[Federal Register: October 17, 2003 (Volume 68, Number 201)]
[Notices]
[Page 59783-59785]
From the Federal Register Online via GPO Access [wais.access.gpo.gov]
[DOCID:fr17oc03-33]
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DEPARTMENT OF COMMERCE
Patent and Trademark Office
Post Allowance and Refiling
ACTION: Proposed collection; comment request.
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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 December 16,
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, PO Box 1450, Alexandria, VA 22313, Attn: CPK 3 Suite 310; by e-mail at susan.brown@uspto.gov; or by
facsimile at (703) 308-7407.
FOR FURTHER INFORMATION CONTACT: Requests for additional information
should be directed to Robert J. Spar, Director, Office of Patent Legal
Administration, USPTO, PO Box 1450, Alexandria, VA 22313-1450; by telephone at (703) 308-5107; or by e-mail at bob.spar@uspto.gov.
SUPPLEMENTARY INFORMATION
I. Abstract
The United States Patent and Trademark Office (USPTO) is required
by 35 U.S.C. 131 and 151 to examine applications and, when appropriate,
allow applications and issue them as patents. When an application for a
patent is allowed by the USPTO, the USPTO issues a notice of allowance
and the applicant must pay the specified issue fee (including the
publication fee, if applicable) within three months to avoid
abandonment of the application. If the appropriate fees are paid within
the proper time period, the USPTO can then issue the patent. If the
fees are not paid within the designated time period, the application is
abandoned and the applicant may petition the Director to accept a
delayed payment with a satisfactory showing that the delay was
unavoidable. This Petition for Revival of an Application for Patent
Abandoned Unavoidably (Form PTO/SB/61) is approved under information
collection 0651-0031. The rules outlining the procedures for payment of
the issue fee and issuance of a patent are found at 37 CFR 1.18 and
1.311-1.317.
Chapter 25 of Title 35 U.S.C. provides that there are several
actions that the applicant may take after issuance of a patent,
including requesting the correction of errors in a patent. For original
patents that are deemed wholly or partly inoperative, applicants may
file a reissue application, which entails several formal requirements
including an oath or declaration that the errors in the patent were not
the result of any deceptive intention on the part of the applicant. The
rules outlining these procedures are found at 37 CFR 1.171-1.179 and
1.322-1.325.
Chapter 30 of Title 35 U.S.C. provides that any person at any time
may file a request for reexamination by the USPTO of any claim of a
patent on the basis of prior art patents or printed publications. Once
initiated, the reexamination proceedings are substantially ex parte and
do not permit input from third parties, but Chapter 31 also provides
for optional inter partes reexamination allowing third parties to
participate. The rules outlining ex parte and inter partes
reexaminations are found at 37 CFR 1.510-1.570 and 1.902-1.997.
If a request for ex parte or inter partes reexamination is denied,
the requester may petition the Director to review the examiner's
refusal of reexamination. The USPTO is adding these two petitions, the
Petition to Review Refusal to Grant Ex Parte Reexamination (37 CFR
1.515(c)) and the Petition to Review Refusal to Grant Inter Partes
Reexamination (37 CFR 1.927), to this information collection. These
petitions are not new requirements but were not previously covered in
this collection. No forms are provided for these petitions.
The public uses this information collection to request corrections
of errors in issued patents, to request reissue patents, to request
reexamination proceedings, and to ensure that associated fees and
documentation are submitted to the USPTO. The USPTO provides 10 paper
forms that the public may use to submit the necessary information for
these requirements, although there are no forms provided for some of
the documentation necessary for a reissue application.
This collection was previously approved by OMB in January 2001, at
which time Form PTO/SB/58 Request for Inter Partes Reexamination was
added to this collection to support the USPTO's amended rules of
practice implementing third party reexamination proceedings as found in
the American Inventors Protection Act of 1999. In May 2001, OMB
approved a change worksheet to delete Form PTO/SB/54 Reissue
Application by the Assignee, Offer to Surrender Patent from this
collection due to the elimination of the requirement to file an offer
to surrender the original patent at the time of filing a reissue
application. The USPTO also revised Form PTOL-85B Issue Fee Transmittal
in order to support a change in practice regarding publication fees and
to accommodate the acceptance of payments by credit card. In November
2001, OMB approved another change worksheet that increased the total
responses and burden hours as an administrative adjustment to reflect a
[[Page 59784]]
net increase in filings for the items covered under this collection.
