Federal Register / Vol. 70, No. 20 / Tuesday, February 1, 2005 / Rules and Regulations 5053

DEPARTMENT OF COMMERCE

Patent and Trademark Office 

37 CFR Part 1 

[Docket No.: 2005–P–052] 

RIN 0651–AB84 

Revision of Search and Examination 

Fees for Patent Cooperation Treaty 

Applications Entering the National 

Stage in the United States

AGENCY: United States Patent and 

Trademark Office, Commerce.

ACTION: Interim rule.

SUMMARY: Among other changes to 

patent and trademark fees, the 

Consolidated Appropriations Act, 2005 

(Consolidated Appropriations Act), 

splits the national fee for Patent 

Cooperation Treaty (PCT) applications 

entering the national stage into a 

separate national fee, search fee and 

examination fee, during fiscal years 

2005 and 2006. The Office is in this 

notice reducing the search fee and 

examination fee for certain PCT 

applications entering the national stage. 

The Office has implemented the 

changes to the patent fees provided in 

the Consolidated Appropriations Act in 

a separate final rule.

DATES: Effective Date: February 1, 2005. 

Applicability Date: The changes in 

this interim rule apply to all 

international applications entering the 

national stage under 35 U.S.C. 371 for 

which the basic national fee specified in 

35 U.S.C. 41 is paid on or after 

December 8, 2004. 

Comment Deadline Date: To be 

ensured of consideration, written 

comments must be received on or before 

April 4, 2005. No public hearing will be 

held.

ADDRESSES: Comments should be sent 

by electronic mail message over the 

Internet addressed to 

AB84.Comments@uspto.gov. Comments 

may also be submitted by mail 

addressed to: Mail Stop Comments—

Patents, Commissioner for Patents, P.O. 

Box 1450, Alexandria, VA 22313–1450, 

or by facsimile to (571) 273–7735, 

marked to the attention of Robert W. 

Bahr. Although comments may be 

submitted by mail or facsimile, the 

Office prefers to receive comments via 

the Internet. If comments are submitted 

by mail, the Office prefers that the 

comments be submitted on a DOS 

formatted 31⁄2 inch disk accompanied by 

a paper copy.

Comments may also be sent by 

electronic mail message over the 

Internet via the Federal eRulemaking 

Portal. See the Federal eRulemaking 

Portal Web site (http://

www.regulations.gov) for additional 

instructions on providing comments via 

the Federal eRulemaking Portal. 

The comments will be available for 

public inspection at the Office of the 

Commissioner for Patents, located in 

Madison East, Tenth Floor, 600 Dulany 

Street, Alexandria, Virginia, and will be 

available through anonymous file 

transfer protocol (ftp) via the Internet 

(address: http://www.uspto.gov). 

Because comments will be made 

available for public inspection, 

information that is not desired to be 

made public, such as an address or 

phone number, should not be included 

in the comments.

FOR FURTHER INFORMATION CONTACT:

Robert W. Bahr, Senior Patent Attorney, 

Office of the Deputy Commissioner for 

Patent Examination Policy, by telephone 

at (571) 272–8800, by mail addressed to: 

Mail Stop Comments—Patents, 

Commissioner for Patents, P.O. Box 

1450, Alexandria, VA 22313–1450, or by 

facsimile to (571) 273–7735, marked to 

the attention of Robert W. Bahr.

SUPPLEMENTARY INFORMATION: The 

Consolidated Appropriations Act 

(section 801 of Division B) provides that 

35 U.S.C. 41(a), (b), and (d) shall be 

administered in a manner that revises 

patent application fees (35 U.S.C. 41(a)) 

and patent maintenance fees (35 U.S.C. 

41(b)), and provides for a separate filing 

or national fee (35 U.S.C. 41(a)), search 

fee (35 U.S.C. 41(d)(1)), and 

examination fee (35 U.S.C. 41(a)(3)) 

during fiscal years 2005 and 2006. See

Public Law 108–447, 118 Stat. 2809 

(2004). The Consolidated 

Appropriations Act provides a fee of 

$500.00 for the search of the national 

stage of each international application 

(Section 803(c)(1) of Division B) and a 

fee of $200.00 for the examination of the 

national stage of each international 

application (35 U.S.C. 41(a)(3)(D)) 

during fiscal years 2005 and 2006. 

