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Notice

Initial Patent Applications

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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 November 13, 2006.

ADDRESSES:

You may submit comments by any of the following methods:

  • E-mail: Susan.Brown@uspto.gov. Include “0651-0032 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.
Start Further Info

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

Article 1, Section 8, Clause 8 of the Constitution provides that Congress shall have the power * * *” [t]o promote the progress of science and useful arts, by securing for limited times Start Printed Page 53670to authors and inventors the exclusive right to their respective writings and discoveries.” Congress has exercised this grant of power under the Constitution to enact the patent statute, Title 35, U.S.C., and to establish the United States Patent and Trademark Office (USPTO).

The USPTO is required by 35 U.S.C. 131 to examine applications for patents. The patent statute and regulations require applicants to provide sufficient information (specification containing a description of the invention and at least one claim defining the property right sought by the applicant; a drawing or photograph, where necessary, for an understanding of the invention; a signed oath or declaration, and the necessary fees) to allow the USPTO to properly examine the application to determine whether it meets the criteria set forth in the patent statute and regulations to be issued as a patent. The USPTO administers the statute through various rules in 37 CFR 1.16 through 1.84.

The new utility, design, and provisional applications can be submitted to the USPTO in paper or they can be submitted electronically. Previously, applications were submitted electronically through the Electronic Filing System (EFS). In March 2006, the USPTO deployed EFS Web, a new Web based patent application and document submission solution. EFS-Web does not require special software and applicants can use their own systems, software, and processes to create the patent application documents. The EFS Web uses standard Web-based screens and prompts to assist the applicant in submitting their patent application documents.

The USPTO has expanded the types of applications that can be filed electronically. In addition to the new original utility and provisional applications that are already filed electronically, new original design applications can now be filed electronically.

In addition to the filing, search, and examination fees that are already in the collection, two new patent fees from the Consolidated Appropriations Act of 2005 are being added into the collection at this time. This includes a new filing fee of $75 for small entities filing original utility applications electronically on or after 12/8/04 and an application size fee that is paid for applications filed under 35 U.S.C. 111 on or after 12/8/04, in which the specification and the drawings exceed 100 sheets of paper.

Five other existing fees or surcharges that were previously overlooked are being added into the collection at this time. This includes surcharges for the late filing of the fees, oaths, or declarations and for the late filing of the coversheet for provisional applications. The other fees are for filing more than 3 independent claims, filing more than 20 claims, and for filing multiple dependent claims in a patent application.

Unlike the last renewal, the utility, design, and plant applications are no longer grouped together, but are broken out separately. This permits the USPTO to show exactly how many of the different applications have been filed. It also makes it easier to account for the electronic filings since the utility, design, and provisional applications can be filed electronically, but the plant applications are not filed electronically. The response and fee tables can also be more closely aligned to each other than they were previously.

There are 28 forms in this collection. The electronic Application Data Sheet has a form number, but the paper version does not since it is a suggested format and not an official paper form.

II. Method of Collection

By mail, facsimile (limited to petitions to accept delayed priority claims and requests for continued prosecution applications), or hand delivery to the USPTO. New utility, design, and provisional applications can also be submitted electronically through the EFS.

III. Data

OMB Number: 0651-0032.

Form Number(s): PTO/SB/01/01A/02/02LR/03/03A/04/05/06/07/13/PCT/14/16/17/18/19/29/29A/101-110.

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: 543,590 responses per year.

Estimated Time per Response: The USPTO estimates that it takes the public approximately 24 minutes to 10 hours and 45 minutes (0.40 to 10.75 hours) to complete this information, depending on the request. This includes the time to gather the necessary information, prepare the application, petition, or CD submission, and submit the completed request to the USPTO. Given the newness of electronic filing, the USPTO believes that, for now, it will take the same amount of time to gather the necessary information, prepare the new utility, design, or provisional application, and submit it to the USPTO, whether the applicant submits it in paper form or electronically.

