America Invents Act Section 10 Patent Fee Adjustments

Forms and Documents

Document Name	Status
0651-00xx AIA Sec10 Fee Setting SupStmt-Sep2012.pdf Supporting Statement A	2012-09-06
0651-00xx AIA Sec10 Fee Setting App_C Jul2012.pdf Supplementary Document	2012-07-19
0651-00xx AIA Sec10 Fee Setting App_B Jul2012.pdf Supplementary Document	2012-07-19
0651-00xx AIA Sec10 Fee Setting App_A Jul2012.pdf Supplementary Document	2012-07-19
0651-USPTO-Information-Quality-Guidelines-Dec2009.pdf Supplementary Document	2012-07-19

IC Document Collections

IC ID	Document Title	Status
203364	00XX Request for oral hearing	New
203363	00XX Notice of appeal	New
203362	00XX For each additional invention to be examined (see 37 CFR 1.129(b))	New
203361	0069 Request to make settlement agreement available	New
203360	0069 Post Grant or Covered Business Method Patent Review Post-Institution Request of Each Claim in Excess of 15	New
203359	0069 Post Grant or Covered Business Method Patent Review Request of Each Claim in Excess of 20	New
203358	0069 Post Grant of Covered Business Method Patent Review Post_Institution	New
203357	0069 Post Grant of Covered Business Method Patent Review Request	New
203356	0069 Inter Partes Post-Institution Request of Each Claim in Excess of 15	New
203354	0069 Inter Partes Review Request of Each Claim in Excess of 20	New
203353	0069 Inter Partes Review Post-Institution Fee	New
203349	0069 Inter Partes Review Request Fee	New
203348	0069 Derivation proceeding	New
203339	0064 Reexamination Petition	New
203338	0064 Reexamination claims in excess of 20 and also in excess of the number of claims in the patent under reexamination	New
203337	0064 Reexamination independent claims in excess of three and also in excess of the number of such claims in the patent under reexamination	New
203336	0064 Supplemental examination document size fees; each additional 50	New
203335	0064 Supplemental Examination document size fees; 21-50	New
203334	0064 Supplemental Examination Reexamination	New
203333	0064 Supplemental Examination Request	New
203332	0064 Request for ex parte reexamination - refused	New
203330	0064 Request for ex parte reexamination - granted	New
203329	0063 Forwarding an Appeal in an Application or Ex Parte Reexamination Proceeding to the Board	New
203328	0063 Filing a brief in support of an appeal in an inter partes reexamination proceeding	New
203327	0063 Filing a Brief in Support of an Appeal	New
203326	0059 Petitions requiring the petition fee set forth in 37 CFR 1.17(h) (Group III)	New
203244	0059 Petitions requiring the petition fee set forth in 37 CFR 1.17(g) (Group II)	New
203243	0059 Petitions requiring the petition fee set forth in 37 CFR 1.17(f) (Group I)	New
203242	0036 Request for publication of SIR - After examiner's action	New
203241	0036 Request for publication of SIR - Prior to examiner's action	New
203240	0033 Certificate of correction	New
203239	0033 Reissue issue fee	New
203238	0033 Plant issue fee	New
203237	0033 Design issue fee	New
203236	0033 Utility issue fee	New
203235	0033 Publication fee for early, voluntary, or normal publication	New
203234	0033 Reissue Examination Fee	New
203233	0033 Reissue Application Size Fee - for each additional 50 sheets that exceeds 100 sheets	New
203232	0033 Reissue claims in excess of 20	New
203231	0033 Reissue independent claims in excess of three	New
203230	0033 Reissue Search Fee	New
203229	0033 Basic filing fee - Reissue	New
203222	0032 Processing fee for provisional applications	New
203221	0032 Provisional Application Size Fee - for each additional 50 sheets that exceeds 100 sheets	New
203219	0032 Plant Application Size Fee - for each additional 50 sheets that exceeds 100 sheets	New
203218	0032 Design Application Size Fee - for each additional 50 sheets that exceeds 100 sheets	New
203217	0032 Utility Application Size Fee - for each additional 50 sheets that exceeds 100 sheets	New
203216	0032 Multiple dependent claim	New
203215	0032 Claims in excess of 20	New
203214	0032 Independent claims in excess of three	New
203213	0032 Plant Examination Fee	New
203212	0032 Design Examination Fee	New
203211	0032 Utility Examination Fee	New
203210	0032 Plant Search Fee	New
203209	0032 Design Search Fee	New
203208	0032 Utility Search Fee	New
203186	0032 Non-English specification	New
203184	0032 Surcharge - Late provisional filing fee or cover sheet	New
203183	0032 Provisional application filing fee	New
203182	0032 Basic filing fee - Plant	New
203181	0032 Basic filing fee - Design (CPA)	New
203180	0032 Basic filing fee - Design	New
203179	0032 Surcharge - Late filing fee, search fee, examination fee or oath or declaration	New
203178	0032 Basic filing fee - Utility (electronic filing for small entities)	New
