[Federal Register Volume 88, Number 108 (Tuesday, June 6, 2023)]
[Rules and Regulations]
[Pages 36956-36958]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2023-11917]
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DEPARTMENT OF COMMERCE
Patent and Trademark Office
37 CFR Part 1
[Docket No.: PTO-P-2018-0031]
RIN 0651-AD31
Setting and Adjusting Patent Fees During Fiscal Year 2020
AGENCY: United States Patent and Trademark Office, Department of
Commerce.
ACTION: Final rule; delay of effective date and final rule.
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SUMMARY: The United States Patent and Trademark Office (USPTO)
published a final rule in the Federal Register on August 3, 2020, that
includes a fee for patent applications that are not filed in the DOCX
format, except for design, plant, or provisional applications. The
effective date of this new fee was most recently delayed in a final
rule published in the Federal Register on March 27, 2023, and was
scheduled to become effective on June 30, 2023. Through this final
rule, the USPTO is delaying the effective date of this fee until
January 17, 2024.
DATES: This final rule is effective on January 17, 2024. As of June 6,
2023, the effective date of amendatory instruction 2.i. (affecting 37
CFR 1.16(u)), published at 85 FR 46932 on August 3, 2020; and delayed
at 86 FR 66192 on November 22, 2021, and at 87 FR 80073 on December 29,
2022; and as further amended at 88 FR 17147 on March 22, 2023; and
thereafter delayed at 88 FR 18052 on March 27, 2023, is further delayed
until January 17, 2024. The change to 37 CFR 1.16(u) in amendatory
instruction 2.i., published at 85 FR 46932 on August 3, 2020, is
applicable only to nonprovisional utility applications filed under 35
U.S.C. 111 for an original patent on or after January 17, 2024.
FOR FURTHER INFORMATION CONTACT: Mark O. Polutta, Senior Legal Advisor,
Office of Patent Legal Administration, at
[[Page 36957]]
571-272-7709; or Eugenia A. Jones, Senior Legal Advisor, Office of
Patent Legal Administration, at 571-272-7727. You can also send
inquiries to patentpractice@uspto.gov.
SUPPLEMENTARY INFORMATION: On August 3, 2020, the USPTO published a
final rule in the Federal Register that included a new fee set forth in
Sec. 1.16(u) with an effective date of January 1, 2022. See Setting
and Adjusting Patent Fees During Fiscal Year 2020, 85 FR 46932. As
specified in Sec. 1.16(u), the fee is due for any application filed
under 35 U.S.C. 111 for an original patent--except design, plant, or
provisional applications--where the specification, claims, and/or
abstract do not conform to the USPTO requirements for submission in the
DOCX format. Therefore, the fee is due for nonprovisional utility
applications filed under 35 U.S.C. 111, including continuing
applications, that are not filed in the DOCX format.
Currently, applicants may file patent applications in the DOCX
format through EFS-Web and Patent Center. The USPTO plans to retire
EFS-Web and therefore encourages stakeholders and applicants to review
the information about Patent Center available at www.uspto.gov/PatentCenter. The USPTO continues to hold many discussions and training
sessions with stakeholders to ensure a fair and reasonable transition
to the DOCX format.
The USPTO is delaying the effective date of the fee set forth in
Sec. 1.16(u) until January 17, 2024. This further delay will give the
USPTO an opportunity, through a separate Federal Register Notice, to
invite and consider public comments on a proposed information
collection pertaining to the impact of the Sec. 1.16(u) fee on the
filing of nonprovisional utility applications under 35 U.S.C. 111,
including continuing applications. As required by the Paperwork
Reduction Act of 1995 (PRA), the USPTO will submit the proposed
information collection together with a summary of any received comments
to the Office of Management and Budget for review under the PRA.
Federal Register Notices published by the USPTO pertaining to the PRA
are available at www.uspto.gov/learning-and-resources/federal-register-notices/federal-register-notices-2023. The USPTO expects that this
delay will afford sufficient time to complete the PRA clearance
process.
This delay will also provide applicants more time to adjust to
filing patent applications in the DOCX format. Applicants are
encouraged to begin filing patent applications in the DOCX format
before the new effective date of the fee. The USPTO also reminds
applicants that they can file test submissions through the Patent
Center training mode to practice filing in DOCX. Applicants who have
not yet taken advantage of the DOCX training sessions the USPTO hosts
are encouraged to do so. Information on filing application documents in
DOCX and a link to the DOCX training sessions are available at
www.uspto.gov/patents/docx.
