0651-0075 2024 Patent Fee Rule CWS

JUSTIFICATION FOR NONMATERIAL/NONSUBSTANTIVE CHANGE

International Design Applications (Hague Agreement)

OMB Control Number 0651-0075

Background

Under the Hague Agreement, U.S. applicants could file international design applications in English “indirectly” through the United States Patent and Trademark Office (USPTO), which will forward the applications to the IB or “directly” with the IB. International design applications are subject to the following fees: (1) basic fee; (2) standard designation fee(s); (3) individual designation fee(s); and (4) publication fee. Also, an additional fee is required where the application contain a description that exceeds 100 words. In addition, a transmittal fee is required for international design applications filed through an office of indirect filing. Thus, international design applications filed through the USPTO as an Office of indirect filing are subject to payment of a transmittal fee for processing and forwarding the international design applications to the IB. The fees required by the IB may be paid either directly to the IB or through the USPTO as an office of indirect filing in the amounts specified on the World Intellectual Property Organization Web site. If applicants want to paid the required fees through USPTO as an office of indirect filing, the fees must be paid no later than the date of payment of the transmittal fee. The fees will then be forwarded to the IB. The industrial design or designs will be eligible for protection in all the Contracting Parties designated by applicants.

The IB ascertains whether the international design application complies with formal requirements, registers the international design to the international register, and publishes the international registration in the International Designs Bulletin. The international registration contains all of the data of the international application, any reproduction of the international design, date of the international registration, number of the international registration, and the relevant class of the International Classification.

The IB will provide a copy of the publication of the international registration to each Contracting party designated by the application. A designated Contracting Party may perform a substantive examination of the design application. The USPTO will perform a substantive examination for patentability of the international design application, as in the case of regular U.S. design applications.

The Hague Agreement enables applicants from Contracting Parties to obtain protection of their designs with minimal formalities and expenses in multiple countries and/or regions. The Hague Agreement is administered by the IB, which simplifies the management of an industrial design registration. For example, through the IB, applicants can record changes of their representatives or changes in ownership, and renew their international registration.

In support of RIN 0651-AD64 (Setting and Adjusting Patent Fees During Fiscal Year 2025; 89 FRN 91898)¹, the USPTO is changing 21 fees in this information collection and is adding six fees in the information collection.

Table 1: Changes in Fee Amount

Item No.	Fee Code	Item	Current Fee	New Fee	Changes in Fee Amount
1	1781	Application for International Registration (electronic) – Transmittal Fee (set by and collected by USPTO) (undiscounted)	$120	$130	+$10
1	2781	Application for International Registration (electronic) – Transmittal Fee (set by and collected by USPTO) (small entity)	$48	$52	+$4
1	3781	Application for International Registration (electronic) – Transmittal Fee (set by and collected by USPTO) (micro entity)	$24	$26	+$2
1	1791	International design application first part U.S. designation fee (undiscounted entity)	Not previously included in 0651-0075	$1,300	+$1,300
1	2791	International design application first part U.S. designation fee (small entity)	Not previously included in 0651-0075	$520	+$520
1	3791	International design application first part U.S. designation fee (micro entity)	Not previously included in 0651-0075	$260	+$260
5	1784	Petition to excuse applicant's failure to act within prescribed time limits in an international design application, delay less than or equal to two years (undiscounted)	$2,100	$2,260	+$160
5	2784	Petition to excuse applicant's failure to act within prescribed time limits in an international design application, delay less than or equal to two years (small entity)	$840	$904	+$64
5	3784	Petition to excuse applicant's failure to act within prescribed time limits in an international design application, delay less than or equal to two years (micro entity)	$420	$452	+$32
5	178D	Petition to excuse applicant's failure to act within prescribed time limits in an international design application, delay greater than two years (undiscounted entity)	Not previously included in 0651-0075 – new fee2	$3,000	+$3,000
5	278D	Petition to excuse applicant's failure to act within prescribed time limits in an international design application, delay greater than two years (small entity)	Not previously included in 0651-0075 – new fee	$1,200	+$1,200
5	378D	Petition to excuse applicant's failure to act within prescribed time limits in an international design application, delay greater than two years (micro entity)	Not previously included in 0651-0075 – new fee	$600	+$600
6	1783	Petition to Convert to a Design Application under 35 U.S.C. Chapter 16 (undiscounted)	$180	$195	+$15
6	2783	Petition to Convert to a Design Application under 35 U.S.C. Chapter 16 (small entity)	$72	$78	+$6
6	3783	Petition to Convert to a Design Application under 35 U.S.C. Chapter 16 (micro entity)	$36	$39	+$3
7	1462	Petition to Review a Filing Date (undiscounted)	$420	$450	+$30
7	2462	Petition to Review a Filing Date (small entity)	$168	$180	+$12
7	3462	Petition to Review a Filing Date (micro entity)	$84	$90	+$6
9	1462	Petitions to Commissioner (undiscounted)	$420	$450	+$30
9	2462	Petitions to Commissioner (small entity)	$168	$180	+$12
9	3462	Petitions to Commissioner (micro entity)	$84	$90	+$6
14	1509	Issue Fee to UPSTO for an International Design Application (undiscounted)	$740	$1,300	+$560
14	2509	Issue Fee to UPSTO for an International Design Application (small entity)	$296	$520	+$224
14	3509	Issue Fee to UPSTO for an International Design Application (micro entity)	$148	$260	+$112
14	1792	Application for International Registration submitted to WIPO – Issue Fee (Second part) for the U.S. (Transmitting to the USPTO by WIPO) (undiscounted)	$740	$1,300	+$560
14	2792	Application for International Registration submitted to WIPO – Issue Fee (Second part) for the U.S. (Transmitting to the USPTO by WIPO) (small entity)	$296	$520	+$224
14	3792	Application for International Registration submitted to WIPO – Issue Fee (Second part) for the U.S. (Transmitting to the USPTO by WIPO) (micro-entity)	$148	$260	+$112

