Patent Processing (Updating)

DEPARTMENT OF COMMERCE

United States Patent and Trademark Office

Patent Processing (Updating)

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.

Item

Estimated time for

response

Estimated

annual

responses

Estimated

annual

burden hours

EFS-Web IDS (Information Disclosure Statements) that do not require the fee set forth in 37 CFR 1.17(p)

2 hours

500,000

1,000,000

Information Disclosure Statements that do not require the fee set forth in 37 CFR 1.17(p)

2 hours

40,000

80,000

EFS-Web IDS (Information Disclosure Statements) that require the fee set forth in 37 CFR 1.17(p)

2 hours

100,000

200,000

Information Disclosure Statements that require the fee set forth in 37 CFR 1.17(p)

2 hours

10,000

20,000

Electronic Transmittal Form

2 hours

1,020,000

2,040,000

Transmittal Form

2 hours

80,000

160,000

Electronic Petition for Extension of Time under 37 CFR 1.136(a)

6 minutes

295,000

29,500

Petition for Extension of Time under 37 CFR 1.136(a)

6 minutes

20,100

2,010

Electronic Express Abandonment under 37 CFR 1.138

12 minutes

6,500

1,300

Express Abandonment under 37 CFR 1.138

12 minutes

500

100

Electronic Disclaimers

12 minutes

40,000

8,000

Disclaimers

12 minutes

5,000

1,000

Electronic Request for Expedited Examination of a Design Application

6 minutes

370

37

Request for Expedited Examination of a Design Application

6 minutes

30

3

Electronic Notice of Appeal

12 minutes

34,900

6,980

Notice of Appeal

12 minutes

2,600

520

Electronic Information Disclosure Citation in a Patent

10 hours

930

9,300

Information Disclosure Citation in a Patent

10 hours

70

700

Electronic Petition for Revival of an Application for Patent Abandoned Unavoidably

8 hours

330

2,640

Petition for Revival of an Application for Patent Abandoned Unavoidably

8 hours

30

240

Electronic Petition for Revival of an Application for Patent Abandoned Unintentionally

1 hour

7,400

7,400

Petition for Revival of an Application for Patent Abandoned Unintentionally

1 hour

600

600

Electronic Petition for Revival of an Application for Patent Abandoned for Failure to Notify the Office of a Foreign or International Filing

1 hour

230

230

Petition for Revival of an Application for Patent Abandoned for Failure to Notify the Office of a Foreign or International Filing

1 hour

20

20

Electronic Requests to Access, Inspect and Copy

12 minutes

121,000

24,200

Requests to Access, Inspect and Copy

12 minutes

9,000

1,800

Electronic Deposit Account Order Form

12 minutes

90

18

Deposit Account Order Form

12 minutes

10

2

Electronic Certificates of Mailing, Transmission

1 minute,

48 seconds

930,000

27,900

Certificates of Mailing, Transmission

1 minute,

48 seconds

70,000

2,100

Electronic Statement Under 37 CFR 3.73(b)

12 minutes

140,000

28,000

Statement Under 37 CFR 3.73(b)

12 minutes

10,000

2,000

Electronic Non-publication Request

6 minutes

21,500

2,150

Non-publication Request

6 minutes

1,500

150

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 minutes

1,000

100

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 minutes

100

10

Electronic Filing System (EFS) Copy of Application for Publication

2 hours,

30 minutes

1

3

Copy of File Content Showing Redactions

4 hours

1

4

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 hours

20

40

EFS-Web Request for Continued Examination (RCE) Transmittal

12 minutes

150,000

30,000

Request for Continued Examination (RCE) Transmittal

12 minutes

10,000

2,000

Electronic Request for Oral Hearing Before the Board of Patent Appeals and Interferences

12 minutes

1,100

220

Request for Oral Hearing Before the Board of Patent Appeals and Interferences

12 minutes

100

20

Electronic Request for Suspension of Action or Deferral of Examination Under 37 CFR 1.103(b), (c), or (d)

12 minutes

560

112

Request for Suspension of Action or Deferral of Examination Under 37 CFR 1.103(b), (c), or (d)

12 minutes

40

8

EFS-Web Request for Voluntary Publication or Republication

12 minutes

650

130

Request for Voluntary Publication or Republication

12 minutes

50

10

Electronic Applicant Initiated Interview Request Form

24 minutes

1,900

760

Applicant Initiated Interview Request Form

24 minutes

100

40

Electronic Processing Fee Under 37 CFR 1.17(i) Transmittal

5 minutes

3,300

264

Processing Fee Under 37 CFR 1.17(i) Transmittal

5 minutes

200

16

Electronic Request to Retrieve Electronic Priority Application(s) Under 37 CFR 1.55(d)

8 minutes

60,000

7,800

Request to Retrieve Electronic Priority Application(s) Under 37 CFR 1.55(d)

8 minutes

5,000

650

Electronic Authorization to Permit Access to Application by Participating Offices Under 37 CFR 1.14(h)

6 minutes

19,000

1,900

Authorization to Permit Access to Application by Participating Offices Under 37 CFR 1.14(h)

6 minutes

1,000

100

Electronic Petition for Express Abandonment to Obtain a Refund

12 minutes

2,000

400

Petition for Express Abandonment to Obtain a Refund

12 minutes

100

20

Electronic Pre-Appeal Brief Request for Review

5 hours

14,700

73,500

Pre-Appeal Brief Request for Review

5 hours

1,100

5,500

EFS-Web Request for Corrected Filing Receipt

5 minutes

22,000

1,760

Request for Corrected Filing Receipt

5 minutes

2,000

160

Electronic Request for First Action Interview (Pilot Program)

2 hours,

30 minutes

1,500

3,750

Petition to Make Special Based on Age for Advancement of Examination under 37 CFR 1.105(c)(1) (EFS-Web only)

2 hours

2,300

4,600

Rule 1.130, 1.131, and 1.132 Affidavits or Declarations

10 hours

50,000

500,000

Electronic Amendments and Responses

8 hours

893,000

7,144,000

Amendments and Responses

8 hours

67,000

536,000

Totals

4,777,532

11,972,777

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.

