[Federal Register Volume 70, Number 245 (Thursday, December 22, 2005)]
[Notices]
[Pages 76032-76034]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 05-24346]


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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 February 21, 
2006.

ADDRESSES: You may submit comments by any of the following methods:
     E-mail: [email protected]. Include ``0651-0016 
comment'' in the subject line of the message.
     Fax: 571-273-0112, 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 Robert J. Spar, Director, Office of Patent Legal 
Administration, U.S. Patent and Trademark Office, P.O. Box 1450, 
Alexandria, VA 22313-1450; by telephone at 571-272-7700; or by e-mail 
at [email protected].

SUPPLEMENTARY INFORMATION:

I. Abstract

    Under 35 U.S.C. 41 and 37 CFR 1.20(e)-(i) and 1.362-1.378, 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 due at 
3\1/2\, 7\1/2\, and 11\1/2\ years after the date the patent was 
granted. If the USPTO does not receive payment of the appropriate 
maintenance fee and any applicable surcharge within a grace period of 
six months following each of the above due dates (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). After a patent expires, it is no longer 
enforceable. Maintenance fees are not required for design or plant 
patents, or for reissue patents if the patent being reissued did not 
require maintenance fees.
    Payments of maintenance fees that are submitted during the six-
month grace period must include the appropriate surcharge as indicated 
by 37 CFR 1.20(h). Submissions of maintenance fee payments and 
surcharges must include the relevant patent number and the 
corresponding United States application number in order to identify the 
correct patent and ensure proper crediting of the fee being paid.
    If the USPTO refuses to accept and record a maintenance fee payment 
that was submitted prior to the expiration of a patent, the patentee 
may petition the Director under 37 CFR 1.377 to accept and record the 
maintenance fee. This petition must be accompanied by the fee indicated 
in 37 CFR 1.17(g), which may be refunded if it is determined that the 
refusal to accept the maintenance fee was due to an error by the USPTO.
    If a patent has expired due to nonpayment of a maintenance fee, the 
patentee may petition the Director to accept a delayed payment of the 
maintenance fee under 35 U.S.C. 41(c) and 37 CFR 1.378. The Director 
may accept the payment of a maintenance fee after the expiration of the 
patent if the petitioner shows to the satisfaction of the Director that 
the delay in payment was unavoidable or unintentional. Petitions to 
accept unavoidably or unintentionally delayed payment must also be 
accompanied by the required maintenance fee and appropriate surcharge 
under 37 CFR 1.20(i). If the Director accepts the maintenance fee

[[Page 76033]]

payment upon petition, then the patent is reinstated. If the USPTO 
denies a petition to accept delayed payment of a maintenance fee in an 
expired patent, the patentee may petition the Director to reconsider 
that decision under 37 CFR 1.378(e). This petition must be accompanied 
by the fee indicated in 37 CFR 1.17(f), which may be refunded if it is 
determined that the refusal to accept the maintenance fee was due to an 
error by the USPTO.
    Customers may submit maintenance fee payments and surcharges 
incurred during the six-month grace period before patent expiration by 
using the Maintenance Fee Transmittal Form or by paying online through 
the USPTO Web site. However, to pay a maintenance fee after patent 
expiration, the maintenance fee payment and the appropriate surcharge 
must be filed together with a petition to accept unavoidably or 
unintentionally delayed payment. These delayed payments and petitions 
cannot be filed electronically. The USPTO accepts online maintenance 
fee payments by credit card, electronic funds transfer (EFT), or 
deposit account through the USPTO Web site. Otherwise, non-electronic 
payments may be made by check, credit card, or USPTO deposit account.
    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. A fee address must be an address that is associated with a 
USPTO customer number. Customer numbers may 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 (PTO/SB/45), to 
file a petition to accept an unavoidably or unintentionally delayed 
maintenance fee payment (PTO/SB/65 and PTO/SB/66), and to designate or 
change a fee address (PTO/SB/47). No forms are provided for the 
petitions under 37 CFR 1.377 and 1.378(e).

II. Method of Collection

    By mail, facsimile, or hand delivery to the USPTO. Maintenance fee 
payments and surcharges for payments made during the six-month grace 
period before patent expiration may be submitted electronically.

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; farms; the Federal 
Government; and state, local or tribal governments.
    Estimated Number of Respondents: 374,706 responses per year.
    Estimated Time Per Response: The USPTO estimates that it will take 
the public approximately 20 seconds (0.006 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.
    Estimated Total Annual Respondent Burden Hours: 30,362 hours per 
year.
    Estimated Total Annual Respondent Cost Burden: $3,369,522 per year. 
The USPTO expects that the petitions included in this collection will 
be prepared by attorneys. Using the professional rate of $286 per hour 
for associate attorneys in private firms, the USPTO estimates that the 
respondent cost burden for submitting these petitions will be 
approximately $1,269,840 per year. The USPTO expects that the other 
items in this collection will be prepared by paraprofessionals. Using 
the paraprofessional rate of $81 per hour, the USPTO estimates that the 
respondent cost burden for submitting the other items in this 
collection will be approximately $2,099,682 per year, for a total 
annual respondent cost burden of approximately $3,369,522.

