2016-24592. Secrecy and License To Export

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 extension 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 December 12, 2016.

ADDRESSES:

You may submit comments by any of the following methods:

• Email: [e-mail]. Include “0651-0034 comment” in the subject line of the message.
• Mail: Marcie Lovett, Records Management Division Director, Office of the Chief Information Officer, United States Patent and Trademark Office, P.O. Box 1450, Alexandria, VA 22313-1450.

FOR FURTHER INFORMATION CONTACT:

Requests for additional information should be directed to Raul Tamayo, Senior 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 email 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

In the interest of national security, patent laws and rules place certain limitations on the disclosure of information contained in patents and patent applications and on the filing of applications for patents in foreign countries.

In particular, whenever the publication or disclosure of an invention by the publication of an application or by the granting of a patent is, in the opinion of the head of an interested Government agency, determined to be detrimental to national security, the Commissioner for Patents at the USPTO must issue a secrecy order and withhold the publication of a patent application and the grant of a patent for such period as the national interest requires. A patent will not be issued on the application, nor will the application be published, as long as the secrecy order is in force. If a secrecy order is applied to an international application, the application will not be forwarded to the International Bureau as long as the secrecy order is in force.

Three types of secrecy orders, each of a different scope, can be issued. The first type, Secrecy Order and Permit for Foreign Filing in Certain Countries, is intended to permit the widest utilization of the technical data in the patent application while still controlling any publication or disclosure that would result in an unlawful exportation. The second type, the Secrecy Order and Permit for Disclosing Classified Information, is to treat classified technical data presented in a patent application in the same manner as any other classified material. The third type of secrecy order is used where the other types of orders do not apply, including orders issued by direction of agencies other than the Department of Defense.

Under the provision of 35 U.S.C. 181, a secrecy order remains in effect for a period of one year from its date of issuance. A secrecy order may be renewed for additional periods of not more than one year upon notice by a government agency that the national interest continues to so require. The applicant is notified of such renewal.

When the USPTO places a secrecy order on a patent application, the rules authorize the applicant to petition the USPTO for permits to allow disclosure, modification, or rescission of the secrecy order, or to obtain a general or group permit. In each of these circumstances, the petition is forwarded to the appropriate defense agency for decision. Also, the Commissioner for Patents at the USPTO may rescind any order upon notification by the heads of the departments and the chief officers of the agencies who caused the order to be issued that the disclosure of the invention is no longer deemed detrimental to the national security.

Unless expressly ordered otherwise, action on the application and prosecution by the applicant will proceed during the time the application is under secrecy order to a specific point as indicated under 37 CFR 5.3. Applications under secrecy order that come to a final rejection must be appealed or otherwise prosecuted to avoid abandonment. Appeals in such cases must be completed by the applicant, but unless specifically indicated by the Commissioner for Patents at the USPTO, will not be set for hearing until the secrecy order is removed.

In addition to the issuance of secrecy orders, the USPTO is required to grant foreign filing licenses to applicants. The filing of a patent application is considered a request for a foreign filing license. However, in some instances an applicant may need a license for filing patent application in foreign countries prior to a filing in the USPTO or sooner than the anticipated licensing of a pending patent application.

To file a patent application in a foreign country, the applicant can petition the USPTO for a foreign filing license either with or without a corresponding United States application. In addition, the applicant can petition to change the scope of a license and, when a patent application is filed through error in a foreign country without the appropriate filing license, an applicant can petition the USPTO for a retroactive license.

This collection includes the information needed by the USPTO to review the various types of petitions regarding secrecy orders and foreign filing licenses. This collection of information is required by 35 U.S.C. 181-188 and administered through 37 CFR 5.1-5.33.

There are no forms associated with this collection of information.

II. Method of Collection

By mail, facsimile or hand carried to the USPTO.

III. Data

OMB Number: 0651-0034.

Form Number(s): None.

Type of Review: Revision of a currently approved collection.

Affected Public: Businesses or other for-profits; not-for-profit institutions.

Estimated Number of Respondents: 2,559 responses per year. The USPTO estimates that approximately 20% (507) of these responses will be from small entities.