35 U.S.C. 376 provides that: ‘‘[t]he 

Director may also refund any part of the 

search fee, the national fee, the 

preliminary examination fee and any 

additional fees, where he determines 

such refund to be warranted.’’ See 35 

U.S.C. 376(b). Under the authority 

provided in 35 U.S.C. 376: (1) The 

Office will refund the entire search fee 

less $100.00 ($50.00 for small entities) 

if the search fee as set forth in 

§§ 1.445(a)(2) and (a)(3) has been paid 

on the international application to the 

United States Patent and Trademark 

Office as an International Searching 

Authority for all of the claims presented 

in the application entering the national 

stage; and (2) the Office will refund 

$100.00 ($50.00 for small entities) if an 

international search report on the 

international application has been 

prepared and is provided to the Office 

no later than the time at which the 

search fee is paid. In addition, under the 

authority provided in 35 U.S.C. 376, the 

Office will refund the entire 

examination fee less $100.00 ($50.00 for 

small entities) if an international 

preliminary examination report on the 

international application prepared by 

the United States International 

Preliminary Examining Authority states 

that the criteria of novelty, inventive 

step (non-obviousness), and industrial 

applicability, as defined in PCT Article 

33(1) to (4) have been satisfied for all of 

the claims presented in the application 

entering the national stage. 

Discussion of Specific Rules 

Title 37 of the Code of Federal 

Regulations, Part 1, is amended as 

follows: 

Section 1.492: Section 1.492(b) sets 

forth the search fees for an international 

application entering the national stage 

under 35 U.S.C. 371. Section 1.492(b) is 

amended to provide that: (1) The search 

fee for an international application 

entering the national stage under 35 

U.S.C. 371 is $100.00 ($50.00 for a small 

entity) if the search fee as set forth in 

§§ 1.445(a)(2) and (a)(3) has been paid 

on the international application to the 

United States Patent and Trademark 

Office as an International Searching 

Authority for all of the claims presented 

in the application entering the national 

stage; (2) the search fee for an 

international application entering the 

national stage under 35 U.S.C. 371 is 

$400.00 ($200.00 for a small entity) if an 

international search report on the 

international application has been 

prepared and is provided to the Office 

no later than the time at which the 

search fee is paid; and (3) the search fee 

for an international application entering 

the national stage under 35 U.S.C. 371 

is $500.00 ($250.00 for a small entity) in 

all other situations.

Section 1.492(c) sets forth the 

examination fee for an international 

application entering the national stage 

under 35 U.S.C. 371. Section 1.492(c) is 

amended to provide that: (1) The 

examination fee for an international 

application entering the national stage 

under 35 U.S.C. 371 is $100.00 ($50.00 

for a small entity), if an international 

preliminary examination report on the 

international application prepared by 

the United States International 

Preliminary Examining Authority states 

that the criteria of novelty, inventive 

step (non-obviousness), and industrial 

5054 Federal Register / Vol. 70, No. 20 / Tuesday, February 1, 2005 / Rules and Regulations 

applicability, as defined in PCT Article 

33(1) to (4), have been satisfied for all 

of the claims presented in the 

application entering the national stage; 

and (2) the examination fee for an 

international application entering the 

national stage under 35 U.S.C. 371 is 

$200.00 ($100.00 for a small entity) in 

all other situations. 

Section 1.496: Section 1.496 is 

amended to revise its references to 

§ 1.492 to reflect the changes in § 1.492. 

Rule Making Considerations 

Administrative Procedure Act:

Pursuant to its authority under 35 

U.S.C. 376(b), the Office has reduced the 

patent fees set forth in § 1.492 to less 

than the amount specified in 35 U.S.C. 

