Vol. 78

Friday,No. 13January 18, 2013

Part II

Department of Commerce

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Patent and Trademark Office
37 CFR Parts 1, 41, and 42
Setting and Adjusting Patent Fees; Final Rule

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Federal Register / Vol. 78, No. 13 / Friday, January 18, 2013 / Rules and Regulations
IV. Fee Setting Methodology
V. Individual Fee Rationale
VI. Discussion of Comments
VII. Discussion of Specific Rules
VIII. Rulemaking Considerations

DEPARTMENT OF COMMERCE
Patent and Trademark Office
37 CFR Parts 1, 41, and 42

I. Executive Summary[Docket No. PTO–C–2011–0008]
RIN 0651–AC54

Setting and Adjusting Patent Fees
AGENCY: United States Patent andTrademark Office, Department ofCommerce.
ACTION: Final rule.

TKELLEY on DSK3SPTVN1PROD withSUMMARY: The United States Patent andTrademark Office (Office or USPTO)
sets or adjusts patent fees in thisrulemaking as authorized by the LeahySmith America Invents Act (Act or
AIA). The fees will provide the Officewith a sufficient amount of aggregate
revenue to recover its aggregate cost ofpatent operations, while helping the
Office implement a sustainable funding
model, reduce the current patentapplication backlog, decrease patentapplication pendency, improve patentquality, and upgrade the Office’s patentbusiness information technology (IT)capability and infrastructure. The fees
also will further key policy
considerations. The Office also reduces
fees for micro entities under section
10(b) of the Act by 75 percent in thisrulemaking and extends the existing fee
discount of 50 percent for small entities
to additional fees in this rulemaking.
DATES: This rule is effective on March
19, 2013, except for amendments to§ 1.18(a)(1), (b)(1), (c)(1), and (d)(1)(patent issue and publication fees);§ 1.21(h)(1) (fee for recording a patentassignment electronically);§ 1.482(a)(1)(i)(A), (a)(1)(ii)(A), and(a)(2)(i) (international application filing,processing and search fees); and§ 1.445(a)(1)(i)(A), (a)(2)(i), (a)(3)(i), and(a)(4)(i) (international applicationtransmittal and search fees), which will
be effective on January 1, 2014.
FOR FURTHER INFORMATION CONTACT:
Michelle Picard, Office of the Chief
Financial Officer, by telephone at (571)272–6354 or by email at
michelle.picard@uspto.gov; or Dianne
Buie, Office of Planning and Budget, by
telephone at (571) 272–6301 or by email
at dianne.buie@uspto.gov.
SUPPLEMENTARY INFORMATION: This rule
was proposed in a notice of proposed
rulemaking published at 77 FR 55028(Sept. 6, 2012) (hereinafter NPRM).
Table of Contents
I. Executive Summary
II. Legal Framework
III. Rulemaking Goals and Strategies

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A. Purpose of This Action
Section 10 of the Leahy-Smith
America Invents Act authorizes the
Director of the USPTO to set or adjust
by rule any patent fee established,authorized, or charged under Title 35,
United States Code (U.S.C.) for any
services performed by, or materials
furnished by, the Office. Section 10
prescribes that fees may be set or
adjusted only to recover the aggregate
estimated costs to the Office forprocessing, activities, services, andmaterials relating to patents, including
administrative costs to the Office withrespect to such patent operations.
Section 10 authority includes flexibility
to set individual fees in a way thatfurthers key policy considerations,while taking into account the cost of therespective services. See Section 10 of
the Act, Public Law 112–29, 125 Stat. at
316–17. Section 10 also establishes
certain procedural requirements forsetting or adjusting fee regulations, suchas public hearings and input from the
Patent Public Advisory Committee andoversight by Congress.
The fee schedule in this final rule will
recover the aggregate estimated costs of
the Office while achieving strategic andoperational goals, such as implementing
a sustainable funding model, reducing
the current patent application backlog,
decreasing patent application pendency,
improving patent quality, and upgrading
the patent IT business capability andinfrastructure.
The United States economy depends
on high quality and timely patents toprotect new ideas and investments forbusiness and job growth. To reduce thebacklog and decrease patent application
pendency, the USPTO must examine
significantly more patent applications
than it receives each year for the next
several years. Bringing the number ofapplications in the backlog down to a
manageable level, while at the sametime keeping pace with the new patentapplications expected to be filed eachyear, requires the Office to collect moreaggregate revenue than it estimates that
it will collect at existing fee rates. The
Office estimates that the additional
aggregate revenue derived from this fee
schedule will enable a decrease in total
patent application pendency by 11.3
months during the five-year planninghorizon (fiscal year (FY) 2013–FY 2017),
thus permitting a patentee to obtain apatent sooner than he or she would have

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under the status quo fee schedule. The
additional revenue from this fee
schedule also will recover the cost to
begin building a three-month patent
operating reserve. The Office estimatesthat the patent operating reserve willaccumulate almost two months of patent
operating expenses by the end of the
five-year planning horizon (FY 2013–FY
2017) and will reach the three-monthtarget in FY 2018, thereby continuing tobuild a sustainable funding model thatwill aid the Office in maintaining
shorter pendency and an optimal patentapplication inventory.
Additionally, the fee schedule in thisfinal rule will advance key policy
considerations while taking into
account the cost of individual services.
For example, the rule includes multipartand staged fees for requests forcontinued examination (RCEs), appeals,
and contested cases, all of which aim toincrease patent prosecution options forapplicants. Also, this rule includes a
new 75 percent fee reduction for micro
entities and expands the availability of
the 50 percent fee reduction for small
entities as required under section 10,
providing small entities a discount on
more than 25 patent fees that do notcurrently qualify for a small entity
discount.
B. Summary of Provisions Impacted byThis Action
This final rule sets or adjusts 351
patent fees—93 apply to large entities(any reference herein to ‘‘large entity’’
includes all entities other than small or
micro entities), 94 to small entities, 93
to micro entities, and 71 are not entityspecific. Of the 93 large entity fees, 71
are adjusted, 18 are set at existing fee
amounts, and 4 were first proposed in
the preceding NPRM. Of the 94 small
entity fees, 85 are adjusted, 5 are set atexisting fee amounts, and 4 were first
proposed in the NPRM. There are 93
new micro entity fees first proposed in
the NPRM that are set at a reduction of
75 percent from the large entity fee
amounts. Of the 71 fees that are notentity-specific, 9 are adjusted in thisrule, and 62 are set at existing fee
amounts.
In all, once effective, the routine fees
to obtain a patent (i.e., filing, search,
examination, publication, and issuefees) will decrease by at least 23 percent
under this final rule relative to thecurrent fee schedule. Also, despite
increases in some fees, applicants whomeet the new micro entity definition
will pay less than the amount paid forsmall entity fees under the current feeschedule for 87 percent of the fees
eligible for a discount under section
10(b). Additional information describing

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the adjustments is included in Part V.
Individual Fee Rationale section of
Supplementary Information for thisfinal rulemaking.

TABLE 1—FINAL PATENT FEE SCHEDULE COSTS AND BENEFITS, CUMULATIVE FY 2013—FY 2017—Continued

C. Summary of Costs and Benefits ofThis Action
The Office prepared a Regulatory
Impact Analysis (RIA) to consider thecosts and benefits of this final rule overa five-year period (FY 2013–FY 2017).
In the RIA developed for the NPRM, theOffice offered a discussion of monetizedand qualitative costs that could bederived from the proposed patent feeschedule. The Office made several
inferences using internal data andrelevant academic literature. Upon
further review of the proposed
rulemaking and source materials, andconsistent with OMB Circular A–4,
Regulatory Analysis, as discussed
further in the RIA, the USPTO no longer
monetizes costs and benefits in the final
rule or the RIA. Rather, this final rule
for the purposes of regulatory review isconsidered to be a transfer payment
from one group to another, anddiscussion of all costs and benefits isqualitative in nature. Thus, the RIA for
this final rule outlines the transfer andassesses the qualitative benefits andcosts that accrue to patent applicants,
patent holders, and other patent
stakeholders in the United States. The
RIA includes a qualitative comparisonof the final fee schedule to the current
fee schedule (Baseline) and to threeother alternatives considered. The RIA
assesses the change in qualitative costs
or benefits related to the changes in the
final fee schedule using certain key
indicators when comparing theBaseline. The RIA concludes that thepatent fee schedule set forth in this final
rule has the most significant net benefit
among the alternatives considered. See
Table 1. The complete RIA is available
for review at http://www.uspto.gov/
aia_implementation/fees.jsp#heading-1.

TABLE 1—FINAL PATENT FEE SCHEDULE COSTS AND BENEFITS, CUMULATIVE FY 2013—FY 2017
Transfers
Transfers ...............................

$13,993 million

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Qualitative Costs and Benefits
Costs:
Cost of patent operations
Lost patent value from adecrease in patent applications.
Benefit:

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MinimalMinimalJkt 229001

Increase in private patent value from a decrease in pendency.
Fee Schedule Design
Benefits.
(Significant, Moderate,
Not Significant).
Decreased Uncertainty
Effect.
(Significant, Moderate,
Not Significant).
Net Benefit .....................

Significant
Moderate

Significant

Significant

To assess the qualitative benefits ofthe final fee schedule, the Officeconsidered how the value of a patent
would increase under the final feeschedule, as well as benefits from
improving the fee schedule design andbenefits from decreased uncertainty.
When patent application pendency
decreases, a patentee holds the
exclusive right to the invention sooner,
which increases the private value of thatpatent. Because the outcomes of thisfinal rule will decrease patentapplication pendency, the Office
expects that the private patent value
will increase considerably, relative tothe Baseline. Likewise, the design of the
final fee schedule offers benefits relating
to the three policy factors considered forsetting individual fees as described inPart III of this final rule, namely,
fostering innovation, facilitating
effective administration of the patent
system, and offering patent prosecution
options to applicants. By maintaining
the current fee setting philosophy ofkeeping front-end fees below the cost of
application processing and recovering
revenue from back-end fees, the final feeschedule continues to foster innovationand ease access to the patent system.
The final fee schedule also continues tooffer incentives and disincentives toengage in certain activities that facilitate
effective administration of the patent
system and help reduce the amount oftime it takes to have a patent application
examined. For example, application size
fees, extension of time fees, and excess
claims fees remain in place to facilitate
the prompt conclusion of prosecution ofan application. The final fee schedule
likewise includes multipart and staged
fees for RCEs, appeals, and contested
cases, all of which aim to increase
patent prosecution options forapplicants. The qualitative benefits ofthe fee schedule design include new
options for applicants to reduce theirfront-end costs for some services (e.g.,
appeals) until they have more

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information to determine the bestprosecution option for their innovation.
Lastly, shortening pendency reduces
uncertainty regarding the claimed
invention and scope of patent rights forpatentees, competitors, and newentrants. Reducing uncertainty has asignificant benefit in terms of clarity ofpatent rights, freedom to innovate, andthe efficient operation of markets fortechnology.
To assess the qualitative costs of the
final fee schedule, the Office assessed
the costs of its patent operations. The
Office’s cost of patent operations varies
depending on the number of incoming
patent applications and the amount of
resources available. As discussed in Part
IV. Fee Setting Methodology (see Step1), the cost of operations included inthis final rule also reduced slightly fromthat estimated in the NPRM. See Table
1.
For FY 2013—FY 2015, the Officecontinues to project an annual increasein the number of serialized patentapplication filings, though the increases
to some fees in the new fee structure
may result in a slightly slower growthrate than that estimated under the
Baseline. Nevertheless, the Officeestimated that new patent application
filings would return to the same annual
growth rate anticipated in the absence of
fee increases beginning in FY 2016.
Overall, the demand for patentapplication services is generally
inelastic (see USPTO Section 10 Fee
Setting—Description of Elasticity
Estimates,’’ at http://www.uspto.gov/
aia_implementation/fees.jsp#heading1), and even with these slight decreases,
the total number of patent applications
filed is projected to grow year-after-year.
The Office considered the costassociated with this slight reduction inpatent applications filed as a reduction
to the benefit of the increased patentvalue when assessing the overall net
benefit of the final fee schedule. See
Table 1.
Additional details describing thebenefits and costs of the final feeschedule are available in the RIA at
http://www.uspto.gov/
aia_implementation/fees.jsp#heading-1.
II. Legal Framework
A. Leahy-Smith America Invents Act—
Section 10
The Leahy-Smith America Invents Act
was enacted into law on September 16,
2011. See Public Law 112–29, 125 Stat.
284. Section 10(a) of the Act authorizes
the Director of the Office to set or adjust
by rule any patent fee established,authorized, or charged under Title 35,
U.S.C. for any services performed by, or

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materials furnished by, the Office. Fees
under 35 U.S.C. may be set or adjusted
only to recover the aggregate estimatedcost to the Office for processing,activities, services, and materials related
to patents, including administrative
costs to the Office with respect to suchpatent operations. See 125 Stat. at 316.
Provided that the fees in the aggregate
achieve overall aggregate cost recovery,
the Director may set individual fees
under section 10 at, below, or above
their respective cost. The Office’s
current fee structure includes statutory
fees (set by Congress) that provide
lower, below cost fees on the front endof the patent process (e.g., filing,
searching, and examination fees), which
are in turn balanced out by higher,
above cost fees on the back end (i.e.,
issue and maintenance fees). Thisbalance enables the Office to provide
lower costs to enter the patent system,
making it easier for inventors to pursue
patents for their innovations, and theselower front-end fees are off-set by higher
back-end fees. Congress set this balance
when it established the existing
statutory fee structure, and the Officecontinues to follow this model with thefee structure in this final rule, because
a key policy consideration is to foster
innovation by facilitating access to thepatent system. Section 10(e) of the Act
requires the Director to publish the final
fee rule in the Federal Register and the
Official Gazette of the Patent andTrademark Office at least 45 days before
the final fees become effective. Section
10(i) terminates the Director’s authority
to prospectively set or adjust any fee
under section 10(a) upon the expirationof the seven-year period that began on
September 16, 2011.

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B. Small Entity Fee Reduction
Section 10(b) of the AIA requires the
Office to reduce by 50 percent the fees
for small entities that are set or adjusted
under section 10(a) for filing, searching,examining, issuing, appealing, andmaintaining patent applications andpatents.
C. Micro Entity Fee Reduction
Section 10(g) of the AIA amends
Chapter 11 of Title 35, U.S.C. to add
section 123 concerning micro entities.
Section 10(b) of the Act requires the
Office to reduce by 75 percent the feesfor micro entities that are set or adjusted
under Section 10(a) for filing, searching,examining, issuing, appealing, andmaintaining patent applications andpatents. In a separate rulemaking,pursuant to 35 U.S.C. 123, the Office
implemented the micro entity
provisions of the AIA. See 77 FR 75019(Dec. 19, 2012).

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D. Patent Public Advisory Committee
Role
The Secretary of Commerceestablished the Patent Public Advisory
Committee (PPAC) under the American
Inventors Protection Act of 1999. 35
U.S.C. 5. The PPAC advises the Under
Secretary of Commerce for Intellectual
Property and Director of the USPTO on
the management, policies, goals,
performance, budget, and user fees ofpatent operations.
When adopting patent fees under
section 10 of the Act, the Director must
provide the PPAC with the proposed
fees at least 45 days prior to publishing
the proposed fees in the Federal
Register. The PPAC then has at least 30
days within which to deliberate,consider, and comment on the proposal,
as well as to hold public hearing(s) on
the proposed fees. The PPAC must makea written report available to the publicof the comments, advice, andrecommendations of the committee
regarding the proposed fees before the
Office issues any final fees. The Officewill consider and analyze any
comments, advice, or recommendations
received from the PPAC before finallysetting or adjusting fees.
Consistent with this framework, on
February 7, 2012, the Director notified
the PPAC of the Office’s intent to set or
adjust patent fees and submitted apreliminary patent fee proposal withsupporting materials. The preliminary
patent fee proposal and associatedmaterials are available at http://
www.uspto.gov/about/advisory/ppac/.
The PPAC held two public hearings: one
in Alexandria, Virginia, on February 15,
2012, and another in Sunnyvale,
California, on February 23, 2012.
Transcripts of these hearings andcomments submitted to the PPAC inwriting are available for review at http://
www.uspto.gov/about/advisory/ppac/.
The PPAC submitted a written reporton September 24, 2012, setting forth indetail the comments, advice, andrecommendations of the committee
regarding the proposed fees. The reportis available for review at http://
www.uspto.gov/aia_implementation/
fees.jsp#heading-1. The Officeconsidered and analyzed the comments,
advice, and recommendations received
from the PPAC before publishing thisfinal rule. The Office’s response to the
PPAC’s report is available in the
Discussion of Comments at Part VI ofthis rulemaking.
III. Rulemaking Goals and Strategies
Consistent with the Office’s goals andobligations under the AIA, the overall
strategy of this rulemaking is to ensure

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that the fee schedule generates sufficientrevenue to recover aggregate costs.
Another strategy is to set individual fees
to further key policy considerations
while taking into account the cost of theparticular service. As to the strategy ofbalancing aggregate revenue andaggregate cost, this rule will provide
sufficient revenue for two significant
USPTO goals: (1) Implement asustainable funding model for
operations; and (2) optimize patent
timeliness and quality. As to thestrategy of setting individual fees tofurther key policy considerations, thepolicy factors contemplated are: (1)Fostering innovation; (2) facilitating
effective administration of the patent
system; and (3) offering patent
prosecution options to applicants.
These fee schedule goals andstrategies are consistent with strategic
goals and objectives detailed in the
USPTO 2010–2015 Strategic Plan
(Strategic Plan) that is available at
http://www.uspto.gov/about/stratplan/
USPTO_2010–2015_Strategic_Plan.pdf,
as amended by Appendix #1 of the FY
2013 President’s Budget, available at
http://www.uspto.gov/about/stratplan/budget/fy13pbr.pdf (collectively
referred to herein as ‘‘Strategic Goals’’).
The Strategic Plan defines the USPTO’s
mission and long-term goals andpresents the actions the Office will taketo realize those goals. The significant
actions the Office describes in theStrategic Plan that are specific to thegoals of this rulemaking are
implementing a sustainable funding
model, reducing the patent application
backlog, decreasing patent application
pendency, improving patent quality,
and upgrading the Office’s patent IT
business capability and infrastructure.
Likewise, the fee schedule goals andstrategies also support the Strategy for
American Innovation—anAdministration initiative first releasedin September 2009, and updated in
February 2011, that is available at
http://www.whitehouse.gov/innovation/
strategy. The Strategy for American
Innovation recognizes innovation as thefoundation of American economic
growth and national competitiveness.
Economic growth in advanced
economies like the United States isdriven by creating new and better waysof producing goods and services, a
process that triggers new and productive
investments, which is the cornerstone of
economic growth. Achieving theStrategy for American Innovation
depends, in part, on the USPTO’s
success in reducing the patentapplication backlog and in decreasing
patent application pendency—both ofwhich stall the delivery of innovative

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goods and services to market and
impede economic growth and thecreation of high-paying jobs. This rule
positions the USPTO to reduce thepatent application backlog and decrease
patent application pendency.

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A. Ensure the Overall Fee Schedule
Generates Sufficient Revenue To
Recover Aggregate Cost
The first fee setting strategy is toensure that the fee schedule generates
sufficient aggregate revenue to recover
the aggregate cost to maintain USPTO
operations and accomplish USPTO
strategic goals. Two overriding
principles motivate the Office in thisregard: (1) Operating with a moresustainable funding model than in thepast to avoid disruptions caused byfluctuations in the economy; and (2)accomplishing strategic goals, including
the imperatives of reducing the patentapplication backlog and decreasing
patent application pendency. Eachprinciple is discussed in greater detailbelow.
1. Implement a Sustainable Funding
Model for Operations
As explained in the Strategic Plan, theOffice’s objective of implementing asustainable funding model for
operations will facilitate USPTO’s longterm operational and financial planningand enable the Office to adapt tochanges in the economy and inoperational workload.
Since 1982, patent fees that generatemost of the patent revenue (e.g., filing,
search, examination, issue, andmaintenance fees) have been set bystatute, and the Office could adjustthese fees only to reflect changes in theConsumer Price Index (CPI) for All
Urban Consumers, as determined by the
Secretary of Labor. Because these fees
were set by statute, the USPTO could
not realign or adjust them to quickly
and effectively respond to market
demand or changes in processing costs
other than for the CPI. Over the years,
these constraints led to funding
variations and shortfalls. Section 10 of
the AIA changed this fee adjustment
model and authorized the USPTO to set
or adjust patent fees within theregulatory process so that the Office will
be better able to respond to its rapidly
growing workload.
The Budgets (see FY 2013 and FY
2014 President’s Budget Requests at
http://www.uspto.gov/about/stratplan/budget/index.jsp) delineate the annual
plans and prospective aggregate costs to
execute the initiatives in the Strategic
Plan. One of these costs is the growth ofa three-month patent operating reserveto allow effective management of the

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U.S. patent system and responsivenessto changes in the economy,
unanticipated production workload, andrevenue changes, while maintaining
operations and effectuating long-term
strategies. The Office evaluated the
optimal size of the operating reserve by
examining specific risk factors. There
are two main factors that create a risk ofvolatility in patent operations—spending levels and revenue streams.
After reviewing other organizations’operating reserves, the Office found thata fully fee-funded organization such as
the USPTO should maintain a minimumof a three-month operating reserve. The
fee schedule in this final rule will
gradually build the three-month
operating reserve. The USPTO willassess the patent operating reservebalance against its target balance
annually and, at least every two years,
will evaluate whether the target balance
continues to be sufficient to provide thestability in funding needed by the
Office. By implementing this fee
schedule, the USPTO anticipates thatthe three-month patent operating
reserve will be achieved in FY 2018.
The fees in this final rule will provide
the USPTO with sufficient aggregate
revenue to recover the aggregate cost tooperate the Office while improving thepatent system. During FY 2013, patent
operations will cost $2.479 billion after
accounting for an offset to spending
from other income of $23 million and awithdrawal from the operating reserveof $28 million. The final fee scheduleshould generate $2.479 billion inaggregate revenue to offset these costs.
Once the Office transitions to the feelevels set forth in this final rule, itestimates an additional $11.5 billion inaggregate revenue will be generated
from FY 2014 through FY 2017 torecover the total aggregate cost over thesame time period—$11.1 billion in
operating costs and $0.4 billion in athree-month operating reserve. (SeeTable 3 in Part IV, Step 2 of this rule.)
Under the new fee structure, as in thepast, the Office will continue toregularly review its operating budgets
and long-range plans to ensure that the
USPTO uses patent fees prudently.
2. Optimize Patent Quality andTimeliness
The Office developed the strategic
goal of optimizing patent quality andtimeliness in response to intellectual
property (IP) community feedback, theStrategy for American Innovation, andin recognition that a sound, efficient,and effective IP system is essential fortechnological innovation and for patent
holders to reap the benefits of patent
protection.

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In past years, a steady increase inincoming patent applications andinsufficient patent examiner hiring due
to multi-year funding shortfalls has led
to a large patent application backlog andlong patent application pendency.
Decreasing pendency increases theprivate value of a patent because thefaster a patent is granted, the more
quickly the patent owner cancommercialize the innovation. Shorter
pendency also allows for earlier
disclosure of the scope of the patent,
which reduces uncertainty for thepatentee, potential competitors, andadditional innovators regarding patentrights and the validity of the patentee’s
claims.
To reduce the backlog and decrease
patent application pendency, the
USPTO must examine significantly
more patent applications than it
receives each year for the next several
years. Bringing the applications in thebacklog down to a manageable level,
while at the same time keeping pacewith the new patent applications
expected to be filed each year, requires
the Office to collect more aggregate
revenue than it estimates that it willcollect at existing fee rates. The Officeneeds this additional revenue to hire
additional patent examiners, improve
the patent business IT capability andinfrastructure, and implement otherprograms to optimize the timeliness ofpatent examination. This final rule will
result in an average first action patentapplication pendency of 10 months in
FY 2016, an average total pendency of
20 months in FY 2017, and a reduced
patent application backlog andinventory of approximately 335,000
patent applications by FY 2016. This
would be a significant improvement
over the 21.9 months and 32.4 months
for average first action patentapplication pendency and average total
pendency, respectively, at the end of FY
2012. Under this final rule, the patentapplication backlog is also expected todecrease significantly from the 608,300
applications in inventory as of the endof FY 2012.
In addition to timeliness of patent
protection, the quality of application
review is critical to ensure that thevalue of an issued patent is high.
Quality issuance of patents provides
certainty in the market and allows
businesses and innovators to makeinformed and timely decisions on
product and service development.
Through this final rule, the Office willcontinue to improve patent quality
through comprehensive training for new
and experienced examiners, an
expanded and enhanced ombudsmen
program to help resolve questions about

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TKELLEY on DSK3SPTVN1PROD withapplications, improved hiring processes,
and guidelines for examiners to address
clarity issues in patent applications. The
Office also will continue to encourageinterviews between applicants andexaminers to help clarify allowablesubject matter early in the examination
process and to encourage interviews
later in prosecution to resolve
outstanding issues. Lastly, the Officewill continue to reengineer theexamination process, and to monitor
and measure examination using acomprehensive set of metrics thatanalyze the quality of the entire process.
In addition to direct improvements topatent quality and timeliness, the
USPTO’s development andimplementation of the patent end-to-end
processing system using the revenue
generated from this fee structure will
improve the efficiency of the patent
system. The IT architecture and systems
in place currently are obsolete anddifficult to maintain, leaving the USPTO
highly vulnerable to disruptions inpatent operations. Additionally, thecurrent IT systems require patent
employees and external stakeholders to
perform labor-intensive businessprocesses manually, decreasing theefficiency of the patent system. This
final rule provides the Office with
sufficient revenue to modernize its IT
systems so that the majority of
applications are submitted, handled,and prosecuted electronically. Improved
automation will benefit both the Office
and innovation community.
B. Set Individual Fees To Further Key
Policy Considerations, While Taking
Into Account the Costs of the ParticularService
The second fee setting strategy is toset individual fees to further key policy
considerations, while taking into
account the cost of the associatedservice or activity. This fee schedule
recovers the aggregate cost to the Officeof operations, while also considering theindividual cost of each service
provided. This includes considerationthat some applicants may use particularservices in a more costly manner thanother applicants (e.g., patentapplications cost more to process whenmore claims are filed). The final feeschedule considers three key policy
factors: (1) Fostering innovation; (2)facilitating effective administration of
the patent system; and (3) offering
patent prosecution options toapplicants. The Office focused on thesepolicy factors because each promotes
particular aspects of the U.S. patent
system. Fostering innovation is an
important policy factor to ensure thataccess to the U.S. patent system is

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without significant barriers to entry, andinnovation is incentivized by granting
inventors certain short-term exclusive
rights to stimulate additional inventive
activity. Facilitating effective
administration of the patent system isimportant to influence efficient patent
prosecution, resulting in compact
prosecution and a decrease in the time
it takes to obtain a patent. In addition,
the Office recognizes that patent
prosecution is not a one-size-fits-all
process and therefore, where feasible,
the Office endeavors to fulfill its third
policy factor of offering patent
prosecution options to applicants. Eachof these policy factors is discussed ingreater detail below.
1. Fostering Innovation
To encourage innovators to takeadvantage of patent protection, theOffice sets basic ‘‘front-end’’ fees (e.g.,filing, search, and examination) below
the actual cost of carrying out these
activities. Likewise, consistent with therequirements in the Act, the Officeprovides fee reductions for small andmicro entity innovators to facilitate
access to the patent system. Setting
front-end and small and micro entity
fees below cost requires, however, that
other fees be set above cost. To that end,
the Office sets basic ‘‘back-end’’ fees(e.g., issue and maintenance) in excess
of costs to recoup revenue not collectedby front-end and small and micro entity
fees. Charging higher back-end fees also
fosters innovation and benefits theoverall patent system. After a patent isgranted, a patent owner is better
positioned, as opposed to at the time offiling a patent application, to moreclosely assess the expected value of an
invention, which is a consideration in
determining whether to pay
maintenance fees to keep the patent
protecting the invention in force.
Expiration of a patent makes the subject
matter of the patent available in the
public domain for subsequentcommercialization. Determining theappropriate balance between front-end
and back-end fees is a criticalcomponent of aligning the Office’s costs
and revenues.
2. Facilitating Effective Administrationof the Patent System
The fee structure in this final rule
helps facilitate effective administrationof the patent system by encouraging
applicants or patent holders to engage incertain activities that facilitate aneffective patent system. In particular,setting fees at the particular levels will:(1) Encourage the submission of
applications or other actions that enable
examiners to provide prompt, quality

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interim and final decisions; (2)encourage the prompt conclusion ofprosecution of an application, which
results in pendency reduction, faster
dissemination of information, andcertainty in patented inventions; and (3)help recover the additional costs
imposed by some applicants’ more
intensive use of certain services thatstrain the patent system than otherapplicants.
3. Offering Patent Prosecution Options
to Applicants
The final fee schedule provides
applicants with flexible and costeffective options for seeking patent
protection. For example, the Office issetting multipart and staged fees for
RCEs, appeals, and contested cases. The
Office breaks the RCE fee into two parts.
The fee for a first RCE is set more than
30 percent below cost to facilitate accessto the service and in recognition thatmost applicants using RCEs only require
one per application. The fee for asecond and subsequent RCE is set only
slightly below cost as an option for
those who require multiple RCEs.
Likewise, the staging of appeal fees
allows applicants to pay less insituations when an application underappeal is either allowed or reopened
rather than being forwarded to the
Patent Trial and Appeal Board (PTAB).
Finally, the establishment of multipartand staged fees for contested cases
improves access to these proceedings
while removing low quality patentsfrom the patent system.
Summary of Rationale and Purpose of
the Final Rule
The final patent fee schedule willproduce aggregate revenues to recover
the aggregate costs of the USPTO,
including for its management ofstrategic goals, objectives, andinitiatives in FY 2013 and beyond.
Using the two Strategic Plan goals(implementing a sustainable funding
model for operations and optimizing
patent quality and timeliness) as afoundation, the final rule provides
sufficient aggregate revenue to recover
the aggregate cost of patent operations,
including implementing a sustainablefunding model, reducing the current
patent application backlog, decreasing
patent application pendency, improving
patent quality, and upgrading the patentbusiness IT capability andinfrastructure. Additionally, in this final
rule, the Office considered individual
fees by evaluating its historical cost(where available) and considering thepolicy factors of fostering innovation,
facilitating effective administration of

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the patent system, and offering patent
prosecution options to applicants.

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IV. Fee Setting Methodology
As explained in the NPRM, there arethree iterative and interrelated steps
involved in developing the fees:
Step 1: Determine the prospective
aggregate costs of patent operations overthe five-year period, including the costof implementing new initiatives toachieve strategic goals and objectives.
Step 2: Calculate the prospective
revenue streams derived from theindividual fee amounts (from Step 3)
that will collectively recover theprospective aggregate cost over the fiveyear period.
Step 3: Set or adjust individual fee
amounts to collectively (throughexecuting Step 2) recover projected
aggregate cost over the five-year period,
while furthering key policy
considerations.
A description of how the USPTO
carries out these three steps is set forthin turn. Where key projections or inputs
have changed since the NPRM, theOffice explains the reasons underlying
the revised estimates.
Step 1: Determine Prospective Aggregate
Costs
Calculating aggregate costs isaccomplished primarily through theroutine USPTO budget planning andformulation process. The Budget is afive-year plan (that the Office preparesand updates annually) for carrying out
base programs and implementing thestrategic goals and objectives.
The first activity performed todetermine prospective aggregate cost is
to project the level of demand for patentproducts and services. Demand for
products and services depends on manyfactors, including domestic and global
economic activity. The USPTO also
takes into account overseas patenting
activities, policies and legislation, andknown process efficiencies. Because
examination costs are approximately 70
percent of the total patent operating
cost, a primary production workload
driver is the number of patentapplication filings (i.e., incoming work
to the Office). The Office looks at
indicators such as the expected growth
in Real Gross Domestic Product (RGDP),the leading indicator to incoming patentapplications, to estimate prospective
workload. RGDP is reported by the
Bureau of Economic Analysis(www.bea.gov), and is forecasted eachFebruary by the Office of Management
and Budget (OMB) (www.omb.gov) in
the Economic and Budget Analyses
section of the Analytical Perspectives,and each January by the Congressional

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Budget Office (CBO) (www.cbo.gov) in
the Budget and Economic Outlook. A
description of the Office’s methodology
for using RGDP can be found in thesection of the annual budget entitled,‘‘USPTO Fee Collection Estimates/
Ranges.’’ See annual budget available at
http://www.uspto.gov/about/stratplan/budget/index.jsp. The expected change
in the required production workload
must then be compared to the current
examination production capacity todetermine any required staffing andoperating cost (e.g., salaries, workload
processing contracts, and printing)adjustments. The Office uses a patentapplication pendency model that
estimates patent production output
based on actual historical data andinput assumptions, such as incoming
patent applications, examiner attrition
rates, and overtime hours. An overview
of the model and a simulation tool isavailable at http://www.uspto.gov/
patents/stats/patent_pend_model.jsp.
Further information, including a moredetailed description of inputs, outputs,
and key data relationships, is available
from the Office upon request.
The second activity is to calculate theaggregate costs to execute therequirements. In developing its annual
budgets, the Office first looks at the costof status quo operations (the baserequirements). The base requirements(e.g., salaries for employees on-board)
are adjusted for anticipated pay raises
and inflationary increases for theperiods FY 2013–FY 2017 (examples ofthe detailed calculations andassumptions for this adjustment to baseare available in the annual Budgets).
The Office then estimates theprospective cost for expected changes in
production workload and new
initiatives over the same period of time(refer to ‘‘Program Changes by SubActivity’’ sections of the Budget). The
Office reduces cost estimates forcompleted initiatives and known costsavings expected over the same five-year
horizon (see page 9 of the FY 2013
President’s Budget). Finally, the Officeestimates its three-month target
operating reserve level based on thisaggregate cost calculation for the year todetermine if operating reserve
adjustments are necessary.
The estimate for the FY 2013
aggregate costs contained in this final
rule ($2.479 billion) is $125 million lessthan the estimate contained in the
NPRM ($2.604 billion). The Officelowered its aggregate cost estimate in
response to public comments expressing
a desire for the Office to achieve its
goals over a longer timeframe and toincorporate additional efficiencies into
operations. In some instances, the Office

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4217

was also able to use more recent data.
The most significant factors affecting the
reduction in aggregate costs include: (1)Decreasing the amount deposited into
the operating reserve as well as
extending the timeframe for reaching
the target amount of the operating
reserve, and (2) lengthening thetimeframe for achieving pendency goals
and optimal inventory levels, andaccounting for other changes related tooperational costs and efficiencies. Eachis discussed in turn.
First, the Office decided to slow thegrowth of the operating reserve, as well
as reduce the amount of fees deposited
into the operating reserve during FY
2013, in response to public and PPAC
comments. See response to PPAC
Comment 6 and Public Comments 18
and 19. The Office is slowing the growthof the operating reserve due to a
reduction in aggregate revenue, as
explained in more detail in Step 2,
below. In the NPRM, the Officeestimated reaching a target operating
reserve level of three months in FY
2017. In this final rule, the adjustments
to aggregate revenue and fee amounts
have slowed the pace for reaching thethree month operating reserve target tobeyond the five-year planning period(approximately FY 2018). (See PPAC
Comments 6, 7, 11, 14, 16, and 23; andPublic Comments 2, 18, 41, 42, 43, and45 for additional information). Whenestimating aggregate costs for the NPRM,
the Office planned to deposit $73
million in the operating reserve in FY
2013. In the updated estimate ofaggregate costs calculated for this final
rule, the Office plans to use $28 millionof operating reserve funds in FY 2013.
The net change of activity results in adecrease of aggregate costs associatedwith the operating reserve of $101
million.
The Office is using funds from theoperating reserve in FY 2013 due to two
main components of aggregate cost—an
increase in the cost of existing baserequirements and the timing of
implementing the fees included in the
final rule. As discussed in more detailbelow, the Office experienced
historically low examiner attrition rates(the rate at which examiners left the
Office). This lower than planned
attrition rate resulted in additional
higher paid examiners on board during
FY 2013, increasing the aggregate cost ofbase requirements of patent examination(existing examiners on board).
Additionally, the Office will publish
this final rule one month later thanoriginally anticipated in the NPRM
(April instead of March 2013). This later
publication date reduces the amount ofrevenue originally estimated to be

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collected during FY 2013. Further, theOffice anticipates a ‘‘bubble’’ of fee
payments paid at the current fee rates,
prior to the effective date of the fees inthis final rule. This ‘‘bubble’’ is typicalin years with fee changes. Therefore,
these situations require the Office to use
the operating reserve in FY 2013,
whereas in FY 2014 through FY 2017,
the Office estimates it will deposit funds
in the operating reserve.
Second, many public comments andthe PPAC report strongly urged the
Office to achieve the 10 month firstaction patent application pendency andthe 20 month total patent application
pendency goals more gradually thanproposed, and to achieve a ‘‘soft
landing’’ to reach the optimal patentapplication inventory and workforce
levels at a slower rate than proposed.
See PPAC Comment 7 and Public
Comment 2. During FY 2012, the Officeexamined more patent applications thanit initially anticipated, in part becauseof historically low attrition rates. In the
NPRM, the Office anticipated an
attrition of 5.8 percent in FY 2013, but
in the final rule, the Office now
anticipates an attrition rate of 4.0
percent in FY 2013 (the same attrition
rate the Office experienced in FY 2012).
In response to comments and tocapitalize on the historically low
attrition rates, the Office is recalibrating
its examination capacity during the fiveyear planning period of this final rule byreducing the number of examiners thatare hired, increasing the amount ofovertime allotted for production, andhiring more experienced examiners.
Instead of planning to hire 1,500 patentexaminers in FY 2013 (as the NPRM
estimated), the Office now plans to hire
1,000 patent examiners in FY 2013. The
Office also reevaluated its hiring plansin FY 2013 to include hiring more
patent examiners with greater IP
experience and knowledge, thus making
this smaller number of hires moreproductive sooner than originally
expected. This recalibration results in amore costly examiner production
capacity (because the more experienced
hires are paid a higher salary) in the
beginning (FY 2013 and FY 2014) of the
five-year planning period whencomparing the net operating
requirements (see Table 3) per
production unit (see Table 2) in the final
rule to that in the NPRM. However, as
the Office begins reaping the benefits of
the overtime and hiring recalibration,
the examiner production capacity
begins to cost less in FY 2015, so thatthe total net operating cost per
production unit over the five-yearplanning period is less in the final rulethan in the NPRM. For example, in FY
2013, the net operating requirements per
production unit are approximately$4,200 in this final rule ($2.507 billion
divided by 596,200 production units)compared to approximately $4,100 in
the NPRM. In FY 2015, the net operating
requirements per production unit areapproximately $4,020 in this final rule($2.779 billion divided by 691,300
production units) compared toapproximately $4,046 in the NPRM.
This initial increase in aggregate cost isnecessary to establish the examination
capacity needed to achieve the ‘‘soft
landing’’ referred to in the commentsfrom the PPAC and the public.
The ‘‘soft landing’’ is evident whenlooking at the more gradual increase inproduction units over four years(596,200 in FY 2013 increasing to698,500 in FY 2016) in this final rule(see Table 2) compared to the rapid
increase in the NPRM over three years(620,600 in FY 2013 increasing to694,200 in FY 2015). Also, maintaining
fewer examiners on board throughout
and at the end of the five-year planninghorizon (7,800 in FY 2017 in the final
rule compared to 8,200 in FY 2017 in
the NPRM) permits the Office to use
production overtime as a lever to arriveat the future ‘‘soft landing’’ whenevaluating actual inputs impacting the
production modeling (application filinglevels, examiner attrition rates, andproduction levels).
While the examination costs
marginally increase in the early years
due to the higher cost of baseexamination capacity (because the
Office has greater expenses associatedwith having more examiners thaninitially projected from lower attrition
rates and more experienced examiners),
the Office has more than offset thisincrease by reducing patent operationalcosts in other areas such as deferring
slightly some IT investment plans andleveraging operational efficiencies,
consistent with public comments and aroutine annual review and update of thepatent operating and budget plans. See
PPAC Comment 7 and Public Comment
2. In addition, in the time between the
publication of the NPRM and theformulation of this final rule, additional
information concerning key inputs tothe patent application pendency model
became available, so the Office revised
certain projections as discussed below.
For example, after reviewing FY 2012
filing data and RGDP information
available after the NPRM published (seeStep 2: Calculate Prospective Aggregate
Revenue), the Office lowered its
estimates for the level of demand ofpatent products and services(application filing levels). In the NPRM,
the Office projected a growth rate of 6.0
percent in FY 2013–FY 2014; 5.5
percent in FY 2015–FY 2016; and 5.0
percent in FY 2017. Based on actual
filing data from FY 2012, the Office now
believes that a projected growth rate of
5.0 percent for each of FY 2013–FY
2017 is appropriate in this final rule.
This means that examiner production
capacity and aggregate costs are reduced
because somewhat fewer patentapplications are projected to be filed,
and the work associated with those
applications is less, as compared to the
NRPM projections.
Many of the key inputs affecting
lower aggregate costs and revenue aresummarized in Table 2.

TABLE 2—PATENT PRODUCTION WORKLOAD PROJECTIONS—FY 2013–FY 2017

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Utility, Plant, and Reissue (UPR)FY 2013

Applications * ........................................................................
Growth Rate ** .....................................................................
Production Units ...................................................................
End of Year Backlog ............................................................
Examination Capacity ** .......................................................
Performance Measures (UPR):
Avg. First Action Pendency (Months) ...........................
Avg. Total Pendency (Months) .....................................

FY 2014

FY 2015

FY 2016

FY 2017558,900
5.0%
596,200
566,800
8,500

586,800
5.0%
655,200
486,500
8,400

616,200
5.0%
691,300
398,900
8,200

647,000
5.0%
698,500
334,300
8,000

679,300
5.0%
641,300
358,500
7,800

18.0
30.1

15.8
26.1

12.9
23.7

10.5
21.0

10.0
18.8

* In this table, the patent application filing data includes requests for continued examination (RCEs).
** In this table, demand for patent examination services, which is used to calculate aggregate cost, is not adjusted for price elasticity.

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Overall, the Office estimates thatduring FY 2013, patent operations will
cost $2.530 billion, including $1.761
billion for patent examination activities;$340 million for IT systems, support,
and infrastructure contributing to patent
operations; $58 million for activities
related to patent appeals and the new
AIA inter partes dispute actions; $48
million for activities related to IP
protection, policy, and enforcement;

and $323 million for general support
costs necessary for patent operations(e.g., rent, utilities, legal, financial,human resources, and otheradministrative services). In addition, theOffice estimates collecting $23 million
in other income associated withreimbursable agreements (offsets tospending) and using $28 million fromthe operating reserve during FY 2013 tosustain operations. Detailed

4219

descriptions of operating requirements
are located in the USPTO annual
budgets (see http://www.uspto.gov/
about/stratplan/budget/index.jsp).
Table 2 above provides key underlying
production workload projections andassumptions used to calculate aggregate
cost. Table 3 presents the total
budgetary requirements (prospective
aggregate cost) for FY 2013 through FY
2017.

TABLE 3—ESTIMATED ANNUAL AGGREGATE COSTS AND FINAL FEE SCHEDULE AGGREGATE REVENUES(In millions)
FY 2013Aggregate Cost Estimate:
Planned Operating Requirements ................................
Less Other Income * ..............................................
Net Operating Requirements ...............................................
Planned Deposit in Operating Reserve ...............................
Total Aggregate Cost Estimate .............................
Aggregate Revenue Estimate ** ..........................................
Cumulative Operating Reserve Balance.
Target Operating Reserve ............................................
Operating Reserve Ending FY 2012 Balance $112 .....
Over/(Under) Target Balance*** ...................................

FY 2014

FY 2015

FY 2016

FY 2017$2,530
(23)
2,507
(28)
2,479
2,479

$2,739
(23)
2,716
90
2,806
2,806

$2,802
(23)
2,779
92
2,871
2,871

$2,852
(23)
2,829
98
2,927
2,927

$2,815
(23)
2,792
117
2,909
2,909

633
84
(549)

685
174
(511)

701
266
(435)

713
364
(349)

704
481
(223)

* The Office collects other income associated with reimbursable agreements (offsets to spending) and recoveries of funds obligated in prioryears in the amount of approximately $23 million each year.
** The proposed fee schedule will generate less revenue compared to the FY 2013 President’s Budget in an effort to slow the growth of theoperating reserve over the next five years.
*** The Office estimates that it will meet the three-month operating reserve target in FY 2018.

TKELLEY on DSK3SPTVN1PROD with

Step 2: Calculate Prospective Aggregate
Revenue
As described in Step 1, the USPTO’s
annual requirements-based budgets
include the aggregate prospective cost ofplanned production, new initiatives,and an operating reserve planned for the
Office to realize its strategic goals andobjectives for the next five years. The
aggregate prospective cost becomes thetarget aggregate revenue level that the
new fee schedule must generate in agiven year and over the five-yearplanning horizon. The estimate for the
FY 2013 aggregate revenue contained inthis final rule ($2.479 billion) is $125
million less than the estimate containedin the NPRM ($2.604 billion). As
discussed in more detail in Step 1, theOffice has lowered its aggregate costestimate in response to publiccomments expressing a desire for the
Office to achieve its goals over a longer
timeframe and to incorporate additional
efficiencies into operations. This
reduction in aggregate costs requires acorresponding reduction in aggregate
revenue. The most significant factors
affecting the reduction in aggregate
revenues include: (1) Decreasing fee
amounts (see PPAC Comments 6, 7, 11,
14, 16, and 23; and Public Comments 2,
18, 41, 42, 43, and 45 for additional
information); (2) publishing this final

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rule one month later than originally
anticipated in the NPRM (April insteadof March 2013) and thereby reducing
the amount of revenue originallyestimated to be collected during FY
2013; and (3) lengthening the timeframe
for achieving pendency goals andoptimal inventory levels (see Step 1,
above for additional information).
Following is a discussion of themethodology used to calculate aggregate
revenue.
As explained in the NPRM, tocalculate the aggregate revenue
estimates, the Office first analyzes
relevant factors and indicators todetermine prospective fee workloadvolumes (e.g., number of applications
and requests for services and products)
for the five-year planning horizon.
Economic activity is an importantconsideration when developing
workload and revenue forecasts for the
USPTO’s products and services because
economic conditions affect patenting
activity, as most recently exhibited in
the recession of 2009 when incoming
workloads and renewal rates declined.
Major economic indicators include
the overall condition of the U.S. andglobal economies, spending on researchand development activities, andinvestments that lead to thecommercialization of new products andservices. The most relevant economic

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indicator that the Office uses is the
RGDP, which is the broadest measure of
economic activity. RGDP growth isfactored into estimates of patentapplication levels. RGDP is anticipatedto grow approximately three percent for
FY 2013 based on OMB and CBO
estimates provided in February andJanuary of 2012, respectively. CBO
prepared updated economic guidance inAugust 2012, temporarily altering its
projection methodology to reflect
heightened uncertainty over fiscal
policy conditions and concerns. The
August 2012 CBO estimates envisionvarious economic scenarios instead of asingle point estimate as CBO typically
prepared. Nonetheless, the Office madecalculations based on CBO’s August2012 estimates and they had a negligible
impact on forecasts of the Office’s
workloads given the +/¥ 5 percent
outer bounds discussed below.
Economic indicators also provide
insight into market conditions and the
management of IP portfolios, which
influence application processing
requests and post-issuance decisions tomaintain patent protection. Whendeveloping fee workload forecasts, theOffice considers other influential factors
including overseas activity, policies andlegislation, process efficiencies, andanticipated applicant behavior.

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TKELLEY on DSK3SPTVN1PROD withThe Office’s methodology to estimate
aggregate revenue was updated toconsider two new elements related
setting and adjusting fees using the newsection 10 fee setting authority. The firstincludes adjustments to fee workload
estimates as a result of changes indemand for services. In the past, feesthat comprise a majority of the Office’s
aggregate revenue (e.g., filing, search,
examination, issue, and maintenance)
were adjusted based on minimal CPI
increases. In this rule, the Office is bothincreasing and decreasing fees byamounts larger than it experienced with
CPI increases in the past. Therefore, theOffice considered impacts of applicant
and patentee behavior in response to thefee changes. The second incorporates
the new discount for micro entity
applicants and patentees. The
introduction of the new micro entity
fees required the Office to estimate how
many small entity applicants andpatentees would pay fees at micro entity
rates. Each of these elements is
discussed in turn below.
Elasticity and Application Filing Levels
The economic indicators discussed
previously correlate with patentapplication filings, which, withadjustments for elasticity, are a key
driver of patent fees. As discussed
previously, in the NPRM, the Officeprojected an application filing growthrate of 6.0 percent in FY 2013—FY
2014, 5.5 percent in FY 2015—FY 2016,
and 5.0 percent in FY 2017. After
reviewing actual FY 2012 filing data andother economic indicators discussed
herein, the Office lowered its estimates
for the level of demand of patentproducts and services (application filinglevels). The Office now believes that a
projected growth rate of 5.0 percent foreach of FY 2013—FY 2017 isappropriate in this final rule.
The Office also considered how
applicant behavior in response to fee(price) changes included in this final
rule would impact the application filingdemand referenced above. Anticipatedapplicant behavior in response to feechanges is measured using an economic
principle known as elasticity which forthe purpose of this action means how
sensitive applicants and patentees are to
fee amounts or price changes. Ifelasticity is low enough (i.e., demand isinelastic), when fees increase, patentactivities will decrease only slightly inresponse thereto, and overall revenues
will still increase. Conversely, if
elasticity is high enough (i.e., demand iselastic), when fees increase, patenting
activities will decrease significantly
enough in response thereto such that
overall revenues will decrease. When

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developing fee forecasts, the Officeaccounts for how applicant behavior
will change at different fee amounts
projected for the various patent services.
Additional detail about the Office’s
elasticity estimates is available in‘‘USPTO Section 10 Fee Setting—Description of Elasticity Estimates,’’ at
http://www.uspto.gov/
aia_implementation/fees.jsp#heading-1.
Some of the information on which the
Office based its elasticity estimates are
copyrighted materials and are available
for inspection at the USPTO.
Using the information contained inthe ‘‘Description of Elasticity Estimates’’
document, the Office estimated that 1.3
percent fewer new (serialized)
applications than the number estimatedto be filed in the absence of a fee
increase would be filed during FY 2013as patent filers adjusted to the new fees,
specifically the increase in the total
filing, search, and examination fees formost applicants. The Office further
estimated that 2.7 percent fewer new
patent applications would be filed
during FY 2014, and 4.0 percent fewer
new patent applications would be filed
during FY 2015. However, the Officeestimated that new (serialized) patentapplication filings would return to thesame annual growth rate anticipated in
the absence of a fee increase beginningin FY 2016. Overall, the demand forpatent application services is generally
inelastic, and even with these slightdecreases, the total aggregate revenue
received from patent applications filed
is projected to grow year-after-year.
Micro Entity Applicants
The introduction of a new class ofapplicants, called micro entities,
requires a change to aggregate revenue
estimations, and the Office refined its
workload and fee collection estimates toinclude this new applicant class. See 35
U.S.C. 123; see also Changes to
Implement Micro Entity Status for
Paying Patent Fees, 77 FR 75019 (Dec.
19, 2012). 35 U.S.C. 123, which sets
forth the requirements that must be met
in order for an applicant to claim themicro entity discount, provides twobases under which an applicant may
establish micro entity status.
First, section 123(a) provides that theterm ‘‘micro entity’’ means an applicant
who makes a certification that theapplicant: (1) Qualifies as a small entity
as defined in 37 CFR 1.27; (2) has notbeen named as an inventor on morethan four previously filed patentapplications, other than applications
filed in another country, provisional
applications under 35 U.S.C. 111(b), orinternational applications for which thebasic national fee under 35 U.S.C. 41(a)PO 00000

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was not paid (except for applications
resulting from prior employment as
defined in section 123(b)); (3) did not,in the calendar year preceding thecalendar year in which the applicable
fee is being paid, have a gross income
exceeding three times the medianhousehold income for that preceding
calendar year; and (4) has not assigned,
granted, or conveyed, and is not underan obligation by contract or law toassign, grant, or convey, a license orother ownership interest in theapplication concerned to an entity that
had a gross income exceeding theincome limit described in (3).
Second, 35 U.S.C. 123(d) provides
that a micro entity also shall include anapplicant who certifies that: (1) The
applicant’s employer, from which theapplicant obtains the majority of theapplicant’s income, is an institution ofhigher education as defined in section
101(a) of the Higher Education Act of1965 (20 U.S.C. 1001(a)); or (2) theapplicant has assigned, granted,
conveyed, or is under an obligation bycontract or law, to assign, grant, or
convey, a license or other ownershipinterest in the particular applications tosuch an institution of higher education.
The Office revised the rules ofpractice in patent cases to implement
these micro entity provisions of the
Leahy-Smith America Invents Act in a
separate rulemaking. See 77 FR 75019(Dec. 19, 2012).
The Office estimates that when micro
entity discounts on patent fees areavailable, 31 percent of small entity
applications will be micro entity
applications, under the criteria set forthin section 123(a) and (d). In making thisestimate, the Office considered several
factors, including historical data on
patents granted. The Office began withpatent grant data, because the best
available biographic data on applicant
type (e.g., independent inventor anddomestic universities) comes frompatent grant data in the Office’s
database. A series of computations led
to the estimate that 31 percent of small
entity applicants will be micro entities.
The first set of computations estimatedthe number of persons who would
qualify for micro entity status under
Section 123(a). The Office began by
estimating the number of individuals
who were granted patents in FY 2011.
There were 221,350 utility patents
granted in FY 2011 as reported in the FY
2011 USPTO Performance andAccountability Report (PAR). The PAR
is available for review at http://
www.uspto.gov/about/stratplan/ar/
2011/index.jsp. The Office’s PatentTechnology Monitoring Team (PTMT)
provides data showing the split between

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domestic and foreign patent grants. (Itshould be noted that PTMT’s data isbased on the calendar year not the fiscal
year.) PTMT’s data is available at http://
www.uspto.gov/web/offices/ac/ido/oeip/
taf/all_tech.htm#PartA1_1b. From thisdata, the Office found that 5.0 percent
of utility patents granted in FY 2011were granted to individuals in the
United States and 1.9 percent were
granted to individuals from othercountries. These figures refer to patents
where the individuals were not listed in
the USPTO database as associated witha company. These individuals would
likely meet the criteria under section
123(a)(1) (small entity status). Using thisinformation, the Office estimates that
individuals in the United Statesreceived 11,068 utility patents (221,350
times 5.0 percent) in FY 2011, and that
individuals from other countries
received 4,206 utility patents (221,350
times 1.9 percent). In total, the Officeestimates that 15,274 (11,068 plus
4,206) patents were granted toindividuals in FY 2011.
Concerning the micro entity thresholdin 35 U.S.C. 123(a)(2), the Office’s
Patent Application Locating andMonitoring (PALM) database reportsthat 62 percent of both foreign anddomestic small entity applicants filed
fewer than 5 applications in FY 2009.
As stated above, an estimated 15,274
patent grants were to individuals both
domestic (11,068) and foreign (4,206).
Using this information, the Officeestimates that 6,862 (11,068 times 62
percent) patents will be granted todomestic applicants who meet thethresholds for micro entity status set
forth in sections 123(a)(1) and 123(a)(2),
while 2,608 (4,206 times 62 percent)patents will be granted to foreign
applicants who meet the same
thresholds.
Concerning the income threshold in
35 U.S.C. 123(a)(3), the medianhousehold income for calendar year
(CY) 2011 (the year most recently
reported by the Bureau of the Census)
was $50,054. See Income, Poverty, andHealth Insurance Coverage in the UnitedStates: 2011, at 5 and 33 (Table A–1)
(Sept. 2012) available at http://
www.census.gov/prod/2012pubs/p60243.pdf. (The Office will indicate
conspicuously on its Web site themedian household income reported by
the Bureau of the Census and theincome level that is three times themedian household income for thecalendar year most recently reported.)Thus, the income level specified in 35
U.S.C. 1.29(a)(3) and (a)(4) (three times
the median household income) is$150,162.

