[Federal Register Volume 67, Number 224 (Wednesday, November 20, 2002)]
[Notices]
[Pages 70056-70060]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 02-29380]


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DEPARTMENT OF COMMERCE

Patent and Trademark Office


Patent Processing (Updating); Proposed Collection; Comment 
Request

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 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 [email protected]; 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 [email protected].

[[Page 70057]]


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:
    [sbull] 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.
    [sbull] All applicants for patents are required to pay statutory 
fees. Applicants with small entity status are entitled to a 50% 
reduction in the fees.
    [sbull] 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.
    [sbull] 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.
    [sbull] A petition and extension fee is required when an applicant 
wants an extension to respond beyond a nonstatutory or shortened 
statutory time.
    [sbull] An applicant must request in writing the abandonment of an 
application, if and when an express abandonment is desired.
    [sbull] 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.
    [sbull] A notice of appeal must be filed when an applicant appeals 
the decision of the examiner to the Board of Patent Appeals and 
Interferences.
    [sbull] 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.
    [sbull] Petitions are required for revival of applications for 
patent that were unavoidably or unintentionally abandoned.
    [sbull] 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.
    [sbull] 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.
    [sbull] 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.
    [sbull] 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.
    [sbull] 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

[[Page 70058]]

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.

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                                                                                     Estimated       Estimated
                              Item                                Estimated time      annual       annual burden
                                                                   for response      responses         hours
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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              1 hour           4,940           4,940
 Applications...................................................
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         543,000          16,290
                                                                         seconds
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               2 hours, 30           1,000           2,500
 Publication....................................................         minutes
Copy of File Content Showing Redactions.........................         4 hours              12              48
Copy of the Applicant or Patentee's Record of the Application             1 hour             235             235
 (including copies of the correspondence, list of the
 correspondence, and statements verifying whether the record is
 complete or not)...............................................
Request for Continued Examination (RCE).........................      12 minutes          26,000           5,200
Request for Oral Hearing Before the Board of Patent Appeals and       12 minutes             750             150
 Interferences..................................................
Request for Deferral of Examination 37 CFR 1.103(d).............      12 minutes              53              11
Petition for express abandonment to avoid publication under 37        12 minutes             350              70
 CFR 1.138(c)...................................................
                                                                 -----------------
    Total.......................................................  ..............       2,202,764         824,677
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    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

[[Page 70059]]

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.

----------------------------------------------------------------------------------------------------------------
                                                                                                 Total non-hour
                           Item                             Responses  (a)    Filing fee ($)    cost burden  (a)
                                                                                   (b)               x (b)
----------------------------------------------------------------------------------------------------------------
Submission of an Information Disclosure Statement (IDS)             30,450            $180.00      $5,481,000.00
 under 37 CFR 1.97(c) or (d)..............................
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            23,503              75.00       1,762,725.00
 entity)..................................................
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            12,891             270.00       3,480,570.00
 entity)..................................................
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          16,413             620.00      10,176,060.00
 entity)..................................................
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            2,267             970.00       2,198,990.00
 entity)..................................................
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            4,174           1,320.00       5,509,680.00
 entity)..................................................
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                  350             130.00          45,500.00
 under 37 CFR 1.138(c)....................................
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                   235              55.00          12,925.00
 (small entity)...........................................
Petition to Revive Unintentionally Abandoned Application..           2,690           1,280.00       3,443,200.00
Petition to Revive Unintentionally Abandoned Application             1,845             640.00       1,180,800.00
 (small entity)...........................................
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               1,000               None                  0
 Publication..............................................
Copy of File Content Showing Redactions...................              12               None                  0
Copy of the Applicant or Patentee's Record of the                      235               None                  0
 Application (including copies of the correspondence, list
 of the correspondence, and statements verifying whether
 the record is complete or not)...........................
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
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[[Page 70060]]

    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.
[FR Doc. 02-29380 Filed 11-19-02; 8:45 am]
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