
that aggregate patent revenue must recover the aggregate cost of patent
operations. As the Office collects and analyzes more data about the
cost of patent operations for these new services, the Office will
continually reassess the fairness and adequacy of the fee schedule to
both achieve the needed aggregate revenue and remain aligned with the
Office's strategic and operational goals and policy priorities--
including fostering innovation.
In addition, the Office also established staged fees for appeals
and RCEs, which aim to reduce the upfront cost of patent services for
all entities, but especially those eligible for a fee reduction.
Finally, the pendency gains that the Office aims to realize as a result
of the additional revenue will be beneficial to all entities--including
not-for-profit entities and public interest groups, as demonstrated by
the positive net benefit presented in the RIA. (See the RIA at http://www.uspto.gov/aia_implementation/fees.jsp). Although non-patent
holders will not accrue monetary benefits from the reduction in
pendency, the rest of society stands to gain other benefits (e.g.,
decreased uncertainty) as described in the RIA.
Comment 23: A commenter stated that the criteria to qualify for
micro entity status are too restrictive, specifically the limitation on
the number of prior patent applications due to prior employment
situations and the income requirements. The commenter suggested
eliminating the limit related to not being named on more than four
previously filed patent applications and raising the income requirement
to four or five times the median household income.
Response: The AIA established the criteria under which an applicant
may qualify for micro entity status (see 35 U.S.C. 123). This final
rule sets fee levels, which in applicable instances include micro
entity discounts as set forth in section 10(b) of the AIA. This final
rule does not alter the eligibility requirements set forth in the law.
In a separate final rule, the Office set forth rules of practice
pertaining to how an applicant can qualify for micro entity discounts.
See Changes to Implement Micro Entity Status for Paying Patent Fees, 77
FR 75019 (Dec. 19, 2012). 35 U.S.C. 123(a)(2) has a criterion for micro
entity status that requires the applicant ``has not been named as an
inventor on more than 4 previously filed patent applications, other
than applications filed in another country, provisional applications
under section 111(b), or international applications filed under the
treaty defined in section 351(a) for which the basic national fee under
section 41(a) was not paid.'' 35 U.S.C. 123(b) states that ``[a]n
applicant is not considered to be named on a previously filed
application for purposes of subsection (a)(2) if the applicant has
assigned, or is under an obligation by contract or law to assign, all
ownership rights in the application as the result of the applicant's
previous employment.'' 35 U.S.C. 123(a)(3) states that a micro entity
is one who ``did not * * * have a gross income, as defined in section
61(a) of the Internal Revenue Code of 1986, exceeding 3 times the
median household income for that preceding calendar year.'' The Office
does not have the authority to eliminate the previously filed
application limit or expand the income level because both are set by
statute. However, the law does not apply to applications filed due to
prior employment situations if the applicant has assigned, or is under
an obligation by contract or law to assign, all ownership rights in the
application as the result of the applicant's previous employment.
Comment 24: A commenter asked the Office to estimate how much it
would cost a small or micro entity to claim eligibility for these
discounts.
Response: The AIA established the bases under which an applicant
may establish micro entity status (see 35 U.S.C. 123). While this final
rule sets fee levels, it does not establish the procedural requirements
for asserting small or micro entity status. To pay reduced patent fees
as a small entity, the entity must merely assert small entity status
using the same procedures in place today. Specifically, a 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. In a separate rulemaking (see Changes to Implement
Micro Entity Status for Paying Patent Fees, 77 FR 75019 (Dec. 19,
2012)), the Office set out the procedures pertaining to claiming micro
entity status. These procedures are designed to align with, to the
extent feasible, the corresponding small entity procedures. A micro
entity must certify in writing that he or she meets the criteria
delineated in the AIA. In both cases, the burden to establish small or
micro entity status is nominal (making an assertion or submitting a
certification).
Comment 25: A commenter questioned the Office's assumption that all
foreign individuals will qualify for micro entity fee reductions.
Response: The Office does not assume that all foreign patent
applicants will qualify for micro entity discounts. The introduction of
micro entities required the Office to refine its fee payment workload
and fee collection estimates. The Office estimated the size of the
micro entity population by making certain calculations about how many
applicants would likely qualify under each of the criteria set forth in
the law (see sections 123(a) and (d)) using the best available data. In
making these estimates, 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.
[[Page 4257]]
As noted previously, individuals (not companies or organizations)
accounted for a very small portion of utility patent grantees in FY
2011. Only 5.0 percent (11,068) of granted patents went to individuals
in the U.S., and 1.9 percent (4,206) of granted patents went to
individuals from other countries. Designation as an individual is based
on being listed in the USPTO database without being associated with a
company. By the Office's own records, in FY 2011, individuals from
other countries received 4,206 utility patents. 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. The Office combined these
statistics to estimate that only 2,608 (62 percent of 4,206) of foreign
individuals would meet the joint standard of being an individual and
having filed fewer than five applications. Then, the Office concluded
that about 97 percent of American households fall under the maximum
income threshold for micro entity eligibility. Given that household
income in the United States is greater than that of most foreign
countries, it is reasonable to project that all foreign applicants
applying as individuals who meet the other standards for micro entity
eligibility are not likely to be disqualified on income alone. All
foreign patent applicants will have to specifically qualify by the
requirements set forth in 35 U.S.C. 123 in order to be eligible for the
micro entity discount.
Comment 26: A commenter stated that proposals for the reduction of
certain Patent Cooperation Treaty (PCT) fees aimed at making the
international patent system more accessible to small and micro entities
are generally welcomed, provided that such reductions are affordable
for the Office and that the administration of such fee reductions is
manageable and proportionate.
Response: The Office remains committed to making the patent system
more accessible to small and micro entities both domestically and
abroad. Given the Office's mandate to ensure that aggregate revenue
recovers aggregate cost, the Office conducted the necessary analysis to
conclude that providing fee reductions for certain PCT services is both
affordable and consistent with the Office's goals. The Office does not
anticipate a large administrative burden for its own operations or
those of other Receiving Offices. The Office will continue to work with
its international partners to balance support for small and micro
entities with the effective administration of global patent systems.
For example, in response to concerns raised by one of the Office's
international counterparts, the Office is setting the effective date
for the international phase fees established in Sec. 1.445 and Sec.
1.482 in this final rule as (including small and micro entity
discounts) January 1, 2014, to provide sufficient time between
publication of the final rule and the fee effective date to allow
consequential changes to be made to international forms, procedures,
and associated systems.
Comment 27: A commenter stated that the means for claiming fee
reductions on PCT services as a small entity must be easy to understand
and operate by people of any nationality or residence, both for the
applicant/agent and for the receiving Offices handling the
international application. The commenter added that if a form is to be
used, it would be preferable to allow an agent making a filing to check
a box on behalf of the applicants without requiring further signatures
from each one.
Response: In response to the comments suggesting that the fee
reductions should be simple to understand and operate, the final rule
amends section 1.27(c)(3) to allow small entity status to be
established in international applications by payment of the exact
amount of the small entity transmittal fee set forth in Sec.
1.445(a)(1) or by payment of the small entity search fee set forth in
Sec. 1.445(a)(2) to a Receiving Office other than the United States
Receiving Office in the exact amount established for that Receiving
Office under PCT Rule 16. Small entity status can additionally be
established by written assertion as previously provided for in section
1.27(c)(1). With regard to establishment of micro entity status, the
Office will make available a form for use in certifying an applicant's
entitlement to micro entity status.
Comment 28: A commenter suggested that it is not practical for a
Receiving Office to verify whether the claim for micro or small entity
status is valid in an international application filed under the PCT.
The commenter suggested that the Office should make clear what will
happen if the United States International Searching Authority has
reason to question an assertion of small or micro entity status made in
an international application filed with a foreign Receiving Office.
Response: The Office will generally not question applicant's
assertion to small entity status. (See, e.g., 37 CFR 1.27(f) and MPEP
509.03 (VIII) ``Normally, the Office will not question a claim to
status as a small entity.'') Similarly, the Office plans to generally
rely on applicant's certification of micro entity status and will
ordinarily not require any additional documents from the applicant
concerning the applicant's entitlement to claim micro entity status.
However, any attempt to fraudulently establish status as a micro or
small entity shall be considered fraud practiced or attempted on the
Office. See, e.g., section 1.27(h).
Comment 29: One commenter suggested that at least six months would
be needed from notice of the final requirements of the system to
properly implement instructions, forms, and systems for the execution
of payment of small and micro entity fees and establishing small or
micro entity status in international applications for which the Office
acts as a Receiving Office, International Searching Authority, or
International Preliminary Examining Authority.
Response: In response to this comment, the Office is setting the
effective date for the international phase fees established in Sec.
1.445 and Sec. 1.482 in this final rule (including small and micro
entity discounts) as January 1, 2014, in order to provide for
sufficient implementation time.
Comment 30: A commenter suggested that the proposed fee schedule
saddled large entities with more than a fair share of the fee burden,
at least for maintenance fees. The commenter urged the Director of the
USPTO to use his discretion (granted in 35 U.S.C. 123(e)) to eliminate
the 75 percent micro entity discount for maintenance fees.
Response: The Office aims to foster innovation for all entities,
and fee reductions are one of the tools that the Office uses to achieve
this policy. Fee reductions are established by the AIA at Section
10(b), and the Office does not have the authority to eliminate the
reductions set by the AIA. Also, maintenance fees are a critical
component of the USPTO's funding stream given the Office's policy of
setting front-end fees below cost and back-end fees above cost. (See
the Office's response to PPAC Comment 21 for more information.)
Additionally, the fee burden to large entities for micro entity
maintenance fees is not very large, especially because: (1) Micro
entities must first qualify as small entities; and (2) the projected
population of micro entities is small. As noted in this final rule, the
Office estimates that 31 percent of small entity applications will be
micro entity applications (see Part IV. Fee Setting Methodology). Small
entities are already a relatively small portion of patent
[[Page 4258]]
applicants--approximately 25 percent over the past five years (see
Table 53)--so the population of micro entity applicants is expected to
be less than 10 percent (25 percent of 31 percent equals 7.75 percent),
and the population of micro entity maintenance fee payers would be even
smaller. Further, the dollar differential between small and micro
entities over all three stages of maintenance fee payments is just over
$3,000. (The total of maintenance fee payments through the third stage
is $6,300 for small entities compared to $3,150 for micro entities.)
Legal Considerations
Comment 31: One commenter stated that there was not adequate time
for the public to submit comments in response to the fee proposal.
Another commenter requested additional time to prepare comments on the
fee proposal.
Response: The Office reasonably believes 60 days was sufficient
time for public comment. The Office notes that it first set forth a fee
proposal on February 7, 2012, and then it held two public hearings in
collaboration with the PPAC. Additionally, the PPAC collected written
comments in response to the February 2012 fee proposal, which the
Office reviewed and made available for public review. Finally, the
Office provided a 60-day period for written comments following
publication of the NPRM, in addition to the PPAC public hearings and
earlier comment period and numerous roadshows across the country to
provide the public an opportunity to receive further information and to
ask questions of the Office concerning the fee proposal.
Comment 32: A commenter stated that the Office must consider the
Independent Offices Appropriations Act (IOAA), 31 U.S.C. 9701, both
explicitly and in pari materia, in setting fees. The commenter asserts
that the IOAA applies and that the USPTO's fees amount to taxes insofar
as the fees are based on anything other than the IOAA and cost to the
USPTO associated with the individual service.
Response: The IOAA is a general government-wide user fee statute
adopted in 1951. It is a permissive statute and intended for agencies
to use in fee setting where Congress has not provided more specific fee
setting authority. Where statutes independent of the IOAA provide
specific statutory authority for user fees, those statutes control
based on the terms of their own coverage and limitations. See Bunge
Corp. v. U.S., 5 Cl. Ct. 511, 515-16 (1984), aff'd mem., 765 F.2d 162
(Fed. Cir. 1985) (``The IOAA was intended to serve an interstitial
function, providing fee setting authority where Congress has not
otherwise authorized the agency to collect fees * * *. It would be
inconsistent with this purpose to hold that the IOAA applies where an
agency acts pursuant to a different, more specific grant of fee setting
authority.'') Here, the USPTO has separate and specific fee setting
authority provided by Section 10 of the AIA. Given the specific fee
setting authority Congress provided to the USPTO in Section 10 of the
AIA, the USPTO does not need to use the IOAA for this fee setting.
Finally, the IOAA and section 10 cannot be read in pari materia,
contrary to the commenter's suggestion. The IOAA has several
significant limitations that apply to fee setting under the terms of
that statute, including some limitations to require that each fee be
set to recover the cost of the corresponding service. Section 10 does
not impose these limitations and is fundamentally different than the
IOAA. Specifically, whereas the IOAA requires that each individual fee
be set for cost recovery, section 10 does not compel cost recovery on
an individual fee basis, but rather explicitly permits fees to be set
to recover ``aggregate estimated costs'' of the patent operations. In
addition, while the IOAA assigns fees to the general treasury, section
10 fees are kept by the USPTO.
Comment 33: A commenter stated that the proposed fees exceed the
authority of the AIA. Specifically, the commenter states that the AIA
provides no authority for allowing the USPTO to set or adjust fees on
any basis other than cost of the service provided. For example, the
commenter posits that the USPTO may not set individual fees above cost
based on policy reasons. The commenter also states that the Office's
authority is limited to making adjustments that are supported by cost
data while retaining a reasonable semblance of the relative levels of
existing fees.
Response: The commenter's suggestions are contrary to the plain
language of the AIA. The AIA permits individual patent fees to be set
or adjusted to encourage or discourage particular services, so long as
the aggregate revenues for all patent fees match the aggregate costs of
the patent operation. The comment would read into the AIA limitations
that do not exist and that are inconsistent with the AIA.
Comment 34: A commenter noted that the agency must comply with the
Administrative Procedure Act, 5 U.S.C. 500, et seq. in setting Section
10 fees.
