[Federal Register Volume 81, Number 191 (Monday, October 3, 2016)]
[Proposed Rules]
[Pages 68150-68183]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2016-23093]
[[Page 68149]]
Vol. 81
Monday,
No. 191
October 3, 2016
Part III
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 During Fiscal Year 2017; Proposed
Rule
Federal Register / Vol. 81 , No. 191 / Monday, October 3, 2016 /
Proposed Rules
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DEPARTMENT OF COMMERCE
Patent and Trademark Office
37 CFR Parts 1, 41, and 42
[Docket No. PTO-P-2015-0056]
RIN 0651-AD02
Setting and Adjusting Patent Fees During Fiscal Year 2017
AGENCY: United States Patent and Trademark Office, Department of
Commerce.
ACTION: Notice of proposed rulemaking.
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SUMMARY: The United States Patent and Trademark Office (Office or
USPTO) proposes to set or adjust patent fees as authorized by the
Leahy-Smith America Invents Act (Act or AIA). The USPTO is a business-
like operation where external factors affect the productivity of the
workforce and the demand for patent products and services. The proposed
fee adjustments are needed to provide the Office with a sufficient
amount of aggregate revenue to recover its aggregate cost of patent
operations (based on current projections), while maintaining momentum
towards achieving strategic goals. This rulemaking represents the
second iteration of patent fee rulemaking by the USPTO to set fees
under the authority of the AIA; the first AIA patent fee setting rule
was published in January 2013. This current rulemaking is a result of
the USPTO assessing its costs and fees, as is consistent with federal
fee setting standards. Following a biennial review of fees, costs, and
revenues that began in 2015, the Office concluded that further targeted
fee adjustments were necessary to continue funding patent operations,
enhance patent quality, and continue to work toward patent pendency
goals, strengthen the Office's information technology (IT) capability
and infrastructure, and achieve operating reserve targets. Further, in
several instances, the fee change proposals offered during the biennial
fee review process were enhanced by the availability of cost and
workload data (e.g., the number of requests for a service) that was not
available in 2013. As a result, the 205 proposed fee adjustments
outlined in this proposed rule align directly with the Office's
strategic goals and four key fee setting policy factors, discussed in
detail in Part V.
DATES: The Office solicits comments from the public on this proposed
rulemaking. Written comments must be received on or before December 2,
2016 to ensure consideration.
ADDRESSES: Comments should be sent by electronic mail message over the
Internet addressed to: [email protected]. Comments may also be
submitted by postal mail addressed to: Mail Stop--Office of the Chief
Financial Officer, Director of the United States Patent and Trademark
Office, P.O. Box 1450, Alexandria, VA 22313-1450, marked to the
attention of ``Brendan Hourigan.'' Comments may also be sent by
electronic mail message over the Internet via the Federal eRulemaking
Portal at http://www.regulations.gov. See the Federal eRulemaking
Portal Web site for additional instructions on providing comments via
the Federal eRulemaking Portal.
Although comments may be submitted by postal mail, the Office
prefers to receive comments by electronic mail message over the
Internet, which allows the Office to more easily share comments with
the public. Electronic comments are preferred to be submitted in plain
text, but also may be submitted in portable document format or a word
processing format. Comments not submitted electronically should be
submitted on paper in a format that facilitates convenient digital
scanning into portable document format.
The comments will be available for public inspection via the
Office's Internet Web site (http://www.uspto.gov) and at http://www.regulations.gov. Because comments will be made available for public
inspection, information that the submitter does not desire to make
public, such as an address or phone number, should not be included in
the comments.
FOR FURTHER INFORMATION CONTACT: Brendan Hourigan, Director of the
Office of the Planning and Budget, by telephone at (571) 272-8966; or
Dianne Buie, Office of Planning and Budget, by telephone at (571) 272-
6301.
SUPPLEMENTARY INFORMATION:
I. Executive Summary
A. Purpose of This Action
The Office proposes this rule under section 10 of the AIA (Section
10), which authorizes the Director of the USPTO to set or adjust by
rule any patent fee established, authorized, or charged under title 35
of the United States Code (U.S.C.) for any services performed, 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 of the Office with respect to
such patent fees. Section 10 authority includes flexibility to set
individual fees in a way that furthers key policy factors, while taking
into account the cost of the respective services. Section 10 also
establishes certain procedural requirements for setting or adjusting
fee regulations, such as public hearings and input from the Patent
Public Advisory Committee (PPAC) and Congressional oversight.
Parallel Rulemaking. In tandem with this notice of proposed
rulemaking (NPRM) for patent related fees, the Office is undertaking a
separate fee rulemaking action that proposes to adjust trademark
related fees titled Trademark Adjustment Fees (RIN: 0651-AD08),
published on May 27, 2016 (81 FR 33619) and available at http://www.uspto.gov/about-us/performance-and-planning/fee-setting-and-adjusting.
B. Summary of Provisions Impacted by This Action
The fee schedule in this rulemaking will recover the aggregate
estimated costs of patent operations while achieving the Office's
strategic goals as detailed in the USPTO 2014-2018 Strategic Plan
(Strategic Plan) that is available at http://www.uspto.gov/about/stratplan/USPTO_2014-2018_Strategic_Plan.pdf, as amended by Appendix
III of the Budget, available at http://www.uspto.gov/sites/default/files/documents/fy17pbr.pdf. The Strategic Plan defines the USPTO's
mission, vision, and long-term goals and presents the actions the
Office will take to realize those goals. This fee setting rule supports
the patent-related strategic goals to optimize patent quality and
timeliness, which includes improving patent quality, reducing the
backlog of unexamined applications and decreasing patent application
pendency, and facilitating processing at the Patent Trial and Appeal
Board (PTAB); and increasing international efforts to improve
intellectual property policy, protection and enforcement. This proposed
rule also supports the management goal to achieve organizational
excellence, which includes leveraging IT investments and securing
sustainable funding. The Office intends to issue a final rule on fee
changes in FY 2017 after receipt and analysis of public comments.
During a formal process closely tied to the annual budget process,
the USPTO management and leadership teams reviewed and analyzed
individual fee changes and new fee proposals to assess their alignment
with the Office's strategic goals and fee structure philosophy, both of
which aim to
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provide sufficient financial resources to facilitate the effective
administration of the USPTO. Specifically, the Office assessed how well
each proposal aligned with four key fee setting policy factors: Foster
innovation, align fees with the full cost of products and services, set
fees to facilitate the effective administration of the patent and
trademark systems, and offer application processing options for
applicants.
In this rulemaking, the Office proposes to set or adjust 205 patent
fees for large, small and micro entities (any reference herein to
``large entity'' includes all entities other than those that have
established entitlement to either a small or micro entity fee
discount). The fees for small and micro entity rates are tiered with
small entities at a 50 percent discount and micro entities at a 75
percent discount. Small entity fee eligibility is based on the size or
certain non-profit status of the applicant's business. Micro entity fee
eligibility is described in Section 10(g) of the Act. There are also 42
new fees being introduced or replacing one of the 14 fees that are
being discontinued.
In summary, the routine fees to obtain a patent (i.e., filing,
search, examination, and issue fees) will increase slightly under this
NPRM relative to the current fee schedule. Applicants who meet the
definition for small or micro entity discounts will continue to pay a
reduced fee for the fees eligible for a discount under Section 10(b).
Additional information describing the proposed fee adjustments is
included in Part V: Individual Fee Rationale section of Supplementary
Information in this rulemaking and in the ``Table of Patent Fees--
Current, Proposed and Unit Cost'' (hereinafter ``Table of Patent
Fees'') available at http://www.uspto.gov/about-us/performance-and-planning/fee-setting-and-adjusting.
It is important to recognize the progress the Office has made since
the first Section 10 patent fee setting effort in order to better
understand the fee adjustments the Office is proposing in this
iteration. The USPTO first used the authority provided in Section 10 to
set and adjust patent fees based on the market factors at the time.
That initial effort, which began in September 2011, aimed to provide
sufficient revenue to recover the cost of patent operations, including
improving patent quality, reducing the patent application backlog,
decreasing patent application pendency, upgrading the patent business
IT capability and infrastructure, and implementing a sustainable
funding model. After two public hearings and a public comment period,
the final rule was published in the Federal Register on January 18,
2013 (78 FR 4212), with most fee changes effective on March 18, 2013,
and the remainder effective on January 1, 2014.
The Office has made considerable progress in reducing backlog and
pendency: First action pendency went from 21.9 months in FY 2012 to
17.3 months in FY 2015; total average pendency was reduced from 32.4
months in FY 2012 to 26.6 months in FY 2015; and the patent application
backlog was reduced from 608,283 in FY 2012 to 553,221 at the end of FY
2015. The USPTO was also able to complete the opening of three
additional regional offices in Denver, Colorado; San Jose (Silicon
Valley), California; and Dallas, Texas. With a regional office already
in Detroit, and USPTO headquarters in the Washington DC metro area, the
Office is better equipped to build and maintain a flexible, diverse,
and engaged workforce that is prepared to support backlog reduction and
pendency goals while better serving the intellectual property community
across the nation.
Similarly, the Office continues its efforts toward enhancing patent
quality. As a result of the increased revenue from the inaugural AIA
patent fee setting, the Office is better positioned to increase its
quality focus because of significant reductions in the patent
application backlog and pendency, improved patent operations and
procedures, and more secure funding. High-quality patents enable
certainty and clarity of rights, which fuels innovation and reduces
needless litigation. The Office's commitment to a renewed and enhanced
focus on patent quality centers on three pillars: (1) Excellence in
work products; (2) excellence in measuring patent quality; and (3)
excellence in customer service. The three quality pillars are high
priorities throughout the Office, in addition to the existing quality
initiatives set forth by the USPTO-led White House Executive Actions on
High-Tech Patent Issues (http://www.uspto.gov/patent/initiatives/uspto-led-executive-actions-high-tech-patent-issues). The Office is
strengthening work products, processes, services, and how it measures
patent quality at all stages of the patent process. The recently
implemented Enhanced Patent Quality Initiative (EPQI) aims to ensure
that the Office continues issuing high-quality patents well into the
future.
Stakeholder engagement is a critical component of the EPQI.
Following a request for public comments on a set of potential quality
proposals, the Office hosted a ``Quality Summit'' with the public to
discuss the outlined proposals. By engaging the public on this topic,
the Office received more than 1,200 comments on a wide array of
possible patent quality initiatives and received even more feedback
from both patent examiners and external stakeholders during the summit.
Already the Office has created 11 programs under the umbrella of the
EPQI in areas including pre-examination and search enhancement,
prosecution enhancement, and evaluation enhancement. The Office held a
patent quality community symposium in April 2016 featuring interactive
segments and implementation updates on the EPQI. The goal of the
symposium was to update the public on the USPTO's progress on the 11
programs to improve clarity of the prosecution record, enhance examiner
training, improve applicant-examiner interactions, and redefine ways to
capture and measure data about quality. The symposium featured lectures
on these topics, an interactive workshop demonstration on how the
Master Review Form will be applied (see http://www.uspto.gov/blog/director/entry/improvements_in_measuring_patent_quality), and a panel
discussion with experienced patent practitioners about ways applicants
can contribute to the Agency's efforts. The proposed fees will provide
sufficient resources to permit the Office to maintain momentum for
developing a new paradigm of patent quality at the USPTO.
Likewise, since the last patent fee setting effort, the USPTO has
made significant progress on IT tools, like the Patents End-to-End
(PE2E) suite, a solution that will enable a new way of processing
patent applications using a single software platform to manage
examination activities and integrate with existing systems via user-
oriented tools that help examiners process applications and support
analytics and automated processing. See Part III of this rulemaking for
more information on how PE2E will transform the Office. Other IT
efforts are also underway to repair or replace the USPTO's aging
infrastructure. The Office is also working to ensure optimal IT service
delivery to all users in PTAB, including continued development and
deployment of the PTAB-End-to-End (PTAB E2E) IT capabilities, which
will expand the use of intelligent data to support appeal decisions and
process inter partes review (IPR) proceedings, post-grant review (PGR)
proceedings, covered business method review
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(CBMR) proceedings, and derivation (DER) proceedings.
The PTAB will benefit greatly from enhanced system tools even as
the organization has significantly strengthened capacity in recent
years. A major component of the overall patent process is the work
carried out by the PTAB. The PTAB received more than 4,700 petitions
for AIA trial proceedings since 2012 and has met every deadline set by
Congress for such trials. In the last iteration of patent fee setting,
the Office had to estimate both demand (e.g., workload) and cost with
little data available for the IPRs, PGRs, and CBMRs. Now, with three
years of historical cost data, the Office has better insights into the
full cost of services and can better estimate demand, which enables the
USPTO to align fees more appropriately. This proposed rulemaking will
help the PTAB continue to maintain the appropriate level of judicial
and administrative resources to continue to provide high quality and
timely decisions for AIA trials, reexamination appeals, and ex parte
appeals. The USPTO's goal is to meet the statutory timeliness
requirements for decisions in AIA proceedings and in appeals from re-
examination proceedings. While no statutory timeliness requirement
exists for appeals in regular ex parte applications, the Office is
committed to reducing the inventory of appeals by hiring to the extent
possible, clearing the oldest cases, and reassigning judges according
to greatest need. The proposal includes an increase to the major PTAB
fees including Filing a Notice of Appeal, Forwarding an Appeal to the
Board, IPR, PGR, and CBMR fees.
Lastly, the USPTO has made significant progress towards financial
sustainability as a result of the initial AIA fee setting effort,
including building towards a three-month optimal operating reserve for
patents. As initially presented in the 2013 patent fee setting rule,
funding an operating reserve as a part of the Office's regular
budgetary requirements aligns with the USPTO's strategic priority to
sustain long-term operational goals and prevent the USPTO from having
to make short-term crisis-based spending changes that affect the
delivery of the USPTO's performance commitments. For instance, the
USPTO was able to continue operations during the October 2013
government-wide shut down by using available operating reserves carried
over from FY 2013. More recently, the operating reserve allowed the
Office to maintain progress on IT investments when patent filings (and
subsequently revenue) decreased in FY 2015. In order to continue to
provide effective service, the Office must proactively manage fiscal
risks. The Office acutely recognizes that fees cannot simply increase
for every improvement the Office deems desirable. Instead, for this
rulemaking effort, the Office focused on prioritizing spending and
gradually building the operating reserve in order to build resiliency
against financial shocks. At optimal levels, the reserve will allow the
Office to operate for three months in the event of interruptions in the
ability to access collected fees such as during a government shutdown
or during a period of unanticipated reductions in revenue or increases
in operating expenses, such as during a domestic or global economic
crisis, or major departures from the estimated number of patent
applications received.
In conclusion, the USPTO has made significant strides in realizing
the goals set forth in 2011, in part due to the AIA authority to set
fees. In order to continue building on the progress made over the last
several years, and consistent with the USPTO's biennial fee review
policy, the USPTO proposes the fee schedule detailed herein to continue
quality initiatives, maintain progress toward backlog and pendency
reduction, continue IT improvements for both Patents and PTAB, and
promote the sound fiscal management of the Office while answering
stakeholder calls to continue to improve service. The fees proposed in
this rulemaking intend to make the Office well positioned to deliver on
known commitments, and address unknown risks in the future.
C. Summary of Costs and Benefits of This Action
The proposed rule is significant and results in a need for a
Regulatory Impact Analysis (RIA) under Executive Order 12866 Regulatory
Planning and Review, 58 FR 51735 (Oct. 4, 1993). The Office prepared an
RIA to analyze the costs and benefits of the NPRM over a five-year
period, FY 2017-FY 2021. The RIA includes a comparison of the proposed
fee schedule to the current fee schedule (baseline) and to two other
alternatives. The costs and benefits that the Office identifies and
analyzes in the RIA are strictly qualitative. Qualitative costs and
benefits have effects that are difficult to express in either dollar or
numerical values. Monetized costs and benefits, on the other hand, have
effects that can be expressed in dollar values. The Office did not
identify any monetized costs and benefits of the proposed rulemaking,
but found that the proposed rulemaking had qualitative benefits
exceeding its qualitative costs.
The qualitative costs and benefits that the RIA assesses are: (1)
Fee schedule design--a measure of how well the fee schedule aligns to
the Office key fee setting policy factors; (2) securing aggregate
revenue to cover aggregate cost--a measure of whether the alternative
provides adequate revenue to support the core mission and strategic
priorities described in the NPRM and FY 2017 Budget; and (3) aggregate
increased user fee payments--a measure of the opportunity cost
associated with paying additional fees to the Office. For these three
costs and benefits, the fee schedule proposed in this NPRM offers the
highest net benefits. As described throughout this document, the
proposed fee schedule maintains the existing balance of below-cost
entry fees (e.g., filing, search, and examination) and above cost
maintenance fees as one approach to foster innovation. Further, as
detailed in Part V, the proposed fee changes are targeted in support of
one or more fee setting policy factors. Lastly, the proposed rule
secures the aggregate revenue needed to achieve the strategic
priorities encompassed in the rulemaking goals and strategies (see Part
III). In summary, the benefits of the proposed alternative clearly
outweigh those of the baseline and the other alternatives considered in
the RIA. Table 1 summarizes the RIA results.
Table 1--Proposed Patent Fee Schedule Costs and Benefits, Cumulative FY
2017-FY 2021
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Qualitative Costs and Benefits
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Costs .............................
Aggregate Increase in User Fee Payments Moderate.
Benefits................................. Total.
Secure Aggregate Revenue to Cover Significant.
Aggregate Costs.
Fee Schedule Design.................... Significant.
Net Benefit............................ Significant.
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Additional details describing the costs and benefits are available
in the RIA at http://www.uspto.gov/about-us/performance-and-planning/fee-setting-and-adjusting.
II. Legal Framework
A. Leahy-Smith America Invents Act--Section 10
The Leahy-Smith America Invents Act was enacted into law on
September 16, 2011. See Public Law 112-29, 125 Stat. 284. Section 10(a)
of the Act authorizes the Director of the Office to set or adjust by
rule any patent fee established, authorized, or charged under title 35,
U.S.C., for any services performed by, or materials furnished by, the
Office. Fees
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under 35 U.S.C. may be set or adjusted only to recover the aggregate
estimated cost to the Office for processing, activities, services, and
materials related to patents, including administrative costs to the
Office with respect to such patent operations. See 125 Stat. at 316.
Provided that the fees in the aggregate achieve overall aggregate cost
recovery, the Director may set individual fees under Section 10 at,
below, or above their respective cost. Section 10(e) of the Act
requires the Director to publish the final fee rule in the Federal
Register and the Official Gazette of the Patent and Trademark Office at
least 45 days before the final fees become effective. Section 10(i)
terminates the Director's authority to set or adjust any fee under
Section 10(a) upon the expiration of the seven-year period that began
on September 16, 2011.
B. Small Entity Fee Reduction
Section 10(b) of the AIA requires the Office to reduce by 50
percent the fees for small entities that are set or adjusted under
Section 10(a) for filing, searching, examining, issuing, appealing, and
maintaining patent applications and patents.
C. Micro Entity Fee Reduction
Section 10(g) of the AIA amended chapter 11 of title 35, U.S.C., to
add section 123 concerning micro entities. The Act provides that the
Office must reduce by 75 percent the fees for micro entities for
filing, searching, examining, issuing, appealing, and maintaining
patent applications and patents. Micro entity fees were implemented
through the previous patent fee rule, and the Office will maintain this
75 percent micro entity discount for the appropriate fees and proposes
to implement micro entity fees for additional services as appropriate.
D. Patent Public Advisory Committee Role
The Secretary of Commerce established the PPAC under the American
Inventors Protection Act of 1999. 35 U.S.C. 5. The PPAC advises the
Under Secretary of Commerce for Intellectual Property and Director of
the USPTO on the management, policies, goals, performance, budget, and
user fees of patent operations.
When adopting fees under Section 10 of the Act, the Director must
provide the PPAC with the proposed fees at least 45 days prior to
publishing the proposed fees in the Federal Register. The PPAC then has
at least 30 days within which to deliberate, consider, and comment on
the proposal, as well as hold public hearing(s) on the proposed fees.
The PPAC must make a written report available to the public of the
comments, advice, and recommendations of the committee regarding the
proposed fees before the Office issues any final fees. The Office will
consider and analyze any comments, advice, or recommendations received
from the PPAC before finally setting or adjusting fees.
Consistent with this framework, on October 20, 2015, 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-us/performance-and-planning/fee-setting-and-adjusting. The PPAC held a public hearing in
Alexandria, Virginia, on November 19, 2015. Transcripts of the hearing
are available for review at http://www.uspto.gov/sites/default/files/documents/PPAC_Hearing_Transcript_20151119.pdf. Members of the public
were invited to the hearing and given the opportunity to submit written
and/or oral testimony for the PPAC to consider. The PPAC considered
such public comments from this hearing and made all comments available
to the public via the Fee Setting Web site, http://www.uspto.gov/about-us/performance-and-planning/fee-setting-and-adjusting. The PPAC also
provided a written report setting forth in detail the comments, advice,
and recommendations of the committee regarding the preliminary proposed
fees. The report regarding the preliminary proposed fees was released
on February 29, 2016, and can be found online at http://www.uspto.gov/sites/default/files/documents/PPAC_Fee%20_Setting_Report_2016%20%28Final%29.pdf. The Office
considered and analyzed all comments, advice, and recommendations
received from the PPAC before publishing this NPRM. Before the final
rule is issued, the public will have a 60-day period during which to
provide comments to be considered by the USPTO.
