[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
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Third-party
Comparison submission Protest
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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.
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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): $3,520,000.
Table 2--Burden Hour/Burden Cost to Respondents for Private Sector
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Estimated Estimated
Estimated annual Estimated time Estimated Rate \1\ ($/ 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)
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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.
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Total..................... ........................ 819 819 .............. 8,190 .............. 3,276,000
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\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 $400 per hour.
Table 3--Burden Hour/Burden Cost to Respondents for Individuals or Households
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Estimated Estimated
Estimated annual Estimated time Estimated Rate \2\ ($/ 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)
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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.
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Total..................... ........................ 61 61 .............. 610 .............. 244,000
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\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 $80,456.
In particular, 37 CFR 1.290 requires payment of the fee set forth
in 37 CFR 1.17(o) for every ten documents, or fraction thereof, listed
in each third-party submission.
The USPTO provides an exemption from the 1.17(o) fee requirement
where a third-party submission listing three or fewer total documents
is the first third-party submission submitted in an application by the
third-party, or a party in privity with the third-party. The effect of
this is that the first three documents submitted by a third-party are
exempt from the fee requirement. However, the submission of four or
more documents by a third-party triggers the collection of the fee.
There is no fee for filing protests under 37 CFR 1.291 unless the
filed protest is the second or subsequent protest by the same real
party in interest, in which case the 37 CFR 1.17(i) fee must be
included. The USPTO estimates that only 1 out of every 10 protests
filed per year will require this fee.
Table 4--Filing Fees
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Estimated Total non-hour
Item No. Item annual Filing fee ($) cost burden
responses ($)
(a) (b) (a) x (b) =
(c)
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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).
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Total......................... ............................ .............. .............. 80,335
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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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