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Patent Cooperation Treaty

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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 December 28, 2009.

ADDRESSES:

You may submit comments by any of the following methods:

  • E-mail: Susan.Fawcett@uspto.gov. Include A0651-0021 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, United States Patent and Trademark Office, P.O. Box 1450, Alexandria, VA 22313-1450.
  • Federal Rulemaking Portal: http://www.regulations.gov.
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FOR FURTHER INFORMATION CONTACT:

Requests for additional information should be directed to Rafael Bacares, Office of PCT Legal Administration, United States Patent and Trademark Office, P.O. Box 1450, Alexandria, VA 22313-1450; by telephone at 571-272-3276; or by e-mail to Rafael.Bacares@uspto.gov.

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SUPPLEMENTARY INFORMATION:

I. Abstract

This collection of information is required by the provisions of the Patent Cooperation Treaty (PCT), which became operational in June 1978 and is administered by the International Bureau (IB) of the World Intellectual Property Organization (WIPO) in Geneva, Switzerland. The provisions of the PCT have been implemented by the United States in Part IV of Title 35 of the U.S. Code and Subpart C of Title 37 of the Code of Federal Regulations. The purpose of the PCT is to provide a standardized filing format and procedure that allows an applicant to seek protection for an invention in several countries by filing one international application in one location, in one language, and paying one initial set of fees.

The information in this collection is used by the public to submit a patent application under the PCT and by the United States Patent and Trademark Office (USPTO) to fulfill its obligation to process, search, and examine the application as directed by the treaty. The USPTO acts as the United States Receiving Office (RO/US) for international applications filed by residents and nationals of the United States. These applicants send most of their correspondence directly to the USPTO, but they may also file certain documents directly with the IB. The USPTO also serves as an International Searching Authority (ISA) and an International Preliminary Examining Authority (IPEA).

The USPTO is updating this information collection to reflect the current practice and fee structure for PCT applications entering the national stage at the USPTO. A form is being added to this collection for the previously approved information requirement for the withdrawal of an international application. This form (PCT/IB/372) is developed and maintained by the WIPO.

II. Method of Collection

By mail, hand delivery, or electronically to the USPTO. Electronic submissions are made through EFS-Web, the USPTO's online filing system for patent applications and related documents.

III. Data

OMB Number: 0651-0021.

Form Number(s): PCT/RO/101, PCT/RO/134, PCT/IB/372, PCT/IPEA/401, PTO-1382, PTO-1390, PTO/SB/61/PCT, PTO/SB/64/PCT.

Type of Review: Revision of a currently approved collection.

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

Estimated Number of Respondents: 363,809 responses per year.

Estimated Time per Response: The USPTO estimates that it will take the public from 15 minutes (0.25 hours) to 8 hours to gather the necessary information, prepare the appropriate form or documents, and submit the information to the USPTO.

Estimated Total Annual Respondent Burden Hours: 341,840 hours per year.

Estimated Total Annual Respondent Cost Burden: $105,970,400 per year. The USPTO expects that the information in this collection will be prepared by attorneys. Using the professional rate of $310 per hour for attorneys in private firms, the USPTO estimates that the respondent cost burden for submitting the information in this collection will be $105,970,400 per year.Start Printed Page 54953

ItemEstimated time for responseEstimated annual responsesEstimated annual burden hours
Request and Fee Calculation Sheet (Annex and Notes) (PCT/RO/101)1 hour53,52753,527
Description/claims/drawings/abstracts3 hours53,527160,581
Application Data Sheet23 minutes39,59215,045
Transmittal Letter to the United States Receiving Office (RO/US) (PTO-1382)15 minutes48,17412,044
Transmittal Letter to the United States Designated/Elected Office (DO/EO/US) Concerning a Submission Under 35 U.S.C. 371 (PTO-1390)15 minutes58,79414,699
PCT/Model of Power of Attorney15 minutes5,3531,338
PCT/Model of General Power of Attorney15 minutes536134
Extensions of time15 minutes21,0005,250
Priority documents15 minutes205
Indications Relating to a Deposited Microorganism (PCT/RO/134)15 minutes205
Response to invitation to correct defects2 hours18,52437,048
Request for rectification of obvious errors30 minutes589295
Demand and Fee Calculation Sheet (Annex and Notes) (PCT/IPEA/401)1 hour3,3653,365
Amendments1 hour3,3653,365
Fee Authorization15 minutes48,17412,044
Requests to transmit copies of international application15 minutes501125
Withdrawal of international application (PCT/IB/372)15 minutes1,306327
Translations2 hours1,6553,310
Petition for Revival of an International Application for Patent Designating the U.S. Abandoned Unavoidably Under 37 CFR 1.137(a) (PTO/SB/61/PCT)8 hours55440
Petition for Revival of an International Application for Patent Designating the U.S. Abandoned Unintentionally Under 37 CFR 1.137(b) (PTO/SB/64/PCT)1 hour1,0271,027
Petitions to the Commissioner for international applications4 hours5812,324
Petitions to the Commissioner in national stage examination4 hours3,28713,148
Acceptance of an unintentionally delayed claim for priority2 hours117234
Request for the restoration of the right of priority (37 CFR 1.78)3 hours7202,160
Totals363,809341,840