Response: The Office agrees that the Office must comply with the
rulemaking requirements of the Administrative Procedures Act in setting
Section 10 fees. As demonstrated in this section and in this rulemaking
as a whole, the USPTO has complied with these requirements.
Individual Fees
Prioritized Examination Fee
Comment 35: A commenter suggested that the proposed reduced fee for
Prioritized Examination is still too high, and recommended that the
USPTO lower this fee to $2,000 to encourage participation in the
program.
Response: In this final rule, the Office is lowering the fee for
prioritized examination from $4,800 to $4,000. The Office aims to
increase access to prioritized examination while ensuring that the
large entity fee remains at cost recovery. Currently, USPTO cost data
does not support the suggested $2,000 fee. The Office's cost
calculation for prioritized examinations is available in the proposed
rule published in the Federal Register. (See Changes To Implement the
Prioritized Examination Track (Track I) of the Enhanced Examination
Timing Control Procedures, 76 FR 59050 (Sept. 23, 2011)). As noted in
the Office's response to PPAC Comment 9, the Office will continue to
monitor participation in the prioritized examination program to assess
whether demand increases with a decrease in the fee, and whether there
is any adverse impact on pendency of applications in the traditional
examination ``track.''
Basic Filing, Search, and Examination Fees
Comment 36: One commenter asserted that the Office understates the
cost of filing a patent application. In particular, the commenter
believes that the NPRM misled the public to believe that a fee which
actually goes up by 27 percent appears to go down by 62 percent. The
commenter suggested that filing fees are confusing because fees ``due
on filing'' include filing, search, and examination fees, instead of
solely the ``filing'' fee.
Response: The NPRM states that the basic filing fee for utility
applications decreases by 28 percent for large entities. The utility
search fee decreases by 3 percent for large entities, and the utility
examination fee increases by 188 percent for large entities when
compared to the current patent fee schedule. The net result of the
changes to these three components is a 27 percent increase ($340) in
the total filing, search, and examination fees for large entity utility
applications. See
[[Page 4259]]
Setting and Adjusting Patent Fees, 77 FR 55028 (Sept. 6, 2012),
specifically Table 4 at 55039 and Table 9 at 55043-55044.
The USPTO separated the single fee paid at filing into filing,
search, and examination components as part of the 21st Century
Strategic Plan that was submitted to the Congress in 2003. The result
was to create a more optimal alignment of fees with services, and
provide the applicant with more information about the services being
received. However, throughout the proposed rule and this final rule,
the Office refers to the three fees collectively as the basic ``front-
end'' fees and clearly states that the total of all three fees is due
at filing.
Request for Continued Examination (RCE) Fees
Comment 37: Several commenters expressed concerns about the
increase in RCE fees and operational issues surrounding patent
examination and RCEs. Several comments expressed support for the
Office's continued efforts to reduce the number of RCEs, but suggested
that even more work is needed. One commenter appreciated the reduction
of the first RCE fee in the NPRM from the February 2012 proposal to the
PPAC, but noted that the second and subsequent RCE fee continues to be
nearly double the fee currently in place. The commenter further noted
that the moderated fee continues to be high when compared to the costs
to examine a case from scratch or to examine a continuation. Several
commenters cited issues with examining practices as a reason for
increased RCE filings, including improper final rejections,
inexperienced examiners, and an examiner's failure to effectively
engage with an applicant. The commenter believed that a punitive
subsequent RCE fee will not resolve the issue of applicants filing
multiple RCEs. One commenter suggested that, given the number of new
examiners hired, the RCE fee should be incrementally increased once the
overall experience level of the examining corps increases and quality
examination is ensured.
Response: The Office carefully considered the decisions to
differentiate between fees for filing a first RCE and filing second or
subsequent RCEs and whether to increase the RCE fee above its current
level. As noted in the final rule, those considerations included
historical cost information, historical RCE filing trends, aggregate
revenue needs, and patent examination practices (by the Office and
applicants). See response to PPAC Comment 10.
On the issue of the overall experience level of the examining
corps, the Office took into account the average grade level of the
patent examining corps when calculating costs. The Office will continue
to monitor the quality of examination through its quality metrics that
are published on the USPTO Data Visualization Center at http://www.uspto.gov/dashboards/patents/main.dashxml.
Comment 38: Some commenters expressed concerns about the way the
Office dockets RCEs. Two commenters suggested that the Office consider
docketing RCEs like other amended cases (i.e., the same scheduling as
responses to office actions) to advance rather than delay prosecution.
Alternatively, one commenter suggested the Office could use the amended
case docket for those applicants who pay the higher fee for an RCE and
continue placement on the continuing new case docket for those
applicants who pay the current RCE fee amount.
Response: As a result of the recent Count System Initiative
changes, RCEs are being reprioritized within their current docket
category based upon their effective filing date, which will move older
RCEs ahead for action sooner than other cases in the same category.
Comment 39: A commenter stated that the decision to accept an
amendment after final rejection is often at the examiner's discretion
and, therefore, so is the need for an RCE. The commenter suggested
that: (1) Examination practices be standardized so that all examiners
will accept an amendment without an RCE if an amended claim is found to
be patentable; and (2) the AFCP be formally adopted. Another commenter
suggested that the Office create a new procedure for a ``single review
RCE'' or a ``one more action'' procedure with a lower fee than is
currently charged for an RCE. The commenter envisioned this procedure
as an opportunity for an examiner, in exchange for some portion of a
count, to consider art the examiner has newly identified or for an
applicant to put claims in condition for appeal. The commenter further
explained that an examiner could update the search following an
agreement after final on potentially allowable subject matter, all
without requiring a full RCE with a delayed track and multiple actions.
The commenter further suggested that the application should be
maintained on the amended case docket (response to office action
scheduling), or an even faster docket, and treated as an amendment
after final with some count benefit to the examiner. The commenter
recognized the similarity of this procedure to some of the ongoing
efforts of the Office (specifically the AFCP), but suggested this
procedure would be available as a matter of right and with a lower fee
than a current RCE (but higher than the pilot program, which does not
currently require payment of additional fees to the Office).
Response: In response to this public comment, the Office reviewed
data on applications having an after final reply followed by an RCE
filing. The data shows that more than 50 percent of all RCEs are filed
with no prior submission after final (i.e., no amendment that attempts
to place the application in condition for allowance). It is noted that
the AFCP should have the effect of motivating more applicants to file
after final replies for additional consideration. After a final
rejection is made by the examiner, the applicant must do one of three
things to avoid abandonment: (1) File a reply that places the
application in condition for allowance; (2) file a notice of appeal; or
(3) file an RCE in compliance with 37 CFR 1.114. The data suggests that
many applicants elect option (3) over option (1). Absent a timely filed
after final amendment that permits issuance of a patent (i.e., an
amendment that leaves no pending claim subject to a rejection) the
application must be regarded as abandoned, unless a notice of appeal or
RCE is timely filed. In situations when an after final amendment may
make some but not all claims allowable, the current procedures provide
a check box (number 6) on the Advisory Action form that allows an
examiner to indicate that a claim(s) amended after final would be
allowable if submitted in a separate, timely filed amendment canceling
the non-allowable claim(s). A copy of the current Advisory Action form
is found on page 700-88 of the MPEP, Eighth Edition, Revision 9. With
regard to the ``single review RCE'' or ``one more action'' concepts,
such suggestions are outside the scope of this rulemaking, but to the
extent that these suggestions can be implemented consistent with 35
U.S.C. 132 and 133, they will be given consideration.
Comment 40: One commenter stated that it is important for the
Office to deal with the ``hidden'' RCE backlog because ``one gets what
one measures.'' The commenter suggested that the pendency goals should
be established taking into account RCEs (e.g., X months from filing to
final disposition of RCEs, and Y months for traditional total pendency
including RCEs), which would establish a clear focus on the backlog of
RCEs and would keep the user community fully apprised of the Office's
progress in
[[Page 4260]]
bringing that backlog under control. The commenter suggested that these
goals should be tracked and reported side-by-side with the 10- and 20-
month traditional pendency goals.
Response: The Office presents multiple application pendency numbers
on the Patent Dashboard in the USPTO Data Visualization Center
available at http://www.uspto.gov/dashboards/patents/main.dashxml.
There, the Office publishes traditional total pendency both with and
without RCEs, as well as the pendency for RCEs alone. The Office also
publishes the backlog for RCEs. The Office further presents data on the
growth in RCE filings, the inventory of RCEs, and the pendency
associated with RCEs. See response to PPAC Comment 10 for additional
information about the Office's efforts to respond to issues concerning
RCEs, including the backlog.
Appeal Fees
Comment 41: Two commenters stated that the total for appeal fees
($3,000) is too high given the percentage of reversals on appeals (50
percent per one commenter and 80 percent or more per the other
commenter). The commenters stated that the proposed two-part fee
structure should be further realigned so that the initial fee is lower
and the final fee due after receipt of the examiner's answer is the
largest component of the appeal fees. Further, one of the commenters
explained that many appeals are terminated prior to the applicant
filing an appeal brief so the single fee for the notice of appeal
($1,000) is excessive, and it should be eliminated or greatly reduced.
The commenter also questioned the proposed $1,000 fee due upon filing a
Notice of Appeal, stating that a number of appeals are pursued due to
inexperienced examiners and/or poor rejection quality and that the fee
increase might discourage meritorious appeals.
Response: In this final rule, the Office is implementing the
recommendation to reduce the proposed appeal fees so that meritorious
appeals are not discouraged. This final rule lowers the fee for a
Notice of Appeal to $800 (large entity) from the $1,000 (large entity)
proposed in the NPRM. This is much lower than the current $1,260 (large
entity) fee for the combined services of filing a Notice of Appeal and
filing an appeal brief because the fee for filing an appeal brief is
eliminated under the new structure. The fee for forwarding an appeal to
the PTAB remains the same as proposed in the NPRM ($2,000 for large
entities). Many applicants will pay less under the new structure
because the forwarding fee will only apply to those that forward an
appeal to the PTAB, which is estimated to be about 5 percent of
applicants who receive a final rejection. However, the Office notes
that these fees are set 43 percent below the cost of providing these
services ($4,922 average historical cost). Therefore, decreasing the
gap between the total cost incurred and the total fees charged is
critical to recovering costs in the aggregate for the appeals process.
For more information, please refer to the response to PPAC Comments 11
and 12.
The Office recognizes that applicants may in some cases need to
appeal an examiner's decision and welcomes suggestions on improving the
process. As noted in the response to PPAC Comment 11, the Office's data
shows that in appeals decided on their merits by the PTAB, over 65
percent result in affirmance of at least some of the rejected claims
(see http://www.uspto.gov/ip/boards/bpai/stats/receipts/fy2012_sep_e.jsp).
Ex Parte Reexamination Fees
Comment 42: Several commenters stated that the $15,000 fee for ex
parte reexamination is too high. One of the commenters proposed that ex
parte reexaminations applied for by the owner of the patent and ex
parte reexaminations ordered as a result of a supplemental examination
should both not exceed $2,900. (A $2,900 fee is approximately 15
percent above the fee for ex parte reexaminations that was effective
prior to September 16, 2012, the effective date of the final rule. See
Changes to Implement the Supplemental Examination Provisions of the
Leahy-Smith America Invents Act and to Revise Reexamination Fees, 77 FR
48828 (Aug. 14, 2012)). The commenter further suggested that a patent
owner is paying maintenance fees, which should subsidize the cost of
owner-initiated ex parte reexaminations.
Response: To achieve sufficient cost recovery while meeting the
rulemaking goal to facilitate effective administration of the patent
system, and given the long-term disparity between the fee and the cost,
the Office must increase the reexamination fee. An analysis of the
Office's ex parte reexamination costs revealed that the previous $2,520
ex parte reexamination fee did not recover the Office's costs for that
service. In fact, the Office's costs are approximately seven times the
amount of the previous fee ($2,520) for an ex parte reexamination,
which demonstrates that minor increases (10-15 percent) to the previous
fee would also be insufficient. However, in response to comments from
the PPAC and the public, the Office is reducing the fee for ex parte
reexamination (proposed at a total of $15,000 for large entities) to
$12,000 (large entity) in this final rule, which is 32 percent below
the Office's cost for these services.
The Office appreciates the suggestion that maintenance fees (which
are paid for by the patent owner) subsidize reduced fees for ex parte
reexaminations applied for by the patent owner. The fees in this final
rule must overall be set, nevertheless, so that total aggregate revenue
equals the total aggregate cost of patent operations. The fee structure
sets many fees below the cost of processing and recovers the lost
revenue from back-end fees such as maintenance fees, which are set
above cost. If the Office were to reduce the fee for ex parte
reexaminations, the Office would need to increase other fees to offset
the lost revenue. In this final rule, the Office decided to set the ex
parte reexamination fee so that the additional costs for this service
are borne not by all patent holders (through the payment of maintenance
fees as a commenter suggested), but instead only by those patent owners
who require ex parte reexaminations. An applicant is not required to
use the ex parte reexamination process. Finally, in this final rule,
the Office sets reduced fee rates for small entity ($6,000) and micro
entity patentees ($3,000) that require an ex parte reexamination to
permit greater access to the ex parte reexamination process.
Comment 43: Several commenters questioned the Office's cost basis
for the reexamination fee. Some questioned why the ex parte
reexamination fee was not more closely aligned with other patent
services like a full initial examination, prioritized examination, or
prosecuting an ex parte patent application. One of the commenters
argued that a reexamination is generally more focused and limited than
a full initial examination and questioned why the cost for ex parte
reexamination is more than four times the cost for an initial search
and examination. The commenter suggested that either the Office is
using costing assumptions that are much too cautious, or the Office
should apply its focus to reigning in the cost of ex parte
reexamination. One of the commenters stated that the Office's cost for
prosecuting an ex parte patent application is only $3,569, and said
that this makes the $15,000 proposed fee for an ex parte reexamination
excessive. Another commenter suggested that ex parte reexamination is
more closely related to prioritized examination given the expedited
nature of the service and
[[Page 4261]]
the need for one or more examiner interviews.
