[Federal Register Volume 83, Number 74 (Tuesday, April 17, 2018)]
[Pages 16836-16839]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2018-08022]



Patent and Trademark Office

Third-Party Submissions and Protests

ACTION: Proposed collection; comment request.


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 

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 


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 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).
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

    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
                                                                     Response time                   Annual burden
            IC No.                             Item                     (hours)        Responses         hours           Rate            Total cost
                                                                               (a)             (b)             (c)             (d)                   (e)
                                                                                                         (a) x (b)                             (c) x (d)
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).
    Total....................  ...................................  ..............           1,450          14,500  ..............          6,351,000.00

    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
                                                                     Estimated                    Total Non-hour
           IC No.                            Item                     annual      Filing fee ($)    cost burden
                                                                     responses                          ($)
                              ..................................  ..............  ..............  ..............
                                                                             (a)             (b)     (a) x (b) =
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
    Total...................  ..................................             581  ..............       73,930.00

    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]