			    DEPARTMENT OF COMMERCE

			  Patent and Trademark Office

			     37 CFR Parts 1 and 2

			[Docket No. 991105297-9297-01]

				 RIN 0651-AB01

		     Revision of Patent and Trademark Fees
			     for Fiscal Year 2000
   
  
AGENCY: Patent and Trademark Office, Commerce.

ACTION: Final Rule.

SUMMARY: The Patent and Trademark Office (PTO) is amending the rules of
practice in patent and trademark cases to adjust certain patent fee
amounts to conform to the fee amounts set by law in the American
Inventors Protection Act of 1999 as part of the conference report (H.
Rep. 106-479) on H.R. 3194, Consolidated Appropriations Act, Fiscal Year
2000. The text of the American Inventors Protection Act of 1999 is
contained in title IV of S. 1948, the Intellectual Property and
Communications Omnibus Reform Act of 1999, which is incorporated by
reference in Division B of the conference report. The PTO is also
adjusting certain trademark fee amounts to recover the cost of all
trademark activities as provided for in H.R. 3194 (S. 1948). In
addition, the PTO is adjusting, by a corresponding amount, two patent
fees that track the basic filing fee.

EFFECTIVE DATES: The amendments to 37 CFR 1.16, 1.20, and 1.492 are
effective on December 29, 1999. The amendments to 37 CFR 1.17 and 2.6
are effective on January 10, 2000.

FOR FURTHER INFORMATION CONTACT: Matthew Lee by telephone at (703)
305-8051, by e-mail at matthew.lee@uspto.gov, by facsimile at (703)
305-8007, or by mail marked to his attention and addressed to the
Commissioner of Patents and Trademarks, Office of Finance, Crystal Park
1, Suite 802, Washington, D.C. 20231.

SUPPLEMENTARY INFORMATION: This final rule adjusts certain patent fees
in accordance with the Consolidated Appropriations Act, Fiscal Year 2000
(H.R. 3194), which incorporates the Intellectual Property and
Communications Omnibus Reform Act of 1999 (S. 1948), and adjusts certain
trademark fees to recover costs.

Background

Section 31(a) of the Trademark Act of 1946 (15 U.S.C. 1113(a))
authorizes the Commissioner of Patents and Trademarks to annually adjust
the fees established for the filing and processing of trademark
applications, for the registration of trademarks and other marks, and
for all other services performed by the PTO related to trademarks and
other marks, to reflect aggregate fluctuations in the Consumer Price
Index (CPI) during the previous twelve months. Trademark processing fees
have not been adjusted since 1993, when the application fee was
adjusted. Other trademark fees have not been changed since 1982.

As a result of increases in filings, efforts to reduce the pendency of
trademark applications before the PTO, and to reduce the backlog of
unexamined cases, the PTO has hired additional trademark examining
attorneys and instituted an electronic filing system for trademark
applications. Current trademark fee rates are insufficient to recover
these additional costs. In addition, the PTO has employed activity-based
cost accounting principles and systems on an agency-wide basis to
measure the full cost of patent and trademark activities, including
indirect costs.To fully recover the cost of all trademark activities,
including indirect trademark operation costs, the PTO needs to adjust
trademark fees sufficiently to recover an estimated $30 million in
fiscal years 2000 and 2001. H.R. 3194 (S. 1948) authorizes the
Commissioner to make such an adjustment to trademark fees.

Patent fees were adjusted in 1998 as a result of Public Law 105-358.
Public Law 105-358 set:
   
   (1) the basic filing fee for an original utility patent application
(35 U.S.C. 41(a)(1)(A)) or a reissue patent application (35 U.S.C.
41(a)(4)(A)) at $760 ($380 for a small entity);
   
   (2) the basic national fee for an international application in which the
PTO was the International Searching Authority (ISA) but not the
International Preliminary Examining Authority (IPEA) (35 U.S.C.
41(a)(10)) at $760 ($380 for a small entity); and
   
   (3) the first patent maintenance fee (35 U.S.C. 41(b)(1)) at $940 ($470
for a small entity).
   
