02-31574. Statutory Invention Registration

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 and proposed information collection, as required by the Paperwork Reduction Act of 1995, Pub. L. 104-13 (44 U.S.C. 3506(c)(2)(A)).

DATES:

Written comments must be submitted on or before February 14, 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]; by e-mail at [e-mail]; or by facsimile at [phone].

FOR FURTHER INFORMATION CONTACT:

Requests for additional information should be directed to the attention of Robert J. Spar, Director, Office of Patent Legal Administration, United States Patent and Trademark Office (USPTO), Washington, DC 20231; by telephone at [phone]; or by e-mail at [e-mail].

SUPPLEMENTARY INFORMATION:

I. Abstract

A statutory invention registration is not a patent. It has the defensive attributes of a patent but does not have the enforceable attributes of a patent. In other words, a person occasionally invents something solely for personal use (not for production or sale) and does not want to go through the effort and expense of obtaining a patent on the invention. At the same time, the inventor wants to prevent someone else from later obtaining a patent on a like invention. In that situation, the inventor can register a statutory invention and have it published. Once published, it cannot be claimed by another person.

37 U.S.C. 157 authorizes the United States Patent and Trademark Office (USPTO) to publish a statutory invention registration containing the specifications and drawings of a regularly filed application for a patent without examination, providing the patentee meets all the requirements for printing, waives the right to receive a patent on the invention within a certain period of time prescribed by the USPTO, and pays all application, publication and other processing fees.

The USPTO administers 35 U.S.C. 157 through 37 CFR 1.293-1.297. Under these rules, an applicant for an original patent may request, at any time during the pendency of the applicant's pending complete application, that the specifications and drawings be published as a statutory invention registration. Any request for a statutory invention registration may be examined to determine if the requirements have been met, if the subject matter of the application is appropriate for publication, and if the requirements for publication are met.

The public may petition the USPTO to review rejection decisions within one month or such other time as is set forth in the decision refusing publication. The public may also petition the USPTO to withdraw a request to publish a statutory invention registration prior to the date of the notice of the intent to publish.

If the request for a statutory invention registration is approved, a notice to that effect will be published in the USPTO's Official Gazette. Each statutory invention registration published will include a statement relating to the attributes of a statutory invention registration.

A Change Worksheet was approved by the Office of Management and Budget (OMB) on November 29, 2001, which decreased the number of responses for this collection by 10 (from 83 to 73) due to the availability of 18-month publications of patent applications. Consequently, the total burden hours were also reduced by 4, (from 33 to 29) as a program change.

The public uses form PTO/SB/94, Request for Statutory Invention Registration, to request and authorize publication of a regularly-filed patent application as a Statutory Invention Registration, to waive the right to receive a United States patent on the same invention claimed in the identified patent application, to agree that the waiver will be effective upon publication of the statutory invention registration, and to state that the identified patent application complies with the requirements for printing. No forms are associated with the petition for a review of the refusal to publish a statutory invention registration or the petition to withdraw the request for publication of a statutory invention registration.

II. Method of collection

By mail, facsimile, or hand delivery to the USPTO when the applicant or agent files a statutory invention registration with the USPTO.

III. Data

OMB Number: 0651-0036.

Form Number(s): PTO/SB/94.

Type of Review: Extension of a currently approved collection.

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

Estimated Number of Respondents: 73 responses per year.

Estimated Time Per Response: The USPTO estimates that it will take approximately 24 minutes each to gather, prepare, and submit the request for statutory invention registration, the petition to review the rejection decision, and the petition to withdraw the publication request, depending upon the complexity of the situation. This collection contains 1 form and 2 petitions.

Estimated Total Annual Respondent Burden Hours: 29 hours per year.

Estimated Total Annual Respondent Cost Burden: $7,308. Using the professional hourly rate of $252 per hour for associate attorneys in private firms, the USPTO estimates $7,308 per year for salary costs associated with respondents.

Item	Estimated time for response	Estimated annual responses	Estimated annual burden hours
Statutory Invention Registration	24 minutes	70	28.0
Petition to Review Rejection Decision	24 minutes	1	0.4
Petition to Withdraw Publication Request	24 minutes	2	0.8
Total		73	29.2

Estimated Total Annual Nonhour Respondent Cost Burden: $107,146. There are no capital start-up costs or maintenance costs associated with this information collection. However this collection does have postage costs and filing fees.

The public may submit the paper forms and petitions in this collection to the USPTO by mail through the United States Postal Service. The USPTO estimates that the average first-class postage cost for a mailed submission will be 49 cents, and that customers filing the documents associated with this information collection may choose to mail their submissions to the USPTO. Therefore, the USPTO estimates that up to 73 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 $36.

There is annual nonhour cost burden in the way of filing fees associated with this collection. Since the filing fees have not previously been included in this collection, the total number of filings is being used to calculate these costs.

The estimated filing costs for this collection of $107,110 are calculated in the accompanying chart.

Item	Response (a)	Filing fee ($) (b)	Total non-hour cost burden (a) × (b)
Statutory Invention Registration (requested prior to mailing of first office action, 37 CFR 1.17(n))	24	$920.00	$22,080.00
Statutory Invention Registration (requested after mailing of first office action, 37 CFR 1.17(o))	46	1,840.00	84,640.00
Petition to Review Rejection Decision	1	130.00	130.00
Petition to Withdraw Publication Request	2	130.00	260.00
Total	73		107,110.00

The USPTO estimates that the total non-hour respondent cost burden for this collection in the form of postage costs and filing fees amounts to $107,146.

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 9, 2002.

Susan K. Brown,

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