[Federal Register Volume 67, Number 158 (Thursday, August 15, 2002)]
[Notices]
[Pages 53342-53345]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 02-20671]


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DEPARTMENT OF COMMERCE

Patent and Trademark Office


Rules for Patent Maintenance Fees

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 revision 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 October 15, 
2002.

ADDRESSES: Direct all written comments to Susan K. Brown, Records 
Officer, Office of Data Management, Data Administration Division, 
USPTO, Suite 310, 2231 Crystal Drive, Washington, DC 20231; by 
telephone at (703) 308-7400; or by electronic mail at 
[email protected].

FOR FURTHER INFORMATION CONTACT: Requests for additional information 
should be directed to Robert J. Spar, Director, Office of Patent Legal 
Administration, USPTO, Washington, DC 20231; by telephone at (703) 308-
5107; or by electronic mail at [email protected].

SUPPLEMENTARY INFORMATION

I. Abstract

    Under 35 U.S.C. 41(b) and 37 CFR 1.20(e)-(g) and 1.362, the United 
States Patent and Trademark Office (USPTO) charges fees for maintaining 
in force all utility patents based on applications filed on or after 
December 12, 1980. Payment of these maintenance fees is required at 
3\1/2\, 7\1/2\, and 11\1/2\ years after the date the patent was 
granted. If the payment of the appropriate maintenance fee is not 
received within a grace period of six months following each of the 
above intervals (at 4, 8, or 12 years after the date of grant), the 
patent will expire at that time as set forth in 37 CFR 1.362(g). If a 
patent has expired due to nonpayment of a maintenance fee, the

[[Page 53343]]

patentee may petition the USPTO to accept a delayed payment of the 
maintenance fee under 35 U.S.C. 41(c) and 37 CFR 1.378 by showing that 
the delayed payment was unavoidable or unintentional. Additionally, if 
the USPTO refuses to accept and record a maintenance fee that was filed 
prior to the expiration of a patent, the patentee may petition the 
Commissioner under 37 CFR 1.377 to accept and record the maintenance 
fee payment.
    Payments of maintenance fees that are submitted during the six-
month grace period or after the expiration of the patent must also 
include the appropriate surcharge as indicated by 37 CFR 1.20(h)-(i). 
Maintenance fees are not required for design or plant patents, or for 
reissue patents if the patent being reissued did not require 
maintenance fees. Submissions of maintenance fees and surcharges must 
include the relevant patent number and the United States application 
number in order to identify the patent for which the fee is being paid.
    The rules of practice (37 CFR 1.33(d) and 1.363) permit applicants, 
patentees, assignees, or their representatives of record to specify a 
``fee address'' for correspondence related to maintenance fees that is 
separate from the correspondence address associated with a patent or 
application. Only an address associated with a customer number can be 
established as a fee address. Customer numbers can be requested by 
using the Request for Customer Number form (PTO/SB/125), which is 
covered under OMB Control Number 0651-0035 ``Representative and Address 
Provisions.'' Maintaining a correct and updated address is necessary so 
that fee-related correspondence from the USPTO will be properly 
received by the applicant, patentee, assignee, or authorized 
representative. If a separate fee address is not specified for a patent 
or application, the USPTO will direct fee-related correspondence to the 
correspondence address of record.
    The USPTO offers forms to assist the public with providing the 
information covered by this collection, including the information 
necessary to submit a patent maintenance fee payment, to file a 
petition to accept an unavoidably or unintentionally delayed 
maintenance fee payment, and to designate or change a fee address. 
Instead of submitting maintenance fee payments using the paper 
Maintenance Fee Transmittal Form (PTO/SB/45), customers may pay 
maintenance fees electronically over the Internet by using the 
Electronic Maintenance Fee Form, which is accessible through the USPTO 
Web site. Customers may use the Electronic Maintenance Fee Form to 
submit maintenance fee payments as well as surcharges incurred during 
the six-month grace period before patent expiration. However, to pay a 
maintenance fee after patent expiration, the maintenance fee payment 
and the appropriate delayed payment surcharge must be filed together 
with a Petition to Accept Unavoidably Delayed Payment under 37 CFR 
1.378(b) or a Petition to Accept Unintentionally Delayed Payment under 
37 CFR 1.378(c). These delayed payment submissions cannot be filed 
electronically over the Internet. In addition to accepting electronic 
payments by credit card or electronic funds transfer (EFT) through the 
USPTO Web site, the USPTO has also recently begun accepting online 
payments by USPTO deposit account. Otherwise, non-electronic payments 
may be made by check, credit card, or USPTO deposit account.
    The USPTO is adding the Petition to Accept Payment of Maintenance 
Fees Prior to Expiration of Patent (37 CFR 1.377) to this collection. 
The public may use this petition to request that the Commissioner 
review a decision to refuse to accept the payment of a maintenance fee 
that was filed prior to the expiration of a patent. This petition is 
not a new requirement but was overlooked when this information 
collection was previously submitted for OMB approval. No forms are 
provided for this petition under 37 CFR 1.377.

