2019-08026. Patent Cooperation Treaty

ACTION:

Proposed collection; comment request.

SUMMARY:

The United States Patent and Trademark Office (USPTO), as required by the Paperwork Reduction Act of 1995, invites comments on a proposed extension of an existing collection: 0651-0021 (Patent Cooperation Treaty).

DATES:

Written comments must be submitted on or before June 21, 2019.

ADDRESSES:

You may submitted comments by any of the following methods:

• Email: [e-mail]. Include “0651-0021 comment” in the subject line of the message.
• Federal Register Portal: http://www.regulations.gov.
• Mail: Marcie Lovett, Chief, Records and Information Governance Branch, Office of the Chief Administrative Officer, United States Patent and Trademark Office, P.O. Box 1450, Alexandria, VA 22313-1450.

FOR FURTHER INFORMATION CONTACT:

Requests for additional information should be directed to Rafael Bacares, 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 571-272-3276; or by email at [e-mail] with “0651-0021 comment” in the subject line. 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 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 issue international search reports (ISR) and the written opinions of international applications. The USPTO also issues international preliminary reports on patentability (IPRP Chapter II) when acting as an International Preliminary Examining Authority (IPEA).

II. Method of Collection

By mail, hand delivery, or electronic submission to the USPTO.

III. Data

OMB Number: 0651-0021.

IC Instruments and Forms: PCT/IB/372; PCT/IPEA/401; PCT/RO/101; PCT/RO/134; PTO-1382; PTO-1390; PTO/SB/64/PCT.

Type of Review: Extension of a currently approved collection.

Affected Public: Individuals or households; business or other for-profits; and not-for-profit institutions.

Estimated Number of Respondents: 431,135 responses per year.

Estimated Time per Response: The USPTO estimates that it will take the public between 15 minutes (0.25 hours) and 4 hours to gather the necessary information, prepare the appropriate form or document, and submit the information to the USPTO.

Estimated Total Annual Respondent Burden Hours: 352,769.78 hours.

Estimated Total Annual Respondent (Hourly) Cost Burden: $154,513,163.64. The USPTO expects that an attorney will complete the materials in this collection. The professional hourly rate for intellectual property attorneys in private firms is $438. The rate is established by estimates in the 2017 Report on the Economic Survey, published by the Committee on Economics of Legal Practice of the American Intellectual Property Law Association. Using this hourly rate, the USPTO estimates that the total respondent cost burden for this collection is $438 per year.

IC No.	Item	Estimated time	Estimated responses	Estimated burden	Rate	Estimates total cost
		(a)	(b)	(c) = (a) × (b)	(d)	(e) = (c) × (d)
1	Request and Fee Calculation Sheet (Annex and Notes)	1	55,177	55,177.00	$438.00	$24,167,526.00
2	Description/claims/drawings/abstracts	3	55,177	165,531.00	438.00	72,502,578.00
3	Application Data Sheet (35 U.S.C. 371 applications)	0.38 (23 minutes)	104,281	39,626.78	438.00	17,356,529.64
4	Transmittal Letter to the United States Receiving Office (RO/US)	0.25 (15 minutes)	49,659	12,414.75	438.00	5,437,660.50
5	Transmittal Letter to the United States Designated/Elected Office (DO/EO/US) Concerning a Submission Under 35 U.S.C. 371	0.25 (15 minutes)	86,080	21,520.00	438.00	9,425,760.00
6	PCT/Model of Power of Attorney	0.25 (15 minutes)	5,518	1,379.50	438.00	604,221.00
7	PCT/Model of General Power of Attorney	0.25 (15 minutes)	551	137.75	438.00	60,334.50
8	Indications Relating to a Deposited Microorganism	0.25 (15 minutes)	10	2.50	438.00	1,095.00
9	Response to invitation to correct defects	2	15,500	31,000.00	438.00	13,578,000.00
10	Request for rectification of obvious errors	0.50 (30 minutes)	921	460.50	438.00	201,699.00
11	Demand and Fee Calculation Sheet (Annex and Notes)	1	667	667.00	438.00	292,146.00
12	Amendments (Article 34)	1	429	429.00	438.00	187,902.00
13	Fee Authorization	0.25 (15 minutes)	49,659	12,414.75	438.00	5,437,660.50
14	Requests to transmit copies of international application	0.25 (15 minutes)	864	216.00	438.00	94,608.00
15	Withdrawal of international application	0.25 (15 minutes)	1,369	342.25	438.00	149,905.50
16	English Translations after thirty months from priority date	2	2,475	4,950.00	438.00	2,168,100.00
17	Petition for Revival of an International Application for Patent Designating the U.S. Abandoned Unintentionally Under 37 CFR 1.137(a)	1	928	928.00	438.00	406,464.00
18	Petitions to the Commissioner for international applications	4	87	348.00	438.00	154,424.00
19	Petitions to the Commissioner in national stage examination	4	751	3,004.00	438.00	1,315,752.00
20	Acceptance of an unintentionally delayed claim for priority (37 CFR 1.78(a)(3))	2	875	1,750.00	438.00	766,500.00
21	Request for the restoration of the right of priority	3	157	471.00	438.00	206,298.00
Totals			431,135	352,769.78		154,513,163.64

