2020-21517. Agency Information Collection Activities; Submission to the Office of Management and Budget (OMB) for Review and Approval; Comment Request; Patent Processing

AGENCY:

United States Patent and Trademark Office, Department of Commerce.

ACTION:

Notice of information collection; request for comment.

SUMMARY:

The United States Patent and Trademark Office (USPTO), in accordance with the Paperwork Reduction Act of 1995, invites comments on the extension and revision of an existing information collection: 0651-0031 (Patent Processing). The purpose of this notice is to allow 60 days for public comment preceding submission of the information collection to OMB.

DATES:

To ensure consideration, comments regarding this information collection must be received on or before November 30, 2020.

ADDRESSES:

Interested persons are invited to submit written comments by any of the following methods. Do not submit Confidential Business Information or otherwise sensitive or protected information.

• Email: [e-mail]. Include “0651-0031 comment” in the subject line of the message.
• Federal Rulemaking Portal: http://www.regulations.gov.
• Mail: Kimberly Hardy, Office of the Chief Administrative 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 “0651-0031 comment” in the subject line. Additional information about this information collection is also available at http://www.reginfo.gov under “Information Collection Review.”

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. The USPTO is also required to publish patent applications, with certain exceptions, promptly after the expiration of a period of 18 months from the earliest filing date for which a benefit is sought under Title 35, United States Code (“eighteen-month publication”). This information collection covers certain situations that may arise which require that additional information be supplied in order for the USPTO to further process the patent or application.

The information in this collection is used by the USPTO to continue the processing of the patent or application to ensure that applicants are complying with the patent regulations and to aid in the prosecution of the application. In addition, this renewal proposes to remove three items related to patent appeals and associate all submissions of those items to an existing information collection (0651-0063, Patent Trial and Appeal Board Appeals). These three items are: Notice of Appeal, Amendment to Cancel Claims During an Appeal, and Request for Oral Hearing.

II. Method of Collection

Items in this information collection may be submitted via online electronic submissions. In limited circumstances, applicants may be permitted to submit the information in paper form by mail, fax, or hand delivery.

III. Data

OMB Number: 0651-0031.

Form Number(s): (AIA = American Invents; SB = Specimen Book; PTOL = Patent and Trademark Office Legal)

• PTO/SB/08a/08b (Information Disclosure Statements)
• PTO/SB/21 (Transmittal Form)
• PTO/SB/22 and PTO/AIA/22 (Petitions for Extension of Time under 37 CFR 1.136(a))
• PTO/SB/24 and PTO/AIA/24 (Express Abandonment under 37 CFR 1.138)
• PTO/SB/25/26/43/63 (Statutory Disclaimers)
• PTO/SB/27 (Request for Expedited Examination of a Design Application)
• PTO/SB/61/64 (Petition for Revival of an Application for Patent Abandoned Unintentionally)
• PTO/SB/64a (Petition for Revival of an Application for Patent Abandoned for Failure to Notify the Office of a Foreign or International Filing)
• PTO/SB/67/68 (Requests to Access, Inspect, and Copy)
• PTO/SB/91 (Deposit Account Order Form)
• PTO/SB/92 (Certificates of Mailing or Transmission)
• PTO/SB/96 and PTO/AIA/96 (Statement under 37 CFR 3.73(b))
• PTO/SB/35 (Non-Publication Request)
• PTO/SB/36 (Rescission of Previous Non-Publication Request (35 U.S.C. 122(b)(2)(B)(ii) and, if applicable, Notice of Foreign Filing (35 U.S.C. 122(b)(2)(B)(iii))
• PTO-2053-A/B, PTO-2054-A/B, and PTO-2055-A/B (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))
• PTO/SB/30 (Request for Continued Examination (RCE) Transmittal)
• PTO/SB/37 (Request for Suspension of Action or Deferral of Examination under 37 CFR 1.103(b), (c), or (d))
• PTOL/413A (Applicant-Initiated Interview Request Form)
• PTO/SB/17i (Processing Fee under 37 CFR 1.17(i) Transmittal)
• PTO/SB/38 (Request to Retrieve Electronic Priority Application(s) under 37 CFR 1.55(d))
• PTO/SB/39 (Authorization or Rescission of Authorization to Permit Access to Application-as-filed by Participating Offices under 37 CFR 1.14(h))
• PTO/SB/24B and PTO/AIA/24B (Petition for Express Abandonment to Obtain a Refund)
• PTO/SB/33 and PTO/AIA/33 (Pre-Appeal Brief Request for Review)
• PTOL-413C (Request for First-Action Interview (Pilot Program))
• PTO/SB/130 (Petition to Make Special Based on Age for Advancement of Examination under 37 CFR 1.102(c)(1))

Type of Review: Revision of a currently approved information collection.

