E6-8241. Patent Processing (Updating)

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 July 31, 2006.

ADDRESSES:

You may submit comments by any of the following methods:

E-mail: [e-mail]. Include “0651-0031 comment” in the subject line of the message.

Fax: [phone], marked to the attention of Susan Brown.

Mail: Susan K. Brown, Records Officer, Office of the Chief Information Officer, Architecture, Engineering and Technical Services, Data Architecture and Services Division, 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 Robert J. Spar, Director, Office of Patent Legal Administration, U.S. Patent and Trademark Office, P.O. Box 1450, Alexandria, VA 22313-1450; by telephone at 571-272-7700; or by e-mail at [e-mail].

SUPPLEMENTARY INFORMATION:

I. Abstract

The United States Patent and Trademark Office (USPTO) is required by 35 U.S.C. 131 to examine an application for patent and, when appropriate, issue a patent. Also, the USPTO 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 (“eighteen-month publication”). Certain situations may arise which require that additional information be supplied in order for the USPTO to further process the patent or application. The USPTO administers the statutes through various sections of the rules of practice in 37 CFR part 1.

The information in this collection can be used by the USPTO to continue the processing of the patent or application, to ensure that applicants are complying with the patent regulations, and to aid in the prosecution of the application.

The USPTO is adding two new forms into this collection. PTO/SB/33, Pre-Appeal Brief Request for Review, is a new optional procedure that is intended to spare applicants the added time and expense of preparing an appeal brief for an application that ultimately may be categorized as “not in condition for appeal.”

Also new is form PTO/SB/28, Petition to Make Special Under Accelerated Examination Program. The requirement for the petition is already approved in the collection; however, the response time has been increased from 1 hour to 12 hours. Applicants who choose to participate in this optional procedure in order to receive the benefit of accelerated examination will have to share in the examination burden to a greater extent. In return, such applicants will receive the benefit of an early patentability determination for their claimed invention.

A previously overlooked requirement, the Request for Corrected Filing Receipt, is also being added into the collection, in both paper and electronic formats. Forms for this requirement are currently under development.

There are 41 forms associated with this collection.

II. Method of Collection

By mail, facsimile, or hand delivery to the USPTO. The eIDS (electronic information disclosure statements), the electronic filing system (EFS) copy of the application for publication, and the request for corrected filing receipt may be submitted electronically over the Internet.

III. Data

OMB Number: 0651-0031.

Form Number(s): PTO/SB/08/08a/08b, PTO/SB/17i, PTO/SB/17P; PTO/SB/21-28, PTO/SB/24A, PTO/SB/24B, PTO/SB/30-33, PTO/SB/35-39, PTO/SB/42-43, PTO/SB/61-64, PTO/SB/64a, PTO/SB/67-68, PTO/SB/91-92, PTO/SB/96-97, PTO-2053-A/B, PTO-2054-A/B, PTO-2055-A/B, PTOL/413A.

Type of Review: Revision of a currently approved collection.

Affected Public: Individuals or households; business or other for-profit; not-for-profit institutions; farms; the Federal Government; and state, local or tribal governments.

Estimated Number of Respondents: 2,604,029 responses per year.

Estimated Time Per Response: The USPTO estimates that it will take the public between 1 minute and 48 seconds (0.03 hours) to 12 hours (12.0 hours), depending upon the complexity of the situation, to gather, prepare, and submit the various documents in this information collection.

Estimated Total Annual Respondent Burden Hours: 3,157,840 hours per year.

