[Federal Register Volume 73, Number 211 (Thursday, October 30, 2008)]
[Notices]
[Pages 64601-64604]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: E8-25886]


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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,

[[Page 64602]]

Public Law 104-13 (44 U.S.C. 3506(c)(2)(A)).

DATES: Written comments must be submitted on or before December 29, 
2008.

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 
Fawcett.
     Mail: Susan K. Fawcett, Records Officer, Office of the 
Chief Information Officer, Customer Information Services Group, Public 
Information Services Division, United States 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 Robert A. Clarke, Director, Office of Patent 
Legal Administration, United States Patent and Trademark Office, P.O. 
Box 1450, Alexandria, VA 22313-1450; by telephone at 571-272-7735; or 
by e-mail to [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. 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 before patent expiration 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 to accept and record the maintenance fee 
under 37 CFR 1.377. 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 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 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.
    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 in an expired patent (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).
    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. 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.
    Customers may submit the other forms and petitions in this 
collection electronically through EFS-Web, the USPTO's online filing 
system. The USPTO also offers a special EFS-Web version of Form PTO/SB/
66, which is used for the automatic processing and immediate rendering 
of a decision on a petition to accept an unintentionally delayed 
maintenance fee payment.

II. Method of Collection

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

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; and not-for-profit institutions.
    Estimated Number of Respondents: 470,397 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: 33,426 hours per 
year.
    Estimated Total Annual Respondent Cost Burden: $4,632,630 per year. 
The USPTO expects that the petitions included in this collection will 
be prepared by attorneys. Using the professional rate of $310 per hour 
for

[[Page 64603]]

associate attorneys in private firms, the USPTO estimates that the 
respondent cost burden for submitting these petitions will be 
approximately $1,904,330 per year. The USPTO expects that the other 
items in this collection will be prepared by paraprofessionals. Using 
the paraprofessional rate of $100 per hour, the USPTO estimates that 
the respondent cost burden for submitting the other items in this 
collection will be approximately $2,728,300 per year, for a total 
annual respondent cost burden of approximately $4,632,630.

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                                                                                     Estimated       Estimated
                   Item                         Estimated time for response           annual       annual burden
                                                                                     responses         hours
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Maintenance Fee Transmittal Transactions   5 minutes............................         204,005          16,320
 (PTO/SB/45).
Electronic Maintenance Fee Transactions..  20 seconds...........................         136,003             816
Petition to Accept Unavoidably Delayed     8 hours..............................             172           1,376
 Payment of Maintenance Fee in an Expired
 Patent (37 CFR 1.378(b)) (PTO/SB/65).
Petition to Accept Unintentionally         1 hour...............................           2,351           2,351
 Delayed Payment of Maintenance Fee in an
 Expired Patent (37 CFR 1.378(c)) (PTO/SB/
 66).
Petition to Accept Unintentionally          1 hour..............................             800             800
 Delayed Payment of Maintenance Fee in an
 Expired Patent (37 CFR 1.378(c)) (PTO/SB/
 66)--EFS-Web.
Petition to Review Refusal to Accept       4 hours..............................              54             216
 Payment of Maintenance Fee Prior to
 Expiration of Patent (37 CFR 1.377).
Petition for Reconsideration of Decision   8 hours..............................             175           1,400
 on Petition Refusing to Accept Delayed
 Payment of Maintenance Fee in an Expired
 Patent (37 CFR 1.378(e)).
``Fee Address'' Indication Form (PTO/SB/   5 minutes............................         126,837          10,147
 47).
                                          ----------------------------------------------------------------------
    Total................................  .....................................         470,397          33,426
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    Estimated Total Annual Non-hour Respondent Cost Burden: 
$614,571,323. 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 filing fees, postage 
costs, and recordkeeping costs.
    This collection has filing fees 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 
$980, $2,480, and $4,110 respectively (discounted to $490, $1,240, and 
$2,055 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 $614,442,370 per year as calculated in the 
accompanying table.

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                                                       Estimated annual    Amount of fee or    Estimated annual
                  Fee or surcharge                         responses           surcharge         filing costs
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Patent maintenance fee at 3\1/2\ years..............             114,683             $980.00     $112,389,340.00
Patent maintenance fee at 3\1/2\ years (small                     31,479              490.00       15,424,710.00
 entity)............................................
Patent maintenance fee at 7\1/2\ years..............              95,973            2,480.00      238,013,040.00
Patent maintenance fee at 7\1/2\ years (small                     23,940            1,240.00       29,685,600.00
 entity)............................................
Patent maintenance fee at 11\1/2\ years.............              46,752            4,110.00      192,150,720.00
Patent maintenance fee at 11\1/2\ years (small                     9,611            2,055.00       19,750,605.00
 entity)............................................
Surcharge for paying maintenance fee during the six-               7,961              130.00        1,034,930.00
 month grace period.................................
Surcharge for paying maintenance fee during the six-               9,609               65.00          624,585.00
 month grace period (small entity)..................
Petition to Accept Unavoidably Delayed Payment of                    172              700.00          120,400.00
 Maintenance Fee in an Expired Patent (37 CFR
 1.378(b))..........................................
Petition to Accept Unintentionally Delayed Payment                 3,151            1,640.00        5,167,640.00
 of Maintenance Fee in an Expired Patent (37 CFR
 1.378(c))..........................................
Petition to Review Refusal to Accept Payment of                       54              200.00           10,800.00
 Maintenance Fee Prior to Expiration of Patent (37
 CFR 1.377).........................................
Petition for Reconsideration of Decision on Petition                 175              400.00           70,000.00
 Refusing to Accept Delayed Payment of Maintenance
 Fee in an Expired Patent (37 CFR 1.378(e)).........
``Fee Address'' Indication Form.....................             126,837                0.00                0.00
                                                     -----------------------------------------------------------
    Total...........................................             470,397  ..................      614,442,370.00
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    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 42 cents, and that 
approximately 255,841 submissions per year may be

[[Page 64604]]

mailed to the USPTO, for a total postage cost of approximately $107,453 
per year.
    The recordkeeping costs for this collection are associated with 
submitting maintenance fee payments, forms, and petitions online 
through the USPTO Web site. It is recommended that customers who submit 
fee payments and documents online print and retain a copy of the 
acknowledgment receipt as evidence of the successful transaction. The 
USPTO estimates that it will take 5 seconds (0.001 hours) to print a 
copy of the acknowledgment receipt and that approximately 214,556 
maintenance fee payments, forms, and petitions will be submitted 
online, for a total of 215 hours per year for printing this receipt. 
Using the paraprofessional rate of $100 per hour, the USPTO estimates 
that the recordkeeping cost associated with this collection will be 
approximately $21,500 per year.
    The total non-hour respondent cost burden for this collection in 
the form of filing fees, postage costs, and recordkeeping costs is 
estimated to be $614,571,323 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 24, 2008.
Susan K. Fawcett,
Records Officer, USPTO, Office of the Chief Information Officer, 
Customer Information Services Group, Public Information Services 
Division.
[FR Doc. E8-25886 Filed 10-29-08; 8:45 am]
BILLING CODE 3510-16-P