2013-02263. Patent Cooperation Treaty

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 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 April 5, 2013.

ADDRESSES:

You may submit comments by any of the following methods:

• Email: [e-mail]. Include “0651-0021 comment” in the subject line of the message.
• 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 Rulemaking Portal: http://www.regulations.gov.

FOR FURTHER INFORMATION CONTACT:

Requests for additional information should be directed to Raul Tamayo, Legal Advisor, Office of Patent Legal Administration, United States Patent and Trademark Office, P.O. Box 1450, Alexandria, VA 22313-1450; by telephone at 571-272-7728; or by email to [e-mail]. Additional information about this collection is also available at http://www.reginfo.gov under “Information Collection Review.”

SUPPLEMENTARY INFORMATION

I. Abstract

This collection of information is required by the provisions of the Patent Cooperation Treaty (PCT), which became operational in June 1978 and is administered by the International Bureau (IB) of the World Intellectual Property Organization (WIPO) in Geneva, Switzerland. The provisions of the PCT have been implemented by the United States in Part IV of Title 35 of the U.S. Code (Chapters 35-37) and Subpart C of Title 37 of the Code of Federal Regulations (37 CFR 1.401-1.499). The purpose of the PCT is to provide a standardized filing format and procedure that allows an applicant to seek protection for an invention in several countries by filing one international application in one location, in one language, and paying one initial set of fees.

The information in this collection is used by the public to submit a patent application under the PCT and by the United States Patent and Trademark Office (USPTO) to fulfill its obligation to process, search, and examine the application as directed by the treaty. The USPTO acts as the United States Receiving Office (RO/US) for international applications filed by residents and nationals of the United States. These applicants send most of their correspondence directly to the USPTO, but they may also file certain documents directly with the IB. The USPTO serves as an International Searching Authority (ISA) to perform searches and issues an international search report (ISR) and a written opinion on international applications. The USPTO also issues an international preliminary report on patentability (IPRP Chapter II) when acting as an International Preliminary Examining Authority (IPEA).

The USPTO is updating this information collection to reflect the current practice and fee structure for PCT applications entering the national stage at the USPTO. The USPTO is removing two items, extensions of time and priority documents, because the information is no longer being collected.

II. Method of Collection

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

III. Data

OMB Number: 0651-0021.

Form Number(s): PCT/RO/101, PCT/RO/134, PCT/IB/372, PCT/IPEA/401, PTO-1382, PTO-1390, PTO/SB/61/PCT, PTO/SB/64/PCT.

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: 353,669 responses per year. The USPTO estimates that approximately 16,275 of these responses will be from small entities.

Estimated Time per Response: The USPTO estimates that it will take the public from 15 minutes (0.25 hours) to 8 hours to gather the necessary information, prepare the appropriate form or documents, and submit the information to the USPTO.

Estimated Total Annual Respondent Burden Hours: 348,686 hours.

Estimated Total Annual Respondent Cost Burden: $129,362,506. The USPTO expects that the information in this collection will be prepared by attorneys at an estimated rate of $371 per hour. Therefore, the USPTO estimates that the respondent cost burden for this collection will be approximately $129,362,506 per year.

Item	Estimated time for response	Estimated annual responses	Estimated annual burden hours
Request and Fee Calculation Sheet (Annex and Notes) (PCT/RO/101)	1 hour	48,285	48,285
Description/claims/drawings/abstracts	3 hours	48,285	144,855
Application Data Sheet (35 U.S.C. 371 applications)	23 minutes	51,539	19,585
Transmittal Letter to the United States Receiving Office (RO/US) (PTO-1382)	15 minutes	43,457	10,864
Transmittal Letter to the United States Designated/Elected Office (DO/EO/US) Concerning a Submission Under 35 U.S.C. 371 (PTO-1390)	15 minutes	66,462	16,616
PCT/Model of Power of Attorney	15 minutes	4,829	1,207
PCT/Model of General Power of Attorney	15 minutes	483	121
Indications Relating to a Deposited Microorganism (PCT/RO/134)	15 minutes	1	0
Response to invitation to correct defects	2 hours	13,286	26,572
Request for rectification of obvious errors	30 minutes	713	357
Demand and Fee Calculation Sheet (Annex and Notes) (PCT/IPEA/401)	1 hour	1,459	1,459
Amendments (Article 34)	1 hour	1,459	1,459
Fee Authorization	15 minutes	43,457	10,864
Requests to transmit copies of international application	15 minutes	700	175
Withdrawal of international application (PCT/IB/372)	15 minutes	905	226
Translations	2 hours	21,180	42,360
Petition for Revival of an International Application for Patent Designating the U.S. Abandoned Unavoidably Under 37 CFR 1.137(a) (PTO/SB/61/PCT)	8 hours	27	216
Petition for Revival of an International Application for Patent Designating the U.S. Abandoned Unintentionally Under 37 CFR 1.137(b) (PTO/SB/64/PCT)	1 hour	1,354	1,354
Petitions to the Commissioner for international applications	4 hours	164	656
Petitions to the Commissioner in national stage examination	4 hours	4,877	19,508
Acceptance of an unintentionally delayed claim for priority (37 CFR 1.78(a)(3))	2 hours	294	588
Request for the restoration of the right of priority	3 hours	453	1,359
Totals		353,669	348,686

