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3880 Federal Register / Vol. 70, No.

17 / Thursday, January 27, 2005 / Rules and Regulations

State, local, or tribal government, in the voluntary consensus standards in their north of a line drawn along latitude 27°
aggregate, or by the private sector of regulatory activities unless the agency 51′ 18″ N. The regulated area includes
$100,000,000 or more in any one year. provides Congress, through the Office of the following in their entirety:
Though this rule will not result in such Management and Budget, with an Hillsborough Cut ‘‘D’’ Channel, Seddon
an expenditure, we do discuss the explanation of why using these Channel and the Hillsborough River
effects of this rule elsewhere in this standards would be inconsistent with south of the John F. Kennedy Bridge.
preamble. applicable law or otherwise impractical. Coordinates Reference Datum, NAD
Voluntary consensus standards are 1983.
Taking of Private Property
technical standards (e.g., specifications (e) Special Local Regulations. (1)
This rule will not effect a taking of of materials, performance, design, or Entry into the regulated area is
private property or otherwise have operation; test methods; sampling prohibited to all commercial marine
taking implications under Executive procedures; and related management traffic from 9 a.m. to 2:30 p.m. EST on
Order 12630, Governmental Actions and systems practices) that are developed or January 29, 2005.
Interference with Constitutionally adopted by voluntary consensus (2) The regulated area is an idle
Protected Property Rights. standards bodies. speed, ‘‘no wake’’ zone.
Civil Justice Reform This rule does not use technical (3) All vessels within the regulated
standards. Therefore, we did not area shall stay clear of and give way to
This rule meets applicable standards consider the use of voluntary consensus all vessels in parade formation in the
in sections 3(a) and 3(b)(2) of Executive standards. Gasparilla Marine Parade.
Order 12988, Civil Justice Reform, to (4) When within the marked channels
minimize litigation, eliminate Environment
of the parade route, vessels participating
ambiguity, and reduce burden. We have analyzed this rule under in the Gasparilla Marine Parade may not
Commandant Instruction M16475.lD, exceed the minimum speed necessary to
Protection of Children
which guides the Coast Guard in maintain steerage.
We have analyzed this rule under complying with the National (5) Jet skis and vessels without
Executive Order 13045, Protection of Environmental Policy Act of 1969 mechanical propulsion are prohibited
Children from Environmental Health (NEPA) (42 U.S.C. 4321–4370f), and from the parade route.
Risks and Safety Risks. This rule is not have concluded that there are no factors (6) Northbound vessels in excess of 80
an economically significant rule and in this case that would limit the use of feet in length without mooring
does not create an environmental risk to a categorical exclusion under section arrangements made prior to January 29,
health or risk to safety that may 2.B.2 of the Instruction. Therefore, this 2005, are prohibited from entering
disproportionately affect children. rule is categorically excluded, under Seddon Channel unless the vessel is
Indian Tribal Governments figure 2–1, paragraph (34)(h), of the officially entered in the Gasparilla
Instruction, from further environmental Marine Parade. All northbound vessels
This rule does not have tribal documentation. As a special local in excess of 80 feet without prior
implications under Executive Order regulation issued in conjunction with a mooring arrangements and not officially
13175, Consultation and Coordination marine parade, this rule satisfies the entered in the Gasparilla Marine Parade,
with Indian Tribal Governments, requirements of paragraph (34)(h). must use the alternate route through
because it does not have a substantial Under figure 2–1, paragraph (34)(h), of Sparkman Channel.
direct effect on one or more Indian the instruction, an ‘‘Environmental
tribes, on the relationship between the Analysis Check List’’ and a draft W.E. Justice,
Federal Government and Indian tribes, ‘‘Categorical Exclusion Determination’’ Captain, U.S. Coast Guard, Acting
or on the distribution of power and are not required for this rule. Commander, Seventh Coast Guard District.
responsibilities between the Federal [FR Doc. 05–1509 Filed 1–26–05; 8:45 am]
Government and Indian tribes. List of Subjects in 33 CFR Part 100
BILLING CODE 4910–15–P

Energy Effects Regattas and marine parades.


■ For the reasons discussed in the
We have analyzed this rule under
preamble, the Coast Guard amends 33 DEPARTMENT OF COMMERCE
Executive Order 13211, Actions
CFR part 100 as follows:
Concerning Regulations That Patent and Trademark Office
Significantly Affect Energy Supply, PART 100—SAFETY OF LIFE ON
Distribution, or Use. We have NAVIGABLE WATERS 37 CFR Parts 1 and 41
determined that it is not a ‘‘significant
energy action’’ under that order because ■ 1. The authority citation for part 100 [Docket No. 2003–P–026]
it is not a ‘‘significant regulatory action’’ continues to read as follows:
RIN 0651–AB54
under Executive Order 12866 and is not Authority: 33 U.S.C. 1233; Department of
likely to have a significant adverse effect Homeland Security Delegation No. 0170.1. Changes To Implement the Patent Fee
on the supply, distribution, or use of ■ 2. From 9 a.m. on January 29, 2005, Related Provisions of the Consolidated
energy. The Administrator of the Office until 2:30 p.m. on February 5, 2005, in Appropriations Act, 2005
of Information and Regulatory Affairs § 100.734, suspend paragraphs (a), (b)
has not designated it as a significant and (c), and add new paragraphs (d) and AGENCY: United States Patent and
energy action. Therefore, it does not (e) to read as follows: Trademark Office, Commerce.
require a Statement of Energy Effects ACTION: Final rule.
under Executive Order 13211. § 100.734 Annual Gasparilla Marine
Parade; Hillsborough Bay, Tampa, FL. SUMMARY: The Consolidated
Technical Standards Appropriations Act, 2005 (Consolidated
* * * * *
The National Technology Transfer (d) Regulated area. A regulated area is Appropriations Act), revises patent fees
and Advancement Act (NTTAA) (15 established consisting of all waters of in general, and provides for a search fee
U.S.C. 272 note) directs agencies to use Hillsborough Bay and its tributaries and examination fee that are separate

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Federal Register / Vol. 70, No. 17 / Thursday, January 27, 2005 / Rules and Regulations 3881

from the filing fee, during fiscal years may be paid at a later time if paid 41(d)(1) (search fee) apply only to
2005 and 2006. This final rule revises within such period and under such applications for patent filed under 35
the patent fees set forth in the rules of conditions (including payment of a U.S.C. 111 on or after December 8, 2004,
practice to conform them to the patent surcharge) as may be prescribed by the and to international applications
fees set forth in the Consolidated Director. See H. R. Rep. 108–241, at 16 entering the national stage under 35
Appropriations Act. (2003) (H. R. Rep. 108–241 contains an U.S.C. 371 for which the basic national
DATES: Effective Date: December 8, 2004. analysis and discussion of an identical fee specified in 35 U.S.C. 41 was not
Applicability Date: The changes in provision in H.R. 1561, 108th Cong. paid before December 8, 2004. In
this final rule apply to all patents (2004)). addition, the provisions of 35 U.S.C.
(including patents in reexamination The Consolidated Appropriations Act 41(a)(2) (excess claims fee) apply only
proceedings), whenever granted, and to also provides that the small entity as to those claims in independent form
all patent applications pending on or reduction set forth in 35 U.S.C. 41(h)(1) and those claims (whether independent
after December 8, 2004. also applies to the search fee provided or dependent) that, after taking into
FOR FURTHER INFORMATION CONTACT: for in 35 U.S.C. 41(d)(1) (35 U.S.C. account the claims that have been
Robert W. Bahr, Senior Patent Attorney, 41(h)(1)), and provides that the filing fee canceled, are in excess of the number of
Office of the Deputy Commissioner for charged under 35 U.S.C. 41(a)(1)(A) claims in independent form and claims
Patent Examination Policy, by telephone shall be reduced by 75 percent with (whether independent or dependent),
at (571) 272–8800, by mail addressed to: respect to its application to any small respectively, for which the excess
Box Comments—Patents, Commissioner entity ‘‘if the application is filed by claims fee specified in 35 U.S.C. 41 was
for Patents, P.O. Box 1450, Alexandria, electronic means as prescribed by the paid before December 8, 2004.
VA, 22313–1450, or by facsimile to Director’’ (35 U.S.C. 41(h)(3)). Since 35 The applicable fee amount is the fee
(571) 273–7735, marked to the attention U.S.C. 41(h)(3) applies only to the filing amount in effect on the day the fee is
fee charged under 35 U.S.C. 41(a)(1)(A) paid (in full). The day a fee is paid is
of Robert W. Bahr.
(the filing fee for a nonprovisional the date of receipt of the fee payment in
SUPPLEMENTARY INFORMATION: The
original utility application), the 75 the Office under § 1.6, or the date
Consolidated Appropriations Act percent fee reduction set forth in 35 reflected on a proper certificate of
(section 801 of Division B) provides that U.S.C. 41(h)(3) does not apply to design mailing or transmission on the fee
35 U.S.C. 41(a), (b), and (d) shall be or plant applications, reissue payment, where such a certificate is
administered in a manner that revises applications, or provisional authorized under § 1.8. Use of a
patent application fees (35 U.S.C. 41(a)) applications. certificate of mailing or transmission is
and patent maintenance fees (35 U.S.C. The Consolidated Appropriations Act not authorized for items that are
41(b)), and provides for a separate filing also provides that the Office may, by specifically excluded from the
fee (35 U.S.C. 41(a)), search fee (35 regulation, provide for a refund of: (1) provisions of § 1.8: e.g., the filing of a
U.S.C. 41(d)(1)), and examination fee Any part of the excess claims fee national or international application for
(35 U.S.C. 41(a)(3)) during fiscal years specified in 35 U.S.C. 41(a)(2) for any a patent. See § 1.8(a)(2). The date of
2005 and 2006. See Pub. L. 108–447, claim that is canceled before an receipt under 37 CFR 1.6 of patent-
118 Stat. 2809 (2004). This final rule examination on the merits has been related correspondence delivered by the
revises the patent fees set forth in the made of the application under 35 U.S.C. ‘‘Express Mail Post Office to Addressee’’
rules of practice in title 37 of the Code 131; (2) any part of the search fee for service of the United States Postal
of Federal Regulations (CFR) to conform any applicant who files a written Service (USPS) is the date of deposit of
them to the patent fees set forth in the declaration of express abandonment as the correspondence with the USPS. See
Consolidated Appropriations Act. The prescribed by the Office before an §§ 1.6(a)(2) and 1.10(a)(1). The date of
citations to 35 U.S.C. 41 in this final examination has been made of the deposit with the USPS is shown by the
rule are citations to 35 U.S.C. 41 as it application under 35 U.S.C. 131; and (3) ‘‘date-in’’ on the ‘‘Express Mail’’ mailing
is being administered during fiscal years any part of the search fee for any label or other official USPS notation.
2005 and 2006 pursuant to the applicant who provides a search report See § 1.10(a)(2).
Consolidated Appropriations Act. that meets the conditions prescribed by
The Consolidated Appropriations Act the Office. This final rule does not Discussion of Specific Rules
also provides that the provisions of 35 contain changes to the rules of practice Title 37 of the Code of Federal
U.S.C. 111(a) for payment of the fee for to implement the provisions for a refund Regulations, Parts 1 and 41, are
filing the application apply to the of any part of the excess claims fee amended as follows:
payment of the examination fee (35 specified in 35 U.S.C. 41(a)(2) for any Section 1.16: Section 1.16 is amended
U.S.C. 41(a)(3)) and search fee (35 claim that is canceled before an to set forth the application filing, excess
U.S.C. 41(d)(1)) in an application filed examination on the merits has been claims, search, examination, and
under 35 U.S.C. 111(a), and that the made of the application under 35 U.S.C. application size fees as specified in 35
provisions of 35 U.S.C. 371(d) for the 131, and any part of the search fee for U.S.C. 41(a) and (d)(1) as amended by
payment of the national fee apply to the any applicant who files a written the Consolidated Appropriations Act.
payment of the examination fee (35 declaration of express abandonment as Sections 1.16(a) through (e) set forth
U.S.C. 41(a)(3)) and search fee (35 prescribed by the Office before an the basic filing fees under the
U.S.C. 41(d)(1)) in an international examination has been made of the Consolidated Appropriations Act for
application filed under the Patent application under 35 U.S.C. 131. applications filed under 35 U.S.C. 111
Cooperation Treaty (PCT) and entering The revised patent fees specified in 35 on or after December 8, 2004: (1) The
the national stage under 35 U.S.C. 371. U.S.C. 41 apply to all patents, whenever basic filing fee for an original
See 35 U.S.C. 41(a)(3) and 41(d)(1)(C). granted, and to all applications pending nonprovisional utility application is
Thus, the examination fee and search on or filed after December 8, 2004, $300.00 ($150.00 for a small entity, and
fee are due on filing in an application except as follows: The provisions of 35 $75.00 for a small entity if the
filed under 35 U.S.C. 111(a) or on U.S.C. 41(a)(1) (filing fee and application is submitted in compliance
commencement of the national stage in application size fee), 35 U.S.C. 41(a)(3) with the Office electronic filing system);
a PCT international application, but (examination fee), and 35 U.S.C. (2) the basic filing fee for an original

