WORLD TRADE ORGANIZATION  
ORGANISATION MONDIALE DU COMMERCE  
ORGANIZACIÓN MUNDIAL DEL COMERCIO   
IP/N/1/USA/P/10 
17 August 2012 
 
 (12-4484) 
Council for Trade-Related Aspects  of Intellectual Property Rights Original:   English/ 
 anglais/  inglés  
 
 
 
MAIN DEDICATED INTELLECTUAL PR OPERTY LAWS AND REGULATIONS 
NOTIFIED UNDER ARTICLE 63.2 OF THE AGREEMENT 
 
UNITED STATES 
 
 The present document reproduces the text
1 of the Regulation on the Fee for Filing a Patent 
Application Other Than by the Electronic Filing System, which entered into force on 
15 November 2011, as notified by the United States on 20 June 2012 under Article 63.2 of the 
Agreement (see document IP/N/1/USA/5).  
Conseil des aspects des droits de propriété intellectuelle qui touchent au commerce 
 
PRINCIPALES LOIS ET RÉGLEMENTATIONS CONSACRÉES À 
LA PROPRIÉTÉ INTELLECTUELLE NOTIFIÉES AU TITRE 
DE L'ARTICLE 63:2 DE L'ACCORD 
 
ÉTATS-UNIS 
 
 Le présent document contient le texte
1 du Règlement sur la redevance applicable pour le 
dépôt d'une demande de brevet au trement que par le système de dépôt électronique, qui est entré en 
vigueur le 15 novembre 2011, et a été notifié pa r les États-Unis le 20 juin 2012 au titre de 
l'article 63:2 de l'Accord (voir le document IP/N/1/USA/5). 
 
Consejo de los Aspectos de los Derechos de Propiedad 
Intelectual relacionados con el Comercio 
 
PRINCIPALES LEYES Y REGLAMENTOS DEDICADOS A LA 
PROPIEDAD INTELECTUAL NOTIFICADOS EN VIRTUD 
DEL PÁRRAFO 2 DEL ARTÍCULO 63 DEL ACUERDO 
 
ESTADOS UNIDOS 
 
 En el presente documento se reproduce el texto1 del Reglamento sobre los derechos aplicables 
a las solicitudes de patente que no se efectúen por medio del sistema de presentación electrónica, que entró en vigor el 15 de noviembre de 2011, notifica do por los Estados Unidos el 20 de junio de 2012 
en virtud de lo dispuesto en el párrafo 2 del artículo 63 del Acuerdo (véase el documento 
IP/N/1/USA/5). 
 
                                                      
1 In English only./En anglais seulement./En inglés solamente.     
   IP/N/1/USA/P/10 
 Page 3 
 
 
  DEPARTMENT OF 
COMMERCE  
Patent and Trademark 
Office  
37 CFR Part 1 
 
[Docket No. PTO–P–2011–
0065]  
RIN 0651–AC64 
 Fee for Filing a Patent 
Application Other Than by 
the Electronic Filing System  
AGENCY:  United States 
Patent and Trademark Office, Commerce. 
 
ACTION:  Final rule. 
 
SUMMARY:  The Leahy-
Smith America Invents Act provides an additional fee of 
$400 for applications not filed 
electronically. This final rule 
revises the rules of practice to 
include the fee for applications not filed electronically. 
 
DATES:  Effective Date:  
November 15, 2011. 
 
FOR FURTHER 
INFORMATION 
CONTACT: 
James J. Engel, Senior Legal 
Advisor, Office of Patent Legal 
Administration, Office of the 
Associate Commissioner for Patent Examination Policy, by 
telephone at (571) 272–7725; 
or by mail addressed to: Mail Stop Comments Patents, 
Commissioner for Patents, P.O. 
Box 1450, Alexandria, VA 
22313–1450. 
 
SUPPLEMENTARY 
INFORMATION:  
Section 10(h) of the Leahy-
Smith America Invents Act 
provides that an additional fee 
of $400 shall be established for each application for an original 
(i.e., nonreissue) patent, except for a design, plant, or 
provisional application, that is not filed by electronic means 
as prescribed by the Director of 
the United States Patent and Trademark Office (USPTO). 
See Public Law 112–29, 125 
Stat. 283, 319 (2011). 
Section 10(h) also provides 
that this fee is reduced by 50 percent for small entities 
under 35 U.S.C. 41(h)(1). See 
id. Section 10(h) also provides 
that this new fee is effective on 
November 15, 2011 (sixty days 
after the date of enactment of the Leahy-Smith America 
Invents Act). See id.  This final 
rule revises 37 CFR 1.16 and 1.445 to include the fee for 
applications not filed 
electronically.  The USPTO encourages 
applicants to file their 
applications via its electronic filing system (EFS-Web) to 
avoid the fee provided for by 
section 10(h) of the Leahy-
Smith America Invents Act. 
Information concerning electronic filing via EFS-Web 
is available from the USPTO's 
Patent Electronic Business Center (EBC) at 
http://www.uspto.gov/patents/p
rocess/file/efs/index.jsp . 
 