The Commissioner may also adjust fees set forth in 35 U.S.C. 41(a) and
(b) to reflect any fluctuations in the Consumer Price Index (CPI) during
the previous twelve months. See 35 U.S.C. 41(f). With the recent
implementation of activity-based cost accounting principles and systems
on an agency-wide basis, the PTO recognized that patent fee revenue has
been partially offsetting the indirect trademark operation costs. Since
H.R. 3194 (S. 1948) authorizes the Commissioner to adjust trademark fees
to fully cover the costs of trademark operations, an adjustment to
selective patent fees is necessary in fiscal year 2000 because those
fees will no longer be needed to offset indirect trademark operation
expenses. Thus, H.R. 3194 (S. 1948) reduces:

   (1) the basic filing fee for an original utility patent application
(35 U.S.C. 41(a)(1)(A)) or a reissue patent application (35 U.S.C.
41(a)(4)(A)) to $690 ($345 for a small entity);
   
   (2) the basic national fee for an international application in which the
PTO was the ISA but not the IPEA (35 U.S.C. 41(a)(10)) to $690 ($345 for
a small entity); and
   
   (3) the first patent maintenance fee (35 U.S.C. 41(b)(1)) to $830 ($415
for a small entity).
   
This final rule conforms the patent fees set forth in 37 CFR 1.16(a) and
(h), 1.20(e), and 1.492(a)(2) to the fee amounts specified in H.R. 3194
(S. 1948). Specifically,      1.16(a) and (h), and 1.492(a)(2) are
amended to correspond to the patent fees specified in amended 35 U.S.C.
41(a). Section 1.20(e) is amended to indicate the patent fee specified
in amended 35 U.S.C. 41(b). This final rule also adjusts two patent fees
that track the basic filing fee. Sections 1.17(r) and (s) are reduced to
correspond to the basic filing fee provided in 35 U.S.C. 41(a)(1)(A), as
amended by H.R. 3194 (S. 1948).
Section 1.53(d), which relates to a continued prosecution application
(CPA), is not being revised by this final rule. However, it should be
noted that section 1.53(d)(3) requires payment of the basic filing fee
as set forth in 37 CFR 1.16.

Section 41(g) of title 35, United States Code, provides that new fee
amounts established by the Commissioner under section 41 may take effect
30 days after notice in the Federal Register and the Official Gazette of
the Patent and Trademark Office.

In addition, this final rule adjusts trademark fees set forth in 37 CFR
2.6(a)(1), (a)(4), (a)(5), (a)(13), (a)(16), and (a)(17), to recover
costs.

Section 31 of the Trademark Act of 1946 (15 U.S.C. 1113(a)), allows new
trademark fee amounts to take effect 30 days after notice in the Federal
Register and the Official Gazette of the Patent and Trademark Office.
A comparison of the current fee amounts and the new fee amounts for
fiscal year 2000 is included as an Appendix to this final rule.

Procedures for determining the correct fee amount owed

The following subsections detail the procedures for determining the fees
owed during the transition to the new fee schedule.

Fees owed may be affected by proper use of a Certificate of Mailing or
Transmission under    1.8(a)(1), or use of "Express Mail Post Office to
Addressee" under    1.10(a).

Items for which a Certificate of Mailing or Transmission under   
1.8(a)(1) is not proper include, for example, national (including a
continued prosecution application (CPA) under    1.53(d)) and
international patent applications, and trademark applications. See 37
CFR 1.8(a)(2).

Under    1.10(a), any correspondence delivered by the "Express Mail Post
Office to Addressee" service of the United States Postal Service (USPS)
is considered filed or received in the Office on the date of deposit
with the USPS. The date of deposit with the USPS is shown by the
"date-in" on the "Express Mail" mailing label or other official USPS
notation.
   
   a. The post issuance fee for patents under 35 U.S.C. 41(b)
   
Section 41(b) of title 35, United States Code, provides for maintenance
fees. Any maintenance fee amount that is paid on or after the effective
date of the final fee adjustment will be subject to the new fee.
If a Certificate of Mailing or Transmission was used, and was proper
under    1.8(a)(1), the fee required is the lower of:
   
   (1) the fee in effect on the date the PTO receives the fee; or
   
   (2) the fee in effect on the date of mailing indicated on a proper
Certificate of Mailing or Transmission under    1.8(a)(1).
   
