E8-1389. Recording Assignments

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 28, 2008.

ADDRESSES:

You may submit comments by any of the following methods:

E-mail: [e-mail]. Include “0651-0027 comment” in the subject line of the message.

Fax: [phone], marked to the attention of Susan Fawcett.

Mail: Susan K. Fawcett, Records Officer, Office of the Chief Information Officer, Customer Information Services Group, Public Information Services Division, U.S. Patent and Trademark Office, P.O. Box 1450, Alexandria, VA 22313-1450.

FOR FURTHER INFORMATION CONTACT:

Requests for additional information should be directed to Joyce R. Johnson, Manager, Assignment Division, Mail Stop 1450, U.S. Patent and Trademark Office, P.O. Box 1450, Alexandria, VA 22313-1450; by telephone at 703-308-9706; or by e-mail at [e-mail].

SUPPLEMENTARY INFORMATION:

I. Abstract

This collection of information is required by 35 U.S.C. 261 and 262 for patents and 15 U.S.C. 1057 and 1060 of the Trademark Act of 1946 for trademarks. These statutes authorize the United States Patent and Trademark Office (USPTO) to record patent and trademark assignment documents, including transfers of properties (i.e. patents and trademarks), liens, licenses, assignments of interest, security interests, mergers, and explanations of transactions or other documents that record the transfer of ownership of a particular patent or trademark property from one party to another. Assignments are recorded for applications, patents, and trademark registrations.

The USPTO administers these statutes through 37 CFR 2.146, 2.171, and 37 CFR Part 3. These rules permit the public, corporations, other federal agencies, and Government-owned or Government-controlled corporations to submit patent and trademark assignment documents and other documents related to title transfers to the USPTO to be recorded. In accordance with 37 CFR 3.54, the recording of an assignment document by the USPTO is an administrative action and not a determination of the validity of the document or of the effect that the document has on the title to an application, patent, or trademark.

Once the assignment documents are recorded, they are available for public inspection. The only exceptions are those documents that are sealed under secrecy orders according to 37 CFR 3.58 or related to unpublished patent applications maintained in confidence under 35 U.S.C. 122 and 37 CFR 1.14. The public uses these records to conduct ownership and chain-of-title searches. The public may view these records either at the USPTO Public Search Facilities or at the National Archives and Records Administration, depending on the date they were recorded. The public may also search patent and trademark assignment information online through the USPTO Web site.

In order to file a request to record an assignment, the respondent must submit an appropriate cover sheet along with copies of the assignment documents to be recorded. The USPTO provides two paper forms for this purpose, the Patent Recordation Form Cover Sheet (PTO-1595) and the Trademark Recordation Form Cover Sheet (PTO-1594), which capture all of the necessary data for accurately recording various assignment documents.

Customers may also submit assignments online by using the Electronic Patent Assignment System (EPAS) and the Electronic Trademark Assignment System (ETAS), which are available through the USPTO Web site. These systems allow customers to fill out the required cover sheet information online using web-based forms and then attach the electronic assignment documents to be submitted for recordation.

Previously, customers could also submit patent assignment recordation requests securely over the internet using special electronic filing software that was developed by the USPTO. Particularly large recordation requests that were prepared using the software could be copied onto a recordable compact disc (CD) and then submitted to the USPTO by mail. Since the USPTO has retired this electronic filing software in favor of the web-based filing system, the corresponding modes of submission are being deleted from this collection.

II. Method of Collection

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

III. Data

OMB Number: 0651-0027.

Form Number(s): PTO-1594 and PTO-1595.

Type of Review: Revision of a currently approved collection.

Affected Public: Individuals or households; businesses or other for-profits; not-for-profit institutions; the Federal Government; and state, local or tribal governments.

Estimated Number of Respondents: 363,388 responses per year.

Estimated Time per Response: The USPTO estimates that it will take the public approximately 30 minutes (0.5 hours) to prepare and submit a patent or trademark assignment recordation request.