Affected Public: Private sector; individuals or households.

Estimated Number of Respondents: 3,669,397 respondents per year.

Estimated Number of Responses: 3,669,397 responses per year.

Estimated Time per Response: The USPTO estimates that it will take respondents between 2 minutes (.03 hours) and 8 hours to submit an item in this information collection depending on the instrument used, including the time to gather the necessary information, prepare the appropriate form or petition, and submit the completed request to the USPTO.

Estimated Total Annual Respondent Burden Hours: 3,187,341 hours.

Estimated Total Annual Respondent (Hourly) Cost Burden: $842,416,575.

Table 1—Total Hourly Burden For Private Sector Respondents

Item No.	Item	Estimated annual respondents	Estimated annual responses (year)	Estimated time for response (hours)	Estimated annual burden (hour/year)	Rate 1 ($/hour)	Estimated annual burden
			(a)	(b)	(a) × (b) = c	(d)	(c) × (d) = e
1	Information Disclosure Statements that require the fee set forth in 37 CFR 1.17(p)	624,824	624,824	2	1,249,648	$400	$499,859,200
2	Transmittal Form	663,023	663,023	2	1,326,046	145	192,276,670
3	Petition for Extension of Time under 37 CFR 1.136(a)	252,184	252,184	.3 (18 minutes)	75,655	145	10,969,975
4	Express Abandonment under 37 CFR 1.138	1,838	1,838	.25 (15 minutes)	460	145	66,700
5	Statutory Disclaimers (including terminal disclaimers)	57,891	57,891	.25 (15 minutes)	14,473	400	5,789,200
6	Request for Expedited Examination of a Design Application	1,034	1,034	.25 (15 minutes)	259	400	103,600
7	Petition for Revival of an Application for Patent Abandoned Unintentionally	7,666	7,666	1	7,666	400	3,066,400
8	Petition for Revival of an Application for Patent Abandoned for Failure to Notify the Office of a Foreign or International Filing	140	140	1	140	400	56,000
9	Requests to Access, Inspect and Copy	824,500	824,500	.25 (15 minutes)	206,125	145	29,888,125
10	Deposit Account Order Form	64,460	64,460	.25 (15 minutes)	16,115	145	2,336,675
11	Certificates of Mailing or Transmission	582,000	582,000	.03 (2 minutes)	17,460	145	2,531,700
12	Statement Under 37 CFR 3.73(c)	172,469	172,469	.25 (15 minutes)	43,117	400	17,246,900
13	Non-publication Request	21,340	21,340	.25 (15 minutes)	5,335	400	2,134,000
14	Rescission of Previous Non-publication Request (35 U.S.C. § 122(b)(2)(B)(ii) and, if applicable, Notice of Foreign Filing (35 U.S.C. § 122(b)(2)(B)(iii)	2,134	2,134	.25 (15 minutes)	534	400	213,600
15	Electronic Filing System (EFS) Copy of Application for Publication	1	1	2.5	3	145	435
16	Copy of File Content Showing Redactions	1	1	4	4	400	1,600
17	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)	6	6	2	12	145	1,740
18	Request for Continued Examination (RCE) Transmittal	154,766	154,766	.3 (18 minutes)	46,430	400	18,572,000
19	Request for Suspension of Action or Deferral of Examination Under 37 CFR 1.103(b), (c), or (d)	832	832	.2 (12 minutes)	166	400	66,400
20	Request for Voluntary Publication or Republication (includes publication fee for republication)	134	134	.2 (12 minutes)	27	145	3,915
21	Applicant Initiated Interview Request Form	30,557	30,557	.4 (24 minutes)	12,223	400	4,889,200
22	Processing Fee Under 37 CFR 1.17(i) Transmittal	119	119	.08 (5 minutes)	10	400	4,000
23	Request to Retrieve Electronic Priority Application (s) Under 37 CFR 1.55(h)	5,858	5,858	.25 (15 minutes)	1,465	400	585,600
24	Authorization or Rescission of Authorization to Permit Access to Application-as-filed by Participating Offices Under 37 CFR 1.14(h)	7,747	7,747	.25 (15 minutes)	1,937	400	774,800
25	Petition for Express Abandonment to Obtain a Refund	1,827	1,827	.2 (12 minutes)	365	400	146,000
26	Pre-Appeal Brief Request for Review	7,760	7,760	5	38,800	400	15,520,000
27	Request for Corrected Filing Receipt	42,089	42,089	.08 (5 minutes)	3,367	145	488,215
28	Request for First Action Interview (Pilot Program) (Electronic only)	2,026	2,026	2.5	5,065	400	2,026,000
29	Petition to Make Special Based on Age for Advancement of Examination under 37 CFR 1.102(c)(1) (EFS-Web only)	1,471	1,471	2	2,942	400	1,176,800
30	Filing a submission after final rejection (see 37 CFR 1.129(a))	93	93	8	744	400	297,600
31	Correction of inventorship after first office action on the merits	2,910	2,910	.75 (45 minutes)	2,183	400	873,200
32	Request for correction in a patent application relating to inventorship or an inventor name, or order of names, other than in a reissue application (37 CFR 1.48)	14,216	14,216	.75 (45 minutes)	10,662	400	4,264,800
33	Request to correct or update the name of the applicant under 37 CFR 1.46(c)(1), or change the applicant under 37 CFR 1.46(c)(2)	11,398	11,398	.2 (12 minutes)	2,280	400	912,000
Total		3,559,314	3,559,314		3,091,718		817,143,050
1 2019 Report of the Economic Survey, published by the Committee on Economics of Legal Practice of the American Intellectual Property Law Association (AIPLA); https://www.aipla.org/​detail/​journal-issue/​2019-report-of-the-economic-survey. The USPTO uses the mean rate for attorneys in private firms which is $400 per hour. The hourly rate for paraprofessional/paralegals is estimated at $145 from data published in the 2018 Utilization and Compensation Survey by the National Association of Legal Assistants (NALA).