Estimated Total Annual Respondent Cost Burden: $504,711,200 per year. The USPTO expects that the transmittal form; the petition for extension of time under 37 CFR 1.136(a); express abandonment under 1.138; express abandonment to avoid publication under 1.138(c); requests to access, inspect and copy; deposit account order form; certificates of mailing/transmission; electronic filing system (EFS) copy of application for publication; the copy of the applicant or patentee's record of the application; the request for voluntary publication or republication; the petition for request for documents in a form other than that provided by 1.19; the request for processing of replacement drawings; and the request for corrected filing receipt will be prepared by paraprofessionals. Using the paraprofessional rate of $90 per hour, the USPTO estimates that the respondent cost burden for these items will be $191,469,600. The USPTO estimates that the remaining items in this collection will be prepared by associate attorneys in private firms. Using the professional hourly rate of $304 per hour for associate attorneys in private firms, the USPTO estimates $313,241,600 per year for salary costs associated with respondents for the other items in this information collection. The total respondent cost burden is estimated to be $504,711,200 per year.

Item	Estimated time for response	Estimated annual responses	Estimated annual burden hours
Information Disclosure Statements—Paper	2 hours	423,000	846,000
eIDS (Information Disclosure Statements)	2 hours	47,000	94,000
Transmittal Form	2 hours	1,039,500	2,079,000
Petition for Extension of Time under 37 CFR 1.136(a)	6 minutes	189,000	18,900
Petition for Extension of Time under 37 CFR 1.136(b)	30 minutes	54	27
Express Abandonment Under 37 CFR 1.138	12 minutes	13,825	2,765
Petition for Express Abandonment to Avoid Publication Under 1.138(c)	12 minutes	500	100
Disclaimers	12 minutes	15,000	3,000
Request for Expedited Examination of a Design Application	6 minutes	130	13
Notice of Appeal	12 minutes	16,500	3,300
Information Disclosure Citation in a Patent	2 hours	1,830	3,660
Petition for Revival of an Application for Patent Abandoned Unavoidably	8 hours	585	4,680
Petition for Revival of an Application for Patent Abandoned Unintentionally	1 hour	6,950	6,950
Petition for Revival of an Application for Patent Abandoned for Failure to Notify the Office of a Foreign or International Filing	1 hour	2,400	2,400
Requests to Access, Inspect and Copy	12 minutes	18,650	3,730
Deposit Account Order Form	12 minutes	1,160	232
Certificates of Mailing/Transmission	1 minute, 48 seconds	590,000	17,700
Statement Under 37 CFR 3.73(b)	12 minutes	19,450	3,890
Non-publication Request	6 minutes	31,500	3,150
Rescission of Previous Non-publication Request (35 U.S.C. § 122(b)(2)(B)(ii)) and, if applicable, Notice of Foreign Filing (35 U.S.C. § 122(b)(2)(B)(iii))	6 minutes	525	53
Electronic Filing System (EFS) Copy of Application for Publication	2 hours, 30 minutes	1,000	2,500
Copy of File Content Showing Redactions	4 hours	12	48
Copy of the Applicant or Patentee's Record of the Application (including copies of the correspondence, list of the correspondence, and statements verifying whether the record is complete or not)	1 hour	235	235
Request for Continued Examination (RCE) Transmittal	12 minutes	56,000	11,200
Request for Oral Hearing Before the Board of Patent Appeals and Interferences	12 minutes	750	150
Request for Deferral of Examination 37 CFR 1.103(d)	12 minutes	53	11
Request for voluntary publication or republication	12 minutes	70	14
Applicant Initiated Interview Request Form	21 minutes	1,600	560
Petition for Request for Documents in a Form Other Than That Provided by 1.19	1 hour	50	50
Petitions under 37 CFR 1.17(f) include:	4 hours	3,300	13,200
Petition to Accord a Filing Date under 1.57(a)
Petition to Accord a Filing Date under 1.153(e)
Petition for Decision on a Question Not Specifically Provided For
Petition to Suspend the Rules
Petitions under 37 CFR 1.17(g) include:	2 hours	3,600	7,200
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
Petitions under 37 CFR 1.17(h) include existing petition not covered in any collection:	1 hour	10,400	10,400
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
Request for Processing of Replacement Drawings to Include the Drawings in Any Patent Application Publication	1 hour	50	50
Processing Fee Under 37 CFR 1.17(i) Transmittal	5 minutes	500	40
Petition Fee Under 37 CFR 1.17(f),(g) and (h) Transmittal	5 minutes	17,300	1,384
Request to Retrieve Electronic Priority Application(s) Under 37 CFR 1.55(d)	8 minutes	36,800	4,784
Authorization to Permit Access to Application by Participating Offices Under 37 CFR 1.14(h)	6 minutes	21,000	2,100
Petition for Express Abandonment to Obtain a Refund	12 minutes	3,000	600
Pre-Appeal Brief Request for Review	30 minutes	3,200	1,600
Request for Corrected Filing Receipt	5 minutes	25,000	2,000
Request for Corrected Filing Receipt (electronic)	5 minutes	2,050	164
Petition to Make Special Under Accelerated Examination Program	12 hours	500	6,000
Total		2,604,029	3,157,840