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The Internal Revenue Service (IRS)
records show that in 2009 about 97
percent of individuals (as proxied by the
total number of IRS form filings)
reported adjusted gross income of lessthan $200,000, and about 87 percent of
individuals reported adjusted grossincome of less than $100,000. See Table
1.1 at: http://www.irs.gov/taxstats/indtaxstats/article/0,,id=96981,00.html.
Using this information, the Officeestimates that 6,656 (6,862 times 97
percent) of patents granted toindividuals from the U.S. will be forindividuals under the gross income
threshold of the micro entity definition($150,162 for CY 2011). The Office uses
97 percent as the best available estimateof the maximum number of individuals
who satisfy the income limit. Medianhousehold income and gross income
levels are not readily available for thecountry of origin for all foreign
individuals. Therefore, the Officeconservatively estimates that all foreign
individuals will satisfy the income
requirements for micro entity fee
reductions, and that income alone
should not limit their eligibility. Using
the best available data, as presented
above, the Office estimates that the total
number of individuals who meet thethresholds set forth in 35 U.S.C.
123(a)(1), (a)(2), and (a)(3) is 9,264(6,656 from the United States and 2,608
foreign).
The 9,264 figure represents areasonable approximation of the numberof patents granted annually to persons
who would qualify as micro entities
under section 123(a). There is no data
available to indicate how many persons
would be excluded under section
123(a)(4) based upon an assignment,
grant, or conveyance or an obligation to
grant, assign, or convey to an entity withincome exceeding the limit in section
123(a)(3). However, the Office’s
approach with the other components ofsection 123(a) is sufficiently
conservative to mitigate the risks of not
capturing this population. Likewise,
while a small company could qualify asa micro entity under section 123(a), theabove calculation of individuals
represents a reasonable overall
approximation because the estimate ofaffected individuals is sufficiently
conservative.
Turning to 35 U.S.C. 123(d), the mostrecent data available on university
patent grants is from CY 2008.
Reviewing the data from CY 2001–CY
2008, the Office estimates that domestic
universities account for approximately
1.9 percent of all patent grants. The
Office is using this figure as areasonable approximation for thenumber of micro entity applicants

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4221

expected under section 123(d), which
covers applicants who are employed byuniversities or who have assigned theirinvention to a university. Applying thisinformation to FY 2011, the Officeestimates that universities received
4,206 (221,350 times 1.9 percent) of thepatents granted in FY 2011. The data on
university patent grants is available at:
http://www.uspto.gov/web/offices/ac/
ido/oeip/taf/univ/asgn/
table_1_2008.htm.
To combine 123(a) and 123(d), theOffice adds the estimated number ofpatents granted that could meet the
micro entity definition for individuals(9,264) and for university grants (4,206)
to obtain a total of 13,470 patent grants.
The Office divides 13,470 micro entity
patents by the 43,827 small entity
patents in FY 2011 (per the Office’s
PALM database) to calculate thatapproximately 31 percent of small entity
patents will be micro entity patents. The
Office expects a uniform distribution of
micro entities across all application
types. No data exists to suggest
otherwise. Likewise, the Office applies
the 31 percent estimate to both filingsand grants because the Office expects a
uniform distribution of micro entities
among both applicants and patentees,
and no data exists to suggest otherwise.
Thus, the Office estimates that 31
percent of all small entity applicants
will qualify as micro entity applicants.
In recent years, small entity
applicants made up approximately 25
percent of utility filings and 20 percent
of utility patent grants (per the PALM
database). Given that utility filings are
the largest category of application types,
for forecasting purposes, the Office uses
utility filing data as representative of theuniverse of patent application filings.
Applying the 31 percent estimate for thenumber of micro entities, the Officeestimates that micro entities willaccount for 7.8 percent (25 percent
times 31 percent) of all filings, and 6.2
percent (20 percent times 31 percent) of
all grants. The Office used theseestimates (7.8 percent and 6.2 percent)to calculate the portion of fee workloads(e.g., number of application filings,
patent issues, and maintenance feespaid) that should be multiplied by the
new micro entity fee amounts to include
in the estimate for aggregate revenue.
Aggregate Revenue Estimate Ranges
When calculating aggregate revenue,
the USPTO prepares a high-to-low rangeof fee collection estimates that includesa +/¥ 5 percent outer bounds toaccount for: the inherent uncertainty,
sensitivity, and volatility of predicting
fluctuations in the economy and market
environment; interpreting policy and

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process efficiencies; and developing fee
workload and fee collection estimatesfrom assumptions. The Office used 5
percent because historically the Office’s
actual revenue collections havetypically been within 5 percent of the
projected revenue. Additional detailabout the Office’s aggregate revenue,
including projected workloads by fee, isavailable in ‘‘USPTO Section 10 Fee
Setting—Aggregate Revenue Estimates
Alternative 1: Proposed Alternative—Set
and Adjust Section 10 Fees’’ available at
http://www.uspto.gov/
aia_implementation/fees.jsp.

(patent issue and publication fees);§ 1.21(h)(1) (fee for recording a patentassignment electronically);§ 1.482(a)(1)(i)(A), (a)(1)(ii)(A), and(a)(2)(i) (international application filing,processing and search fees); and fees
included in § 1.445(a)(1)(i)(A), (a)(2)(i),(a)(3)(i), and (a)(4)(i) (international
application transmittal and search fees).
Using these figures, the USPTO sums
the individual fee revenue estimates,
and the result is a total aggregate
revenue estimate for a given year (seeTable 3).

Summary
Patent fees are collected for patentrelated services and products at
different points in time within thepatent application examination process
and over the life of the pending patentapplication and granted patent.
Approximately half of all patent fee
collections are from issue andmaintenance fees, which subsidize
filing, search, and examination
activities. Changes in application filinglevels immediately impact current year
fee collections, because fewer patentapplication filings means the Officecollects fewer fees to devote toproduction-related costs, such asadditional examining staff and overtime.
The resulting reduction in production
activities creates an out-year revenue
impact because less production output
in one year results in fewer issue andmaintenance fee payments in futureyears.
The USPTO’s five-year estimatedaggregate patent fee revenue (see‘‘Aggregate Revenue Estimate’’ in Table3) is based on the number of patentapplications it expects to receive for agiven fiscal year, work it expects toprocess in a given fiscal year (anindicator for workload of patent issuefees), expected examination and process
requests for the fiscal year, and the
expected number of post-issuancedecisions to maintain patent protection
over that same fiscal year. Within theiterative process for estimating aggregate
revenue, the Office adjusts individual
fees up or down based on cost andpolicy decisions (see Step 3: Set
Specific Fee Amounts), estimates theeffective dates of new fee rates, and thenmultiplies the resulting fees byappropriate workload volumes tocalculate a revenue estimate for eachfee.
To calculate the aggregate revenue,
the Office assumes that all new fee rates
will be effective on April 1, 2013, except
for the following fee changes which will
be effective on January 1, 2014:§ 1.18(a)(1), (b)(1), (c)(1), and (d)(1)Once the Office finalizes the annual
requirements and aggregate prospective
costs for a given year during the budget
formulation process, the Office sets
specific fee amounts that, together, will
derive the aggregate revenue required torecover the estimated aggregate
prospective costs during that timeframe.
Calculating individual fees is an
iterative process that encompasses many
variables. The historical cost estimatesassociated with individual fees is one
variable that the USPTO considers to
inform fee setting. The Office’s ActivityBased Information (ABI) provides
historical cost for an organization’s
activities and outputs by individual fee
using the activity-based costing (ABC)methodology. ABC is commonly used
for fee setting throughout the Federal
Government. Additional information
about the methodology, including thecost components related to respective
fees, is available at http://
www.uspto.gov/aia_implementation/
fees.jsp#heading-1 in the document
titled ‘‘USPTO Section 10 Fee Setting—
Activity-Based Information and Costing
Methodology.’’ The USPTO provides
data for FY 2009—FY 2011 because the
Office finds that reviewing the trend of
ABI historical cost information is themost useful way to inform fee setting.
The underlying ABI data are available
for public inspection at the USPTO.
When the Office implements a newprocess or service, historical ABI data is
typically not available. However, theOffice will use the historical cost of asimilar process or procedure as astarting point to calculate the cost of a
new activity or service. For example, as
described in the final rulemaking for
supplemental examination, the Officeused the ABI historical cost for ex partereexamination procedures as a starting
point for calculating the prospective
cost to implement the new
supplemental examination procedures.
See Changes to Implement theSupplemental Examination Provisionsof the Leahy-Smith America Invents Act

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and To Revise Reexamination Fees, 77
FR 48828 (Aug. 14, 2012).
In other cases, ABI historical cost
information related to similar processes
is not available, and the Office estimatescost by calculating the resources
necessary to execute the new process.
To do so, the Office estimates theamount of time (in hours) and necessary
skill level to complete an activity. The
USPTO then multiplies the estimatedamount of time by the hourly wage(s) of
the persons required at each skill level
and adds the administrative andindirect cost rates (derived from ABI
historical cost data) to this base costestimate to calculate the full cost of theactivity. One-time costs, such as IT,
training, or facilities costs, are added to
the full cost estimate to obtain the total
cost of providing the new process orservice. Lastly, the USPTO applies a rateof inflation to estimate the prospective
unit cost. For example, the Office used
this methodology to calculate the costs
associated with the new inter partes andpost-grant review processes. See
Changes to Implement Inter Partes
Review Proceedings, Post-Grant Review
Proceedings, and Transitional Programfor Covered Business Method Patents,
77 FR 48680 (Aug. 14, 2012).
Besides using cost data as a point ofreference for setting individual fee
amounts, the USPTO also uses various
policy factors discussed in Part III.
Rulemaking Goals and Strategies toinform fee setting. Fees are set to allow
the Office to recover its aggregate costs,
while furthering key policy
considerations. The following section
describes the rationale for setting fee
rates at specific amounts.
V. Individual Fee Rationale
The Office projects the aggregate
revenue generated from the patent fees
will recover the prospective aggregate
cost of its patent operations. However,each individual fee is not necessarily set
equal to the estimated cost of
performing the activities related to thefee. Instead, as described in Part III.
Rulemaking Goals and Strategies, someof the fees are set to balance several key
policy factors: fostering innovation,
facilitating effective administration of
the patent system, and offering patent
prosecution options to applicants. As
also described in Part III, executing
these policy factors in the patent feeschedule is consistent with the Strategy
for American Innovation and the goals
and objectives outlined in the Strategic
Plan. Once the key policy factors are
considered, fees are set at, above, or
below individual cost recovery levels
for the activity or service provided.

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For the purpose of discussing thechanges in this rule, the rationale forsetting or adjusting individual fees aregrouped into two major categories: (1)Fees where large entity amounts
changed from the current amount bygreater than plus or minus 5 percent and
10 dollars (described below in section(B)); and (2) fees where large entity
amounts stayed the same or did notchange by greater than plus or minus 5
percent and 10 dollars (described below
in section (C)). The purpose of thecategorization is to identify large feechanges for the reader and provide an
individual fee rationale for suchchanges. The categorization is based onchanges in large entity fee amounts
because percentage changes for small
entity fees that are in place today would
be the same as the percentage change forthe large entity, and the dollar change
would be half of that of the large entitychange. Therefore, there will never be
an instance where the small entity feechange meets the greater than plus orminus 5 percent and 10 dollars criteria
and a large entity fee change does not.
The ‘‘USPTO Section 10 Fee Setting—
Table of Patent Fee Changes’’ isavailable at http://www.uspto.gov/
aia_implementation/fees.jsp and thetables in Part VI. The table of patent feechanges presents the current fees forlarge and small entities and the final
fees for large, small, and micro entities.
The table also includes the dollar andpercent changes between current fees
and final fees for large entity fees only
as well as the FY 2011, FY 2010, and FY
2009 unit costs. The Discussion ofSpecific Rules in this rulemaking
contains a complete listing of fees thatare set or adjusted in this patent feeschedule.
A. Discounts for Small and Micro Entity
Applicants
The fees described below include
discounts for small and micro entity

applicants as required by section 10.
The current small entity discountscheme changes when fees are set inaccordance with section 10. That is,section 10(a) provides that the USPTO
can set or adjust ‘‘any fee established,authorized or charged under’’ Title 35,
U.S.C., and section 10(b) of the Act
provides that fees set or adjusted under
section 10(a) authority for ‘‘filing,
searching, examining, issuing,
appealing, and maintaining patentapplications and patents’’ will be
reduced by 50 percent for small entities
and 75 percent for micro entities. A
small entity is defined in 35 U.S.C.
41(h)(1), and a micro entity is definedin 35 U.S.C. 123.
Currently, the small entity discount isonly available for statutory fees
provided under 35 U.S.C. 41(a), (b), and(d)(1). Section 10(b) extends thediscount to some patent fees notcontained in 35 U.S.C. 41(a), (b), and(d)(1). Thus, in this final rule, the Officeapplies the discount to a number of feesthat currently do not receive the small
entity discount. There is only one fee forwhich a small entity discount iscurrently offered that is ineligible for asmall entity discount under the final feeschedule: the fee for a statutory
disclaimer under 37 CFR 1.20(d). Thisfee is currently $160 for a large entity
and $80 for a small entity. In this final
rule, this fee is $160 for all entities (i.e.,large, small, and micro) because thisparticular fee does not fall under one of
the six categories of patent fees set forthin section 10(b).
Additionally, the new contested caseproceedings created under the Act (interpartes review, post-grant review,
covered business method patent review,and derivation proceedings) are trial
services, not appeals. As such, the fees
for these services do not fall under anyof the six categories under section 10(b),and therefore are not eligible for4223

discounts. Appeals before the PTAB
involve contests to an examiner’s
findings. The new trial services,
however, determine whether a patentshould have been granted. They involve
discovery, including cross-examinationof witnesses. Further, the AIA amends
sections of Title 35 that specificallyreference ‘‘appeals,’’ while separately
discussing inter partes review, postgrant review, and derivation
proceedings, highlighting that these newservices are not appeals. See section 7of the AIA (amending 35 U.S.C. 6).
B. Fees With Proposed Changes ofGreater Than Plus or Minus 5 Percent
and 10 Dollars
For those fees that change by greaterthan plus or minus 5 percent and 10
dollars, the individual fee rationale
discussion is divided into four generalsubcategories: (1) Fees to be set at cost
recovery; (2) fees to be set below cost
recovery; (3) fees to be set above cost
recovery; and (4) fees that are not set
using cost data as an indicator. Table 4
contains a summary of the individual
fees that are discussed in each of thesubcategories referenced above.
For purposes of discussion within thissection, where new micro entity fees areset, it is expected that an applicant ora patent holder would have paid thecurrent small entity fee (or large entity
in the event there is not a small entityfee), and dollar and percent changes arecalculated from the current small entity
fee amount (or large entity fee, whereapplicable).
It should be noted that the ‘‘Utility
Search Fee’’ listed below does not meetthe ‘‘change by greater than plus orminus 5 percent and 10 dollars’’threshold, but is nonetheless includedin the discussion for comparison of total
filing, search, and examination fees—all
three of which are due upon filing anapplication.

TABLE 4—PATENT FEE CHANGES[By greater than plus or minus 5 percent and 10 dollars]
Current fees

Final fees

Dollar change

Percent change

Large(small)[micro]entityLarge(small)[micro]entityLarge(small)[micro]entityLarge(small)[micro]entityFee description(1) Fees set at cost recovery:

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Request for Prioritized Examination ................................................

$4,800($2,400)[N/A]$4,000($2,000)[$1,000]¥$800(¥$400)[¥$1,400]¥17%(¥17%)[¥58%]$280($140)¥$110(¥$55)¥28%(¥28%)(2) Fees set below cost recovery:
Basic Filing Fee—Utility ...................................................................

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TABLE 4—PATENT FEE CHANGES—Continued[By greater than plus or minus 5 percent and 10 dollars]
Current fees

Final fees

Dollar change

Percent change

Large(small)[micro]entityLarge(small)[micro]entityLarge(small)[micro]entityLarge(small)[micro]entityFee description

Utility Search Fee ............................................................................

Utility Examination Fee ....................................................................
Total Basic Filing, Search, and Exam—Utility .................................
First Request for Continued Examination (RCE) ............................
Second and Subsequent RCEs (NEW) ...........................................
Notice of Appeal ..............................................................................
Filing a Brief in Support of an Appeal in Application or Ex Parte
Reexamination Proceeding ..........................................................

[N/A]
$620
($310)[N/A]$250($125)[N/A]$1,260($630)[N/A]$930($465)[N/A]$930($465)[N/A]$630($315)
[N/A]

[$70]
$600
($300)[$150]$720($360)[$180]$1,600($800)[$400]$1,200($600)[$300]$1,700($850)[$425]$800($400)[$200][¥$125]¥$20(¥$10)[¥$160]+$470(+$235)[+$55]+$340(+170)[¥$230]+$270(+$135)[¥$165]+$770(+$385)[¥$40]+$170(+$85)[¥$115][¥64%]¥3%(¥3%)[¥52%]+188%(+188%)[+44%]+27%(+27%)[¥37%]+29%(+29%)[¥35%]+83%(+83%)[¥9%]+27%(+27%)[¥37%]$630($315)
[N/A]

$0
($0)
[$0]

¥$630
(¥$315)[¥$315]¥100%(¥100%)[¥100%]$1,260($630)[N/A]$1,260($630)[N/A]$17,750
(N/A)
[N/A]

$2,000($1,000)[$500]$800($400)[$200]$2,800($1,400)[$700]$12,000($6,000)[$3,000]+$2,000(+$1,000)[+$500]¥$460(¥$230)[¥$430]+$1,540(+$770)[+$70]¥$5,750(¥$11,750)[¥$14,750]

N/A
(N/A)
[N/A]
¥37%
(¥37%)[¥68%]+122%(+122%)[+11%]¥32%(¥66%)[¥83%]$5,140(N/A)[N/A]$4,400($2,200)[$1,100]¥$740(¥$2,940)[¥$4,040]¥14%(¥57%)[¥79%]$16,120(N/A)[N/A]$21,260
(N/A)
[N/A]

$12,100($6,050)[$3,025]$16,500($8,250)[$4,125]¥$4,020(¥$10,070)[¥$13,095]¥$4,760(¥$13,010)[¥$17,135]¥25%(¥62%)[¥81%]¥22%(¥61%)[¥81%]

NEW$9,000(N/A)[N/A]+$9,000
(N/A)
[N/A]

N/A
(N/A)
[N/A]

NEW

$14,000
(N/A)
[N/A]

+$14,000
(N/A)
[N/A]

N/A
(N/A)
[N/A]

$27,200
(N/A)
[N/A]

$23,000
(N/A)
[N/A]

¥$4,200
(N/A)
[N/A]

¥15%
(N/A)
[N/A]

NEW

$12,000
(N/A)
[N/A]

+$12,000
(N/A)
[N/A]

N/A
(N/A)
[N/A]

Appeal Forwarding Fee for Appeal in Examination or Ex Parte
Reexamination Proceeding or Filing a Brief in Support of an
Appeal in Inter Partes Reexamination (NEW) .............................
NEW
Total Appeal Fees (Paid before Examiner Answer) ........................
Total Appeal Fees (Paid after Examiner Answer) ...........................
Ex Parte Reexamination ..................................................................
Processing and Treating a Request for Supplemental Examination—Up to 20 Sheets ..................................................................
Ex Parte Reexamination Ordered as a Result of a Supplemental
Examination Proceeding ..............................................................
Total Supplemental Examination Fees ............................................
Inter Partes Review Request—Up to 20 Claims (Per Claim Fee
for Each Claim in Excess of 20 is $200) (NEW) .........................
Inter Partes Review Post Institution Fee—Up to 15 Claims (PerClaim Fee for Each Claim in Excess of 15 is $400) (NEW) .......

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Total Inter Partes Review Fees (For Current Fees, Per Claim Fee
for Each Claim in Excess of 20 is $600) .....................................
Post-Grant Review or Covered Business Method Patent Review
Request—Up to 20 Claims (Per Claim Fee for Each Claim in
Excess of 20 is $250) (NEW) ......................................................

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4225

TABLE 4—PATENT FEE CHANGES—Continued[By greater than plus or minus 5 percent and 10 dollars]
Current fees

Final fees

Dollar change

Percent change

Large(small)[micro]entityLarge(small)[micro]entityLarge(small)[micro]entityLarge(small)[micro]entityFee description

Post-Grant Review or Covered Business Method Patent Review
Post Institution Fee—Up to 15 Claims (Per Claim Fee for Each
Claim in Excess of 15 is $550) (NEW) ........................................
Total Post-Grant Review or Covered Business Method Patent
Fees (For Current Fees, Per Claim Fee for Each Claim in Excess of 20 is $800) ......................................................................

NEW$18,000
(N/A)
[N/A]

+$18,000
(N/A)
[N/A]

N/A
(N/A)
[N/A]

$35,800
(N/A)
[N/A]

$30,000
(N/A)
[N/A]

¥$5,800
(N/A)
[N/A]

¥16%
(N/A)
[N/A]

$0
($0)
[$0]
$960
($480)[$240]$960($480)[$240]$1,600($800)[$400]$3,600($1,800)[$900]$7,400($3,700)[$1,850]¥$300(¥$300)[¥$300]¥$810(¥$405)[¥$645]¥$1,110(¥$705)[¥$895]+$450(+$225)[¥$175]+$700(+$350)[¥$550]+$2,590(+$1,295)[¥$555]¥100%(¥100%)[¥100%]¥46%(¥46%[¥73%]¥54%(¥59%)[¥77%]+39%(+39%)[¥30%]+24%(+24%)[¥38%]+54%(+54%)[¥23%](3) Fees set above cost recovery:
Publication Fee for Early, Voluntary, or Normal Publication (Pre
Grant Publication or PG Pub) ......................................................
Utility Issue Fee ...............................................................................
Combined Total—Pre-grant Publication and Issue Fee—Utility .....
Maintenance Fee Due at 3.5 Years (1st Stage) .............................
Maintenance Fee Due at 7.5 Years (2nd Stage) ............................
Maintenance Fee Due at 11.5 Years (3rd Stage) ...........................

$300
(N/A)
[N/A]
$1,770($885)[N/A]$2,070($1,185)[N/A]$1,150($575)[N/A]$2,900($1,450)[N/A]$4,810($2,405)[N/A](4) Fees not set using cost data as an indicator:
Extensions for Response within 1st Month .....................................
Extensions for Response within 2nd Month ....................................
Extensions for Response within 3rd Month .....................................
Extensions for Response within 4th Month .....................................
Extensions for Response within 5th Month .....................................
Utility Application Size Fee—For each Additional 50 Sheets that
Exceed 100 Sheets ......................................................................
Independent Claims in Excess of 3 .................................................

TKELLEY on DSK3SPTVN1PROD with

Claims in Excess of 20 ....................................................................
Multiple Dependent Claim ...............................................................

$150
($75)
[N/A]
$570
($285)[N/A]$1,290($645)[N/A]$2,010($1,005)[N/A]$2,730($1,365)
[N/A]

$200
($100)[$50]$600($300)[$150]$1,400($700)[$350]$2,200($1,100)[$550]$3,000($1,500)[$750]+$50(+$25)[¥$25]+$30(+$15)[¥$135]+$110(+$55)[¥$295]+$190(+$95)[¥$455]+$270(+$135)[¥$615]+33%(+33%)[¥33%]+5%(+5%)[¥47%]+9%(+9%)[¥46%]+9%(+9%)[¥45%]+10%(+10%)[¥45%]$320($160)[N/A]$250($125)
[N/A]
$62
($31)
[N/A]
$460
($230)[N/A]$400($200)[$100]$420($210)[$105]
$80
($40)
[$20]
$780
($390)[$195]$600($300)[$150]+$80(+$40)[¥$60]+$170(+$85)[¥$20]+$18(+$9)[¥$11]+$320(+$160)[¥$35]+$600(+$300)[+$150]+25%(+25%)[¥38%]+68%(+68%)[¥16%]+29%(+29%)[¥35%]+70%(+70%)[¥15%]
N/A
(N/A)
[N/A]

Correct Inventorship After First Action on the Merits (NEW) ..........
NEW

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Federal Register / Vol. 78, No. 13 / Friday, January 18, 2013 / Rules and Regulations
TABLE 4—PATENT FEE CHANGES—Continued[By greater than plus or minus 5 percent and 10 dollars]
Current fees

Final fees

Dollar change

Percent change

Large(small)[micro]entityLarge(small)[micro]entityLarge(small)[micro]entityLarge(small)[micro]entityFee description

Derivation Petition Fee ....................................................................

$400
(N/A)
[N/A]
$40
(N/A)
[N/A]
$40
(N/A)
[N/A]

Assignments Submitted Electronically (NEW) .................................
Assignments Not Submitted Electronically ......................................

(1) Fees to be set at Cost Recovery

$400
N/A
N/A
$0
(N/A)
[N/A]
$40
(N/A)
[N/A]

factor of ‘‘offering patent prosecution
options to applicants’’ by providing
applicants with flexibilities in seeking
patent protection. A discussion of the

The following fee is set at cost
recovery. This fee supports the policy

$0
(N/A)
[N/A]
¥$40
(N/A)
[N/A]
$0
(N/A)
[N/A]

0%
(N/A)
[N/A]
¥100%
(N/A)
[N/A]
0%
(N/A)
[N/A]

rationale for the proposed change
follows.
Request for Prioritized Examination:

TABLE 5—REQUEST FOR PRIORITIZED EXAMINATION FEE CHANGESCurrent fees

Final fees

Dollar change

Percent change

Large(small)[micro]entityLarge(small)[micro]entityLarge(small)[micro]entityLarge(small)[micro]entityFee information

Request for Prioritized Examination ................................................

$4,800($2,400)[N/A]$4,000($2,000)[$1,000]¥$800(¥$400)[¥$1,400]¥17%(¥17%)[¥58%]TABLE 6—REQUEST FOR PRIORITIZED EXAMINATION COST INFORMATION
Cost information

FY 2011

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Cost calculation is available in the proposed rule published in the Federal Register Changes To Implement the Prioritized Examination Track (Track I) of the Enhanced Examination Timing Control Procedures, 76 FR 6369 (Feb. 4, 2011). .....................

A patent applicant may seek
prioritized examination at the time offiling an original utility or plant
application or a continuation
application thereof or upon filing an
RCE in compliance with 37 CFR 1.114.
A single request for prioritized
examination may be granted for an RCE
in a plant or utility application. Whenin the prioritized examination track, anapplication will be accorded special
status during prosecution until a final
disposition is reached. The target forprioritized examination is to provide a
final disposition within twelve months,
on average, of prioritized status being
granted. This prioritized examination
procedure is part of an effort by the
USPTO to offer patent prosecution
options to applicants to provide
applicants greater control over thetiming of examination of theirapplications. The procedure thereby

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enables applicants to have greatercertainty in their patent rights sooner.
The AIA established the current large
and small entity fees for prioritized
examination, which the Office put inplace in 2011. See Changes To
Implement the Prioritized Examination
Track (Track I) of the Enhanced
Examination Timing Control Procedures
Under the Leahy-Smith America Invents
Act, 76 FR 59050 (Sept. 23, 2011). The
large entity fee is greater than the
Office’s cost to process a single
prioritized examination request to
subsidize the fee revenue lost fromproviding small entity applicants a 50
percent discount from the large entity
fee. The cost calculation for theprioritized examination fees is available
in the proposed rule. See Changes To
Implement the Prioritized Examination
Track (Track I) of the Enhanced
Examination Timing Control
Procedures, 76 FR 6369 (Feb. 4, 2011).

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Sfmt 4700$4,000The higher large entity fee, coupledwith the lower small entity fee, recovers
the Office’s total cost for conducting all
prioritized examinations.
Under section 10, micro entities are
eligible to receive a 75 percent discountfrom the large entity fee for prioritized
examination. Here, the Office sets thelarge entity fee at cost ($4,000), insteadof further increasing the fee to subsidize
the new micro entity discount. The
Office will recover this subsidy throughother fees that are set above cost
recovery, rather than through a separate,
higher, large entity fee for prioritized
examinations. The Office believes thissystem will foster innovation and allow
for ease of entry into the patent system.
Setting the large entity prioritized
examination fee further above cost
would contradict this policy factor andhinder fast patent protection for large
entity applicants.

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Federal Register / Vol. 78, No. 13 / Friday, January 18, 2013 / Rules and Regulations(2) Fees To Be Set Below Cost Recovery
There are eight fees that the Officesets below cost recovery that meet thegreater than plus or minus 5 percent and
10 dollars criteria. The policy factors
relevant to setting fees below cost
recovery are fostering innovation andoffering patent prosecution options toapplicants. Applying these policy
factors to set fees below cost recovery

benefits the patent system by keeping
the fees low and making patent filingand prosecution more available toapplicants, thus fostering innovation.
Although many fees are increased fromcurrent fee rates under this rule, theOffice is not increasing ‘‘pre-grant’’ fees(e.g., filing, search, and examination) to
avoid creating a barrier to entry asotherwise might have been created if
fees were set to recover the full cost of

the activity. The fee schedule offers
patent prosecution options to provide
applicants flexible and cost-effective
options for seeking and completing
patent protection. This strategy provides
multipart and staged fees for certain
patent prosecution and contested caseactivities. A discussion of the rationale
for each fee adjustment follows.
Basic Filing, Search, andExamination—Utility:

TABLE 7—BASIC FILING, SEARCH, AND EXAMINATION—UTILITY FEE CHANGESCurrent fees

Final fees

Dollar change

Percent change

Large(small)[micro]entityLarge(small)[micro]entityLarge(small)[micro]entityLarge(small)[micro]entityFee description

Basic Filing Fee—Utility ...................................................................
Utiliity Search Fee ...........................................................................
Utility Examination Fee ....................................................................
Total Basic Filing, Search, and Exam—Utility .................................

$390($195)[N/A]$620($310)[N/A]$250($125)[N/A]$1,260($630)[N/A]¥$110(¥$55)[¥$125]¥$20(¥$10)[¥160]+$470(+$235)[+$55]+$340(+170)[¥$230]$280($140)[$70]$600($300)[$150]$720($360)[$180]$1,600($800)[$400]¥28%(¥28%)[¥64%]¥3%(¥3%)[¥52%]+188%(+188%)[+$44%]+27%(+27%)[¥37%]TABLE 8—BASIC FILING, SEARCH, AND EXAMINATION—UTILITY FEE HISTORICAL COST INFORMATION
Historical unit cost information

FY 2011$/% of Total

FY 2010$/% of Total

FY 2009$/% of Total

Basic Filing Fee—Utility ...............................................................................................................
Utility Search Fee ........................................................................................................................
Utility Examination Fee ................................................................................................................

$234/6%$1,521/43%$1,814/51%$243/6%$1,694/43%$1,969/51%$241/7%$1,520/41%$1,904/52%

Total Unit Cost ......................................................................................................................

$3,569/100%$3,906/100%$3,665/100%

A non-provisional application for apatent requires filing, search, andexamination fees to be paid upon filing.
Currently, the large entity basic filing,
search, and examination fees for autility patent recover slightly more than
one-third of the average unit cost forprocessing, searching, and examining apatent application, while the fee for asmall entity application recovers around17 percent of the average unit cost. The
Office subsidizes the below-price filing,
search, and examination fees throughhigher ‘‘back-end’’ fees, for example,

above cost issue and maintenance fees.
The Office maintains this ‘‘back-end’’subsidy of ‘‘front-end’’ fees structure toachieve the policy goal of fostering
innovation.
The current fee rates and respective
costs associated with each stage ofpatent prosecution are out of alignment.
For example, on average, 94 percent of
the costs associated with filing,
searching, and examining an application
occur in the search and examination
stages (see Table 8). Approximately halfof those costs are estimated to occur inthe examination stage (see Table 8), but
only 20 percent of the total filing,
search, and examination fees arederived from the examination fee (seeTable 9). To adjust this fee structure andhelp stabilize the USPTO funding
model, the Office is increasing the total
filing, search, and examination fees andrealigning the fee rates to more closely
track the cost pattern by stage ofprosecution (i.e., filing, search, andexamination), while keeping each stage
below actual cost.

TABLE 9—UTILITY BASIC FILING, SEARCH, AND EXAMINATION—CURRENT, PROPOSED, AND FINAL FEE INFORMATION
Current$/% of Total

TKELLEY on DSK3SPTVN1PROD with

Proposed fee information

Final$/% of Total

Basic Filing Fee—Utility ...................................................................................................................................
Utility Search Fee ............................................................................................................................................
Utility Examination Fee ....................................................................................................................................

$390/31%$620/49%$250/20%$280/17%$600/38%$720/45%

Total Fees .................................................................................................................................................

$1,260/100%$1,600/100%

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In this rule, the Office sets the
combined total fee for filing, search, andexamination at $1,600. This adjustment
keeps the cost of entering the patent
system at or below cost for large, small,and new micro entity applicants—45
percent, 22 percent, and 11 percent of
FY 2011 total cost, respectively.
Likewise, the adjustment for filing,
search, and examination fees continues
to ensure that these initial fees remaina small part (10 percent) of the cost to
apply for patent protection whencompared to the average legal fees to filefor a patent. The filing, search, andexamination fees are also only 10
percent of the total fees paid for a patent
through maintenance to full term (i.e.,filing, search, examination, issue, andmaintenance).
The overall increase in filing, search,and examination fees facilitates effective
administration of the patent system,
because it encourages applicants tosubmit only the most thoughtful andunambiguous applications, therefore
facilitating examiners’ ability to provide
prompt, quality non-final and final
actions. At the same time, the overall
increase in filing, search, andexamination fees helps to stabilize the
Office’s revenue stream by collecting
more revenue when an application is
filed from all patent applicants, insteadof collecting revenue when a patent islater published or issued from only
successful applicants. Also, while the
Office increases application fees,

reducing the pre-grant publication andissue fees offsets these increases.
As discussed above, based on
economic indicators, the Office projects
a 5.0 percent growth rate in application
filings for each year from FY 2013 to FY
2017. Additionally, the Officerecognizes that some applicants may
choose to reduce the number ofapplications filed in response to thisincrease in fees. Based on elasticity
estimates, the Office anticipates that this
impact will be relatively short-term,
lasting for the first two and a half years
after the fee increase. The Officeestimated that applicants would file 1.3
percent fewer new (serialized) patentapplications during FY 2013 than thenumber estimated to be filed in theabsence of a fee increase (with new feeschedule implementation for half the
fiscal year). The Office estimated that
2.7 percent fewer new patentapplications would be filed during FY2014 and 4.0 percent fewer new patentapplications would be filed during FY2015 in response to the fee adjustment.
Despite this decrease in new patentapplications filed when compared to thenumber filed absent the fee increase, theOffice estimated that the overall numberof patent applications filed would
continue to grow each year, albeit at alower growth rate in FY 2013 throughFY 2015. The Office estimated thatbeginning in FY 2016, the growth inpatent applications filed would returnto the same levels anticipated in theabsence of a fee increase. To the extent
that there is some impact on filings, theOffice determined that the benefits ofthe fee changes outweigh the temporary
cost of fewer patent filings. The
additional revenue generated from theincrease in fees provides sufficient
resources to decrease pendency. The
reduction in pendency is estimated toincrease private patent value by
shortening the time for an invention to
be commercialized or otherwise obtainvalue from the exclusive right for thetechnology. Additional information
about this estimate is available at http://
www.uspto.gov/aia_implementation/
fees.jsp, in a document entitled ‘‘USPTO
Section 10 Fee Setting—Description of
Elasticity Estimates.’’ The economic
impact of this proposed adjustment isfurther considered in the cost andbenefit analysis included in theRegulatory Impact Analysis, available at
http://www.uspto.gov/aia_
implementation/fees.jsp.
It should be noted that utility patent
fees are referenced in this section tosimplify the discussion of the fee
rationale. However, the rationale also
applies to the filing, search, andexamination fee changes for design,
plant, reissue, and PCT national stage
fees as outlined in the ‘‘USPTO Section
10 Fee Setting—Table of Patent Fee
Changes.’’Request for Continued Examination(RCE)—First Request:

TABLE 10—FIRST REQUEST FOR CONTINUED EXAMINATION (RCE) FEE CHANGESCurrent fees

Final fees

Dollar change

Percent change

Large(small)[micro]entityLarge(small)[micro]entityLarge(small)[micro]entityLarge(small)[micro]entityFee description

First Request for Continued Examination (RCE) ............................

$930($465)[N/A]$1,200($600)[$300]+$270(+$135)[¥$165]+29%(+29%)[¥35%]TABLE 11—REQUEST FOR CONTINUED EXAMINATION (RCE) HISTORICAL COST INFORMATION
Historical unit cost information

FY 2011

Request for Continued Examination (RCE) ....................................................................
Percentage of RCE cost compared to the cost to process a new application ...............

FY 2010$2,07060%$1,69643%

FY 2009$1,881
51%

TKELLEY on DSK3SPTVN1PROD with

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

An applicant may file an RCE in an
application that is under final rejection(i.e., prosecution is closed) by filing a

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submission and paying a specified fee
within the requisite time period.
Applicants typically file an RCE when

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they choose to continue to prosecute anapplication before the examiner, rather
than appeal a rejection or abandon the

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application. In FY 2011 and FY 2012,
about 30 percent of applications filed
were for RCEs. Generally, around 70
percent of RCE applications filed in ayear are for first RCEs and the remaining
30 percent are for a second or
subsequent RCE. Given this data, it isreasonable to expect that mostoutstanding issues are resolved with thefirst RCE.
In this final rule, the Office divides
the fee for RCEs into two parts: (1) A
lower fee for a first RCE; and (2) asecond, higher fee for a second or
subsequent RCE. The Office divided thisRCE fee because, as stated before, 70
percent of RCEs are for the first RCE,
which indicates that applicants needmodest additional time to resolve theoutstanding issues with the examiner.
Multipart RCE fees demonstrate how the
Office seeks to facilitate effective
administration of the patent system andoffer patent prosecution options toapplicants.
The large entity fee for the first RCE
is set approximately 36 percent below
cost recovery at $1,200 to advanceinnovation by easing the burden on an
applicant needing to resolve
outstanding items with an examiner.
The USPTO calculated the large entity
cost for an RCE at $1,882 by averaging
historical costs after estimating theincremental cost to complete a single
application with one RCE compared tothe cost to complete an application withno RCE. The RCE fee in the current fee
structure is set at 74 percent of the total

fees for filing, search, and examination($930 divided by $1,260). The fee
relationship of a first RCE to total fees
for filing, search, and examination set
herein remains the same at 75 percent($1,200 divided by $1,600).
When an applicant does not agreewith a final rejection notice, theapplicant has the option to file a noticeof appeal as an alternative to filing an
RCE. The fee to file a notice of appeal
is also set below cost recovery and lessthan the fee set for the first, and secondand subsequent RCEs (see appeal fee
information in a following section). The
USPTO chose this fee relationship toensure all applicants have viableoptions to dispute a final rejection when
they believe the examiner has erred.
These patent prosecution options allow
applicants to make critical decisions at
multiple points in the patent
prosecution process.
In addition to dividing the current
RCE fee into two parts, the Office ispiloting other ways to address RCEs.
Specifically, the Office is operating two
pilot programs that aim to avoid theneed to file an RCE by permitting: (i) An
Information Disclosure Statement to besubmitted after payment of the issue fee;and (ii) further consideration of after
final responses.
The first initiative, called Quick Path
Information Disclosure Statement(QPIDS) Pilot, permits an applicant tofile an IDS after a final rejection andgives the examiner time to consider
whether prosecution should be

reopened. If the items of information in
the IDS do not require prosecution to be
reopened, the application will return toissue, thereby eliminating the need for
applicants to file an RCE.
The second initiative, called the After
Final Consideration Pilot (AFCP),
authorizes a limited amount of nonproduction time for examiners toconsider responses filed after a final
rejection with the goal of achieving
compact prosecution and increased
collaboration between examiners andstakeholders. The Office believes thesetwo pilot programs should reduce theneed for RCEs and thereby enableapplicants to secure a patent through asingle application filing.
Apart from these pilot programs, the
USPTO is collaborating with the PPAC
on an RCE outreach effort. The objectiveof this initiative is to identify thereasons why applicants file RCEs,
identify any practices for avoiding
unnecessary RCEs, and explore newprograms or changes in current
programs that could reduce the need forsome RCEs. The Office recently issued
a request for comments on RCE practicein the Federal Register (see 77 FR 72830(Dec. 6, 2012)) as a part of this multistep approach to address concerns withrespect to RCE practice and engage in
related efforts directed at reducing
patent application pendency.
Request for Continued Examination(RCE)—Second and Subsequent Request(New):TABLE 12—SECOND AND SUBSEQUENT REQUEST FOR CONTINUED EXAMINATION (RCE) FEE CHANGESCurrent fees

Final fees

Dollar change

Percent change

Large(small)[micro]entityLarge(small)[micro]entityLarge(small)[micro]entityLarge(small)[micro]entityFee description

Second and Subsequent Requests for Continued Examination(RCE) (NEW) ...............................................................................

$930($465)[N/A]$1,700($850)[$425]+$770(+$385)[¥$40]+83%(+83%)[¥9%]

TABLE 13—REQUEST FOR CONTINUED EXAMINATION (RCE) HISTORICAL COST INFORMATION
Historical unit cost information

FY 2011

TKELLEY on DSK3SPTVN1PROD with

Request for Continued Examination (RCE) ....................................................................
Percentage of RCE cost compared to the cost to process a new application ...............

FY 2010$2,07060%$1,69643%

FY 2009$1,881
51%

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

As discussed previously, in this rule,
the Office divides the fee for RCEs into

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or subsequent RCE. Multipart RCE fees
demonstrate how the Office seeks to

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facilitate effective administration of thepatent system and offer patent
prosecution options to applicants. The
Office divided this RCE fee because, as
noted above, approximately 30 percent
of RCEs are for a second or subsequent
RCE, which indicates that mostapplicants generally need only one RCE
to resolve outstanding issues with theexaminer.
The Office sets the large entity fee forsecond and subsequent RCEs at $1,700,
which is about 10 percent below cost
recovery. The USPTO calculated thelarge entity cost for an RCE at $1,882 byaveraging historical costs after
estimating the incremental cost tocomplete a single application with one
RCE compared to the cost to complete
an application with no RCE.
The Office recognizes that an RCE
may be less costly to examine than a

new continuing application in certain
situations. However, the patent fee
structure is designed such that the costs
associated with the processing andexamination of a new or continuing
application are recovered by issue andmaintenance fees, allowing for a fee
significantly below cost recovery. To
avoid setting higher issue andmaintenance fees to offset the cost ofprocessing second and subsequent
RCEs, the fees for those RCEs are set
closer to cost recovery. The Office
determined that increasing the issue
and/or maintenance fees to offset lower
than cost recovery second andsubsequent RCEs fees would cause themajority of filers (who do not seek morethan one RCE) to subsidize services
provided to the small minority of filers
who seek two or more RCEs. The Officedoes not believe such subsidization
would be an optimal result.
As discussed earlier, when an
applicant does not agree with a final
rejection notice, the applicant has theoption to file a notice of appeal, forwhich the fee is also set below cost
recovery and less than the fee proposed
for the first, and second and subsequent,
RCEs (see appeal fee information in thefollowing section). The USPTO chose
this fee relationship to ensure that all
applicants have viable options to
dispute a final rejection when they
believe the examiner has erred. These
patent prosecution options allow
applicants to make critical decisions at
multiple points in the patent
prosecution process.
Appeal Fees (Partially New):TABLE 14—APPEAL FEE CHANGESCurrent fees

Final fees

Dollar change

Percent change

Large(small)[micro]entityLarge(small)[micro]entityLarge(small)[micro]entityLarge(small)[micro]entityFee description

Notice of Appeal ..............................................................................
Filing a Brief in Support of an Appeal in Application or Ex Parte
Reexamination Proceeding ..........................................................

$630($315)[N/A]$800($400)[$200]+$170(+$85)[¥$115]+27%(+27%)[¥37%]$630($315)
[N/A]

$0
($0)
[$0]

¥$630
(¥$315)[¥$315]¥100%(¥100%)[¥100%]

NEW$2,000($1,000)[$500]

N/A
(N/A)
[N/A]

N/A
(N/A)
[N/A]

$1,260($630)[N/A]$800($400)[$200]¥$460(¥$230)[¥$430]¥37%(¥37%)[¥68%]$1,260($630)[N/A]$2,800($1,400)[$700]+$1,540(+$770)[+$70]+122%(+122%)[+11%]

Appeal Forwarding Fee for Appeal in Examination or Ex Parte
Reexamination Proceeding or Filing a Brief in Support of an
Appeal in Inter Partes Reexamination (NEW) .............................

Total Appeal Fees ....................................................................
(paid before Examiner Answer) ................................................

Total Appeal Fees ....................................................................
(paid after Examiner Answer) ...................................................

TABLE 15—APPEAL FEE HISTORICAL COST INFORMATION
Historical unit cost information

FY 2011

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Notice of Appeal to Patent Trial and Appeal Board (PTAB) ...........................................
Filing a Brief in Support of an Appeal.
Appeal Forwarding Fee.

An applicant who disagrees with an
examiner’s final rejection may appeal to
the PTAB by filing a notice of appeal
and the required fee within the time
period provided. An applicant likewise
may file a notice of appeal after theapplicant’s claim(s) has/have been twice
rejected, regardless of whether the

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claim(s) has/have been finally rejected.
Further, an applicant may file a noticeof appeal after a first rejection in acontinuing application if any of theclaims in the parent application werepreviously rejected.
Within two months from the date offiling a notice of appeal, an appellant

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FY 2010$4,799$4,960FY 2009$5,008must file a Brief. Then, the examiner
must file an Examiner’s Answer. Afterthe Examiner’s Answer is mailed, theappeal file is forwarded to the PTAB forreview.
Currently, a large entity applicant
pays $630 to file a notice of appeal andanother $630 when filing a Brief—a total

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18JAR2Federal Register / Vol. 78, No. 13 / Friday, January 18, 2013 / Rules and Regulationsof $1,260. These current fees only
recover approximately 25 percent of the
Office’s cost of an appeal. In this final
rule, the Office increases appeal fees toreduce the gap between fees and cost. At
the same time, the Office offers patent
prosecution options to applicants andstages the appeal fees to recoveradditional cost at later points in time
and thereby minimize the cost impacts
on applicants associated withwithdrawn final rejections.
In the NPRM, the Office proposed to
set a $1,000 notice of appeal fee and a$0 fee when filing the brief. Afterevaluating comments received from the
PPAC and the public, the Office isadjusting the notice of appeal fee down
to $800 and setting the $0 fee whenfiling the brief. The Office recognizes
that after some notices of appeal are
filed, the matter is resolved, and there

is no need to take the ultimate step offorwarding the appeal to the PTAB fora decision. The Office further sets a$2,000 fee to forward the appeal file—containing the appellant’s Brief and the
Examiner’s Answer—to the PTAB forreview. This fee is the same as the
Office proposed in the NPRM. Under
this fee structure, 28 percent of the fee
would be paid at the time of notice ofappeal, and the remaining 72 percent
would be paid after the Examiner’s
Answer, but only if the appeal isforwarded to the PTAB. The Officeestimates that less than 5 percent ofapplicants who receive final rejections
will pay the full fee ($2,800) required toforward an appeal to PTAB. This fee
structure allows the appellant to reduce
the amount invested in the appeal
process until receiving the Examiner’s
Answer. In fact, when prosecution

4231

issues are resolved after the notice ofappeal and before forwarding an appeal
to the PTAB, a large entity appellant
would pay only $800 to obtain an
Examiner’s Answer, 37 percent less thanunder the current fee structure.
Staging the appeal fees in this manner
allows applicants to pay less insituations when an application is either
allowed or reopened instead of being
forwarded to the PTAB. This patent
prosecution option allows applicants tomake critical decisions at multiple
points in the patent prosecution
process. Also, just as the Office is
exploring ways to minimize
unnecessary RCE filings, the Office islikewise exploring other options,
including pilot programs, in an effort to
reduce the need to appeal to the PTAB.
Ex Parte Reexamination:

TABLE 16—EX PARTE REEXAMINATION FEE CHANGESCurrent fees

Final fees

Dollar change

Percent change

Large(small)[micro]entityLarge(small)[micro]entityLarge(small)[micro]entityLarge(small)[micro]entityFee Description

Ex Parte Reexamination ..................................................................

$17,750
(N/A)
[N/A]

$12,000($6,000)[$3,000]¥$5,750(¥$11,750)[¥$14,750]¥32%(¥66%)[¥83%]TABLE 17—EX PARTE REEXAMINATION HISTORICAL COST INFORMATION
Historical unit cost information

FY 2011

Ex Parte Reexamination ..................................................................................................

FY 2010$19,626$16,648

FY 2009$17,162

TABLE 18—EX PARTE REEXAMINATION PROSPECTIVE COST INFORMATION
Prospective cost information

FY 2013

TKELLEY on DSK3SPTVN1PROD with

Supplemental Examination Fee Methodology for Final Rule (77 FR 48828 (Aug. 14, 2012)) available at http://www.uspto.gov/
aia_implementation/supp_exam_fee_meth_fr.pdf. .......................................................................................................................

Any person (including anonymously)
may file a petition for the ex partereexamination of a patent that has been
issued. The Office initially determines if
the petition presents ‘‘a substantial newquestion of patentability’’ as to thechallenged claims. If such a newquestion has been presented, the Officewill order an ex parte reexamination of
the patent for the relevant claims.
After noting a disparity between theprevious ex parte reexamination fee($2,520) and the cost of completing theproceeding ($17,750), the Officeincreased the fee using its authority
under 35 U.S.C. section 41(d). (SeeChanges To Implement theSupplemental Examination Provisionsof the Leahy-Smith America Invents Act

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and To Revise Reexamination Fees, 77
FR 48828 (Aug. 14, 2012)).
In the NPRM, the Office proposed
setting the ex parte reexamination fee at$15,000, which is 15 percent below the
Office’s cost of conducting theproceeding, and introduced new small
and micro entity discounts for an exparte reexamination (in accordance withsection 10, third party requestors are noteligible for the micro entity discounts).
In this final rule, the Office further
reduces the large entity fee for ex partereexamination from $15,000 (asproposed in the NPRM) to $12,000,
which is 32 percent below the Office’s
cost of conducting the proceeding.
Setting the fee below cost permits easieraccess to the ex parte reexamination

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process, which benefits the patent
system and patent quality by removing
low quality patents.
The ex parte reexamination fee is dueat the time of filing, however, it is inessence a two-part fee. First, part of theex parte reexamination fee helps torecover the costs for analyzing therequest and drafting the decision
whether to grant or deny ex partereexamination. This is based on the fee
set forth in 37 CFR 1.20(c)(7) for adenied request for ex partereexamination ($3,600, $1,800 for asmall entity, and $900 for a micro entity
patentee). Second, the remaining part of
the fee helps to recover the costs for
conducting ex parte reexamination if
the request for ex parte reexamination is

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granted. This is based on the ex partereexamination fee set forth in 37 CFR
1.20(c)(1) less the fee set forth in 37 CFR
1.20(c)(7) for a denied request for exparte reexamination ($12,000 less
$3,600 equals $8,400 for a large entity;$6,000 less $1,800 equals $4,200 for asmall entity; and $3,000 less $900

equals $2,100 for a micro entity
patentee).
Supplemental Examination:

TABLE 19—SUPPLEMENTAL EXAMINATION FEE CHANGESCurrent fees

Final fees

Dollar change

Percent change

Large (
small)[micro]entityLarge (
small)[micro]entityLarge (
small)[micro]entityLarge (
small)[micro]entityFee description

Processing and Treating a Request for Supplemental Examination—Up to 20 Sheets ..................................................................
Ex Parte Reexamination Ordered as a Result of a Supplemental
Examination Proceeding ..............................................................

Total Supplemental Examination Fees ....................................