Estimated Total Annual Respondent Burden Hours: 4,748,122 hours per year.

Estimated Total Annual Respondent Cost Burden: $1,443,429,088 per year. The USPTO expects that all of the information in this collection will be prepared by an attorney. Using the professional hourly rate of $304 per hour for associate attorneys in private firms, the USPTO estimates that the total respondent cost burden for this collection is $1,443,429,088 per year.

ItemEstimated time for responseEstimated annual responsesEstimated annual burden hours
Original New Utility Applications—No Application Data Sheet10 hours and 45 minutes162,4001,745,800
Electronic Original New Utility Applications—No Application Data Sheet10 hours and 45 minutes69,600748,200
Original New Plant Applications—No Application Data Sheet10 hours and 45 minutes1,11511,986
Original New Design Applications—No Application Data Sheet10 hours and 45 minutes14,945160,659
Electronic Original Design Applications—No Application Data Sheet10 hours and 45 minutes6,41068,908
Original New Utility Applications—Application Data Sheet10 hours and 36 minutes40,600430,360
Electronic Original New Utility Applications—Application Data Sheet10 hours and 36 minutes17,400184,440
Original New Plant Applications—Application Data Sheet10 hours and 36 minutes2853,021
Original New Design Applications—Application Data Sheet10 hours and 36 minutes3,74039,644
Electronic New Design Applications—Application Data Sheet10 hours and 36 minutes1,60517,013
Continuation/Divisional of an International Application—No Application Data Sheet10 hours and 45 minutes7,56081,270
Utility Continuation/Divisional Applications54 minutes56,93051,237
Plant Continuation/Divisional Applications54 minutes230207
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Design Continuation/Divisional Applications54 minutes750675
Continued Prosecution Applications—Design (Request Transmittal and Receipt)24 minutes260104
Utility Continuation-in-Part Applications5 hours and 15 minutes17,72093,030
Plant Continuation-in-Part Applications5 hours and 15 minutes70368
Design Continuation-in-Part Applications5 hours and 15 minutes4802,520
Provisional Application for Patent Cover Sheet8 hours96,680773,440
Electronic Provisional Application for Patent Cover Sheet8 hours41,490331,920
Petition to Accept Unintentionally Delayed Priority Claim1 hour920920
Petition to Accept Non-Signing Inventors or Legal Representatives/Filing by Other Than all the Inventors or a Person not the Inventor1 hour2,4002,400
Total543,5904,748,122

Estimated Total Annual Non-hour Respondent Cost Burden: $695,587,260 per year. There are capital start-up, postage, recordkeeping, and drawing costs, as well as filing fees, associated with this information collection.

Applicants can use Compact Disk-Read Only Memory (CD-ROM) or Compact Disk-Recordables (CD-R) to submit patent applications containing large computer program listings to the USPTO. Therefore, the costs for purchasing blank CD-R media (CDs), cases and labels for the CDs, and a padded mailing envelope for shipping, are being added to the annual (non-hour) costs for this collection. Blank CD-R media with plastic jewel cases can be purchased for approximately $10 for 10 blank CDs, or about $1 per disc. The average cost of software for labeling CDs, including blank labels and case inserts, is approximately $20. Padded 8.5 x 11-inch mailing envelopes for shipping the CDs cost approximately $12 for a package of 12, or about $1 per envelope. In sum, the USPTO estimates that the total costs for the blank CD-R media, the software for labeling the CDs, and the mailing envelope are approximately $42 per year. The USPTO estimates that 3 patent applications will need to be submitted on CD per year, which when multiplied by the total cost of the media, the labeling software, and the mailing envelopes, equals $126 in total costs. Therefore, the USPTO estimates that the total capital start-up costs for this collection will be $126 per year.

