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Notice

Patent Processing (Updating)

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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 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 July 31, 2006.

ADDRESSES:

You may submit comments by any of the following methods:

E-mail: Susan.Brown@uspto.gov. Include “0651-0031 comment” in the subject line of the message.

Fax: 571-273-0112, marked to the attention of Susan Brown.

Mail: Susan K. Brown, Records Officer, Office of the Chief Information Officer, Architecture, Engineering and Technical Services, Data Architecture and Services Division, U.S. Patent and Trademark Office, P.O. Box 1450, Alexandria, VA 22313-1450.

Federal e-Rulemaking Portal: http://www.regulations.gov.

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FOR FURTHER INFORMATION CONTACT:

Requests for additional information should be directed to the attention of Robert J. Spar, Director, Office of Patent Legal Administration, U.S. Patent and Trademark Office, P.O. Box 1450, Alexandria, VA 22313-1450; by telephone at 571-272-7700; or by e-mail at bob.spar@uspto.gov.

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SUPPLEMENTARY INFORMATION:

I. Abstract

The United States Patent and Trademark Office (USPTO) is required by 35 U.S.C. 131 to examine an application for patent and, when appropriate, issue a patent. Also, the USPTO is required to publish patent applications, with certain exceptions, promptly after the expiration of a period of eighteen months from the earliest filing date for which a benefit is sought under Title 35, United States Code (“eighteen-month publication”). Certain situations may arise which require that additional information be supplied in order for the USPTO to further process the patent or application. The USPTO administers the statutes through various sections of the rules of practice in 37 CFR part 1.

The information in this collection can be used by the USPTO to continue the processing of the patent or application, to ensure that applicants are complying with the patent regulations, and to aid in the prosecution of the application.

The USPTO is adding two new forms into this collection. PTO/SB/33, Pre-Appeal Brief Request for Review, is a new optional procedure that is intended to spare applicants the added time and expense of preparing an appeal brief for an application that ultimately may be categorized as “not in condition for appeal.”

Also new is form PTO/SB/28, Petition to Make Special Under Accelerated Examination Program. The requirement for the petition is already approved in the collection; however, the response time has been increased from 1 hour to 12 hours. Applicants who choose to participate in this optional procedure in order to receive the benefit of accelerated examination will have to share in the examination burden to a greater extent. In return, such applicants will receive the benefit of an early patentability determination for their claimed invention.

A previously overlooked requirement, the Request for Corrected Filing Receipt, is also being added into the collection, in both paper and electronic formats. Forms for this requirement are currently under development.

There are 41 forms associated with this collection.

II. Method of Collection

By mail, facsimile, or hand delivery to the USPTO. The eIDS (electronic information disclosure statements), the electronic filing system (EFS) copy of the application for publication, and the request for corrected filing receipt may be submitted electronically over the Internet.

III. Data

OMB Number: 0651-0031.

Form Number(s): PTO/SB/08/08a/08b, PTO/SB/17i, PTO/SB/17P; PTO/SB/21-28, PTO/SB/24A, PTO/SB/24B, PTO/SB/30-33, PTO/SB/35-39, PTO/SB/42-43, PTO/SB/61-64, PTO/SB/64a, PTO/SB/67-68, PTO/SB/91-92, PTO/SB/96-97, PTO-2053-A/B, PTO-2054-A/B, PTO-2055-A/B, PTOL/413A.

Type of Review: Revision of a currently approved collection.

Affected Public: Individuals or households; business or other for-profit; not-for-profit institutions; farms; the Federal Government; and state, local or tribal governments.

Estimated Number of Respondents: 2,604,029 responses per year.

Estimated Time Per Response: The USPTO estimates that it will take the public between 1 minute and 48 seconds (0.03 hours) to 12 hours (12.0 hours), depending upon the complexity of the situation, to gather, prepare, and submit the various documents in this information collection.

Estimated Total Annual Respondent Burden Hours: 3,157,840 hours per year.