Table 2: Proposed Burden

Item No.	Fee Code	Item	Reponses (a)	New Fee (b)	New Non-hour Cost Burden (a) x (b) = (c)
1	1781	Application for International Registration (electronic) – Transmittal Fee (set by and collected by USPTO) (undiscounted)	62	$130	$8,060
1	2781	Application for International Registration (electronic) – Transmittal Fee (set by and collected by USPTO) (small entity)	85	$52	$4,420
1	3781	Application for International Registration (electronic) – Transmittal Fee (set by and collected by USPTO) (micro entity)	18	$26	$468
1	1791	International design application first part U.S. designation fee (undiscounted entity)	2,556	$1,300	$3,322,800
1	2791	International design application first part U.S. designation fee (small entity)	1,853	$520	$963,560
1	3791	International design application first part U.S. designation fee (micro entity)	392	$260	$101,920
5	1784	Petition to excuse applicant's failure to act within prescribed time limits in an international design application, delay less than or equal to two years (undiscounted)	1	$2,260	$2,260
5	2784	Petition to excuse applicant's failure to act within prescribed time limits in an international design application, delay less than or equal to two years (small entity)	1	$904	$904
5	3784	Petition to excuse applicant's failure to act within prescribed time limits in an international design application, delay less than or equal to two years (micro entity)	1	$452	$452
5	178D	Petition to excuse applicant's failure to act within prescribed time limits in an international design application, delay greater than two years (undiscounted entity)	1	$3,000	$3,000
5	278D	Petition to excuse applicant's failure to act within prescribed time limits in an international design application, delay greater than two years (small entity)	1	$1,200	$1,200
5	378D	Petition to excuse applicant's failure to act within prescribed time limits in an international design application, delay greater than two years (micro entity)	1	$600	$600
6	1783	Petition to Convert to a Design Application under 35 U.S.C. Chapter 16 (undiscounted)	1	$195	$195
6	2783	Petition to Convert to a Design Application under 35 U.S.C. Chapter 16 (small entity)	1	$78	$78
6	3783	Petition to Convert to a Design Application under 35 U.S.C. Chapter 16 (micro entity)	1	$39	$39
7	1462	Petition to Review a Filing Date (undiscounted)	1	$450	$450
7	2462	Petition to Review a Filing Date (small entity)	1	$180	$180
7	3462	Petition to Review a Filing Date (micro entity)	1	$90	$90
9	1462	Petitions to Commissioner (undiscounted)	1	$450	$450
9	2462	Petitions to Commissioner (small entity)	2	$180	$360
9	3462	Petitions to Commissioner (micro entity)	1	$90	$90
14	1509	Issue Fee to UPSTO for an International Design Application (undiscounted)	972	$1,300	$1,263,600
14	2509	Issue Fee to UPSTO for an International Design Application (small entity)	247	$520	$128,440
14	3509	Issue Fee to UPSTO for an International Design Application (micro entity)	30	$260	$7,800
14	1792	Application for International Registration submitted to WIPO – Issue Fee (Second part) for the U.S. (Transmitting to the USPTO by WIPO) (undiscounted)	420	$1,300	$546,000
14	2792	Application for International Registration submitted to WIPO – Issue Fee (Second part) for the U.S. (Transmitting to the USPTO by WIPO) (small entity)	155	$520	$80,600
14	3792	Application for International Registration submitted to WIPO – Issue Fee (Second part) for the U.S. (Transmitting to the USPTO by WIPO) (micro-entity)	80	$260	$20,800
		Totals	2,085	- - -	$6,458,816

