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Notice

Patent Processing (Updating)

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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 May 21, 2012.

ADDRESSES:

You may submit comments by any of the following methods:

  • Email: InformationCollection@uspto.gov. Include “0651-0031 comment” in the subject line of the message.
  • 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.

FOR FURTHER INFORMATION CONTACT:

Requests for additional information should be directed to the attention of Raul Tamayo, Legal Advisor, Office of Patent Legal Administration, United States Patent and Trademark Office, P.O. Box 1450, Alexandria, VA 22313-1450, by telephone at (571) 272-7728, or by email to Raul.Tamayo@uspto.gov with “Paperwork” in the subject line. Additional information about this collection is also available at http://www.reginfo.gov under “Information Collection Review.”

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.

Modifications to this collection since the previous renewal include: three requests for non-substantive change; separately accounting for two requirements; the deletion of an item from the collection, and adding electronic equivalents for the majority of the paper forms. The USPTO is also planning to move items out of 0651-0031 into two new collections.

The three requests for non-substantive change include one in August of 2010 making two changes to an existing form (PTOL-413A); and a second in November of 2010 adding a form for an item that was currently approved (Petition to Withdraw an Application from Issue). The third request for non-substantive change involved six items being deleted from this collection in December of 2011 that had been moved into a new ICR, 0651-0059 Certain Patent Petitions Requiring a Fee. These items include Petitions for Extension of Time under 37 CFR 1.136(b)(PTO/SB/23); Petition for Express Abandonment to Avoid Publication under 1.138(c)(PTO/SB/24a); Petition for Request for Documents in a Form Other Than That Provided by 1.19; Petitions under 37 CFR 1.17(g); Petitions under 37 CFR 1.17(h); and Petition to Make Special under Accelerated Examination Program (PTO/SB28).

The two items being separately accounted for in this collection are (i) Rule 1.130, 1.131, and 1.132 Affidavits or Declarations and (ii) Amendments and Responses.

One item is being deleted from the collection, Request for Processing of Replacement Drawings in Any Patent Application Publication. The USPTO phased out these requests over the last several years due to IT upgrades.

Currently, notices of appeal, requests for oral hearing, and pre-appeal brief requests for review are covered under this collection. The USPTO has determined that it would be beneficial to assign these items to their own collection. The USPTO is planning to submit a request to the OMB for a new collection, Matters Related to Patent Appeals, and is planning to ultimately transfer these three notices and requests out of the 0651-0031 inventory and into this new collection upon approval by OMB.

The Leahy-Smith America Invents Act was enacted into law on September 16, 2011 (See Pub. L. 112-29, 125 Stat. 284 (2011)). The USPTO published a notice of proposed rulemaking titled “Changes to Implement Miscellaneous Post Patent Provisions of the Leahy-Smith America Invents Act” (RIN 0651-AC66) in the Federal Register. In the notice, the USPTO proposed to rewrite 37 CFR 1.501 to reflect the amendment to 35 U.S.C. 301 by section 6(g)(1) of the Leahy-Smith America Invents Act. Proposed 37 CFR 1.501 provides that a submission can include prior art and claim scope statements of the patent owner. In light of the proposed rulemaking, the USPTO submitted a request for a new information collection, Post Patent Public Submissions, and requested that the existing item “Information Disclosure Citation in a Patent” (PTO/SB/42) be transferred out of the 0651-0031 Patent Processing (Updating) approved inventory and into this new collection when this new collection is approved by OMB.

II. Method of Collection

In general, the items in this collection can be submitted to the USPTO on paper by mail, facsimile, or hand delivery, or electronically through EFS-Web, the USPTO's Web-based electronic filing system.

III. Data

OMB Number: 0651-0031.

Form Number(s): PTO/SB/08/08a/08b, PTO/SB/17i, PTO/SB/21-22, PTO/SB/24-27, 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.

Estimated Number of Respondents: 4,777,532 responses per year.