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                                                                                     Estimated       Estimated
                     Item                          Estimated time for response        annual       annual burden
                                                                                     responses         hours
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Maintenance Fee Transmittal Transactions (PTO/  5 minutes                                228,487          18,279
 SB/45).
Electronic Maintenance Fee Transactions.......  20 seconds                                52,439             315
Petition to Accept Unavoidably Delayed Payment  8 hours                                      250           2,000
 of Maintenance Fee in an Expired Patent (37
 CFR 1.378(b)) (PTO/SB/65).
Petition to Accept Unintentionally Delayed      1 hour                                     1,800           1,800
 Payment of Maintenance Fee in an Expired
 Patent (37 CFR 1.378(c)) (PTO/SB/66).
Petition to Review Refusal to Accept Payment    4 hours                                      100             400
 of Maintenance Fee Prior to Expiration of
 Patent (37 CFR 1.377)).
Petition for Reconsideration of Decision on     8 hours                                      300             240
 Petition Refusing to Accept Delayed Payment
 of Maintenance Fee in an Expired Patent (37
 CFR 1.378(e)).
``Fee Address'' Indication Form (PTO/SB/47)...  5 minutes                                 91,600           7,328
                                               -----------------------------------
    Total                                                                                374,706          30,362
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    Estimated Total Annual Non-hour Respondent Cost Burden: 
$436,485,591. 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 costs.
    The recordkeeping costs for this collection are associated with 
submitting electronic maintenance fee payments through the USPTO Web 
site. It is recommended that customers who pay maintenance fees online 
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

[[Page 76034]]

print a copy of the payment statement and that approximately 52,439 
maintenance fee payments per year will be submitted online, for a total 
of 52 hours per year for printing this receipt. Using the 
paraprofessional rate of $81 per hour, the USPTO estimates that the 
recordkeeping cost associated with this collection will be 
approximately $4,212 per year.
    The public may submit the 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 39 cents, and that 
customers filing a Maintenance Fee Transmittal Form, a ``Fee Address'' 
Indication Form, or any of the petitions included in this collection 
may choose to mail their submissions to the USPTO. Therefore, the USPTO 
estimates that up to 322,267 submissions per year may be mailed to the 
USPTO, for a total postage cost of $125,684 per year.
    This collection also has filing costs in the form of patent 
maintenance fees, surcharges for late payment of maintenance fees, and 
petition fees. 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 are $900, $2,300, and $3,800 respectively ($450, $1,150, and 
$1,900 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 ($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(g) for a petition to review the refusal to accept the 
payment of a maintenance fee filed prior to the expiration of a patent 
is $200. The filing fee listed in 37 CFR 1.17(f) for a petition for 
reconsideration of the decision on a petition refusing to accept the 
delayed payment of a maintenance fee in an expired patent is $400. The 
USPTO estimates that the total filing costs associated with this 
collection will be $436,355,695 per year as calculated in the 
accompanying table.

----------------------------------------------------------------------------------------------------------------
                                                                     Estimated                       Estimated
                        Fee or surcharge                              annual       Amount of fee   annual filing
                                                                     responses     or surcharge        costs
----------------------------------------------------------------------------------------------------------------
Patent maintenance fee at 3\1/2\ years..........................         104,016            $900     $93,614,400
Patent maintenance fee at 3\1/2\ years (small entity)...........          34,552             450      15,548,400
Patent maintenance fee at 7\1/2\ years..........................          62,950           2,300     144,785,000
Patent maintenance fee at 7\1/2\ years (small entity)...........          17,061           1,150      19,620,150
Patent maintenance fee at 11\1/2\ years.........................          37,545           3,800     142,671,000
Patent maintenance fee at 11\1/2\ years (small entity)..........           8,118           1,900      15,424,200
Surcharge for paying maintenance fee during the six-month grace            6,909             130         898,170
 period.........................................................
Surcharge for paying maintenance fee during the six-month grace            9,775              65         635,375
 period (small entity)..........................................
Petition to Accept Unavoidably Delayed Payment of Maintenance                250             700         175,000
 Fee in an Expired Patent (37 CFR 1.378(b)).....................
Petition to Accept Unintentionally Delayed Payment of                      1,800           1,640       2,952,000
 Maintenance Fee in an Expired Patent (37 CFR 1.378(c)).........
Petition to Review Refusal to Accept Payment of Maintenance Fee              100             200          20,000
 Prior to Expiration of Patent (37 CFR 1.377)...................
Petition for Reconsideration of Decision on Petition Refusing to              30             400          12,000
 Accept Delayed Payment of Maintenance Fee in an Expired Patent
 (37 CFR 1.378(e))..............................................
``Fee Address'' Indication Form.................................          91,600               0               0
                                                                 -----------------
    Total.......................................................         374,706  ..............     436,355,695
----------------------------------------------------------------------------------------------------------------

    The total non-hour respondent cost burden for this collection in 
the form of recordkeeping costs, postage costs, and filing costs is 
estimated to be $436,485,591 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: December 16, 2005.
Susan K. Brown,
Records Officer, USPTO, Office of the Chief Information Officer, Office 
of Data Architecture and Services, Data Administration Division.
[FR Doc. 05-24346 Filed 12-21-05; 8:45 am]
BILLING CODE 3510-16-P