E9-29528. Admittance To Practice and Roster of Registered Patent Attorneys and Agents Admitted To Practice Before the United States Patent and Trademark Office (USPTO)

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 this continuing information collection, as required by the Paperwork Reduction Act of 1995.

DATES:

Written comments must be submitted on or before February 9, 2010.

ADDRESSES:

You may submit comments by any of the following methods:

• E-mail: [e-mail]. Include “0651-0012 Admittance to Practice and Roster of Registered Patent Attorneys and Agents Admitted to Practice Before the USPTO comment” in the subject line of the message.
• Fax: [phone], marked to the attention of Susan K. Fawcett.
• Mail: Susan K. Fawcett, Records Officer, Office of the Chief Information Officer, United States 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 the attention of Christine Nucker, Enrollment and Discipline Administrator, United States Patent and Trademark Office, Mail Stop OED, P.O. Box 1450, Alexandria, VA 22313-1450; by telephone at 571-272-6071; or by e-mail at [e-mail].

SUPPLEMENTARY INFORMATION:

I. Abstract

This collection of information is required by 35 U.S.C. 2(b)(2)(D), which permits the United States Patent and Trademark Office (USPTO) to establish regulations governing the recognition and conduct of agents, attorneys or other persons representing applicants or other parties before the USPTO. This statute also permits the USPTO to require information from applicants that shows that they are of good moral character and reputation and have the necessary qualifications to assist applicants with the patent process and to represent them before the USPTO.

The USPTO administers the statute through 37 CFR 1.21, 10.14 and 11.5 to 11.12. These rules address the requirements to apply for the examination for registration and to demonstrate eligibility to be a registered attorney or agent before the USPTO, including the fee requirements. The Office of Enrollment and Discipline (OED) collects information to determine the qualifications of individuals entitled to represent applicants before the USPTO in the preparation and prosecution of applications for a patent. The OED also collects information to administer and maintain the roster of attorneys and agents registered to practice before the USPTO. Information concerning registered attorneys and agents is published by the OED in a public roster that can be accessed through the USPTO Web site.

The information in this collection is used by the USPTO to review applications for the examination for registration and to determine whether an applicant may be added to, or an existing practitioner may remain on, the Register of Patent Attorneys and Agents.

There are eight forms associated with this information collection. Two new forms are being introduced into this collection: The Application for Reciprocal Recognition to Practice in Trademark Matters Before the United States Patent and Trademark Office Under 37 CFR 11.14(c) by a Foreign Attorney or Agent (PTO-158T) and the Application for Registration in the USPTO Law School Pilot Program to Practice Before the United States Patent and Trademark Office by a Foreign Attorney or Agent (PTO-158LS).

Three additional new items being introduced into the collection are: (1) Cover pages used for submitting correspondence to OED (for documents submitted with applications, requests for reconsideration, and petitions); (2) record keeping costs (a copy of every document submitted to OED in connection with an application for registration); and (3) electronic change of address submissions.

II. Method of Collection

By mail to the USPTO when the individual desires to participate in the information collection and electronically when the individual is submitting a change of address.

III. Data

OMB Number: 0651-0012.

Form Number(s): PTO-158, PTO-158A, PTO/275, PTO-107A, PTO-1209, PTO-2126, PTO-2149 and PTO-2150. Two new forms being introduced into the collection are PTO-158T and PTO-158LS.

Type of Review: Revision of a currently approved collection.

Affected Public: Businesses or other for-profits.

Estimated Number of Respondents: 93,340 responses per year.

Estimated Time per Response: The USPTO estimates that it will take the public approximately 1 minute (0.02 hours) to 40 hours, depending upon the complexity of the situation, to gather, prepare, and submit the various documents in this information collection.

Estimated Total Annual Respondent Burden Hours: 98,028 hours per year.

Estimated Total Annual Respondent Cost Burden: $23,010,260. The cost to respondents for taking the registration examination is estimated to be at the rate of $39 per hour, for a cost burden of $1,206,660. The USPTO estimates that the remaining items in this collection will be prepared by attorneys in private firms. Using the professional hourly rate of $325 for attorneys in private firms, the USPTO estimates $21,803,600 per year in respondent cost burden associated with the remaining items in this information collection.

