[Federal Register Volume 83, Number 98 (Monday, May 21, 2018)]
[Notices]
[Pages 23430-23433]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2018-10690]


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DEPARTMENT OF COMMERCE

 Patent and Trademark Office


Proposed Collection; Comment Request; ``Rules for Patent 
Maintenance Fees''

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Proposed extension of an existing information collection; 
comment request.

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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.

DATES: Written comments must be submitted on or before July 20, 2018.

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, Director, Records and Information 
Governance Division, Office of the Chief Technology 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)-(h) 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, plant, or 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 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

[[Page 23431]]

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 the petition 
fee as set forth in 37 CFR 1.17(m). 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(d).
    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 two 
different versions of the petition to accept unintentionally delayed 
payment of maintenance fee in an expired patent under 37 CFR 1.378(b). 
In addition to the basic PDF that may be filled out electronically and 
then printed and mailed (or submitted online) (Form PTO/SB/66), the 
USPTO offers 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 form is 
associated with the petition to the Director to accept and record the 
maintenance fee under 37 CFR 1.377, or the petition the Director to 
reconsider a decision to refuse to accept a delayed payment in an 
expired patent under 37 CFR 1.378(d). Both may be submitted in paper 
and electronic format.
    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 website. However, to pay a maintenance fee 
after patent expiration, the maintenance fee payment and the petition 
fee as set forth in 37 CFR 1.17(m) 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 #                  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(b)),
                                 electronic and paper.
4.............................  Petition to Accept      ePetition.
                                 Unintentionally
                                 Delayed Payment of
                                 Maintenance Fee in an
                                 Expired Patent (37
                                 CFR 1.378(b))--
                                 ePetition, electronic.
5.............................  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.
6.............................  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(d)),
                                 electronic and paper.
7.............................  ``Fee Address''         PTO/SB/47.
                                 Indication Form,
                                 electronic and 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: 533,910 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 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: 13,878.89 hours.
    Estimated Total Annual Cost Burden (Hourly): $5,117,750.56. The 
USPTO expects that the information in this collection will be prepared 
by both attorneys and paralegals. The professional hourly rate for 
attorneys is $438 and the professional hourly rate for 
paraprofessionals is $145. These rates are 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 and the 2017 National Utilization and Compensation Survey 
published by the National Association of Legal Assistants (NALA). 
Therefore, the estimated total respondent cost burden for this 
collection will be approximately $5,117,750.56 per year.

[[Page 23432]]



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                                                                                                    Responses   Burden (hrs/              Total cost ($/
                     IC #                                       Item                    Minutes        (yr)         yr)      Rate ($/hr)        yr)
                                                                                              (a)          (b)  (c)(a x b)/          (d)      (e)(c x d)
                                                                                                                         60
--------------------------------------------------------------------------------------------------------------------------------------------------------
1............................................  Maintenance Fee Transmittal                      5       11,000       916.67      $145.00     $132,916.67
                                                Transactions (PTO/SB/45).
2............................................  Electronic Maintenance Fee                    0.33      425,500     2,363.89       145.00      342,763.89
                                                Transactions.
3............................................  Petition to Accept Unintentionally              60          300          300       438.00      131,400.00
                                                Delayed Payment of Maintenance Fee
                                                in an Expired Patent (37 CFR
                                                1.378(b)) (PTO/SB/66).
4............................................  Petition to Accept Unintentionally              60        1,500        1,500       438.00      657,000.00
                                                Delayed Payment of Maintenance Fee
                                                in an Expired Patent (37 CFR
                                                1.378(b)) (PTO/SB/66)--ePetition.
5............................................  Petition to Review Refusal to Accept           240           10           40       438.00       17,520.00
                                                Payment of Maintenance Fee Prior to
                                                Expiration of Patent (37 CFR 1.377).
6............................................  Petition for Reconsideration of                480          100          800       438.00      350,400.00
                                                Decision on Petition Refusing to
                                                Accept Delayed Payment of
                                                Maintenance Fee in an Expired Patent
                                                (37 CFR 1.378(d)).
7............................................  ``Fee Address'' Indication Form (PTO/            5       95,500      9,137.5       145.00    3,485,750.00
                                                SB/47).
                                                                                     -------------------------------------------------------------------
    Totals...................................  .....................................  ...........      533,910    13,878.89  ...........    5,117,750.56
--------------------------------------------------------------------------------------------------------------------------------------------------------

    Estimated Total Annual Cost Burden (Non-Hourly): $1,209,457,959.50. 
This information collection has annual (non-hour) cost burden in the 
form of filing fees and postage costs.
    In this collection there are filing fees associated with the 
maintenance of patents, which are listed in the table below.

