0651-0021 Fee CWS 02 2023

JUSTIFICATION FOR NONMATERIAL/NONSUBSTANTIVE CHANGE

Patent Cooperation Treaty

OMB Control Number 0651-0021

Background

The United States Patent and Trademark Office (USPTO) administers the Leahy-Smith America Invents Act (AIA), which sets or adjusts patent fees established, authorized, or charged under Title 35, United States Code (U.S.C.). Section 10 prescribes that fees may be set or adjusted only to recover the aggregate estimated costs to the Office for processing, activities, services, and materials related to the patent and trademark processes. Section 10 authorities also includes flexibility to set individual fees in a way that furthers key policies factors, while factoring in the cost of the respective services.

This request is to update the fees for small and micro entities attached to collection 0651-0021 (Patent Cooperation Treaty) that are affected by the rulemaking RIN 0651-AD66. There are 36 fees in this collection being reduced as a result of the Unleashing American Innovators Act of 2022. This update also includes the addition of three fees that were not included in the current renewal.

Table 1: Increases in Fee Amount

IC No.	Item	Current Fee	New Fee	Changes in Fee Amount
2	[PCT National Stage] Claims – extra independent (over three)	$240 (small entity) $120 (micro entity)	$192 (small entity) $96 (micro entity)	-$48 (small entity) -$24 (micro entity)
2	PCT National Stage] Claims – extra total (over 20)	$50 (small entity) $25 (micro entity)	$40 (small entity) $20 (micro entity)	-$10 (small entity) -$5 (micro entity)
2	[PCT National Stage] Claim – multiple dependent	$430 (small entity) $215 (micro entity)	$344 (small entity) $172 (micro entity)	-$86 (small entity) -$43 (micro entity)
3	National Stage Application Size Fee – for each additional 50 sheets that exceed 100 sheets	$210 (small entity) $105 (micro entity)	$168 (small entity) $84 (micro entity)	-$42 (small entity) -$21 (micro entity)
3	Search fee – regardless of whether there is a corresponding application (see 35 U.S.C. 361(d) and PCT Rule 16)	$1,090 (small entity) $545 (micro entity)	$872 (small entity) $436 (micro entity)	-$218 (small entity) -$109 (micro entity)
3	Supplemental search fee when required, per additional invention	$1,090 (small entity) $545 (micro entity)	$872 (small entity) $436 (micro entity)	-$218 (small entity) -$109 (micro entity)
3	Basic National Stage Fee	$160 (small entity) $80 (micro entity)	$128 (small entity) $64 (micro entity)	-$32 (small entity) -$16 (micro entity)
3	National Stage Search Fee – U.S. was the ISA	$70 (small entity) $35 (micro entity)	$56 (small entity) $28 (micro entity)	-$14 (small entity) -$7 (micro entity)
3	National Stage Search Fee – search report prepared and provided to USPTO	$270 (small entity) $135 (micro entity)	$216 (small entity) $108 (micro entity)	-$54 (small entity) -$27 (micro entity)
3	National Stage Search Fee – all other situations	$350 (small entity) $175 (micro entity)	$280 (small entity) $140 (micro entity)	-$70 (small entity) -$35 (micro entity)
3	National Stage Examination Fee – all other situations	$400 (small entity) $200 (micro entity)	$320 (small entity) $160 (micro entity)	-$80 (small entity) -$40 (micro entity)
3	Preliminary examination fee – U.S. was the ISA	$320 (small entity) $160 (micro entity)	$256 (small entity) $128 (micro entity)	-$64 (small entity) -$32 (micro entity)
3	Preliminary examination fee – U.S. was not the ISA	$400 (small entity) $200 (micro entity)	$320 (small entity) $160 (micro entity)	-$80 (small entity) -$40 (micro entity)
3	Supplemental examination fee per additional invention	$320 (small entity) $160 (micro entity)	$256 (small entity) $128 (micro entity)	-$64 (small entity) -$32 (micro entity)
3	Search fee, examination fee or oath of declaration after thirty months from priority date	$80 (small entity) $40 (micro entity)	$64 (small entity) $32 (micro entity)	-$16 (small entity) -$8 (micro entity)
4	Transmittal fee	$130 (small entity) $65 (micro entity)	$104 (small entity) $52 (micro entity)	-$26 (small entity) -$13 (micro entity)
14	Transmitting application to Intl. Bureau to act as receiving office	$130 (small entity) $65 (micro entity)	$104 (small entity) $52 (micro entity)	-$26 (small entity) -$13 (micro entity)
16	English translation after thirty months from priority date	$70 (small entity) $35 (micro entity)	$56 (small entity) $28 (micro entity)	-$14 (small entity) -$7 (micro entity)