III. Rulemaking Goals and Strategies
A. Fee Setting Strategy
The overall strategy of this proposed rulemaking is to establish a
fee schedule that generates sufficient multi-year revenue to recover
the aggregate cost to maintain USPTO operations and accomplish the
USPTO's strategic goals in accordance with the authority granted to the
USPTO by AIA Section 10. A similar strategy guided the initial AIA
patent fee setting in 2013. The overriding principles behind this
strategy are to operate within a sustainable funding model to avoid
disruptions caused by fluctuations in financial operations, and to
continue making strategic improvements, such as progress on patent
quality initiatives, continued reduction of the patent application
backlog and pendency, and modernization of IT systems.
In addition to the overriding principles outlined above, as
discussed earlier in this document, the Office also assesses alignment
with the key fee setting policy factors. Each factor promotes a
particular aspect 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. Aligning fees with the full
cost of products and services recognizes that as a fully fee-funded
entity, the Office must account for all of its costs even as it elects
to set some fees below, at, or above cost. This factor also recognizes
that some applicants may use particular services in a much more costly
manner than other applicants (e.g., patent applications cost more to
process when more claims are filed). Facilitating effective
administration of the patent system is important to influence efficient
patent prosecution, resulting in compact prosecution and reduction in
the time it takes to obtain a patent. Finally, the Office recognizes
that patent prosecution is not a one-size-fits-all process and
therefore, where feasible, the Office endeavors to fulfill its fourth
policy factor of offering patent processing options to applicants.
B. Fee Setting Considerations
The balance of this sub-section presents the specific fee setting
considerations the Office reviewed in developing the proposed patent
fee schedule. Specific considerations are: (1) Historical costs of
patent operations and investments to date in meeting the Office's
strategic goals; (2) projected costs to meet the Office's operational
needs and strategic goals; and (3) sustainable funding. Additionally,
the Office carefully considered the comments, advice, and
recommendations offered by the PPAC on the Office's initial fee setting
proposal. Collectively, these considerations inform the Office's chosen
rulemaking strategy.
(1) Historical Cost. To ascertain how to best align fees with the
full cost of products and services, the Office considers Activity Based
Information.
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Using historical cost data and forecasted application demands, the
Office can align fees to the costs of specific patent products and
services. The Office has made significant progress towards its
strategic goals for patent quality, backlog, pendency, and IT system
modernization for several years now. For more information about the
Office's performance record and progress towards its strategic goals,
see the FY 2015 Performance and Accountability Report, available at
http://www.uspto.gov/sites/default/files/documents/USPTOFY15PAR.pdf.
Each of the Office's goals is directly aligned to the cost of
delivering patent services. The document entitled USPTO Setting and
Adjusting Patent Fees during Fiscal Year 2017--Activity Based
Information and Patent Fee Unit Expense Methodology, available at
http://www.uspto.gov/about-us/performance-and-planning/fee-setting-and-adjusting, provides detail on the Office's costing methodology in
addition to the last three years of historical cost data. Part IV of
this rulemaking details the Office's methodology for establishing fees.
Finally, Part V describes the reasoning for setting some fees at cost,
below cost, or above cost such that the Office recovers the aggregate
cost of providing services through fees.
(2) Projected Costs. The costs projected to meet the Office's
strategic goals can be found in the FY 2017 President's Budget, which
provides additional detail about the following performance and
modernization efforts, among others: (a) Quality, backlog, and pendency
and (b) modernized IT systems.
(a) Quality, Backlog, and Pendency. The Office developed the
strategic goal of optimizing patent quality and timeliness in response
to feedback from the intellectual property community and in recognition
that a sound, efficient, and effective intellectual property system is
essential for technological innovation and for patent holders to reap
the benefits of patent protection. In addition to timeliness of patent
protection, the quality of application review is critical to the value
of an issued patent. Issuance of quality patents provides certainty in
the market and allows businesses and innovators to make informed and
timely decisions on product and service development. Under the proposed
action, the Office will continue to improve patent quality through the
three quality pillars identified in Part I.
In addition to quality, the USPTO continues to focus on backlog and
pendency reduction. First action pendency went from 21.9 months in FY
2012 to 17.3 months in FY 2015, total average pendency was reduced from
32.4 months in FY 2012 to 26.6 months in FY 2015, and the patent
application backlog was reduced from 608,283 in FY 2012 to 553,221 at
the end of FY 2015. This proposed rulemaking will produce revenues
adequate to continue the USPTO's progress towards attaining its
strategic goals for patent backlog and pendency.
Similarly, the PTAB manages pendency and inventory for appeals and
trials. This proposed rulemaking will help the PTAB to maintain the
appropriate level of judicial, legal, and administrative staff needed
to provide high quality and timely decisions for AIA trials,
reexamination appeals, and ex parte appeals.
(b) Information Technology. Revenue generated from the proposed fee
structure will enable the USPTO to continue modernizing its IT
architecture and systems. Some current systems remain obsolete and
difficult to maintain, leaving the USPTO vulnerable to potential
disruptions in patent operations. However, the Office's efforts on
PE2E, the large-scale patent IT improvement program, have already
delivered value to examiners and customers alike. One of the PE2E
releases included an automated method to convert millions of image-
based patent application papers into a fully automated extensible
markup language (XML), so that images can be tagged with keywords to
facilitate searching during the patent examination process. PE2E relies
on flexible, scalable, modern technology that is optimized to eliminate
repetitive tasks and support analytics and automated processing.
Likewise, eCommerce Modernization (``eMod'') will improve the
electronic patent application process by improving user interfaces,
increasing functionality, and updating infrastructure--all aimed at
enriching the user experience via more efficient system integration and
expanding system usefulness. Modern IT tools benefit both USPTO
employees and stakeholders by facilitating the effective administration
of the patent system through effective application processing, better
examination quality, and the ability to provide greater services via a
nationwide workforce.
(3) Sustainable Funding. A major component of sustainable funding
is the creation of a viable patent operating reserve that allows for
effective management of the U.S. patent system and responsiveness to
changes in the economy, unanticipated production workload, and revenue
changes. As a fee-funded agency, spending levels and revenue streams
create volatility in patent operations and threaten the Office's
ability to meet its designated performance levels (e.g., quality,
backlog, and pendency).
The USPTO's annual budget delineates prospective spending levels
(aggregate costs) to execute core mission activities and strategic
initiatives. In the FY 2017 President's Budget, the USPTO estimated
that its aggregate patent operating costs for FY 2017, including
administrative costs, would be $2.930 billion. After evaluating
relevant risk factors, the Office determined that a minimum balance of
$300 million in the operating reserve was adequate for FY 2016 and FY
2017, which is below the optimal balance of three months operating
expenses, or about $730 million. Based on the proposed fee increase
contained in the FY 2017 President's Budget, the spending requirement
would be offset by projected fee collections and other income of $3.005
billion and a deposit of $75 million to the patent operating reserve,
leaving a $385 million balance in the patent operating reserve, or $85
million more than the desired minimum of $300 million for FY 2017.
Because the FY 2017 President's Budget was submitted prior to the USPTO
making final decisions on the proposed fee adjustments, the operating
reserve estimate in this NPRM differs from the estimate included in the
Budget. Given that the Office reduced several fees from the initial
proposal in response to comments from the PPAC and the public, the
aggregate revenue collected from the proposed fee schedule is lower. In
FY 2017, the proposed fees and other income are projected to collect
$2.969 billion, with $39 million deposited in the operating reserve,
resulting in a balance of $349 million at the end of the fiscal year,
which is slightly more than the minimal level of $300 million for FY
2017. An optimal reserve balance of three months of operating expenses
is projected to be $789 million in FY 2019. With the proposed fee
increases, the Office projects the actual balance will reach $639
million at the end of FY 2019. Without the proposed fee changes, the
Office projects that end of year FY 2019 operating reserve balance
would fall below the minimum threshold of $300 million to approximately
$264 million. With the proposed fee schedule, the Office projects to
first reach the optimal operating reserve balance by the end of FY
2020, and FY 2021 would be the first year in which the optimal
operating reserve balance would be in place at the beginning of the
fiscal year. The FY 2021 optimal reserve balance is projected to be
$818
[[Page 68155]]
million, and the projected reserve level entering the fiscal year is
$861 million.
The USPTO will continue to assess the patent operating reserve
balance against its target balance annually, and at least every two
years, the Office will evaluate whether the target balance continues to
be sufficient to provide the funding stability needed by the Office.
Per the Office's operating reserve policy, if the operating reserve
balance is projected to exceed the optimal level by 10 percent for two
consecutive years, the Office will consider fee reductions. Under the
new fee structure, as in the past, the Office will continue to
regularly review its operating budgets and long-range plans to ensure
the USPTO uses patent fees prudently.
(4) Comments, Advice, and Recommendations from the Patent Public
Advisory Committee. In the report prepared in accordance with AIA fee
setting authority, the PPAC expressed general support for an increase
in fees to sustain quality and fund a sufficient operating reserve for
the Office. Specifically, the report stated, ``The PPAC agrees that the
Office should set fees to establish an adequate revenue stream over a
sustained period to fund the people and infrastructure essential for a
high quality, low pendency examination process, and to fund its
operating reserve.'' However, the PPAC expressed concerns over some of
the individual fee adjustments and their potential impacts on patent
applicants and holders. To address these concerns and still generate
the necessary aggregate revenue to meet the Office's goals, the PPAC
suggested several alternative fee adjustment approaches. The USPTO has
reviewed the report and has amended the initial fee proposal in an
effort to address these concerns, where possible, so as to remain
consistent with the rulemaking goals. The USPTO has also included
additional information in this NPRM to further address some of the
PPAC's concerns.
The PPAC expressed general support for the stated goals and an
increase in patent fees but proposed alternative approaches for certain
fee adjustments. The report suggested that the USPTO could save money
by improving quality and processes to maximize efficiency, thereby
offsetting some fee increases. In general, the PPAC urged the Office to
provide more detail and justification for some of the fee adjustments,
including greater transparency in the allocation of costs and
historical aspects of costs, better explanations for why certain fees
increased and to what purposes the additional revenue would be used,
and any practical implications of not changing the current fee
structure. This Part and Part V: Individual Fee Rationale offer this
additional information.
The PPAC expressed a lack of support for the proposal to increase
Request for Continued Examination (RCE) fees. The advisory body
questioned whether the fees are warranted and suggests instead that the
USPTO consider ways to reduce the need for RCEs. In response to this
concern, the USPTO proposes a reduction to the fee increases for both a
first RCE and a second and subsequent RCE. The revised proposals
include moderate increases that bring the fee rates closer to the cost
of processing an RCE, as calculated using the most recently available
cost data (FY 2015). Specifically, the first RCE fee rate is now
proposed to increase from $1,200 to $1,300 for large entities, a $100
increase (8 percent). The initial proposal included a $300 increase for
this fee. The FY 2015 full cost to examine a first RCE was $2,187. When
factoring small and micro entity rates, first RCE fees collected 48.8
percent of the examination cost in FY 2015. The second and subsequent
RCE fee rate is now proposed to increase from $1,700 to $1,900 for
large entities, a $200 increase (12 percent). The initial proposal
included a $300 increase for this fee. The FY 2015 full cost to examine
a second and subsequent RCE was $1,540. When factoring small and micro
entity rates, second and subsequent RCE fees collected 100 percent of
the examination cost in FY 2015. At an aggregate level, first and
second and subsequent RCE fees collected 62.5 percent of the
examination costs for FY 2015. In order to approach cost recovery and
limit the increase to the first RCE fee rate, the Office proposes a
slightly larger increase for the second and subsequent RCE fee rate.
Had this fee structure been in place in FY 2015, the Office would have
recovered 68.6 percent of RCE costs as opposed to the 62.5 percent that
was experienced. While this proposed fee structure will not achieve
full cost recovery for RCEs, it will bring collections closer to cost
and therefore reduce the subsidy for RCE filings currently provided by
other patent fees. In addition to the proposed fee adjustments, the
USPTO is committed to focusing on initiatives that will reduce the need
for RCEs. Examples of initiatives the Office has already implemented to
reduce the need for RCEs include the Quick Path Information Disclosure
Statement (QPIDS) pilot program (http://www.uspto.gov/patent/initiatives/quick-path-information-disclosure-statement-qpids) and the
After Final Consideration Pilot Program 2.0 (AFCP 2.0) (http://www.uspto.gov/patent/initiatives/after-final-consideration-pilot-20).
Additionally, the Enhanced Patent Quality Initiative (http://www.uspto.gov/patent/initiatives/enhanced-patent-quality-initiative-0)
will be evaluating and strengthening work products, processes, and
services at all stages of the patent process and may contribute to
reducing the need for RCEs.
The report noted opposition to the proposed increases for excess
claim fees. The PPAC recommends a refund system in which excess claim
fees are returned when claims are cancelled in response to a
restriction requirement. Under this proposal, an applicant would only
incur fees for the claims that are actually examined, not just filed.
The USPTO appreciates the PPAC's suggestion and has committed to
undertaking a study to determine the feasibility of such a refund
program, and at present the Office is proposing the increase for excess
claim fees.
Regarding the proposed change to the Information Disclosure
Statement (IDS) model, the PPAC expressed concern about the negative
effects of eliminating the certification requirement (under 37 CFR 1.97
(e)) and noted that the fee increase may discourage applicants from
filing promptly when new prior art is discovered. In response to PPAC
and public comments, the USPTO eliminated the proposed changes to IDS
practice and instead is proposing a moderate increase to the IDS
submission fee rate.
The report stated that the substantial increase to the notice of
appeal and appeal forwarding fees would likely result in discouraging
patent holders' invocation of appeal procedures, which are frequently
used out of necessity rather than choice. In response, the Office notes
that even with the proposed increases to the fees, the true cost of ex
parte appeals is being significantly subsidized. That is, in FY 2015,
ex parte appeal fees covered approximately 58 percent of the cost per
appeal. The proposed fee increase will bring ex parte appeal fees up to
cover approximately 72 percent of the cost per appeal. Since the
implementation of the January 2013 Setting and Adjusting Patent Fees
Final Rule, the increased ex parte appeal fees have enabled the PTAB to
hire more judges. The PTAB has made great strides in reducing its
appeals inventory, which reached over 27,000 (in 2012), to under 19,000
(in April 2016). The proposed increase in fees will help the Board
further reduce
[[Page 68156]]
the appeals inventory and improve pendency for appeals and trials. The
PTAB is also working to reduce inventory with the implementation of the
following two pilot programs: (i) Expedited Patent Appeal Pilot (EPAP)
(see http://www.uspto.gov/patents-application-process/patent-trial-and-appeal-board/expedited-patent-appeal-pilot) and (ii) Small Entity Pilot
Program (see http://www.uspto.gov/patents-application-process/patent-trial-and-appeal-board/uspto-announces-streamlined-expedited).
The PPAC report specifically expressed support for proposed fee
adjustments for the IPR, PGR, and CBMR so that the PTAB has adequate
resources to accomplish the mission of the AIA. However, the PPAC
questioned the distribution of the fees between pre- and post-
institution. The Office appreciates the observation and is currently
assessing the matter.
The PPAC suggested that it would be sensible for the USPTO to
subdivide the AIA trial fees more finely (``pay as you go''). As the
AIA review processes mature and become more certain, it may be
appropriate to study the impact and feasibility of this proposal.
Developing an understanding of the reasons driving settlements at
various times in these proceedings will inform decision makers as to
how and when to best structure fees. Because fees are intended to
recapture aggregate agency patent costs over time, structuring of the
fees will still require recapture of all costs unless the costs of the
review proceedings are subsidized by other patent related revenue. The
Office agrees with the PPAC's characterization that the proceedings
still contain significant uncertainties. Once the USPTO has had further
experience with the proceedings to derive conclusions about settlement
and other behaviors, the USPTO will reexamine the appropriateness of
this proposal.
Additionally, the PPAC suggested that the Office consider adopting
a scaled petition fee schedule based on the petitioner's annual
revenue. However, the authority to discount fees or to charge
additional fees for certain petitioners under the USPTO's rulemaking
authority is limited by the AIA to providing discounts to the six
categories under section 10(b). As the administrative trial fees are
outside of the six categories, the trial fees are not eligible for
discounts.
The report proposed a refund system for disciplinary proceeding
fees associated with the Office of Enrollment and Discipline (OED).
While the PPAC recognizes the importance of having an effective process
for ensuring compliance with the rules governing the Patent Bar, the
advisory body also recognizes that some practitioners may be fully
exonerated upon final determination. The Office would like to clarify
that pursuant to 37 CFR 11.60(d)(2), the OED Director is currently
authorized to recover expenses from a disciplined practitioner who
seeks reinstatement. The purpose of listing this fee in 37 CFR 1.21 is
simply to establish a new fee code by which to account for the receipt
of these reimbursements. The fee is only imposed on practitioners who
seek reinstatement after having been suspended or excluded. Thus, there
should be no concern that a practitioner would be subject to this fee
if he or she has been investigated and cleared or has been disciplined
but not suspended or excluded.
The PPAC also suggested that the proposed increases to design fees
were excessive. In response, the USPTO has reduced the proposed
increase to the design issue fee by $200 for large entities from the
level that the Office initially proposed. The proposed large entity
design issue fee rate is now $800 as opposed to $1,000. The minimum
required fees to obtain a design patent (file/search/examination and
issue) are proposed to increase slightly beyond cost recovery for large
entities ($1,760 versus $1,596) to subsidize the substantial number
(almost half in FY 2015) of small and micro entity applicants who pay
lower fees despite similar costs to the Office. Further, design
patentees do not pay maintenance fees, so there is no back-end subsidy
to support below-cost front-end fees. Overall, design fees are still
proposed at rates that are below the Office's aggregate processing
costs even if the large entity design fee rates are slightly above
cost. Therefore, even with the proposed fee increases, design
application processing costs will continue to be subsidized by non-
design specific fee revenues. The Office believes these proposed
moderate fee increases in filing, search, examination, and issue are
appropriately aligned to costs and the policy consideration to foster
innovation.
In the case of sequence listing fees, the report sought more
information on the proposed fees to clarify the need for the increase.
The level of effort associated with the handling of extremely lengthy
sequence listings (hereafter referred to as mega-sequence listings) is
significant because the Office's systems require extra storage and
special handling for sequence listing files beyond 300 Megabytes (MB).
Actual cost data is not available since these are newly proposed fees.
However, based on historical data, on average, less than 10
applications per year contained sequence data that reached the 300 MB
file levels of the proposed new fees. Based on previously filed
applications with lengthy sequence listings, the Office determined that
some applications disclosed sequence data that met the length
thresholds for being included in the sequence listing, but that was
neither invented by the applicants nor claimed. These sequence listings
often included sequences that were available in the prior art, were not
essential material, and could have been described instead, for example,
by name and a publication or accession reference. Claims in such
applications were frequently directed to the manipulation of sequence
data rather than the substance of the sequences themselves. Submission
of a mega-sequence listing in these applications would not have been
necessary to complete the application if applicants limited the number
of sequences that were described in such a way as to be required in a
sequence listing. The proposed fee should encourage applicants to draft
their specifications such that sequence data that is not essential
material is not required to be included in a sequence listing, which
should reduce the need for mega-sequence listings. A reduced number of
mega-sequence listings will benefit the Office and the public by
reducing large submissions of unnecessary sequences and, consequently,
the search system load. The PPAC also requested additional information
regarding the proposed fee for the late filing of sequence listings in
international applications. This fee is being established pursuant to
PCT Rule 13ter.1(c) and is similar in nature and proposed fee rate to
fees charged by other international IP offices. Additional information
regarding the authority and purpose of this rulemaking is available at
http://www.wipo.int/pct/en/texts/rules/r13ter.htm.
The PPAC also requested additional information regarding copy fees,
in particular those that appeared to be ``very high charges.''
Currently the fee schedule includes a catch-all fee of ``Computer
Records'' priced ``at cost.'' The Office proposes to replace this fee
code with five fees that encompass work currently performed and charged
to this code. The five fee codes proposed to replace the ``Computer
Records'' fee are: Copy of Patent Grant Single-Page TIFF Images (52
week subscription); Copy of Patent Grant Full-Text W/Embedded Images,
Patent Application Publication
[[Page 68157]]
Single-Page TIFF Images, or Patent Application Publication Full-Text W/
Embedded Images (52 week subscription); Copy of Patent Technology
Monitoring Team (PTMT) Patent Bibliographic Extract and Other DVD
(Optical Disc) Products; Copy of U.S. Patent Custom Data Extracts; and
Copy of Selected Technology Reports, Miscellaneous Technology Areas.
The proposed fee codes explicitly state the service and fee to provide
customers with clearer information to aid decision making.
These specific fees recover the USPTO's aggregate costs for
processing, validating, packaging, and shipment of these products to
customers worldwide. For the copy of Patent Grant Single-Page TIFF
Images (52 week subscription) (which the Office proposes to set at
$10,400), for example if a customer orders this service, each week the
Office will expedite to him or her a package that contains, at a
minimum, one Blu-ray and one DVD optical disc bearing the patent grant
data for each Tuesday in the calendar year via United Parcel Service.
