02-31193. Initial Patent Applications

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 February 10, 2003.

ADDRESSES:

Direct all written comments to Susan K. Brown, Records Officer, Office of Data Architecture and Services, Data Administration Division, USPTO, Suite 310, 2231 Crystal Drive, Washington, DC 20231; by telephone at [phone]; or by electronic mail at [e-mail].

FOR FURTHER INFORMATION CONTACT:

Requests for additional information should be directed to Robert J. Spar, Director, Office of Patent Legal Administration, USPTO, Washington, DC 20231; by telephone at [phone]; or by electronic mail at [e-mail].

SUPPLEMENTARY INFORMATION

I. Abstract

Article 1, Section 8, Clause 8 of the Constitution provides that Congress shall have the power . . .” [t]o promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries.” Congress has exercised this grant of power under the Constitution to enact the patent statute, Title 35, U.S.C., and to establish the United States Patent and Trademark Office (USPTO).

The USPTO is required by 35 U.S.C. 131 to examine applications for patents. An applicant must provide sufficient information to allow the USPTO to properly examine the application to determine whether it meets the criteria set forth in the patent statute and regulations to be issued as a patent. The USPTO administers the statute through various rules in 37 CFR 1.16 through 1.84. The patent statute and regulations require that an application for patent (or application package) include the following collections of information:

(1) A specification containing a description of the invention and at least one claim defining the property right sought by the applicant;

(2) a drawing or photograph, where necessary, for an understanding of the invention;

(3) an oath or declaration signed by the applicant; and

(4) a filing fee.

The “American Inventors Protection Act of 1999” brought some changes to the patent application process. This act amended 35 U.S.C. 122 to provide for the publication of patent applications 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. It also amended 35 U.S.C. 119 and 120 to permit applicants to petition the USPTO to accept a delayed priority claim. As a result of this act, the USPTO amended 35 U.S.C. 132 to allow applicants to request (for a fee) the continued examination of an application as an alternative to submitting a continued prosecution application. With the establishment of the request for continued examination practice, the USPTO is eliminating the continued prosecution application practice for all of the applications, with the exception of the design patent applications.

This information collection contains both paper and electronic forms. New utility and provisional applications may be submitted electronically through the Electronic Filing System (EFS). The specification for these applications is created through the authoring tools that can be downloaded free of charge from the USPTO website. Through the Electronic Packaging and Validation Engine (ePAVE) (which applicants can also download from the USPTO Web site), applicants can create the Application Transmittal, the Fee Transmittal, and the Application Data Sheet that are submitted, in addition to the specification, as part of the electronic patent application package. The claims, drawings, oaths, declarations, powers of attorney, and small entity statements are scanned or converted into images and attached to the electronic patent application package. Once the specification and claims are completed, the necessary forms created, and the images attached to the application, the ePAVE software will then bundle, compress, and encrypt the files for submission to the USPTO. The EFS sends the applicant an acknowledgment receipt after the application package has been received, decrypted, and decompressed. The EFS uses public key infrastructure (PKI) technology for secure electronic communications so authorized filers must obtain a customer number and a digital certificate.

The Application Data Sheet can be submitted in paper, in addition to electronic transmission. However, it must be noted that this is a format and not an official paper form. As such, neither the paper nor the electronic versions have form numbers. The Application Data Sheet is only used in the new utility, plant, and design applications.

II. Method of Collection

By mail, facsimile (limited to petitions to accept delayed priority claims and requests for continued prosecution applications), or hand delivery to the USPTO. New utility and provisional applications can also be submitted electronically through the EFS.

III. Data

OMB Number: 0651-0032.

Form Number(s): PTO/SB/01/01A/02A/02B/03/03A/04/05/06/07/13/PCT/16/17/18/19/29/29A/101 through 110.

Type of Review: Revision of a currently approved collection.

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

Estimated Number of Respondents: 452,487 responses per year.

Estimated Time Per Response: The USPTO estimates that it takes the public approximately 17 minutes to 10 hours and 45 minutes (0.28 hours to 10.75 hours) to complete this information, depending on the request. This includes time to gather the necessary information, prepare the application, petition, or CD submission, and submit the completed request to the USPTO. The USPTO believes that it takes the same amount of time to gather the necessary information, prepare the new utility or provisional application, and submit it to the USPTO, whether the applicant submits it electronically or in paper form. There are 26 forms in this collection.

