Agency Information Collection Activities; Submission to the Office of Management and Budget (OMB) for Review and Approval; Comment Request; Patent Processing

Federal RegisterSep 29, 2020

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DEPARTMENT OF COMMERCE

Patent and Trademark Office

Agency Information Collection Activities; Submission to the Office of Management and Budget (OMB) for Review and Approval; Comment Request; Patent Processing

AGENCY:

United States Patent and Trademark Office, Department of Commerce.

ACTION:

Notice of information collection; request for comment.

SUMMARY:

The United States Patent and Trademark Office (USPTO), in accordance with the Paperwork Reduction Act of 1995, invites comments on the extension and revision of an existing information collection: 0651-0031 (Patent Processing). The purpose of this notice is to allow 60 days for public comment preceding submission of the information collection to OMB.

DATES:

To ensure consideration, comments regarding this information collection must be received on or before November 30, 2020.

ADDRESSES:

Interested persons are invited to submit written comments by any of the following methods. Do not submit Confidential Business Information or otherwise sensitive or protected information.

•

Email: InformationCollection@uspto.gov.

Include “0651-0031 comment” in the subject line of the message.

•

Federal Rulemaking Portal: http://www.regulations.gov.

•

Mail:

Kimberly Hardy, Office of the Chief Administrative Officer, United States Patent and Trademark Office, P.O. Box 1450, Alexandria, VA 22313-1450.

FOR FURTHER INFORMATION CONTACT:

Requests for additional information should be directed to Raul Tamayo, Senior 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 “0651-0031 comment” in the subject line. Additional information about this information 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. The USPTO is also required to publish patent applications, with certain exceptions, promptly after the expiration of a period of 18 months from the earliest filing date for which a benefit is sought under Title 35, United States Code (“eighteen-month publication”). This information collection covers certain situations that may arise which require that additional information be supplied in order for the USPTO to further process the patent or application.

The information in this collection is 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. In addition, this renewal proposes to remove three items related to patent appeals and associate all submissions of those items to an existing information collection (0651-0063, Patent Trial and Appeal Board Appeals). These three items are: Notice of Appeal, Amendment to Cancel Claims During an Appeal, and Request for Oral Hearing.

II. Method of Collection

Items in this information collection may be submitted via online electronic submissions. In limited circumstances, applicants may be permitted to submit the information in paper form by mail, fax, or hand delivery.

III. Data

OMB Number:

0651-0031.

Form Number(s):

(AIA = American Invents; SB = Specimen Book; PTOL = Patent and Trademark Office Legal)

• PTO/SB/08a/08b (Information Disclosure Statements)

• PTO/SB/21 (Transmittal Form)

• PTO/SB/22 and PTO/AIA/22 (Petitions for Extension of Time under 37 CFR 1.136(a))

• PTO/SB/24 and PTO/AIA/24 (Express Abandonment under 37 CFR 1.138)

• PTO/SB/25/26/43/63 (Statutory Disclaimers)

• PTO/SB/27 (Request for Expedited Examination of a Design Application)

• PTO/SB/61/64 (Petition for Revival of an Application for Patent Abandoned Unintentionally)

• PTO/SB/64a (Petition for Revival of an Application for Patent Abandoned for Failure to Notify the Office of a Foreign or International Filing)

• PTO/SB/67/68 (Requests to Access, Inspect, and Copy)

• PTO/SB/91 (Deposit Account Order Form)

• PTO/SB/92 (Certificates of Mailing or Transmission)

• PTO/SB/96 and PTO/AIA/96 (Statement under 37 CFR 3.73(b))

• PTO/SB/35 (Non-Publication Request)

• PTO/SB/36 (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))

• PTO-2053-A/B, PTO-2054-A/B, and PTO-2055-A/B (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))

• PTO/SB/30 (Request for Continued Examination (RCE) Transmittal)

• PTO/SB/37 (Request for Suspension of Action or Deferral of Examination under 37 CFR 1.103(b), (c), or (d))