41. Existing rights and obligations are 

not otherwise changed. The Office has 

good cause to implement this fee 

reduction without prior notice and 

comment. It is in the public interest to 

immediately implement the reduced 

search and examination fees because 

delay in the adoption of these fee 

reductions would cause harm to those 

applicants who currently meet the 

conditions for entitlement to a fee 

reduction. Without immediate 

implementation, applicants who are 

currently filing search and examination 

fees in order to avoid abandonment of 

their applications will be unnecessarily 

paying higher search and examination 

fees. The Office believes the public 

wants these new reduced fees to become 

effective as soon as possible as the 

public should benefit from the 

efficiencies and savings resulting 

therefrom. In addition, the Office 

believes that prior notice and comment 

is unnecessary because it does not 

expect the public to object to the 

reduction of search and examination 

fees. Moreover, the Office does not 

believe the public needs time to 

conform its conduct so as to avoid 

violation of these regulations. In order 

to give the public the immediate benefit 

of the Office’s decision to reduce 

specified search and examination fees, 

the Office finds, pursuant to the 

authority provided at 5 U.S.C. 553(b)(B), 

good cause to adopt this change without 

prior notice and an opportunity for 

public comment, as such procedures are 

contrary to the public interest. See Nat. 

Customs Brokers & Forwarders Ass’n v. 

U.S., 59 F.3d 1219, 1223–24 (Fed. Cir. 

1995). 

Nothing in this or any other law 

requires delayed implementation of the 

fee reductions. 35 U.S.C. 41(g) provides 

that: ‘‘[n]o fee established by the 

Director under [35 U.S.C. 41] shall take 

effect until at least 30 days after notice 

of the fee has been published in the 

Federal Register and in the Official 

Gazette of the Patent and Trademark 

Office.’’ Since the reduced search fees 

and examination fees specified in 

§§ 1.492(b) and (c) are established by the 

Office on the basis of the Office’s 

authority under 35 U.S.C. 376(b) (rather 

than the authority in 35 U.S.C. 41), the 

thirty-day advance publication 

requirement of 35 U.S.C. 41(g) does not 

apply to the reduced search fees and 

examination fees specified in § 1.492(b) 

and (c). 

Accordingly, the changes in this 

interim rule may be adopted without 

prior notice and opportunity for public 

comment under 5 U.S.C. 553(b) and (c), 

or thirty-day advance publication under 

5 U.S.C. 553(d) or 35 U.S.C. 41(g). 

Regulatory Flexibility Act: As prior 

notice and an opportunity for public 

comment are not required pursuant to 5 

U.S.C. 553 (or any other law), neither a 

regulatory flexibility analysis nor a 

certification under the Regulatory 

Flexibility Act (5 U.S.C. 601 et seq.) are 

required. See 5 U.S.C. 603. 

Executive Order 13132: This rule 

making does not contain policies with 

federalism implications sufficient to 

warrant preparation of a Federalism 

Assessment under Executive Order 

13132 (Aug. 4, 1999). 

Executive Order 12866: This rule 

making has been determined to be not 

significant for purposes of Executive 

Order 12866 (Sept. 30, 1993).

Paperwork Reduction Act: This 

interim rule involves information 

collection requirements that are subject 

to review by the Office of Management 

and Budget (OMB) under the Paperwork 

Reduction Act of 1995 (44 U.S.C. 3501 

et seq.). The collection of information 

involved in this interim rule has been 

reviewed and previously approved by 

OMB under the following control 

number: 0651–0021. The Office is not 

resubmitting an information collection 

package to OMB for its review and 

approval because the changes in this 

interim rule do not affect the 

information collection requirements 

associated with the information 

collection under this OMB control 

number. 

Interested persons are requested to 

send comments regarding this 

information collection, including 

suggestions for reducing this burden, to 

Robert J. Spar, Director, Office of Patent 

Legal Administration, United States 

Patent and Trademark Office, P.O. Box 

1450, Alexandria, VA 22313–1450, or to 

the Office of Information and Regulatory 

Affairs of OMB, New Executive Office 

Building, 725 17th Street, NW., Room 

10235, Washington, DC 20503, 

Attention: Desk Officer for the United 

States Patent and Trademark Office. 

Notwithstanding any other provision 

of law, no person is required to respond 

to nor shall a person be subject to a 

penalty for failure to comply with a 

collection of information subject to the 

requirements of the Paperwork 

Reduction Act unless that collection of 

information displays a currently valid 

OMB control number.

