03-23245. Patent Cooperation Treaty

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 November 12, 2003.

ADDRESSES:

Direct all written comments to Susan K. Brown, Records Officer, Office of the Chief Information Officer, Office of Data Architecture and Services, Data Administration Division, 703-308-7400, U.S. Patent and Trademark Office, P.O. Box 1450, Alexandria, VA 22313, Attn: CPK 3 Suite 310; by e-mail at [e-mail]; or by facsimile at 703-308-7407.

FOR FURTHER INFORMATION CONTACT:

Requests for additional information should be directed to Rafael Bacares, Office of PCT Operations, U.S. Patent and Trademark Office, P.O. Box 1450, Alexandria, VA 22313-1450; by telephone at 703-308-6312; or by e-mail at [e-mail].

SUPPLEMENTARY INFORMATION:

I. Abstract

This collection of information is required by the provisions of the Patent Cooperation Treaty (PCT), a United Nations Treaty that was signed on June 19, 1970, by the 20 member states of the Paris Union for the Protection of Industrial Property, including the United States. The PCT became operational in June 1978 and is administered by the International Bureau (IB) of the World Intellectual Property Organization (WIPO) in Geneva, Switzerland. The provisions of the PCT have been implemented by the United States in Part IV of Title 35 of the U.S. Code and Subpart C of Title 37 of the Code of Federal Regulations.

The purpose of the PCT is to simplify the filing of patent applications for the same invention in different countries. The PCT provides a standardized filing format and procedure that allows an applicant to file one international application in one location, in one language, and pay one initial set of fees. The international application receives an international filing date (priority date) that serves as the actual filing date for the designated countries.

The information in this collection is used by the public to submit a patent application under the PCT and by the United States Patent and Trademark Office (USPTO) to fulfill its obligation to process, search, and examine the application as directed by the treaty. The USPTO acts as the United States Receiving Office (RO/US) for international applications filed by residents and nationals of the United States. These applicants send most of their correspondence directly to the USPTO, but they may also file certain documents directly with the IB. The USPTO also serves as an International Searching Authority (ISA) and an International Preliminary Examining Authority (IPEA).

This collection currently includes 10 paper forms to assist the public with providing the required information for filing PCT applications and related documents. One additional form, Transmittal Letter to the United States Designated/Elected Office (DO/EO/US) Concerning a Filing Under 35 U.S.C. 371 (PTO-1390), is being added to the collection. Some of the items in this collection do not have any associated forms. The submission of biosequence listings and related tables for associated PCT applications is covered under the separate information collection 0651-0024 Requirements for Patent Applications Containing Nucleotide Sequence and/or Amino Acid Sequence Disclosures. The PCT also permits electronic filing of international applications, as long as the confidentiality requirements are met. The USPTO does not currently accept electronic submissions for international applications, but an electronic application system that will be fully compliant with the PCT specifications for electronic filing is under development.

This collection was previously approved by OMB in December 2000 with terms of clearance instructing the USPTO to report the filing fees for this collection as part of its annual (non-hour) cost burden. In April 2001, OMB approved a change worksheet to add annual (non-hour) cost burden to this collection in the form of filing fees. OMB also approved another change worksheet in April 2001 to decrease the annual responses and burden hours for two requirements, Descriptions/claims/drawings/abstracts and Notices Effecting Later Elections (PCT/IB/328), in order to reflect the total burden for this collection more accurately.

In August 2001, OMB approved a change worksheet that moved the burden for two forms, Petition for Revival of an International Application for Patent Designating the U.S. Abandoned Unavoidably Under 37 CFR 1.137(a) (PTO/SB/61/PCT) and Petition for Revival of an International Application for Patent Designating the U.S. Abandoned Unintentionally Under 37 CFR 1.137(b) (PTO/SB/64/PCT), into this collection from collection 0651-0031 Patent Processing (Updating). The Application Data Sheet, which was already an approved requirement in collection 0651-0032 Initial Patent Application, was also added to 0651-0021 due to a rule change permitting some PCT applications to include an Application Data Sheet. In April 2003, OMB corrected the total annual (non-hour) cost figure listed for this collection in the USPTO's inventory so that the annualized costs would be listed properly in thousands of dollars.

