02-29380. Patent Processing (Updating); Proposed Collection; Comment Request

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 and proposed 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 January 21, 2003.

ADDRESSES:

Direct all written comments to Susan K. Brown, Records Officer, Office of Data Architecture and Services, Data Administration Division, USPTO, Suite 310, 2231 Crystal Drive, Washington, DC 20231; by telephone at 703-308-7400; 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 the attention of Robert J. Spar, Director, Office of Patent Legal Administration, United States Patent and Trademark Office (USPTO), Washington, DC 20231; by telephone at 703-308-5107; or by electronic mail at [e-mail].

SUPPLEMENTARY INFORMATION:

I. Abstract

The United States Patent and Trademark Office (USPTO) is required by 35 U.S.C. 131 to examine an application for patent and, when appropriate, issue a patent. Also, the USPTO is required to publish patent applications, with certain exceptions, promptly after the expiration of a period of eighteen months from the earliest filing date for which a benefit is sought under Title 35, United States Code (“eighteen-month publication”). Certain situations may arise which require that additional information be supplied in order for the USPTO to further process the patent or application. The USPTO administers the statutes through various sections of the rules of practice in 37 CFR part 1.

The kind of information generally needed by the USPTO to continue to process the patent or application, or for regulatory compliance, is outlined below:

• Each individual associated with the filing and prosecution of a patent application has a duty to disclose all information known to be material to the patentability of that application.
• All applicants for patents are required to pay statutory fees. Applicants with small entity status are entitled to a 50% reduction in the fees.
• Applicants who want to establish small entity status must assert a claim to small entity status, which may be payments of a small entity filing fee.
• Applicants should identify the type of information they are submitting, the person or representative submitting the information, and complete a certificate of mailing to ensure the timely filing of the information in the USPTO.
• A petition and extension fee is required when an applicant wants an extension to respond beyond a nonstatutory or shortened statutory time.
• An applicant must request in writing the abandonment of an application, if and when an express abandonment is desired.
• Disclaimers are required when an applicant or assignee wants or needs to disclaim or dedicate to the public the term, or any part of the term (or at least one complete claim that is deemed invalid without deceptive intent), of a patent or a patent to be granted.
• A notice of appeal must be filed when an applicant appeals the decision of the examiner to the Board of Patent Appeals and Interferences.
• An information disclosure citation may be filed during the enforceability of a patent, when a person cites prior art consisting of patents and printed publications which the person states to be pertinent and applicable to the patent and believes to have a bearing on the patentability of any claim of a particular patent.
• Petitions are required for revival of applications for patent that were unavoidably or unintentionally abandoned.
• An applicant, counsel of record, or the assignee, must provide written authorization to grant permission to designated individuals to inspect and make copies of an application when the application is required to be kept confidential by 35 U.S.C. 122.
• Deposit account information is needed when a customer wishes to order and pay for articles or services from the USPTO (other than copies of printed patents) with a deposit account.
• Certificate of mailing statements (PTO/SB/92/97) are necessary when an applicant relies upon the date of deposit with the U. S. Postal Service or the date of facsimile transmission of correspondence as proof of the timely filing of that correspondence.
• A request to not publish the application (PTO/SB/35) is required upon filing of the application if the applicant meets certain conditions as set forth in 35 U.S.C. 122.
• A request for voluntary publication, republication, or publication of a redacted application must be filed along with a copy of the application to be published via the USPTO's electronic filing system.

This information can be used by the USPTO to continue the processing of the patent or application or to ensure that applicants are complying with the patent regulations. The USPTO also uses the information to assist in the printing of patents, to calculate the correct fees, to route the correspondence to the correct departments, and to process orders. Other forms assist the USPTO in determining whether applications have been expressly abandoned, to expedite examination of design applications if so requested, and to assure that only those individuals who are authorized can access and copy applications.

The USPTO is adding a new form to this collection, PTO/SB/24A, Petition for Express Abandonment to Avoid Publication Under 37 CFR 1.138(c). This petition was originally part of the Express Abandonment Form (PTO/SB/24). When the petition option was selected on the form, the form had to be processed at a different office at the USPTO than other options on the express abandonment form. Therefore, to improve the efficiency and effectiveness of processing, it was decided to create a new form for the petition to ensure that the petition is correctly and promptly directed to the proper office for a decision.

