[Federal Register Volume 73, Number 195 (Tuesday, October 7, 2008)]
[Pages 58572-58573]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: E8-23677]



Patent and Trademark Office

Statutory Invention Registration

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 extension 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 December 8, 

ADDRESSES: You may submit comments by any of the following methods:
     E-mail: [email protected]. Include ``0651-0036 
comment'' in the subject line of the message.
     Fax: 571-273-0112, marked to the attention of Susan K. 
     Mail: Susan K. Fawcett, Records Officer, Office of the 
Chief Information Officer, Customer Information Services Group, Public 
Information Services Division, U.S. Patent and Trademark Office, P.O. 
Box 1450, Alexandria, VA 22313-1450.
     Federal Rulemaking Portal: http://www.regulations.gov.

FOR FURTHER INFORMATION CONTACT: Requests for additional information 
should be directed to the attention of Robert A. Clarke, Deputy 
Director, Office of Patent Legal Administration, U.S. Patent and 
Trademark Office, P.O. Box 1450, Alexandria, VA 22313-1450; by 
telephone at 571-272-7735; or by e-mail at [email protected].


I. Abstract

    A statutory invention registration is not a patent. It has the 
defensive attributes of a patent but does not have the enforceable 
attributes of a patent. In other words, a person occasionally invents 
something solely for personal use (not for production or sale) and does 
not want to go through the effort and expense of obtaining a patent on 
the invention. At the same time, the inventor wants to prevent someone 
else from later obtaining a patent on a like invention. In that 
situation, the inventor can register a statutory invention and have it 
published. Once published, it cannot be claimed by another person.
    35 U.S.C. 157 authorizes the United States Patent and Trademark 
Office (USPTO) to publish a statutory invention registration containing 
the specifications and drawings of a regularly filed application for a 
patent without examination, providing the patentee meets all the 
requirements for printing, waives the right to receive a patent on the 
invention within a certain period of time prescribed by the USPTO, and 
pays all application, publication and other processing fees.
    The USPTO administers 35 U.S.C. 157 through 37 CFR 1.293-1.297. 
Under these rules, an applicant for an original patent may request, at 
any time during the pendency of the application, that the 
specifications and drawings be published as a statutory invention 
registration. Any request for a statutory invention registration may be 
examined to determine if all the conditions have been met, if the 
subject matter of the application is appropriate for publication, and 
if the requirements for publication are met.
    The public may petition the USPTO to review rejection decisions 
within one month or other such time as is set forth in the decision 
refusing publication. The public may also petition the USPTO to 
withdraw a request to publish a statutory invention registration prior 
to the date of the notice of the intent to publish.
    If the request for a statutory invention registration is approved, 
a notice to that effect will be published in the Official Gazette of 
the USPTO. Each statutory invention registration that is published will 
include a statement relating to the attributes of a statutory invention 
    The public uses form PTO/SB/94, Request for Statutory Invention 
Registration, to request and authorize publication of a regularly-filed 
patent application as a statutory invention registration, to waive the 
right to receive a United States patent on the same invention claimed 
in the identified patent application, to agree that the waiver will be 
effective upon publication of the statutory invention registration, and 
to state that the identified patent application complies with the 
requirements for printing. No forms are associated with the petition 
for a review of the refusal to publish a statutory invention 
registration or the petition to withdraw the request for publication of 
a statutory invention registration.

II. Method of Collection

    By mail, facsimile, or hand delivery to the USPTO when the 
applicant or agent files a statutory invention registration with the 

III. Data

    OMB Number: 0651-0036.
    Form Number(s): PTO/SB/94.
    Type of Review: Extension of a currently approved collection.
    Affected Public: Individuals or households; business or other for-
profit; not-for-profit institutions.
    Estimated Number of Respondents: 8 responses per year.
    Estimated Time per Response: The USPTO estimates that it will take 
approximately 24 minutes (0.40 hours) each to gather, prepare, and 
submit the request for statutory invention registration, the petition 
to review the rejection decision, and the petition to withdraw the 
publication request, depending upon the complexity of the situation. 
This collection contains one form and two petitions.
    Estimated Total Annual Respondent Burden Hours: 4 hours each per 
    Estimated Total Annual Respondent Cost Burden: $1,240. Using the 
professional hourly rate of $310 per hour for associate attorneys in 
private firms, the USPTO estimates $1,240 per year for salary costs 
associated with respondents.

                                                                Estimated time     Estimated        Estimated
                             Item                                for response        annual       annual  burden
                                                                    (min)          responses          hours
Statutory Invention Registration.............................               24                5                2
Petition to Review Rejection Decision........................               24                1                1

[[Page 58573]]

Petition to Withdraw Publication Request.....................               24                2                1
    Total....................................................  ...............                8                4

    Estimated Total Annual Non-Hour Respondent Cost Burden: $8,166. 
There are no capital start-up costs or maintenance costs associated 
with this information collection. However, this collection does have 
postage costs and filing fees.
    The public may submit the paper forms and petitions in this 
collection to the USPTO by mail through the United States Postal 
Service. The USPTO estimates that the average first-class postage cost 
for a mailed submission will be 75 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 8 submissions per year may be mailed to the USPTO at an 
average first-class postage rate of 75 cents, for a total postage cost 
of $6.
    There is annual non-hour cost burden in the way of filing fees 
associated with this collection. The estimated filing costs for this 
collection of $7,760 are calculated in the accompanying chart.

                                                                                                 Total non-hour
                           Item                                 Responses      Filing fee ($)      cost burden
                                                                         (a)               (b)         (a) x (b)
Statutory Invention Registration (requested prior to                       2           $920.00         $1,840.00
 mailing of first office action, 37 CFR 1.17(n))..........
Statutory Invention Registration (requested after mailing                  3          1,840.00          5,520.00
 of first office action, 37 CFR 1.17(o))..................
Petition to Review Rejection Decision (37 CFR 1.295)......                 1            200.00            200.00
Petition to Withdraw Publication Request (37 CFR 1.296)...                 1              0.00              0.00
Petition to Withdraw Publication Request on or after Date                  1            200.00            200.00
 of Notice of Intent to Publish (37 CFR 1.296)............
    Total.................................................                 8  ................          7,760.00

    The USPTO estimates that the total non-hour respondent cost burden 
for this collection in the form of postage costs and filing fees 
amounts to $7,766.

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 
    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: September 30, 2008.
Susan K. Fawcett,
Records Officer, USPTO, Office of the Chief Information Officer, 
Customer Information Services Group, Public Information Services 
[FR Doc. E8-23677 Filed 10-6-08; 8:45 am]