The applications, the petition to accept a delayed priority claim, the petition to accept non-signing inventors or legal representatives, and the oversized program listing CD submissions may be submitted by mail through the United States Postal Service. The USPTO recommends that applicants file initial patent applications (which also include the continued prosecution, continuation and divisional, continuation-in-part, and provisional applications) by Express Mail to establish the filing date (otherwise the filing date of the application will be the date that it is received at the USPTO). The USPTO estimates that the average cost for sending an initial application by Express Mail will be $18.80, and that customers filing documents associated with these initial applications may choose this option to mail their submissions to the USPTO. The USPTO estimates that up to 403,765 submissions per year may be mailed to the USPTO at an average Express Mail rate of $18.80, for a total postage cost of $7,590,782.

The petitions for delayed priority claim or for acceptance of non-signing inventors or legal representatives can be sent by first-class mail. The USPTO estimates that the average first-class postage cost for a mailed submission will be 63 cents, and that customers filing these petitions may choose to mail their submissions to the USPTO. Therefore, the USPTO estimates that up to 3,320 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 $2,092 per year.

In the case of the oversized program listing CD submissions, the USPTO estimates that the average postage cost for these submissions will be 95 cents, to cover the costs of mailing the CD, the application transmittal form, and the cover letter. The USPTO estimates that 3 oversized program listing CD submissions will be received per year, for a total postage cost of $3 per year.

The total postage cost for this collection is $7,592,877 per year.

There are recordkeeping costs associated with the oversized program listing CD submissions and the electronic filing of new utility, design, and provisional applications. The USPTO advises applicants who submit applications with oversized computer listings on CD to retain a back-up copy of the CD and a printed copy of the application transmittal form for their records. The USPTO estimates that it will take an additional 5 minutes for the applicant to produce this back-up CD copy and 2 minutes to print the copy of the application transmittal form, for a total of 7 minutes (0.12 hours) for each oversized submission. The USPTO estimates that approximately 3 applications per year will be submitted with oversized computer program listings, for a total of 0.36 hours per year for retaining the back-up CD and printed application transmittal form. The USPTO believes that these back-up copies will be prepared by paraprofessionals with an estimated hourly rate of $90 per hour, for a recordkeeping cost for these back-up copies of $32 per year.

In addition, the USPTO also strongly advises applicants who file their new utility, design, and provisional applications electronically to retain a copy of the file submitted to the USPTO as evidence of authenticity, in addition to keeping the acknowledgment receipt as clear evidence that the file was received by the USPTO on the date noted. The USPTO estimates that it will take 5 seconds (0.001 hours) to print and retain a copy of the new utility, design, and provisional submissions and that approximately 136,505 new submissions per year (87,000 utility, 8,015 design, and 41,490 provisional applications) will use this option, for a total of 137 hours per year. Using the paraprofessional rate of $90 per hour, the USPTO estimates that the recordkeeping cost for retaining this copy will be $12,330 per year.

The total recordkeeping cost for this collection is $12,362 per year.

Patent applicants can submit drawings with the utility, design, plant, and provisional applications. Applicants can prepare these drawings on their own or they can hire patent Start Printed Page 53672illustration services firms to create them. As a basis for calculating the drawing costs, the USPTO believes that all applicants will have their drawings prepared by the patent illustration firms. Estimates for the drawings can vary greatly, depending on the number of figures that need to be produced, the total number of pages for the drawings, and the complexity of the drawings. The utility, plant, and design continuation and divisional applications use the same drawings as the initial filings, so they are not included in these totals. The continuation-in-part applications may use some of the same drawings as the initial applications and some new drawings may be submitted, so those numbers are included in these estimates. The drawings for the continued prosecution applications are also included in the drawing cost totals. There are no continuation, divisional, or continuation-in-part provisional applications.

The USPTO estimates that it can cost $58 per sheet to produce the utility drawings and that on average, 11 sheets of drawings are submitted, for an average cost of $638 to produce the utility drawings. Out of 307,720 utility applications submitted per year, the USPTO estimates that 91% or 280,025 applications will be submitted with drawings, for a total of $178,655,950.