203177	0032 Basic filing fee - Utility	New
203176	0031 Request for continued examination (RCE) (2nd and subsequent)	New
203175	0031 Filing a submission after final rejection (see 37 CFR 1.129(a))	New
203174	0031 Publication fee for republication	New
203173	0031 Statutory disclaimer, including terminal disclaimer	New
203172	0031 Submission of an Information Disclosure Statement	New
203171	0031 Request for expedited examination of a design application	New
203169	0031 Request for voluntary publication or republication	New
203168	0031 Processing fee, except in provisional applications	New
203167	0031 Petition to revive unintentionally abandoned application	New
203166	0031 Petition to revive unavoidably abandoned application	New
203165	0031 Extension for response within fifth month	New
203164	0031 Extension for response within fourth month	New
203163	0031 Extension for response within third month	New
203162	0031 Extension for response within second month	New
203161	0031 Extension for response within first month	New
203160	0031 Request for continued examination (RCE) (1st Request) (see 37 CFR 1.114)	New
203155	0027 Recording each patent assignment, agreement or other paper, per property - submitted electronically	New
203154	0027 Recording each patent assignment, agreement or other paper, per property if not submitted electronically	New
203153	0021 [PCT National Stage] Claims - multiple dependent	New
203152	0021 [PCT National Stage] Claims - extra total (over 20)	New
203151	0021 [PCT National Stage] Claims - extra independent (over three)	New
203150	0021 National Stage Application Size Fee - for each additional 50 sheets that exceeds 100 sheets	New
203149	0021 Supplemental examination fee per additional invention	New
203148	0021 Preliminary examination fee - U.S. was not the ISA	New
203147	0021 Preliminary examination fee - U.S. was the ISA	New
203146	0021 Supplemental search fee when required, per additional invention	New
203145	0021 Search fee - regardless of whether there is a corresponding application (see 35 U.S.C. 361(d) and PCT Rule 16)	New
203144	0021 Transmittal fee	New
203143	0021 English translation after thirty months from priority date	New
203142	0021 Search fee, examination fee or oath or declaration after thirty months from priority date	New
203141	0021 National Stage Examination Fee - all other situations	New
203140	0021 National Stage Search Fee - all other situations	New
203139	0021 Transmitting application to Intl. Bureau to act as receiving office	New
203138	0021 National Stage Examination Fee - U.S. was the ISA or IPEA and all claims satisfy PCT Article 33(1)-(4)	New
203137	0021 National Stage Search Fee - search report prepared and provided to USPTO	New
203136	0021 National Stage Search Fee - U.S. was the ISA	New
203135	0021 National Stage Search Fee - U.S. was the ISA or IPEA and all claims satisfy PCT Article 33(1)-(4)	New
203134	0021 Basic National Stage Fee	New
203133	0021 Acceptance of an unintentionally delayed claim for priority, or for filling a request for the restoration of the right of priority	New
203132	0020 Subsequent application for interim extension (see 37 CFR 1.790)	New
203131	0020 Initial application for interim extension (see 37 CFR 1.790)	New
203130	0020 Extension of term of patent	New
203129	0020 Request for reinstatement of term reduced	New
203128	0020 Filing an application for patent term adjustment	New
203127	0016 Surcharge after expiration - Late payment is unintentional	New
203126	0016 Surcharge after expiration - Late payment is unavoidable	New
203125	0016 Surcharge - 11.5 year - Late payment within 6 months	New
203124	0016 Surcharge - 7.5 year - Late payment within 6 months	New
203123	0016 Surcharge - 3.5 year - Late payment within 6 months	New
203122	0016 Maintenance fee due at 11.5 years	New
203121	0016 Maintenance fee due at 7.5 years	New
203120	0016 Maintenance fee due at 3.5 years	New
203110	0012 Registration to practice for change of practitioner type	New
203105	0012 Application fee for person disciplined, convicted of a felony or certain misdemeanors under §11.7(h)	New
203104	0012 Review of decision of the Director of Enrollment and Discipline under §11.2(d)	New
203103	0012 Review of decision by the Director of Enrollment and Discipline under §11.2(c)	New
203102	0012 For test administration by commercial entity	New
203101	0012 Reinstatement to practice	New
203099	0012 Registration to practice or grant of limited recognition under §11.9(b) or (c)	New
203098	0012 Application fee (non-refundable)	New
203004	00XX Petitions to the Chief Administrative Patent Judge under 37 CFR 41.3	New
203003	00XX Correct inventorship after first office action on the merits	New