Estimated Time per Response: The USPTO estimates that it will take the public an average of 1 minute, 48 seconds (0.03 hours) to 10 hours to complete the collections of information described in this submission, depending on the nature of the information. This includes time to gather the necessary information, create the documents, and mail the completed request, depending upon the complexity of the situation. The time estimates shown for the electronic forms are based on the average amount of time needed to complete and electronically file the associated forms.

Estimated Total Annual Respondent Burden Hours: 11,972,777 hours.

Estimated Total Annual Respondent Cost Burden: $3,573,910,186. The USPTO expects that attorneys and paraprofessionals will complete and submit this information. The estimated hourly rate for attorneys is $340 and the paraprofessional rate is $122.

ItemEstimated time for responseEstimated annual responsesEstimated annual burden hours
EFS-Web IDS (Information Disclosure Statements) that do not require the fee set forth in 37 CFR 1.17(p)2 hours500,0001,000,000
Information Disclosure Statements that do not require the fee set forth in 37 CFR 1.17(p)2 hours40,00080,000
EFS-Web IDS (Information Disclosure Statements) that require the fee set forth in 37 CFR 1.17(p)2 hours100,000200,000
Information Disclosure Statements that require the fee set forth in 37 CFR 1.17(p)2 hours10,00020,000
Electronic Transmittal Form2 hours1,020,0002,040,000
Transmittal Form2 hours80,000160,000
Electronic Petition for Extension of Time under 37 CFR 1.136(a)6 minutes295,00029,500
Petition for Extension of Time under 37 CFR 1.136(a)6 minutes20,1002,010
Electronic Express Abandonment under 37 CFR 1.13812 minutes6,5001,300
Express Abandonment under 37 CFR 1.13812 minutes500100
Electronic Disclaimers12 minutes40,0008,000
Disclaimers12 minutes5,0001,000
Electronic Request for Expedited Examination of a Design Application6 minutes37037
Request for Expedited Examination of a Design Application6 minutes303
Electronic Notice of Appeal12 minutes34,9006,980
Notice of Appeal12 minutes2,600520
Electronic Information Disclosure Citation in a Patent10 hours9309,300
Information Disclosure Citation in a Patent10 hours70700
Electronic Petition for Revival of an Application for Patent Abandoned Unavoidably8 hours3302,640
Petition for Revival of an Application for Patent Abandoned Unavoidably8 hours30240
Electronic Petition for Revival of an Application for Patent Abandoned Unintentionally1 hour7,4007,400
Petition for Revival of an Application for Patent Abandoned Unintentionally1 hour600600
Electronic Petition for Revival of an Application for Patent Abandoned for Failure to Notify the Office of a Foreign or International Filing1 hour230230
Petition for Revival of an Application for Patent Abandoned for Failure to Notify the Office of a Foreign or International Filing1 hour2020
Electronic Requests to Access, Inspect and Copy12 minutes121,00024,200
Requests to Access, Inspect and Copy12 minutes9,0001,800