Estimated Total Annual Non-hour Respondent Cost Burden: $282,024,234 per year. There are no capital start-up or maintenance costs associated with this information collection. However, this collection does have annual (non-hour) costs in the form of translations, drawings, fees, recordkeeping costs, and postage costs.

Under the terms of the PCT, the USPTO may require documents submitted for a PCT application to be translated into English when necessary. This requirement may carry additional costs for the applicant to contract for a translation of the documents in question. The USPTO believes that the average length of the documents to be translated will be 10 pages and that it will cost $150 per page for the translation, for an average translation cost of $1,500 per document. The USPTO estimates that it receives approximately 1,655 English translations annually, for a total cost of $2,482,500 per year for English translations of non-English language documents for PCT applications.

Applicants may also incur costs for drawings that are submitted as part of PCT applications. Some applicants may produce their own drawings, while others may contract out the work to various patent illustration firms. For the purpose of estimating burden for this collection, the USPTO will consider all applicants to have their drawings prepared by these firms. The USPTO estimates that drawings may cost an average of $58 per sheet to produce and that on average 11 sheets of drawings are submitted per application, for an average total cost of $638 to produce a set of drawings for an application. The USPTO expects that approximately 91% of the estimated 53,527 applications per year will have drawings filed with them, for a total of 48,710 sets of drawings at a total cost of $31,076,980 per year.

The estimated filing fees for this collection are calculated in the accompanying table. The fees listed for Requests and Demands represent an estimate of the average fees for filing the appropriate items associated with those requirements for an international application. The basic national fee under 37 CFR 1.492(a) for an international application entering the national stage is fixed at $330 ($165 for small entities). The search and examination fees under 37 CFR 1.492(b)-(c) vary depending on the outcome of the written opinion prepared by the ISA/US, the international preliminary examination report prepared by the IPEA/US, and other related factors as noted in the accompanying table. The basic national fee, search fee, examination fee, and the fees for petitions to revive unavoidably or unintentionally abandoned international applications are discounted for small entities.