Estimated Total Annual Respondent Burden Hours: 4,169,768 hours per year.

Estimated Total Annual Respondent Cost Burden: $1,050,781,314 per year. The USPTO expects that all of the information in this collection, with the exception of the CD submissions of oversized new utility and provisional applications that cannot be submitted electronically through EFS, will be prepared by an attorney. The USPTO expects that the oversized CD submissions will be prepared by paraprofessionals. Using the professional hourly rate of $252 per hour for associate attorneys in private firms, the USPTO estimates that the respondent cost burden for submitting all of the information in this collection, with the exception of the oversized CD submissions, will be $1,050,781,284 per year. Using the paraprofessional hourly rate of $30 per hour, the USPTO estimates that the respondent cost burden for submitting the oversized CD submissions will be $30 per year. The total respondent cost burden is $1,050,781,314 per year.

Item	Estimated time for response	Estimated annual responses	Estimated annual burden hours
Original New Utility/Plant/Design Applications and Continuation/Divisional of an International Application—No Application Data Sheet	10 hours and 45 minutes	275,506	2,961,690
Electronic Original New Utility/Plant/Design Applications—No Application Data Sheet	10 hours and 45 minutes	3,148	33,841
Original New Utility/Plant/Design Applications—Application Data Sheet	10 hours and 36 minutes	30,612	324,487
Electronic Original New Utility/Plant/Design Applications—Application Data Sheet	10 hours and 36 minutes	350	3,710
Continuation/Divisional Applications—Utility/Plant/Design	54 minutes	34,707	31,236
Continued Prosecution Applications—Design	24 minutes	263	105
Continuation-in-Part Applications—Utility/Plant/Design	5 hours and 15 minutes	17,364	91,161
Provisional Applications	8 hours	89,789	718,312
Electronic Provisional Applications	8 hours	640	5,120
Petition to Accept Delayed Priority Claim	1 hour	105	105
CD Submissions of Oversized New Utility and Provisional Applications That Cannot be Submitted Electronically via EFS:	17 minutes	3	1
*Application Transmittal Form
*Cover Letter
Total		452,487	4,169,768

Estimated Total Annual Non-hour Respondent Cost Burden: $262,216,319 per year. There are capital start-up, recordkeeping, and postage costs, as well as filing fees, associated with this information collection. These costs are not applicable to all of the information in this collection, however.

Applicants can submit new utility and provisional applications electronically through the EFS. These applications require attachments that must be in a TIFF format in order to be submitted electronically. If these documents are not in this format, applicants may need a scanner in order to convert their images and documentation into the TIFF format. The USPTO estimates that the average cost of a scanner is $200.

Applicants can use Compact Disk-Read Only Memory (CD-ROM) or Compact Disk-Recordables (CD-R) to submit patent applications containing large computer program listings to the USPTO. New utility or provisional applications that exceed 10 megabytes cannot be submitted electronically through EFS, so applicants have the option to copy these applications onto CD-ROMs or CD-Rs as well. To make these CD-ROM/CD-R copies, applicants must have a CD drive capable of recording onto CD-R media (a “CD burner”), CD recording software, blank CD-R media (CDs), cases and labels for the CDs, and a padded mailing envelope for shipping. The average cost of a CD burner is approximately $200, depending on the speed and type of PC connection. Commercial software for creating CDs, such as Easy CD Creator 5.0, retails for approximately $100, although basic CD recording software is typically included with the CD burner. Blank CD-R media with plastic jewel cases can be purchased for approximately $10 for 10 blank CDs, or about $1 per disc. The average cost of software for labeling CDs, including blank labels and case inserts, is approximately $20. Padded 8.5 x 11-inch mailing envelopes for safely shipping the CDs cost approximately $12 for a package of 12, or about $1 per envelope. In sum, the USPTO estimates the additional costs for the hardware, software, and supplies necessary for CD submissions to be approximately $342 per year. The total capital start-up costs for this collection are $542 per year.

