Patent Processing (Updating)
Federal RegisterMay 30, 2006
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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 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 July 31, 2006.
ADDRESSES:
You may submit comments by any of the following methods:
E-mail: Susan.Brown@uspto.gov.
Include “0651-0031 comment” in the subject line of the message.
Fax:
571-273-0112, marked to the attention of Susan Brown.
Mail:
Susan K. Brown, Records Officer, Office of the Chief Information Officer, Architecture, Engineering and Technical Services, Data Architecture and Services Division, U.S. Patent and Trademark Office, P.O. Box 1450, Alexandria, VA 22313-1450.
Federal e-Rulemaking Portal: http://www.regulations.gov.
FOR FURTHER INFORMATION CONTACT:
Requests for additional information should be directed to the attention of Robert J. Spar, Director, Office of Patent Legal Administration, U.S. Patent and Trademark Office, P.O. Box 1450, Alexandria, VA 22313-1450; by telephone at 571-272-7700; or by e-mail at
bob.spar@uspto.gov.
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.
The USPTO is adding two new forms into this collection. PTO/SB/33, Pre-Appeal Brief Request for Review, is a new optional procedure that is intended to spare applicants the added time and expense of preparing an appeal brief for an application that ultimately may be categorized as “not in condition for appeal.”
Also new is form PTO/SB/28, Petition to Make Special Under Accelerated Examination Program. The requirement for the petition is already approved in the collection; however, the response time has been increased from 1 hour to 12 hours. Applicants who choose to participate in this optional procedure in order to receive the benefit of accelerated examination will have to share in the examination burden to a greater extent. In return, such applicants will receive the benefit of an early patentability determination for their claimed invention.
A previously overlooked requirement, the Request for Corrected Filing Receipt, is also being added into the collection, in both paper and electronic formats. Forms for this requirement are currently under development.
There are 41 forms associated with this collection.
II. Method of Collection
By mail, facsimile, or hand delivery to the USPTO. The eIDS (electronic information disclosure statements), the electronic filing system (EFS) copy of the application for publication, and the request for corrected filing receipt may be submitted electronically over the Internet.
III. Data
OMB Number:
0651-0031.
Form Number(s):
PTO/SB/08/08a/08b, PTO/SB/17i, PTO/SB/17P; PTO/SB/21-28, PTO/SB/24A, 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; farms; the Federal Government; and state, local or tribal governments.
Estimated Number of Respondents:
2,604,029 responses per year.
Estimated Time Per Response:
The USPTO estimates that it will take the public between 1 minute and 48 seconds (0.03 hours) to 12 hours (12.0 hours), depending upon the complexity of the situation, to gather, prepare, and submit the various documents in this information collection.
Estimated Total Annual Respondent Burden Hours:
3,157,840 hours per year.
Estimated Total Annual Respondent Cost Burden:
$504,711,200 per year. The USPTO expects that the transmittal form; the petition for extension of time under 37 CFR 1.136(a); express abandonment under 1.138; express abandonment to avoid publication under 1.138(c); requests to access, inspect and copy; deposit account order form; certificates of mailing/transmission; electronic filing system (EFS) copy of application for publication; the copy of the applicant or patentee's record of the application; the request for voluntary publication or republication; the petition for request for documents in a form other than that provided by 1.19; the request for processing of replacement drawings; and the request for corrected filing receipt will be prepared by paraprofessionals. Using the paraprofessional rate of $90 per hour, the USPTO estimates that the respondent cost burden for these items will be $191,469,600. The USPTO estimates that the remaining items in this collection will be prepared by associate attorneys in private firms. Using the professional hourly rate of $304 per hour for associate attorneys in private firms, the USPTO estimates $313,241,600 per year for salary costs associated with respondents for the other items in this information collection. The total respondent cost burden is estimated to be $504,711,200 per year.
