2011-18092. Statutory Invention Registration

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 revision of a 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 September 19, 2011.

ADDRESSES:

You may submit comments by any of the following methods:

• E-mail: [e-mail]. Include “0651-0036 comment” in the subject line of the message.
• Mail: Susan K. Fawcett, Records Officer, Office of the Chief Information Officer, United States Patent and Trademark Office, P.O. Box 1450, Alexandria, VA 22313-1450.
• Federal 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, United States Patent and Trademark Office, P.O. Box 1450, Alexandria, VA 22313-1450, by telephone at 571-272-7728, or by e-mail to [e-mail] with “Paperwork” 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

An applicant for an original patent may request, at any time during the pendency of the applicant's pending complete application, that the specification and drawings be published as a statutory invention registration (SIR). A published SIR is not a patent. It has the defensive attributes of a patent, e.g., it is usable as a reference as of its filing date in the same manner as a patent, but does not have the enforceable attributes of a patent. Historically, applicants have requested that the USPTO publish their patent applications as SIRs in certain instances when, for any of a variety of reasons, applicants no longer wanted to go through the effort and expense of obtaining patents on the inventions claimed in the applications. However, given that 37 CFR 1.211 requires the publication of most nonprovisional applications filed on or after November 29, 2000, applicants have increasingly found 1.211 publication of an application to be a desirable alternative to requesting an SIR, particularly since 1.211 publication of the application is achieved without any waiver of patent rights.

35 U.S.C. 157 authorizes the USPTO to publish an SIR containing the specifications and drawings of a regularly filed application for a patent without examination if the applicant: (i) Meets the requirements of 35 U.S.C. 112; (ii) has complied with the requirements for printing; (iii) waives the right to receive a patent on the invention claimed effective upon the date of publication of the SIR; and (iv) pays all application, publication and other processing fees.

The USPTO administers 35 U.S.C. 157 through 37 CFR 1.293-1.297. Any request for an SIR is examined to determine whether the subject matter of the application is appropriate for publication and all other requirements have been met, including the requirements of 35 U.S.C. 112 and 37 CFR 1.293.

The requester may petition the USPTO to review rejection decisions within one month or other such time as is set forth in the decision refusing publication. The requester may also petition the USPTO to withdraw a request to publish an SIR prior to the date of the notice of the intent to publish.

If the request for an SIR is approved, a notice to that effect will be published in the Official Gazette of the USPTO. Each SIR that is published will include a statement relating to the attributes of an SIR.

The public uses form PTO/SB/94, Request for Statutory Invention Registration, to request and authorize publication of a regularly filed patent application as an SIR, to waive the right to receive a United States patent on the same invention claimed in the identified patent application, to agree that the waiver will be effective upon publication of the SIR, and to state that the identified patent application complies with the requirements for printing. No forms are associated with the petition for a review of the refusal to publish an SIR or the petition to withdraw the request for publication of an SIR.

II. Method of Collection

By mail, facsimile, or hand delivery to the USPTO when the applicant or agent files an SIR with the USPTO.

III. Data

OMB Number: 0651-0036.

Form Number(s): PTO/SB/94.

Type of Review: Extension of a currently approved collection.

Affected Public: Government agencies.

Estimated Number of Respondents: 8 responses per year.

Estimated Time per Response: The USPTO estimates that it will take approximately 24 minutes (0.40 hours) each to gather, prepare, and submit the completed request, depending upon the complexity of the situation.

Estimated Total Annual Respondent Burden Hours: 4 hours.

Estimated Total Annual Respondent Cost Burden: $1,300. The USPTO expects that attorneys will complete and submit this information. The estimated hourly rate for attorneys in private firms is $325. This is a fully loaded hourly rate.

Item	Estimated time for response (minutes)	Estimated annual responses	Estimated annual burden hours
Statutory Invention Registration	24	5	2
Petition to Review Final Refusal to Publish	24	1	1
Petition to Withdraw SIR Publication Request	24	2	1
Totals		8	4

Estimated Total Annual (Non-Hour) Respondent Cost Burden: $8,170. There are no capital start-up or maintenance costs. However, this collection does have postage costs and filing fees.

The public may submit the paper form and petitions in this collection to the USPTO by mail through the United States Postal Service. The USPTO estimates that the average first-class postage cost for a mailed submission will be $1.28 for a 3 oz. large envelope, and that customers filing the documents associated with this information collection may choose to mail their submissions to the USPTO. Therefore, the USPTO estimates that up to 8 submissions per year may be mailed to the USPTO as an average first-class postage rate of $1.28, for a total postage cost of $10.

Item	Responses (yr)	Postage $	Total non-hour cost burden
	(a)	(b)	(a × b) (c)
Statutory Invention Registration	5	$1.28	$6.00
Petition to Review Final Refusal to Publish	1	1.28	1.00
Petition to Withdraw SIR Publication Request	2	1.28	3.00
Totals	8		10.00

There is annual (non-hour) cost burden in the way of filing fees associated with this collection of $8,160, as shown in the accompanying table.

Item	Responses (yr)	Filing fee $	Total non-hour cost burden
	(a)	(b)	(a × b) (c)
	Statutory Invention Registration (Requested prior to mailing of first office action, 37 CFR 1.17(n))	2	$920.00
Statutory Invention Registration (Requested after mailing of final office action, 37 CFR 1.17(o))	3	1,840.00	5,520.00
Petition to Review Final Refusal to Publish (37 CFR 1.295)	1	200.00	200.00
Petition to Withdraw Publication Request (37 CFR 1.296)	1	200.00	200.00
Petition to Withdraw Publication Request (on or after Date of Notice of Intent to Publish (37 CFR 1.296))	1	400.00	400.00
Totals	8		8,160.00

The USPTO estimates that the total (non-hour) respondent cost burden for this collection in the form of postage costs and filing fees will be $8,170.

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: July 14, 2011.

Susan K. Fawcett,

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