• PTOL/413A (Applicant-Initiated Interview Request Form)

• PTO/SB/17i (Processing Fee under 37 CFR 1.17(i) Transmittal)

• PTO/SB/38 (Request to Retrieve Electronic Priority Application(s) under 37 CFR 1.55(d))

• PTO/SB/39 (Authorization or Rescission of Authorization to Permit Access to Application-as-filed by Participating Offices under 37 CFR 1.14(h))

• PTO/SB/24B and PTO/AIA/24B (Petition for Express Abandonment to Obtain a Refund)

• PTO/SB/33 and PTO/AIA/33 (Pre-Appeal Brief Request for Review)

• PTOL-413C (Request for First-Action Interview (Pilot Program))

• PTO/SB/130 (Petition to Make Special Based on Age for Advancement of Examination under 37 CFR 1.102(c)(1))

Type of Review:

Revision of a currently approved information collection.

Affected Public:

Private sector; individuals or households.

Estimated Number of Respondents:

3,669,397 respondents per year.

Estimated Number of Responses:

3,669,397 responses per year.

Estimated Time per Response:

The USPTO estimates that it will take respondents between 2 minutes (.03 hours) and 8 hours to submit an item in this information collection depending on the instrument used, including the time to gather the necessary information, prepare the appropriate form or petition, and submit the completed request to the USPTO.

Estimated Total Annual Respondent Burden Hours:

3,187,341 hours.

Estimated Total Annual Respondent (Hourly) Cost Burden:

$842,416,575.

Table 1—Total Hourly Burden For Private Sector Respondents

Item No.

Item

Estimated

annual

respondents

Estimated

annual

responses

(year)

Estimated

time for

response

(hours)

Estimated

annual

burden

(hour/year)

Rate

($/hour)

Estimated

annual

burden

(a)

(b)

(a) × (b) = c

(d)

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

624,824

1,249,648

$400

$499,859,200

Transmittal Form

663,023

1,326,046

145

192,276,670

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

252,184

.3 (18 minutes)

75,655

145

10,969,975

Express Abandonment under 37 CFR 1.138

1,838

.25 (15 minutes)

460

145

66,700

Statutory Disclaimers (including terminal disclaimers)

57,891

.25 (15 minutes)

14,473

400

5,789,200

Request for Expedited Examination of a Design Application

1,034

.25 (15 minutes)

259

400

103,600

Petition for Revival of an Application for Patent Abandoned Unintentionally

7,666

400

3,066,400

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

140

400

56,000

Requests to Access, Inspect and Copy

824,500

.25 (15 minutes)

206,125

145

29,888,125

Deposit Account Order Form

64,460

.25 (15 minutes)

16,115

145

2,336,675

Certificates of Mailing or Transmission

582,000

.03 (2 minutes)

17,460

145

2,531,700

Statement Under 37 CFR 3.73(c)

172,469

.25 (15 minutes)

43,117

400

17,246,900

Non-publication Request

21,340

.25 (15 minutes)

5,335

400

2,134,000

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)

2,134

.25 (15 minutes)

534

400

213,600

Electronic Filing System (EFS) Copy of Application for Publication

2.5

145

435

Copy of File Content Showing Redactions

400

1,600

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)

145

1,740

Request for Continued Examination (RCE) Transmittal

154,766

.3 (18 minutes)

46,430

400

18,572,000

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

832

.2 (12 minutes)

166

400

66,400

Request for Voluntary Publication or Republication (includes publication fee for republication)

134

.2 (12 minutes)

145

3,915

Applicant Initiated Interview Request Form

30,557

.4 (24 minutes)

12,223

400

4,889,200

Processing Fee Under 37 CFR 1.17(i) Transmittal

119

.08 (5 minutes)

400

4,000

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

5,858

.25 (15 minutes)

1,465

400

585,600

Authorization or Rescission of Authorization to Permit Access to Application-as-filed by Participating Offices Under 37 CFR 1.14(h)

7,747

.25 (15 minutes)

