Statutory Invention Registration

DEPARTMENT OF COMMERCE

Patent and Trademark Office

Statutory Invention Registration

ACTION: Proposed collection; Comment request.

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SUMMARY: The Department of Commerce (DOC), as part of its continuing

effort to reduce paperwork and respondent burden, invites the general

public and other Federal agencies to comment on the continuing and

proposed 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 January 24, 2000.

ADDRESSES: Direct all written comments to Linda Engelmeier,

Departmental Forms Clearance Officer, Department of Commerce, Room

5027, 14th and Constitution Avenue, NW, Washington, DC 20230 or via the

Internet at LE[email protected].

FOR FURTHER INFORMATION CONTACT: Requests for additional information

should be directed to the attention of Robert J. Spar, Patent and

Trademark Office (PTO), Washington, DC 20231, by telephone at (703)

305-9285.

SUPPLEMENTARY INFORMATION

I. Abstract

A statutory invention registration is not a patent. It has the

defensive attributes of a patent but does not have the enforceable

attributes of a patent. In other words, a person occasionally invents

something solely for personal use (not for production or sale) and does

not want to go through the effort and expense of obtaining a patent on

the invention. At the same time, the inventor wants to prevent someone

else from later obtaining a patent on a like invention. In that

situation, the inventor can register a statutory invention and have it

published. Once published, it cannot be claimed by another person. 37

USC 157 authorizes the Patent and Trademark Office (PTO) to publish a

statutory invention registration containing the specifications and

drawings of a regularly filed application for a patent without

examination, providing the patentee meets all the requirements for

printing, waives the right to receive a patent on the invention within

a certain period of time prescribed by the PTO, and pays all

application, publication and other processing fees.

The PTO administers 35 USC 157 through 37 CFR 1.293-1.297. Under 37

CFR 1.293, an applicant for an original patent may request, at any time

during the pendency of the applicant's pending complete application,

that the specifications and drawings be published as a statutory

invention registration. Any such request must be signed by (1) the

applicant and any assignee of record or (2) an attorney or agent of

record in the application. The request for publication must also

include a waiver of the applicant's right to receive a patent on the

invention claimed effective upon the date of publication of the

statutory invention registration.

37 CFR 1.294 permits any request for a Statutory Invention

Registration to be examined to determine if the requirements of

Sec. 1.293 have been met. The examination will also determine if the

subject matter of the application is appropriate for publication, and

if the requirements for publication are met.

The public may petition the PTO to review rejection decisions

within one month or such other time as is set forth in the decision

refusing publication under 37 CFR 1.295. The petition may include a

request for refund of the petition fee.

Under 37 CFR 1.296, the public may petition the PTO to withdraw a

request to publish a statutory invention registration prior to the date

of the notice of the intent to publish. The request to withdraw may

also include a request for a refund.

If the request for a statutory invention registration is approved,

a notice to that

[[Page 66171]]

effect will be published in the PTO's Official Gazette, in accordance

with 37 CFR 1.297. Each statutory invention registration published will

include a statement relating to the attributes of a statutory invention

registration.

The public uses form number PTO/SB/94, Request for Statutory

Invention Registration, to request and authorize publication of a

regularly-filed patent application as a Statutory Invention

Registration, to waive the right to receive a United States patent on

the same invention claimed in the identified patent application, and to

agree that the waiver will be effective upon publication of the

Statutory Invention Registration. No forms are associated with the

petition for a review of the refusal to publish a statutory invention

registration or the petition to withdraw the request for publication of

a statutory invention registration.

II. Method of Collection

By mail, facsimile, or hand carry when the applicant or agent files

a statutory invention registration with the PTO.

III. Data

OMB Number: 0651-0036.

Form Number: PTO/SB/94.

Type of Review: Renewal without change.

Affected Public: Individuals or households; businesses or other

for-profit; not-for-profit institutions; farms; Federal, state, local

or tribal government.

Estimated Number of Respondents: 83 responses per year.

Estimated Time Per Response: It is estimated to take approximately

24 minutes each to complete the request for statutory invention

registration, the petition to review the rejection decision, and the

petition to withdraw the publication request.

Estimated Total Annual Respondent Burden Hours: 33.2 hours per

year.

Estimated Total Annual Respondent Cost Burden: $0 (no capital

start-up or maintenance expenditures are required). Using the

professional hourly rate of $175.00 for associate attorneys in private

firms, the PTO estimates $5,810 for salary costs associated with

respondents.

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Estimated Estimated

Title of form PTO Form No.(s) Estimated time annual burden annual

for response hours responses

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Statutory Invention Registration..... PTO/SB/94 0.4 32.0 80

Petition to Review Rejection Decision N/A 0.4 0.4 1

Petition to Withdraw Publication N/A 0.4 0.8 2

Request.

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Totals........................... ......................... .............. 33.2 83

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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 will 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, 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 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: November 19, 1999.

Linda Engelmeier,

Departmental Forms Clearance Officer, Office of the Chief Information

Officer.

[FR Doc. 99-30598, Filed 11-23-99; 8:45 am]

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