[Federal Register: July 6, 2006 (Volume 71, Number 129)]
[Notices]
[Page 38388-38389]
From the Federal Register Online via GPO Access [wais.access.gpo.gov]
[DOCID:fr06jy06-53]
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DEPARTMENT OF COMMERCE
Patent and Trademark Office
[Docket No.: PTO-P-2006-0034]
Size Standard for Purposes of United States Patent and Trademark
Office Regulatory Flexibility Analysis for Patent-Related Regulations
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Request for comments.
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SUMMARY: The United States Patent and Trademark Office (USPTO) uses the
Small Business Administration (SBA) size standard for the purpose of
paying reduced patent fees as its size standard when conducting an
analysis or making a certification under the Regulatory Flexibility Act
for patent-related regulations. The Small Business Administration
Office of Advocacy (SBA-Advocacy) has questioned whether this is the
appropriate size standard for conducting an analysis or making a
certification under the Regulatory Flexibility Act. Pursuant to the
Regulatory Flexibility Act, the USPTO is providing this opportunity for
public comment on the establishment of
[[Page 38389]]
the SBA's definition of ``small business concern'' for the purpose of
paying reduced patent fees as the definition of ``small business
concern'' for Regulatory Flexibility Act purposes for patent-related
regulations.
Comment Deadline Date: To be ensured of consideration, written
comments must be received on or before August 7, 2006. No public
hearing will be held.
ADDRESSES: Comments should be sent by electronic mail message over the
Internet addressed to rfa-patents.comments@uspto.gov. Comments may also
be submitted by mail addressed to: Mail Stop Comments--Patents,
Commissioner for Patents, P.O. Box 1450, Alexandria, VA, 22313-1450, or
by facsimile to (571) 273-7735, marked to the attention of Christina T.
Donnell. Although comments may be submitted by mail or facsimile, the
Office prefers to receive comments via the Internet.
Comments may also be sent by electronic mail message over the
Internet via the Federal eRulemaking Portal. See the Federal
eRulemaking Portal Web site (http://www.regulations.gov) for additional
instructions on providing comments via the Federal eRulemaking Portal.
The comments will be available for public inspection at the Office
of the Commissioner for Patents, located in Madison East, Tenth Floor,
600 Dulany Street, Alexandria, Virginia, and will be available via the
Office Internet Web site (address: http://www.uspto.gov). Because
comments will be made available for public inspection, information that
is not desired to be made public, such as an address or phone number,
should not be included in the comments.
FOR FURTHER INFORMATION CONTACT: Christina T. Donnell, Senior Petition
Attorney, Office of Petitions, Office of the Deputy Commissioner for
Patent Examination Policy, by telephone at (571) 272-3211, by mail
addressed to: Mail Stop Comments--Patents, Commissioner for Patents,
P.O. Box 1450, Alexandria, VA, 22313-1450, or by facsimile to (571)
273-7735, marked to the attention of Christina T. Donnell.
SUPPLEMENTARY INFORMATION: The patent statute provides that ``fees
charged under [35 U.S.C. 41](a), (b) and (d)(1) shall be reduced by 50
percent with respect to their application to any small business concern
as defined under section 3 of the Small Business Act, and to any
independent inventor or nonprofit organization as defined in
regulations issued by the Director.'' 35 U.S.C. 41(h)(1). The SBA
defines a small business concern for the purpose of paying reduced
patent fees as one: ``(a) Whose number of employees, including
affiliates, does not exceed 500 persons; and (b) Which has not
assigned, granted, conveyed, or licensed (and is under no obligation to
do so) any rights in the invention to any person who made it and could
not be classified as an independent inventor, or to any concern which
would not qualify as a non-profit organization or a small business
concern under this section.'' 13 CFR 121.802.
The USPTO uses the SBA size standard for the purpose of paying
reduced patent fees in 13 CFR 121.802 as the size standard when
conducting an analysis or making a certification under the Regulatory
Flexibility Act for patent-related regulations. See e.g., Changes To
Support Implementation of the United States Patent and Trademark Office
21st Century Strategic Plan, 69 FR 56481, 56530 (Sept 21, 2004)
(discussion indicating that small entities for purposes of Regulatory
Flexibility Act are considered a subset of the small entities for
purposes of paying reduced patent fees). The SBA-Advocacy, however, has
questioned whether the USPTO's size standard is under-inclusive because
it excludes ``any business concern that has assigned, granted,
conveyed, or licensed (and is under no obligation to do so) any rights
in the invention to any person who made it and could not be classified
as an independent inventor, or to any concern which would not qualify
as a non-profit organization or a small business concern under [13 CFR
121.802].'' 13 CFR 121.802(b).
The size standard set forth in 13 CFR 121.802 is the size standard
``for the purpose of paying reduced patent fees'' and thus appears to
be limited to payment of patent fees. See 13 CFR 121.801. The SBA small
business size standards are set forth in 13 CFR 121.201. The USPTO uses
the SBA size standard for the purpose of paying reduced patent fees as
its size standard when conducting an analysis or making a certification
under the Regulatory Flexibility Act because the USPTO has no business
need (other than to conduct an analysis or make a certification under
the Regulatory Flexibility Act) to collect information from patentees
and patent applicants concerning whether they are a small business
concern using the size standards set forth in 13 CFR 121.201, and thus,
the USPTO does not collect this information. The USPTO is proposing to
use the size standard set forth in 13 CFR 121.802 as its size standard
when conducting an analysis or making a certification under the
Regulatory Flexibility Act to avoid the need to collect information
from patentees and patent applicants concerning whether they are a
small business concern using the size standards set forth in 13 CFR
121.201.
The Regulatory Flexibility Act permits an agency head to establish,
for purposes of Regulatory Flexibility Act analysis and certification,
one or more definitions of ``small business concern'' that are
appropriate to the activities of the agency, after consultation with
the Office of Advocacy of the Small Business Administration and after
opportunity for public comment. See 5 U.S.C. 601(3) and 13 CFR
121.903(c). Therefore, the USPTO is publishing for comment a definition
of small business concern for purposes of the USPTO conducting an
analysis or making a certification under the Regulatory Flexibility Act
for patent-related regulations. Specifically, the USPTO's definition of
small business concern for Regulatory Flexibility Act purposes is a
business or other concern that: (1) Meets the SBA's definition of a
``business concern or concern'' set forth in 13 CFR 121.105; and (2)
meets the size standards set forth in 13 CFR 121.802 for the purpose of
paying reduced patent fees, namely an entity: (a) Whose number of
employees, including affiliates, does not exceed 500 persons; and (b)
which has not assigned, granted, conveyed, or licensed (and is under no
obligation to do so) any rights in the invention to any person who made
it and could not be classified as an independent inventor, or to any
concern which would not qualify as a non-profit organization or a small
business concern under this definition.
Dated: June 28, 2006.
Jon W. Dudas,
Under Secretary of Commerce for Intellectual Property and Director of
the United States Patent and Trademark Office.
[FR Doc. E6-10564 Filed 7-5-06; 8:45 am]
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