The fee rate covers the cost of producing and delivering these items
for each of the 52 weeks of the year. For the other three services
proposed at $5,200, the expedited weekly packages (one for each Tuesday
or Thursday in the calendar year) typically contain either a single
Blu-ray or DVD optical disc. As an alternative to requesting and paying
for these weekly services, the USPTO has provided customers the ability
to download this information at no cost since June 2010. This
information is currently provided in the following locations: Bulk Data
Storage System (BDSS) available at https://bulkdata.uspto.gov since
October 2015 and Reed Tech Public Data Dissemination (PDD) available at
http://patents.reedtech.com since June 2013.
The USPTO left maintenance fees untouched in the initial proposal.
The PPAC report noted that this was an ``attractive feature to many
stakeholders given their already high level, especially at the third
stage.'' The PPAC also commented that there may be an opportunity to
decrease the third stage fee and raise the maintenance fees at the
first two stages or second maintenance fee only as a means to increase
revenue. The USPTO appreciated the input and will continue to closely
monitor renewal rates to determine if and when a change to the
maintenance fee rates is warranted.
In summary, the USPTO appreciates the PPAC's overall support for an
increase in patent fees to meet sufficient funding levels. After
careful consideration of the comments, concerns, and suggestions
provided in the report, and keeping in mind the goals of this
rulemaking, the USPTO elected to reduce several of the fee increases
initially proposed to the PPAC. The newly proposed fee structure will
result in lower aggregate revenue than that initially proposed to the
PPAC. Nevertheless, the fee structure proposed herein will ultimately
allow the USPTO to continue on its path towards achieving the goals and
objectives laid out in the Strategic Plan. The Office looks forward to
receiving additional comments on this revised proposal during the
public comment period.
C. Summary of Rationale and Purpose of the Proposed Rulemaking
The Office estimates that the proposed patent fee schedule will
produce aggregate revenues to recover the aggregate costs of the USPTO,
including for the implementation of its strategic and management goals,
objectives, and initiatives in FY 2017 and beyond. Using the strategic
goals (optimizing patent quality and timeliness and providing domestic
and global leadership to improve intellectual property policy,
protection, and enforcement worldwide) and the management goal of
organizational excellence as a foundation, the proposed rule would
provide sufficient aggregate revenue to recover the aggregate cost of
patent operations, including improving patent quality, reducing the
patent application backlog, decreasing patent application pendency,
upgrading the patent business IT capability and infrastructure, and
implementing a sustainable funding model.
IV. Fee Setting Methodology
The Office carried out three primary steps in developing the
proposed 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 factors.
These three steps are iterative and interrelated. The following is
a description of how the USPTO carries out these three steps.
Step 1: Determine Prospective Aggregate Costs
Calculating prospective aggregate costs is accomplished primarily
through the annual USPTO budget formulation process. The Budget is a
five-year plan (that the Office prepares annually) for carrying out
base programs and new initiatives to implement 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 depend 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 filing, search, and examination
costs are the largest share of the total patent operating cost, a
primary production workload driver is the number of patent application
filings (i.e., incoming work to the Office). The Office looks at
indicators such as the expected growth in Real Gross Domestic Product
(RGDP), the leading indicator to incoming patent applications, to
estimate prospective workload. RGDP is reported by the Bureau of
Economic Analysis (www.bea.gov) and is forecasted each February by the
Office of Management and Budget (OMB) (www.omb.gov) in the Economic and
Budget Analyses section of the Analytical Perspectives and each January
by the Congressional Budget Office (CBO) (www.cbo.gov) in the Budget
and Economic Outlook. A description of the Office's methodology for
using RGDP can be found at pages 143 and 144 of the FY 2017 President's
Budget (Congressional Justification). 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
publication) adjustments. The Office uses a patent pendency model that
estimates patent production output based on actual historical data and
input assumptions, such as incoming patent applications and overtime
hours. An overview of the model, including a description of inputs,
outputs, key data relationships, and a simulation tool is available at
http://www.uspto.gov/patents/stats/patent_pend_model.jsp.
The second activity is to calculate the aggregate costs to execute
the requirements. In developing its Budget, the Office first looks at
the cost of status quo operations (the base requirements). The base
requirements are adjusted for
[[Page 68158]]
anticipated pay raises and inflationary increases for the budget year
and four out years (detailed calculations and assumptions for this
adjustment can be found in the FY 2017 President's Budget). The Office
then estimates the prospective cost for expected changes in production
workload and new initiatives over the same period of time (refer to
``Program Changes by Sub-Program'' sections of the Budget). The Office
reduces cost estimates for completed initiatives and known cost savings
expected over the same five-year horizon. 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 FY 2017 President's Budget identifies that, during FY 2017,
patent operations will cost $2.928 billion (see page 146 of the
Budget), including $2.009 billion for patent examination activities;
$162 million for IT systems, support, and infrastructure contributing
to patent operations; $93 million for activities related to patent
appeals and the AIA inter partes dispute actions; $27 million for
activities related to intellectual property protection, policy, and
enforcement; and $637 million for general support costs necessary for
patent operations (e.g., rent, utilities, legal, financial, human
resources, other administrative services, and Office-wide IT
infrastructure and IT support costs). In addition, the Office transfers
$2 million to the DOC Inspector General for audit support. The Office
also estimates collecting $28 million in other income associated with
recoveries and reimbursable agreements (offsets to spending) and
depositing $75 million during FY 2017 toward the cost of building the
patent operating reserve to sustain operations.
Because the FY 2017 President's Budget was submitted prior to the
USPTO making final decisions on the proposed fee adjustments, the
operating reserve estimate in this NPRM is therefore different than the
estimate included in the Budget. A detailed description of the
operating requirements and related aggregate cost is located in the
Budget. Table 2 below provides key underlying production workload
projections and assumptions from the Budget used to calculate aggregate
cost. Table 3 presents the total budgetary requirements (prospective
aggregate cost) for FY 2017 through FY 2021 and the estimated
collections and operating reserve balances that would result from the
proposed adjustments contained in this NPRM.
Table 2--Patent Production Workload Projections--FY 2017-FY 2021
----------------------------------------------------------------------------------------------------------------
Utility, plant, and reissue
(UPR) FY 2017 FY 2018 FY 2019 FY 2020 FY 2021
----------------------------------------------------------------------------------------------------------------
Applications *.................. 594,900 606,800 625,000 650,000 676,000
Growth Rate..................... 1.5% 2.0% 3.0% 4.0% 4.0%
Production Units................ 616,200 624,900 628,700 629,300 628,500
Unexamined Patent Application 434,700 397,400 374,000 374,700 401,600
Backlog........................
Examination Capacity **......... 8,087 8,022 7,937 7,832 7,777
Performance Measures (UPR)
Avg. First Action Pendency 13.7 12.2 10.9 10.3 10.2
(Months)...................
Avg. Total Pendency (Months) 22.9 22.1 20.6 19.5 19.1
----------------------------------------------------------------------------------------------------------------
* In this table, the patent application filing data includes requests for continued examination (RCEs).
** In this table, Examination Capacity is the UPR Examiners On-Board at End-of-Year, as described in the FY 2017
President's Budget.
Table 3--Planned Operating Requirements--FY 2017-FY 2021
----------------------------------------------------------------------------------------------------------------
Dollars in millions
Patent aggregate cost estimate -------------------------------------------------------------------------------
FY 2017 FY 2018 FY 2019 FY 2020 FY 2021
----------------------------------------------------------------------------------------------------------------
Patent Planned Operating 2,930 3,114 3,157 3,208 3,272
Requirements...................
Less: Planned Patent Fee 2,951 3,260 3,265 3,412 3,599
Collections................
Less: Other Income.......... 18 18 18 18 18
To (-)/From (+) Operating 39 164 127 222 344
Reserve........................
EOY Operating Reserve Balance... 349 513 639 861 1,206
----------------------------------------------------------------------------------------------------------------
Step 2: Calculate Prospective Aggregate Revenue
As described in ``Step 1,'' the USPTO's FY 2017 requirements in the
FY 2017 President's Budget include the aggregate prospective cost of
planned production, anticipated new initiatives, and a contribution to
the patent operating reserve required for the Office to realize its
strategic goals and objectives for the next five years. The aggregate
prospective cost becomes the target aggregate revenue level that the
new fee schedule must generate in a given year and over the five-year
planning horizon. To calculate the aggregate revenue estimates, the
Office first analyzes relevant factors and indicators to calculate or
determine prospective fee workload (e.g., number of applications and
requests for services and products), growth, and resulting fee workload
volumes (quantities) for the five-year planning horizon. Economic
activity is an important consideration when developing workload and
revenue forecasts for the USPTO's products and services because
economic conditions affect patenting activity, as most recently
exhibited in the recession of 2009 when incoming workloads and renewal
rates declined.
The Office considers economic activity when developing fee
workloads and aggregate revenue forecasts for its products and
services. Major economic indicators include the overall condition of
the U.S. and global economies, spending on research and development
activities, and investments that lead to the commercialization of new
products and services. The most relevant economic indicator that the
Office uses is the RGDP, which is the broadest measure of economic
activity and is anticipated to grow approximately two percent for FY
2017 based on OMB and CBO estimates.
These indicators correlate with patent application filings, which
are a key driver of patent fees. Economic indicators also provide
insight into market conditions and the management of intellectual
property portfolios,
[[Page 68159]]
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, court decisions, process
efficiencies, and anticipated applicant behavior.
Anticipated applicant behavior in response to fee changes is
measured using an economic principle known as elasticity, which for the
purpose of this action measures how sensitive applicants and patentees
are to changes in fee amounts. The higher the elasticity measure (in
absolute value), the greater the applicant response to the relevant fee
change. If elasticity is low enough (i.e., demand is inelastic or the
elasticity measure is less than one in absolute value), a fees increase
will lead to only a relatively small decrease in patent activities, and
overall revenues will still increase. Conversely, if elasticity is high
enough (i.e., demand is elastic or the elasticity measure is greater
than one in absolute value), a fee increase will lead to a relatively
large decrease in patenting activities 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 Setting and Adjusting
Patent Fees during Fiscal Year 2017--Description of Elasticity
Estimates,'' available at http://www.uspto.gov/about-us/performance-and-planning/fee-setting-and-adjusting.
Aggregate Revenue Estimate Ranges
When estimating aggregate revenue, the USPTO prepares a high and a
low range of fee collection estimates. This range accounts for the
inherent uncertainty, sensitivity, and volatility of predicting
fluctuations in the economy and market environment; interpreting policy
and process efficiencies; and developing fee workload and fee
collection estimates from assumptions. The Office estimates a range for
all its major workload categories including application filings,
extensions of time, PTAB fees, maintenance fees, PCT filings, and
trademark filings. Additional detail about the Office's aggregate
revenue, including projected workloads by fee, is available in ``USPTO
Setting and Adjusting Patent Fees during Fiscal Year 2017--Aggregate
Revenue Estimates Alternative 1: Proposed Alternative'' available at
http://www.uspto.gov/about-us/performance-and-planning/fee-setting-and-adjusting.
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
maintenance fees, which subsidize the cost of 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
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 proposed fee rates will become effective on April 1,
2017. Using these figures, the USPTO sums the individual fee revenue
estimates, and the result is a total aggregate revenue estimate for a
given year (see Table 3).
Step 3: Set Specific Fee Amounts
Once the Office finalizes the annual requirements and aggregate
prospective costs for a given year during the budget formulation
process, the Office sets specific fee amounts that, together, will
derive the aggregate revenue required to recover the estimated
aggregate prospective costs during that time frame. Calculating
individual fees is an iterative process that encompasses many
variables. One variable that the USPTO considers to inform fee setting
is the historical cost estimates associated with individual fees. The
Office's Activity-Based Information (ABI) provides historical cost for
an organization's activities and outputs by individual fee using the
activity-based costing (ABC) methodology. ABC is commonly used for fee
setting throughout the Federal Government. Additional information about
the methodology, including the cost components related to respective
fees, is available in the document entitled ``USPTO Setting and
Adjusting Patent Fees during Fiscal Year 2017--Activity-Based
Information and Patent Fee Unit Expense Methodology'' available at
http://www.uspto.gov/about-us/performance-and-planning/fee-setting-and-adjusting. The USPTO provides data for FY 2013-FY 2015 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 estimate the full cost of a new activity or service.
V. Individual Fee Rationale
The Office projects that the aggregate revenue generated from the
proposed patent fees will recover the prospective aggregate cost of its
patent operations including contributions to the operating reserve per
the strategic goal of implementing a sustainable funding model. As
detailed previously, the PPAC supports this approach, stating that it
``agrees that the Office should set its fees to establish an adequate
revenue stream over a sustained period to fund the people and
infrastructure essential for a high quality, low pendency examination
process, and to fund its operating reserve.'' It is important to
recognize that each individual proposed fee is not necessarily set
equal to the estimated cost of performing the activities related to the
fee. Instead, as described in Part III: Rulemaking Goals and
Strategies, some of the proposed fees are set at, above, and below
their unit costs to balance several key fee setting policy factors:
Fostering innovation, facilitating effective administration of the
patent system, and offering patent processing options to applicants.
For example, many of the initial filing fees are intentionally set
below unit cost in order to foster innovation by removing barriers to
entry for innovators. To balance the aggregate
[[Page 68160]]
revenue loss of fees set below cost, other fees must be set above cost
in areas where it is less likely to reduce inventorship (e.g.,
maintenance). The Office applied a similar rationale to set and adjust
patent fees in the 2013 final rule, the initial patent fee setting
rulemaking using AIA authority. 78 FR 4212 (January 18, 2013).
For some fees proposed in this NPRM, the USPTO does not typically
maintain individual historical cost data for the service provided, such
as maintenance fees. Instead, the Office evaluates the policy factors
described in Part III to inform fee setting. By setting fees at
particular levels, the USPTO aims to: (1) Foster an environment 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.
The rationale for the proposed changes are grouped into three major
categories, discussed below: (A) Fees where large entity amounts stayed
the same or did not change by greater than plus or minus 10 percent or
20 dollars; (B) fees where large entity amounts changed from the
current amount by greater than plus or minus 10 percent and 20 dollars;
and (C) fees that are discontinued or replaced. 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 and micro 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 or one quarter of the large entity
change. Therefore, the only time there will be a small or micro entity
fee change that meets the greater than plus or minus 10 percent or 20
dollars criteria without a similar change for the large entity fee will
be for those instances when the Office is introducing new small and
micro entity fees where there was previously only a large entity fee.
These types of changes are discussed separately.
The Table of Patent Fees includes the current and proposed fees for
large, small, and micro entities as well as unit costs for the last
three fiscal years. Part IV: Discussion of Specific Rules contains a
complete listing of fees that are set or adjusted in the proposed
patent fee schedule.
A. Fees With Proposed Changes Less Than Plus or Minus 10 Percent or 20
Dollars
The Office proposes to adjust slightly (i.e., less than plus or
minus 10 percent or 20 dollars) several fees not discussed in sections
B or C below. The Table of Patent Fees demarcates which fees meet the
dollar change and percent change thresholds and are included for
discussion in Part V. Proposed fees are rounded to the nearest five
dollars by applying standard arithmetic rules. For fees that have small
and micro entity fee reductions, the large entity fee will be rounded
to the nearest 20 dollars by applying standard arithmetic rules. The
resulting proposed fee amounts will be convenient to patent users and
permit the Office to set small and micro entity fees at whole dollar
amounts when applying the applicable fee reduction. The slight increase
in these fees helps the Office to recover higher costs of performing
such services due to increased aggregate cost of doing business. The
proposed fee adjustments in this category are listed in the Table of
Patent Fees.
B. Fees With Proposed Changes of Greater Than Plus or Minus 10 Percent
and 20 Dollars
For those fees that are proposed to change by greater than plus or
minus 10 percent and 20 dollars, the individual fee rationale
discussion is divided into three categories, including: (1) New and
significant fees; (2) patent enrollment fees; and (3) fees adjusted and
amended to include discounts for small and micro entities.
New and significant fees are further divided into subcategories
according to the function of the fees, including: (a) Mega-sequence
listing filing; (b) design and plant search, examination, and issue;
(c) request for continued examination (RCE); (d) information disclosure
statements; (e) certificate of correction; (f) request for ex parte
reexamination; (g) appeals; (h) AIA trials; (i) PCT- International
Stage; and (j) reissue patent maintenance rules.
As discussed above, for purposes of comparing amounts in the
individual fee rationale discussion, the Office has included the
current fees as the baseline to calculate the dollar change and percent
change for proposed fees.
(1) New and Significant Fees
The following fees fall under the category of new and significant.
A discussion of the rationale for each fee follows.
(a) Mega-Sequence Listing Filing
Table 4--Mega-Sequence Listing Filing--Fee Changes and Unit Cost
----------------------------------------------------------------------------------------------------------------
Current fees Proposed fees Dollar change Percent change
-------------------------------------------------------------------
Fee description Large (small) Large (small) Large (small) FY 2015 Unit
Large (small) [micro] [micro] [micro] cost
[micro] entity entity entity entity
----------------------------------------------------------------------------------------------------------------
Submission of sequence new.............. $1,000 +$1,000 n/a n/a
listings of 300MB to 800MB. ($500) (+$500) (n/a)
[$250] [+$250] [n/a]
Submission of sequence new.............. $10,000 +$10,000 n/a n/a
listings of more than 800 MB. ($5,000) (+$5,000) (n/a)
[$2,500] [+$2,500] [n/a]
----------------------------------------------------------------------------------------------------------------
The Office proposes two new fees to manage handling of sequence
listings of 300 MB or more. Pricing for this fee is divided into two
tiers with Tier 1 for file sizes 300MB to 800MB and Tier 2 for file
sizes greater than 800MB.
The level of effort associated with the handling of mega-sequence
listings is significant, because the Office's systems require extra
storage and special handling for files beyond 300 MB. The Office has
not yet collected actual cost data for sequence listings with file
sizes of 300 MB or greater. However, based on
[[Page 68161]]
historical data, on average, less than 10 applications per year
contained sequence listing files greater than 300MB. Based on
previously filed applications with lengthy sequence listings, the
Office determined that some applications disclosed sequence data that
met the length thresholds for being included in the sequence listing
but that was neither invented by the applicants nor claimed. Mega-
sequence listings, in particular, often included sequences that were
available in the prior art, were not essential material, and could have
been described instead, for example, by name and a publication or
accession reference. Further, claims accompanying such applications
were frequently directed to the manipulation of sequence data rather
than the substance of the sequences themselves. Submission of a mega-
sequence listing in these applications would not have been necessary to
complete the application if applicants limited the number of sequences
that were described in such a way as to be required in a sequence
listing. The proposed fee should encourage applicants to draft their
specifications such that sequence data that is not essential material
is not required to be included in a sequence listing. A reduced number
of mega-sequence listings will benefit the Office and the public by
reducing the strain on Office resources, thus facilitating the
effective administration of the patent system.
(b) Design and Plant Search, Examination, and Issue
Table 5--Design and Plant Search, Examination, and Issue Fees--Fee Changes
----------------------------------------------------------------------------------------------------------------
Current fees Proposed fees Dollar change Percent change
----------------------------------------------------------------
Fee description Large (small) Large (small) Large (small) Large (small) FY 2015 Unit
[micro] [micro] [micro] [micro] cost
entity entity entity entity
----------------------------------------------------------------------------------------------------------------
Design Search Fee............... $120 $160 +$40 +33% $397
($60) ($80) (+$20) (+33%)
[$30] [$40] [+$10] [+33%]
Plant Search Fee................ $380 $420 +$40 +11% $1,773
($190) ($210) (+$20) (+11%)
[$95] [$105] [+$10] [+11%]
Design Examination Fee.......... $460 $600 +$140 +30% $608
($230) ($300) (+$70) (+30%)
[$115] [$150] [+$35] [+30%]
Design Issue Fee................ $560 $800 +$240 +43% $314
($280) ($400) (+$120) (+43%)
[$140] [$200] [+$60] [+43%]
Plant Issue Fee................. $760 $1,000 +$240 +32% $314
($380) ($500) (+$120) (+32%)
[$190] [$250] [+$60] [+32%]
----------------------------------------------------------------------------------------------------------------
Design and plant patents are unlike utility patents in that they do
not pay maintenance fees after the patent has been granted. Under the
current utility fee structure, entry costs (filing, search, and
examination fees) are intentionally set below the full cost of
performing this service as a means to foster innovation. Then, the full
cost of examination is recovered through the payment of issue and
maintenance fees. Given the lack of maintenance fees and the fact that
the majority of design applicants are small and micro entities who are
eligible to pay reduced fees, the Office currently does not recover the
costs to examine design and plant patent applications solely from
design and plant application fees. Instead, these costs are being
subsidized by other application types (e.g., utility) and processes.
The proposed fees would better align the fees with costs by bringing
both application types closer to aggregate cost recovery while
maintaining some subsidization. In an effort to limit cost-based entry
barriers for these application types, the Office proposes the largest
increase, in terms of dollars, for the issue fee.
(c) Request for Continued Examination (RCE)--First and Second and
Subsequent Request
Table 6--Request for Continued Examination (RCE) Fee Changes
----------------------------------------------------------------------------------------------------------------
Current fees Proposed fees Dollar change Percent change
---------------------------------------------------------------- FY 2015 Unit
Fee description Large (small) Large (small) Large (small) Large (small) cost
[micro] entity [micro] entity [micro] entity [micro] entity
----------------------------------------------------------------------------------------------------------------
Request for Continued $1,200 $1,300 +$100 +8% $2,187
Examination (RCE)--1st Request ($600) ($650) (+$50) (+8%)
(see 37 CFR 1.114)............. [$300] [$325] [+$25] [+8%]
Request for Continued $1,700 $1,900 +$200 +12% $1,540
Examination (RCE)--2nd and ($850) ($950) (+$100) (+12%)
Subsequent Request (see 37 CFR [$425] [$475] [+$50] [+12%]
1.114).........................
