[Federal Register Volume 83, Number 74 (Tuesday, April 17, 2018)]
[Notices]
[Pages 16836-16839]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2018-08022]
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DEPARTMENT OF COMMERCE
Patent and Trademark Office
Third-Party Submissions and Protests
ACTION: Proposed collection; comment request.
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SUMMARY: The United States Patent and Trademark Office (USPTO), as
required by the Paperwork Reduction Act of 1995, invites comments on a
proposed extension of an existing information collection: 0651-0062
(Third-Party Submissions and Protests).
[[Page 16837]]
DATES: Written comments must be submitted on or before June 18, 2018.
ADDRESSES: You may submit comments by any of the following methods:
Email: [email protected]. Include ``0651-
0062 comment'' in the subject line of the message.
Federal Rulemaking Portal: http://www.regulations.gov.
Mail: Marcie Lovett, Records and Information Governance
Division Director, Office of the Chief Technology Officer, United
States Patent and Trademark Office, P.O. Box 1450, Alexandria, VA
22313-1450.
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 ``0651-0062 comment'' 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
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
application.
A third-party 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 third-party 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 separated 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 in
a protest 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, including any facts or information adverse to
patentability. 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
third-party 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.
Statute/Rule................ 35 U.S.C. 122(e), 37 35 U.S.C. 122(c), 37
CFR 1.290. CFR 1.291.
Content..................... Printed publications Printing
publications and
any facts or
information adverse
to patentability.
Remarks..................... Concise description Concise explanation
of relevance of the relevance
(limited to a (allows for
concise description arguments against
of each document's patentability).
relevance).
Timing...................... Prior to Allowance Prior to Allowance
and prior to later and prior to Pre-
of: 6 months after Grant Publication
Pre-Grant OR Prior to
Publication or Allowance and after
first rejection of and after Pre-Grant
any claim. Publication with
application
consent.
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This information collection is necessary so that the public may
contribute to the quality of issued patents. The USPTO will use this
information, as appropriate, to assist in evaluating the patent
application as it moves through the patent examination process.
II. Method of Collection
OMB Number: 0651-0062.
IC Instruments: PTO/SB/429.
Type of Review: Extension of a currently approved collection.
Affected Public: Individuals or households; businesses or other
for-profits; and not-for-profit institutions.
Estimated Number of Respondents: 1,450 responses per year.
Estimated Time per Response: The USPTO estimates that it will take
the pubic approximately 10 hours to gather the necessary information,
prepare the appropriate form or document, and submit the information to
the USPTO.
Estimated Total Annual Hour Burden: 14,500 hours.
Estimated Annual Respondent (Hourly) Cost Burden: $6,351,000.00.
The USPTO expects that intellectual property attorneys in private firms
will complete the instruments associated with this information
collection. The professional hourly rate is $438. The rate is
established by estimates in the 2017 Report on the Economic Survey,
published by the Committee on Economics of Legal Practice of the
American Intellectual Property Law Association. Using this hourly rate,
the USPTO estimates that the total respondent cost burden for this
collection is $6,351,000 per year.
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Table 1--Burden Hour and Cost
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Response time Annual burden
IC No. Item (hours) Responses hours Rate Total cost
(a) (b) (c) (d) (e)
(a) x (b) (c) x (d)
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1............................ Third-Party Submissions in Non- 10 1,400 14,000 $438.00 $6,132,000.00
issued Applications (electronic).
2............................ Third-Party Submissions in Non- 10 40 400 438.00 175,200.00
issued Applications (paper).
3............................ Protests by the Public Against 10 10 100 438.00 43,800.00
Pending Applications Under 37 CFR
1.291 (paper).
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Total.................... ................................... .............. 1,450 14,500 .............. 6,351,000.00
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Estimated Total Annual (Non-hour) Respondent Cost Burden: $74,160
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 forms of filing fees and postage costs. In particular, 37 CFR 1.290
requires payment of the fee set forth in 37 CFR 1.17(o) ($180
undiscounted; $90 for a small or micro entity) for every ten documents,
or fraction thereof, listed in each third-party submission.
The USPTO provides an exemption from the 1.17(o) fee requirement
where a third-party submission listing three or fewer total documents
is the first third-party submission submitted in an application by the
third party, or a party in privity with the third party. The effect of
this is that the first three documents submitted by a third party are
exempt from the fee requirement. However, the submission of four or
more documents by a third party triggers the collection of the fee.
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 $130 must be
included. The USPTO estimates that only 1 out of every 10 protests
filed per year will require this fee.
When electronically submitting the information in this collection
to the USPTO, the applicant is encouraged to retain a copy of the file
submitted to the USPTO as evidence of the application. Inclusion of an
USPS acknowledgement receipt with mailed items provides evidence of the
date the file was received by the USPTO. The USPTO does not, however,
require this recordkeeping, and thus does not consider this action to
be a recordkeeping cost imposed on the applicant.
Table 2--Filing Fees
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Estimated Total Non-hour
IC No. Item annual Filing fee ($) cost burden
responses ($)
.................................. .............. .............. ..............
(a) (b) (a) x (b) =
(c)
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1-2......................... Third-Party Submissions in Non- 410 $180.00 $73,800.00
issued Applications.
1-2......................... Third-Party Submissions in Non- 170 90.00 15,300.00
issued Applications (small and
micro entities).
3........................... Protests by the Public Against 1 130.00 130.00
Pending Applications Under 37 CFR
1.291.
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Total................... .................................. 581 .............. 73,930.00
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This collection also has non-hourly annual cost burden in the form
of postage costs. Customers may incur postage costs when submitting the
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 $6.70. The USPTO estimates that the vast
majority--roughly 98 percent--of all paper submissions will be
delivered by mail, with the remainder being delivered by hand delivery,
for an estimated that approximately 40 submissions will require
postage. Therefore, the estimated postage cost for this collection will
be $268.
The total non-hour respondent cost burden for this collection in
the form of filing fees ($73,930) and postage costs ($268) is
approximately $74,198.
IV. Request for Comments
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.
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
[[Page 16839]]
collection techniques or other forms or information technology.
Marcie Lovett,
Records and Information Governance Division Director, OCTO, United
States Patent and Trademark Office.
[FR Doc. 2018-08022 Filed 4-16-18; 8:45 am]
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