E7-908. Post Allowance and Refiling

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 March 26, 2007.

ADDRESSES:

You may submit comments by any of the following methods:

• E-mail: [e-mail]. Include “0651-0033 comment” in the subject line of the message.
• Fax: [phone], 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 Robert A. Clarke, Deputy Director, Office of Patent Legal Administration, U.S. Patent and Trademark Office, P.O. Box 1450, Alexandria, VA 22313-1450; by telephone at 571-272-7735; or by e-mail at [e-mail].

SUPPLEMENTARY INFORMATION

I. Abstract

The United States Patent and Trademark Office (USPTO) is required by 35 U.S.C. 131 and 151 to examine applications and, when appropriate, allow applications and issue them as patents. When an application for a patent is allowed by the USPTO, the USPTO issues a notice of allowance and the applicant must pay the specified issue fee (including the publication fee, if applicable) within three months to avoid abandonment of the application. If the appropriate fees are paid within the proper time period, the USPTO can then issue the patent. If the fees are not paid within the designated time period, the application is abandoned and the applicant may petition the Director to accept a delayed payment with a satisfactory showing that the delay was unavoidable. This Petition for Revival of an Application for Patent Abandoned Unavoidably (Form PTO/SB/61) is approved under information collection 0651-0031. The rules outlining the procedures for payment of the issue fee and issuance of a patent are found at 37 CFR 1.18 and 1.311-1.317.

Chapter 25 of Title 35 U.S.C. provides that there are several actions that the applicant may take after issuance of a patent, including requesting the correction of errors in a patent. For original patents that are deemed wholly or partly inoperative, applicants may file a reissue application, which entails several formal requirements including an oath or declaration stating that the errors in the patent were not the result of any deceptive intention on the part of the applicant. The rules outlining these procedures are found at 37 CFR 1.171-1.178 and 1.322-1.325.

Chapter 30 of Title 35 U.S.C. provides that any person at any time may file a request for reexamination by the USPTO of any claim of a patent on the basis of prior art patents or printed publications. Once initiated, the reexamination proceedings are substantially ex parte and do not permit input from third parties under Chapter 30, but Chapter 31 also provides for inter partes reexamination allowing third parties to participate. If a request for ex parte or inter partes reexamination is denied, the requester may petition the Director to review the examiner's refusal of reexamination. The rules outlining ex parte and inter partes reexaminations are found at 37 CFR 1.510-1.570 and 1.902-1.997.

The USPTO is adding two items to this information collection, an electronic version of the Issue Fee Transmittal (Form PTOL-85B) and a petition to request an extension of time in ex parte or inter partes reexamination proceedings. The USPTO is developing a new version of the existing Issue Fee Transmittal that customers will be able to submit electronically through EFS-Web, the USPTO's latest electronic filing initiative. EFS-Web is a web-based patent application and document submission system that allows customers to file applications and associated documents through their standard web browser. EFS-Web offers many benefits to filers, including immediate notification that a submission has been received by the USPTO, automated processing of requests, and avoidance of postage and other paper delivery costs. The petition for an extension of time in an ex parte or inter partes reexamination allows patent owners to request additional time to take action in a reexamination proceeding for sufficient cause and for a reasonable time specified. This petition is an existing requirement that was not previously covered under this information collection. No form is provided for this petition.

The public uses this information collection to request corrections of errors in issued patents, to request reissue patents, to request reexamination proceedings, and to ensure that the associated fees and documentation are submitted to the USPTO.

II. Method of Collection

By mail, facsimile, hand delivery, or electronically to the USPTO.

III. Data

OMB Number: 0651-0033.

Form Number(s): PTO/SB/44/50/51/51S/52/53/56/57/58 and PTOL-85B.

Type of Review: Revision of a currently approved collection.

Affected Public: Businesses or other for-profits; not-for-profit institutions.

Estimated Number of Respondents: 224,926 responses per year.

Estimated Time Per Response: The USPTO estimates that it will take the public from 1.8 minutes (0.03 hours) to 2 hours to gather the necessary information, prepare the appropriate form or other document, and submit the information to the USPTO.

Estimated Total Annual Respondent Burden Hours: 68,245 hours per year.

Estimated Total Annual Respondent Cost Burden: $12,486,080 per year. The USPTO expects that the information in this collection will be prepared by attorneys, except for the Issue Fee Transmittal, which will be prepared by paraprofessionals. Using the professional rate of $304 per hour for associate attorneys in private firms, the USPTO estimates that the respondent cost burden for attorneys submitting the information in this collection will be $9,012,080 per year. Using the paraprofessional rate of $90 per hour, the USPTO expects that the respondent cost burden for submitting the Issue Fee Transmittal will be $3,474,000 per year.

Item	Form No.	Estimated time for response	Estimated annual responses	Estimated annual burden hours
Certificate of Correction	PTO/SB/44	1 hour	25,000	25,000
Reissue Documentation	None	2 hours	1,100	2,200
Reissue Patent Application Transmittal	PTO/SB/50	12 minutes	1,100	220
Reissue Application Declaration by the Inventor or the Assignee	PTO/SB/51/52	30 minutes	1,100	550
Supplemental Declaration for Reissue Patent Application to Correct “Errors” Statement (37 CFR 1.175)	PTO/SB/51S	1.8 minutes	700	21
Reissue Application: Consent of Assignee; Statement of Non-assignment	PTO/SB/53	6 minutes	1,075	108
Reissue Application Fee Transmittal Form	PTO/SB/56	12 minutes	1,100	220
Request for Ex Parte Reexamination Transmittal Form	PTO/SB/57	2 hours	500	1,000
Request for Inter Partes Reexamination Transmittal Form	PTO/SB/58	2 hours	100	200
Petition to Review Refusal to Grant Ex Parte Reexamination	None	1 hour	100	100
Petition to Review Refusal to Grant Inter Partes Reexamination	None	1 hour	1	1
Petition to Request Extension of Time in Ex Parte or Inter Partes Reexamination	None	30 minutes	50	25
Issue Fee Transmittal	PTOL-85B	12 minutes	154,400	30,880
Issue Fee Transmittal (EFS-Web)	PTOL-85B	12 minutes	38,600	7,720
Totals			224,926	68,245

Estimated Total Annual Non-hour Respondent Cost Burden: $273,113,430 per year. There are no capital start-up or maintenance costs associated with this information collection. However, this collection does have annual (non-hour) costs in the form of filing fees, postage costs, and recordkeeping costs.