Electronic Deposit Account Order Form12 minutes9018
Deposit Account Order Form12 minutes102
Electronic Certificates of Mailing, Transmission1 minute, 48 seconds930,00027,900
Certificates of Mailing, Transmission1 minute, 48 seconds70,0002,100
Electronic Statement Under 37 CFR 3.73(b)12 minutes140,00028,000
Statement Under 37 CFR 3.73(b)12 minutes10,0002,000
Electronic Non-publication Request6 minutes21,5002,150
Non-publication Request6 minutes1,500150
Electronic 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 minutes1,000100
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 minutes10010
Electronic Filing System (EFS) Copy of Application for Publication2 hours, 30 minutes13
Copy of File Content Showing Redactions4 hours14
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)2 hours2040
EFS-Web Request for Continued Examination (RCE) Transmittal12 minutes150,00030,000
Request for Continued Examination (RCE) Transmittal12 minutes10,0002,000
Electronic Request for Oral Hearing Before the Board of Patent Appeals and Interferences12 minutes1,100220
Request for Oral Hearing Before the Board of Patent Appeals and Interferences12 minutes10020
Electronic Request for Suspension of Action or Deferral of Examination Under 37 CFR 1.103(b), (c), or (d)12 minutes560112
Request for Suspension of Action or Deferral of Examination Under 37 CFR 1.103(b), (c), or (d)12 minutes408
EFS-Web Request for Voluntary Publication or Republication12 minutes650130
Request for Voluntary Publication or Republication12 minutes5010
Electronic Applicant Initiated Interview Request Form24 minutes1,900760
Applicant Initiated Interview Request Form24 minutes10040
Electronic Processing Fee Under 37 CFR 1.17(i) Transmittal5 minutes3,300264
Processing Fee Under 37 CFR 1.17(i) Transmittal5 minutes20016
Electronic Request to Retrieve Electronic Priority Application(s) Under 37 CFR 1.55(d)8 minutes60,0007,800
Request to Retrieve Electronic Priority Application(s) Under 37 CFR 1.55(d)8 minutes5,000650
Electronic Authorization to Permit Access to Application by Participating Offices Under 37 CFR 1.14(h)6 minutes19,0001,900
Authorization to Permit Access to Application by Participating Offices Under 37 CFR 1.14(h)6 minutes1,000100
Electronic Petition for Express Abandonment to Obtain a Refund12 minutes2,000400
Petition for Express Abandonment to Obtain a Refund12 minutes10020
Electronic Pre-Appeal Brief Request for Review5 hours14,70073,500
Pre-Appeal Brief Request for Review5 hours1,1005,500
EFS-Web Request for Corrected Filing Receipt5 minutes22,0001,760
Request for Corrected Filing Receipt5 minutes2,000160
Electronic Request for First Action Interview (Pilot Program)2 hours, 30 minutes1,5003,750
Petition to Make Special Based on Age for Advancement of Examination under 37 CFR 1.105(c)(1) (EFS-Web only)2 hours2,3004,600
Rule 1.130, 1.131, and 1.132 Affidavits or Declarations10 hours50,000500,000
Electronic Amendments and Responses8 hours893,0007,144,000
Amendments and Responses8 hours67,000536,000
Totals4,777,53211,972,777

