05-12174. Representative and Address Provisions

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 August 22, 2005.

ADDRESSES:

You may submit comments by any of the following methods:

• E-mail: [e-mail]. Include “0651-0035 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, Office of Data Architecture and Services, Data Administration Division, U.S. Patent and Trademark Office, P.O. Box 1450, Alexandria, VA 22313-1450.

FOR FURTHER INFORMATION CONTACT:

Requests for additional information should be directed to 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

Under 35 U.S.C. 2 and 37 CFR 1.31-1.36, a patent applicant or assignee of record may grant power of attorney to a person who is registered to practice before the United States Patent and Trademark Office (USPTO) to act for them in a patent or application. A power of attorney may also be revoked, and a registered practitioner may also withdraw as attorney or agent of record under 37 CFR 1.36. The rules of practice (37 CFR 1.33) also provide for the applicant, assignee, or practitioner of record to supply a correspondence address and daytime telephone number for receiving notices, official letters, and other communications from the USPTO. Further, the rules of practice (37 CFR 1.33(d) and 1.363) permit the applicant, assignee, or practitioner of record to specify a separate “fee address” for correspondence related to maintenance fees, which is covered under OMB Control Number 0651-0016 “Rules for Patent Maintenance Fees.” Maintaining a correct and updated correspondence address is necessary so that official correspondence from the USPTO related to a patent or application will be properly received by the applicant, assignee, or practitioner.

The USPTO's Customer Number practice permits applicants, assignees, and practitioners of record to change the correspondence address, fee address, or representatives of record for a number of patents or applications with one change request instead of filing separate requests for each patent or application. Customers may request a Customer Number from the USPTO and associate this Customer Number with a correspondence address or a list of registered practitioners. Customers may then use this Customer Number to designate or change the correspondence address, the fee address, or to grant power of attorney to the associated list of practitioners for any number of patents or applications. Any changes to the address or practitioner information associated with a Customer Number will be applied to all patents and applications associated with that Customer Number.

The Customer Number practice is optional, in that changes of correspondence address or power of attorney may be filed separately for each patent or application without using a Customer Number. However, a Customer Number associated with the correspondence address for a patent application is required in order to access private information about the application using the Patent Application Information Retrieval (PAIR) system, which is available through the USPTO Web site. The PAIR system allows authorized individuals secure access to application status information over the Internet, but only for patent applications that are linked to a Customer Number. Applicants must also use a Customer Number in order to grant power of attorney to more than ten practitioners or to establish a separate fee address that is different from the correspondence address for a patent or application.

In addition to the forms offered by the USPTO to assist customers with providing the information in this collection, customers may also format requests using a Customer Number Upload Spreadsheet to designate or change the correspondence address or fee address for a list of patents or applications by associating them with a Customer Number. The Customer Number Upload Spreadsheet must be submitted to the USPTO on a computer-readable diskette or compact disc (CD), accompanied by a signed cover letter requesting entry of the address changes for the listed patents and applications. The spreadsheet and cover letter must be mailed to the USPTO and cannot be filed electronically over the Internet. Customers may download a Microsoft Excel template with instructions from the USPTO Web site to assist them in preparing the spreadsheet in the proper format. The Customer Number Upload Spreadsheet may not be used to change the power of attorney for patents or applications.

This information collection includes the information necessary to submit a request to grant or revoke power of attorney for a patent application and for a registered practitioner to withdraw as attorney or agent of record for a patent application. This collection also includes the information necessary to request a Customer Number and associate a correspondence address or list of practitioners with this Customer Number, to change the correspondence address or practitioners associated with a Customer Number, and to designate or change the correspondence address or fee address for one or more patents or applications by using a Customer Number.