ItemEstimated annual responsesFee amountEstimated annual filing costs
Request and Fee Calculation Sheet (Annex and Notes) (PCT/RO/101)53,527$3,504.00$187,558,608.00
Description/claims/drawings/abstracts53,5270.000.00
Application Data Sheet39,5920.000.00
Transmittal Letter to the United States Receiving Office (RO/US) (PTO-1382)48,1740.000.00
Start Printed Page 54954
Transmittal Letter to the United States Designated/Elected Office (DO/EO/US) (PTO-1390)—U.S. was the ISA or IPEA and all claims satisfy PCT Article 33(1)-(4); includes $330 basic fee, $0 search fee, and $0 examination fee808330.00266,640.00
Transmittal Letter to the DO/EO/US (PTO-1390)—U.S. was the ISA or IPEA and all claims satisfy PCT Article 33(1)-(4); includes $165 basic fee, $0 search fee, and $0 examination fee for small entity202165.0033,330.00
Transmittal Letter to the DO/EO/US (PTO-1390)—U.S. was the ISA; includes $330 basic fee, $100 search fee, and $220 examination fee1,935650.001,257,750.00
Transmittal Letter to the DO/EO/US (PTO-1390)—U.S. was the ISA; includes $165 basic fee, $50 search fee, and $110 examination fee for small entity2,604325.00846,300.00
Transmittal Letter to the DO/EO/US (PTO-1390)—International search report prepared by other than the U.S. and provided to the USPTO or previously communicated to the U.S. by the IB; includes $330 basic fee, $430 search fee, and $220 examination fee40,994980.0040,174,120.00
Transmittal Letter to the DO/EO/US (PTO-1390)—International search report prepared by other than the U.S. and provided to the USPTO or previously communicated to the U.S. by the IB; includes $165 basic fee, $215 search fee, and $110 examination fee for small entity9,667490.004,736,830.00
Transmittal Letter to the DO/EO/US (PTO-1390)—All other situations; includes $330 basic fee, $540 search fee, and $220 examination fee1,6691,090.001,819,210.00
Transmittal Letter to the DO/EO/US (PTO-1390)—All other situations; includes $165 basic fee, $270 search fee, and $110 examination fee for small entity915545.00498,675.00
PCT/Model of Power of Attorney5,3530.000.00
PCT/Model of General Power of Attorney5360.000.00
Extensions of time21,0000.000.00
Priority documents200.000.00
Indications Relating to a Deposited Microorganism (PCT/RO/134)200.000.00
Response to invitation to correct defects18,5240.000.00
Request for rectification of obvious errors5890.000.00
Demand and Fee Calculation Sheet (Annex and Notes) (PCT/IPEA/401)3,365771.002,594,415.00
Amendments3,3650.000.00
Fee Authorization48,1740.000.00
Requests to transmit copies of international application5010.000.00
Withdrawal of international application (PCT/IB/372)1,3060.000.00
Translations1,6550.000.00
Petition for Revival of an International Application for Patent Designating the U.S. Abandoned Unavoidably Under 37 CFR 1.137(a) (PTO/SB/61/PCT)25540.0013,500.00
Petition for Revival of an International Application for Patent Designating the U.S. Abandoned Unavoidably Under 37 CFR 1.137(a) (PTO/SB/61/PCT)—small entity30270.008,100.00
Petition for Revival of an International Application for Patent Designating the U.S. Abandoned Unintentionally Under 37 CFR 1.137(b) (PTO/SB/64/PCT)5651,620.00915,300.00
Petition for Revival of an International Application for Patent Designating the U.S. Abandoned Unintentionally Under 37 CFR 1.137(b) (PTO/SB/64/PCT)—small entity462810.00374,220.00
Petitions to the Commissioner for international applications581130.0075,530.00
Petitions to the Commissioner in national stage examination3,287200.00657,400.00
Acceptance of an unintentionally delayed claim for priority1171,410.00164,970.00
Request for the restoration of the right of priority (37 CFR 1.78)7201,410.001,015,200.00
Totals363,809243,010,098.00

In addition to the filing fees listed in the table, applicants may also incur fees for late filings, multiple dependent claims, and lengthy applications. The fee for the late filing of search or examination fees under 37 CFR 1.492(h) is $130 for large entities and $65 for small entities. The USPTO estimates that it will receive approximately 20,053 of these late payment fees for large entities and 7,632 for small entities per year, for a total of $3,102,970. The fee for the late filing of an English translation of an international application under 37 CFR 1.492(i) is $130. The USPTO estimates that it will receive approximately 116 of these late translation fees per year, for a total of $15,080. The fee for applications containing a multiple dependent claim is $390 for large entities and $195 for small entities. The USPTO estimates that it will receive approximately 3,530 of these multiple dependent claim fees for large entities and 1,158 for small entities per year, for a total of $1,602,510. Applications with specifications and drawings that exceed 100 pages may be subject to an application size fee of $270 ($135 for small entities) for each additional 50 pages or fraction thereof. The USPTO estimates that it will receive approximately 2,205 of the $270 size fees from large entities and approximately 621 of the $135 size fees from small entities per year, for a total of $679,185. The total estimated fees for this collection, including filing fees and other additional fees, will be approximately $248,409,843 per year.

There are recordkeeping costs associated with filing PCT submissions online using EFS-Web. The USPTO recommends that customers print and retain a copy of the acknowledgment receipt after a successful online submission. The USPTO estimates that it will take five seconds (0.001 hours) to print a copy of the acknowledgment receipt and that approximately 309,238 PCT-related items per year will be submitted via EFS-Web, for a total of approximately 309 hours per year for printing this receipt. The USPTO expects that these receipts will be printed by paraprofessionals at an Start Printed Page 54955estimated rate of $100 per hour, for an estimated recordkeeping cost of $30,900 per year.

Customers may incur postage costs when submitting the information in this collection to the USPTO by mail. The USPTO estimates that the average first-class postage cost for a mailed submission will be 44 cents and that up to 54,571 submissions will be mailed to the USPTO per year. The total estimated postage cost for this collection is $24,011 per year.

The total annual (non-hour) respondent cost burden for this collection associated with translations, drawings, fees, recordkeeping, and postage is estimated to be $282,024,234 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 included in the request for OMB approval of this information collection; they also will become a matter of public record.

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Dated: October 20, 2009.

Susan K. Fawcett,

Records Officer, USPTO, Office of the Chief Information Officer.

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[FR Doc. E9-25652 Filed 10-23-09; 8:45 am]

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