Setting and Adjusting Patent Fees During Fiscal Year 2025

DEPARTMENT OF COMMERCE <SUBAGY>Patent and Trademark Office</SUBAGY> <CFR>37 CFR Parts 1, 41, and 42</CFR> <DEPDOC>[Docket No. PTO-P-2022-0033]</DEPDOC> <RIN>RIN 0651-AD64</RIN> <SUBJECT>Setting and Adjusting Patent Fees During Fiscal Year 2025</SUBJECT> <HD SOURCE="HED">AGENCY:</HD> United States Patent and Trademark Office, Department of Commerce. <HD SOURCE="HED">ACTION:</HD> Notice of proposed rulemaking. <SUM> <HD SOURCE="HED">SUMMARY:</HD> The United States Patent and Trademark Office (USPTO) proposes to set or adjust patent fees as authorized by the Leahy-Smith America Invents Act (AIA), as amended by the Study of Underrepresented Classes Chasing Engineering and Science Success Act of 2018 (SUCCESS Act). The proposed fee adjustments are needed to provide the USPTO with sufficient aggregate revenue to recover the aggregate costs of patent operations in future years (based on assumptions and estimates found in the agency's Fiscal Year 2025 Congressional Justification (FY 2025 Budget)), including implementing the USPTO 2022-2026 Strategic Plan (Strategic Plan). </SUM> <EFFDATE> <HD SOURCE="HED">DATES:</HD> The USPTO solicits comments from the public on this proposed rule. Written comments must be received on or before June 3, 2024 to ensure consideration. </EFFDATE> <HD SOURCE="HED">ADDRESSES:</HD> Written comments on proposed patent fees must be submitted through the Federal eRulemaking Portal at <E T="03">https://www.regulations.gov.</E> To submit comments via the portal, commenters should go to <E T="03">https://www.regulations.gov/docket/PTO-P-2022-0033</E> or enter docket number PTO-P-2022-0033 on the <E T="03">https://www.regulations.gov</E> homepage and select the “Search” button. The site will provide search results listing all documents associated with this docket. Commenters can find a reference to this document and select the “Comment” button, complete the required fields, and enter or attach their comments. Attachments to electronic comments will be accepted in Adobe portable document format (PDF) or Microsoft Word format. Because comments will be made available for public inspection, information that the submitter does not desire to make public, such as an address or phone number, should not be included in the comments. Visit the Federal eRulemaking Portal for additional instructions on providing comments via the portal. If electronic submission of comments is not possible, please contact the USPTO using the contact information below in the <E T="02">FOR FURTHER INFORMATION CONTACT</E> section of this document for special instructions. <FURINF> <HD SOURCE="HED">FOR FURTHER INFORMATION CONTACT:</HD> Brendan Hourigan, Director, Office of Planning and Budget, at 571-272-8966, or <E T="03">Brendan.Hourigan@uspto.gov;</E> or C. Brett Lockard, Director, Forecasting and Analysis Division, at 571-272-0928, or <E T="03">Christopher.Lockard@uspto.gov</E> . </FURINF> <SUPLINF> <HD SOURCE="HED">SUPPLEMENTARY INFORMATION:</HD> <HD SOURCE="HD1">I. Executive Summary</HD> <HD SOURCE="HD2">A. Introduction</HD> The USPTO publishes this notice of proposed rulemaking (NPRM or proposed rule) under section 10 of the AIA (section 10), Public Law 112-29, 125 Stat. 284, as amended by the SUCCESS Act, Public Law 115-273, 132 Stat. 4158, which authorizes the Under Secretary of Commerce for Intellectual Property and Director of the USPTO to set or adjust by rule any patent fee established, authorized, or charged under title 35 of the United States Code (U.S.C.) for any services performed, or materials furnished, by the agency. Section 10 prescribes that fees may be set or adjusted only to recover the aggregate estimated costs to the USPTO for processing, activities, services, and materials relating to patents, including administrative costs with respect to such patent fees. Section 10 authority includes flexibility to set individual fees in a way that furthers key policy factors, while considering the cost of the respective services. Section 10 also establishes certain procedural requirements for setting or adjusting fee regulations, such as public hearings and input from the Patent Public Advisory Committee (PPAC) and congressional oversight. PPAC held a public hearing on the USPTO's preliminary patent fee proposals on May 18, 2023, and released a report (PPAC Report) on August 14, 2023, containing its comments, advice, and recommendations on the preliminary fee proposals. The USPTO considered and analyzed the PPAC Report before publishing the fee proposals in this NPRM. <HD SOURCE="HD2">B. Purpose of This Action</HD> Based on a biennial review of fees, costs, and revenues that began in fiscal year (FY) 2021, the USPTO concluded that fee adjustments are necessary to provide the agency with sufficient financial resources to facilitate the effective administration of the U.S. patent system, including implementing the USPTO 2022-2026 Strategic Plan, available on the agency website at <E T="03">https://www.uspto.gov/StrategicPlan.