Response: As stated in the response to PPAC Comment 14, requests
for ex parte reexamination generally contain issues that are more
complex than may be present in a typical patent application. As to the
comparison of ex parte reexamination with prioritized examinations,
applications under prioritized examination are required, in addition to
including payment of the $4,000 fee (large entity) set in this rule, to
contain no more than 4 independent claims, and no more than 30 total
claims, in order to maintain prioritized status. In contrast, in ex
parte reexamination practice, there is no limit on the number of patent
claims that may be requested to be reexamined. Furthermore,
applications under prioritized examination receive, on average, a final
disposition within twelve months of prioritized status being granted.
However, in ex parte reexamination practice, the Office must make a
determination whether the request raises a substantial new question of
patentability within three months after the filing date of each
request.
Nonetheless, after updating the patent operating plans and
corresponding aggregate cost estimates in response to public comments,
the Office determined it can reduce the ex parte reexamination fee
further. In this final rule, the Office is reducing the fee for ex
parte reexamination from $15,000 to $12,000 (large entity). The Office
also notes that this rulemaking applies small and micro entity
reductions to the ex parte reexamination fee, resulting in discounts of
50 percent for small entities and 75 percent for micro entity
patentees.
Comment 44: A commenter suggested that the ex parte reexamination
fee should be deferred until reexamination is ordered, so as to reduce
the initial costs on patent owners. Another commenter suggested that it
would be appropriate to apply a two-stage fee for the ex parte
reexamination fee.
Response: As explained in greater detail in the response to PPAC
Comment 15, the Office elected not to adopt a pay-as-you-go approach to
the ex parte reexamination fee, even though it is essentially a two-
part fee, to ensure fee payment and completion of the reexamination in
a timely manner.
Supplemental Examination Fees
Comment 45: Two commenters questioned the rationale that setting a
high fee for supplemental examination would encourage applicants to
submit all relevant information during initial examination. One
commenter believed that the magnitude of the supplemental examination
fee is inconsistent with the congressional intent in creating this
process, which the commenter believes was to allow a patentee, without
limitation, to bring to the USPTO's attention information relevant to
the patent. The commenter felt that the USPTO's stated reason for
setting the supplemental examination fee above cost is inconsistent
with the policy objective of securing a complete, high-quality, and
expeditious initial examination of a patent application. Instead, the
commenter stated that making supplemental examination more accessible--
not less--encourages expeditious initial examination by serving as a
back-up plan, allowing applicants to submit pertinent information
later, thereby reducing the tendency to ``over disclose'' at the front-
end of the process. The other commenter suggested that patentees will
use supplemental examination properly and efficiently and that the fee
should be lowered to promote greater access to the procedure.
Response: In the final rule to implement supplemental examination,
the supplemental examination fees initially were set on a cost recovery
basis, as required by 35 U.S.C. 41(d). See Changes to Implement the
Supplemental Examination Provisions of the Leahy-Smith America Invents
Act and to Revise Reexamination Fees, 77 FR 48828 (Aug. 14, 2012). The
supplemental examination final rule set a fee of $5,140 for processing
and treating a request for supplemental examination, and a fee of
$16,120 for conducting ex parte reexamination ordered as a result of a
supplemental examination, resulting in a total fee of $21,260
(excluding any applicable document size fees). The cost calculations
relating to the supplemental examination final rule were published by
the Office (``Cost Calculations for Supplemental Examination and
Reexamination'') on its Web site at http://www.uspto.gov/aia_implementation/patents.jsp#heading-9.
In response to stakeholder feedback, and after updating and
carefully reviewing the aggregate cost and aggregate revenue of patent
operations, the Office determined that it could reduce these fees in
this final rule to $4,400 and $12,100, respectively, resulting in a
total fee of $16,500 (excluding any applicable document size fees),
which is 23 percent below the Office's costs for providing these
services. In addition, the Office set reduced fee rates in this final
rule for small ($8,250) and micro ($4,125) entities to permit greater
access to the supplemental examination process.
Per the requirements of section 10 of the AIA, the fees in this
final rule are structured so that total aggregate revenue equals the
total aggregate cost of patent operations. The fee structure sets many
fees below cost and recovers the lost revenue from other fees, which
are set above cost. As such, if the Office were to further reduce the
fee for supplemental examination, the Office would have to increase
other fees to offset the lost revenue. The Office determined not to
further subsidize the cost of this service, as it would require the
entire patent applicant community to bear the cost of services utilized
by a limited number of patentees.
Comment 46: A commenter questioned whether the supplemental
examination fee proposed by USPTO is justified, and suggested that
supplemental examination fees should be no more than those charged for
filing ($280) and searching ($600) reissue applications, since the
USPTO's expenses for these processes should be similar. As such, the
commenter suggested that the large entity supplemental examination fee
be no more than $880. Another commenter questioned the Office's
rationale for setting supplemental examination fees at $18,000, given
that a patentee requesting supplemental examination is required to
provide a separate explanation of the relevance and manner of applying
each item of information to each claim of the patent. The commenter
stated that this fee stands in contrast to the average historical cost
of less than $4,000 incurred by the Office where it independently
conducts a complete search and examination. Another commenter suggested
a total fee of $3,120 (the total fees for examining and issuing a
reissue application) for conducting an ex parte reexamination following
supplemental examination.
Response: The supplemental examination process is more analogous to
the ex parte reexamination process than to a reissue proceeding. In
both supplemental examination and ex parte reexamination, the requester
provides a separate explanation of the relevance and manner of applying
each item of information to each claim of the patent, and the Office
must determine whether a substantial new question of patentability is
raised in the request within three months of the filing date of the
request. Further, supplemental examination is enhanced beyond ex parte
reexamination to involve information beyond the patents and
[[Page 4262]]
printed publications and beyond issues of anticipation and obviousness
provided for in ex parte reexamination practice. Therefore, the Office
based its estimate of the cost of supplemental examination proceedings
on its costs for ex parte reexamination proceedings ($17,750), making
adjustments as needed. See responses to Comments 42 and 45 for more
information about how the Office set the fee for supplemental
examination under 35 U.S.C. 41(d).
Comment 47: A commenter suggested that ``staging'' the fees for
supplemental examination would be preferable to charging the fees for
the supplemental examination request and ex parte reexamination if
ordered initially and then refunding the fee for reexamination when it
is not ordered.
Response: The Office has not adopted a pay-as-you-go approach,
because that approach introduces risks related to nonpayment of fees
and procedural delays related to collecting a separate fee after the
Office grants a request for ex parte reexamination. See the Office's
response to PPAC Comment 17 for more information.
Comment 48: A commenter noted that a fee structure that permitted a
patent owner to secure Office consideration, reconsideration, or
correction of all desired items of information in one supplemental
examination would be more reasonable than the current fee structure
where a patent owner can secure Office review of only up to 12 items of
information in a single supplemental examination request and must
pursue additional supplemental examinations for additional items of
information. The commenter recommended that the Office set an
additional fee for each item of information over 12.
Response: The supplemental examination procedure was designed to
enable patent owners to present items of information for consideration,
reconsideration, or correction. The Office is required to conduct and
conclude supplemental examination within three months after a request
is filed. In order to meet this timeframe, the Office is setting a
limit of twelve items of information that a patent owner may submit to
the Office in each request. The purpose of this limit is to strike a
balance between the needs of the patent owner and the ability of the
Office to timely conclude the proceeding. There is, however, no limit
to the number of issues that these twelve items of information can
raise, or to the number of separate requests for supplemental
examination of the same patent that a patent owner can file at any
time.
Even though the basis for most inequitable conduct allegations is
typically far fewer than ten items of information, the Office raised
the limit to 12 items of information in response to the public's
comments. A review of ex parte reexamination requests filed in FY 2011
revealed that the requester relied on twelve or fewer documents in at
least 93 percent of the requests. In addition, the Office is mindful of
the time necessary for examiners to analyze the items of information
submitted, particularly since the items are not limited to patents and
printed publications, and since each item may raise multiple issues.
Accordingly, the supplemental examination final rule limited the number
of items of information to 12 to establish a procedure that not only is
practical, but also enables an examiner to fully, comprehensively, and
timely analyze all submitted items of information and issues to
accurately determine whether there is a substantial new question of
patentability.
Comment 49: Some commenters questioned the Office's cost basis for
the reexamination fee. One commenter questioned whether the Office
based its prospective cost determination on the historical costs of all
ex parte and inter partes reexaminations instead of only patentee-
initiated reexaminations, which are the closest corollaries to
supplemental examination.
Response: As noted in the Office's response to PPAC Comment 16, the
Office does not separately track the time taken by examiners to process
and analyze patentee-initiated ex parte reexaminations versus third
party-requested ex parte reexaminations. The Office will continually
monitor the actual costs associated with reexamination proceedings as
this information becomes available and use it to inform future fee
setting efforts.
Inter Partes Review, Post-Grant Review, Covered Business Method Patent
Review Fees
Comment 50: Several commenters noted that post-grant review and
inter partes review are new proceedings that are based on prospective
costs (rather than historical costs). Specifically, one commenter
suggested that the Office may have been too cautious in its estimates
of prospective costs for post-grant review and inter partes review. The
commenters recommended that the Office reevaluate the cost calculations
for these proceedings as information from actual proceedings becomes
available and adjust the fees once the true cost is known by
experience.
Response: The Office recognizes that the stated costs for the post-
grant review and inter partes review proceedings are based on
prospective costs informed by the Office's managerial cost accounting
data rather than historical costs. (See the Office's methodology to
determine the cost of patent services in a supplemental document
entitled, ``USPTO Section 10 Fee Setting--Activity-Based Information
and Costing Methodology'' available on the USPTO Web site at http://www.uspto.gov/aia_implementation/fees.jsp#heading-1.) As information
on the actual cost of these proceedings becomes available, the Office
will revisit the costs and fees for these proceedings, as suggested by
the commenters, to ensure the respective fees are set at the
appropriate levels.
Comment 51: A commenter suggested that the post-grant review and
inter partes review proceedings are overly complex and should require
only three major submissions to the Board--the initial petition, the
patent owner's response, and the petitioner's responsive comments. The
commenter stated this type of a proceeding would establish a more
streamlined and efficient set of rules that would produce significantly
lower costs and fees for petitioners.
Response: The AIA requires the Office to establish a procedure that
involves more submissions than suggested by the commenter. For
instance, 35 U.S.C. 313 provides that ``the patent owner shall have the
right to file a preliminary response to the petition.'' Also 35 U.S.C.
316(a) and 326(a) require the Office to establish procedures to permit
the parties to submit supplemental information and allow the patent
owner to amend the claims. Therefore, the USPTO cannot adopt the
commenter's suggestion.
Comment 52: A commenter supported the Office's decision in post-
grant and inter partes review proceedings to split the fees into a fee
for the initial petition and a fee for proceeding after grant of a
petition. Several commenters suggested that the Office should establish
fees for other milestones, or ``stage'' the payment of separate fees,
during these proceedings, such as at the request for an oral hearing
and for a rehearing, thereby further reducing front-end costs and
matching fees commensurate with the Office's work. One commenter
suggested that the lack of this staging was a ``missed opportunity.''
Several commenters also supported additional fees during the
proceedings for late-filed and additional motions, especially motions
for supplemental discovery, because these actions could pose costs
[[Page 4263]]
on both the Office and the opposing party.
Response: The AIA requires that the Office establish fees for inter
partes review, post-grant review, and covered business method review to
be paid by the person requesting the review. The fees paid by the
person requesting the review are to be set considering the aggregate
costs of the review. A ``pay-as-you-go'' approach would require patent
owners to pay for some of the costs associated with the review, which
is inconsistent with the statutory framework. In addition, if
petitioners were required to pay for costs associated with additional
submissions by patent owners, this could encourage patent owners to
file additional submissions merely to increase costs for the
petitioner.
Comment 53: A commenter suggested that the Office consider
increased fees for late filed motions to amend (e.g., after patent
owner response), unless there is a new rejection, because such motions
inject uncertainty and greater cost into the proceedings.
Response: In prescribing the administrative trial final rules, the
Office considered the effect of the regulations on the economy, the
integrity of the patent system, the efficient administration of the
Office, and the ability of the Office to timely complete proceedings.
Those rules provide that late motions to amend may only be authorized
when there is a good cause showing or a joint request of the petitioner
and the patent owner to materially advance a settlement. Therefore,
late motions to amend that impact the Office's ability to timely
complete proceedings would be rare. Moreover, charging for late motions
would require patent owners to pay for some of the costs associated
with the reviews, which is inconsistent with the statutory framework.
Comment 54: A commenter expressed support for the reduction in
inter partes review fees from the fees set under 35 U.S.C. 41(d)(2).
Another commenter expressed concern that many small businesses and non-
profits will not have the financial capital to pay large upfront fees
for administrative trial proceedings under the proposed fee structure.
As a result, they will turn to the classic district court litigation
option (at a projected cost between $500,000 and $3.9 million per
party) because of the ability to spread-out fees, even though that
option is overall more expensive and less efficient. Because Congress
intended the administrative trial proceedings to be a less expensive
alternative to litigation, the commenter recommended that the USPTO
change the structure of these fees to provide an option that
distributes the fees over time throughout the course of the
proceedings. Additionally, the commenter suggested that the proper
benchmark for these fees is not merely a lower cost than litigation,
but rather is a fee structure accessible to all.
Response: The Office appreciates the commenter's support for the
fee reductions made in this final rule as compared to fees previously
set for the administrative trials under 35 U.S.C. 41(d). In this final
rule, as proposed in the September NPRM, the Office sets the fees for
inter partes review and post-grant review below cost recovery at what
amounts to a 15 percent discount from the fees originally set under
section 41(d)(2) authority.