Section-by-Section 
Discussion 
 
 Title 37 of the Code of 
Federal Regulations, Part 1, is amended as follows: 
 Section 1.16:  
Section 1.16(t) is added to require the non-electronic 
filing fee of $400 ($200 for a 
small entity) for any 
application under 35 U.S.C. 
111(a) ( i.e., any nonprovisional 
application) that is filed on or 
after November 15, 2011, other 
than by the USPTO's electronic filing system (EFS-Web), 
except for a reissue, design, or 
plant application.  Section 1.445:  The 
introductory text of § 1.445(a) is amended to add "by law or'' 
prior to "by the Director under the authority of 35 U.S.C. 376'' 
because the fee for filing an 
application other than by the USPTO's electronic filing 
system is established by law 
(section 10(h) of the Leahy-
Smith America Invents Act). 
Section 1.445(a) is amended to set out the current transmittal 
fee as a basic fee in 
§ 1.445(a)(1)(i) and to add a new § 1.445(a)(1)(ii) setting 
out the nonelectronic filing fee 
of $400 ($200 for a small entity) for any Patent Co-
operation Treaty (PCT) 
international application designating the United States 
of America that is filed on or 
after November 15, 2011, other than by the USPTO's electronic 
filing system (EFS-Web), 
except for a plan t application. 
Section 1.445(a)(1)(ii) does not 
contain a reference to reissue, 
design, or provisional 
applications as these types of 
applications cannot be filed via the PCT. While 
§ 1.445(a)(1)(ii) contains a 
reference to plant applications, the USPTO advises against 
filing a plant application under 
the PCT because many countries do not consider this 
subject matter to be patent-
eligible, and the color drawings or color photographs that are 
often necessary for plant 
applications (§ 1.165(b)) are not permitted in PCT 
international applications (PCT 
Applicant's Guide (¶ 5.159) (Oct. 2011)). 
 The USPTO will consider 
applications filed with the 
USPTO via the Department of 
Defense Secret Internet Protocol Router Network 
(SIPRNET) as filed via the 
USPTO's electronic filing system for purposes of 
§ 1.16(t) and § 1.445(a)(1)(ii). 
 IP/N/1/USA/P/10 
Page 4  
 
