[Federal Register Volume 69, Number 196 (Tuesday, October 12, 2004)]
[Notices]
[Pages 60614-60616]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 04-22780]


-----------------------------------------------------------------------

DEPARTMENT OF COMMERCE

Patent and Trademark Office


Recording Assignments

ACTION: Proposed collection; comment request.

-----------------------------------------------------------------------

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 13, 
2004.

ADDRESSES: You may submit comments by any of the following methods:
     E-mail: [email protected]. Include ``0651-0027 
comment'' in the subject line of the message.
     Fax: 703-308-7407, marked to the attention of Susan Brown.
     Mail: Susan K. Brown, Records Officer, Office of the Chief 
Information Officer, Office of Data Architecture and Services, Data 
Administration Division, U.S. Patent and Trademark Office, P.O. Box 
1450, Alexandria, VA 22313-1450.

FOR FURTHER INFORMATION CONTACT: Requests for additional information 
should be directed to Joyce R. Johnson, Manager, Assignment Division, 
Mail Stop 1450, U.S. Patent and Trademark Office, P.O. Box 1450, 
Alexandria, VA 22313-1450; by telephone at (703) 308-9706; or by e-mail 
at [email protected].

SUPPLEMENTARY INFORMATION

I. Abstract

    This collection of information is required by 35 U.S.C. 261 and 262 
for patents and 15 U.S.C. 1057 and 1060 of the Trademark Act of 1946 
for trademarks. These statutes permit the United States Patent and 
Trademark Office (USPTO) to record patent and trademark assignment 
documents, including transfers of properties (i.e. patents and 
trademarks), liens, licenses, assignments of interest, security 
interests, mergers, and explanations of transactions or other documents 
that record the transfer of ownership of a particular patent or 
trademark property from one party to another. Assignments are recorded 
for applications, patents, and trademark registrations.
    The USPTO administers these statutes through 37 CFR part 3 (3.1-
3.85) for patents and trademarks, and also 37 CFR 2.146 and 2.171 for 
trademarks. These rules permit the public, corporations, other federal 
agencies, and Government-owned or Government-controlled corporations to 
submit patent and trademark assignment documents and other documents 
related to title transfers to the USPTO to be recorded. In accordance 
with 37 CFR 3.54, the recording of an assignment document by the USPTO 
is an administrative action and not a determination of the validity of 
the document or of the effect that the document has on the title to an 
application, patent, or trademark.
    Once the assignment documents are recorded, they are available for 
public inspection. The only exceptions are those documents that are 
sealed under secrecy orders according to 37 CFR 3.58 or related to 
unpublished patent applications maintained in confidence under 35 
U.S.C. 122. The public uses these records to conduct ownership and 
chain-of-title searches. The public may view these records either at 
the USPTO or at the National Archives and Records Administration, 
depending on the date they were recorded. The public may also search 
patent and trademark assignment information online through the USPTO 
Web site at http://www.uspto.gov.
    In order to assist the public in submitting assignment documents 
for recording, the USPTO developed patent and trademark assignment 
cover sheets that capture all of the necessary data for accurately 
recording various assignment documents. To record an assignment, the 
respondent must submit an appropriate cover sheet along with the 
assignment documents to be recorded. The USPTO provides two paper forms 
for this purpose, the Patent Recordation Form Cover Sheet (PTO-1595) 
and the

[[Page 60615]]

Trademark Recordation Form Cover Sheet (PTO-1594).
    Customers may file patent assignment recordation requests 
electronically using the Electronic Filing System (EFS) software 
developed by the USPTO for secure transmission of patent applications 
and related documents over the internet. Customers who submit patent 
assignment recordation requests through EFS must complete the 
electronic transmittal forms provided within the electronic submission 
software. Patent assignment recordation requests that are prepared 
using the EFS software but are too large (over 100 megabytes) to be 
submitted over the internet may be copied onto a recordable compact 
disc (CD) and then mailed to the USPTO. The costs for submitting 
oversized electronic patent assignment recordation requests on CD were 
noted in the previous renewal of this collection, and these CD 
submissions are now being listed as a separate information requirement 
for the current renewal.
    Customers may also submit assignments online by using the 
Electronic Patent Assignment System (EPAS) and the Electronic Trademark 
Assignment System (ETAS), which are available through the USPTO Web 
site. EPAS and ETAS are new systems developed by the USPTO that allow 
customers to fill out the required cover sheet information online using 
web-based forms and then attach the assignment documents to be 
submitted over the internet for recordation. These web-based forms for 
EPAS and ETAS submissions are being added to this collection.
    This collection was previously approved by OMB in June 2002. In 
September 2002, OMB approved a change worksheet that reduced the burden 
estimates due to the USPTO receiving fewer assignment filings than 
expected. In September 2003, OMB approved another change worksheet that 
further reduced the burden estimates for this collection due to an 
overall decrease in assignment filings, although the percentage of 
electronic filings increased.