$5,140(N/A)[N/A]$4,400($2,200)[$1,100]¥$740(¥$2,940)[¥$4,040]¥14%(¥57%)[¥79%]$16,120
(N/A)
[N/A]

$12,100($6,050)[$3,025]¥$4,020(¥$10,070)[¥$13,095]¥25%(¥62%)[¥81%]$21,260
(N/A)
[N/A]

$16,500($8,250)[$4,125]¥$4,760(¥$13,010)[¥$17,135]¥22%(¥61%)[¥81%]TABLE 20—SUPPLEMENTAL EXAMINATION PROSPECTIVE COST INFORMATION
Prospective cost information

FY 2013

Supplemental Examination Fee Methodology for Final Rule (77 FR 48828 (Aug. 14, 2012)) available at http://www.uspto.gov/
aia_implementation/supp_exam_fee_meth_fr.pdf
Supplemental Examination Request * .................................................................................................................................................
Supplemental Examination Reexamination .........................................................................................................................................

$5,18016,120Total Supplemental Examination Costs .......................................................................................................................................

21,300* In the final rule, the Office estimated its fiscal year 2013 cost for processing and treating a request for supplemental examination to be $5,180.
The Office also estimated that the document size fees will recover an average of $40 per request for supplemental examination. Therefore,
the Office added new § 1.20(k)(1) to set a fee of $5,140 for processing and treating a request for supplemental examination (the estimated2013 cost amount rounded to the nearest ten dollars minus $40).

TKELLEY on DSK3SPTVN1PROD with

Supplemental examination is a newproceeding created by the AIA with aneffective date of September 16, 2012 (seeChanges To Implement theSupplemental Examination Provisionsof the Leahy-Smith America Invents Act
and To Revise Reexamination Fees, 77
FR 48828 (Aug. 14, 2012)). A patent
owner may request a supplemental
examination of a patent by the Office toconsider, reconsider, or correct
information believed to be relevant to
the patent. This proceeding will help
the patent owner preempt inequitableconduct challenges to the patent. The
need for this proceeding arises only
after a patent owner recognizes that
there is information that should havebeen brought to the attention of the
Office to consider or reconsider during
the application process, or information

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submitted during the application
process that needs to be corrected.
The current fees for the request for
supplemental examination and the exparte reexamination ordered as a resultof a supplemental examination
proceeding are $5,140 and $16,120,
respectively, as set using the Office’s
authority under 35 U.S.C. 41(d).
In the NPRM, the Office proposed toadjust supplemental examination fees to
15 percent below cost at $18,000 ($4,400
for the request and $13,600 for thereexamination). After updating thepatent operating plans andcorresponding aggregate costs in
response to public comments, the Office
determined that it could reduce thesupplemental examination fee further
while continuing to ensure that theaggregate revenue equals aggregate cost.

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In this rule, the Office is reducing thefee for conducting an ex partereexamination ordered as a result of a
supplemental examination to $12,100
and setting the total supplemental
examination fees at $16,500 ($4,400 for
the request and $12,100 for thereexamination), which is 22 percent
below the Office’s cost for these
services.
The Office believes these reduced fee
amounts continue to be sufficient toencourage applicants to submit
applications with all relevant
information during initial examination,
yet low enough to facilitate effective
administration of the patent system byproviding patentees with a procedure to
immunize a patent from an inequitableconduct challenge.
Inter Partes Review:

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4233

TABLE 21— INTER PARTES REVIEW FEE CHANGESCurrent fees

Final fees

Dollar change

Percent change

Large(small)[micro]entityLarge(small)[micro]entityLarge(small)[micro]entityLarge(small)[micro]entityFee description

Inter Partes Review Request—Up to 20 Claims (Per Claim Fee
for Each Claim in Excess of 20 is $200) (NEW) .........................

NEW$9,000
(N/A)
[N/A]

N/A
(N/A)
[N/A]

N/A
(N/A)
[N/A]

Inter Partes Review Post Institution Fee—Up to 15 Claims (PerClaim Fee for Each Claim in Excess of 15 is $400) (NEW) .......

NEW$14,000
(N/A)
[N/A]

N/A
(N/A)
[N/A]

N/A
(N/A)
[N/A]

$27,200
(N/A)
[N/A]

$23,000
(N/A)
[N/A]

¥$4,200
(N/A)
[N/A]

¥15%
(N/A)
[N/A]

Total Inter Partes Review Fees (For Current Fees, Per ClaimFee for Each Claim in Excess of 20 is $600) .......................

TABLE 22—INTER PARTES REVIEW PROSPECTIVE COST INFORMATION
Prospective cost information

FY 2013

The Total Inter Partes Review cost calculation of $27,200 included in Changes to Implement Inter Partes Review Proceedings, Post-Grant Review Proceedings, and Transitional Program for Covered Business Method Patents, 77 FR 48680 (Aug. 14, 2012) is available for review at
http://www.gpo.gov/fdsys/pkg/FR–2012–08–14/pdf/2012–17906.pdf. The Office estimated that 35 hours of Judge time would be required during review and used this as the basis for estimating the cost for the Inter Partes Review. The IT-related costs are included in the Review Request portion of the fee.

TKELLEY on DSK3SPTVN1PROD with

Description

Base cost

Per claim cost

Inter Partes Review Request—up to 20 claims ..............................................................................................
Inter Partes Review Post Institution Fee—up to 15 claims ............................................................................

$10,500
16,700> 20 = $200
> 15 = $400

Total Inter Partes Review Costs ..............................................................................................................

27,200

N/A

Inter partes review is a new trial
proceeding created by the AIA with aneffective date of September 16, 2012 (seeChanges to Implement Inter Partes
Review Proceedings, Post-Grant Review
Proceedings, and Transitional Programfor Covered Business Method Patents 77
FR 48680 (Aug. 14, 2012). Inter partes
review allows the Office to review thepatentability of one or more claims in apatent only on a ground that could beraised under 35 U.S.C. 102 or 103, andonly on the basis of prior art consistingof patents or printed publications. Theinter partes review process begins whena third party files a petition nine months
after the grant of a patent. An interpartes review may be instituted upon ashowing that there is a reasonable
likelihood that the petitioner would
prevail with respect to at least one claim
challenged. If the review is instituted
and not dismissed, the PTAB will issue
a final determination within one year of
institution. The period can be extended
for good cause for up to six months fromthe date of one year after instituting thereview.
In this final rule, the Office sets theinter partes review fees at a level below

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the Office’s cost recovery and improves
the fee payment structure. The Officesets four separate fees for inter partes
review, which a petitioner would pay
upon filing a petition. The Office alsochooses to return fees for postinstitution services should a review not
be instituted. Similarly, the Officeestablishes that fees paid for postinstitution review of a large number ofclaims will be returned if the Office
only institutes the review of a subset ofthe requested claims.
The USPTO sets the fee for an interpartes review petition at $9,000 for up
to 20 claims. This fee would not be
returned or refunded to the petitioner
even if the review is not instituted.
In addition, the USPTO sets a per
claim fee of $200 for each claim
requested for review in excess of 20.
This fee would not be returned or
refunded to the petitioner if the review
is not instituted or if the institution islimited to a subset of the requested
claims.
The USPTO also sets the inter partes
review post-institution fee at $14,000 fora review of up to 15 claims. This fee
would be returned to the petitioner if

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the Office does not institute a review.
Likewise, the Office sets a per claim feeof $400 for review of each claim inexcess of 15 during the post-institution
trial. The entire post-institution fee
would be returned to the petitioner if
the Office does not institute a review.
The entire excess claims fee would be
returned if review of 15 or fewer claims
is instituted. If the Office reviews morethan 15 claims, but fewer than all of therequested claims, it would return part of
the fee for each claim the Office did notreview.
For example, under this final rule, if
a party requests inter partes review of 52
claims, the petitioner would pay asingle fee up front comprising two parts
and totaling $44,200. The first part is fordetermining whether to institute thereview and would include the base fee($9,000) plus a fee of $200 for each of
the additional 32 claims (52 minus 20),
which equates to an additional $6,400
for a total review request fee of $15,400($9,000 plus $6,400). The second part of
the fee is for when the review isinstituted and includes the base fee of$14,000 plus a fee of $400 for each of
the additional 37 claims (52 minus 15),

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which equates to an additional $14,800
for a total post institution fee of $28,800($14,000 plus $14,800). In addition,
under this rule, if the petitioner seeks
review of 52 claims, but the Office only
institutes review of 40 claims, the Officewould return $4,800 (it did not institutereview of the 41st through 52nd claim
for which review was requested).
Alternatively, if the review is notinstituted at all, the portion of the fee
covering the trial would be returned(i.e., the base post-institution fee of$14,000 as well as the $14,800 for
claims over 15, for a total of $28,800).
The Office sets these two claim
thresholds—one for petitions (up to 20
claims) and the other for the postinstitution trials (up to 15 claims)—
because it anticipates that it will notinstitute review of 25 percent of claims
for which review is requested. The
Office bases this approach on its
analysis of the initial inter partes
reexaminations filed after September 15,
2011, as well as the new opportunity forpatent owners to file a response to thepetition before the Office determines
whether and for which claims toinstitute review.
This approach also considers certain
policy factors, such as fostering
innovation by facilitating greater accessto the inter partes review proceedings
and thereby removing low quality
patents from the patent system.
Post-Grant Review or Covered
Business Method Patent Review:

TABLE 23—POST-GRANT REVIEW OR COVERED BUSINESS METHOD PATENT REVIEW FEE CHANGESCurrent fees

Final fees

Dollar change

Percent change

Large(small)[micro]entityLarge(small)[micro]entityLarge(small)[micro]entityLarge(small)[micro]entityFee description

Post-Grant Review or Covered Business Method Patent Review
Request—Up to 20 Claims (Per Claim Fee for Each Claim in
Excess of 20 is $250) (NEW) ......................................................

NEW$12,000
(N/A)
[N/A]

N/A
(N/A)
[N/A]

N/A
(N/A)
[N/A]

Post-Grant Review or Covered Business Method Patent Review
Post Institution Fee—Up to 15 Claims (Per Claim Fee for Each
Claim in Excess of 15 is $550) (NEW) ........................................

NEW$18,000
(N/A)
[N/A]

N/A
(N/A)
[N/A]

N/A
(N/A)
[N/A]

$35,800
(N/A)
[N/A]

$30,000
(N/A)
[N/A]

¥$5,800
(N/A)
[N/A]

¥16%
(N/A)
[N/A]

Total Post-Grant Review or Covered Business Method Patent
Review Fees (For Current Fees, Per Claim Fee for Each
Claim in Excess of 20 is $800) .............................................

TABLE 24—POST-GRANT REVIEW OR COVERED BUSINESS METHOD PATENT REVIEW PROSPECTIVE COST INFORMATION
Prospective cost information

FY 2013

The Total Post-Grant Review cost calculation of $35,800 included in Changes to Implement Inter Partes Review Proceedings, Post-Grant Review Proceedings, and Transitional Program for Covered Business Method Patents, 77 FR 48680 (Aug. 14, 2012) is available for review at
http://www.gpo.gov/fdsys/pkg/FR–2012–08–14/pdf/2012–17906.pdf. The Office estimated that 50 hours of Judge time would be required during review and used this as the basis for estimating the cost for the Post-Grant Review. The IT-related costs are included in the Review Request portion of the fee.

TKELLEY on DSK3SPTVN1PROD with

Description

Base cost

Per claim cost

Post-Grant Review or Covered Business Method Patent Review Request—up to 20 claims .......................
Post-Grant Review or Covered Business Method Patent Review Post Institution Fee—up to 15 claims .....

$14,700
21,100> 20 = $250
> 15 = $550

Total Post-Grant Review Costs ................................................................................................................

35,800

N/A

Post-grant review is a new trial
proceeding created by the AIA with aneffective date of September 16, 2012 (seeChanges to Implement Inter Partes
Review Proceedings, Post-Grant Review
Proceedings, and Transitional Programfor Covered Business Method Patents,
77 FR 48680 (Aug. 14, 2012)). Post-grant
review allows the Office to review thepatentability of one or more claims in apatent on any ground that could beraised under 35 U.S.C. 282(b)(2) and(b)(3) in effect on September 16, 2012.
The post-grant review process begins

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when a third party files a petition
within nine months of the grant of apatent. A post-grant review may beinstituted upon a showing that it ismore likely than not that at least one
challenged claim is unpatentable or thatthe petition raises an unsettled legal
question that is important to otherpatents or patent applications. If thereview is instituted and not dismissed,
the PTAB will issue a final
determination within one year of
institution. This period can be extended
for good cause for up to six months from

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the date of one year after instituting thereview.
In this final rule, the Office sets thepost-grant review fee at a level below
the Office’s cost recovery and improves
the fee payment structure. The Officesets four separate fees for post-grant
review, which the petitioner would pay
upon filing a petition for post-grant
review. The Office also chooses toreturn fees for post-institution services
if a review is not instituted. Similarly,
the Office establishes that fees paid fora post-institution review of a large

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number of claims will be returned if the
Office only institutes the review of asubset of the requested claims. The
same structure and fees apply forcovered business method review.
The Office sets the fee for a post-grant
review petition at $12,000 for up to 20
claims. This fee would not be returnedor refunded to the petitioner even if thereview is not instituted by the Office.
In addition, the Office sets a per claim
fee of $250 for each claim in excess of
20. This fee would not be returned or
refunded to the petitioner if the review
is not instituted, or if the institution islimited to a subset of the requested
claims.
The USPTO also sets a post-grant
review post-institution fee at $18,000 for
post-institution review of up to 15
claims. This fee would be returned tothe petitioner if the Office does notinstitute a review. Likewise, the Officesets a per claim fee of $550 for review
of each claim in excess of 15 during thepost-institution review. The entire fee
would be returned to the petitioner if
the Office does not institute a review.
The excess claims fees would be

returned if review of 15 or fewer claims
is instituted. If the Office reviews morethan 15 claims, but fewer than all of therequested claims, it would return part of
the fee for each claim that was notinstituted.
For example, under this final rule, aparty seeking post-grant review of 52
claims would pay a single fee up front
comprising two parts and totaling$58,350. The first part is for determining
whether to institute the review andwould include the base fee ($12,000)
plus a fee of $250 for each of theadditional 32 claims (52 minus 20),
which equates to an additional $8,000
for a total review request fee of $20,000($12,000 plus $8,000). The second partof the fee is for when the review isinstituted and includes the base fee of$18,000 plus a fee of $550 for each of
the additional 37 claims (52 minus 15),
which equates to an additional $20,350
for a total post institution fee of $38,350($18,000 plus $20,350). In addition,
under this rule, if the petitioner requests
review of 52 claims, but the Office only
institutes review of 40 claims, then the
Office would return $6,600 (it did not4235

institute review of the 41st through52nd claims for which review wasrequested). Alternatively, if a review is
not instituted at all, the Office would
return $38,350 ($20,350 for claims over
15, as well as the base $18,000 postinstitution fee).
The Office sets two different claim
thresholds—one for petition (up to 20
claims) and the other for the postinstitution trials (up to 15 claims)—
because it anticipates that it will notinstitute a review of 25 percent ofclaims for which review is requested.
The Office bases this approach on its
analysis of the initial inter partes
reexaminations filed after September 15,
2011, as well as the new opportunity forpatent owners to file a response to thepetition before the Office determines
whether and for which claims toinstitute review.
The approach also considers certain
policy factors, such as fostering
innovation through facilitating greater
access to the post-grant review
proceedings and thereby removes low
quality patents from the patent system.
Pre Grant Publication (PGPub) Fee:TABLE 25—PRE GRANT PUBLICATION (PGPUB) FEE CHANGESCurrent fees

Final fees

Dollar change

Percent change

Large(small)[micro]entityLarge(small)[micro]entityLarge(small)[micro]entityLarge(small)[micro]entityFee description

Publication Fee for Early, Voluntary, or Normal Publication ...........
Publication Fee for Republication ....................................................

$300
300

$0
300

¥$300
0

¥100%
0%

TKELLEY on DSK3SPTVN1PROD withTABLE 26—PRE GRANT PUBLICATION (PGPUB) HISTORICAL COST INFORMATION
Historical unit cost information

FY 2011

FY 2010

FY 2009

Publication Fee for Early, Voluntary, or Normal Publication .......................................................

$181

$158

$243

With certain exceptions, each
nonprovisional utility and plant patentapplication is published 18 months
from the earliest effective filing date.
The fee for this pre-grant publication(PGPub) is paid only after a patent isgranted. If a patent is never granted, theapplicant does not pay the fee for
PGPub. Once the Office determines thatthe invention claimed in a patentapplication is patentable, the Officesends a notice of allowance to theapplicant, outlining the patentapplication publication fees due, alongwith the patent issue fee. The applicant
must pay these publication and issue
fees three months from the date of thenotice of allowance to avoid abandoning
the application.

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Currently, the PGPub fee is set at $300
and collects over one and a half times
the cost to publish a patent application.
The IP system benefits from publishingpatent applications; disclosing
information publicly stimulates researchand development, as well as subsequentcommercialization through further
development or refinement of an
invention. Therefore, a lower PGPub fee
would benefit both applicants andinnovators in the patent system.
Given that publishing a patentapplication 18 months after its earliest
effective filing date benefits the IP
system more than individual applicants,
the Office reduces the PGPub fee to $0.
Reducing this fee also helps rebalance
the fee structure and offsets the
proposed increases to filing, search, andPO 00000

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examination fees ($340 increase, lessthis $300 decrease is a net $40
increase—or 3 percent—to apply for apatent and publish the application).
However, to allow the Office to recover
sufficient revenue to pay for the
projected cost of patent operations in FY
2013, the effective date of the proposed
reduction to the PGPub fee is January 1,
2014.
The PGPub fee for republication of apatent application (1.18(d)(2)) is not
adjusted, but is set at the existing rateof $300. The Office keeps this fee at its
existing rate for each patent applicationthat must be published again after a firstpublication for $0.

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Federal Register / Vol. 78, No. 13 / Friday, January 18, 2013 / Rules and Regulations(3) Fees To Be Set Above Cost Recovery
There are two fees that the Office sets
above cost recovery that meet the greaterthan plus or minus 5 percent and 10
dollars criteria. The policy factor

relevant to setting fees above cost
recovery is fostering innovation. Backend fees work in concert with front-end
fees. The above-cost, back-end fees
allow the Office to recover the revenue
required to subsidize the cost of entry

into the patent system and reduce thebacklog of patent applications. A
discussion of the rationale for eachchange follows.
Issue Fees:

TABLE 27—ISSUE FEE CHANGESCurrent fees

Final fees

Dollar change

Percent change

Large(small)[micro]entityLarge(small)[micro]entityLarge(small)[micro]entityLarge(small)[micro]entityFee description

Utility Issue Fee ...............................................................................

+$1,770(+$885)
[N/A]

¥$810
(¥$405)[¥$645]+$960(+$480)[+$240]¥46%(¥46%)[¥73%]TABLE 28—ISSUE FEE HISTORICAL COST INFORMATION
Historical unit cost information

FY 2011

FY 2010

FY 2009

Utility Issue Fee ...........................................................................................................................

$257

$231

$224

Once the Office determines that theinvention claimed in a patentapplication is patentable, the USPTO
sends a notice of allowance to theapplicant outlining the patentapplication publication and patent issue
fees due. The applicant must pay the
publication and issue fees three months
from the date of the notice of allowance
to avoid abandoning the application.
In setting fees due after completingprosecution at a level higher than cost,
front-end fees can be maintained below
cost, thereby fostering innovation.
Currently, the large entity issue fee is set
at $1,770, which is seven times morethan the cost of issuing a patent. Thisfee recovers revenue, but it also poses achallenge to applicants at the time ofallowance. When the issue fee is due,patent owners possess less information
about the value of their invention thanthey do a few years later. Lowering issue

fees will help inventors financially at atime when the marketability of theirinvention is less certain. Additionally,
setting the PGPub fee at $0 as discussed
above, and recovering the combined
cost of publishing and issuing anapplication through only the issue fee
benefits small and micro entity
innovators. The 50 percent discount forsmall entities and 75 percent discountfor micro entities are not available forthe publication fee, but are available forthe issue fee. Thus, there are benefits toboth the IP system and the applicant
when the issue fees are set at an amountlower than the current fee amount, but
still above cost recovery.
To both maintain the beneficial
aspects of this back-end subsidy modeland realign the balance of the fee
structure, the Office decreases the large
entity issue fee to $960. This amount isabout twice the cost of both publishing

an application (which is set below cost
at $0) and issuing a patent. This fee
adjustment is over a 50 percent decrease
from the amount currently paid for boththe PGPub and issue fees together. The
Office is adjusting the issue fee in two
steps. First, the Office sets the issue fee
at $1,780 and makes available a 50
percent discount for small entities anda 75 percent discount for micro entities.
Second, the Office decreases the large
entity issue fee to $960 effective January
1, 2014, and continues to make available
discounts for small and micro entities.
It should be noted that only utility
issue fees are referenced in this section
to simplify the discussion of the fee
rationale. However, the rationale isapplicable to the issue fee changes fordesign, plant, and reissue fees as
outlined in the ‘‘USPTO Section 10 Fee
Setting—Table of Patent Fee Changes.’’
Maintenance Fees:

TABLE 29—MAINTENANCE FEE CHANGESCurrent fees

Final fees

Dollar change

Percent change

Large(small)[micro]entityLarge(small)[micro]entityLarge(small)[micro]entityLarge(small)[micro]entityFee description

Maintenance Fee Due at 3.5 Years (1st Stage) .............................

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Maintenance Fee Due at 7.5 Years (2nd Stage) ............................

Maintenance Fee Due at 11.5 Years (3rd Stage) ...........................

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18JAR2+$450(+$225)[$¥175]+$700(+$350)[¥$550]+$2,590(+$1,295)[¥$555]+39%(+39%)[¥30%]+24%(+24%)[¥38%]+54%(+54%)[¥23%]

Federal Register / Vol. 78, No. 13 / Friday, January 18, 2013 / Rules and Regulations

4237

TABLE 30—MAINTENANCE FEE HISTORICAL COST INFORMATION
Historical unit cost information

FY 2011 *FY 2010Maintenance Fee Due at 3.5 Years (1st Stage) .........................................................................
Maintenance Fee Due at 7.5 Years (2nd Stage) ........................................................................
Maintenance Fee Due at 11.5 Years (3rd Stage) .......................................................................

........................
........................
........................

FY 2009
$1
1
1

$2
2
2

* Beginning in FY 2011, the Office determined that the maintenance fee activity was in support of the process application fees activity and its
associated fees. Therefore, the Office reassigned these costs accordingly, and no longer estimates a unit cost for maintenance fee activities. Additional information about the methodology for determining the cost of performing the Office’s activities, including the cost components related torespective fees, available at http://www.uspto.gov/aia_implementation/fees.jsp#heading-1 in the document titled ‘‘USPTO Section 10 Fee Setting—Activity-Based Information and Costing Methodology.’’

Maintenance fees must be paid at
defined intervals—3.5 years, 7.5 years,
and 11.5 years—after the Office grants autility patent in order to keep the patentin force. Maintaining a patent costs the
Office very little. However, maintenancefees benefit the Office and the patent
system by generating revenue that
permits the Office to keep front-end fees
below cost and to subsidize the cost ofprosecution for small and micro entity
innovators.
Additionally, maintenance fees will
be paid only by patent owners whobelieve the value of their patent ishigher than the fees for renewing theirpatent rights. On this score, setting early
maintenance fees lower than later
maintenance fees mitigates uncertainty
associated with the value of the patent.
As the value becomes more certain overtime, the maintenance fee increases
because patent owners have more
information about the commercial valueof the patented invention and can more
readily decide whether the benefit of apatent outweighs the cost of the fee.
Therefore, under a progressively
higher maintenance fee schedule, apatent holder is positioned to perform
an individual cost-benefit analysis todetermine if the patent is at least as
valuable as the maintenance fee
payment. When the patent holder
determines that the patent benefit(value) outweighs the cost (maintenancefee), the holder will likely continue tomaintain the patent. Conversely, when
the patent holder determines that thebenefit is less than the cost, the holder
likely will not maintain the patent tofull term. When the patent expires, thesubject matter of the patent is no longer
held with exclusive patent rights, andthe public may utilize the invention andwork to extend its innovation orcommercialization. More information on
the economic costs and benefits ofpatent renewal can be found in therulemaking RIA, which is available forreview at http://www.uspto.gov/
aia_implementation/fees.jsp.
The Office increases the first, second,
and third stage maintenance fees to$1,600, $3,600, and $7,400, respectively.
These increases are commensurate withthe subsidies offered for prosecution ofa patent application and align with thefee setting strategy of fostering
innovation by setting front-end fees
below cost. The increase also ensuresthat the USPTO has sufficient aggregate
revenue to recover the aggregate cost ofoperations and implement goals andobjectives.
(4) Fees That Are Not Set Using Cost
Data as an Indicator
Fees in this category include those
fees for which the USPTO does not

typically maintain historical cost
information separate from that includedin the average overall cost of activities
during patent prosecution or did notrefer to cost information for setting theparticular fee. Instead, the Officeevaluates the policy factors described inPart III. Rulemaking Goals andStrategies, above, to inform fee setting.
Some of these fees are based on the sizeand complexity of an application andhelp the Office to effectively administerthe patent system by encouraging
applicants to engage in certain
activities. Setting fees at particularlevels can: (1) Encourage the submissionof applications or other actions whichlead to more efficient processing where
examiners can provide, and applicants
can receive, prompt, quality interim andfinal decisions; (2) encourage theprompt conclusion of prosecuting anapplication, resulting in pendency
reduction and the faster disseminationof patented information; and (3) help
recover costs for activities that strain thepatent system.
There are six types of fees in thiscategory. A discussion of the rationale
for each proposed change follows.
Extension of Time Fees:

TABLE 31—EXTENSION OF TIME FEE CHANGESCurrent fees

Final fees

Dollar change

Percent change

Large(small)[micro]entityLarge(small)[micro]entityLarge(small)[micro]entityLarge(small)[micro]entityFee description

Extension for Response within 1st Month .......................................

Extension for Response within 2nd Month ......................................

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Extension for Response within 3rd Month ......................................

Extension for Response within 4th Month .......................................

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$150
($75)
[N/A]
$570
($285)[N/A]$1,290($645)[N/A]$2,010($1,005)[N/A]

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18JAR2+$50(+$25)[¥$25]+$30(+$15)[¥$135]+$110(+$55)[¥$295]+$190(+$95)[¥$455]+33%(+33%)[¥33%]+5%(+5%)[¥47%]+9%(+9%)[¥46%]+9%(+9%)[¥45%]

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Federal Register / Vol. 78, No. 13 / Friday, January 18, 2013 / Rules and Regulations
TABLE 31—EXTENSION OF TIME FEE CHANGES—Continued
Current fees

Final fees

Dollar change

Percent change

Large(small)[micro]entityLarge(small)[micro]entityLarge(small)[micro]entityLarge(small)[micro]entityFee description

Extension for Response within 5th Month .......................................

If an applicant must reply within anon-statutory or shortened statutory
time period, the applicant can extend
the reply time period by filing a petition
for an extension of time and paying therequisite fee. Extensions of time may be$2,730($1,365)[N/A]$3,000($1,500)[$750]

automatically authorized at the time an
application is filed or requested asneeded during prosecution. The USPTO
increases these fees to facilitate anefficient and prompt conclusion of
application processing, which benefits+$270(+$135)[¥$615]+10%(+10%)[¥45%]

the Office’s compact prosecution
initiatives and reduces patentapplication pendency.
Application Size Fees:

TABLE 32—APPLICATION SIZE FEE CHANGESCurrent fees

Final fees

Dollar change

Percent change

Large(small)[micro]entityLarge(small)[micro]entityLarge(small)[micro]entityLarge(small)[micro]entityFee description

Application Size Fee—For each Additional 50 Sheets that Exceed
100 Sheets ...................................................................................

Currently, the Office charges anadditional fee for any application where
the specification and drawings together
exceed 100 sheets of paper. The
application size fee applies for each
additional 50 sheets of paper or fraction$320($160)[N/A]$400($200)[$100]

thereof. The USPTO increases theapplication size fee to facilitate anefficient and compact application
examination process, which benefits theapplicant and the effective
administration of patent prosecution.

+$80(+$40)[¥$60]+25%(+25%)[¥38%]

Succinct applications facilitate fasterexamination with an expectation of
fewer errors.
Excess Claims:

TABLE 33—EXCESS CLAIMS FEE CHANGESCurrent fees

Final fees

Dollar change

Percent change

Large(small)[micro]entityLarge(small)[micro]entityLarge(small)[micro]entityLarge(small)[micro]entityFee description

Independent Claims in Excess of 3 .................................................
Claims in Excess of 20 ....................................................................

TKELLEY on DSK3SPTVN1PROD with

Multiple Dependent Claim ...............................................................

Currently, the Office charges a fee forfiling, or later presenting at any othertime, each independent claim in excess
of 3, as well as each claim (whether
dependent or independent) in excess of
20. In addition, any original applicationthat is filed with, or amended toinclude, multiple dependent claims
must pay the multiple dependent claim
fee. Generally, a multiple dependent

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[N/A]
$62
($31)
[N/A]
$460
($230)[N/A]

claim is a dependent claim which refersback in the alternative to more than one
preceding independent or dependentclaim.
The patent fee structure has
maintained excess claim fees since atleast 1982, and the result has been thatmost applications now contain three or
fewer independent claims and twenty or
fewer total claims. Applicants who feel

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Sfmt 4700$420($210)[$105]
$80
($40)
[$20]
$780
($390)[$195]+$170(+$85)[¥$20]+$18(+$9)[¥$11]+$320(+$160)[¥$35]+68%(+68%)[¥16%]+29%(+29%)[¥35%]+70%(+70%)[¥15%]

they need more than this number of
independent or total claims may
continue to present them by paying theapplicable excess claims fee. While theformer excess claims fee amountencouraged most applicants to present
three or fewer independent claims andtwenty or fewer total claims, it was not
sufficient to discourage some applicantsfrom presenting a copious number of

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claims for apparent tactical reasons, nor
did the former excess claims fee reflect
the excess burden associated withexamining those claims. See, e.g., Rulesof Practice for Trials Before the Patent
Trial and Appeal Board and Judicial
Review of Patent Trial and Appeal
Board Decisions, 77 FR 48612, 48659–
60 (Aug. 14, 2012) (noting that the
number of claims often impacts thecomplexity of the request and increases
the demands placed on the deciding
officials in administrative proceedings).
Thus, the Office is adopting excess

claims fee amounts that are aimed topermit applicants to include excess
claims when necessary to obtain an
appropriate scope of coverage for an
invention, while deterring applicantsfrom routinely presenting a copious
number of claims merely for apparent
tactical reasons.
In this final rule, the Office sets thefees for independent claims in excess of
three to $420, for claims in excess of 20
to $80, and for multiple dependentclaims to $780. The Office also
increased claim fees to facilitate an4239

efficient and compact application
examination process, which benefits theapplicant and the USPTO through more
effective administration of patent
prosecution. Filing applications withthe most prudent number ofunambiguous claims will enable prompt
conclusion of application processing,
because more succinct applications
facilitate faster examination with an
expectation of fewer errors.
Correct Inventorship After First
Action on the Merits (New):TABLE 34—CORRECT INVENTORSHIP AFTER FIRST ACTION ON THE MERITS FEE CHANGESCurrent fees

Final fees

Dollar change

Percent change

Large(small)[micro]entityLarge(small)[micro]entityLarge(small)[micro]entityLarge(small)[micro]entityFee description

Correct Inventorship After First Action on the Merits (NEW) ..........

It is necessary for the Office to know
who the inventors are to prepare patentapplication publications, conduct
examination under 35 U.S.C. 102 and103, and prevent double patenting.
Changes to inventorship (e.g., adding
previously unnamed persons as
inventors or removing persons
previously named as inventors) cause
additional work for the Office. For
instance, the Office may need to repeat
prior art searches and/or reconsider
patentability under 35 U.S.C. 102 and103, as well as reconsider the possibilityof double patenting.
In the NPRM, the Office proposed a$1,000 fee to correct inventorship after
the first action on the merits. In thisfinal rule, after carefully consideringcomments from the PPAC and the
public, the Office sets the fee to correct
inventorship after the first action on the
merits at $600, 40 percent less than the

NEW

$600
($300)[$150]$1,000 proposed in the NPRM. The
inventorship correction fee is set toencourage reasonable diligence and abona fide effort to ascertain the actual
inventorship as early as possible and toprovide that information to the Officeprior to examination. The fee also will
help offset the costs incurred by the
Office when there is a change ininventorship.
Additionally, in the NPRM, the Officeproposed that the correction of
inventorship fee be paid in all
circumstances when inventors wereadded or deleted, because requiring thefee only to add inventors would
encourage applicants to err in favor ofnaming too many persons as inventors,
which would complicate theexamination process (e.g., it could
complicate double patenting searches).
In this final rule, the Office is adding an
exception when inventors are deleted

N/A
(N/A)
[N/A]

N/A
(N/A)
[N/A]

due to the cancellation of claims. This
final rule requires a fee to accompany arequest to correct or change theinventorship filed after an Office action
on the merits, unless the request isaccompanied by a statement that therequest to correct or change theinventorship is due solely to thecancelation of claims in the application.
The Office appreciates thatinventorship may change as the result ofa restriction requirement by the Office.
Where inventorship changes as a resultof a restriction requirement, theapplicant should file a request to correct
inventorship promptly (prior to firstaction on the merits) to avoid this fee.
Otherwise, the Office will incur thecosts during examination related to thechange in inventorship.
Derivation Proceeding:

TABLE 35—DERIVATION PROCEEDING FEE CHANGESCurrent fees

Final fees

Dollar change

Percent change

Large(small)[micro]entityLarge(small)[micro]entityLarge(small)[micro]entityLarge(small)[micro]entityFee description

TKELLEY on DSK3SPTVN1PROD withDerivation petition fee ......................................................................

A derivation proceeding is a new trial
proceeding conducted at the PTAB todetermine whether an inventor namedin an earlier application derived the

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$400
(N/A)
[N/A]

claimed invention from an inventor
named in the petitioner’s application,
and whether the earlier application
claiming such invention was

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$400
(N/A)
[N/A]

$0
(N/A)
[N/A]

0%
(N/A)
[N/A]

authorized. An applicant subject to thefirst-inventor-to-file provisions may filea petition to institute a derivation
proceeding only within one year of the

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Federal Register / Vol. 78, No. 13 / Friday, January 18, 2013 / Rules and Regulations

first publication of a claim to an
invention that is the same or
substantially the same as the earlier
application’s claim to the invention.
The petition must be supported bysubstantial evidence that the claimed
invention was derived from an inventor
named in the petitioner’s application.
In this final rule, the Office sets thederivation petition fee at $400. The

Office estimates the $400 petition fee
will recover the Office’s cost to processa petition for derivation.
Assignments Submitted ElectronicallyFee (New):TABLE 36—FEE CHANGES FOR ASSIGNMENTS SUBMITTED ELECTRONICALLY
Current fees

Final fees

Dollar change

Percent change

Large(small)[micro]entityLarge(small)[micro]entityLarge(small)[micro]entityLarge(small)[micro]entityFee description

Assignments Submitted Electronically (NEW) .................................
Assignments Not Submitted Electronically (NEW) ..........................

$40
(N/A)
[N/A]
$40
(N/A)
[N/A]

$0
(N/A)
[N/A]
$40
(N/A)
[N/A]

¥$40
(N/A)
[N/A]
$0
(N/A)
[N/A]

¥100%
(N/A)
[N/A]
0%
(N/A)
[N/A]

TKELLEY on DSK3SPTVN1PROD with

Note: The current fee amount is $40 for submitting an assignment to the Office, regardless of method of submission.

Ownership of a patent gives thepatent owner the right to exclude othersfrom making, using, offering for sale,selling, or importing into the U.S. theinvention claimed in a patent. Patentlaw provides for the transfer or sale ofa patent, or of an application for patent,
by an instrument in writing (i.e., anassignment). When executing an
assignment, the patent owner may
assign (e.g., transfer) the total or apercentage of interest, rights, and title ofa patent to an assignee. When there is
a completed assignment, the assignee
becomes the owner of the patent andhas the same rights of the original
patentee. The Office records
assignments that it receives, and therecording serves as public notice ofpatent ownership.
Assignment records are an importantpart of the business cycle—markets
operate most efficiently when buyers
and sellers can locate one another. If
assignment records are incomplete, thebusiness and research and development
cycles could be disrupted because
buyers face difficulty finding sellers,and potential innovators may not havea thorough understanding of themarketplace they are considering
entering. The Office recognizes thatcomplete patent assignment data
disseminated to the public provides
certainty in the technology space andhelps to foster innovation.
Therefore, more complete patentassignment records will produce anumber of benefits for the public and IP
stakeholders. The public will have amore comprehensive understanding of
which entities hold and maintain U.S.
patent rights. Patenting inventors andcompanies will better understand thecompetitive environment in which they

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are operating, allowing them to better
allocate their own research anddevelopment resources, more efficiently
obtain licenses, and accurately value
patent portfolios.
Currently, a patent owner must pay$40 to record the assignment of patentrights. During FY 2012, over 90 percent
of assignments were submitted
electronically. This fee could be viewed
as a barrier to those involved in patent
and application assignments. Given thatpatent applications, patents, and thecompleteness of the patent record play
an important role in the markets forinnovation and the long-term health of
the U.S. economy, the Office is setting
two fees for recording an assignment.
When an assignment is submitted using
the Office’s electronic system, the Officesets the fee at $0. When an assignment
is sent to the Office in a manner otherthan using the Office’s electronicsystem, the Office sets the fee at thecurrent amount of $40. Providing patent
prosecution options for applicantsbenefits a majority of owners who
typically record assignments. In
addition, the patent prosecution options
for applicants benefit the overall IP
system by reducing the financial barrier
for recording patent ownership
information and facilitating a more
complete record of assigned
applications and grants.
C. Fees With No Changes (or Changes ofLess Than Plus or Minus 5 Percent and
10 Dollars)
The Office sets all other categories offees not discussed above at existing fee
rates or at slightly adjusted rates (i.e.,less than plus or minus 5 percent and
10 dollars) rounded to the nearest ten
dollars by applying standard arithmetic

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rules. The resulting fee amounts will be
convenient to patent users and permit
the Office to set micro entity fees atwhole dollar amounts when applying
the fee reduction. These other fees, suchas those related to disclosing patent
information to the public (excluding the
PGPub fee) and patent attorney/agent
discipline fees, are already set atappropriate levels to achieve the
Office’s goals expressed in thisrulemaking. A listing of all fees that are
adjusted in this rule is included in the
Table of Patent Fee Changes available at
http://www.uspto.gov/
aia_implementation/fees.jsp#heading-1.
D. Overall Comparison of the Final
Patent Fee Schedule to the Current Fees
Overall, once effective, the total
amount of fees under this final rule
added together to obtain a basic patentdecreases when compared to the total
fees paid for the same services under thecurrent fee schedule. This decrease issubstantial (23 percent) fromapplication to issue (see Table 37).
When additional processing options
such as RCEs are included, the decrease
becomes smaller after the first RCE (12percent) and eventually begins
increasing after a second RCE (5percent) (see Tables 38 and 39). The
staging of appeal fees in this rule offers
similar decreases in the total fees paid
when filing a notice of appeal. Under
the final fee schedule, the total fees forboth filing an appeal and to obtain abasic patent decrease from the current
fee schedule (27 percent) (see Table 40).
If the appeal is forwarded to the PTAB
for a decision after the Examiner’s
Answer, then the total fees increase (17percent) (see Table 40). Once anapplicant has obtained a basic patent,

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Federal Register / Vol. 78, No. 13 / Friday, January 18, 2013 / Rules and Regulations
the cost to maintain it remains
substantially the same through thesecond stage maintenance fee. However,at the third stage maintenance fee, oncethe patent holder has more informationon the value of the patent, the total fees
increase (24 percent) (see Table 41).
This structure reflects the key policy
considerations of fostering innovation,
facilitating effective administration of
the patent system, and offering patent
prosecution options to applicants.
Additional details about each of thesepayment structures are outlined below.
In this section, the Office assumes, forthe purpose of comparison between thecurrent and final fee schedule, that all
fees are as of their stated effective dates
in this final rule. For example,
comparisons between the current andfinal issue and PGPub fees are based on
the final fees as they will become
effective beginning on January 1, 2014.
Further, to simplify the comparison
among fee schedules, the time value ofmoney has not been estimated in theexamples below.

TABLE 38—COMPARISON OF THE
FINAL PATENT FEES TO THE CURRENT PATENT FEES WITH ONE RCE
FeeCurrent

Filing, Search, and Examination ...................
First RCE ......................
Pre-Grant Publication
and Issue ..................
Total ..........................

Final$1,260930$1,600
1,200

2,070

960

4,260

3,760

When adding a second RCE toprosecution, the total fees increaseslightly, by $270 (or 5 percent), as
shown in Table 39.

prosecution is reopened before being
forwarded to the Board.

TABLE 40—COMPARISON OF THE
FINAL PATENT FEES AND CURRENT
PATENT FEES, WITH AN APPEAL
Fee

Current

Final$1,260$1,600

1,260

800

2,070

960

Subtotal for Fees
Paid Before Examiner’s Answer .........
Appeal Forwarding Fee

4,590
NEW

3,360
2,000

Subtotal for Fees if
Appeal is Forwarded to Board for
Decision .................

4,590

5,360

Filing, Search, and Examination ...................
Notice of Appeal andFiling a Brief ..............
Pre-Grant Publication
and Issue ..................

3. Maintenance Fees Increase

When a patent holder begins
maintaining an issued patent, he or she
will pay $320 (7 percent) less than is
paid under the current fee schedule
TABLE 39—COMPARISON OF THE
The total amount paid for routine feesfrom initial application filing throughto obtain a basic patent from application
FINAL PATENT FEES TO THE CUR- the first stage. To maintain the patentfiling (i.e., filing, search, examination,
RENT PATENT FEES WITH TWO through second stage, a patent holder
publication, and issue) under the final
RCES
will pay $380 (5 percent) more than isfee structure will decrease compared topaid today under the current fee
the current fee structure, as shown in
Fee
Current
Finalschedule. When a patent is maintained
Table 37. This overall decrease isto full term, a patent holder will pay
Filing, Search, and Expossible because the decrease in pre$2,970 (24 percent) more than would be
amination...................
$1,260$1,600
grant patent application publication andFirst RCE ......................
930
1,200 paid under the current fee schedule.
issue fees from $2,070 to $960 (aThe most significant maintenance fee
Second and subsequent
decrease of $1,110) more than offsets theRCE ...........................
930
1,700 increase occurs after holding a patent
increase in large entity filing, search,
Pre-Grant Publicationfor 11.5 years, which is when a patentand examination fees from $1,260 toand Issue ..................
2,070
960 holder will be in a better position to$1,600 (an increase of $340). The net
determine whether the benefit (value)
Total ..........................
5,190
5,460
effect is a $770 (or 23 percent) decrease
from the patent exceeds the costin total fees paid under the final fee(maintenance fee) to maintain the
structure when compared to the current 2. Initial Appeals Fees Decrease
patent.
fee structure. This fosters innovation byInstead of filing an RCE, an applicant
reducing the cost to obtain a basic
may choose to file a notice of appeal.
TABLE 41—COMPARISON OF THE
patent.
When adding the notice of appeal andFINAL PATENT FEE SCHEDULES TO
the brief filing fees (allowing the
THE CURRENT FEES, LIFE OF PATTABLE 37—COMPARISON OF FINALapplicant to receive the Examiner’s
ENT
PATENT FEE SCHEDULE TO THE Answer) to the fees to obtain a basic
CURRENT PATENT FEES FROM FIL- patent, the total fees from application
Fee
Current
Finalfiling decrease by $1,230 (or 27 percent)
ING THROUGH ISSUE
from the current total fees. If theFiling, Search, and ExFee
Current
Final
prosecution issues are not resolved prioramination ...................
$1,260$1,600
to forwarding an appeal to the Board,
Pre-Grant Publication
Filing, Search, and Exthe fees increase because the Officeand Issue ..................
2,070
960
amination ...................
$1,260$1,600
proposes to recover more of the appeals
Pre-Grant Publication
Total Through Issue ..
3,330
2,560
and Issue ..................
2,070
960 cost. In that instance, fees will increase
First Stage Mainteby $770 (or 17 percent) more thannance—3.5 years ......
1,150
1,600
Total ..........................
3,330
2,560 would be paid today for an appeal
decision. However, under this final rule,
Cumulative Subtotal ..
4,480
4,160
When an application for a first RCE is the staging of fees allows the applicant
Second Stage Mainteto pay less than under the current fee
submitted to complete prosecution, thenance—7.5 years ......
2,900
3,600
schedule in situations where an
total fees from application filing to
Cumulative Subtotal ..
7,380
7,760
obtain a basic patent continue to remain application is either allowed or
1. Routine Application Processing Fees
and First RCE Fees Decrease

TKELLEY on DSK3SPTVN1PROD withless than would be paid under thecurrent fee schedule. This overall
decrease continues to be possible
because of the decrease in pre-grant
patent application publication and issue
fees. The net effect of the final feeschedule, including a first RCE, is a$500 (or 12 percent) decrease in total
fees paid under the final fee structure
when compared to the current fee
structure, as shown in Table 38.

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TABLE 41—COMPARISON OF THE
FINAL PATENT FEE SCHEDULES TO
THE CURRENT FEES, LIFE OF PATENT—Continued
Fee

Current

Final

Third Stage Maintenance—11.5 years ....

4,810

7,400

Total Fees for Lifeof Patent ............

12,19015,160VI. Discussion of Comments
A. Patent Public Advisory Committee
Fee Setting Report
Consistent with section 10(d) of the
Leahy-Smith America Invents Act, the
PPAC submitted a written report setting
forth in detail the comments, advice,
and recommendation of the committee
regarding the proposed fees publishedin the NPRM on September 24, 2012.
The report is available at http://
www.uspto.gov/aia_implementation/
fees.jsp#heading-1. The Officeconsidered the PPAC’s comments,
advice, and recommendations on fees
proposed in the NPRM before setting or
adjusting fees in this final rule, as
further discussed below.

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General Fee Setting Considerations
General Fee Setting Approach
PPAC Comment 1: The PPAC
commented overall that the fees
included in the NPRM represent an
improvement over the February 2012
Proposal. The PPAC also endorsed anincrease in fees above the level set by
the 15 percent surcharge effective in
2011, recognizing that the current levelof receipts are insufficient to allow the
Office to improve patent operations,provide the service patent applicants
deserve, and make critical infrastructure
improvements. The PPAC stated that it
endorses the fees in general, though it
also believes some fees are higher than
expected for an initial fee setting effort.
Response: The USPTO appreciates the
PPAC’s endorsement of the Office’s plan
to set fees to meet its aggregate costs,
including costs for implementing key
strategic initiatives, such as to decrease
patent application pendency and reduce
the patent application backlog, toimprove the quality of patentexamination, and to update patent
information technology systems that
benefit both the Office and applicants.
It is important for the Office to reduce
the patent application backlog so that
the Office can maintain an optimal
patent application inventory thatprovides applicants with 10 months firstaction pendency and 20 months total
pendency. These pendency goals were

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developed in consultation with patent
stakeholders when the Officeestablished the Strategic Plan. To meet
its aggregate costs, the Office requires
additional funds (2 percent increase intotal aggregate revenue) beyond theamount provided by the 15 percent
surcharge. With the increased fees, theOffice will not only reduce the amountof time it takes to examine a patentapplication, but also create a sustainablefunding model for the Office. Prior to
AIA section 10 fee setting authority, theOffice was authorized to adjust certain
statutory fees only to reflect changes in
the CPI for All Urban Consumers, andthat limited authority did not allow the
USPTO to recover increased processing
costs or adjust to changes in demand forservices related to those fees. The Office
responds to the PPAC’s comments on
the amounts of particular fees in thesections below.
Behavioral Incentives
PPAC Comment 2: The PPAC advisedthat while some use of fees to encourage
or discourage behavior may beappropriate, significant use of thisability to set fees at high levels to
discourage actions is not recommended
because it is not clear that the USPTO
will always take into consideration thefactors driving applicant behavior, andbecause those factors may be at crosspurposes with particular desires of the
USPTO. The PPAC also commented that
fee structures that depart from strict cost
recovery can engender either beneficial
or perverse incentives to all actors
within our patent system.
Response: The Office fully andcarefully considered factors
incentivizing both applicant and Officebehavior in setting the final patent fees.
In doing so, the Office conductedconsiderable outreach to stakeholders,and made numerous changes from its
February 2012 proposal as a result of
input from stakeholders. The Officecarefully explained its rationale andmotivation in the NPRM for each feethat the Office proposed to change bymore than 5 percent and more than ten
dollars.
Additionally, as further explained in
the RIA, the Office considered andrejected a cost recovery fee structure
because the Office determined that astrict, fee-by-fee based cost recovery fee
structure would fail to foster innovationin accordance with the Office’s fee
setting strategy. The Office found thatusing a strict cost recovery model would
greatly increase barriers to entry into thepatent system because filing, search,and examination fees would increasesignificantly, resulting in a loss ofprivate patent value due to a decrease in

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the number of patent applications filed.
Simultaneously, maintenance fees
would be set significantly lower andpatent holders would maintain theirpatents longer, reducing incentives torelease patents of minimal value into
the public domain for others to use forfollow-on invention. The Office
determined that it will better effectuate
its mission of fostering innovation by
setting fees to recover costs in theaggregate while incentivizing compact
patent prosecution. Where the Officedeviated from cost recovery for aparticular fee, it has fully considered the
behavioral effects of such departures.
PPAC Comment 3: The PPAC
commented that the Office should
ensure that applicants are not saddledwith the cost of internal operational
inefficiencies, as that may reduce the
Office’s incentives to improve its
efficiency.
Response: The Office created the final
fee structure in order to set fees at
optimal levels to improve the Office’s
services and to enhance operational
efficiency. The Office also continuously
reviews its own internal processes andbehaviors to improve operational
inefficiencies. These regular reviews ofinternal operations and behaviors were
institutionalized as a priority. For
example, the Office established a Patent
Process Reengineering Team (Team) in
June 2010 to review and evaluate preexamination, examination, and postexamination processes. The Teamdelivered redesigned and streamlined
processes—with recommendations for
improvements—to USPTO seniorleadership and the Patents End-To-End(PE2E) software engineering team.
Specifically, the Team produced morethan 250 individual process
improvement recommendations in theareas of: Increased electronic
application filing and management,
processing standardization andconsistency (with both domestic andinternational standards), accurate andeasy measurement of core metrics,
examination quality, customer
satisfaction, and reduced risk exposure.
Where the best tool for improvement
included information technology, theOffice incorporated therecommendations for improved
processes into the PE2E program
development plan.
The Office already implemented
many of the Team’s recommendations.
For example, the Office gained
efficiency in the terminal disclaimer
process, resulting in pendency
reduction for over 40,000 applications
by an average of 30 days. Also, the
USPTO improved internal operations
and Office behavior through the First

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Action Interview Pilot Program, which
benefits applicants by advancing theprosecution of applications andenhancing the interactions between theapplicant and examiner early in theprocess to facilitate a more compact
prosecution.
The Office will continue to evaluate
all AIA and patent operational
procedures and make efficiency
improvements accordingly. In addition,
the AIA requires the Office to consult
with the PPAC annually to determine if
any fees set using section 10(a) should
be reduced. After such consultation, theOffice may reduce fees. See AIA section
10(c). In the future, the Office will workwith the PPAC to determine if any
improvements in operational efficiency
warrant a reduction in fees set or
adjusted in this rulemaking.
Fee Setting Elasticity
PPAC Comment 4: The PPAC
commented that the proposed system ofslightly raising filing, search, andexamination fees while lowering theissue and publication fees, is sensible.
The PPAC also comment that thebalance of fees distributed between thefront-end and back-end continues to bepreserved so that the reduced front-end
fees encourage applicants to enter thepatent system. The PPAC neverthelessadvised that raising pre-issue fees likefiling, search, and examination may still(at the margins) discourage someotherwise meritorious patent filings.
Based on its discussions withapplicants, including large corporations
and small and start-up entities, the
PPAC anticipated some decrease in the
demand for patent filings. The PPAC
advised that increases in fees will strainsome patenting budgets and commented
that it continues to be concerned that
fee changes will have a greater impact
on filing and payment of maintenancefees than projected. The PPAC
recognized that generating adequate
funds is essential, yet advised that it
must be balanced with the public policyof ensuring access to intellectual
property coverage.
Response: The Office appreciates the
PPAC’s support for this overall structure
for fees. Although the Office shares the
PPAC’s concern about any impact ofincreased filing, search, andexamination fees on the number ofprospective patent applications filed,the Office’s elasticity analysis indicatesthat the potential impact is small andthat filings will likely continue to growover the next five years, even if at asomewhat lesser rate than if there wereno fee increases. Further, to the extent
there is some impact on filings, theOffice believes that the benefits of the

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fee changes outweigh the temporary costof fewer patent filings. The additional
revenue generated from the increase infees will provide sufficient resources for
the Office to reduce the backlog anddecrease pendency. The decrease inpendency is estimated to increaseprivate patent value by shortening thetime for an invention to becommercialized or otherwise obtainvalue from the exclusive right for thetechnology.
The Office also notes that filing,
search, and examination fees are
increased, and issue and publication
fees are decreased in this final rule. As
explained in detail in this rulemaking
and the RIA, the filing, search,
examination, publication and issue fees,
once effective and taken together, arereduced by at least 23 percent for all
successful applicants (with a muchgreater reduction for small and micro
entity applicants), and this reduction
may allow applicants on limited
budgets to file and prosecute more
patent applications under the new fee
structure. Therefore, an applicant who
expects a high likelihood of an
application being issued may be more
likely to file a patent application under
the new fee schedule.
As discussed above, based on
economic indicators, the Office expects
a 5.0 percent annual growth rate infilings for FY 2013 through FY 2017.
Based on elasticity computations, theOffice conservatively believes that thegrowth rate in application filings may besomewhat lower (compared to the rateof growth in the absence of a fee
increase) in the first few years under
this final rule. Along with thisrulemaking and the RIA, the Officeprovided an estimate of elasticity toaddress whether and how applicantsmight be sensitive to price (fee) changes,
and included an estimate of the impact
on application filing levels. See‘‘USPTO Section 10 Fee Setting—Description of Elasticity Estimates’’available at http://www.uspto.gov/
aia_implementation/fees.jsp#heading-1.
The Office conservatively estimatedthat, initially, the fees under the final
rule would cause a small decrease in the
demand for patenting activity due to thefee adjustments (a 1.3 percent decrease
in FY 2013, a 2.7 percent decrease in FY
2014, and a 4.0 percent decrease in FY
2015–FY 2017). Even with these shortterm decreases at the margin, the Officestill expects to receive an increasing
number of new (serialized) application
filings during later years. The Office has
projected that it will take in sufficientrevenue, despite the elasticity of somefees, to recover aggregate costs under the
final fee schedule.