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3882 Federal Register / Vol. 70, No. 17 / Thursday, January 27, 2005 / Rules and Regulations

design application is $200.00 ($100.00 December 8, 2004, and to applications number of independent claims of the
for a small entity); (3) the basic filing fee pending on or after December 8, 2004. original patent, and for each claim
for an original nonprovisional plant The Consolidated Appropriations Act (whether independent or dependent) in
application is $200.00 ($100.00 for a (Section 803(b)(1)(C) of Division B) excess of twenty and also in excess of
small entity); (4) the basic filing fee for provides that the excess claims fees the number of claims of the original
a provisional application is $200.00 specified in 35 U.S.C. 41(a)(2) shall patent. Thus (in addition to excess
($100.00 for a small entity); and (5) the apply only as to those claims claims under ‘‘former’’ 35 U.S.C. 41 for
basic filing fee for a reissue application (independent or dependent) that, after which the excess claims fee was not
is $300.00 ($150.00 for a small entity). taking into account any claims that have paid before December 8, 2004), the
See 35 U.S.C. 41(a)(1)(A) through (E). been canceled, are in excess of the excess claims fees specified in § 1.16(h)
The Consolidated Appropriations Act number of claims for which the excess and (i) are required for each
(Section 803(b)(1)(B)(i) of Division B) claims fee specified in 35 U.S.C. 41 was independent claim in excess of three
provides that the basic filing fees paid before December 8, 2004. Thus, the that is presented in a reissue application
specified in 35 U.S.C. 41(a)(1) (except Office will charge the excess claims fees on or after December 8, 2004, and for
for the filing fee specified in 35 U.S.C. specified in § 1.16(h) and (i) if an each claim (whether independent or
41(a)(1)(D) for a provisional application) applicant in an application filed before dependent) in excess of twenty that is
apply only to applications filed on or and pending on or after December 8, presented in a reissue application on or
after December 8, 2004. Therefore, 2004, adds a claim (independent or after December 8, 2004.
§ 1.16 also sets forth the basic filing fee total) in excess of the number of claims Section 1.16(j) sets forth the fee for an
for applications filed under 35 U.S.C. (independent or total) for which the application that contains a multiple
111 before December 8, 2004: (1) The excess claims fee was previously paid dependent claim (formerly in § 1.16(d)).
basic filing fee for an original (under the current or a previous fee See 35 U.S.C. 41(a)(2)(C).
nonprovisional utility application and schedule). Specifically, the excess Sections 1.16(k), (l), (m), and (n) set
for a reissue application is $790.00 claims fees specified in § 1.16(h) and (i) forth the search fees as provided for in
($395.00 for a small entity); (2) the basic apply to any excess claims fee paid on the Consolidated Appropriations Act
filing fee for an original design or after December 8, 2004, regardless of (Section 803(c)(1) of Division B) for
application is $350.00 ($175.00 for a the filing date of the application and applications filed under 35 U.S.C.
small entity); and (3) the basic filing fee regardless of the date on which the 111(a) on or after December 8, 2004. The
for an original nonprovisional plant claim necessitating the excess claims fee Consolidated Appropriations Act
application is $550.00 ($275.00 for a payment was added to the application. provides for the following search fees
small entity). See Revision of Patent For example, in an application (non- during fiscal years 2005 and 2006: (1)
Fees for Fiscal Year 2005, 69 FR 52604 $500.00 for the search of each
small entity) that contains six
(Aug. 27, 2004) (final rule), and Certain application for an original patent,
independent claims and thirty total
Fees to be Adjusted, 1285 Off. Gaz. Pat. except for design, plant, provisional, or
claims for which the excess claims fee
Office 185 (Aug. 31, 2004) (notice). international application; (2) $100.00 for
specified in § 1.16 was previously paid:
These basic filing fees apply to the search of each application for an
(1) No excess claims fee is due if the
applications filed before December 8, original design patent; (3) $300.00 for
applicant cancels ten claims, two of
2004, even if the basic filing fee is not the search of each application for an
which are independent, and adds ten
paid until on or after December 8, 2004. original plant patent; and (4) $500.00 for
claims, two of which are independent;
The Consolidated Appropriations Act the search of each application for the
(2) the excess claims fee for a seventh
(Section 803(b)(1)(B)(ii) of Division B) reissue of a patent. These search fee
independent claim ($200.00) is due if amounts supersede the search fee
also provides that the basic filing fee for
the applicant cancels ten claims, two of setting provisions of 35 U.S.C.
a provisional application applies to all
which are independent, and adds ten 41(d)(1)(A) and (B) (which authorize the
provisional applications filed before, on,
claims, three of which are independent; Office to set a cost-recovery based
or after December 8, 2004, in which the
(3) the excess claims fee for a thirty-first search fee, with a number of
filing fee was not paid before December
claim ($50.00) is due if the applicant limitations), but do not supersede
8, 2004.
Section 1.16(f) sets forth the late filing cancels ten claims, two of which are provisions for the payment of search
surcharge for a nonprovisional independent, and adds eleven claims, fees in 35 U.S.C. 41(d)(1)(C), the refund
application, and § 1.16(g) sets forth the two of which are independent; and (4) authorization provisions in 35 U.S.C.
late filing surcharge for a provisional the excess claims fees for a seventh 41(d)(1)(D), and the small entity
application (formerly in §§ 1.16(e) and independent claim ($200.00) and a reduction provisions in 35 U.S.C.
(l), respectively). See also §§ 1.53(f) and thirty-first claim ($50.00) are due if the 41(h)(1).
(g), respectively. applicant cancels ten claims, two of Sections 1.16(o), (p), (q), and (r) set
Section 1.16(h) sets forth the excess which are independent, and adds eleven forth the examination fees specified in
claims fee for each independent claim claims, three of which are independent. 35 U.S.C. 41(a)(3) for applications filed
in excess of three; namely, $200 ($100 The excess claims fees specified in under 35 U.S.C. 111(a) on or after
for a small entity) for each claim in § 1.16(h) and (i) also apply to all reissue December 8, 2004: (1) The examination
independent form in excess of three. See applications pending on or after fee for each application for an original
35 U.S.C. 41(a)(2)(A). December 8, 2004. Under 35 U.S.C. patent, except for design, plant, or
Section 1.16(i) sets forth the excess 41(a)(2) as amended by the Consolidated provisional applications, is $200.00
claims fee for each claim (whether Appropriations Act, the claims in the ($100.00 for a small entity); (2) the
dependent or independent) in excess of original patent are not taken into examination fee for each application for
twenty; namely, $50 ($25 for a small account in determining the excess an original design patent is $130.00
entity) for each claim (whether claims fee for a reissue application. ($65.00 for a small entity); (3) the
dependent or independent) in excess of Under ‘‘former’’ 35 U.S.C. 41, excess examination fee for each application for
twenty. See 35 U.S.C. 41(a)(2)(B). claims fees were required in reissue an original plant patent is $160.00
The excess claims fees specified in applications for each claim in ($80.00 for a small entity); and (4) the
§ 1.16 apply to applications filed before independent form in excess of the examination fee for each application for