The paper copy of the application for publication is being deleted from this collection. This requirement was never implemented, as the Electronic Filing System (EFS) was determined to be fully operable and reliable to only require an electronic copy of an application for purposes of voluntary publication, redacted publication, or republication of a patent application. There is no form associated with this requirement.

A Change Worksheet was approved by the Office of Management and Budget (OMB) on February 14, 2002, that deleted two forms from this collection, PTO/SB/61/PCT Petition for Revival of an International Application for Patent Designating the U.S. Abandoned Unavoidable under 37 CFR 1.137(a) and PTO/SB/64/PCT Petition for Revival of an International Application for Patent Designating the U.S. Abandoned Unintentionally under 37 CFR 1.137(b), and moved them into information collection 0651-0021 Patent Cooperation Treaty. The USPTO believes that these two forms more appropriately belong in 0651-0021 in the interest of uniformity and because the information contained in these two forms specifically applies to international applications. The values for these two forms were changed accordingly on the OMB Inventory listing for these two collections, but the forms were never physically moved out of 0651-0031 into 0651-0021. Therefore, forms PTO/SB/61/PCT and PTO/SB/64/PCT are now part of collection 0651-0021.

II. Method of Collection

By mail, facsimile, or hand delivery to the USPTO. The eIDS (electronic information disclosure statements) and the electronic filing system (EFS) copy of application for publication may be submitted electronically over the Internet.

III. Data

OMB Number: 0651-0031.

Form Number(s): PTO/SB/08A/08B/21/22/23/24/24A/25/26/27/30/31/32/35/36/37/42/43/61/62/63/64/67/68/91/92/96/97, PTO-2053-A/B, PTO-2054-A/B, PTO-2055-A/B, and electronic version of Information Disclosure Statements (eIDS).

Type of Review: Revision of a currently approved collection.

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

Estimated Number of Respondents: 2,202,764 responses per year.

Estimated Time Per Response: The USPTO estimates that it will take the public between 1 minute, 48 seconds (0.03 hours) to four hours, depending upon the complexity of the situation, to gather, prepare, and submit the various documents in this information collection. There are 30 forms associated with this collection.

Estimated Total Annual Respondent Burden Hours: 824,677 hours per year.

Estimated Total Annual Respondent Cost Burden: $151,736,520 per year. The USPTO expects that the transmittal form; the petition for extension of time under 37 CFR 1.136(a); express abandonment; requests to access, inspect and copy; deposit account order form; certificates of mailing; electronic filing system (EFS) copy of application for publication; copy of the applicant or patentee's record of the application (including copies of the correspondence, list of the correspondence, and statements verifying whether the record is complete or not); and the petition for express abandonment to avoid publication under 37 CFR 1.138(c) forms will be prepared by paraprofessionals. Using the paraprofessional rate of $30 per hour, the USPTO estimates that the respondent cost burden will be $7,578,660. The USPTO estimates that the other items in this collections will be prepared by associate attorneys in private firms. Using the professional hourly rate of $252 per hour for associate attorneys in private firms, the USPTO estimates $144,157,860 per year for salary costs associated with respondents for the other items in this information collection. The total respondent cost burden is $151,736,520 per year.