Item	Estimated time for response	Estimated annual responses	Estimated annual burden hours
Application for Registration to Practice Before the United States Patent and Trademark Office (includes both the computerized exam and the USPTO-administered exam) FORM PTO-158	30 minutes	4,420	2,210
Application for Registration to Practice Before the United States Patent and Trademark Office (former examiners; examination waived) FORM PTO-158	30 minutes	100	50
Application for Registration to Practice Before the United States Patent and Trademark Office Under 37 CFR 11.6(c) by a Foreign Resident (examination waived) FORM PTO-158A	30 minutes	100	50
Application for Reciprocal Recognition to Practice in Trademark Matters Before the United States Patent and Trademark Office Under 37 CFR 11.14(c) by a Foreign Attorney or Agent (examination waived) FORM PTO-158T	30 minutes	25	13
Application for Registration in the USPTO Law School Pilot Program to Practice Before the United States Patent and Trademark Office Under 37 CFR 11.14(c) (examination waived) (Law School Students Only) FORM PTO-158LS	30 minutes	60	30
Registration examination to become a registered practitioner	7 hours	4,420	30,940
Undertaking under 37 CFR 11.10(b) PTO/275	20 minutes	520	172
Data Sheet—Register of Patent Attorneys and Agents (individuals passing the registration exam) PTO-107A	10 minutes	1,995	339
Data Sheet—Register of Patent Attorneys and Agents (Foreign applicants) PTO-107A	10 minutes	100	17
Data Sheet—Register of Patent Attorneys and Agents (former examiners seeking registration) PTO-107A	10 minutes	100	17
Oath or Affirmation PTO-1209	5 minutes	2,195	176
Reinstatement to the Register PTO-107A	10 minutes	30	5
Written request for reconsideration and further review of disapproval notice of application	90 minutes	30	45
Petition to the Director of the Office of Enrollment and Discipline Under 37 CFR 11.12(c)	45 minutes	20	15
Petition for reinstatement after disciplinary removal under 37 CFR 11.7(h)	40 hours	4	160
Annual Practitioner Registration Fee FORM PTO-2126	10 minutes	32,500	5,525
Annual Fee, Limited Recognition FORM PTO-2126	10 minutes	200	34
Voluntary Inactive Status FORM PTO-2126	10 minutes	2,000	340
Request for Restoration to Active Status from Voluntary Inactive Status FORM PTO-2126	10 minutes	700	119
Balance of Annual Fee Due on Restoration to Active Status from Voluntary Inactive Status FORM PTO-2126	10 minutes	700	119
Delinquency Fee for Annual Fee FORM PTO-2126	10 minutes	2,100	357
Reinstatement Fee (fee required to be paid after the due date of the required annual fee) FORM PTO-2126	10 minutes	420	71
Sponsor Application for USPTO Continuing Legal Education (CLE) FORM PTO-2149	1 hour	350	350
Certification of Attendance at USPTO-approved CLE Training FORM PTO-2150	1 hour	350	350
Practitioner request for paper version of CLE	5 minutes	100	8
On-line version of the seminar CLE	2 hours	28,000	56,000
Paper version of the CLE	2 hours	100	200
Practitioner's supporting documentation for a motion to hold in abeyance a disciplinary proceeding because of a current disability or addiction	40 hours	1	40
Cover pages used for submitting correspondence to OED (for documents submitted with applications, Requests for Reconsideration, and petitions)	1 minute	7,500	150
Change of address—electronic submission	2 minutes	4,200	126
Total		93,340	98,028

Estimated Total Annual (non-hour) Respondent Cost Burden: $5,710,143. There are no capital start-up or maintenance costs associated with this information collection. There are, however, non-hour costs due to record keeping requirements, filing fees, and postage costs.