----------------------------------------------------------------------------------------------------------------
              IC #                        Item             Respondents     Filing fee             Burden
                                 ......................             (a)             (b)          (a) x (b) = (c)
                                                                                                             ($)
----------------------------------------------------------------------------------------------------------------
1..............................  For Maintaining an             188,800       $1,600.00         *$302,080,000.00
                                  Original or Any
                                  Reissue Patent, Due
                                  at 3.5 Years (large
                                  entity).
1..............................  For Maintaining an              40,800          800.00            32,640,000.00
                                  Original or Any
                                  Reissue Patent, Due
                                  at 3.5 Years (small
                                  entity).
1..............................  For Maintaining an               2,600          400.00             1,040,000.00
                                  Original or Any
                                  Reissue Patent, Due
                                  at 3.5 Years (micro
                                  entity).
1..............................  For Maintaining an              96,000        3,600.00           345,600,000.00
                                  Original or Any
                                  Reissue Patent, Due
                                  at 7.5 Years (large
                                  entity).
1..............................  For Maintaining an              16,200        1,800.00            29,160,000.00
                                  Original or Any
                                  Reissue Patent, Due
                                  at 7.5 Years (small
                                  entity).
1..............................  For Maintaining an                 900          900.00               810,000.00
                                  Original or Any
                                  Reissue Patent, Due
                                  at 7.5 Years (micro
                                  entity).
1..............................  For Maintaining an              61,700        7,400.00           456,580,000.00
                                  Original or Any
                                  Reissue Patent, Due
                                  at 11.5 Years (large
                                  entity).
1..............................  For Maintaining an               9,800        3,700.00            36,260,000.00
                                  Original or Any
                                  Reissue Patent, Due
                                  at 11.5 Years (small
                                  entity).
1..............................  For Maintaining an                 500        1,850.00               925,000.00
                                  Original or Any
                                  Reissue Patent, Due
                                  at 11.5 Years (micro
                                  entity).
1..............................  Surcharge--3.5 year--            3,500          160.00               560,000.00
                                  Late Payment Within 6
                                  Months (large entity).
1..............................  Surcharge--3.5 year--            6,200           80.00               496,000.00
                                  Late Payment Within 6
                                  Months (small entity).
1..............................  Surcharge--3.5 year--              700           40.00                28,000.00
                                  Late Payment Within 6
                                  Months (micro entity).
1..............................  Surcharge--7.5 year--            2,000          160.00               320,000.00
                                  Late Payment Within 6
                                  Months (large entity).
1..............................  Surcharge--7.5 year--            2,500           80.00               200,000.00
                                  Late Payment Within 6
                                  Months (small entity).
1..............................  Surcharge--7.5 year--              300           40.00                12,000.00
                                  Late Payment Within 6
                                  Months (micro entity).
1..............................  Surcharge--11.5 year--           2,200          160.00               352,000.00
                                  Late Payment Within 6
                                  Months (large entity).
1..............................  Surcharge--11.5 year--           1,700           80.00               136,000.00
                                  Late Payment Within 6
                                  Months (small entity).
1..............................  Surcharge--11.5 year--             200           40.00                 8,000.00
                                  Late Payment Within 6
                                  Months (micro entity).
3..............................  Petition for the                   500        2,000.00             1,000,000.00
                                  Delayed Payment of
                                  the Fee for
                                  Maintaining a Patent
                                  in Force (large
                                  entity).

[[Page 23433]]

 
3..............................  Petition for the                 1,200        1,000.00             1,200,000.00
                                  Delayed Payment of
                                  the Fee for
                                  Maintaining a Patent
                                  in Force (small
                                  entity).
3..............................  Petition for the                   100          500.00                50,000.00
                                  Delayed Payment of
                                  the Fee for
                                  Maintaining a Patent
                                  in Force (micro
                                  entity).
                                                        --------------------------------------------------------
    Totals.....................  ......................         438,400  ..............         1,209,457,000.00
----------------------------------------------------------------------------------------------------------------

    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 50 cents and that 
approximately 1,919 submissions per year may be mailed to the USPTO, 
for a total postage cost of $959.50 per year.

----------------------------------------------------------------------------------------------------------------
                                                                                           Total non-hour cost
              IC #                        Item              Responses     Postage cost       burden (postage)
----------------------------------------------------------------------------------------------------------------
                                 ......................             (a)             (b)             (c)(a) x (b)
----------------------------------------------------------------------------------------------------------------
3..............................  Petition to Accept                   6           $0.50                    $3.00
                                  Unintentionally
                                  Delayed Payment of
                                  Maintenance Fee in an
                                  Expired Patent (37
                                  CFR 1.378(b)).
5..............................  Petition to Review                   1            0.50                     0.50
                                  Refusal to Accept
                                  Payment of
                                  Maintenance Fee Prior
                                  to Expiration of
                                  Patent (37 CFR 1.377).
6..............................  Petition for                         2            0.50                     1.00
                                  Reconsideration of
                                  Decision on Petition
                                  Refusing to Accept
                                  Delayed Payment of
                                  Maintenance Fee in an
                                  Expired Patent (37
                                  CFR 1.378(d)).
7..............................  ``Fee Address''                  1,910            0.50                   955.00
                                  Indication Form.
                                                        --------------------------------------------------------
    Totals.....................  ......................           1,919  ..............                   959.50
----------------------------------------------------------------------------------------------------------------

    The total (non-hour) respondent cost burden for this collection in 
the form of filing fees and postage costs is estimated to be 
$1,209,457,959.50 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.

Marcie Lovett,
Director, Records and Information Governance Division, Office of the 
Chief Technology Officer, USPTO.
[FR Doc. 2018-10690 Filed 5-18-18; 8:45 am]
 BILLING CODE 3510-16-P