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PPAC Comment 5: In reviewing the
Office’s experience with ‘‘Track 1,’’ the
PPAC noted that fewer applicantsparticipated in that program thanoriginally anticipated. The PPAC
cautioned that the Track 1 experience
seems relevant to the new programs
under the AIA, and that the Office’s
elasticity assumptions may be overly
optimistic.
Response: Track 1 created a new andoptional expedited examination service
for certain applicants who were willingto pay an extra fee. The Officeconsidered the effects of the Track 1 fee
levels on applicants’ use of that service
in its analysis of the fees in thisrulemaking. The Track 1 program
experience is only of limited usefulness
when considering elasticity of fees inthis final rule. Unlike core application
services, the Track 1 service is optional
for applicants. The Track 1 fee level was
set by Section 11(h) of the AIA and
implemented by a rule that reflectedthat statutory provision. Ordinarily forelasticity estimates about a service,
there would need to be some change inprice and some observation about
demand in the face of that price change.
With only one data point so far (theinitial fee set by the AIA), it is difficult
to extrapolate meaningful elasticity
estimates from the Track 1 program todate.
Operating Reserve
PPAC Comment 6: The PPAC agreed
that the creation of an operating reserve
is a sound business practice to allow forcontinuity of service and the ability tocomplete long-term plans more
effectively and efficiently. The PPAC
also commented that three months
seems to be a good size for the reserve.
The PPAC, nevertheless, expressed
concern that access to spend all
generated funds, as a part of the annual
appropriations process, is not assured
under the AIA. The PPAC
recommended that the Office continue
to grow the operating reserve gradually,
while also allowing for a longer period
to monitor Congressional support.
Response: The Office agrees with the
PPAC that having an operating reserve
is a sound and needed businesspractice. The Government
Accountability Office’s (GAO’s) reviewof the USPTO’s fee setting process(reported to the Chairman of theCommittee on Appropriations) also
substantiated the need for maintaining
an operating reserve. The GAO foundthat it ‘‘is consistent with our previous
reporting that an operating reserve isimportant for fee-funded programs tomatch fee collections to average
program costs over time and because

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program costs do not necessarily declinewith a drop in fee collections.’’ (SeeNew User Fee Design Presents
Opportunities to Build on Transparency
and Communication Success, GAO–12–
514R (Apr. 25, 2012) available at
http://www.gao.gov/products/GAO-12514R.) An operating reserve promotes
confidence in the United States IP
system by providing a mechanism toabsorb and respond to temporarychanges in the economy and USPTO’soperating and financial environments.
Without an operating reserve, agencies
can be unnecessarily thrown into shortterm cash flow stress like that which the
USPTO experienced in FY 2009 due tothe economic recession and in FY 2010
due to the delay in the authorization of
spending authority for the fees collectedfrom patent applicants during therebound from FY 2009.
An operating reserve consists of funds
already available for the USPTO tospend. Congress has alreadyappropriated the money in USPTO’soperating reserve, and therefore no
additional appropriation is required for
USPTO to use the operating reserve.
Thus, the operating reserve is available
to ameliorate the short-term problem ofunder-collection in a given year.
The Office also agrees with the PPAC
that it is prudent to grow this threemonth operating reserve in a gradualmanner. The fee structure in this final
rule seeks to achieve that prudent
growth by extending the period of
growth by another year (to FY 2018), as
compared to the timeframe proposed in
the September NPRM (FY 2017). Thisextension of the time period for growing
the operating reserve is the result of
reducing fee amounts in the final rule inresponse to comments from the PPAC
and the public and is consistent with
the number of patent examiners the
Office plans to hire in FY 2013 toachieve a ‘‘soft landing’’ with respect tothe patent application inventory andworkforce level as discussed further inthe response to PPAC Comment 7.
Finally, as to whether the USPTO will
be able to spend all funds collected inexcess of the USPTO’s specified annual
overall appropriation amount, Section
22 of the AIA provides that suchcollections are deposited in a new
Patent and Trademark Fee Reserve Fund(created by the AIA) that is available to
the USPTO subject to procedures
provided in appropriations acts. In any
given year, if the USPTO collects fees
beyond the specified annual overall
appropriated amount, those fees will bedeposited into the Patent andTrademark Fee Reserve Fund. In fiscal
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procedures permitting it to spend fees
deposited in the Patent and Trademark
Fee Reserve Fund. The Office has no
reason to believe the same will not holdtrue for fiscal year 2013 and beyond.
The Office will continue to work closelywith Congress to ensure full access tofees paid by patent applicants andpatentees, consistent with the AIA.
Pendency Goals
PPAC Comment 7: The PPAC
commented that it supports decreasing
pendency, and stated that while theproposed decreased pendency times arelaudable, there is nothing magical about
the pendency timeframes (i.e., 10months first action pendency and 20
months total pendency). For futureyears, the PPAC advised that it will be
important to reach a properly balanced
inventory level of patent applications
pending at the Office that is appropriate
for the workforce level. The inventory
should be low enough to achieve
desired decreased pendency and highenough to accommodate potential
fluctuations in application filings,
retention of examiners, and changes in
RCE filings stemming from the programs
being instituted by the USPTO. The
PPAC refers to this desired end state asa ‘‘soft landing.’’
Response: Optimizing patent quality
and timely issuance of patents provides
greater legal certainty. The longer ittakes to review a patent application, thelonger it takes for the benefit of the IP
protection to accrue. Failure to complete
the examination in a timely manner
creates uncertainty regarding the scope
and timing of any IP rights. This not
only impacts patent applicants, but it
also has a negative impact on other
innovators and businesses in that fieldthat are awaiting the outcome of thepending application.
As the IP environment becomesincreasingly global, applicants are
increasing their foreign patentapplication filings in multiple countries.
Obtaining a first action about 10 months
from filing provides patent applicantswith important information about thestatus of their application so that they
can determine whether to file in othercountries before the expiration of the
12-month date to maintain priority. This
leads to more strategic patentapplication filings and reduces user
resources spent on unnecessary filingsin patent offices worldwide.
The USPTO worked closely withstakeholders and responded to theirconcerns in establishing the targets of 10
months first action pendency and 20
months total pendency in the Strategic
Plan. The PPAC gave its support tothese pendency timeframes in their

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2009 Annual Report, which commended
then Secretary of Commerce Gary Locke
and Under Secretary and Director David
Kappos for their efforts to reduce firstaction pendency to ten months. PPAC
likewise indicated in its report that the
PPAC would like to work with the
Office and the innovation community to
reduce overall pendency to twenty
months as the ultimate goal withreasonable intermediate targets andtimelines.
The Office has a long-term plan toreduce the patent application backlog toa steady-state of about 350,000
unexamined applications, and to
decrease first action patent application
pendency to 10 months and total patentapplication pendency to 20 months. The
Office agrees with the PPAC regarding
the need for a ‘‘soft landing’’ whenplanning for these goals in the out years.
The Office is very aware that as thepatent application backlog andpendency drop, it is important to ensurethat the Office reaches the right balanceof application inventory and staff size.
The Office has considered the PPAC’s
comment and reevaluated its long-term
plan, recognizing the substantial
progress and efficiencies made to date
and taking into account historically low
attrition rates, higher production levels,and the need to ensure that continued
backlog progress does not result ininventory levels decreasing to a point
where there is inadequate work on handfor some employees. Thus, as an initial
measure, the Office is reducing thenumber of patent examiners it plans tohire in FY 2013 from 1,500 to 1,000.
This change substantially reduces therisk of excessively low inventory, yetalso increases the possibility that it willtake longer to reach the ideal inventory
and pendency levels. Under thisapproach, patent production modelingindicates conservatively that the
reduction in hiring may cause ideal
inventory levels to occur in FY 2016
and patent application pendency targets
for first action and total by FY 2016 andFY 2017, respectively. In response tocomments and in an abundance of
caution, the Office is thus changing thetimeframe in which it estimates it willreach its ideal patent application
inventory target to FY 2016, first action
patent application pendency target to
FY 2016, and the total patentapplication pendency target to FY 2017.
The Office recognizes that thisadjustment keeps the Office on track formeeting its goals while further avoiding
any risk of excessively low inventory.
PPAC Comment 8: The PPAC notedthat a pendency timeframe of 10 months
to first action and 20 months total
pendency may result in applicants and

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examiners not being aware of some priorart at the time of the first office action
on the merits. As a result, the PPAC
stated that the Office might incorrectly
issue a patent.
Response: Prior to 2000, the Office
did not routinely publish pending
patent applications, and instead only
publicly disclosed pending applications
under special circumstances. Since
2000, the Office has generally publishedapplications 18 months from theirearliest effective filing date. See 35
U.S.C. 122(b).
As noted in the response to the PPAC
Comment 7, the first action pendency
and total pendency goals at 10 months
and 20 months, respectively, weredeveloped in consultation with patent
stakeholders when the Officeestablished the Strategic Plan. The
Office appreciates that a pendency goalof 10 months to first action may resultin some prior art (in the form of otherapplications) being published after
issuing the first Office action in aparticular application. However, prior to
the adoption of 18-month publication in
2000, the Office examined applications
knowing that the full range of potential
prior art might not yet be available. And
with the adoption of 18-monthpublication, the only way the Office
could avoid examining an application
before all applicable prior art had been
published would be to delay
examination until after eighteen months
from the priority date of any potentiallyrelevant application and/or revise 35
U.S.C. 122(b) to eliminate theexceptions to 18-month publication.
These are not feasible options.
Moreover, the risk of missing relevant
prior art is lessened because many
applications are published in fewer than
18 months because the 18-monthpublication deadline is computed fromthe earliest filed application, and many
applications are outgrowths of an earlier
filed application. Because there is
general support from the Office’s
stakeholders on both decreasing
pendency generally and the 10 monthgoal specifically, notwithstanding alimited risk of some prior art not being
known publicly, the Office has thus
decided to maintain 10 months as thetargeted date of a first Office action.
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Prioritized Examination
PPAC Comment 9: The PPAC
commented that the Office’s efforts tomake the Track 1 option more accessible
to applicants by lowering the fee is anencouraging step, but advises that the
Office should closely monitor demand
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additional downward fee adjustments todetermine the optimal fee rate andimprove access to this service.
Response: The Office will continue tomonitor the demand for the Track 1prioritized examination program to see
if the demand increases with thedecrease in the fee. At the same time,
the Office will continue to monitor thependency associated with thetraditional examination path to ensurethat any potential changes in the
demand for the Track 1 prioritized
examination program do not impact thependency for the traditional
examination path. The fee for theprioritized examination program isintended to closely recover the cost of
the program so as not to impact the levelof examination resources of the
traditional ‘‘track.’’
Request for Continued Examination(RCE)
PPAC Comment 10: The PPAC
expressed a variety of operational
concerns about the way the Office
perceives and handles RCEs as part ofthe patent prosecution process. The
PPAC advised that: (i) There areincentives on both sides to file RCEs
(applicants continue to need to achieve
allowance, examiners get further (albeit
reduced) counts for RCE prosecution,and the pendency of RCEs is notincluded in the traditional pendency
numbers); and (ii) the increasing
backlog of RCEs generates further patentterm adjustments for a large number ofapplicants. The PPAC recommended
that the Office consider these factors as
it considers any proposed increase in
RCE fees. These concerns also underlie
the PPAC’s comment that RCE fees set
too high may disincentivize the Office
to improve its efficiency. The PPAC
recommended that a small increase in
the fee for an RCE might be appropriate,but the fee should align more closelywith the Office’s associated costs andthe fee should be less than the fees for
new or continuing applications. The
PPAC further recommended that thehigher fee for second and subsequent
RCEs should be reduced because these
RCEs are easier and cheaper to examine
and any number of continuations may
be filed at the same cost percontinuation. The PPAC finally
recommended that the USPTO should
continue to find ways to reduce
applicants’ need for RCEs, rather thanincrease fees for filing an RCE.
Response: The Office appreciates the
PPAC’s comments about the operational
aspects of RCEs, and looks forward tocontinuing to work with the PPAC on
potential operational improvements. In
setting the proposed fee levels, thePO 00000

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Office determined that approximately
70 percent of applicants that file an RCEfile only one RCE. The first RCE fee($1,200 for large entities) was set at alevel lower than both the average
historic cost of performing the services
associated with an RCE ($1,882) and thefee for filing a continuing application($1,600 for large entities), as well as
much lower than the average historiccost of services associated withexamining a new patent application($3,713). Because the Office set the fee
for the first RCE below the cost toprocess it, the Office must recoup thatcost elsewhere. Since most applicants
resolve their issues with the first RCE,
the Office determined that applicantsthat file more than one RCE are using
the patent system more extensively thanthose who file zero or only one RCE.
Therefore, the Office determined thatthe cost to review applications with two
or more RCEs should not be subsidized
with other back-end fees to the same
extent as applications with a first RCE,
newly filed applications, or othercontinuing applications. Nevertheless,the fee set for the second andsubsequent RCE ($1,700 for large
entities) is still lower than the average
historic cost of the Office processing an
RCE ($1,882), thus retaining the Office’s
incentives to work toward additional
examination efficiencies, consistent
with the PPAC’s comments.
Regarding the relationship between
RCEs and continuing applications, theOffice did not include a second, higher
fee for second and subsequent
continuing applications because RCEs
and continuing applications are notcompletely interchangeable. The Officeincreased the fee for second andsubsequent RCEs ($1,700 for large
entities) to recover the cost associatedwith processing more than one RCE andto keep the fee sufficiently close to thefiling, search, and examination fee for acontinuing application ($1,600 for large
entities). The Office determined that thefee differential between a continuing
application and a second andsubsequent RCE ($100) would likely not
be a significant factor in an applicant’s
choice between a second or subsequent
RCE and a continuing application, andinstead the differing characteristics inthe two types of continuing applications
would be the overriding factor inwhether the applicant files an RCE or acontinuing application. Moreover, RCEs
are not subject to excess claims orexcess page fees. Thus, RCEs may costless than continuations in many
instances.
While an RCE may be less costly to
examine than a new continuing
application in certain situations, the

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patent fee structure is designed suchthat the costs associated with theprocessing and examination of a new orcontinuing application are also
recovered by issue and maintenancefees, allowing for lower than cost
recovery continuing application fee
amounts. The Office continued thissubsidization design with the fee for a
first RCE. In fact, the fee for a first RCE($1,200 for large entities) is set at 75
percent ($1,200 divided by $1,600) of
the total fees for filing, search, andexamination set herein. This fee
relationship is the same as exists in thecurrent fee structure because an RCE fee
is 74 percent of the total fees for filing,
search, and examination ($930 divided
by $1,260). To avoid charging higher
issue and maintenance fees to offset thecost of processing second andsubsequent RCEs, the fees for those
RCEs are instead set closer to cost
recovery. Increasing the issue and/or
maintenance fees to offset lower thancost recovery second and subsequent
RCEs would cause the majority of filers(who do not seek more than one RCE)
to subsidize services provided to thesmall minority of filers who seek two or
more RCEs. The Office does not believe
such subsidization would be an optimal
result.
The Office understands the PPAC’s
operational point that a higher
inventory and longer pendency of RCEs
could generate additional PTA. The
Office notes that the RCE fees set in thisrule will generate the revenue necessary
to reduce inventory and pendency
levels overall so as to potentially reduce
the amount of PTA earned.
Regarding the variety of operational
concerns that centered on examination
practices associated with second officeactions and final rejections, second
office actions in current practice are notautomatically made final. In an instance
where the examiner introduces a new
ground of rejection that is neither
necessitated by applicant’s amendmentof the claims nor based on information
submitted in an information disclosurestatement filed during the period set
forth in 37 CFR 1.97(c) with the fee set
forth in 37 CFR 1.17(p), another non
final action is appropriate. If theapplicant receives a final action thatthey believe to be premature, thequestion should be raised to theexaminer and/or supervisory patentexaminer (SPE) while the application isstill pending before the primary
examiner. The issue of whether a final
rejection is premature is not sufficientgrounds for appeal, or basis ofcomplaint before the Patent Trial andAppeal Board. It is rather reviewable bypetition under 37 CFR 1.181.

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Additionally, the applicant has theoption to request an interview with theexaminer, consistent with MPEP 713,
and to request a review of identified
matters on appeal in an appeal
conference prior to the filing of an
appeal brief.
Regarding pendency calculations, theOffice presents multiple application
pendency numbers on the Patent
Dashboard in the USPTO Data
Visualization Center at http://
www.uspto.gov/dashboards/patents/
main.dashxml. There, the Officepublishes traditional total pendency
both with and without RCEs, as well as
the pendency for RCEs alone. The Officealso publishes the backlog for RCEs. The
Office presents data on the growth in
RCE filings, the inventory of RCEs, andthe pendency associated with RCEs. The
USPTO is continuing efforts to reduce
the number of situations in whichapplicants might be required to file
RCEs to address the existing backlog ofpending unexamined RCEs. The USPTO
initiated two new pilot programs—the
AFCP and the QPIDS Pilots—as a means
to reduce RCE filings (see http://
www.uspto.gov/patents/init_events/
index.jsp). While it is still too early to
predict the effectiveness of these
programs, short-term analysis has
shown that each pilot is already having
a positive impact on reducing the needto file a RCE.
In addition to these on-going efforts,
the USPTO is continuing training efforts
to emphasize compact prosecution
practices such as interview training. The
USPTO is also collaborating with the
PPAC on an RCE outreach effort. The
objective of this initiative is to identify
reasons for filing RCEs, identify
practices for avoiding unnecessary
RCEs, and explore new programs orchanges in current programs that could
reduce the need for RCEs. As a part ofthis effort, the Office recently issued arequest for comments on RCE practicein the Federal Register (see 77 FR 72830(Dec. 6, 2012)). This multi-step
approach to address stakeholder
concerns with respect to RCE practice isdirected at reducing patent application
pendency, including the impact of RCEs
on such pendency.
Appeals
PPAC Comment 11: The PPAC
commented that the Office’s eliminationof the fee for the submission of a brief
is a positive step forward. The PPAC
otherwise commented that appeal feesin general are too high given that some
applicants must file an appeal due toexamination problems. The PPAC alsocommented that a Notice of Appeal isfrequently utilized as an extension of

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time and that the Office should set thefee to recognize this usage. The PPAC
also commented that in some instances
applicants are forced to pay extensionsof time or file a notice of appeal due toslow Office treatment of an after final
submission. The PPAC recommended
lowering the Notice of Appeal fee toaround its current post-surcharge
amount (for example $750), andcharging the increased amount forforwarding the brief to the Board.
Response: The Office appreciates the
PPAC’s support for eliminating the fee
for submitting an appeal brief. Also, theOffice is implementing the PPAC’s
recommendation for lowering the Noticeof Appeal fee in this final rule. The
Office is lowering the fee for a Notice ofAppeal to $800 (large entity) from the$1,000 (large entity) proposed in the
NPRM and the Office will leave the fee
for forwarding an appeal to the PTAB at
the originally proposed $2,000 (large
entity). Given the high cost to the Officeof the appeals process, the fee
adjustments are necessary to decrease
the gap between cost of the appeal
service and fee in order to improve thefinancial sustainability of the Office. As
appeals are sometimes necessary due todifferences of opinion between an
applicant and the examiner, the Officehas coupled the higher fees with a newstaged fee structure to ease the cost
impact on applicants when prosecution
is reopened following submission of theappeal brief. The Office estimates thatabout two-thirds of applicants who
appeal final rejections will pay only the$800 (large entity) notice of appeal fee,
which is less than would be paid in thesame situation under the current fee
structure ($1,260 for large entities). The
Office likewise estimates that only onethird of applicants who appeal final
rejections will pay the additional $2,000
appeal forwarding fee, which, in total
with the notice of appeal fees ($800 plus
$2,000 equals $2,800), is 43 percent lessthan the average historical cost ofproviding appeal services ($4,922). The
Office recognizes that total fees toreceive an appeal decision from the
PTAB will more than double. However,the Office estimates that less than 5
percent of applicants who receive final
rejections will be paying both the noticeof appeal and the appeal forwarding fee.
Regarding appeals being filed due toexamination problems, in the appeals
decided on their merits by the PTAB,
over 65 percent result in affirmance ofat least some of the rejected claims (seehttp://www.uspto.gov/ip/boards/bpai/stats/receipts/fy2012_sep_e.jsp). Thisdata demonstrates that the PTAB isaffirming a larger percentage of rejectedclaims than it reverses. The Office

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TKELLEY on DSK3SPTVN1PROD withbelieves that the affirmance rate would
be much lower if there were significant
problems with the examination process.
Likewise, Office data shows there is
not a large problem with the timely
treatment of an after final submission.
During FY 2012, after final amendments
were acted upon by the Office in an
average of 8.8 days, and only 4.6 percent
took over four weeks to be addressed. In
fact, 60 percent of after final
amendments were addressed within one
week. Also, if an applicant files a
response to a final rejection within twomonths of the date of the final rejection,
the shortened statutory period will
expire at three months from the date of
the final rejection or on the date theadvisory action is mailed, whichever islater, thus minimizing the need for any
extensions.
PPAC Comment 12: The PPAC
recommended that the Office enhance
its provisions for resolution of problems
in the examination of applications. For
example, the PPAC recommended that
the Office permit real-time applicant
participation in pre-appeal brief
conferences or a more robust
ombudsman or SPE review of cases.
Response: The internal processes for
conducting both pre-appeal and appeal
conferences are undergoing an in-depth
internal review. The Office is currently
evaluating process improvement
recommendations. In the meantime, thecurrent process addresses some of thecomments raised by the PPAC. For
example, a Technology Centerdesignated conferee, a SPE, and theexaminer participate in pre-appeal orappeal conferences to review theapplicant’s remarks and the examiner’s
rejections. In addition, when the Patents
Ombudsman Program receives aninquiry from an applicant/attorney/agent regarding a legitimate problem inthe prosecution of an application, an
Ombudsman Representative in theTechnology Center (TC) handling thatapplication will request that the SPE
review the application with particularattention on the issue raised. As
appropriate, a Quality Assurance
Specialist (QAS) in that TC also might
get involved at the request of the SPE.
Once the SPE has reviewed theapplication, he/she will close the loop
directly with the applicant/attorney/agent who initiated the inquiry.
Ex Parte Reexamination
PPAC Comment 13: The PPAC notedthat the fee for an ex partereexamination increased significantly,
from $2,520 to $17,750, and was
proposed to be reduced to $15,000 in
the NRPM. The PPAC questioned why
the Office did not see the disparity

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between costs and fees for ex partereexamination earlier, and work with
Congress to correct the disparity.
Response: The ex parte reexamination
fees were adjusted on a cost recovery
basis in the supplemental examination
final rule using authority in 35 U.S.C.
41(d) because fees for this new AIA
service were required to be in place one
year from the AIA’s enactment(September 16, 2012), and because the
Office would not finish with the section
10 rulemaking by that date. (SeeChanges to Implement theSupplemental Examination Provisionsof the Leahy-Smith America Invents Act
and to Revise Reexamination Fees, 77
FR at 48831 and 48851). Given that
supplemental examination and ex partereexamination are such closely related
services, the Office elected to adjust thefee for filing a request for ex partereexamination and to set a fee for
petitions filed in ex parte and interpartes reexamination proceedings tomore accurately reflect the cost of theseprocesses when it set the fees for
supplemental examination. The Officehas been aware of the disparity between
its costs for conducting ex partereexamination and the former ex partereexamination fee for a number of years.
The Office, however, wanted to ensurethat this disparity was not unique to one
or a few fiscal years before moving toadjust reexamination fees. Accordingly,
the Office did not seek to adjust the exparte reexamination fees earlier.
PPAC Comment 14: The PPAC
questioned why ex parte reexamination
has a high cost when it is a procedure
with minimal processes (for example, it
involves no testimony and nointeraction with third parties). The
PPAC noted that the cost [fee] forreviewing the petition ($1,800) is higher
than the proposed fee for the entire
initial examination ($1,600) andcommented that the costs related to all
aspects of the ex parte reexamination
process seem high. The PPAC
recommended that there should be ways
to provide for more straight forward
decision-making and streamline thereview process to lower costs.
Response: Petitions in reexamination
proceedings generally involve issues ofgreater complexity and greater number
of issues than other patent-related
petitions. See Changes to Implement theSupplemental Examination Provisionsof the Leahy-Smith America Invents Act
and to Revise Reexamination Fees, 77
FR at 48837. As a result, theseproceedings are more expensive on
average for the Office to administer.
Nonetheless, after updating the patent
operating plans and corresponding
aggregate costs in response to public

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comments, the Office determined it
could reduce the ex parte reexamination
fee while continuing to ensure that theaggregate revenue equals aggregate cost.
In this final rule, the Office is reducing
the fee for ex parte reexamination(proposed at a total of $15,000 for large
entities) to $12,000 (large entity), whichis 32 percent below the Office’s cost forthese services. The Office also notes that
this rulemaking applies small and micro
entity reductions to the ex partereexamination fee, resulting in
discounts of 50 percent for small
entities and 75 percent for micro entity
patentees.
PPAC Comment 15: The PPAC
advised that the Office should constructa more streamlined, pay-as-you-go
approach to reexamination. The PPAC
recommended that the Office break theex parte reexamination fee into twoparts: (1) Petition; and (2)reexamination. If nonpayment for
reexamination following the grant of apetition is a concern, the PPAC
recommended several methods toensure that the Office receives payment.
Response: The ex parte reexamination
fee is in essence a two-part fee: (1) Partof the ex parte reexamination fee helps
to recover the costs for analyzing therequest and drafting the decision
whether to grant or deny ex partereexamination; this is based on the fee
set forth in 37 CFR 1.20(c)(7) for adenied request for ex partereexamination ($3,600, $1,800 for asmall entity, and $900 for a micro entity
patentee); and (2) the remaining part of
the fee helps to recover the costs for
conducting ex parte reexamination if
the request for ex parte reexamination is
granted; this is based on the ex partereexamination fee set forth in 37 CFR
1.20(c)(1) less the fee set forth in 37 CFR
1.20(c)(7) for a denied request for exparte reexamination ($12,000 less
$3,600 or $8,400 for a large entity;$6,000 less $1,800 or $4,200 for a small
entity; and $3,000 less $900 or $2,100
for a micro entity patentee). Rather thanadopt a pay-as-you-go approach in ex
parte reexamination, the Office adopted
a process of charging the total fee up
front and then refunding the balance ofthe fee if the request for ex partereexamination is denied. This approach
avoids the delays and complications ofcollecting a separate fee for conducting
ex parte reexamination if the request for
ex parte reexamination is granted.
While PPAC’s other payment collection
suggestions may be valid, the Office’s
historical approach of collecting the fullfee in advance, and issuing refunds asneeded, completely avoids the delays
and risks related to nonpayment of fees
following the grant of a request for ex

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TKELLEY on DSK3SPTVN1PROD withparte reexamination and helps ensure
efficient processing of an ex partereexamination.
Supplemental Examination
PPAC Comment 16: The PPAC
commented that the fees for
supplemental examinations are toohigh. The PPAC questioned the Office’s
underlying cost assumptions, suggestingthat the basis of the estimate shouldhave been limited to patentee-initiatedreexaminations, not all ex partereexaminations. The PPAC
recommended that the Office publish
estimates of historic costs for patenteeinitiated reexaminations for comparison
purposes.
Response: The supplemental
examination fees were set on a cost
recovery basis in the final rule toimplement supplemental examination.
See Changes to Implement theSupplemental Examination Provisionsof the Leahy-Smith America Invents Act
and to Revise Reexamination Fees, 77
FR 48828 (Aug. 14, 2012). The
supplemental examination final rule
adopted fees for supplemental
examination as follows: (1) $5,140 forprocessing and treating a request for
supplemental examination; (2) $16,120
for conducting ex parte reexamination
ordered as a result of a supplemental
examination; (3) $170 for each nonpatent document between 21 and 50
pages in length; and (4) $280 for each
additional 50-page increment or afraction thereof, per document. See id.
at 48831 and 48851. The costcalculations relating to the
supplemental examination final rule
were published by the Office (‘‘Cost
Calculations for Supplemental
Examination and Reexamination’’) at
http://www.uspto.gov/
aia_implementation/patents.jsp#heading-9. The Office does
not separately track the time taken by
the examiners to process and analyze
patentee-initiated ex partereexaminations versus third partyrequested ex parte reexaminations. The
Office determined via consultation with
the Central Reexamination Unit (CRU)
managers that the examiner timerequired for patentee-initiated requests
and third party-requested ex partereexaminations is about the same, andthus the costs to the Office for either
type of request for ex partereexamination are about the same. See
page 13 of ‘‘Cost Calculations for
Supplemental Examination andReexamination’’.
The NPRM proposed to adjust
supplemental examination fees toreduce, below full cost recovery, boththe fee for processing and treating a

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request for supplemental examinationand the fee for conducting ex partereexamination ordered as a result of a
supplemental examination, in total by
16 percent. After updating the patent
operating plans and corresponding
aggregate costs in response to publiccomments, the Office determined it
could reduce the supplemental
examination fee further while
continuing to ensure that the aggregate
revenue equals aggregate cost. In thisfinal rule, the Office is reducing thelarge entity fee for conducting ex partereexamination ordered as a result of a
supplemental examination (proposed at$13,600) to $12,100. Therefore, this final
rule sets the total fees for supplemental
examination at $16,500 ($4,400 forprocessing and treating a request for
supplemental examination plus the$12,100, excluding any applicable
document size fees), which is 23 percent
below the Office’s cost for these
services. Any reductions beyond thislevel would require increases to otherfee(s) to ensure the overall fee structure
provides cost recovery in the aggregate.
This rulemaking also sets forth small (50percent) and micro entity (75 percent)reductions to all of the supplemental
examination fees.
PPAC Comment 17: The PPAC
recommended that a pay-per-reference
system for each reference over twelve
submitted in a supplemental
examination request would be more
effective than the currently proposed
maximum reference rule. The PPAC also
recommended that the Office should
permit a patentee one supplemental
examination request per issued patent,
regardless of the number of references
submitted.
Response: The procedures governing
the supplemental examination processprovided for in the AIA were adopted in
the supplemental examination final
rule. See Changes to Implement theSupplemental Examination Provisionsof the Leahy-Smith America Invents Act
and to Revise Reexamination Fees, 77
FR 48828 (Aug. 14, 2012). As explainedin that rule, the Office placed a limit on
the number of items of information that
may be submitted with a request for
supplemental examination because the
Office must conclude a supplemental
examination within three months of thedate on which the request for
supplemental examination is filed. The
Office set the limit at twelve items of
information because ninety-three
percent of the requests for ex partereexamination filed in FY 2011
included twelve or fewer documents.
See Changes to Implement theSupplemental Examination Provisionsof the Leahy-Smith America Invents Act

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and to Revise Reexamination Fees, 77
FR at 48830. This rulemaking addresses
only the fee for supplemental
examination (reducing it by 23 percent
and adding a small entity discount of 50
percent and a micro entity discount of
75 percent), and does not propose tochange the requirements for a request
for supplemental examination, such as
the number of items of information that
may be included in a request for
supplemental examination.
PPAC Comment 18: The PPAC
commented that many in the applicant
community view supplemental
examination as akin to reviews of
information disclosure statements (IDSs)
after a final rejection. With that usage in
mind, the PPAC recommended that thefees for supplemental examination be
reduced to levels similar to original
examination fees.
Response: The Office determined thatthe supplemental examination process
is more analogous to an ex partereexamination process than a review ofan IDS after a final rejection. In bothsupplemental examination and ex partereexamination, the Office must
determine whether a substantial newquestion of patentability is raised in therequest within three months of the filingdate of the request. Supplemental
examination, however, is further
enhanced to involve the review of
information in addition to the patents
and printed publications provided for in
ex parte reexamination practice.
Therefore, in the supplemental
examination final rule, the Office based
its estimate of the cost of supplemental
examination proceedings on its costs for
ex parte reexamination proceedings.
Inter Partes Review, Post-Grant Review,
and Covered Business Methods Review
PPAC Comment 19: The PPAC
commented that the new inter partes
review, post-grant review, and coveredbusiness method review request andinstitution fees are the right balance
between cost recovery and incentive foruse. The PPAC supported the Office’s
decision to set these fees at the
proposed rates, even though the PPAC
received several public commentssuggesting that high fees would lessen
the use of these proceedings to remove
improperly granted patents from thepatent system. The PPAC commented
that it supports the USPTO’s decision tobreak the fee into two parts, but advises
the Office to consider a more granular
pay-as-you-go approach.
Response: The Office appreciates the
PPAC’s support for the inter partes
review, post-grant review, and coveredbusiness method review fee rates. The
AIA requires that the Office establish

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TKELLEY on DSK3SPTVN1PROD withfees for inter partes review, post-grant
review, and covered business method
review to be paid by the person
requesting the review. The fees paid by
the person requesting the review are to
be set considering the aggregate costs of
the review. The statutory framework
requires the full fee to be paid in
advance and refunds issued as needed.
Therefore, the Office is not instituting a
pay-as-you-go fee structure for these
services.
PPAC Comment 20: The PPAC
commented that the Office has resisted
calls for more structured and automatic
discovery in the inter partes review,
post-grant review, and covered businessmethod review proceedings and that
this will be the most significant driverof costs for these contested cases. The
PPAC recommended that the Office
work to streamline the structure ofproceedings.
Response: The Office’s final rules forinter partes review, post-grant review,and covered business method review
affirmatively embrace the calls for morestructured and automatic discovery byproviding for mandatory initial
disclosures, default cross-examination
times, a model order regarding ediscovery, and guidelines for crossexamination. See Changes to Implement
Inter Partes Review Proceedings, PostGrant Review Proceedings, andTransitional Program for Covered
Business Method Patents, 77 FR 48680(Aug. 14, 2012). Additionally, the final
rules provide that the parties to acontested case may agree to discovery
amongst themselves as a way of
streamlining the structure and conductof the proceeding. The Office will bemonitoring these new services and willconsider feedback from the user
community on how the services arebeing implemented and whether any
improvements can be made to theseprocedures.
Maintenance Fees
PPAC Comment 21: The PPAC
commented that it generally supports
the maintenance fee scheme proposedin the NPRM and that individual fees
are reasonable because patentees shouldhave a better sense of the value of theintellectual property as time progresses
after patent grant. However, the PPAC
questioned the fee increase proposed forthe third stage maintenance fee. The
PPAC advised that the increase to thethird stage maintenance fee may have agreater adverse effect on demand (andtherefore revenue) than the Officeprojected. Given the AIA’s requirement
to review fees at least annually, the
PPAC recommended that the Officeclosely monitor the effects of the third

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stage maintenance fee increase andmake adjustments to the fee level as
needed.
Response: The Office appreciates
PPAC’s general support for the
maintenance fee changes, and agrees
with the need for continuous future
monitoring. The Office will work with
the PPAC to review available data on
maintenance fee payments on a regularbasis, and will be prepared to makeadjustments to the fee levels as needed.
The Office recognizes the PPAC’sconcern with the third stage
maintenance fee in particular and willcontinue to monitor whether there isany adverse effect on demand due to theincrease in that fee. The Office has
closely considered this potential effectin its aggregate revenue calculation andanalysis of elasticity associated withpaying maintenance fees. The Officenotes that the third stage maintenancefee is assessed when the patent holder
should have maximum information
about the value of the patent and canbest make an informed decision about
whether the value of that patent justifies
the amount of the fee when considering
the expected future income from theprotection. Further, the increase in thethird stage maintenance fee allows the
Office to provide a fee structure where
earlier fees, paid when the patentee hasmuch less information about the valueof the patent, can be reduced, so as toreduce the barriers to filing a patentapplication. By contrast, lowering thethird stage maintenance fee would
necessitate raising an earlier stage fee inorder to remain at overall cost recovery.
Excess Claims
PPAC Comment 22: The PPAC
commented that the increase in excess
claim fees is unwarranted due to therelative ease with which excess claims
can be searched by examiners, thenecessity of more claims of varying
scope in today’s legal environment, andthe fact that other patent offices allow
applicants to take advantage of multiple
dependent claims. The PPAC
recommends that the fees be reduced
from the rates proposed in the NPRM.
Response: The Office realizes that
excess claims can be useful to inventors
in today’s legal environment, but points
out that excess claiming is a burden to
the patent system and the Office. Excess
claiming slows the examination process
and increases patent application
pendency, without contributing
materially to the Office’s goal of
fostering innovation. The Office
therefore concluded that an increase infees for excess claims will benefit thepatent system and the Office.

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Moreover, the patent fee structure has
had a fee for ‘‘excess claims’’ (i.e.,
independent claims in excess of three
and total claims in excess of twenty)
since at least 1982, and the result is thatmost applications now contain three or
fewer independent claims and twenty or
fewer total claims. Applicants who feelthey need more than this number of
independent or total claims may
continue to present them by paying theapplicable excess claims fee. While theformer excess claims fee amountencouraged most applicants to present
three or fewer independent claims andtwenty or fewer total claims, it was not
sufficient to discourage some applicantsfrom presenting a copious number ofclaims for apparent tactical reasons, andnor did the fees reflect the excess
burden associated with examining thoseclaims. See, e.g., Rules of Practice for
Trials Before the Patent Trial andAppeal Board and Judicial Review ofPatent Trial and Appeal Board
Decisions, 77 FR 48612, 48659–60 (Aug.
14, 2012) (noting that the number ofclaims often impacts the complexity of
the request and increases the demands
placed on the deciding officials in
administrative proceedings). Thus, theOffice is adopting excess claims fee
amounts designed to permit applicants
to include excess claims whennecessary to obtain an appropriate scopeof coverage for an invention, but to deter
applicants from routinely presenting a
copious number of claims merely fortactical reasons.
Finally, while U.S. practice does not
permit a multiple dependent claim todepend from another multiple
dependent claim (35 U.S.C. 112(e)), thisdoes not impact the applicable excess
claims fee as a multiple dependentclaim or any claim depending therefrom
is considered a separate dependentclaim for purposes of computing therequired excess claims fee. See 35
U.S.C. 41(a)(2)(B).
Oath and Declaration Fees and Correct
Inventorship
PPAC Comment 23: The PPAC
applauded the Office’s elimination of
the fee for filing an oath or declaration,
first proposed in February 2012. The
PPAC also stated that the $1,000 fee tocorrect inventorship is unwarranted,
commenting that a fee for changing
inventorship stemming from a
restriction requirement or amendments
to the claims does not seem appropriate
and that enlargement of inventorship(which might require a further search) is
what matters. The PPAC recommended
that the Office charge a fee only tocorrect inventorship that adds aninventor after the first Office action.

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Response: Changes to inventorship(e.g., adding previously unnamed
persons as inventors or removing
persons previously named as inventors)
after examination has started can cause
additional work for the Office. Thisadditional work is necessary regardlessof whether the change to theinventorship is the correction of an error
in naming inventors, or is due tochanges to the claims resulting from anamendment during examination. The
inventorship correction fee also isnecessary to encourage a bona fide effort
to ascertain the actual inventorship as
early as possible and to provide that
information to the Office prior to
examination. However, after carefully
considering comments from the PPAC
and the public, the Office is reducing
the change of inventorship fee in thisfinal rule to $600 (large entity) from the$1,000 (large entity) fee proposed in the
NPRM. After this reduction, the revenue
generated by this fee will continue tooffset the costs incurred by the Officewhen there is a change in inventorship.
Additionally, the Office proposed forthis fee to be paid when inventors areadded or deleted, because requiring thefee only to add inventors will encourage
applicants to err in favor of naming too
many persons as inventors, which
would complicate the examination
process (e.g., it could complicate double
patenting searches). After further
consideration of the PPAC report andother public comments, in this final
rule, the Office is requiring a fee toaccompany a request to correct orchange the inventorship filed after the
Office action on the merits, unless therequest is accompanied by a statementthat the request to correct or change theinventorship is due solely to thecancelation of claims in the application.
B. Public Comments in Response to the
Notice of Proposed Rulemaking
The Office received 28 written
submissions in response to the proposed
rulemaking from intellectual property
organizations, not-for-profit or academicor research institutions, law firms, andindividuals. The summaries ofcomments and the Office’s responses tothe written comments follow.
General Fee Setting Considerations

TKELLEY on DSK3SPTVN1PROD with

General Fee Setting Approach
Comment 1: Several commenters
expressed support for the Office’s
overall fee setting approach, including
the goals for implementing a sustainablefunding model and optimizing patent
timeliness (i.e., first action pendency of
10 months and total pendency of 20
months) and quality. Specifically, one

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commenter stated that the fee changes
are a step in the right direction. Anothercommenter supported the Office’s
efforts to reduce the patent application
and appeal backlog and commended the
Office’s success to date. Noting that
extended patent application pendency
hinders progress and weakens the
motivation to invent, one of thecommenters stated that the proposed
fees will benefit the USPTO and help
expedite the application process for
those seeking a patent, thereby
advancing technology.
Response: The USPTO appreciates theendorsement from the commenters andis committed to achieving the goals
developed in consultation with thestakeholder community as set forth in
the Strategic Plan. The fee schedule inthis final rule provides the Office witha sufficient amount of aggregate revenue
to recover the aggregate cost of patent
operations while implementing key
strategic initiatives, such as decreasing
patent application pendency, reducing
the patent application backlog,
improving the quality of patentexamination, and updating patent
information technology systems. The
decrease in pendency, reduction in thebacklog, and improvement in patent
information technology systems will
speed the delivery of innovative goods
and services to market and facilitate
economic growth and the creation ofjobs. Likewise, improving the quality ofpatent examination strengthens the U.S.
patent system.
Comment 2: A commenter stated thatthe patent application pendency targetsof first action pendency of 10 months by
FY 2015 and total pendency of 20
months by FY 2016 reflect appropriate
long-term goals for the Office. The
commenter further stated thatapplicants will benefit from the early
indication of the likely scope of patent
coverage and the speedier issuance of apatent, which can allow them to more
confidently invest in thecommercialization of (or obtainfinancing for) their innovations. The
commenter suggested that competitorsof the patentee also will benefit byknowing where they may safely target
their commercial activities andinvestments. The commenter continued
to support the pendency goals by
explaining that patent applicants needan indication of their prospects forreceiving a patent in time for them toconsider whether and where to fileoutside the United States. The
commenter explained that under theParis Convention for the Protection ofIndustrial Property, applicants have
only one year in which to file and claim
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applicants who did not first file a
provisional application or other priority
application—and that receiving a firstaction at 10 months will allow them todecide whether to file abroad and to
take steps to achieve such filings. The
commenter stated strong support for the
10 months first action pendency and 20
months total pendency goals andwelcomed the proposed lengthening of
the timeframes for achieving the goals.
The commenter further stated that the
Office should not need to change the 10
and 20 month patent application
pendency goals in order to provide a‘‘soft landing’’ (in reference to the PPAC
Fee Setting Report). Instead, thecommenter suggested that the Office has
many other tools (e.g., increasing/decreasing overtime, monitoring filing
activity, or adjusting hiring) at its
disposal to calibrate the throughput inspecific art areas and is confident that
the Office can reasonably achieve boththe pendency goals and a ‘‘soft
landing.’’
Response: The Office appreciates the
feedback and endorsement for the 10
and 20 pendency month goals, whichwere developed in consultation with thestakeholder community when the Officeestablished the Strategic Plan. As part of
the Office’s planning for achieving thesegoals and a ‘‘soft landing’’ for the
optimal patent application inventory
level, the Office has recalibrated its
short-term plans to take into
consideration comments from the public
as well as new information, such as
higher examiner production levels,
historically low attrition rates, and thesubstantial progress the Office has
already achieved to date. Consistent
with plans to manage a ‘‘soft landing’’
and avoid an excessively low inventory,
the Office has changed the timeframe inwhich it estimates it will reach its ideal
pendency goals to FY 2016 and FY 2017
for first action pendency and total
pendency, respectively, but with therecognition that the USPTO may well bewithin 1 to 2 months of its goal (or thatit may fully reach it) in FY 2015 and FY
2016, respectively.
Comment 3: One commenterquestioned why the Office incorporated
the cost of a photocopy at $.25 per page
and the cost of a black and white copyof a patent at $3.00 into its fee setting
process under the AIA, given that the
Office’s costs for providing these
services has not changed in years.
Response: The Office included thefees associated with a photocopy ($.25
per page) and a black and white copy ofa patent ($3.00) into the patent feeschedule. The Office is setting the feesat the existing fee rates because the
Office’s data in support of the unit cost

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for these services is not current.
Therefore, the Office determined it was
best to set the fees at existing rates until
such time that it assesses more current
information.
Comment 4: A commenter questioned
the need for a $200 electronic filingincentive.
Response: Section 10(h) of the LeahySmith America Invents Act (AIA)
provides for the establishment of a $400($200 for small entity) fee for any patentapplication filed by mail, rather than via
the Office’s electronic filing system(EFS-Web). The overriding purpose forthis fee is to encourage applicants to fileelectronically, which facilitates more
effective administration of the patent
system. The Office began collecting theelectronic filing incentive fee on
November 15, 2011, and does not havethe authority to change the fee
established by the AIA. Once the fee iscollected by the USPTO, it must be
deposited in the United States
Department of the Treasury and is notavailable to the USPTO for spending.
Comment 5: A commenter suggested
that the Office’s continued reliance ona fee schedule that is heavily dependent
on post-allowance fees is flawed andcontinues to put the Agency in an
unstable financial position. A
commenter argued that the optimal feeschedule should consider the incentives
and social welfare of patent applicantsand society as well as the USPTO’s needfor financial sustainability. The
commenter proposed that the Officeconsider further increasing filing,
search, and examination fees to betteralign these fees with the costs of these
services and to decrease the Office’s
reliance on post-allowance fees. Further,
the commenter stated that being overly
dependent on post-allowance fees that
only materialize if the Office decides togrant patent applications creates an
incentive for the Office to grant an
unnecessarily large number of patents
and potentially invalid patents. The
commenter cited a forthcoming
academic study that supports thistheory.
Response: As noted in thisrulemaking, Congress and the USPTO
have long promoted a fee structure that
fosters innovation by removing barriers
to entry into the patent system throughlower front-end fees (set well belowcost) and higher back-end fees. The
lower front-end fees facilitate entry into
the patent system, and in so doing,
encourage the disclosure of information
on new inventions and ideas to the
public. Higher back-end fees not only
help to recoup costs incurred at thefront-end of the process, but also foster
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holders to assess the costs and benefitsof maintaining their patent at various
points over the 20 year term of thepatent (i.e., 3.5 years, 7.5 years, and 11.5
years) when maintenance fees are due.
This helps to ensure that low value
patents are released back into the publicdomain for subsequentcommercialization. The Office carefully
considered many factors discussed inthis final rule to determine that theincreases to filing, search, andexamination fees are adequate to secure
the needed aggregate revenue to recover
examination costs while continuing tofoster innovation.
The Office has conducted extensive
short- and long-term analyses ofhistorical costs using the Office’s
activity-based cost data, budget
execution data, allowance rates,
strategic and operational goals, andelasticity estimates to mitigate risks to
its financial stability. These analyses
revealed that the vast majority of the
USPTO’s past financial stressors were
the result of unforeseeable
circumstances that were typically shortterm in nature (e.g., receiving an
authorized spending level lower thanthat requested of Congress, proposed
surcharges or fee rate increases thatwere not enacted, unanticipated dips inrevenue due to broader economic
conditions, etc.). These kinds ofpressures were generally felt within agiven fiscal year, and were best
addressed through fiscal year spending
adjustments. Attempting to mitigate
these pressures by increasing allowance
rates would have done nothing toalleviate such short-term concerns,
because the maintenance fees would nothave been collected until years later.
The operating reserve presented in thisfinal rule better establishes a sustainablefunding model to respond to these typesof short-term circumstances.
Moreover, the Office’s fee scheduleand financial positions are not thedrivers of patent examination practice.
While there is a direct correlation
between the number of patents granted
and future maintenance fee collections,patent examiners make independent
patentability determinations inaccordance with statutory requirementsby comparing the prior art to theclaimed invention as a whole, without
regard to budgetary pressures of the
USPTO. Furthermore, the training
patent examiners receive is not varied
depending on the Office’s fee structure
or financial status.
Lastly, with regard to the‘‘forthcoming academic study,’’ thecommenters acknowledged that they‘‘cannot absolutely conclude * * * that
the Office’s fee structure has truly

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caused an increase in granting
behavior.’’ The Office also points outthat there is no data or policy basis tosupport the argument that examination
practices are the result of the Office’s fee
structure or financial position.
Comment 6: A commenter suggested
that while a financially constrained
USPTO could increase fees in an effort
to cover its expenses, the duration of thefee setting process limits the ability of
the Office to immediately augment its
revenue through fee increases. Thus, thecommenter suggested that the Office
may turn to granting patents in an effort
to increase fee collections, even with fee
setting authority.
Response: The Office does not andwill not grant more patents as afinancial tool to increase fee collections.
As discussed in Comment 5, above, thestatutory requirements governing patentexamination do not permit such a
strategy. In addition, the Officeconsidered the timeline for setting andadjusting fees under the AIA in its
financial plans. In the event the Office
finds itself unexpectedly financiallyconstrained, the Office will adjust
spending accordingly and use theoperating reserve if needed to manage
through the timeframe required to adjust
fees.
Comment 7: A commenter suggested
that the Office divert maintenance fees
to a special fund which would be
limited to subsidizing the filing, search,and examination costs for small andmicro inventors.
Response: The Office does not havethe legal authority to create a special
fund in which to deposit maintenancefees. However, under the fee structure
included in this final rule, maintenancefees paid by large, small, and micro
entity inventors (patentees) will be usedin part to subsidize the filing, search,and examination costs for all applicants
including small and micro entity
inventors.
Comment 8: A commenter suggested
that the Office should reduce theproposed fee levels. The commenter
noted that as proposed in the NPRM,
routine patent fees through issue
decrease by 22 percent. The commenter
added however, that when factoring in
the total fees paid through third stage
maintenance, total fees paid increase by
26.3 percent in FY 2013 and 20.9
percent in FY 2014 when the issue fee
decrease becomes effective. The
commenter further encouraged the
Office to accelerate the effective dates ofseveral fees, including the issue fee
estimated in the NPRM to take effect onJanuary 1, 2014.
Response: The commenter is correct
in stating that, once effective, the

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routine patent fees through issue for alarge entity proposed in the NPRM
decreased by 22 percent (decreases by
23 percent in this final rule), whereas in
FY 2014, when coupled with the threemaintenance fees, the total fees
increased by 26 percent (increases by 24
percent in this final rule). This isconsistent with the policy factor of
fostering innovation, which guided
decisions for setting the proposed fee
levels. That is, the Office proposed to
set front-end fees below cost and set
back-end fees above cost to recoup thefront-end subsidy. A front-end subsidy
encourages patent application filings
and the disclosure of new technology tofoster innovation.
When setting the effective date for feechanges, the USPTO takes various
factors into consideration, including thenumber of patent applications it expects
to receive and the amount of work it
expects to process (e.g., an indicator for
workload of patent issue fees). This
enables the USPTO to calculate theaggregate revenue for each fiscal year.
To allow the Office to recover sufficientrevenue to pay for the projected costs
for FY 2013, the effective date of the
proposed reduction to the issue fee anda few other fees has been set at January
1, 2014. Accelerating this effective datewould put the Office at risk of collecting
insufficient revenue in FY 2013 to meetits operating expenses.
Finally, based on the current timeline
for examining and issuing a patent, thedelayed implementation date for the
reduction in the issue and publication
fees (January 1, 2014) generally aligns
with the timing of the increase in filing,
search, and examination fees so thatpatent applicants paying the current(lower) filing, search, and examination
fees prior to FY 2013 will continue to
pay the current (higher) issue andpublication fees. On the other hand,
successful patent applicants benefitingfrom the reduced issue and publication
fees in FY 2014 will be more likely tohave paid the increased filing, search,and examination fees effective shortly
after the publication of this final rule.
Comment 9: A commenter noted that
the Office’s goal of ‘‘fostering
innovation’’ fails to take into accountthe externalities that marginal (i.e., lowvalue) patents impose on producing
companies, other innovators, and the
public, which over time contribute to
the failure of the disclosure function bylowering the quality of patents.
Response: The USPTO is committed
to optimizing the quality of the patents
it issues, as well as the timeliness. As
noted in the Strategic Plan, the Officehas taken numerous actions to measureand improve quality. Through

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collaboration with the PPAC, and withparticipation from the entire patent
community, the USPTO developed acomprehensive set of metrics that areused to monitor patent quality from start
to finish. These quality metrics arereported to stakeholders on a monthly
basis via the performance dashboard on
the USPTO’s Web site (see the Patent
Dashboard in the USPTO Data
Visualization Center available at
http://www.uspto.gov/dashboards/
patents/main.dashxml).
In addition, one of the policy factors
contemplated in USPTO fee setting is tofoster innovation by providing fee levels
that encourage, not discourage,
innovation. Economic evidence has
shown that patents are one importantmeans by which innovators can profit
from their research and development
efforts, and the patent filing decisionnormally comes at the beginning of theinnovation process, when uncertainty
over commercial viability is highest.
The fee setting approach adopted by the
Office allows for more experimentation
earlier in the process by innovators,
while also recognizing that other fees
charged later in the process (i.e., issue
and maintenance fees) will require theinnovator to make decisions about theeconomic value of continuing with thepatenting process. In this way, andthrough the added investment that the
USPTO fee structure will allow the
Office to make in improving quality andtimeliness of examination, the system
will minimize the sort of marginal
patents mentioned as a concern in thecomment.
Relatedly, disclosure, both in quality
and in the timeliness of arrival, is also
improved by the new fee structure,since the innovation community will
receive better information, earlier intime. Finally, increased maintenancefees, as set in this final rule, should help
to mitigate the externalities created bymarginal patents. If the patents are trulyof a low-value, patent holders will electnot to maintain them for as long, thus
making them available in the publicdomain sooner than they might havebeen under a lower maintenance feeschedule.
Comment 10: A commenter isconcerned that shifting fees to be higher
at the front-end and lower at the backend will ultimately discourage some
applicants from filing otherwise worthy
patent applications, and will impede thedissemination and publication ofpotentially useful inventions, removing
them from public discourse. The
commenter suggested reducing filing,
search, and examination fees and/or
shifting a higher proportion of the feesto the back end.

