# Patent Processing (Updating)

> Briefs, arguments, decisions, and more.

URL: https://www.frixlaw.com/law-library/documents/fr%3A2012-6888

## Record

- **Collection:** Federal Register
- **Document type:** Notice
- **Published:** March 22, 2012
- **Citation:** 77 FR 16813

## Text

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]
BILLING CODE 3510-16-P

---

Source: Frix Law Library, https://www.frixlaw.com/law-library/documents/fr%3A2012-6888. Public record. Not legal advice.