Estimated Total Annual Respondent Cost Burden: $504,711,200 per year. The USPTO expects that the transmittal form; the petition for extension of time under 37 CFR 1.136(a); express abandonment under 1.138; express abandonment to avoid publication under 1.138(c); requests to access, inspect and copy; deposit account order form; certificates of mailing/transmission; electronic filing system (EFS) copy of application for publication; the copy of the applicant or patentee's record of the application; the request for voluntary publication or republication; the petition for request for documents in a form other than that provided by 1.19; the request for processing of replacement drawings; and the request for corrected filing receipt will be prepared by paraprofessionals. Using the paraprofessional rate of $90 per hour, the USPTO estimates that the respondent cost burden for these items will be $191,469,600. The USPTO estimates that the remaining items in this collection will be prepared by associate attorneys in private firms. Using the professional hourly rate of $304 per hour for associate attorneys in private firms, the USPTO estimates $313,241,600 per year for salary costs associated with respondents for the other items in this information collection. The total respondent cost burden is estimated to be $504,711,200 per year. Start Printed Page 30663

ItemEstimated time for responseEstimated annual responsesEstimated annual burden hours
Information Disclosure Statements—Paper2 hours423,000846,000
eIDS (Information Disclosure Statements)2 hours47,00094,000
Transmittal Form2 hours1,039,5002,079,000
Petition for Extension of Time under 37 CFR 1.136(a)6 minutes189,00018,900
Petition for Extension of Time under 37 CFR 1.136(b)30 minutes5427
Express Abandonment Under 37 CFR 1.13812 minutes13,8252,765
Petition for Express Abandonment to Avoid Publication Under 1.138(c)12 minutes500100
Disclaimers12 minutes15,0003,000
Request for Expedited Examination of a Design Application6 minutes13013
Notice of Appeal12 minutes16,5003,300
Information Disclosure Citation in a Patent2 hours1,8303,660
Petition for Revival of an Application for Patent Abandoned Unavoidably8 hours5854,680
Petition for Revival of an Application for Patent Abandoned Unintentionally1 hour6,9506,950
Petition for Revival of an Application for Patent Abandoned for Failure to Notify the Office of a Foreign or International Filing1 hour2,4002,400
Requests to Access, Inspect and Copy12 minutes18,6503,730
Deposit Account Order Form12 minutes1,160232
Certificates of Mailing/Transmission1 minute, 48 seconds590,00017,700
Statement Under 37 CFR 3.73(b)12 minutes19,4503,890
Non-publication Request6 minutes31,5003,150
Rescission of Previous Non-publication Request (35 U.S.C. § 122(b)(2)(B)(ii)) and, if applicable, Notice of Foreign Filing (35 U.S.C. § 122(b)(2)(B)(iii))6 minutes52553
Electronic Filing System (EFS) Copy of Application for Publication2 hours, 30 minutes1,0002,500
Copy of File Content Showing Redactions4 hours1248
Copy of the Applicant or Patentee's Record of the Application (including copies of the correspondence, list of the correspondence, and statements verifying whether the record is complete or not)1 hour235235
Request for Continued Examination (RCE) Transmittal12 minutes56,00011,200
Request for Oral Hearing Before the Board of Patent Appeals and Interferences12 minutes750150
Request for Deferral of Examination 37 CFR 1.103(d)12 minutes5311
Request for voluntary publication or republication12 minutes7014
Applicant Initiated Interview Request Form21 minutes1,600560
Petition for Request for Documents in a Form Other Than That Provided by 1.191 hour5050
Petitions under 37 CFR 1.17(f) include:4 hours3,30013,200
Petition to Accord a Filing Date under 1.57(a)
Petition to Accord a Filing Date under 1.153(e)
Petition for Decision on a Question Not Specifically Provided For
Petition to Suspend the Rules
Petitions under 37 CFR 1.17(g) include:2 hours3,6007,200
Petition to Access an Assignment Record
Petition for Access to an Application
Petition for Expungement and Return of Information
Petition to Suspend Action in an Application
Petitions under 37 CFR 1.17(h) include existing petition not covered in any collection:1 hour10,40010,400
Petition for Accepting Color Drawings or Photographs
Petition for Entry of a Model or Exhibit
Petition to Withdraw an Application from Issue
Petition to Defer Issuance of a Patent
Request for Processing of Replacement Drawings to Include the Drawings in Any Patent Application Publication1 hour5050
Processing Fee Under 37 CFR 1.17(i) Transmittal5 minutes50040
Petition Fee Under 37 CFR 1.17(f),(g) and (h) Transmittal5 minutes17,3001,384
Request to Retrieve Electronic Priority Application(s) Under 37 CFR 1.55(d)8 minutes36,8004,784
Authorization to Permit Access to Application by Participating Offices Under 37 CFR 1.14(h)6 minutes21,0002,100
Petition for Express Abandonment to Obtain a Refund12 minutes3,000600
Pre-Appeal Brief Request for Review30 minutes3,2001,600
Request for Corrected Filing Receipt5 minutes25,0002,000
Request for Corrected Filing Receipt (electronic)5 minutes2,050164
Petition to Make Special Under Accelerated Examination Program12 hours5006,000
Total2,604,0293,157,840