The USPTO is adding one form, two petitions, and electronic power of attorney submissions to this information collection. The Authorization to Act in a Representative Capacity allows a practitioner to take certain actions in a patent application, such as conducting interviews, but does not grant power of attorney. The USPTO previously offered a sample format for an authorization document pursuant to 37 CFR 1.34, but the Authorization to Act in a Representative Capacity will now be provided as an official USPTO form (PTO/SB/84). The two petitions to grant or revoke power of attorney by fewer than all of the applicants are being added to this collection as existing petitions that were not previously covered. Lastly, customers may submit some power of attorney forms electronically using the USPTO's Electronic Filing System (EFS), which permits secure transmission of patent applications and related documents over the Internet. Using the free electronic filing software available at the USPTO Web site, customers may prepare electronic power of attorney forms or scan and attach electronic copies of paper forms for Internet submission.

This information collection was previously approved by OMB in November 2002. In November 2003, OMB approved a change worksheet for this collection that added the Power of Attorney to Prosecute Applications Before the USPTO (PTO/SB/80), deleted the Correspondence Address Indication Form (PTO/SB/121), and revised the Customer Number Upload Spreadsheet to remove the option to change the power of attorney. The Power of Attorney to Prosecute Applications Before the USPTO (PTO/SB/80) allows assignees to grant power of attorney in all of their applications at once using one form instead of individually signing separate power of attorney forms for each application. The Correspondence Address Indication Form (PTO/SB/121) was deleted because it duplicated information already collected on the forms for Change of Correspondence Address for Applications or Patents (PTO/SB/122 and PTO/SB/123) and was rarely used. The option to change the power of attorney was removed from the Customer Number Upload Spreadsheet because the USPTO discontinued the practice of allowing customers to use the batch update process via the spreadsheet to change the power of attorney for a list of patents or applications. Customers may still use the spreadsheet format for changing the correspondence address or fee address for a list of patents or applications. The instructions were also updated to allow customers to submit the spreadsheets on CD as well as on diskette.

II. Method of Collection

By mail, facsimile, hand delivery, or electronically over the Internet to the USPTO.

III. Data

OMB Number: 0651-0035.

Form Number(s): PTO/SB/80/81/82/83/84/122/123/124A/124B/125A/125B.

Type of Review: Revision of a currently approved collection.

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

Estimated Number of Respondents: 370,766 responses per year.

Estimated Time Per Response: The USPTO estimates that it will take the public approximately 3 to 12 minutes (0.05 to 0.20 hours) to complete the forms in this collection, including the time to gather the necessary information, prepare the appropriate form, and submit the completed request. The USPTO estimates it will take the public approximately 1 hour to prepare the petitions related to power of attorney. The USPTO estimates that it will take the public approximately 1 hour and 30 minutes to complete the Customer Number Upload Spreadsheet, including the time to prepare the spreadsheet file on diskette or CD and produce the signed cover letter.

Estimated Total Annual Respondent Burden Hours: 23,668 hours per year.

Estimated Total Annual Respondent Cost Burden: $1,937,198 per year. The USPTO expects that Requests for Withdrawal as Attorney or Agent and the petitions will be prepared by attorneys, while the other items in this collection will be prepared by paraprofessionals. Using the professional rate of $286 per hour for associate attorneys in private firms, the USPTO estimates that the respondent cost burden for submitting Requests for Withdrawal as Attorney or Agent and Change of Correspondence Address (PTO/SB/83) and the petitions will be $28,028 per year. Using the paraprofessional rate of $81 per hour, the USPTO estimates that the respondent cost burden for submitting the other items in this collection will be $1,909,170 per year. The estimated total respondent cost burden for this collection is $1,937,198 per year.