II. Method of Collection

By mail or hand delivery to the USPTO. Some communications related to PCT applications may also be submitted to the USPTO by facsimile.

III. Data

OMB Number: 0651-0021.

Form Number(s): PCT RO/101/134/144, PTO-1382, PTO-1390, PCT/IPEA/401, PCT/IB/328, PTO/SB/61/PCT, PTO/SB/64/PCT, PCT/Model of power of attorney, PCT/Model of general power of attorney.

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: 379,065 responses per year.

Estimated Time Per Response: The USPTO estimates that it will take the public from 15 minutes (0.25 hours) to 8 hours to gather the necessary information; prepare the appropriate form, petition, or other request; and submit the information to the USPTO.

Estimated Total Annual Respondent Burden Hours: 367,842 hours per year.

Estimated Total Annual Respondent Cost Burden: $92,696,184 per year. The USPTO expects that the information in this collection will be prepared by attorneys. Using the professional rate of $252 per hour for associate attorneys in private firms, the USPTO estimates that the respondent cost burden for submitting the information in this collection will be $92,696,184 per year.

Item	Form No.	Estimated time for response	Estimated annual responses	Estimated annual burden hours
Request and Fee Calculation Sheet (Annex and Notes)	PCT/RO/101	1 hour	42,200	42,200
Description/claims/drawings/abstracts	N/A	3 hours	42,200	126,600
Application Data Sheet	N/A	23 minutes	3,000	1,140
Transmittal Letter to the United States Receiving Office (RO/US)	PTO-1382	15 minutes	29,500	7,375
Transmittal Letter to the United States Designated/Elected Office (DO/EO/US) Concerning a Filing Under 35 U.S.C. § 371	PTO-1390	15 minutes	22,385	5,596
PCT/Model of Power of Attorney	(1)	15 minutes	30,700	7,675
PCT/Model of General Power of Attorney	(1)	15 minutes	3,000	750
Extensions of time	N/A	15 minutes	25,000	6,250
Priority documents	N/A	15 minutes	63,000	15,750
Indications Relating to a Deposited minutes Microorganism	PCT/RO/134	15 minutes	400	100
Response to invitation to correct defects	N/A	2 hours	30,000	60,000
Request for rectification of obvious errors	N/A	30 minutes	2,000	1,000
Notice of Confirmation of Precautionary Designations	PCT/RO/144	15 minutes	260	65
Demand and Fee Calculation Sheet (Annex and Notes)	PCT/IPEA/401	1 hour	27,800	27,800
Amendments	N/A	1 hour	15,000	15,000
Notice Effecting Later Elections	PCT/IB/328	15 minutes	50	13
Fee Authorization	N/A	15 minutes	15,000	3,750
Petitions	N/A	4 hours	3,000	12,000
Requests to transmit copies of international application	N/A	15 minutes	2,300	575
Withdrawal of international application/designations of the state/demands/elections/priority claims	N/A	15 minutes	5,000	1,250
Request/authorization to access international application	N/A	15 minutes	600	150
Translations	N/A	2 hours	16,000	32,000
Petition for Revival of an International Application for Patent Designating the U.S. Abandoned Unavoidably Under 37 CFR 1.137(a)	PTO/SB/61/PCT	8 hours	19	152
Petition for Revival of an International Application for Patent Designating the U.S. Abandoned Unintentionally Under 37 CFR 1.137(b)	PTO/SB/64/PCT	1 hour	651	651
Total			379,065	367,842
1 Same as title.

Estimated Total Annual Non-hour Respondent Cost Burden: $149,320,674 per year. There are no capital start-up costs, maintenance costs, or recordkeeping costs associated with this information collection. However, this collection does have annual (non-hour) costs in the form of translation costs, filing fees, and postage costs.