The USPTO estimates that it can cost $68 per sheet to produce design drawings and that on average 4.8 sheets of drawings are submitted, for an average cost of $326 to produce design drawings. Out of 27,440 design applications submitted per year, the USPTO estimates that 100% will be submitted with drawings, for a total of $8,945,440.

The USPTO estimates that it can cost $35 per sheet to produce plant drawings and that on average 2 sheets of drawings are submitted, for an average cost of $70 to produce plant drawings. Out of 1,470 plant applications submitted per year, the USPTO estimates that 100% will be submitted with drawings, for a total of $102,900.

The USPTO estimates that it can cost $58 per sheet to produce provisional drawings and that on average 7.5 sheets of drawings are submitted, for an average cost of $435 to produce provisional drawings. Out of 138,170 provisional applications submitted per year, the USPTO estimates that 78% or 107,773 applications will be submitted with drawings, for a total of $46,881,255.

The USPTO estimates that at least $234,585,545 could be added to the total non-hour cost burden as a result of patent applicants using patent illustration firms to produce the drawings for their utility, design, plant, and provisional applications.

There is also annual nonhour cost burden in the way of filing fees associated with this collection. The filing, search, and examination fees for the utility, plant, design, and provisional applications (including the continuation and divisional, continued prosecution, and continuation-in-part applications) are determined by which filing status (other entity or small entity) the applicant has selected. The filing fees for the electronically-filed new utility applications for small entities are $75, but for the rest of the applications the fees are the same as those for the paper applications. The small entity status does not apply to the petition to accept a delayed priority claim or to the petition to accept non-signing inventors or legal representatives/filing by other than all the inventors or a person not the inventor.

The total estimated filing costs of $453,396,350 for this collection are calculated in the following charts. The first chart shows the filing, search, and examination fees for the various applications.