Item	Estimated time for response	Estimated annual responses	Estimated annual burden hours
Information Disclosure Statements—Paper	2 hours	265,300	530,600
eIDS (Information Disclosure Statements) filed	1 hour	14,000	14,000
Transmittal Form	12 minutes	1,039,500	207,900
Petition for Extension of Time under 37 CFR 1.138(a)	6 minutes	189,000	18,900
Petition for Extension of Time under 37 CFR 1.138(b)	30 minutes	54	27
Express Abandonment	12 minutes	13,825	2,765
Disclaimers	12 minutes	15,000	3,000
Request for Expedited Examination of a Design Application	12 minutes	130	26
Notice of Appeal	12 minutes	16,500	3,300
Information Disclosure Citation	2 hours	1,830	3,660
Petitions to Revive Unintentionally or Unavoidably Abandoned Applications	1 hour	4,940	4,940
Requests to Access, Inspect and Copy	12 minutes	18,650	3,730
Deposit Account Order Form	12 minutes	1,160	232
Certificates of Mailing	1 minute, 48 seconds	543,000	16,290
Statement Under 37 CFR 3,73(b)	12 minutes	19,450	3,890
Non-publication Request	6 minutes	31,500	3,150
Rescission of Non-publication Request	6 minutes	525	53
Electronic Filing System (EFS) Copy of Application for Publication	2 hours, 30 minutes	1,000	2,500
Copy of File Content Showing Redactions	4 hours	12	48
Copy of the Applicant or Patentee's Record of the Application (including copies of the correspondence, list of the correspondence, and statements verifying whether the record is complete or not)	1 hour	235	235
Request for Continued Examination (RCE)	12 minutes	26,000	5,200
Request for Oral Hearing Before the Board of Patent Appeals and Interferences	12 minutes	750	150
Request for Deferral of Examination 37 CFR 1.103(d)	12 minutes	53	11
Petition for express abandonment to avoid publication under 37 CFR 1.138(c)	12 minutes	350	70
Total		2,202,764	824,677

Estimated Total Annual Nonhour Respondent Cost Burden: $141,055,924. There are no maintenance costs associated with this information collection. However this collection does have capital start-up costs, record keeping costs, postage fees, and filing fees.

The capital start-up costs are associated with the information disclosure statements (IDS) that only cite U.S. patent documents which may be filed electronically via EFS and also with the republication, voluntary publication, early publication, or redacted publication of patent applications, which must be submitted to the USPTO via EFS. When an IDS or a republication, voluntary publication, early publication, or redacted publication of a patent application is completed electronically using ePAVE, the supporting attachments must be prepared in TIFF format, which may require a scanner if the supporting documents are not already in digital form. The average cost of a scanner is $200. The scanned or saved image files can be converted into standard TIFF format using image processing software. The electronic forms are prepared and submitted using the free ePAVE software from the USPTO, and the XML documents created by ePAVE can be viewed or printed with the free Internet Explorer version 5.5 browser. There are no costs to the applicant associated with the authoring software or ePave. The USPTO provides this software to the applicant after he or she applies to the USPTO for a digital certificate and is approved. Therefore, there is a total of $200 in capital start-up costs associated with this collection.

The public may submit the paper forms and petitions in this collection to the USPTO by mail through the United States Postal Service. If the submission is sent by first-class mail, the public may also include a signed certification of the date of mailing in order to receive credit for timely filing. The USPTO estimates that the average first-class postage cost for a mailed submission will be 49 cents, 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 2,187,764 submissions per year may be mailed to the USPTO at an average first-class postage cost of 49 cents, for a total postage cost of $1,072,004.

A record keeping cost of $450 is being added into this collection for the eIDS as well as for the EFS submissions. The applicant is strongly urged to retain a copy of the file submitted to the USPTO as evidence of authenticity in addition to keeping the acknowledgment receipt as clear evidence that on the date noted the file was received by the USPTO. The USPTO estimates that it will take 5 seconds (0.001 hours) to print and retain a copy of the eIDS and EFS submissions and that approximately 15,000 (14,000 eIDS and 1,000 EFS) submissions per year will use this option, for a total of 15 hours per year for printing this receipt. Using the paraprofessional rate of $30 per hour, the USPTO estimates that the record keeping cost associated with this collection will be $450 per year.

There is also annual nonhour cost burden in the way of filing fees associated with this collection. Since the filing fees have not previously been included in this collection for all items, the total number of filings is being used to calculate these costs. The submission of an Information Disclosure Statement (IDS) normally does not have any fees associated with it, unless it is submitted in the time frame defined by 37 CFR 1.97(c) or (d). When an IDS is submitted under 37 CFR 1.97(c) or (d), it is submitted late in the prosecution of the application, and a fee of $180 is required. It is estimated that 30,450 out of the total estimated 279,300 IDS filings per year will be filed under 37 CFR 1.97(c) or (d). When filing a request for deferral of examination, the applicant must pay the processing fee of $130 indicated by 37 CFR 1.17(i) and the publication fee of $300 indicated by 37 CFR 1.18(d). The combined filing cost of $430 for each request results in a total annual nonhour cost burden of $21,500 associated with this form.