Under    1.10(a), any correspondence delivered by the "Express Mail Post
Office to Addressee" service of the USPS is considered filed or received
in the Office on the date of deposit with the USPS. The date of deposit
with the USPS is shown by the "date-in" on the "Express Mail" mailing
label or other official USPS notation.            
   
   b. The filing fee for patent applications filed under 35 U.S.C. 111 and
37 CFR 1.53
   
Section 111 of title 35, United States Code, provides for the filing of
a patent application with the PTO. If the filing fee for an application
filed under 35 U.S.C. 111 is received when the application is filed, the
filing fee required is the filing fee in effect on the filing date
assigned to the application. If the PTO receives the filing fee on a
date later than the filing date assigned to the application, the filing
fee required is the higher of:            
   
   (1) the filing fee in effect on the filing date assigned to the
application; or
   
   (2) the filing fee in effect on the date the PTO receives the filing fee.
   
The filing fee includes the basic fee, excess claims fees (if any),
and the multiple dependent claim fee (if any), for claims present on
filing (unless the excess or multiple dependent claims are canceled
before the filing fee is paid). Of course, if the basic filing fee is
received on a date later than the filing date assigned to the
application filed under 35 U.S.C. 111, a surcharge as set forth in   
1.16(e) is also required.

A Certificate of Mailing or Transmission under    1.8(a)(1) cannot be
used for national (including a continued prosecution application (CPA)
under    1.53(d)) and international patent applications. See 37 CFR
1.8(a)(2).

Under    1.10(a), any correspondence delivered by the "Express Mail Post
Office to Addressee" service of the USPS is considered filed or received
in the Office on the date of deposit with the USPS. The date of deposit
with the USPS is shown by the "date-in" on the "Express Mail" mailing
label or other official USPS notation.
   
   c. The fees for international patent applications entering the
national stage under 35 U.S.C. 371 and 37 CFR 1.494 or 1.495
   
Section 371 of title 35, United States Code, provides for the national
stage filing of a patent application under the Patent Cooperation
Treaty. The basic national fee for an international application entering
the national stage is due not later than the expiration of 20 months
from the priority date in the international application (or 30 months
from the priority date if the United States was elected prior to the
expiration of 19 months from the priority date). The amount of the basic
national fee that is required to be paid is the basic national fee in
effect on the date the full fee is received.

A Certificate of Mailing or Transmission under    1.8(a)(1) cannot be
used for international patent applications. See 37 CFR 1.8(a)(2).

Under    1.10(a), any correspondence delivered by the "Express Mail Post
Office to Addressee" service of the USPS is considered filed or received
in the Office on the date of deposit with the USPS. The date of deposit
with the USPS is shown by the "date-in" on the "Express Mail" mailing
label or other official USPS notation.
   
   d. For filing trademark applications under 15 U.S.C. 1051
   
Section 1051 of title 15, United States Code, provides for the filing of
trademark applications. The initial filing fee required for a trademark
application filed under 15 U.S.C. 1051 is the filing fee in effect on
the filing date assigned to the application.

Under    1.6, documents are considered filed as of the date of receipt
at the PTO, unless the documents are filed under    1.10, which provides
for filing by Express Mail. Under    1.10(a), any correspondence
delivered by the "Express Mail Post Office to Addressee" service of the
USPS is considered filed or received in the Office on the date of
deposit with the USPS. The date of deposit with the USPS is shown by the
"date-in" on the "Express Mail" mailing label or other official USPS
notation.

A Certificate of Mailing or Transmission under    1.8(a)(1) cannot be
used for filing a trademark application. See 37 CFR 1.8(a)(2).

Under    2.21(a)(5), a trademark applicant must submit the filing fee
for at least one class of goods or services before the application can
be given a filing date. If the trademark application is accompanied by
the fee for at least a single class of goods or services, but does not
include fees sufficient to cover all the classes in the application, the
application will be given a filing date, and the applicant will be
required to submit the fees for the additional class(es) during
examination. If the applicant submits fee(s) for additional class(es)
after the application filing date, the fee(s) in effect on the date the
fee(s) for the additional class(es) is received at the PTO will apply.
The applicant may use a Certificate of Mailing or Transmission under 
  1.8(a)(1) to file the additional fee(s).

   e. For all other trademark process fees affected by this notice.
   