Table 2: Proposed Burden

IC No.	Item	Responses (a)	Proposed Fee (b)	Proposed Cost (a) x (b) = (c)
2	[PCT National Stage] Claims – extra independent (over three)	3,151 (small entity) 120 (micro entity)	$192 (small entity) $96 (micro entity)	$604,992 (small entity) $11,520 (micro entity)
2	PCT National Stage] Claims – extra total (over 20)	7,462 (small entity) 263 (micro entity)	$40 (small entity) $20 (micro entity)	$298,480 (small entity) $5,260 (micro entity)
2	[PCT National Stage] Claim – multiple dependent	431 (small entity) 68 (micro entity)	$344 (small entity) $172 (micro entity)	$148,264 (small entity) $11,696 (micro entity)
3	National Stage Application Size Fee – for each additional 50 sheets that exceed 100 sheets	2,428 (small entity) 36 (micro entity)	$168 (small entity) $84 (micro entity)	$407,904 (small entity) $3,024 (micro entity)
3	Search fee – regardless of whether there is a corresponding application (see 35 U.S.C. 361(d) and PCT Rule 16)	15,311 (small entity) 1,179 (micro entity)	$872 (small entity) $436 (micro entity)	$13,351,192 (small entity) $514,044 (micro entity)
3	Supplemental search fee when required, per additional invention	520 (small entity) 44 (micro entity)	$872 (small entity) $436 (micro entity)	$453,440 (small entity) $19,184 (micro entity)
3	Basic National Stage Fee	27,641 (small entity) 1,757 (micro entity)	$128 (small entity) $64 (micro entity)	$3,538,048 (small entity) $112,448 (micro entity)
3	National Stage Search Fee – U.S. was the ISA	6,262 (small entity) 262 (micro entity)	$56 (small entity) $28 (micro entity)	$350,672 (small entity) $7,336 (micro entity)
3	National Stage Search Fee – search report prepared and provided to USPTO	20,560 (small entity) 1,325 (micro entity)	$216 (small entity) $108 (micro entity)	$4,440,960 (small entity) $143,100 (micro entity)
3	National Stage Search Fee – all other situations	2,804 (small entity) 385 (micro entity)	$280 (small entity) $140 (micro entity)	$785,120 (small entity) $53,900 (micro entity)
3	National Stage Examination Fee – all other situations	27,228 (small entity) 1,704 (micro entity)	$320 (small entity) $160 (micro entity)	$8,712,960 (small entity) $272,640 (micro entity)
3	Preliminary examination fee – U.S. was the ISA	690 (small entity) 85 (micro entity)	$256 (small entity) $128 (micro entity)	$176,640 (small entity) $10,880 (micro entity)
3	Preliminary examination fee – U.S. was not the ISA	93 (small entity) 1 (micro entity)	$320 (small entity) $160 (micro entity)	$29,760 (small entity) $160 (micro entity)
3	Supplemental examination fee per additional invention	21 (small entity) 1 (micro entity)	$256 (small entity) $128 (micro entity)	$5,376 (small entity) $128 (micro entity)
3	Search fee, examination fee or oath of declaration after thirty months from priority date	11,903 (small entity) 306 (micro entity)	$64 (small entity) $32 (micro entity)	$761,792 (small entity) $9,792 (micro entity)
4	Transmittal fee	23,311 (small entity) 1,248 (micro entity)	$104 (small entity) $52 (micro entity)	$2,424,344 (small entity) $64,896 (micro entity)
14	Transmitting application to Intl. Bureau to act as receiving office	272 (small entity) 30 (micro entity)	$104 (small entity) $52 (micro entity)	$28,288 (small entity) $1,560 (micro entity)
16	English translation after thirty months from priority date	965 (small entity) 45 (micro entity)	$56 (small entity) $28 (micro entity)	$54,040 (small entity) $1,260 (micro entity)
17	Petition for the extension of the twelve-month (six-month for designs) period for filing a subsequent application	54 (undiscounted entity) 132 (small entity) 24 (micro entity)	$2,100 (undiscounted entity) $840 (small entity) $420 (micro entity)	$113,400 (undiscounted entity) $110,880 (small entity) $10,080 (micro entity)
	Totals	160,122	- - -	$38,049,460