Item	Estimated time for response	Estimated annual responses	Estimated annual burden hours
Power of Attorney to Prosecute Applications Before the USPTO (PTO/SB/80)	3 minutes	2,100	105
Power of Attorney and Correspondence Address Indication Form (PTO/SB/81)	3 minutes	343,550	17,178
Electronic Power of Attorney Forms (EFS)	3 minutes	2,488	124
Revocation of Power of Attorney with New Powwer of Attorney and Change of Correspondence Address (PTO/SB/82)	3 minutes	650	33
Request for Withdrawal as Attorney or Agent and Change of Correspondence Address (PTO/SB/83)	12 minutes	475	95
Authorization to Act in a Representative Capacity (PTO/SB/84)	3 minutes	800	40
Petition Under 37 CFR 1.36(a) to Revoke Power of Attorney by Fewer than All the Applicants	1 hour	2	2
Petition to Waive 37 CFR 1.32(b)(4) and Grant Power of Attorney by Fewer than All the Applicants	1 hour	1	1
Change of Correspondence Address for Application or Patent (PTO/SB/122/123)	3 minutes	13,000	650
Request for Customer Number Data Change (PTO/SB/125A/125B)	12 minutes	600	120
Request for Customer Number (PTO/SB/125A/125B)	12 minutes	4,100	820
Customer Number Upload Spreadsheet	1 hour and 30 minutes	3,000	4,500
Total		370,766	23,668

Estimated Total Annual Non-hour Respondent Cost Burden: $188,838. There are no maintenance costs associated with this information collection. However, this collection does have annual (non-hour) cost burden in the form of filing fees, recordkeeping costs, capital start-up costs, and postage costs.

The two petitions being added into this collection have associated filing fees. The filing fee for the Petition Under 37 CFR 1.36(a) to Revoke Power of Attorney by Fewer than All the Applicants is currently $130 (37 CFR 1.17(h)). The USPTO has proposed to increase this fee to $400 (37 CFR 1.17(f)) as discussed in the notice of proposed rulemaking entitled “Provisions for Persons Granted Limited Recognition to Prosecute Patent Applications and Other Miscellaneous Matters” (RIN 0651-AB85), published in the Federal Register on April 7, 2005. This proposed fee coincides with the $400 fee (37 CFR 1.17(f)) for the Petition to Waive 37 CFR 1.32(b)(4) and Grant Power of Attorney by Fewer than All the Applicants. Using the $400 fee for these petitions, the USPTO estimates that the total filing fees for this collection would be $1,200 per year.

There are recordkeeping costs associated with submitting power of attorney forms electronically over the Internet using EFS. The USPTO recommends that customers print and retain a copy of the acknowledgment receipt that is displayed on the screen after a successful submission. The USPTO estimates that it will take 5 seconds (0.001 hours) to print a copy of the acknowledgment receipt and that approximately 2,488 power of attorney submissions per year will be completed via EFS, for a total of approximately 2 hours per year. The USPTO expects that these receipts will be printed by paraprofessionals at an estimated rate of $81 per hour, for a total recordkeeping cost of $162 per year.

This collection has capital start-up costs associated with the Customer Number Upload Spreadsheet, which must be submitted to the USPTO on a diskette or CD. This process requires additional supplies, including blank diskettes or recordable CD media and padded envelopes for shipping. The USPTO estimates that the cost of these supplies will be approximately $2 per submission, for a total capital start-up cost of $6,000 per year.

The public may incur postage costs when submitting the information in this collection to the USPTO by mail. The USPTO estimates that the first-class postage cost for a mailed submission will be 49 cents for all items in this collection except for the electronic power of attorney submissions and the Customer Number Upload Spreadsheet. There is no postage cost for electronic power of attorney submissions. Due to the additional materials required for Customer Number Upload Spreadsheet submissions, including the diskette or CD and cover letter, the USPTO estimates that the average first-class postage cost for a spreadsheet submission will be 83 cents. The total postage cost for this collection is $181,476 per year.

The total (non-hour) respondent cost burden for this collection in the form of filing fees, recordkeeping costs, capital start-up costs, and postage costs is estimated to be $188,838 per year.

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 also will become a matter of public record.

Dated: June 15, 2005.

Susan K. Brown,

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