2024-03189. Agency Information Collection Activities; Submission to the Office of Management and Budget (OMB) for Review and Approval; Comment Request; Patent Petitions Related to Application and Reexamination Processing Fees

AGENCY:

United States Patent and Trademark Office, Department of Commerce.

ACTION:

Notice of information collection; request for comment.

SUMMARY:

The United States Patent and Trademark Office (USPTO), as required by the Paperwork Reduction Act of 1995, invites comments on the extension and revision of an existing information collection: 0651–0059, Patent Petitions Related to Application and Reexamination Processing Fees. The purpose of this notice is to allow 60 days for public comment preceding submission of the information collection to OMB.

DATES:

To ensure consideration, comments regarding this information collection must be received on or before April 15, 2024.

ADDRESSES:

Interested persons are invited to submit written comments by any of the following methods. Do not submit Confidential Business Information or otherwise sensitive or protected information.

• Email: [e-mail]. Include “0651–0059 comment” in the subject line of the message.

• Federal eRulemaking Portal: http://www.regulations.gov.

• Mail: Justin Isaac, Office of the Chief Administrative Officer, United States Patent and Trademark Office, P.O. Box 1450, Alexandria, VA 22313–1450.

FOR FURTHER INFORMATION CONTACT:

Request for additional information should be directed to Jeffrey West, Senior Legal Advisor, Office of Patent Legal Administration, United States Patent and Trademark Office, P.O. Box 1450, Alexandria, VA 22313–1450; by telephone at 571–272–2226; or by email at [e-mail] with “0651–0059 comment” in the subject line. Additional information about this information collection is also available at http://www.reginfo.gov under “Information Collection Review.”

SUPPLEMENTARY INFORMATION:

I. Abstract

The United States Patent and Trademark Office (USPTO) is required by 35 U.S.C. 131 et seq. to examine an application for patent and, when appropriate, issue a patent. The USPTO also is required to publish patent applications, with certain exceptions, promptly 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.

USPTO petitions practice provides an opportunity for a patent applicant or owner to supply additional information that may be required in order for the USPTO to further process an application or patent. For other USPTO actions, review is in the form of administrative review obtained via submission of a petition to the USPTO. Many actions taken by the USPTO during its examination of an application for patent or for reissue of a patent, or during reexamination of a patent, are subject to review by an appeal to the Patent Trial and Appeal Board (PTAB). Appeals to PTAB are covered in other OMB approved information collections (0651–0063 and 0651–0069).

This information collection covers petitions filed in patent applications and reexamination proceedings that, when submitted to the USPTO, must be accompanied by the fee set forth in 37 CFR 1.17(f), (g), or (h). This information collection also covers the transmittals for the petitions fees.

II. Method of Collection

The items in this information collection can be submitted through the USPTO patent electronic filing system (Patent Center), the USPTO's online filing and viewing system for patent applications and related documents. The USPTO also will accept submissions, if applicable, by mail, hand delivery, and facsimile.

III. Data

OMB Control Number: 0651–0059.

Forms: (SB = Specimen Book; AIA = America Invents Act)

• PTO/AIA/17p (Processing Fee Under 37 CFR 1.17(f), (g), & (h) Transmittal)
• PTO/SB/23 (Petition for Extension of Time Under 37 CFR 1.136(b))
• PTO/SB/24A (Petition for Express Abandonment to Avoid Publication Under 37 CFR 1.138(c))
• PTO/SB/28 (Petition to Make Special Under Accelerated Examination Program)
• PTO/SB/140 (Petition to Withdraw an Application From Issue After Payment of the Issue Fee Under 37 CFR 1.313(c))

Type of Review: Extension and revision of a currently approved information collection.

Affected Public: Private sector.

Respondent's Obligation: Required to obtain or retain benefits.

Estimated Number of Annual Respondents: 50,953 respondents.

Estimated Number of Annual Responses: 50,953 responses.

Estimated Time per Response: The USPTO estimates that the responses in this information collection will take the public approximately between 12 minutes (0.20 hours) and 12 hours to complete. This includes the time, depending on the complexity of the situation and item, to gather the necessary information, create the document, and submit the completed request to the USPTO.

Estimated Total Annual Respondent Burden Hours: 82,237 hours.

Estimated Total Annual Respondent Hourly Cost Burden: $36,759,939.

