[Federal Register Volume 76, Number 138 (Tuesday, July 19, 2011)]
[Notices]
[Pages 42684-42686]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2011-18092]


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DEPARTMENT OF COMMERCE

Patent and Trademark Office


Statutory Invention Registration

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 September 19, 
2011.

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.
     Mail: Susan K. Fawcett, Records Officer, Office of the 
Chief Information Officer, United States Patent and

[[Page 42685]]

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 Raul Tamayo, Legal Advisor, 
Office of Patent Legal Administration, United States Patent and 
Trademark Office, P.O. Box 1450, Alexandria, VA 22313-1450, by 
telephone at 571-272-7728, or by e-mail to [email protected] with 
``Paperwork'' in the subject line. Additional information about this 
collection is also available at http://www.reginfo.gov under 
``Information Collection Review.''

SUPPLEMENTARY INFORMATION:

I. Abstract

    An applicant for an original patent may request, at any time during 
the pendency of the applicant's pending complete application, that the 
specification and drawings be published as a statutory invention 
registration (SIR). A published SIR is not a patent. It has the 
defensive attributes of a patent, e.g., it is usable as a reference as 
of its filing date in the same manner as a patent, but does not have 
the enforceable attributes of a patent. Historically, applicants have 
requested that the USPTO publish their patent applications as SIRs in 
certain instances when, for any of a variety of reasons, applicants no 
longer wanted to go through the effort and expense of obtaining patents 
on the inventions claimed in the applications. However, given that 37 
CFR 1.211 requires the publication of most nonprovisional applications 
filed on or after November 29, 2000, applicants have increasingly found 
1.211 publication of an application to be a desirable alternative to 
requesting an SIR, particularly since 1.211 publication of the 
application is achieved without any waiver of patent rights.
    35 U.S.C. 157 authorizes the USPTO to publish an SIR containing the 
specifications and drawings of a regularly filed application for a 
patent without examination if the applicant: (i) Meets the requirements 
of 35 U.S.C. 112; (ii) has complied with the requirements for printing; 
(iii) waives the right to receive a patent on the invention claimed 
effective upon the date of publication of the SIR; and (iv) pays all 
application, publication and other processing fees.
    The USPTO administers 35 U.S.C. 157 through 37 CFR 1.293-1.297. Any 
request for an SIR is examined to determine whether the subject matter 
of the application is appropriate for publication and all other 
requirements have been met, including the requirements of 35 U.S.C. 112 
and 37 CFR 1.293.
    The requester 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 requester may also petition the USPTO to 
withdraw a request to publish an SIR prior to the date of the notice of 
the intent to publish.
    If the request for an SIR is approved, a notice to that effect will 
be published in the Official Gazette of the USPTO. Each SIR that is 
published will include a statement relating to the attributes of an 
SIR.
    The public uses form PTO/SB/94, Request for Statutory Invention 
Registration, to request and authorize publication of a regularly filed 
patent application as an SIR, 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 SIR, 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 an 
SIR or the petition to withdraw the request for publication of an SIR.

II. Method of Collection

    By mail, facsimile, or hand delivery to the USPTO when the 
applicant or agent files an SIR with the USPTO.

III. Data

    OMB Number: 0651-0036.
    Form Number(s): PTO/SB/94.
    Type of Review: Extension of a currently approved collection.
    Affected Public: Government agencies.
    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 completed request, depending upon the complexity of the 
situation.
    Estimated Total Annual Respondent Burden Hours: 4 hours.
    Estimated Total Annual Respondent Cost Burden: $1,300. The USPTO 
expects that attorneys will complete and submit this information. The 
estimated hourly rate for attorneys in private firms is $325. This is a 
fully loaded hourly rate.

----------------------------------------------------------------------------------------------------------------
                                                             Estimated time
                           Item                               for response    Estimated annual  Estimated annual
                                                                (minutes)         responses       burden hours
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Statutory Invention Registration..........................                24                 5                 2
Petition to Review Final Refusal to Publish...............                24                 1                 1
Petition to Withdraw SIR Publication Request..............                24                 2                 1
                                                           -----------------------------------------------------
    Totals................................................  ................                 8                 4
----------------------------------------------------------------------------------------------------------------

    Estimated Total Annual (Non-Hour) Respondent Cost Burden: $8,170. 
There are no capital start-up or maintenance costs. However, this 
collection does have postage costs and filing fees.
    The public may submit the paper form 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 $1.28 for a 3 oz. large envelope, 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 as an average first-class postage rate of $1.28, 
for a total postage cost of $10.

[[Page 42686]]



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                                                                                                 Total non-hour
                           Item                              Responses (yr)       Postage $        cost burden
                                                                         (a)               (b)           (a x b)
                                                                                                             (c)
----------------------------------------------------------------------------------------------------------------
Statutory Invention Registration..........................                 5             $1.28             $6.00
Petition to Review Final Refusal to Publish...............                 1              1.28              1.00
Petition to Withdraw SIR Publication Request..............                 2              1.28              3.00
                                                           -----------------------------------------------------
    Totals................................................                 8  ................             10.00
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    There is annual (non-hour) cost burden in the way of filing fees 
associated with this collection of $8,160, as shown in the accompanying 
table.

----------------------------------------------------------------------------------------------------------------
                                                                                                 Total non-hour
                           Item                              Responses (yr)     Filing fee $       cost burden
                                                                         (a)               (b)           (a x b)
                                                                                                             (c)
----------------------------------------------------------------------------------------------------------------
 
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 final office action, 37 CFR 1.17(o))..................
Petition to Review Final Refusal to Publish (37 CFR 1.295)                 1            200.00            200.00
Petition to Withdraw Publication Request (37 CFR 1.296)...                 1            200.00            200.00
Petition to Withdraw Publication Request (on or after Date                 1            400.00            400.00
 of Notice of Intent to Publish (37 CFR 1.296))...........
                                                           -----------------------------------------------------
    Totals................................................                 8  ................          8,160.00
----------------------------------------------------------------------------------------------------------------

    The USPTO estimates that the total (non-hour) respondent cost 
burden for this collection in the form of postage costs and filing fees 
will be $8,170.

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 will also become a matter of public record.

    Dated: July 14, 2011.
Susan K. Fawcett,
Records Officer, USPTO, Office of the Chief Information Officer.
[FR Doc. 2011-18092 Filed 7-18-11; 8:45 am]
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