Estimated Total Annual Non-hour Respondent Cost Burden: $309,719,541. This collection has annual (non-hour) costs in the form of translations, drawings, fees, and postage costs.

Under the terms of the PCT, the USPTO may require documents submitted for a PCT application to be translated into English when necessary. This requirement may carry additional costs for the applicant to contract for a translation of the documents in question. The USPTO believes that the average length of the documents to be translated will be 10 pages and that it will cost approximately $150 per page for the translation, for an average translation cost of $1,500 per document. The USPTO estimates that it receives approximately 21,180 English translations annually, for a total cost of $31,770,000 per year for English translations of non-English language documents for PCT applications.

Applicants may also incur costs for drawings that are submitted as part of PCT applications. Some applicants may produce their own drawings, while others may contract out the work to various patent illustration firms. For the purpose of estimating burden for this collection, the USPTO will consider all applicants to have their drawings prepared by these firms. The USPTO estimates that drawings may cost an average of $58 per sheet to produce and that on average 11 sheets of drawings are submitted per application, for an average total cost of $638 to produce a set of drawings for an application. The USPTO expects that approximately 91% of the estimated 48,285 applications per year will have drawings filed with them, for a total of 43,939 sets of drawings with a total cost of $28,033,082 per year.

The estimated filing fees for this collection are calculated in the accompanying table. The fees listed for Requests and Demands represent an estimate of the average fees for filing the appropriate items associated with those requirements for an international application. The basic national fee under 37 CFR 1.492(a) for an international application entering the national stage is fixed at $390 ($195 for small entities). The search and examination fees under 37 CFR 1.492(b)-(c) vary depending on the outcome of the written opinion prepared by the ISA/US, the international preliminary examination report prepared by the IPEA/US, and other related factors as noted in the accompanying table. The basic national fee, search fee, examination fee as well as the fees for petitions to revive unavoidably or unintentionally abandoned international applications are discounted for small entities.