----------------------------------------------------------------------------------------------------------------
[[Page 68162]]
The proposed moderate increases to RCE fees directly support the
fee setting policy factor to align fees with costs. The Office's
proposed increase would more closely align the fee rates with the cost
of processing RCEs, as calculated using the most recently available
cost data (FY 2015). Specifically, the Office proposes to increase the
first RCE fee rate from $1,200 to $1,300 for large entities, a $100
increase (8 percent). The FY 2015 cost to examine a first RCE was
$2,187. When factoring in filings by small and micro entities, first
RCE fees collected 48.8 percent of their aggregate examination costs in
FY 2015. When discussing RCEs, it is helpful to recognize the impact of
small entity discounts on the Office's costs. Specifically, while small
and micro entity fee rates are reduced by 50 percent and 75 percent
respectively, the cost of processing these actions is not reduced
accordingly.
The Office proposes to increase the second and subsequent RCE fee
rate from $1,700 to $1,900 for large entities, a $200 increase (12
percent). The FY 2015 cost to examine a second and subsequent RCE was
$1,540. When factoring filings by small and micro entities, second and
subsequent RCE fees fully collected the complete examination cost in FY
2015. When combined, first and second and subsequent RCE fees collected
62.5 percent of the examination costs. In order to approach cost
recovery and limit the increase to the first RCE fee rate, the Office
proposes a slightly larger increase for the second and subsequent RCE
fee rate. Had this fee structure been in place in FY 2015, the Office
would have recovered 68.6 percent of RCE costs as opposed to the 62.5
percent that was realized. In FY 2015, the Office collected fees for
112,634 first RCEs and for 57,931 second and subsequent RCEs.
While this fee structure will not achieve full cost recovery for
RCEs, it will bring collections closer to cost and therefore reduce the
subsidy for RCE filings currently provided by other patent fees. In
addition to the fee adjustments, the USPTO is committed to focusing on
initiatives that will reduce the need for RCEs. Examples of initiatives
the Office has already implemented to reduce the need for RCEs include
the QPIDS pilot program (http://www.uspto.gov/patent/initiatives/quick-path-information-disclosure-statement-qpids) and the AFCP 2.0 (http://www.uspto.gov/patent/initiatives/after-final-consideration-pilot-20).
Additionally, the recently announced Enhanced Patent Quality Initiative
(http://www.uspto.gov/patent/initiatives/enhanced-patent-quality-initiative-0) will be evaluating and strengthening work products,
processes, and services at all stages of the patent process.
(d) Information Disclosure Statements (IDS)
Table 7--IDS--Fee Changes and Unit Costs
----------------------------------------------------------------------------------------------------------------
Current fees Proposed fees Dollar change Percent change
---------------------------------------------------------------- FY 2015 Unit
Fee description Large (small) Large (small) Large (small) Large (small) cost
[micro] entity [micro] entity [micro] entity [micro] entity
----------------------------------------------------------------------------------------------------------------
Submission of an Information $180 $240 +$60 +33% n/a
Disclosure Statement........... ($90) ($120) (+$30) (+33%)
[$45] [$60] [+$15] [+33%]
----------------------------------------------------------------------------------------------------------------
The Office proposed new procedural rules and fee rates for the
Information Disclosure Statement practices in its initial proposal to
PPAC. Based on the feedback received, the Office determined not to move
forward with the changes to the IDS procedural rules. Instead, the
Office proposes to increase the submission fee from $180 to $240. The
Office proposes the adjustment in an effort to optimally set the fee to
encourage early submission of an IDS when possible. However, based on
stakeholder feedback offered in response to the Office's initial patent
fee setting proposal, the Office aims to keep the fee rate low enough
to encourage timely filings during the time period (and under the
conditions) when the fee would be required.
(e) Certificate of Correction Fees
Table 8--Certificate of Correction Fees--Fee Changes and Unit Costs
--------------------------------------------------------------------------------------------------------------------------------------------------------
Current fees Proposed fees Dollar change Percent change
-------------------------------------------------------------------- FY 2015 Unit
Fee description Large (small) Large (small) Large (small) Large (small) cost
[micro] entity [micro] entity [micro] entity [micro] entity
--------------------------------------------------------------------------------------------------------------------------------------------------------
Certificate of Correction.......................................... $100 $150 +$50 +50% $93
--------------------------------------------------------------------------------------------------------------------------------------------------------
The Office proposes to increase the fee for a certificate of
correction by $50 to $150. The Office proposes the adjustment in an
effort to encourage applicants to submit accurate information
initially, while at the same time not increasing the rate too much
above unit cost recovery to discourage disclosure of needed corrections
when an error has been identified. Whenever a mistake of a clerical or
typographical nature, or of minor character, which was not the fault of
the USPTO, appears in a patent and a showing has been made that such
mistake occurred in good faith, the Director may, upon payment of this
fee, issue a certificate of correction, if the correction does not
involve such changes in the patent as would constitute new matter or
would require reexamination.
(f) Request for Ex Parte Reexamination Fees
[[Page 68163]]
Table 9--Request for Ex Parte Reexamination Fees--Fee Changes and Unit Costs
----------------------------------------------------------------------------------------------------------------
Current fees Proposed fees Dollar change Percent change
---------------------------------------------------------------- FY 2015 Unit
Fee description Large (small) Large (small) Large (small) Large (small) cost
[micro] entity [micro] entity [micro] entity [micro] entity
----------------------------------------------------------------------------------------------------------------
Ex Parte Reexamination (Sec. new $6,000 +$6,000 n/a n/a
1.510(a)) Streamlined.......... ($3,000) (+$3,000)
[$1,500] [+$1,500]
----------------------------------------------------------------------------------------------------------------
The Office proposes to establish a new fee for smaller, streamlined
reexamination filings. The streamlined filings would reduce the cost to
the USPTO, allowing the Office to pass on the cost savings to
applicants. The proposed fee would apply to ex parte reexamination
requests having: (i) 40 Pages or less; (ii) lines that are double-
spaced or one-and-a-half spaced; (iii) text written in a non-script
type font such as Arial, Times New Roman, or Courier; (iv) a font size
no smaller than 12 point; (v) margins which conform to the requirements
of 37 CFR 1.52(a)(1)(ii); and (vi) sufficient clarity and contrast to
permit direct reproduction and electronic capture by use of digital
imaging and optical character recognition. The following parts of an ex
parte reexamination request are excluded from (i) through (v) above:
(a) The copies of every patent or printed publication relied upon in
the request pursuant to 37 CFR 1.510(b)(3); (b) the copy of the entire
patent for which reexamination is requested pursuant to 37 CFR
1.510(b)(4); and (c) the certifications required pursuant to 37 CFR
1.510(b)(5) and (6). Completed forms such as the Request for Ex Parte
Reexamination Transmittal Form (PTO/SB/57) or the information
disclosure statement form (PTO/SB/08), or their equivalents, will also
be excluded from (i) through (v). Claim charts will be considered part
of the request and will be included in the page limit. Any paper
containing argument directed to the patentability or unpatentability of
the claims, such as an affidavit or declaration, will be included in
the page limit and subject to the above requirements. If only a portion
of the paper contains argument, the entire paper will be included in
the page limit. The Office deems conclusions and/or definitions to be
argumentative. For example, a request that includes 40 pages of
argument and a 41st page that includes conclusions or definitions would
be deemed to be a request having greater than 40 pages. A page that
consists solely of a signature will not be included in the page limit.
The determination of whether a paper contains argument will be within
the sole discretion of the Office.
Note that micro entity status is only available to patent owner
requesters, not to third party requesters. The change is consistent
with the USPTO's fee setting policy factors to align fees to costs,
offer additional processing options, and facilitate the effective
administration of the patent system, and is also consistent with the
requirements of 35 U.S.C. 123.
(g) Appeal Fees
Table 10--Appeal--Fee Changes and Unit Costs
----------------------------------------------------------------------------------------------------------------
Current fees Proposed fees Dollar change Percent change
---------------------------------------------------------------- FY 2015 Unit
Fee description Large (small) Large (small) Large (small) Large (small) cost
[micro] entity [micro] entity [micro] entity [micro] entity
----------------------------------------------------------------------------------------------------------------
Notice of Appeal................ $800 $1,000 +$200 +25% $45
($400) ($500) (+$100) (+25%)
[$200] [$250] [+$50] [+25%]
Forwarding an Appeal in an $2,000 $2,500 +$500 +25% $4,815
Application or Ex parte ($1000) ($1,250) (+$250) (+25%)
Reexamination Proceeding to the [$500] [$625] [+$125] [+25%]
Board..........................
----------------------------------------------------------------------------------------------------------------
At the current fee rate, the fee paid for an ex parte appeal only
covers 58 percent of the Office's cost for an appeal. The proposed fee
increase will result in ex parte appeal fees covering 72 percent of the
Office's cost to conduct an ex parte appeal.
In the past few years, the Office has made great strides in
reducing the backlog and pendency for ex parte appeals. Appeal
inventory reached over 27,000 (in 2012) and has now fallen to under
19,000 (in April 2016). As of the end of fiscal year 2015, the average
pendency for decided ex parte appeals was 30 months. The Office aspires
to reach an appeals pendency goal of 12 months by the end of FY 2018
and to further reduce the existing inventory. As mentioned in Part III,
the PTAB is working to reduce inventory via two pilot programs, EPAP
and the Small Entity Pilot Program. The proposal would allow the Office
to better align fees to costs by reducing the gap between the amount
paid by an appellant and the fully burdened cost of reviewing appeals
by the Board. The additional revenue supports continued improvements to
pendency and inventory via enhanced technology.
(h) AIA Trials
[[Page 68164]]
Table 11--AIA Trials--Fee Changes and Unit Costs
----------------------------------------------------------------------------------------------------------------
Current fees Proposed fees Dollar change Percent change
---------------------------------------------------------------- FY 2015 Unit
Fee description Large (small) Large (small) Large (small) Large (small) cost
[micro] entity [micro] entity [micro] entity [micro] entity
----------------------------------------------------------------------------------------------------------------
Inter Partes Review Request Fee-- $9,000 $14,000 +$5,000 +56 $22,165
Up to 20 Claims................
Inter Partes Review Post- $14,000 $16,500 +$2,500 +18 $12,674
Institution Fee--Up to 15
Claims.........................
Inter Partes Review Request of $200 $300 +$100 +50 n/a
Each Claim in Excess of 20.....
Inter Partes Post-Institution $400 $600 +$200 +50 n/a
Request of Each Claim in Excess
of 15..........................
Post-Grant or Covered Business $12,000 $16,000 +$4,000 +33 $16,213
Method Review Request Fee--Up
to 20 Claims...................
Post-Grant or Covered Business $18,000 $22,000 +$4,000 +22 $23,060
Method Review Post-Institution
Fee--Up to 15 Claims...........
Post-Grant or Covered Business $250 $375 +$125 +50 n/a
Method Review Request of Each
Claim in Excess of 20..........
Post-Grant or Covered Business $550 $825 +$275 +50 n/a
Method Review Post-Institution
Request of Each Claim in Excess
of 15..........................
----------------------------------------------------------------------------------------------------------------
The AIA established two new trial proceedings: Inter partes review
and post-grant review. Inter partes review is a trial proceeding
created by the AIA that allows the Office to review the patentability
of one or more claims in a patent only on a ground that could be raised
under 35 U.S.C. 102 or 103, and only on the basis of prior art
consisting of patents or printed publications. The inter partes review
process begins with a third party filing a petition. An inter partes
review may be instituted upon a showing that there is a reasonable
likelihood that the petitioner would prevail with respect to at least
one claim challenged. If the proceeding is instituted and not
dismissed, a final determination by the Board will be issued within one
year (extendable for good cause by six months). The Office proposes to
increase all four separate fees for inter partes review, which are due
upon the filing of a petition. The USPTO will refund the post-
institution fee if the IPR proceeding is not instituted by the PTAB.
Post-grant review is a trial proceeding created by the AIA that
allows the Office to review the patentability of one or more claims in
a patent on any ground that could be raised under 35 U.S.C. 282(b)(2)
and (b)(3) in effect on September 16, 2012. The post-grant review
process begins when a third party files a petition within nine months
of the grant of the patent. A post-grant review may be instituted upon
a showing that it is more likely than not that at least one challenged
claim is unpatentable or that the petition raises an unsettled legal
question that is important to other patents or patent applications. If
the trial is instituted and not dismissed, the Board will issue a final
determination within one year of institution. This period can be
extended for good cause for up to six months from the date of one year
after instituting the review.
In FY 2015, the PTAB received over 1,900 AIA trial filings and the
Office expects that number to grow in the coming fiscal years. In order
to keep up with demand and continue to provide high quality decisions
within the statutory time limits, the Office needs to close the gap
between the cost and the fees for performing these services. When the
fees for these services were initially set, the Office had to estimate
what the costs would be without the benefit of historical cost
information. Now that the trials have been in place for three fiscal
years, the Office has actual historical cost data available to more
accurately set these fees and recover costs.
(i) Patent Cooperation Treaty (PCT)--International Stage
Table 12--Patent Cooperation Treaty (PCT)--International Stage--Fee Changes and Unit Costs
----------------------------------------------------------------------------------------------------------------
Current fees Proposed fees Dollar change Percent change
-------------------------------------------------------------------
Fee description Large (small) Large (small) Large (small) FY 2015 Unit
Large (small) [micro] [micro] [micro] cost
[micro] entity entity entity entity
----------------------------------------------------------------------------------------------------------------
Late Furnishing Fee for new.............. $300 +$300 n/a n/a
Providing a Sequence Listing ($150) (+$150)
in Response to an Invitation [$75] [+$75]
Under PCT Rule 13ter.
----------------------------------------------------------------------------------------------------------------
The Office proposes a new fee to encourage timely filing of
sequence listings in international applications as another way to
facilitate the effective administration of the patent system. When an
applicant does not provide a sequence listing in searchable format with
the international application or provides a defective sequence listing,
the United States, acting as International Searching Authority (ISA/US)
or as International Preliminary Examining Authority (IPEA/US), must
issue an invitation to the applicant to provide the missing or
corrected sequence listing. This additional process creates a delay in
the issuance of the International Search Report (ISR) or
[[Page 68165]]
International Preliminary Report on Patentability (Chapter II). The
most recent data shows that the ISA/US issues ISRs within 16 months of
the priority date for 75 percent of all international applications
searched by the ISA/US. However, when the ISA/US issues an invitation
to provide a sequence listing, the ISA/US issues ISRs within 16 months
in only 28 percent of those international applications. The time limit
for issuance of the ISR under PCT Rule 42 in most circumstances is 16
months from the priority date. This new fee will help compensate the
Office for the extra work associated with issuing the invitation and
handling the response, while better positioning the Office to meet
applicable treaty timeframes. The fee is similar in size and scope to
fees charged by other international intellectual property offices.
(j) Maintenance Fee Payments--Reissue Patent Rules
For each issued patent, the Office may grant one or more reissue
patents. However, current practice dictates that only one maintenance
fee is required for all of the possible reissue patents granted from a
single patent. This proposed change of practice would require payment
of maintenance fees for each reissue patent, instead of a single
maintenance fee payment for the group of reissue patents. The large
majority of reissue patents are granted after the first stage
maintenance fee payment has already been paid on the initial patent.
Over the last six years, approximately 150 reissue patents per year
would have been subject to additional fees due to this proposed rule
change. This is a significantly higher level than the Office
experienced prior to FY 2010. For example, between FY 2003 and FY 2009,
the average was 27 per year. The Office expects this change in practice
to encourage patent owners to prioritize which reissue patents they
want to maintain. If an owner wishes to maintain all reissue patents in
force, he or she may do so by paying the appropriate maintenance fees.
For reissue patents that are not maintained, subject matter previously
covered by the patent would become available in the public domain to
improve upon and further foster innovation.
(2) Office of Enrollment and Discipline Fees and Patent Enrollment Fees
The following proposed fee adjustments are comprised of Office of
Enrollment and Discipline (OED) fees and other patent enrollment fees.
In addition to the proposed fee rate changes, there are five new fees
being proposed in this section. The purpose of amending the fees in
this section is to better align fees with actual costs. During the
previous patent fee setting effort, historical cost information for
these activities was not available. Since then, the Office has
developed cost information to more appropriately propose fee
adjustments. No enrollment or disciplinary fees have been increased
since 2008, and only two fees were adjusted that year. All other
enrollment and disciplinary fees were last changed much earlier,
specifically, between 1991 and 2004. In fact, one OED fee has been
unchanged since 1982. As time passes, the difference between the fee
charged by the Office and the cost to the Office to perform the service
increases, resulting in greater subsidies by other patent fees. The
increases to these fees will help to close the gap between the fee
charged and the cost to perform the service. A discussion of the
rationale for each fee change follows.
Table 13--OED and Patent Enrollment--Fee Changes and Unit Costs
----------------------------------------------------------------------------------------------------------------
Current fees Proposed fees Dollar change Percent change
----------------------------------------------------------------
Fee description Large (small) Large (small) Large (small) Large (small) FY 2015 Unit
[micro] [micro] [micro] [micro] cost
entity entity entity entity
----------------------------------------------------------------------------------------------------------------
Application Fee (Non-Refundable) $40 $100 +$60 +150% $225
On Registration to Practice $100 $200 +$100 +100% $493
Under Sec. 11.6..............
Certificate of Good Standing as $10 $40 +$30 +300% $39
an Attorney or Agent, Standard.
Certificate of Good Standing as $20 $50 +$30 +150% $49
an Attorney or Agent, Suitable
for Framing....................
Review of Decision by the $130 $400 +$270 +208% $2,044
Director of Enrollment and
Discipline Under Sec. 11.2(c)
Review of Decision of the $130 $400 +$270 +208% $1,827
Director of Enrollment and
Discipline Under Sec. 11.2(d)
Administrative Reinstatement Fee $100 $200 +$100 +100% $940
On Grant of Limited Recognition $100 $200 +$100 +100% $493
Under Sec. 11.9(b)...........
For USPTO-Assisted Recovery of new $70 +$70 n/a n/a
ID or Reset of Password for the
Office of Enrollment and
Discipline Information System..
For USPTO-Assisted Change of new $70 +$70 n/a n/a
Address Within the Office of
Enrollment and Discipline
Information System.............
For USPTO-Administered Review of new $450 +$450 n/a $515
Registration Examination.......
----------------------------------------------------------------------------------------------------------------
The Office proposes to increase the application fee for admission
to the examination for registration to practice from $40 to $100, about
half of the historical cost of this service.
The fee for registration to practice or for a grant of limited
recognition under Sec. 11.9(b) or (c) is currently set at $100, and
both transactions have the same fee code. The Office proposes to
separate the fee for Registration to Practice from the fee for Grant of
Limited Recognition and increase the fee for each to $200, which is
still below the historical cost of performing these services. The
Office proposes eliminating the reference to Sec. 11.9(c) in the
current provision. The Office does not presently impose a fee for an
unregistered individual to
[[Page 68166]]
prosecute an international patent application in the manner described
in Sec. 11.9(c). The Office proposes to use the existing fee code for
Registration to Practice fees and create a new fee code for Grant of
Limited Registration.
The Office is proposing an increase to the fee for the delivery of
a certificate of good standing. A practitioner may also request a
certificate of good standing as an attorney or agent that has been
authentically signed by the Director of OED and crafted for framing.
The Office proposes to increase the fee for both of these services to
cost recovery, $40 and $50, respectively.
The Office proposes to increase the fees for petitions to the OED
Director regarding enrollment or recognition. However, the proposed
fees are still significantly below cost recovery. Any petition from any
action or requirement of the staff of OED reporting to the OED Director
shall be taken to the OED Director accompanied by payment of the fee,
proposed at $400.
The Office proposes to adjust the fees for a review of OED
Director's decision regarding enrollment or recognition. A party
dissatisfied with a final decision of the OED Director regarding
enrollment or recognition may seek review of the decision upon petition
to the USPTO Director accompanied by payment of the fee, proposed at
$400. This fee is being increased, but is still set significantly below
cost recovery.
The Office proposes to set the fee for administrative reinstatement
at $200. Reinstatement fees are imposed on practitioners seeking to be
reinstated to active status. Raising the fee, while still set far below
cost recovery, will help close the gap between the fee and the cost for
performing this service.
The Office proposes to create and set the fee for USPTO-assisted
reset of user IDs and passwords for an OED Information System--Customer
Interface (OEDIS-CI) account at $70. The enhancement of the OEDIS-CI
was implemented in FY 2015. With this enhancement, customers are now
able to perform this process on-line as a self-service option free of
charge. The proposed fee would only be charged if it was requested that
the USPTO perform this task instead of the self-service option.
The Office proposes to create and set the fee for USPTO-assisted
roster maintenance (change of address) in an OEDIS-CI account at $70.
With the OEDIS-CI enhancement, customers are now able to perform this
process on-line as a self-service method free of charge. The proposed
fee would only be charged if it was requested that the USPTO perform
this task instead of the self-service option.
The Office proposes to set the fee for a registration examination
review session at $450. Setting this fee at cost recovery relieves the
administrative and cost burden of providing the review sessions. A
private commercial entity currently provides this service to the public
at a lower cost than the USPTO. The availability of the private-sector
option has reduced demand for the USPTO-provided sessions and therefore
increased the cost per registrant of USPTO-provided sessions.