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Federal Register / Vol. 70, No. 17 / Thursday, January 27, 2005 / Rules and Regulations 3883

the reissue of a patent is $600.00 to charge the applicable basic filing fee, Patent Fees for Fiscal Year 2004, 69 FR
($300.00 for a small entity). search fee, and examination fee to the at 52604, and Certain Fees to be
Section 1.16(s) sets forth the fee for deposit account. Any deposit account Adjusted, 1285 Off. Gaz. Pat. Office at
any application (including any authorization to charge the filing fee but 186.
provisional applications and any reissue not the search fee or examination fee Section 1.18: Section 1.18 is amended
application) filed under 35 U.S.C. 111 must specifically limit the authorization to set forth the patent issue fees as
on or after December 8, 2004, the by reference to one or more of specified in 35 U.S.C. 41(a)(4) as
specification and drawings of which, paragraphs (a) through (e) of § 1.16. amended by the Consolidated
excluding any sequence listing or The filing and processing fees for Appropriations Act: (1) The fee for
computer program listing filed in an international applications filed under 35 issuing an original utility patent or for
electronic medium as prescribed by the U.S.C. 363 are covered in §§ 1.445 and issuing a reissue patent is $1,400.00
Director (see § 1.52(f)), exceed 100 1.482, and the national fees (including ($700.00 for a small entity); (2) the fee
sheets of paper (the ‘‘application size search and examination fees) for for issuing an original design patent is
fee’’). The application size fee set forth applications entering the national stage $800.00 ($400.00 for a small entity); and
in § 1.16(s) is $250.00 ($125.00 for a under 35 U.S.C. 371 from international (3) the fee for issuing an original plant
small entity) for each additional 50 applications are covered in § 1.492. patent is $1,100.00 ($550.00). See 35
sheets or fraction thereof. See 35 U.S.C. Section 1.17: Section 1.17 is amended U.S.C. 41(a)(4).
41(a)(1)(G). to set forth the application processing Section 1.20: Section 1.20 is amended
The provision in 35 U.S.C. 41(a)(1)(G) fees as specified in 35 U.S.C. 41(a) as to provide that excess claims fees as
for the Office to prescribe the paper size amended by the Consolidated specified in 35 U.S.C. 41(a)(2) as
equivalent of an application filed in Appropriations Act. amended by the Consolidated
whole or in part in an electronic Section 1.17(a) sets forth the Appropriations Act are applicable to
medium for purposes of the fee extension fees for a petition for an excess claims proposed to be added to
specified in 35 U.S.C. 41(a)(1)(G) extension of time under 35 U.S.C. a patent by their presentation during a
(§ 1.16(s)) will be implemented in a 41(a)(8) and § 1.136(a): (1) the petition reexamination proceeding. Under
separate rule making. fee for reply within the first month is ‘‘former’’ 35 U.S.C. 41, excess claims
In situations in which a payment $120.00 ($60.00 for a small entity); (2) fees were included as part of the
submitted for the fees due on filing in the petition fee for reply within the ‘‘application’’ filing fee under 35 U.S.C.
a nonprovisional application filed under second month is $450.00 ($225.00 for a 41(a)(1), and thus did not apply during
35 U.S.C. 111(a) is insufficient and the small entity); (3) the petition fee for reexamination proceedings. The
applicant has not specified the fees to reply within the third month is Consolidated Appropriations Act does
which the payment is to be applied, the $1,020.00 ($510.00 for a small entity); not include the excess claims as part of
Office will apply the payment in the (4) the petition fee for reply within the the ‘‘application’’ filing fee under 35
following order until the payment is fourth month is $1,590.00 ($795.00 for U.S.C. 41(a)(1), but separately provides
expended: (1st) the basic filing fee a small entity); and (5) the petition fee for excess claims fees in 35 U.S.C.
(§ 1.16(a), (b), (c), or (e)); (2nd) the for reply within the fifth month is 41(a)(2) (as being in addition to the
application size fee (§ 1.16(s)); (3rd) the $2,160.00 ($1,080.00 for a small entity). filing fee in 35 U.S.C. 41(a)(1)). 35
late filing surcharge (§ 1.16(f)); (4th) the See 35 U.S.C. 41(a)(8). U.S.C. 41(a)(2) provides that an excess
processing fee for an application filed in Sections 1.17(l) and (m) set forth claims fee is due ‘‘on filing or on
a language other than English (§ 1.17(i)); petition fees for the revival of presentation at any other time’’ (e.g.,
(5th) the search fee (§ 1.16(k), (l), (m), or abandoned applications, the delayed during a reexamination proceeding) of
(n)); (6th) the examination fee (§ 1.16(o), payment of issue fees, or the delayed an independent claim in excess of three
(p), (q), or (r); and (7th) the excess response by the patent owner in or of a claim (whether independent or
claims fee (§§ 1.16(h), (i), and (j)). In reexamination proceedings: (1) the fee dependent) in excess of twenty. See H.
situations in which a payment under the unavoidable standard R. Rep. 108–241, at 15 (‘‘[t]he excess
submitted for the fees due on filing in provided for in § 1.137(a) is $500.00 claims fees required by [35 U.S.C.]
a provisional application filed under 35 ($250.00 for a small entity) (§ 1.17(l)); 41(a)(2) are due at the time of
U.S.C. 111(b) is insufficient and the and (2) the fee under the unintentional presentation of the claim for which
applicant has not specified the fees to standard provided for in § 1.137(b) is payment is required (whether on filing
which the payment is to be applied, the $1,500.00 ($750 for a small entity) or at a later time) in the application or
Office will apply the payment in the (§ 1.17(m)). See 35 U.S.C. 41(a)(7). reexamination proceeding’’).
following order until the payment is The Consolidated Appropriations Act Section 1.20(c)(3) specifically requires
expended: (1st) the basic filing fee does not revise the fees for: (1) A request $200 ($100 for a small entity) for each
(§ 1.16(d)); (2nd) the application size fee for continued examination under 35 claim in independent form in excess of
(§ 1.16(s)); and (3rd) the late filing U.S.C. 132(b) and § 1.114; (2) a three that is also in excess of the
surcharge (§ 1.16(g)). submission after final rejection under number of claims in independent form
Since the basic filing fee, search fee, § 1.129(a); or (3) each additional in the patent under reexamination.
and examination fee under the new invention to be examined under Section 1.20(c)(4) specifically requires
patent fee structure are often referred to § 1.129(b). Therefore: (1) the fee for a $50 ($25 for a small entity) for each
as the ‘‘filing fee,’’ the Office will treat request for continued examination claim (whether dependent or
a deposit account authorization to under 35 U.S.C. 132(b) and § 1.114 independent) in excess of twenty that is
charge ‘‘the filing fee’’ as an remains at $790.00 ($395.00 for a small also in excess of the number of claims
authorization to charge the applicable entity); (2) the fee for a submission after in the patent under reexamination. A
fees under 1.16 (the basic filing fee, final rejection under § 1.129(a) remains claim that has been disclaimed under 35
search fee, examination fee, any excess at $790.00 ($395.00 for a small entity); U.S.C. 253 and § 1.321(a) as of the date
claims fee, and any application size fee) and (3) the fee for each additional of filing of the request for reexamination
to the deposit account, and will treat a invention to be examined under is not considered to be a claim in the
deposit account authorization to charge § 1.129(b) remains at $790.00 ($395.00 patent under reexamination for
‘‘the basic filing fee’’ as an authorization for a small entity). See Revision of purposes of excess claims fee

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3884 Federal Register / Vol. 70, No. 17 / Thursday, January 27, 2005 / Rules and Regulations

calculations. Section 1.20(c)(5) provides after grant is $3,800.00 ($1,900.00 for a will be excluded when determining the
that if the excess claims fees required by small entity). See 35 U.S.C. 41(b). application size fee required by § 1.16(s)
§ 1.20(c)(3) and (c)(4) are not paid with Section 1.27: Section 1.27(b) is or § 1.492(j). See 35 U.S.C. 41(a)(1)(G)
the request for reexamination or on later amended to implement the provision of (which provides that a sequence listing
presentation of the claims for which the 35 U.S.C. 41(h)(3), which provides that or a computer program listing is
excess claims fees are due, the fees the fee charged under 35 U.S.C. excluded if filed in an electronic
required by § 1.20(c)(3) and (c)(4) must 41(a)(1)(A) shall be reduced by 75 medium as prescribed by the Director).
be paid or the claims canceled by percent with respect to its application to Section 1.52(f)(2) is added to provide
amendment prior to the expiration of any small entity ‘‘if the application is that the paper size equivalent of the
the time period set for reply by the filed by electronic means as prescribed specification and drawings of an
Office in any notice of fee deficiency. by the Director.’’ See 35 U.S.C. 41(h)(3). application submitted via the Office
The excess claims fees specified in Since 35 U.S.C. 41(h)(3) applies only to electronic filing system will be
§ 1.20(c) apply to all patents, whenever the filing fee charged under 35 U.S.C. considered to be the number of sheets
granted, for each independent claim in 41(a)(1)(A) (the filing fee for a of paper present in the specification and
excess of three and also in excess of the nonprovisional original utility drawings of the application when
number of independent claims in the application under 35 U.S.C. 111(a)), its entered into the Office file wrapper
patent or for each claim (whether 75 percent fee reduction does not apply (currently in the Office image file
independent or dependent) in excess of to design or plant applications, reissue wrapper system) after being rendered by
twenty and also in excess of the number applications, or provisional the Office electronic filing system for
of claims in the patent that is presented applications. In any event, the Office purposes of computing the application
in a reexamination proceeding on or electronic filing system does not size fee required by § 1.16(s). See 35
after December 8, 2004 (since no excess currently provide for design or plant U.S.C. 41(a)(1)(G) (which provides that
claims fee was due under 35 U.S.C. 41 applications, or for international the Director shall prescribe the paper
for any claim presented during a applications filed under the PCT which size equivalent of an application filed in
reexamination proceeding before are entering the national stage under 35 an electronic medium). Section
December 8, 2004). For example, in a U.S.C. 371. 1.52(f)(2) further provides that any
patent (non-small entity) that contains Section 1.27(b)(1) contains the sequence listing in compliance with
(including as a result of a previous preexisting provisions of § 1.27(b). § 1.821(c) or (e), and any computer
reexamination proceeding) six Section 1.27(b)(2) provides that program listing in compliance with
independent claims and thirty total submission of an original utility § 1.96, submitted via the Office
claims: (1) No excess claims fee is due application in compliance with the electronic filing system will be excluded
if the patent owner cancels ten claims, Office electronic filing system by an when determining the application size
two of which are independent, and adds applicant who has properly asserted fee required by § 1.16(s) if the listing is
ten claims, two of which are entitlement to small entity status submitted in American Standard Code
independent; (2) the excess claims fee pursuant to § 1.27(c) in the particular for Information Interchange (ASCII) text
for a seventh independent claim original utility application allows the as part of an associated file of the
($200.00) is due if the patent owner payment of a reduced filing fee pursuant application. That is, for applications
cancels ten claims, two of which are to 35 U.S.C. 41(h)(3) (currently $75.00). filed via the Office electronic filing
independent, and adds ten claims, three Section 1.27(c) is amended to revise system, a sequence listing or a computer
of which are independent; (3) the excess its reference to §§ 1.16 and 1.492 to program listing is ‘‘filed in an electronic
claims fee for a thirty-first claim reflect the corresponding changes to medium as prescribed by the Director’’
($50.00) is due if the patent owner §§ 1.16 and 1.492. for purposes of 35 U.S.C. 41(a)(1)(G)
cancels ten claims, two of which are Section 1.33: Section 1.33(c) is only if the listing is submitted in ASCII
independent, and adds eleven claims, amended to re-insert text that was text as part of an associated file of the
two of which are independent; and (4) inadvertently deleted in the final rule application. Thus, for example,
the excess claims fees for a seventh Changes to Representation of Others sequence listings or computer program
independent claim ($200.00) and a Before the United States Patent and listings submitted via the Office
thirty-first claim ($50.00) are due if the Trademark Office, 69 FR 35427 (June electronic filing system in Portable
patent owner cancels ten claims, two of 24, 2004). Document Format (PDF) as part of the
which are independent, and adds eleven Section 1.51: Section 1.51(b)(4) is specification or as Tagg(ed) Image File
claims, three of which are independent. amended to indicate that a complete Format (TIFF) drawing files would not
Section 1.20(d) sets forth the fee for application under §§ 1.53(b) or 1.53(d) be excluded when determining the
filing a disclaimer under 35 U.S.C. 253 (nonprovisional applications filed under application size fee required by § 1.16(s)
and § 1.321 in a patent application or 35 U.S.C. 111(a)) includes the or § 1.492(j).
patent: $130.00 ($65 for a small entity). prescribed filing fee, search fee, Section 1.53: Sections 1.53(c), (f) and
See 35 U.S.C. 41(a)(5). examination fee, and application size (g) are amended to revise their
Sections 1.20(e), (f), and (g) are fee. Section 1.51(c)(4) is amended to references to § 1.16 to reflect the
amended to set forth the patent indicate that a complete application corresponding changes to § 1.16.
maintenance fees as specified in 35 under § 1.53(c) (provisional applications Section 1.53(f) is further amended to
U.S.C. 41(b) as amended by the filed under 35 U.S.C. 111(b)) includes provide for any application under
Consolidated Appropriations Act: (1) the prescribed filing fee and application § 1.53(b), or any continued prosecution
the first maintenance fee due at three size fee. application (CPA) under § 1.53(d) (for
years and six months after grant is Section 1.52: Section 1.52(f)(1) is design applications), that does not also
$900.00 ($450.00 for a small entity); (2) added to provide that any sequence include the search fee and the
the second maintenance fee due at listing in an electronic medium in examination fee. Section 1.53(f)
seven years and six months after grant compliance with §§ 1.52(e) and 1.821(c) specifically provides that if an
is $2,300.00 ($1,150.00 for a small or (e), and any computer program listing application under § 1.53(b) or a CPA
entity); and (3) the third maintenance filed in an electronic medium in under § 1.53(d) does not include the
fee due at eleven years and six months compliance with §§ 1.52(e) and 1.96, search fee and the examination fee: (1)