Regarding the distribution of fees throughout an administrative
trial proceeding, the AIA requires that the fees for inter partes
review and post-grant review be paid at the time of filing the
petition. See 35 U.S.C. 312(a)(1) and 322(a)(1). Adopting a ``spread-
out'' fee system as suggested by the commenter would be contrary to the
statute and congressional intent. Further, administrative trials before
the Office will be conducted faster than district court litigation that
on the average take a few years because, in the absence of good cause,
the Office is required to issue the final determination in the review
no later than one year after institution. See 35 U.S.C. 316(a)(11) and
326(a)(11). Therefore, the benefit of distributing the fees over such a
short time period would not be significant. Finally, in a ``spread-
out'' fee system, the petitioner could cause unnecessary delays through
late payment or failure to pay required fees.
Comment 55: A commenter stated that the proposed fees for
administrative trial proceedings (e.g., inter partes review, post-grant
review, and the transitional program for covered business patents) are
too high for small businesses and non-profits. The commenter argued
that the high fees for these proceedings would make them inaccessible
to many stakeholders. The commenter therefore recommended that the
USPTO revise the fee schedule to ensure accessibility to all
stakeholders. Lower fees, the commenter argued, would better satisfy
Congress's intent that proceedings be broadly accessible and the goal
of creating a healthier, more efficient patent system.
Response: As noted in the Office's response to Public Comment 22,
the administrative trials are new services for which the Office has no
historical cost basis. Setting the fees for these often complex and
potentially costly services too far below their prospective costs is
risky. In addition, the scope of section 10(b) of the AIA does not
include the administrative trial services, which means that the Office
cannot set small and micro entity fees for these services. The reduced
fees in this final rule attempt to make these proceedings more
accessible while recognizing the need to facilitate effective
administration of the patent system. The Office will continually
revisit the fees for these services to determine the right balance
between the fee and the cost.
Comment 56: A commenter argued that the fees for challenging each
claim in excess of 20 in administrative trial proceedings are too high
for small businesses and non-profits, and noted that the proposed fee
structure would also create harmful incentives for patent applicants by
rewarding applications containing numerous claims. The commenter gave
the example that, for a post-grant review on a patent with 200 claims,
the petition fees alone would amount to $174,000 and the petitioner
must also incur additional costs relating to discovery. The commenter
expressed concern that these high fees and the claim-based fee
structure would make the new post-grant proceedings inaccessible for
small businesses and non-profit organizations.
Response: As previously discussed, the Office does not have
statutory authority to provide a small or micro entity discount on fees
for administrative trials. Additionally, in the Office's experience
with administrative trials in the first few months after they became
available, petitioners are not challenging an excessively large number
of claims. The Office received a total of 80 petitions from September
16, 2012, through November 30, 2012, and only 23 petitions challenged
more than 20 claims (29 percent, 23 out of 80). The highest number of
excess claims challenged thus far was 58 claims, which is far from the
200 claims discussed in the commenter's example. In the petitions that
challenge 20 claims or less, the average number of challenged claims
was 11 claims, which is well below the 20 claims permitted without
excess claims fees.
The current experience in the number of challenged claims in inter
partes review and covered business review is entirely consistent with
historical data for reexaminations, i.e., that large number of claims
are not often challenged even where one fee covers all claims
challenged. (See Response to Comment 238 in Trial Final Rule, 77 FR
48612, 48668 (Aug. 14, 2012)). Moreover, a party need not challenge all
[[Page 4264]]
claims in a patent, such as when only certain claims are alleged to be
infringed by the party challenging the patent. Finally, the fee charged
is to recover the total extra cost to the Office to review the larger
number of claims, and given the balanced nature of the fee structure,
if this fee did not recover costs, other fees would have to be
increased.
Comment 57: A commenter expressed concern that while there are $600
and $800 fees per excess claims in inter partes review and post-grant
review respectively, the fee is only $80 for claims in excess of 20 in
a patent application. Therefore, the commenter argued that this would
create an incentive for applicants to file applications with large
numbers of patents claims in order to make it inaccessible for small
businesses and non-profit organizations to challenge their patent
through the new administrative trial procedures. By shutting out small
businesses and non-profit organizations as third party challengers, the
commenter asserted that the fee structure would have a negative effect
on patent quality and innovation.
Response: To date, the percentage of patents being challenged is
very small. Through November 2012, the Office received a total of 80
petitions for review. In contrast, the Office issues more than 10,000
patents per month. Adding one claim in each of the patents would cost
orders of magnitude more than paying for review of an additional claim
given the large difference in the number of reviews relative to the
number of patents. Furthermore, the review fees are set considering the
total cost of conducting the proceedings. Setting the fees further
below cost would require other patent applicants, namely innovators, to
subsidize patent challengers since the aggregate cost of the Office
must be recovered. The AIA requires that the fees for inter partes
review and post-grant review be paid by the person requesting the
review at the time of filing the petition. See, e.g., 35 U.S.C. 311 and
312(a)(1). Finally, as previously discussed, the Office does not have
statutory authority to provide a small or micro entity discount on fees
for inter partes review and post-grant review.
Comment 58: One commenter criticized the fee structure as
subsidizing the prosecution of invalid patents. Because the costs of
review are borne by the challenger, even when the patent is shown to be
invalid, the commenter argued that the challenger pays the full price
for performing a public service to remedy a problem created by the
patent applicant and the Office. The commenter suggested that the
Office establish a fee-shifting regime for inter partes reviews, post-
grant reviews, and covered business method patent reviews to address
this free rider problem. Specifically, the commenter argues, if a
patent is invalidated, the patent owner should be required to abandon
the patent, commit to reimburse the challenger, or pay the costs and
fees associated with the challenger's petition. In this way, the fee
schedule would create the right incentives for applicants to undertake
due diligence for the technology they claim to have invented.
Response: The AIA requires that the fees for inter partes review
and post-grant review be paid by the person requesting the review at
the time of filing the petition. See, e.g., 35 U.S.C. 311 and
312(a)(1). This final rule to reset those fees under the new authority
in section 10 of the AIA does not provide for changing the entity
paying the fee but rather the amount paid by the entity requesting
review. Adopting a system as suggested by the commenter would be
inconsistent with the statute and congressional intent.
Maintenance Fees
Comment 59: A commenter expressed support for reasonable
subsidization of selected patent-related services with income from
maintenance fees, but suggested that the Office revisit its decision to
impose such large maintenance fee increases. The commenter suggested
that companies will have to counterbalance the maintenance fee
increases with a decrease in application filings, which may have an
unintended impact on USPTO operations.
Response: The Office's proposed fee structure is designed to
generate enough aggregate revenue to recover the aggregate cost of
patent operations and support American innovation with low entry fees
and a mechanism to release information into the public domain once a
patent holder deems the value of their innovation is lower than the
fees needed to maintain protection. The USPTO has carefully considered
the effect of each of the fee changes in this final rule on the demand
for the Office's services through an elasticity analysis and other
reviews as described above. As discussed in response to PPAC Comment
21, the Office will continually monitoring fees after this initial fee
setting effort.
Comment 60: A commenter questioned the Office's rationale for
increasing the three maintenance fees at different rates. The commenter
suggested that the USPTO reconsider these increases and provide a
practical fee schedule with a clearer, more specific rationalization.
Response: Keeping front-end fees below cost necessitates an
increase in post-issuance fees. The Office selected a staged increase
in maintenance fees, so that patent holders will pay higher maintenance
fees later in the life of their patents, at a time when they can make
more informed decisions regarding their patents' value in the
marketplace.
Excess Claims Fees
Comment 61: A commenter suggested that the Office's excess claims
fees are illogical and too high. The commenter also questioned the
rationale for thresholds of 20 total claims and three independent
claims.
Response: The fee difference between total claims in excess of
twenty and independent claims in excess of three is based on the fact
that an independent claim requires a completely separate prior art
patentability determination. This requires more examination effort than
required for a dependent claim, because the dependent claim is
allowable over the prior art given that the claim from which it depends
is allowable over the prior art. For example, if an applicant cancels 3
independent claims and presents 17 new independent claims, to cover 17
dependent claims that were previously allowed and are now rewritten in
independent form, the applicant will receive 20 completely separate
prior art patentability determinations (17 for the current independent
claims and three for the independent claims previously presented and
now canceled). Thus, requiring an applicant in this situation to pay
for 14 independent claims in excess of three is reasonable. An
applicant can avoid this situation by drafting claims in a chain from
the broadest to which the applicant feels he/she is entitled to the
narrowest the applicant is willing to accept, rather than drafting a
set of dependent claims which all depend from an independent claim. To
avoid excess claims fees, the applicant could also have canceled the
original 3 independent claims, redrafted only 3 of the 17 dependent
claims in independent form, and changed the dependency of the remaining
14 claims. Also, after calculating the aggregate cost of patent
operations as compared to the aggregate revenue generated from the
patent fee schedule contained in this final rule, the Office determined
that the excess claims fees will remain at the rate proposed so that
other fees do not need to be increased to generate additional aggregate
revenue to cover the aggregate cost of patent operations.
[[Page 4265]]
Comment 62: A commenter stated that the 70 percent increase in the
excess independent claim fees does not reflect the realities of
prosecution practices and should be reduced. The commenter further
suggested that most unrelated independent claims would be removed from
the application through restrictions, leaving a closely related set of
claims that would pose little additional burden to examiners. A second
commenter stated that the increase in the excess independent claim fees
does not reflect the realities of using a variety of claim types and
scope during patent prosecution and should be reduced. The commenter
explained that in technologies where multiple restriction requirements
are often imposed, using high fees to prevent the filing of all claims
necessary for a complete restriction requirement can effectively
deprive applicants of the safe harbor for restricted claim groups under
35 U.S.C. 121.
Response: As set forth in MPEP 804, claims that are unrelated
(e.g., unconnected in design, operation, and effect) are generally
subject to restriction. Because independent claims in most applications
are at least related, restriction requirements are usually based on a
determination by the examiner that the claims are distinct. Therefore,
the commenter's observation offers little relief from the burden
imposed by excessive independent claims. The deterrent effect that 35
U.S.C. 41 has provided against excess claims has been insufficient in
the past. In view of the increasing rate of application filings and an
increasing long term trend of more applications containing an excessive
number of claims, the Office stated in 1998 that ``the problem with
applications containing an excessive number of claims is now reaching a
critical stage.'' See Changes to Implement the Patent Business Goals,
Advance Notice of Proposed Rulemaking, 63 FR 53497, 53507 (Oct. 5,
1998). In addition to helping the Office meet its policy goals of
reducing application processing time, application pendency, and
examination burden, the increase in excess claims fees is also
justified because fees paid by applicants filing a large number of
claims will be more commensurate with the resources the Office must
expend examining the large number of claims. For a detailed explanation
on this topic, see the Office's response to PPAC Comment 12.
Comment 63: A commenter stated that the proposed fee increase for
excess claims from $250 to $420 is excessive. The commenter also
suggested that the number of independent claims that may be presented
without incurring a fee is too low, given that more than three
independent claims are often necessary to effectively cover the varying
aspects of a single invention. Another commenter noted that the Office
does not provide historic costs for consideration of claims and it is
not clear why a fourth independent claim would cost $420 to examine.
Response: The Office realizes that excess claiming can be
strategically useful to inventors in today's legal environment, but
notes that excess claiming can be a significant burden to the patent
system and the Office. The Office set the excess claims fees after
carefully considering its policy goals of reducing application
processing time, application pendency, and examination burden, and
after considering how the increase in excess claims fees will allow the
Office to recover the resources it must expend examining large numbers
of claims. For a detailed explanation on this topic, see the Office's
response to PPAC Comment 22.
Correct Inventorship Fee
Comment 64: Several commenters suggested that the $1,000 fee for
correcting inventorship after issuance of a first action on the merits
is not appropriate in all cases. Two commenters noted that where claims
are limited by amendments or restrictions during examination, inventors
are commonly removed. Three commenters suggested that the fee would be
more appropriate when an inventor is added to an application after the
first action, but all expressed continued support for the fee's
elimination or reduction. Another commenter stated that an applicant
may need to remove inventors after the Office requires a restriction of
claims. The commenter stated that applicants are often able to make
these changes using Application Data Sheets, thereby removing the
Office's expense in updating records. In these and related cases, the
commenter suggested that the Office consider eliminating the fee or
having a reduced fee where the applicant in good faith could not have
anticipated such a requirement or could not have taken alternative
action (e.g., correction via the Application Data Sheet).
Response: After considering the comments submitted about the
correct inventorship fee, the Office is reducing the fee to $600 (large
entity rate) from the $1,000 fee proposed in the NPRM. Also, the Office
has decided not to assess this fee if an applicant submits a statement
that the request to correct or change the inventorship is due solely to
the cancelation of claims in the application. See fee rationale at Part
V. Individual Fee Rationale for more background information about this
fee. For further explanation about why this fee will be charged in the
various circumstances identified above by commenters, see the Office's
response to PPAC Comment 23.
Assignment Fees
Comment 65: A commenter recommended that the USPTO either (1)
provide an automated assignment recordation framework by linking the
Electronic Filing System (EFS-Web) and the Electronic Patent Assignment
System (EPAS), or (2) authorize the transfer of a patent from the
inventor to the original applicant without the recordation of an
assignment.
Response: 37 CFR 1.46(b)(1) provides that for assignee-applicants,
evidence of the assignment or obligation to assign should be recorded
in the Office ``no later than the date the issue fee is paid in the
application.'' Accordingly, assignment recordation is not a
prerequisite for the transfer of rights in an application from an
inventor to an assignee. With regard to linking EFS-Web and EPAS, the
Office has already instituted a process that allows the Office to
transfer data from one system to the other for the limited purpose of
facilitating the filing of ``assignment statements'' in patent
applications. An ``assignment statement'' is an assignment that
contains the information and statements of an oath or declaration. As
explained in the AIA Inventor's Oath or Declaration Quick Reference
Guide, the patent application must first be filed via EFS-Web. Then,
preferably on the same day the application was filed via EFS-Web, the
assignment-statement should be recorded in EPAS. There is a box in EPAS
that the applicant must check in order to notify the Office that the
assignment statement is being used as the inventor's oath or
declaration. The Office will then place a copy of the assignment
statement into the application file. The Guide is available at http://www.uspto.gov/aia_implementation/inventors-oath-or-declaration-quick-reference-guide.pdf.