Estimated Total Annual Respondent Burden Hours: 181,695 hours per year.

Estimated Total Annual Respondent Cost Burden: $35,793,915 per year. The USPTO expects that the information in this collection will be prepared by both attorneys and paralegals. The estimated rate of $197 per hour used in this collection is an average of the paraprofessional rate of $90 per hour and the professional rate of $304 per hour for associate attorneys in private firms. Using the average rate of $197 per hour, the USPTO estimates that the respondent cost burden for submitting the information in this collection will be $35,793,915 per year.

Item	Form number	Estimated time for response (minutes)	Estimated annual responses	Estimated annual burden hours
Patent Recordation Form Cover Sheet	PTO-1595	30	130,387	65,194
Trademark Recordation Form Cover Sheet	PTO-1594	30	4,584	2,292
Electronic Patent Assignment System (EPAS)	PTO-1595	30	203,969	101,985
Electronic Trademark Assignment System (ETAS)	PTO-1594	30	24,448	12,224
Totals			363,388	181,695

Estimated Total Annual Non-hour Respondent Cost Burden: $27,165,603 per year. There are no maintenance costs associated with this information collection. However, this collection does have annual (non-hour) costs in the form of filing fees, recordkeeping costs, and postage costs.

This collection has filing fees associated with submitting patent and trademark assignment documents to be recorded. The filing fees for recording patent and trademark assignments are the same for both paper and electronic submissions. However, the filing cost for recording patent or trademark assignments varies according to the number of properties involved in each submission.

The filing fee for submitting a patent assignment as indicated by 37 CFR 1.21(h) is $40 for recording each property in a document, while the filing fee for submitting a trademark assignment as indicated by 37 CFR 2.6(b)(6) is $40 for recording the first property in a document and $25 for each additional property in the same document. The USPTO estimates that the average fee for a patent assignment recordation request is approximately $65 and that the average fee for a trademark assignment recordation request is approximately $184. Therefore, this collection has an estimated total of $27,075,028 in filing fees per year.

Item	Form number	Estimated annual responses	Average fee amount	Estimated annual filing costs
Patent Recordation Form Cover Sheet	PTO-1595	130,387	$65.00	$8,475,155.00
Trademark Recordation Form Cover Sheet	PTO-1594	4,584	184.00	843,456.00
Electronic Patent Assignment System (EPAS)	PTO-1595	203,969	65.00	13,257,985.00
Electronic Trademark Assignment System (ETAS)	PTO-1594	24,448	184.00	4,498,432.00
Totals		363,388		27,075,028.00

There are also recordkeeping costs associated with submitting assignment documents online using EPAS and ETAS. The USPTO recommends that customers print and retain a copy of the acknowledgment receipt that appears on the screen after a successful submission. Customers will also receive an electronic copy of this receipt. The USPTO estimates that it will take 5 seconds (0.001 hours) to print a copy of the acknowledgment receipt and that approximately 228,417 submissions per year will be completed via EPAS and ETAS, for a total of approximately 228 hours per year for printing this receipt. The USPTO expects that these receipts will be printed by paraprofessionals at an estimated rate of $90 per hour, for a recordkeeping cost of $20,520 per year.

Customers may incur postage costs when submitting a patent or trademark assignment request to the USPTO by mail. The USPTO expects that some assignment requests will be submitted by fax but that approximately 87,569 of the 134,971 paper assignment requests per year will be submitted by mail. The USPTO estimates that the average first-class postage cost for a mailed Patent or Trademark Recordation Form Cover Sheet submission is 80 cents, resulting in a total postage cost for this collection of $70,055 per year.

The total non-hour respondent cost burden for this collection in the form of filing fees, recordkeeping costs, and postage costs is estimated to be $27,165,603 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 22, 2008.

Susan K. Fawcett,

Records Officer, USPTO, Office of the Chief Information Officer, Customer Information Services Group, Public Information Services Division.