Estimated Total Annual (Non-Hour) Respondent Cost Burden: $357,380,557. This collection has 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. 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 386,271 submissions per year may be mailed. The USPTO estimates that the average submission will be mailed in a standard manila envelope with a weight of 3 ounces at a cost of $1.28, resulting in a total postage cost of $494,427 per year for this collection.

There is annual (non-hour) cost burden in the way of filing fees associated with this collection of $356,886,130, as shown in the accompanying table.

ItemResponses (yr)Filing fee $Total non-hour cost burden (a × b)
(a)(b)(c)
EFS-Web Information Disclosure Statements (IDS) that require the fee set forth in 37 CFR 1.17(p)100,000$180.00$18,000,000.00
Information Disclosure Statements (IDS) that require the fee set forth in 37 CFR 1.17(p)10,000180.001,800,000.00
Transmittal Forms1,100,000None0.00
One-month extension of time under 37 CFR 1.136(a)110,000150.0016,500,000.00
One-month extension of time under 37 CFR 1.136(a) (small entity)40,00075.003,000,000.00
Two-month extension of time under 37 CFR 1.136(a)50,000560.0028,000,000.00
Two-month extension of time under 37 CFR 1.136(a) (small entity)21,000280.005,880,000.00
Three-month extension of time under 37 CFR 1.136(a)50,0001,270.0063,500,000.00
Three-month extension of time under 37 CFR 1.136(a) (small entity)31,000635.0019,685,000.00
Four-month extension of time under 37 CFR 1.136(a)3,3001,980.006,534,000.00
Four-month extension of time under 37 CFR 1.136(a) (small entity)2,500990.002,475,000.00
Five-month extension of time under 37 CFR 1.136(a)3,8002,690.0010,222,000.00
Five-month extension of time under 37 CFR 1.136(a) (small entity)3,5001,345.004,707,500.00
Express abandonment under 37 CFR 1.1387,000None0.00
Statutory Disclaimer35,500160.005,680,000.00
Statutory Disclaimer (small entity)9,50080.00760,000.00
Request for expedited examination of a design application400900.00360,000.00
Electronic Notice of Appeal27,900620.0017,298,000.00
Electronic Notice of Appeal (small entity)7,000310.002,170,000.00
Notice of Appeal2,100620.001,302,000.00
Notice of Appeal (small entity)500310.00155,000.00
Information Disclosure Citations1,000None0.00
Petition to Revive Unavoidably Abandoned Application120620.0074,400.00
Petition to Revive Unavoidably Abandoned Application (small entity)240310.0074,400.00
Petition to Revive Unintentionally Abandoned Application3,8001,860.007,068,000.00
Petition to Revive Unintentionally Abandoned Application (small entity)4,200930.003,906,000.00
Petition for revival of an application for patent abandoned for failure to notify the office of a foreign or international filing2001,860.00372,000.00
Petition for revival of an application for patent abandoned for failure to notify the office of a foreign or international filing (small entity)50930.0046,500.00
Requests to Access, Inspect and Copy130,000None0.00
Deposit Account Order Form100None0.00
Certificates of Mailing/Transmission1,000,000None0.00
Statement under 37 CFR 3.73(b)150,000None0.00
Non-publication Request23,000None0.00
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))1,100None0.00
EFS Copy of Application for Publication1None0.00
Copy of File Content Showing Redactions1130.00130.00
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)20None0.00
Request for Continued Examination (RCE) Transmittal131,000930.00121,830,000.00
Request for Continued Examination (RCE) Transmittal (small entity)29,000465.0013,485,000.00
Electronic Request for Oral Hearing9001,240.001,116,000.00
Electronic Request for Oral Hearing (small entity)200620.00124,000.00
Request for Oral Hearing601,240.0074,400.00
Request for Oral Hearing (small entity)40620.0024,800.00
Processing fee for requests for suspension of action or deferrals of examination under 37 CFR 1.103(b),(c),or(d)600130.0078,000.00
Request for voluntary publication or republication under 37 CFR 1.221(a)300430.00129,000.00
Applicant initiated interview request form2,000None0.00
Processing fee under 37 CFR 1.17(i) transmittal3,500130.00455,000.00
Request to retrieve electronic priority application(s) under 37 CFR 1.55(d)65,000None0.00
Authorization to permit access to application by participating offices under 37 CFR 1.17(h)20,000None0.00
Petition for express abandonment to obtain a refund2,100None0.00
Electronic Pre-Appeal Brief Request for Review11,700None0.00
Electronic Pre-Appeal Brief Request for Review (small entity)3,000None0.00
Pre-Appeal Brief Request for Review900None0.00
Pre-Appeal Brief Request for Review (small entity)200None0.00
Request for Corrected filing receipt (electronic)22,000None0.00
Request for Corrected filing receipt2,000None0.00
Electronic Request for First Action Interview (Pilot Program)1,500None0.00
Petition to Make Special Based on Age for Advancement of Examination Under 37 CFR 1.105(c)(1) (EFS-Web only)2,300None0.00
Rule 1.130, 1.131, and 1.132 Affidavits or Declarations50,000None0.00
Electronic Amendments and Responses893,000None0.00
Amendments and Responses67,000None0.00
TOTAL4,237,132356,886,130.00

The USPTO estimates that the total (non-hour) respondent cost burden for this collection in the form of postage costs and filing fees will be $357,380,557.

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 will also become a matter of public record.

Dated: March 19, 2012.

Susan K. Fawcett,

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

[FR Doc. 2012-6888 Filed 3-21-12; 8:45 am]

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