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Applicant will be notified and given a Section 1.78: Section 1.78(a) is application entering the national stage
period of time within which to pay the amended to revise its reference to § 1.16 under 35 U.S.C. 371 for which the basic
search fee and examination fee to avoid to reflect the corresponding changes to national fee specified in 35 U.S.C. 41
abandonment if applicant has provided § 1.16. was paid before December 8, 2004,
a correspondence address (§ 1.33(a)); Section 1.84: Section 1.84(y) is because (by definition) the basic
and (2) applicant has two months from amended to correct an errant cross- national fee for such an application was
the filing date of the application within reference to former § 1.174. paid before the effective date of the
which to pay the search fee and Section 1.111: Section 1.111(a)(2)(i) is Consolidated Appropriations Act and
examination fee to avoid abandonment amended to correct a typographical this final rule.
if applicant has not provided a error. Section 1.492(d) sets forth the excess
correspondence address. Section 1.136: Section 1.136(b) is claims fee for each independent claim
Section 1.53(f) is also amended to amended to correct an errant cross- in excess of three; namely, $200 ($100
include the provisions formerly in reference to former § 1.645. for a small entity) for each claim in
§ 1.16(m) that if the excess claims fees Section 1.211: Section 1.211 is independent form in excess of three. See
required by §§ 1.16(h) and (i) and amended to revise its reference to § 1.16 35 U.S.C. 41(a)(2)(A).
multiple dependent claim fee required to reflect the corresponding changes to Section 1.492(e) sets forth the excess
by § 1.16(j) are not paid on filing or on § 1.16. Section 1.211 is also amended to claims fee for each claim (whether
later presentation of the claims for provide that the Office may delay dependent or independent) in excess of
which the excess claims or multiple publishing any application until it twenty; namely, $50 ($25 for a small
dependent claim fees are due, the fees includes any application size fee entity) for each claim (whether
required by §§ 1.16(h), (i), and (j) must required by the Office under § 1.16(s) or dependent or independent) in excess of
be paid or the claims canceled by § 1.492(j). twenty. See 35 U.S.C. 41(a)(2)(B).
amendment prior to the expiration of Section 1.324: Section 1.324(a) is
Section 1.492(f) sets forth the fee for
the time period set for reply by the amended to correct an errant cross-
an application that contains a multiple
Office in any notice of fee deficiency in reference to former § 1.634.
dependent claim (formerly in
Section 1.445: Section 1.445(a) is
order to avoid abandonment. § 1.492(d)). See 35 U.S.C. 41(a)(2)(C).
amended to provide that the search fee
Section 1.53(f) is also amended to Section 1.492(g) provides that if the
set forth in § 1.445(a)(2)(i) is applicable
provide that if the application size fee excess claims fees required by § 1.492(d)
only if a corresponding prior United
required by § 1.16(s) (if any) is not paid and (e) and multiple dependent claim
States national application has been
on filing or on later presentation of the fee required by § 1.492(f) are not paid
filed under 35 U.S.C. 111(a) and the
amendment necessitating a fee or with the basic national fee or on later
basic filing fee, search fee, and the
additional fee under § 1.16(s), the fee presentation of the claims for which the
examination fee have been paid therein.
required by § 1.16(s) must be paid prior Section 1.492: Section 1.492 is excess claims or multiple dependent
to the expiration of the time period set amended to set forth the basic national, claim fees are due, the fees required by
for reply by the Office in any notice of search, and examination fees for an § 1.492(d), (e), and (f) must be paid or
fee deficiency in order to avoid international application entering the the claims canceled by amendment
abandonment. The submission of an national stage under 35 U.S.C. 371. prior to the expiration of the time period
amendment in reply to any Office action Section 1.492(a) sets forth the basic set for reply by the Office in any notice
or notice which necessitates an national fee for an international of fee deficiency in order to avoid
application size fee or additional application entering the national stage abandonment.
application size fee under § 1.16(s) and under 35 U.S.C. 371: $300.00 ($150.00 Section 1.492(h) sets forth the
which does not also include the for a small entity). See 35 U.S.C. surcharge for filing the oath or
requisite application size fee under 41(a)(1)(F). declaration later than thirty months
§ 1.16(s) is a reply having an omission Section 1.492(b) sets forth the search from the priority date pursuant to
under § 1.703(c)(7), which will result in fees for an international application § 1.495(c) (formerly in § 1.492(e)).
a reduction of any patent term entering the national stage under 35 Section 1.492(i) sets forth the
adjustment by the number of days (if U.S.C. 371. The Consolidated processing fee for filing an English
any) beginning on the day after the date Appropriations Act (Section 803(c)(1) of translation of an international
the reply lacking the requisite Division B) provides a search fee of application or of any annexes to an
application size under § 1.16(s) was $500.00 ($250 for a small entity) for the international preliminary examination
filed and ending no earlier than the date search of the national stage of each report later than thirty months after the
that the requisite application size fee international application during fiscal priority date (§§ 1.495(c) and (e))
under § 1.16(s) was filed. See years 2005 and 2006. (formerly in § 1.492(f)).
§ 1.703(c)(7). Section 1.492(c) sets forth the Section 1.492(j) sets forth the fee for
Section 1.53(g) is also amended to examination fee for an international any international application for which
provide that if the application size fee application entering the national stage the basic national fee was not paid
required by § 1.16(s) (if any) is not paid under 35 U.S.C. 371: $200.00 ($100.00 before December 8, 2004, the
on filing, the fee required by § 1.16(s) for a small entity). See 35 U.S.C. specification and drawings of which,
must be paid prior to the expiration of 41(a)(3). excluding any sequence listing or
the time period set for reply by the The basic national fee, search fee, and computer program listing filed in an
Office in any notice of fee deficiency in examination fee specified in § 1.492(a), electronic medium as prescribed by the
order to avoid abandonment. (b), and (c) apply only to international Director (see § 1.52(f)), exceed 100
Section 1.69: Section 1.69 is amended applications entering the national stage sheets of paper (the ‘‘application size
to correct typographical errors. under 35 U.S.C. 371 for which the basic fee’’). The application size fee set forth
Section 1.75: Section 1.75(c) is national fee specified in 35 U.S.C. 41 in § 1.492(j) is $250.00 ($125.00 for a
amended to revise its reference to § 1.16 was not paid before December 8, 2004. small entity) for each additional 50
to reflect the corresponding changes to Section 1.492 does not also specify the sheets or fraction thereof. See 35 U.S.C.
§ 1.16. basic national fee for an international 41(a)(1)(G).