II. Method of Collection

    By mail, facsimile, or hand delivery to the USPTO. Maintenance fees 
and surcharges for fee payments made during the six-month grace period 
following each maintenance fee interval may also be submitted 
electronically over the Internet.

III. Data

    OMB Number: 0651-0016.
    Form Number(s): PTO/SB/45/47/65/66.
    Type of Review: Revision of a currently approved collection.
    Affected Public: Individuals or households; businesses or other 
for-profits; not-for-profit institutions; and the Federal Government.
    Estimated Number of Respondents: 348,110 responses per year.
    Estimated Time Per Response: The USPTO estimates that it will take 
the public approximately 5 minutes (0.08 hours) to 8 hours to complete 
this information, depending on the form or petition. This includes time 
to gather the necessary information, prepare the form or petition, and 
submit the completed request. The USPTO estimates that it will take the 
public approximately 20 seconds (0.006 hours) to submit the Electronic 
Maintenance Fee Form.
    Estimated Total Annual Respondent Burden Hours: 30,495 hours per 
year.
    Estimated Total Annual Respondent Cost Burden: $1,705,170 per year. 
The USPTO expects that the Petition to Accept Unavoidably Delayed 
Payment of Maintenance Fees in an Expired Patent (37 CFR 1.378(b)) and 
the Petition to Accept Payment of Maintenance Fees Prior to Expiration 
of Patent (37 CFR 1.377) will be prepared by attorneys. Using the 
professional rate of $252 per hour for associate attorneys in private 
firms, the USPTO estimates that the respondent cost burden for 
submitting these petitions will be $897,120 per year. The USPTO expects 
that the other items in this collection will be prepared by 
paraprofessionals. Using the paraprofessional rate of $30 per hour, the 
USPTO estimates that the respondent cost burden for submitting the 
other items in this collection will be $808,050 per year, for a total 
annual respondent cost burden of $1,705,170 per year.

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                                                                                     Estimated       Estimated
                   Item                          Estimated time for response          annual       annual burden
                                                                                     responses         hours
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Maintenance Fee Transmittal Transactions..  5 minutes...........................         227,690          18,215
Electronic Maintenance Fee Transactions...  20 seconds..........................          31,050             186
Petition to Accept Unavoidably Delayed      8 hours.............................             370           2,960
 Payment of Maintenance Fee in an Expired
 Patent (37 CFR 1.378(b)).
Petition to Accept Unintentionally Delayed  1 hour..............................           1,550           1,550
 Payment of Maintenance Fee in an Expired
 Patent (37 CFR 1.378(c)).
Petition to Accept Payment of Maintenance   4 hours.............................            A150             600
 Fee Prior to Expiration of Patent (37 CFR
 1.377).

[[Page 53344]]