Rulemaking Requirements
A. Administrative Procedure Act: This final rule revises the
effective date of a final rule published on August 3, 2020,
implementing a non-DOCX filing surcharge fee, and is a rule of agency
practice and procedure pursuant to 5 U.S.C. 553(b)(A). See JEM Broad.
Co. v. F.C.C., 22 F.3d 32 (D.C. Cir. 1994) (``[T]he `critical feature'
of the procedural exception [in 5 U.S.C. 553(b)(A)] `is that it covers
agency actions that do not themselves alter the rights or interests of
parties, although [they] may alter the manner in which the parties
present themselves or their viewpoints to the agency.' '' (quoting
Batterton v. Marshall, 648 F.2d 694, 707 (D.C. Cir. 1980))); see also
Bachow Commc'ns Inc. v. F.C.C., 237 F.3d 683, 690 (D.C. Cir. 2001)
(rules governing an application process are procedural under the
Administrative Procedure Act); Inova Alexandria Hosp. v. Shalala, 244
F.3d 342, 350 (4th Cir. 2001) (rules for handling appeals were
procedural where they did not change the substantive standard for
reviewing claims). Prior notice and an opportunity for public comment
are not required pursuant to 5 U.S.C. 553(b) or (c) (or any other law).
See Cooper Techs. Co. v. Dudas, 536 F.3d 1330, 1336-37 (Fed. Cir. 2008)
(stating that 5 U.S.C. 553, and thus 35 U.S.C. 2(b)(2)(B), do not
require notice-and-comment rulemaking for ``interpretative rules,
general statements of policy, or rules of agency organization,
procedure, or practice'' (quoting 5 U.S.C. 553(b)(A))).
Moreover, the Director of the USPTO, pursuant to the authority at 5
U.S.C. 553(b)(B), finds good cause to adopt the change to the effective
date of Sec. 1.16(u) in this final rule without prior notice and an
opportunity for public comment, as such procedures would be
impracticable and contrary to the public interest. The change to the
effective date will provide the public an opportunity to more fully
comprehend the nature of, and prepare to comply with, the DOCX format
before the new fee is effective, as well as provide the USPTO
sufficient time to complete the PRA clearance process for the new fee.
Delay of this provision to provide prior notice-and-comment procedures
is also impracticable because it would allow Sec. 1.16(u) to go into
effect before the public is ready for the DOCX format. The Director
finds good cause under 5 U.S.C. 553(d)(3) to waive the 30-day delay in
effectiveness of this rule. Immediate implementation of the delay in
the effective date of the fee is in the public interest because it will
provide the public an opportunity to more fully comprehend the nature
of, and prepare to comply with, the DOCX format before the new fee in
Sec. 1.16(u) is effective, as well as provide the USPTO sufficient
time to complete the PRA clearance process for the new fee.
B. Regulatory Flexibility Act: As prior notice and an opportunity
for public comment are not required pursuant to 5 U.S.C. 553 or any
other law, neither a regulatory flexibility analysis nor a
certification under the Regulatory Flexibility Act (5 U.S.C. 601 et
seq.) is required. See 5 U.S.C. 603.
C. Executive Order 12866 (Regulatory Planning and Review): This
rulemaking has been determined to be not significant for purposes of
Executive Order 12866 (Sept. 30, 1993).
D. Paperwork Reduction Act: The PRA (44 U.S.C. 3507(d)) requires
that the USPTO consider the impact of paperwork and other information
collection burdens imposed on the public. The USPTO has determined that
there are no new requirements for information collection associated
with this final rule.
List of Subjects for 37 CFR Part 1
Administrative practice and procedure, Biologics, Courts, Freedom
of information, Inventions and patents, Reporting and recordkeeping
requirements, Small businesses.
For the reasons stated in the preamble, the USPTO amends 37 CFR
part 1 as follows:
PART 1--RULES OF PRACTICE IN PATENT CASES
0
1. The authority citation for 37 CFR part 1 continues to read as
follows:
Authority: 35 U.S.C. 2(b)(2), unless otherwise noted.
Sec. 1.16 [Amended]
0
2. In Sec. 1.16, amend paragraph (u) introductory text by removing
``June 30,
[[Page 36958]]
2023'' and adding ``January 17, 2024'' in its place.
Katherine K. Vidal,
Under Secretary of Commerce for Intellectual Property and Director of
the United States Patent and Trademark Office.
[FR Doc. 2023-11917 Filed 6-5-23; 8:45 am]
BILLING CODE 3510-16-P