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Statutory Invention Registration

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Proposed collection; comment request.


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 extension 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)).


Written comments must be submitted on or before December 8, 2008.


You may submit comments by any of the following methods:

  • E-mail: Include “0651-0036 comment” in the subject line of the message.
  • Fax: 571-273-0112, marked to the attention of Susan K. Fawcett.
  • Mail: Susan K. Fawcett, Records Officer, Office of the Chief Information Officer, Customer Information Services Group, Public Information Services Division, U.S. Patent and Trademark Office, P.O. Box 1450, Alexandria, VA 22313-1450.
  • Federal Rulemaking Portal:
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Requests for additional information should be directed to the attention of Robert A. Clarke, Deputy Director, Office of Patent Legal Administration, U.S. Patent and Trademark Office, P.O. Box 1450, Alexandria, VA 22313-1450; by telephone at 571-272-7735; or by e-mail at

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I. Abstract

A statutory invention registration is not a patent. It has the defensive attributes of a patent but does not have the enforceable attributes of a patent. In other words, a person occasionally invents something solely for personal use (not for production or sale) and does not want to go through the effort and expense of obtaining a patent on the invention. At the same time, the inventor wants to prevent someone else from later obtaining a patent on a like invention. In that situation, the inventor can register a statutory invention and have it published. Once published, it cannot be claimed by another person.

35 U.S.C. 157 authorizes the United States Patent and Trademark Office (USPTO) to publish a statutory invention registration containing the specifications and drawings of a regularly filed application for a patent without examination, providing the patentee meets all the requirements for printing, waives the right to receive a patent on the invention within a certain period of time prescribed by the USPTO, and pays all application, publication and other processing fees.

The USPTO administers 35 U.S.C. 157 through 37 CFR 1.293-1.297. Under these rules, an applicant for an original patent may request, at any time during the pendency of the application, that the specifications and drawings be published as a statutory invention registration. Any request for a statutory invention registration may be examined to determine if all the conditions have been met, if the subject matter of the application is appropriate for publication, and if the requirements for publication are met.

The public may petition the USPTO to review rejection decisions within one month or other such time as is set forth in the decision refusing publication. The public may also petition the USPTO to withdraw a request to publish a statutory invention registration prior to the date of the notice of the intent to publish.

If the request for a statutory invention registration is approved, a notice to that effect will be published in the Official Gazette of the USPTO. Each statutory invention registration that is published will include a statement relating to the attributes of a statutory invention registration.

The public uses form PTO/SB/94, Request for Statutory Invention Registration, to request and authorize publication of a regularly-filed patent application as a statutory invention registration, to waive the right to receive a United States patent on the same invention claimed in the identified patent application, to agree that the waiver will be effective upon publication of the statutory invention registration, and to state that the identified patent application complies with the requirements for printing. No forms are associated with the petition for a review of the refusal to publish a statutory invention registration or the petition to withdraw the request for publication of a statutory invention registration.

II. Method of Collection

By mail, facsimile, or hand delivery to the USPTO when the applicant or agent files a statutory invention registration with the USPTO.

III. Data

OMB Number: 0651-0036.

Form Number(s): PTO/SB/94.

Type of Review: Extension of a currently approved collection.

Affected Public: Individuals or households; business or other for-profit; not-for-profit institutions.

Estimated Number of Respondents: 8 responses per year.

Estimated Time per Response: The USPTO estimates that it will take approximately 24 minutes (0.40 hours) each to gather, prepare, and submit the request for statutory invention registration, the petition to review the rejection decision, and the petition to withdraw the publication request, depending upon the complexity of the situation. This collection contains one form and two petitions.

Estimated Total Annual Respondent Burden Hours: 4 hours each per year.

Estimated Total Annual Respondent Cost Burden: $1,240. Using the professional hourly rate of $310 per hour for associate attorneys in private firms, the USPTO estimates $1,240 per year for salary costs associated with respondents.

ItemEstimated time for response (min)Estimated annual responsesEstimated annual burden hours
Statutory Invention Registration2452
Petition to Review Rejection Decision2411
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Petition to Withdraw Publication Request2421

Estimated Total Annual Non-Hour Respondent Cost Burden: $8,166. There are no capital start-up costs or maintenance costs associated with this information collection. However, this collection does have postage costs and filing fees.

The public may submit the paper forms and petitions in this collection to the USPTO by mail through the United States Postal Service. The USPTO estimates that the average first-class postage cost for a mailed submission will be 75 cents, and that customers filing the documents associated with this information collection may choose to mail their submissions to the USPTO. Therefore, the USPTO estimates that up to 8 submissions per year may be mailed to the USPTO at an average first-class postage rate of 75 cents, for a total postage cost of $6.

There is annual non-hour cost burden in the way of filing fees associated with this collection. The estimated filing costs for this collection of $7,760 are calculated in the accompanying chart.

ItemResponsesFiling fee ($)Total non-hour cost burden
(a)(b)(a) × (b)
Statutory Invention Registration (requested prior to mailing of first office action, 37 CFR 1.17(n))2$920.00$1,840.00
Statutory Invention Registration (requested after mailing of first office action, 37 CFR 1.17(o))31,840.005,520.00
Petition to Review Rejection Decision (37 CFR 1.295)1200.00200.00
Petition to Withdraw Publication Request (37 CFR 1.296)10.000.00
Petition to Withdraw Publication Request on or after Date of Notice of Intent to Publish (37 CFR 1.296)1200.00200.00

The USPTO estimates that the total non-hour respondent cost burden for this collection in the form of postage costs and filing fees amounts to $7,766.

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: September 30, 2008.

Susan K. Fawcett,

Records Officer, USPTO, Office of the Chief Information Officer, Customer Information Services Group, Public Information Services Division.

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[FR Doc. E8-23677 Filed 10-6-08; 8:45 am]