VII. Discussion of Specific Rules
In this section the Office provides tables of all fees set or
adjusted in the final rule. To permit the reader to crosswalk the fee
changes contained in this final rule with individual fee amounts
contained in the Office's fee schedule (see http://www.uspto.gov/web/offices/ac/qs/ope/fee100512.htm), Tables 42 through 52 contain a
distinct row for each individual grouping of fee
[[Page 4266]]
codes (i.e., large, small, and micro entity). Therefore, when multiple
types of fees are contained within the same CFR section (e.g.,
application size fees at 1.16(s)), the Office lists each type of fee
and its associated fee code separately (e.g., utility, design, plant,
reissue, and provisional application size fees). Thus, where
appropriate, the CFR sections are repeated for each of the respected
fee codes in the tables.
When rules are added or modified for reasons other than fee amount
changes, the Office provides explanatory language after the respective
table summarizing the fee amount changes (i.e., Sec. 1.17 fees for
correction of inventorship).
Title 37 of the Code of Federal Regulations, Parts 1, 41, and 42
are amended to read as follows:
Section 1.16: Sections 1.16(a) through (s) are 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 Sec. 1.16 are shown in Table 42.
Table 42
--------------------------------------------------------------------------------------------------------------------------------------------------------
Current fees (dollars) Final fees (dollars)
CFR section Fee code Description ----------------------------------------------------------------
Large Small Large Small Micro
--------------------------------------------------------------------------------------------------------------------------------------------------------
1.16(a)................................. 1011/2011/3011 Basic Filing Fee--Utility.. 390 195 280 140 70
1.16(a)................................. 4011 Basic Filing Fee--Utility N/A 98 N/A 70 N/A
(electronic filing for
small entities).
1.16(b)................................. 1012/2012/3012 Basic Filing Fee--Design... 250 125 180 90 45
1.16(b)................................. 1017/2017/3017 Basic Filing Fee--Design 250 125 180 90 45
(CPA).
1.16(c)................................. 1013/2013/3013 Basic Filing Fee--Plant.... 250 125 180 90 45
1.16(d)................................. 1005/2005/3005 Provisional Application 250 125 260 130 65
Filing Fee.
1.16(e)................................. 1014/2014/3014 Basic Filing Fee--Reissue.. 390 195 280 140 70
1.16(e)................................. 1019/2019/3019 Basic Filing Fee--Reissue 390 195 280 140 70
(CPA).
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 250 125 420 210 105
Excess of Three.
1.16(h)................................. 1204/2204/3204 Reissue Independent Claims 250 125 420 210 105
in Excess of Three.
1.16(i)................................. 1202/2202/3202 Claims in Excess of 20..... 62 31 80 40 20
1.16(i)................................. 1205/2205/3205 Reissue Claims in Excess of 62 31 80 40 20
20.
1.16(j)................................. 1203/2203/3203 Multiple Dependent Claim... 460 230 780 390 195
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.... 760 380 2,160 1,080 540
1.16(s)................................. 1081/2081/3081 Utility Application Size 320 160 400 200 100
Fee--For Each Additional
50 Sheets That Exceeds 100
Sheets.
1.16(s)................................. 1082/2082/3082 Design Application Size.... 320 160 400 200 100
Fee--For Each Additional 50
Sheets That Exceeds 100
Sheets.
1.16(s)................................. 1083/2083/3083 Plant Application Size Fee-- 320 160 400 200 100
For Each Additional 50
Sheets That Exceeds 100
Sheets.
1.16(s)................................. 1084/2084/3084 Reissue Application Size... 320 160 400 200 100
Fee--For Each Additional 50
Sheets That Exceeds 100
Sheets.
1.16(s)................................. 1085/2085/3085 Provisional Application 320 160 400 200 100
Size Fee--For Each
Additional 50 Sheets That
Exceeds 100 Sheets.
--------------------------------------------------------------------------------------------------------------------------------------------------------
[[Page 4267]]
Section 1.17: Sections 1.17(a)(1) through (a)(5), (c), (e) through
(i), (k) through (m), and (p) through (t) are amended and (d) and
(e)(2) are added to set forth the application processing fees as
authorized under section 10 of the Act. The changes to the fee amounts
indicated in Sec. 1.17 are shown in Table 43.
Table 43
--------------------------------------------------------------------------------------------------------------------------------------------------------
Current fees (dollars) Final 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 570 285 600 300 150
Second Month.
1.17(a)(3).......................... 1253/2253/3253 Extension for Response Within 1,290 645 1,400 700 350
Third Month.
1.17(a)(4).......................... 1254/2254/3254 Extension for Response Within 2,010 1,005 2,200 1,100 550
Fourth Month.
1.17(a)(5).......................... 1255/2255/3255 Extension for Response Within 2,730 1,365 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 N/A N/A 600 300 150
First Action on Merits.
1.17(e)(1).......................... 1801/2801/3801 Request for Continued 930 465 1,200 600 300
Examination (RCE) (1st
request) (see 37 CFR 1.114).
1.17(e)(2).......................... NEW Request for Continued N/A N/A 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)(1).......................... 1053/2053/3053 Non-English Specification...... 130 N/A 140 70 35
1.17(i)(2).......................... 1808 Other Publication Processing 130 N/A 130 N/A N/A
Fee.
1.17(i)(2).......................... 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 630 315 640 320 160
Abandoned Application.
1.17(m)............................. 1453/2453/3453 Petition to Revive 1,890 945 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.
--------------------------------------------------------------------------------------------------------------------------------------------------------
Correction of Inventorship: The Office sets the fee to correct
inventorship after the first action on the merits at $600 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. As discussed in Part V. Individual Fee
Rationale, the fee will not be required when inventors are deleted and
the request to correct or change inventorship is accompanied by a
statement that the request to correct or change the inventorship is due
solely to
[[Page 4268]]
the cancelation of claims in the application.
Section 1.17(d) is added, as follows: For correction of
inventorship in an application after the first action on the merits:
By a micro entity (Sec. 1.29)............................ $150.00
By a small entity (Sec. 1.27(a))......................... 300.00
By other than a small or micro entity...................... 600.00
Request for Continued Examination (RCE): As discussed in Part V.
Individual Fee Rationale, section of this final rule, the Office
divides the fee for RCEs into two parts: (1) A lower fee for a first
RCE; and (2) a second, higher fee for a second or subsequent RCE.
Section 1.17(e) is amended as follows: 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 (Sec. 1.29)............................ $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 (Sec. 1.29)............................ $425.00
By a small entity (Sec. 1.27(a))......................... 850.00
By other than a small or micro entity...................... 1,700.00
Section 1.18: Sections 1.18(a) through (f) are amended to set forth
the patent issue fees as authorized under section 10 of the Act. This
section now distinguishes between issue and publication fees paid
before or after January 1, 2014. The changes to the fee amounts
indicated in Sec. 1.18 are shown in Table 44.
Table 44
--------------------------------------------------------------------------------------------------------------------------------------------------------
Current fees (dollars) Final fees (dollars)
CFR section Fee code Description ----------------------------------------------------------------
Large Small Large Small Micro
--------------------------------------------------------------------------------------------------------------------------------------------------------
1.18(a)(1).......................... 1501/2501/3501 Utility Issue Fee, paid on or 1,770 885 960 480 240
after January 1, 2014.
1.18(a)(1).......................... 1511/2511/3511 Reissue Issue Fee, paid on or 1,770 885 960 480 240
after January 1, 2014.
1.18(a)(2).......................... 1501/2501/3501 Utility Issue Fee, paid before 1,770 885 1,780 890 445
January 1, 2014.
1.18(a)(2).......................... 1511/2511/3511 Reissue Issue Fee, paid before 1,770 885 960 480 240
January 1, 2014.
1.18(b)(1).......................... 1502/2502/3502 Design Issue Fee, paid on or 1,010 505 560 280 140
after January 1, 2014.
1.18(b)(2).......................... 1502/2502/3502 Design Issue Fee, paid before 1,010 505 1,020 510 255
January 1, 2014.
1.18(c)(1).......................... 1503/2503/3503 Plant Issue Fee, paid on or 1,390 695 760 380 190
after January 1, 2014.
1.18(c)(2).......................... 1503/2503/3503 Plant Issue Fee, paid before 1,390 695 1,400 700 350
January 1, 2014.
1.18(d)(1).......................... 1504 Publication Fee for Early, 300 N/A 0 N/A N/A
Voluntary, or Normal
Publication, paid on or after
January 1, 2014.
1.18(d)(2).......................... 1504 Publication Fee for Early, 300 N/A 300 N/A N/A
Voluntary, or Normal
Publication, paid before
January 1, 2014.
1.18(d)(3).......................... 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.
--------------------------------------------------------------------------------------------------------------------------------------------------------
Publication Fees: As discussed in Part V. Individual Fee Rationale,
the Office is not adjusting fee for republication of a patent
application (1.18(d)(2)). The Office keeps this fee at its existing
rate for each patent application that must be published again after a
first publication for $0.
Section 1.18 is amended by revising paragraph (d) to include:
(1) Publication fee on or after January 1, 2014............ $0.00
(2) Publication fee before January 1, 2014................. 300.00
(3) Republication fee (Sec. 1.221(a)).................... 300.00
Section 1.19: Sections 1.19(a) through (g) are amended to set forth
the patent document supply fees as authorized under section 10 of the
Act. The changes to the fee amounts indicated in Sec. 1.19 are shown
in Table 45.
[[Page 4269]]
Table 45
--------------------------------------------------------------------------------------------------------------------------------------------------------
Current fees (dollars) Final fees (dollars)
CFR section Fee code Description ----------------------------------------------------------------
Large Small Large Small Micro
--------------------------------------------------------------------------------------------------------------------------------------------------------
1.19(a)(1)............................. 8001 Printed Copy of Patent w/o Color, 3 N/A 3 N/A N/A
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 than 25 N/A 25 N/A N/A
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 Documents, 25 N/A 25 N/A N/A
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.
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, Abstract 25 N/A 25 N/A N/A
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 in 3 N/A 3 N/A N/A
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
[[Page 4270]]
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) through (k) are amended to set forth
the reexamination fees, disclaimer fees, maintenance fees, and
supplemental examination 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) Final 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 17,750 N/A 12,000 6,000 3,000
Reexamination.
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 62 31 80 40 20
of 20 and Also in Excess of
the Number of Claims in the
Patent Under Reexamination.
1.20(c)(6).......................... 1824 Filing a Petition in a 1,930 N/A 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 at
1.20(c)(1)).
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 1,150 575 1,600 800 400
Years.
1.20(f)............................. 1552/2552/3552 Maintenance Fee Due at 7.5 2,900 1,450 3,600 1,800 900
Years.
1.20(g)............................. 1553/2553/3553 Maintenance Fee Due at 11.5 4,810 2,405 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.
[[Page 4271]]
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).......................... 1826 Processing and Treating a 5,140 N/A 4,400 2,200 1,100
Request for Supplemental
Examination.
1.20(k)(2).......................... 1827 Ex Parte Reexamination Ordered 16,120 N/A 12,100 6,050 3,025
as a Result of a Supplemental
Examination Proceeding.
1.20(k)(3)(i)....................... 1828 For Processing and Treating, in 170 N/A 180 90 45
a Supplemental Examination
Proceeding, a Non-Patent
Document Over 20 Sheets in
Length, per Document Between
21-50 Pages.
1.20(k)(3)(ii)...................... 1829 For Processing and Treating, in 280 N/A 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), (a)(2), (a)(4), (a)(5), (a)(7),
(a)(8), (a)(9), (a)(10), (e), (g) through (k), and (n) are amended to
set forth miscellaneous fees and charges as authorized under section 10
of the Act. This section includes a fee related to the enrollment of
registered patent attorneys and agents (see Sec. 1.21(a)(7)), the
collection of which has been stayed since 2009. See www.uspto.gov/ip/boards/oed/practitioner/agents/forregisteredpractitioners.jsp. In the
calculations for this rulemaking, the Office has assumed that it will
not collect these fees. The Office also has published a separate Notice
of Proposed Rulemaking in the Federal Register, Changes to
Representation of Others Before the United States Patent and Trademark
Office, 77 FR 64190 (Oct. 18, 2012), in which it has proposed to remove
these fees entirely. Although that rulemaking may remove the fee
entirely, it will not affect this rulemaking since the Office has
assumed in this rulemaking that it will not collect the fee. The
changes to the fee amounts indicated in Sec. 1.21 are shown in Table
47.
Table 47
--------------------------------------------------------------------------------------------------------------------------------------------------------
Current fees (dollars) Final 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 10 N/A 10 N/A N/A
as an Attorney or Agent.
1.21(a)(4)(i)............................... 9006 Certificate of Good Standing 20 N/A 20 N/A N/A
as 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).
[[Page 4272]]
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.
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 N/A N/A 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 25 N/A 25 N/A N/A
Gazette.
1.21(j)..................................... 8023 Labor Charges for Services, 40 N/A 40 N/A N/A
per 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.
--------------------------------------------------------------------------------------------------------------------------------------------------------
Section 1.21 is amended by revising paragraph (h) as follows: For
recording each assignment, agreement, or other paper relating to the
property in a patent or application, per property:
If submitted electronically, on or after January 1, 2014... $0.00
If not submitted electronically............................ 40.00
Section 1.27: Section 1.27(c)(3) is amended to provide that the
payment of the exact amount of the small entity transmittal fee set
forth in Sec. 1.445(a)(1) or the small entity international search fee
set forth in Sec. 1.445(a)(2) to a Receiving Office other than the
United States Receiving Office in the exact amount established for that
Receiving Office pursuant to PCT Rule 16 will also be treated as a
written assertion of entitlement to small entity status. This change
applies the national practice of permitting an applicant to obtain
small entity status by payment of certain national fees in the small
entity amount to international applications.