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Response: While the filing, search,and examination fees in the final feeschedule increase, once effective, thetotal basic fees for obtaining a patent(i.e., filing, search, examination,
publication, and issue) decrease by 23
percent. As discussed in the Office’s
response to PPAC Comment 4, theOffice shares the commenters concern
about the impact of increased filing,
search, and examination fees on thenumber of prospective patentapplications filed. However, the Office’s
elasticity analysis indicates that thepotential impact is small and that filings
will continue to grow over the next five
years, even if at a somewhat lesser rate
for the first few years. Additionally,
while some applicants may choose notto file low value patent applications dueto the increased combined filing, search,and examination fees, there are othermeans by which an applicant may
disclose his or her invention (e.g.,
manufacturing the product). Therefore,
when combined with the above
mentioned elasticity analysis, the Office
expects that the impact to public
disclosure will not be significant.
Further, to the extent there is some
impact on filings, the Office has
determined that the benefits of the feechanges outweigh the temporary cost of
fewer patent filings. The additional
revenue generated from the increase infees provides sufficient resources todecrease patent application pendency.
The reduction in patent application
pendency is estimated to increaseprivate patent value by shortening thetime for an invention to becommercialized or otherwise obtainvalue from the exclusive right for thetechnology. Given this overall benefit to
the patent system taken as a whole, theOffice is setting and adjusting the total
filing, search, and examination fees($1,600 for a large entity) as proposed in
the NPRM.
Comment 11: A commenter
commended the Office for its
willingness to be flexible in theapplication of its new fee setting
authority. The commenter also urged
the Office to keep the overarching goalof patent quality in the forefront of the
discussion with the pendency and fiscal
goals. The commenter further stated thatthe user community remains open to
supporting reasonably justified fee
increases and procedural changes thatare aimed at producing high quality,
valid, and enforceable patents.
Response: The USPTO appreciates thecommenter’s support for its exercise offee setting authority. The USPTO’s firststrategic goal is to optimize patentquality and timeliness. To fulfill thisgoal, the Office established a set of

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strategic objectives to decrease patentapplication pendency and reduce thepatent application backlog, as well as tomeasure and improve patent quality.
Over the past several years, the Officehas made significant progress on a set of
initiatives that aim to improve patentquality. In collaboration with the patentexaminers’ union, the Office hasdeveloped a new work credit systemthat gives examiners more time toreview the merits of patent applications
before making their decisions. The
Office also implemented new
performance standards that place agreater emphasis on examinersinteracting with applicants earlier in theprocess in order to clarify claims andenhance the quality of patent reviews.
At the same time, the Office iscommitted to building a highly-skilled
and capable examining corps,
implementing improved hiring practices
with a focus on recruiting experienced
IP professionals, and providing
comprehensive training to both new andexperienced examiners.
As the Office implements these andother quality initiatives it is ensuringaccountability and tracking progress byinitiating 21st century analysis,
measurement, and tracking of patentquality. Indeed, the Office developed acomprehensive set of metrics that areused to monitor quality from start tofinish. These quality metrics arereported to stakeholders on a monthly
basis via the performance dashboard on
the USPTO’s Web site. See http://
www.uspto.gov/dashboards/patents/
main.dashxml.
Comment 12: The Office received
several comments about the patentapplication pendency goals and therelationship to the availability of priorart. One commenter suggested that the
USPTO’s goal to reduce first action
pendency to 10 months may have theunintended consequences of increasing
the uncertainty of the patenting process
and potentially reducing the quality ofpatents, given that there may be‘‘hidden’’ prior art since patentapplications are not published until 18
months after the filing date. The
commenter recommended that either
the first action pendency goal be relaxed
to 20 months, or that the USPTO allow
applicants to postpone paying searchand examination fees for up to 18
months. Another commenter disagreed
with this idea asserting that thestatement in the PPAC Fee Setting
Report regarding the possibility that
there may be prior art that is unknown
to both an applicant and the Officeunder the patent application pendency
goals of 10 and 20 months is not
persuasive. The commenter further

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explained that while it is true thatclaims may be allowed that could later
be found unpatentable based on
subsequently published prior art, thesituation has existed for years andpatent applicants and the public haveenhanced mechanisms to bring suchprior art to bear on such claims.
Response: The Office agrees with thesecond commenter’s approach topendency goals and prior art. As notedin the Office’s response to PPAC
Comment 8, the Office recognizes thatsome prior art may not be available to
the Office before the first Office action
on the merits; however, the Office has
general support from stakeholders forpursuing a 10 month first action
pendency and believes that the risk is
mitigated because many patentapplications are published in fewer than
18 months. The 18-month publication
deadline is computed from the earliest
filed application, and many applications
are outgrowths of an earlier filed
application, which increases theprobability that the prior art was alreadypublished. Regarding the suggestion to
postpone paying search andexamination fees for up to 18 months,‘‘staging’’ of fee payments is an idea that
the Office may explore in the future.
Given the significant change in therevenue stream for a fee structure
modification of this magnitude, theOffice believes it is better to firstachieve greater financial stability
through a sufficient operating reserveand then solicit feedback and ideas fromthe public via a formal request forcomments regarding staged fees.
Moreover, the realignment of theindividual fees for filing, search, andexamination to their respective costs inthis final rule prepares the Office toentertain a future staged fee schedule if
it was a structure the Office and its
stakeholders determined was viable.
Comment 13: A commenterquestioned the Office’s conclusion thatapplication filings will increase as aresult of the proposed changes,
especially for small entities. Anothercommenter suggested that the increased
patent fees will discourage independent
inventors from filing applications andmaintaining patents.
Response: Under the final patent fee
structure, large and small entities will
pay increased filing fees (i.e., fees forfiling, search, and examination). This iscounter-balanced in that mostsuccessful applicants, regardless ofentity status and once effective, will pay
less in fees (23 percent for large entities)
through the issuance of their patent
under the new fee structure.
Additionally, the micro entity discountwill become available with the new fee

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structure, mitigating costs significantly
for a subset of small entities. However,the Office recognizes that the increased
filing fees for large and small entities
may discourage some applicants fromfiling applications. The Officeaccounted for this impact through theanalysis of elasticity. Using publicly
available data, the Office incorporated
elasticity estimates into its projections
and forecasts. The data used does not
permit the Office to disaggregate
elasticity effects by entity size (e.g.,large, small, or micro). The increase in
filing fees to large and small entities is
expected to reduce moderately the
anticipated growth rate of future patentapplication filings in the short term, but
it is not expected to cause a decline in
the total number of new (serialized)
application filings. The Office expects
that filing levels, including for micro
entities, will return to the same levels
anticipated (across all entity sizes) in
the absence of a fee increase by FY
2016. This analysis is described indetail in the supplemental document onelasticity available at http://
www.uspto.gov/aia_implementation/
fees.jsp.
Comment 14: One commenter
believed that higher fees should beaccompanied with good or better
published patent content. The
commenter suggested that the Office use
fees to maintain its current high qualityof patent data, specifically text
accuracy.
Response: Providing high quality
patent data and information is a priority
for the USPTO. The new patent fee
structure is designed to ensure that the
USPTO generates sufficient revenue torecover its aggregate costs, including
those costs associated with the Office’s
multi-year effort to improve its patent IT
systems. Through the PE2E
modernization effort, the USPTO will
improve both the efficiency andeffectiveness of its patent IT systems
and business processes, while at thesame time continue providing highquality patent information to the public.
The PE2E system seeks to improve the
USPTO’s image-to-text conversion
capabilities. To do so, the USPTO plansto engage a number of solutions moving
forward that will further enhance the
Office’s character recognition
capabilities and the accuracy of theconverted text. In addition to better
enabling the Office to convert
documents to text, PE2E is exploring
ways to receive text directly from theapplicant, with a focus on solutions thatwill both minimize the burden on
USPTO’s stakeholders and improve thequality of text received by the Office.

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Comment 15: A commenter believes
that the increased fees would have anegative impact on many businesses.
The commenter stated that somecompanies may have to use researchand development money to cover thecost of patent fee increases. The
commenter claimed that this diversionof resources would inhibit innovationand job creation in America’s
technology sector. Additionally, thecommenter noted that the proposed fees
increase the total cost of filing,prosecuting, and maintaining patents,
and that the Office already increased
most of its fees by 15 percent in 2011
and then again in October 2012. The
commenter recommended that the fees
for filing, prosecuting, and maintaining
a patent be held constant at the current
level and extra claims fees also remain
constant until the CPI justifies anotherincrease.
Response: The Office analyzed thecosts and benefits of this final feeschedule and three alternative feeschedules in comparison to the Baseline(status quo or current fee schedule) in
the RIA. See http://www.uspto.gov/
aia_implementation/fees.jsp. The Office
determined that it must increase fees tomeet its aggregate costs while
implementing key strategic initiatives,
including costs to reduce patentapplication pendency and the backlog,
to improve the quality of patentexamination, and to update patent
information technology systems that
benefit both the Office and theapplicant. The Office understands that
innovation is critical for economic
growth and national competitivenessbecause it brings new goods andservices to market. The Office weighed
the cost of increasing fees against thebenefit of reducing the patentapplication backlog so that the Officecan provide applicants with 10 months
first action pendency and 20 months
total pendency. The Office also
recognizes that there may be a reduction
to the growth of new application filings;
however, the Office has also determinedthat the benefits of the fee changes
outweigh the temporary cost of slower
growth in patent filings. The fee
structure set forth in this final rule thus
encourages innovation and facilitates
job creation.
To meet its aggregate costs, the Officerequires additional funds (2 percent
increase in total aggregate revenue)
beyond the amount provided by the 15
percent surcharge. The additional
revenue generated from the increase infees provides sufficient resources todecrease patent application pendency,
and the reduction in pendency isestimated to increase private patent

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value by shortening the time for an
invention to be commercialized orotherwise obtain value from theexclusive right for the technology.
Comment 16: One commentersuggested that the Office retrain
administrative staff to become
operational staff (i.e., patent examiners)in order to clear the backlog and to
reduce overhead.
Response: For patent examiner
positions, the USPTO recruits engineers,chemists, microbiologists, physicists,
and biologists that have successfullycompleted all requirements for anundergraduate or higher degree at an
accredited college or university. In
addition, for some disciplines, the
USPTO specifies a minimum number ofhours of required course content. For
candidates seeking employment above
entry level, the Office requires
professional experience in an
appropriate field, graduate education in
the field, and/or law school.
The USPTO’s administrative
personnel generally have educational
backgrounds that do not qualify them tofulfill patent examiner positions, e.g.,
accounting, economics, statistics, etc.
Moreover, it is impossible to run anagency without personnel who perform
human resources, information
technology and other administrative
functions necessary to the operation of
the Office. Finally, administrative
personnel meeting the patent examiner
requirements have applied and become
examiners in the past and may continue
to apply for vacant patent examiner
positions.
The Office anticipates that the newfee schedule will provide sufficientrevenue to hire the optimal number ofpatent examiners needed to reduce thepatent application backlog and decrease
patent application pendency. Further,
the Office will continue to seek costsavings and greater efficiency from its
entire staff, including administrative
personnel.
Comment 17: A commenter suggested
that the Office’s cost estimate of $1,860
for a patent search is too high, at leastin part, because of inefficient
operations.
Response: The Office provides thehistorical costs of the major patent fees,
including the methodology used todetermine the cost of the fees in a
supplemental document entitled,‘‘USPTO Section 10 Fee Setting—
Activity-Based Information and Costing
Methodology’’ available at http://
www.uspto.gov/aia_implementation/
fees.jsp#heading-1. This documentshows the search fee costs associatedwith the examination of a patentapplication for FY 2009 ($1,520), FY

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2010 ($1,694) and FY 2011 ($1,521) in
addition to further detail on the activity
costs and the fee calculations.
In 2009, the USPTO’s costmanagement program was recognized asa federal best practice in an
independent review, and the Officecontinues to use these best practices tocalculate the cost data that has informed
the fee setting process. In addition tousing sound cost accounting practices,
the Office continues to regularly review
its annual requirements-based operating
budgets and long-range plans to ensurethat the Office operates efficiently.
Further, the AIA includes a mandate forthe Director of the USPTO to annuallyconsult with the PPAC on the‘‘advisability of reducing any fees’’ (seesection 10(c)). This annual consultation
will be informed by both costaccounting data and any efficiency gains
the Office realizes while providing
patent services.
Operating Reserve
Comment 18: The Office received
several comments about building thethree-month operating reserve tooquickly. One of the commenters statedthat contributing 3 percent to 7 percentof collected fees each year builds theoperating reserve too quickly at a highcost to current applicants who facebudget constraints. Similarly, anothercommenter stated that since applicants
are already paying higher fees in orderto help meet the USPTO’s other goals,
the operating reserve should be built
more gradually to avoid current
applicants carrying too much of theburden. A commenter further stated that
carefully building and managing a threemonth operating reserve is a reasonablefiscal goal and that the commenter
appreciated the balanced approached ofthe modification in the NPRM from the
February 2012 proposal, specificallylengthening the target date for achieving
full-funding by two years. However, thecommenter also stated that a $200
million increase planned for theoperating reserve in FY 2014 in the
NPRM is too aggressive and suggested amore appropriate goal would be topermit the operating reserve to achieve
the three-month goal over six years.
Finally, another commenter further
suggested that the plan for building theoperating reserve is too quick andestablishing a longer timeframe would
permit the USPTO to lower the fees forpost-grant proceedings, making these
prosecution options more accessible tosmall businesses and non-profit entities.
Response: The Office welcomessupport for its financial sustainability
and operating reserve goals. As noted in
the response to PPAC Comment 6, the

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Office extended the growth period of thethree-month operating reserve by one
year (to FY 2018) compared to thetimeframe proposed in the NPRM. The
Office believes that this timeframe
achieves a reasonable balance between
growth that is gradual enough to limit
the burden on applicants and rapid
enough to reach the target reserve andprovide necessary financial stability ina reasonable timeframe. Additionally, inthis final rule, the Office sets fees fortwo proceedings at lower amounts thanwere proposed in the NPRM. These fee
reductions are for ex partereexamination (from $15,000 to $12,000)
and reexamination ordered as a part of
supplemental examination (from$13,600 to $12,100).
Comment 19: A commenter expressed
concerns that building the operating
reserve so quickly could make it aconvenient target for congressional
confiscation of fees, and anothercommenter suggested that the USPTO
consider delaying build-up of its
operating reserve until such time thatany potential fee diversion by theCongress is prohibited. A different
commenter suggested that the Officeshould take every precaution to ensure
the fees paid by users are not vulnerable
to sequestration or diversion and, ifeither becomes a reality, the Officeshould immediately stop building theoperating reserve until a mechanism canbe found to protect the funds.
Response: As noted in the response to
PPAC Comment 6, the AIA mitigates theissue of fee diversion by stipulating that
USPTO’s excess collections are to bedeposited into the new Patent andTrademark Fee Reserve Fund rather
than into the general Treasury, and areavailable for USPTO purposes asprovided for in the Office’s annual
appropriations bill. The Office willcontinue to work closely with Congressto ensure full access to fees paid bypatent applicants and patentees,consistent with the AIA. In addition, as
previously mentioned, the Office has
slowed the growth of the operating
reserve.
Comment 20: A commenter noted that
there may be several potential surges in
fee activity during the course of
implementing the AIA, which would
likely lead to ‘‘bubbles’’ of fee paymentsthat could be used as a source of funds
for building the operating reserve.
Response: The Office anticipates‘‘bubbles’’ of fee payments in advance of
this new fee schedule taking effect,
similar to the surge in collections
experienced in late FY 2011 after thepassage of the AIA and theimplementation of the 15 percent
surcharge in FY 2012. Unlike the

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Jkt 229001‘‘bubble’’ at the end of FY 2011,
however, the ‘‘bubbles’’ that the Office
anticipates for FY 2013 as a result of
this final rule and for FY 2014 relating
to implementation of those fees set totake effect on January 1, 2014, will be
experienced within the respective fiscal
years. These anomalies (‘‘bubbles’’) areconsidered in the Office’s projected FY
2013 and FY 2014 aggregate revenue
collections, including the estimatedoperating reserve levels.
Small, Micro, and Independent Inventor
Matters
Comment 21: The Office received
several comments about the impact offees on small entities and the provisionof small and micro entity discounts.
One commenter questioned whether the
USPTO is providing micro entities witha 75 percent discount. Several
commenters expressed support for small
and micro entity fees, and somewelcomed any further fee reductions,with one commenter proposing that thediscount for small entities should be
increased to one-third of large entity fee
rates instead of one-half. A commenter
stated that it is inconsistent to allow
small entities (and micro entities) to fileapplications with reduced filing fees but
not allow reduced reexamination fees.
One commenter expressed general
support for the fee proposal, particularly
for the manner in which the rule
allocates fees based on an applicant’s
ability to pay (e.g., large entities paymore) and the front-end/back-end
subsidy structure. Lastly, onecommenter recommended that the
USPTO set aside a small fraction oflarge entity fee collections for outreachto small businesses.
Response: Congress authorized micro
entity fee reductions and an enhanced
list of small entity fee reductions topermit greater access to the patent
system by these entities. Section 10(b) of
the AIA states that the ‘‘fees set or
adjusted under subsection (a)’’ for the
specified patent services ‘‘shall be
reduced by 50 percent with respect tothe application of such fees to any small
entity that qualifies for reduced fees
under section 41(h)(1) of title 35, UnitedStates Code.’’ (Pub. L. 112–29, section
10). Therefore, the Office has no legal
authority to change the size of the
discount for small entities from 50
percent. Section 10(g) of the AIA further
reduced the fee burden for some small
entities by adding section 123 to chapter
11 of title 35 to define a new micro
entity class of applicants. Section 10(b)of the AIA further states that ‘‘fees set
or adjusted under subsection (a)’’ for the
specified patent services ‘‘shall be
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the application of such fees to any micro
entity as defined in section 123.’’
Under the authority of section 10(b) of
the AIA, the Office sets small and micro
entity fee rates for filing, searching,examining, issuing, appealing, andmaintaining patent applications andpatents; these rates amount to a 50
percent reduction for small entities anda 75 percent reduction for micro
entities. Fee reductions forreexamination services are included
under the authority of section 10(b). In
this final rule, the Office sets or adjusts
351 patent fees, including 94 small
entity fees set at a reduction of 50
percent and 93 micro entity fees set at
a reduction of 75 percent from the large
entity fee amounts.
The USPTO continues to work withcompanies, legal associations, inventor
organizations and others to provide
inventors and small businesses withcontacts, information and assistance.
The Office supports several programs tohelp both small businesses andindependent inventors, including the
Small Business Education Campaign
and pro bono programs. Moreinformation on these programs andothers designed to support small
businesses is available at http://
www.uspto.gov/smallbusiness/about/and also http://www.uspto.gov/
inventors/proseprobono/index.jsp.
The AIA directs the USPTO to workwith intellectual property law
associations across the country toestablish pro bono programs forfinancially under-resourced inventors
and small businesses. A pilot programin Minnesota was launched in June2010 to provide legal services to help
such individuals and businesses obtainsolid patent protection. Another pro
bono pilot program was launched in
Denver during FY 2012. More regional
pro bono programs are planned for2013. Outreach to small businesses andindependent inventors is included in
the Office’s annual patent operating
budget, so a portion of all fees collected
contributes to this outreach effort.
Comment 22: Several commenterssuggested that discounts to small andmicro entities should be extended tointer partes reviews, post-grant reviews,
and covered business method patent
reviews, with one of the commentersasserting that if the fees are too high,small and micro entities will be drivenout of the market in favor of large
corporations. One of the commentersdisagreed with the USPTO’s
interpretation of section 10(b) of theAIA, and argued that neither the text of
section 10(b) nor any other provision of
the AIA limits the USPTO from offering
reduced fees or lowering fees for

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services not enumerated in that section.
The commenter stated that, even if the
USPTO’s interpretation is correct, theDirector has broad authority to lower
fees for the administrative trials to allow
greater access for entities such as small
businesses and non-profits that mayotherwise not be able to participate.
Other commenters suggested providing
non-profit organizations similar or
greater discounts on post-grant review
and inter partes review fees, with onecommenter suggesting theseproceedings would be prohibitively
expensive for non-profit organizations.
Another commenter applauded the
Office’s work to reduce certain fees(from those set under the Office’s
section 41(d)(2) authority), especiallythe ex parte reexamination fees forsmall and micro entities. However, thecommenter expressed concern that the
proposed fees would create adisincentive for some third parties (e.g.,
public interest groups) to challenge
patents, and urged the Office to provide
reduced fees for small and micro
entities, specifically for not-for-profit
organizations.
Response: The express authority ofsection 10(b) refers to fees for
supplemental examination,
reexamination, and petition, but not toadministrative trials like inter partes
review, post-grant review, and coveredbusiness methods review. Further,because the administrative trials are
new services for which the Office has no
historical cost basis, setting these fees
too far below their prospective cost isrisky. The Office designed the newprocedures around Congressional intent
for the AIA. In many cases, these
services are an alternative to even more
expensive litigation. Further, many ofthese services, including post-grant
review and inter partes review, provide
for refunds if the Office does not electto institute a proceeding, which could
significantly lower the cost.
The Office’s authority to set fees iscoupled with the requirement that
aggregate patent revenue must recover
the aggregate cost of patent operations.
As the Office collects and analyzes moredata about the cost of patent operations
for these new services, the Office willcontinually reassess the fairness andadequacy of the fee schedule to bothachieve the needed aggregate revenue
and remain aligned with the Office’s
strategic and operational goals andpolicy priorities—including fostering
innovation.
In addition, the Office alsoestablished staged fees for appeals andRCEs, which aim to reduce the upfront
cost of patent services for all entities,
but especially those eligible for a fee

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reduction. Finally, the pendency gains
that the Office aims to realize as a resultof the additional revenue will bebeneficial to all entities—including notfor-profit entities and public interest
groups, as demonstrated by the positive
net benefit presented in the RIA. (Seethe RIA at http://www.uspto.gov/
aia_implementation/fees.jsp). Althoughnon-patent holders will not accruemonetary benefits from the reduction inpendency, the rest of society stands togain other benefits (e.g., decreased
uncertainty) as described in the RIA.
Comment 23: A commenter stated thatthe criteria to qualify for micro entity
status are too restrictive, specifically thelimitation on the number of prior patentapplications due to prior employment
situations and the income requirements.
The commenter suggested eliminating
the limit related to not being named on
more than four previously filed patentapplications and raising the income
requirement to four or five times themedian household income.
Response: The AIA established thecriteria under which an applicant may
qualify for micro entity status (see 35
U.S.C. 123). This final rule sets fee
levels, which in applicable instances
include micro entity discounts as set
forth in section 10(b) of the AIA. This
final rule does not alter the eligibility
requirements set forth in the law. In a
separate final rule, the Office set forth
rules of practice pertaining to how anapplicant can qualify for micro entity
discounts. See Changes to Implement
Micro Entity Status for Paying PatentFees, 77 FR 75019 (Dec. 19, 2012). 35
U.S.C. 123(a)(2) has a criterion for micro
entity status that requires the applicant‘‘has not been named as an inventor on
more than 4 previously filed patentapplications, other than applications
filed in another country, provisional
applications under section 111(b), orinternational applications filed under
the treaty defined in section 351(a) for
which the basic national fee under
section 41(a) was not paid.’’ 35 U.S.C.
123(b) states that ‘‘[a]n applicant is notconsidered to be named on a previously
filed application for purposes ofsubsection (a)(2) if the applicant has
assigned, or is under an obligation bycontract or law to assign, all ownershiprights in the application as the result of
the applicant’s previous employment.’’
35 U.S.C. 123(a)(3) states that a micro
entity is one who ‘‘did not * * * havea gross income, as defined in section
61(a) of the Internal Revenue Code of1986, exceeding 3 times the medianhousehold income for that preceding
calendar year.’’ The Office does nothave the authority to eliminate thepreviously filed application limit or

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expand the income level because bothare set by statute. However, the law does
not apply to applications filed due toprior employment situations if theapplicant has assigned, or is under anobligation by contract or law to assign,
all ownership rights in the application
as the result of the applicant’s previous
employment.
Comment 24: A commenter asked the
Office to estimate how much it would
cost a small or micro entity to claim
eligibility for these discounts.
Response: The AIA established thebases under which an applicant may
establish micro entity status (see 35
U.S.C. 123). While this final rule sets fee
levels, it does not establish theprocedural requirements for asserting
small or micro entity status. To pay
reduced patent fees as a small entity, theentity must merely assert small entity
status using the same procedures inplace today. Specifically, a small entity
may make this assertion by either
checking a box on the transmittal form,‘‘Applicant claims small entity status,’’or by paying the small entity fee exactly.
In a separate rulemaking (see Changes to
Implement Micro Entity Status for
Paying Patent Fees, 77 FR 75019 (Dec.
19, 2012)), the Office set out theprocedures pertaining to claiming micro
entity status. These procedures aredesigned to align with, to the extent
feasible, the corresponding small entity
procedures. A micro entity must certify
in writing that he or she meets thecriteria delineated in the AIA. In bothcases, the burden to establish small or
micro entity status is nominal (making
an assertion or submitting acertification).
Comment 25: A commenterquestioned the Office’s assumption that
all foreign individuals will qualify for
micro entity fee reductions.
Response: The Office does not assume
that all foreign patent applicants will
qualify for micro entity discounts. The
introduction of micro entities required
the Office to refine its fee payment
workload and fee collection estimates.
The Office estimated the size of the
micro entity population by making
certain calculations about how many
applicants would likely qualify undereach of the criteria set forth in the law(see sections 123(a) and (d)) using thebest available data. In making theseestimates, the Office considered several
factors, including historical data on
patents granted. The Office began withpatent grant data, because the best
available biographic data on applicant
type (e.g., independent inventor anddomestic universities) comes frompatent grant data in the Office’s
database.

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As noted previously, individuals (notcompanies or organizations) accounted
for a very small portion of utility patent
grantees in FY 2011. Only 5.0 percent(11,068) of granted patents went to
individuals in the U.S., and 1.9 percent(4,206) of granted patents went to
individuals from other countries.
Designation as an individual is based on
being listed in the USPTO database
without being associated with acompany. By the Office’s own records,
in FY 2011, individuals from othercountries received 4,206 utility patents.
The Office’s Patent Application
Locating and Monitoring (PALM)
database reports that 62 percent of bothforeign and domestic small entity
applicants filed fewer than 5applications in FY 2009. The Officecombined these statistics to estimatethat only 2,608 (62 percent of 4,206) of
foreign individuals would meet the joint
standard of being an individual andhaving filed fewer than fiveapplications. Then, the Officeconcluded that about 97 percent ofAmerican households fall under the
maximum income threshold for micro
entity eligibility. Given that householdincome in the United States is greaterthan that of most foreign countries, it isreasonable to project that all foreign
applicants applying as individuals whomeet the other standards for micro
entity eligibility are not likely to bedisqualified on income alone. All
foreign patent applicants will have to
specifically qualify by the requirements
set forth in 35 U.S.C. 123 in order to beeligible for the micro entity discount.
Comment 26: A commenter stated that
proposals for the reduction of certain
Patent Cooperation Treaty (PCT) fees
aimed at making the international
patent system more accessible to small
and micro entities are generally
welcomed, provided that such
reductions are affordable for the Officeand that the administration of such fee
reductions is manageable andproportionate.
Response: The Office remains
committed to making the patent system
more accessible to small and micro
entities both domestically and abroad.
Given the Office’s mandate to ensurethat aggregate revenue recovers
aggregate cost, the Office conducted thenecessary analysis to conclude thatproviding fee reductions for certain PCT
services is both affordable andconsistent with the Office’s goals. The
Office does not anticipate a large
administrative burden for its own
operations or those of other Receiving
Offices. The Office will continue towork with its international partners tobalance support for small and micro

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entities with the effective
administration of global patent systems.
For example, in response to concerns
raised by one of the Office’s
international counterparts, the Office issetting the effective date for theinternational phase fees established in§ 1.445 and § 1.482 in this final rule as(including small and micro entity
discounts) January 1, 2014, to provide
sufficient time between publication of
the final rule and the fee effective dateto allow consequential changes to bemade to international forms,
procedures, and associated systems.
Comment 27: A commenter stated thatthe means for claiming fee reductions
on PCT services as a small entity mustbe easy to understand and operate bypeople of any nationality or residence,both for the applicant/agent and for thereceiving Offices handling theinternational application. The
commenter added that if a form is to be
used, it would be preferable to allow anagent making a filing to check a box on
behalf of the applicants without
requiring further signatures from eachone.
Response: In response to thecomments suggesting that the fee
reductions should be simple tounderstand and operate, the final ruleamends section 1.27(c)(3) to allow small
entity status to be established ininternational applications by paymentof the exact amount of the small entity
transmittal fee set forth in § 1.445(a)(1)or by payment of the small entity searchfee set forth in § 1.445(a)(2) to a
Receiving Office other than the UnitedStates Receiving Office in the exact
amount established for that Receiving
Office under PCT Rule 16. Small entity
status can additionally be established by
written assertion as previously provided
for in section 1.27(c)(1). With regard to
establishment of micro entity status, theOffice will make available a form for use
in certifying an applicant’s entitlement
to micro entity status.
Comment 28: A commenter suggested
that it is not practical for a Receiving
Office to verify whether the claim for
micro or small entity status is valid in
an international application filed under
the PCT. The commenter suggested that
the Office should make clear what will
happen if the United States
International Searching Authority hasreason to question an assertion of smallor micro entity status made in aninternational application filed with aforeign Receiving Office.
Response: The Office will generally
not question applicant’s assertion tosmall entity status. (See, e.g., 37 CFR
1.27(f) and MPEP 509.03 (VIII)‘‘Normally, the Office will not question

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a claim to status as a small entity.’’)Similarly, the Office plans to generally
rely on applicant’s certification of micro
entity status and will ordinarily not
require any additional documents fromthe applicant concerning the applicant’s
entitlement to claim micro entity status.
However, any attempt to fraudulently
establish status as a micro or small
entity shall be considered fraud
practiced or attempted on the Office.
See, e.g., section 1.27(h).
Comment 29: One commentersuggested that at least six months would
be needed from notice of the final
requirements of the system to properly
implement instructions, forms, andsystems for the execution of payment ofsmall and micro entity fees andestablishing small or micro entity status
in international applications for which
the Office acts as a Receiving Office,International Searching Authority, orInternational Preliminary Examining
Authority.
Response: In response to thiscomment, the Office is setting theeffective date for the international phase
fees established in § 1.445 and § 1.482 inthis final rule (including small andmicro entity discounts) as January 1,
2014, in order to provide for sufficient
implementation time.
Comment 30: A commenter suggested
that the proposed fee schedule saddledlarge entities with more than a fair shareof the fee burden, at least for
maintenance fees. The commenter urged
the Director of the USPTO to use his
discretion (granted in 35 U.S.C. 123(e))
to eliminate the 75 percent micro entity
discount for maintenance fees.
Response: The Office aims to foster
innovation for all entities, and fee
reductions are one of the tools that the
Office uses to achieve this policy. Fee
reductions are established by the AIA at
Section 10(b), and the Office does nothave the authority to eliminate thereductions set by the AIA. Also,
maintenance fees are a criticalcomponent of the USPTO’s funding
stream given the Office’s policy ofsetting front-end fees below cost andback-end fees above cost. (See the
Office’s response to PPAC Comment 21
for more information.)
Additionally, the fee burden to large
entities for micro entity maintenancefees is not very large, especiallybecause: (1) Micro entities must firstqualify as small entities; and (2) the
projected population of micro entities issmall. As noted in this final rule, theOffice estimates that 31 percent of small
entity applications will be micro entity
applications (see Part IV. Fee Setting
Methodology). Small entities are alreadya relatively small portion of patent

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TKELLEY on DSK3SPTVN1PROD withapplicants—approximately 25 percent
over the past five years (see Table 53)—
so the population of micro entity
applicants is expected to be less than 10
percent (25 percent of 31 percent equals
7.75 percent), and the population of
micro entity maintenance fee payers
would be even smaller. Further, thedollar differential between small andmicro entities over all three stages ofmaintenance fee payments is just over
$3,000. (The total of maintenance fee
payments through the third stage is$6,300 for small entities compared to$3,150 for micro entities.)
Legal Considerations
Comment 31: One commenter statedthat there was not adequate time for the
public to submit comments in responseto the fee proposal. Another commenter
requested additional time to preparecomments on the fee proposal.
Response: The Office reasonably
believes 60 days was sufficient time forpublic comment. The Office notes that
it first set forth a fee proposal on
February 7, 2012, and then it held two
public hearings in collaboration with
the PPAC. Additionally, the PPAC
collected written comments in responseto the February 2012 fee proposal,
which the Office reviewed and madeavailable for public review. Finally, theOffice provided a 60-day period for
written comments following publicationof the NPRM, in addition to the PPAC
public hearings and earlier comment
period and numerous roadshows acrossthe country to provide the public an
opportunity to receive further
information and to ask questions of the
Office concerning the fee proposal.
Comment 32: A commenter stated that
the Office must consider the
Independent Offices Appropriations Act(IOAA), 31 U.S.C. 9701, both explicitly
and in pari materia, in setting fees. The
commenter asserts that the IOAA
applies and that the USPTO’s feesamount to taxes insofar as the fees are
based on anything other than the IOAA
and cost to the USPTO associated with
the individual service.
Response: The IOAA is a general
government-wide user fee statuteadopted in 1951. It is a permissive
statute and intended for agencies to use
in fee setting where Congress has notprovided more specific fee setting
authority. Where statutes independentof the IOAA provide specific statutory
authority for user fees, those statutes
control based on the terms of their own
coverage and limitations. See Bunge
Corp. v. U.S., 5 Cl. Ct. 511, 515–16(1984), aff’d mem., 765 F.2d 162 (Fed.
Cir. 1985) (‘‘The IOAA was intended toserve an interstitial function, providing

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fee setting authority where Congress has
not otherwise authorized the agency tocollect fees * * *. It would beinconsistent with this purpose to holdthat the IOAA applies where an agency
acts pursuant to a different, more
specific grant of fee setting authority.’’)Here, the USPTO has separate andspecific fee setting authority provided
by Section 10 of the AIA. Given thespecific fee setting authority Congressprovided to the USPTO in Section 10 of
the AIA, the USPTO does not need touse the IOAA for this fee setting.
Finally, the IOAA and section 10
cannot be read in pari materia, contrary
to the commenter’s suggestion. The
IOAA has several significant limitations
that apply to fee setting under the termsof that statute, including some
limitations to require that each fee be set
to recover the cost of the corresponding
service. Section 10 does not impose
these limitations and is fundamentallydifferent than the IOAA. Specifically,
whereas the IOAA requires that eachindividual fee be set for cost recovery,
section 10 does not compel cost
recovery on an individual fee basis, butrather explicitly permits fees to be set torecover ‘‘aggregate estimated costs’’ ofthe patent operations. In addition, while
the IOAA assigns fees to the generaltreasury, section 10 fees are kept by the
USPTO.
Comment 33: A commenter stated thatthe proposed fees exceed the authorityof the AIA. Specifically, the commenter
states that the AIA provides noauthority for allowing the USPTO to set
or adjust fees on any basis other thancost of the service provided. For
example, the commenter posits that the
USPTO may not set individual fees
above cost based on policy reasons. The
commenter also states that the Office’s
authority is limited to making
adjustments that are supported by cost
data while retaining a reasonable
semblance of the relative levels of
existing fees.
Response: The commenter’ssuggestions are contrary to the plain
language of the AIA. The AIA permits
individual patent fees to be set or
adjusted to encourage or discourage
particular services, so long as theaggregate revenues for all patent fees
match the aggregate costs of the patent
operation. The comment would read
into the AIA limitations that do notexist and that are inconsistent with the
AIA.
Comment 34: A commenter noted thatthe agency must comply with the
Administrative Procedure Act, 5 U.S.C.
500, et seq. in setting Section 10 fees.
Response: The Office agrees that the
Office must comply with the rulemaking

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requirements of the Administrative
Procedures Act in setting Section 10
fees. As demonstrated in this section
and in this rulemaking as a whole, the
USPTO has complied with theserequirements.
Individual Fees
Prioritized Examination Fee
Comment 35: A commenter suggested
that the proposed reduced fee forPrioritized Examination is still too high,and recommended that the USPTO
lower this fee to $2,000 to encourage
participation in the program.
Response: In this final rule, the Office
is lowering the fee for prioritized
examination from $4,800 to $4,000. The
Office aims to increase access toprioritized examination while ensuringthat the large entity fee remains at cost
recovery. Currently, USPTO cost data
does not support the suggested $2,000
fee. The Office’s cost calculation forprioritized examinations is available in
the proposed rule published in theFederal Register. (See Changes To
Implement the Prioritized Examination
Track (Track I) of the Enhanced
Examination Timing Control
Procedures, 76 FR 59050 (Sept. 23,
2011)). As noted in the Office’s response
to PPAC Comment 9, the Office willcontinue to monitor participation in theprioritized examination program toassess whether demand increases with adecrease in the fee, and whether there
is any adverse impact on pendency of
applications in the traditional
examination ‘‘track.’’
Basic Filing, Search, and Examination
Fees
Comment 36: One commenter
asserted that the Office understates thecost of filing a patent application. In
particular, the commenter believes that
the NPRM misled the public to believethat a fee which actually goes up by 27
percent appears to go down by 62
percent. The commenter suggested thatfiling fees are confusing because fees‘‘due on filing’’ include filing, search,and examination fees, instead of solely
the ‘‘filing’’ fee.
Response: The NPRM states that thebasic filing fee for utility applications
decreases by 28 percent for large
entities. The utility search fee decreases
by 3 percent for large entities, and theutility examination fee increases by 188
percent for large entities whencompared to the current patent feeschedule. The net result of the changes
to these three components is a 27
percent increase ($340) in the total
filing, search, and examination fees forlarge entity utility applications. See

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Setting and Adjusting Patent Fees, 77
FR 55028 (Sept. 6, 2012), specifically
Table 4 at 55039 and Table 9 at 55043–
55044.
The USPTO separated the single fee
paid at filing into filing, search, andexamination components as part of the
21st Century Strategic Plan that was
submitted to the Congress in 2003. The
result was to create a more optimalalignment of fees with services, andprovide the applicant with more
information about the services being
received. However, throughout the
proposed rule and this final rule, theOffice refers to the three feescollectively as the basic ‘‘front-end’’ fees
and clearly states that the total of all
three fees is due at filing.

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Request for Continued Examination(RCE) Fees
Comment 37: Several commenters
expressed concerns about the increasein RCE fees and operational issues
surrounding patent examination and
RCEs. Several comments expressed
support for the Office’s continued
efforts to reduce the number of RCEs,
but suggested that even more work isneeded. One commenter appreciated the
reduction of the first RCE fee in the
NPRM from the February 2012 proposal
to the PPAC, but noted that the secondand subsequent RCE fee continues to benearly double the fee currently in place.
The commenter further noted that themoderated fee continues to be highwhen compared to the costs to examine
a case from scratch or to examine acontinuation. Several commenters cited
issues with examining practices as areason for increased RCE filings,
including improper final rejections,
inexperienced examiners, and an
examiner’s failure to effectively engage
with an applicant. The commenter
believed that a punitive subsequent RCE
fee will not resolve the issue ofapplicants filing multiple RCEs. One
commenter suggested that, given thenumber of new examiners hired, theRCE fee should be incrementally
increased once the overall experiencelevel of the examining corps increases
and quality examination is ensured.
Response: The Office carefully
considered the decisions to differentiate
between fees for filing a first RCE andfiling second or subsequent RCEs andwhether to increase the RCE fee above
its current level. As noted in the final
rule, those considerations included
historical cost information, historical
RCE filing trends, aggregate revenue
needs, and patent examination practices(by the Office and applicants). See
response to PPAC Comment 10.

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On the issue of the overall experiencelevel of the examining corps, the Office
took into account the average gradelevel of the patent examining corps
when calculating costs. The Office willcontinue to monitor the quality of
examination through its quality metrics
that are published on the USPTO Data
Visualization Center at http://
www.uspto.gov/dashboards/patents/
main.dashxml.
Comment 38: Some commenters
expressed concerns about the way the
Office dockets RCEs. Two commenterssuggested that the Office consider
docketing RCEs like other amended
cases (i.e., the same scheduling as
responses to office actions) to advancerather than delay prosecution.
Alternatively, one commenter suggested
the Office could use the amended casedocket for those applicants who pay thehigher fee for an RCE and continue
placement on the continuing new casedocket for those applicants who pay thecurrent RCE fee amount.
Response: As a result of the recent
Count System Initiative changes, RCEs
are being reprioritized within theircurrent docket category based upon
their effective filing date, which will
move older RCEs ahead for action
sooner than other cases in the same
category.
Comment 39: A commenter stated thatthe decision to accept an amendment
after final rejection is often at theexaminer’s discretion and, therefore, so
is the need for an RCE. The commentersuggested that: (1) Examination
practices be standardized so that all
examiners will accept an amendment
without an RCE if an amended claim isfound to be patentable; and (2) the
AFCP be formally adopted. Anothercommenter suggested that the Officecreate a new procedure for a ‘‘single
review RCE’’ or a ‘‘one more action’’procedure with a lower fee than iscurrently charged for an RCE. The
commenter envisioned this procedure asan opportunity for an examiner, in
exchange for some portion of a count, toconsider art the examiner has newly
identified or for an applicant to put
claims in condition for appeal. The
commenter further explained that an
examiner could update the searchfollowing an agreement after final on
potentially allowable subject matter, allwithout requiring a full RCE with adelayed track and multiple actions. The
commenter further suggested that theapplication should be maintained on theamended case docket (response to officeaction scheduling), or an even faster
docket, and treated as an amendment
after final with some count benefit to
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recognized the similarity of thisprocedure to some of the ongoing effortsof the Office (specifically the AFCP), butsuggested this procedure would beavailable as a matter of right and witha lower fee than a current RCE (buthigher than the pilot program, which
does not currently require payment ofadditional fees to the Office).
Response: In response to this publiccomment, the Office reviewed data on
applications having an after final reply
followed by an RCE filing. The datashows that more than 50 percent of all
RCEs are filed with no prior submission
after final (i.e., no amendment that
attempts to place the application in
condition for allowance). It is noted that
the AFCP should have the effect ofmotivating more applicants to file after
final replies for additional
consideration. After a final rejection ismade by the examiner, the applicant
must do one of three things to avoid
abandonment: (1) File a reply thatplaces the application in condition forallowance; (2) file a notice of appeal; or(3) file an RCE in compliance with 37
CFR 1.114. The data suggests that many
applicants elect option (3) over option(1). Absent a timely filed after final
amendment that permits issuance of apatent (i.e., an amendment that leaves
no pending claim subject to a rejection)
the application must be regarded asabandoned, unless a notice of appeal or
RCE is timely filed. In situations when
an after final amendment may makesome but not all claims allowable, thecurrent procedures provide a check box(number 6) on the Advisory Action form
that allows an examiner to indicate thata claim(s) amended after final would beallowable if submitted in a separate,
timely filed amendment canceling the
non-allowable claim(s). A copy of thecurrent Advisory Action form is foundon page 700–88 of the MPEP, Eighth
Edition, Revision 9. With regard to the‘‘single review RCE’’ or ‘‘one moreaction’’ concepts, such suggestions areoutside the scope of this rulemaking,but to the extent that these suggestions
can be implemented consistent with 35
U.S.C. 132 and 133, they will be given
consideration.
Comment 40: One commenter statedthat it is important for the Office to deal
with the ‘‘hidden’’ RCE backlog because‘‘one gets what one measures.’’ The
commenter suggested that the pendency
goals should be established taking into
account RCEs (e.g., X months from filingto final disposition of RCEs, and Y
months for traditional total pendency
including RCEs), which would establish
a clear focus on the backlog of RCEs andwould keep the user community fully
apprised of the Office’s progress in

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TKELLEY on DSK3SPTVN1PROD withbringing that backlog under control. The
commenter suggested that these goals
should be tracked and reported side-byside with the 10- and 20-monthtraditional pendency goals.
Response: The Office presents
multiple application pendency numberson the Patent Dashboard in the USPTO
Data Visualization Center available at
http://www.uspto.gov/dashboards/
patents/main.dashxml. There, the Officepublishes traditional total pendency
both with and without RCEs, as well as
the pendency for RCEs alone. The Officealso publishes the backlog for RCEs. The
Office further presents data on thegrowth in RCE filings, the inventory of
RCEs, and the pendency associated with
RCEs. See response to PPAC Comment
10 for additional information about the
Office’s efforts to respond to issues
concerning RCEs, including the backlog.
Appeal Fees
Comment 41: Two commenters statedthat the total for appeal fees ($3,000) is
too high given the percentage ofreversals on appeals (50 percent per one
commenter and 80 percent or more per
the other commenter). The commentersstated that the proposed two-part fee
structure should be further realigned sothat the initial fee is lower and the final
fee due after receipt of the examiner’s
answer is the largest component of theappeal fees. Further, one of thecommenters explained that many
appeals are terminated prior to theapplicant filing an appeal brief so thesingle fee for the notice of appeal($1,000) is excessive, and it should be
eliminated or greatly reduced. The
commenter also questioned the
proposed $1,000 fee due upon filing a
Notice of Appeal, stating that a number
of appeals are pursued due toinexperienced examiners and/or poor
rejection quality and that the fee
increase might discourage meritorious
appeals.
Response: In this final rule, the Office
is implementing the recommendation to
reduce the proposed appeal fees so thatmeritorious appeals are not discouraged.
This final rule lowers the fee for a
Notice of Appeal to $800 (large entity)from the $1,000 (large entity) proposedin the NPRM. This is much lower thanthe current $1,260 (large entity) fee forthe combined services of filing a Noticeof Appeal and filing an appeal brief
because the fee for filing an appeal brief
is eliminated under the new structure.
The fee for forwarding an appeal to the
PTAB remains the same as proposed in
the NPRM ($2,000 for large entities).
Many applicants will pay less under the
new structure because the forwarding
fee will only apply to those that forward

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an appeal to the PTAB, which isestimated to be about 5 percent ofapplicants who receive a final rejection.
However, the Office notes that these fees
are set 43 percent below the cost ofproviding these services ($4,922 average
historical cost). Therefore, decreasing
the gap between the total cost incurred
and the total fees charged is critical torecovering costs in the aggregate for theappeals process. For more information,please refer to the response to PPAC
Comments 11 and 12.
The Office recognizes that applicants
may in some cases need to appeal an
examiner’s decision and welcomessuggestions on improving the process.
As noted in the response to PPAC
Comment 11, the Office’s data showsthat in appeals decided on their merits
by the PTAB, over 65 percent result inaffirmance of at least some of therejected claims (see http://
www.uspto.gov/ip/boards/bpai/stats/receipts/fy2012_sep_e.jsp).
Ex Parte Reexamination Fees
Comment 42: Several commentersstated that the $15,000 fee for ex partereexamination is too high. One of thecommenters proposed that ex partereexaminations applied for by the ownerof the patent and ex partereexaminations ordered as a result of a
supplemental examination should bothnot exceed $2,900. (A $2,900 fee isapproximately 15 percent above the feefor ex parte reexaminations that was
effective prior to September 16, 2012,
the effective date of the final rule. See
Changes to Implement theSupplemental Examination Provisionsof the Leahy-Smith America Invents Act
and to Revise Reexamination Fees, 77
FR 48828 (Aug. 14, 2012)). The
commenter further suggested that apatent owner is paying maintenancefees, which should subsidize the cost ofowner-initiated ex partereexaminations.
Response: To achieve sufficient cost
recovery while meeting the rulemaking
goal to facilitate effective administrationof the patent system, and given the longterm disparity between the fee and thecost, the Office must increase thereexamination fee. An analysis of the
Office’s ex parte reexamination costs
revealed that the previous $2,520 exparte reexamination fee did not recover
the Office’s costs for that service. In fact,
the Office’s costs are approximately
seven times the amount of the previousfee ($2,520) for an ex partereexamination, which demonstrates thatminor increases (10–15 percent) to theprevious fee would also be insufficient.
However, in response to comments fromthe PPAC and the public, the Office is

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reducing the fee for ex partereexamination (proposed at a total of$15,000 for large entities) to $12,000(large entity) in this final rule, which is
32 percent below the Office’s cost forthese services.
The Office appreciates the suggestionthat maintenance fees (which are paid
for by the patent owner) subsidize
reduced fees for ex parte reexaminations
applied for by the patent owner. The
fees in this final rule must overall be set,
nevertheless, so that total aggregate
revenue equals the total aggregate costof patent operations. The fee structuresets many fees below the cost ofprocessing and recovers the lost revenue
from back-end fees such as maintenancefees, which are set above cost. If the
Office were to reduce the fee for exparte reexaminations, the Office would
need to increase other fees to offset thelost revenue. In this final rule, the Officedecided to set the ex partereexamination fee so that the additionalcosts for this service are borne not by all
patent holders (through the payment ofmaintenance fees as a commentersuggested), but instead only by thosepatent owners who require ex partereexaminations. An applicant is not
required to use the ex partereexamination process. Finally, in thisfinal rule, the Office sets reduced fee
rates for small entity ($6,000) and micro
entity patentees ($3,000) that require an
ex parte reexamination to permit greater
access to the ex parte reexamination
process.
Comment 43: Several commentersquestioned the Office’s cost basis for thereexamination fee. Some questioned
why the ex parte reexamination fee was
not more closely aligned with otherpatent services like a full initial
examination, prioritized examination, orprosecuting an ex parte patentapplication. One of the commentersargued that a reexamination is generally
more focused and limited than a fullinitial examination and questioned why
the cost for ex parte reexamination ismore than four times the cost for an
initial search and examination. The
commenter suggested that either the
Office is using costing assumptions thatare much too cautious, or the Officeshould apply its focus to reigning in thecost of ex parte reexamination. One of
the commenters stated that the Office’s
cost for prosecuting an ex parte patentapplication is only $3,569, and said that
this makes the $15,000 proposed fee foran ex parte reexamination excessive.
Another commenter suggested that exparte reexamination is more closely
related to prioritized examination given
the expedited nature of the service and

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the need for one or more examinerinterviews.
Response: As stated in the response to
PPAC Comment 14, requests for ex partereexamination generally contain issues
that are more complex than may bepresent in a typical patent application.
As to the comparison of ex partereexamination with prioritized
examinations, applications underprioritized examination are required, in
addition to including payment of the$4,000 fee (large entity) set in this rule,
to contain no more than 4 independentclaims, and no more than 30 total
claims, in order to maintain prioritizedstatus. In contrast, in ex partereexamination practice, there is no limiton the number of patent claims that may
be requested to be reexamined.
Furthermore, applications underprioritized examination receive, on
average, a final disposition withintwelve months of prioritized status
being granted. However, in ex partereexamination practice, the Office must
make a determination whether therequest raises a substantial newquestion of patentability within threemonths after the filing date of eachrequest.
Nonetheless, after updating the patent
operating plans and corresponding
aggregate cost estimates in response to
public comments, the Office determinedit can reduce the ex parte reexamination
fee further. In this final rule, the Office
is reducing the fee for ex partereexamination from $15,000 to $12,000(large entity). The Office also notes that
this rulemaking applies small and micro
entity reductions to the ex partereexamination fee, resulting in
discounts of 50 percent for small
entities and 75 percent for micro entity
patentees.
Comment 44: A commenter suggested
that the ex parte reexamination fee
should be deferred until reexaminationis ordered, so as to reduce the initialcosts on patent owners. Anothercommenter suggested that it would beappropriate to apply a two-stage fee forthe ex parte reexamination fee.
Response: As explained in greater
detail in the response to PPAC
Comment 15, the Office elected not toadopt a pay-as-you-go approach to theex parte reexamination fee, even though
it is essentially a two-part fee, to ensure
fee payment and completion of thereexamination in a timely manner.
Supplemental Examination Fees
Comment 45: Two commentersquestioned the rationale that setting ahigh fee for supplemental examination
would encourage applicants to submit
all relevant information during initial

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examination. One commenter believedthat the magnitude of the supplemental
examination fee is inconsistent with thecongressional intent in creating thisprocess, which the commenter believes
was to allow a patentee, without
limitation, to bring to the USPTO’s
attention information relevant to thepatent. The commenter felt that the
USPTO’s stated reason for setting the
supplemental examination fee above
cost is inconsistent with the policy
objective of securing a complete, highquality, and expeditious initial
examination of a patent application.
Instead, the commenter stated thatmaking supplemental examination moreaccessible—not less—encourages
expeditious initial examination byserving as a back-up plan, allowing
applicants to submit pertinent
information later, thereby reducing thetendency to ‘‘over disclose’’ at the frontend of the process. The othercommenter suggested that patentees will
use supplemental examination properly
and efficiently and that the fee should
be lowered to promote greater access tothe procedure.
Response: In the final rule toimplement supplemental examination,
the supplemental examination fees
initially were set on a cost recovery
basis, as required by 35 U.S.C. 41(d).
See Changes to Implement theSupplemental Examination Provisionsof the Leahy-Smith America Invents Act
and to Revise Reexamination Fees, 77
FR 48828 (Aug. 14, 2012). The
supplemental examination final rule set
a fee of $5,140 for processing andtreating a request for supplemental
examination, and a fee of $16,120 for
conducting ex parte reexamination
ordered as a result of a supplemental
examination, resulting in a total fee of$21,260 (excluding any applicable
document size fees). The costcalculations relating to the
supplemental examination final rule
were published by the Office (‘‘Cost
Calculations for Supplemental
Examination and Reexamination’’) on
its Web site at http://www.uspto.gov/
aia_implementation/patents.jsp#heading-9.
In response to stakeholder feedback,and after updating and carefully
reviewing the aggregate cost andaggregate revenue of patent operations,
the Office determined that it could
reduce these fees in this final rule to$4,400 and $12,100, respectively,
resulting in a total fee of $16,500(excluding any applicable document
size fees), which is 23 percent below the
Office’s costs for providing these
services. In addition, the Office set
reduced fee rates in this final rule for

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small ($8,250) and micro ($4,125)
entities to permit greater access to the
supplemental examination process.
Per the requirements of section 10 of
the AIA, the fees in this final rule are
structured so that total aggregate
revenue equals the total aggregate costof patent operations. The fee structuresets many fees below cost and recovers
the lost revenue from other fees, which
are set above cost. As such, if the Office
were to further reduce the fee forsupplemental examination, the Officewould have to increase other fees tooffset the lost revenue. The Office
determined not to further subsidize thecost of this service, as it would require
the entire patent applicant community
to bear the cost of services utilized bya limited number of patentees.
Comment 46: A commenterquestioned whether the supplemental
examination fee proposed by USPTO isjustified, and suggested that
supplemental examination fees should
be no more than those charged for filing($280) and searching ($600) reissue
applications, since the USPTO’s
expenses for these processes should be
similar. As such, the commentersuggested that the large entity
supplemental examination fee be no
more than $880. Another commenterquestioned the Office’s rationale forsetting supplemental examination fees
at $18,000, given that a patentee
requesting supplemental examination isrequired to provide a separate
explanation of the relevance andmanner of applying each item of
information to each claim of the patent.
The commenter stated that this fee
stands in contrast to the average
historical cost of less than $4,000
incurred by the Office where it
independently conducts a complete
search and examination. Anothercommenter suggested a total fee of$3,120 (the total fees for examining andissuing a reissue application) for
conducting an ex parte reexamination
following supplemental examination.
Response: The supplemental
examination process is more analogous
to the ex parte reexamination process
than to a reissue proceeding. In bothsupplemental examination and ex partereexamination, the requester provides a
separate explanation of the relevanceand manner of applying each item of
information to each claim of the patent,
and the Office must determine whether
a substantial new question ofpatentability is raised in the request
within three months of the filing date of
the request. Further, supplemental
examination is enhanced beyond ex
parte reexamination to involve
information beyond the patents and

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printed publications and beyond issuesof anticipation and obviousness
provided for in ex parte reexamination
practice. Therefore, the Office based its
estimate of the cost of supplemental
examination proceedings on its costs for
ex parte reexamination proceedings($17,750), making adjustments asneeded. See responses to Comments 42
and 45 for more information about how
the Office set the fee for supplemental
examination under 35 U.S.C. 41(d).
Comment 47: A commenter suggested
that ‘‘staging’’ the fees for supplemental
examination would be preferable tocharging the fees for the supplemental
examination request and ex partereexamination if ordered initially andthen refunding the fee for reexamination
when it is not ordered.
Response: The Office has not adopted
a pay-as-you-go approach, because thatapproach introduces risks related to
nonpayment of fees and proceduraldelays related to collecting a separate
fee after the Office grants a request for
ex parte reexamination. See the Office’s
response to PPAC Comment 17 for more
information.
Comment 48: A commenter noted thata fee structure that permitted a patent
owner to secure Office consideration,
reconsideration, or correction of all
desired items of information in one
supplemental examination would be
more reasonable than the current fee
structure where a patent owner cansecure Office review of only up to 12
items of information in a single
supplemental examination request andmust pursue additional supplemental
examinations for additional items of
information. The commenter
recommended that the Office set an
additional fee for each item of
information over 12.
Response: The supplemental
examination procedure was designed toenable patent owners to present items of
information for consideration,
reconsideration, or correction. The
Office is required to conduct andconclude supplemental examination
within three months after a request is
filed. In order to meet this timeframe,
the Office is setting a limit of twelve
items of information that a patent owner
may submit to the Office in eachrequest. The purpose of this limit is to
strike a balance between the needs ofthe patent owner and the ability of the
Office to timely conclude theproceeding. There is, however, no limit
to the number of issues that thesetwelve items of information can raise, orto the number of separate requests for
supplemental examination of the same
patent that a patent owner can file atany time.

