[Federal Register Volume 80, Number 40 (Monday, March 2, 2015)]
[Notices]
[Pages 11178-11181]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2015-04212]
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DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Proposed Collection; Comment Request; ``Rules for Patent
Maintenance Fees''
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Notice.
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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 comment on
proposed and/or continuing information collections, 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 May 1, 2015.
ADDRESSES: Written comments may be submitted by any of the following
methods:
Email: [email protected]. Include ``0651-
0016 Rules for Patent Maintenance Fees'' in the subject line of the
message.
Mail: Marcie Lovett, Records Management Division Director,
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, Senior Legal Advisor, Office of
Patent Legal Administration, United States Patent and Trademark Office
(USPTO), P.O. Box 1450, Alexandria, VA 22313-1450; by telephone at 571-
272-7728; or by email at [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
Under 35 U.S.C. Sec. 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
[[Page 11179]]
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 unintentional. Petitions to accept 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
information covered by this collection, including the information
necessary to submit a patent maintenance fee payment (PTO/SB/45) and to
designate or change a fee address (PTO/SB/47). The USPTO offers a total
of three different versions of the form for petitions to accept
unintentionally delayed payment of maintenance fee in an expired patent
under 37 CFR 1.378(c). In addition to (i) the basic PDF that may be
filled out electronically and then printed and mailed (or submitted
online) (Form PTO/SB/66), the USPTO offers (ii) an enhanced PDF that is
designed only to be submitted electronically through EFS-Web (PTO/SB/
66--EFS-Web), and (iii) a Web-based ePetition, which the public can
complete on a computer using a Web browser and then click a submit
button to send the information to the USPTO over the Internet
(ePetition). 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
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.
II. Method of Collection
By mail, facsimile, hand delivery, or electronically to the USPTO.
III. Data
OMB Number: 0651-0016.
IC Instruments: The individual instruments in this collection, as
well as their associated forms, are listed in the table below.
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IC number Form and function Form #
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1............................. Maintenance Fee PTO/SB/45
Transmittal Form,
electronic and paper.
2............................. Electronic Maintenance No Form
Fee Form, electronic. Associated
3............................. Petition to Accept PTO/SB/66
Unintentionally
Delayed Payment of
Maintenance Fee in an
Expired Patent (37
CFR 1.378(c)),
electronic and paper.
4............................. Petition to Accept PTO/SB/66
Unintentionally
Delayed Payment of
Maintenance Fee in an
Expired Patent (37
CFR 1.378(c))--EFS-
Web, electronic.
5............................. Petition to Accept ePetition
Unintentionally
Delayed Payment of
Maintenance Fee in an
Expired Patent (37
CFR 1.378(c))--
ePetition, electronic.
6............................. Petition to Review No Form
Refusal to Accept Associated
Payment of
Maintenance Fee Prior
to Expiration of
Patent (37 CFR
1.377), electronic
and paper.
7............................. Petition for No Form
Reconsideration of Associated
Decision on Petition
Refusing to Accept
Delayed Payment of
Maintenance Fee in an
Expired Patent (37
CFR 1.378(e)),
electronic and paper.
8............................. ``Fee Address'' PTO/SB/47
Indication Form,
electronic and paper.
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Type of Review: Regular
Affected Public: Individuals or households; businesses or other
for-profits; and not-for-profit institutions.
Estimated Number of Respondents: 525,309 responses per year. The
USPTO estimates that approximately 25% 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. The time per response,
estimated annual
[[Page 11180]]
responses, and estimated annual hour burden associated with each
instrument in this information collection is shown in the table below.
Estimated Total Annual Hour Burden: 18,123.42 hours.
Estimated Total Annual Cost Burden (Hourly): $3,263,347.08. 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 $389
per hour for attorneys in private firms, the USPTO estimates that the
respondent cost burden for attorneys submitting the petitions will
total $1,470,420 per year. Using the paraprofessional rate of $125 per
hour, the USPTO estimates that the respondent cost burden for
paraprofessionals submitting the other items in this collection will
total $1,792,927.08 per year, for a total annual respondent cost burden
of $3,263,347.08.
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Burden (hrs/ Total cost ($/
IC No. Item/form No. Minutes Responses (yr) yr) Rate ($/hr) yr)
(a) (b) (c) (a x b)/60 (d) (e) (c x d)
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1................................... Maintenance Fee Transmittal 5 37,434 3,119.5 $125.00 $389,937.50
Transactions (PTO/SB/45).
2................................... Electronic Maintenance Fee 0.333 375,555 2,086.42 125.00 260,802.08
Transactions.
3................................... Petition to Accept Unintentionally 60 1,000 1,000 389.00 389,000.00
Delayed Payment of Maintenance
Fee in an Expired Patent (37 CFR
1.378(c)) (PTO/SB/66).
4................................... Petition to Accept Unintentionally 60 500 500 389.00 194,500.00
Delayed Payment of Maintenance
Fee in an Expired Patent (37 CFR
1.378(c)) (PTO/SB/66)--EFS-Web.
5................................... Petition to Accept Unintentionally 60 1,000 1,000 389.00 389,000.00
Delayed Payment of Maintenance
Fee in an Expired Patent (37 CFR
1.378(c)) (PTO/SB/66)--ePetition.
6................................... Petition to Review Refusal to 240 20 80 389.00 31,120.00
Accept Payment of Maintenance Fee
Prior to Expiration of Patent (37
CFR 1.377).
7................................... Petition for Reconsideration of 480 150 1,200 389.00 466,800.00
Decision on Petition Refusing to
Accept Delayed Payment of
Maintenance Fee in an Expired
Patent (37 CFR 1.378(e)).
8................................... ``Fee Address'' Indication Form 5 109,650 9,137.5 125.00 1,142,187.50
(PTO/SB/47).
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Totals.......................... .................................. .............. 525,309 18,123.42 .............. 3,263,347.08
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Estimated Total Annual Cost Burden (Non-Hourly): $3,801.42. This
information collection has annual (non-hour) cost burden in the form of
postage costs.
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 49 cents and that
approximately 7,758 submissions per year may be mailed to the USPTO,
for a total postage cost of $3,801.42 per year.
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Total non-hour
IC No. Item Responses Postage cost cost burden
(postage)
(a) (b) (c) (a x b)
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3............................... Petition to Accept 70 $0.49 $34.30
Unintentionally Delayed
Payment of Maintenance Fee in
an Expired Patent (37 CFR
1.378(c)).
6............................... Petition to Review Refusal to 1 0.49 0.49
Accept Payment of Maintenance
Fee Prior to Expiration of
Patent (37 CFR 1.377).
7............................... Petition for Reconsideration 11 0.49 5.39
of Decision on Petition
Refusing to Accept Delayed
Payment of Maintenance Fee in
an Expired Patent (37 CFR
1.378(e)).
8............................... ``Fee Address'' Indication 7,676 0.49 3,761.24
Form.
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Totals...................... .............................. 7,758 .............. 3,801.42
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[[Page 11181]]
The total (non-hour) respondent cost burden for this collection in
the form of postage costs is estimated to be $3,801.42 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,
including the validity of the methodology and assumptions used; (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 technology, e.g.,
permitting electronic submission of responses.
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: February 20, 2015.
Marcie Lovett,
Records Management Division Director, USPTO, Office of the Chief
Information Officer.
[FR Doc. 2015-04212 Filed 2-27-15; 8:45 am]
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