2011-4456. Proposed Information Collection Requirements Under OMB Review; Certain Patent Petitions Requiring a Fee

ACTION:

Notice; 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 currently approved 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 May 2, 2011.

ADDRESSES:

You may submit comments by any of the following methods:

• E-mail: [e-mail]. Include “0651-0059 Patent Petitions Requiring a Fee under 37 CFR 1.17(f)-(h) comment” in the subject line of the message.
• Mail: Susan K. Fawcett, Records Officer, Office of the Chief Information Officer, U.S. 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 Raul Tamayo, Legal Advisor, Office of Patent Legal Administration, U.S. Patent and Trademark Office (USPTO), P.O. Box 1450, Alexandria, VA 22313-1450; by telephone [phone]; or by e-mail at [e-mail] with “Paperwork” in the subject line.

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. Many actions taken by the USPTO during its examination of an application for patent or for reissue of a patent, or during its reexamination of a patent, are subject to review by an appeal to the Board of Patent Appeals and Interferences. For other USPTO actions, review is in the form of administrative review obtained via submission of a petition to the USPTO. USPTO petitions practice also 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.

Currently, this collection covers certain petitions which, when submitted to the USPTO by a patent applicant or owner, are required to be accompanied by the fee set forth in 37 CFR 1.17(f). The USPTO has determined that it would be beneficial to group other petitions which require a fee under 37 CFR 1.17 together with the petitions currently in this collection. Specifically, the USPTO proposes to transfer out of 0651-0031 and into this collection petitions which are required to be accompanied by the fee set forth in either 37 CFR 1.17 (g) or (h), including, for example, petitions for requests for documents in a form other than that provided by 37 CFR 1.19, petitions to make special under the accelerated examination program, petitions for express abandonment to avoid publication under 37 CFR 1.138(c), and petitions for extension of time under 37 CFR 1.136(b). For a complete listing of the items covered by this collection, please see the table in Section III of this notice.

The petitions in this collection can be submitted electronically through EFS-Web, the USPTO's web-based electronic filing system, as well as on paper. The USPTO is taking this opportunity to account for the electronic submissions in this collection.

Currently this collection has one form. There are forms associated with the petitions for extension of time under 37 CFR 1.136(b) (PTO/SB/23), petitions to make special under the accelerated examination program (PTO/SB/28), petitions for express abandonment to avoid publication under 37 CFR 1.138(c) (PTO/SB/24A), and petitions to withdraw an application from issue after payment of the issue fee under 37 CFR 1.313(c) (PTO/SB/140). Therefore, after approval, this collection will have five forms. Please note that there are some petitions to withdraw which cannot be submitted using PTO/SB/140. None of the other petitions in this collection has a form associated with it. The filing fee for petitions with no associated form may be remitted to the USPTO using PTO/SB/17p, which is titled “Petition Fee Under 37 CFR 1.17(f), (g), and (h) Transmittal.”

II. Method of Collection

By mail, facsimile, or hand delivery to the USPTO when the applicant files the various petitions. These papers can also be filed as attachments through EFS-Web. The petitions to make special under the accelerated examination program can only be filed through EFS-Web.

III. Data

OMB Number: 0651-0059.

Form Number(s): PTO/SB/17P, PTO/SB/23, PTO/SB/24a, PTO/SB/28 (EFS-Web only), and PTO/SB/140.

Type of Review: Revision of a currently approved collection.

Affected Public: Business or other for profit; non-profit institutions.

Estimated Number of Respondents: 39,015 responses per year. Of this total, the USPTO expects that 35,154 responses will be submitted through EFS-Web.

Estimated Time per Response: The USPTO estimates that it will take approximately 5 minutes (0.08 hours) to 12 hours to complete the items in this collection, depending on the petition. This includes time to gather the necessary information, create the documents, and submit the completed request to the USPTO. The USPTO calculates that, on balance, it takes the same amount of time to gather the necessary information, prepare the petitions and the fee transmittal form, and submit them to the USPTO, whether the applicant submits the petition in paper form or electronically.

Estimated Total Annual Respondent Burden Hours: 41,907 hours.

Estimated Total Annual Respondent Cost Burden: $13,616,730. The USPTO expects that attorneys will complete all of the items in this collection, with the exception of the petitions for requests for documents in a form other than that provided by 37 CFR 1.19 and petitions for express abandonment to avoid publication under 37 CFR 1.138(c). The USPTO expects that these petitions will be completed by para-professionals. Using the professional hourly rate of $325 for attorneys in private firms, and an hourly rate of $122 for the para-professionals, the USPTO estimates $13,616,730 per year for salary costs associated with respondents.