Table 2—Total Hourly Burden for Individuals and Households Respondents

Item No.	Item	Estimated annual respondents	Estimated annual responses (year)	Estimated time for response (hours)	Estimated annual burden (hour/year)	Rate 2 ($/hour)	Estimated annual burden
			(a)	(b)	(a) × (b) = c	(d)	(c) × (d) = e
1	Information Disclosure Statements that require the fee set forth in 37 CFR 1.17(p)	19,324	19,324	2	38,648	$400	$15,459,200
2	Transmittal Form	20,506	20,506	2	41,012	145	5,946,740
3	Petition for Extension of Time under 37 CFR 1.136(a)	7,800	7,800	.3 (18 minutes)	2,340	145	339,300
4	Express Abandonment under 37 CFR 1.138	57	57	.25 (15 minutes)	14	145	2,030
5	Statutory Disclaimers (including terminal disclaimers)	1,790	1,790	.25 (15 minutes)	448	400	179,200
6	Request for Expedited Examination of a Design Application	32	32	.25 (15 minutes)	8	400	3,200
7	Petition for Revival of an Application for Patent Abandoned Unintentionally	237	237	1	237	400	94,800
8	Petition for Revival of an Application for Patent Abandoned for Failure to Notify the Office of a Foreign or International Filing	4	4	1	4	400	1,600
9	Requests to Access, Inspect and Copy	25,500	25,500	.25 (15 minutes)	6,375	145	924,375
10	Deposit Account Order Form	1,994	1,994	.25 (15 minutes)	499	145	72,355
11	Certificates of Mailing or Transmission	18,000	18,000	.03 (2 minutes)	540	145	78,300
12	Statement Under 37 CFR 3.73(c)	5,334	5,334	.25 (15 minutes)	1,334	400	533,600
13	Non-publication Request	660	660	.25 (15 minutes)	165	400	66,000
14	Rescission of Previous Non-publication Request (35 U.S.C. § 122(b)(2)(B)(ii) and, if applicable, Notice of Foreign Filing (35 U.S.C. § 122(b)(2)(B)(iii)	66	66	.25 (15 minutes)	17	400	6,800
18	Request for Continued Examination (RCE) Transmittal	4,787	4,787	.3 (18 minutes)	1,436	400	574,400
19	Request for Suspension of Action or Deferral of Examination Under 37 CFR 1.103(b), (c), or (d)	26	26	.2 (12 minutes)	5	400	2,000
20	Request for Voluntary Publication or Republication (includes publication fee for republication)	4	4	.2 (12 minutes)	1	145	145
21	Applicant Initiated Interview Request Form	945	945	.4 (24 minutes)	378	400	151,200
22	Processing Fee Under 37 CFR 1.17(i) Transmittal	4	4	.08 (5 minutes)	1	400	400
23	Request to Retrieve Electronic Priority Application (s) Under 37 CFR 1.55(h)	181	181	.25 (15 minutes)	45	400	18,000
24	Authorization or Rescission of Authorization to Permit Access to Application-as-filed by Participating Offices Under 37 CFR 1.14(h)	240	240	.25 (15 minutes)	60	400	24,000
25	Petition for Express Abandonment to Obtain a Refund	56	56	.2 (12 minutes)	11	400	4,400
26	Pre-Appeal Brief Request for Review	240	240	5	1,200	400	480,000
27	Request for Corrected Filing Receipt	1,302	1,302	.08 (5 minutes)	104	145	15,080
28	Request for First Action Interview (Pilot Program) (Electronic only)	63	63	2.5	158	400	63,200
29	Petition to Make Special Based on Age for Advancement of Examination under 37 CFR 1.102(c)(1) (EFS-Web only)	45	45	2	90	400	36,000
30	Filing a submission after final rejection (see 37 CFR 1.129(a))	3	3	8	24	400	9,600
31	Correction of inventorship after first office action on the merits	90	90	.75 (45 minutes)	68	400	27,200
32	Request for correction in a patent application relating to inventorship or an inventor name, or order of names, other than in a reissue application (37 CFR 1.48)	440	440	.75 (45 minutes)	330	400	132,000
33	Request to correct or update the name of the applicant under 37 CFR 1.46(c)(1), or change the applicant under 37 CFR 1.46(c)(2)	353	353	.2 (12 minutes)	71	400	28,400
Total		110,083	110,083		95,623		25,273,525
2 2019 Report of the Economic Survey, published by the Committee on Economics of Legal Practice of the American Intellectual Property Law Association (AIPLA); https://www.aipla.org/​detail/​journal-issue/​2019-report-of-the-economic-survey. The USPTO uses the mean rate for attorneys in private firms which is $400 per hour. The hourly rate for paraprofessional/paralegals is estimated at $145 from data published in the 2018 Utilization and Compensation Survey by the National Association of Legal Assistants (NALA).