</E> The USPTO reviewed and analyzed the overall balance between the agency's estimated revenue and costs over the next five years (based on current projections) under this proposed rule. The proposed fees will help stabilize the USPTO's finances by offsetting the forecasted increase in aggregate costs and maintaining the patent operating reserve in the desired operating range. The patent operating reserve mitigates financing risk and enables the agency to deliver reliable and predictable service levels, while positioning it to undertake initiatives that encourage participation in the innovation ecosystem. The individual fee proposals align with the USPTO's strategic goals and its fee structure philosophy, including the agency's four key fee setting policy factors: (1) promote innovation strategies; (2) align fees with the full costs of products and services; (3) facilitate effective administration of the U.S. patent system; and (4) offer application processing options as discussed in detail in Part IV: Rulemaking Goals and Strategies. The proposed fee adjustments will enable the USPTO to accomplish its mission to drive U.S. innovation, inclusive capitalism, and global competitiveness. The USPTO's goal is to drive innovation, entrepreneurship, and creativity for the benefit of all Americans and people around the world. <HD SOURCE="HD2">C. Summary of Provisions Impacted by This Action</HD> The USPTO proposes to set or adjust 455 patent fees for undiscounted, small, and micro entities (any reference herein to “undiscounted entity” includes all entities other than those with established entitlement to either a small or micro entity fee discount, see Part II: Legal Framework for more information), including the introduction of 73 new fees. Overall, the routine fees to obtain a patent ( <E T="03">i.e.,</E> filing, search, examination, and issue fees) will increase under this NPRM relative to the current fee schedule to ensure financial sustainability and accommodate increases needed to improve the predictability and reliability of patent intellectual property (IP) protection (discussed in detail below). Applicants who meet the eligibility criteria for small or micro entity discounts will continue to pay a reduced fee for the fees eligible for discount under AIA section 10(b). Additional information describing the proposed fee adjustments is included in Part V: Individual Fee Rationale in this rulemaking and in the “Table of Patent Fees—Current, Proposed, and Unit Cost” (Table of Patent Fees) available on the fee setting section of the USPTO website at <E T="03">https://www.uspto.gov/FeeSettingAndAdjusting.</E> <HD SOURCE="HD2">D. Summary of Costs and Benefits of This Action</HD> This proposed rule is economically significant and requires a Regulatory Impact Analysis (RIA) under Executive Order 12866 Regulatory Planning and Review, (Sept. 30, 1993). The USPTO prepared an RIA to analyze the costs and benefits of the NPRM over a five-year period, FY 2025-2029. The RIA includes an analysis of how well the four alternatives align with the rulemaking strategies and goals, which are comprised of strategic priorities (goals, objectives, and key performance strategies) from the Strategic Plan; and fee setting policy factors. From this conceptual framework, the USPTO assessed the absolute and relative qualitative costs and benefits of each alternative. Consistent with OMB Circular A-4, “Regulatory Analysis,” this proposed rule involves a transfer payment from one group to another. The USPTO recognizes that it is very difficult to precisely monetize and quantify social costs and benefits resulting from deadweight loss of a transfer rule such as this proposed rule. The costs and benefits identified and analyzed in the RIA are strictly qualitative. Qualitative costs and benefits have effects that are difficult to express in either dollar or numerical values. Monetized costs and benefits, on the other hand, have effects that can be expressed in dollar values. The USPTO did not identify any monetized costs and benefits of this proposed rule, but found this proposed rule has significant qualitative benefits and only minimal costs. The qualitative costs and benefits that the RIA assesses are: (1) fee schedule design—a measure of how well the fee schedule aligns to the key fee setting policy factors; and (2) securing aggregate revenue to recover aggregate cost—a measure of whether the alternative provides adequate revenue to support the core mission and strategic priorities described in the NPRM, Strategic Plan, and FY 2025 Budget. Based on the costs and benefits identified and analyzed in the RIA, the fee schedule proposed in this NPRM offers the highest net benefits. As described throughout this document, the proposed fee schedule maintains the existing balance of below cost entry fees ( <E T="03">e.g.,</E> ━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━ Preview showing 10k of 406k characters. Full document text is stored and available for version comparison. ━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━