Estimated Time per Response: The USPTO estimates that it will take the public from 30 minutes (0.5 hours) to 4 hours to gather the necessary information, prepare the appropriate documents, and submit the information required for this collection.

Estimated Total Annual Respondent Burden Hours: 1,607.5 hours.

Estimated Total Annual Respondent Cost Burden: $659,075.00. The USPTO expects that the information in this collection will be prepared by attorneys at an estimated rate of $410 per hour. Therefore, the USPTO estimates that the respondent cost burden for this collection will be approximately $659,075.00 per year.

Item	Estimated time for response (hours)	Estimated annual responses	Estimated annual burden hours	Rate ($/hr)
	(a)	(b)	(a) × (b)/60 = (c)
1. Petition for Rescission of Secrecy Order	3.0	10	30.0	410
2. Petition to Disclose or Modification of Secrecy Order	2.0	15	30.0	410
3. Petition for General and Group Permits	1.0	1	1.0	410
4. Petition for Expedited Handling of License (no corresponding application)	0.5	2,200	1,100.0	410
5. Petition for Expedited Handling of License (corresponding U.S. application)	0.5	250	125.0	410
6. Petition for Changing Scope of License	0.5	3	1.5	410
7. Petition for Retroactive License	4.0	80	320	410
Totals		2,559	1,607.5

Estimated Total Annual (Non-hour) Respondent Cost Burden: $448,267.70.

There are no capital start-up, maintenance, or record keeping costs associated with this information collection. However, this collection does have annual (non-hour) costs in the form of filing fees for the foreign filing petitions and postage costs. No fees are associated with the secrecy order petitions.

The license petitions all charge the 37 CFR 1.17(g) fee, for which small and micro entity discounts recently have been introduced. The USPTO estimates that 20% of the responses in this collection will come from small entities and approximately 10% of the small entity respondents will qualify as micro entities.

Item	Responses	Filing fee ($)	Total non-hour cost burden ($)
	(a)	(b)	(a) × (b) = (c)
1. Petition for Rescission of Secrecy Order	10	0.00	0.00
2. Petition to Disclose or Modification of Secrecy Order	15	0.00	0.00
3. Petition for General and Group Permits	1	0.00	0.00
4. Petition for Expedited Handling of License (no corresponding application)	1,716	200.00	343,200.00
4. Petition for Expedited Handling of License (no corresponding application) (small entity)	440	100.00	44,000.00
4. Petition for Expedited Handling of License (no corresponding application) (micro entity)	44	50.00	2,200.00
5. Petition for Expedited Handling of License (corresponding U.S. application)	195	200.00	39,000.00
5. Petition for Expedited Handling of License (corresponding U.S. application) (small entity)	50	100.00	5,000.00
5. Petition for Expedited Handling of License (corresponding U.S. application) (micro entity)	5	50.00	250.00
6. Petition for Changing Scope of License	1	200.00	200.00
6. Petition for Changing Scope of License (small entity)	1	100.00	100.00
6. Petition for Changing Scope of License (micro entity)	1	50.00	50.00
7. Petition for Retroactive License	62	200.00	12,400.00
7. Petition for Retroactive License (small entity)	16	100.00	1,600.00
7. Petition for Retroactive License (micro entity)	2	50.00	100.00
Totals	2,559		448,100.00

The USPTO estimates that 99% of the petitions in this collection are submitted by facsimile or hand carried because of the quick turnaround required. For the 1% of the public that chooses to submit the petitions to the USPTO by mail through the United States Postal Service, the USPTO estimates that the average postage cost for a USPS Priority Mail, flat-rate envelope submission is $6.45, and that 26 submissions will be mailed to the USPTO per year for a total estimated postage cost of $167.70.

Therefore, the USPTO estimates that the total (non-hour) cost burden for this collection in the form of filing fees and postage costs is estimated to be approximately $448,267.70.

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: October 3, 2016.

Rhonda Foltz,

Director, Office of Information Management Services, OCIO, United States Patent and Trademark Office.