Item	Estimated annual responses	Fee amount	Estimated annual filing costs
Request and Fee Calculation Sheet (Annex and Notes) (PCT/RO/101)	48,285	$3,574.00	$172,570,590.00
Description/claims/drawings/abstracts	48,285	0.00	0.00
Application Data Sheet (35 U.S.C. 371 applications)	51,539	0.00	0.00
Transmittal Letter to the United States Receiving Office (RO/US) (PTO-1382)	43,457	0.00	0.00
Transmittal Letter to the United States Designated/Elected Office (DO/EO/US) (PTO-1390)—U.S. was the ISA or IPEA and all claims satisfy PCT Article 33(1)-(4); includes $390 basic fee, $0 search fee, and $0 examination fee	60	390.00	23,400.00
Transmittal Letter to the DO/EO/US (PTO-1390)—U.S. was the ISA or IPEA and all claims satisfy PCT Article 33(1)-(4); includes $195 basic fee, $0 search fee, and $0 examination fee for small entity	47	195.00	9,165.00
Transmittal Letter to the DO/EO/US (PTO-1390)—U.S. was the ISA; includes $390 basic fee, $120 search fee, and $250 examination fee	1,852	760.00	1,407,520.00
Transmittal Letter to the DO/EO/US (PTO-1390)—U.S. was the ISA; includes $195 basic fee, $60 search fee, and $125 examination fee for small entity	2,155	380.00	818,900.00
Transmittal Letter to the DO/EO/US (PTO-1390)—International search report prepared by other than the U.S. and provided to the USPTO or previously communicated to the U.S. by the IB; includes $390 basic fee, $500 search fee, and $250 examination fee	47,907	1,140.00	54,613,980.00
Transmittal Letter to the DO/EO/US (PTO-1390)—International search report prepared by other than the U.S. and provided to the USPTO or previously communicated to the U.S. by the IB; includes $195 basic fee, $250 search fee, and $125 examination fee for small entity	12,876	570.00	7,339,320.00
Transmittal Letter to the DO/EO/US (PTO-1390)—All other situations; includes $390 basic fee, $630 search fee, and $250 examination fee	996	1,270.00	1,264,920.00
Transmittal Letter to the DO/EO/US (PTO-1390)—All other situations; includes $195 basic fee, $315 search fee, and $125 examination fee for small entity	569	635.00	361,315.00
PCT/Model of Power of Attorney	4,829	0.00	0.00
PCT/Model of General Power of Attorney	483	0.00	0.00
Indications Relating to a Deposited Microorganism (PCT/RO/134)	1	0.00	0.00
Response to invitation to correct defects	13,286	0.00	0.00
Request for rectification of obvious errors	713	0.00	0.00
Demand and Fee Calculation Sheet (Annex and Notes) (PCT/IPEA/401)	1,459	840.00	1,225,560.00
Amendments (Article 34)	1,459	0.00	0.00
Fee Authorization	43,457	0.00	0.00
Requests to transmit copies of international application	700	0.00	0.00
Withdrawal of international application (PCT/IB/372)	905	0.00	0.00
Translations	21,180	0.00	0.00
Petition for Revival of an International Application for Patent Designating the U.S. Abandoned Unavoidably Under 37 CFR 1.137(a) (PTO/SB/61/PCT)	13	630.00	8,190.00
Petition for Revival of an International Application for Patent Designating the U.S. Abandoned Unavoidably Under 37 CFR 1.137(a), small entity (PTO/SB/61/PCT)	14	315.00	4,410.00
Petition for Revival of an International Application for Patent Designating the U.S. Abandoned Unintentionally Under 37 CFR 1.137(b) (PTO/SB/64/PCT)	740	1,890.00	1,398,600.00
Petition for Revival of an International Application for Patent Designating the U.S. Abandoned Unintentionally Under 37 CFR 1.137(b), small entity (PTO/SB/64/PCT)	614	945.00	580,230.00
Petitions to the Commissioner for international applications	164	130.00	21,320.00
Petitions to the Commissioner in national stage examination	4,877	200.00	975,400.00
Acceptance of an unintentionally delayed claim for priority (37 CFR 1.78(a)(3))	294	1,410.00	414,540.00
Request for the restoration of the right of priority	453	1,410.00	638,730.00
Totals	353,669		243,676,090.00

In addition to the filing fees listed in the table, applicants may also incur fees for late filings (for filing after thirty months from the priority date), multiple dependent claims, and lengthy applications. The fee for the late filing of a search fee, examination fee, or oath or declaration under 37 CFR 1.492(h) is $130 for large entities and $65 for small entities. The USPTO estimates that it will receive approximately 22,677 of these late payment fees for large entities and 9,331 for small entities per year, for a total of $3,554,525. The fee for the late filing of an English translation of an international application under 37 CFR 1.492(i) is $130. The USPTO estimates that it will receive approximately 2,118 of these late translation fees per year, for a total of $275,340. The fee for applications containing a multiple dependent claim is $460 for large entities and $230 for small entities. The USPTO estimates that it will receive approximately 2,946 of these multiple dependent claim fees for large entities and 1,127 for small entities per year, for a total of $1,614,370. Applications with specifications and drawings that exceed 100 pages may be subject to an application size fee of $320 (or $160 for small entities) for each additional 50 pages or fraction thereof. The USPTO estimates that it will receive approximately 2,047 of the $320 size fees from large entities and approximately 831 of the $160 size fees from small entities per year, for a total of $788,000. The total estimated fees for this collection, including filing fees and other additional fees, will be approximately $249,908,325 per year.

Customers may incur postage costs when submitting the information in this collection to the USPTO by mail. The USPTO estimates that the average first-class postage cost for a mailed submission will be 46 cents and that up to 17,683 submissions (approximately 5% of responses) will be mailed to the USPTO per year, for a total estimated postage cost of $8,134 per year.

The total annual (non-hour) respondent cost burden for this collection associated with translations, drawings, fees, and postage is estimated to be $309,719,541 per year.

IV. Request for Comments

Comments submitted in response to this notice will be summarized and/or included in the request for OMB approval. All comments will become a matter of public record.

The USPTO is soliciting public comments to:

(a) Evaluate whether the proposed 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 proposed 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.

Dated: January 29, 2013.

Susan K. Fawcett,

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