[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.

 
------------------------------------------------------------------------
           IC number               Form and function         Form #
------------------------------------------------------------------------
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.
------------------------------------------------------------------------

    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).
                                                                         -------------------------------------------------------------------------------
    Totals..........................  ..................................  ..............         525,309       18,123.42  ..............    3,263,347.08
--------------------------------------------------------------------------------------------------------------------------------------------------------

    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.

----------------------------------------------------------------------------------------------------------------
                                                                                                  Total non-hour
             IC No.                            Item                  Responses     Postage cost     cost burden
                                                                                                     (postage)
                                                                             (a)             (b)     (c) (a x b)
----------------------------------------------------------------------------------------------------------------
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.
                                                                 -----------------------------------------------
    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]
BILLING CODE 3510-16-P