Item	Estimated time for response	Estimated annual responses	Estimated annual burden hours
Petitions (corresponding to the fee) under 37 CFR 1.17(f) include: 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	4 hours	400	1,600
EFS-Web Petitions (corresponding to the fee) under 37 CFR 1.17(f)	4 hours	3,200	12,800
Petitions (corresponding to the fee) under 37 CFR 1.17(g): 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	2 hours	400	800
EFS-Web Petitions (corresponding to the fee) under 37 CFR 1.17(g)	2 hours	3,500	7,000
Petitions (corresponding to the fee) under 37 CFR 1.17(h): Petition for Accepting Color Drawings or Photographs; Petition for Entry of a Model or Exhibit; Petition to Withdraw an Application from Issue PTO/SB/140; Petition to Defer Issuance of a Patent	1 hour	1,100	1,100
EFS-Web Petitions (corresponding to the fee) under 37 CFR 1.17(h)	1 hour	10,300	10,300
Petitions for Requests for Documents in a Form Other than that Provided by 37 CFR 1.19	1 hour	5	5
EFS-Web Petitions for Requests for Documents in a Form Other than that Provided by 37 CFR 1.19	1 hour	50	50
Petitions to Make Special Under Accelerated Examination Program PTO/SB/28 (EFS-Web Only)	12 hours	550	6,600
Petitions for Express Abandonment to Avoid Publication Under 37 CFR 1.138(c) PTO/SB/24a	12 minutes	50	10
EFS-Web Petitions for Express Abandonment to Avoid Publication Under 37 CFR 1.138(c)	12 minutes	500	100
Petition for Extension of Time Under 37 CFR 1.136(b) PTO/SB/23	30 minutes	6	3
EFS-Web Petition for Extension of Time Under 37 CFR 1.136(b)	30 minutes	54	27
Petition Fee under 37 CFR 1.17(f), (g), and (h) Transmittal PTO/SB/17P	5 minutes	1,900	152
EFS-Web Petition Fee under 37 CFR 1.17(f), (g), and (h) Transmittal	5 minutes	17,000	1,360
TOTALS		39,015	41,907

Estimated Total Annual Non-Hour Respondent Cost Burden: $3,875,424.

There are no capital start-up, operation, or maintenance costs associated with this information collection. There are, however, postage costs and filing fees.

The public may submit the petitions in this collection to the USPTO by mail through the United States Postal Service. All correspondence may include a certificate of mailing for each piece of correspondence enclosed, stating the date of deposit or transmission to the USPTO in order to receive credit for timely filing. The USPTO has estimated that the vast majority of these submissions will weigh no more than 13 oz. Therefore, the USPTO is conservatively estimating that these submissions will be mailed in large mailing envelopes by first-class postage at a rate of $2.92. Postage for the certificates of mailing themselves are not calculated into this estimate as they are included with the individual pieces of correspondence that are being deposited with the United States Postal Service. The USPTO estimates that 1,961 petitions and 1,900 fee transmittal forms will be mailed to the USPTO per year, for a total postage cost of $11,274.

This collection has a minimum of $3,864,150 in associated filing fees, as shown in the accompanying table:

Item	Responses (a)	Filing Fee ($) (b)	Total non-hour cost burden (a × b) (c)
Petitions (corresponding to the fee) under 37 CFR 1.17(f) include: 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	400	$400.00	$160,000.00
EFS-Web Petitions (corresponding to the fee) under 37 CFR 1.17(f)	3,200	400.00	1,280,000.00
Petitions (corresponding to the fee) under 37 CFR 1.17(g): 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	400	200.00	80,000.00
EFS-Web Petitions (corresponding to the fee) under 37 CFR 1.17(g)	3,500	200.00	700,000.00
Petitions (corresponding to the fee) under 37 CFR 1.17(h): Petition for Accepting Color Drawings or Photographs; Petition for Entry of a Model or Exhibit; Petition to Withdraw an Application from Issue PTO/SB/140; Petition to Defer Issuance of a Patent	1,100	130.00	143,000.00
EFS-Web Petitions (corresponding to the fee) under 37 CFR 1.17(h)	10,300	130.00	1,339,000.00
Petitions for Requests for Documents in a Form Other than that Provided by 37 CFR 1.19	5	130.00	650.00
EFS-Web Petitions for Requests for Documents in a Form Other than that Provided by 37 CFR 1.19	50	130.00	6,500.00
Petitions to Make Special Under Accelerated Examination Program (EFS-Web only) PTO/SB/28 (EFS-Web only)	550	130.00	71,500.00
Petitions for Express Abandonment to Avoid Publication Under 37 CFR 1.138(c) PTO/SB/24a	50	130.00	6,500.00
EFS-Web Petitions for Express Abandonment to Avoid Publication Under 37 CFR 1.138(c)	500	130.00	65,000.00
Petition for Extension of Time Under 37 CFR 1.136(b) PTO/SB/23	6	200.00	1,200.00
EFS-Web Petition for Extension of Time Under 37 CFR 1.136(b)	54	200.00	10,800.00
Petition Fee under 37 CFR 1.17(f), (g), and (h) Transmittal PTO/SB/17	1,900	None	0.00
EFS-Web Petition Fee under 37 CFR 1.17(f), (g), and (h) Transmittal	17,000	None	0.00
TOTALS	39,015		3,864,150.00

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 $3,875,424.

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 will also become a matter of public record.

Dated: February 24, 2011.

Susan K. Fawcett,

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