[Federal Register Volume 86, Number 82 (Friday, April 30, 2021)]
[Notices]
[Pages 22939-22942]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2021-09037]


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DEPARTMENT OF COMMERCE

United States Patent and Trademark Office


Agency Information Collection Activities; Submission to the 
Office of Management and Budget (OMB) for Review and Approval; Comment 
Request; Third-Party Submissions and Protests

ACTION: Notice of information collection; request for comment.

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SUMMARY: The United States Patent and Trademark Office (USPTO), in 
accordance with the Paperwork Reduction Act of 1995, invites comments 
on the extension and revision of an existing information collection: 
0651-0062 (Third-Party Submissions and Protests). The purpose of this 
notice is to allow 60 days for public comment preceding submission of 
the information collection to OMB.

DATES: To ensure consideration, comments regarding this information 
collection must be received on or before June 29, 2021.

ADDRESSES: Interested persons are invited to submit written comments by 
any of the following methods. Do not submit Confidential Business 
Information or otherwise sensitive or protected information.
     Email: [email protected]. Include ``0651-
0062 comment'' in the subject line of the message.
     Federal Rulemaking Portal: http://www.regulations.gov.
     Mail: Kimberly Hardy, Office of the Chief Administrative 
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 Parikha Mehta, Patent Examination Policy Advisor, 
Office of Patent Legal Administration, United States Patent and 
Trademark Office, P.O. Box 1450, Alexandria, VA 22313-1450; by 
telephone at 571-272-3248; or by email to [email protected] with 
``0651-0062 comment'' in the subject line. Additional information about 
this information collection is also available at http://

[[Page 22940]]

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 USPTO.
    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 
nonprovisional 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. As a result, there are several 
differences between protests and third-party submissions, as explained 
in the table below.

       Table 1--Comparison of Third-Party Submission and Protests
------------------------------------------------------------------------
                                   Third-party
         Comparison                submission              Protest
------------------------------------------------------------------------
Statute/Regulation..........  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.
------------------------------------------------------------------------

    This information collection covers the items needed to provide the 
public the means to submit information and protests regarding patent 
applications to the USPTO. 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 Control Number: 0651-0062.
    Form Number:

 PTO/SB/429 (Third-Party Submission Under 37 CFR 1.290)

    Type of Review: Extension and revision of a currently approved 
information collection.
    Affected Public: Private sector; individuals or households.
    Estimated Number of Respondents: 880 per year.
    Estimated Number of Responses: 880 per year.
    Estimated Time per Response: The USPTO estimates that it takes the 
public approximately 10 hours to complete this information, depending 
upon the application. This includes the time to gather the necessary 
information, prepare and maintain the documents, and submit the items 
to the USPTO.
    Estimated Total Annual Hour Burden: 8,800 hours.
    Estimated Total Annual Cost Burden (Hourly): $3,520,000.

                                           Table 2--Burden Hour/Burden Cost to Respondents for Private Sector
--------------------------------------------------------------------------------------------------------------------------------------------------------
                                                                             Estimated                                                       Estimated
                                                             Estimated        annual      Estimated time     Estimated     Rate \1\ ($/       annual
           Item No.                       Item                annual         responses     for response    annual burden       hour)        respondent
                                                            respondents       (year)          (hours)       (hour/year)                     cost burden
                                                                                     (a)             (b)     (a) x (b) =             (d)     (c) x (d) =
                                                                                                                     (c)                             (e)
--------------------------------------------------------------------------------------------------------------------------------------------------------
1.............................  Third-Party Submissions              800             800              10           8,000            $400      $3,200,000
                                 in Nonissued
                                 Applications.
2.............................  Protests by the Public                19              19              10             190             400          76,000
                                 Against Pending
                                 Applications Under 37
                                 CFR 1.291.
                                                         -----------------------------------------------------------------------------------------------
    Total.....................  ........................             819             819  ..............           8,190  ..............       3,276,000
--------------------------------------------------------------------------------------------------------------------------------------------------------
\1\ 2019 Report of the Economic Survey, published by the Committee on Economics of Legal Practice of the American Intellectual Property Law Association
  (AIPLA); https://www.aipla.org/detail/journal-issue/2019-report-of-the-economic-survey. The USPTO uses the mean rate for attorneys in private firms
  which is $400 per hour.


                                      Table 3--Burden Hour/Burden Cost to Respondents for Individuals or Households
--------------------------------------------------------------------------------------------------------------------------------------------------------
                                                                             Estimated                                                       Estimated
                                                             Estimated        annual      Estimated time     Estimated     Rate \2\ ($/       annual
           Item No.                       Item                annual         responses     for response    annual burden       hour)        respondent
                                                            respondents       (year)          (hours)       (hour/year)                     cost burden
                                                                                     (a)             (b)     (a) x (b) =             (d)     (c) x (d) =
                                                                                                                     (c)                             (e)
--------------------------------------------------------------------------------------------------------------------------------------------------------
1.............................  Third-Party Submissions               60              60              10             600            $400        $240,000
                                 in Nonissued
                                 Applications.