Table 3: Changes in Cost

IC No.	Items	Current Cost	Proposed Cost	Change in Cost
2	[PCT National Stage] Claims – extra independent (over three)	$756,240 (small entity) $14,400 (micro entity)	$604,992 (small entity) $11,520 (micro entity)	-$151,248 (small entity) -$2,880 (micro entity)
2	PCT National Stage] Claims – extra total (over 20)	$373,100 (small entity) $6,575 (micro entity)	$298,480 (small entity) $5,260 (micro entity)	-$74,620 (small entity) -$1,315 (micro entity)
2	[PCT National Stage] Claim – multiple dependent	$185,330 (small entity) $14,620 (micro entity)	$148,264 (small entity) $11,696 (micro entity)	-$37,066 (small entity) -$2,924 (micro entity)
3	National Stage Application Size Fee – for each additional 50 sheets that exceed 100 sheets	$509,880 (small entity) $3,780 (micro entity)	$407,904 (small entity) $3,024 (micro entity)	-$101,976 (small entity) -$756 (micro entity)
3	Search fee – regardless of whether there is a corresponding application (see 35 U.S.C. 361(d) and PCT Rule 16)	$16,688,990 (small entity) $642,555 (micro entity)	$13,351,192 (small entity) $514,044 (micro entity)	-$3,337,798 (small entity) -$128,511 (micro entity)
3	Supplemental search fee when required, per additional invention	$566,800 (small entity) $23,760 (micro entity)	$453,440 (small entity) $19,184 (micro entity)	-$113,360 (small entity) -$4,576 (micro entity)
3	Basic National Stage Fee	$4,422,560 (small entity) $140,560 (micro entity)	$3,538,048 (small entity) $112,448 (micro entity)	-$884,512 (small entity) -$28,112 (micro entity)
3	National Stage Search Fee – U.S. was the ISA	$438,340 (small entity) $9,170 (micro entity)	$350,672 (small entity) $7,336 (micro entity)	-$87,668 (small entity) -$1,834 (micro entity)
3	National Stage Search Fee – search report prepared and provided to USPTO	$5,551,200 (small entity) $178,875 (micro entity)	$4,440,960 (small entity) $143,100 (micro entity)	-$1,110,240 (small entity) -$35,775 (micro entity)
3	National Stage Search Fee – all other situations	$981,400 (small entity) $67,375 (micro entity)	$785,120 (small entity) $53,900 (micro entity)	-$196,280 (small entity) -$13,475 (micro entity)
3	National Stage Examination Fee – all other situations	$10,891,200 (small entity) $340,800 (micro entity)	$8,712,960 (small entity) $272,640 (micro entity)	-$2,178,240 (small entity) -$68,160 (micro entity)
3	Preliminary examination fee – U.S. was the ISA	$220,800 (small entity) $13,600 (micro entity)	$176,640 (small entity) $10,880 (micro entity)	-$44,160 (small entity) -$2,720 (micro entity)
3	Preliminary examination fee – U.S. was not the ISA	$37,200 (small entity) $200 (micro entity)	$29,760 (small entity) $160 (micro entity)	-$7,440 (small entity) -$40 (micro entity)
3	Supplemental examination fee per additional invention	$6,720 (small entity) $160 (micro entity)	$5,376 (small entity) $128 (micro entity)	-$1,344 (small entity) -$32 (micro entity)
3	Search fee, examination fee or oath of declaration after thirty months from priority date	$952,240 (small entity) $12,240 (micro entity)	$761,792 (small entity) $9,792 (micro entity)	-$190,448 (small entity) -$2,448 (micro entity)
4	Transmittal fee	$3,030,430 (small entity) $81,120 (micro entity)	$2,424,344 (small entity) $64,896 (micro entity)	-$606,086 (small entity) -$16,224 (micro entity)
14	Transmitting application to Intl. Bureau to act as receiving office	$35,360 (small entity) $1,950 (micro entity)	$28,288 (small entity) $1,560 (micro entity)	-$7,072 (small entity) -$390 (micro entity)
16	English translation after thirty months from priority date	$67,550 (small entity) $1,645 (micro entity)	$54,040 (small entity) $1,260 (micro entity)	-$13,510 (small entity) -$385 (micro entity)
17	Petition for the extension of the twelve-month (six-month for designs) period for filing a subsequent application	$0 (undiscounted entity) $0 (small entity) $0 (micro entity)	$113,400 (undiscounted entity) $110,880 (small entity) $10,080 (micro entity)	$113,400 (undiscounted entity) $110,880 (small entity) $10,080 (micro entity)
	Totals	$ 47,268,725	$38,049,460	-$9,219,265

Summary of Changes

The aforementioned legislation results in the revision of 36 fees, the addition of three fees, and a decrease of $9,219,265 in annual (non-hourly) costs to collection 0651-0021.

Changes in Burden

Burden Type	Currently Approved	Proposed Change	New Estimate
Non-hourly Cost Burden	$ 367,468,923	-$9,219,265	$358,249,658

0651-0021’s revised burden is as follows:

• 420,816 in annual responses (unchanged)

• 358,269 in annual hourly burden (unchanged)

• $358,249,658 in annual (non-hourly) costs