The Office proposes to set the fee for changing a practitioner's
registration status from agent to attorney. The Office currently
charges $100 for this service. As proposed, the fee would remain
unchanged; however, 37 CFR 1.21(a)(2)(iii) would specifically provide
for this fee.
(3) Fees Amended To Include Discounts for Small and Micro Entities
Within this section, where new micro entity fees are proposed, it
is expected that an applicant or patent holder would have paid the
current small entity fee (or large entity in the event there is not a
small entity fee) and dollar and percent changes are calculated from
the current small entity fee amount (or large entity fee, where
applicable). The following table lists fees where new small and/or
micro entities are provided. Providing these fee reductions for small
and micro entity innovators will continue the Office's efforts to
foster innovation across all patent system users.
Table 14--Amended Fees To Include Discounts for Small and Micro Entities--Fee Changes and Unit Costs
----------------------------------------------------------------------------------------------------------------
Current fees Proposed fees Dollar change Percent change
----------------------------------------------------------------
Fee description Large (small) Large (small) Large (small) Large (small) FY 2015 Unit
[micro] [micro] [micro] [micro] cost
entity entity entity entity
----------------------------------------------------------------------------------------------------------------
Petition for the Delayed Payment $1,700 $2,000 +$300 +18% $121
of the Fee for Maintaining a ($850) ($1,000) (+$150) (+18%)
Patent in Force................ [$850] [$500] [-$350] [-41%]
Petition for Revival of an $1,700 $2,000 +$300 +18% $244
Abandoned Application for a ($850) ($1,000) (+$150) (+18%)
Patent, for the Delayed Payment [$850] [$500] [-$350] [-41%]
of the Fee for Issuing Each
Patent, or for the Delayed
Response by the Patent Owner in
any Reexamination Proceeding...
Petition for the Delayed $1,700 $2,000 +$300 +18% $244
Submission of a Priority or ($850) ($1,000) (+$150) (+18%)
Benefit Claim.................. [$850] [$500] [-$350] [-41%]
Petition to Excuse Applicant's $1,700 $2,000 +$300 +18% n/a
Failure to Act Within ($850) ($1,000) (+$150) (+18%)
Prescribed Time Limits in an [$850] [$500] [-$350] [-41%]
International Design
Application....................
Petition to Convert an $180 $180 $0 0% n/a
International Design ($180) ($90) (-$90) (-50%)
Application to a Design [$180] [$45] [-$135] [-75%]
Application Under 35 U.S.C.
Chapter 16.....................
[[Page 68167]]
Hague International Design $120 $120 $0 0% n/a
Application Fees--Transmittal ($120) ($60) (-$60) -50%
Fee............................ [$120] [$30] [-$90] -75%
----------------------------------------------------------------------------------------------------------------
C. Discontinued or Replaced Fees
This section describes fees that are being discontinued and
replaced with new fees. The purpose of this action is to simplify the
fee schedule, more clearly inform customers of costs upfront, and align
with the Office's new financial software for which fixed fee rates, not
variable (e.g., at cost) are preferred. This section also includes fees
that are being discontinued because of disuse. The Office does not
capture historical cost information for these proposed discontinued or
new fees.
(a) Discontinued and Replaced
Table 15--Discontinued Fees With New Fee Replacements
----------------------------------------------------------------------------------------------------------------
Current fees Proposed fees Dollar change Percent change
----------------------------------------------------------------
Fee description Large (small) Large (small) Large (small) Large (small) FY 2015 Unit
[micro] [micro] [micro] [micro] cost
entity entity entity entity
----------------------------------------------------------------------------------------------------------------
Copy of Patent-Related File $200 discontinue -$200 n/a n/a
Wrapper and Contents of 400 or
Fewer Pages, if Provided on
Paper..........................
Additional Fee for Each $40 discontinue -$40 n/a n/a
Additional 100 Pages of Patent-
Related File Wrapper and
(Paper) Contents, or Portion
Thereof........................
Copy Patent File Wrapper, Paper new $280 +$280 n/a n/a
Medium, Any Number of Sheets...
Copy of Patent-Related File $55 discontinue -$55 n/a n/a
Wrapper and Contents if
Provided on a Physical
Electronic Medium as Specified
in 1.19(b)(1)(ii)..............
Copy of Patent-Related File $55 discontinue -$55 n/a n/a
Wrapper and Contents if
Provided Electronically........
Additional Fee for Each $15 discontinue -$15 n/a n/a
Continuing Physical Electronic
Medium in Single Order of
1.19(b)(1)(ii)(B)..............
Copy Patent File Wrapper, new $55 +$55 n/a n/a
Electronic Medium, Any Size or
Provided Electronically........
Computer Records................ at cost discontinue at cost n/a n/a
Copy of Patent Grant Single-Page new $10,400 +$10,400 n/a n/a
TIFF Images (52 week
subscription)..................
Copy of Patent Grant Full-Text W/ new $5,200 +$5,200 n/a n/a
Embedded Images, Patent
Application Publication Single-
Page TIFF Images, or Patent
Application Publication Full-
Text W/Embedded Images (52 week
subscription)..................
Copy of PTMT Patent new $50 +$50 n/a n/a
Bibliographic Extract and Other
DVD (Optical Disc) Products....
Copy of U.S. Patent Custom Data new $100 +$100 n/a n/a
Extracts.......................
Copy of Selected Technology new $30 +$30 n/a n/a
Reports, Miscellaneous
Technology Areas...............
Labor Charges for Services, per $40 discontinue -$40 n/a n/a
Hour or Fraction Thereof.......
Additional Fee for Overnight new $40 +$40 n/a n/a
Delivery.......................
Additional Fee for Expedited new $160 +$160 n/a n/a
Service........................
----------------------------------------------------------------------------------------------------------------
There are currently pairs of fees for copying patent-related file
wrappers: A base fee and an excess fee. For both paper copies and
electronic copies, these pairs are replaced with a single fee
irrespective of size. A single fee will allow customers to more easily
budget and plan expenses for this service.
The catch-all fee of ``Computer Records'' currently priced ``at
cost'' is being replaced by five fees that encompass the work currently
performed using this code: Copy of Patent Grant Single-Page TIFF Images
(52 week subscription); Copy of Patent Grant Full-Text W/Embedded
Images, Patent Application Publication Single-Page TIFF Images, or
Patent Application Publication Full-Text W/Embedded Images (52 week
subscription); Copy of
[[Page 68168]]
Patent Technology Monitoring Team (PTMT) Patent Bibliographic Extract
and Other DVD (Optical Disc); Copy of U.S. Patent Custom Data Extracts;
and Copy of Selected Technology Reports, Miscellaneous Technology
Areas. Explicitly stating the service and fee at the start will provide
customers clearer information to aid decision making.
These specific fees recover the USPTO's costs for processing,
validating, packaging, and shipping of these products to customers
worldwide. For the copy of Patent Grant Single-Page TIFF Images, when a
customer orders this service, the customer is sent expedited weekly
packages (one for each Tuesday in the Calendar Year) via United Parcel
Service. Each package contains at a minimum one Blu-ray and one DVD
optical disc. For the other three services listed for $5,200, the
expedited weekly packages (one for each Tuesday or Thursday in the
Calendar Year) typically contain either a single Blu-ray or DVD optical
disc. As an alternative to requesting and paying for these services,
the USPTO has provided customers the ability to download this
information at no cost since June 2010. This information is currently
provided in the two locations referenced earlier, BDSS and PDD since
October 2015 and June 2013 respectively.
Similar to the single fee for copying Patent-Related File Wrappers,
the ``Labor Charge'' per hour with its variable charges is replaced
with a single fee for ``Expedited Service.'' Following the same theme,
shorter than standard shipping is currently billed under a catch-all
code but will now be replaced with a set fee for ``Overnight
Delivery.''
(b) Discontinued
Table 16--Discontinued Fees
----------------------------------------------------------------------------------------------------------------
Current fees Proposed fees Dollar change Percent change
----------------------------------------------------------------
Fee description Large (small) Large (small) Large (small) Large (small) FY 2015 Unit
[micro] [micro] [micro] [micro] cost
entity entity entity entity
----------------------------------------------------------------------------------------------------------------
Self-Service Copy Charge, per $0.25 discontinue -$0.25 n/a n/a
Page...........................
Establish Deposit Account....... $10 discontinue -$10 n/a n/a
Uncertified Statement Re: Status $10 discontinue -$10 n/a n/a
of Maintenance Fee Payments....
Petitions for documents in form at cost discontinue 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.........
Copy of Patent-Related File $55 discontinue -$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...................
Additional Fee for Each $15 discontinue -$15 n/a n/a
Continuing Copy of Patent-
Related File Wrapper Contents
as Specified in
1.19(b)(2)(i)(A)...............
Copy of Patent-Related File $55 discontinue -$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..............
----------------------------------------------------------------------------------------------------------------
To comply with Presidential Executive Order 13681, Improving the
Security of Consumer Financial Transactions, current self-service
copiers will be discontinued and the USPTO will enter into a ``No
Cost'' contract with a vendor who will keep all payments collected in
exchange for providing this service.
The USPTO's new Financial Manager system allows users to create
their own deposit accounts so the Office proposes to retire the
``Establish Deposit Account'' fee. The fee associated with
``Uncertified Statement Re Status of Maintenance Fee Payments'' is
discontinued due to lack of use. Customers have had the ability to do
this online for more than 10 years. The fee associated with ``Petitions
for documents in form other than that provided by this part, or in form
other than that generally provided by Director, to be decided in
accordance with merits'' is also discontinued due to lack of use.
The remaining fees pertaining to Patent-Related File Wrapper copies
have never been used since their inception many years ago and therefore
are being discontinued.
VI. Discussion of Specific Rules
The following section shows the CFR proposed fee amendments. The
List of Subjects includes all proposed fee amendments, all proposed fee
discontinuations, and all proposed changes to the CFR text.
Title 37 of the Code of Federal Regulations, Parts 1 and 41, are
proposed to be amended as follows:
Section 1.16: Section 1.16 is amended by revising paragraphs (a)
through (f) and (h) through (r) to set forth the application filing,
excess claims, search, and examination fees for patent applications
filed as authorized under Section 10 of the Act. The changes to the fee
amounts indicated in Sec. 1.16 are shown in Table 17.
[[Page 68169]]
Table 17--CFR Section 1.16 Fee Changes
--------------------------------------------------------------------------------------------------------------------------------------------------------
Current fees (dollars) Proposed fees (dollars)
CFR section Fee code Description -----------------------------------------------------------------------------
Large Small Micro Large Small Micro
--------------------------------------------------------------------------------------------------------------------------------------------------------
1.16(a)........................ 1011/2011/3011... Basic Filing Fee-- 280 140 70 300 150 75
Utility.
1.16(a)........................ 4011............. Basic Filing Fee-- n/a 70 n/a n/a 75 n/a
Utility (electronic
filing for small
entities).
1.16(b)........................ 1012/2012/3012... Basic Filing Fee-- 180 90 45 200 100 50
Design.
1.16(b)........................ 1017/2017/3017... Basic Filing Fee-- 180 90 45 200 100 50
Design (CPA).
1.16(c)........................ 1013/2013/3013... Basic Filing Fee-- 180 90 45 200 100 50
Plant.
1.16(d)........................ 1005/2005/3005... Provisional 260 130 65 280 140 70
Application Filing
Fee.
1.16(e)........................ 1014/2014/3014... Basic Filing Fee-- 280 140 70 300 150 75
Reissue.
1.16(e)........................ 1019/2019/3019... Basic Filing Fee-- 280 140 70 300 150 75
Reissue (CPA).
1.16(f)........................ 1051/2051/3051... Surcharge--Late Filing 140 70 35 160 80 40
Fee, Search Fee,
Examination Fee,
Inventor's Oath or
Declaration, or
Application Filed
Without at Least One
Claim or by Reference.
1.16(h)........................ 1201/2201/3201... Independent Claims in 420 210 105 460 230 115
Excess of Three.
1.16(h)........................ 1204/2204/3204... Reissue Independent 420 210 105 460 230 115
Claims in Excess of
Three.
1.16(i)........................ 1202/2202/3202... Claims in Excess of 20 80 40 20 100 50 25
1.16(i)........................ 1205/2205/3205... Reissue Claims in 80 40 20 100 50 25
Excess of 20.
1.16(j)........................ 1203/2203/3203... Multiple Dependent 780 390 195 820 410 205
Claim.
1.16(k)........................ 1111/2111/3111... Utility Search Fee.... 600 300 150 660 330 165
1.16(l)........................ 1112/2112/3112... Design Search Fee..... 120 60 30 160 80 40
1.16(m)........................ 1113/2113/3113... Plant Search Fee...... 380 190 95 420 210 105
1.16(n)........................ 1114/2114/3114... Reissue Search Fee.... 600 300 150 660 330 165
1.16(o)........................ 1311/2311/3311... Utility Examination 720 360 180 760 380 190
Fee.
1.16(p)........................ 1312/2312/3312... Design Examination Fee 460 230 115 600 300 150
1.16(q)........................ 1313/2313/3313... Plant Examination Fee. 580 290 145 620 310 155
1.16(r)........................ 1314/2314/3314... Reissue Examination 2,160 1,080 540 2,200 1,100 550
Fee.
--------------------------------------------------------------------------------------------------------------------------------------------------------
Section 1.17: Section 1.17 is amended by revising paragraphs (e),
(m), (p), and (t) 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 18.
Table 18--CFR Section 1.17 Fee Changes
--------------------------------------------------------------------------------------------------------------------------------------------------------
Current fees (dollars) Proposed fees (dollars)
CFR section Fee code Description -----------------------------------------------------------------------------
Large Small Micro Large Small Micro
--------------------------------------------------------------------------------------------------------------------------------------------------------
1.17(e)........................ 1801/2801/3801... Request for Continued 1,200 600 300 1,300 650 325
Examination (RCE)
(1st request) (see 37
CFR 1.114).
1.17(e)........................ 1820/2820/3820... Request for Continued 1,700 850 425 1,900 950 475
Examination (RCE)
(2nd and subsequent
request).
1.17(m)........................ 1453/2453/3453... Petition for revival 1,700 850 850 2,000 1,000 500
of an abandoned
application for a
patent, for the
delayed payment of
the fee for issuing
each patent, or for
the delayed response
by the patent owner
in any reexamination
proceeding.
1.17(m)........................ 1454/2454/3454... Petition for the 1,700 850 850 2,000 1,000 500
Delayed Submission of
a Priority or Benefit
Claim.
1.17(m)........................ 1784/2784/3784... Petition to Excuse 1,700 850 850 2,000 1,000 500
Applicant's Failure
to Act Within
Prescribed Time
Limits in an
International Design
Application.
1.17(m)........................ 1558/2558/3558... Petition for the 1,700 850 850 2,000 1,000 500
Delayed Payment of
the Fee for
Maintaining a Patent
in Force.
1.17(p)........................ 1806/2806/3806... Submission of an 180 90 45 240 120 60
Information
Disclosure Statement.
1.17(t)........................ 1783/2783/3783... Petition to convert an 180 180 180 180 90 45
international design
application to a
design application
under 35 U.S.C.
chapter 16.
--------------------------------------------------------------------------------------------------------------------------------------------------------
Section 1.18: Section 1.18 is amended by revising paragraphs
(a)(1), (b)(1), and (c)(1) to set forth the patent issue fees as
authorized under Section 10 of the Act. The changes to the fee amounts
indicated in Sec. 1.18 are shown in Table 19.
[[Page 68170]]
Section 1.18(b)(3) is proposed to be amended to provide that the
issue fee for issuing an international design application designating
the United States, where the issue fee is paid through the
International Bureau, is the amount established in Swiss currency
pursuant to Hague Agreement Rule 28 as of the date of mailing of the
notice of allowance (Sec. 1.311). The proposed amendment would
facilitate processing of the issue fee by the International Bureau and
would maintain parity in the treatment of the amount of the issue fee
due whether paid directly to the USPTO or through the International
Bureau in the event the issue fee changes after the mailing of the
notice of allowance.
Table 19--CFR Section 1.18 Fee Changes
--------------------------------------------------------------------------------------------------------------------------------------------------------
Current fees (dollars) Proposed fees (dollars)
CFR section Fee code Description -----------------------------------------------------------------------------
Large Small Micro Large Small Micro
--------------------------------------------------------------------------------------------------------------------------------------------------------
1.18(a)(1)..................... 1501/2501/3501... Utility Issue Fee..... 960 480 240 1,000 500 250
1.18(a)(1)..................... 1511/2511/3511... Reissue Issue Fee..... 960 480 240 1,000 500 250
1.18(b)(1)..................... 1502/2502/3502... Design Issue Fee...... 560 280 140 800 400 200
1.18(c)(1)..................... 1503/2503/3503... Plant Issue Fee....... 760 380 190 1,000 500 250
--------------------------------------------------------------------------------------------------------------------------------------------------------
Section 1.19: Section 1.19 is amended by revising paragraphs
(b)(1), (b)(2), and (b)(4); removing and reserving (b)(2), (e), and
(g); and adding (i) through (m) 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 20.
Table 20--CFR Section 1.19 Fee Changes
--------------------------------------------------------------------------------------------------------------------------------------------------------
Current fees (dollars) Proposed fees (dollars)
CFR section Fee code Description -----------------------------------------------------------------------------
Large Small Micro Large Small Micro
--------------------------------------------------------------------------------------------------------------------------------------------------------
1.19(b)(1)(i)(A) and (ii)(A)... 8007............. Copy of Patent 20 20 20 35 35 35
Application as Filed.
1.19(b)(1)(i)(B)............... ................. Copy of Patent File n/a n/a n/a 280 280 280
Wrapper, Paper
Medium, Any Number of
Sheets.
1.19(b)(1)(ii)(B).............. ................. Copy Patent File n/a n/a n/a 55 55 55
Wrapper, Electronic
Medium, Any Size or
Provided
Electronically.
1.19(b)(4)..................... 8014............. For Assignment 25 25 25 35 35 35
Records, Abstract of
Title and
Certification, per
Patent.
1.19(i)........................ ................. Copy of Patent Grant n/a n/a n/a 10,400 10,400 10,400
Single-Page TIFF
Images (52 week
subscription).
1.19(j)........................ ................. Copy of Patent Grant n/a n/a n/a 5,200 5,200 5,200
Full-Text W/Embedded
Images, Patent
Application
Publication Single-
Page TIFF Images, or
Patent Application
Publication Full-Text
W/Embedded Images (52
week subscription).
1.19(k)........................ ................. Copy of PTMT Patent n/a n/a n/a 50 50 50
Bibliographic Extract
and Other DVD
(Optical Disc)
Products.
1.19(l)........................ ................. Copy of U.S. Patent n/a n/a n/a 100 100 100
Custom Data Extracts.
1.19(m)........................ ................. Copy of Selected n/a n/a n/a 30 30 30
Technology Reports,
Miscellaneous
Technology Areas.
--------------------------------------------------------------------------------------------------------------------------------------------------------
Section 1.20: Section 1.20 is amended by revising paragraphs (a),
(b), (c)(1) through (4), and (e) through (g) to set forth the
reexamination excess claims fees, disclaimer fees, and maintenance fees
as authorized under Section 10 of the Act and to provide a new fee for
streamlined requests for reexamination. The changes to the fee amounts
indicated in Sec. 1.20 are shown in Table 21.
Table 21--CFR Section 1.20 Fee Changes
--------------------------------------------------------------------------------------------------------------------------------------------------------
Current fees (dollars) Proposed fees (dollars)
CFR section Fee code Description -----------------------------------------------------------------------------
Large Small Micro Large Small Micro
--------------------------------------------------------------------------------------------------------------------------------------------------------
1.20(a)........................ 1811............. Certificate of 100 100 100 150 150 150
Correction.
1.20(b)........................ 1816............. Processing Fee for 130 130 130 150 150 150
Correcting
Inventorship in a
Patent.
1.20(c)(1)..................... ................. Ex Parte Reexamination n/a n/a n/a 6,000 3,000 1,500
(Sec. 1.510(a))
Streamlined.
[[Page 68171]]
1.20(c)(2)..................... 1812/2812/3812... Ex Parte Reexamination 12,000 6,000 3,000 12,000 6,000 3,000
(Sec. 1.510(a)) Non-
Streamlined.
1.20(c)(3)..................... 1821/2821/3821... Reexamination 420 210 105 460 230 115
Independent 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 80 40 20 100 50 25
in Excess of 20 and
Also in Excess of the
Number of Claims in
the Patent Under
Reexamination.
--------------------------------------------------------------------------------------------------------------------------------------------------------
Section 1.21: Section 1.21 is amended by revising paragraphs (a),
(h)(2), and (i); removing and reserving paragraphs (g) and (j); and
adding paragraphs (o), (p), and (q) to set forth miscellaneous fees and
charges as authorized under Section 10 of the Act. The changes to the
fee amounts indicated in Sec. 1.21 are shown in Table 22.
Table 22--CFR Section 1.21 Fee Changes
--------------------------------------------------------------------------------------------------------------------------------------------------------
Current fees (dollars) Proposed fees (dollars)
CFR section Fee code Description -----------------------------------------------------------------------------
Large Small Micro Large Small Micro
--------------------------------------------------------------------------------------------------------------------------------------------------------
1.21(a)(1)(i).................. 9001............. Application Fee (non- 40 40 40 100 100 100
refundable).