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Even though the basis for mostinequitable conduct allegations istypically far fewer than ten items of
information, the Office raised the limit
to 12 items of information in responseto the public’s comments. A review of
ex parte reexamination requests filed in
FY 2011 revealed that the requester
relied on twelve or fewer documents in
at least 93 percent of the requests. In
addition, the Office is mindful of thetime necessary for examiners to analyze
the items of information submitted,
particularly since the items are notlimited to patents and printed
publications, and since each item mayraise multiple issues. Accordingly, thesupplemental examination final rule
limited the number of items of
information to 12 to establish aprocedure that not only is practical, butalso enables an examiner to fully,comprehensively, and timely analyze all
submitted items of information andissues to accurately determine whether
there is a substantial new question ofpatentability.
Comment 49: Some commentersquestioned the Office’s cost basis for thereexamination fee. One commenterquestioned whether the Office based its
prospective cost determination on thehistorical costs of all ex parte and interpartes reexaminations instead of only
patentee-initiated reexaminations,which are the closest corollaries tosupplemental examination.
Response: As noted in the Office’s
response to PPAC Comment 16, theOffice does not separately track the time
taken by examiners to process andanalyze patentee-initiated ex partereexaminations versus third partyrequested ex parte reexaminations. The
Office will continually monitor theactual costs associated withreexamination proceedings as thisinformation becomes available and use
it to inform future fee setting efforts.
Inter Partes Review, Post-Grant Review,
Covered Business Method Patent
Review Fees
Comment 50: Several commentersnoted that post-grant review and interpartes review are new proceedings thatare based on prospective costs (rather
than historical costs). Specifically, onecommenter suggested that the Office
may have been too cautious in its
estimates of prospective costs for postgrant review and inter partes review.
The commenters recommended that the
Office reevaluate the cost calculations
for these proceedings as informationfrom actual proceedings becomes
available and adjust the fees once thetrue cost is known by experience.

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Response: The Office recognizes thatthe stated costs for the post-grant review
and inter partes review proceedings are
based on prospective costs informed by
the Office’s managerial cost accounting
data rather than historical costs. (See the
Office’s methodology to determine thecost of patent services in a supplemental
document entitled, ‘‘USPTO Section 10
Fee Setting—Activity-Based Information
and Costing Methodology’’ available on
the USPTO Web site at http://
www.uspto.gov/aia_implementation/
fees.jsp#heading-1.) As information on
the actual cost of these proceedings
becomes available, the Office will revisit
the costs and fees for these proceedings,
as suggested by the commenters, toensure the respective fees are set at theappropriate levels.
Comment 51: A commenter suggested
that the post-grant review and interpartes review proceedings are overly
complex and should require only threemajor submissions to the Board—theinitial petition, the patent owner’s
response, and the petitioner’s
responsive comments. The commenter
stated this type of a proceeding would
establish a more streamlined andefficient set of rules that would produce
significantly lower costs and fees for
petitioners.
Response: The AIA requires the Officeto establish a procedure that involves
more submissions than suggested by thecommenter. For instance, 35 U.S.C. 313
provides that ‘‘the patent owner shallhave the right to file a preliminary
response to the petition.’’ Also 35 U.S.C.
316(a) and 326(a) require the Office toestablish procedures to permit theparties to submit supplemental
information and allow the patent ownerto amend the claims. Therefore, the
USPTO cannot adopt the commenter’ssuggestion.
Comment 52: A commenter supported
the Office’s decision in post-grant andinter partes review proceedings to split
the fees into a fee for the initial petition
and a fee for proceeding after grant of apetition. Several commenters suggested
that the Office should establish fees forother milestones, or ‘‘stage’’ thepayment of separate fees, during theseproceedings, such as at the request for
an oral hearing and for a rehearing,
thereby further reducing front-end costs
and matching fees commensurate with
the Office’s work. One commentersuggested that the lack of this staging
was a ‘‘missed opportunity.’’ Several
commenters also supported additional
fees during the proceedings for late-filed
and additional motions, especiallymotions for supplemental discovery,
because these actions could pose costs

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on both the Office and the opposing
party.
Response: The AIA requires that the
Office establish fees for inter partes
review, post-grant review, and coveredbusiness method review to be paid by
the person requesting the review. The
fees paid by the person requesting thereview are to be set considering theaggregate costs of the review. A ‘‘pay-asyou-go’’ approach would require patent
owners to pay for some of the costs
associated with the review, which isinconsistent with the statutory
framework. In addition, if petitioners
were required to pay for costs associatedwith additional submissions by patent
owners, this could encourage patent
owners to file additional submissions
merely to increase costs for thepetitioner.
Comment 53: A commenter suggested
that the Office consider increased fees
for late filed motions to amend (e.g.,after patent owner response), unlessthere is a new rejection, because suchmotions inject uncertainty and greater
cost into the proceedings.
Response: In prescribing theadministrative trial final rules, theOffice considered the effect of theregulations on the economy, theintegrity of the patent system, theefficient administration of the Office,and the ability of the Office to timely
complete proceedings. Those rules
provide that late motions to amend may
only be authorized when there is a goodcause showing or a joint request of thepetitioner and the patent owner tomaterially advance a settlement.
Therefore, late motions to amend that
impact the Office’s ability to timely
complete proceedings would be rare.
Moreover, charging for late motions
would require patent owners to pay forsome of the costs associated with thereviews, which is inconsistent with thestatutory framework.
Comment 54: A commenter expressed
support for the reduction in inter partes
review fees from the fees set under 35
U.S.C. 41(d)(2). Another commenter
expressed concern that many small
businesses and non-profits will not havethe financial capital to pay large upfront
fees for administrative trial proceedings
under the proposed fee structure. As aresult, they will turn to the classic
district court litigation option (at aprojected cost between $500,000 and$3.9 million per party) because of theability to spread-out fees, even thoughthat option is overall more expensive
and less efficient. Because Congress
intended the administrative trial
proceedings to be a less expensivealternative to litigation, the commenter
recommended that the USPTO change

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the structure of these fees to provide an
option that distributes the fees over timethroughout the course of theproceedings. Additionally, thecommenter suggested that the proper
benchmark for these fees is not merely
a lower cost than litigation, but rather isa fee structure accessible to all.
Response: The Office appreciates thecommenter’s support for the fee
reductions made in this final rule ascompared to fees previously set for theadministrative trials under 35 U.S.C.
41(d). In this final rule, as proposed in
the September NPRM, the Office sets thefees for inter partes review and postgrant review below cost recovery atwhat amounts to a 15 percent discountfrom the fees originally set under
section 41(d)(2) authority.
Regarding the distribution of fees
throughout an administrative trial
proceeding, the AIA requires that thefees for inter partes review and postgrant review be paid at the time of filingthe petition. See 35 U.S.C. 312(a)(1) and322(a)(1). Adopting a ‘‘spread-out’’ feesystem as suggested by the commenter
would be contrary to the statute andcongressional intent. Further,administrative trials before the Officewill be conducted faster than district
court litigation that on the average takea few years because, in the absence ofgood cause, the Office is required toissue the final determination in thereview no later than one year after
institution. See 35 U.S.C. 316(a)(11) and326(a)(11). Therefore, the benefit of
distributing the fees over such a shorttime period would not be significant.
Finally, in a ‘‘spread-out’’ fee system,
the petitioner could cause unnecessary
delays through late payment or failure
to pay required fees.
Comment 55: A commenter stated thatthe proposed fees for administrative
trial proceedings (e.g., inter partes
review, post-grant review, and thetransitional program for coveredbusiness patents) are too high for small
businesses and non-profits. The
commenter argued that the high fees forthese proceedings would make theminaccessible to many stakeholders. The
commenter therefore recommended that
the USPTO revise the fee schedule toensure accessibility to all stakeholders.
Lower fees, the commenter argued,
would better satisfy Congress’s intent
that proceedings be broadly accessible
and the goal of creating a healthier,more efficient patent system.
Response: As noted in the Office’s
response to Public Comment 22, theadministrative trials are new services forwhich the Office has no historical costbasis. Setting the fees for these often
complex and potentially costly services

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4263

too far below their prospective costs isrisky. In addition, the scope of section
10(b) of the AIA does not include theadministrative trial services, whichmeans that the Office cannot set small
and micro entity fees for these services.
The reduced fees in this final ruleattempt to make these proceedings moreaccessible while recognizing the need tofacilitate effective administration of thepatent system. The Office willcontinually revisit the fees for these
services to determine the right balance
between the fee and the cost.
Comment 56: A commenter argued
that the fees for challenging each claim
in excess of 20 in administrative trial
proceedings are too high for small
businesses and non-profits, and notedthat the proposed fee structure would
also create harmful incentives for patentapplicants by rewarding applications
containing numerous claims. The
commenter gave the example that, for a
post-grant review on a patent with 200
claims, the petition fees alone would
amount to $174,000 and the petitioner
must also incur additional costs relating
to discovery. The commenter expressed
concern that these high fees and theclaim-based fee structure would makethe new post-grant proceedings
inaccessible for small businesses andnon-profit organizations.
Response: As previously discussed,
the Office does not have statutory
authority to provide a small or micro
entity discount on fees foradministrative trials. Additionally, in
the Office’s experience withadministrative trials in the first few
months after they became available,
petitioners are not challenging an
excessively large number of claims. The
Office received a total of 80 petitions
from September 16, 2012, throughNovember 30, 2012, and only 23
petitions challenged more than 20
claims (29 percent, 23 out of 80). The
highest number of excess claims
challenged thus far was 58 claims,
which is far from the 200 claims
discussed in the commenter’s example.
In the petitions that challenge 20 claims
or less, the average number ofchallenged claims was 11 claims, which
is well below the 20 claims permitted
without excess claims fees.
The current experience in the numberof challenged claims in inter partes
review and covered business review isentirely consistent with historical datafor reexaminations, i.e., that large
number of claims are not often
challenged even where one fee covers
all claims challenged. (See Response toComment 238 in Trial Final Rule, 77 FR
48612, 48668 (Aug. 14, 2012)).
Moreover, a party need not challenge all

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claims in a patent, such as when only
certain claims are alleged to be infringed
by the party challenging the patent.
Finally, the fee charged is to recover the
total extra cost to the Office to review
the larger number of claims, and given
the balanced nature of the fee structure,
if this fee did not recover costs, otherfees would have to be increased.
Comment 57: A commenter expressed
concern that while there are $600 and$800 fees per excess claims in interpartes review and post-grant review
respectively, the fee is only $80 for
claims in excess of 20 in a patentapplication. Therefore, the commenterargued that this would create an
incentive for applicants to fileapplications with large numbers ofpatents claims in order to make itinaccessible for small businesses andnon-profit organizations to challenge
their patent through the newadministrative trial procedures. By
shutting out small businesses and nonprofit organizations as third party
challengers, the commenter asserted
that the fee structure would have anegative effect on patent quality andinnovation.
Response: To date, the percentage ofpatents being challenged is very small.
Through November 2012, the Officereceived a total of 80 petitions forreview. In contrast, the Office issues
more than 10,000 patents per month.
Adding one claim in each of the patents
would cost orders of magnitude morethan paying for review of an additional
claim given the large difference in thenumber of reviews relative to thenumber of patents. Furthermore, thereview fees are set considering the total
cost of conducting the proceedings.
Setting the fees further below cost
would require other patent applicants,
namely innovators, to subsidize patentchallengers since the aggregate cost of
the Office must be recovered. The AIA
requires that the fees for inter partes
review and post-grant review be paid by
the person requesting the review at thetime of filing the petition. See, e.g., 35
U.S.C. 311 and 312(a)(1). Finally, as
previously discussed, the Office does
not have statutory authority to provide
a small or micro entity discount on fees
for inter partes review and post-grant
review.
Comment 58: One commenter
criticized the fee structure as
subsidizing the prosecution of invalid
patents. Because the costs of review areborne by the challenger, even when thepatent is shown to be invalid, thecommenter argued that the challenger
pays the full price for performing apublic service to remedy a problem
created by the patent applicant and the

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Office. The commenter suggested that
the Office establish a fee-shifting regime
for inter partes reviews, post-grant
reviews, and covered business method
patent reviews to address this free rider
problem. Specifically, the commenterargues, if a patent is invalidated, thepatent owner should be required toabandon the patent, commit toreimburse the challenger, or pay thecosts and fees associated with thechallenger’s petition. In this way, the feeschedule would create the rightincentives for applicants to undertakedue diligence for the technology theyclaim to have invented.
Response: The AIA requires that thefees for inter partes review and postgrant review be paid by the person
requesting the review at the time offiling the petition. See, e.g., 35 U.S.C.
311 and 312(a)(1). This final rule toreset those fees under the new authority
in section 10 of the AIA does notprovide for changing the entity paying
the fee but rather the amount paid by
the entity requesting review. Adopting asystem as suggested by the commenter
would be inconsistent with the statuteand congressional intent.
Maintenance Fees
Comment 59: A commenter expressed
support for reasonable subsidization of
selected patent-related services withincome from maintenance fees, butsuggested that the Office revisit its
decision to impose such large
maintenance fee increases. The
commenter suggested that companies
will have to counterbalance themaintenance fee increases with adecrease in application filings, which
may have an unintended impact on
USPTO operations.
Response: The Office’s proposed fee
structure is designed to generate enoughaggregate revenue to recover theaggregate cost of patent operations andsupport American innovation with low
entry fees and a mechanism to release
information into the public domain
once a patent holder deems the value of
their innovation is lower than the fees
needed to maintain protection. The
USPTO has carefully considered theeffect of each of the fee changes in thisfinal rule on the demand for the Office’s
services through an elasticity analysis
and other reviews as described above.
As discussed in response to PPAC
Comment 21, the Office will continuallymonitoring fees after this initial fee
setting effort.
Comment 60: A commenterquestioned the Office’s rationale forincreasing the three maintenance fees atdifferent rates. The commentersuggested that the USPTO reconsider

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these increases and provide a practicalfee schedule with a clearer, more
specific rationalization.
Response: Keeping front-end fees
below cost necessitates an increase inpost-issuance fees. The Office selected astaged increase in maintenance fees, sothat patent holders will pay higher
maintenance fees later in the life of theirpatents, at a time when they can makemore informed decisions regarding theirpatents’ value in the marketplace.
Excess Claims Fees
Comment 61: A commenter suggested
that the Office’s excess claims fees are
illogical and too high. The commenter
also questioned the rationale forthresholds of 20 total claims and three
independent claims.
Response: The fee difference between
total claims in excess of twenty andindependent claims in excess of three isbased on the fact that an independentclaim requires a completely separate
prior art patentability determination.
This requires more examination effort
than required for a dependent claim,
because the dependent claim isallowable over the prior art given thatthe claim from which it depends isallowable over the prior art. For
example, if an applicant cancels 3
independent claims and presents 17
new independent claims, to cover 17
dependent claims that were previously
allowed and are now rewritten in
independent form, the applicant will
receive 20 completely separate prior art
patentability determinations (17 for thecurrent independent claims and three
for the independent claims previously
presented and now canceled). Thus,
requiring an applicant in this situation
to pay for 14 independent claims inexcess of three is reasonable. An
applicant can avoid this situation by
drafting claims in a chain from thebroadest to which the applicant feels
he/she is entitled to the narrowest theapplicant is willing to accept, rather
than drafting a set of dependent claims
which all depend from an independentclaim. To avoid excess claims fees, theapplicant could also have canceled theoriginal 3 independent claims, redrafted
only 3 of the 17 dependent claims in
independent form, and changed thedependency of the remaining 14 claims.
Also, after calculating the aggregate costof patent operations as compared to theaggregate revenue generated from thepatent fee schedule contained in thisfinal rule, the Office determined that theexcess claims fees will remain at therate proposed so that other fees do notneed to be increased to generate
additional aggregate revenue to cover
the aggregate cost of patent operations.

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Comment 62: A commenter stated thatthe 70 percent increase in the excess
independent claim fees does not reflect
the realities of prosecution practices andshould be reduced. The commenter
further suggested that most unrelated
independent claims would be removed
from the application throughrestrictions, leaving a closely related setof claims that would pose little
additional burden to examiners. A
second commenter stated that theincrease in the excess independentclaim fees does not reflect the realities
of using a variety of claim types andscope during patent prosecution andshould be reduced. The commenter
explained that in technologies wheremultiple restriction requirements areoften imposed, using high fees toprevent the filing of all claims necessary
for a complete restriction requirement
can effectively deprive applicants of thesafe harbor for restricted claim groups
under 35 U.S.C. 121.
Response: As set forth in MPEP 804,
claims that are unrelated (e.g.,
unconnected in design, operation, andeffect) are generally subject torestriction. Because independent claims
in most applications are at least related,
restriction requirements are usuallybased on a determination by theexaminer that the claims are distinct.
Therefore, the commenter’s observation
offers little relief from the burden
imposed by excessive independentclaims. The deterrent effect that 35
U.S.C. 41 has provided against excess
claims has been insufficient in the past.
In view of the increasing rate ofapplication filings and an increasing
long term trend of more applications
containing an excessive number ofclaims, the Office stated in 1998 that‘‘the problem with applications
containing an excessive number ofclaims is now reaching a critical stage.’’
See Changes to Implement the Patent
Business Goals, Advance Notice of
Proposed Rulemaking, 63 FR 53497,
53507 (Oct. 5, 1998). In addition to
helping the Office meet its policy goalsof reducing application processing time,
application pendency, and examination
burden, the increase in excess claims
fees is also justified because fees paid byapplicants filing a large number ofclaims will be more commensurate withthe resources the Office must expend
examining the large number of claims.
For a detailed explanation on this topic,
see the Office’s response to PPAC
Comment 12.
Comment 63: A commenter stated thatthe proposed fee increase for excess
claims from $250 to $420 is excessive.
The commenter also suggested that the
number of independent claims that may

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be presented without incurring a fee is
too low, given that more than three
independent claims are often necessary
to effectively cover the varying aspectsof a single invention. Anothercommenter noted that the Office does
not provide historic costs forconsideration of claims and it is notclear why a fourth independent claim
would cost $420 to examine.
Response: The Office realizes that
excess claiming can be strategicallyuseful to inventors in today’s legal
environment, but notes that excess
claiming can be a significant burden to
the patent system and the Office. The
Office set the excess claims fees after
carefully considering its policy goals of
reducing application processing time,
application pendency, and examination
burden, and after considering how theincrease in excess claims fees will allow
the Office to recover the resources it
must expend examining large numbersof claims. For a detailed explanation on
this topic, see the Office’s response to
PPAC Comment 22.
Correct Inventorship Fee
Comment 64: Several commenterssuggested that the $1,000 fee forcorrecting inventorship after issuance ofa first action on the merits is not
appropriate in all cases. Twocommenters noted that where claims arelimited by amendments or restrictions
during examination, inventors arecommonly removed. Three commenterssuggested that the fee would be more
appropriate when an inventor is added
to an application after the first action,
but all expressed continued support for
the fee’s elimination or reduction.
Another commenter stated that an
applicant may need to remove inventors
after the Office requires a restriction ofclaims. The commenter stated thatapplicants are often able to make thesechanges using Application Data Sheets,
thereby removing the Office’s expense
in updating records. In these and relatedcases, the commenter suggested that the
Office consider eliminating the fee or
having a reduced fee where theapplicant in good faith could not haveanticipated such a requirement or could
not have taken alternative action (e.g.,correction via the Application Data
Sheet).
Response: After considering thecomments submitted about the correct
inventorship fee, the Office is reducing
the fee to $600 (large entity rate) fromthe $1,000 fee proposed in the NPRM.
Also, the Office has decided not toassess this fee if an applicant submits astatement that the request to correct orchange the inventorship is due solely tothe cancelation of claims in the

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4265

application. See fee rationale at Part V.
Individual Fee Rationale for morebackground information about this fee.
For further explanation about why thisfee will be charged in the various
circumstances identified above bycommenters, see the Office’s response to
PPAC Comment 23.
Assignment Fees
Comment 65: A commenter
recommended that the USPTO either (1)provide an automated assignment
recordation framework by linking theElectronic Filing System (EFS-Web) andthe Electronic Patent Assignment
System (EPAS), or (2) authorize thetransfer of a patent from the inventor tothe original applicant without therecordation of an assignment.
Response: 37 CFR 1.46(b)(1) provides
that for assignee-applicants, evidence of
the assignment or obligation to assign
should be recorded in the Office ‘‘nolater than the date the issue fee is paidin the application.’’ Accordingly,
assignment recordation is not aprerequisite for the transfer of rights in
an application from an inventor to an
assignee. With regard to linking EFSWeb and EPAS, the Office has alreadyinstituted a process that allows the
Office to transfer data from one system
to the other for the limited purpose of
facilitating the filing of ‘‘assignment
statements’’ in patent applications. An‘‘assignment statement’’ is an
assignment that contains theinformation and statements of an oath or
declaration. As explained in the AIAInventor’s Oath or Declaration Quick
Reference Guide, the patent applicationmust first be filed via EFS-Web. Then,
preferably on the same day theapplication was filed via EFS-Web, theassignment-statement should berecorded in EPAS. There is a box in
EPAS that the applicant must check inorder to notify the Office that theassignment statement is being used as
the inventor’s oath or declaration. The
Office will then place a copy of theassignment statement into theapplication file. The Guide is available
at http://www.uspto.gov/
aia_implementation/inventors-oath-ordeclaration-quick-reference-guide.pdf.
VII. Discussion of Specific Rules
In this section the Office provides
tables of all fees set or adjusted in the
final rule. To permit the reader tocrosswalk the fee changes contained inthis final rule with individual fee
amounts contained in the Office’s fee
schedule (see http://www.uspto.gov/
web/offices/ac/qs/ope/fee100512.htm),
Tables 42 through 52 contain a distinct
row for each individual grouping of fee

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codes (i.e., large, small, and micro
entity). Therefore, when multiple typesof fees are contained within the same
CFR section (e.g., application size fees at
1.16(s)), the Office lists each type of fee
and its associated fee code separately(e.g., utility, design, plant, reissue, andprovisional application size fees). Thus,
where appropriate, the CFR sections arerepeated for each of the respected fee
codes in the tables.

application filing, excess claims, search,
examination, and application size feesfor patent applications filed as
authorized under section 10 of the Act.
This section would no longer
distinguish between applications filed
before or after December 8, 2004,
because section 11 of the AIA no longer
makes the distinction. The changes tothe fee amounts indicated in § 1.16 areshown in Table 42.

When rules are added or modified forreasons other than fee amount changes,
the Office provides explanatory
language after the respective tablesummarizing the fee amount changes(i.e., § 1.17 fees for correction of
inventorship).
Title 37 of the Code of Federal
Regulations, Parts 1, 41, and 42 areamended to read as follows:
Section 1.16: Sections 1.16(a) through(s) are amended to set forth the

TABLE 42
CFR section

Fee code

Current fees
(dollars)

Description

TKELLEY on DSK3SPTVN1PROD withLarge
1.16(a) ..............
1.16(a) ..............

1011/2011/3011
4011

1.16(b) ..............
1.16(b) ..............
1.16(c) ..............
1.16(d) ..............

1012/2012/3012
1017/2017/3017
1013/2013/3013
1005/2005/3005

1.16(e) ..............
1.16(e) ..............

1014/2014/3014
1019/2019/3019

1.16(f) ...............

1051/2051/3051

1.16(g) ..............

1052/2052/3052

1.16(h) ..............

1201/2201/3201

1.16(h) ..............

1204/2204/3204

1.16(i) ...............
1.16(i) ...............
1.16(j) ...............
1.16(k) ..............
1.16(l) ...............
1.16(m) .............
1.16(n) ..............
1.16(o) ..............
1.16(p) ..............
1.16(q) ..............
1.16(r) ..............
1.16(s) ..............

1202/2202/3202
1205/2205/3205
1203/2203/3203
1111/2111/3111
1112/2112/3112
1113/2113/3113
1114/2114/3114
1311/2311/3311
1312/2312/3312
1313/2313/3313
1314/2314/3314
1081/2081/3081

1.16(s) ..............

1082/2082/3082

1.16(s) ..............

1083/2083/3083

1.16(s) ..............

1084/2084/3084

1.16(s) ..............

1085/2085/3085

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Basic Filing Fee—Utility ............
Basic Filing Fee—Utility (electronic filing for small entities).
Basic Filing Fee—Design ..........
Basic Filing Fee—Design (CPA)
Basic Filing Fee—Plant .............
Provisional Application Filing
Fee.
Basic Filing Fee—Reissue ........
Basic
FilingFee—Reissue(CPA).
Surcharge—Late Filing Fee,
Search Fee, Examination Feeor Oath or Declaration.
Surcharge—Late Provisional Filing Fee or Cover Sheet.
Independent Claims in Excessof Three.
Reissue Independent Claims in
Excess of Three.
Claims in Excess of 20 .............
Reissue Claims in Excess of 20
Multiple Dependent Claim .........
Utility Search Fee ......................
Design Search Fee ...................
Plant Search Fee ......................
Reissue Search Fee ..................
Utility Examination Fee .............
Design Examination Fee ...........
Plant Examination Fee ..............
Reissue Examination Fee .........
Utility Application Size Fee—For
Each Additional 50 Sheets
That Exceeds 100 Sheets.
Design Application Size ............
Fee—For Each Additional 50
Sheets That Exceeds 100
Sheets.
Plant Application Size Fee—For
Each Additional 50 Sheets
That Exceeds 100 Sheets.
Reissue Application Size ...........
Fee—For Each Additional 50
Sheets That Exceeds 100
Sheets.
Provisional Application Size
Fee—For Each Additional 50
Sheets That Exceeds 100
Sheets.

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Final fees
(dollars)

Small

Large

Small

Micro

390
N/A

195
98

280
N/A

140
70

70
N/A

250
250
250
250

125
125
125
125

180
180
180
260

90
90
90
130

45
45
45
65

390
390

195
195

280
280

140
140

70
70

130

65

140

70

35

50

25

60

30

15

250

125

420

210

105

250

125

420

210

105

62
62
460
620
120
380
620
250
160
200
760
320

31
31
230
310
60
190
310
125
80
100
380
160

80
80
780
600
120
380
600
720
460
580
2,160
400

40
40
390
300
60
190
300
360
230
290
1,080
200

20
20
195
150
30
95
150
180
115
145
540
100

320

160

400

200

100

320

160

400

200

100

320

160

400

200

100

320

160

400

200

100

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Section 1.17: Sections 1.17(a)(1)through (a)(5), (c), (e) through (i), (k)through (m), and (p) through (t) are

amended and (d) and (e)(2) are added to
set forth the application processing fees
as authorized under section 10 of theAct. The changes to the fee amounts
indicated in § 1.17 are shown in Table
43.

TABLE 43
CFR section

Fee code

Current fees
(dollars)

Description

TKELLEY on DSK3SPTVN1PROD withLarge
1.17(a)(1) ..........

1251/2251/3251

1.17(a)(2) ..........

1252/2252/3252

1.17(a)(3) ..........

1253/2253/3253

1.17(a)(4) ..........

1254/2254/3254

1.17(a)(5) ..........

1255/2255/3255

1.17(c) ...............

1817/2817/3817

1.17(d) ...............

NEW

1.17(e)(1) ..........

1801/2801/3801

1.17(e)(2) ..........

NEW

1.17(f) ................

1462/2462/3462

1.17(g) ...............

1463/2463/3463

1.17(h) ...............

1464/2464/3464

1.17(i)(1) ...........
1.17(i)(2) ...........

1053/2053/3053
1808

1.17(i)(2) ...........

1803

1.17(k) ...............

1802

1.17(l) ................

1452/2452/3452

1.17(m) ..............

1453/2453/3453

1.17(p) ...............

1806/2806/3806

1.17(q) ...............

1807

1.17(r) ...............

1809/2809/3809

1.17(s) ...............

1810/2810/3810

1.17(t) ................

1454/2454/3454

Extension for Response WithinFirst Month.
Extension for Response Within
Second Month.
Extension for Response Within
Third Month.
Extension for Response Within
Fourth Month.
Extension for Response Within
Fifth Month.
Request for Prioritized Examination.
Correct Inventorship After First
Action on Merits.
Request for Continued Examination (RCE) (1st request)(see 37 CFR 1.114).
Request for Continued Examination (RCE) (2nd and subsequent request).
Petitions Requiring the Petition
Fee Set Forth in 37 CFR
1.17(f) (Group I).
Petitions Requiring the Petition
Fee Set Forth in 37 CFR
1.17(g) (Group II).
Petitions Requiring the Petition
Fee Set Forth in 37 CFR
1.17(h) (Group III).
Non-English Specification .........
Other Publication Processing
Fee.
Request for Voluntary Publication or Republication.
Request for Expedited Examination of a Design Application.
Petition to Revive Unavoidably
Abandoned Application.
Petition to Revive Unintentionally Abandoned Application.
Submission of an Information
Disclosure Statement.
Processing Fee for Provisional
Applications.
Filing a Submission After Final
Rejection (see 37 CFR
1.129(a)).
For Each Additional Invention
to be Examined (see 37 CFR
1.129(b)).
Acceptance of an Unintentionally Delayed Claim for Priority, or for Filing a Request
for the Restoration of theRight of Priority.

Correction of Inventorship: The Officesets the fee to correct inventorship after
the first action on the merits at $600 to
encourage reasonable diligence and abona fide effort to ascertain the actual

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Final fees
(dollars)

Small

Frm 00057

Fmt 4701

Small

Micro

150

75

200

100

50

570

285

600

300

150

1,290

645

1,400

700

350

2,010

1,005

2,200

1,100

550

2,730

1,365

3,000

1,500

750

4,800

2,400

4,000

2,000

1,000

N/A

N/A

600

300

150

930

465

1,200

600

300

N/A

N/A

1,700

850

425

400

N/A

400

200

100

200

N/A

200

100

50

130

N/A

140

70

35

130
130

N/A
N/A

140
130

70
N/A

35
N/A

130

N/A

130

N/A

N/A

900

N/A

900

450

225

630

315

640

320

160

1,890

945

1,900

950

475

180

N/A

180

90

45

50

N/A

50

N/A

N/A

810

405

840

420

210

810

405

840

420

210

1,410

N/A

1,420

710

355

inventorship as early as possible and toprovide that information to the Officeprior to examination. As discussed inPart V. Individual Fee Rationale, the fee
will not be required when inventors are

PO 00000

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Sfmt 4700

deleted and the request to correct orchange inventorship is accompanied bya statement that the request to correct orchange the inventorship is due solely to

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Federal Register / Vol. 78, No. 13 / Friday, January 18, 2013 / Rules and Regulations

the cancelation of claims in theapplication.
Section 1.17(d) is added, as follows:
For correction of inventorship in an
application after the first action on the
merits:a first RCE; and (2) a second, higher fee
for a second or subsequent RCE.
Section 1.17(e) is amended as follows:
To request continued examination
pursuant to § 1.114:(1) For filing a first request forcontinued examination pursuant to§ 1.114 in an application:

By a micro entity (§ 1.29) ........
By a small entity (§ 1.27(a)) ....
By other than a small or micro
entity .....................................

$425.00
850.001,700.00

Section 1.18: Sections 1.18(a) through(f) are amended to set forth the patentissue fees as authorized under section
By a micro entity (§ 1.29) ........
$300.00 10 of the Act. This section now
600.00 By a small entity (§ 1.27(a)) ....
600.00 distinguishes between issue andBy other than a small or micro
Request for Continued Examination
publication fees paid before or after
entity .....................................
1,200.00(RCE): As discussed in Part V.
January 1, 2014. The changes to the fee(2) For filing a second or subsequent
Individual Fee Rationale, section of thisamounts indicated in § 1.18 are shown
request for continued examination
final rule, the Office divides the fee forin Table 44.
pursuant to § 1.114 in an application:
RCEs into two parts: (1) A lower fee for
By a micro entity (§ 1.29) ........
By a small entity (§ 1.27(a)) ....
By other than a small or micro
entity .....................................

$150.00
300.00TABLE 44
CFR section

Fee code

Current fees
(dollars)

Description

Large
1.18(a)(1) ..........

1501/2501/3501

1.18(a)(1) ..........

1511/2511/3511

1.18(a)(2) ..........

1501/2501/3501

1.18(a)(2) ..........

1511/2511/3511

1.18(b)(1) ..........

1502/2502/3502

1.18(b)(2) ..........

1502/2502/3502

1.18(c)(1) ..........

1503/2503/3503

1.18(c)(2) ..........

1503/2503/3503

1.18(d)(1) ..........

1504

1.18(d)(2) ..........

1504

1.18(d)(3) ..........

1505

1.18(e) ...............

1455

1.18(f) ................

1456

Utility Issue Fee, paid on orafter January 1, 2014.
Reissue Issue Fee, paid on orafter January 1, 2014.
Utility Issue Fee, paid before
January 1, 2014.
Reissue Issue Fee, paid before
January 1, 2014.
Design Issue Fee, paid on orafter January 1, 2014.
Design Issue Fee, paid before
January 1, 2014.
Plant Issue Fee, paid on orafter January 1, 2014.
Plant Issue Fee, paid before
January 1, 2014.
Publication Fee for Early, Voluntary, or Normal Publication, paid on or after January
1, 2014.
Publication Fee for Early, Voluntary, or Normal Publication, paid before January 1,
2014.
Publication Fee for Republication.
Filing an Application for Patent
Term Adjustment.
Request for Reinstatement ofTerm Reduced.

TKELLEY on DSK3SPTVN1PROD with

Publication Fees: As discussed in Part
V. Individual Fee Rationale, the Office
is not adjusting fee for republication ofa patent application (1.18(d)(2)). The
Office keeps this fee at its existing rate
for each patent application that must be
published again after a first publication
for $0.

VerDate Mar<15>201017:13 Jan 17, 2013

Jkt 229001

Final fees
(dollars)

Small

Large

885

960

480

240

1,770

885

960

480

240

1,770

885

1,780

890

445

1,770

885

960

480

240

1,010

505

560

280

140

1,010

505

1,020

510

255

1,390

695

760

380

190

1,390

695

1,400

700

350

300

N/A

0

N/A

N/A

300

N/A

300

N/A

N/A

300

N/A

300

N/A

N/A

200

N/A

200

N/A

N/A

400

N/A

400

N/A

N/A

(1) Publication fee on or afterJanuary 1, 2014 ....................
(2) Publication fee before January 1, 2014 .........................
(3) Republication fee(§ 1.221(a)) ............................

Frm 00058

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Micro

1,770

Section 1.18 is amended by revisingparagraph (d) to include:

PO 00000

Small

Sfmt 4700

Section 1.19: Sections 1.19(a) through(g) are amended to set forth the patentdocument supply fees as authorized$0.00 under section 10 of the Act. Thechanges to the fee amounts indicated in
300.00 § 1.19 are shown in Table 45.
300.00

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4269

TABLE 45
CFR section

Fee code

Current fees
(dollars)

Description

TKELLEY on DSK3SPTVN1PROD withLarge
1.19(a)(1) ..........

8001

1.19(a)(2) ..........

8003

1.19(a)(3) ..........

8004

1.19(a)(1) ..........
1.19(b)(1)(i)(A) ..
1.19(b)(1)(i)(B) ..

8005
8007
8008

1.19(b)(1)(i)(C) ..

8009

1.19(b)(1)(i)(D) ..

8010

1.19(b)(1)(ii)(A)
1.19(b)(1)(ii)(B)

8007
8011

1.19(b)(1)(ii)(C)8012

1.19(b)(1)(iii)(A)
1.19(b)(1)(iii)(B)

8007
8011

1.19(b)(2)(i)(A) ..

8041

1.19(b)(2)(i)(B) ..

8042

1.19(b)(2)(ii) ......

8043

1.19(b)(3) ..........

8013

1.19(b)(4) ..........

8014

1.19(c) ...............
1.19(d) ..............

8904
8015

1.19(e) ..............

8016

1.19(f) ...............

8017

VerDate Mar<15>201017:13 Jan 17, 2013

Printed Copy of Patent w/o Color,
Delivery by USPS, USPTO Box,
or Electronic Means.
Printed Copy of Plant Patent inColor.
Color Copy of Patent (other thanplant patent) or SIR Containing a
Color Drawing.
Patent Application Publication (PAP)
Copy of Patent Application as Filed
Copy of Patent-Related File Wrapper and Contents of 400 or Fewer
Pages, if Provided on Paper.
Additional Fee for Each Additional
100 Pages of Patent-Related File
Wrapper and (Paper) Contents, orPortion Thereof.
Individual Application Documents,
Other Than Application as Filed,per Document.
Copy of Patent Application as Filed
Copy of Patent-Related File Wrapper and Contents if Provided Electronically or on a Physical Electronic Medium as Specified in
1.19(b)(1)(ii).
Additional Fee for Each Continuing
Physical Electronic Medium in Single Order of 1.19(b)(1)(ii)(B).
Copy of Patent Application as Filed
Copy of Patent-Related File Wrapper and Contents if Provided Electronically or on a Physical Electronic Medium.
Copy of Patent-Related File Wrapper Contents That Were Submitted and Are Stored on Compact Disk or Other Electronic
Form (e.g., compact disks stored
in artifact folder), Other Than as
Available in 1.19(b)(1); First Physical Electronic Medium in a Single
Order.
Additional Fee for Each Continuing
Copy of Patent-Related File Wrapper Contents as Specified in
1.19(b)(2)(i)(A).
Copy of Patent-Related File Wrapper Contents That Were Submitted and are Stored on Compact
Disk, or Other Electronic Form,
Other Than as Available in1.19(b)(1); If Provided Electronically Other Than on a PhysicalElectronic Medium, per Order.
Copy of Office Records, Except
Copies of Applications as Filed.
For Assignment Records, Abstract ofTitle and Certification, per Patent.
Library Service ..................................
List of U.S. Patents and SIRs in
Subclass.
Uncertified Statement re Status of
Maintenance Fee Payments.
Copy of Non-U.S. Document ............

Jkt 229001

PO 00000

Frm 00059

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Sfmt 4700

Final fees
(dollars)

Small

Large

Small

Micro

3

N/A

3

N/A

N/A

15

N/A

15

N/A

N/A

25

N/A

25

N/A

N/A

3
20
200

N/A
N/A
N/A

3
20
200

N/A
N/A
N/A

N/A
N/A
N/A

40

N/A

40

N/A

N/A

25

N/A

25

N/A

N/A

20
55

N/A
N/A

20
55

N/A
N/A

N/A
N/A

15

N/A

15

N/A

N/A

20
55

N/A
N/A

20
55

N/A
N/A

N/A
N/A

55

N/A

55

N/A

N/A

15

N/A

15

N/A

N/A

55

N/A

55

N/A

N/A

25

N/A

25

N/A

N/A

25

N/A

25

N/A

N/A

50
3

N/A
N/A

50
3

N/A
N/A

N/A
N/A

10

N/A

10

N/A

N/A

25

N/A

25

N/A

N/A

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Federal Register / Vol. 78, No. 13 / Friday, January 18, 2013 / Rules and Regulations
TABLE 45—Continued

CFR section

Fee code

Current fees
(dollars)

Description

Large
1.19(g) ..............

8050

Petitions for Documents In Form
Other Than That Provided By This
Part, or In Form Other Than That
Generally Provided by Director, tobe Decided in Accordance With
Merits.

Section 1.20: Sections 1.20(a) through(k) are amended to set forth thereexamination fees, disclaimer fees,

Final fees
(dollars)Small

AT COST

Large

N/A

maintenance fees, and supplemental
examination fees as authorized under
section 10 of the Act. The changes to theSmall

AT COST

Micro

N/A

N/A

fee amounts indicated in § 1.20 are
shown in Table 46.

TABLE 46
CFR section

Fee code

Current fees
(dollars)

Description

TKELLEY on DSK3SPTVN1PROD withLarge
1.20(a) ...............
1.20(b) ...............

1811
1816

1.20(c)(1) ..........

1812

1.20(c)(3) ..........

1821/2821/3821

1.20(c)(4) ..........

1822/2822/3822

1.20(c)(6) ..........

1824

1.20(c)(7) ..........

1812

1.20(d) ...............

1814/2814

1.20(e) ...............

1551/2551/3551

1.20(f) ................

1552/2552/3552

1.20(g) ...............

1553/2553/3553

1.20(h) ...............

1554/2554/3554

1.20(h) ...............

1555/2555/3555

1.20(h) ...............

1556/2556/3556

1.20(i)(1) ...........

1557/2557/3557

1.20(i)(2) ...........

1558/2558/3558

VerDate Mar<15>201017:13 Jan 17, 2013

Certificate of Correction ............
Processing Fee for Correcting
Inventorship in a Patent.
Request for Ex Parte Reexamination.
Reexamination
Independent
Claims in Excess of Threeand also in Excess of the
Number of Such Claims in
the Patent Under Reexamination.
Reexamination Claims in Excess of 20 and Also in Excess of the Number ofClaims in the Patent Under
Reexamination.
Filing a Petition in a Reexamination Proceeding, Except
for Those Specifically Enumerated in §§ 1.550(i) and
1.937(d).
For a Refused Request for Ex
parte Reexamination Under§ 1.510 (included in the request for ex parte reexamination fee at 1.20(c)(1)).
Statutory Disclaimer, Including
Terminal Disclaimer.
Maintenance Fee Due at 3.5
Years.
Maintenance Fee Due at 7.5
Years.
Maintenance Fee Due at 11.5
Years.
Maintenance Fee Surcharge—
3.5 Years—Late Payment
Within 6 Months.
Maintenance Fee Surcharge—
7.5 Years—Late Payment
Within 6 Months.
Maintenance Fee Surcharge—
11.5 Years—Late Payment
Within 6 Months.
Maintenance Fee Surcharge
After Expiration—Late Payment is Unavoidable.
Maintenance Fee Surcharge
After Expiration—Late Payment is Unintentional.

Jkt 229001

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Final fees
(dollars)

Small

Large

Small

Micro

100
130

N/A
N/A

100
130

N/A
N/A

N/A
N/A

17,750N/A

12,000

6,000

3,000

250

125

420

210

105

62

31

80

40

20

1,930

N/A

1,940

970

485

830

N/A

3,600

1,800

900

160

80

160

N/A

N/A

1,150

575

1,600

800

400

2,900

1,450

3,600

1,800

900

4,810

2,405

7,400

3,700

1,850

150

75

160

80

40

150

75

160

80

40

150

75

160

80

40

700

N/A

700

350

175

1,640

N/A

1,640

820

410

Sfmt 4700

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4271

Federal Register / Vol. 78, No. 13 / Friday, January 18, 2013 / Rules and Regulations
TABLE 46—Continued
CFR section

Fee code

Current fees
(dollars)

Description

Large
1.20(j)(1) ...........
1.20(j)(2) ...........

1457
1458

1.20(j)(3) ...........

1459

1.20(k)(1) ..........

1826

1.20(k)(2) ..........

1827

1.20(k)(3)(i) .......

1828

1.20(k)(3)(ii) ......

1829

Extension of Term of Patent ....
Initial Application for Interim Extension (see 37 CFR 1.790).
Subsequent Application for Interim Extension (see 37 CFR
1.790).
Processing and Treating a Request for Supplemental Examination.
Ex Parte Reexamination Ordered as a Result of a Supplemental Examination Proceeding.
For Processing and Treating, in
a Supplemental Examination
Proceeding, a Non-Patent
Document Over 20 Sheets inLength, per Document Between 21–50 Pages.
For Processing and Treating, in
a Supplemental Examination
Proceeding, a Non-Patent
Document Over 20 Sheets inLength, per Document for
Each Additional 50 Sheets or
Fraction Thereof.

Section 1.21: Sections 1.21(a)(1),(a)(2), (a)(4), (a)(5), (a)(7), (a)(8), (a)(9),(a)(10), (e), (g) through (k), and (n) are
amended to set forth miscellaneous fees
and charges as authorized under section
10 of the Act. This section includes a fee
related to the enrollment of registeredpatent attorneys and agents (see§ 1.21(a)(7)), the collection of which has
been stayed since 2009. See

Final fees
(dollars)

Small

Large

Small

Micro

1,120
420

N/A
N/A

1,120
420

N/A
N/A

N/A
N/A

220

N/A

220

N/A

N/A

5,140

N/A

4,400

2,200

1,100

16,120N/A

12,100

6,050

3,025

170

N/A

180

90

45

280

N/A

280

140

70

Trademark Office, 77 FR 64190 (Oct. 18,
2012), in which it has proposed toremove these fees entirely. Althoughthat rulemaking may remove the fee
entirely, it will not affect thisrulemaking since the Office has
assumed in this rulemaking that it will
not collect the fee. The changes to thefee amounts indicated in § 1.21 areshown in Table 47.

www.uspto.gov/ip/boards/oed/practitioner/agents/
forregisteredpractitioners.jsp. In thecalculations for this rulemaking, theOffice has assumed that it will notcollect these fees. The Office also has
published a separate Notice of Proposed
Rulemaking in the Federal Register,
Changes to Representation of Others
Before the United States Patent and

TABLE 47
CFR section

Fee code

Current fees
(dollars)

Description

TKELLEY on DSK3SPTVN1PROD withLarge
1.21(a)(1)(i) ..........
1.21(a)(1)(ii)(A) ....

9001
9010

1.21(a)(1)(ii)(B) ....

9011

1.21(a)(2) .............

9003

1.21(a)(2) .............

9025

1.21(a)(4) .............

9005

1.21(a)(4)(i) ..........

9006

1.21(a)(5)(i) ..........

9012

1.21(a)(5)(ii) .........

9013

VerDate Mar<15>201017:13 Jan 17, 2013

Application Fee (non-refundable) ......
For Test Administration by Commercial Entity.
For Test Administration by the
USPTO.
Registration to Practice or Grant of
LimitedRecognition
under§ 11.9(b) or (c).
Registration to Practice for Change
of Practitioner Type.
Certificate of Good Standing as an
Attorney or Agent.
Certificate of Good Standing as an
Attorney or Agent, Suitable for
Framing.
Review of Decision by the Director of
Enrollment and Discipline under§ 11.2(c).
Review of Decision of the Director of
Enrollment and Discipline under§ 11.2(d).

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Final fees
(dollars)

Small

Large

Small

Micro

40
200

N/A
N/A

40
200

N/A
N/A

N/A
N/A

450

N/A

450

N/A

N/A

100

N/A

100

N/A

N/A

100

N/A

100

N/A

N/A

10

N/A

10

N/A

N/A

20

N/A

20

N/A

N/A

130

N/A

130

N/A

N/A

130

N/A

130

N/A

N/A

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Federal Register / Vol. 78, No. 13 / Friday, January 18, 2013 / Rules and Regulations
TABLE 47—Continued

CFR section

Fee code

Current fees
(dollars)

Description

Large
1.21(a)(7)(i) ..........

9015

1.21(a)(7)(ii) .........

9016

1.21(a)(7)(iii) ........

9017

1.21(a)(7)(iv) ........

9018

1.21(a)(8) .............

9019

1.21(a)(9)(i) ..........
1.21(a)(9)(ii) .........
1.21(a)(10) ...........

9020
9004
9014

1.21(e) ..................
1.21(g) ..................
1.21(h)(1) .............

8020
8902
NEW

1.21(h)(2) .............

8021

1.21(i) ...................
1.21(j) ...................

8022
8023

1.21(k) ..................

8024

1.21(k) ..................

9024

1.21(n) ..................

8026

Annual Fee for Registered Attorney
or Agent in Active Status.
Annual Fee for Registered Attorney
or Agent in Voluntary Inactive Status.
Requesting Restoration to Active
Status from Voluntary Inactive Status.
Balance of Annual Fee Due upon
Restoration to Active Status from
Voluntary Inactive Status.
Annual Fee for Individual Granted
Limited Recognition.
Delinquency Fee for Annual Fee ......
Reinstatement to Practice .................
Application Fee for Person Disciplined, Convicted of a Felony or
Certain
Misdemeanors
under§ 11.7(h).
International Type Search Report .....
Self-Service Copy Charge, per Page
Recording Each Patent Assignment,
Agreement or Other Paper, per
Property if Submitted Electronically.
Recording Each Patent Assignment,
Agreement or Other Paper, per
Property if not Submitted Electronically.
Publication in Official Gazette ...........
Labor Charges for Services, per
Hour or Fraction Thereof.
Unspecified Other Services, Excluding Labor.
Unspecified Other Services, Excluding Labor.
Handling Fee for Incomplete or Improper Application.