Section 1.27 is amended to include the following language at
paragraph (c)(3):
Assertion by payment of the small entity basic filing, basic
transmittal, basic national fee, or international search fee. The
payment, by any party, of the exact amount of one of the small entity
basic filing fees set forth in Sec. 1.16(a), 1.16(b), 1.16(c),
1.16(d), 1.16(e), the small entity transmittal fee set forth in Sec.
1.445(a)(1), the small entity international search fee set forth in
Sec. 1.445(a)(2) to a Receiving Office other than the United States
Receiving Office in the exact amount established for that Receiving
Office pursuant to PCT Rule 16, or the small entity basic national fee
set forth in Sec. 1.492(a), will be treated as a written assertion of
entitlement to small entity status even if the type of basic filing,
basic transmittal, or basic national fee is inadvertently selected in
error.
* * * * *
Section 1.445: Sections 1.445(a)(1)(i), and (a)(2) through (a)(4)
are amended to set forth the international application transmittal and
search fees as authorized under section 10 of the Act. This section now
distinguishes between issue and publication fees paid before or after
January 1, 2014. The changes to the fee amounts indicated in Sec.
1.445 are shown in Table 48.
[[Page 4273]]
Table 48
--------------------------------------------------------------------------------------------------------------------------------------------------------
Current fees (dollars) Final fees (dollars) Effective Jan.
-------------------------- 1, 2014
CFR section Fee code Description --------------------------------------
Large Small Large Small Micro
--------------------------------------------------------------------------------------------------------------------------------------------------------
1.445(a)(1)(i)(A) and (B)................... 1601 PCT International Stage 240 N/A 240 120 60
Transmittal Fee.
1.445(a)(2)(i) and (ii)..................... 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)(i) and (ii)..................... 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)(i) and (ii)..................... 1621 Transmitting Application to 240 N/A 240 120 60
International Bureau to Act
as Receiving Office.
--------------------------------------------------------------------------------------------------------------------------------------------------------
Correction of Inventorship: Section 1.48 is amended to add a new
paragraph that will require the fee set in Sec. 1.17(d) when inventors
are deleted, except for when the request to correct or change
inventorship is accompanied by a statement that the request to correct
or change the inventorship is due solely to the cancelation of claims
in the application.
Section 1.48 is amended by adding the following language at
paragraph (c): Any request to correct or change the inventorship under
paragraph (a) of this section filed after the Office action on the
merits has been given or mailed in the application must also be
accompanied by the fee set forth in Sec. 1.17(d), unless the request
is accompanied by a statement that the request to correct or change the
inventorship is due solely to the cancelation of claims in the
application.
Section 1.482: Sections 1.482(a)(1) and (a)(2) are amended to set
forth the international application preliminary examination fees as
authorized under section 10 of the Act. This section now distinguishes
between issue and publication fees paid before or after January 1,
2014. The changes to the fee amounts indicated in Sec. 1.482 are shown
in Table 49.
Table 49
--------------------------------------------------------------------------------------------------------------------------------------------------------
Current fees (dollars) Final Fees (dollars) Effective Jan.
-------------------------- 1 2014
CFR Section Fee code Description --------------------------------------
Large Small Large Small Micro
--------------------------------------------------------------------------------------------------------------------------------------------------------
1.482(a)(1)(i) (A) and (B)................. 1605 PCT International Stage 600 N/A 600 300 150
Preliminary Examination.
Fee--U.S. was the ISA........
1.482(a)(1)(ii) (A) and (B)................ 1606 PCT International Stage 750 N/A 760 380 190
Preliminary Examination.
Fee--U.S. was not the ISA....
1.482(a)(2) (i) and (ii)................... 1607 PCT International Stage 600 N/A 600 300 150
Supplemental Examination Fee
per Additional Invention.
--------------------------------------------------------------------------------------------------------------------------------------------------------
Section 1.492: The fee amounts in Sec. 1.492(a), (b)(1) through
(b)(4), (c)(1), (c)(2), (d) through (f), (h), (i) and (j) are amended
to set forth the basic national, 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) Final fees (dollars)
CFR Section Fee code Description ----------------------------------------------------------------
Large Small Large Small Micro
--------------------------------------------------------------------------------------------------------------------------------------------------------
1.492(a)................................... 1631/2631 Basic PCT National Stage Fee. 390 195 280 140 70
1.492(b)(1)................................ 1640/2640 PCT National Stage Search 0 0 0 0 0
Fee--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 120 60 120 60 30
Fee--U.S. was the ISA.
[[Page 4274]]
1.492(b)(3)................................ 1642/2642 PCT National Stage Search 500 250 480 240 120
Fee--Search Report Prepared
and Provided to USPTO.
1.492(b)(4)................................ 1632/2632 PCT National Stage Search 630 315 600 300 150
Fee--All Other Situations.
1.492(c)(1)................................ 1643/2643 PCT National Stage 0 0 0 0 0
Examination 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 250 125 720 360 180
Fee--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-- 62 31 80 40 20
Extra Total (over 20).
1.492(f)................................... 1616/2616 PCT National Stage Claims-- 460 230 780 390 195
Multiple Dependent.
1.492(h)................................... 1617/2617 Search Fee, Examination Fee 130 65 140 70 35
or 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 320 160 400 200 100
Application Size Fee--for
Each Additional 50 Sheets
that Exceeds 100 Sheets.
--------------------------------------------------------------------------------------------------------------------------------------------------------
Section 41.20: Sections 41.20(a) and (b) are 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.
Table 51
--------------------------------------------------------------------------------------------------------------------------------------------------------
Current fees (dollars) Final 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............. 630 315 800 400 200
41.20(b)(2)(i)............................. 1402/2402 Filing a Brief in Support of 630 315 0 0 0
an Appeal in an Application
or Ex Parte Reexamination
Proceeding.
41.20(b)(2)(ii)............................ NEW Filing a Brief in Support of N/A N/A 2,000 1,000 500
an Appeal in an Inter Partes
Reexamination Proceeding.
41.20(b)(3)................................ 1403/2403 Request for Oral Hearing..... 1,260 630 1,300 650 325
41.20(b)(4)................................ NEW Forwarding an Appeal in an N/A N/A 2,000 1,000 500
Application or Ex Parte
Reexamination Proceeding to
the Board.
--------------------------------------------------------------------------------------------------------------------------------------------------------
Appeal Fees: As discussed in Part V. Individual Fee Rationale, the
Office is adjusting the fee structure for appeal fees to recognize 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 PTAB for a decision. The Office is setting a new fee to forward an
appeal in an application or ex parte reexamination proceeding to the
PTAB for review.
Section 41.20(b) is amended by adding a new paragraph (4).
Section 41.37: Section 41.37 is amended by revising paragraphs (a)
and (b).
Section 41.45: Section 41.45.
Section 42.15: Sections 42.15(a) through (d) are 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.
[[Page 4275]]
Table 52
--------------------------------------------------------------------------------------------------------------------------------------------------------
Current fees (dollars) Final fees (dollars)
CFR section Fee code Description ----------------------------------------------------------------
Large Small Large Small Micro
--------------------------------------------------------------------------------------------------------------------------------------------------------
42.15(a)(1)............................. 1406 Inter Partes Review Request Fee-- 27,200 N/A 9,000 N/A N/A
Up to 20 Claims.
42.15(a)(2)............................. NEW Inter Partes Review Post- N/A N/A 14,000 N/A N/A
Institution Fee--Up to 15 Claims.
42.15(a)(3)............................. 1407 In Addition to the Inter Partes 600 N/A 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 N/A N/A 400 N/A N/A
Post-Institution Fee, for
Requesting Review of Each Claim
in Excess of 15.
42.15(b)(1)............................. 1408 Post-Grant or Covered Business 35,800 N/A 12,000 N/A N/A
Method Patent Review Request Fee--
Up to 20 Claims.
42.15(b)(2)............................. NEW Post-Grant or Covered Business N/A N/A 18,000 N/A N/A
Method Patent Review Post-
Institution Fee--Up to 15 Claims.
42.15(b)(3)............................. 1409 In Addition to the Post-Grant or 800 N/A 250 N/A N/A
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 or N/A N/A 550 N/A N/A
Covered Business Method Patent
Review Post-Institution Fee, for
Requesting Review of Each Claim
in Excess of 15.
42.15(c)(1)............................. XXXX Derivation Petition............... 400 N/A 400 N/A N/A
42.15(d)................................ 1411 Request to Make a Settlement 400 N/A 400 N/A N/A
Agreement Available.
--------------------------------------------------------------------------------------------------------------------------------------------------------
Section 42.15: Section 42.15 is added.
VIII. Rulemaking Considerations
A. Regulatory Flexibility Act
The USPTO publishes this Final Regulatory Flexibility Analysis
(FRFA) as required by the Regulatory Flexibility Act (RFA) (5 U.S.C.
601, et seq.) to examine the impact of the Office's rule to implement
the fee setting provisions of the Leahy-Smith America Invents Act (Pub.
L. 112-29, 125 Stat. 284) (the Act) on small entities.
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 a FRFA, unless the agency certifies under 5 U.S.C.
605(b) that the rule, if implemented, will not have a significant
economic impact on a substantial number of small entities. See 5 U.S.C.
604, 605. The Office published an Initial Regulatory Flexibility
Analysis (IRFA), along with the NPRM, on September 6, 2012 (77 FR
55028). The Office received no comments from the public directly
applicable to the IRFA, as stated below in Item 2.
1. A Statement of the Need for, and Objectives of, the Rule
The objective of the rule 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 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 application pendency, improving patent
quality, upgrading patent business 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 fund a patent
operating reserve, a step toward achieving the Office's financial
sustainability goals. In addition, the Office includes 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 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 annual
budgets, available at http://www.uspto.gov/about/stratplan/budget/fy13pbr.pdf. The legal basis for the rule is section 10 of the Act.
2. A Statement of the Significant Issues Raised by the Public Comments
in Response to the Initial Regulatory Flexibility Analysis, a Statement
of the Assessment of the Agency of Such Issues, and a Statement of Any
Changes Made in the Proposed Rule as a Result of Such Comments
The Office did not receive any public comments in response to the
IRFA. The Office received comments about fees in general as well as
particular fees, including comments about the applicability of certain
fees to small entities. Overall, the comments expressed support for the
discounts to
[[Page 4276]]
small entities. However, some comments questioned why the discounts
could not be larger or applicable to additional fees, and other
comments requested that the requirements to qualify as a small or micro
entity be relaxed. The Office responded to these comments with
additional explanations of the statutory requirements that do not
permit the Office to make such changes. Details of those comments are
discussed and analyzed above in Part VI. Discussion of Comments.
3. The Response of the Agency to Any Comments Filed by the Chief
Counsel for Advocacy of the Small Business Administration in Response
to the Proposed Rule, and a Detailed Statement of Any Change Made to
the Proposed Rule in the Final Rule as a Result of the Comments
The Office did not receive any comments filed by the Chief Counsel
for Advocacy of the Small Business Administration in response to the
proposed rule.
4. A Description of and an Estimate of the Number of Small Entities to
Which the Rule Will Apply or an Explanation of Why No Such Estimate Is
Available
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 SBA, 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 the SBA's previously
established size standard for entities entitled to pay reduced patent
fees. See 13 CFR. 121.802.
Unlike the 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). 125 Stat. at 316-17. 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 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(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.
Estimate of Number of Small Entities Affected
The changes in the rule apply to any entity, including a small or
micro entity, that pays any patent fee set forth in the final rule. The
reduced fee rates (50 percent for small entities and 75 percent for
micro entities) 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.
[[Page 4277]]
Table 53--Number of Patent Applications Filed in Last Five Years *
----------------------------------------------------------------------------------------------------------------
FY 2012 ** FY 2011 FY 2010 FY 2009 FY 2008 Average
----------------------------------------------------------------------------------------------------------------
Utility:
All........................... 530,915 504,089 479,332 458,901 466,258 488,014
Small......................... 132,198 126,878 122,329 113,244 116,891 122,367
% Small....................... 24.9 25.2 25.5 24.7 25.1 25.1
Reissue:
All........................... 1,212 1,139 1,138 1,035 1,080 1,125
Small......................... 278 265 235 237 258 255
% Small....................... 22.9 23.3 20.7 22.9 23.9 22.0
Plant:
All........................... 1,181 1,106 1,013 988 1,331 1,123
Small......................... 576 574 472 429 480 506
% Small....................... 48.8 51.9 46.6 43.4 36.1 45.1
Design:
All........................... 32,258 30,270 28,577 25,575 28,217 28,975
Small......................... 15,806 14,699 15,133 14,591 14,373 14,921
% Small....................... 49 48.6 53.0 57.1 50.9 48.66
Total:
-----------------------------------------------------------------------------
All....................... 565,566 536,604 510,060 486,499 496,886 519,236
Small..................... 148,858 142,416 138,169 128,501 132,002 138,049
% Small................... 26.3 26.5 27.1 26.4 26.6 26.6
----------------------------------------------------------------------------------------------------------------
* The patent application filing data in this table includes RCEs.
** FY 2012 application data are preliminary and will be finalized in the FY 2013 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 to
estimate future filing rates by small and micro entities. Those average
rates appear in the last column of Table 53, above. As discussed
previously in this Final Rule, the Office estimates that the number of
patent applications filed will increase annually (despite fee
increases), and the Office estimates that small entity filing rates
also will continue to grow for the next five years.
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 UPR patent application filings would grow by 5.0
percent each year beginning in FY 2013 and continuing through FY 2017.
The Office forecasts design patent applications independently of UPR
applications because they exhibit different behavior. The Office
previously estimated that design patent application filings would grow
by 2.0 percent each year beginning in FY 2013 and continuing through FY
2017. These filing estimates, however, were established prior to an
analysis of elasticity based on fee adjustments. The FY 2013
President's 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 54 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. Individual Fee Rationale of this final rule, and taking into account
elasticity, the Office estimated that applicants would file 1.3 percent
fewer new (serialized) 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 estimated that 2.7 percent fewer new patent applications would
be filed during FY 2014, and 4.0 percent fewer new patent applications
would be filed in FY 2015, in response to the fee adjustment. Beginning
in FY 2016, the Office estimated that the growth in new patent
applications filed would return to 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.jsp#heading-1 in the document entitled ``USPTO Section 10 Fee
Setting--Description of Elasticity Estimates.'' Table 54 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.