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	1781	Application for International Registration (electronic) – Transmittal Fee (set by and collected by USPTO) (undiscounted)	$7,440	$8,060	+$620
1	2781	Application for International Registration (electronic) – Transmittal Fee (set by and collected by USPTO) (small entity)	$4,080	$4,420	+$340
1	3781	Application for International Registration (electronic) – Transmittal Fee (set by and collected by USPTO) (micro entity)	$432	$468	+$36
1	1791	International design application first part U.S. designation fee (undiscounted entity)	Not previously included in 0651-0075	$3,322,800	+$3,322,800
1	2791	International design application first part U.S. designation fee (small entity)	Not previously included in 0651-0075	$963,560	+$963,560
1	3791	International design application first part U.S. designation fee (micro entity)	Not previously included in 0651-0075	$101,920	+$101,920
5	1784	Petition to excuse applicant's failure to act within prescribed time limits in an international design application, delay less than or equal to two years (undiscounted)	$2,100	$2,260	+$160
5	2784	Petition to excuse applicant's failure to act within prescribed time limits in an international design application, delay less than or equal to two years (small entity)	$840	$904	+$64
5	3784	Petition to excuse applicant's failure to act within prescribed time limits in an international design application, delay less than or equal to two years (micro entity)	$420	$452	+$32
5	178D	Petition to excuse applicant's failure to act within prescribed time limits in an international design application, delay greater than two years (undiscounted entity)	Not previously included in 0651-0075	$3,000	+$3,000
5	278D	Petition to excuse applicant's failure to act within prescribed time limits in an international design application, delay greater than two years (small entity)	Not previously included in 0651-0075	$1,200	+$1,200
5	378D	Petition to excuse applicant's failure to act within prescribed time limits in an international design application, delay greater than two years (micro entity)	Not previously included in 0651-0075	$600	+$600
6	1783	Petition to Convert to a Design Application under 35 U.S.C. Chapter 16 (undiscounted)	$180	$195	+$15
6	2783	Petition to Convert to a Design Application under 35 U.S.C. Chapter 16 (small entity)	$72	$78	+$6
6	3783	Petition to Convert to a Design Application under 35 U.S.C. Chapter 16 (micro entity)	$36	$39	+$3
7	1462	Petition to Review a Filing Date (undiscounted)	$420	$450	+$30
7	2462	Petition to Review a Filing Date (small entity)	$168	$180	+$12
7	3462	Petition to Review a Filing Date (micro entity)	$84	$90	+$6
9	1462	Petitions to Commissioner (undiscounted)	$420	$450	+$30
9	2462	Petitions to Commissioner (small entity)	$336	$360	+$24
9	3462	Petitions to Commissioner (micro entity)	$84	$90	+$6
14	1509	Issue Fee to UPSTO for an International Design Application (undiscounted)	$719,280	$1,263,600	+$544,320
14	2509	Issue Fee to UPSTO for an International Design Application (small entity)	$73,112	$128,440	+$55,328
14	3509	Issue Fee to UPSTO for an International Design Application (micro entity)	$4,440	$7,800	+$3,360
14	1792	Application for International Registration submitted to WIPO – Issue Fee (Second part) for the U.S. (Transmitting to the USPTO by WIPO) (undiscounted)	$294,000	$546,000	+$252,000
14	2792	Application for International Registration submitted to WIPO – Issue Fee (Second part) for the U.S. (Transmitting to the USPTO by WIPO) (small entity)	$54,250	$80,600	+$26,350
14	3792	Application for International Registration submitted to WIPO – Issue Fee (Second part) for the U.S. (Transmitting to the USPTO by WIPO) (micro-entity)	$14,000	$20,800	+$6,800
		Totals	$1,176,194	$6,458,816	+$5,282,622

Summary of Changes

The aforementioned rulemaking results in the revision of 21 fees and the addition of six fees, with an increase of $5,282,622 in annual non-hourly costs to collection 0651-0075.

Changes in Burden

Burden Type	Currently Approved	Proposed Change	New Estimate
Non-hourly Cost Burden	$3,708,240	+$5,282,622	$8,990,862

0651-0075’s revised burden is as follows:

• 1,231 annual responses (unchanged)

• 2,052 annual hourly burden (unchanged)

• $8,990,862 annual non-hourly burden costs

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

2 The 178D/278D/378D fees were previously covered by the 1784/2784/3784 fees.