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

> Briefs, arguments, decisions, and more.

URL: https://www.frixlaw.com/law-library/documents/fr%3A2024-01722

## Record

- **Collection:** Federal Register
- **Document type:** Notice
- **Published:** January 29, 2024
- **Citation:** 89 FR 5500

## Text

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
1
($/hour)

Estimated
annual
respondent
cost burden

(a)
(b)
(a) × (b) = (c)
(d)
(c) × (d) = (e)
(f)
(e) × (f) = (g)

1
Information Disclosure Statements (IDS) that do not require the fee set forth in 37 CFR 1.17(p)
694,000
1
694,000
0.20 (12 minutes)
138,800
$447
$62,043,600

2
Transmittal Form
517,000
1
517,000
0.20 (12 minutes)
103,400
122
12,614,800

3
Petition for Extension of Time under 37 CFR 1.136(a)
192,884
1
192,884
0.40 (24 minutes)
77,154
122
9,412,788

4
Express Abandonment under 37 CFR 1.138
2,000
1
2,000
0.08 (5 minutes)
160
122
19,520

5
Statutory Disclaimers (including terminal disclaimers)
49,950
1
49,950
0.25 (15 minutes)
12,488
447
5,582,136

6
Request for Expedited Examination of a Design Application
7,227
1
7,227
0.25 (15 minutes)
1,807
447
807,729

7
Petition for Revival of an Application for Patent Abandoned Unintentionally
7,024
1
7,024
1
7,024
447
3,139,728

8
Petition for Revival of an Application for Patent Abandoned for Failure to Notify the Office of a Foreign or International Filing
125
1
125
1
125
447
55,875

9
Requests to Access, Inspect, and Copy
1,000
1
1,000
0.25 (15 minutes)
250
122
30,500

10
Deposit Account Order Form
55,000
1
55,000
0.25 (15 minutes)
13,750
122
1,677,500

11
Certificates of Mailing or Transmission
450,000
1
450,000
0.03 (2 minutes)
13,500
122
1,647,000

12
Statement Under 37 CFR 3.73(c) (AIA), 37 CFR 3.83(b) (pre-AIA)
146,000
1
146,000
0.25 (15 minutes)
36,500
447
16,315,500

13
Non-publication Request
16,000
1
16,000
0.25 (15 minutes)
4,000
447
1,788,000

14
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
1
500
0.25 (15 minutes)
125
447
55,875

15
USPTO Patent Electronic Filing System Copy of Application for Publication
1
1
1
2.50
3
122
366

16
Copy of File Content Showing Redactions
3
1
3
4
12
447
5,364

17
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)
10
1
10
2
20
122
2,440

18
Request for Continued Examination (RCE) Transmittal)
132,000
1
132,000
0.30 (18 minutes)
39,600
447
17,701,200

19
Request for Suspension of Action or Deferral of Examination Under 37 CFR 1.103(b), (c), or (d)
630
1
630
0.20 (12 minutes)
126
447
56,322

20
Request for Voluntary Publication or Republication (includes publication fee for republication)
450
1
450
0.20 (12 minutes)
90
122
10,980

21
Applicant Initiated Interview Request Form
50,000
1
50,000
0.40 (24 minutes)
20,000
447
8,940,000

22
Processing Fee Under 37 CFR 1.17(i) Transmittal
100
1
100
0.08 (5 minutes)
8
447
3,576

23
Request to Retrieve Electronic Priority Application (s) Under 37 CFR 1.55(i)(4)
10,000
1
10,000
0.25 (15 minutes)
2,500
447
1,117,500

24
Authorization or Rescission of Authorization to Permit Access to Application-as-filed by Participating Offices Under 37 CFR 1.14(h)
6,000
1
6,000
0.25 (15 minutes)
1,500
447
670,500