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3886 Federal Register / Vol. 70, No. 17 / Thursday, January 27, 2005 / Rules and Regulations

In situations in which a payment ($500.00 for a small entity). See 35 the time for reviewing instructions,
submitted for the fees due in an U.S.C. 41(a)(6). gathering and maintaining the data
international application entering the needed, and completing and reviewing
Rule Making Considerations
national stage under 35 U.S.C. 371 and the collection of information.
§ 1.495 is insufficient and the applicant Administrative Procedure Act: The OMB Number: 0651–0016.
has not specified the fees to which the changes in this final rule merely revise Title: Rules for Patent Maintenance
payment is to be applied, the Office will the rules of practice to conform to the Fees.
apply the payment in the following patent fees specified in 35 U.S.C. 41 as Form Numbers: PTO/SB/45/47/65/66.
order until the payment is expended: amended by the Consolidated Type of Review: Approved through
(1st) the basic national fee (§ 1.492(a)); Appropriations Act (Pub. L. 108–447). May of 2006.
(2nd) the application size fee Therefore, these rule changes involve Affected Public: Individuals or
(§ 1.492(j)); (3rd) the surcharge for filing interpretive rules or rules of agency Households, Business or Other For-
the oath or declaration later than thirty practice and procedure under 5 U.S.C. Profit Institutions, Not-For-Profit
months from the priority date 553(b)(A). See Bachow Communications Institutions and Federal Government.
(§ 1.492(h)); (4th) the processing fee for Inc. v. FCC, 237 F.3d 683, 690 (D.C. Cir. Estimated Number of Respondents:
filing an English translation later than 2001); Paralyzed Veterans of America v. 348,140.
thirty months after the priority date West, 138 F.3d 1434, 1436 (Fed. Cir. Estimated Time Per Response:
(§ 1.492(i)); (5th) the search fee 1998); Komjathy v. National Between 20 seconds and 8 hours.
(§ 1.492(b)); (6th) the examination fee Transportation Safety Board, 832 F.2d Estimated Total Annual Burden
(§ 1.492(c)); and (7th) the excess claims 1294, 1296–97 (D.C. Cir. 1987). Hours: 30,735 hours.
fee (§§ 1.492(d), (e), and (f)). Accordingly, the changes in this final Needs and Uses: Maintenance fees are
rule may be adopted without prior required to maintain a patent, except for
Section 1.495: Section 1.495(c) is
notice and opportunity for public design or plant patents, in force under
subdivided into § 1.495(c)(1) through
comment under 5 U.S.C. 553(b) and (c), 35 U.S.C. 41(b). Payment of
(c)(4). Section 1.495(c)(1) provides that
or thirty-day advance publication under maintenance fees are required at 31⁄2,
if applicant complies with § 1.495(b)
5 U.S.C. 553(d) or 35 U.S.C. 41(g). 71⁄2 and 111⁄2 years after the grant of the
before expiration of thirty months from Regulatory Flexibility Act: As prior
the priority date, the Office will notify patent. A patent number and
notice and an opportunity for public
the applicant if he or she has omitted application number of the patent on
comment are not required pursuant to 5
any of: (1) A translation of the which maintenance fees are paid are
U.S.C. 553 (or any other law), neither a
international application, as filed, into required in order to ensure proper
regulatory flexibility analysis nor a
the English language, if it was originally crediting of such payments.
certification under the Regulatory
filed in another language (35 U.S.C. Flexibility Act (5 U.S.C. 601 et seq.) are OMB Number: 0651–0021.
371(c)(2)); (2) the oath or declaration of required. See 5 U.S.C. 603. Title: Patent Cooperation Treaty.
the inventor (35 U.S.C. 371(c)(4) and Executive Order 13132: This rule Form Numbers: PCT/RO/101, PCT/
§ 1.497), if a declaration of inventorship making does not contain policies with RO/134, PCT/IPEA/401, PTO–1382,
in compliance with § 1.497 has not been federalism implications sufficient to PTO–1390, PTO/SB/61/PCT, PTO/SB/
previously submitted in the warrant preparation of a Federalism 64/PCT, PCT/Model of power of
international application under PCT Assessment under Executive Order attorney, PCT/Model of general power
Rule 4.17(iv) within the time limits 13132 (Aug. 4, 1999). of attorney.
provided for in PCT Rule 26ter.1; (3) the Executive Order 12866: This rule Type of Review: Approved through
search fee set forth in § 1.492(b); (4) the making has been determined to be not March of 2007.
examination fee set forth in § 1.492(c); significant for purposes of Executive Affected Public: Individuals or
and (5) any application size fee set forth Order 12866 (Sept. 30, 1993). Households, Business or Other For-
in § 1.492(j). Section 1.495(c)(2) Paperwork Reduction Act: This final Profit Institutions, Not-for-Profit
provides that a notice under rule involves information collection Institutions, Farms, Federal
§ 1.495(c)(1) will set a period of time requirements that are subject to review Government, and State, Local or Tribal
within which applicant must provide by the Office of Management and Government.
any omitted translation, oath or Budget (OMB) under the Paperwork Estimated Number of Respondents:
declaration of the inventor, search fee Reduction Act of 1995 (44 U.S.C. 3501 355,655.
set forth in § 1.492(b), examination fee et seq.). The collections of information Estimated Time Per Response:
set forth in § 1.492(c), and any involved in this final rule have been Between 15 minutes and 8 hours.
application size fee set forth in § 1.492(j) reviewed and previously approved by Estimated Total Annual Burden
in order to prevent abandonment of the OMB under the following control Hours: 347,889.
application. Section 1.495(c)(3) and numbers: 0651–0016, 0651–0021, 0651– Needs and Uses: The information
(c)(4) contain existing provisions of 0031, 0651–0032, and 0651–0033. The collected is required by the Patent
§ 1.495(c). Office is not resubmitting information Cooperation Treaty (PCT). The general
Section 41.20: Section 41.20(b) sets collection packages to OMB for its purpose of the PCT is to simplify the
forth appeal fees: (1) The fee for filing review and approval because the filing of patent applications on the same
a notice of appeal from the examiner to changes in this final rule do not affect invention in different countries. It
the Board of Patent Appeals and the information collection requirements provides for a centralized filing
Interferences is $500.00 ($250.00 for a associated with the information procedure and a standardized
small entity); (2) the additional fee for collections under these OMB control application format.
filing a brief in support of an appeal is numbers. OMB Number: 0651–0031.
$500.00 ($250.00 for a small entity); and The title, description and respondent Title: Patent Processing (Updating).
(3) the additional fee for filing a request description of each of the information Form Numbers: PTO/SB/08A, PTO/
for an oral hearing before the Board of collections are shown below with an SB/08B, PTO/SB/17i, PTO/SB/17p,
Patent Appeals and Interferences in an estimate of each of the annual reporting PTO/SB/21–27, PTO/SB/30–37, PTO/
appeal under 35 U.S.C. 134 is $1,000.00 burdens. Included in each estimate is SB/42–43, PTO/SB/61–64, PTO/SB/64a,

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Federal Register / Vol. 70, No. 17 / Thursday, January 27, 2005 / Rules and Regulations 3887

PTO/SB/67–68, PTO/SB/91–92, PTO/ Application Transmittal form, to nor shall a person be subject to a
SB/96–97, PTO–2053–A/B, PTO–2054– Declaration, Provisional Application penalty for failure to comply with a
A/B, PTO–2055–A/B, PTOL–413A. Cover Sheet, and Plant Patent collection of information subject to the
Type of Review: Approved through Application Declaration will assist requirements of the Paperwork
July of 2006. applicants in complying with the Reduction Act unless that collection of
Affected Public: Individuals or requirements of the patent statute and information displays a currently valid
Households, Business or Other For- regulations, and will further assist the OMB control number.
Profit Institutions, Not-for-Profit Office in processing and examination of
List of Subjects
Institutions, Farms, Federal Government the application.
and State, Local and Tribal OMB Number: 0651–0033. 37 CFR Part 1
Governments. Title: Post Allowance and Refiling. Administrative practice and
Estimated Number of Respondents: Form Numbers: PTO/SB/44, PTO/SB/
procedure, Courts, Freedom of
2,281,439. 50–51, PTO/SB/51S, PTO/SB/52–53,
information, Inventions and patents,
Estimated Time Per Response: 1 PTO/SB/56–58, PTOL–85B.
Reporting and recordkeeping
minute and 48 seconds to 8 hours. Type of Review: Approved through
requirements, Small businesses.
Estimated Total Annual Burden April of 2007.
Hours: 2,731,841 hours. Affected Public: Individuals or 37 CFR Part 41
Needs and Uses: During the Households, Business or Other For-
Administrative practice and
processing for an application for a Profit Institutions, Not-For-Profit
procedure, Inventions and patents,
patent, the applicant/agent may be Institutions, Farms, State, Local and
Lawyers.
required or desire to submit additional Tribal Governments, and Federal
information to the United States Patent Government. ■ For the reasons set forth in the
and Trademark Office concerning the Estimated Number of Respondents: preamble, 37 CFR Parts 1 and 41 are
examination of a specific application. 223,411. amended as follows:
The specific information required or Estimated Time Per Response: 1.8
minutes to 2 hours. PART 1—RULES OF PRACTICE IN
which may be submitted includes:
Estimated Total Annual Burden PATENT CASES
Information disclosure statements and
Hours: 67,261 hours.
citations, requests for extensions of Needs and Uses: This collection of ■ 1. The authority citation for 37 CFR
time, the establishment of small entity information is required to administer Part 1 continues to read as follows:
status; abandonment and revival of the patent laws pursuant to Title 35, Authority: 35 U.S.C. 2(b)(2).
abandoned applications, disclaimers, U.S.C., concerning the issuance of
requests for expedited examination of ■ 2. Section 1.16 is revised to read as
patents and related actions including follows:
design applications, transmittal forms, correcting errors in printed patents,
requests to inspect, copy and access refiling of patent applications, § 1.16 National application filing, search,
patent applications, nonpublication requesting reexamination of a patent, and examination fees.
requests, certificates of mailing or and requesting a reissue patent to (a) Basic fee for filing each application
transmission, submission of priority correct an error in a patent. The affected under 35 U.S.C. 111 for an original
documents and amendments. public includes any individual or patent, except design, plant, or
OMB Number: 0651–0032. institution whose application for a provisional applications:
Title: Initial Patent Application. patent has been allowed or who takes (1) For an application filed on or after
Form Number: PTO/SB/01–07, PTO/ action as covered by the applicable December 8, 2004:
SB/13PCT, PTO/SB/16–19, PTO/SB/29 rules. By a small entity (§ 1.27(a)) if the
and 29A, PTO/SB/101–110, Electronic Comments are invited on: (1) Whether application is submitted in compliance
New Utility and Provisional Application the collection of information is with the Office electronic filing system
Forms. necessary for proper performance of the (§ 1.27(b)(2))—$75.00.
Type of Review: Approved through functions of the agency; (2) the accuracy By a small entity (§ 1.27(a))—$150.00.
July of 2006. of the agency’s estimate of the burden; By other than a small entity—$300.00.
Affected Public: Individuals or (3) ways to enhance the quality, utility, (2) For an application filed before
Households, Business or Other For- and clarity of the information to be December 8, 2004:
Profit Institutions, Not-For-Profit collected; and (4) ways to minimize the By a small entity (§ 1.27(a))—$395.00.
Institutions, Farms, Federal burden of the collection of information By other than a small entity—$790.00.
Government, and State, Local, or Tribal to respondents. (b) Basic fee for filing each
Governments. Interested persons are requested to application for an original design
Estimated Number of Respondents: send comments regarding these patent:
454,287. information collections, including (1) For an application filed on or after
Estimated Time Per Response: 22 suggestions for reducing this burden, to December 8, 2004:
minutes to 10 hours and 45 minutes. Robert J. Spar, Director, Office of Patent By a small entity (§ 1.27(a))—$100.00.
Estimated Total Annual Burden Legal Administration, United States By other than a small entity—$200.00.
Hours: 4,171,568 hours. Patent and Trademark Office, P.O. Box (2) For an application filed before
Needs and Uses: The purpose of this 1450, Alexandria, VA 22313–1450, or to December 8, 2004:
information collection is to permit the the Office of Information and Regulatory By a small entity (§ 1.27(a))—$175.00.
Office to determine whether an Affairs of OMB, New Executive Office By other than a small entity—$350.00.
application meets the criteria set forth Building, 725 17th Street, NW., Room (c) Basic fee for filing each application
in the patent statute and regulations. 10235, Washington, DC 20503, for an original plant patent:
The standard Fee Transmittal form, New Attention: Desk Officer for the United (1) For an application filed on or after
Utility Patent Application Transmittal States Patent and Trademark Office. December 8, 2004:
form, New Design Patent Application Notwithstanding any other provision By a small entity (§ 1.27(a))—$100.00.
Transmittal form, New Plant Patent of law, no person is required to respond By other than a small entity—$200.00.