Estimated Total Annual (non-hour) Respondent Cost Burden: $156,933,477. There are no capital start-up or maintenance costs associated with this information collection. However, this collection does have record keeping costs, postage costs, and filing fees.

When submitting the information in this collection electronically, the applicant is strongly urged to retain a copy of the file submitted to the USPTO as evidence of authenticity and to keep the acknowledgment receipt as clear evidence that the file was received by the USPTO on the date noted. The Start Printed Page 30664USPTO estimates that it will take 5 seconds (0.001 hours) to print and retain a copy of the eIDS, the EFS application for publication and the request for corrected filing receipt submissions, and that approximately 50,050 submissions per year (47,000 eIDS, 1,000 EFS, and 2,050 corrected filing receipt) will use this option, for a total of 50 hours per year for printing this receipt. Using the paraprofessional rate of $90 per hour, the USPTO estimates that the record keeping cost associated with this collection will be $4,500 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. Therefore, the USPTO estimates that up to 2,553,979 submissions per year may be mailed to the USPTO at an average first-class postage cost of 63 cents, for a total postage cost of $1,609,007.

There is also annual (non-hour) cost burden in the way of filing fees associated with this collection. The total estimated filing costs of $155,319,970 are calculated in the accompanying chart:

ItemResponsesFiling fee ($)Total non-hour cost burden (a) × (b)
(a)(b)(c)
Submission of an Information Disclosure Statement (IDS) under 37 CFR 1.97(c) or (d)42,200$180.00$7,596,000.00
Transmittal forms1,039,500None0
One month extension of time under 37 CFR 1.136(a)60,270120.007,232,400.00
One month extension of time under 37 CFR 1.136(a) (small entity)23,50360.001,410,180.00
Two month extension of time under 37 CFR 1.136(a)31,225450.0014,051,250.00
Two month extension of time under 37 CFR 1.136(a) (small entity)12,891225.002,900,475.00
Three month extension of time under 37 CFR 1.136(a)32,7241,020.0033,378,480.00
Three month extension of time under 37 CFR 1.136(a) (small entity)16,413510.008,370,630.00
Four month extension of time under 37 CFR 1.136(a)3,3701,590.005,358,300.00
Four month extension of time under 37 CFR 1.136(a) (small entity)2,267795.001,802,265.00
Five month extension of time under 37 CFR 1.136(a)2,1632,160.004,672,080.00
Five month extension of time under 37 CFR 1.136(a) (small entity)4,1741,080.004,507,920.00
Extension of time under 37 CFR 1.136(b)54None0
Express Abandonment under 37 CFR 1.13813,825None0
Petition for express abandonment to avoid publication under 37 CFR 1.138(c))500130.0065,000.00
Statutory Disclaimer11,250130.001,462,500.00
Statutory Disclaimer (small entity)3,75065.00243,750.00
Requests for Expedited Examination of a design application130900.00117,000.00
Notice of Appeal12,570500.006,285,000.00
Notice of Appeal (small entity)3,930250.00982,500.00
Information Disclosure Citations1,830None0
Petition to Revive Unavoidably Abandoned Application250500.00125,000.00
Petition to Revive Unavoidably Abandoned Application (small entity)335250.0083,750.00
Petition to Revive Unintentionally Abandoned Application3,7001,500.005,550,000.00
Petition to Revive Unintentionally Abandoned Application (small entity)3,250750.002,437,500.00
Petition for Revival of an Application for Patent Abandoned for Failure to Notify the Office of a Foreign or International Filing1,4401,300.001,872,000.00
Petition for Revival of an Application for Patent Abandoned for Failure to Notify the Office of a Foreign or International Filing—Small Entity960650.00624,000.00
