[Federal Register Volume 80, Number 49 (Friday, March 13, 2015)]
[Pages 13330-13332]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2015-05781]



 Patent and Trademark Office

Proposed Collection; Comment Request; ``Third-Party Submissions 
and Protests''

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Notice.


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. 

DATES: Written comments must be submitted on or before May 12, 2015.

ADDRESSES: Written comments may be submitted by any of the following 
     Email: [email protected]. Include ``0651-
0062 Third-Party Submissions and Protests'' in the subject line of the 
     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, 
P.O. Box 1450, Alexandria, VA 22313-1450; by telephone at 571-272-7728; 
or by email 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.''


I. Abstract

    The United States Patent and Trademark Office (USPTO) is required 
by 35 U.S.C. 131 et seq. to examine an application for patent and, when 
appropriate, issue a patent. The provisions of 35 U.S.C. 122(c), 
122(e), 131, and 151, as well as 37 CFR 1.290 and 1.291, limit the 
ability of a third party to have information entered and considered in, 
or to protest, a patent application pending before the Office.
    37 CFR 1.290 provides a mechanism for third parties to submit to 
the USPTO, for consideration and inclusion in the record of a patent 
application, any patents, published patent applications, or other 
printed publications of potential relevance to the examination of the 
    A preissuance submission under 37 CFR 1.290 may be made in any non-
provisional utility, design, and plant application, as well as in any 
continuing application. A preissuance submission under 37 CFR 1.290 
must include a concise description of the asserted relevance of each 
document submitted, and must be submitted within a certain statutorily 
specified time period.
    37 CFR 1.291 permits a member of the public to file a protest 
against a pending application. Protests pursuant to 37 CFR 1.291 are 
supported by a separate statutory provision from third-party 
submissions under 37 CFR 1.290 (35 U.S.C. 122(c) v. 35 U.S.C. 122(e)). 
As a result, there are several differences between protests and third-
party submissions.
    For example, 37 CFR 1.291 permits the submission of information 
that is not permitted in a third-party submission under 37 CFR 1.290. 
Specifically, 37 CFR 1.291 provides for the submission of information 
other than publications, including any facts or information adverse to 
patentability, and arguments to that effect. Further, 37 CFR 1.291 
requires a protest to include a concise explanation of the relevance of 
each item of information submitted. Unlike the concise description of 
relevance required for a preissuance submission under 37 CFR 1.290, 
which is limited to a description of a document's relevance, the 
concise explanation for a protest under 37 CFR 1.291 allows for 
arguments against patentability. Additionally, the specified time 
period for submitting a protest differs from the time period for 
submitting third-party submissions, and is impacted by whether the 
protest is accompanied by the written consent of the applicant.
    This information collection (the information collected via third-
party submissions under 37 CFR 1.290 and protests under 37 CFR 1.291) 
is necessary so that the public may contribute to the quality of issued 
patents. The USPTO will use this information, as appropriate, during 
the patent examination process to assist in evaluating the patent 

II. Method of Collection

    Electronically when using the USPTO online filing system EFS-Web, 
or by mail or hand delivery.

III. Data

    OMB Number: 0651-0062.
    IC Instruments: The individual instruments in this collection, as 
well as their associated forms, are listed in the table below.

          Table 1--Information Collection Instruments and Forms
             IC No.                   collection          Form number
1...............................  Third-Party          No Form
                                   Submissions in      Associated.
2...............................  Third-Party          PTO/SB/
                                   Submissions in      429.
3...............................  Protests by the      No Form
                                   Public Against      Associated.
                                   Under 37 CFR
                                   1.291; paper.

    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: 1,560 responses per year.
    Estimated Time per Response: The USPTO estimates that it will take 
the public approximately 10 hours to gather the necessary information, 
prepare the appropriate form or other documents, and submit the 
information to the USPTO.
    Estimated Total Annual Hour Burden: 15,600 hours.
    Estimated Total Annual Cost Burden (Hourly): $6,068,400. The USPTO 
expects that attorneys will complete the instruments associated with 
this information collection. The professional hourly rate for an 
attorney is $389. Using this hourly rate, the USPTO

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estimates $6,068,400 per year for the total hourly costs associated 
with respondents.