Under the terms of the PCT, the USPTO may require documents submitted for a PCT application to be translated into English when necessary. This requirement carries additional costs for the party to contract for a translation of the documents in question. Depending on the particular circumstances, the documents to be translated can vary greatly in size. Firms that perform translation services do not have set fees for these services. The cost of translating a document is dependent upon the length of the document, the complexity of the document, whether the document is technical, and the languages that the document has to be translated to and from. Due to these variables, many firms require customers to submit the documents in question to the firm so that they can be reviewed and a price quote prepared. There are translation firms that deal specifically with translations of intellectual property. Due to all of these factors, however, the USPTO cannot precisely estimate the costs that parties may incur for these translations. Based on experience, the USPTO believes that on average the documents to be translated will be 10 pages in length and that it will cost $150 per page for the translation, for an average translation cost of $1,500 per document. The USPTO estimates that it receives approximately 16,000 English translations per year. Multiplying the 16,000 translation submissions by $1,500 results in a total cost of $24,000,000 per year. Therefore, the USPTO estimates a total non-hour cost burden of $24,000,000 per year for English translations of non-English language documents for PCT applications.

The total estimated annual filing fees for this collection are calculated in the accompanying chart. The fees listed in the chart represent an estimate of the average fees for filing the appropriate items associated with the requirements for an international application. The USPTO estimates that the total filing costs associated with this collection will be $125,180,420 per year.

Item	Form No.	Estimated annual responses	Fee amount	Estimated annual filing costs
Request and Fee Calculation Sheet (Annex and Notes)	PCT/RO/101	42,200	$2,396.00	$101,111,200.00
Description/claims/drawings/abstracts	N/A	42,200	0	0
Application Data Sheet	N/A	3,000	0	0
Transmittal Letter to the United States Receiving Office (RO/US)	PTO-1382	29,500	0	0
Transmittal Letter to the United States Designated/Elected Office (DO/EO/US) Concerning a Filing Under 35 U.S.C. § 371	PTO-1390	22,385	0	0
PCT/Model of Power of Attorney	(1)	30,700	0	0
PCT/Model of General Power of Attorney	(1)	3,000	0	0
Extensions of time	N/A	25,000	0	0
Priority documents	N/A	63,000	20.00	1,260,000.00
Indications Relating to a Deposited Microorganism	PCT/RO/134	400	0	0.00
Response to invitation to correct defects	N/A	30,000	0	0.00
Request for rectification of obvious errors	N/A	2,000	0	0.00
Notice of Confirmation of Precautionary Designations	PCT/RO/144	260	104.00	27,040.00
Demand and Fee Calculation Sheet (Annex and Notes)	PCT/IPEA/401	27,800	778.00	21,628,400.00
Amendments	N/A	15,000	0	0
Notice Effecting Later Elections	PCT/IB/328	50	0	0
Fee Authorization	N/A	15,000	0	0
Petitions	N/A	3,000	130.00	390,000.00
Requests to transmit copies of international application	N/A	2,300	0	0
Withdrawal of international application/designations of the state/demands/elections/priority claims	N/A	5,000	0	0
Request/authorization to access international application	N/A	600	0	0
Translations	N/A	16,000	0	0
Petition for Revival of an International Application for Patent Designating the U.S. Abandoned Unavoidably Under 37 CFR 1.137(a)—small entity	PTO/SB/61/PCT	2	55.00	110.00
Petition for Revival of an International Application for Patent Designating the U.S. Abandoned Unavoidably Under 37 CFR 1.137(a)—large entity	PTO/SB/61/PCT	17	110.00	1,870.00
Petition for Revival of an International Application for Patent Designating the U.S. Abandoned Unintentionally Under 37 CFR 1.137(b)— small entity	PTO/SB/64/PCT	130	650.00	84,500.00
Petition for Revival of an International Application for Patent Designating the U.S. Abandoned Unintentionally Under 37 CFR 1.137(b)— large entity	PTO/SB/64/PCT	521	1,300.00	677,300.00
Total		379,065		125,180,420
1 Same as title.

Customers may incur postage costs when submitting the information in this collection to the USPTO by mail. The USPTO estimates that the average first-class postage cost for a mailed submission will be 37 cents and that up to 379,065 submissions will be mailed to the USPTO per year. The total estimated postage cost for this collection is $140,254 per year.

The total non-hour respondent cost burden for this collection in the form of translation costs, filing fees, and postage costs is $149,320,674 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: September 8, 2003.

Susan K. Brown,

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