ItemResponses (yr)Filing feeSearch feeExamination feeTotal feesTotal non-hour cost burden (yr)
(a)(b)(a) × (b)
Original New Utility Applications—No Application Data Sheet—Other Entity113,680$300.00$500.00$200.00$1,000.00$113,680,000.00
Original New Utility Applications—No Application Data Sheet—Small Entity48,720150.00250.00100.00500.0024,360,000.00
Electronic Original New Utility Applications—No Application Data Sheet—Other Entity48,720300.00500.00200.001,000.0048,720,000.00
Electronic Original New Utility Applications—No Application Data Sheet—Small Entity20,88075.00250.00100.00425.008,874,000.00
Original New Plant Applications—No Application Data Sheet—Other Entity780200.00300.00160.00660.00514,800.00
Original New Plant Applications—No Application Data Sheet—Small Entity335100.00150.0080.00330.00110,550.00
Original New Design Applications—No Application Data Sheet—Other Entity7,320200.00100.00130.00430.003,147,600.00
Original New Design Applications—No Application Data Sheet—Small Entity7,625100.0050.0065.00215.001,639,375.00
Electronic Original New Design Applications—No Application Data Sheet—Other Entity3,145200.00100.00130.00430.001,352,350.00
Electronic Original New Design Applications—No Application Data Sheet—Small Entity3,265100.0050.0065.00215.00701,975.00
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Original New Utility Applications—Application Data Sheet—Other Entity28,420300.00500.00200.001,000.0028,420,000.00
Original New Utility Applications—Application Data Sheet—Small Entity12,180150.00250.00100.00500.006,090,000.00
Electronic Original New Utility Applications—Application Data Sheet—Other Entity12,180300.00500.00200.001,000.0012,180,000.00
Electronic Original New Utility Applications—Application Data Sheet—Small Entity5,22075.00250.00100.00425.002,218,500.00
Original New Plant Applications—Application Data Sheet—Other Entity200200.00300.00160.00660.00132,000.00
Original New Plant Applications—Application Data Sheet—Small Entity85100.00150.0080.00330.0028,050.00
Original New Design Applications—Application Data Sheet—Other Entity1,830200.00100.00130.00430.00786,900.00
Original New Design Applications—Application Data Sheet—Small Entity1,910100.0050.0065.00215.00410,650.00
Electronic New Design Applications—Application Data Sheet—Other Entity785200.00100.00130.00430.00337,550.00
Electronic New Design Applications—Application Data Sheet—Small Entity820100.0050.0065.00215.00176,300.00
Continuation/Divisional of an International Application—No Application Data Sheet—Other Entity5,990300.00500.00200.001,000.005,990,000.00
Continuation/Divisional of an International Application—No Application Data Sheet—Small Entity1,570150.00250.00100.00500.00785,000.00
Utility Continuation/Divisional Applications—Other Entity40,420300.00500.00200.001,000.0040,420,000.00
Utility Continuation/Divisional Applications—Small Entity16,510150.00250.00100.00500.008,255,000.00
Plant Continuation/Divisional Applications—Other Entity160200.00300.00160.00660.00105,600.00
Plant Continuation/Divisional Applications—Small Entity70100.00150.0080.00330.0023,100.00
Design Continuation/Divisional Applications—Other Entity365200.00100.00130.00430.00156,950.00
Design Continuation/Divisional Applications—Small Entity385100.0050.0065.00215.0082,775.00
Continued Prosecution Applications—Design (Request Transmittal and Receipt)—Other Entity125200.00100.00130.00430.0053,750.00
Continued Prosecution Applications—Design (Request Transmittal and Receipt)—Small Entity135100.0050.0065.00215.0029,025.00
Utility Continuation-in-Part Applications—Other Entity12,580300.00500.00200.001,000.0012,580,000.00
Utility Continuation-in-Part Applications—Small Entity5,140150.00250.00100.00500.002,570,000.00
Plant Continuation-in-Part Applications—Other Entity50200.00300.00160.00660.0033,000.00
Plant Continuation-in-Part Applications—Small Entity20100.00150.0080.00330.006,600.00
Design Continuation-in-Part Applications—Other Entity235200.00100.00130.00430.00101,050.00
Design Continuation-in-Part Applications—Small Entity245100.0050.0065.00215.0052,675.00
Provisional Application for Patent Cover Sheets—Other Entity36,500200.00N/AN/A200.007,300,000.00
Provisional Application for Patent Cover Sheets—Small Entity60,180100.00N/AN/A100.006,018,000.00
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Electronic Provisional Application for Patent Cover Sheets—Other Entity15,690200.00N/AN/A200.003,138,000.00
Electronic Provisional Application for Patent Cover Sheets—Small Entity25,800100.00N/AN/A100.002,580,000.00
Petition to Accept Unintentionally Delayed Priority Claim9201,300.00N/AN/A1,300.001,196,000.00
Petition to Accept Non-Signing Inventors or Legal Representatives/Filing by Other Than all the Inventors or a Person not the Inventor2,400200.00N/AN/A200.00480,000.00
Totals543,590$345,837,125.00

The second chart calculates the additional fees incurred when an application is filed with additional sheets or excess claims. The USPTO estimates that these fees apply to 311,905 of the 543,590 total applications filed per year. This chart is a subset of the first chart and adds an additional $89,020,075 to the annualized (non-hour) costs; however, it does not change the number of responses. These fees are also determined by the filing status.

