2024-14920. Agency Information Collection Activities; Submission to the Office of Management and Budget (OMB) for Review and Approval; Comment Request; Third-Party Submissions and Protests

Table 1—Comparison of Third-Party Submissions and Protests

Comparison	Third-party submission	Protest
Statute/Regulation	35 U.S.C. 122(e), 37 CFR 1.290	35 U.S.C. 122(c), 37 CFR 1.291.
Content	Printed publications	Printed publications and any facts or information adverse to patentability.
Remarks	Concise description of relevance (limited to a concise description of each document's relevance)	Concise explanation of the relevance (allows for arguments against patentability).
Timing	The earlier of—(A) the date of a notice of allowance; or (B) the later of—(i) 6 months after the date of Pre-Grant Publication, or (ii) the date of the first rejection of any claim during the examination of the application for patent	(1) Prior to the date of Pre-Grant Publication or the date of a notice of allowance, whichever occurs first, or (2) accompanied by written consent of the applicant and prior to the date of a notice of allowance.

For example, 37 CFR 1.291 permits the submission of information that is not permitted in a third-party submission under 37 CFR 1.290. Specifically, 37 CFR 1.291 provides for the submission of information other than publications, including any facts or information adverse to patentability. Unlike the concise explanation of the relevance required for a preissuance submission under 37 CFR 1.290, which is limited to a description of a document's relevance, the concise explanation for a protest under 37 CFR 1.291 allows for arguments against patentability. Additionally, the specified time period for submitting a protest differs from the time period for submitting third-party submissions and is impacted by whether the protest is accompanied by the written consent of the applicant.

This information collection covers the items used by the public to submit information and protests regarding patent applications to the USPTO. This information collection is necessary so that the public can contribute to the quality of issued patents. The USPTO will use this information, as appropriate, to assist in evaluating the patent application as it moves through the patent examination process.

II. Method of Collection

The items in this information collection may be submitted electronically, or on paper by either mail or hand delivery.

III. Data

OMB Control Number: 0651-0062.

Forms: (SB = Specimen Book)

• PTO/SB/429 (Third-Party Submission Under37 CFR 1.290)

Type of Review: Extension and revision of a currently approved information collection.

Affected Public: Private sector.

Respondent's Obligation: Required to obtain or retain benefits.

Estimated Number of Annual Respondents: 1,033 respondents.

Estimated Number of Annual Responses: 1,033 responses.

Frequency: On occasion.

Estimated Time per Response: The USPTO estimates that the responses in this information collection will take the public approximately 10 hours to complete. This includes the time to gather the necessary information, create the document, and submit the completed item to the USPTO.

Estimated Total Annual Respondent Burden Hours: 10,330 hours.

Estimated Total Annual Respondent Hourly Cost Burden: $4,617,510.

Table 2—Total Burden Hours and Hourly Costs to Private Sector Respondents

Item No.	Item	Estimated annual respondents	Responses per respondent	Estimated annual responses	Estimated time for response (hours)	Estimated burden (hour/year)	Rate 1 ($/hour)	Estimated annual respondent cost burden
		(a)	(b)	(a) × (b) = (c)	(d)	(c) × (d) = (e)	(f)	(e) × (f) = (g)
1	Third-Party Submissions in Nonissued Applications Under 37 CFR 1.290	1,017	1	1,017	10	10,170	$447	$4,545,990
2	Protests by the Public Against Pending Applications Under 37 CFR 1.291	16	1	16	10	160	447	71,520
Totals		1,033		1,033		10,330		4,617,510
1  2023 Report of the Economic Survey, published by the Committee on Economics of Legal Practice of the American Intellectual Property Law Association (AIPLA); pg. F-41. The USPTO uses the average billing rate for intellectual property work in all firms which is $447 per hour ( https://www.aipla.org/​home/​news-publications/​economic-survey).

Estimated Total Annual Respondent Non-hourly Cost Burden: $153,686. There are no capital start-up, maintenance costs, or recordkeeping costs associated with this information collection. However, the USPTO estimates that the total annual non-hour cost burden for this information collection, in the form of filing fees and postage, is $153,686.

Filing Fees

The filing fees associated with this information collection are listed in the table below.

Table 3—Filing Fees

Item No.	Fee code	Item	Estimated annual responses	Filing fee ($)	Non-hourly cost burden ($)
			(a)	(b)	(a) × (b) = (c)
1	1818	Third-Party Submissions in Nonprovisional Applications Under 37 CFR 1.290 (undiscounted)	742	$180	$133,560
1	2818	Third-Party Submissions in Nonprovisional Applications Under 37 CFR 1.290 (small and micro entities)	275	72	19,800
2	1830	Protest by the Public Against Pending Applications Under 37 CFR 1.291—second or subsequent protest by the same real party in interest (undiscounted)	1	140	140
2	2830	Protest by the Public Against Pending Applications Under 37 CFR 1.291—second or subsequent protest by the same real party in interest (small entity)	1	56	56
2	3830	Protest by the Public Against Pending Applications Under 37 CFR 1.291—second or subsequent protest by the same real party in interest (micro entity)	1	28	28
Totals			1,020		153,584