Estimated Total Annual Non-Hour Respondent Cost Burden: $408,845,999.

There are no recordkeeping, maintenance, or capital start-up costs associated with this information collection. However, this information collection has annual non-hour costs in the form of filing fees, as estimated in Table 3, and postage costs. The public may submit the paper forms and petitions in this information 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 approximately 166,111 submissions per year may be mailed. The USPTO estimates that the average submission will be mailed in a legal flat-rate Priority Mail envelope at a cost of $8.05; resulting in a total postage cost of $1,377,194.

Table 3—Filing Fees

Item No.	Item	Estimated annual responses	Estimated cost	Estimated non-hour cost burden
		(a)	(b)	(a) × (b)
1	Information Disclosure Statements (IDS) that require the fee set forth in 37 CFR 1.17(p) (large entity)	$108,938	$260	$28,323,880
1	IDS that require the fee set forth in 37 CFR 1.17(p) (small entity)	27,198	130	3,535,740
1	IDS that require the fee set forth in 37 CFR 1.17(p) (micro entity)	770	65	50,050
3	One-month Extension of Time under 37 CFR 1.136(a) (large entity)	84,428	220	18,574,160
3	One-month Extension of Time under 37 CFR 1.136(a) (small entity)	34,564	110	3,802,040
3	One-month Extension of Time under 37 CFR 1.136(a) (micro entity)	4,035	55	221,925
3	Two-month Extension of Time under 37 CFR 1.136(a) (large entity)	36,165	640	23,145,600
3	Two-month Extension of Time under 37 CFR 1.136(a) (small entity)	19,728	320	6,312,960
3	Two-month Extension of Time under 37 CFR 1.136(a) (micro entity)	2,346	160	375,360
3	Three-month Extension of Time under 37 CFR 1.136(a) (large entity)	30,668	1480	45,388,640
3	Three-month Extension of Time under 37 CFR 1.136(a) (small entity)	30,442	740	22,527,080
3	Three-month Extension of Time under 37 CFR 1.136(a) (micro entity)	3,227	370	1,193,990
3	Four-month Extension of Time under 37 CFR 1.136(a) (large entity)	1,860	2320	4,315,200
3	Four-month Extension of Time under 37 CFR 1.136(a) (small entity)	2,366	1160	2,744,560
3	Four-month Extension of Time under 37 CFR 1.136(a) (micro entity)	294	580	170,520
3	Five-month Extension of Time under 37 CFR 1.136(a) (large entity)	2,038	3160	6,440,080
3	Five-month Extension of Time under 37 CFR 1.136(a) (small entity)	2,257	1580	3,566,060
3	Five-month Extension of Time under 37 CFR 1.136(a) (micro entity)	182	790	143,780
5	Statutory Disclaimer (including terminal disclaimer) (large entity)	44,625	170	7,586,250
5	Statutory Disclaimer (including terminal disclaimer) (small entity)	14,365	170	2,442,050
5	Statutory Disclaimer (including terminal disclaimer) (micro entity)	691	170	117,470
6	Request for Expedited Examination of a Design Application (large entity)	381	1600	609,600
6	Request for Expedited Examination of a Design Application (small entity)	468	800	374,400
6	Request for Expedited Examination of a Design Application (micro entity)	218	400	87,200
8	Petition for Revival of an Application for Patent Abandoned Unintentionally (large entity)	3,006	2100	6,312,600
8	Petition for Revival of an Application for Patent Abandoned Unintentionally (small entity)	3,730	1050	3,916,500
8	Petition for Revival of an Application for Patent Abandoned Unintentionally (micro entity)	1,167	525	612,675
9	Petition for revival of an application for patent abandoned for failure to notify the office of a foreign or international filing (large entity)	108	2100	226,800
9	Petition for revival of an application for patent abandoned for failure to notify the office of a foreign or international filing (small entity)	22	1050	23,100
9	Petition for revival of an application for patent abandoned for failure to notify the office of a foreign or international filing (micro entity)	14	525	7,350
17	Copy of File Content Showing Redactions	1	140	140
19	Request for Continued Examination (RCE) Transmittal (First Request) (large entity)	74,458	1360	101,262,880
