[Federal Register Volume 83, Number 172 (Wednesday, September 5, 2018)]
[Notices]
[Pages 45106-45108]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2018-19203]


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DEPARTMENT OF COMMERCE

 Patent and Trademark Office


Matters Related to First Inventor To File

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, invites comments on a proposed 
extension of an existing information collection: 0651-0069 (Matters 
Relating to First Inventor to File).

DATES: Written comments must be submitted on or before November 5, 
2018.

ADDRESSES: Written comments may be submitted by any of the following 
methods:
     Email: [email protected]. Include ``0651-
0071 comment'' in the subject line of the message.
     Federal Rulemaking Portal: http://www.regulations.gov.
     Mail: Raul Tamayo, Senior Legal Advisor, Office of Patent 
Legal Administration, 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 ``0651-0071 comment'' in the 
subject line. Additional information about this collection is also 
available at http://www.reginfo.gov under ``Information Collection 
Review.''

SUPPLEMENTARY INFORMATION:

[[Page 45107]]

I. Abstract

    The United States Patent System uses a `first to file' system, as 
introduced by the Leahy-Smith America Invents Act (AIA) in 2011. To 
determine the first inventor to file, information is needed in order to 
identify the inventorship and ownership, or obligation to assign 
ownership, of each claimed invention on its effective filing date.
    This collection covers information gathered on various forms or 
submissions used by the USPTO to determine the first inventor to file. 
One form, required by 37 CFR 1.55(k), 1.78(a)(6) and 1.78(d)(6) 
provides information needed to assist the USPTO in determining whether 
an application is subject to 35 U.S.C. 102 and 103 as amended by 
Section 3 of the AIA, or 35 U.S.C. 102 and 103 as was in effect on 
March 15, 2013. Additional information provided to USPTO (37 CFR 1.110) 
identifies the inventorship and ownership, or obligation to assign 
ownership, of each claimed invention on its effective filing date (as 
defined in Sec.  1.109) or on its date of invention, as applicable, in 
an application or patent naming one or more joint inventors, when 
necessary for purposes of a USPTO proceeding.
    Applications may also need to submit additional affidavits or 
declarations (37 CFR 1.130, 1.131, and 1.132) for several possible 
situations:
    (i) To show that a disclosure was by the inventor or joint 
inventor, or was by a party who obtained the subject matter from the 
inventor or a joint inventor (1.130),
    (ii) to show that there was a prior public disclosure by the 
inventor or a joint inventor, or by a party who obtained the subject 
matter from the inventor or a joint inventor (1.130),
    (iii) to establish prior invention or to disqualify a commonly 
owned patent or published application as prior art (1.131), or
    (iv) to submit evidence to traverse a rejection or objection on a 
basis not otherwise provided for (1.132).

II. Method of Collection

    The USPTO anticipates both electronic and paper submissions in this 
collection; electronically when using the USPTO online filing system 
EFS-Web, or by mail, facsimile, or hand delivery.

III. Data

    OMB Number: 0651-0071.
    IC Instruments and Forms: The individual instruments in this 
collection, as well as any associated forms, are listed in the hourly 
cost burden table below.
    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: The USPTO estimates that it will 
receive a total of approximately 23,681 responses per year for this 
collection. The USPTO estimates that approximately 20,975 of the 
responses for this collection will be submitted electronically via EFS-
Web.
    These estimates are based on the Agency's long-standing 
institutional knowledge of and experience with the type of information 
collected by these items.
    Estimated Time per Response: The USPTO estimates that the responses 
in this collection will take the public from 2 to 10 hours to complete. 
This includes the time to gather the necessary information, create the 
document, and submit the completed request to the USPTO. The USPTO 
calculates that, on balance, it takes the same amount of time to gather 
the necessary information, create the document, and submit it to the 
USPTO, whether the applicant submits the information in paper form or 
electronically.
    These estimates are based on the Agency's long-standing 
institutional knowledge of and experience with the type of information 
collected and the length of time necessary to complete responses 
containing similar or like information.
    Estimated Total Annual Respondent Burden Hours: 207,362 hours.
    Estimated Total Annual Respondent (Hourly) Cost Burden: 
$90,824,556.00. The USPTO expects that attorneys will complete the 
instruments associated with this information collection. The 
professional hourly rate for attorneys is $438, based upon the 2017 
Report of the Economic Survey published by AIPLA. Using this hourly 
rate, the USPTO estimates $90,824,556.00 per year for the total hourly 
costs associated with respondents.

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                                                                        Estimated time     Estimated       Estimated
               IC No.                      Information collection        for response       annual       annual burden     Rate ($/hr)        Total
                                                 instrument                 (hours)        responses         hours
                                                                                   (a)             (b)  (a) x (b) = (c)             (d)  (c) x (d) = (e)
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1...................................  Electronic Submissions Under 37                2           1,700            3,400         $438.00    $1,489,200.00
                                       CFR 1.55(k).
1...................................  Submissions Under 37 CFR 1.55(k)               2              50              100          438.00        43,800.00
2...................................  Electronic Submissions Under 37                2           1,375            2,750          438.00     1,204,500.00
                                       CFR 1.78(a)(6).
2...................................  Submissions Under 37 CFR                       2              25               50          438.00        21,900.00
                                       1.78(a)(6).
3...................................  Electronic Submissions Under 37                2             340              680          438.00       297,840.00
                                       CFR 1.78(d)(6).
3...................................  Submissions Under 37 CFR                       2              10               20          438.00         8,760.00
                                       1.78(d)(6).
4...................................  Electronic Identification of                   2             147              294          438.00       128,772.00
                                       Inventorship and Ownership of
                                       the Subject Matter of
                                       Individual Claims under 37 CFR
                                       1.110.
4...................................  Identification of Inventorship                 2               3               68          438.00        29,784.00
                                       and Ownership of the Subject
                                       Matter of Individual Claims
                                       under 37 CFR 1.110.
5...................................  Electronic Rule 1.130, 1.131,                 10          19,600          196,000          438.00    85,848,000.00
                                       and 1.132 Affidavits or
                                       Declarations.
5...................................  Rule 1.130, 1.131, and 1.132                  10             400            4,000          438.00     1,752,000.00
                                       Affidavits or Declarations.
                                                                       ---------------------------------------------------------------------------------
    Total...........................  ................................  ..............          23,681          207,362  ..............    90,824,556.00
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[[Page 45108]]

    Estimated Total Annual (Non-hour) Cost Burden: $80.40. The USPTO 
estimates that the total annualized (non-hour) cost burden for this 
collection is due to postage costs. Customers may incur postage costs 
when submitting some of the items covered by this collection to the 
USPTO by mail. The USPTO expects that approximately 98 percent of the 
responses in this collection will be submitted electronically. Of the 
remaining 2 percent, the vast majority--98 percent--will be submitted 
by mail, for a total of 12 mailed submissions. The average first-class 
USPS postage cost for these items is estimated at $6.70; the cost of a 
one pound mailed submission in a flat rate envelope. Therefore, the 
USPTO estimates that the postage costs for the mailed submissions in 
this collection will total $80.40.

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. 2018-19203 Filed 9-4-18; 8:45 am]
 BILLING CODE 3510-16-P