The total estimated filing costs for this collection of $139,983,270 are calculated in the accompanying chart.

Item	Responses (a)	Filing fee ($) (b)	Total non-hour cost burden (a) × (b)
Submission of an Information Disclosure Statement (IDS) under 37 CFR 1.97(c) or (d)	30,450	$180.00	$5,481,000.00
Transmittal forms	1,039,500	None	0
One month extension of time under 37 CFR 1.136(a)	60,270	150.00	9,040,500.00
One month extension of time under 37 CFR 1.136(a) (small entity)	23,503	75.00	1,762,725.00
Two month extension of time under 37 CFR 1.136(a)	31,225	540.00	16,861,500.00
Two month extension of time under 37 CFR 1.136(a) (small entity)	12,891	270.00	3,480,570.00
Three month extension of time under 37 CFR 1.136(a)	32,724	1,240.00	40,577,760.00
Three month extension of time under 37 CFR 1.136(a) (small entity)	16,413	620.00	10,176,060.00
Four month extension of time under 37 CFR 1.136(a)	3,370	1,940.00	6,537,800.00
Four month extension of time under 37 CFR 1.136(a) (small entity)	2,267	970.00	2,198,990.00
Five month extension of time under 37 CFR 1.136(a)	2,163	2,640.00	5,710,320.00
Five month extension of time under 37 CFR 1.136(a) (small entity)	4,174	1,320.00	5,509,680.00
Extension of time under 37 CFR 1.136(b)	54	None	0
Express Abandonment	13,825	None	0
Petition for express abandonment to avoid publication under 37 CFR 1.138(c)	350	130.00	45,500.00
Statutory Disclaimer	11,250	110.00	1,237,500.00
Statutory Disclaimer (small entity)	3,750	55.00	206,250.00
Requests for Expedited Examination of a design application	130	900.00	117,000.00
Notice of Appeal	12,570	600.00	7,542,000.00
Notice of Appeal (small entity)	3,930	300.00	1,179,000.00
Request for an Oral Hearing	600	460.00	276,000.00
Request for an Oral Hearing (small entity)	150	230.00	34,500.00
Information Disclosure Citations	1,830	None	0
Petition to Revive Unavoidably Abandoned Application	170	110.00	18,700.00
Petition to Revive Unavoidably Abandoned Application (small entity)	235	55.00	12,925.00
Petition to Revive Unintentionally Abandoned Application	2,690	1,280.00	3,443,200.00
Petition to Revive Unintentionally Abandoned Application (small entity)	1,845	640.00	1,180,800.00
Requests to Access, Inspect and Copy	18,650	None	0
Deposit Account Order Form	1,160	None	0
Certificates of Mailing	543,000	None	0
Statement Under 37 CFR 3.73(b)	19,450	None	0
Non-publication Request	31,500	None	0
Rescission of Non-publication Request	525	None	0
Electronic Filing System (EFS) Copy of Application for Publication	1,000	None	0
Copy of File Content Showing Redactions	12	None	0
Copy of the Applicant or Patentee's Record of the Application (including copies of the correspondence, list of the correspondence, and statements verifying whether the record is complete or not)	235	None	0
Request for Continued Examination (RCE)	20,800	740.00	15,392,000.00
Request for Continued Examination (RCE) (small entity)	5,200	370.00	1,924,000.00
Processing fee for deferral of examination	53	130.00	6,890.00
Request for voluntary publication or republication	70	430.00	30,100.00
Total	1,953,984		139,983,270.00

The USPTO estimates that the total non-hour respondent cost burden for this collection in the form of capital start-up costs, record keeping costs, postage costs, and filing fees is 141,055,924.

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, including through 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: November 13, 2002.

Susan K. Brown,

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