19	Request for Continued Examination (RCE) Transmittal (First Request) (small entity)	26,592	680	18,082,560
19	Request for Continued Examination (RCE) Transmittal (First Request) (micro entity)	5,318	340	1,808,120
19	Request for Continued Examination (RCE) Transmittal (Second and Subsequent Requests) (large entity)	37,076	2000	74,152,000
19	Request for Continued Examination (RCE) Transmittal (Second and Subsequent Requests) (small entity)	13,241	1000	13,241,000
19	Request for Continued Examination (RCE) Transmittal (Second and Subsequent Requests) (micro entity)	2,648	500	1,324,000
21	Request for Suspension of Action or Deferral of Examination Under 37 CFR 1.103(b), (c), or (d) (large entity)	601	220	132,220
21	Request for Suspension of Action or Deferral of Examination Under 37 CFR 1.103(b), (c), or (d) (small entity)	215	110	23,650
21	Request for Suspension of Action or Deferral of Examination Under 37 CFR 1.103(b), (c), or (d) (micro entity)	42	55	2,310
22	Request for Voluntary Publication or Republication (includes publication fee for republication)	138	140	19,320
24	Processing Fee Under 37 CFR 1.17(i) Transmittal	123	140	17,220
32	Filing a submission after final rejection (see 37 CFR 1.129(a)) (large entity)	46	880	40,480
32	Filing a submission after final rejection (see 37 CFR 1.129(a)) (small entity)	44	440	19,360
32	Filing a submission after final rejection (see 37 CFR 1.129(a)) (micro entity)	5	220	1,100
33	Correction of inventorship after first office action on the merits (large entity)	1156	640	739,840
33	Correction of inventorship after first office action on the merits (small entity)	793	320	253,760
33	Correction of inventorship after first office action on the merits (micro entity)	62	160	9,920
34	Request for correction in a patent application relating to inventorship or an inventor name, or order of names, other than in a reissue application (37 CFR 1.48) (large entity)	10,259	260	2,667,340
34	Request for correction in a patent application relating to inventorship or an inventor name, or order of names, other than in a reissue application (37 CFR 1.48) (small entity)	3,664	130	476,320
34	Request for correction in a patent application relating to inventorship or an inventor name, or order of names, other than in a reissue application (37 CFR 1.48) (micro entity)	733	65	47,645
Total				407,468,805

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

IV. Request for Comments

The USPTO is soliciting public comments to:

(a) Evaluate whether the proposed collection of information is necessary for the proper performance of the functions of the Agency, including whether the information will have practical utility;

(b) Evaluate the accuracy of the Agency's estimate of the burden of the proposed collection of information, including the validity of the methodology and assumptions used;

(c) Enhance the quality, utility, and clarity of the information to be collected; and

(d) Minimize the burden of the collection of information on those who are to respond, including through the use of appropriate automated, electronic, mechanical, or other technological collection techniques or other forms of information technology, e.g., permitting electronic submission of responses.

All comments submitted in response to this notice are a matter of public record. USPTO will include or summarize each comment in the request to OMB to approve this information collection. Before including an address, phone number, email address, or other personal identifying information in a comment, be aware that the entire comment— including personal identifying information—may be made publicly available at any time. While you may ask in your comment to withhold personal identifying information from public view, USPTO cannot guarantee that it will be able to do so.

Kimberly Hardy,

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