[[Page 4278]]
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........................... 530,915 548,307 566,524 585,187 614,503 645,285
Small......................... 132,198 94,668 98,430 102,776 107,926 113,333
Reissue:
All........................... 1,212 685 679 673 693 714
Small......................... 278 109 108 107 110 113
Plant:
All........................... 1,181 1,034 1,025 1,015 1,025 1,035
Small......................... 576 371 368 364 368 371
Design:
All........................... 32,258 31,994 31,910 31,810 32,446 33,095
Small......................... 15,806 11,038 11,009 10,974 11,194 11,418
-----------------------------------------------------------------------------
Total:
All....................... 565,566 582,020 600,138 618,685 648,667 680,129
Small..................... 148,858 106,186 109,915 114,221 119,598 125,235
----------------------------------------------------------------------------------------------------------------
5. A Description of the Projected Reporting, Recordkeeping and Other
Compliance Requirements of the 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
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 rule. This rule only sets or adjusts patent fees and does
not set procedures for asserting small or micro entity status, as
previously discussed.
The full fee schedule (see Part VII. Discussion of Specific Rules)
is set forth in the final rule. The fee schedule sets or adjusts 351
patent fees. This fee schedule includes 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 a 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 47 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 44 percent of the fees eligible for the
50 percent reduction (5 percent of the fees stay the same and the
balance are newly set 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 87 percent of the fees eligible for reduction.
6. A Description of the Steps the Agency Has Taken to Minimize the
Significant Economic Impact on Small Entities Consistent With the
Stated Objectives of Applicable Statutes, Including a Statement of the
Factual, Policy, and Legal Reasons for Selecting the Alternative
Adopted in the Final Rule and Why Each One of the Other Significant
Alternatives to the Rule Considered by the Agency Which Affect the
Impact on Small Entities Was Rejected
The USPTO considered several alternative approaches to the rule,
discussed below, including retaining current fees, full cost recovery
of fees, an across-the-board adjustment to fees, and the proposal
submitted to the PPAC on February 7, 2012. The discussion begins with a
description of the fee schedule adopted in this rule and then addresses
each alternative considered in turn.
i. Alternative 1: Patent Fee Schedule in the Final Rule--Set and Adjust
Section 10 Fees
The USPTO chose the patent fee schedule in this final rule 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 selected
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 selected here offers small
entities a 50 percent fee reduction and micro entities a 75 percent fee
reduction. As discussed in Item 5 above, the final patent 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 41 small entity fees decrease and micro
entities will see 81 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 after the five-year planning period of FY 2013--FY 2017 (in FY
2018) under this selected alternative, small and micro entities will
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 2016. Instead, in the adopted 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
[[Page 4279]]
and following the PPAC fee setting hearings.
The selected alternative secures the Office's required revenue to
meet its aggregate costs, while meeting the strategic goals of a patent
application pendency decrease and patent application backlog reduction
that will benefit all applicants, especially small and micro entities.
Pendency is one of the most important factors in an analysis of patent
fee proposal alternatives. Decreasing patent application 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 the 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 decreased pendency that will be realized under the
selected alternative. While some of the other alternatives discussed
make progress toward the pendency decrease (and related backlog
reduction) goal, the selected 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 selected 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 selected 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 final rule.
Two examples illustrate how the selected fee structure is responsive to
stakeholder feedback. First, the Office sets two fees for RCEs. The fee
for an initial RCE is set below cost; the fees for a second and any
subsequent RCEs are set above the amount of the first RCE, estimated to
be slightly below cost recovery. A lower first RCE fee continues to
allow for use of this option, when necessary; only the more intensive
use of this process via a second or subsequent RCE, which impacts
compact prosecution, requires higher fees. Second, the Office stages
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 sets (1) a $800
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 PTAB for review. This reduction
from the fees proposed in the NPRM recognizes stakeholder feedback
about the appeal fees being too high and the total cost of the appeal
process was too front-end focused. The approach 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 assumed that the fees
in this rule would become effective by April 1, 2013, except for issue,
pre-grant publication, international stage Patent Cooperation Treaty
fees, and assignment fee changes which become effective January 1,
2014. The final patent fee schedule, as compared to existing fees
(labeled Alternative 1--Final Patent Fee Schedule--Set and Adjust
Section 10 Fees) is available at http://www.uspto.gov/aia_implementation/fees.jsp#heading-1, in the document entitled ``USPTO
Section 10 Fee Setting--FRFA 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 final
patent fees and current fees, as noted above, the ``current fees''
column displays the fees that were effective as of October 5, 2012.
ii. Other Alternatives Considered
In addition to the 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 were set at current rates. Under this alternative,
maintenance fees would be set at a level sufficient to ensure that the
Office would be 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.jsp#heading-1 in the document titled ``USPTO
Section 10 Fee Setting--Activity-Based Information and Costing
Methodology.''
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
projected 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 the Office's ability to meet 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 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--FRFA 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 final patent fees and current fees, as
[[Page 4280]]
noted above, the ``current fees'' column displays the fees that were
effective as of October 5, 2012.
b. Alternative 3: Across-the-Board Adjustment
In some past years, and as became effective on October 5, 2012,
(see CPI Adjustment of Patent Fees for Fiscal Year 2013, 77 FR 54360
(Sept. 5, 2012)), the USPTO used its authority to adjust statutory fees
annually according to changes in the 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 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
approach the target level. As estimated by the CBO at the time the NPRM
published, 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. (The rates listed are consistent with the analysis
presented in the NPRM. The CBO has since updated its rates.) 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 estimated that most fees under this
alternative would become effective by April 1, 2013.
Under this alternative, the Office would not collect enough revenue
to achieve both of the strategic goals identified in Part III.
Rulemaking Goals and Strategies 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, the Office projects that the aggregate revenue generated
from this alternative would be sufficient to recover the aggregate cost
of steady state patent operations, but would not go far enough to meet
both of the Office's strategic goals to improve the timeliness of
patent processing (through reducing patent applications in backlog and
pendency) and to implement a sustainable funding model for operations
(by establishing a three-month patent operating reserve). It is
important for the Office to balance accomplishing both goals together
so that once it achieves the pendency goals, it has sufficient
resources to maintain them. Alternative 3 builds the three-month patent
operating reserve during the five-year planning period, but does not
generate sufficient aggregate revenue to also achieve the patent
application pendency goals by FY 2016 and FY 2017. In fact, the revenue
generated by Alternative 3 during FY 2013 is not only insufficient to
hire 1,000 patent examiners (like Alternatives 1 and 4), but also uses
$55 million of the operating reserve to pay for the 1,500 patent
examiners hired in FY 2012 and maintain steady state operations. In
sum, this alternative is inadequate to accomplish the goals and
strategies as stated in Part III. Rulemaking Goals and Strategies of
this rulemaking and so the Office has not adopted it.
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--FRFA
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 were effective as of
October 5, 2012 (which includes the 2012 CPI increase).
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 FY 2013 President's Budget, would achieve the
USPTO's strategic goals and objectives, including reducing backlog and
pendency.
This alternative is nearly the same as the selected alternative
(Alternative 1). As described in Part V. Individual Fee Rationale of
this rule, 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, the Office, under
this alternative 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 2016. When estimating aggregate revenue,
the Office estimated that fees under this alternative would become
effective by April 1, 2013.
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 selected alternative. A modified version of this alternative
(with a number of lower fees) became the selected alternative
(Alternative 1).
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--FRFA
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
[[Page 4281]]
small entities. For the comparison between proposed fees and current
fees, the ``current fees'' column displays the fees that were effective
as of October 5, 2012 (which includes the 2012 CPI increase).
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 all of the Office's goals as set forth in Part III.
Rulemaking Goals and Strategies of this rule or the Strategic Plan,
including hiring the examiners needed to decrease the backlog of patent
applications, meeting patent application pendency goals, improving
patent quality, advancing IT initiatives, and achieving sustainable
funding.
The status quo alternative would be detrimental to micro entities,
because the final rule includes a 75 percent fee reduction for micro
entities that will result in those applicants paying less under the
final patent fee schedule 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 also would result in increased patent
application pendency levels and patent application backlog. It further
would 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
application pendency and the patent application backlog would increase
in the out-years as the Office fails to increase examination capacity
to keep pace with incoming applications). Likewise, IT improvement
activities would continue, but at a slower rate due to funding
limitations.
iii. Alternative Approaches
In the IRFA, the USPTO also considered four other approaches
specified by the RFA, 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. 603(c). The USPTO discusses each of these specified
approaches below, and describes how the final rule adopts these
approaches.
Differing Requirements
As discussed above, the changes in this rulemaking 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 the
final patent fee schedule.
For non-micro small entities, this final rule would not only retain
the 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. 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 established (in a
separate rulemaking) that a micro entity submit a form certifying micro
entity status. See Changes to Implement Micro Entity Status for Paying
Patent Fees, 77 FR 75019 (Dec. 19, 2012). The instant final rule does
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 final 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 final rule clarifies, consolidates, and simplifies the current
compliance 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
later 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 establishes in this final rule 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 PTAB 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). Additionally, the
Office sets fees for the administrative trials (inter partes review,
post-grant review, and covered business method review) before the PTAB
to be paid in multiple parts. With inter partes review, for instance,
the Office would return fees for post-institution services should a
petition not be instituted. Similarly, the Office establishes 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 Changes to Implement Inter Partes Review
Proceedings, Post-Grant Review Proceedings, and Transitional Program
[[Page 4282]]
for Covered Business Method Patents, 77 FR 48680 (Aug. 14, 2012).
This final rule makes the best use of this alternative approach.
Performance Standards
Performance standards do not apply to the final rule.
Exemption for Small Entities
The final rule includes 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 to simply 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 an 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. The Office
received the following comments related to Executive Order 12866.
Comment 1: A commenter noted that the agency must comply with
Executive Order 12866 in setting section 10 fees. The commenter also
noted that Executive Order 12866 requires the Office to consider other
causes and solutions to the problem before issuing regulations.
Response: As demonstrated in this section and the rulemaking as a
whole, the USPTO has complied with the mandates of Executive Order
12866. Consistent with the directives in Executive Order 12866, the
Office concurs and has both reviewed other causes (including a
statutory fee structure that prevented the Office from realigning or
adjusting fees to quickly and effectively respond to market demand or
changes in processing costs) and analyzed alternative solutions
(including alternative fee structures and leaving the fees unchanged).
The Office also has provided extensive opportunities for public input
into the fee setting process like the PPAC public hearings and public
comment period and the roadshows conducted in September 2012, before
issuing this final rule.
C. Executive Order 13563 (Improving Regulation and Regulatory Review)
In order to comply with Executive Order 13563, 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), the
United States Patent and Trademark Office has submitted a report
containing this 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.
F. Unfunded Mandates Reform Act of 1995
The changes in this final rule 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 the USPTO to consider the impact of paperwork and other
information collection burdens imposed on the public. This final rule
involves information collection requirements that are subject to review
by the OMB under the PRA. The collection of information involved in
this notice was submitted to OMB with the proposed rulemaking as a new
information collection request and was preapproved under OMB control
number 0651-0072. The information collection will be available at the
OMB's Information Collection Review Web site at: www.reginfo.gov/public/do/PRAMain.
1. Summary
This final rule will collect two fees not specifically delineated
in an existing information collection request (listed in Table (A)
below) and will amend the fees in several current information
collections previously approved by OMB (listed in Table (B) below). The
Office is consolidating these fee burdens into this collection to allow
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 Office 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
[[Page 4283]]
as the estimated time burden of a collection multiplied by the total
responses) and respondent cost burden (burden hours multiplied by the
respondent cost per hour) for some collections. These changes are
detailed in the supporting statement for this information collection,
and the Office will update the existing information collections to
account for this change when submitting the non-substantive change
requests described above.
As explained in Part V. Individual Fee Rationale, the USPTO
adjusted several fees in response to public comment. The notice of
appeal fee for large entities has been reduced from $1,000 to $800 and
accordingly reduced for small entities from $500 to $400, and for micro
entities from $250 to $200. The ex parte reexamination fee has been
reduced from $15,000 to $12,000 for large entities, with corresponding
reductions to $6,000 for small entities and $3,000 for micro entities.
The fee for reexaminations ordered as part of supplemental examination
has been reduced from $13,600 to $12,100 for large entities and to
$6,050 for small entities and $3,025 for micro entities. Finally, the
correct inventorship fee has been reduced from $1,000 to $600 for large
entities, and correspondingly $300 for small entities and $150 for
micro entities. Although the fee for the correct inventorship service
has been reduced, the circumstances in which the fee is paid have also
been narrowed such that the fee need not be paid if the request to
correct or change inventorship is accompanied by a statement that the
request is due solely to the cancelation of claims in the application.
Accordingly, the Office now expects to receive 188 responses (i.e.,
payments of the fee) from large entities, 43 from small entities, and
19 from micro entities. Additionally, the Office has revised the
expected number of responses to several information collections based
on revised and decreased projections of demand for various services.
Because of these revised expected responses, as explained in the
Paperwork Reduction Act Supporting Statement for this rulemaking, both
the hour cost burden and the non-hour cost burden have decreased from
the NPRM to the Final Rule.
(A) Fees Included in This New Information Collection Request
----------------------------------------------------------------------------------------------------------------
Amount (large Amount (small Amount (micro
Fee entity) entity) entity) Regulation
----------------------------------------------------------------------------------------------------------------
Correct Inventorship after $600.00 $300.00 $150.00 37 CFR 1.17(d).
First Action on the Merits.
Petitions to Chief APJ Under 400.00 400.00 400.00 37 CFR 41.3.