  Rule Making Considerations 
 
 A. Administrative 
Procedure Act (APA):  
Section 10(h) of the Leahy-
Smith America Invents Act provides that an additional fee of $400 ($200 for a 
small entity) shall be 
established for each application for an original (i.e., nonreissue) patent, 
except for a design, plant, or provisional application, that 
is not filed by electronic 
means as prescribed by the Director of the USPTO. The changes in this final rule simply reiterate the 
provisions of section 10(h) 
of the Leahy-Smith America Invents Act and are thus merely interpretative. See 
Gray Panthers  Advocacy 
Comm. v. Sullivan , 936 F.2d 
1284, 1291–1292 (DC Cir. 
1991) (regulation that reiterates statutory language does not require notice and comment procedures). 
Accordingly, prior notice 
and an opportunity for public comment are not required pursuant to 5 U.S.C. 553(b)(A) or any 
other law. See Cooper 
Techs. Co. v. Dudas , 536 
F.3d 1330, 1336–37 (Fed. Cir. 2008) (stating that 5 U.S.C. 553, and thus 35 U.S.C. 2(b)(2)(B), do not 
require notice and comment 
rule making for "interpretative rules, general statements of policy, or rules of agency 
organization, procedure, or 
practice.'') (quoting 5 U.S.C. 553(b)(A)). In addition, thirty-day advance publication is not required pursuant to 5 U.S.C. 553(d) 
or any other law. See 5 U.S.C. 553(d) (requiring 
thirty-day advance publication for substantive rules). 
 B. Regulatory Flexibility 
Act: As prior notice and an 
opportunity for public 
comment are not required 
pursuant to 5 U.S.C. 553 or any other law, neither a 
regulatory flexibility analysis 
nor a certification under the Regulatory Flexibility Act (5 
U.S.C. 601 et seq. ) is required. 
See 5 U.S.C. 603. 
 C. Executive Order 13132 
(Federalism):  This rule making 
does not contain policies with federalism implications 
sufficient to warrant 
preparation of a Federalism Assessment under Executive 
Order 13132 (Aug. 4, 1999). 
 D. Executive Order 12866 (Regulatory Planning and 
Review): This rule making has 
been determined not to be 
significant for purposes of 
Executive Order 12866 (Sept. 30, 1993), as amended 
by Executive Order 13258 
(Feb. 26, 2002) and Executive Order 13422 (Jan. 18, 2007).  
 E. Executive Order 13563 
(Improving Regulation and Regulatory Review):  The 
USPTO has complied with 
Executive Order 13563 (Jan. 18, 2011). Specifically, 
the USPTO has, to the extent 
feasible and applicable: (1) Made a reasoned 
determination that the benefits 
justify the costs of the rule; (2) tailored the rule to impose 
the least burden on society 
consistent with obtaining the 
regulatory objectives; 
(3) selected a regulatory approach that maximizes net 
benefits; (4) specified 
performance objectives; (5) identified and assessed 
available alternatives; 
(6) involved the public in an open exchange of information 
and perspectives among experts in relevant disciplines, 
affected stakeholders in the private sector, and the public as 
a whole, and provided on-line 
access to the rule making docket; (7) attempted to 
promote coordination, 
simplification, and 
harmonization across 
government agencies and identified goals designed to 
promote innovation; 
(8) considered approaches that reduce burdens and maintain 
flexibility and freedom of 
choice for the public; and (9) ensured the objectivity of 
scientific and technological 
information and processes.  F. Executive Order 13175 
(Tribal Consultation):  This 
rule making will not: (1) Have substantial direct effects on one 
or more Indian tribes; 
(2) impose substantial direct compliance costs on Indian 
tribal government; or (3) pre-
empt tribal law.  Therefore, a 
tribal summary impact 
statement is not required under Executive Order 13175 
(Nov. 6, 2000).  
 G. Executive Order 13211 
(Energy Effect):  This rule 
making is not significant 
energy action under Executive Order 13211 because this rule 
making is not likely to have a 
significant adverse effect on the supply, distribution, or use 
of energy. Therefore, a 
Statement of Energy Effects is not required under Executive 
Order 13211 (May 18, 2001). 
 H. Executive Order 12988 (Civil Justice Reform):  This 
rule making meets applicable 
standards to minimize 
litigation, eliminate ambiguity, 
and reduce burden as set forth in sections 3(a) and 3(b)(2) of 
Executive Order 12988 
(Feb. 5, 1996).  I. Executive Order 13045 
(Protection of Children):  This 
rule making is not an economically significant rule 
and does not concern an  IP/N/1/USA/P/10 
 Page 5 
 