For trademark process fees other than the initial fee for filing a
trademark application, the applicant may use a Certificate of Mailing or
Transmission under    1.8(a)(1). If a Certificate of Mailing or
Transmission is used to mail or transmit the fee, and the Certificate
meets the requirements of    1.8(a)(1), the fee in effect on the date
indicated on the Certificate of Mailing or Transmission will apply.

Owners of registered trademarks should note that failure to timely
submit the required fee for an affidavit of continued use or excusable
nonuse under 15 U.S.C. 1058, or a renewal application under 15 U.S.C.
1059, may also result in a deficiency surcharge under 15 U.S.C.
1058(c)(2) or 15 U.S.C. 1059(a). See      2.164 and 2.185.

Other Considerations

This final rule contains no information collection within the meaning of
the Paperwork Reduction Act of 1995, 44 U.S.C. 3501 et seq. This final
rule has been determined to be not significant for purposes of Executive
Order 12866.

This final rule adjusts certain patent fees and trademark fees indicated
in Parts 1 and 2 of title 37, Code of Federal Regulations, to the fee
amounts set by law or provided for by law. Therefore, prior notice and
an opportunity for public comment are not required pursuant to 5 U.S.C.
553(a)(2) (or any other law). As prior notice and an opportunity for
public comment are not required pursuant to 5 U.S.C. 553, or any other
law, the analytical requirements of the Regulatory Flexibility Act, 5
U.S.C. 601 et seq., are inapplicable.

Lists of Subjects

37 CFR Part 1

Administrative practice and procedure, Inventions and patents, Reporting
and record keeping requirements, Small businesses.

		  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. 6, unless otherwise noted.

2. Section 1.16 is amended by revising paragraphs (a) and (h), to read
as follows:

   1.16 National application filing fees.

(a) Basic fee for filing each application for an original patent, except
provisional, design or plant applications:
   
   By a small entity (   1.9(f))          $345.00
   By other than a small entity           $690.00
   
*****

(h) Basic fee for filing each reissue application:

   By a small entity (   1.9(f))          $345.00
   By other than a small entity           $690.00
   
*****

3. Section 1.17 is amended by revising paragraphs (r) and (s), to read
as follows:
   
1.17 Patent application processing fees.

*****

(r) For entry of a submission after final rejection under   1.129(a):
   
   By a small entity (   1.9(f))          $345.00
   By other than a small entity           $690.00
   
(s) For each additional invention requested to be examined under  
1.129(b):
   
   By a small entity (   1.9(f))          $345.00
   By other than a small entity           $690.00
   
4. Section 1.20 is amended by revising paragraph (e) to read as
follows:

   1.20 Post issuance fees.

*****

(e) For maintaining an original or reissue patent, except a design or
plant patent, based on an application filed on or after December 12,
1980, in force beyond four years; the fee is due by three years and six
months after the original grant:
   
   By a small entity (   1.9(f))          $415.00
   By other than a small entity           $830.00
   
*****

5. Section 1.492 is amended by revising paragraph (a)(2) to read as
follows:

   1.492 National stage fees.

*****

(a) ***

*****

(2) Where no international preliminary examination fee as set forth in  
 1.482 has been paid to the United States Patent and Trademark Office,
but an international 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 (   1.9(f))          $345.00
   By other than a small entity           $690.00
   
*****
		 Part 2 - Rules of Practice in Trademark Cases

1. The authority citation for 37 CFR Part 2 continues to read as follows:
Authority: 15 U.S.C. 1123; 35 U.S.C. 6, unless otherwise noted.
2. Section 2.6 is amended by revising paragraphs (a)(1), (a)(4), (a)(5),
(a)(13), (a)(16), and (a)(17), to read as follows:

   2.6 Trademark fees.

*****

(a) ***

   (1) For filing an application, per class          	$325.00
   
*****

   (4) For filing a request under section 1(d)(2) of the Act for a
six-month extension of time for filing a statement of use under section
1(d)(1) of the Act, per class          		     	$150.00
   
   (5) For filing an application for renewal of a registration, 
per class     					     	$400.00
   
*****
   
   (13) For filing an affidavit under 15 of the Act, per class          
						     	$200.00
   
*****

   (16) For filing a petition to cancel, per class   	$300.00
   

   (17) For filing a notice of opposition, per class 	$300.00
   
*****

November 30, 1999            				  Q. TODD DICKINSON
					Assistant Secretary of Commerce and
				     Commissioner of Patents and Trademarks