ICR Details

OMB Control No: 0651-0072	ICR Reference No: 201205-0651-001
Status: Historical Inactive	Previous ICR Reference No:
Agency/Subagency: DOC/PTO	Agency Tracking No:
Title: America Invents Act Section 10 Patent Fee Adjustments
Type of Information Collection: New collection (Request for a new OMB Control Number)	Common Form ICR:  No
Type of Review Request: Regular
OIRA Conclusion Action: Preapproved	Conclusion Date: 10/25/2012
	Date Received in OIRA: 09/06/2012
Terms of Clearance: Pre-approval contingent upon no substantive changes to this collection after adoption of the final rule. Otherwise this collection should be re-submitted to OMB for review.

	Inventory as of this Action	Requested	Previously Approved
Expiration Date	10/31/2015	36 Months From Approved
Responses	5,832,472	0	0
Time Burden (Hours)	1,660	0	0
Cost Burden (Dollars)	2,594,521,312	0	0

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Abstract: The USPTO is submitting this request in support of the Notice of Proposed Rulemaking titled "Setting and Adjusting Patent Fees" (RIN 0651-AC54). The USPTO proposes to set or adjust patent fees as authorized by the Leahy-Smith America Invents Act ("Act" or "AIA") Pub.L.112-29. The proposed fees will provide the Office with a sufficient amount of aggregate revenue to recover its aggregate cost of patent operations and will help the Office implement a sustainable funding model, reduce the current patent application backlog, decrease patent pendency, improve patent quality, and upgrade the Office's patent business information technology ("IT") capability and infrastructure. The Office also proposes to reduce fees for a new class of patent applicants, "micro entities," under section 10(g) of the Act and proposes to include multipart and staged fees for requests for continued examination ("RCEs") and appeals. These proposals will foster innovation and increase application processing options. When fees are set or adjusted, the aggregate revenue from the patent fees may only be set to recover the aggregate estimated costs to the Office for processing, activities, services, and materials relating to patents, including administrative costs to the Office with respect to such patent operations. Under section 10(b) of the AIA, eligible small entities shall receive a 50 percent fee reduction from the large entity fees for filing, searching, examining, issuing, appealing, and maintaining patent applications and patents. The Act further provides that the micro entities shall receive a 75 percent fee reduction for filing, searching, examining, issuing, appealing, and maintaining patent applications and patents. This information collection request is submitted as a fee-based burden collection to best provide for comment and review of the fee adjustment burden impact of the proposed rulemaking. The USPTO will maintain the information requirements and non-fee burden for the information collection items within separate collections. This new collection will be maintained for fee burden adjustments only. The relevant fee burdens will be removed from their existing collections through non-substantive change requests to discontinue counting those burdens twice and overstating the total respondent burden in the USPTO inventory. This information collection request ("ICR") includes: + "Correct inventorship after first office action on the merits," an item introduced in this proposed rulemaking. The information collection requirements for this item will eventually be moved into 0651-0031 Patent Processing (Updating), and the fee will remain in this collection. + "Petitions to the Chief Administrative Patent Judge under 37 CFR 41.3," an item that is not covered by an existing information collection request and is added to this submission because the fee is affected by the proposed rulemaking. The information requirements for this item will eventually be moved into 0651-0063 Board of Patent Appeals and Interferences (BPAI) Actions, and the fee will remain in this collection. + Fee adjustments to existing and pending items in the agency inventory. Information requirements for those items will remain in their respective collections and only the corresponding fees (as adjusted by the proposed rulemaking) are submitted for this collection. + Response adjustments to existing and pending items in the agency inventory projected to be impacted by the fee adjustments because changes in some fees are expected to change demand for those services, which changes the number of responses. Information requirements for those items will remain in their respective collections and only the corresponding fees are submitted for this collection. The response adjustments are offered here solely for the purpose of capturing the total impact on burden due to the proposed rulemaking.

