[Federal Register Volume 68, Number 201 (Friday, October 17, 2003)]
[Notices]
[Pages 59783-59785]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 03-26275]


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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 [email protected]; 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 [email protected].

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).
                                   -----------------------------
      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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