There are record keeping costs as a result of the Oath which includes a notary public requirement. The average fee for having a document notarized is $2. The USPTO estimates that it will receive 2,195 responses to this information collection per year as a result of this notary requirement, for a total cost of $4,390 per year. Also, there is another record keeping cost being added into the collection. The General Requirements Bulletin recommends that “applicants should make and keep a copy of every document submitted to the office in connection with an application for registration.” The USPTO estimates that it will take an applicant approximately 5 minutes (0.08 hours) to print and retain a copy of the submissions and that approximately 4,700 responses will be made per year, for a total of 376 hours. Using the professional rate of $325 per hour for attorneys in private firms, the USPTO estimates that the record keeping cost associated with this copy requirement will be $122,200 per year, for a total record keeping cost of $126,590.

There are also filing fees associated with this collection. The application fees for registration to practice before the USPTO vary depending on whether the applicant is a current applicant, a former examiner, or a foreign resident. The fee for administration of the computerized examination to become a registered patent practitioner also varies depending on how the examination is administered. The total annual non-hour cost burden associated with filing fees is $5,561,840.

Item	Responses (a)	Filing fee ($) (b)	Total non-hour cost burden (a) × (b) (c)
Non-Refundable Application Fee for Registration to Practice Before the United States Patent and Trademark Office (includes both the computerized exam and the USPTO-administered exam)	4,420	$40.00	$176,800.00
Non-Refundable Application Fee for Enrollment and/or Reinstatement to Practice Before the United States Patent and Trademark Office Under 37 CFR 1.21(a)(10) (those who must prove fitness to practice)	35	1,600.00	56,000.00
Application fee for Registration to Practice Before the United States Patent and Trademark Office, as applicable when used for registration fees only (former examiners; examination waived)	100	40.00	4,000.00
Application for Registration to Practice Before the United States Patent and Trademark Office Under 37 CFR 11.6(c) by a Foreign Resident (examination waived)	100	40.00	4,000.00
Application fee for Reciprocal Recognition to Practice in Trademark Matters Before the United States Patent and Trademark Office Under 37 CFR 11.14(c) by a Foreign Attorney/Agent (examination waived)	25	40.00	1,000.00
Application Fee for Registration in the USPTO Law School Pilot Program to Practice Before the United States Patent and Trademark Office Under 37 CFR 11.14(c) (examination waived) (Law School students only)	60	0.00	0.00
Registration examination fee for administration of computerized examination to become a registered patent practitioner administered by the USPTO (USPTO-administered exam)	20	450.00	9,000.00
Registration examination fee for administration of computerized examination to become a registered patent practitioner administered by a commercial entity (Computer exam)	4,400	200.00	880,000.00
Undertaking under 37 CFR 11.10(b)	520	0.00	0.00
Data Sheet—Register of Patent Attorneys and Agents (includes applicants that passed the examination, former examiners, and foreign applicants)	2,195	100.00	219,500.00
Oath or Affirmation	2,195	0.00	0.00
Reinstatement to the Register	30	100.00	3,000.00
Written request for reconsideration and further review of disapproval notice of application	30	130.00	3,900.00
Petition to the Director of the Office of Enrollment and Discipline under 11.12(c)	20	130.00	2,600.00
Petition for reinstatement after disciplinary removal under 11.7(h)	4	1,600.00	6,400.00
Annual Practitioner Registration Fee	32,500	118.00	3,835,000.00
Annual Fee, Limited Recognition	200	118.00	23,600.00
Voluntary Inactive Status	2,000	25.00	50,000.00
Request for Restoration to Active from Voluntary Inactive Status	700	50.00	35,000.00
Balance of annual fee due on restoration to active from voluntary inactive status	700	93.00	65,100.00
Delinquency fee for annual fee (fee paid after the due date and for CLE)	2,100	50.00	105,000.00
Reinstatement Fee (required to be paid after the due date of the required annual fee or CLE)	420	100.00	42,000.00
Sponsor Application for USPTO CLE	350	60.00	21,000.00
Certification of Attendance at USPTO-approved CLE Training	350	0.00	0.00
Practitioner request for paper version of CLE program and furnished narrative	100	75.00	7,500.00
On-line version of the Seminar CLE	28,000	0.00	0.00
Paper version of the CLE	100	0.00	0.00
Practitioner's supporting documentation for a motion to hold in abeyance a disciplinary proceeding because of a current disability or addiction	1	11,440.00	11,440.00
Cover pages used for submitting correspondence to OED (includes “Request for Reconsideration” cover page)	7,500	0.00	0.00
Change of address—electronic submission	4,200	0.00	0.00
Total	93,375		5,561,840.00