Item
Estimated time for
response
Estimated
annual
responses
Estimated
annual burden hours
Information Disclosure Statements—Paper
2 hours
423,000
846,000
eIDS (Information Disclosure Statements)
2 hours
47,000
94,000
Transmittal Form
2 hours
1,039,500
2,079,000
Petition for Extension of Time under 37 CFR 1.136(a)
6 minutes
189,000
18,900
Petition for Extension of Time under 37 CFR 1.136(b)
30 minutes
54
27
Express Abandonment Under 37 CFR 1.138
12 minutes
13,825
2,765
Petition for Express Abandonment to Avoid Publication Under 1.138(c)
12 minutes
500
100
Disclaimers
12 minutes
15,000
3,000
Request for Expedited Examination of a Design Application
6 minutes
130
13
Notice of Appeal
12 minutes
16,500
3,300
Information Disclosure Citation in a Patent
2 hours
1,830
3,660
Petition for Revival of an Application for Patent Abandoned Unavoidably
8 hours
585
4,680
Petition for Revival of an Application for Patent Abandoned Unintentionally
1 hour
6,950
6,950
Petition for Revival of an Application for Patent Abandoned for Failure to Notify the Office of a Foreign or International Filing
1 hour
2,400
2,400
Requests to Access, Inspect and Copy
12 minutes
18,650
3,730
Deposit Account Order Form
12 minutes
1,160
232
Certificates of Mailing/Transmission
1 minute, 48 seconds
590,000
17,700
Statement Under 37 CFR 3.73(b)
12 minutes
19,450
3,890
Non-publication Request
6 minutes
31,500
3,150
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
525
53
Electronic Filing System (EFS) Copy of Application for Publication
2 hours, 30 minutes
1,000
2,500
Copy of File Content Showing Redactions
4 hours
12
48
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)
1 hour
235
235
Request for Continued Examination (RCE) Transmittal
12 minutes
56,000
11,200
Request for Oral Hearing Before the Board of Patent Appeals and Interferences
12 minutes
750
150
Request for Deferral of Examination 37 CFR 1.103(d)
12 minutes
53
11
Request for voluntary publication or republication
12 minutes
70
14
Applicant Initiated Interview Request Form
21 minutes
1,600
560
Petition for Request for Documents in a Form Other Than That Provided by 1.19
1 hour
50
50
Petitions under 37 CFR 1.17(f) include:
4 hours
3,300
13,200
Petition to Accord a Filing Date under 1.57(a)
Petition to Accord a Filing Date under 1.153(e)
Petition for Decision on a Question Not Specifically Provided For
Petition to Suspend the Rules
Petitions under 37 CFR 1.17(g) include:
2 hours
3,600
7,200
Petition to Access an Assignment Record
Petition for Access to an Application
Petition for Expungement and Return of Information
Petition to Suspend Action in an Application
Petitions under 37 CFR 1.17(h) include existing petition not covered in any collection:
1 hour
10,400
10,400
Petition for Accepting Color Drawings or Photographs
Petition for Entry of a Model or Exhibit
Petition to Withdraw an Application from Issue
Petition to Defer Issuance of a Patent
Request for Processing of Replacement Drawings to Include the Drawings in Any Patent Application Publication
1 hour
50
50
Processing Fee Under 37 CFR 1.17(i) Transmittal
5 minutes
500
40
Petition Fee Under 37 CFR 1.17(f),(g) and (h) Transmittal
5 minutes
17,300
1,384
Request to Retrieve Electronic Priority Application(s) Under 37 CFR 1.55(d)
8 minutes
36,800
4,784
Authorization to Permit Access to Application by Participating Offices Under 37 CFR 1.14(h)
6 minutes
21,000
2,100
Petition for Express Abandonment to Obtain a Refund
12 minutes
3,000
600
Pre-Appeal Brief Request for Review
30 minutes
3,200
1,600
Request for Corrected Filing Receipt
5 minutes
25,000
2,000
Request for Corrected Filing Receipt (electronic)
5 minutes
2,050
164
Petition to Make Special Under Accelerated Examination Program
12 hours
500
6,000
Total
2,604,029
3,157,840
Estimated Total Annual (non-hour) Respondent Cost Burden:
$156,933,477. There are no capital start-up or maintenance costs associated with this information collection. However, this collection does have record keeping costs, postage costs, and filing fees.
When submitting the information in this collection electronically, the applicant is strongly urged to retain a copy of the file submitted to the USPTO as evidence of authenticity and to keep the acknowledgment receipt as clear evidence that the file was received by the USPTO on the date noted. The
USPTO estimates that it will take 5 seconds (0.001 hours) to print and retain a copy of the eIDS, the EFS application for publication and the request for corrected filing receipt submissions, and that approximately 50,050 submissions per year (47,000 eIDS, 1,000 EFS, and 2,050 corrected filing receipt) will use this option, for a total of 50 hours per year for printing this receipt. Using the paraprofessional rate of $90 per hour, the USPTO estimates that the record keeping cost associated with this collection will be $4,500 per year.
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 2,553,979 submissions per year may be mailed to the USPTO at an average first-class postage cost of 63 cents, for a total postage cost of $1,609,007.