Estimated Total Annual (Non-hour) Respondent Cost Burden: $280,004,662.50. This collection has annual (non-hour) costs in the form of filling fees, translations, drawings, and postage costs.

Filing Fees

This chart provides an estimate of the fees associated with this collection and details the various entity size costs associated with each fee.

IC No.	Item	Responses	Fees	Total fee amount
		(a)	(b)	(c) = (a) × (b)
1	Request and Fee Calculation Sheet (Annex and Notes)	55,177	$1,254.00	$69,191,958.00
2	[PCT National Stage] Claims—extra independent (over three) (Large entity)	6,549	460.00	3,012,540.00
2	[PCT National Stage] Claims—extra independent (over three) (Small entity)	2,298	230.00	528,540.00
2	[PCT National Stage] Claims—extra independent (over three) (Micro entity)	99	115.00	11,385.00
2	[PCT National Stage] Claims—extra total (over 20) (Large entity)	9,145	100.00	914,500.00
2	[PCT National Stage] Claims—extra total (over 20) (Small entity)	5,347	50.00	264,350.00
2	[PCT National Stage] Claims—extra total (over 20) (Micro entity)	238	25.00	5,950.00
2	[PCT National Stage] Claim—multiple dependent (Large entity)	650	820.00	533,000..00
2	[PCT National Stage] Claim—multiple dependent (Small entity)	361	410.00	148,010.00
2	[PCT National Stage] Claim—multiple dependent (Micro entity)	37	205.00	7,585.000
3	National Stage Application Size Fee—for each additional 50 sheets that exceed 100 sheets (Large entity)	2,476	400.00	990,400.00
3	National Stage Application Size Fee—for each additional 50 sheets that exceed 100 sheets (Small entity)	1,590	200.00	318,000.00
3	National Stage Application Size Fee—for each additional 50 sheets that exceed 100 sheets (Micro entity)	23	100.00	2,300.00
4	Transmittal fee (Large entity)	36,489	240.00	8,757,360.00
4	Transmittal fee (Small entity)	17,603	120.00	2,112,360.00
4	Transmittal fee (Micro entity)	1,085	60.00	65,100.00
11	Demand and Fee Calculation Sheet (Annex and Notes)	667	213.00	142,071.00
14	Transmitting application to Intl. Bureau to act as receiving office (Large entity)	425	240.00	102,000.00
14	Transmitting application to Intl. Bureau to act as receiving office (Small entity)	289	120.00	34,680
14	Transmitting application to Intl. Bureau to act as receiving office (Micro entity)	32	60.00	1,920.00
16	English translation after thirty months from priority date (Large entity)	1,485	140.00	207,900.00
16	English translation after thirty months from priority date (Small entity)	914	70.00	63,980.00
16	English translation after thirty months from priority date (Micro entity)	76	35.00	2,660.00
18	Search fee—regardless of whether there is a corresponding application (see 35 U.S.C. 361(d) and PCT Rule 16) (Large entity)	7,576	140.00	1,060,640.00
18	Search fee—regardless of whether there is a corresponding application (see 35 U.S.C. 361(d) and PCT Rule 16) (Small entity)	12,837	70.00	898,590.00
18	Search fee—regardless of whether there is a corresponding application (see 35 U.S.C. 361(d) and PCT Rule 16) (Micro entity)	1,073	35.00	3,745.00
18	Supplemental search fee when required, per additional invention (Large entity)	248	2,080.00	515,840.00
18	Supplemental search fee when required, per additional invention (Small entity)	366	1,040.00	380,640
18	Supplemental search fee when required, per additional invention (Micro entity)	44	520.00	22,880.00
19	Basic National Stage Fee (Large entity)	71,090	300.00	21,327,000.00
19	Basic National Stage Fee (Small entity)	22,965	150.00	3,444,750.00
19	Basic National Stage Fee (Micro entity)	1,527	75.00	114,525.00
19	National Stage Search Fee—U.S. was the ISA or IPEA and all claims satisfy PCT Article 33(1)-(4)	674	0.00	0.00
19	National Stage Search Fee —U.S. was the ISA (Large entity)	2,197	140.00	307,580.00
19	National Stage Search Fee—U.S. was the ISA (Small entity)	4,773	70.00	334,110.00
19	National Stage Search Fee—U.S. was the ISA (Micro entity)	275	35.00	9,625.00
19	National Stage Search Fee—search report prepared and provided to USPTO (Large entity)	65,507	520.00	34,063,640.00
19	National Stage Search Fee—search report prepared and provided to USPTO (Small entity)	16,660	260.00	4,331,600.00
19	National Stage Search Fee—search report prepared and provided to USPTO (Micro entity)	1,056	130.00	137,280.00
19	National Stage Examination Fee—U.S. was the ISA or IPEA and all claims satisfy PCT Article 33(1)-(4)	674	0.00	0.00
19	National Stage Search Fee—all other situations (Large entity)	3,156	660.00	2,082,960.00
19	National Stage Search Fee—all other situations (Small entity)	1,110	330.00	366,300.00
19	National Stage Search Fee—all other situations (Micro entity)	174	165.00	28,710.00
19	National Stage Examination Fee—all other situations (Large entity)	70,771	760.00	53,785,960.00
19	National Stage Examination Fee—all other situations (Small entity)	22,437	380.00	8,526,060.00
19	National Stage Examination Fee—all other situations (Micro entity)	1,480	190.00	281,200.00
19	Preliminary examination fee—U.S. was the ISA (Large entity)	205	600.00	123,000.00
19	Preliminary examination fee—U.S. was the ISA (Small entity)	278	300.00	83,400.00
19	Preliminary examination fee—U.S. was the ISA (Micro entity)	44	150.00	6,600.00
19	Preliminary examination fee—U.S. was not the ISA (Large entity)	102	760.00	77,520.00
19	Preliminary examination fee—U.S. was not the ISA (Small entity)	39	380.00	14,820.00
19	Preliminary examination fee—U.S. was not the ISA (Micro entity)	1	190.00	190.00
19	Supplemental examination fee per additional invention (Large entity)	2	600.00	1,200.00
19	Supplemental examination fee per additional invention (Small entity)	2	300.00	600.00
19	Supplemental examination fee per additional invention (Micro entity)	1	150.00	150.00
19	Search fee, examination fee or oath of declaration after thirty months from priority date (Large entity)	22,466	2,080.00	46,729,280.00
19	Search fee, examination fee or oath of declaration after thirty months from priority date (Small entity)	10,550	1,040.00	10,972,000.00
19	Search fee, examination fee or oath of declaration after thirty months from priority date (Micro entity)	259	520.00	134,680.00
20	Acceptance of an unintentionally delayed claim for priority, or for filing a request for the restoration of the right of priority	1,032	2,000.00	2,064,000.00
Totals		535,399		279,652,624.00