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Authorizing Statute(s): PL: Pub.L. 112 - 29 10 Name of Law: Leahy-Smith America Invents Act
  

Citations for New Statutory Requirements: PL: Pub.L. 112 - 29 10 Name of Law: Leahy-Smith America Invents Act

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Associated Rulemaking Information
RIN:	Stage of Rulemaking:	Federal Register Citation:	Date:
0651-AC54	Proposed rulemaking	77 FR 55028	09/06/2012

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Federal Register Notices & Comments

Did the Agency receive public comments on this ICR? No

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Number of Information Collection (IC) in this ICR: 127

IC Title	Form No.	Form Name
00XX Correct inventorship after first office action on the merits
00XX Petitions to the Chief Administrative Patent Judge under 37 CFR 41.3
0059 Petitions requiring the petition fee set forth in 37 CFR 1.17(h) (Group III)
0064 Request for ex parte reexamination - granted
0064 Supplemental examination document size fees; each additional 50
0064 Reexamination independent claims in excess of three and also in excess of the number of such claims in the patent under reexamination
0016 Surcharge - 3.5 year - Late payment within 6 months
0020 Filing an application for patent term adjustment
0020 Request for reinstatement of term reduced
0020 Extension of term of patent
0020 Initial application for interim extension (see 37 CFR 1.790)
0020 Subsequent application for interim extension (see 37 CFR 1.790)
0021 National Stage Search Fee - U.S. was the ISA or IPEA and all claims satisfy PCT Article 33(1)-(4)
0021 National Stage Search Fee - U.S. was the ISA
0021 National Stage Search Fee - search report prepared and provided to USPTO
0021 National Stage Examination Fee - U.S. was the ISA or IPEA and all claims satisfy PCT Article 33(1)-(4)
0021 Transmitting application to Intl. Bureau to act as receiving office
0021 National Stage Search Fee - all other situations
0021 Search fee - regardless of whether there is a corresponding application (see 35 U.S.C. 361(d) and PCT Rule 16)
0021 Supplemental search fee when required, per additional invention
0021 Preliminary examination fee - U.S. was the ISA
0021 Preliminary examination fee - U.S. was not the ISA
0021 [PCT National Stage] Claims - extra independent (over three)
0021 [PCT National Stage] Claims - extra total (over 20)
0021 [PCT National Stage] Claims - multiple dependent
0016 Maintenance fee due at 3.5 years
0016 Maintenance fee due at 7.5 years
0021 Acceptance of an unintentionally delayed claim for priority, or for filling a request for the restoration of the right of priority
0021 Basic National Stage Fee
0021 National Stage Examination Fee - all other situations
0021 Search fee, examination fee or oath or declaration after thirty months from priority date
0027 Recording each patent assignment, agreement or other paper, per property if not submitted electronically
0027 Recording each patent assignment, agreement or other paper, per property - submitted electronically
0036 Request for publication of SIR - Prior to examiner's action
0012 Reinstatement to practice
0012 For test administration by commercial entity
0012 Registration to practice for change of practitioner type
0059 Petitions requiring the petition fee set forth in 37 CFR 1.17(f) (Group I)
0059 Petitions requiring the petition fee set forth in 37 CFR 1.17(g) (Group II)
0063 Filing a Brief in Support of an Appeal
0063 Filing a brief in support of an appeal in an inter partes reexamination proceeding
0063 Forwarding an Appeal in an Application or Ex Parte Reexamination Proceeding to the Board
0064 Reexamination claims in excess of 20 and also in excess of the number of claims in the patent under reexamination
0064 Reexamination Petition
0021 Supplemental examination fee per additional invention
0021 National Stage Application Size Fee - for each additional 50 sheets that exceeds 100 sheets
0031 Request for continued examination (RCE) (1st Request) (see 37 CFR 1.114)
0031 Extension for response within first month