1.21(a)(1)(ii)(A).............. 9010............. For Test 200 200 200 200 200 200
Administration by
Commercial Entity.
1.21(a)(1)(ii)(B).............. 9011............. For Test 450 450 450 450 450 450
Administration by the
USPTO.
1.21(a)(1)(iii)................ ................. For USPTO-Administered n/a n/a n/a 450 450 450
Review of
Registration
Examination.
1.21(a)(2)(i).................. 9003............. On Registration to 100 100 100 200 200 200
Practice Under Sec.
11.6.
1.21(a)(2)(ii)................. ................. On Grant of Limited n/a n/a n/a 200 200 200
Recognition under
Sec. 11.9(b).
1.21(a)(2)(iii)................ 9025............. On change of 100 100 100 100 100 100
registration from
agent to attorney.
1.21(a)(4)(i).................. 9005............. Certificate of Good 10 10 10 40 40 40
Standing as an
Attorney or Agent,
Standard.
1.21(a)(4)(ii)................. 9006............. Certificate of Good 20 20 20 50 50 50
Standing as an
Attorney or Agent,
Suitable for Framing.
1.21(a)(5)(i).................. 9012............. Review of Decision by 130 130 130 400 400 400
the Director of
Enrollment and
Discipline under Sec.
11.2(c).
1.21(a)(5)(ii)................. 9013............. Review of Decision of 130 130 130 400 400 400
the Director of
Enrollment and
Discipline under Sec.
11.2(d).
1.21(a)(6)(i).................. ................. For USPTO-Assisted n/a n/a n/a 70 70 70
Recovery of ID or
Reset of Password for
the Office of
Enrollment and
Discipline
Information System.
1.21(a)(6)(ii)................. ................. For USPTO-Assisted n/a n/a n/a 70 70 70
Change of Address
Within the Office of
Enrollment and
Discipline
Information System.
1.21(a)(9)(ii)................. 9004............. Administrative 100 100 100 200 200 200
Reinstatement Fee.
1.21(a)(10).................... 9014............. On petition for 1,600 1,600 1,600 1,600 1,600 1,600
reinstatement by a
person excluded or
suspended on ethical
grounds, or excluded
on consent from
practice before the
Office.
1.21(h)(2)..................... 8021............. Recording Each Patent 40 40 40 50 50 50
Assignment, Agreement
or Other Paper, per
Property if not
Submitted
Electronically.
1.21(o)(1)..................... ................. Submission of sequence n/a n/a n/a 1,000 1,000 1,000
listings ranging in
size of 300MB to
800MB.
1.21(o)(2)..................... ................. Submission of sequence n/a n/a n/a 10,000 10,000 10,000
listings exceeding
800MB.
1.21(p)........................ ................. Additional Fee for n/a n/a n/a 40 40 40
Overnight Delivery.
1.21(q)........................ ................. Additional Fee for n/a n/a n/a 160 160 160
Expedited Service.
--------------------------------------------------------------------------------------------------------------------------------------------------------
[[Page 68172]]
Section 1.445: Section 1.445 is amended by adding paragraph (a)(5)
to set a processing fee for providing a sequence listing in response to
an invitation under PCT Rule 13ter. The changes to the fee amounts
indicated in Sec. 1.445 are shown in Table 23.
Table 23--CFR Section 1.445(a)(5) Fee Changes
--------------------------------------------------------------------------------------------------------------------------------------------------------
Current fees (dollars) Proposed fees (dollars)
CFR section Fee code Description -----------------------------------------------------------------------------
Large Small Micro Large Small Micro
--------------------------------------------------------------------------------------------------------------------------------------------------------
1.445(a)(5).................... ................. Late furnishing fee n/a n/a n/a 300 150 75
for providing a
sequence listing in
response to an
invitation under PCT
Rule 13ter.
--------------------------------------------------------------------------------------------------------------------------------------------------------
Section 1.482: Section 1.482 is revised by changing the title and
adding paragraph (c) to set a processing fee for providing a sequence
listing in response to an invitation under PCT Rule 13ter. The changes
to the fee amounts indicated in Sec. 1.482 are shown in Table 24.
Table 24--CFR Section 1.482(c) Fee Changes
--------------------------------------------------------------------------------------------------------------------------------------------------------
Current fees (dollars) Proposed fees (dollars)
CFR section Fee code Description -----------------------------------------------------------------------------
Large Small Micro Large Small Micro
--------------------------------------------------------------------------------------------------------------------------------------------------------
1.482(c)....................... ................. Late furnishing fee n/a n/a n/a 300 150 75
for providing a
sequence listing in
response to an
invitation under PCT
Rule 13ter.
--------------------------------------------------------------------------------------------------------------------------------------------------------
Section 1.492: Section 1.492 is amended by revising (a) through (f)
to set forth the application filing, excess claims, search, and
examination 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 25.
Table 25--CFR Section 1.492 Fee Changes
--------------------------------------------------------------------------------------------------------------------------------------------------------
Current fees (dollars) Proposed fees (dollars)
CFR section Fee code Description -----------------------------------------------------------------------------
Large Small Micro Large Small Micro
--------------------------------------------------------------------------------------------------------------------------------------------------------
1.492(a)....................... 1631/2631/3631... Basic PCT National 280 140 70 300 150 75
Stage Fee.
1.492(b)(2).................... 1641/2641/3641... PCT National Stage 120 60 30 140 70 35
Search Fee--U.S. was
the ISA.
1.492(b)(3).................... 1642/2642/3642... PCT National Stage 480 240 120 520 260 130
Search Fee--Search
Report Prepared and
Provided to USPTO.
1.492(b)(4).................... 1632/2632/3632... PCT National Stage 600 300 150 660 330 165
Search Fee--All Other
Situations.
1.492(c)(2).................... 1633/2633/3633... National Stage 720 360 180 760 380 190
Examination Fee--All
Other Situations.
1.492(d)....................... 1614/2614/3614... PCT National Stage 420 210 105 460 230 115
Claims--Extra
Independent (over
three).
1.492(e)....................... 1615/2615/3615... PCT National Stage 80 40 20 100 50 25
Claims--Extra Total
(over 20).
1.492(f)....................... 1616/2616/3616... PCT National Stage 780 390 195 820 410 205
Claims--Multiple
Dependent.
--------------------------------------------------------------------------------------------------------------------------------------------------------
Section 1.1031: Section 1.1031 is amended by revising paragraph (a)
to set forth the international design application transmittal fees as
authorized under Section 10 of the Act. The changes to the fee amounts
indicated in Sec. 1.031 are shown in Table 26.
Section 1.1031 is also proposed to be amended by adding paragraph
(f) concerning the designation fee for the United States. As Sec.
1.1031 concerns international design application fees, the Office
believes it appropriate to include a provision therein regarding the
U.S. designation fee. The proposed amendment is consistent with the
U.S. designation fee currently in effect. See ``Individual Fees under
the Hague Agreement,'' available on the WIPO Web site at http://www.wipo.int/hague/en/fees/individ-fee.html, and Sec. 1.18(b).
[[Page 68173]]
Table 26--CFR Section 1.1031(a) Fee Changes
--------------------------------------------------------------------------------------------------------------------------------------------------------
Current fees (dollars) Proposed fees (dollars)
CFR section Fee code Description -----------------------------------------------------------------------------
Large Small Micro Large Small Micro
--------------------------------------------------------------------------------------------------------------------------------------------------------
1.1031(a)...................... 1781/2781/3781... International Design 120 120 120 120 60 30
Application
Transmittal Fee.
--------------------------------------------------------------------------------------------------------------------------------------------------------
Section 41.20: Section 41.20 is amended by revising paragraph
(b)(1) and (b)(4) 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 27.
Table 27--CFR Section 41.20 Fee Changes
--------------------------------------------------------------------------------------------------------------------------------------------------------
Current fees (dollars) Proposed fees (dollars)
CFR section Fee code Description -----------------------------------------------------------------------------
Large Small Micro Large Small Micro
--------------------------------------------------------------------------------------------------------------------------------------------------------
41.20(b)(1).................... 1401/2401/3401... Notice of Appeal...... 800 400 200 1,000 500 250
41.20(b)(4).................... 1413/2413/3413... Forwarding an Appeal 2,000 1,000 500 2,500 1,250 625
in an Application or
Ex Parte
Reexamination
Proceeding to the
Board.
--------------------------------------------------------------------------------------------------------------------------------------------------------
Section 42.15: Section 42.15 is amended by revising paragraphs (a)
and (b) 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 28.
Table 28--CFR Section 42.15 Fee Changes
--------------------------------------------------------------------------------------------------------------------------------------------------------
Current fees (dollars) Proposed fees (dollars)
CFR section Fee code Description -----------------------------------------------------------------------------
Large Small Micro Large Small Micro
--------------------------------------------------------------------------------------------------------------------------------------------------------
42.15(a)(1).................... 1406............. Inter Partes Review 9,000 9,000 9,000 14,000 14,000 14,000
Request Fee.
42.15(a)(2).................... 1414............. Inter Partes Review 14,000 14,000 14,000 16,500 16,500 16,500
Post-Institution Fee.
42.15(a)(3).................... 1407............. In Addition to the 200 200 200 300 300 300
Inter Partes Review
Request Fee, for
Requesting Review of
Each Claim in Excess
of 20.
42.15(a) (4)................... 1415............. In addition to the 400 400 400 600 600 600
Inter Partes Post-
Institution Fee, for
Requesting Review of
Each Claim in Excess
of 15.
42.15(b)(1).................... 1408............. Post-Grant or Covered 12,000 12,000 12,000 16,000 16,000 16,000
Business Method
Patent Review Request
Fee.
42.15(b)(2).................... 1416............. Post-Grant or Covered 18,000 18,000 18,000 22,000 22,000 22,000
Business Method
Patent Review Post-
Institution Fee.
42.15(b)(3).................... 1409............. In Addition to the 250 250 250 375 375 375
Post-Grant or Covered
Business Method
Patent Review Request
Fee, for Requesting
Review of Each Claim
in Excess of 20.
42.15(b)(4).................... 1417............. In Addition to the 550 550 550 825 825 825
Post-Grant or Covered
Business Method
Patent Review Post-
Institution Fee, for
Requesting Review of
Each Claim in Excess
of 15.
--------------------------------------------------------------------------------------------------------------------------------------------------------
VII. Rulemaking Considerations
A. America Invents Act
This rulemaking proposes to set and adjust fees under section 10(a)
of the AIA. Section 10(a) of the AIA authorizes the Director of the
USPTO to set or adjust by rule any patent fee established, authorized,
or charged under Title 35 of the United States Code (U.S.C.) for any
services performed, 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 of the Office with respect to such patent fees. Section 10
authority includes flexibility to set individual fees in a way that
furthers key policy factors, while taking into account the cost of the
respective services. Section 10(e) of the AIA sets forth the general
requirements for rulemakings that set or adjust fees under this
authority. In particular, section 10(e)(1) requires the Director to
publish in the Federal Register any proposed fee change under section
10, and include in such publication the specific rationale and purpose
for the proposal, including the possible expectations or benefits
[[Page 68174]]
resulting from the proposed change. For such rulemakings, the AIA
requires that the Office provide a public comment period of not less
than 45 days.
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 proposing
fees under Section 10 of the Act, the Director must provide the PPAC
with the proposed fees at least 45 days prior to publishing the
proposed fees in the Federal Register. The PPAC then has at least 30
days within which to deliberate, consider, and comment on the proposal,
as well as hold public hearing(s) on the proposed fees. The PPAC must
make a written report available to the public of the comments, advice,
and recommendations of the committee regarding the proposed fees before
the Office issues any final fees. The Office will consider and analyze
any comments, advice, or recommendations received from the PPAC before
finally setting or adjusting fees.
Consistent with this framework, on October 20, 2015, 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-us/performance-and-planning/fee-setting-and-adjusting. The PPAC held a public hearing in
Alexandria, Virginia, on November 19, 2015. Transcripts of the hearing
are available for review at http://www.uspto.gov/sites/default/files/documents/PPAC_Hearing_Transcript_20151119.pdf. Members of the public
were invited to the hearing and given the opportunity to submit written
and/or oral testimony for the PPAC to consider. The PPAC considered
such public comments from this hearing and made all comments available
to the public via the Fee Setting Web site, http://www.uspto.gov/about-us/performance-and-planning/fee-setting-and-adjusting. The PPAC also
provided a written report setting forth in detail the comments, advice,
and recommendations of the committee regarding the preliminary proposed
fees. The report regarding the preliminary proposed fees was released
on February 29, 2016, and can be found online at http://www.uspto.gov/sites/default/files/documents/PPAC_Fee%20_Setting_Report_2016%20%28Final%29.pdf. The Office
considered and analyzed all comments, advice, and recommendations
received from the PPAC before publishing this NPRM. Before the final
rule is issued, the public will have at least a 45-day period during
which to provide comments to be considered by the USPTO.
B. Regulatory Flexibility Act
The USPTO publishes this Initial Regulatory Flexibility Analysis
(IRFA) as required by the Regulatory Flexibility Act (RFA) (5 U.S.C.
601 et seq.) to examine the impact on small entities of the Office's
proposed rule implementing changes to patent fees. Under the RFA,
whenever an agency is required by 5 U.S.C. 553 (or any other law) to
publish an NPRM, the agency must prepare and make available for public
comment an IRFA, unless the agency certifies under 5 U.S.C. 605(b) that
the proposed rule, if implemented, will not have a significant impact
on a substantial number of small entities. 5 U.S.C. 603, 605. Given
that the proposed fee schedule is projected to result in $710.8 million
in additional aggregate revenue over the current fee schedule
(baseline) for the period including FY 2017 to FY 2021, the Office
acknowledges that the fee adjustments proposed will impact all entities
seeking patent protection and could have a significant impact on small
and micro entities. The $710.8 million in additional aggregate revenue
results from an additional $73.2 million in FY 2017, $150.0 million in
FY 2018, $155.7 million in FY 2019, $162.4 million in FY 2020, and
$169.5 million in FY 2021.
While the Office welcomes all comments on this IRFA, it
particularly seeks comments describing the type and extent of the
impact of the proposed patent fees on commenters' specific businesses.
In describing the impact, the Office requests biographic detail about
the impacted businesses or concerns, including the size, average annual
revenue, past patent activity (e.g., applications submitted, contested
cases pursued, maintenance fees paid, patents abandoned, etc.), and
planned patent activity of the impacted business or concern, where
feasible. The Office will use this information to further assess the
impact of the proposed rule on small entities. Where possible, comments
should also describe any recommended alternative methods of setting and
adjusting patent fees that would further reduce the impact on small
entities.
Items 1-5 below discuss the five items specified in 5 U.S.C.
603(b)(1)-(5) to be addressed in an IRFA. Item 6 below discusses
alternatives to this proposal that the Office considered.
1. A Description of the Reasons Why the Action by the Agency Is Being
Considered
Section 10 of the Act authorizes the Director of the USPTO to set
or adjust by rule any patent fee established, authorized, or charged
under title 35, U.S.C., for any services performed, or materials
furnished, by the Office. Section 10 prescribes that patent fees may be
set or adjusted only to recover the aggregate estimated costs to the
Office for processing, activities, services, and materials relating to
patents, including administrative costs to the Office with respect to
such patent fees. The proposed fee schedule will recover the aggregate
cost of patent operations while facilitating the effective
administration of the U.S. patent system. The reasons why the
rulemaking is being considered are further discussed in section 6.i
below and elsewhere in this IRFA and the NPRM.
2. The Objectives of, and Legal Basis for, the Proposed Rule
The objective of the proposed 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 the effective administration
of the U.S. patent system. Since its inception, 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 and
adjusting fees under the Act, the Office seeks to secure a sufficient
amount of aggregate revenue to recover the aggregate cost of patent
operations, including revenue needed to achieve strategic and
operational goals. Additional information on the Office's strategic
goals may be found in the Strategic Plan available at http://www.uspto.gov/sites/default/files/documents/USPTO_2014-2018_Strategic_Plan.pdf. Additional information on the Office's goals
and operating requirements may be found in the ``USPTO FY 2017
President's Budget,'' available at http://www.uspto.gov/sites/default/files/documents/fy17pbr.pdf. The legal basis for the proposed rule is
Section 10 of the Act.
[[Page 68175]]
3. A Description of and, Where Feasible, an Estimate of the Number of
Small Entities to Which the Proposed Rule Will Apply
SBA Size Standard
The Small Business Act (SBA) size standards applicable to most
analyses conducted to comply with the RFA are set forth in 13 CFR
121.201. These regulations generally define small businesses as those
with less than a specified maximum number of employees or less than a
specified level of annual receipts for the entity's industrial sector
or North American Industry Classification System (NAICS) code. As
provided by the RFA, and after consulting with the Small Business
Administration, the Office formally adopted an alternate size standard
for the purpose of conducting an analysis or making a certification
under the RFA for patent-related regulations. See Business Size
Standard for Purposes of United States Patent and Trademark Office
Regulatory Flexibility Analysis for Patent-Related Regulations, 71 FR
67109, 67109 (Nov. 20, 2006), 1313 Off. Gaz. Pat. Office 37, 60 (Dec.
12, 2006). The Office's alternate small business size standard consists
of SBA's previously established size standard for entities entitled to
pay reduced patent fees. See 13 CFR 121.802.
Unlike SBA's generally applicable small business size standards,
the size standard for the USPTO is not industry-specific. The Office's
definition of a small business concern for RFA purposes is a business
or other concern that: (1) Meets the SBA's definition of a ``business
concern or concern'' set forth in 13 CFR 121.105 and (2) meets the size
standards set forth in 13 CFR 121.802 for the purpose of paying reduced
patent fees, namely, an entity: (a) Whose number of employees,
including affiliates, does not exceed 500 persons and (b) which has not
assigned, granted, conveyed, or licensed (and is under no obligation to
do so) any rights in the invention to any person who made it and could
not be classified as an independent inventor, or to any concern that
would not qualify as a nonprofit organization or a small business
concern under this definition. See Business Size Standard for Purposes
of United States Patent and Trademark Office Regulatory Flexibility
Analysis for Patent-Related Regulations, 71 FR 67109, 67109 (Nov. 20,
2006), 1313 Off. Gaz. Pat. Office 37, 60 (Dec. 12, 2006).
If a patent applicant self-identifies on a patent application as
qualifying as a small entity, or provides certification of micro entity
status 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.
Estimate of Number of Small Entities Affected
The changes in the proposed rule will apply to any entity,
including small and micro entities, which pays any patent fee set forth
in the NPRM. The reduced fee rates (50 percent for small entities and
75 percent for micro entities) will continue to 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 29 presents a
summary of such small entity filings by type of application (utility,
reissue, plant, design) over the last five years.
Table 29--Number of Patent Applications Filed in Last Five Years *
--------------------------------------------------------------------------------------------------------------------------------------------------------
FY 2015 ** FY 2014 FY 2013 FY 2012 FY 2011 Average ***
--------------------------------------------------------------------------------------------------------------------------------------------------------
Utility
All............................................. 578,321 579,782 564,007 530,915 504,663 551,538
Small........................................... 142,845 133,930 136,490 132,198 127,175 134,528
% Small......................................... 24.7 23.1 24.2 24.9 25.2 24.4
Micro........................................... 28,916 18,553 7,896 N/A N/A 18,455
% Micro......................................... 5.0 3.2 1.4 N/A N/A 3.2
Reissue
All............................................. 887 1,208 1,074 1,212 1,158 1,108
Small........................................... 200 280 229 278 240 245
% Small......................................... 22.6 23.2 21.3 22.9 20.7 22.1
Micro........................................... 10 24 9 N/A N/A 14
% Micro......................................... 1.1 2.0 0.8 N/A N/A 1.3
Plant
All............................................. 1,119 1,124 1,318 1,181 1,103 1,169
Small........................................... 673 581 655 576 257 548
% Small......................................... 60.1 51.7 49.7 48.8 23.3 46.7
Micro........................................... 4 22 3 N/A N/A 10
% Micro......................................... 0.4 2.0 0.2 N/A N/A 0.9
Design
All............................................. 36,889 36,216 35,065 32,258 30,247 34,135
Small........................................... 14,645 14,740 15,814 15,806 14,700 15,141
% Small......................................... 39.7 40.7 45.1 49.0 48.6 44.6
Micro........................................... 3,910 3,622 1,683 N/A N/A 3,072
% Micro......................................... 10.6 10.0 4.8 N/A N/A 8.5
--------------------------------------------------------------------------------------------------------------------------------------------------------
* The patent application filing data in this table includes RCEs.
** FY 2015 application filing data are preliminary and will be finalized in the FY 2016 Performance and Accountability Report (PAR).
*** The micro entity average is from FY 2013 to FY 2015. All other averages are for all time periods shown.
Because the percentage of small entity filings varies widely
between application types, the Office has averaged the small entity
filing rates over the past five years for those application types in
order to estimate future filing rates by small and micro entities.
Those average rates appear in the last column of Table 29. The Office
estimates that small entity filing rates will continue for the next
five years at these average historic rates.
The Office forecasts the number of projected patent applications
(i.e., workload) for the next five years using
[[Page 68176]]
a combination of historical data, economic analysis, and subject matter
expertise. The Office estimates that utility, plant, and reissue (UPR)
patent application filings will grow by 1.5 percent in FY 2017, 2.0
percent in FY 2018, 3.0 percent in FY 2019, and 4.0 percent in FY 2020
and FY 2021. The Office forecasts design patent applications
independently of UPR applications because they exhibit different
behavior.
