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Notice

Rules for Patent Maintenance Fees

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Information about this document as published in the Federal Register.

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ACTION:

Proposed collection; comment request.

SUMMARY:

The United States Patent and Trademark Office (USPTO), as part of its continuing effort to reduce paperwork and respondent burden, invites the general public and other Federal agencies to take this opportunity to comment on the revision of a continuing information collection, as required by the Paperwork Reduction Act of 1995, Public Law 104-13 (44 U.S.C. 3506(c)(2)(A)).

DATES:

Written comments must be submitted on or before October 15, 2002.

ADDRESSES:

Direct all written comments to Susan K. Brown, Records Officer, Office of Data Management, Data Administration Division, USPTO, Suite 310, 2231 Crystal Drive, Washington, DC 20231; by telephone at (703) 308-7400; or by electronic mail at susan.brown@uspto.gov.

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FOR FURTHER INFORMATION CONTACT:

Requests for additional information should be directed to Robert J. Spar, Director, Office of Patent Legal Administration, USPTO, Washington, DC 20231; by telephone at (703) 308-5107; or by electronic mail at bob.spar@uspto.gov.

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SUPPLEMENTARY INFORMATION

I. Abstract

Under 35 U.S.C. 41(b) and 37 CFR 1.20(e)-(g) and 1.362, the United States Patent and Trademark Office (USPTO) charges fees for maintaining in force all utility patents based on applications filed on or after December 12, 1980. Payment of these maintenance fees is required at 31/2, 71/2, and 111/2 years after the date the patent was granted. If the payment of the appropriate maintenance fee is not received within a grace period of six months following each of the above intervals (at 4, 8, or 12 years after the date of grant), the patent will expire at that time as set forth in 37 CFR 1.362(g). If a patent has expired due to nonpayment of a maintenance fee, the Start Printed Page 53343patentee may petition the USPTO to accept a delayed payment of the maintenance fee under 35 U.S.C. 41(c) and 37 CFR 1.378 by showing that the delayed payment was unavoidable or unintentional. Additionally, if the USPTO refuses to accept and record a maintenance fee that was filed prior to the expiration of a patent, the patentee may petition the Commissioner under 37 CFR 1.377 to accept and record the maintenance fee payment.

Payments of maintenance fees that are submitted during the six-month grace period or after the expiration of the patent must also include the appropriate surcharge as indicated by 37 CFR 1.20(h)-(i). Maintenance fees are not required for design or plant patents, or for reissue patents if the patent being reissued did not require maintenance fees. Submissions of maintenance fees and surcharges must include the relevant patent number and the United States application number in order to identify the patent for which the fee is being paid.

The rules of practice (37 CFR 1.33(d) and 1.363) permit applicants, patentees, assignees, or their representatives of record to specify a “fee address” for correspondence related to maintenance fees that is separate from the correspondence address associated with a patent or application. Only an address associated with a customer number can be established as a fee address. Customer numbers can be requested by using the Request for Customer Number form (PTO/SB/125), which is covered under OMB Control Number 0651-0035 “Representative and Address Provisions.” Maintaining a correct and updated address is necessary so that fee-related correspondence from the USPTO will be properly received by the applicant, patentee, assignee, or authorized representative. If a separate fee address is not specified for a patent or application, the USPTO will direct fee-related correspondence to the correspondence address of record.

The USPTO offers forms to assist the public with providing the information covered by this collection, including the information necessary to submit a patent maintenance fee payment, to file a petition to accept an unavoidably or unintentionally delayed maintenance fee payment, and to designate or change a fee address. Instead of submitting maintenance fee payments using the paper Maintenance Fee Transmittal Form (PTO/SB/45), customers may pay maintenance fees electronically over the Internet by using the Electronic Maintenance Fee Form, which is accessible through the USPTO Web site. Customers may use the Electronic Maintenance Fee Form to submit maintenance fee payments as well as surcharges incurred during the six-month grace period before patent expiration. However, to pay a maintenance fee after patent expiration, the maintenance fee payment and the appropriate delayed payment surcharge must be filed together with a Petition to Accept Unavoidably Delayed Payment under 37 CFR 1.378(b) or a Petition to Accept Unintentionally Delayed Payment under 37 CFR 1.378(c). These delayed payment submissions cannot be filed electronically over the Internet. In addition to accepting electronic payments by credit card or electronic funds transfer (EFT) through the USPTO Web site, the USPTO has also recently begun accepting online payments by USPTO deposit account. Otherwise, non-electronic payments may be made by check, credit card, or USPTO deposit account.

