2023-21099. Agency Information Collection Activities; Submission to the Office of Management and Budget (OMB) for Review and Approval; Comment Request; DOCX Submission Requirements

The United States Patent and Trademark Office (USPTO) will submit the following information collection request to the Office of Management and Budget (OMB) for review and clearance in accordance with the Paperwork Reduction Act of 1995, on or after the date of publication of this notice. The USPTO invites comments on this information collection renewal, which helps the USPTO assess the impact of its information collection requirements and minimize the public's reporting burden. Public comments were previously requested via the Federal Register (88 FR 37039) on June 6, 2023 during a 60-day comment period. This notice allows for an additional 30 days for public comment.

Agency: United States Patent and Trademark Office, Department of Commerce.

Title: DOCX Submission Requirements.

OMB Control Number: 0651–New.

Needs and Uses: On August 3, 2020, the USPTO published a final rule in the Federal Register that included a new fee set forth in 37 CFR 1.16(u). See Setting and Adjusting Patent Fees in Fiscal Year 2020, 85 FR 46932. Although that final rule indicated the new fee at § 1.16(u) would go into effect on January 1, 2022, the effective date of the new fee was delayed to give applicants more time to adjust to filing patent applications in the DOCX format.

As specified in § 1.16(u), the fee is due for any application filed under 35 U.S.C. 111 for an original patent—except design, plant, or provisional applications—where the specification, claims, and/or abstract do not conform to the USPTO requirements for submission in the DOCX format. Therefore, the fee is due for nonprovisional utility applications filed under 35 U.S.C. 111, including continuing applications, that are not filed in the DOCX format.

The USPTO conducted two pilot programs for filing applications in the DOCX format. The eMod Text Pilot Program was conducted between August 2016 and September 2017. The USPTO then expanded the ability to file patent applications in the DOCX format in EFS–Web to all users in September 2017. In 2018, the USPTO launched the Patent Center and conducted the Patent Center Text Pilot Program from June 2018 through April 2020. All applicants have been able to file applications in the DOCX format in the Patent Center since April 2020. Information about the Patent Center is available at www.uspto.gov/​PatentCenter. The USPTO continues to hold many discussions and training sessions with stakeholders to ensure a fair and reasonable transition to the DOCX format. In addition, to further ensure a fair and reasonable transition to the DOCX format, the USPTO has, since April 2022, provided patent applicants with the option to submit a back-up applicant-generated PDF version of the application along with the DOCX file(s) when filing an application in Patent Center. See Extension of the Option for Submission of a PDF With a Patent Application Filed in DOCX Format, 88 FR 37036 (Jun. 6, 2023).

The items in this new information collection relate solely to the impacts of the § 1.16(u) non-DOCX filing surcharge fee on the filing of nonprovisional utility applications under 35 U.S.C. 111, including continuing applications. In particular, this new information collection accounts for the § 1.16(u) non-DOCX filing surcharge fee itself, as well as an additional 30 minutes of time to accommodate (i) the extra review that some respondents may undertake as they start to become more familiar with the DOCX format and (ii) submission of the back-up applicant-generated PDF that some respondents will opt to submit.

The estimated volumes for the items in this new information collection are based on the estimates for the corresponding nonprovisional utility applications filed under 35 U.S.C. 111, including continuing applications, that are covered under an existing OMB clearance (0651–0032; Initial Patent Applications). Respondents for the items in the new information collection will either take an extra 30 minutes to file their applications in DOCX format or they will pay the non-DOCX surcharge, they will not do both.

Form Numbers: None.

Type of Review: New.

Affected Public: Private sector; individuals and households.

Respondent's Obligation: Required to obtain or retain a benefit.

Frequency: On occasion.

Estimated Number of Annual Respondents: 411,817 respondents (including 164,066 respondents from filing fees).

Estimated Number of Annual Responses: 411,817 responses (including 164,066 responses from filing fees).

Estimated Time per Response: The USPTO estimates that the responses in this information collection will take the public approximately 30 minutes (0.50 hours) to complete. This includes the time to create and submit the completed filing to the USPTO. The USPTO provides the 30-minute estimate out of an abundance of caution for the initial period after the effective date of the non-DOCX filing surcharge fee. The USPTO expects to decrease the 30-minute estimate by the first renewal of this collection as the public more fully comprehends the nature of, and how to comply with, the DOCX format.

Estimated Total Annual Respondent Burden Hours: 123,877 hours.

Estimated Total Annual Respondent Non-Hourly Cost Burden: $49,588,160.

This information collection may be viewed at www.reginfo.gov. Follow the instructions to view Department of Commerce, USPTO information collections currently under review by OMB.

Written comments and recommendations for this information collection should be submitted within 30 days of the publication of this notice on the following website, www.reginfo.gov/​public/​do/​PRAMain. Find this particular information collection by selecting “Currently under 30-day Review—Open for Public Comments” or by using the search feature and entering the title of the information collection of the OMB Control Number, 0651–New.

Further information can be obtained by:

• Email: [e-mail]. Include “0651–New information request” in the subject line of the message.

• Mail: Justin Isaac, Office of the Chief Administrative Officer, United States Patent and Trademark Office, P.O. Box 1450, Alexandria, VA 22313–1450.

Justin Isaac,

Information Collections Officer, Office of the Chief Administrative Officer, United States Patent and Trademark Office.