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(2) For an application filed before By a small entity (§ 1.27(a))—$150.00. (l) For filing a petition for the revival
December 8, 2004: By other than a small entity—$300.00. of an unavoidably abandoned
By a small entity (§ 1.27(a))—$275.00. (n) Search fee for each application application under 35 U.S.C. 111, 133,
By other than a small entity—$550.00. filed on or after December 8, 2004, for 364, or 371, for the unavoidably delayed
(d) Basic fee for filing each the reissue of a patent: payment of the issue fee under 35 U.S.C.
provisional application: By a small entity (§ 1.27(a))—$250.00. 151, or for the revival of an unavoidably
By a small entity (§ 1.27(a))—$100.00. By other than a small entity—$500.00. terminated reexamination proceeding
By other than a small entity—$200.00. (o) Examination fee for each under 35 U.S.C. 133 (§ 1.137(a)):
(e) Basic fee for filing each application application filed under 35 U.S.C. 111 on By a small entity (§ 1.27(a))—$250.00.
for the reissue of a patent: or after December 8, 2004, for an
(1) For an application filed on or after By other than a small entity—$500.00.
original patent, except design, plant, or (m) For filing a petition for the revival
December 8, 2004:
By a small entity (§ 1.27(a))—$150.00. provisional applications: of an unintentionally abandoned
By other than a small entity—$300.00. By a small entity (§ 1.27(a))—$100.00. application, for the unintentionally
(2) For an application filed before By other than a small entity—$200.00. delayed payment of the fee for issuing
December 8, 2004: (p) Examination fee for each a patent, or for the revival of an
By a small entity (§ 1.27(a))—$395.00. application filed on or after December 8, unintentionally terminated
By other than a small entity—$790.00. 2004, for an original design patent: reexamination proceeding under 35
(f) Surcharge for filing the basic filing By a small entity (§ 1.27(a))—$65.00. U.S.C. 41(a)(7) (§ 1.137(b)):
fee or oath or declaration on a date later By other than a small entity—$130.00. By a small entity (§ 1.27(a))—$750.00.
than the filing date of the application, (q) Examination fee for each By other than a small entity—
except provisional applications: application filed on or after December 8, $1,500.00.
By a small entity (§ 1.27(a))—$65.00. 2004, for an original plant patent: * * * * *
By other than a small entity—$130.00. By a small entity (§ 1.27(a))—$80.00.
(g) Surcharge for filing the basic filing ■ 4. Section 1.18 is amended by revising
By other than a small entity—$160.00.
fee or cover sheet (§ 1.51(c)(1)) on a date paragraphs (a) through (c) to read as
(r) Examination fee for each
later than the filing date of the follows:
application filed on or after December 8,
provisional application: 2004, for the reissue of a patent: § 1.18 Patent post allowance (including
By a small entity (§ 1.27(a))—$25.00. By a small entity (§ 1.27(a))—$300.00. issue) fees.
By other than a small entity—$50.00. By other than a small entity—$600.00.
(h) In addition to the basic filing fee (a) Issue fee for issuing each original
(s) Application size fee for any patent, except a design or plant patent,
in an application, other than a application under 35 U.S.C. 111 filed on
provisional application, for filing or or for issuing each reissue patent:
or after December 8, 2004, the By a small entity (§ 1.27(a))—$700.00.
later presentation at any other time of specification and drawings of which
each claim in independent form in By other than a small entity—
exceed 100 sheets of paper, for each $1,400.00.
excess of 3: additional 50 sheets or fraction thereof:
By a small entity (§ 1.27(a))—$100.00. (b) Issue fee for issuing an original
By a small entity (§ 1.27(a))—$125.00. design patent:
By other than a small entity—$200.00.
(i) In addition to the basic filing fee By other than a small entity—$250.00. By a small entity (§ 1.27(a))—$400.00.
in an application, other than a Note to § 1.16: See §§ 1.445, 1.482 and By other than a small entity—$800.00.
provisional application, for filing or 1.492 for international application filing and (c) Issue fee for issuing an original
later presentation at any other time of processing fees. plant patent:
each claim (whether dependent or By a small entity (§ 1.27(a))—$550.00.
■ 3. Section 1.17 is amended by revising
independent) in excess of 20 (note that By other than a small entity—
paragraphs (a), (l) and (m) to read as
§ 1.75(c) indicates how multiple $1,100.00.
follows:
dependent claims are considered for fee * * * * *
calculation purposes): § 1.17 Patent application and ■ 5. Section 1.20 is amended by revising
By a small entity (§ 1.27(a))—$25.00. reexamination processing fees.
paragraphs (c) through (g) to read as
By other than a small entity—$50.00. (a) Extension fees pursuant to follows:
(j) In addition to the basic filing fee in § 1.136(a):
an application, other than a provisional (1) For reply within first month: § 1.20 Post issuance fees.
application, that contains, or is By a small entity (§ 1.27(a))—$60.00. * * * * *
amended to contain, a multiple By other than a small entity—$120.00. (c) In reexamination proceedings
dependent claim, per application: (2) For reply within second month: (1) For filing a request for ex parte
By a small entity (§ 1.27(a))—$180.00. By a small entity (§ 1.27(a))—$225.00. reexamination (§ 1.510(a))—$2,520.00.
By other than a small entity—$360.00. By other than a small entity—$450.00. (2) For filing a request for inter partes
(k) Search fee for each application (3) For reply within third month: reexamination (§ 1.915(a))—$8,800.00.
filed under 35 U.S.C. 111 on or after By a small entity (§ 1.27(a))—$510.00. (3) For filing with a request for
December 8, 2004, for an original patent, By other than a small entity— reexamination or later presentation at
except design, plant, or provisional $1,020.00. any other time of each claim in
applications: (4) For reply within fourth month:
By a small entity (§ 1.27(a))—$250.00. independent form in excess of 3 and
By a small entity (§ 1.27(a))—$795.00. also in excess of the number of claims
By other than a small entity—$500.00.
(l) Search fee for each application By other than a small entity— in independent form in the patent under
filed on or after December 8, 2004, for $1,590.00. reexamination:
an original design patent: (5) For reply within fifth month: By a small entity (§ 1.27(a))—$100.00.
By a small entity (§ 1.27(a))—$50.00. By a small entity (§ 1.27(a))— By other than a small entity—$200.00.
By other than a small entity—$100.00. $1,080.00. (4) For filing with a request for
(m) Search fee for each application By other than a small entity— reexamination or later presentation at
filed on or after December 8, 2004, for $2,160.00. any other time of each claim (whether
an original plant patent: * * * * * dependent or independent) in excess of