List of Subjects in 37 CFR Part 1 

Administrative practice and 

procedure, Courts, Freedom of 

Information, Inventions and patents, 

Reporting and recordkeeping 

requirements, Small businesses.

■ For the reasons set forth in the 

preamble, 37 CFR part 1 is amended as 

follows:

PART 1—RULES OF PRACTICE IN 

PATENT CASES

■ 1. The authority citation for 37 CFR 

part 1 continues to read as follows:

Authority: 35 U.S.C. 2(b)(2).

■ 2. Section 1.492 is amended by 

revising paragraphs (b) and (c) to read as 

follows:

§ 1.492 National stage fees.

* * * * *

(b) Search fee for an international 

application entering the national stage 

under 35 U.S.C. 371 if the basic national 

fee was not paid before December 8, 

2004:

(1) If the search fee as set forth in 

§§ 1.445(a)(2) has been paid on the 

international application to the United 

States Patent and Trademark Office as 

an International Searching Authority:

By a small entity (§ 1.27(a)) ........ $50.00 

By other than a small entity ....... $100.00 

(2) If an international search report on 

the international application has been 

prepared and is provided to the Office 

no later than the time at which the 

search fee is paid:

By a small entity (§ 1.27(a)) ........ $200.00 

By other than a small entity ....... $400.00 

(3) In all situations not provided for 

in paragraphs (b)(1) or (b)(2) of this 

section:

By a small entity (§ 1.27(a)) ........ $250.00 

By other than a small entity ....... $500.00 

(c) The examination fee for an 

international application entering the 

national stage under 35 U.S.C. 371 if the 

basic national fee was not paid before 

December 8, 2004: 

(1) If an international preliminary 

examination report on the international 

application prepared by the United 

States International Preliminary 

Examining Authority states that the 

Federal Register / Vol. 70, No. 20 / Tuesday, February 1, 2005 / Rules and Regulations 5055

criteria of novelty, inventive step (nonobviousness), and industrial 

applicability, as defined in PCT Article 

33(1) to (4) have been satisfied for all of 

the claims presented in the application 

entering the national stage:

By a small entity (§ 1.27(a)) ........ $50.00 

By other than a small entity ....... $100.00 

(2) In all situations not provided for 

in paragraph (c)(1) of this section:

By a small entity (§ 1.27(a)) ........ $100.00 

By other than a small entity ....... $200.00 

* * * * *

■ 3. Section 1.496 is amended by 

revising paragraph (b) to read as follows:

§ 1.496 Examination of international 

applications in the national stage.

* * * * *

(b) A national stage application filed 

under 35 U.S.C. 371 may have paid 

therein the examination fee as set forth 

in § 1.492(c)(1) if it contains, or is 

amended to contain, at the time of entry 

into the national stage, only claims 

which have been indicated in an 

international preliminary examination 

report prepared by the United States 

Patent and Trademark Office as 

satisfying the criteria of PCT Article 

33(1) through (4) as to novelty, 

inventive step and industrial 

applicability. Such national stage 

applications in which the examination 

fee as set forth in § 1.492(c)(1) has been 

paid may be amended subsequent to the 

date of entry into the national stage only 

to the extent necessary to eliminate 

objections as to form or to cancel 

rejected claims. Such national stage 

applications in which the examination 

fee as set forth in § 1.492(c)(1) has been 

paid will be taken up out of order.

Dated: January 24, 2005. 

Jon W. Dudas, 

Under Secretary of Commerce for Intellectual 

Property and Director of the United States 

Patent and Trademark Office.

[FR Doc. 05–1850 Filed 1–31–05; 8:45 am] 

BILLING CODE 3510–16–P

POSTAL SERVICE

39 CFR Part 111 

Repositionable Notes on Letter and 

Flat Sized Mailpieces

AGENCY: Postal Service.

ACTION: Interim rule.

SUMMARY: The Postal Service is 

implementing an experimental 

classification, Repositionable Notes 

(RPNs), as a one-year provisional service 

allowing mailers to attach a reusable 

self-adhesive message note to the 

outside envelope or paper cover of 

discount First-Class Mail, Standard 

Mail, or Periodicals rate mailpieces for 

a fee. RPNs add impact, value, and 

ultimately a greater return on 

investment for direct mailers by calling 

attention to a product or service. This 

enhanced value to direct mail will 

provide an opportunity for the Postal 

Service to drive the growth of direct 

mail.