Translations and Drawings

Applicants entering the national stage in the U.S. are required to file an English translation of the international application if the international application was filed in another language and was not published under PCT Article 21(2) in English. A processing fee is required for accepting an English translation after 30 months from the priority date. This requirement may carry additional costs for the applicant to contract for a translation of the documents in questions. According to the PCT Applicant's Guide—National Phase—National Chapter—US, put out by WIPO, the average cost for such a translation is $140. The USPTO estimates that it received approximately 2,475 English translations after 30 months from the priority date annually, for a total of $346,500 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. According to the PCT Applicant's Guide—National Phase—National Chapter—US, drawings may cost an average of $400 to produce. The USPTO expects that it will receive 3 sets of drawings for a total of $1,200 per year.

Postage Costs

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 $0.50 and that approximately 7,440 submissions (approximately 2% of the total responses) will be mailed to the USPTO per year, for a total estimated postage cost of $4,298.50 per year.

The USPTO estimates that the total annual (non-hour) cost burden for this collection, in the form of translations ($346,500), drawings ($1,200), filing fees ($279,652,624), and postage costs ($4,298.50), is $280,004,622.50 per year.

IV. Request for Comment

Comments submitted in response to this notice will be summarized or included in the request for OMB approval of this information collection; they also will become a matter of public record.

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.

Marcie Lovett,

Chief, Records and Information Governance Branch, OCAO, United States Patent and Trademark Office.