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

Federal RegisterJan 29, 2024

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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), as required by 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 this information collection to OMB.

DATES:

To ensure consideration, comments regarding this information collection must be received on or before March 29, 2024.

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: InformationCollections@uspto.gov.

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

•

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

•

Mail:

Justin Isaac, Information Collection Officer, 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, 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 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.

During the processing of an application for a patent, the applicant or the applicant's representative may be required to submit additional information to the USPTO concerning the examination of a specific application. The specific information required to be submitted includes: requests for extension of time, abandonment of applications and the revival of abandoned applications, disclaimers, appeals, petitions, expedited examination of design applications, requests for continued examinations, requests to inspect, copy, access patent applications, and transmittal forms.

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. This also includes situations that require additional information in order for the USPTO to further process the patent or application.

II. Method of Collection

The items in this information collection can be submitted through the USPTO patent electronic filing system (Patent Center), the USPTO's online filing and viewing system for patent applications and related documents. The USPTO also will accept submissions by mail, hand delivery, and facsimile.

III. Data

OMB Control Number:

0651-0031.

Forms:

(AIA—America Invents Act; SB—Specimen Book; PTOL = Patent and Trademark Office Legal)

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

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

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

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

• PTO/AIA/40 (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)

• PTO/AIA/41 (Request to Correct or Update the Name of the Applicant Under 37 CFR 1.45(c)(1), or Change the Applicant Under 37 CFR 1.46(c)(2))

• PTO/AIA/67 (Power to Inspect/Copy—For Applications Filed On or After September 16, 2012)

• PTO/AIA/96 (Statement Under 37 CFR 3.73(c))

• PTO/SB/08a (Information Disclosure Statement by Applicant)

• PTO/SB/08b (Information Disclosure Statement by Applicant)

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

• PTO/SB/21 (Transmittal Form)

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

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

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

• PTO/SB/25 (Terminal Disclaimer to Obviate a Provisional Double Patenting Rejection Over a Pending “Reference” Application)

• PTO/SB/26 (Terminal Disclaimer to Obviate a Double Patenting Rejection over a “Prior” Patent)

• PTO/SB/27 (Request for Expedited Examination of a Design Application (37 CFR 1.155))

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

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

• PTO/SB/35 (Nonpublication Request under 35 U.S.C. 122(b)(2)(B)(i))

• PTO/SB/36 (Rescission of Previous Nonpublication 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/SB/37 (Request Deferral of Examination 37 CFR 1.103(d))

• PTO/SB/38 (Request to Retrieve Electronic Priority Applications(s) Filed with Nonparticipating Office(s) That is Available in a Participating Office (37 CFR 1.55(i)(4)))

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

• PTO/SB/43 (Disclaimer in a Patent under 37 CFR 1.321(a))

• PTO/SB/63 (Terminal Disclaimer to Accompany Petition)

• PTO/SB/64 (Petition for Revival of an Application for Patent Abandoned Unintentionally Under 37 CFR 1.137(a))

• PTO/SB/64a (Petition for Revival of an Application for Patent Abandoned for Failure to Notify the Office of a Foreign or International Filing (37 CFR 1.137(f))

• PTO/SB/67 (Power to Inspect/Copy—For Applications Filed Before September 16, 2012)

• PTO/SB/68 (Request for Access to an Abandoned Application under 37 CFR 1.14)

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

• PTO/SB/92 (Certificate of Mailing or Transmission under 37 CFR 1.8)

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

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

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

• PTO-2053-A/B (Notice Under 37 CFR 1.251—Pending Application)

• PTO-2054-A/B (Notice Under 37 CFR 1.251—Abandoned Application)

• PTO-2055-A/B (Notice Under 37 CFR 1.251—Patent)

Type of Review:

Extension and revision of a currently approved information collection.

Affected Public:

Private sector.

Respondent's Obligation:

Required to obtain or retain benefits.

Estimated Number of Annual Respondents:

2,435,597 respondents per year.

Estimated Number of Annual Responses:

2,435,597 responses per year.

Estimated Time per Response:

The USPTO estimates that it will take respondents between 2 minutes (0.03 hours) and 8 hours to submit items in this information collection depending on the instrument used. This includes the time to gather the necessary information, create the document, and submit the completed request to the USPTO.

Estimated Total Annual Respondent Burden Hours:

535,466 hours.

Estimated Total Annual Respondent Hourly Cost Burden:

$170,503,027.

Table 1—Total Burden Hours and Hourly Costs to Private Sector Respondents

Item No.