The USPTO is adding the Petition to Accept Payment of Maintenance Fees Prior to Expiration of Patent (37 CFR 1.377) to this collection. The public may use this petition to request that the Commissioner review a decision to refuse to accept the payment of a maintenance fee that was filed prior to the expiration of a patent. This petition is not a new requirement but was overlooked when this information collection was previously submitted for OMB approval. No forms are provided for this petition under 37 CFR 1.377.

II. Method of Collection

By mail, facsimile, or hand delivery to the USPTO. Maintenance fees and surcharges for fee payments made during the six-month grace period following each maintenance fee interval may also be submitted electronically over the Internet.

III. Data

OMB Number: 0651-0016.

Form Number(s): PTO/SB/45/47/65/66.

Type of Review: Revision of a currently approved collection.

Affected Public: Individuals or households; businesses or other for-profits; not-for-profit institutions; and the Federal Government.

Estimated Number of Respondents: 348,110 responses per year.

Estimated Time Per Response: The USPTO estimates that it will take the public approximately 5 minutes (0.08 hours) to 8 hours to complete this information, depending on the form or petition. This includes time to gather the necessary information, prepare the form or petition, and submit the completed request. The USPTO estimates that it will take the public approximately 20 seconds (0.006 hours) to submit the Electronic Maintenance Fee Form.

Estimated Total Annual Respondent Burden Hours: 30,495 hours per year.

Estimated Total Annual Respondent Cost Burden: $1,705,170 per year. The USPTO expects that the Petition to Accept Unavoidably Delayed Payment of Maintenance Fees in an Expired Patent (37 CFR 1.378(b)) and the Petition to Accept Payment of Maintenance Fees Prior to Expiration of Patent (37 CFR 1.377) will be prepared by attorneys. Using the professional rate of $252 per hour for associate attorneys in private firms, the USPTO estimates that the respondent cost burden for submitting these petitions will be $897,120 per year. The USPTO expects that the other items in this collection will be prepared by paraprofessionals. Using the paraprofessional rate of $30 per hour, the USPTO estimates that the respondent cost burden for submitting the other items in this collection will be $808,050 per year, for a total annual respondent cost burden of $1,705,170 per year.

ItemEstimated time for responseEstimated annual responsesEstimated annual burden hours
Maintenance Fee Transmittal Transactions5 minutes227,69018,215
Electronic Maintenance Fee Transactions20 seconds31,050186
Petition to Accept Unavoidably Delayed Payment of Maintenance Fee in an Expired Patent (37 CFR 1.378(b))8 hours3702,960
Petition to Accept Unintentionally Delayed Payment of Maintenance Fee in an Expired Patent (37 CFR 1.378(c))1 hour1,5501,550
Petition to Accept Payment of Maintenance Fee Prior to Expiration of Patent (37 CFR 1.377)4 hoursA150600
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“Fee Address” Indication Form5 minutes87,3006,984
Total348,11030,495

Estimated Total Annual Non-hour Respondent Cost Burden: $369,755,939. There are no capital start-up costs or maintenance costs associated with this information collection. However, this collection does have annual (non-hour) costs in the form of recordkeeping costs, postage costs, and filing fees. The recordkeeping costs for this collection are associated with using the Electronic Maintenance Fee Form to submit maintenance fee payments over the Internet. It is recommended that users of the Electronic Maintenance Fee Form print and retain a copy of the updated payment statement that appears on the screen after the transaction has been completed as a receipt and proof of timely payment. The USPTO estimates that it will take 5 seconds (0.001 hours) to print a copy of the payment statement and that approximately 31,050 submissions per year will use the Electronic Maintenance Fee Form, for a total of 31 hours per year for printing this receipt. Using the paraprofessional rate of $30 per hour, the USPTO estimates that the recordkeeping cost associated with this collection will be $930 per year.