1,937

400

774,800

Petition for Express Abandonment to Obtain a Refund

1,827

.2 (12 minutes)

365

400

146,000

Pre-Appeal Brief Request for Review

7,760

38,800

400

15,520,000

Request for Corrected Filing Receipt

42,089

.08 (5 minutes)

3,367

145

488,215

Request for First Action Interview (Pilot Program) (Electronic only)

2,026

2.5

5,065

400

2,026,000

Petition to Make Special Based on Age for Advancement of Examination under 37 CFR 1.102(c)(1) (EFS-Web only)

1,471

2,942

400

1,176,800

Filing a submission after final rejection (see 37 CFR 1.129(a))

744

400

297,600

Correction of inventorship after first office action on the merits

2,910

.75 (45 minutes)

2,183

400

873,200

Request for correction in a patent application relating to inventorship or an inventor name, or order of names, other than in a reissue application (37 CFR 1.48)

14,216

.75 (45 minutes)

10,662

400

4,264,800

Request to correct or update the name of the applicant under 37 CFR 1.46(c)(1), or change the applicant under 37 CFR 1.46(c)(2)

11,398

.2 (12 minutes)

2,280

400

912,000

Total

3,559,314

3,091,718

817,143,050

2019 Report of the Economic Survey, published by the Committee on Economics of Legal Practice of the American Intellectual Property Law Association (AIPLA);

https://www.aipla.org/detail/journal-issue/2019-report-of-the-economic-survey.

The USPTO uses the mean rate for attorneys in private firms which is $400 per hour. The hourly rate for paraprofessional/paralegals is estimated at $145 from data published in the 2018 Utilization and Compensation Survey by the National Association of Legal Assistants (NALA).

Table 2—Total Hourly Burden for Individuals and Households Respondents

Item No.

Item

Estimated

annual

respondents

Estimated

annual

responses

(year)

Estimated

time for

response

(hours)

Estimated

annual

burden

(hour/year)

Rate

($/hour)

Estimated

annual

burden

(a)

(b)

(a) × (b) = c

(d)

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

19,324

38,648

$400

$15,459,200

Transmittal Form

20,506

41,012

145

5,946,740

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

7,800

.3 (18 minutes)

2,340

145

339,300

Express Abandonment under 37 CFR 1.138

.25 (15 minutes)

145

2,030

Statutory Disclaimers (including terminal disclaimers)

1,790

.25 (15 minutes)

448

400

179,200

Request for Expedited Examination of a Design Application

.25 (15 minutes)

400

3,200

Petition for Revival of an Application for Patent Abandoned Unintentionally

237

400

94,800

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

400

1,600

Requests to Access, Inspect and Copy

25,500

.25 (15 minutes)

6,375

145

924,375

Deposit Account Order Form

1,994

.25 (15 minutes)

499

145

72,355

Certificates of Mailing or Transmission

18,000

.03 (2 minutes)

540

145

78,300

Statement Under 37 CFR 3.73(c)

5,334

.25 (15 minutes)

1,334

400

533,600

Non-publication Request

660

.25 (15 minutes)

165

400

66,000

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)

.25 (15 minutes)

400

6,800

Request for Continued Examination (RCE) Transmittal

4,787

.3 (18 minutes)

1,436

400

574,400

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

.2 (12 minutes)

400

2,000

Request for Voluntary Publication or Republication (includes publication fee for republication)

.2 (12 minutes)

145

Applicant Initiated Interview Request Form

945

.4 (24 minutes)

378

400

151,200

Processing Fee Under 37 CFR 1.17(i) Transmittal

.08 (5 minutes)

400

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

181

.25 (15 minutes)

400

18,000

Authorization or Rescission of Authorization to Permit Access to Application-as-filed by Participating Offices Under 37 CFR 1.14(h)

240

.25 (15 minutes)

400

24,000

Petition for Express Abandonment to Obtain a Refund

.2 (12 minutes)