Item

Estimated

annual

respondents

Responses

per

respondent

Estimated

annual

responses

Estimated

time

for response

(hours)

Estimated

burden

(hour/year)

Rate

($/hour)

Estimated

annual

respondent

cost burden

(a)

(b)

(a) × (b) = (c)

(d)

(f)

(e) × (f) = (g)

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

694,000

0.20 (12 minutes)

138,800

$447

$62,043,600

Transmittal Form

517,000

0.20 (12 minutes)

103,400

122

12,614,800

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

192,884

0.40 (24 minutes)

77,154

122

9,412,788

Express Abandonment under 37 CFR 1.138

2,000

0.08 (5 minutes)

160

122

19,520

Statutory Disclaimers (including terminal disclaimers)

49,950

0.25 (15 minutes)

12,488

447

5,582,136

Request for Expedited Examination of a Design Application

7,227

0.25 (15 minutes)

1,807

447

807,729

Petition for Revival of an Application for Patent Abandoned Unintentionally

7,024

447

3,139,728

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

125

447

55,875

Requests to Access, Inspect, and Copy

1,000

0.25 (15 minutes)

250

122

30,500

Deposit Account Order Form

55,000

0.25 (15 minutes)

13,750

122

1,677,500

Certificates of Mailing or Transmission

450,000

0.03 (2 minutes)

13,500

122

1,647,000

Statement Under 37 CFR 3.73(c) (AIA), 37 CFR 3.83(b) (pre-AIA)

146,000

0.25 (15 minutes)

36,500

447

16,315,500

Non-publication Request

16,000

0.25 (15 minutes)

4,000

447

1,788,000

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)

500

0.25 (15 minutes)

125

447

55,875

USPTO Patent Electronic Filing System Copy of Application for Publication

2.50

122

366

Copy of File Content Showing Redactions

447

5,364

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)

122

2,440

Request for Continued Examination (RCE) Transmittal)

132,000

0.30 (18 minutes)

39,600

447

17,701,200

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

630

0.20 (12 minutes)

126

447

56,322

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

450

0.20 (12 minutes)

122

10,980

Applicant Initiated Interview Request Form

50,000

0.40 (24 minutes)

20,000

447

8,940,000

Processing Fee Under 37 CFR 1.17(i) Transmittal

100

0.08 (5 minutes)

447

3,576

Request to Retrieve Electronic Priority Application (s) Under 37 CFR 1.55(i)(4)

10,000

0.25 (15 minutes)

2,500

447

1,117,500

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

6,000

0.25 (15 minutes)

1,500

447

670,500

Petition for Express Abandonment to Obtain a Refund

2,050

0.20 (12 minutes)

410

447

183,270

Pre-Appeal Brief Request for Review

6,700

33,500

447

14,974,500

Request for Corrected Filing Receipt

44,000

0.08 (5 minutes)

3,520

122

429,440

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

2,100

4,200

447

1,877,400

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

344

447

153,768

Correction of inventorship after first office action on the merits

3,300

0.75 (45 minutes)

2,475

447

1,106,325

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)

18,500

0.75 (45 minutes)

13,875

447

6,202,125

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)

21,000

0.20 (12 minutes)

4,200

447

1,877,400

Totals

2,435,597

535,466

170,503,027

2023 Report of the Economic Survey, published by the Committee on Economics of Legal Practice of the American Intellectual Property Law Association (AIPLA); pg. F-41. The USPTO uses the average billing rate for intellectual property work in all firms which is $447 per hour (

https://www.aipla.org/home/news-publications/economic-survey

). 2022 National Utilization and Compensation Survey Report published by the National Association of Legal Assistants (NALA); pg. 38. The USPTO uses the average billing rate for paralegals/paraprofessionals, which is $122 per hour (

https://nala.org/paralegal-info/

Estimated Total Annual Non-Hourly Cost Burden:

$363,821,958. There is no capital start-up, maintenance costs, or recordkeeping costs associated with this information collection. However, there is non-hour cost burden in the way of filing fees and postage costs. The total annual (non-hour) respondent cost burden for this collection is estimated to be $363,821,958, which includes $363,579,616 in filing fees, and $242,342 in postage.

Filing Fees

The fees in this information collection are listed in the table below. The fee for Request for Prioritized Examination has no counterpart in the hourly cost table due to that form being exempt from the PRA.

Table 2—Filing Fees

Item No.