II. Method of Collection

    By mail, facsimile, hand delivery, or electronically over the 
internet to the USPTO.

III. Data

    OMB Number: 0651-0027.
    Form Number(s): PTO-1594 and PTO-1595.
    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: 331,294 responses per year.
    Estimated Time Per Response: The USPTO estimates that it will take 
the public approximately 30 minutes (0.5 hours) to complete the 
Trademark Recordation Form Cover Sheet (PTO-1594) and the Patent 
Recordation Form Cover Sheet (PTO-1595), to file an electronic patent 
assignment recordation request using EFS, to submit a patent assignment 
recordation request on CD, or to submit a patent or trademark 
assignment recordation request online using EPAS or ETAS. These 
estimates include the time to gather the necessary information, prepare 
the form, and submit the completed request.
    Estimated Total Annual Respondent Burden Hours: 165,648 hours per 
year.
    Estimated Total Annual Respondent Cost Burden: $30,479,232 per 
year.
    The USPTO expects that the information in this collection will be 
prepared by both attorneys and paralegals. The estimated rate of $184 
per hour used in this collection is an average of the paraprofessional 
rate of $81 per hour and the professional rate of $286 per hour for 
associate attorneys in private firms. Using the average rate of $184 
per hour, the USPTO estimates that the respondent cost burden for 
submitting the information in this collection will be $30,479,232 per 
year.

----------------------------------------------------------------------------------------------------------------
                                                                                   Estimated        Estimated
             Item                     Form number         Estimated time for         annual       annual burden
                                                               response            responses          hours
----------------------------------------------------------------------------------------------------------------
Patent Recordation Form Cover   PTO-1595..............  30 minutes............          277,098          138,549
 Sheet.
Trademark Recordation Form      PTO-1594..............  30 minutes............           18,908            9,454
 Cover Sheet.
Electronic Patent Assignment    None..................  30 minutes............            5,651            2,826
 Recordation Request (EFS).
Patent Assignment Recordation   None..................  30 minutes............               10                5
 Request (CD).
Electronic Patent Assignment    PTO-1595..............  30 minutes............           18,636            9,318
 System (EPAS).
Electronic Trademark            PTO-1594..............  30 minutes............           10,991            5,496
 Assignment System (ETAS).
                               -------------------------
    Totals....................  ......................  ......................          331,294          165,648
----------------------------------------------------------------------------------------------------------------

    Estimated Total Annual Non-hour Respondent Cost Burden: $23,165,071 
per year. There are no maintenance costs associated with this 
information collection. However, this collection does have annual (non-
hour) costs in the form of capital start-up costs, recordkeeping costs, 
filing fees, and postage costs.
    This collection has capital start-up and recordkeeping costs 
associated with submitting patent assignment recordation requests on 
CD. Electronic patent assignment requests that exceed 100 megabytes 
cannot be transmitted to the USPTO over the internet and instead may be 
transferred onto a CD for submission. This process requires additional 
supplies, including blank recordable CD media, CD labels, and padded 
envelopes for shipping. The USPTO estimates that the cost of these 
supplies will be approximately $5 per CD submission. The USPTO 
estimates that it will receive approximately 10 CD submissions per 
year, for a total of $50 in capital start-up costs for this collection.
    The USPTO advises customers who submit oversized patent assignment 
requests on CD to retain a back-up copy of the CD and transmittal 
documentation for their records. The USPTO estimates that it will take 
an additional 5 minutes for the customer to produce a back-up CD copy 
and 2 minutes to print the transmittal documentation, for a total of 7 
minutes (0.12 hours) for each CD submission. The USPTO estimates that 
it will receive 10 CD submissions per year, for a total of 
approximately 1 hour per year for producing the back-up CD copies and 
documentation. The USPTO expects that these back-up copies will be 
prepared by paraprofessionals with an estimated rate of $81 per hour, 
for a recordkeeping cost of $81 per year for the CD submissions.
    There are also recordkeeping costs associated with submitting 
assignment documents electronically over the internet using EFS, EPAS, 
and ETAS. The USPTO recommends that customers