ItemResponses (yr)Filing fee for additional sheets and claimsAverage feeTotal non-hour cost burden (yr)
(a)(b)(a) × (b)
Provisional Application Size Fee for Each Provisional Application for Patent Cover Sheet, filed for Each Additional 50 Sheets Exceeding 100 Sheets—Other Entity2,400$200.00 per each 50 Sheets over 100$500.00$1,200,000.00
Provisional Application Size Fee for Each Provisional Application for Patent Cover Sheet, filed for Each Additional 50 Sheets Exceeding 100 Sheets—Small Entity2,300$100.00 per each 50 Sheets over 100260.00598,000.00
Utility and Plant Applications, with independent claims in excess of 3—Other Entity95,000$200.00 for each claim over 3400.0038,000,000.00
Utility and Plant Applications, with independent claims in excess of 3—Small Entity36,000$100.00 for each claim over 3200.007,200,000.00
Utility and Plant Applications, filed with Claims in Excess of 20—Other Entity115,000$50.00 for each claim over 20200.0023,000,000.00
Utility and Plant Applications, filed with Claims in Excess of 20—Small Entity50,000$25.00 for each claim over 20300.0015,000,000.00
Utility Application Size Fee for Each Original New Utility Application, filed with each additional 50 sheets exceeding 100 Sheets—Other Entity7,500$250.00 for each additional 50 sheets over 100425.003,187,500.00
Utility Application Size Fee for Each Original New Utility Application, filed with each additional 50 sheets exceeding 100 Sheets—Small Entity3,500$125.00 for each additional 50 sheets over 100225.00787,500.00
Plant Application Size Fee for Each Original New Plant Application, filed with Each Additional 50 Sheets Exceeding 100 Sheets—Other Entity25$250.00 for each additional 50 sheets over 100275.006,875.00
Plant Application Size Fee for Each Original New Plant Application, filed with Each Additional 50 Sheets Exceeding 100 Sheets—Small Entity10$125.00 for each additional 50 sheets over 100265.002,650.00
Design Application Size Fee for Each Original New Design Application, filed for each Additional 50 Sheets that Exceeds 100 Sheets—Other Entity110$250.00 for each additional 50 sheets over 100265.0029,150.00
Design Application Size Fee for Each Original New Design Application, filed for each Additional 50 Sheets that Exceeds 100 Sheets—Small Entity60$125.00 for each additional 50 sheets over 100140.008,400.00
Totals311,905$89,020,075.00

The third chart calculates the surcharges and fees incurred when an application, the search or examination fee, or the oath or declaration is filed late, when the application is filed with multiple dependent claims, or when the application is filed with a non-English specification. The USPTO estimates that these fees apply to 153,040 of the 543,590 total applications filed per year. This chart is a subset of the first chart and adds an additional $18,539,150 to Start Printed Page 53675the annualized (non-hour) costs; however, it does not change the number of responses. Except for the fee for the non-English specification, these fees are also determined by the filing status.

ItemResponses (yr)Surcharge fee for late filing, multiple dependent claims, or non-English specification feesTotal non-hour cost burden (yr)
(a)(a) × (b)
Surcharge for Late Filing of Provisional Application for Patent Cover Sheets—Other Entity3,910$50.00$195,500.00
Surcharge for Late Filing of Provisional Application for Patent Cover Sheets—Small Entity5,65025.00141,250.00
Utility and Plant Applications, filed with Multiple Dependent Claims—Other Entity8,000360.002,880,000.00
Utility and Plant Applications, filed with Multiple Dependent Claims—Small Entity3,600180.00648,000.00
Utility, Plant, and Design Applications, Filed with a Surcharge for Late Filing, Search or Examination Fee, or Oath/Declaration—Other Entity90,000130.0011,700,000.00
Utility, Plant, and Design Applications, Filed with a Surcharge for Late Filing, Search, or Examination Fee, or Oath/Declaration—Small Entity38,00065.002,470,000.00
Non-English Specification3,880130.00504,400.00
Totals153,04018,539,150.00

The USPTO estimates that the total non-hour respondent cost burden for this collection, in the form of capital start-up, postage, recordkeeping, and drawing costs, in addition to the filing fees, is $695,587,260 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, 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 also will become a matter of public record.

Start Signature

Dated: August 31, 2006.

Susan K. Brown,

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

End Signature End Supplemental Information

[FR Doc. E6-15048 Filed 9-11-06; 8:45 am]

BILLING CODE 3510-16-P