Using the estimated filings for the next five years, and the
average historic rates of small entity filings, Table 30 presents the
Office's estimates of the number of patent application filings by all
applicants, including small and micro entities, over the next five
fiscal years by application type.
The Office has undertaken an elasticity analysis to examine if 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 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 analyzed
elasticity at the overall filing level across all patent applicants
regardless of entity size and determined that, as none of the proposed
fee changes are large enough to create a sizable change in demand for
products and services, elasticity impacts are negligible and therefore
not included in this iteration of fee adjustments. Additional
information about elasticity estimates is available at http://www.uspto.gov/about-us/performance-and-planning/fee-setting-and-adjusting in the document entitled ``USPTO Setting and Adjusting Patent
Fees during Fiscal Year 2017--Description of Elasticity Estimates.''
Table 30--Estimated Numbers of Patent Applications in FY 2017-FY 2021
----------------------------------------------------------------------------------------------------------------
FY 2017
(Current) FY 2018 FY 2019 FY 2020 FY 2021
----------------------------------------------------------------------------------------------------------------
Utility: All.................... 592,844 604,711 622,874 647,833 673,788
Reissue: All.................... 1,048 1,105 1,166 1,229 1,296
Plant: All...................... 1,008 984 960 938 915
Design: All..................... 41,191 43,614 46,183 48,905 51,791
-------------------------------------------------------------------------------
Total: All.................. 636,091 650,414 671,183 698,905 727,791
----------------------------------------------------------------------------------------------------------------
4. A Description of the Projected Reporting, Recordkeeping, and Other
Compliance Requirements of the Proposed Rule, Including an Estimate of
the Classes of Small Entities Which Will Be Subject to the Requirement
and Type of Professional Skills Necessary for Preparation of the Report
or Record
If implemented, this rule will not change the burden of existing
reporting and recordkeeping requirements for payment of fees. The
current requirements for small and micro entities will continue to
apply. Therefore, the professional skills necessary to file and
prosecute an application through issue and maintenance remain unchanged
under this proposal. This action proposes only to adjust patent fees
and not to set procedures for asserting small entity status or
certifying micro entity status, as previously discussed.
The full proposed fee schedule (see Part VI: Discussion of Specific
Rules) is set forth in this NPRM. The proposed fee schedule sets or
adjusts 205 patent fees in total. This includes 14 fees that will be
discontinued and 42 new fees.
5. Identification, to the Extent Practicable, of All Relevant Federal
Rules Which May Duplicate, Overlap, or Conflict With the Proposed Rules
The USPTO is the sole agency of the United States Government
responsible for administering the provisions of title 35, United States
Code, pertaining to examining and granting patents. It is solely
responsible for issuing rules to comply with Section 10 of the AIA. No
other Federal, state, or local entity has jurisdiction over the
examination and granting of patents.
Other countries, however, have their own patent laws, and an entity
desiring a patent in a particular country must make an application for
patent in that country, in accordance with the applicable law. Although
the potential for overlap exists internationally, this cannot be
avoided except by treaty (such as the Paris Convention for the
Protection of Industrial Property, or the PCT). Nevertheless, the USPTO
believes that there are no other duplicative or overlapping rules.
6. Description of Any Significant Alternatives to the Proposed Rules
Which Accomplish the Stated Objectives of Applicable Statutes and Which
Minimize Any Significant Economic Impact of the Proposed Rules on Small
Entities
The USPTO considered several alternative approaches to the
proposal, discussed below, including full cost recovery for individual
services, an across the board adjustment to fees, and the baseline
(status quo). The discussion here begins with a description of the
proposal selected for this rulemaking.
i. Alternative 1: Proposed Alternative--Set and Adjust Patent Fees
The alternative proposed herein secures the Office's required
revenue to cover its aggregate costs, while progressing towards the
strategic goals of quality enhancements and patent application backlog
and pendency optimization that will benefit all applicants, including
small and micro entities, without undue burden to patent applicants and
holders, barriers to entry, or reduced incentives to innovate. This
alternative maintains small and micro entity discounts and adds new
discounts where applicable. Compared to the current patent fee
schedule, small entities will benefit from the establishment of two new
small entity fee rates, while micro entities will benefit from the
establishment of six new micro entity fee rates for existing services.
Given that most micro entities would have paid large or small entity
fee rates (depending on what was available), the establishment of micro
entity fee rates represents significant savings to these entities.
Further, all entities will benefit from the Office's proposal to
discontinue 14 fees related to goods and services found to be of
limited value based on the ability to obtain these services at zero
cost or more efficiently from non-Office sources.
As discussed throughout this document, the fee changes proposed in
[[Page 68177]]
this alternative are moderate compared to other alternatives. Given
that the proposed fee schedule will result in increased aggregate
revenue under this alternative, small and micro entities would pay some
higher fees when compared to the current fee schedule (Alternative 4).
However, the fees are not as high as those initially proposed to PPAC.
In the current fee proposal, 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 intellectual property stakeholders
and other interested members of the public during and following the
PPAC fee setting hearings during Fall 2015.
In summary, the fees to obtain a patent will increase slightly. For
example, fees for both tiers of RCEs will increase slightly, but still
less than those initially proposed to PPAC. Maintenance fee rates will
remain unchanged at all three stages; however, all reissue patents will
now be subject to maintenance fee payments if the patent owner wishes
to maintain them. In an effort to continue reducing the inventory of ex
parte appeals and help recapture a portion of the cost of providing
these services, fees will increase for both Notice of Appeal and Appeal
Forwarding. Fees will also increase for inter partes reviews based on
updated cost data and the need to provide adequate resources to support
the Office's ongoing compliance with AIA deadlines for these actions.
Similarly, fees for both post-grant reviews and covered-business-method
reviews will increase based on FY 2015 cost data and resources needed
to sustain compliance with AIA deadlines. Finally, in response to
feedback from the PPAC and members of the public, the proposed fee
increase for design issues is $240, from $560 to $800. Under the
original proposal to the PPAC, the fee would have increased by $440 to
$1,000.
Adjusting the patent fee schedule as proposed in this NPRM allows
the Office to implement the patent-related strategic goals and
objectives documented in the Strategic Plan. Specifically, this fee
setting rule supports the patent-related strategic goals to optimize
patent quality and timeliness, which includes improving patent quality,
reducing the backlog of unexamined applications and decreasing patent
application pendency, and facilitating processing at the Patent Trial
and Appeal Board (PTAB); and increasing international efforts to
improve intellectual property policy, protection, and enforcement. This
proposed rule also supports the Strategic Plan's management goal to
achieve organizational excellence, which includes leveraging IT
investments to better support compact prosecution and securing
sustainable funding via a sufficient operating reserve. While all of
the other alternatives discussed facilitate progress toward some of the
Office's goals, the proposed alternative is the only one that does so
in a way that does not impose undue costs on patent applicants and
holders.
The proposed fee schedule for this rulemaking, as compared to
existing fees (labeled Alternative 1--Proposed Alternative--Set and
Adjust Patent Fees) is available at http://www.uspto.gov/about-us/performance-and-planning/fee-setting-and-adjusting, in the document
entitled ``USPTO Setting and Adjusting Patent Fees during Fiscal Year
2017--IRFA Tables.'' Fee changes for small and micro entities are
included in the tables. For the comparison between proposed fees and
current fees, as noted above, the ``current fees'' column displays the
fees that were in effect as of June 2016.
ii. Other Alternatives Considered
In addition to the proposed fee schedule set forth in Alternative
1, above, the Office considered several other alternative approaches.
For each alternative considered, the Office calculated proposed fees
and proposed revenue derived by each alternative scenario. The proposed
fees and their corresponding revenue tables are available at http://www.uspto.gov/about-us/performance-and-planning/fee-setting-and-adjusting. Please note, only the fees outlined in Alternative 1 are
proposed in this rulemaking; other scenarios are shown only to
demonstrate the Office's analysis of other options.
a. Alternative 2: Unit Cost Recovery
The USPTO considered setting most individual large entity fees at
the historical cost of performing the activities related to the
particular service in FY 2015. This alternative continues existing and
offers new small and micro entity discounts where eligible under AIA
authority. Aside from maintenance fees, fees for which there is no FY
2015 cost data would be set at current rates under this alternative.
The Office no longer collects activity-based information for
maintenance fees, and previous year unit costs were negligible. Thus,
for this alternative, maintenance fees are set at levels sufficient to
generate enough revenue to cover the Office's anticipated budgetary
requirements over the five-year period. For the small number of
services that have a variable fee, the aggregate revenue table does not
list a fee. Instead, for those services with an estimated workload, the
workload is listed in dollars rather than units to develop revenue
estimates. Fees without either a fixed fee rate or a workload estimate
are assumed to provide zero revenue to the Office. Note, this
alternative bases fee rates for FY 2017 through FY 2021 on FY 2015
historical costs. The Office recognizes that this approach does not
account for inflationary factors that would likely increase costs and
necessitate higher fees in the out-years.
It is common practice in the Federal Government to set individual
fees at a level sufficient to recover the cost of that single service.
In fact, official guidance on user fees, as cited in OMB Circular A-25:
User Charges, 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 asserts that Alternative 2 does not align well
with the strategic and policy goals of this rulemaking. Both the
current and proposed fee schedules are structured to collect more fees
at the back-end (i.e. issue fees and maintenance fees), where the
patent owner has the best information about a patent's value, rather
than at the front-end (i.e. filing fees, search fees, and examination
fees), when applicants are most uncertain about the value of their art,
even though the front-end services are costlier to the Office. This
alternative presents significant barriers to those seeking patent
protection, because if the Office were to immediately shift from the
current front-end/back-end balance to a unit cost recovery structure,
front-end fees would increase significantly, nearly tripling in some
cases (e.g., search fees), even with small and micro entity fee
reductions.
The Office has not attempted to estimate the quantitative
elasticity impacts for application filings (e.g., filing, search, and
examination fees) or maintenance renewals (all stages) due to a lack of
historical data that could inform such a significant shift in the
Office's fee setting methodology. However, the Office suspects that 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. Under the current
fee schedule, maintenance fees subsidize all
[[Page 68178]]
applications, including those applications for which no claims are
allowed. By insisting on unit cost payment at each point in the
application process, the Office is effectively charging high fees for
every attempted patent, meaning those applicants who have less
information about the patentability of their claims may be less likely
to pursue initial prosecution (e.g., filing, search, and examination)
or subsequent actions to continue prosecution (e.g., RCE). The ultimate
effect of these changes in behavior are likely to stifle innovation.
Similarly, the Office suspects that renewal rates could change as
well, given significant fee reductions for maintenance fees at each of
the three stages. While some innovators and firms may choose to file
fewer applications given the higher front-end costs, others, whose
claims are allowed or upheld, may seek to fully maximize the benefits
of obtaining a patent by keeping those patents in force for longer than
they would have previously (i.e., under the status quo). In the
aggregate, patents that are maintained beyond their useful life weaken
the intellectual property system by slowing the rate of public
accessibility and follow-on inventions, which is contrary to the
Office's policy factor of fostering innovation. In sum, this
alternative is inadequate to accomplish the goals and strategies as
stated in Part III of this rulemaking.
The fee schedule for Alternative 2: Unit Cost Recovery is available
at http://www.uspto.gov/about-us/performance-and-planning/fee-setting-and-adjusting, in the document entitled ``USPTO Setting and Adjusting
Patent Fees during Fiscal Year 2017--IRFA Tables.'' For the comparison
between proposed (unit cost recovery) fees and current fees, the
``current fees'' column displays the fees that are in effect as of June
2016. This column is used to calculate dollar and percent fee change
compared to proposed fees.
b. Alternative 3: Across the Board Adjustment
In years past, the USPTO used its authority to adjust statutory
fees annually according to increases in the consumer price index (CPI),
which is a commonly used measure of inflation. Building on this prior
approach and incorporating the additional authority under the AIA to
set small and micro entity fees, Alternative 3 would set fees by
applying a one-time 5.0 percent, across the board inflationary increase
to the baseline (status quo) beginning in FY 2017. Five percent
represents the change in revenue needed to achieve the aggregate
revenue needed to cover budgetary requirements.
As estimated by the Congressional Budget Office, projected CPI
rates by fiscal year are: 2.17 percent in FY 2017, 2.39 percent in FY
2018, 2.38 percent in FY 2019, and 2.42 percent in both FY 2020 and FY
2021. The Office elected not to apply the estimated cumulative
inflationary adjustment (9.96 percent), from FY 2017 through FY 2021,
because doing so would result in significantly more fee revenue than
needed to meet the Office's core mission and strategic priorities.
Under this alternative, nearly every existing fee would be increased
and no fees would be discontinued or reduced. Given that all entities
(large, small, and micro) would pay unilaterally higher fees, this
alternative does not adequately support the Office's policy factor to
foster innovation for all.
The fee schedule for Alternative 3: Across the Board Adjustment is
available at http://www.uspto.gov/about-us/performance-and-planning/fee-setting-and-adjusting, in the document entitled ``USPTO Setting and
Adjusting Patent Fees during Fiscal Year 2017--IRFA Tables.'' For the
comparison between proposed (across the board) fees and current fees,
the ``current fees'' column displays the fees that are in effect as of
June 2016.
c. Alternative 4: Baseline (Current Fee Schedule)
The Office considered a no-action alternative. This alternative
would retain the status quo, meaning that the Office would continue the
small and micro entity discounts that Congress provided in Section 10
of the Act and maintain fees as of June 2016.
This approach would not provide sufficient aggregate revenue to
accomplish the Office's rulemaking goals, as set forth in Part III of
this NPRM or the Strategic Plan. IT improvement, progress on backlog
and pendency, and other strategic improvement activities would
continue, but at a slower rate due to funding limitations. Likewise,
without a fee increase, the USPTO would meet slightly less than the
minimal operating reserve in FY 2017 through FY 2019 and only slightly
more in FY 2020, with an increase in FY 2021.
iii. Alternatives Specified by the RFA
The RFA provides that an agency also consider four specified
``alternatives'' or approaches, namely: (1) Establishing different
compliance or reporting requirements or timetables that take into
account the resources available to small entities; (2) clarifying,
consolidating, or simplifying compliance and reporting requirements
under the rule for small entities; (3) using performance rather than
design standards; and (4) exempting small entities from coverage of the
rule, or any part thereof. 5 U.S.C. 604(c). The USPTO discusses each of
these specified alternatives or approaches below and describes how this
NPRM is adopting these approaches.
Differing Requirements
As discussed above, the changes proposed in this rulemaking would
continue existing fee discounts for small and micro entities that take
into account the reduced resources available to them as well as offer
new discounts when applicable under AIA authority. Specifically, micro
entities would continue to pay a 75 percent reduction in patent fees
under this proposal and non-micro, small entities would continue to pay
50 percent of the fee.
This rulemaking sets fee levels but does not set or alter
procedural requirements for asserting small or micro entity status. To
pay reduced patent fees, small entities must merely assert small entity
status to pay reduced patent fees. The small entity may make this
assertion by either checking a box on the transmittal form, ``Applicant
claims small entity status,'' or by paying the small entity fee
exactly. The process to claim micro entity status is similar in that
eligible entities need only submit a written certification of their
status prior to or at the time a reduced fee is paid. This proposed
rule does not change any reporting requirements for any small or micro
entity. For both small and micro entities, the burden to establish
their status is nominal (making an assertion or submitting a
certification) and the benefit of the fee reductions (50 percent for
small entities and 75 percent for micro entities) is significant.
This proposed rule makes the best use of differing requirements for
small and micro entities. It also makes the best use of the redesigned
fee structure, as discussed further below.
Clarification, Consolidation, or Simplification of Requirements
This rulemaking does not take any actions beyond setting or
adjusting patent fees; therefore, there are no clarifications,
consolidations, or simplifications subject to discussion here.
Performance Standards
Performance standards do not apply to the current rulemaking.
[[Page 68179]]
Exemption for Small and Micro Entities
The proposed changes here maintain a 50 percent reduction in fees
for small entities and a 75 percent reduction in fees for micro
entities. The Office considered exempting small and micro entities from
paying patent fees, but determined that the USPTO would lack statutory
authority for this approach. Section 10(b) of the Act provides that
``fees set or adjusted under subsection (a) for filing, searching,
examining, issuing, appealing, and maintaining patent applications and
patents shall be reduced by 50 percent [for small entities] and shall
be reduced by 75 percent [for micro entities]'' (emphasis added).
Neither the AIA nor any other statute authorizes the USPTO simply to
exempt small or micro entities, as a class of applicants, from paying
patent fees.
C. Executive Order 12866 (Regulatory Planning and Review)
This rulemaking has been determined to be significant for purposes
of Executive Order 12866 (Sept. 30, 1993), as amended by Executive
Order 13258 (Feb. 26, 2002) and Executive Order 13422 (Jan. 18, 2007).
The Office has developed a RIA as required for rulemakings deemed to be
significant. The complete RIA is available at http://www.uspto.gov/about-us/performance-and-planning/fee-setting-and-adjusting.
D. Executive Order 13563 (Improving Regulation and Regulatory Review)
The Office has complied with Executive Order 13563. Specifically,
the Office has, to the extent feasible and applicable: (1) Made a
reasoned determination that the benefits justify the costs of the rule;
(2) tailored the rule to impose the least burden on society consistent
with obtaining the regulatory objectives; (3) selected a regulatory
approach that maximizes net benefits; (4) specified performance
objectives; (5) identified and assessed available alternatives; (6)
involved the public in an open exchange of information and perspectives
among experts in relevant disciplines, affected stakeholders in the
private sector, and the public as a whole, and provided on-line access
to the rulemaking docket; (7) attempted to promote coordination,
simplification, and harmonization across government agencies and
identified goals designed to promote innovation; (8) considered
approaches that reduce burdens and maintain flexibility and freedom of
choice for the public; and (9) ensured the objectivity of scientific
and technological information and processes.
E. 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).
F. Congressional Review Act
Under the Congressional Review Act provisions of the Small Business
Regulatory Enforcement Fairness Act of 1996 (5 U.S.C. 801-808), prior
to issuing any final rule, the USPTO will submit a report containing
the final rule and other required information to the U.S. Senate, the
U.S. House of Representatives, and the Comptroller General of the
Government Accountability Office. The changes in this proposed rule are
expected to result in an annual effect on the economy of $100 million
or more, a major increase in costs or prices, or significant adverse
effects on competition, employment, investment, productivity,
innovation, or the ability of United States-based enterprises to
compete with foreign-based enterprises in domestic and export markets.
Therefore, this proposed rule is expected to result in a ``major rule''
as defined in 5 U.S.C. 804(2).
G. Unfunded Mandates Reform Act of 1995
The changes proposed in this notice do not involve a Federal
intergovernmental mandate that will result in the expenditure by state,
local, and tribal governments, in the aggregate, of $100 million (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 (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.
H. Paperwork Reduction Act
This proposed rule involves information collection requirements
that are subject to review by the Office of Management and Budget (OMB)
under the Paperwork Reduction Act of 1995 (44 U.S.C. 3501 et seq.). The
collection of information involved in this rulemaking has been reviewed
and previously approved by OMB under control numbers 0651-0016, 0651-
0024, 0651-0031, 0651-0032, 0651-0033, 0651-0059, 0651-0064, and 0651-
0069.
You may send comments regarding the collection of information
associated with this rulemaking, including suggestions for reducing the
burden, to the Commissioner for Patents, by mail to P.O. Box 1451,
Alexandria, VA 22313-1451, attention Dianne Buie; or by electronic mail
message via the Federal eRulemaking Portal. All comments submitted
directly to the USPTO or provided on the Federal eRulemaking Portal
should include the docket number (RIN 0651-AD02).
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 record keeping
requirements, Small businesses.
37 CFR Part 41
Administrative practice and procedure, Inventions and patents,
Lawyers.
37 CFR Part 42
Trial practice before the Patent Trial and Appeal Board.
For the reasons set forth in the preamble, 37 CFR parts 1, 41, and
42 are proposed to be amended as follows:
PART 1--RULES OF PRACTICE IN PATENT CASES
0
1. The authority citation for part 1 continues to read as follows:
Authority: 35 U.S.C. 2(b)(2), unless otherwise noted.
0
2. Section 1.16 is amended by revising paragraphs (a) through (f) and
(h) through (r) to read as follows:
Sec. 1.16 National application filing, search, and examination fees.
(a) Basic fee for filing each application under 35 U.S.C. 111 for
an original patent, except design, plant, or provisional applications:
By a micro entity (Sec. 1.29(a))...................... $75.00
By a small entity (Sec. 1.27(a))...................... 150.00
By a small entity (Sec. 1.27(a)) if the application is 75.00
submitted in compliance with the Office electronic
filing system (Sec. 1.27(b)(2))......................
