[Federal Register Volume 76, Number 173 (Wednesday, September 7, 2011)]
[Notices]
[Pages 55364-55367]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2011-22792]


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DEPARTMENT OF COMMERCE

United States 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 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 November 7, 
2011.

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.

[[Page 55365]]

     Mail: Susan K. Fawcett, Records Officer, Office of the 
Chief Information Officer, 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 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]. Additional information about this 
collection is also available at http://www.reginfo.gov under 
``Information Collection Review.''

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. 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 (PTO/SB/45) 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, deposit account, or 
electronic funds transfer (EFT). Otherwise, non-electronic payments may 
be made by check, credit card, or 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: 573,161 responses per year. The 
USPTO estimates that approximately 21% of these responses will be from 
small entities.
    Estimated Time per Response: The USPTO estimates that it will take 
the public approximately 20 seconds (0.006 hours) to 8 hours to submit 
the information in this collection, including the time to gather the 
necessary information, prepare the appropriate form or petition, and 
submit the completed request to the USPTO.
    Estimated Total Annual Respondent Burden Hours: 43,605 hours.
    Estimated Total Annual Respondent Cost Burden: $6,658,984. The 
USPTO expects that the petitions included in this collection will be 
prepared by attorneys and that the other items in this collection will 
be prepared by paraprofessionals. Using the professional rate of $340 
per hour for attorneys in private firms, the USPTO estimates that the 
respondent cost burden for submitting the petitions will be $2,088,620 
per year. Using the paraprofessional rate of $122 per hour, the USPTO 
estimates that the

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respondent cost burden for submitting the other items in this 
collection will be $4,570,364 per year, for a total annual respondent 
cost burden of $6,658,984.

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                                                                                     Estimated       Estimated
                              Item                                Estimated time      annual       annual burden
                                                                   for response      responses         hours
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Maintenance Fee Transmittal Transactions (PTO/SB/45)...........       5 minutes          255,414          20,433
Electronic Maintenance Fee Transactions........................      20 seconds          109,543             657
Petition to Accept Unavoidably Delayed Payment of Maintenance           8 hours              172           1,376
 Fee in an Expired Patent (37 CFR 1.378(b)) (PTO/SB/65)........
Petition to Accept Unintentionally Delayed Payment of                    1 hour            2,351           2,351
 Maintenance Fee in an Expired Patent (37 CFR 1.378(c)) (PTO/SB/
 66)...........................................................
Petition to Accept Unintentionally Delayed Payment of                    1 hour              800             800
 Maintenance Fee in an Expired Patent (37 CFR 1.378(c)) (PTO/SB/
 66)--EFS-Web..................................................
Petition to Review Refusal to Accept Payment of Maintenance Fee         4 hours               54             216
 Prior to Expiration of Patent (37 CFR 1.377)..................
Petition for Reconsideration of Decision on Petition Refusing           8 hours              175           1,400
 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          204,652          16,372
                                                                ------------------------------------------------
    Totals.....................................................  ...............         573,161          43,605
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    Estimated Total Annual Non-hour Respondent Cost Burden: 
$688,304,405. This information collection has annual (non-hour) cost 
burden in the form of fees and postage costs.
    This collection has 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 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 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 fees associated with this collection will be $688,155,520 per 
year as calculated in the accompanying table.

----------------------------------------------------------------------------------------------------------------
                                                               Estimated
                     Fee or surcharge                           annual       Amount of fee    Estimated annual
                                                               responses     or surcharge       filing costs
----------------------------------------------------------------------------------------------------------------
Patent maintenance fee at 3 \1/2\ years...................         122,083         $980.00       $119,641,340.00
Patent maintenance fee at 3 \1/2\ years (small entity)....          30,959          490.00         15,169,910.00
Patent maintenance fee at 7 \1/2\ years...................          98,216        2,480.00        243,575,680.00
Patent maintenance fee at 7 \1/2\ years (small entity)....          22,220        1,240.00         27,552,800.00
Patent maintenance fee at 11 \1/2\ years..................          60,820        4,110.00        249,970,200.00
Patent maintenance fee at 11 \1/2\ years (small entity)...          12,237        2,055.00         25,147,035.00
Surcharge for paying maintenance fee during the six-month            8,189          130.00          1,064,570.00
 grace period.............................................
Surcharge for paying maintenance fee during the six-month           10,233           65.00            665,145.00
 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))
 (PTO/SB/65)..............................................
Petition to Accept Unintentionally Delayed Payment of                3,151        1,640.00          5,167,640.00
 Maintenance Fee in an Expired Patent (37 CFR 1.378(c))
 (PTO/SB/66)..............................................
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 (PTO/SB/47)...............         204,652            0.00                  0.00
                                                           -----------------------------------------------------
    Totals................................................         573,161  ..............        688,155,520.00
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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 44 cents and that 
approximately 338,376 submissions per year may be mailed to the USPTO, 
for a total postage cost of $148,885 per year.
    The total (non-hour) respondent cost burden for this collection in 
the form of fees and postage costs is estimated to be $688,304,405 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

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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: September 1, 2011.
Susan K. Fawcett,
Records Officer, USPTO, Office of the Chief Information Officer.
[FR Doc. 2011-22792 Filed 9-6-11; 8:45 am]
BILLING CODE 3510-16-P