 
``Fee Address'' Indication Form...........  5 minutes...........................          87,300           6,984
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    Total.................................  ....................................         348,110          30,495
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    Estimated Total Annual Non-hour Respondent Cost Burden: 
$369,755,939. There are no capital start-up costs or maintenance costs 
associated with this information collection. However, this collection 
does have annual (non-hour) costs in the form of recordkeeping costs, 
postage costs, and filing fees. The recordkeeping costs for this 
collection are associated with using the Electronic Maintenance Fee 
Form to submit maintenance fee payments over the Internet. It is 
recommended that users of the Electronic Maintenance Fee Form print and 
retain a copy of the updated payment statement that appears on the 
screen after the transaction has been completed as a receipt and proof 
of timely payment. The USPTO estimates that it will take 5 seconds 
(0.001 hours) to print a copy of the payment statement and that 
approximately 31,050 submissions per year will use the Electronic 
Maintenance Fee Form, for a total of 31 hours per year for printing 
this receipt. Using the paraprofessional rate of $30 per hour, the 
USPTO estimates that the recordkeeping cost associated with this 
collection will be $930 per year.
    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 a Maintenance Fee Transmittal Form, a Petition to 
Accept Unavoidably Delayed Payment, a Petition to Accept 
Unintentionally Delayed Payment, a Petition to Accept Payment of 
Maintenance Fee Prior to Expiration of Patent, or a ``Fee Address'' 
Indication Form may choose to mail their submissions to the USPTO. 
Therefore, the USPTO estimates that up to 317,060 submissions per year 
may be mailed to the USPTO, for a total postage cost of $155,359 per 
year.
    This collection also has filing costs in the form of patent 
maintenance fees as well as surcharges for late payment of maintenance 
fees. The filing costs for this submission are calculated using the 
proposed fees for FY 2003 that would be effective on October 1, 2002. 
Under 37 CFR 1.20(e)-(g), the patent maintenance fees due at 3\1/2\ 
years, 7\1/2\ years, and 11\1/2\ years after the date of grant would be 
$900, $2,070, and $3,170 respectively (or $450, $1,035, and $1,585 for 
small entities). The surcharge under 37 CFR 1.20(h) for paying a 
maintenance fee during the six-month grace period following the above 
intervals is $130 (or $65 for small entities). The surcharge under 37 
CFR 1.20(i) for a petition to accept a maintenance fee after the six-
month grace period for these intervals has expired is $700 where the 
delayed payment is shown to be unavoidable and $1,640 where the delayed 
payment is shown to be unintentional. The filing fee listed in 37 CFR 
1.17(h) for a petition to accept the payment of a maintenance fee filed 
prior to the expiration of a patent is $130. The total estimated annual 
filing costs for this collection are calculated in the accompanying 
chart.

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                                                                                     Estimated       Estimated
                        Fee or surcharge                           Amount of fee      annual       annual filing
                                                                   or surcharge      responses         costs
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Patent maintenance fee at 3\1/2\ years..........................            $900          98,460     $88,614,000
Patent maintenance fee at 3\1/2\ years (small entity)...........             450          31,200      14,040,000
Patent maintenance fee at 7\1/2\ years..........................           2,070          59,550     123,268,500
Patent maintenance fee at 7\1/2\ years (small entity)...........           1,035          15,040      15,566,400
Patent maintenance fee at 11\1/2\ years.........................           3,170          35,350     112,059,500
Patent maintenance fee at 11\1/2\ years (small entity)..........           1,585           7,670      12,156,950
Surcharge for paying maintenance fee during the six-month grace              130           5,050         656,500
 period.........................................................
Surcharge for paying maintenance fee during the six-month grace               65           6,420         417,300
 period (small entity)..........................................
Petition to Accept Unavoidably Delayed Payment of Maintenance                700             370         259,000
 Fee in an Expired Patent (37 CFR 1.378(b)).....................
Petition to Accept Unintentionally Delayed Payment of                      1,640           1,550       2,542,000
 Maintenance Fee in an Expired Patent (37 CFR 1.378(c)).........
Petition to Accept Payment of Maintenance Fee Prior to                       130             150          19,500
 Expiration of Patent (37 CFR 1.377)............................
``Fee Address'' Indication Form.................................               0          87,300               0
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    Total.......................................................  ..............         348,110     369,599,650
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    The USPTO estimates that the total filing costs associated with 
this collection will be $369,599,650 per year. The total non-hour 
respondent cost burden for this collection in the form of recordkeeping 
costs, postage costs, and filing fees is $369,755,939 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

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included in the request for OMB approval of this information 
collection; they also will become a matter of public record.

    Dated: August 6, 2002.
Susan K. Brown,
Records Officer, USPTO, Office of Data Management, Data Administration 
Division.
[FR Doc. 02-20671 Filed 8-14-02; 8:45 am]
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