37 CFR 41.3.
----------------------------------------------------------------------------------------------------------------
(B) Existing & Pending Collections Amended Under the 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
(11) 0651-0063 Board of Patent Appeals and Interferences (BPAI) Actions
(12) 0651-0064 Patent Reexaminations and Supplemental Examinations
(13) 0651-0069 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, 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 was addressed in a separate proposed rulemaking and a separate
PRA analysis. See 77 FR 75019 (Dec. 19, 2012).
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. 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: 0651-0072.
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: 5,470,718 responses
per year.
Estimated Time per Response 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 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 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: $2,727,479,226. The USPTO estimates
[[Page 4284]]
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 $2,727,479,150 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
$492,783,887 change from the fee amounts currently in the USPTO PRA
inventory. Of this, $409,263,158 directly results from this rulemaking
and $83,520,729 results from non-rulemaking factors. Additionally, the
USPTO estimates that $76 in postage costs will be associated with the
items added in 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: 412 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: 1,148 hours per year.
Estimated Total Annual (Hour) Respondent Cost Burden for
Information Added in This Collection: $425,908 per year.
Estimated Annual (Non-Hour) Respondent Cost Burden for Information
Added in This Collection: $193,426 per year. Of this amount, $128,550
directly results from this rulemaking, $64,800 results from non-
rulemaking factors, and $76 results from postage.
3. Solicitation
The Office solicited comments to: (1) Evaluate whether the proposed
information collection is necessary for the proper performance of the
functions of the Office, including whether the information will have
practical utility; (2) evaluate the accuracy of the Office'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, or mechanical collection techniques
or other forms of information technology.
The Office received one comment from members of the public
regarding the Paperwork Reduction Act analysis for this rule. A summary
of the comment received and the Office's response to that comment
follows.
Comment 1: A commenter noted that the agency must comply with the
Paperwork Reduction Act, 44 U.S.C. 3501, et seq. in setting section 10
fees.
Response: The Office agrees with this comment. As evidenced by this
section, the equivalent Paperwork Reduction Act section of the Notice
of Proposed Rulemaking, and the Supporting Statements submitted with
both the Notice of Proposed Rulemaking and this Final Rule, the Office
has complied with the requirements of the Act.
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 amended as follows:
PART 1--RULES OF PRACTICE IN PATENT CASES
0
1. The general authority citation for 37 CFR part 1 continues to read
as follows and the specific authority citation immediately after the
undesignated center heading ``Fees and Payment of Money'' is revised to
read as follows:
Authority: 35 U.S.C. 2(b)(2).
* * * * *
Authority: Sections 1.16 through 1.22 also issued under 35
U.S.C. 41, 111, 119, 120, 132(b), 156, 157, 255, 302, and 311,
Public Laws 103-465, 106-113, and 112-29.
0
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)............................ $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)............................ $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)............................ $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)............................ $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:
By a micro entity (Sec. 1.29)............................ $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)............................ $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)............................ $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
[[Page 4285]]
each claim in independent form in excess of 3:
By a micro entity (Sec. 1.29)............................ $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)............................ $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)............................ $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)............................ $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)............................ $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)............................ $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)............................ $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)............................ $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)............................ $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)............................ $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)............................ $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)............................ $100.00
By a small entity (Sec. 1.27(a))......................... 200.00
By other than a small or micro entity...................... 400.00
* * * * *
0
4. Section 1.17 is amended by revising paragraphs (a) through (i). (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)............................ $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)............................ $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)............................ $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)............................ $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)............................ $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 Patent Trial and Appeal
Board, 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)............................ $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 action on the merits:
By a micro entity (Sec. 1.29)............................ $150.00
By a small entity (Sec. 1.27(a))......................... 300.00
By other than a small or micro entity...................... 600.00
(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 (Sec. 1.29)............................ $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 (Sec. 1.29)............................ $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)............................ $100.00
By a small entity (Sec. 1.27(a))......................... 200.00
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)............................ $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.
[[Page 4286]]
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
inter 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)............................ $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 fees:
(1) for taking action under one of the following sections which
refers to this paragraph:
By a micro entity (Sec. 1.29)............................ $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. 1.291(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.
(2) For taking action under one of the following sections which
refers to this paragraph:
By other than a small or micro entity...................... $130.00
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.
* * * * *
(k) For filing a request for expedited examination under Sec.
1.155(a):
By a micro entity (Sec. 1.29)............................ $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)............................ $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)............................ $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 for the document fee for a submission under Sec. 1.290:
By a micro entity (Sec. 1.29)............................ $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)............................ $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)............................ $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
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 Sec. 1.452:
By a micro entity (Sec. 1.29)............................ $355.00
By a small entity (Sec. 1.27(a))......................... 710.00
By other than a small or micro entity...................... 1,420.00
0
5. 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:
(1) For an issue fee paid on or after January 1, 2014:
By a micro entity (Sec. 1.29)............................ $240.00
By a small entity (Sec. 1.27(a))......................... 480.00
By other than a small or micro entity...................... 960.00
(2) For an issue fee paid before January 1, 2014:
By a micro entity (Sec. 1.29)............................ $445.00
By a small entity (Sec. 1.27(a))......................... 890.00
By other than a small or micro entity...................... 1,780.00
(b) Issue fee for issuing an original design patent:
[[Page 4287]]
(1) For an issue fee paid on or after January 1, 2014:
By a micro entity (Sec. 1.29)............................ $140.00
By a small entity (Sec. 1.27(a))......................... 280.00
By other than a small or micro entity...................... 560.00
(2) For an issue fee paid before January 1, 2014:
By a micro entity (Sec. 1.29)............................ $255.00
By a small entity (Sec. 1.27(a))......................... 510.00
By other than a small or micro entity...................... 1,020.00
(c) Issue fee for issuing an original plant patent:
(1) For an issue fee paid on or after January 1, 2014:
By a micro entity (Sec. 1.29)............................ $190.00
By a small entity (Sec. 1.27(a))......................... 380.00
By other than a small or micro entity...................... 760.00
(2) For an issue fee paid before January 1, 2014:
By a micro entity (Sec. 1.29)............................ $350.00
By a small entity (Sec. 1.27(a))......................... 700.00
By other than a small or micro entity...................... 1,400.00
(d)
(1) Publication fee on or after January 1, 2014............ $0.00
(2) Publication fee before January 1, 2014................. 300.00
(3) 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 underSec. 1.705: $400.00.
0
6. 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 this paragraph (b)(2)(i): $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.
0
7. 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)............................ $3,000.00
By a small entity (Sec. 1.27(a))......................... 6,000.00
By other than a small or micro entity...................... 12,000.00
(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)............................ $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):
By a micro entity (Sec. 1.29)............................ $20.00
[[Page 4288]]
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)............................ $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 at Sec.
1.20(c)(1)):
By a micro entity (Sec. 1.29)............................ $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)............................ $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)............................ $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)............................ $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:
(1) By a micro entity (Sec. 1.29)........................ $40.00
(2) By a small entity (Sec. 1.27(a))..................... 80.00
(3) 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)............................ $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)............................ $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)............................ $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)............................ $3,025.00
By a small entity (Sec. 1.27(a))......................... 6,050.00
By other than a small or micro entity...................... 12,100.00
(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)............................ $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)............................ $70.00
By a small entity (Sec. 1.27(a))......................... 140.00
By other than a small or micro entity...................... 280.00
0
8. Section 1.21 is amended by:
0
a. Revising paragraph (a);
0
b. Removing and reserving paragraph (d);
0
c. Revising paragraph (e);
0
d. Revising paragraphs (g) through (k); and
0
e. Revising paragraph (n).
The revisions read as follows:
Sec. 1.21 Miscellaneous fees and charges.
* * * * *
(a) Registration of attorneys and agents:
(1) 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 excluded or
suspended on ethical
[[Page 4289]]
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, on or after January 1, 2014:
$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.
0
9. Section 1.27 is amended by revising paragraph (c)(3) introductory
text to read as follows:
Sec. 1.27 Definition of small entities and establishing status as a
small entity to permit payment of small entity fees; when a
determination of entitlement to small entity status and notification of
loss of entitlement to small entity status are required; fraud on the
Office.
* * * * *
(c) * * *
(3) Assertion by payment of the small entity basic filing, basic
transmittal, basic national fee, or international search fee. The
payment, by any party, of the exact amount of one of the small entity
basic filing fees set forth in Sec. Sec. 1.16(a), 1.16(b), 1.16(c),
1.16(d), 1.16(e), the small entity transmittal fee set forth in Sec.
1.445(a)(1), the small entity international search fee set forth in
Sec. 1.445(a)(2) to a Receiving Office other than the United States
Receiving Office in the exact amount established for that Receiving
Office pursuant to PCT Rule 16, or the small entity basic national fee
set forth in Sec. 1.492(a), will be treated as a written assertion of
entitlement to small entity status even if the type of basic filing,
basic transmittal, or basic national fee is inadvertently selected in
error.
* * * * *
0
10. Section 1.48 is amended by adding paragraph (c) to read as follows:
Sec. 1.48 Correction of inventorship pursuant to 35 U.S.C. 116 or
correction of the name or order of names in a patent application, other
than a reissue application.
* * * * *
(c) Any request to correct or change the inventorship under
paragraph (a) of this section filed after the Office action on the
merits has been given or mailed in the application must also be
accompanied by the fee set forth in Sec. 1.17(d), unless the request
is accompanied by a statement that the request to correct or change the
inventorship is due solely to the cancelation of claims in the
application.
* * * * *
0
11. 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) * * *
(i) A basic portion:
(A) For a transmittal fee paid on or after January 1, 2014:
By a micro entity (Sec. 1.29)............................ $60.00
By a small entity (Sec. 1.27(a))......................... 120.00
By other than a small or micro entity...................... 240.00
(B) For a transmittal fee paid before January 1, 2014: $240.00.
* * * * *
(2) A search fee (see 35 U.S.C. 361(d) and PCT Rule 16):
(i) For a search fee paid on or after January 1, 2014:
By a micro entity (Sec. 1.29)............................ $520.00
By a small entity (Sec. 1.27(a))......................... 1,040.00
By other than a small or micro entity...................... 2,080.00
(ii) For a search fee paid before January 1, 2014: $2,080.00.
(3) A supplemental search fee when required, per additional
invention:
(i) For a supplemental search fee paid on or after January 1, 2014:
By a micro entity (Sec. 1.29)............................ $520.00
By a small entity (Sec. 1.27(a))......................... 1,040.00
By other than a small or micro entity...................... 2,080.00
(ii) For a supplemental search fee paid before January 1, 2014:
$2,080.00.
(4) A fee equivalent to the transmittal fee in paragraph (a)(1) of
this section that would apply if the USPTO was the Receiving Office for
transmittal of an international application to the International Bureau
for processing in its capacity as a Receiving Office (PCT Rule 19.4):
(i) For a fee equivalent to the transmittal fee in paragraph (a)(1)
of this section filed on or after January 1, 2014:
By a micro entity (Sec. 1.29)............................ $60.00
By a small entity (Sec. 1.27(a))......................... 120.00
By other than a small or micro entity...................... 240.00
(ii) For a fee equivalent to the transmittal fee in 240.00
paragraph (a)(1) of this section filed before January 1,
2014......................................................
(b) The international filing fee shall be as prescribed in PCT Rule
15.
0
12. 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:
(A) For an international search fee filed on or after January 1,
2014:
By a micro entity (Sec. 1.29)............................ $150.00
By a small entity (Sec. 1.27(a))......................... 300.00
By other than a small or micro entity...................... 600.00
(B) For an international search fee filed before January 1, 2014:
$600.00.
(ii) If the International Searching Authority for the international
application was an authority other than the United States Patent and
Trademark Office:
(A) For an international search fee filed on or after January 1,
2014:
By a micro entity (Sec. 1.29)............................ $190.00
By a small entity (Sec. 1.27(a))......................... 380.00
By other than a small or micro entity...................... 760.00
(B) For an international search fee filed before January 1, 2014:
$750.00.
(2) An additional preliminary examination fee when required, per
additional invention:
(i) For an additional preliminary examination fee filed on or after
January 1, 2014:
By a micro entity (Sec. 1.29)............................ $150.00
By a small entity (Sec. 1.27(a))......................... 300.00
By other than a small or micro entity...................... 600.00
[[Page 4290]]
(ii) For an additional preliminary examination fee filed before
January 1, 2014: $600.00.
(b) The handling fee is due on filing the Demand and shall be
prescribed in PCT Rule 57.
0
13. 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)............................ $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)............................ $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)............................ $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)............................ $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)............................ $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)............................ $0.00
By a small entity (Sec. 1.27(a))......................... 0.00
By other than a small or micro entity...................... 0.00
(2) In all situations not provided for in paragraph (c)(1) of this
section:
By a micro entity (Sec. 1.29) $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)............................ $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)............................ $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)............................ $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)............................ $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)............................ $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)............................ $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 PATENT TRIAL AND APPEAL BOARD
0
14. The authority citation for part 41 is revised to read as follows:
Authority: 35 U.S.C. 2(b)(2), 3(a)(2)(A), 21, 23, 32, 41, 134,
135, and Public Law 112-29.
0
15. 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)............................ $200.00
By a small entity (Sec. 1.27(a))......................... 400.00
By other than a small or micro entity...................... 800.00
(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)............................ $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)............................ $325.00
[[Page 4291]]
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)............................ $500.00
By a small entity (Sec. 1.27(a))......................... 1,000.00
By other than a small or micro entity...................... 2,000.00
0
16. 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.
* * * * *
0
17. 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
0
18. The authority citation for part 42 is revised to read as follows:
Authority: 35 U.S.C. 2(b)(2), 6, 21, 23, 41,135, 311, 312, 316,
321-326 and Public Law 112-29.
0
19. Section 42.15 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 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.
(d) Any request requiring payment of a fee under this part,
including a written request to make a settlement agreement available:
$400.00.
Dated: January 11, 2013.
David J. Kappos,
Under Secretary of Commerce for Intellectual Property and Director of
the United States Patent and Trademark Office.
[FR Doc. 2013-00819 Filed 1-17-13; 8:45 am]
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