0651-0089 2024 Patent Fee Rule CWS

JUSTIFICATION FOR NONMATERIAL/NONSUBSTANTIVE CHANGE

DOCX Submissions Requirements

OMB Control Number 0651-0089

Background

On August 3, 2020, the USPTO published a final rule in the Federal Register that included a new fee set forth in 37 CFR 1.16(u). See Setting and Adjusting Patent Fees in Fiscal Year 2020, 85 FR 46932 (Patent Fee Rule). Although that final rule indicated the new fee at §1.16(u) would go into effect on January 1, 2022, the effective date of the new fee was delayed to give applicants more time to adjust to filing patent applications in the DOCX format. The fee is scheduled to go into effect on January 17, 2024. See Setting and Adjusting Patent Fees during Fiscal Year 2020, 88 FR 36956 (June 6, 2023).¹

The §1.16(u) 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.

The items in this new information collection relate solely to the impacts of the § 1.16(u) non-DOCX filing surcharge fee on the filing of nonprovisional utility applications under 35 U.S.C. 111, including continuing applications. In particular, this information collection accounts for the § 1.16(u) non-DOCX filing surcharge fee itself, as well as an additional 30 minutes of time to accommodate (i) the extra review that some respondents may undertake as they start to become more familiar with the DOCX format and (ii) submission of the back-up applicant-generated PDF that some respondents will opt to submit.

In support of RIN 0651-AD64 (Setting and Adjusting Patent Fees During Fiscal Year 2025; 89 FRN 91898)², the USPTO is changing three fees in this information collection.

Table 1: Changes in Fee Amount

Item No.	Fee Code	Item	Current Fee	New Fee	Changes in Fee Amount
1-4	1054	Non-DOCX Filing Surcharge Fee (undiscounted entity)	$400	$430	+$30
1-4	2054	Non-DOCX Filing Surcharge Fee (small entity)	$160	$172	+$12
1-4	3054	Non-DOCX Filing Surcharge Fee (micro entity)	$80	$86	+$6

Table 2: Proposed Burden

Item No.	Fee Code	Item	Reponses (a)	New Fee (b)	New Non-hour Cost Burden (a) x (b) = (c)
1-4	1054	Non-DOCX Filing Surcharge Fee (undiscounted entity)	102,095	$430	$43,900,850
1-4	2054	Non-DOCX Filing Surcharge Fee (small entity)	47,406	$172	$8,153,832
1-4	3054	Non-DOCX Filing Surcharge Fee (micro entity)	14,565	$86	$1,252,590
		Totals	164,066	- - -	$53,307,272

Table 3: Changes in Cost

Item No.	Fee Code	Items	Current Cost (a)	New Cost (b)	Change in Non-hour Cost Burden (b) – (a) = (c)
1-4	1054	Non-DOCX Filing Surcharge Fee (undiscounted entity)	$40,838,000	$43,900,850	+$3,062,850
1-4	2054	Non-DOCX Filing Surcharge Fee (small entity)	$7,584,960	$8,153,832	+$568,872
1-4	3054	Non-DOCX Filing Surcharge Fee (micro entity)	$1,165,200	$1,252,590	+$87,390
		Totals	$49,588,160	$53,307,272	+$3,719,112

Summary of Changes

The aforementioned rulemaking results in the revision of three fees, with an increase of $3,719,112 in annual non-hourly costs to collection 0651-0089.

Changes in Burden

Burden Type	Currently Approved	Proposed Change	New Estimate
Non-hourly Cost Burden	$49,588,160	+$3,719,112	$53,307,272

0651-0089’s revised burden is as follows:

• 411,817 annual responses (unchanged)

• 123,877 annual hourly burden (unchanged)

• $53,307,272 annual non-hourly burden costs

1 https://www.govinfo.gov/content/pkg/FR-2023-06-06/pdf/2023-11917.pdf.

2 https://www.govinfo.gov/content/pkg/FR-2024-11-20/pdf/2024-26821.pdf