89 FR 19 pgs. 5500-5506 - Agency Information Collection Activities; Submission to the Office of Management and Budget (OMB) for Review and Approval; Comment Request; Patent Processing

Type: NOTICEVolume: 89Number: 19Pages: 5500 - 5506
FR document: [FR Doc. 2024–01722 Filed 1–26–24; 8:45 am]
Agency: Commerce Department
Sub Agency: Patent and Trademark Office
Official PDF Version:  PDF Version
Pages: 5500, 5501, 5502, 5504, 5506

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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)


[top] page 5501 • 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.

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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.

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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


[top] (d) Minimize the burden of the collection of information on those who page 5506 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]

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