0031 Extension for response within second month
0031 Extension for response within third month
0031 Extension for response within fourth month
0032 Basic filing fee - Design
0032 Utility Search Fee
0032 Design Search Fee
0032 Multiple dependent claim
0032 Utility Application Size Fee - for each additional 50 sheets that exceeds 100 sheets
0032 Design Application Size Fee - for each additional 50 sheets that exceeds 100 sheets
0032 Plant Application Size Fee - for each additional 50 sheets that exceeds 100 sheets
0032 Provisional Application Size Fee - for each additional 50 sheets that exceeds 100 sheets
0064 Request for ex parte reexamination - refused
0064 Supplemental Examination Request
0064 Supplemental Examination Reexamination
0064 Supplemental Examination document size fees; 21-50
0069 Inter Partes Post-Institution Request of Each Claim in Excess of 15
0069 Post Grant of Covered Business Method Patent Review Request
0069 Post Grant of Covered Business Method Patent Review Post_Institution
0069 Post Grant or Covered Business Method Patent Review Request of Each Claim in Excess of 20
0031 Extension for response within fifth month
0031 Petition to revive unavoidably abandoned application
0031 Petition to revive unintentionally abandoned application
0016 Maintenance fee due at 11.5 years
0016 Surcharge - 7.5 year - Late payment within 6 months
0016 Surcharge - 11.5 year - Late payment within 6 months
0016 Surcharge after expiration - Late payment is unavoidable
0016 Surcharge after expiration - Late payment is unintentional
0021 English translation after thirty months from priority date
0021 Transmittal fee
0069 Derivation proceeding
0069 Inter Partes Review Request Fee
0069 Inter Partes Review Post-Institution Fee
0069 Post Grant or Covered Business Method Patent Review Post-Institution Request of Each Claim in Excess of 15
0012 Application fee (non-refundable)
0012 Registration to practice or grant of limited recognition under §11.9(b) or (c)
0031 Request for expedited examination of a design application
0031 Submission of an Information Disclosure Statement
0031 Statutory disclaimer, including terminal disclaimer
0031 Publication fee for republication
0031 Filing a submission after final rejection (see 37 CFR 1.129(a))
0031 Request for continued examination (RCE) (2nd and subsequent)
0032 Provisional application filing fee
0032 Surcharge - Late provisional filing fee or cover sheet
0032 Non-English specification
0032 Plant Search Fee
0032 Utility Examination Fee
0032 Design Examination Fee
0032 Plant Examination Fee
0032 Independent claims in excess of three
0032 Claims in excess of 20
0032 Processing fee for provisional applications
0036 Request for publication of SIR - After examiner's action
0031 Processing fee, except in provisional applications
0031 Request for voluntary publication or republication
0032 Basic filing fee - Utility
0032 Basic filing fee - Utility (electronic filing for small entities)
0032 Surcharge - Late filing fee, search fee, examination fee or oath or declaration
0032 Basic filing fee - Design (CPA)
0032 Basic filing fee - Plant
0069 Inter Partes Review Request of Each Claim in Excess of 20
0069 Request to make settlement agreement available
00XX For each additional invention to be examined (see 37 CFR 1.129(b))
00XX Notice of appeal
00XX Request for oral hearing
0033 Basic filing fee - Reissue
0033 Reissue Search Fee
0033 Reissue independent claims in excess of three
0033 Reissue claims in excess of 20
0033 Reissue Application Size Fee - for each additional 50 sheets that exceeds 100 sheets
0033 Reissue Examination Fee
0033 Publication fee for early, voluntary, or normal publication
0033 Utility issue fee
0033 Design issue fee
0033 Plant issue fee
0033 Reissue issue fee
0033 Certificate of correction
0012 Review of decision by the Director of Enrollment and Discipline under §11.2(c)
0012 Review of decision of the Director of Enrollment and Discipline under §11.2(d)
0012 Application fee for person disciplined, convicted of a felony or certain misdemeanors under §11.7(h)