DATES: Effective Date: This interim rule 

is effective on April 3, 2005, and expires 

on April 3, 2006.

FOR FURTHER INFORMATION CONTACT:

Donald Lagasse, 202–268–7269; 

Donald.T.Lagasse@usps.gov.

SUPPLEMENTARY INFORMATION: On 

January 11, 2005, following the 

recommended decision of the Postal 

Rate Commission issued on December 

10, 2004, the Governors of the Postal 

Service approved a provisional 

classification for repositionable notes 

(RPN). It is important to note that this 

provisional classification does not 

change any of the current rate eligibility 

standards for discount First-Class Mail 

and Standard Mail letters. 

The current standards allow mailers 

to place RPNs on First-Class Mail and 

Standard Mail letter-size mailpieces 

claimed at automation rates at no 

additional charge. This provisional 

classification applies a fee to the use of 

RPNs and expands the current standards 

to allow RPNs on all letter-size and flatsize mailpieces mailed at discount FirstClass Mail, Standard Mail, or 

Periodicals rates. 

To be eligible, RPNs attached to 

discount First-Class Mail, Standard 

Mail, or Periodicals rate pieces must 

meet the standards for RPNs in this 

interim rule. RPNs must: 

• Measure 3 inches by 3 inches, plus 

or minus 1⁄8 inch for either dimension. 

• Not contain phosphorescent or red 

fluorescent colorants. 

• Not be manually affixed. 

• Be adhered with a 3⁄4 inch (plus 3⁄4

inch or minus 1⁄16 inch) adhesive strip 

across the top portion on the reverse 

side of the note. 

• Not be placed in a manner that 

interferes with the delivery address, rate 

markings, or postage. 

• Not display a specific address or 

ZIP Code. References to general 

landmarks are permissible. 

In addition to the physical standards 

stated above, the written and graphic 

characteristics of the information 

appearing on RPNs are considered when 

determining eligibility of mailpieces 

mailed at Standard Mail and Nonprofit 

Standard Mail rates. 

In addition to the postage for the host 

piece, the rates for RPNs are as follows: 

• $0.005 (1⁄2cent) per piece for RPNs 

attached to discount First-Class Mail 

letter- or flat-size pieces. 

• $0.015 (11⁄2 cents) per piece for 

RPNs attached to Standard Mail or 

Periodicals letter- or flat-size pieces. 

Again, note that current rate eligibility 

standards for discount First-Class Mail 

and Standard Mail letter-size mailpieces 

are staying the same. 

This provisional service will be 

implemented on April 3, 2005, and 

expire on April 3, 2006. The Postal 

Service will give notice before 

expiration about whether the service 

will be allowed to expire, made 

permanent, or extended in some way. 

Accordingly, the Postal Service 

hereby adopts the following regulations 

on an interim basis. Although exempt 

from the notice and comment 

requirements of the Administrative 

Procedure Act (5 U.S.C. 410 (a)), the 

Postal Service invites comments on the 

following revisions to the Domestic Mail 

Manual, incorporated by reference in 

the Code of Federal Regulations. See 39 

CFR Part 111.

List of Subjects in 39 CFR Part 111 

Administrative Practice and 

Procedure, Postal Service.

PART 111—[AMENDED]

■ 1. The authority citation for 39 CFR 

part 111 continues to read as follows:

Authority: U.S.C. 552(a); 39 U.S.C. 101, 

401, 403, 404, 414, 3001–3011, 3201–3219, 

3403–3406, 3621, 3626, 5001.

■ 2. Revise the following sections of the 

Domestic Mail Manual (DMM) as set 

forth below: 

C Characteristics

* * * * *

C800 Automation-Compatible Mail

* * * * *

C810 Letters and Cards

* * * * *

7.0 REPOSITIONABLE NOTES 

[Remove C810.7 and all subsections. 

This will be moved to the G900 section 

in order to change this service to an 

experiment.]

* * * * *

G General Information

* * * * *

G000 The USPS and Mailing 

Standards

* * * * *

G040 Information Resources

* * * * *