The USPTO also recently submitted this collection in conjunction
with a notice of proposed rulemaking entitled ``Changes to Support
Implementation of the United States Patent and Trademark Office 21st
Century Strategic Plan'' (RIN 0651-AB64), which was published in the
Federal Register on September 12, 2003 (Vol. 68, No. 177). The proposed
rulemaking would eliminate the requirement in 37 CFR 1.178 for a ribbon
copy of the patent grant to be surrendered in a reissue application and
consequently delete Form PTO/SB/55 Reissue Patent Application Statement
as to Loss of Original Patent from this collection. The rulemaking
would also allow applicants to use electronic signatures to sign patent
and examination proceeding documents that have been created
electronically with a word processor or obtained from the USPTO website
as fillable forms. The information collection package for 0651-0033
associated with this proposed rulemaking is currently under review at
OMB.
II. Method of Collection
By mail, facsimile, or hand delivery to the USPTO.
III. Data
OMB Number: 0651-0033.
Form Number(s): PTO/SB/44/50/51/51S/52/53/56/57/58 and PTOL-85B.
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: 223,411 responses per year. This
estimate includes the decrease of 95 responses per year that would
result from the deletion of Form PTO/SB/55 Reissue Patent Application
Statement as to Loss of Original Patent, which is currently under
review at OMB.
Estimated Time Per Response: The USPTO estimates that it will take
the public from 1.8 minutes (0.03 hours) to 2 hours to gather the
necessary information, prepare the appropriate form or other document,
and submit the information to the USPTO.
Estimated Total Annual Respondent Burden Hours: 67,261 hours per
year. This estimate includes the decrease of 5 hours per year that
would result from the deletion of Form PTO/SB/55 Reissue Patent
Application Statement as to Loss of Original Patent, which is currently
under review at OMB.
Estimated Total Annual Respondent Cost Burden: $8,380,572 per year.
The USPTO expects that the information in this collection will be
prepared by attorneys, except for the Issue Fee Transmittal, which will
be prepared by paraprofessionals. Using the professional rate of $252
per hour for associate attorneys in private firms, the USPTO estimates
that the respondent cost burden for attorneys submitting the
information in this collection will be $7,222,572 per year. Using the
paraprofessional rate of $30 per hour, the USPTO expects that the
respondent cost burden for submitting the Issue Fee Transmittal form
will be $1,158,000 per year. These estimates exclude the respondent
cost burden for Form PTO/SB/55 Reissue Patent Application Statement as
to Loss of Original Patent due to the pending deletion of this form in
the 0651-0033 information collection submission that is currently under
review at OMB.
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Estimated Estimated
Item Form number Estimated time for annual annual burden
response responses hours
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Certificate of Correction...... PTO/SB/44.............. 1 hour................ 25,000 25,000
Reissue Documentation.......... None................... 2 hours............... 870 1,740
Reissue Patent Application PTO/SB/50.............. 12 minutes............ 870 174
Transmittal.
Reissue Application Declaration PTO/SB/51/52........... 30 minutes............ 870 435
by the Inventor or the
Assignee.
Supplemental Declaration for PTO/SB/51S............. 1.8 minutes........... 550 17
Reissue Patent Application to
Correct ``Errors'' Statement
(37 CFR 1.175).
Reissue Application: Consent of PTO/SB/53.............. 6 minutes............. 850 85
Assignee; Statement of Non-
assignment.
Reissue Application Fee PTO/SB/56.............. 12 minutes............ 870 174
Transmittal Form.
Request for Ex Parte PTO/SB/57.............. 2 hours............... 330 660
Reexamination Transmittal Form.
Request for Inter Partes PTO/SB/58.............. 2 hours............... 175 350
Reexamination Transmittal Form.
Petition to Review Refusal to None................... 1 hour................ 25 25
Grant Ex Parte Reexamination.
Petition to Review Refusal to None................... 1 hour................ 1 1
Grant Inter Partes
Reexamination.
Issue Fee Transmittal.......... PTOL-85B............... 12 minutes............ 193,000 38,600
--------------------------
Total...................... 223,411 67,261
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Estimated Total Annual Non-hour Respondent Cost Burden:
$257,516,601 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 filing fees and postage costs.
The total estimated annual filing fees for this collection are
calculated in the accompanying chart. The fees listed correspond to the
USPTO Fee Schedule effective October 1, 2003. The Reissue Fee
Transmittal Form includes the filing fees for the reissue application
(including small entities) and covers all parts of the application,
including reissue documentation, reissue application transmittal,
reissue application declarations, and consent of assignee or statement
of non-assignment. There is no fee for the supplemental declaration for
a reissue patent application to correct an ``errors'' statement.