By other than a small or micro entity................... 300.00
(b) Basic fee for filing each application under 35 U.S.C. 111 for
an original design patent:
[[Page 68180]]
By a micro entity (Sec. 1.29(a))...................... $50.00
By a small entity (Sec. 1.27(a))...................... 100.00
By other than a small or micro entity................... 200.00
(c) Basic fee for filing each application for an original plant
patent:
By a micro entity (Sec. 1.29(a))...................... $50.00
By a small entity (Sec. 1.27(a))...................... 100.00
By other than a small or micro entity................... 200.00
(d) Basic fee for filing each provisional application:
By a micro entity (Sec. 1.29(a))...................... $70.00
By a small entity (Sec. 1.27(a))...................... 140.00
By other than a small or micro entity................... 280.00
(e) Basic fee for filing each application for the reissue of a
patent:
By a micro entity (Sec. 1.29(a))...................... $75.00
By a small entity (Sec. 1.27(a))...................... 150.00
By other than a small or micro entity................... 300.00
(f) Surcharge for filing the basic filing fee, search fee,
examination fee, or the inventor's oath or declaration on a date later
than the filing date of the application, an application that does not
contain at least one claim on the filing date of the application, or an
application filed by reference to a previously filed application under
Sec. 1.57(a), except provisional applications:
By a micro entity (Sec. 1.29(a))...................... $40.00
By a small entity (Sec. 1.27(a))...................... 80.00
By other than a small or micro entity................... 160.00
* * * * *
(h) In addition to the basic filing fee in an application, other
than a provisional application, for filing or later presentation at any
other time of each claim in independent form in excess of 3:
By a micro entity (Sec. 1.29(a))...................... $115.00
By a small entity (Sec. 1.27(a))...................... 230.00
By other than a small or micro entity................... 460.00
(i) In addition to the basic filing fee in an application, other
than a provisional application, for filing or later presentation at any
other time of each claim (whether dependent or independent) in excess
of 20 (note that Sec. 1.75(c) indicates how multiple dependent claims
are considered for fee calculation purposes):
By a micro entity (Sec. 1.29(a))...................... $25.00
By a small entity (Sec. 1.27(a))...................... 50.00
By other than a small or micro entity................... 100.00
(j) In addition to the basic filing fee in an application, other
than a provisional application, that contains, or is amended to
contain, a multiple dependent claim, per application:
By a micro entity (Sec. 1.29(a))...................... $205.00
By a small entity (Sec. 1.27(a))...................... 410.00
By other than a small or micro entity................... 820.00
(k) Search fee for each application filed under 35 U.S.C. 111 for
an original patent, except design, plant, or provisional applications:
By a micro entity (Sec. 1.29(a))...................... $165.00
By a small entity (Sec. 1.27(a))...................... 330.00
By other than a small or micro entity................... 660.00
(l) Search fee for each application under 35 U.S.C. 111 for an
original design patent:
By a micro entity (Sec. 1.29(a))...................... $40.00
By a small entity (Sec. 1.27(a))...................... 80.00
By other than a small or micro entity................... 160.00
(m) Search fee for each application for an original plant patent:
By a micro entity (Sec. 1.29(a))...................... $105.00
By a small entity (Sec. 1.27(a))...................... 210.00
By other than a small or micro entity................... 420.00
(n) Search fee for each application for the reissue of a patent:
By a micro entity (Sec. 1.29(a))...................... $165.00
By a small entity (Sec. 1.27(a))...................... 330.00
By other than a small or micro entity................... 660.00
(o) Examination fee for each application filed under 35 U.S.C. 111
for an original patent, except design, plant, or provisional
applications:
By a micro entity (Sec. 1.29(a))...................... $190.00
By a small entity (Sec. 1.27(a))...................... 380.00
By other than a small or micro entity................... 760.00
(p) Examination fee for each application under 35 U.S.C. 111 for an
original design patent:
By a micro entity (Sec. 1.29(a))...................... $150.00
By a small entity (Sec. 1.27(a))...................... 300.00
By other than a small or micro entity................... 600.00
(q) Examination fee for each application for an original plant
patent:
By a micro entity (Sec. 1.29(a))...................... $155.00
By a small entity (Sec. 1.27(a))...................... 310.00
By other than a small or micro entity................... 620.00
(r) Examination fee for each application for the reissue of a
patent:
By a micro entity (Sec. 1.29(a))...................... $550.00
By a small entity (Sec. 1.27(a))...................... 1,100.00
By other than a small or micro entity................... 2,200.00
* * * * *
0
3. Section 1.17 is amended by revising paragraphs (e), (m), (p) and (t)
to read as follows:
Sec. 1.17 Patent application and reexamination processing fees.
* * * * *
(e) To request continued examination pursuant to Sec. 1.114:
(1) For filing a first request for continued examination pursuant
to Sec. 1.114 in an application:
By a micro entity....................................... $325.00
By a small entity (Sec. 1.27(a)....................... 650.00
By other than a small or micro entity................... 1,300.00
(2) For filing a second or subsequent request for continued
examination pursuant to Sec. 1.114 in an application:
By a micro entity....................................... $475.00
By a small entity (Sec. 1.27(a)....................... 950.00
By other than a small or micro entity................... 1,900.00
* * * * *
(m) For filing a petition for the revival of an abandoned
application for a patent, for the delayed payment of the fee for
issuing each patent, for the delayed response by the patent owner in
any reexamination proceeding, for the delayed payment of the fee for
maintaining a patent in force, for the delayed submission of a priority
or benefit claim, or the extension of the twelve-month (six-month for
designs) period for filing a subsequent application (Sec. Sec.
1.55(c), 1.55(e), 1.78(b), 1.78(c), 1.78(e), 1.137, 1.378, and 1.452)),
or for filing a petition to excuse applicant's failure to act within
prescribed time limits in an international design application (Sec.
1.1051):
By a micro entity (Sec. 1.29(a))...................... $500.00
By a small entity (Sec. 1.27(a))...................... 1,000.00
By other than a small or micro entity................... 2,000.00
* * * * *
(p) For an information disclosure statement under Sec. 1.97(c) or
(d):
By a micro entity (Sec. 1.29(a))...................... $60.00
By a small entity (Sec. 1.27(a))...................... 120.00
By other than a small or micro entity................... 240.00
* * * * *
(t) For filing a petition to convert an international design
application to a design application under 35 U.S.C. chapter 16 (Sec.
1.1052):
By a micro entity (Sec. 1.29(a))...................... $45.00
By a small entity (Sec. 1.27(a))...................... 90.00
[[Page 68181]]
By other than a small or micro entity................... 180.00
0
4. Section 1.18 is amended by revising paragraphs (a), (b), and (c) to
read as follows:
Sec. 1.18 Patent post allowance (including issue) fees.
(a)(1) Issue fee for issuing each original patent, except a design
or plant patent, or for issuing each reissue patent:
By a micro entity (Sec. 1.29(a))...................... $250.00
By a small entity (Sec. 1.27(a))...................... 500.00
By other than a small or micro entity................... 1,000.00
(2) [Reserved]
(b)(1) Issue fee for issuing an original design patent:
By a micro entity (Sec. 1.29(a))...................... $200.00
By a small entity (Sec. 1.27(a))...................... 400.00
By other than a small or micro entity................... 800.00
(2) [Reserved]
(3) Issue fee for issuing an international design application
designating the United States, where the issue fee is paid through the
International Bureau (Hague Agreement Rule 12(3)(c)) as an alternative
to paying the issue fee under paragraph (b)(1) of this section: The
amount established in Swiss currency pursuant to Hague Agreement Rule
28 as of the date of mailing of the notice of allowance (Sec. 1.311).
(c)(1) Issue fee for issuing an original plant patent:
By a micro entity (Sec. 1.29(a))...................... $250.00
By a small entity (Sec. 1.27(a))...................... 500.00
By other than a small or micro entity................... 1,000.00
(2) [Reserved]
* * * * *
0
5. Section 1.19 is amended by revising paragraphs (b)(1), (2), and (4);
removing and reserving paragraphs (e) and (g); and adding paragraphs
(h) through (l) to read as follows:
Sec. 1.19 Document supply fees.
* * * * *
(b) * * *
(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: $35.00
(B) File wrapper and contents: $280.00
(C) [Reserved]
(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 or if provided electronically (e.g., by
electronic transmission) other than on a physical electronic medium:
(A) Application as filed: $35.00
(B) File wrapper and contents: $55.00
(C) [Reserved]
(iii) [Reserved]
(iv) If provided to a foreign intellectual property office pursuant
to a bilateral or multilateral agreement (see Sec. 1.14(h)): $0.00.
(2) [Reserved]
* * * * *
(4) For assignment records, abstract of title and certification,
per patent: $35.00
* * * * *
(h) Copy of Patent Grant Single-Page TIFF Images (52 week
subscription): $10,400.00
(i) Copy of Patent Grant Full-Text W/Embedded Images, Patent
Application Publication Single-Page TIFF Images, or Patent Application
Publication Full-Text W/Embedded Images (52 week subscription):
$5,200.00
(j) Copy of Patent Technology Monitoring Team (PTMT) Patent
Bibliographic Extract and Other DVD (Optical Disc) Products: $50.00
(k) Copy of U.S. Patent Custom Data Extracts: $100.00
(l) Copy of Selected Technology Reports, Miscellaneous Technology
Areas: $30.00
0
6. Section 1.20 is amended by revising paragraphs (a) through (c) and
(e) through (g) to read as follows:
Sec. 1.20 Post issuance fees.
(a) For providing a certificate of correction for $150.00
applicant's mistake (Sec. 1.323).....................
(b) Processing fee for correcting inventorship in a 150.00
patent (Sec. 1.324)..................................
(c) In reexamination proceedings:
(1)(A) For filing a request for ex parte reexamination (Sec.
1.510(a)) having:
(i) Forty (40) or fewer pages;
(ii) Lines that are double-spaced or one-and-a-half spaced;
(iii) Text written in a non-script type font such as Arial, Times
New Roman, or Courier;
(iv) A font size no smaller than 12 point;
(v) Margins which conform to the requirements of Sec.
1.52(a)(1)(ii); and
(vi) Sufficient clarity and contrast to permit direct reproduction
and electronic capture by use of digital imaging and optical character
recognition.
By a micro entity (Sec. 1.29(a))...................... $1,500.00
By a small entity (Sec. 1.27(a))...................... 3,000.00
By other than a small or micro entity................... 6,000.00
(B) The following parts of an ex parte reexamination request are
excluded from paragraphs (c)(1)(A)(i) through (v) of this section:
(i) The copies of every patent or printed publication relied upon
in the request pursuant to Sec. 1.510(b)(3);
(ii) The copy of the entire patent for which reexamination is
requested pursuant to Sec. 1.510(b)(4); and
(iii) The certifications required pursuant to Sec. 1.510(b)(5) and
(6).
(2) For filing a request for ex parte reexamination (Sec.
1.510(b)) which has sufficient clarity and contrast to permit direct
reproduction and electronic capture by use of digital imaging and
optical character recognition, and which otherwise does not comply with
the provisions of paragraph (c)(1) of this section::
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
(3) For filing with a request for reexamination or later
presentation at any other time of each claim in independent form in
excess of three and also in excess of the number of claims in
independent form in the patent under reexamination:
By a micro entity (Sec. 1.29(a))...................... $115.00
By a small entity (Sec. 1.27(a))...................... 230.00
By other than a small or micro entity................... 460.00
(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(a))...................... $25.00
By a small entity (Sec. 1.27(a))...................... 50.00
By other than a small or micro entity................... 100.00
* * * * *
(e) For maintaining an original or any reissue patent, except a
design or plant patent, based on an application filed on or after
December 12, 1980, in force beyond four years, the fee being due by
three years and six months after the original grant:
By a micro entity (Sec. 1.29(a))...................... $400.00
By a small entity (Sec. 1.27(a))...................... 800.00
[[Page 68182]]
By other than a small or micro entity................... 1,600.00
(f) For maintaining an original or any reissue patent, except a
design or plant patent, based on an application filed on or after
December 12, 1980, in force beyond eight years, the fee being due by
seven years and six months after the original grant:
By a micro entity (Sec. 1.29(a))...................... $900.00
By a small entity (Sec. 1.27(a))...................... 1,800.00
By other than a small or micro entity................... 3,600.00
(g) For maintaining an original or any reissue patent, except a
design or plant patent, based on an application filed on or after
December 12, 1980, in force beyond twelve years, the fee being due by
eleven years and six months after the original grant:
By a micro entity (Sec. 1.29(a))...................... $1,850.00
By a small entity (Sec. 1.27(a))...................... 3,700.00
By other than a small or micro entity................... 7,400.00
* * * * *
0
7. Amend Sec. 1.21 by:
0
a. Revising paragraph (a);
0
b. Removing and reserving paragraph (g);
0
c. Revising paragraph (h) introductory text and paragraphs (h)(2) and
(i);
0
d. Removing and reserving paragraph (j); and
0
e. Adding paragraphs (o) through (q).
The revisions and additions read as follows:
Sec. 1.21 Miscellaneous fees and charges.
* * * * *
(a) Registration of attorneys and agents:
(l) For admission to examination for registration to practice:
(i) Application Fee (non-refundable): $100.00
(ii) Registration examination fee.
(A) For test administration by commercial entity: $200.00
(B) For test administration by the USPTO: $450.00
(iii) For USPTO-administered review of registration examination:
$450.00
(2) On registration to practice or grant of limited recognition:
(i) On registration to practice under Sec. 11.6 of this chapter:
$200.00
(ii) On grant of limited recognition under Sec. 11.9(b) of this
chapter: $200.00
(iii) On change of registration from agent to attorney: $100.00
(3) [Reserved]
(4) For certificate of good standing as an attorney or agent:
(i) Standard: $40.00
(ii) Suitable for framing: $50.00
(5) For review of decision:
(i) By the Director of Enrollment and Discipline under Sec.
11.2(c) of this chapter: $400.00
(ii) Of the Director of Enrollment and Discipline under Sec.
11.2(d) of this chapter: $400.00
(6) Recovery/Retrieval of OED Information System Customer Interface
account by USPTO:
(i) For USPTO-assisted recovery of ID or reset of password: $70.00
(ii) For USPTO-assisted change of address: $70.00
(7) and (8) Reserved
(9)(i) Delinquency fee: $50.00
(ii) Administrative reinstatement fee: $200.00
(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 grounds, or excluded on consent from practice
before the Office: $1,600.00
* * * * *
(h) For recording each assignment, agreement, or other paper
relating to the property in a patent or application, per property:
* * * * *
(2) If not submitted electronically: $50.00
(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
* * * * *
(o) The submission of very lengthy sequence listings (mega-sequence
listings) are subject to the following fees:
(1) Submission of sequence listings ranging in size from 300MB to
800MB: $1,000.00
(2) Submission of sequence listings exceeding 800MB in size:
$10,000.00
(p) Additional Fee for Overnight Delivery: $40.00
(q) Additional Fee for Expedited Service: $160.00
0
8. Section 1.362 is amended by revising paragraph (b) to read as
follows:
Sec. 1.362 Time for payment of maintenance fees.
* * * * *
(b) Maintenance fees are not required for any plant patents or for
any design patents.
* * * * *
0
9. Section 1.445 is amended by adding paragraph (a)(5) to read as
follows:
Sec. 1.445 International application filing, processing and search
fees.
(a) * * *
(5) Late furnishing fee for providing a sequence listing in
response to an invitation under PCT Rule 13ter:
By a micro entity (Sec. 1.29(a))...................... $75.00
By a small entity (Sec. 1.27(a))...................... 150.00
By other than a small or micro entity................... 300.00
* * * * *
0
10. Section 1.482 is amended by revising the section heading and adding
paragraph (c) to read as follows:
Sec. 1.482 International preliminary examination and processing fees.
* * * * *
(c) Late furnishing fee for providing a sequence listing in
response to an invitation under PCT Rule 13ter:
By a micro entity (Sec. 1.29(a))...................... $75.00
By a small entity (Sec. 1.27(a))...................... 150.00
By other than a small or micro entity................... 300.00
0
11. Section 1.492 is amended by revising paragraphs (a), (b)(2) through
(4), (c)(2), and (d) through (f) to read as follows:
Sec. 1.492 National stage fees.
* * * * *
(a) The basic national fee for an international application
entering the national stage under 35 U.S.C. 371:
By a micro entity (Sec. 1.29(a))...................... $75.00
By a small entity (Sec. 1.27(a))...................... 150.00
By other than a small or micro entity................... 300.00
(b) * * *
(2) If the search fee as set forth in Sec. 1.445(a)(2) has been
paid on the international application to the United States Patent and
Trademark Office as an International Searching Authority:
By a micro entity (Sec. 1.29(a))...................... $35.00
By a small entity (Sec. 1.27(a))...................... 70.00
By other than a small or micro entity................... 140.00
(3) If an international search report on the international
application has been prepared by an International Searching Authority
other than the United States International Searching Authority and is
provided, or has been previously communicated by the International
Bureau, to the Office:
By a micro entity (Sec. 1.29(a))...................... $130.00
[[Page 68183]]
By a small entity (Sec. 1.27(a))...................... 260.00
By other than a small or micro entity................... 520.00
(4) In all situations not provided for in paragraph (b)(1), (2), or
(3) of this section:
By a micro entity (Sec. 1.29(a))...................... $165.00
By a small entity (Sec. 1.27(a))...................... 330.00
By other than a small or micro entity................... 660.00
(c) * * *
(2) In all situations not provided for in paragraph (c)(1) of this
section:
By a micro entity (Sec. 1.29(a))...................... $190.00
By a small entity (Sec. 1.27(a))...................... 380.00
By other than a small or micro entity................... 760.00
(d) In addition to the basic national fee, for filing or on later
presentation at any other time of each claim in independent form in
excess of 3:
By a micro entity (Sec. 1.29(a))...................... $115.00
By a small entity (Sec. 1.27(a))...................... 230.00
By other than a small or micro entity................... 460.00
(e) In addition to the basic national fee, for filing or on later
presentation at any other time of each claim (whether dependent or
independent) in excess of 20 (note that Sec. 1.75(c) indicates how
multiple dependent claims are considered for fee calculation purposes):
By a micro entity (Sec. 1.29(a))...................... $25.00
By a small entity (Sec. 1.27(a))...................... 50.00
By other than a small or micro entity................... 100.00
(f) In addition to the basic national fee, if the application
contains, or is amended to contain, a multiple dependent claim, per
application:
By a micro entity (Sec. 1.29(a))...................... $205.00
By a small entity (Sec. 1.27(a))...................... 410.00
By other than a small or micro entity................... 820.00
0
12. Section 1.1031 is amended by revising paragraph (a) and adding
paragraph (f) to read as follows:
Sec. 1.1031 International design application fees.
(a) International design applications filed through the Office as
an office of indirect filing are subject to payment of a transmittal
fee (35 U.S.C. 382(b) and article 4(2)) in the amount of
By a micro entity (Sec. 1.29(a))...................... $30.00
By a small entity (Sec. 1.27(a))...................... 60.00
By other than a small or micro entity................... 120.00
* * * * *
(f) The designation fee for the United States shall consist of:
(1) A first part established in Swiss currency pursuant to Hague
Rule 28 based on the combined amounts of the basic filing fee (Sec.
1.16(b)), search fee (Sec. 1.16(l)), and examination fee (Sec.
1.16(p)) for a design application. The first part is payable at the
time of filing the international design application; and
(2) A second part (issue fee) as provided in Sec. 1.18(b). The
second part is payable within the period specified in a notice of
allowance (Sec. 1.311).
PART 41--PRACTICE BEFORE THE PATENT TRIAL AND APPEAL BOARD
0
13. The authority citation for part 41 continues to read as follows:
Authority: 35 U.S.C. 2(b)(2), 3(a)(2)(A), 21, 23, 32, 41, 134,
135, and Public Law 112-29.
0
14. Section 41.20 is amended by revising paragraphs (b)(1) and (4) to
read as follows:
Sec. 41.20 Fees.
* * * * *
(b) * * *
(1) For filing a notice of appeal from the examiner to the Patent
Trial and Appeal Board:
By a micro entity (Sec. 1.29 of this chapter)......... $250.00
By a small entity (Sec. 1.27(a) of this chapter)...... 500.00
By other than a small or micro entity................... 1,000.00
* * * * *
(4) In addition to the fee for filing a notice of appeal, for
forwarding an appeal in an application or ex parte reexamination
proceeding to the Board:
By a micro entity (Sec. 1.29(a) of this chapter)...... $625.00
By a small entity (Sec. 1.27(a) of this chapter)...... 1,250.00
By other than a small or micro entity................... 2,500.00
PART 42--TRIAL PRACTICE BEFORE THE PATENT TRIAL AND APPEAL BOARD
0
15. The authority citation for part 42 continues to read as follows:
Authority: 35 U.S.C. 2(b)(2), 6, 21, 23, 41, 135, 311, 312,
316, 321-326; Pub. L. 112-29, 125 Stat. 284; and Pub. L. 112-274,
126 Stat. 2456.
0
16. Section 42.15 is amended by revising paragraphs (a) and (b) 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: $14,000.00
(2) Inter Partes Review Post-Institution fee: $16,500.00
(3) In addition to the Inter Partes Review request fee, for
requesting review of each claim in excess of 20: $300.00
(4) In addition to the Inter Partes Post-Institution request fee,
for requesting review of each claim in excess of 15: $600.00
(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: $16,000.00
(2) Post-Grant or Covered Business Method Patent Review Post-
Institution fee: $22,000.00
(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: $375.00
(4) In addition to the Post-Grant or Covered Business Method Patent
Review Post-Institution fee, for requesting review of each claim in
excess of 15: $825.00
* * * * *
Dated: September 20, 2016.
Michelle K. Lee,
Under Secretary of Commerce for Intellectual Property and Director of
the United States Patent and Trademark Office.
[FR Doc. 2016-23093 Filed 9-30-16; 8:45 am]
BILLING CODE 3510-16-P