The public may submit the paper forms and petitions in this collection to the USPTO by mail through the United States Postal Service. If the submission is sent by first-class mail, the public may also include a signed certification of the date of mailing in order to receive credit for timely filing. The USPTO estimates that the average first-class postage cost for a mailed submission will be 49 cents, and that customers filing a Maintenance Fee Transmittal Form, a Petition to Accept Unavoidably Delayed Payment, a Petition to Accept Unintentionally Delayed Payment, a Petition to Accept Payment of Maintenance Fee Prior to Expiration of Patent, or a “Fee Address” Indication Form may choose to mail their submissions to the USPTO. Therefore, the USPTO estimates that up to 317,060 submissions per year may be mailed to the USPTO, for a total postage cost of $155,359 per year.

This collection also has filing costs in the form of patent maintenance fees as well as surcharges for late payment of maintenance fees. The filing costs for this submission are calculated using the proposed fees for FY 2003 that would be effective on October 1, 2002. Under 37 CFR 1.20(e)-(g), the patent maintenance fees due at 31/2 years, 71/2 years, and 111/2 years after the date of grant would be $900, $2,070, and $3,170 respectively (or $450, $1,035, and $1,585 for small entities). The surcharge under 37 CFR 1.20(h) for paying a maintenance fee during the six-month grace period following the above intervals is $130 (or $65 for small entities). The surcharge under 37 CFR 1.20(i) for a petition to accept a maintenance fee after the six-month grace period for these intervals has expired is $700 where the delayed payment is shown to be unavoidable and $1,640 where the delayed payment is shown to be unintentional. The filing fee listed in 37 CFR 1.17(h) for a petition to accept the payment of a maintenance fee filed prior to the expiration of a patent is $130. The total estimated annual filing costs for this collection are calculated in the accompanying chart.

Fee or surchargeAmount of fee or surchargeEstimated annual responsesEstimated annual filing costs
Patent maintenance fee at 31/2 years$90098,460$88,614,000
Patent maintenance fee at 31/2 years (small entity)45031,20014,040,000
Patent maintenance fee at 71/2 years2,07059,550123,268,500
Patent maintenance fee at 71/2 years (small entity)1,03515,04015,566,400
Patent maintenance fee at 111/2 years3,17035,350112,059,500
Patent maintenance fee at 111/2 years (small entity)1,5857,67012,156,950
Surcharge for paying maintenance fee during the six-month grace period1305,050656,500
Surcharge for paying maintenance fee during the six-month grace period (small entity)656,420417,300
Petition to Accept Unavoidably Delayed Payment of Maintenance Fee in an Expired Patent (37 CFR 1.378(b))700370259,000
Petition to Accept Unintentionally Delayed Payment of Maintenance Fee in an Expired Patent (37 CFR 1.378(c))1,6401,5502,542,000
Petition to Accept Payment of Maintenance Fee Prior to Expiration of Patent (37 CFR 1.377)13015019,500
“Fee Address” Indication Form087,3000
Total348,110369,599,650

The USPTO estimates that the total filing costs associated with this collection will be $369,599,650 per year. The total non-hour respondent cost burden for this collection in the form of recordkeeping costs, postage costs, and filing fees is $369,755,939 per year.

IV. Request for Comments

Comments are invited on: (a) Whether the proposed collection of information is necessary for the proper performance of the functions of the agency, including whether the information shall have practical utility; (b) the accuracy of the agency's estimate of the burden (including hours and cost) of the proposed collection of information; (c) ways to enhance the quality, utility, and clarity of the information to be collected; and (d) ways to minimize the burden of the collection of information on respondents, e.g., the use of automated collection techniques or other forms of information technology.

Comments submitted in response to this notice will be summarized or Start Printed Page 53345included in the request for OMB approval of this information collection; they also will become a matter of public record.

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Dated: August 6, 2002.

Susan K. Brown,

Records Officer, USPTO, Office of Data Management, Data Administration Division.

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[FR Doc. 02-20671 Filed 8-14-02; 8:45 am]

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