Estimated Total Annual (non-hour) Respondent Cost Burden: $156,933,477. There are no capital start-up or maintenance costs associated with this information collection. However, this collection does have record keeping costs, postage costs, and filing fees.

When submitting the information in this collection electronically, the applicant is strongly urged to retain a copy of the file submitted to the USPTO as evidence of authenticity and to keep the acknowledgment receipt as clear evidence that the file was received by the USPTO on the date noted. The USPTO estimates that it will take 5 seconds (0.001 hours) to print and retain a copy of the eIDS, the EFS application for publication and the request for corrected filing receipt submissions, and that approximately 50,050 submissions per year (47,000 eIDS, 1,000 EFS, and 2,050 corrected filing receipt) will use this option, for a total of 50 hours per year for printing this receipt. Using the paraprofessional rate of $90 per hour, the USPTO estimates that the record keeping cost associated with this collection will be $4,500 per year.

The public may submit the paper forms and petitions in this collection to the USPTO by mail through the United States Postal Service. If the submission is sent by first-class mail, the public may also include a signed certification of the date of mailing in order to receive credit for timely filing. Therefore, the USPTO estimates that up to 2,553,979 submissions per year may be mailed to the USPTO at an average first-class postage cost of 63 cents, for a total postage cost of $1,609,007.

There is also annual (non-hour) cost burden in the way of filing fees associated with this collection. The total estimated filing costs of $155,319,970 are calculated in the accompanying chart:

Item	Responses	Filing fee ($)	Total non-hour cost burden (a) × (b)
	(a)	(b)	(c)
Submission of an Information Disclosure Statement (IDS) under 37 CFR 1.97(c) or (d)	42,200	$180.00	$7,596,000.00
Transmittal forms	1,039,500	None	0
One month extension of time under 37 CFR 1.136(a)	60,270	120.00	7,232,400.00
One month extension of time under 37 CFR 1.136(a) (small entity)	23,503	60.00	1,410,180.00
Two month extension of time under 37 CFR 1.136(a)	31,225	450.00	14,051,250.00
Two month extension of time under 37 CFR 1.136(a) (small entity)	12,891	225.00	2,900,475.00
Three month extension of time under 37 CFR 1.136(a)	32,724	1,020.00	33,378,480.00
Three month extension of time under 37 CFR 1.136(a) (small entity)	16,413	510.00	8,370,630.00
Four month extension of time under 37 CFR 1.136(a)	3,370	1,590.00	5,358,300.00
Four month extension of time under 37 CFR 1.136(a) (small entity)	2,267	795.00	1,802,265.00
Five month extension of time under 37 CFR 1.136(a)	2,163	2,160.00	4,672,080.00
Five month extension of time under 37 CFR 1.136(a) (small entity)	4,174	1,080.00	4,507,920.00
Extension of time under 37 CFR 1.136(b)	54	None	0
Express Abandonment under 37 CFR 1.138	13,825	None	0
Petition for express abandonment to avoid publication under 37 CFR 1.138(c))	500	130.00	65,000.00
Statutory Disclaimer	11,250	130.00	1,462,500.00
Statutory Disclaimer (small entity)	3,750	65.00	243,750.00
Requests for Expedited Examination of a design application	130	900.00	117,000.00
Notice of Appeal	12,570	500.00	6,285,000.00
Notice of Appeal (small entity)	3,930	250.00	982,500.00
Information Disclosure Citations	1,830	None	0
Petition to Revive Unavoidably Abandoned Application	250	500.00	125,000.00
Petition to Revive Unavoidably Abandoned Application (small entity)	335	250.00	83,750.00
Petition to Revive Unintentionally Abandoned Application	3,700	1,500.00	5,550,000.00
Petition to Revive Unintentionally Abandoned Application (small entity)	3,250	750.00	2,437,500.00
Petition for Revival of an Application for Patent Abandoned for Failure to Notify the Office of a Foreign or International Filing	1,440	1,300.00	1,872,000.00
Petition for Revival of an Application for Patent Abandoned for Failure to Notify the Office of a Foreign or International Filing—Small Entity	960	650.00	624,000.00
Requests to Access, Inspect and Copy	18,650	None	0
Deposit Account Order Form	1,160	None	0
Certificates of Mailing/Transmission	590,000	None	0
Statement Under 37 CFR 3.73(b)	19,450	None	0
Non-publication Request	31,500	None	0
Rescission of Non-publication Request	525	None	0
Electronic Filing System (EFS) Copy of Application for Publication	1,000	None	0
Electronic Filing System (EFS) Copy of Application for Voluntary Publication or Republication	70	430.00	30,100.00
Copy of File Content Showing Redactions	12	None	0
Copy of the Applicant or Patentee's Record of the Application (including copies of the correspondence, list of the correspondence, and statements verifying whether the record is complete or not)	235	None	0
Request for Continued Examination (RCE) Transmittal	44,800	790.00	35,392,000.00
Request for Continued Examination (RCE) Transmittal (small entity)	11,200	395.00	4,424,000.00
Request for an Oral Hearing	600	1,000.00	600,000.00
Request for an Oral Hearing (small entity)	150	500.00	75,000.00
Processing fee for deferral of examination	53	430.00	22,790.00
Request for voluntary publication or republication	70	130.00	9,100.00
Applicant initiated interview request form	1,600	None	0
Petition for request for documents in a form other than that provided by 1.19	50	130.00	6,500.00
Petitions under 37 CFR 1.17(f) include:	3,300	400.00	1,320,000.00
Petition to Accord a Filing Date under 1.57(a)
Petition to Accord a Filing Date under 1.153(e)
Petition for Decision on a Question Not Specifically Provided For
Petition to Suspend the Rules
Petitions under 37 CFR 1.17(g) include:	3,600	200.00	720,000.00
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
Petitions under 37 CFR 1.17(h) include existing petition not covered in any collection:	10,400	130.00	1,352,000.00
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
Request for processing of replacement drawings to include the drawings in any patent application publication	50	130.00	6,500.00
Processing fee under 37 CFR 1.17(I) transmittal	500	130.00	65,000.00
Petition Fee Under 37 CFR 1.17(f),(g) and (h) Transmittal	17,300	None	0
Request to retrieve electronic priority application(s) under 37 CFR 1.55(d)	36,800	None	0
Authorization to permit access to application by participating offices under 37 CFR 1.17(h)	21,000	None	0
Petition for express abandonment to obtain a refund	3,000	None	0
Pre-Appeal Brief Request for Review (filed with the Notice of Appeal)	2,400	None	0
Pre-Appeal Brief Request for Review (filed later than the Notice of Appeal)	800	130.00	104,000.00
Correction Request Form	25,000	None	0
Correction Request Form (electronic)	2,050	None	0
Petition to Make Special Under Accelerated Examination Program	500	130.000	65,000.00
Total	2,176,299		155,319,970.00

The USPTO estimates that the total (non-hour) respondent cost burden for this collection in the form of record keeping costs, postage costs, and filing fees is $156,933,477.

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, including through 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 22, 2006.

Susan K. Brown,

Records Officer, USPTO, Office of the Chief Information Officer, Architecture, Engineering and Technical Services, Data Architecture and Services Division.