 
  environmental risk to health or 
safety that may disproportionately affect 
children under Executive Order 
13045 (Apr. 21, 1997).  J. Executive Order 12630 
(Taking of Private Property):  
This rule making will not 
effect a taking of private 
property or otherwise have taking implications under 
Executive Order 12630 
(Mar. 15, 1988).  K. Congressional Review 
Act: Under the Congressional 
Review Act provisions of the Small Business Regulatory 
Enforcement Fairness Act of 
1996 (5 U.S.C. 801 et seq. ), the 
USPTO will submit a report 
containing this final rule and 
other required information to the U.S. Senate, the U.S. 
House of Representatives, and 
the Comptroller General of the Government Accountability 
Office. The change in this rule 
making is not expected to 
result in an annual effect on the 
economy of 100 million dollars or more, a major increase in 
costs or prices, or significant 
adverse effects on competition, employment, investment, 
productivity, innovation, or the 
ability of United States-based enterprises to compete with 
foreign-based enterprises in 
domestic and export markets. Therefore, this rule making is 
not expected to result in a 
"major rule'' as defined in 5 U.S.C. 804(2). 
 L. Unfunded Mandates 
Reform Act of 1995:  The 
changes proposed in this notice 
do not involve a Federal 
intergovernmental mandate 
that will result in t e 
expenditure by State, local, and tribal governments, in the 
aggregate, of 100 million 
dollars (as adjusted) or more in any one year, or a Federal 
private sector mandate that will 
result in the expenditure by the private sector of 100 million 
dollars (as adjusted) or more in any one year, and will not 
significantly or uniquely affect small governments. Therefore, 
no actions are necessary under 
the provisions of the Unfunded Mandates Reform Act of 1995. 
See 2 U.S.C. 1501 et seq.  
 M. National Environmental 
Policy Act:  The rule making 
will not have any effect on the quality of the environment and 
is thus categorically excluded 
from review under the National Environmental Policy Act of 
1968. See 42 U.S.C. 4321 et 
seq.   N. National Technology 
Transfer and Advancement 
Act: The requirements of 
section 12(d) of the National 
Technology Transfer and 
Advancement Act of 1995 (15 U.S.C. 272 note) are 
inapplicable, because this rule 
making does not involve the use of technical standards. 
 O . Paperwork Reduction 
Act: This rule making involves 
information collection 
requirements which are subject to review by the Office of 
Management and Budget 
(OMB) under the Paperwork Reduction Act of 1995 (44 
U.S.C. 3501 et seq. ). As 
discussed previously, the changes in this final rule 
simply reiterate the provisions 
of section 10(h) of the Leahy-Smith America Invents Act. 
The collection of information 
involved in this rule making has been reviewed and 
previously approved by OMB 
under OMB control numbers 0651–0021 and 0651–0032. 
This notice does not add any 
additional information 
collection requirements for 
patent applicants or patentees. Therefore, the USPTO is not 
resubmitting information 
collection packages to OMB for its review and approval 
because the changes proposed 
in this notice do not affect the 
information collection 
requirements a ssociated with the information collections 
under OMB control numbers 0651–0021 and 0651–0032. 
The USPTO will update fee 
calculations for the currently approved information 
collections associated with this 
rule making upon submission 
to the OMB of the renewals of 
those information collections.  Notwithstanding any other 
provision of law, no person is 
required to respond to, nor shall a person be subject to a 
penalty for failure to comply 
with, a collection of information subject to the 
requirements of the Paperwork 
Reduction Act unless that collection of information 
displays a currently valid OMB 
control number.  
List of Subjects in 37 CFR 
Part 1 
 
 Administrative practice and 
procedure, Courts, Freedom of 
information, Inventions and 
patents, Reporting and recordkeeping requirements, 
Small businesses, and 
Biologics.  For the reasons set forth in 
the preamble, 37 CFR part 1 is 
amended as follows:  
PART 1—RULES OF 
PRACTICE IN PATENT CASES 
 
■ 1. The authority citation for 
37 CFR part 1 continues to 
read as follows: 
  Authority:  35 U.S.C. 
2(b)(2), unless otherwise 
noted. 
 
■ 2. Section 1.16 is amended 
by adding paragraph (t) to read 
as follows: 
 
§ 1.16 National application 
filing, search, and 
examination fees. 
 
* * * * * IP/N/1/USA/P/10 
Page 6  
 
   (t) Non-electronic filing fee 
for any application under 35 U.S.C. 111(a) that is filed on or 
after November 15, 2011, other 
than by the Office electronic filing system, except for a 
reissue, design, or plant 
application: 
 
By a small entity (§ 1.27(a)) ........ $200.00 
By other than a small entity 
....... $400.00  
* * * * * 
 ■ 3. Section 1.445 is amended 
by revising paragraph (a) 
introductory text and paragraph (a)(1) to read as 
follows: 
 § 1.445 International 
application filing, processing and search fees. 
 
 (a) The following fees and charges for international 
applications are established by 
law or by the Director under 
the authority of 35 U.S.C. 376: 
 (1) A transmittal fee (see 35 U.S.C. 361(d) and PCT 
Rule 14) consisting of: 
  (i) A basic portion 
....................... $240.00 
  (ii) A non-electronic filing 
fee portion for any 
international application designating the United States 
of America that is filed on or 
after November 15, 2011, other than by the Office electronic filing system, except for a plant 
application:  
By a small entity (§ 1.27(a)) 
........ $200.00  
By other than a small entity 
....... $400.00 
 
* * * * *  
 Dated: November 7, 2011. 
 
David J. Kappos, 
Under Secretary of Commerce 
for Intellectual Property and Director of the United States 
Patent and Trademark Office.  
 [FR Doc. 2011–29462 Filed 
11–14–11; 8:45 am] 
 
BILLING CODE 3510–16–P 
 
 
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