There is also annual (non-hour) cost burden in the way of filing fees associated with this collection. The total estimated filing costs of $155,319,970 are calculated in the accompanying chart:
Item
Responses
Filing fee ($)
Total non-hour cost burden
(a) × (b)
(a)
(b)
(c)
Submission of an Information Disclosure Statement (IDS) under 37 CFR 1.97(c) or (d)
42,200
$180.00
$7,596,000.00
Transmittal forms
1,039,500
None
0
One month extension of time under 37 CFR 1.136(a)
60,270
120.00
7,232,400.00
One month extension of time under 37 CFR 1.136(a) (small entity)
23,503
60.00
1,410,180.00
Two month extension of time under 37 CFR 1.136(a)
31,225
450.00
14,051,250.00
Two month extension of time under 37 CFR 1.136(a) (small entity)
12,891
225.00
2,900,475.00
Three month extension of time under 37 CFR 1.136(a)
32,724
1,020.00
33,378,480.00
Three month extension of time under 37 CFR 1.136(a) (small entity)
16,413
510.00
8,370,630.00
Four month extension of time under 37 CFR 1.136(a)
3,370
1,590.00
5,358,300.00
Four month extension of time under 37 CFR 1.136(a) (small entity)
2,267
795.00
1,802,265.00
Five month extension of time under 37 CFR 1.136(a)
2,163
2,160.00
4,672,080.00
Five month extension of time under 37 CFR 1.136(a) (small entity)
4,174
1,080.00
4,507,920.00
Extension of time under 37 CFR 1.136(b)
54
None
0
Express Abandonment under 37 CFR 1.138
13,825
None
0
Petition for express abandonment to avoid publication under 37 CFR 1.138(c))
500
130.00
65,000.00
Statutory Disclaimer
11,250
130.00
1,462,500.00
Statutory Disclaimer (small entity)
3,750
65.00
243,750.00
Requests for Expedited Examination of a design application
130
900.00
117,000.00
Notice of Appeal
12,570
500.00
6,285,000.00
Notice of Appeal (small entity)
3,930
250.00
982,500.00
Information Disclosure Citations
1,830
None
0
Petition to Revive Unavoidably Abandoned Application
250
500.00
125,000.00
Petition to Revive Unavoidably Abandoned Application (small entity)
335
250.00
83,750.00
Petition to Revive Unintentionally Abandoned Application
3,700
1,500.00
5,550,000.00
Petition to Revive Unintentionally Abandoned Application (small entity)
3,250
750.00
2,437,500.00
Petition for Revival of an Application for Patent Abandoned for Failure to Notify the Office of a Foreign or International Filing
1,440
1,300.00
1,872,000.00
Petition for Revival of an Application for Patent Abandoned for Failure to Notify the Office of a Foreign or International Filing—Small Entity
960
650.00
624,000.00
Requests to Access, Inspect and Copy
18,650
None
0
Deposit Account Order Form
1,160
None
0
Certificates of Mailing/Transmission
590,000
None
0
Statement Under 37 CFR 3.73(b)
19,450
None
0
Non-publication Request
31,500
None
0
Rescission of Non-publication Request
525
None
0
Electronic Filing System (EFS) Copy of Application for Publication
1,000
None
0
Electronic Filing System (EFS) Copy of Application for Voluntary Publication or Republication
70
430.00
30,100.00
Copy of File Content Showing Redactions
12
None
0
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)
235
None
0
Request for Continued Examination (RCE) Transmittal
44,800
790.00
35,392,000.00
Request for Continued Examination (RCE) Transmittal (small entity)
11,200
395.00
4,424,000.00
Request for an Oral Hearing
600
1,000.00
600,000.00
Request for an Oral Hearing (small entity)
150
500.00
75,000.00
Processing fee for deferral of examination
53
430.00
22,790.00
Request for voluntary publication or republication
70
130.00
9,100.00
Applicant initiated interview request form
1,600
None
0
Petition for request for documents in a form other than that provided by 1.19
50
130.00
6,500.00
Petitions under 37 CFR 1.17(f) include:
3,300
400.00
1,320,000.00
Petition to Accord a Filing Date under 1.57(a)
Petition to Accord a Filing Date under 1.153(e)
Petition for Decision on a Question Not Specifically Provided For
Petition to Suspend the Rules
Petitions under 37 CFR 1.17(g) include:
3,600
200.00
720,000.00
Petition to Access an Assignment Record
Petition for Access to an Application
Petition for Expungement and Return of Information
Petition to Suspend Action in an Application
Petitions under 37 CFR 1.17(h) include existing petition not covered in any collection:
10,400
130.00
1,352,000.00
Petition for Accepting Color Drawings or Photographs
Petition for Entry of a Model or Exhibit
Petition to Withdraw an Application from Issue
Petition to Defer Issuance of a Patent
Request for processing of replacement drawings to include the drawings in any patent application publication
50
130.00
6,500.00
Processing fee under 37 CFR 1.17(I) transmittal
500
130.00
65,000.00
Petition Fee Under 37 CFR 1.17(f),(g) and (h) Transmittal
17,300
None
0
Request to retrieve electronic priority application(s) under 37 CFR 1.55(d)
36,800
None
0
Authorization to permit access to application by participating offices under 37 CFR 1.17(h)
21,000
None
0
Petition for express abandonment to obtain a refund
3,000
None
0
Pre-Appeal Brief Request for Review (filed with the Notice of Appeal)
2,400
None
0
Pre-Appeal Brief Request for Review (filed later than the Notice of Appeal)
800
130.00
104,000.00
Correction Request Form
25,000
None
0
Correction Request Form (electronic)
2,050
None
0
Petition to Make Special Under Accelerated Examination Program
500
130.000
65,000.00
Total
2,176,299
155,319,970.00
The USPTO estimates that the total (non-hour) respondent cost burden for this collection in the form of record keeping costs, postage costs, and filing fees is $156,933,477.
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, including through 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: May 22, 2006.
Susan K. Brown,
Records Officer, USPTO, Office of the Chief Information Officer, Architecture, Engineering and Technical Services, Data Architecture and Services Division.
[FR Doc. E6-8241 Filed 5-26-06; 8:45 am]
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