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ICR Summary of Burden

	Total Request	Previously Approved	Change Due to New Statute	Change Due to Agency Discretion	Change Due to Adjustment in Estimate	Change Due to Potential Violation of the PRA
Annual Number of Responses	5,832,472	0	315,377	5,517,095	0	0
Annual Time Burden (Hours)	1,660	0	1,000	660	0	0
Annual Cost Burden (Dollars)	2,594,521,312	0	349,621,871	2,244,899,441	0	0

Burden increases because of Program Change due to Agency Discretion: Yes

Burden Increase Due to: Miscellaneous Actions

Burden decreases because of Program Change due to Agency Discretion: No

Burden Reduction Due to:

Short Statement: This information collection request (ICR) includes program changes that are part of the impact of the proposed rulemaking (new statute). In addition to the new information requirement introduced by this proposed rulemaking--Correct Inventorship After First Office Action on the Merits--these changes include revised fee amounts and fee structures that will have an impact on annual cost burden as well as on the estimated responses for the associated information requirements whose fees are affected by this ICR. This ICR also includes program changes that are not part of the impact of the proposed rulemaking. These changes are primarily from the movement of the affected fees and their associated responses (as estimated and approved in previous ICRs) into this new information collection, as well as the addition of an existing information requirement, Petition to the Chief Administrative Patent Judge Under 37 CFR 41.3, that is not covered by a current information collection. Please consult sections 1, 12, 13, and 15 of the Supporting Statement for further explanation of these changes.

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Annual Cost to Federal Government: $2,612

Does this IC contain surveys, censuses, or employ statistical methods? No

Is the Supporting Statement intended to be a Privacy Impact Assessment required by the E-Government Act of 2002? No

Is this ICR related to the Affordable Care Act [Pub. L. 111-148 & 111-152]? No

Is this ICR related to the Dodd-Frank Wall Street Reform and Consumer Protection Act, [Pub. L. 111-203]? No

Is this ICR related to the American Recovery and Reinvestment Act of 2009 (ARRA)? No

Is this ICR related to the Pandemic Response? Uncollected

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Common Form ICR:  No

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On behalf of this Federal agency, I certify that the collection of information encompassed by this request complies with 5 CFR 1320.9 and the related provisions of 5 CFR 1320.8(b)(3).

The following is a summary of the topics, regarding the proposed collection of information, that the certification covers:

(a) It is necessary for the proper performance of agency functions;

(b) It avoids unnecessary duplication;

(c) It reduces burden on small entities;

(d) It uses plain, coherent, and unambiguous language that is understandable to respondents;

(e) Its implementation will be consistent and compatible with current reporting and recordkeeping practices;

(f) It indicates the retention periods for recordkeeping requirements;

(g) It informs respondents of the information called for under 5 CFR 1320.8 (b)(3) about:

(i) Why the information is being collected;

(ii) Use of information;

(iii) Burden estimate;

(iv) Nature of response (voluntary, required for a benefit, or mandatory);

(v) Nature and extent of confidentiality; and

(vi) Need to display currently valid OMB control number;

(h) It was developed by an office that has planned and allocated resources for the efficient and effective management and use of the information to be collected.

(i) It uses effective and efficient statistical survey methodology (if applicable); and

(j) It makes appropriate use of information technology.

If you are unable to certify compliance with any of these provisions, identify the item by leaving the box unchecked and explain the reason in the Supporting Statement.

Certification Date: 09/06/2012

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