Section 1.21 is amended by revisingparagraph (h) as follows: For recording
each assignment, agreement, or otherpaper relating to the property in a patent
or application, per property:
If submitted electronically, onor after January 1, 2014 .......
If not submitted electronically

$0.00
40.00

TKELLEY on DSK3SPTVN1PROD with

Section 1.27: Section 1.27(c)(3) isamended to provide that the payment of
the exact amount of the small entity
transmittal fee set forth in § 1.445(a)(1)or the small entity international searchfee set forth in § 1.445(a)(2) to a
Receiving Office other than the UnitedStates Receiving Office in the exact
amount established for that Receiving
Office pursuant to PCT Rule 16 will also
be treated as a written assertion ofentitlement to small entity status. This

VerDate Mar<15>201017:13 Jan 17, 2013

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Small

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Large

Small

Micro

118

N/A

120

N/A

N/A

25

N/A

25

N/A

N/A

50

N/A

50

N/A

N/A

93

N/A

100

N/A

N/A

118

N/A

120

N/A

N/A

50
100
1,600

N/A
N/A
N/A

50
100
1,600

N/A
N/A
N/A

N/A
N/A
N/A

40
0.25
N/A

N/A
N/A
N/A

40
0.25
0

N/A
N/A
N/A

N/A
N/A
N/A

40

N/A

40

N/A

N/A

25
40

N/A
N/A

25
40

N/A
N/A

N/A
N/A

AT COST

N/A

AT COST

N/A

N/A

AT COST

N/A

AT COST

N/A

N/A

130

N/A

130

N/A

N/A

change applies the national practice ofpermitting an applicant to obtain small
entity status by payment of certain
national fees in the small entity amountto international applications.
Section 1.27 is amended to include
the following language at paragraph(c)(3):
Assertion by payment of the small
entity basic filing, basic transmittal,
basic national fee, or international
search fee. The payment, by any party,of the exact amount of one of the small
entity basic filing fees set forth in§ 1.16(a), 1.16(b), 1.16(c), 1.16(d),1.16(e), the small entity transmittal fee
set forth in § 1.445(a)(1), the small entity
international search fee set forth in§ 1.445(a)(2) to a Receiving Office otherthan the United States Receiving Office

PO 00000

Final fees
(dollars)

Sfmt 4700

in the exact amount established for that
Receiving Office pursuant to PCT Rule16, or the small entity basic national fee
set forth in § 1.492(a), will be treated asa written assertion of entitlement tosmall entity status even if the type ofbasic filing, basic transmittal, or basic
national fee is inadvertently selected inerror.
*****
Section 1.445: Sections 1.445(a)(1)(i),and (a)(2) through (a)(4) are amended to
set forth the international applicationtransmittal and search fees as
authorized under section 10 of the Act.
This section now distinguishes between
issue and publication fees paid before orafter January 1, 2014. The changes to thefee amounts indicated in § 1.445 areshown in Table 48.

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Federal Register / Vol. 78, No. 13 / Friday, January 18, 2013 / Rules and Regulations
TABLE 48
Current fees
(dollars)
CFR section

Fee code

Description
Large1.445(a)(1)(i)(A)and (B).
1.445(a)(2)(i) and
(ii).

1601

1.445(a)(3)(i) and
(ii).

1604

1.445(a)(4)(i) and
(ii).

1621

Final fees
(dollars)
Effective Jan. 1, 2014

PCT International Stage Transmittal
Fee.
PCT International Stage Search
Fee—RegardlessofWhether
There is a Corresponding Application (see 35 U.S.C. 361(d) andPCT Rule 16).
PCT International Stage Supplemental Search Fee When Required, per Additional Invention.
Transmitting Application to International Bureau to Act as Receiving Office.

1602

Correction of Inventorship: Section
1.48 is amended to add a new paragraphthat will require the fee set in § 1.17(d)when inventors are deleted, except forwhen the request to correct or change
inventorship is accompanied by astatement that the request to correct orchange the inventorship is due solely tothe cancelation of claims in theapplication.
Section 1.48 is amended by adding
the following language at paragraph (c):

Small

Large

Small

Micro

240

N/A

240

120

60

2,080

N/A

2,080

1,040

520

2,080

N/A

2,080

1,040

520

240

N/A

240

120

60

Any request to correct or change theinventorship under paragraph (a) of thissection filed after the Office action on
the merits has been given or mailed in
the application must also be
accompanied by the fee set forth in§ 1.17(d), unless the request isaccompanied by a statement that therequest to correct or change theinventorship is due solely to thecancelation of claims in the application.

Section 1.482: Sections 1.482(a)(1)and (a)(2) are amended to set forth theinternational application preliminary
examination fees as authorized under
section 10 of the Act. This section now
distinguishes between issue andpublication fees paid before or afterJanuary 1, 2014. The changes to the fee
amounts indicated in § 1.482 are shownin Table 49.

TABLE 49
Current fees
(dollars)
CFR Section

Fee code

Final Fees
(dollars)
Effective Jan. 1 2014

Description
Large

1.482(a)(1)(i) (A)and (B).

1605

1.482(a)(1)(ii) (A)and (B).

1606

1.482(a)(2) (i)and (ii).

1607

PCT International Stage Preliminary Examination.
Fee—U.S. was the ISA ..................
PCT International Stage Preliminary Examination.
Fee—U.S. was not the ISA ............
PCT International Stage Supplemental Examination Fee per Additional Invention.

Section 1.492: The fee amounts in§ 1.492(a), (b)(1) through (b)(4), (c)(1),(c)(2), (d) through (f), (h), (i) and (j) are
amended to set forth the basic national,

Small

Large

Small

Micro

600

N/A

600

300

150

750

N/A

760

380

190

600

N/A

600

300

150

excess claims, search, examination, andapplication size fees for international
patent applications entering the national
stage as authorized under section 10 of

the Act. The changes to the fee amounts
indicated in § 1.492 are shown in Table
50.

TABLE 50
CFR Section

Fee code

Current fees
(dollars)

Description

TKELLEY on DSK3SPTVN1PROD withLarge
1.492(a) ..............
1.492(b)(1) ..........

1631/2631
1640/2640

1.492(b)(2) ..........

1641/2641

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Basic PCT National Stage Fee ......
PCT National Stage Search Fee—U.S. was the ISA or IPEA and All
Claims Satisfy PCT Article 33(1)–(4).
PCT National Stage Search Fee—U.S. was the ISA.

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Final fees
(dollars)

Small

Large

Small

Micro

390
0

195
0

280
0

140
0

70
0

120

60

120

60

30

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Federal Register / Vol. 78, No. 13 / Friday, January 18, 2013 / Rules and Regulations
TABLE 50—Continued

CFR Section

Fee code

Current fees
(dollars)

Description

Large
1.492(b)(3) ..........

1642/2642

1.492(b)(4) ..........

1632/2632

1.492(c)(1) ..........

1643/2643

1.492(c)(2) ..........

1633/2633

1.492(d) ..............

1614/2614

1.492(e) ..............

1615/2615

1.492(f) ...............

1616/2616

1.492(h) ..............

1617/2617

1.492(i) ...............

1618/2618

1.492(j) ...............

1681/2681

PCT National Stage Search Fee—
Search Report Prepared andProvided to USPTO.
PCT National Stage Search Fee—All Other Situations.
PCT National Stage Examination
Fee—U.S. was the ISA or IPEA
and All Claims Satisfy PCT Article 33(1)–(4).
National Stage Examination Fee—All Other Situations.
PCT National Stage Claims—Extra
Independent (over three).
PCT National Stage Claims—Extra
Total (over 20).
PCT National Stage Claims—Multiple Dependent.
Search Fee, Examination Fee orOath or Declaration After Thirty
Months From Priority Date.
English Translation After Thirty
Months From Priority Date.
PCT National Stage Application
Size Fee—for Each Additional 50
Sheets that Exceeds 100 Sheets.

Section 41.20: Sections 41.20(a) and(b) are amended to set forth the appeal

Final fees
(dollars)

Small

Large

Small

Micro

500

250

480

240

120

630

315

600

300

150

0

0

0

0

0

250

125

720

360

180

250

125

420

210

105

62

31

80

40

20

460

230

780

390

195

130

65

140

70

35

130

N/A

140

70

35

320

160

400

200

100

fees as authorized under section 10 of
the Act. The changes to the fee amounts

indicated in § 41.20 are shown in Table
51.

TABLE 51
CFR Section

Fee code

Current fees
(dollars)

Description

TKELLEY on DSK3SPTVN1PROD withLarge
41.20(a) ..............

1405

41.20(b)(1) ..........
41.20(b)(2)(i) .......

1401/2401
1402/2402

41.20(b)(2)(ii) ......

NEW

41.20(b)(3) ..........
41.20(b)(4) ..........

1403/2403
NEW

Petitions to the Chief Administrative
Patent Judge under 37 CFR 41.3.
Notice of Appeal .............................
Filing a Brief in Support of an Appeal in an Application or Ex
Parte Reexamination Proceeding.
Filing a Brief in Support of an Appeal in an Inter Partes Reexamination Proceeding.
Request for Oral Hearing ...............
Forwarding an Appeal in an Application or Ex Parte Reexamination Proceeding to the Board.

Appeal Fees: As discussed in Part V.
Individual Fee Rationale, the Office isadjusting the fee structure for appeal
fees to recognize that after some notices
of appeal are filed, the matter isresolved, and there is no need to takethe ultimate step of forwarding theappeal to the PTAB for a decision. The
Office is setting a new fee to forward an

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Small

Frm 00064

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Large

Small

Micro

400

N/A

400

N/A

N/A

630
630

315
315

800
0

400
0

200
0

N/A

N/A

2,000

1,000

500

1,260
N/A

630
N/A

1,300
2,000

650
1,000

325
500

appeal in an application or ex partereexamination proceeding to the PTAB
for review.
Section 41.20(b) is amended byadding a new paragraph (4).
Section 41.37: Section 41.37 isamended by revising paragraphs (a) and(b).
Section 41.45: Section 41.45.

PO 00000

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(dollars)

Sfmt 4700

Section 42.15: Sections 42.15(a)through (d) are amended to set forth theinter partes review and post-grant
review or covered business method
patent review of patent fees as
authorized under section 10 of the Act.
The changes to the fee amounts
indicated in § 42.15 are shown in Table
52.

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4275

TABLE 52
CFR section

Fee code

Current fees
(dollars)

Description

Large
42.15(a)(1) ........

1406

42.15(a)(2) ........

NEW

42.15(a)(3) ........

1407

42.15(a)(4) ........

NEW

42.15(b)(1) ........

1408

42.15(b)(2) ........

NEW

42.15(b)(3) ........

1409

42.15(b)(4) ........

NEW

42.15(c)(1) ........
42.15(d) ............

XXXX
1411

Inter Partes Review Request Fee—Up
to 20 Claims.
Inter Partes Review Post-Institution
Fee—Up to 15 Claims.
In Addition to the Inter Partes Review
Request Fee, for Requesting Review
of Each Claim in Excess of 20.
In addition to the Inter Partes Post-Institution Fee, for Requesting Review
of Each Claim in Excess of 15.
Post-Grant or Covered Business Method Patent Review Request Fee—Up
to 20 Claims.
Post-Grant or Covered Business Method Patent Review Post-Institution
Fee—Up to 15 Claims.
In Addition to the Post-Grant or Covered Business Method Patent Review Request Fee, for Requesting
Review of Each Claim in Excess of
20.
In Addition to the Post-Grant or Covered Business Method Patent Review Post-Institution Fee, for Requesting Review of Each Claim in
Excess of 15.
Derivation Petition .................................
Request to Make a Settlement Agreement Available.

Section 42.15: Section 42.15 is added.
VIII. Rulemaking Considerations

TKELLEY on DSK3SPTVN1PROD with

A. Regulatory Flexibility Act
The USPTO publishes this Final
Regulatory Flexibility Analysis (FRFA)
as required by the Regulatory Flexibility
Act (RFA) (5 U.S.C. 601, et seq.) to
examine the impact of the Office’s rule
to implement the fee setting provisionsof the Leahy-Smith America Invents Act(Pub. L. 112–29, 125 Stat. 284) (the Act)on small entities.
Under the RFA, whenever an agency
is required by 5 U.S.C. 553 (or any otherlaw) to publish a notice of proposed
rulemaking (NPRM), the agency must
prepare a FRFA, unless the agency
certifies under 5 U.S.C. 605(b) that therule, if implemented, will not have asignificant economic impact on asubstantial number of small entities. See
5 U.S.C. 604, 605. The Office publishedan Initial Regulatory Flexibility
Analysis (IRFA), along with the NPRM,
on September 6, 2012 (77 FR 55028).
The Office received no comments fromthe public directly applicable to theIRFA, as stated below in Item 2.

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Small

Fmt 4701

Small

Micro

N/A

9,000

N/A

N/A

N/A

N/A

14,000

N/A

N/A

600

N/A

200

N/A

N/A

N/A

N/A

400

N/A

N/A

35,800N/A

12,000

N/A

N/A

N/A

N/A

18,000

N/A

N/A

800

N/A

250

N/A

N/A

N/A

N/A

550

N/A

N/A

400
400

N/A
N/A

400
400

N/A
N/A

N/A
N/A

The objective of the rule is toimplement the fee setting provisions ofsection 10 of the Act by setting or
adjusting patent fees to recover theaggregate cost of patent operations,
including administrative costs, while
facilitating effective administration of
the U.S. patent system. The Act
strengthened the patent system byaffording the USPTO the ‘‘resources it
requires to clear the still sizeable
backlog of patent applications and move
forward to deliver to all American
inventors the first rate service they
deserve.’’ H.R. Rep. No. 112–98(I), at
163 (2011). In setting fees under the Act,
the Office seeks to secure a sufficientamount of aggregate revenue to recover
the aggregate cost of patent operations,
including for achieving strategic andoperational goals, such as reducing thecurrent patent application backlog,
decreasing patent application pendency,
improving patent quality, upgrading
patent business IT capability andinfrastructure, and implementing asustainable funding model. As part ofthese efforts, the Office will use a
portion of the patent fees to fund apatent operating reserve, a step towardachieving the Office’s financial

Frm 00065

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27,200

1. A Statement of the Need for, andObjectives of, the RulePO 00000

Final fees
(dollars)

Sfmt 4700

sustainability goals. In addition, theOffice includes multipart and staged
fees for requests for continued
examination and appeals, both of which
aim to foster innovation and increase
prosecution options. Additional
information on the Office’s strategic
goals may be found in the StrategicPlan, available at http://www.uspto.gov/
about/stratplan/USPTO_20102015_Strategic_Plan.pdf. Additional
information on the Office’s goals andoperating requirements may be found in
the annual budgets, available at http://
www.uspto.gov/about/stratplan/budget/
fy13pbr.pdf. The legal basis for the ruleis section 10 of the Act.
2. A Statement of the Significant Issues
Raised by the Public Comments in
Response to the Initial Regulatory
Flexibility Analysis, a Statement of theAssessment of the Agency of Such
Issues, and a Statement of Any Changes
Made in the Proposed Rule as a Resultof Such Comments
The Office did not receive any publiccomments in response to the IRFA. The
Office received comments about fees ingeneral as well as particular fees,
including comments about theapplicability of certain fees to small
entities. Overall, the comments
expressed support for the discounts to

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small entities. However, somecomments questioned why thediscounts could not be larger orapplicable to additional fees, and othercomments requested that therequirements to qualify as a small or
micro entity be relaxed. The Office
responded to these comments withadditional explanations of the statutory
requirements that do not permit the
Office to make such changes. Details of
those comments are discussed andanalyzed above in Part VI. Discussion ofComments.
3. The Response of the Agency to Any
Comments Filed by the Chief Counsel
for Advocacy of the Small Business
Administration in Response to the
Proposed Rule, and a Detailed
Statement of Any Change Made to the
Proposed Rule in the Final Rule as a
Result of the Comments
The Office did not receive any
comments filed by the Chief Counsel for
Advocacy of the Small Business
Administration in response to the
proposed rule.

TKELLEY on DSK3SPTVN1PROD with

4. A Description of and an Estimate of
the Number of Small Entities to Which
the Rule Will Apply or an Explanationof Why No Such Estimate Is Available
SBA Size Standard
The Small Business Act (SBA) size
standards applicable to most analyses
conducted to comply with the RFA are
set forth in 13 CFR 121.201. These
regulations generally define small
businesses as those with less than aspecified maximum number of
employees or less than a specified levelof annual receipts for the entity’s
industrial sector or North American
Industry Classification System (NAICS)
code. As provided by the RFA, and after
consulting with the SBA, the Officeformally adopted an alternate size
standard for the purpose of conducting
an analysis or making a certification
under the RFA for patent-related
regulations. See Business Size Standard
for Purposes of United States Patent andTrademark Office Regulatory Flexibility
Analysis for Patent-Related Regulations,
71 FR 67109 (Nov. 20, 2006), 1313 Off.
Gaz. Pat. Office 60 (Dec. 12, 2006). The
Office’s alternate small business size
standard consists of the SBA’s
previously established size standard forentities entitled to pay reduced patentfees. See 13 CFR. 121.802.
Unlike the SBA’s generally applicablesmall business size standards, the size
standard for the USPTO is not industryspecific. The Office’s definition of asmall business concern for RFA
purposes is a business or other concern

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that: (1) Meets the SBA’s definition of a‘‘business concern or concern’’ set forthin 13 CFR 121.105; and (2) meets thesize standards set forth in 13 CFR
121.802 for the purpose of paying
reduced patent fees, namely, an entity:(a) Whose number of employees,
including affiliates, does not exceed 500
persons; and (b) which has not assigned,
granted, conveyed, or licensed (and isunder no obligation to do so) any rights
in the invention to any person who
made it and could not be classified as
an independent inventor, or to any
concern that would not qualify as anonprofit organization or a small
business concern under this definition.
See Business Size Standard for Purposesof United States Patent and Trademark
Office Regulatory Flexibility Analysis
for Patent-Related Regulations, 71 FR
67109 (Nov. 20, 2006), 1313 Off. Gaz.
Pat. Office at 63 (Dec. 12, 2006).
If a patent applicant self-identifies ona patent application as qualifying as asmall entity for reduced patent fees
under the Office’s alternative size
standard, the Office captures this data in
the Patent Application Location andMonitoring (PALM) database system,
which tracks information on each patentapplication submitted to the Office.
Small Entities Affected by This Rule
Small Entity Defined
The Act provides that fees set or
adjusted under section 10(a) ‘‘for filing,
searching, examining, issuing,
appealing, and maintaining patentapplications and patents shall be
reduced by 50 percent’’ with respect tothe application of such fees to any‘‘small entity’’ (as defined in 37 CFR
1.27) that qualifies for reduced fees
under 35 U.S.C. 41(h)(1). 125 Stat. at
316–17. 35 U.S.C. 41(h)(1), in turn,provides that certain patent fees ‘‘shallbe reduced by 50 percent’’ for a small
business concern as defined by section
3 of the SBA, and to any independent
inventor or nonprofit organization as
defined in regulations described by the
Director.
Micro Entity Defined
Section 10(g) of the Act creates a new
category of entity called a ‘‘micro
entity.’’ 35 U.S.C. 123; see also 125 Stat.
at 318–19. Section 10(b) of the Act
provides that the fees set or adjusted
under section 10(a) ‘‘for filing,
searching, examining, issuing,
appealing, and maintaining patentapplications and patents shall be
reduced * * * by 75 percent withrespect to the application of such fees toany micro entity as defined by [new 35
U.S.C.] 123.’’ 125 Stat. at 315–17.

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35 U.S.C. 123(a) defines a ‘‘micro
entity’’ as an applicant who certifies
that the applicant: (1) Qualifies as asmall entity as defined in 37 CFR 1.27;(2) has not been named as an inventor
on more than four previously filed
patent applications, other thanapplications filed in another country,
provisional applications under 35
U.S.C. 111(b), or Patent Cooperation
Treaty (PCT) applications for which thebasic national fee under 35 U.S.C. 41(a)was not paid; (3) did not, in thecalendar year preceding the calendar
year in which the applicable fee is being
paid, have a gross income, as defined in
section 61(a) of the Internal Revenue
Code of 1986 (26 U.S.C. 61(a)),
exceeding three times the medianhousehold income for that preceding
calendar year, as most recently reportedby the Bureau of the Census; and (4) has
not assigned, granted, conveyed, and is
not under an obligation by contract orlaw, to assign, grant, or convey, alicense or other ownership interest in
the application concerned to an entity
exceeding the income limit set forth in(3) above. See 125 Stat. at 318.
35 U.S.C. 123(d) also defines a ‘‘micro
entity’’ as an applicant who certifies
that: (1) The applicant’s employer, fromwhich the applicant obtains the majorityof the applicant’s income, is an
institution of higher education as
defined in section 101(a) of the Higher
Education Act of 1965 (20 U.S.C.
1001(a)); or (2) the applicant has
assigned, granted, conveyed, or is underan obligation by contract or law, toassign, grant, or convey, a license orother ownership interest in theparticular applications to such an
institution of higher education.
Estimate of Number of Small Entities
Affected
The changes in the rule apply to any
entity, including a small or micro entity,that pays any patent fee set forth in the
final rule. The reduced fee rates (50percent for small entities and 75 percent
for micro entities) apply to any small
entity asserting small entity status andto any micro entity certifying micro
entity status for filing, searching,examining, issuing, appealing, andmaintaining patent applications andpatents.
The Office reviews historical data toestimate the percentages of application
filings asserting small entity status.
Table 53 presents a summary of suchsmall entity filings by type of
application (utility, reissue, plant,
design) over the last five years.

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4277

TABLE 53—NUMBER OF PATENT APPLICATIONS FILED IN LAST FIVE YEARS *FY 2012 **Utility:
All ..............................................................................
Small .........................................................................
% Small .....................................................................
Reissue:
All ..............................................................................
Small .........................................................................
% Small .....................................................................
Plant:All ..............................................................................
Small .........................................................................
% Small .....................................................................
Design:All ..............................................................................
Small .........................................................................
% Small .....................................................................
Total:All .......................................................................
Small ..................................................................
% Small .............................................................

FY 2011

FY 2010

FY 2009

FY 2008

Average

530,915132,19824.9

504,089
126,87825.2

479,332
122,32925.5

458,901
113,24424.7

466,258
116,89125.1

488,014122,367
25.1

1,212
278
22.9

1,139
265
23.3

1,138
235
20.7

1,035
237
22.9

1,080
258
23.9

1,125
255
22.0

1,181
576
48.8

1,106
574
51.9

1,013
472
46.6

988
429
43.4

1,331
480
36.1

1,123
506
45.1

32,25815,80649

30,27014,69948.6

28,577
15,13353.0

25,575
14,59157.1

28,217
14,37350.9

28,975
14,921
48.66

565,566
148,85826.3

536,604
142,41626.5

510,060
138,16927.1

486,499
128,501
26.4

496,886
132,00226.6

519,236
138,049
26.6

TKELLEY on DSK3SPTVN1PROD with* The patent application filing data in this table includes RCEs.
** FY 2012 application data are preliminary and will be finalized in the FY 2013 Performance and Accountability Report (PAR).

Because the percentage of small entity
filings varies widely between
application types, the Office has
averaged the small entity filing rates
over the past five years for those
application types to estimate future
filing rates by small and micro entities.
Those average rates appear in the lastcolumn of Table 53, above. As discussed
previously in this Final Rule, the Officeestimates that the number of patentapplications filed will increase annually(despite fee increases), and the Officeestimates that small entity filing rates
also will continue to grow for the next
five years.
The Office forecasts the number ofprojected patent applications (i.e.,
workload) for the next five years using
a combination of historical data,
economic analysis, and subject matter
expertise. The Office estimates that UPR
patent application filings would growby 5.0 percent each year beginning in
FY 2013 and continuing through FY
2017. The Office forecasts design patentapplications independently of UPR
applications because they exhibit
different behavior. The Officepreviously estimated that design patentapplication filings would grow by 2.0
percent each year beginning in FY 2013and continuing through FY 2017. Thesefiling estimates, however, were
established prior to an analysis ofelasticity based on fee adjustments. The
FY 2013 President’s Budget (page 36,‘‘USPTO Fee Collection Estimates/
Ranges’’) further describes the Office’s
workload forecasting methodology,
which involves reviewing economic

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factors and other relevant indicators
about the intellectual property
environment. Exhibit 12 of the Budget
presents additional performance goals
and measurement data, including theforecasted patent application filing
growth rate as described above.
Using the estimated filings for the
next five years, the average historic ratesof small entity filings, and the Office’s
elasticity estimates, Table 54 presents
the Office’s estimates of the number ofpatent application filings by all
applicants, including small entities,
over the next five fiscal years byapplication type. As stated in Part V.
Individual Fee Rationale of this final
rule, and taking into account elasticity,
the Office estimated that applicants
would file 1.3 percent fewer new(serialized) patent applications during
FY 2013 than the number estimated tobe filed in the absence of a fee increase(with new fee schedule implementation
for half the fiscal year). The Officefurther estimated that 2.7 percent fewer
new patent applications would be filed
during FY 2014, and 4.0 percent fewer
new patent applications would be filed
in FY 2015, in response to the fee
adjustment. Beginning in FY 2016, theOffice estimated that the growth in newpatent applications filed would returnto the same levels anticipated in theabsence of a fee increase. The Office’s
estimate of the number of patentapplication filings by small entities
represents an upper bound. Someentities may file more than one
application in a given year.
The Office has undertaken anelasticity analysis to examine how fee

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adjustments may impact small entities,
and in particular, whether increases infees would result in some such entities
not submitting applications. Elasticity
measures how sensitive patentapplicants and patentees are to fee
amounts or changes. If elasticity is low
enough (demand is inelastic), then fee
increases will not reduce patenting
activity enough to negatively impact
overall revenues. If elasticity is highenough (demand is elastic), thenincreasing fees will decrease patenting
activity enough to decrease revenue.
The Office analyzes elasticity at theoverall filing level across all patentapplicants regardless of entity size.
Additional information about elasticity
estimates is available at http://
www.uspto.gov/aia_implementation/
fees.jsp#heading-1 in the document
entitled ‘‘USPTO Section 10 Fee
Setting—Description of Elasticity
Estimates.’’ Table 54 reflects estimates
for total numbers of applicants,
including the portion of small entity
applicants. These estimates include
reductions in the application growthrate (as described in the previous
paragraph) based on the estimatedelasticity effect included in Table 2 of
the aforementioned Description of
Elasticity Estimates document. Thisestimated elasticity effect is multipliedby the estimated number of patentapplications in the absence of a fee
increase to obtain the estimates in Table
54. See the appendix on elasticity for
additional detail on the Office’s
elasticity estimates and methodology.

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Federal Register / Vol. 78, No. 13 / Friday, January 18, 2013 / Rules and Regulations
TABLE 54—ESTIMATED NUMBERS OF PATENT APPLICATIONS IN FY 2013–FY 2017
FY 2012(current)

Utility:
All ..............................................................................
Small .........................................................................
Reissue:
All ..............................................................................
Small .........................................................................
Plant:All ..............................................................................
Small .........................................................................
Design:All ..............................................................................
Small .........................................................................

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Total:All .......................................................................
Small ..................................................................

5. A Description of the Projected
Reporting, Recordkeeping and Other
Compliance Requirements of the Rule,
Including an Estimate of the Classes of
Small Entities Which Will Be Subject to
the Requirement and Type ofProfessional Skills Necessary for
Preparation of the Report or Record
This rule will not change the burdenof existing reporting and recordkeeping
requirements for payment of fees. The
current requirements for small entities
will continue to apply to small entities.
The process to assess whether an entity
can claim micro entity status requires
the same skill currently required toassess whether an entity can claim small
entity status. The projected reporting
and recordkeeping requirements for anentity to certify eligibility for micro
entity fee reductions are minimal(namely, a brief certification). These
minimal requirements will not require
any professional skills beyond thoserequired to file and prosecute anapplication. Therefore, the professional
skills necessary to file and prosecute anapplication through issue andmaintenance remain unchanged under
this rule. This rule only sets or adjusts
patent fees and does not set procedures
for asserting small or micro entity
status, as previously discussed.
The full fee schedule (see Part VII.
Discussion of Specific Rules) is set forthin the final rule. The fee schedule setsor adjusts 351 patent fees. This fee
schedule includes 94 fees for which
there are small entity fee reductions,and 93 fees for which there are micro
entity fee reductions. One fee, Statutory
Disclaimer (37 CFR 1.20(d)), wasformerly eligible for a small entity fee
reduction, but is no longer eligible forsuch a reduction under section 10(b) of
the Act. Similarly, Basic Filing Fee—
Utility (37 CFR 1.16(a)(1), electronic

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FY 2013

FY 2014

FY 2017548,307
94,668566,524
98,430585,187
102,776

614,503107,926

645,285
113,333

1,212
278

685
109

679
108

673
107

693
110

714
113

1,181
576

1,034
371

1,025
368

1,015
364

1,025
368

1,035
371

32,25815,80631,994
11,03831,91011,00931,81010,97432,446
11,19433,095
11,418565,566
148,858

582,020
106,186

600,138
109,915

618,685
114,221648,667
119,598

680,129
125,235

6. A Description of the Steps the Agency
Has Taken to Minimize the Significant
Economic Impact on Small Entities
Consistent With the Stated Objectives ofApplicable Statutes, Including aStatement of the Factual, Policy, andLegal Reasons for Selecting theAlternative Adopted in the Final Ruleand Why Each One of the Other
Significant Alternatives to the Rule
Considered by the Agency Which Affectthe Impact on Small Entities Was
Rejected
The USPTO considered several
alternative approaches to the rule,
discussed below, including retaining
current fees, full cost recovery of fees,
an across-the-board adjustment to fees,
and the proposal submitted to the PPAC
on February 7, 2012. The discussion
begins with a description of the feeschedule adopted in this rule and thenaddresses each alternative considered inturn.

Frm 00068

FY 2016

530,915132,198

filing for small entities), is set expressly
for small entities in section 10(h) of theAct, and there is no corresponding large
or micro entity fee.
Commensurate with changes to large
entity fees, small entities will pay morethan they do currently for 47 percent of
the fees currently eligible for the 50
percent fee reduction. However, more
fees are reduced for small entities underthe Act. As a result, they will pay lessthan they do currently for 44 percent of
the fees eligible for the 50 percent
reduction (5 percent of the fees stay thesame and the balance are newly setfees). Additionally, micro entities are
eligible for fee reductions of 75 percent.
Compared to what they would have
paid as small entities under the current
fee schedule, micro entities will pay lessfor 87 percent of the fees eligible for
reduction.

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i. Alternative 1: Patent Fee Schedule in
the Final Rule—Set and Adjust Section
10 Fees
The USPTO chose the patent feeschedule in this final rule because it
will enable the Office to achieve its
goals effectively and efficiently without
unduly burdening small entities,
erecting barriers to entry, or stifling
incentives to innovate. The alternative
selected here achieves the aggregate
revenue needed for the Office to offset
aggregate costs, and is therefore
beneficial to all entities that seek patent
protection. Also, the alternative selected
here offers small entities a 50 percent
fee reduction and micro entities a 75
percent fee reduction. As discussed in
Item 5 above, the final patent feeschedule includes a total of 94 reduced
fees for small entities and 93 reduced
fees for micro entities. Compared to thecurrent patent fee schedule, small
entities will see 41 small entity fees
decrease and micro entities will see 81
fees decrease (when compared to therate they would have paid as a small
entity under the current fee schedule).
Given the three-month operating
reserve target estimated to be achieved
after the five-year planning period of FY
2013—FY 2017 (in FY 2018) under thisselected alternative, small and micro
entities will pay some higher fees thanunder some of the other alternatives
considered. However, the fees are not ashigh as those initially proposed to PPAC
(Alternative 4), which achieved thethree-month target operating reserve in
FY 2016. Instead, in the adopted
alternative, the Office decided to slow
the growth of the operating reserve andlower key fee amounts in response tocomments and feedback the PPAC
received from IP stakeholders and otherinterested members of the public during

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Federal Register / Vol. 78, No. 13 / Friday, January 18, 2013 / Rules and Regulations
and following the PPAC fee setting
hearings.
The selected alternative secures the
Office’s required revenue to meet its
aggregate costs, while meeting thestrategic goals of a patent application
pendency decrease and patentapplication backlog reduction that will
benefit all applicants, especially small
and micro entities. Pendency is one of
the most important factors in ananalysis of patent fee proposal
alternatives. Decreasing patentapplication pendency increases theprivate value of patents because patents
are granted sooner, thus allowing patent
holders to more quickly commercialize
their innovations. Reducing pendency
may also allow for earlier disclosure of
the scope of protection, which reduces
uncertainty regarding the scope of
patent rights and validity of claims forpatentees, competitors, and newentrants. All patent applicants should
benefit from the decreased pendency
that will be realized under the selected
alternative. While some of the otheralternatives discussed make progress
toward the pendency decrease (andrelated backlog reduction) goal, theselected alternative is the only one that
does so in a way that does not poseundue costs on patent applicants andholders while still achieving the Office’s
other strategic goals.
The selected alternative is also
uniquely responsive to stakeholder
feedback in ways the other alternatives
are not, including multipart and staged
fees for requests for continued
examination, appeals, and several of the
new trial proceedings, including interpartes review and post-grant review.
These inclusions in the selected
alternative aim to foster innovation andincrease patent prosecution options forapplicants and patent holders, as
discussed in the Part V. Individual Fee
Rationale section of Supplementary
Information in this final rule. Two
examples illustrate how the selected fee
structure is responsive to stakeholder
feedback. First, the Office sets two feesfor RCEs. The fee for an initial RCE is
set below cost; the fees for a second andany subsequent RCEs are set above theamount of the first RCE, estimated to beslightly below cost recovery. A lower
first RCE fee continues to allow for useof this option, when necessary; only themore intensive use of this process via asecond or subsequent RCE, which
impacts compact prosecution, requires
higher fees. Second, the Office stages
the payment of the appeal fees torecover additional cost at later points intime and thereby minimize the cost
impacts on applicants associated withwithdrawn final rejections. The Office

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sets (1) a $800 notice of appeal fee, (2)a $0 fee when filing the brief, and (3) a$2,000 fee when forwarding the appeal
file—containing the appellant’s Briefand the Examiner’s Answer—to the
PTAB for review. This reduction fromthe fees proposed in the NPRM
recognizes stakeholder feedback about
the appeal fees being too high and thetotal cost of the appeal process was too
front-end focused. The approach aims
to: Provide patent prosecution options
for applicants and appellants, stabilize
the fee structure by recovering cost at
the points in time where appeals cost is
the most significant, and seek ways tominimize the cost impact on applicants
associated with withdrawn rejections.
When estimating aggregate revenue,
the Office assumed that the fees in thisrule would become effective by April 1,
2013, except for issue, pre-grant
publication, international stage Patent
Cooperation Treaty fees, and assignment
fee changes which become effective
January 1, 2014. The final patent feeschedule, as compared to existing fees
(labeled Alternative 1—Final Patent Fee
Schedule—Set and Adjust Section 10Fees) is available at http://
www.uspto.gov/aia_implementation/
fees.jsp#heading-1, in the document
entitled ‘‘USPTO Section 10 Fee
Setting—FRFA Tables.’’ Fee changes forsmall and micro entities are included in
the tables. For the purpose of
calculating the dollar and percent feechange, fees for micro entities arecompared to current fees for small
entities. For the comparison between
final patent fees and current fees, as
noted above, the ‘‘current fees’’ column
displays the fees that were effective asof October 5, 2012.
ii. Other Alternatives Considered
In addition to the fee schedule set
forth in Alternative 1, above, the Officeconsidered several other alternative
approaches.
a. Alternative 2: Fee Cost Recovery
The USPTO considered setting mostindividual large entity fees at the cost of
performing the activities related to theparticular service, while implementing
the small and micro entity fee
reductions for eligible fees. Fees that are
not typically set using cost data as anindicator were set at current rates.
Under this alternative, maintenance fees
would be set at a level sufficient toensure that the Office would be able torecover the cost of mandatory expenses
and offset the revenue loss from small
and micro entity discounts(approximately half of the current
maintenance fee rates). Additional
information about the methodology for

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4279

determining the cost of performing theactivities, including the cost
components related to respective fees, isavailable for review at http://
www.uspto.gov/aia_implementation/
fees.jsp#heading-1 in the document
titled ‘‘USPTO Section 10 Fee Setting—
Activity-Based Information and Costing
Methodology.’’
It is common practice in the Federal
Government to set a particular fee at alevel to recover the cost of that service.
In OMB Circular A–25: User Charges,
the OMB states that user charges (fees)
should be sufficient to recover the fullcost to the Federal Government ofproviding the particular service,resource, or good, when the Governmentis acting in its capacity as sovereign.
However, the Office projected asignificant revenue shortfall under thisalternative, defeating the goals of thisrulemaking.
First, this alternative would notprovide sufficient funds to offset therequired fee reductions for small andmicro entities. Even after adjusting
maintenance fees upward, aggregate
revenue would suffer considerably. In
response, it would be necessary for the
Office to reduce operating costs (i.e.,
examination capacity (hiring), IT system
upgrades, and various other initiatives),
the loss of which would negatively
impact the Office’s ability to meet thefinancial, strategic, and policy goals of
this rulemaking.
Moreover, this alternative presents
significant barriers to seeking patent
protection, because front-end fees
would increase significantly for all
applicants, even with small and micro
entity fee reductions. The high costs ofentry into the patent system could leadto a significant decrease in the
incentives to invest in innovative
activities among all entities, andespecially for small and micro entities.
Likewise, there would be no
improvements in fee design, such as themultipart RCE fees or staging the appeal
fees included in Alternative 1.
In sum, this alternative is inadequate
to accomplish the goals and strategies asstated in Part III of this rulemaking andso the Office has not adopted it.
The fee schedule for Alternative 2:
Fee Cost Recovery is available at http://
www.uspto.gov/aia_implementation/
fees.jsp#heading-1, in the document
entitled ‘‘USPTO Section 10 Fee
Setting—FRFA Tables.’’ Fee changes forsmall and micro entities are included in
the tables. For the purpose of
calculating the dollar and percent feechange, fees for micro entities arecompared to current fees for small
entities. For the comparison between
final patent fees and current fees, as

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noted above, the ‘‘current fees’’ column
displays the fees that were effective asof October 5, 2012.
b. Alternative 3: Across-the-Board
Adjustment
In some past years, and as became
effective on October 5, 2012, (see CPI
Adjustment of Patent Fees for Fiscal
Year 2013, 77 FR 54360 (Sept. 5, 2012)),
the USPTO used its authority to adjust
statutory fees annually according tochanges in the CPI, which is acommonly used measure of inflation.
Building on this prior approach,
Alternative 3 would set fees by applying
a 6.7 percent, multi-year, across-theboard inflationary increase to thebaseline (status quo) beginning in FY
2013. The 6.7 percent represents theestimated cumulative inflationary
adjustment from FY 2013 through FY
2016. The Office selected this time
period to represent the fiscal year inwhich the fees would be effective
through the fiscal year in which theoperating reserve will approach thetarget level. As estimated by the CBO at
the time the NPRM published, projected
inflationary rates by fiscal year are: 1.4
percent in FY 2013, 1.5 percent in FY
2014, 1.6 percent in FY 2015, and 2.0
percent in FY 2016. (The rates listed areconsistent with the analysis presented
in the NPRM. The CBO has since
updated its rates.) Each percentage rate
for a given year applies to the following
year, e.g., a 1.4 percent increase for FY
2013 is applied to FY 2014. These rates
are multiplied together to account forthe compounding effect occurring fromyear-to-year; the rounded result is 6.7
percent. When estimating aggregate
revenue, the Office estimated that mostfees under this alternative would
become effective by April 1, 2013.
Under this alternative, the Officewould not collect enough revenue toachieve both of the strategic goals
identified in Part III. Rulemaking Goals
and Strategies within the timeframes
identified in the Budget. This
alternative would implement the small
and micro entity fee reductions for
eligible fees, but would also retain thesame fee relationships and subsidization
policies as the status quo (baseline)
alternative. There would be no
improvements in fee design, such as themultipart RCE fees or staging the appeal
fees included in Alternative 1. Further,
the Office projects that the aggregate
revenue generated from this alternative
would be sufficient to recover theaggregate cost of steady state patent
operations, but would not go far enoughto meet both of the Office’s strategic
goals to improve the timeliness of patent
processing (through reducing patent

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applications in backlog and pendency)
and to implement a sustainable funding
model for operations (by establishing athree-month patent operating reserve). It
is important for the Office to balanceaccomplishing both goals together sothat once it achieves the pendency
goals, it has sufficient resources tomaintain them. Alternative 3 builds thethree-month patent operating reserve
during the five-year planning period,
but does not generate sufficient
aggregate revenue to also achieve thepatent application pendency goals by
FY 2016 and FY 2017. In fact, therevenue generated by Alternative 3
during FY 2013 is not only insufficient
to hire 1,000 patent examiners (likeAlternatives 1 and 4), but also uses $55
million of the operating reserve to pay
for the 1,500 patent examiners hired in
FY 2012 and maintain steady state
operations. In sum, this alternative isinadequate to accomplish the goals andstrategies as stated in Part III.
Rulemaking Goals and Strategies of thisrulemaking and so the Office has not
adopted it.
The fee schedule for Alternative 3:
Across-the-Board Adjustment isavailable at http://www.uspto.gov/
aia_implementation/fees.jsp#heading-1,
in the document entitled ‘‘USPTO
Section 10 Fee Setting—FRFA Tables.’’
Fee changes for small and micro entities
are included in the tables. For the
purpose of calculating the dollar andpercent fee change, fees for micro
entities are compared to current fees forsmall entities. For the comparison
between proposed fees and current fees,the ‘‘current fees’’ column displays thefees that were effective as of October 5,2012 (which includes the 2012 CPI
increase).
c. Alternative 4: Initial Proposal to the
PPAC
The fee structure initially delivered to
the PPAC on February 7, 2012, andpublished during the public hearings in
February 2012, which is consistent with
the FY 2013 President’s Budget, would
achieve the USPTO’s strategic goals andobjectives, including reducing backlog
and pendency.
This alternative is nearly the same as
the selected alternative (Alternative 1).
As described in Part V. Individual Fee
Rationale of this rule, some fees would
be set to achieve cost recovery forspecific patent-related services, while
many others would be set either below
or above cost. For example, likealternatives 1 and 3, the Office, under
this alternative would subsidize frontend fees set below cost (e.g., file, search,and examination) by setting back-end
fees (e.g., issue and maintenance) above

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cost to enable a low cost of entry into
the patent system. In some cases, fee
rates would be set at a level during
patent prosecution so that an applicant
pays certain fees at a point in time
relative to the amount of information
available to make a decision aboutproceeding. Specifically, fees would be
set low during prosecution when thereis less certainty about the value of an
applicant’s invention, then begin to rise
gradually starting at issue andcontinuing through maintenance fees atdifferent stages of the patent lifecycle(e.g., 3.5, 7.5, and 11.5 years) when apatent holder has greater certainty in thevalue of the invention. This structure
also considers the relationship amongindividual fees and the cost ofoperational processes, including sometargeted adjustments to fees where thegap between cost and current fees isgreatest.
The fee schedule for this alternative
would achieve higher revenue than eachof the other alternatives considered. It
would permit the Office to fund theoperating reserve at a rapid pace,reaching its three-month target level in
FY 2016. When estimating aggregate
revenue, the Office estimated that fees
under this alternative would become
effective by April 1, 2013.
However, during the PPAC hearingsand comment period, stakeholders
raised concerns about the rate of growth
associated with the operating reserve.
While most of the Office’s stakeholders
agree with the need for an operating
reserve, many raised concerns about theneed to reach the target so quickly.
Stakeholders opined that such a rate of
growth would impose too great of aburden on the patent user community.
Many were also concerned that the fee
rates associated with achieving theoperating reserve target so quickly
would be too high. Although thisalternative would meet the Office’s
revenue goals, the Office ultimately
rejected this alternative because it
would have a greater economic impact
on all entities (including small andmicro entities) than the selected
alternative. A modified version of thisalternative (with a number of lower fees)
became the selected alternative(Alternative 1).
The fee schedule for Alternative 4:
Initial Proposal to PPAC is available at
http://www.uspto.gov/
aia_implementation/fees.jsp#heading-1,
in the document entitled ‘‘USPTO
Section 10 Fee Setting—FRFA Tables.’’
Fee changes for small and micro entities
are included in the tables. For the
purpose of calculation the dollar andpercent fee change, fees for micro
entities are compared to current fees for

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small entities. For the comparison
between proposed fees and current fees,the ‘‘current fees’’ column displays thefees that were effective as of October 5,2012 (which includes the 2012 CPI
increase).

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(Status Quo)
The Office considered a no-action
alternative. This alternative would
retain the status quo, meaning that the
Office would not expand the range offees eligible for a small entity discount(50 percent), nor would it go a stepfurther and provide micro entities withthe 75 percent fee reduction that
Congress provided in section 10 of theAct. This approach would not provide
sufficient aggregate revenue toaccomplish all of the Office’s goals as
set forth in Part III. Rulemaking Goals
and Strategies of this rule or theStrategic Plan, including hiring theexaminers needed to decrease thebacklog of patent applications, meeting
patent application pendency goals,
improving patent quality, advancing IT
initiatives, and achieving sustainablefunding.
The status quo alternative would be
detrimental to micro entities, because
the final rule includes a 75 percent fee
reduction for micro entities that will
result in those applicants paying lessunder the final patent fee schedule thanthey would under the status quo.
Moreover, small entities generally
would be harmed because fewer small
entity discounts would be available.
The status quo approach would resultin inadequate funding for effective
patent operations. It also would result inincreased patent application pendency
levels and patent application backlog. It
further would prevent the USPTO frommeeting the goals in its Strategic Plan
that are designed to achieve greater
efficiency and improve patent quality.
These results would negatively impact
small entities just as they would
negatively impact all other patentapplicants. While the Office would
continue to operate and make some
progress toward its goals, the progress
would be much slower, and in somecases, initial improvements would be
eradicated in the out-years (e.g., patentapplication pendency and the patentapplication backlog would increase in
the out-years as the Office fails toincrease examination capacity to keep
pace with incoming applications).
Likewise, IT improvement activities
would continue, but at a slower rate due
to funding limitations.

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iii. Alternative Approaches
In the IRFA, the USPTO also
considered four other approaches
specified by the RFA, namely: (1)Establishing different compliance orreporting requirements or timetables
that take into account the resources
available to small entities; (2) clarifying,
consolidating, or simplifying
compliance and reporting requirements
under the rule for small entities; (3)using performance rather than design
standards; and (4) exempting small
entities from coverage of the rule, or any
part thereof. 5 U.S.C. 603(c). The
USPTO discusses each of these
specified approaches below, anddescribes how the final rule adopts
these approaches.
Differing Requirements
As discussed above, the changes inthis rulemaking establish differing
requirements for small and micro
entities that take into account the
reduced resources available to them.
Specifically, micro entities would pay a
75 percent reduction in patent fees
under the final patent fee schedule.
For non-micro small entities, thisfinal rule would not only retain theexisting 50 percent patent fee reduction
but also expand the availability of suchsmall entity fee reductions to 26 patent
fees that currently are not eligible forsmall entity reductions. The increased
availability of fee reductions for both
small and micro entities arises from thefact that section 10(b) of the Act
provides that reductions apply to allfees for ‘‘filing, searching, examining,
issuing, appealing, and maintaining
patent applications and patents.’’ Prior
to the AIA, small entity fee reductions
applied only to fees set under 35 U.S.C.
41(a) and 41(b). By increasing the scopeof fees eligible for reductions, the AIA
allows the USPTO to do more to easeburdens and reduce the entry barriers
for small and micro entities to take partin the patent system.
This rulemaking sets fee levels but
does not set or alter procedural
requirements for asserting small or
micro entity status. To pay reduced
patent fees, small entities must merely
assert small entity status. The small
entity may make this assertion by either
checking a box on the transmittal form,‘‘Applicant claims small entity status,’’or by paying the small entity fee exactly.
The Office established (in a separate
rulemaking) that a micro entity submit
a form certifying micro entity status. See
Changes to Implement Micro Entity
Status for Paying Patent Fees, 77 FR
75019 (Dec. 19, 2012). The instant final
rule does not change any reporting

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4281

requirements for any small entity. For
both small and micro entities, theburden to establish their status isnominal (making an assertion or
submitting a certification), and thebenefit of the fee reductions (50 percent
for small entities and 75 percent for
micro entities) is significant.
This final rule makes the best use ofdiffering requirements for small andmicro entities. It also makes the best useof the redesigned fee structure, as
discussed further below.
Clarification, Consolidation, or
Simplification of Requirements
The final rule clarifies, consolidates,and simplifies the current compliancerequirements. These changes
incorporate certain options to stage fees
(break fees into multiple parts), so thatapplicants can space out the payment offees and make decisions about some feesat later stages in the application process
when they have more information.
Applicants also can receive partial
refunds when some parts of a service
prove not to be needed.
For example, the Office establishes inthis final rule that appeal fees be spreadout across different stages of the appeal
process so that an applicant can pay asmaller fee to initiate the appeal, andthen not pay for the bulk of the appeal
fee until, if, and when the appeal isforwarded to the PTAB after the
Examiner’s Answer is filed. Thus, if asmall or micro entity initiates an appeal,
but the appeal does not go forward
because the examiner withdraws therejection, the small entity will pay lessfor the appeal process than under thecurrent fee structure (where the bulk of
the appeal fees would be paid up front
even if the appeal does not go forward).
Additionally, the Office sets fees for theadministrative trials (inter partes
review, post-grant review, and coveredbusiness method review) before the
PTAB to be paid in multiple parts. With
inter partes review, for instance, theOffice would return fees for postinstitution services should a petition not
be instituted. Similarly, the Officeestablishes that fees paid for postinstitution review of a large number ofclaims be returned if the Office only
institutes the review of a subset of therequested claims. These options forstaging and splitting fees into multiple
parts will benefit small and micro
entities, who will be able to spread out
their payments of fees, and in someinstances potentially receive refunds offees where only a portion of a particularservice is ultimately provided. See
Changes to Implement Inter Partes
Review Proceedings, Post-Grant Review
Proceedings, and Transitional Program

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for Covered Business Method Patents,
77 FR 48680 (Aug. 14, 2012).
This final rule makes the best use ofthis alternative approach.
Performance Standards
Performance standards do not apply
to the final rule.

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Exemption for Small Entities
The final rule includes a new 75
percent reduction in fees for micro
entities, and an expansion of the 50
percent reduction in fees for small
entities. The Office considered
exempting small and micro entities frompaying patent fees, but determined that
the USPTO would lack statutory
authority for this approach. Section
10(b) of the Act provides that ‘‘fees set
or adjusted under subsection (a) for
filing, searching, examining, issuing,
appealing, and maintaining patentapplications and patents shall be
reduced by 50 percent [for small
entities] and shall be reduced by 75
percent [for micro entities].’’ (Emphasis
added). Neither the AIA nor any otherstatute authorizes the USPTO to simply
exempt small or micro entities, as aclass of applicants, from paying patentfees.
B. Executive Order 12866 (Regulatory
Planning and Review)
This rulemaking has been determined
to be economically significant for
purposes of Executive Order 12866(Sept. 30, 1993), as amended by
Executive Order 13258 (Feb. 26, 2002)
and Executive Order 13422 (Jan. 18,
2007). The Office has developed an RIA
as required for rulemakings deemed tobe economically significant. The
complete RIA is available at http://
www.uspto.gov/aia_implementation/
fees.jsp#heading-1. The Office received
the following comments related to
Executive Order 12866.
Comment 1: A commenter noted thatthe agency must comply with Executive
Order 12866 in setting section 10 fees.
The commenter also noted that
Executive Order 12866 requires the
Office to consider other causes andsolutions to the problem before issuing
regulations.
Response: As demonstrated in thissection and the rulemaking as a whole,
the USPTO has complied with themandates of Executive Order 12866.
Consistent with the directives in
Executive Order 12866, the Officeconcurs and has both reviewed othercauses (including a statutory fee
structure that prevented the Office fromrealigning or adjusting fees to quickly
and effectively respond to market
demand or changes in processing costs)

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and analyzed alternative solutions(including alternative fee structures andleaving the fees unchanged). The Officealso has provided extensive
opportunities for public input into thefee setting process like the PPAC public
hearings and public comment period
and the roadshows conducted in
September 2012, before issuing thisfinal rule.
C. Executive Order 13563 (Improving
Regulation and Regulatory Review)
In order to comply with Executive
Order 13563, the Office has, to theextent feasible and applicable: (1) Madea reasoned determination that thebenefits justify the costs of the rule; (2)tailored the rule to impose the leastburden on society consistent withobtaining the regulatory objectives; (3)selected a regulatory approach thatmaximizes net benefits; (4) specified
performance objectives; (5) identified
and assessed available alternatives; (6)involved the public in an open
exchange of information andperspectives among experts in relevant
disciplines, affected stakeholders in theprivate sector, and the public as awhole, and provided on-line access to
the rulemaking docket; (7) attempted topromote coordination, simplification,and harmonization across Government
agencies and identified goals designed
to promote innovation; (8) consideredapproaches that reduce burdens andmaintain flexibility and freedom of
choice for the public; and (9) ensured
the objectivity of scientific andtechnological information andprocesses.
D. Executive Order 13132 (Federalism)
This rulemaking does not contain
policies with federalism implications
sufficient to warrant preparation of aFederalism Assessment under Executive
Order 13132 (Aug. 4, 1999).
E. Congressional Review Act
Under the Congressional Review Act
provisions of the Small Business
Regulatory Enforcement Fairness Act of1996 (5 U.S.C. 801–808), the UnitedStates Patent and Trademark Office has
submitted a report containing this final
rule and other required information to
the U.S. Senate, the U.S. House ofRepresentatives, and the Comptroller
General of the Government
Accountability Office.
F. Unfunded Mandates Reform Act of1995
The changes in this final rule do not
involve a Federal intergovernmental
mandate that will result in the
expenditure by state, local, and tribal

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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 significantlyor uniquely affect small governments.
Therefore, no actions are necessary
under the provisions of the Unfunded
Mandates Reform Act of 1995. See 2
U.S.C. 1501–1571.
G. Paperwork Reduction Act
The Paperwork Reduction Act of 1995
(PRA) (44 U.S.C. 3501–3549) requires
the USPTO to consider the impact of
paperwork and other informationcollection burdens imposed on the
public. This final rule involves
information collection requirements thatare subject to review by the OMB under
the PRA. The collection of information
involved in this notice was submitted to
OMB with the proposed rulemaking as
a new information collection request
and was preapproved under OMB
control number 0651–0072. The
information collection will be available
at the OMB’s Information Collection
Review Web site at: www.reginfo.gov/
public/do/PRAMain.
1. Summary
This final rule will collect two fees
not specifically delineated in an existing
information collection request (listed inTable (A) below) and will amend thefees in several current informationcollections previously approved by
OMB (listed in Table (B) below). The
Office is consolidating these fee burdens
into this collection to allow fee burden
adjustments to be requested through asingle fee information collection
package entitled ‘‘America Invents Act
Section 10 Patent Fee Adjustments.’’
This new, consolidated collection will
result in the unavoidable double
counting of certain fees for a shortperiod of time. The Office will update
the fee burden inventory in existing
information collections to correct the
double counting by submitting nonsubstantive change requests in each of
the currently existing informationcollection requests (in Table (B) below)
with the appropriate fee adjustments.
Nothing associated with either thisrulemaking or this informationcollection request alters the existing
non-fee burden of any response to any
information collection. However,
because a change in some fees willchange the aggregate demand for certain
services, the total number of responses
for some information collections willchange, which in turn will change thetotal number of burden hours (defined

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as the estimated time burden of acollection multiplied by the total
responses) and respondent cost burden(burden hours multiplied by the
respondent cost per hour) for somecollections. These changes are detailed
in the supporting statement for thisinformation collection, and the Officewill update the existing informationcollections to account for this change
when submitting the non-substantive
change requests described above.
As explained in Part V. Individual Fee
Rationale, the USPTO adjusted several
fees in response to public comment. The
notice of appeal fee for large entities has
been reduced from $1,000 to $800 andaccordingly reduced for small entities
from $500 to $400, and for micro
entities from $250 to $200. The ex partereexamination fee has been reduced

from $15,000 to $12,000 for large
entities, with corresponding reductions
to $6,000 for small entities and $3,000
for micro entities. The fee forreexaminations ordered as part of
supplemental examination has been
reduced from $13,600 to $12,100 forlarge entities and to $6,050 for small
entities and $3,025 for micro entities.
Finally, the correct inventorship fee has
been reduced from $1,000 to $600 forlarge entities, and correspondingly $300
for small entities and $150 for micro
entities. Although the fee for the correct
inventorship service has been reduced,
the circumstances in which the fee ispaid have also been narrowed such thatthe fee need not be paid if the request
to correct or change inventorship isaccompanied by a statement that therequest is due solely to the cancelation
Amount(large entity)

Fee
Correct Inventorship after First Action on the Merits ..................
Petitions to Chief APJ Under 37 CFR 41.3 ................................

