E8-25886. Rules for Patent Maintenance Fees

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 revision of a 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 December 29, 2008.

ADDRESSES:

You may submit comments by any of the following methods:

• E-mail: [e-mail]. Include “0651-0016 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, United States Patent and Trademark Office, P.O. Box 1450, Alexandria, VA 22313-1450.
• Federal Rulemaking Portal: http://www.regulations.gov.

FOR FURTHER INFORMATION CONTACT:

Requests for additional information should be directed to Robert A. Clarke, Director, Office of Patent Legal Administration, United States Patent and Trademark Office, P.O. Box 1450, Alexandria, VA 22313-1450; by telephone at 571-272-7735; or by e-mail to [e-mail].

SUPPLEMENTARY INFORMATION:

I. Abstract

Under 35 U.S.C. 41 and 37 CFR 1.20(e)-(i) and 1.362-1.378, the United States Patent and Trademark Office (USPTO) charges fees for maintaining in force all utility patents based on applications filed on or after December 12, 1980. Payment of these maintenance fees is due at 31/2, 71/2, and 111/2 years after the date the patent was granted. If the USPTO does not receive payment of the appropriate maintenance fee and any applicable surcharge within a grace period of six months following each of the above due dates (at 4, 8, or 12 years after the date of grant), the patent will expire at that time. After a patent expires, it is no longer enforceable. Maintenance fees are not required for design or plant patents, or for reissue patents if the patent being reissued did not require maintenance fees.

Payments of maintenance fees that are submitted during the six-month grace period before patent expiration must include the appropriate surcharge as indicated by 37 CFR 1.20(h). Submissions of maintenance fee payments and surcharges must include the relevant patent number and the corresponding United States application number in order to identify the correct patent and ensure proper crediting of the fee being paid.

If the USPTO refuses to accept and record a maintenance fee payment that was submitted prior to the expiration of a patent, the patentee may petition the Director to accept and record the maintenance fee under 37 CFR 1.377. This petition must be accompanied by the fee indicated in 37 CFR 1.17(g), which may be refunded if it is determined that the refusal to accept the maintenance fee was due to an error by the USPTO.

If a patent has expired due to nonpayment of a maintenance fee, the patentee may petition the Director to accept a delayed payment of the maintenance fee under 37 CFR 1.378. The Director may accept the payment of a maintenance fee after the expiration of the patent if the petitioner shows to the satisfaction of the Director that the delay in payment was unavoidable or unintentional. Petitions to accept unavoidably or unintentionally delayed payment must also be accompanied by the required maintenance fee and appropriate surcharge under 37 CFR 1.20(i). If the Director accepts the maintenance fee payment upon petition, then the patent is reinstated. If the USPTO denies a petition to accept delayed payment of a maintenance fee in an expired patent, the patentee may petition the Director to reconsider that decision under 37 CFR 1.378(e). This petition must be accompanied by the fee indicated in 37 CFR 1.17(f), which may be refunded if it is determined that the refusal to accept the maintenance fee was due to an error by the USPTO.

The rules of practice (37 CFR 1.33(d) and 1.363) permit applicants, patentees, assignees, or their representatives of record to specify a “fee address” for correspondence related to maintenance fees that is separate from the correspondence address associated with a patent or application. A fee address must be an address that is associated with a USPTO customer number. Customer numbers may be requested by using the Request for Customer Number form (PTO/SB/125), which is covered under OMB Control Number 0651-0035 “Representative and Address Provisions.” Maintaining a correct and updated address is necessary so that fee-related correspondence from the USPTO will be properly received by the applicant, patentee, assignee, or authorized representative. If a separate fee address is not specified for a patent or application, the USPTO will direct fee-related correspondence to the correspondence address of record.

The USPTO offers forms to assist the public with providing the information covered by this collection, including the information necessary to submit a patent maintenance fee payment (PTO/SB/45), to file a petition to accept an unavoidably or unintentionally delayed maintenance fee payment in an expired patent (PTO/SB/65 and PTO/SB/66), and to designate or change a fee address (PTO/SB/47). No forms are provided for the petitions under 37 CFR 1.377 and 1.378(e).

Customers may submit maintenance fee payments and surcharges incurred during the six-month grace period before patent expiration by using the Maintenance Fee Transmittal Form or by paying online through the USPTO Web site. However, to pay a maintenance fee after patent expiration, the maintenance fee payment and the appropriate surcharge must be filed together with a petition to accept unavoidably or unintentionally delayed payment. The USPTO accepts online maintenance fee payments by credit card, electronic funds transfer (EFT), or deposit account through the USPTO Web site. Otherwise, non-electronic payments may be made by check, credit card, or USPTO deposit account.

Customers may submit the other forms and petitions in this collection electronically through EFS-Web, the USPTO's online filing system. The USPTO also offers a special EFS-Web version of Form PTO/SB/66, which is used for the automatic processing and immediate rendering of a decision on a petition to accept an unintentionally delayed maintenance fee payment.

II. Method of Collection

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

III. Data

OMB Number: 0651-0016.

Form Number(s): PTO/SB/45/47/65/66.

Type of Review: Revision of a currently approved collection.

Affected Public: Individuals or households; businesses or other for-profits; and not-for-profit institutions.

Estimated Number of Respondents: 470,397 responses per year.

Estimated Time per Response: The USPTO estimates that it will take the public approximately 20 seconds (0.006 hours) to 8 hours to complete this information, depending on the form or petition. This includes time to gather the necessary information, prepare the form or petition, and submit the completed request.

Estimated Total Annual Respondent Burden Hours: 33,426 hours per year.