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20 and also in excess of the number of (1) A small entity, as defined in and 11.11 of this subchapter, or, if no
claims in the patent under paragraph (a) of this section, who has attorney or agent is of record, to the
reexamination (note that § 1.75(c) properly asserted entitlement to small patent owner or owners at the address
indicates how multiple dependent entity status pursuant to paragraph (c) of or addresses of record. Amendments
claims are considered for fee calculation this section will be accorded small and other papers filed in a
purposes): entity status by the Office in the reexamination proceeding on behalf of
By a small entity (§ 1.27(a))—$25.00. particular application or patent in the patent owner must be signed by the
By other than a small entity—$50.00. which entitlement to small entity status patent owner, or if there is more than
(5) If the excess claims fees required was asserted. Establishment of small one owner by all the owners, or by an
by paragraphs (c)(3) and (c)(4) are not entity status allows the payment of attorney or agent of record in the patent
paid with the request for reexamination certain reduced patent fees pursuant to file, or by a registered attorney or agent
or on later presentation of the claims for 35 U.S.C. 41(h)(1). not of record who acts in a
which the excess claims fees are due, (2) Submission of an original utility representative capacity under the
the fees required by paragraphs (c)(3) application in compliance with the provisions of § 1.34. Double
and (c)(4) must be paid or the claims Office electronic filing system by an correspondence with the patent owner
canceled by amendment prior to the applicant who has properly asserted or owners and the patent owner’s
expiration of the time period set for entitlement to small entity status attorney or agent, or with more than one
reply by the Office in any notice of fee pursuant to paragraph (c) of this section attorney or agent, will not be
deficiency in order to avoid in that application allows the payment undertaken. If more than one attorney or
abandonment. of a reduced filing fee pursuant to 35 agent is of record and a correspondence
(d) For filing each statutory disclaimer U.S.C. 41(h)(3). address has not been specified,
(§ 1.321): (c) * * * correspondence will be held with the
By a small entity (§ 1.27(a))—$65.00. (3) Assertion by payment of the small last attorney or agent made of record.
By other than a small entity—$130.00. entity basic filing or basic national fee.
(e) For maintaining an original or The payment, by any party, of the exact * * * * *
reissue patent, except a design or plant amount of one of the small entity basic ■ 8. Section 1.51 is amended by revising
patent, based on an application filed on filing fees set forth in §§ 1.16(a), 1.16(b), paragraphs (b)(4) and (c)(4) to read as
or after December 12, 1980, in force 1.16(c), 1.16(d), 1.16(e), or the small follows:
beyond four years, the fee being due by entity basic national fee set forth in § 1.51 General requisites of an application.
three years and six months after the § 1.492(a), will be treated as a written
original grant: assertion of entitlement to small entity * * * * *
By a small entity (§ 1.27(a))—$450.00. status even if the type of basic filing or (b) * * *
By other than a small entity—$900.00. basic national fee is inadvertently (4) The prescribed filing fee, search
(f) For maintaining an original or selected in error. fee, examination fee, and application
reissue patent, except a design or plant (i) If the Office accords small entity size fee, see § 1.16.
patent, based on an application filed on status based on payment of a small (c) * * *
or after December 12, 1980, in force entity basic filing or basic national fee (4) The prescribed filing fee and
beyond eight years, the fee being due by under paragraph (c)(3) of this section application size fee, see § 1.16.
seven years and six months after the that is not applicable to that application, * * * * *
original grant: any balance of the small entity fee that ■ 9. Section 1.52 is amended by revising
By a small entity (§ 1.27(a))— is applicable to that application will be the heading and adding paragraph (f) to
$1,150.00. due along with the appropriate read as follows:
By other than a small entity—
surcharge set forth in § 1.16(f), or
$2,300.00. § 1.52 Language, paper, writing, margins,
§ 1.16(g).
(g) For maintaining an original or compact disc specifications.
(ii) The payment of any small entity
reissue patent, except a design or plant * * * * *
fee other than those set forth in
patent, based on an application filed on (f)(1) Any sequence listing in an
paragraph (c)(3) of this section (whether
or after December 12, 1980, in force electronic medium in compliance with
in the exact fee amount or not) will not
beyond twelve years, the fee being due §§ 1.52(e) and 1.821(c) or (e), and any
be treated as a written assertion of
by eleven years and six months after the computer program listing filed in an
entitlement to small entity status and
original grant: electronic medium in compliance with
will not be sufficient to establish small
By a small entity (§ 1.27(a))— §§ 1.52(e) and 1.96, will be excluded
entity status in an application or a
$1,900.00. when determining the application size
By other than a small entity— patent.
* * * * * fee required by § 1.16(s) or § 1.492(j).
$3,800.00. (2) Except as otherwise provided in
* * * * * ■ 7. Section 1.33 is amended by revising
this paragraph, the paper size equivalent
■ 6. Section 1.27 is amended by revising
paragraph (c) to read as follows:
of the specification and drawings of an
paragraphs (b) and (c)(3) to read as § 1.33 Correspondence respecting patent application submitted via the Office
follows: applications, reexamination proceedings, electronic filing system will be
and other proceedings. considered to be the number of sheets
§ 1.27 Definition of small entities and
establishing status as a small entity to * * * * * of paper present in the specification and
permit payment of small entity fees; when (c) All notices, official letters, and drawings of the application when
a determination of entitlement to small other communications for the patent entered into the Office file wrapper after
entity status and notification of loss of owner or owners in a reexamination being rendered by the Office electronic
entitlement to small entity status are proceeding will be directed to the filing system for purposes of computing
required; fraud on the Office. attorney or agent of record (see § 1.32(b)) the application size fee required by
* * * * * in the patent file at the address listed on § 1.16(s). Any sequence listing in
(b) Establishment of small entity the register of patent attorneys and compliance with § 1.821(c) or (e), and
status permits payment of reduced fees. agents maintained pursuant to §§ 11.5 any computer program listing in

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compliance with § 1.96, submitted via application to a nonprovisional to the expiration of the time period set
the Office electronic filing system will application must also be filed prior to for reply by the Office in any notice of
be excluded when determining the the earliest of: fee deficiency in order to avoid
application size fee required by § 1.16(s) (i) Abandonment of the provisional abandonment.
if the listing is submitted in ACSII text application filed under paragraph (c) of (4) This paragraph applies to
as part of an associated file. this section; or continuation or divisional applications
■ 10. Section 1.53 is amended by (ii) Expiration of twelve months after under paragraphs (b) or (d) of this
revising paragraphs (c)(3), (f) and (g) to the filing date of the provisional section and to continuation-in-part
read as follows: application filed under paragraph (c) of applications under paragraph (b) of this
this section. section. See § 1.63(d) concerning the
§ 1.53 Application number, filing date, and submission of a copy of the oath or
completion of application. * * * * *
(f) Completion of application declaration from the prior application
* * * * * for a continuation or divisional
(c) * * * subsequent to filing—Nonprovisional
(including continued prosecution or application under paragraph (b) of this
(3) A provisional application filed section.
under paragraph (c) of this section may reissue) application.
(5) If applicant does not pay one of
be converted to a nonprovisional (1) If an application which has been
the basic filing or the processing and
application filed under paragraph (b) of accorded a filing date pursuant to
retention fees (§ 1.21(l)) during the
this section and accorded the original paragraph (b) or (d) of this section does
pendency of the application, the Office
filing date of the provisional not include the basic filing fee, the
may dispose of the application.
application. The conversion of a search fee, or the examination fee, or if (g) Completion of application
provisional application to a an application which has been accorded subsequent to filing—Provisional
nonprovisional application will not a filing date pursuant to paragraph (b) application.
result in either the refund of any fee of this section does not include an oath (1) If a provisional application which
properly paid in the provisional or declaration by the applicant pursuant has been accorded a filing date pursuant
application or the application of any to §§ 1.63, 1.162 or § 1.175, and to paragraph (c) of this section does not
such fee to the filing fee, or any other applicant has provided a include the cover sheet required by
fee, for the nonprovisional application. correspondence address (§ 1.33(a)), § 1.51(c)(1) or the basic filing fee
Conversion of a provisional application applicant will be notified and given a (§ 1.16(d)), and applicant has provided a
to a nonprovisional application under period of time within which to pay the correspondence address (§ 1.33(a)),
this paragraph will result in the term of basic filing fee, search fee, and applicant will be notified and given a
any patent to issue from the application examination fee, file an oath or period of time within which to pay the
being measured from at least the filing declaration in an application under basic filing fee, file a cover sheet
date of the provisional application for paragraph (b) of this section, and pay (§ 1.51(c)(1)), and pay the surcharge
which conversion is requested. Thus, the surcharge if required by § 1.16(f) to required by § 1.16(g) to avoid
applicants should consider avoiding avoid abandonment. abandonment.
this adverse patent term impact by filing (2) If an application which has been (2) If a provisional application which
a nonprovisional application claiming accorded a filing date pursuant to has been accorded a filing date pursuant
the benefit of the provisional paragraph (b) of this section does not to paragraph (c) of this section does not
application under 35 U.S.C. 119(e) include the basic filing fee, the search include the cover sheet required by
(rather than converting the provisional fee, the examination fee, or an oath or § 1.51(c)(1) or the basic filing fee
application into a nonprovisional declaration by the applicant pursuant to (§ 1.16(d)), and applicant has not
application pursuant to this paragraph). §§ 1.63, 1.162 or § 1.175, and applicant provided a correspondence address
A request to convert a provisional has not provided a correspondence (§ 1.33(a)), applicant has two months
application to a nonprovisional address (§ 1.33(a)), applicant has two from the filing date of the application
application must be accompanied by the months from the filing date of the within which to pay the basic filing fee,
fee set forth in § 1.17(i) and an application within which to pay the file a cover sheet (§ 1.51(c)(1)), and pay
amendment including at least one claim basic filing fee, search fee, and the surcharge required by § 1.16(g) to
as prescribed by the second paragraph examination fee, file an oath or avoid abandonment.
of 35 U.S.C. 112, unless the provisional declaration, and pay the surcharge if (3) If the application size fee required
application under paragraph (c) of this required by § 1.16(f) to avoid by § 1.16(s) (if any) is not paid on filing,
section otherwise contains at least one abandonment. the fee required by § 1.16(s) must be
claim as prescribed by the second (3) If the excess claims fees required paid prior to the expiration of the time
paragraph of 35 U.S.C. 112. The by §§ 1.16(h) and (i) and multiple period set for reply by the Office in any
nonprovisional application resulting dependent claim fee required by notice of fee deficiency in order to avoid
from conversion of a provisional § 1.16(j) are not paid on filing or on later abandonment.
application must also include the filing presentation of the claims for which the (4) If applicant does not pay the basic
fee, search fee, and examination fee for excess claims or multiple dependent filing fee during the pendency of the
a nonprovisional application, an oath or claim fees are due, the fees required by application, the Office may dispose of
declaration by the applicant pursuant to §§ 1.16(h), (i), and (j) must be paid or the application.
§§ 1.63, 1.162, or 1.175, and the the claims canceled by amendment * * * * *
surcharge required by § 1.16(f) if either prior to the expiration of the time period ■ 11. Section 1.69 is amended by
the basic filing fee for a nonprovisional set for reply by the Office in any notice revising paragraph (b) to read as follows:
application or the oath or declaration of fee deficiency. If the application size
was not present on the filing date fee required by § 1.16(s) (if any) is not § 1.69 Foreign language oaths and
accorded the resulting nonprovisional paid on filing or on later presentation of declarations.
application (i.e., the filing date of the the amendment necessitating a fee or * * * * *
original provisional application). A additional fee under § 1.16(s), the fee (b) Unless the text of any oath or
request to convert a provisional required by § 1.16(s) must be paid prior declaration in a language other than