25
Petition for Express Abandonment to Obtain a Refund
2,050
1
2,050
0.20 (12 minutes)
410
447
183,270

26
Pre-Appeal Brief Request for Review
6,700
1
6,700
5
33,500
447
14,974,500

27
Request for Corrected Filing Receipt
44,000
1
44,000
0.08 (5 minutes)
3,520
122
429,440

28
Petition to Make Special Based on Age for Advancement of Examination under 37 CFR 1.102(c)(1)
2,100
1
2,100
2
4,200
447
1,877,400

29
Filing a submission after final rejection (see 37 CFR 1.129(a))
43
1
43
8
344
447
153,768

30
Correction of inventorship after first office action on the merits
3,300
1
3,300
0.75 (45 minutes)
2,475
447
1,106,325

31
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
1
18,500
0.75 (45 minutes)
13,875
447
6,202,125

32
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
1
21,000
0.20 (12 minutes)
4,200
447
1,877,400

Totals

2,435,597

2,435,597

535,466

170,503,027

1
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)

1
1806
Information Disclosure Statements (IDS) that require the fee set forth in 37 CFR 1.17(p) (undiscounted)
85,540
$260
$22,240,400

1
2806
IDS that require the fee set forth in 37 CFR 1.17(p) (small entity)
22,173
104
2,305,992

1
3806
IDS that require the fee set forth in 37 CFR 1.17(p) (micro entity)
624
52
32,448

3
1251
One-month Extension of Time under 37 CFR 1.136(a) (undiscounted)
62,740
220
13,802,800

3
2251
One-month Extension of Time under 37 CFR 1.136(a) (small entity)
29,039
88
2,555,432

3
3251
One-month Extension of Time under 37 CFR 1.136(a) (micro entity)
3,509
44
154,396

3
1252
Two-month Extension of Time under 37 CFR 1.136(a) (undiscounted)
23,560
640
15,078,400

3
2252
Two-month Extension of Time under 37 CFR 1.136(a) (small entity)
15,484
256
3,963,904

3
3252
Two-month Extension of Time under 37 CFR 1.136(a) (micro entity)
1,922
128
246,016

3
1253
Three-month Extension of Time under 37 CFR 1.136(a) (undiscounted)
20,377
1,480
30,157,960

3
2253
Three-month Extension of Time under 37 CFR 1.136(a) (small entity)
23,002
592
13,617,184

3
3253
Three-month Extension of Time under 37 CFR 1.136(a) (micro entity)
2,558
296
757,168

3
1254
Four-month Extension of Time under 37 CFR 1.136(a) (undiscounted)
1,810
2,320
4,199,200

3
2254
Four-month Extension of Time under 37 CFR 1.136(a) (small entity)
2,196
928
2,037,888

3
3254
Four-month Extension of Time under 37 CFR 1.136(a) (micro entity)
266
464
123,424

3
1255
Five-month Extension of Time under 37 CFR 1.136(a) (undiscounted)
3,039
3,160
9,603,240

3
2255
Five-month Extension of Time under 37 CFR 1.136(a) (small entity)
3,176
1,264
4,014,464

3
3255
Five-month Extension of Time under 37 CFR 1.136(a) (micro entity)
206
632
130,192

5
1814
Statutory Disclaimers (including terminal disclaimers) (undiscounted)
36,105
170
6,137,850

5
2814
Statutory Disclaimers (including terminal disclaimers) (small entity)
13,175
170
2,239,750

5
3814
Statutory Disclaimers (including terminal disclaimers) (micro entity)
670
170
113,900

6
1802
Request for Expedited Examination of a Design Application (undiscounted)
713
1,600
1,140,800

6
2802
Request for Expedited Examination of a Design Application (small entity)
1,426
640
912,640

6
3802
Request for Expedited Examination of a Design Application (micro entity)
5,088
320
1,628,160

7
1453
Petition for Revival of an Application for Patent Abandoned Unintentionally (undiscounted)
2,323
2,100
4,878,300

7
2453
Petition for Revival of an Application for Patent Abandoned Unintentionally (small entity)
3,388
840
2,845,920