400

4,400

Pre-Appeal Brief Request for Review

240

1,200

400

480,000

Request for Corrected Filing Receipt

1,302

.08 (5 minutes)

104

145

15,080

Request for First Action Interview (Pilot Program) (Electronic only)

2.5

158

400

63,200

Petition to Make Special Based on Age for Advancement of Examination under 37 CFR 1.102(c)(1) (EFS-Web only)

400

36,000

Filing a submission after final rejection (see 37 CFR 1.129(a))

400

9,600

Correction of inventorship after first office action on the merits

.75 (45 minutes)

400

27,200

Request for correction in a patent application relating to inventorship or an inventor name, or order of names, other than in a reissue application (37 CFR 1.48)

440

.75 (45 minutes)

330

400

132,000

Request to correct or update the name of the applicant under 37 CFR 1.46(c)(1), or change the applicant under 37 CFR 1.46(c)(2)

353

.2 (12 minutes)

400

28,400

Total

110,083

95,623

25,273,525

2019 Report of the Economic Survey, published by the Committee on Economics of Legal Practice of the American Intellectual Property Law Association (AIPLA);

https://www.aipla.org/detail/journal-issue/2019-report-of-the-economic-survey.

Estimated Total Annual Non-Hour Respondent Cost Burden:

$408,845,999.

There are no recordkeeping, maintenance, or capital start-up costs associated with this information collection. However, this information collection has annual non-hour costs in the form of filing fees, as estimated in Table 3, and postage costs. The public may submit the paper forms and petitions in this information 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. The USPTO estimates that approximately 166,111 submissions per year may be mailed. The USPTO estimates that the average submission will be mailed in a legal flat-rate Priority Mail envelope at a cost of $8.05; resulting in a total postage cost of $1,377,194.

Table 3—Filing Fees

Item No.

Item

Estimated

annual

responses

Estimated

cost

Estimated

non-hour

cost burden

(a)

(b)

(a) × (b)

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

$108,938

$260

$28,323,880

IDS that require the fee set forth in 37 CFR 1.17(p) (small entity)

27,198

130

3,535,740

IDS that require the fee set forth in 37 CFR 1.17(p) (micro entity)

770

50,050

One-month Extension of Time under 37 CFR 1.136(a) (large entity)

84,428

220

18,574,160

One-month Extension of Time under 37 CFR 1.136(a) (small entity)

34,564

110

3,802,040

One-month Extension of Time under 37 CFR 1.136(a) (micro entity)

4,035

221,925

Two-month Extension of Time under 37 CFR 1.136(a) (large entity)

36,165

640

23,145,600

Two-month Extension of Time under 37 CFR 1.136(a) (small entity)

19,728

320

6,312,960

Two-month Extension of Time under 37 CFR 1.136(a) (micro entity)

2,346

160

375,360

Three-month Extension of Time under 37 CFR 1.136(a) (large entity)

30,668

1480

45,388,640

Three-month Extension of Time under 37 CFR 1.136(a) (small entity)

30,442

740

22,527,080

Three-month Extension of Time under 37 CFR 1.136(a) (micro entity)

3,227

370

1,193,990

Four-month Extension of Time under 37 CFR 1.136(a) (large entity)

1,860

2320

4,315,200

Four-month Extension of Time under 37 CFR 1.136(a) (small entity)

2,366

1160

2,744,560

Four-month Extension of Time under 37 CFR 1.136(a) (micro entity)

294

580

170,520

Five-month Extension of Time under 37 CFR 1.136(a) (large entity)

2,038

3160

6,440,080

Five-month Extension of Time under 37 CFR 1.136(a) (small entity)

2,257

1580

3,566,060

Five-month Extension of Time under 37 CFR 1.136(a) (micro entity)

182

790

143,780

Statutory Disclaimer (including terminal disclaimer) (large entity)

44,625

170

7,586,250

Statutory Disclaimer (including terminal disclaimer) (small entity)

14,365

170

2,442,050

Statutory Disclaimer (including terminal disclaimer) (micro entity)