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English is in a form provided by the as an inventor at least one inventor application size fee required by the
Patent and Trademark Office or in named in the later-filed application and Office under § 1.16(s) or § 1.492(j), a
accordance with PCT Rule 4.17(iv), it disclose the named inventor’s invention specification having papers in
must be accompanied by an English claimed in at least one claim of the compliance with § 1.52 and an abstract
translation together with a statement later-filed application in the manner (§ 1.72(b)), drawings in compliance with
that the translation is accurate, except provided by the first paragraph of 35 § 1.84, and a sequence listing in
that in the case of an oath or declaration U.S.C. 112. In addition, each prior-filed compliance with §§ 1.821 through 1.825
filed under § 1.63, the translation may provisional application must be entitled (if applicable), and until any petition
be filed in the Office no later than two to a filing date as set forth in § 1.53(c), under § 1.47 is granted.
months from the date applicant is and the basic filing fee set forth in * * * * *
notified to file the translation. § 1.16(d) must be paid within the time ■ 18. Section 1.324 is amended by
■ 12. Section 1.75 is amended by period set forth in § 1.53(g). revising the second sentence of
revising paragraph (c) to read as follows: * * * * * paragraph (a) to read as follows:
§ 1.75 Claim(s). ■ 14. Section 1.84 is amended by
§ 1.324 Correction of inventorship in
* * * * * revising paragraph (y) to read as follows: patent, pursuant to 35 U.S.C. 256.
(c) One or more claims may be § 1.84 Standards for drawings. (a) * * * A petition to correct
presented in dependent form, referring inventorship of a patent involved in an
* * * * *
back to and further limiting another interference must comply with the
(y) Types of drawings. See § 1.152 for
claim or claims in the same application. requirements of this section and must be
design drawings, § 1.165 for plant
Any dependent claim which refers to accompanied by a motion under
drawings, and § 1.173(a)(2) for reissue
more than one other claim (‘‘multiple § 41.121(a)(2) or § 41.121(a)(3) of this
drawings.
dependent claim’’) shall refer to such title.
■ 15. Section 1.111 is amended by
other claims in the alternative only. A * * * * *
revising the first sentence of paragraph
multiple dependent claim shall not ■ 19. Section 1.445 is amended by
serve as a basis for any other multiple (a)(2)(i) to read as follows:
revising paragraph (a)(2) to read as
dependent claim. For fee calculation § 1.111 Reply by applicant or patent owner follows:
purposes under § 1.16, a multiple to a non-final Office action.
dependent claim will be considered to (a) * * * § 1.445 International application filing,
be that number of claims to which direct (2) * * * (i) A reply that is processing and search fees.
reference is made therein. For fee supplemental to a reply that is in (a) * * *
calculation purposes also, any claim compliance with § 1.111(b) will not be (2) A search fee (see 35 U.S.C. 361(d)
depending from a multiple dependent entered as a matter of right except as and PCT Rule 16):
claim will be considered to be that provided in paragraph (a)(2)(ii) of this (i) If a corresponding prior United
number of claims to which direct section. * * * States national application under 35
reference is made in that multiple U.S.C. 111(a) has been filed on or after
* * * * * December 8, 2004, the basic filing fee
dependent claim. In addition to the
other filing fees, any original ■ 16. Section 1.136 is amended by under § 1.16(a), search fee under
application which is filed with, or is revising the fourth sentence of paragraph § 1.16(k), and examination fee under
amended to include, multiple (b) to read as follows: § 1.16(o) have been paid therein, and the
dependent claims must have paid corresponding prior United States
§ 1.136 Extensions of time.
therein the fee set forth in § 1.16(j). national application is identified by
Claims in dependent form shall be * * * * * application number, if known, or if the
construed to include all the limitations (b) * * * See § 1.304 for extensions of application number is not known by the
of the claim incorporated by reference time to appeal to the U.S. Court of filing date, title, and name of applicant
into the dependent claim. A multiple Appeals for the Federal Circuit or to (and preferably the application docket
dependent claim shall be construed to commence a civil action; § 1.550(c) for number), in the international
incorporate by reference all the extensions of time in ex parte application or accompanying papers at
limitations of each of the particular reexamination proceedings; § 1.956 for the time of filing the international
claims in relation to which it is being extensions of time in inter partes application—$300.00.
considered. reexamination proceedings; and (ii) If a corresponding prior United
§§ 41.4(a) and 41.121(a)(3) of this title States national application under 35
* * * * *
for extensions of time in contested cases U.S.C. 111(a) has been filed before
■ 13. Section 1.78 is amended by before the Board of Patent Appeals and December 8, 2004, the basic filing fee
revising paragraph (a)(4) to read as Interferences. * * * under § 1.16 has been paid therein, and
follows:
* * * * * the corresponding prior United States
§ 1.78 Claiming benefit of earlier filing date ■ 17. Section 1.211 is amended by national application is identified by
and cross-references to other applications. revising paragraph (c) to read as follows: application number, if known, or if the
(a) * * * application number is not known by the
(4) A nonprovisional application, § 1.211 Publication of applications. filing date, title, and name of applicant
other than for a design patent, or an * * * * * (and preferably the application docket
international application designating (c) An application filed under 35 number), in the international
the United States of America may claim U.S.C. 111(a) will not be published until application or accompanying papers at
an invention disclosed in one or more it includes the basic filing fee (§ 1.16(a) the time of filing the international
prior-filed provisional applications. In or 1.16(c)), any English translation application—$300.00.
order for an application to claim the required by § 1.52(d), and an executed (iii) For all situations not provided for
benefit of one or more prior-filed oath or declaration under § 1.63. The in paragraphs (a)(2)(i) or (a)(2)(ii) of this
provisional applications, each prior- Office may delay publishing any section—$1000.00.
filed provisional application must name application until it includes any * * * * *

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■ 20. Section 1.492 is revised to read as By a small entity (§ 1.27(a))—$65.00. complies with PCT Rule 12.1(d) and the
follows: By other than a small entity—$130.00. description complies with PCT Rule
(i) For filing an English translation of 5.2(b).
§ 1.492 National stage fees. an international application or of any * * * * *
The following fees and charges are annexes to an international preliminary
established for international examination report later than thirty PART 41—PRACTICE BEFORE THE
applications entering the national stage months after the priority date BOARD OF PATENT APPEALS AND
under 35 U.S.C. 371: (§§ 1.495(c) and (e))—$130.00. INTERFERENCES
(a) The basic national fee for an (j) Application size fee for any
international application entering the international application for which the ■ 22. The authority citation for 37 CFR
national stage under 35 U.S.C. 371 if the basic national fee was not paid before Part 41 continues to read as follows:
basic national fee was not paid before December 8, 2004, the specification and Authority: 35 U.S.C. 2(b)(2), 3(a)(2)(A), 21,
December 8, 2004: drawings of which exceed 100 sheets of 23, 32, 41, 134, 135.
By a small entity (§ 1.27(a))—$150.00. paper, for each additional 50 sheets or
By other than a small entity—$300.00. ■ 23. Section 41.20 is amended by
fraction thereof:
(b) Search fee for an international revising paragraph (b) to read as follows:
By a small entity (§ 1.27(a))—$125.00.
application entering the national stage By other than a small entity—$250.00. § 41.20 Fees.
under 35 U.S.C. 371 if the basic national ■ 21. Section 1.495 is amended by
* * * * *
fee was not paid before December 8, revising paragraph (c) to read as follows: (b) Appeal fees.
2004:
§ 1.495 Entering the national stage in the (1) For filing a notice of appeal from
By a small entity (§ 1.27(a))—$250.00.
By other than a small entity—$500.00. United States of America. the examiner to the Board:
(c) The examination fee for an * * * * * By a small entity (§ 1.27(a) of this
international application entering the (c)(1) If applicant complies with title)—$250.00.
national stage under 35 U.S.C. 371 if the paragraph (b) of this section before By other than a small entity—$500.00.
basic national fee was not paid before expiration of thirty months from the (2) In addition to the fee for filing a
December 8, 2004: priority date, the Office will notify the notice of appeal, for filing a brief in
By a small entity (§ 1.27(a))—$100.00. applicant if he or she has omitted any support of an appeal:
By other than a small entity—$200.00. of: By a small entity (§ 1.27(a) of this
(d) In addition to the basic national (i) A translation of the international title)—$250.00.
fee, for filing or on later presentation at application, as filed, into the English By other than a small entity—$500.00.
any other time of each claim in language, if it was originally filed in (3) For filing a request for an oral
independent form in excess of 3: another language (35 U.S.C. 371(c)(2)); hearing before the Board in an appeal
By a small entity (§ 1.27(a))—$100.00. (ii) The oath or declaration of the under 35 U.S.C. 134:
By other than a small entity—$200.00. inventor (35 U.S.C. 371(c)(4) and By a small entity (§ 1.27(a) of this
(e) In addition to the basic national § 1.497), if a declaration of inventorship title)—$500.00.
fee, for filing or on later presentation at in compliance with § 1.497 has not been By other than a small entity—
any other time of each claim (whether previously submitted in the $1,000.00.
dependent or independent) in excess of international application under PCT Dated: January 18, 2005.
20 (note that § 1.75(c) indicates how Rule 4.17(iv) within the time limits Jon W. Dudas,
multiple dependent claims are provided for in PCT Rule 26ter.1; Under Secretary of Commerce for Intellectual
considered for fee calculation purposes): (iii) The search fee set forth in Property and Director of the United States
By a small entity (§ 1.27(a))—$25.00. § 1.492(b); Patent and Trademark Office.
By other than a small entity—$50.00. (iv) The examination fee set forth in [FR Doc. 05–1377 Filed 1–26–05; 8:45 am]
(f) In addition to the basic national § 1.492(c); and BILLING CODE 3510–16–P
fee, if the application contains, or is (v) Any application size fee required
amended to contain, a multiple by § 1.492(j).
dependent claim, per application: (2) A notice under paragraph (c)(1) of DEPARTMENT OF VETERANS
By a small entity (§ 1.27(a))—$180.00. this section will set a period of time AFFAIRS
By other than a small entity—$360.00. within which applicant must provide
(g) If the excess claims fees required any omitted translation, oath or 38 CFR Part 36
by paragraphs (d) and (e) of this section declaration of the inventor, search fee
and multiple dependent claim fee set forth in § 1.492(b), examination fee RIN 2900–AL23
required by paragraph (f) of this section set forth in § 1.492(c), and any Loan Guaranty: Implementation of
are not paid with the basic national fee application size fee required by Public Law 107–103
or on later presentation of the claims for § 1.492(j) in order to avoid abandonment
which the excess claims or multiple of the application. AGENCY: Department of Veterans Affairs.
dependent claim fees are due, the fees (3) The payment of the processing fee ACTION: Final rule.
required by paragraphs (d), (e), and (f) set forth in § 1.492(i) is required for
of this section must be paid or the acceptance of an English translation SUMMARY: This document affirms, with
claims canceled by amendment prior to later than the expiration of thirty one modification, an amendment to the
the expiration of the time period set for months after the priority date. The Department of Veterans Affairs (VA)
reply by the Office in any notice of fee payment of the surcharge set forth in loan guaranty regulations implementing
deficiency in order to avoid § 1.492(h) is required for acceptance of sections 401 through 404 of the Veterans
abandonment. the oath or declaration of the inventor Education and Benefits Expansion Act
(h) Surcharge for filing the oath or later than the expiration of thirty of 2001. The amendment incorporates
declaration later than thirty months months after the priority date. into the regulations the following
from the priority date pursuant to (4) A ‘‘Sequence Listing’’ need not be statutory changes: an increase in the
§ 1.495(c): translated if the ‘‘Sequence Listing’’ maximum amount of loan guaranty

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