7
3453
Petition for Revival of an Application for Patent Abandoned Unintentionally (micro entity)
1,313
420
551,460

8
1453
Petition for Revival of an Application for Patent Abandoned for Failure to Notify the Office of a Foreign or International Filing (undiscounted)
94
2,100
197,400

8
2453
Petition for Revival of an Application for Patent Abandoned for Failure to Notify the Office of a Foreign or International Filing (small entity)
19
840
15,960

8
3453
Petition for Revival of an Application for Patent Abandoned for Failure to Notify the Office of a Foreign or International Filing (micro entity)
12
420
5,040

16
1808
Copy of File Content Showing Redactions (undiscounted)
1
140
140

16
2808
Copy of File Content Showing Redactions (small entity)
1
140
140

16
3808
Copy of File Content Showing Redactions (micro entity)
1
140
140

18
1801
Request for Continued Examination (RCE) Transmittal (First Request) (undiscounted)
70,734
1,360
96,198,240

18
2801
Request for Continued Examination (RCE) Transmittal (First Request) (small entity)
19,673
544
10,702,112

18
3801
Request for Continued Examination (RCE) Transmittal (First Request) (micro entity)
1,992
272
541,824

18
1820
Request for Continued Examination (RCE) Transmittal (Second and Subsequent Requests) (undiscounted)
29,979
2,000
59,958,000

18
2820
Request for Continued Examination (RCE) Transmittal (Second and Subsequent Requests) (small entity)
8,985
800
7,188,000

18
3820
Request for Continued Examination (RCE) Transmittal (Second and Subsequent Requests) (micro entity)
637
400
254,800

19
1830
Request for Suspension of Action or Deferral of Examination Under 37 CFR 1.103(b), (c), or (d) (undiscounted)
354
140
49,560

19
2830
Request for Suspension of Action or Deferral of Examination Under 37 CFR 1.103(b), (c), or (d) (small entity)
245
56
13,720

19
3830
Request for Suspension of Action or Deferral of Examination Under 37 CFR 1.103(b), (c), or (d) (micro entity)
31
28
868

20
1803
Request for Voluntary Publication or Republication (includes publication fee for republication) (undiscounted)
157
140
21,980

20
2803
Request for Voluntary Publication or Republication (includes publication fee for republication) (small entity)
19
140
2,660

20
3803
Request for Voluntary Publication or Republication (includes publication fee for republication) (micro entity)
4
140
560

22
1830
Processing Fee Under 37 CFR 1.17(i) Transmittal (undiscounted)
56
140
7,840

22
2830
Processing Fee Under 37 CFR 1.17(i) Transmittal (small entity)
39
56
2,184

22
3830
Processing Fee Under 37 CFR 1.17(i) Transmittal (micro entity)
5
28
140

29
1810
For each additional invention to be examined (see 37 CFR 1.129(b)) (undiscounted)
1
880
880

29
2810
For each additional invention to be examined (see 37 CFR 1.129(b)) (small entity)
1
352
352

29
3810
For each additional invention to be examined (see 37 CFR 1.129(b)) (micro entity)
1
176
176

29
1809
Filing a submission after final rejection (see 37 CFR 1.129(a)) (undiscounted)
17
880
14,960

29
2809
Filing a submission after final rejection (see 37 CFR 1.129(a)) (small entity)
20
352
7,040

29
3809
Filing a submission after final rejection (see 37 CFR 1.129(a)) (micro entity)
6
176
1,056

30
1819
Correction of inventorship after first office action on the merits (undiscounted)
793
640
507,520

30
2819
Correction of inventorship after first office action on the merits (small entity)
617
256
157,952

30
3819
Correction of inventorship after first office action on the merits (micro entity)
60
128
7,680

31
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

31
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
56
290,080

31
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
28
18,144

31
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
50
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;

(c) Enhance the quality, utility, and clarity of the information to be collected; and

(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

---

Source: Frix Law Library, https://www.frixlaw.com/law-library/documents/fr%3A2024-01722. Public record. Not legal advice.