Additionally, there are several different issue fees under 37 CFR
1.18 depending on the type of patent being issued, whether a
publication fee is required, and whether the inventor is entitled to
the discounted small entity fee. The additional publication fee may not
be owed at the time of patent issue for any of the following reasons:
(1) The application requested non-publication under 35 U.S.C.
122(b)(2)(B)(i); (2) the application will not be published due to
national security concerns as provided in 35 U.S.C. 122(d); (3) the
applicant has paid the publication fee prior to issue due to a request
for early or amended publication under 37 CFR 1.219; or (4) the
application was filed prior to November 29, 2000 and therefore not
[[Page 59785]]
subject to eighteen-month publication under 35 U.S.C. 122(b). The USPTO
estimates that the total filing costs associated with this collection
will be $257,407,130 per year.
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Estimated
Item Form No. annual Fee amount Estimated annual
responses filing costs
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Certificate of Correction......... PTO/SB/44................. 25,000 $100.00 $2,500,000.00
Reissue Documentation............. None...................... 870 0.00 0.00
Reissue Patent Application PTO/SB/50................. 870 0.00 0.00
Transmittal.
Reissue Application Declaration by PTO/SB/51/52.............. 870 0.00 0.00
the Inventor or the Assignee.
Supplemental Declaration for PTO/SB/51S................ 550 0.00 0.00
Reissue Patent Application to
Correct ``Errors'' Statement (37
CFR 1.175).
Reissue Application: Consent of PTO/SB/53................. 850 0.00 0.00
Assignee; Statement of Non-
assignment.
Reissue Application Fee PTO/SB/56................. 520 770.00 400,400.00
Transmittal Form.
Reissue Application Fee PTO/SB/56................. 350 385.00 134,750.00
Transmittal Form (small entity).
Request for Ex Parte Reexamination PTO/SB/57................. 330 2,520.00 831,600.00
Transmittal Form.
Request for Inter Partes PTO/SB/58................. 175 8,800.00 1,540,000.00
Reexamination Transmittal Form.
Petition to Review Refusal to None...................... 25 130.00 3,250.00
Grant Ex Parte Reexamination.
Petition to Review Refusal to None...................... 1 130.00 130.00
Grant Inter Partes Reexamination.
Issue Fee (utility patent, no PTOL-85B.................. 25,000 1,330.00 33,250,000.00
publication fee).
Issue Fee (utility patent, no PTOL-85B.................. 9,000 665.00 5,985,000.00
publication fee, small entity).
Issue Fee (utility patent, with PTOL-85B.................. 105,000 1,630.00 171,150,000.00
publication fee).
Issue Fee (utility patent, with PTOL-85B.................. 36,000 965.00 34,740,000.00
publication fee, small entity).
Issue Fee (design patent, no PTOL-85B.................. 8,500 480.00 4,080,000.00
publication fee).
Issue Fee (design patent, no PTOL-85B.................. 8,500 240.00 2,040,000.00
publication fee, small entity).
Issue Fee (plant patent, no PTOL-85B.................. 120 640.00 76,800.00
publication fee).
Issue Fee (plant patent, no PTOL-85B.................. 80 320.00 25,600.00
publication fee, small entity).
Issue Fee (plant patent, with PTOL-85B.................. 480 940.00 451,200.00
publication fee).
Issue Fee (plant patent, with PTOL-85B.................. 320 620.00 198,400.00
publication fee, small entity).
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Total....................... .......................... 223,411 .............. $257,407,130.00
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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 49
cents and that up to 223,411 submissions will be mailed to the USPTO
per year. The total estimated postage cost for this collection is
$109,471 per year.
These estimated annual (non-hour) costs exclude the costs for Form
PTO/SB/55 Reissue Patent Application Statement as to Loss of Original
Patent due to the pending deletion of this form in the 0651-0033
information collection submission that is currently under review at
OMB. The total non-hour respondent cost burden for this collection in
the form of filing fees and postage costs is $257,516,601 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: October 10, 2003.
Susan K. Brown,
Records Officer, USPTO, Office of the Chief Information Officer, Office
of Data Architecture and Services, Data Administration Division.
[FR Doc. 03-26275 Filed 10-16-03; 8:45 am]
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