(B) Existing & Pending Collections
Amended Under the Rulemaking(1) 0651–0012 Admittance to Practiceand Roster of Registered Patent
Attorneys and Agents Admitted toPractice Before the USPTO(2) 0651–0016 Rules for Patent
Maintenance Fees
(3) 0651–0020 Patent Term Extension(4) 0651–0021 Patent Cooperation
Treaty(5) 0651–0027 Recording Assignments(6) 0651–0031 Patent Processing(Updating)(7) 0651–0032 Initial Patent
Applications(8) 0651–0033 Post Allowance andRefiling(9) 0651–0036 Statutory Invention
Registration(10) 0651–0059 Certain Patent
Petitions Requiring a Fee(11) 0651–0063 Board of PatentAppeals and Interferences (BPAI)
Actions(12) 0651–0064 Patent Reexaminations
and Supplemental Examinations(13) 0651–0069 Patent Review and
Derivation Proceedings(14) 0651–00xx Matters Related toPatent Appeals

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2. Data
Section 10 of the Act authorizes the
Director of the USPTO to set or adjust
all patent fees established, authorized,
or charged under Title 35, U.S. Code.
Agency fees associated with informationcollections are considered to be part ofthe burden of the collection of

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400.00

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Sfmt 4700(A) Fees Included in This New
Information Collection Request

Amount(small entity)

Amount(micro entity)$300.00
400.00information. The data associated withthis information collection request issummarized below and provided inadditional detail in the supportingstatement for this information collection
request, available through theInformation Collection Review Web site(www.reginfo.gov/public/do/PRAMain).
Section 10 also provides for thecreation of a ‘‘micro entity status.’’ The
information collection associated withmicro entity status was addressed in a
separate proposed rulemaking and aseparate PRA analysis. See 77 FR 75019(Dec. 19, 2012).
Needs and Uses: The Agency isauthorized to collect these fees by
Section 10 of the Act. The public uses
this information collection to pay theirrequired fees and communicate with the
Office regarding their applications andpatents. The Agency uses these fees toprocess respondents’ applications andpatents, to process applicants’ requests
for various procedures in applicationand post-grant patent processing, and toprovide all associated services of the
Office.
OMB Number: 0651–0072.
Title: America Invents Act Section 10
Patent Fee Adjustments.
Form Numbers: None.
Type of Review: New Collection.
Likely Respondents/Affected Public:
Individuals or households, businesses
or other for-profit institutions, not-forprofit institutions, farms, Federal
Government, and state, local, or tribal
governments.

PO 00000of claims in the application.
Accordingly, the Office now expects toreceive 188 responses (i.e., payments ofthe fee) from large entities, 43 fromsmall entities, and 19 from micro
entities. Additionally, the Office has
revised the expected number of
responses to several informationcollections based on revised anddecreased projections of demand forvarious services. Because of theserevised expected responses, as
explained in the Paperwork Reduction
Act Supporting Statement for thisrulemaking, both the hour cost burden
and the non-hour cost burden havedecreased from the NPRM to the Final
Rule.

$150.00
400.00Regulation
37 CFR 1.17(d).
37 CFR 41.3.

A. Estimates for All Fees, Including
Both Information Added in This
Collection and Information in Existing
and Pending Collections
Estimated Number of Respondents for
All Fees: 5,470,718 responses per year.
Estimated Time per Response for All
Fees: Except as noted below for the twofees added to this collection, thisinformation collection will not result inany change in any time per response.
Estimated Total Annual (Hour)
Respondent Cost Burden for All Fees:
Except as noted below for the two fees
added to this collection, thisinformation collection will not result inany change in any information
requirements associated with fees set oramended by this rulemaking. Other than
the two fees added to this collection, theonly change in the total annual (hour)
respondent cost burden results from thechange in responses, which is a resultof two factors. First, because the change
in a fee for a particular service may
cause a change in demand for that
service, the total number of respondents
for each service might change, altering
the total annual (hour) respondent costburden for fees covered under approved
collections. This change has been fully
detailed in the supporting statement andits appendices. Second, response
numbers of current inventories havebeen updated to reflect the Office’s mostrecent estimates.
Estimated Total Annual (Non-Hour)
Respondent Cost Burden for All Fees:$2,727,479,226. The USPTO estimates

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that the total fees associated with thiscollection, representing all feescollected across the full panoply of
patent processing services provided by
the Office, will be approximately$2,727,479,150 per year. (This number
is different than the total revenue citedelsewhere in this rule because PRA
estimates have been calculated by taking
an average over three years of estimatedresponses and because not every fee
adjusted in this rulemaking constitutes
a burden under the PRA (e.g., selfservice copying fees).) The amount ofthese fees is a $492,783,887 change fromthe fee amounts currently in the USPTOPRA inventory. Of this, $409,263,158
directly results from this rulemaking
and $83,520,729 results from nonrulemaking factors. Additionally, the
USPTO estimates that $76 in postage
costs will be associated with the items
added in this collection. Because thepostage costs for items in existingcollections have not been altered by thisrulemaking, they are not part of theburden of this rulemaking.

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B. Estimates for Fees Not Specifically
Delineated in an Existing Information
Collection Request (a Subset of All Feesin Part A. Above)
Estimated Number of Respondents for
Information Added in This Collection:
412 responses per year.
Estimated Time per Response forInformation Added in This Collection:
The USPTO estimates that it will takethe public between 2 and 4 hours togather the necessary information,
prepare the appropriate form or otherdocuments, and submit the information
to the USPTO.
Estimated Total Annual Respondent
Burden Hours for Information Added inThis Collection: 1,148 hours per year.
Estimated Total Annual (Hour)
Respondent Cost Burden for Information
Added in This Collection: $425,908 per
year.
Estimated Annual (Non-Hour)
Respondent Cost Burden for Information
Added in This Collection: $193,426 per
year. Of this amount, $128,550 directly
results from this rulemaking, $64,800
results from non-rulemaking factors,
and $76 results from postage.
3. Solicitation
The Office solicited comments to: (1)Evaluate whether the proposed
information collection is necessary forthe proper performance of the functionsof the Office, including whether the
information will have practical utility;(2) evaluate the accuracy of the Office’s
estimate of the burden; (3) enhance thequality, utility, and clarity of theinformation to be collected; and (4)VerDate Mar<15>201017:13 Jan 17, 2013

Jkt 229001

minimize the burden of collecting theinformation on those who are to
respond, including by using appropriate
automated, electronic, or mechanicalcollection techniques or other forms of
information technology.
The Office received one comment
from members of the public regarding
the Paperwork Reduction Act analysis
for this rule. A summary of thecomment received and the Office’s
response to that comment follows.
Comment 1: A commenter noted thatthe agency must comply with thePaperwork Reduction Act, 44 U.S.C.
3501, et seq. in setting section 10 fees.
Response: The Office agrees with thiscomment. As evidenced by this section,
the equivalent Paperwork Reduction Act
section of the Notice of Proposed
Rulemaking, and the Supporting
Statements submitted with both the
Notice of Proposed Rulemaking and thisFinal Rule, the Office has complied withthe requirements of the Act.
Notwithstanding any other provisionof law, no person is required to respondto nor shall a person be subject to apenalty for failure to comply with acollection of information subject to therequirements of the Paperwork
Reduction Act unless that collection of
information displays a currently valid
OMB control number.
List of Subjects
37 CFR Part 1
Administrative practice andprocedure, Courts, Freedom of
information, Inventions and patents,
Reporting and recordkeeping
requirements, Small businesses.
37 CFR Part 41
Administrative practice andprocedure, Inventions and patents,
Lawyers.
37 CFR Part 42
Trial practice before the Patent Trial
and Appeal Board.
For the reasons set forth in thepreamble, 37 CFR parts 1, 41, and 42 areamended as follows:
PART 1—RULES OF PRACTICE IN
PATENT CASES■ 1. The general authority citation for 37

CFR part 1 continues to read as follows
and the specific authority citation
immediately after the undesignatedcenter heading ‘‘Fees and Payment of
Money’’ is revised to read as follows:
Authority: 35 U.S.C. 2(b)(2).

*

*

*

*

*

Authority: Sections 1.16 through 1.22 also
issued under 35 U.S.C. 41, 111, 119, 120,

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132(b), 156, 157, 255, 302, and 311, Public
Laws 103–465, 106–113, and 112–29.
■ 2. Section 1.16 is amended by revisingparagraphs (a) through (s) to read as
follows:§ 1.16 National application filing, search,and examination fees.

(a) Basic fee for filing each application
under 35 U.S.C. 111 for an original
patent, except design, plant, or
provisional applications:
By a micro entity (§ 1.29) ........
By a small entity (§ 1.27(a)) ....
By a small entity (§ 1.27(a)) if
the application is submitted
in compliance with the Office electronic filing system(§ 1.27(b)(2)) .........................
By other than a small or micro
entity .....................................

$70.00140.0070.00
280.00(b) Basic fee for filing eachapplication for an original design
patent:By a micro entity (§ 1.29) ........
By a small entity (§ 1.27(a)) ....
By other than a small or micro
entity .....................................

$45.0090.00
180.00(c) Basic fee for filing each application
for an original plant patent:
By a micro entity (§ 1.29) ........
By a small entity (§ 1.27(a)) ....
By other than a small or micro
entity .....................................

$45.0090.00
180.00(d) Basic fee for filing eachprovisional application:
By a micro entity (§ 1.29) ........
By a small entity (§ 1.27(a)) ....
By other than a small or micro
entity .....................................

$65.00130.00260.00(e) Basic fee for filing each application
for the reissue of a patent:
By a micro entity (§ 1.29) ........
By a small entity (§ 1.27(a)) ....
By other than a small or micro
entity .....................................

$70.00140.00280.00(f) Surcharge for filing any of the basic
filing fee, the search fee, theexamination fee, or the oath or
declaration on a date later than thefiling date of the application, except
provisional applications:
By a micro entity (§ 1.29) ........
By a small entity (§ 1.27(a)) ....
By other than a small or micro
entity .....................................

$35.0070.00
140.00(g) Surcharge for filing the basic filingfee or cover sheet (§ 1.51(c)(1)) on a datelater than the filing date of theprovisional application:
By a micro entity (§ 1.29) ........
By a small entity (§ 1.27(a)) ....
By other than a small or micro
entity .....................................

$15.0030.00
60.00(h) In addition to the basic filing fee
in an application, other than aprovisional application, for filing or
later presentation at any other time of

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each claim in independent form inexcess of 3:

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

By a micro entity (§ 1.29) ........
By a small entity (§ 1.27(a)) ....
By other than a small or micro
entity .....................................

(q) Examination fee for eachapplication for an original plant patent:$105.00
210.00420.00(i) In addition to the basic filing fee
in an application, other than aprovisional application, for filing or
later presentation at any other time ofeach claim (whether dependent or
independent) in excess of 20 (note that§ 1.75(c) indicates how multiple
dependent claims are considered for fee
calculation purposes):

By a micro entity (§ 1.29) ........
By a small entity (§ 1.27(a)) ....
By other than a small or micro
entity .....................................

460.00$145.00
290.00580.00(r) Examination fee for eachapplication for the reissue of a patent:
By a micro entity (§ 1.29) ........
By a small entity (§ 1.27(a)) ....
By other than a small or micro
entity .....................................

$540.00
1,080.00
2,160.00(s) Application size fee for any
application filed under 35 U.S.C. 111 forthe specification and drawings which
80.00 exceed 100 sheets of paper, for each
additional 50 sheets or fraction thereof:(j) In addition to the basic filing fee in
By a micro entity (§ 1.29) ........
$100.00
an application, other than a provisional
By a small entity (§ 1.27(a)) ....
200.00application, that contains, or is
By other than a small or micro
amended to contain, a multiple
entity .....................................
400.00dependent claim, per application:
*
*
*
*
*
By a micro entity (§ 1.29) ........
$195.00■ 4. Section 1.17 is amended by revising
By a small entity (§ 1.27(a)) ....
390.00paragraphs (a) through (i). (k) throughBy other than a small or micro
entity .....................................
780.00 (m), and (p) through (t) to read as
follows:(k) Search fee for each application
filed under 35 U.S.C. 111 for an original § 1.17 Patent application andreexamination processing fees.
patent, except design, plant, or
provisional applications:(a) Extension fees pursuant to
By a micro entity (§ 1.29) ........
$150.00 § 1.136(a):By a small entity (§ 1.27(a)) ....
300.00(1) For reply within first month:
By a micro entity (§ 1.29) ........
By a small entity (§ 1.27(a)) ....
By other than a small or micro
entity .....................................

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

$20.0040.00

600.00(l) Search fee for each application for
an original design patent:
By a micro entity (§ 1.29) ........
By a small entity (§ 1.27(a)) ....
By other than a small or micro
entity .....................................

$30.0060.00
120.00(m) Search fee for each application for
an original plant patent:
By a micro entity (§ 1.29) ........
By a small entity (§ 1.27(a)) ....
By other than a small or micro
entity .....................................

$95.00190.00380.00(n) Search fee for each application for
the reissue of a patent:

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By a micro entity (§ 1.29) ........
By a small entity (§ 1.27(a)) ....
By other than a small or micro
entity .....................................

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

$50.00100.00200.00(2) For reply within second month:
By a micro entity (§ 1.29) ........
By a small entity (§ 1.27(a)) ....
By other than a small or micro
entity .....................................

$150.00
300.00600.00(3) For reply within third month:
By a micro entity (§ 1.29) ........
By a small entity (§ 1.27(a)) ....
By other than a small or micro
entity .....................................

$350.00
700.001,400.00(4) For reply within fourth month:
By a micro entity (§ 1.29) ........
By a small entity (§ 1.27(a)) ....
By other than a small or micro
entity .....................................

$550.00
1,100.00

4285(d) For correction of inventorship in
an application after the first action on
the merits:
By a micro entity (§ 1.29) ........
By a small entity (§ 1.27(a)) ....
By other than a small or micro
entity .....................................

$150.00
300.00600.00(e) To request continued examination
pursuant to § 1.114:(1) For filing a first request forcontinued examination pursuant to§ 1.114 in an application:
By a micro entity (§ 1.29) ........
By a small entity (§ 1.27(a)) ....
By other than a small or micro
entity .....................................

$300.00
600.001,200.00(2) For filing a second or subsequent
request for continued examination
pursuant to § 1.114 in an application:
By a micro entity (§ 1.29) ........
By a small entity (§ 1.27(a)) ....
By other than a small or micro
entity .....................................

$425.00
850.001,700.00(f) For filing a petition under one of
the following sections which refers tothis paragraph:
By a micro entity (§ 1.29) ........
By a small entity (§ 1.27(a)) ....
By other than a small or micro
entity .....................................

$100.00
200.00400.00§ 1.36(a)—for revocation of a power ofattorney by fewer than all of theapplicants.
§ 1.53(e)—to accord a filing date.
§ 1.57(a)—to accord a filing date.
§ 1.182—for decision on a question
not specifically provided for.
§ 1.183—to suspend the rules.
§ 1.378(e)—for reconsideration ofdecision on petition refusing to accept
delayed payment of maintenance fee inan expired patent.
§ 1.741(b)—to accord a filing date toan application under § 1.740 for
extension of a patent term.
(g) For filing a petition under one of
the following sections which refers tothis paragraph:
By a micro entity (§ 1.29) ........
By a small entity (§ 1.27(a)) ....
By other than a small or micro
entity .....................................

2,200.00$50.00100.00200.00§ 1.12—for access to an assignment
600.00record.
(5) For reply within fifth month:(o) Examination fee for each§ 1.14—for access to an application.
By a micro entity (§ 1.29) ........
$750.00
application filed under 35 U.S.C. 111 for By a small entity (§ 1.27(a)) ....
§ 1.47—for filing by other than all the
1,500.00
an original patent, except design, plant,
inventors or a person not the inventor.
By other than a small or microor provisional applications:entity .....................................
3,000.00§ 1.59—for expungement of
By a micro entity (§ 1.29) ........
$180.00
information.
(b) For fees in proceedings before the
By a small entity (§ 1.27(a)) ....
360.00§ 1.103(a)—to suspend action in an
Patent Trial and Appeal Board, see
By other than a small or micro
application.
§
41.20
of
this
title.
entity .....................................
720.00§ 1.136(b)—for review of a request for(c) For filing a request for prioritized(p) Examination fee for eachextension of time when the provisions
examination under § 1.102(e):application for an original designof § 1.136 (a) are not available.
By a micro entity (§ 1.29) ........
$1,000.00
patent:§ 1.295—for review of refusal to
By a small entity (§ 1.27(a)) ....
2,000.00
publish a statutory invention
By a micro entity (§ 1.29) ........
$115.00 By other than a small or micro
By a small entity (§ 1.27(a)) ....
230.00entity .....................................
4,000.00 registration.

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Federal Register / Vol. 78, No. 13 / Friday, January 18, 2013 / Rules and Regulations§ 1.296—to withdraw a request for
publication of a statutory invention
registration filed on or after the date thenotice of intent to publish issued.
§ 1.377—for review of decisionrefusing to accept and record paymentof a maintenance fee filed prior to
expiration of a patent.
§ 1.550(c)—for patent owner requests
for extension of time in ex partereexamination proceedings.
§ 1.956—for patent owner requests forextension of time in inter partes
reexamination proceedings.
§ 5.12—for expedited handling of aforeign filing license.
§ 5.15—for changing the scope of alicense.
§ 5.25—for retroactive license.
(h) For filing a petition under one of
the following sections which refers tothis paragraph:§ 1.99(e)—for processing a belated
submission under § 1.99.
§ 1.102(e)—for requesting prioritized
examination of an application.
§ 1.103(b)—for requesting limited
suspension of action, continued
prosecution application for a design
patent (§ 1.53(d)).
§ 1.103(c)—for requesting limited
suspension of action, request forcontinued examination (§ 1.114).
§ 1.103(d)—for requesting deferredexamination of an application.
§ 1.291(c)(5)—for processing a secondor subsequent protest by the same real
party in interest.
§ 1.497(d)—for filing an oath or
declaration pursuant to 35 U.S.C.
371(c)(4) naming an inventive entity
different from the inventive entity set
forth in the international stage.
§ 3.81—for a patent to issue to
By a micro entity (§ 1.29) ........
$35.00 assignee, assignment submitted after
By a small entity (§ 1.27(a)) ....
70.00 payment of the issue fee.
(2) For taking action under one of theBy other than a small or micro
entity .....................................
140.00 following sections which refers to thisparagraph:§ 1.19(g)—to request documents in a
By other than a small or micro
form other than provided in this part.
entity .....................................
$130.00§ 1.84—for accepting color drawingsor photographs.
§ 1.217—for processing a redacted§ 1.91—for entry of a model orcopy of a paper submitted in the file ofexhibit.
an application in which a redacted copy
§ 1.102(d)—to make an application
was submitted for the patent application
special.
publication.
§ 1.138(c)—to expressly abandon an§ 1.221—for requesting voluntary
application to avoid publication.
publication or republication of an§ 1.313—to withdraw an application
application.
from issue.
****§ 1.314—to defer issuance of a patent. *(k) For filing a request for expedited(i) Processing fees:
examination under § 1.155(a):(1) for taking action under one of the
By a micro entity (§ 1.29) ........
$225.00
following sections which refers to thisBy a small entity (§ 1.27(a)) ....
450.00paragraph:

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By a micro entity (§ 1.29) ........
By a small entity (§ 1.27(a)) ....
By other than a small or micro
entity .....................................

$35.0070.00
140.00§ 1.28(c)(3)—for processing a nonitemized fee deficiency based on anerror in small entity status.
§ 1.41—for supplying the name ornames of the inventor or inventors after
the filing date without an oath or
declaration as prescribed by § 1.63,
except in provisional applications.
§ 1.48—for correcting inventorship,
except in provisional applications.
§ 1.52(d)—for processing anonprovisional application filed with a
specification in a language other thanEnglish.
§ 1.53(b)(3)—to convert a provisional
application filed under § 1.53(c) into a
nonprovisional application under§ 1.53(b).
§ 1.55—for entry of late priority
papers.
§ 1.71(g)(2)—for processing a belated
amendment under § 1.71(g).

VerDate Mar<15>201017:13 Jan 17, 2013

Jkt 229001

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

900.00(l) For filing a petition for the revivalof an unavoidably abandoned
application under 35 U.S.C. 111, 133,
364, or 371, for the unavoidably delayed
payment of the issue fee under 35 U.S.C.
151, or for the revival of an unavoidably
terminated reexamination proceedingunder 35 U.S.C. 133 (§ 1.137(a)):

*

*
*
*
*
(p) For an information disclosurestatement under § 1.97(c) or (d) or forthe document fee for a submission
under § 1.290:
By a micro entity (§ 1.29) ........
By a small entity (§ 1.27(a)) ....
By other than a small or micro
entity .....................................

$45.0090.00
180.00(q) Processing fee for taking action
under one of the following sections
which refers to this paragraph: $50.00.
§ 1.41—to supply the name or namesof the inventor or inventors after thefiling date without a cover sheet asprescribed by § 1.51(c)(1) in aprovisional application.
§ 1.48—for correction of inventorshipin a provisional application.
§ 1.53(c)(2)—to convert a
nonprovisional application filed under§ 1.53(b) to a provisional application
under § 1.53(c).
(r) For entry of a submission after
final rejection under § 1.129(a):By a micro entity (§ 1.29) ........
By a small entity (§ 1.27(a)) ....
By other than a small or micro
entity .....................................

$210.00
420.00840.00(s) For each additional invention
requested to be examined under§ 1.129(b):By a micro entity (§ 1.29) ........
By a small entity (§ 1.27(a)) ....
By other than a small or micro
entity .....................................

$210.00
420.00840.00(t) For the acceptance of anunintentionally delayed claim forpriority under 35 U.S.C. 119, 120, 121,or 365(a) or (c) (§§ 1.55 and 1.78) or for
filing a request for the restoration of theright of priority under § 1.452:
By a micro entity (§ 1.29) ........
By a small entity (§ 1.27(a)) ....
By other than a small or micro
entity .....................................

$355.00
710.001,420.00■ 5. Section 1.18 is revised to read as

follows:§ 1.18 Patent post allowance (including
issue) fees.

(a) Issue fee for issuing each original
patent, except a design or plant patent,
or for issuing each reissue patent:(1) For an issue fee paid on or after
640.00 January 1, 2014:$240.00(m) For filing a petition for the revival By a micro entity (§ 1.29) ........
By a small entity (§ 1.27(a)) ....
480.00of an unintentionally abandoned
By other than a small or micro
application, for the unintentionallyentity .....................................
960.00delayed payment of the fee for issuing
(2)
For
an
issue
fee
paid
beforea patent, or for the revival of anJanuary 1, 2014:
unintentionally terminatedBy a micro entity (§ 1.29) ........
$445.00
reexamination proceeding under 35
By a small entity (§ 1.27(a)) ....
890.00U.S.C. 41(a)(7) (§ 1.137(b)):
By a micro entity (§ 1.29) ........
By a small entity (§ 1.27(a)) ....
By other than a small or micro
entity .....................................

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

$475.00
950.00

PO 00000

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1,900.00

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

1,780.00(b) Issue fee for issuing an original
design patent:

E:\FR\FM\18JAR2.SGM

18JAR2Federal Register / Vol. 78, No. 13 / Friday, January 18, 2013 / Rules and Regulations(1) For an issue fee paid on or afterJanuary 1, 2014:
By a micro entity (§ 1.29) ........
By a small entity (§ 1.27(a)) ....
By other than a small or micro
entity .....................................

$140.00
280.00560.00(2) For an issue fee paid before
January 1, 2014:
By a micro entity (§ 1.29) ........
By a small entity (§ 1.27(a)) ....
By other than a small or micro
entity .....................................

$255.00
510.001,020.00(c) Issue fee for issuing an originalplant patent:(1) For an issue fee paid on or afterJanuary 1, 2014:
By a micro entity (§ 1.29) ........
By a small entity (§ 1.27(a)) ....
By other than a small or micro
entity .....................................

$190.00
380.00760.00(2) For an issue fee paid before
January 1, 2014:
By a micro entity (§ 1.29) ........
By a small entity (§ 1.27(a)) ....
By other than a small or micro
entity .....................................

$350.00
700.001,400.00(d)(1) Publication fee on or afterJanuary 1, 2014 ....................
(2) Publication fee before January 1, 2014 .........................
(3) Republication fee(§ 1.221(a)) ............................

$0.00
300.00300.00(e) For filing an application for patentterm adjustment under § 1.705: $200.00.
(f) For filing a request forreinstatement of all or part of the term
reduced pursuant to § 1.704(b) in an
application for patent term adjustment
under§ 1.705: $400.00.
■ 6. Section 1.19 is revised to read as
follows:

TKELLEY on DSK3SPTVN1PROD with§ 1.19Document supply fees.

The United States Patent andTrademark Office will supply copies ofthe following patent-related documents
upon payment of the fees indicated.
Paper copies will be in black and white
unless the original document is in color,a color copy is requested and the fee fora color copy is paid.
(a) Uncertified copies of patentapplication publications and patents:(1) Printed copy of the paper portionof a patent application publication or
patent including a design patent,
statutory invention registration, or
defensive publication document.
Service includes preparation of copies
by the Office within two to threebusiness days and delivery by UnitedStates Postal Service; and preparation of
copies by the Office within one business
day of receipt and delivery to an Office
Box or by electronic means (e.g.,
facsimile, electronic mail): $3.00.

VerDate Mar<15>201017:13 Jan 17, 2013

Jkt 229001(2) Printed copy of a plant patent incolor: $15.00.
(3) Color copy of a patent (other thana plant patent) or statutory invention
registration containing a color drawing:$25.00.
(b) Copies of Office documents to beprovided in paper, or in electronic form,
as determined by the Director (for otherpatent-related materials see § 1.21(k)):(1) Copy of a patent application as
filed, or a patent-related file wrapper
and contents, stored in paper in a paper
file wrapper, in an image format in animage file wrapper, or if color
documents, stored in paper in an
Artifact Folder:(i) If provided on paper:(A) Application as filed: $20.00.
(B) File wrapper and contents of 400
or fewer pages: $200.00.
(C) Additional fee for each additional
100 pages or portion thereof of filewrapper and contents: $40.00.
(D) Individual application documents,
other than application as filed, per
document: $25.00.
(ii) If provided on compact disc orother physical electronic medium insingle order:(A) Application as filed: $20.00.
(B) File wrapper and contents, firstphysical electronic medium: $55.00.
(C) Additional fee for each continuing
physical electronic medium in the
single order of paragraph (b)(1)(ii)(B) of
this section: $15.00.
(iii) If provided electronically (e.g., byelectronic transmission) other than on aphysical electronic medium as specifiedin paragraph (b)(1)(ii) of this section:(A) Application as filed: $20.00.
(B) File wrapper and contents: $55.00.
(iv) If provided to a foreign
intellectual property office pursuant toa priority document exchange
agreement (see § 1.14 (h)(1)): $0.00.
(2) Copy of patent-related file wrapper
contents that were submitted and arestored on compact disc or otherelectronic form (e.g., compact discs
stored in an Artifact Folder), other thanas available in paragraph (b)(1) of thissection:(i) If provided on compact disc orother physical electronic medium in asingle order:(A) First physical electronic medium
in a single order: $55.00.
(B) Additional fee for each continuing
physical electronic medium in the
single order of this paragraph (b)(2)(i):$15.00.
(ii) If provided electronically otherthan on a physical electronic medium
per order: $55.00.
(3) Copy of Office records, except
copies available under paragraph (b)(1)or (2) of this section: $25.00.

PO 00000

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4287(4) For assignment records, abstract of
title and certification, per patent:$25.00.
(c) Library service (35 U.S.C. 13): Forproviding to libraries copies of allpatents issued annually, per annum:$50.00.
(d) For list of all United States patents
and statutory invention registrations in
a subclass: $3.00.
(e) Uncertified statement as to statusof the payment of maintenance fees due
on a patent or expiration of a patent:$10.00.
(f) Uncertified copy of a non-UnitedStates patent document, per document:$25.00.
(g) Petitions for documents in a form
other than that provided by this part, orin a form other than that generally
provided by the Director, will bedecided in accordance with the meritsof each situation. Any petition seeking
a decision under this section must be
accompanied by the petition fee set
forth in § 1.17(h) and, if the petition is
granted, the documents will be provided
at cost.
■ 7. Section 1.20 is revised to read as
follows:§ 1.20

Post issuance fees.

(a) For providing a certificate ofcorrection for applicant’s mistake(§ 1.323): $100.00.
(b) Processing fee for correcting
inventorship in a patent (§ 1.324):$130.00.
(c) In reexamination proceedings:(1) For filing a request for ex partereexamination (§ 1.510(a)):
By a micro entity (§ 1.29) ........
By a small entity (§ 1.27(a)) ....
By other than a small or micro
entity .....................................

$3,000.00
6,000.00
12,000.00(2) [Reserved](3) For filing with a request for
reexamination or later presentation at
any other time of each claim in
independent form in excess of 3 andalso in excess of the number of claims
in independent form in the patent underreexamination:
By a micro entity (§ 1.29) ........
By a small entity (§ 1.27(a)) ....
By other than a small or micro
entity .....................................

$105.00
210.00420.00(4) For filing with a request for
reexamination or later presentation at
any other time of each claim (whether
dependent or independent) in excess of
20 and also in excess of the number ofclaims in the patent underreexamination (note that § 1.75(c)indicates how multiple dependentclaims are considered for fee calculation
purposes):
By a micro entity (§ 1.29) ........

E:\FR\FM\18JAR2.SGM

18JAR2$20.004288

Federal Register / Vol. 78, No. 13 / Friday, January 18, 2013 / Rules and Regulations(h) Surcharge for paying amaintenance fee during the six-month80.00 grace period following the expiration of
three years and six months, seven years(5) If the excess claims fees required
and six months, and eleven years andby paragraphs (c)(3) and (4) of thissection are not paid with the request for six months after the date of the original
grant of a patent based on an application
reexamination or on later presentation
filed on or after December 12, 1980:of the claims for which the excess
claims fees are due, the fees required by (1) By a micro entity (§ 1.29) ..
$40.00paragraphs (c)(3) and (4) must be paid
(2) By a small entity (§ 1.27(a))80.00(3) By other than a small oror the claims canceled by amendment
micro entity ..........................
160.00prior to the expiration of the time period
set for reply by the Office in any notice(i) Surcharge for accepting aof fee deficiency in order to avoid
maintenance fee after expiration of aabandonment.
patent for non-timely payment of a(6) For filing a petition in a
maintenance fee where the delay inreexamination proceeding, except for
payment is shown to the satisfaction of
those specifically enumerated in
the Director to have been—§§ 1.550(i) and 1.937(d):(1) Unavoidable:
By a small entity (§ 1.27(a)) ....
By other than a small or micro
entity .....................................

By a micro entity (§ 1.29) ........
By a small entity (§ 1.27(a)) ....
By other than a small or micro
entity .....................................

40.00$485.00
970.001,940.00(7) For a refused request for ex partereexamination under § 1.510 (includedin the request for ex partereexamination fee at § 1.20(c)(1)):
By a micro entity (§ 1.29) ........
By a small entity (§ 1.27(a)) ....
By other than a small or micro
entity .....................................

$900.00
1,800.00

By a micro entity (§ 1.29) ........
By a small entity (§ 1.27(a)) ....
By other than a small or micro
entity .....................................

$400.00
800.00entity .....................................

3,600.00

By a micro entity (§ 1.29) ........
By a small entity (§ 1.27(a)) ....
By other than a small or micro
entity .....................................

$175.00
350.00700.00(2) Unintentional:
By a micro entity (§ 1.29) ........
By a small entity (§ 1.27(a)) ....
By other than a small or micro
entity .....................................

$410.00
820.001,640.00(j) For filing an application forextension of the term of a patent(1) Application for extension under(d) For filing each statutory disclaimer § 1.740: $1,120.00.
(§ 1.321):(2) Initial application for interim
By other than a small or micro
extension under § 1.790: $420.00.
entity .....................................
$160.00(3) Subsequent application for interim(e) For maintaining an original or
extension under § 1.790: $220.00.
(k) In supplemental examination
reissue patent, except a design or plant
patent, based on an application filed on proceedings:(1) For processing and treating aor after December 12, 1980, in force
request for supplemental examination:
beyond four years, the fee being due by
three years and six months after the
By a micro entity (§ 1.29) ........
$1,100.00
original grant:
By a small entity (§ 1.27(a)) ....
2,200.00
3,600.00

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

4,400.00

TKELLEY on DSK3SPTVN1PROD with

(2) For ex parte reexamination
1,600.00 ordered as a result of a supplemental(f) For maintaining an original or
examination proceeding:reissue patent, except a design or plant
By a micro entity (§ 1.29) ........
$3,025.00
patent, based on an application filed on
By a small entity (§ 1.27(a)) ....
6,050.00
or after December 12, 1980, in force
By other than a small or micro
entity .....................................
12,100.00
beyond eight years, the fee being due by
seven years and six months after the(3) For processing and treating, in a
original grant:
supplemental examination proceeding,
By a micro entity (§ 1.29) ........
$900.00 a non-patent document over 20 sheets in
By a small entity (§ 1.27(a)) ....
1,800.00 length, per document:
By other than a small or micro(i) Between 21 and 50 sheets:(g) For maintaining an original orreissue patent, except a design or plant
patent, based on an application filed on
or after December 12, 1980, in force
beyond twelve years, the fee being due
by eleven years and six months after theoriginal grant:
By a micro entity (§ 1.29) ........
By a small entity (§ 1.27(a)) ....
By other than a small or micro
entity .....................................

VerDate Mar<15>201017:13 Jan 17, 2013

By a micro entity (§ 1.29) ........
By a small entity (§ 1.27(a)) ....
By other than a small or micro
entity .....................................

$45.0090.00
180.00(ii) For each additional 50 sheets or afraction thereof:$1,850.00
3,700.00

By a micro entity (§ 1.29) ........
By a small entity (§ 1.27(a)) ....
By other than a small or micro
entity .....................................

7,400.00■ 8. Section 1.21 is amended by:

Jkt 229001

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Sfmt 4700$70.00140.00280.00■ a. Revising paragraph (a);■ b. Removing and reserving paragraph(d);■ c. Revising paragraph (e);■ d. Revising paragraphs (g) through (k);and■ e. Revising paragraph (n).

The revisions read as follows:§ 1.21

Miscellaneous fees and charges.

*

*
*
*
*
(a) Registration of attorneys andagents:(1) For admission to examination forregistration to practice:(i) Application Fee (non-refundable):$40.00.
(ii) Registration examination fee.
(A) For test administration bycommercial entity: $200.00.
(B) For test administration by the
USPTO: $450.00.
(2) On registration to practice or grantof limited recognition under § 11.9(b) or(c): $100.00.
(3) [Reserved](4) For certificate of good standing as
an attorney or agent: $10.00.
(i) Suitable for framing: $20.00.
(ii) [Reserved](5) For review of decision:(i) By the Director of Enrollment andDiscipline under § 11.2(c): $130.00.
(ii) Of the Director of Enrollment andDiscipline under § 11.2(d): $130.00.
(6) [Reserved](7) Annual practitioner maintenancefee for registered attorney or agent.
(i) Active Status: $120.00.
(ii) Voluntary Inactive Status: $25.00.
(iii) Fee for requesting restoration toactive status from voluntary inactive
status: $50.00.
(iv) Balance due upon restoration toactive status from voluntary inactive
status: $100.00.
(8) Annual practitioner maintenancefee for individual granted limited
recognition: $120.00.
(9)(i) Delinquency fee: $50.00.
(ii) Administrative reinstatement fee:
$100.00.
(10) On application by a person forrecognition or registration after
disbarment or suspension on ethicalgrounds, or resignation pending
disciplinary proceedings in any otherjurisdiction; on application by a person
for recognition or registration who isasserting rehabilitation from priorconduct that resulted in an adverse
decision in the Office regarding theperson’s moral character; and on
application by a person for recognition
or registration after being convicted of afelony or crime involving moral
turpitude or breach of fiduciary duty; on
petition for reinstatement by a person
excluded or suspended on ethical

E:\FR\FM\18JAR2.SGM

18JAR2Federal Register / Vol. 78, No. 13 / Friday, January 18, 2013 / Rules and Regulations
grounds, or excluded on consent frompractice before the Office: $1,600.00.
*
*
*
*
*
(e) International type search reports:
For preparing an international typesearch report of an international typesearch made at the time of the firstaction on the merits in a national patentapplication: $40.00.
(g) Self-service copy charge, per page:$0.25.
(h) For recording each assignment,
agreement, or other paper relating to theproperty in a patent or application, perproperty:(1) If submitted electronically, on orafter January 1, 2014: $0.00.
(2) If not submitted electronically:$40.00.
(i) Publication in Official Gazette: Forpublication in the Official Gazette of anotice of the availability of an
application or a patent for licensing orsale: Each application or patent: $25.00.
(j) Labor charges for services, per houror fraction thereof: $40.00.
(k) For items and services that the
Director finds may be supplied, forwhich fees are not specified by statuteor by this part, such charges as may be
determined by the Director with respect
to each such item or service: Actual
cost.
*
*
*
*
*
(n) For handling an application inwhich proceedings are terminatedpursuant to § 1.53(e): $130.00.
■ 9. Section 1.27 is amended by revisingparagraph (c)(3) introductory text toread as follows:§ 1.27 Definition of small entities andestablishing status as a small entity topermit payment of small entity fees; whena determination of entitlement to small
entity status and notification of loss ofentitlement to small entity status are
required; fraud on the Office.

TKELLEY on DSK3SPTVN1PROD with

*

*
*
*
*
(c) * * *(3) Assertion by payment of the small
entity basic filing, basic transmittal,
basic national fee, or international
search fee. The payment, by any party,of the exact amount of one of the small
entity basic filing fees set forth in§§ 1.16(a), 1.16(b), 1.16(c), 1.16(d),1.16(e), the small entity transmittal fee
set forth in § 1.445(a)(1), the small entity
international search fee set forth in§ 1.445(a)(2) to a Receiving Office otherthan the United States Receiving Officein the exact amount established for that
Receiving Office pursuant to PCT Rule16, or the small entity basic national fee
set forth in § 1.492(a), will be treated asa written assertion of entitlement tosmall entity status even if the type ofbasic filing, basic transmittal, or basic

VerDate Mar<15>201017:13 Jan 17, 2013

Jkt 229001

national fee is inadvertently selected inerror.
*****■ 10. Section 1.48 is amended by adding
paragraph (c) to read as follows:§ 1.48 Correction of inventorship pursuant
to 35 U.S.C. 116 or correction of the nameor order of names in a patent application,other than a reissue application.

*

4289

Receiving Office for transmittal of aninternational application to theInternational Bureau for processing in
its capacity as a Receiving Office (PCT
Rule 19.4):(i) For a fee equivalent to thetransmittal fee in paragraph (a)(1) of thissection filed on or after January 1, 2014:
By a micro entity (§ 1.29) ........
By a small entity (§ 1.27(a)) ....
By other than a small or micro
entity .....................................
(ii) For a fee equivalent to thetransmittal fee in paragraph(a)(1) of this section filed
before January 1, 2014 .........

$60.00120.00****(c) Any request to correct or change
the inventorship under paragraph (a) of
this section filed after the Office action
on the merits has been given or mailed
in the application must also be
accompanied by the fee set forth in§ 1.17(d), unless the request isaccompanied by a statement that therequest to correct or change theinventorship is due solely to thecancelation of claims in the application.
*
*
*
*
*
■ 11. Section 1.445 is amended byrevising paragraph (a) introductory text
and paragraphs (a)(1)(i), (a)(2) through(4), and (b) to read as follows:(b) The international filing fee shall be
as prescribed in PCT Rule 15.
■ 12. Section 1.482 is revised to read as
follows:

By a small entity (§ 1.27(a)) ....
By other than a small or micro
entity .....................................

By a micro entity (§ 1.29) ........
By a small entity (§ 1.27(a)) ....
By other than a small or micro
entity .....................................

240.00240.00§ 1.482 International preliminary
examination fees.

(a) The following fees and charges forinternational preliminary examination
are established by the Director under theauthority of 35 U.S.C. 376:
(1) The following preliminary§ 1.445 International application filing,examination fee is due on filing theprocessing and search fees.
Demand:(a) The following fees and charges for(i) If an international search fee as set
international applications areforth in § 1.445(a)(2) has been paid on
established by law or by the Director
the international application to theunder the authority of 35 U.S.C. 376:
United States Patent and Trademark(1) * * *Office as an International Searching(i) A basic portion:
Authority:(A) For a transmittal fee paid on or(A) For an international search fee
after January 1, 2014:
filed
on or after January 1, 2014:
By a micro entity (§ 1.29) ........
$60.00120.00240.00(B) For a transmittal fee paid before
January 1, 2014: $240.00.
*
*
*
*
*
(2) A search fee (see 35 U.S.C. 361(d)and PCT Rule 16):(i) For a search fee paid on or afterJanuary 1, 2014:
By a micro entity (§ 1.29) ........
By a small entity (§ 1.27(a)) ....
By other than a small or micro
entity .....................................

$520.00
1,040.00
2,080.00(ii) For a search fee paid before
January 1, 2014: $2,080.00.
(3) A supplemental search fee whenrequired, per additional invention:(i) For a supplemental search fee paidon or after January 1, 2014:$150.00
300.00600.00(B) For an international search fee
filed before January 1, 2014: $600.00.
(ii) If the International Searching
Authority for the international
application was an authority other thanthe United States Patent and Trademark
Office:(A) For an international search fee
filed on or after January 1, 2014:
By a micro entity (§ 1.29) ........
By a small entity (§ 1.27(a)) ....
By other than a small or micro
entity .....................................

$190.00
380.00760.00(B) For an international search fee
filed before January 1, 2014: $750.00.
(2) An additional preliminary
By a micro entity (§ 1.29) ........
$520.00 examination fee when required, per
By a small entity (§ 1.27(a)) ....
1,040.00 additional invention:
By other than a small or micro(i) For an additional preliminary
entity .....................................
2,080.00
examination fee filed on or after January(ii) For a supplemental search fee paid 1, 2014:
before January 1, 2014: $2,080.00.
By a micro entity (§ 1.29) ........
$150.00(4) A fee equivalent to the transmittal
By a small entity (§ 1.27(a)) ....
300.00fee in paragraph (a)(1) of this section
By other than a small or microthat would apply if the USPTO was theentity .....................................
600.00

PO 00000

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18JAR2

4290

Federal Register / Vol. 78, No. 13 / Friday, January 18, 2013 / Rules and Regulations(ii) For an additional preliminary
examination fee filed before January 1,
2014: $600.00.
(b) The handling fee is due on filingthe Demand and shall be prescribed in
PCT Rule 57.
■ 13. Section 1.492 is revised to read as
follows:

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

600.00(c) The examination fee for aninternational application entering thenational stage under 35 U.S.C. 371:
(1) If an international preliminary
examination report on the international
application prepared by the UnitedStates International Preliminary§ 1.492 National stage fees.
Examining Authority or a written
The following fees and charges are
opinion on the international application
established for international
prepared by the United States
applications entering the national stage
International Searching Authority states
under 35 U.S.C. 371:
that the criteria of novelty, inventive(a) The basic national fee for an
step (non-obviousness), and industrial
international application entering theapplicability, as defined in PCT Article
national stage under 35 U.S.C. 371:
33 (1) to (4) have been satisfied for all
By a micro entity (§ 1.29) ........
$70.00of the claims presented in the
By a small entity (§ 1.27(a)) ....
140.00application entering the national stage:
By other than a small or micro
entity .....................................

280.00(b) Search fee for an international
application entering the national stage
under 35 U.S.C. 371:
(1) If an international preliminary
examination report on the international
application prepared by the UnitedStates International Preliminary
Examining Authority or a written
opinion on the international application
prepared by the United States
International Searching Authority statesthat the criteria of novelty, inventive
step (non-obviousness), and industrial
applicability, as defined in PCT Article
33(1) to (4) have been satisfied for all of
the claims presented in the applicationentering the national stage:

$0.00
0.00
0.00

(2) In all situations not provided forin paragraph (c)(1) of this section:
By a micro entity (§ 1.29) $180.00.
By a small entity (§ 1.27(a)) ....
By other than a small or micro
entity .....................................

$360.00
720.00(d) In addition to the basic nationalfee, for filing or on later presentation at
any other time of each claim in
independent form in excess of 3:
By a micro entity (§ 1.29) ........
By a small entity (§ 1.27(a)) ....
By other than a small or micro
entity .....................................

$105.00
210.00420.00By a micro entity (§ 1.29) ........
By a small entity (§ 1.27(a)) ....
By other than a small or micro
entity .....................................

$35.0070.00
140.00(i) For filing an English translation of
an international application or any
annexes to an international preliminary
examination report later than thirty
months after the priority date (§ 1.495(c)and (e)):By a micro entity (§ 1.29) ........
By a small entity (§ 1.27(a)) ....
By other than a small or micro
entity .....................................

$35.0070.00
140.00(j) Application size fee for any
international application, thespecification and drawings of which
exceed 100 sheets of paper, for each
additional 50 sheets or fraction thereof:
By a micro entity (§ 1.29) ........
By a small entity (§ 1.27(a)) ....
By other than a small or micro
entity .....................................

$100.00
200.00400.00PART 41—PRACTICE BEFORE THE
PATENT TRIAL AND APPEAL BOARD■ 14. The authority citation for part 41

is revised to read as follows:

Authority: 35 U.S.C. 2(b)(2), 3(a)(2)(A), 21,(e) In addition to the basic national23, 32, 41, 134, 135, and Public Law 112–29.
fee, for filing or on later presentation at
any other time of each claim (whether■ 15. Section 41.20 is revised to read as
0.00 dependent or independent) in excess offollows:(2) If the search fee as set forth in
20 (note that § 1.75(c) indicates how§ 41.20 Fees.
§ 1.445(a)(2) has been paid on themultiple dependent claims areinternational application to the United
considered for fee calculation purposes):(a) Petition fee. The fee for filing aStates Patent and Trademark Office as
By a micro entity (§ 1.29) ........
$20.00 petition under this part is: $400.00.
(b) Appeal fees. (1) For filing a noticean International Searching Authority:
By a small entity (§ 1.27(a)) ....
40.00
of appeal from the examiner to the
By a micro entity (§ 1.29) ........
$30.00 By other than a small or micro
entity .....................................
80.00 Patent Trial and Appeal Board:
By a small entity (§ 1.27(a)) ....
60.00
By other than a small or micro
By a micro entity (§ 1.29) ........
$200.00(f) In addition to the basic national
entity .....................................
120.00By a small entity (§ 1.27(a)) ....
400.00fee, if the application contains, or is
By other than a small or micro(3) If an international search report on amended to contain, a multiple
entity .....................................
800.00
the international application has been
dependent claim, per application:(2)(i) For filing a brief in support of an
prepared by an International Searching
By a micro entity (§ 1.29) ........
$195.00
Authority other than the United States
By a small entity (§ 1.27(a)) ....
390.00 appeal in an application or ex partereexamination proceeding: $0.00.
International Searching Authority and is By other than a small or micro(ii) In addition to the fee for filing aentity .....................................
780.00provided, or has been previously
notice of appeal, for filing a brief incommunicated by the International(g) If the excess claims fees required
support of an appeal in an inter partes
Bureau, to the Office:by paragraphs (d) and (e) of this section
reexamination proceeding:
By a micro entity (§ 1.29) ........
$120.00 and multiple dependent claim fee
By a small entity (§ 1.27(a)) ....
240.00 required by paragraph (f) of this section
By a micro entity (§ 1.29) ........
$500.00
By other than a small or micro
By a small entity (§ 1.27(a)) ....
1,000.00
are not paid with the basic national fee
entity .....................................
480.00By other than a small or microor on later presentation of the claims forentity .....................................
2,000.00(4) In all situations not provided forwhich excess claims or multiple(3)
For
filingarequestfor
anoral
in paragraphs (b)(1), (2), or (3) of thisdependent claim fees are due, the fees
hearing before the Board in an appeal
section:required by paragraphs (d), (e), and (f)under 35 U.S.C. 134:
By a micro entity (§ 1.29) ........
$150.00 of this section must be paid or the
By a small entity (§ 1.27(a)) ....
300.00 claims canceled by amendment prior to
By a micro entity (§ 1.29) ........
$325.00
By a micro entity (§ 1.29) ........
By a small entity (§ 1.27(a)) ....
By other than a small or micro
entity .....................................

TKELLEY on DSK3SPTVN1PROD with

By a micro entity (§ 1.29) ........
By a small entity (§ 1.27(a)) ....
By other than a small or micro
entity .....................................

the expiration of the time period set for
reply by the Office in any notice of fee
deficiency in order to avoid
abandonment.
(h) Surcharge for filing any of thesearch fee, the examination fee, or theoath or declaration after the date of thecommencement of the national stage(§ 1.491(a)) pursuant to § 1.495(c):VerDate Mar<15>201017:13 Jan 17, 2013

$0.00
0.00

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18JAR2Federal Register / Vol. 78, No. 13 / Friday, January 18, 2013 / Rules and Regulations
By a small entity (§ 1.27(a)) ....
By other than a small or micro
entity .....................................

650.001,300.00(4) In addition to the fee for filing a
notice of appeal, for forwarding anappeal in an application or ex partereexamination proceeding to the Board:
By a micro entity (§ 1.29) ........
By a small entity (§ 1.27(a)) ....
By other than a small or micro
entity .....................................

$500.00
1,000.00
2,000.00■ 16. Section 41.37 is amended byrevising paragraphs (a) and (b) to readas follows:§ 41.37

Appeal brief.

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

Appeal forwarding fee.

TKELLEY on DSK3SPTVN1PROD with(a) Timing. Appellant in an
application or ex parte reexamination
proceeding must pay the fee set forth in§ 41.20(b)(4) within the later of twomonths from the date of either the

VerDate Mar<15>201017:13 Jan 17, 2013

Jkt 229001

examiner’s answer, or a decisionrefusing to grant a petition under § 1.181of this chapter to designate a new
ground of rejection in an examiner’s
answer.
(b) Failure to pay appeal forwarding
fee. On failure to fee set forth in§ 41.20(b)(4) within the period specifiedin paragraph (a) of this section, theappeal will stand dismissed.
(c) Extensions of time. Extensions oftime under § 1.136(a) of this title forpatent applications are not applicable tothe time period set forth in this section.
See § 1.136(b) of this title for extensionsof time to reply for patent applicationsand § 1.550(c) of this title for extensionsof time to reply for ex partereexamination proceedings.
PART 42—TRIAL PRACTICE BEFORE
THE PATENT TRIAL AND APPEAL
BOARD■ 18. The authority citation for part 42

is revised to read as follows:
Authority: 35 U.S.C. 2(b)(2), 6, 21, 23,
41,135, 311, 312, 316, 321–326 and Public
Law 112–29.
■ 19. Section 42.15 is revised to read as

follows:§ 42.15Fees.

(a) On filing a petition for inter partes
review of a patent, payment of thefollowing fees are due:
(1) Inter Partes Review request fee:
$9,000.00.
(2) Inter Partes Review PostInstitution fee: $14,000.00.
(3) In addition to the Inter Partes
Review request fee, for requesting

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review of each claim in excess of 20:$200.00.
(4) In addition to the Inter Partes PostInstitution request fee, for requesting
review of each claim in excess of 15:$400.00.
(b) On filing a petition for post-grant
review or covered business method
patent review of a patent, payment of
the following fees are due:
(1) Post-Grant or Covered Business
Method Patent Review request fee:
$12,000.00.
(2) Post-Grant or Covered Business
Method Patent Review Post-Institution
fee: $18,000.00.
(3) In addition to the Post-Grant or
Covered Business Method Patent
Review request fee, for requesting
review of each claim in excess of 20:$250.00.
(4) In addition to the Post-Grant or
Covered Business Method Patent
Review request fee Post-Institution
request fee, for requesting review of
each claim in excess of 15: $550.00.
(c) On the filing of a petition for a
derivation proceeding, payment of thefollowing fees is due:
(1) Derivation petition fee: $400.00.
(d) Any request requiring payment ofa fee under this part, including a written
request to make a settlement agreement
available: $400.00.
Dated: January 11, 2013.
David J. Kappos,
Under Secretary of Commerce for Intellectual
Property and Director of the United States
Patent and Trademark Office.
[FR Doc. 2013–00819 Filed 1–17–13; 8:45 am]
BILLING CODE 3510–16–P

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