Item

Responses

(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)

10,000

180.00

1,800,000.00

Transmittal Forms

1,100,000

None

0.00

One-month extension of time under 37 CFR 1.136(a)

110,000

150.00

16,500,000.00

One-month extension of time under 37 CFR 1.136(a) (small entity)

40,000

75.00

3,000,000.00

Two-month extension of time under 37 CFR 1.136(a)

50,000

560.00

28,000,000.00

Two-month extension of time under 37 CFR 1.136(a) (small entity)

21,000

280.00

5,880,000.00

Three-month extension of time under 37 CFR 1.136(a)

50,000

1,270.00

63,500,000.00

Three-month extension of time under 37 CFR 1.136(a) (small entity)

31,000

635.00

19,685,000.00

Four-month extension of time under 37 CFR 1.136(a)

3,300

1,980.00

6,534,000.00

Four-month extension of time under 37 CFR 1.136(a) (small entity)

2,500

990.00

2,475,000.00

Five-month extension of time under 37 CFR 1.136(a)

3,800

2,690.00

10,222,000.00

Five-month extension of time under 37 CFR 1.136(a) (small entity)

3,500

1,345.00

4,707,500.00

Express abandonment under 37 CFR 1.138

7,000

None

0.00

Statutory Disclaimer

35,500

160.00

5,680,000.00

Statutory Disclaimer (small entity)

9,500

80.00

760,000.00

Request for expedited examination of a design application

400

900.00

360,000.00

Electronic Notice of Appeal

27,900

620.00

17,298,000.00

Electronic Notice of Appeal (small entity)

7,000

310.00

2,170,000.00

Notice of Appeal

2,100

620.00

1,302,000.00

Notice of Appeal (small entity)

500

310.00

155,000.00

Information Disclosure Citations

1,000

None

0.00

Petition to Revive Unavoidably Abandoned Application

120

620.00

74,400.00

Petition to Revive Unavoidably Abandoned Application (small entity)

240

310.00

74,400.00

Petition to Revive Unintentionally Abandoned Application

3,800

1,860.00

7,068,000.00

Petition to Revive Unintentionally Abandoned Application (small entity)

4,200

930.00

3,906,000.00

Petition for revival of an application for patent abandoned for failure to notify the office of a foreign or international filing

200

1,860.00

372,000.00

Petition for revival of an application for patent abandoned for failure to notify the office of a foreign or international filing (small entity)

50

930.00

46,500.00

Requests to Access, Inspect and Copy

130,000

None

0.00

Deposit Account Order Form

100

None

0.00

Certificates of Mailing/Transmission

1,000,000

None

0.00

Statement under 37 CFR 3.73(b)

150,000

None

0.00

Non-publication Request

23,000

None

0.00

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))

1,100

None

0.00

EFS Copy of Application for Publication

1

None

0.00

Copy of File Content Showing Redactions

1

130.00

130.00

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)

20

None

0.00

Request for Continued Examination (RCE) Transmittal

131,000

930.00

121,830,000.00

Request for Continued Examination (RCE) Transmittal (small entity)

29,000

465.00

13,485,000.00

Electronic Request for Oral Hearing

900

1,240.00

1,116,000.00

Electronic Request for Oral Hearing (small entity)

200

620.00

124,000.00

Request for Oral Hearing

60

1,240.00

74,400.00

Request for Oral Hearing (small entity)

40

620.00

24,800.00

Processing fee for requests for suspension of action or deferrals of examination under 37 CFR 1.103(b),(c),or(d)

600

130.00

78,000.00

Request for voluntary publication or republication under 37 CFR 1.221(a)

300

430.00

129,000.00

Applicant initiated interview request form

2,000

None

0.00

Processing fee under 37 CFR 1.17(i) transmittal

3,500

130.00

455,000.00

Request to retrieve electronic priority application(s) under 37 CFR 1.55(d)

65,000

None

0.00

Authorization to permit access to application by participating offices under 37 CFR 1.17(h)

20,000

None

0.00

Petition for express abandonment to obtain a refund

2,100

None

0.00

Electronic Pre-Appeal Brief Request for Review

11,700

None

0.00

Electronic Pre-Appeal Brief Request for Review (small entity)

3,000

None

0.00

Pre-Appeal Brief Request for Review

900

None

0.00

Pre-Appeal Brief Request for Review (small entity)

200

None

0.00

Request for Corrected filing receipt (electronic)

22,000

None

0.00

Request for Corrected filing receipt

2,000

None

0.00

Electronic Request for First Action Interview (Pilot Program)

1,500

None

0.00

Petition to Make Special Based on Age for Advancement of Examination Under 37 CFR 1.105(c)(1) (EFS-Web only)

2,300

None

0.00

Rule 1.130, 1.131, and 1.132 Affidavits or Declarations

50,000

None

0.00

Electronic Amendments and Responses

893,000

None

0.00

Amendments and Responses

67,000

None

0.00

TOTAL

4,237,132

356,886,130.00

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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