[[Page 22941]]

 
2.............................  Protests by the Public                 1               1              10              10             400           4,000
                                 Against Pending
                                 Applications Under 37
                                 CFR 1.291.
                                                         -----------------------------------------------------------------------------------------------
    Total.....................  ........................              61              61  ..............             610  ..............         244,000
--------------------------------------------------------------------------------------------------------------------------------------------------------
\2\ 2019 Report of the Economic Survey, published by the Committee on Economics of Legal Practice of the American Intellectual Property Law Association
  (AIPLA); https://www.aipla.org/detail/journal-issue/2019-report-of-the-economic-survey. The USPTO uses the mean rate for attorneys in private firms
  which is $400 per hour.

    Estimated Total Annual (Non-hour) Respondent Cost Burden: $80,456. 
This information collection has no capital start-up, maintenance, or 
operating fees. However, there are postage costs and filing fees. The 
total non-hour respondent cost burden for this information collection 
in the form of filing fees ($80,335) and postage costs ($121) is 
approximately $80,456.
    In particular, 37 CFR 1.290 requires payment of the fee set forth 
in 37 CFR 1.17(o) 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 must be 
included. The USPTO estimates that only 1 out of every 10 protests 
filed per year will require this fee.

                                              Table 4--Filing Fees
----------------------------------------------------------------------------------------------------------------
                                                                     Estimated                    Total non-hour
             Item No.                           Item                  annual      Filing fee ($)    cost burden
                                                                     responses                          ($)
                                                                             (a)             (b)     (a) x (b) =
                                                                                                             (c)
----------------------------------------------------------------------------------------------------------------
1.................................  Third-Party Submissions in               390            $180         $70,200
                                     Nonissued Applications
                                     (undiscounted entities).
1.................................  Third-Party Submissions in               110              90           9,900
                                     Nonissued Applications
                                     (small and micro entities).
2.................................  Protests by the Public                     1             130             130
                                     Against Pending
                                     Applications Under 37 CFR
                                     1.291--second or subsequent
                                     protest by the same real
                                     party in interest
                                     (undiscounted entities).
2.................................  Protests by the Public                     1              70              70
                                     Against Pending
                                     Applications Under 37 CFR
                                     1.291--second or subsequent
                                     protest by the same real
                                     party in interest (small
                                     entities).
2.................................  Protests by the Public                     1              35              35
                                     Against Pending
                                     Applications Under 37 CFR
                                     1.291--second or subsequent
                                     protest by the same real
                                     party in interest (micro
                                     entities).
                                                                 -----------------------------------------------
    Total.........................  ............................  ..............  ..............          80,335
----------------------------------------------------------------------------------------------------------------

    Although the USPTO prefers that the items in this information 
collection be submitted electronically, responses may be submitted by 
mail through the United States Postal Service (USPS). The USPTO 
estimates that the average postage cost for a mailed submission, using 
a Priority Mail 2-day flat rate legal envelope, will be $8.05. The 
USPTO estimates that 15 submissions may be mailed to the USPTO, for a 
total postage cost of $121 per year.
    Respondent's Obligation: Required to obtain or retain benefits.

IV. Request for Comments

    The USPTO is soliciting public comments to:
    (a) Evaluate whether the proposed collection of information is 
necessary for the proper performance of the functions of the Agency, 
including whether the information will have practical utility;
    (b) Evaluate the accuracy of the Agency's estimate of the burden of 
the proposed collection of information, including the validity of the 
methodology and assumptions used;
    (c) Enhance the quality, utility, and clarity of the information to 
be collected; and
    (d) Minimize the burden of the collection of information on those 
who are to respond, including through the use of appropriate automated, 
electronic, mechanical, or other technological collection techniques or 
other forms of information technology, e.g., permitting electronic 
submission of responses.
    All comments submitted in response to this notice are a matter of 
public record. USPTO will include or summarize each comment in the 
request to OMB to approve this information

[[Page 22942]]

collection. Before including an address, phone number, email address, 
or other personal identifying information (PII) in a comment, be aware 
that the entire comment--including PII--may be made publicly available 
at any time. While you may ask in your comment to withhold PII from 
public view, USPTO cannot guarantee that it will be able to do so.

Kimberly Hardy,
Information Collections Officer, Office of the Chief Administrative 
Officer, United States Patent and Trademark Office.
[FR Doc. 2021-09037 Filed 4-29-21; 8:45 am]
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