                                                               Table 2--Hourly Cost Burden
                                                                 Estimated time
           IC Number                 Information collection       for response    Estimated annual  Estimated annual     Rate ($/hr)     Total cost ($/
                                           instrument               (minutes)         responses       burden hours                             hr)
                                                                             (a)               (b)   (a) x (b) = (c)               (d)   (c) x (d) = (e)
1..............................  Third-Party Submissions in             10 hours             1,500            15,000           $389.00     $5,835,000.00
                                  Nonissued Applications
2..............................  Third-Party Submissions in             10 hours                50               500            389.00        194,500.00
                                  Nonissued Applications
3..............................  Protests by the Public                 10 hours                10               100            389.00         38,900.00
                                  Against Pending Applications
                                  Under 37 CFR 1.291 (paper).
    Totals.....................  .............................  ................             1,560            15,600  ................      6,068,400.00

    Estimated Total Annual Cost Burden (Non-Hourly): $237,619.25 per 
year. There are no capital start-up, recordkeeping or maintenance costs 
associated with this information collection. There are, however, annual 
(non-hour) costs associated with this information collection in the 
form of filing fees and postage costs.
    When submitting the information in this collection to the USPTO 
electronically, the applicant is strongly urged to retain a copy of the 
file submitted to the USPTO as evidence of authenticity in addition to 
keeping the acknowledgment receipt as clear evidence of the date the 
file was received by the USPTO. The USPTO does not, however, require 
this recordkeeping, and thus does not consider this action to be a 
recordkeeping cost imposed on the applicant.
    This collection has a non-hourly annual cost burden in the form of 
filing fees. 37 CFR 1.290 requires the payment of the fee set forth in 
37 CFR 1.17(o) for every ten documents, or fraction thereof, listed in 
each third-party preissuance submission. The USPTO provides an 
exemption from this fee requirement where a preissuance submission 
listing three or fewer total documents is the first preissuance 
submission submitted in an application by a third party, or a party in 
privity with the third party. Taking the fee and exemption into 
account, the USPTO estimates that the average fee per submission for 
the third-party submissions is $180, with the average fee for small 
entities totaling $90.
    There is no fee for filing protests under 37 CFR 1.291 unless the 
filed protest is the second or subsequent protest by the same real 
party in interest, in which case the 37 CFR 1.17(i) fee of $130 must be 
included (the USPTO estimates 1 of the 10 protests filed per year will 
trigger this fee). The table below illustrates the total amount of and 
distribution of filing fees associated with this collection.

                                  Table 3--Non-Hourly Cost Burden--Filing Fees
                                  Information collection                                         Total non-hour
          IC Number                     instrument           Responses (yr)    Filing fee ($)   cost burden (yr)
                                                                         (a)               (b)   (a) x (b) = (c)
1-2..........................  Third-Party Submissions in              1,085              $180       $195,300.00
                                Nonissued Applications.
1-2..........................  Third-Party Submissions in                465                90         41,850.00
                                Nonissued Applications
                                (small entity).
3............................  Protests by the public                      1               130            130.00
                                against pending
                                applications under 37 CFR
    Total....................  ...........................             1,551  ................        237,280.00

    This collection also has a non-hourly annual cost burden in the 
form of postage costs. Customers may incur postage costs when 
submitting the Information Collection instruments contained within 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 one-pound submission mailed in a flat-rate envelope to be $5.75. 
The USPTO further estimates that the vast majority--roughly 98 
percent--of all paper submissions will be delivered by mail, with the 
remainder delivered by hand delivery, for an estimate that 
approximately 59 submissions will require postage. Therefore, the 
estimated postage cost for this collection will be $339.25.
    The total non-hour respondent cost burden for this collection in 
the form of filing fees ($237,280) and postage costs ($339.25) is 
approximately $237,619.25 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

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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 
    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: March 9, 2015.
Marcie Lovett,
Records Management Division Director, USPTO, Office of the Chief 
Information Officer.
[FR Doc. 2015-05781 Filed 3-12-15; 8:45 am]