The total estimated annual filing fees for this collection are calculated in the accompanying table. The Reissue Application Fee Transmittal Form includes the fees for the reissue application under 37 CFR 1.16, including the basic filing fee, search fee, and examination fee. These fees cover all parts of the application, including reissue documentation, reissue application transmittal, reissue application declarations, and consent of assignee or statement of non-assignment. There is no fee for the supplemental declaration for a reissue patent application to correct an “errors” statement.

Additionally, there are several different issue fees under 37 CFR 1.18 depending on the type of patent being issued, whether a publication fee is required, and whether the inventor is entitled to the discounted small entity fee. The additional publication fee may not be owed at the time of patent issue for any of the following reasons: (1) The application requested non-publication under 35 U.S.C. 122(b)(2)(B)(i); (2) the application will not be published due to national security concerns as provided in 35 U.S.C. 122(d); (3) the applicant has paid the publication fee prior to issue due to a request for early or amended publication under 37 CFR 1.219; or (4) the application was filed prior to November 29, 2000 and therefore not subject to eighteen-month publication under 35 U.S.C. 122(b). The USPTO estimates that the total filing costs associated with this collection will be $273,013,030 per year.

Item	Form No.	Estimated annual responses	Fee amount	Estimated annual filing costs
Certificate of Correction	PTO/SB/44	25,000	$100.00	$2,500,000.00
Reissue Documentation	None	1,100	0.00	0.00
Reissue Patent Application Transmittal	PTO/SB/50	1,100	0.00	0.00
Reissue Application Declaration by the Inventor or the Assignee	PTO/SB/51/52	1,100	0.00	0.00
Supplemental Declaration for Reissue Patent Application to Correct “Errors” Statement (37 CFR 1.175)	PTO/SB/51S	700	0.00	0.00
Reissue Application: Consent of Assignee; Statement of Non-assignment	PTO/SB/53	1,075	0.00	0.00
Reissue Application Fee Transmittal Form	PTO/SB/56	657	1,400.00	919,800.00
Reissue Application Fee Transmittal Form (small entity)	PTO/SB/56	443	700.00	310,100.00
Request for Ex Parte Reexamination Transmittal Form	PTO/SB/57	500	2,520.00	1,260,000.00
Request for Inter Partes Reexamination Transmittal Form	PTO/SB/58	100	8,800.00	880,000.00
Petition to Review Refusal to Grant Ex Parte Reexamination	None	100	130.00	13,000.00
Petition to Review Refusal to Grant Inter Partes Reexamination	None	1	130.00	130.00
Petition to Request Extension of Time in Ex Parte or Inter Partes Reexamination	None	50	200.00	10,000.00
Issue Fee (utility patent, no publication fee)	PTOL-85B	25,000	1,400.00	35,000,000.00
Issue Fee (utility patent, no publication fee, small entity)	PTOL-85B	9,000	700.00	6,300,000.00
Issue Fee (utility patent, with publication fee)	PTOL-85B	105,000	1,700.00	178,500,000.00
Issue Fee (utility patent, with publication fee, small entity)	PTOL-85B	36,000	1,000.00	36,000,000.00
Issue Fee (design patent, no publication fee)	PTOL-85B	8,500	800.00	6,800,000.00
Issue Fee (design patent, no publication fee, small entity)	PTOL-85B	8,500	400.00	3,400,000.00
Issue Fee (plant patent, no publication fee)	PTOL-85B	120	1,100.00	132,000.00
Issue Fee (plant patent, no publication fee, small entity)	PTOL-85B	80	550.00	44,000.00
Issue Fee (plant patent, with publication fee)	PTOL-85B	480	1,400.00	672,000.00
Issue Fee (plant patent, with publication fee, small entity)	PTOL-85B	320	850.00	272,000.00
Totals		224,926		273,013,030.00

Customers may incur postage costs when submitting the information in this collection to the USPTO by mail. The USPTO estimates that the average first-class postage cost for a mailed submission will be 52 cents and that up to 186,326 submissions will be mailed to the USPTO per year. The total estimated postage cost for this collection is $96,890 per year.

When submitting the electronic version of the Issue Fee Transmittal, the applicant is strongly urged to retain a copy of the acknowledgment receipt as evidence that the form 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 acknowledgment receipt and that 38,600 submissions per year will submit the issue fee electronically, for a total of approximately 39 hours per year for printing this receipt. Using the paraprofessional rate of $90 per hour, the USPTO estimates that the recordkeeping cost associated with this requirement will be $3,510 per year.

The total non-hour respondent cost burden for this collection in the form of filing fees, postage costs, and recordkeeping costs is $273,113,430 per year.

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, e.g., 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 also will become a matter of public record.

Dated: January 16, 2007.

Susan K. Brown,

Records Officer, USPTO Office of the Chief Information Officer, Architecture, Engineering and Technical Services, Data Architecture and Services Division.