Estimated Total Annual Respondent Cost Burden: $4,632,630 per year. The USPTO expects that the petitions included in this collection will be prepared by attorneys. Using the professional rate of $310 per hour for associate attorneys in private firms, the USPTO estimates that the respondent cost burden for submitting these petitions will be approximately $1,904,330 per year. The USPTO expects that the other items in this collection will be prepared by paraprofessionals. Using the paraprofessional rate of $100 per hour, the USPTO estimates that the respondent cost burden for submitting the other items in this collection will be approximately $2,728,300 per year, for a total annual respondent cost burden of approximately $4,632,630.

Item	Estimated time for response	Estimated annual responses	Estimated annual burden hours
Maintenance Fee Transmittal Transactions (PTO/SB/45)	5 minutes	204,005	16,320
Electronic Maintenance Fee Transactions	20 seconds	136,003	816
Petition to Accept Unavoidably Delayed Payment of Maintenance Fee in an Expired Patent (37 CFR 1.378(b)) (PTO/SB/65)	8 hours	172	1,376
Petition to Accept Unintentionally Delayed Payment of Maintenance Fee in an Expired Patent (37 CFR 1.378(c)) (PTO/SB/66)	1 hour	2,351	2,351
Petition to Accept Unintentionally Delayed Payment of Maintenance Fee in an Expired Patent (37 CFR 1.378(c)) (PTO/SB/66)—EFS-Web	1 hour	800	800
Petition to Review Refusal to Accept Payment of Maintenance Fee Prior to Expiration of Patent (37 CFR 1.377)	4 hours	54	216
Petition for Reconsideration of Decision on Petition Refusing to Accept Delayed Payment of Maintenance Fee in an Expired Patent (37 CFR 1.378(e))	8 hours	175	1,400
“Fee Address” Indication Form (PTO/SB/47)	5 minutes	126,837	10,147
Total		470,397	33,426

Estimated Total Annual Non-hour Respondent Cost Burden: $614,571,323. There are no capital start-up costs 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.

This collection has filing fees in the form of patent maintenance fees, surcharges for late payment of maintenance fees, and petition fees. Under 37 CFR 1.20(e)-(g), the patent maintenance fees due at 31/2 years, 71/2 years, and 111/2 years after the date of grant are $980, $2,480, and $4,110 respectively (discounted to $490, $1,240, and $2,055 for small entities). The surcharge under 37 CFR 1.20(h) for paying a maintenance fee during the six-month grace period following the above intervals is $130 ($65 for small entities). The surcharge under 37 CFR 1.20(i) for a petition to accept a maintenance fee after the six-month grace period for these intervals has expired is $700 where the delayed payment is shown to be unavoidable and $1,640 where the delayed payment is shown to be unintentional. The filing fee listed in 37 CFR 1.17(g) for a petition to review the refusal to accept the payment of a maintenance fee filed prior to the expiration of a patent is $200. The filing fee listed in 37 CFR 1.17(f) for a petition for reconsideration of the decision on a petition refusing to accept the delayed payment of a maintenance fee in an expired patent is $400. The USPTO estimates that the total filing costs associated with this collection will be $614,442,370 per year as calculated in the accompanying table.

Fee or surcharge	Estimated annual responses	Amount of fee or surcharge	Estimated annual filing costs
Patent maintenance fee at 31/2 years	114,683	$980.00	$112,389,340.00
Patent maintenance fee at 31/2 years (small entity)	31,479	490.00	15,424,710.00
Patent maintenance fee at 71/2 years	95,973	2,480.00	238,013,040.00
Patent maintenance fee at 71/2 years (small entity)	23,940	1,240.00	29,685,600.00
Patent maintenance fee at 111/2 years	46,752	4,110.00	192,150,720.00
Patent maintenance fee at 111/2 years (small entity)	9,611	2,055.00	19,750,605.00
Surcharge for paying maintenance fee during the six-month grace period	7,961	130.00	1,034,930.00
Surcharge for paying maintenance fee during the six-month grace period (small entity)	9,609	65.00	624,585.00
Petition to Accept Unavoidably Delayed Payment of Maintenance Fee in an Expired Patent (37 CFR 1.378(b))	172	700.00	120,400.00
Petition to Accept Unintentionally Delayed Payment of Maintenance Fee in an Expired Patent (37 CFR 1.378(c))	3,151	1,640.00	5,167,640.00
Petition to Review Refusal to Accept Payment of Maintenance Fee Prior to Expiration of Patent (37 CFR 1.377)	54	200.00	10,800.00
Petition for Reconsideration of Decision on Petition Refusing to Accept Delayed Payment of Maintenance Fee in an Expired Patent (37 CFR 1.378(e))	175	400.00	70,000.00
“Fee Address” Indication Form	126,837	0.00	0.00
Total	470,397		614,442,370.00

The public may submit the 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. The USPTO estimates that the average first-class postage cost for a mailed submission will be 42 cents, and that approximately 255,841 submissions per year may be mailed to the USPTO, for a total postage cost of approximately $107,453 per year.

The recordkeeping costs for this collection are associated with submitting maintenance fee payments, forms, and petitions online through the USPTO Web site. It is recommended that customers who submit fee payments and documents online print and retain a copy of the acknowledgment receipt as evidence of the successful transaction. The USPTO estimates that it will take 5 seconds (0.001 hours) to print a copy of the acknowledgment receipt and that approximately 214,556 maintenance fee payments, forms, and petitions will be submitted online, for a total of 215 hours per year for printing this receipt. Using the paraprofessional rate of $100 per hour, the USPTO estimates that the recordkeeping cost associated with this collection will be approximately $21,500 per year.

The total non-hour respondent cost burden for this collection in the form of filing fees, postage costs, and recordkeeping costs is estimated to be $614,571,323 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: October 24, 2008.

Susan K. Fawcett,

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