[[Page 60616]]

print and retain a copy of the acknowledgment receipt that appears on 
the screen after a successful submission. Customers will also receive 
an electronic copy of this receipt. The USPTO estimates that it will 
take 5 seconds (0.001 hours) to print a copy of the acknowledgment 
receipt and that approximately 35,278 submissions per year will be 
completed via EFS, EPAS, and ETAS, for a total of approximately 35 
hours per year for printing this receipt. The USPTO expects that these 
receipts will be printed by paraprofessionals at an estimated rate of 
$81 per hour, for a recordkeeping cost of $2,835 per year for printing 
the acknowledgment receipts. Therefore, this collection has a total 
recordkeeping cost of $2,916.
    This collection has filing fees associated with submitting patent 
and trademark assignment documents to be recorded. The filing fees for 
recording patent and trademark assignments are the same for both paper 
and electronic submissions. However, the filing cost for recording 
patent or trademark assignments varies according to the number of 
properties involved in each submission. The filing fee for submitting a 
trademark assignment as indicated by 37 CFR 2.6(b)(6) is $40 for 
recording the first property in a document and $25 for each additional 
property in the same document. The USPTO estimates that the average 
trademark assignment filing has one property plus five additional 
properties, for an average filing cost of $165 for a trademark 
assignment submission.
    The filing fee for submitting a patent assignment as indicated by 
37 CFR 1.21(h) is $40 for recording each property in a document. The 
USPTO estimates that paper and electronic patent assignment filings 
contain an average of 1.5 properties per submission, for an average 
filing cost of $60. The USPTO also estimates that oversized patent 
assignment requests on CD contain an average of 100 properties per 
submission, for an average filing cost of $4,000. The total estimated 
filing cost for this collection is $23,056,435 per year.

----------------------------------------------------------------------------------------------------------------
                                                                   Estimated
               Item                         Form number             annual        Average fee   Estimated annual
                                                                   responses        amount        filing costs
----------------------------------------------------------------------------------------------------------------
Patent Recordation Form Cover       PTO-1595..................         277,098          $60.00    $16,625,880.00
 Sheet.
Trademark Recordation Form Cover    PTO-1594..................          18,908          165.00      3,119,820.00
 Sheet.
Electronic Patent Assignment        None......................           5,651           60.00        339,060.00
 Recordation request (EFS).
Patent Assignment Recordation       None......................              10        4,000.00         40,000.00
 Request (CD).
Electronic Patent Assignment        PTO-1595..................          18,636           60.00      1,118,160.00
 System (EPAS).
Electronic Trademark Assignment     PTO-1594..................          10,991          165.00      1,813,515.00
 System (ETA).
                                   -----------------------------
    Totals........................  ..........................         331,294  ..............    $23,056,435.00
----------------------------------------------------------------------------------------------------------------

    Customers may incur postage costs when submitting a patent or 
trademark assignment request to the USPTO by mail. The USPTO expects 
that some assignment requests will be submitted by fax but that 
approximately 215,622 of the 296,006 paper assignment requests per year 
will be submitted by mail. The USPTO estimates that the average first-
class postage cost for a mailed Patent or Trademark Recordation Form 
Cover Sheet submission is 49 cents. The USPTO further estimates that 10 
patent assignment requests on CD will be mailed to the USPTO per year 
and that the average first-class postage cost for a mailed CD 
submission is $1.52. The total postage cost for this collection is 
$105,670 per year.
    The total non-hour respondent cost burden for this collection in 
the form of capital start-up costs, recordkeeping costs, filing fees, 
and postage costs is estimated to be $23,165,071 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 4, 2004.
Susan K. Brown,
Records Officer, USPTO, Office of the Chief Information Officer, Office 
of Data Architecture and Services, Data Administration Division.
[FR Doc. 04-22780 Filed 10-8-04; 8:45 am]
BILLING CODE 3510-16-P