2014-11550. Patent Petitions Related to Application and Reexamination Processing Fees

ACTION:

Notice.

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.

DATES:

Written comments must be submitted on or before July 21, 2014.

ADDRESSES:

You may submit comments by any of the following methods:

• Email: [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 email 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.

This collection specifically relates to petitions that must be accompanied by the petition fees set forth in 37 CFR 1.17(f), (g), or (h). Except for the petitions to make special under the Accelerated Examination program, which must be submitted electronically through EFS-Web, the USPTO's Web-based electronic filing system, the petitions in this collection either can be submitted electronically through EFS-Web or on paper.

II. Method of Collection

As attachments through EFS-Web when the applicant files the various petitions. These papers can also be filed by mail, facsimile, or hand delivery, except that 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: 33,119 responses per year. Of this total, the USPTO expects that 30,569 responses will be submitted through EFS-Web and 2,550 responses submitted on paper.

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: 35,596 hours.

Estimated Total Annual Respondent Cost Burden: $ 13,832,658. 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 $389 for attorneys in private firms, and an hourly rate of $125 for the para-professionals, the USPTO estimates $13,832,658 per year for total hourly 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)	4 hours	300	1200.00
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
EFS-Web Petitions (corresponding to the fee) under 37 CFR 1.17(f)	4 hours	2,800	11200.00
Petitions (corresponding to the fee) under 37 CFR 1.17(g):
Petition to Access an Assignment Record	2 hours	300	600.00
Petition for Access to an Application
Petition for Expungement and Return of Information
Petition to Suspend Action in an Application
EFS-Web Petitions (corresponding to the fee) under 37 CFR 1.17(g)	2 hours	3,000	6000.00
Petitions (corresponding to the fee) under 37 CFR 1.17(h):
Petition for Accepting Color Drawings or Photographs	1 hour	900	900.00
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
EFS-Web Petitions (corresponding to the fee) under 37 CFR 1.17(h)	1 hour	8,800	8800.00
Petitions for Requests for Documents in a Form Other than that Provided by 37 CFR 1.19	1 hour	5	5.00
EFS-Web Petitions for Requests for Documents in a Form Other than that Provided by 37 CFR 1.19	1 hour	40	40.00
Petitions to Make Special Under Accelerated Examination Program PTO/SB/28 (EFS-Web Only)	12 hours	450	5400.00
Petitions for Express Abandonment to Avoid Publication Under 37 CFR 1.138(c) PTO/SB/24a	12 minutes	40	8.00
EFS-Web Petitions for Express Abandonment to Avoid Publication Under 37 CFR 1.138(c)	12 minutes	425	85.00
Petition for Extension of Time Under 37 CFR 1.136(b) PTO/SB/23	30 minutes	5	2.50
EFS-Web Petition for Extension of Time Under 37 CFR 1.136(b)	30 minutes	54	27.00
Petition Fee under 37 CFR 1.17(f), (g), and (h) Transmittal PTO/SB/17P	5 minutes	1,000	83.00
EFS-Web Petition Fee under 37 CFR 1.17(f), (g), and (h) Transmittal	5 minutes	15,000	1245.00
Totals		33,119	35,596

Estimated Total Annual Non-Hour Respondent Cost Burden: $9,950. There are no capital start-up, operation, or maintenance costs associated with this information collection.

The forms included in this collection do have filing fees associated with them, but the filing fees are themselves accounted for in another collection (0651-0072, AIA Patent Fees Adjustment) and included as a part of this collection.

Postage constitutes the non-hourly cost burdens for this collection. Except for the petitions to make special under the Accelerated Examination program, which must be submitted electronically through EFS-Web, the public may submit the petitions in this collection to the USPTO by mail through the United States Postal Service. The USPTO estimates that the majority of mailed submissions will be sent in a large envelope via first class postage; rated at $3.90. The USPTO estimates that 2,550 petitions and fee transmittal forms will be mailed to the USPTO per year, for a total postage cost of $9,950.

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: May 14, 2014.

Susan K. Fawcett,

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