691

170

117,470

Request for Expedited Examination of a Design Application (large entity)

381

1600

609,600

Request for Expedited Examination of a Design Application (small entity)

468

800

374,400

Request for Expedited Examination of a Design Application (micro entity)

218

400

87,200

Petition for Revival of an Application for Patent Abandoned Unintentionally (large entity)

3,006

2100

6,312,600

Petition for Revival of an Application for Patent Abandoned Unintentionally (small entity)

3,730

1050

3,916,500

Petition for Revival of an Application for Patent Abandoned Unintentionally (micro entity)

1,167

525

612,675

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

108

2100

226,800

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

1050

23,100

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

525

7,350

Copy of File Content Showing Redactions

140

Request for Continued Examination (RCE) Transmittal (First Request) (large entity)

74,458

1360

101,262,880

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

26,592

680

18,082,560

Request for Continued Examination (RCE) Transmittal (First Request) (micro entity)

5,318

340

1,808,120

Request for Continued Examination (RCE) Transmittal (Second and Subsequent Requests) (large entity)

37,076

2000

74,152,000

Request for Continued Examination (RCE) Transmittal (Second and Subsequent Requests) (small entity)

13,241

1000

13,241,000

Request for Continued Examination (RCE) Transmittal (Second and Subsequent Requests) (micro entity)

2,648

500

1,324,000

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

601

220

132,220

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

215

110

23,650

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

2,310

Request for Voluntary Publication or Republication (includes publication fee for republication)

138

140

19,320

Processing Fee Under 37 CFR 1.17(i) Transmittal

123

140

17,220

Filing a submission after final rejection (see 37 CFR 1.129(a)) (large entity)

880

40,480

Filing a submission after final rejection (see 37 CFR 1.129(a)) (small entity)

440

19,360

Filing a submission after final rejection (see 37 CFR 1.129(a)) (micro entity)

220

1,100

Correction of inventorship after first office action on the merits (large entity)

1156

640

739,840

Correction of inventorship after first office action on the merits (small entity)

793

320

253,760

Correction of inventorship after first office action on the merits (micro entity)

160

9,920

Request for correction in a patent application relating to inventorship or an inventor name, or order of names, other than in a reissue application (37 CFR 1.48) (large entity)

10,259

260

2,667,340

Request for correction in a patent application relating to inventorship or an inventor name, or order of names, other than in a reissue application (37 CFR 1.48) (small entity)

3,664

130

476,320

Request for correction in a patent application relating to inventorship or an inventor name, or order of names, other than in a reissue application (37 CFR 1.48) (micro entity)

733

47,645

Total

407,468,805

Respondent's Obligation:

Required to obtain or retain benefits.

IV. Request for Comments

The USPTO is soliciting public comments to:

(a) Evaluate whether the proposed collection of information is necessary for the proper performance of the functions of the Agency, including whether the information will have practical utility;

(b) Evaluate the accuracy of the Agency's estimate of the burden of the proposed collection of information, including the validity of the methodology and assumptions used;

(d) Minimize the burden of the collection of information on those who are to respond, including through the use of appropriate automated, electronic, mechanical, or other technological collection techniques or other forms of information technology,

e.g.,

permitting electronic submission of responses.

All comments submitted in response to this notice are a matter of public record. USPTO will include or summarize each comment in the request to OMB to approve this information collection. Before including an address, phone number, email address, or other personal identifying information in a comment, be aware that the entire comment— including personal identifying information—may be made publicly available at any time. While you may ask in your comment to withhold personal identifying information from public view, USPTO

cannot guarantee that it will be able to do so.

Kimberly Hardy,

Information Collections Officer, Office of the Chief Administrative Officer, United States Patent and Trademark Office.

[FR Doc. 2020-21517 Filed 9-28-20; 8:45 am]

BILLING CODE 3510-16-P

This is a copy of a public record, reproduced as it was published. It is not legal advice, and it may not be the version a court would rely on. Check the official source before you cite it.