Fee code

Item

Estimated

annual

responses

Filing

fee

($)

Non-hourly

cost burden

(a)

(b)

(a) × (b) = (c)

1806

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

85,540

$260

$22,240,400

2806

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

22,173

104

2,305,992

3806

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

624

32,448

1251

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

62,740

220

13,802,800

2251

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

29,039

2,555,432

3251

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

3,509

154,396

1252

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

23,560

640

15,078,400

2252

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

15,484

256

3,963,904

3252

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

1,922

128

246,016

1253

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

20,377

1,480

30,157,960

2253

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

23,002

592

13,617,184

3253

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

2,558

296

757,168

1254

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

1,810

2,320

4,199,200

2254

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

2,196

928

2,037,888

3254

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

266

464

123,424

1255

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

3,039

3,160

9,603,240

2255

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

3,176

1,264

4,014,464

3255

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

206

632

130,192

1814

Statutory Disclaimers (including terminal disclaimers) (undiscounted)

36,105

170

6,137,850

2814

Statutory Disclaimers (including terminal disclaimers) (small entity)

13,175

170

2,239,750

3814

Statutory Disclaimers (including terminal disclaimers) (micro entity)

670

170

113,900

1802

Request for Expedited Examination of a Design Application (undiscounted)

713

1,600

1,140,800

2802

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

1,426

640

912,640

3802

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

5,088

320

1,628,160

1453

Petition for Revival of an Application for Patent Abandoned Unintentionally (undiscounted)

2,323

2,100

4,878,300

2453

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

3,388

840

2,845,920

3453

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

1,313

420

551,460

1453

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

2,100

197,400

2453

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

840

15,960

3453

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

420

5,040

1808

Copy of File Content Showing Redactions (undiscounted)

140

2808

Copy of File Content Showing Redactions (small entity)

140

3808

Copy of File Content Showing Redactions (micro entity)

140

1801

Request for Continued Examination (RCE) Transmittal (First Request) (undiscounted)

70,734

1,360

96,198,240

2801

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

19,673

544

10,702,112

3801

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

1,992

272

541,824

1820

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

29,979

2,000

59,958,000

2820

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

8,985

800

7,188,000

3820

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

637

400

254,800

1830

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

354

140

49,560

2830

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

245

13,720

3830

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

868

1803

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

157

140

21,980

2803

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

140

2,660

3803

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

140

560

1830

Processing Fee Under 37 CFR 1.17(i) Transmittal (undiscounted)

140

7,840

2830

Processing Fee Under 37 CFR 1.17(i) Transmittal (small entity)

2,184

3830

Processing Fee Under 37 CFR 1.17(i) Transmittal (micro entity)

140

1810

For each additional invention to be examined (see 37 CFR 1.129(b)) (undiscounted)

880

2810

For each additional invention to be examined (see 37 CFR 1.129(b)) (small entity)

352

3810

For each additional invention to be examined (see 37 CFR 1.129(b)) (micro entity)

176

1809

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

880

14,960

2809

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

352

7,040

3809

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

176

1,056

1819

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

793

640

507,520

2819

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

617

256

157,952

3819

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

128

7,680

1830

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) (non-provisional) (undiscounted)

7,122

140

997,080

2830

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) (non-provisional) (small entity)

5,180

290,080

3803

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) (non-provisional) (micro entity)

648

18,144

1807

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) (provisional)

5,550

277,500

N/A

1817

Request for prioritized examination (undiscounted)

6,481

4,200

27,220,200

N/A

2817

Request for prioritized examination (small entity)

7,491

1,680

12,584,880

N/A

3817

Request for prioritized examination (micro entity)

1,028

840

863,520

Totals

533,476

363,579,616

Postage Costs

Although the USPTO prefers that the items in this information collection be submitted electronically, responses may be submitted by mail through the United States Postal Service (USPS). The USPTO estimates that 1% of the 2,435,597 items will be submitted in the mail resulting in 24,356 mailed items. The USPTO estimates that the average postage cost for a mailed submission, using a Priority Mail flat rate legal envelope, will be $9.95. Therefore, the USPTO estimates that the total mailing costs for this information collection is $242,342.

IV. Request for Comments

The USPTO is soliciting public comments to:

(a) Evaluate whether the 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 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 personally identifiable information (PII) in a comment, be aware that the entire comment—including PII—may be made publicly available at any time. While you may ask in your comment to withhold PII from public view, USPTO cannot guarantee that it will be able to do so.

Justin Isaac,

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

[FR Doc. 2024-01722 Filed 1-26-24; 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.