The General Requirements Bulletin for Admission to the Examination for Registration to Practice in Patent Cases before the USPTO states that all business with the USPTO should be transacted in writing. The actions of the OED will be based exclusively on the written record in the USPTO (37 CFR 1.2). Personal attendance is unnecessary. All documents may be submitted to the USPTO by first-class mail through the United States Postal Service. Mailed submissions should include a certificate of mailing for each piece of correspondence enclosed, stating the date of deposit or transmission to the USPTO. The USPTO estimates that the average first-class postage cost for responses to this collection will vary from 44 cents for one ounce to $4.80 for one pound, depending on the individual submission. The total annual non-hour cost burden associated with postage costs is $21,713.

Item	Responses (a)	Postage cost ($) (b)	Total non-hour cost burden (a) × (b) (c)
Application for Registration to Practice Before the United States Patent and Trademark Office (includes both the computerized exam and the USPTO-administered exam)	4,420	$0.61	$2,696.00
Application for Registration to Practice Before the United States Patent and Trademark Office (former examiners; examination waived)	100	0.61	61.00
Application for Registration to Practice Before the United States Patent and Trademark Office Under 37 CFR 11.6(c) by a Foreign Resident (examination waived)	100	0.44	44.00
Application for Reciprocal Recognition to Practice in Trademark Matters Before the United States Patent and Trademark Office Under 37 CFR 11.14(c) by a Foreign Attorney or Agent (examination waived)	25	0.61	15.00
Application for Registration in the USPTO Law School Pilot Program to Practice Before the United States Patent and Trademark Office Under 37 CFR 11.14(c) (examination waived) (Law School Students only)	60	0.00	0.00
Registration examination to become a registered practitioner	4,420	0.00	0.00
Undertaking under 37 CFR 11.10(b)	520	0.00	0.00
Data Sheet—Register of Patent Attorneys and Agents (includes applicants that passed the examination, former examiners, and foreign applicants)	2,195	0.44	966.00
Oath or Affirmation	2,195	0.00	0.00
Reinstatement to the Register	30	0.44	13.00
Written request for reconsideration and further review of disapproval notice of application	30	0.61	18.00
Petition to the Director of the Office of Enrollment and Discipline under 37 CFR 11.12(c)	20	1.73	35.00
Petition for reinstatement after disciplinary removal under 37 CFR 11.7(h)	4	0.78	3.00
Annual Practitioner Registration Fee	32,500	0.44	14,300.00
Annual Fee, Limited Recognition	200	0.44	88.00
Voluntary Inactive Status	2,000	0.44	880.00
Request for Restoration to Active from Voluntary Inactive Status	700	0.44	308.00
Balance of annual fee due on restoration to active from voluntary inactive status	700	0.44	308.00
Delinquency Fee for annual fee (fee paid after the due date and for CLE)	2,100	0.44	924.00
Reinstatement fee (required to be paid after the due date of the required annual fee or CLE)	420	0.44	185.00
Sponsor application for USPTO CLE	350	1.73	606.00
Certification of Attendance at USPTO-approved CLE Training	350	0.61	214.00
Practitioner request for paper version of CLE program and furnished narrative	100	0.44	44.00
On-line version of the Seminar CLE	28,000	0.00	0.00
Paper version of the CLE	100	0.00	0.00
Practitioner's supporting documentation for a motion to hold in abeyance a disciplinary proceeding because of a current disability or addiction	1	4.80	5.00
Cover pages used for submitting correspondence to OED (includes “Request for Reconsideration” cover page)	7,500	0.00	0.00
Change of Address—electronic submission	4,200	0.00	0.00
Total	93,340		21,713.00

The USPTO estimates that the total (non-hour) respondent cost burden for this collection in the form of recordkeeping costs, filing fees, and postage costs is $5,710,143.

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, including through 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 will also become a matter of public record.

Dated: December 7, 2009.

Susan K. Fawcett,

Records Officer, USPTO, Office of the Chief Information Officer.