Requests to Access, Inspect and Copy18,650None0
Deposit Account Order Form1,160None0
Certificates of Mailing/Transmission590,000None0
Statement Under 37 CFR 3.73(b)19,450None0
Non-publication Request31,500None0
Rescission of Non-publication Request525None0
Electronic Filing System (EFS) Copy of Application for Publication1,000None0
Electronic Filing System (EFS) Copy of Application for Voluntary Publication or Republication70430.0030,100.00
Copy of File Content Showing Redactions12None0
Copy of the Applicant or Patentee's Record of the Application (including copies of the correspondence, list of the correspondence, and statements verifying whether the record is complete or not)235None0
Request for Continued Examination (RCE) Transmittal44,800790.0035,392,000.00
Request for Continued Examination (RCE) Transmittal (small entity)11,200395.004,424,000.00
Request for an Oral Hearing6001,000.00600,000.00
Request for an Oral Hearing (small entity)150500.0075,000.00
Processing fee for deferral of examination53430.0022,790.00
Request for voluntary publication or republication70130.009,100.00
Applicant initiated interview request form1,600None0
Petition for request for documents in a form other than that provided by 1.1950130.006,500.00
Petitions under 37 CFR 1.17(f) include:3,300400.001,320,000.00
Petition to Accord a Filing Date under 1.57(a)
Petition to Accord a Filing Date under 1.153(e)
Petition for Decision on a Question Not Specifically Provided For
Petition to Suspend the Rules
Petitions under 37 CFR 1.17(g) include:3,600200.00720,000.00
Petition to Access an Assignment Record
Petition for Access to an Application
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Petition for Expungement and Return of Information
Petition to Suspend Action in an Application
Petitions under 37 CFR 1.17(h) include existing petition not covered in any collection:10,400130.001,352,000.00
Petition for Accepting Color Drawings or Photographs
Petition for Entry of a Model or Exhibit
Petition to Withdraw an Application from Issue
Petition to Defer Issuance of a Patent
Request for processing of replacement drawings to include the drawings in any patent application publication50130.006,500.00
Processing fee under 37 CFR 1.17(I) transmittal500130.0065,000.00
Petition Fee Under 37 CFR 1.17(f),(g) and (h) Transmittal17,300None0
Request to retrieve electronic priority application(s) under 37 CFR 1.55(d)36,800None0
Authorization to permit access to application by participating offices under 37 CFR 1.17(h)21,000None0
Petition for express abandonment to obtain a refund3,000None0
Pre-Appeal Brief Request for Review (filed with the Notice of Appeal)2,400None0
Pre-Appeal Brief Request for Review (filed later than the Notice of Appeal)800130.00104,000.00
Correction Request Form25,000None0
Correction Request Form (electronic)2,050None0
Petition to Make Special Under Accelerated Examination Program500130.00065,000.00
Total2,176,299155,319,970.00

The USPTO estimates that the total (non-hour) respondent cost burden for this collection in the form of record keeping costs, postage costs, and filing fees is $156,933,477.

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, including through the use of automated collection techniques or other forms of information technology.

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

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Dated: May 22, 2006.

Susan K. Brown,

Records Officer, USPTO, Office of the Chief Information Officer, Architecture, Engineering and Technical Services, Data Architecture and Services Division.

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[FR Doc. E6-8241 Filed 5-26-06; 8:45 am]

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