Table 1—Total Burden Hours and Hourly Costs to Private Sector Respondents

Item No.	Item	Estimated annual respondents	Responses per respondent	Estimated annual responses	Estimated time for response (hours)	Estimated burden (hour/year)	Rate 1 ($/hour)	Estimated annual respondent cost burden
		(a)	(b)	(a) × (b) = (c)	(d)	(c) × (d) = (e)	(f)	(e) × (f) = (g)
1	Petitions (corresponding to the fee) Under 37 CFR 1.17(f) include:	4,650	1	4,650	4	18,600	447	8,314,200
	• Petition to Accord a Filing Date Under 1.57(a)
	• Petition to Accord a Filing Date Under 1.53(e)
	• Petition for Decision on a Question Not Specifically Provided For
	• Petition to Suspend the Rules
	Petition Fee Under 37 CFR 1.17(f), (g), and (h) Transmittal
2	Petitions (corresponding to the fee) Under 37 CFR 1.17(g) include:	17,440	1	17,440	2	34,880	447	15,591,360
	• Petition to Access an Assignment Record
	• Petition for Access to an Application
	• Petition for Expungement and Return of Information
	• Petition to Suspend Action in an Application
	Petition Fee Under 37 CFR 1.17(f), (g), and (h) Transmittal
3	Petitions (corresponding to the fee) Under 37 CFR 1.17(h) include:	26,768	1	26,768	1	26,768	447	11,965,296
	• Petition for Accepting Color Drawings or Photographs
	• Petition for Entry of a Model or Exhibit
	• Petition to Withdraw an Application from Issue
	• Petition to Defer Issuance of a Patent
	Petition Fee Under 37 CFR 1.17(f), (g), and (h) Transmittal
4	Petitions to Make Special Under Accelerated Examination Program (EFS-Web only)	133	1	133	12	1,596	447	713,412
5	Petitions for Express Abandonment to Avoid Publication Under 37 CFR 1.138(c)	1,961	1	1,961	0.20	392	447	175,224
6	Petition for Extension of Time Under 37 CFR 1.136(b)	1	1	1	0.50	1	447	447
	Totals	50,953		50,953		82,237		36,759,939
1  2023 Report of the Economic Survey, published by the Committee on Economics of Legal Practice of the American Intellectual Property Law Association (AIPLA); pg. F–41. The USPTO uses the average billing rate for intellectual property work in all firms which is $447 per hour ( https://www.aipla.org/​home/​news-publications/​economic-survey).

Estimated Total Annual Respondent Non-hourly Cost Burden: $4,023,729. There are no capital start-up, maintenance, or recordkeeping costs associated with this information collection. However, there is non-hour cost burden in the form of filing files and postage costs. The total annual non-hour respondent cost burden for this information collection is estimated to be $4,023,729, which includes $4,018,552 in filing fees and $5,177 in postage.

Filing Fees

Some petitions in this information collection have associated filing fees listed in the table below.

Table 2—Filing Fees

Item No.	Fee code	Item	Estimated annual responses	Filing fee ($)	Non-hourly cost burden
			(a)	(b)	(a) × (b) = (c)
1	1462	Petitions requiring the petition fee set forth in 37 CFR 1.17 (f) (Group I) (undiscounted)	1,275	$420	$535,500
1	2462	Petitions requiring the petition fee set forth in 37 CFR 1.17 (f) (Group I) (small entity)	880	168	147,840
1	3462	Petitions requiring the petition fee set forth in 37 CFR 1.17 (f) (Group I) (micro entity)	170	84	14,280
2	1463	Petitions requiring the petition fee set forth in 37 CFR 1.17 (g) (Group II) (undiscounted)	7,870	220	1,731,400
2	2463	Petitions requiring the petition fee set forth in 37 CFR 1.17 (g) (Group II) (small entity)	795	88	69,960
2	3463	Petitions requiring the petition fee set forth in 37 CFR 1.17 (g) (Group II) (micro entity)	55	44	2,420
3	1464	Petitions requiring the petition fee set forth in 37 CFR 1.17 (h) (Group III) (undiscounted)	9,205	140	1,288,700
3	2464	Petitions requiring the petition fee set forth in 37 CFR 1.17 (h) (Group III) (small entity)	3,980	56	222,880
3	3464	Petitions requiring the petition fee set forth in 37 CFR 1.17 (h) (Group III) (micro entity)	199	28	5,572
		Totals	24,429		4,018,552
1  2023 Report of the Economic Survey, publised by the Committee on Economics of Legal Practice of the American Intellectual Property Law Association (AIPLA); pg. F–41. The USPTO uses the average billing rate for intellectual property work in all firms which is $447 per hour ( https://www/​aopa.org/​home/​news-publications/​economic-survey).

Postage Costs

Although the USPTO prefers that the items in this information collection be submitted electronically, responses may be submitted by mail through the United States Postal Service (USPS). The USPTO estimates that 1% of the 50,953 items will be submitted in the mail resulting in 510 mailed items. The USPTO estimates that the average postage cost for a mailed submission, using a Priority Mail legal flat rate envelope, will be $10.15. Therefore, the USPTO estimates the total mailing costs for this information collection at $5,177.

IV. Request for Comments

The USPTO is soliciting public comments to:

(a) Evaluate whether the collection of information is necessary for the proper performance of the functions of the Agency, including whether the information will have practical utility;

(b) Evaluate the accuracy of the Agency's estimate of the burden of the collection of information, including the validity of the methodology and assumptions used;

(c) Enhance the quality, utility, and clarity of the information to be collected; and

(d) Minimize the burden of the collection of information on those who are to respond, including through the use of appropriate automated, electronic, mechanical, or other technological collection techniques or other forms of information technology, e.g., permitting electronic submission of responses.

All comments submitted in response to this notice are a matter of public record. USPTO will include or summarize each comment in the request to OMB to approve this information collection. Before including an address, phone number, email address, or other personally identifiable information (PII) in a comment, be aware that the entire comment—including PII—may be made publicly available at any time. While you may ask in your comment to withhold PII from public view, USPTO cannot guarantee that it will be able to do so.

Justin Isaac,

Information Collections Officer, Office of the Chief Administrative Officer, United States Patent and Trademark Office.