The applications, the petition to accept a delayed priority claim, and the oversized CD submissions may be submitted by mail through the United States Postal Service. The USPTO recommends that applicants file initial patent applications (which also include the continued prosecution, continuation and divisional, continuation-in-part, and provisional applications) by Express Mail to establish the filing date (otherwise the filing date of the application will be the date that it is received at the USPTO). The USPTO estimates that the average cost for sending an initial application by Express Mail will be $17.85, and that customers filing documents associated with these initial applications may choose this option to mail their submissions to the USPTO. Therefore, the USPTO estimates that up to 448,241 submissions per year may be mailed to the USPTO at an average Express Mail rate of $17.85, for a total postage cost of $8,001,102. If the applicant sends the petition for delayed priority claim by first-class mail, the applicant 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 49 cents, and that customers filing the petitions for priority claim may choose to mail their submissions to the USPTO. Therefore, the USPTO estimates that up to 105 submissions per year may be mailed to the USPTO at an average first-class postage cost of 49 cents, for a total postage cost of $51 per year. In the case of the oversized CD submissions, the USPTO estimates that the average postage cost for these submissions will be 95 cents, to cover the costs of mailing the CD, the application transmittal form, and the cover letter. The USPTO estimates that 3 oversized CD submissions will be received per year, for a total postage cost of $3 per year. The total postage cost for this collection is $8,001,156 per year.

There are recordkeeping costs associated with the oversized CD submissions and the electronic filing of new utility and provisional applications. The USPTO advises applicants who submit oversized new utility and provisional application requests on CD to retain a back-up copy of the CD and a printed copy of the application transmittal form for their records. The USPTO estimates that it will take an additional 5 minutes for the applicant to produce this back-up CD copy and 2 minutes to print the copy of the application transmittal form, for a total of 7 minutes (0.12 hours) for each oversized submission. The USPTO estimates that approximately 3 electronic submissions per year will be oversized, for a total of 0.36 hours per year for retaining the back-up CD and printed application transmittal form. The USPTO believes that these back-up copies will be prepared by paraprofessionals with an estimated hourly rate of $30 per hour, for a total recordkeeping cost of $11 per year.

In addition, the USPTO also strongly advises applicants who file their new utility and provisional applications electronically to retain a copy of the file submitted to the USPTO as evidence of authenticity, in addition to keeping the acknowledgment receipt as clear evidence that on the date noted the file was received by the USPTO. The USPTO estimates that it will take 5 seconds (0.001 hours) to print and retain a copy of the new utility and provisional submissions and that approximately 4,138 (3,498 new utility and 640 provisional applications) submissions per year will use this option, for a total of 4 hours per year. Using the paraprofessional rate of $30 per hour, the USPTO estimates that the recordkeeping cost for retaining this copy will be $120 per year. The total recordkeeping cost for this collection is $131 per year.

There is also annual nonhour cost burden in the way of filing fees associated with this collection. The basic filing fees for the utility, plant, design, and provisional applications are determined by which filing status (other than small entity or small entity) the applicant has selected. The filing fees for the electronically-filed new utility and provisional applications are the same as those for the paper applications. The small entity status does not apply to the petition to accept a delayed priority claim. There are no filing fees associated with the oversized CD submissions.

The total estimated filing costs for this collection of $254,214,490 are calculated in the accompanying chart.

Item	Responses (yr)	Filing fees	Total annual cost (yr)
	(a)	(b)	(a) × (b)
Utility Application (including Reissues and all Continuing Applications)—Other Entity	273,137	$740.00	$202,121,380.00
Utility Applications (including Reissues and all Continuing Applications)—Small Entity	68,285	370.00	25,265,450.00
Plant Applications (including Reissues and all Continuing Applications)—Other Entity	768	740.00	568,320.00
Plant Applications (including Reissues and Continuing Applications)—Small Entity	192	370.00	71,040
Design Applications (including Reissues and all Continuing Applications)—Other Entity	15,654	740.00	11,583,960.00
Design Applications (including Reissues and all Continuing Applications)—Small Entity	3,914	370.00	1,448,180.00
Provisional Applications—Other Entity	72,343	160.00	11,574,880.00
Provisional Applications—Small Entity	18,086	80.00	1,446,880.00
Petition To Accept Delayed Priority Claim	105	1,280.00	134,400.00
CD-ROM Submissions of Oversized New Utility and Provisional Applications That Cannot Be Submitted Electronically via EFS:	3	N/A	0.00
• Application Transmittal Form
• Cover Letter
Totals	452,487		254,214,490.00

The USPTO estimates that the total non-hour respondent cost burden for this collection, in the form of capital start-up, operation, recordkeeping, and postage costs, and filing fees, is $262,216,319 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: December 4, 2002.

Susan K. Brown,

Records Officer, USPTO, Office of Data Architecture and Services, Data Administration Division.