[Federal Register Volume 88, Number 108 (Tuesday, June 6, 2023)]
[Notices]
[Pages 37039-37041]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2023-11913]
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DEPARTMENT OF COMMERCE
Patent and Trademark Office
Agency Information Collection Activities; Submission to the
Office of Management and Budget (OMB) for Review and Approval; Comment
Request; DOCX Submission Requirements
AGENCY: United States Patent and Trademark Office, Department of
Commerce.
ACTION: Notice of information collection; request for comment.
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SUMMARY: The United States Patent and Trademark Office (USPTO), as
required by the Paperwork Reduction Act of 1995, invites comments on
the proposed information collection: DOCX Submission Requirements. 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 August 7, 2023.
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.
Federal Rulemaking Portal: https://www.regulations.gov.
Mail: Justin Isaac, 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 Raul Tamayo, Senior Legal Advisor, United States
Patent and Trademark Office, P.O. Box 1450, Alexandria, VA 22313-1450;
by telephone at 571-272-7728; or by email at [email protected] with
``DOCX ICR comment'' in the subject line. Additional information about
this information collection is also available at http://www.reginfo.gov
under ``Information Collection Review.''
SUPPLEMENTARY INFORMATION:
I. Abstract
On August 3, 2020, the USPTO published a final rule in the Federal
Register that included a new fee set forth in 37 CFR 1.16(u). See
Setting and Adjusting Patent Fees in Fiscal Year 2020, 85 FR 46932.
Although that final rule indicated the new fee at Sec. 1.16(u) would
go into effect on January 1, 2022, the effective date of the new fee
was delayed to give applicants more time to
[[Page 37040]]
adjust to filing patent applications in the DOCX format.
As specified in Sec. 1.16(u), the fee is due for any application
filed under 35 U.S.C. 111 for an original patent--except design, plant,
or provisional applications--where the specification, claims, and/or
abstract do not conform to the USPTO requirements for submission in the
DOCX format. Therefore, the fee is due for nonprovisional utility
applications filed under 35 U.S.C. 111, including continuing
applications, that are not filed in the DOCX format.
The USPTO conducted two pilot programs for filing applications in
the DOCX format. The eMod Text Pilot Program was conducted between
August 2016 and September 2017. The USPTO then expanded the ability to
file patent applications in the DOCX format in EFS-Web to all users in
September 2017. In 2018, the USPTO launched the Patent Center and
conducted the Patent Center Text Pilot Program from June 2018 through
April 2020. All applicants have been able to file applications in the
DOCX format in the Patent Center since April 2020. Information about
the Patent Center is available at www.uspto.gov/PatentCenter. The USPTO
continues to hold many discussions and training sessions with
stakeholders to ensure a fair and reasonable transition to the DOCX
format. In addition, to further ensure a fair and reasonable transition
to the DOCX format, the USPTO has, since April 2022, provided patent
applicants with the option to submit a back-up applicant-generated PDF
version of the application along with the DOCX file(s) when filing an
application in Patent Center. See Extension of Period To Allow
Submission of a PDF With a Patent Application Filed in DOCX Format, 87
FR 77812 (Dec. 20, 2022).
The items in this proposed new information collection relate solely
to the impacts of the Sec. 1.16(u) non-DOCX filing surcharge fee on
the filing of nonprovisional utility applications under 35 U.S.C. 111,
including continuing applications. In particular, this proposed new
information collection accounts for the Sec. 1.16(u) non-DOCX filing
surcharge fee itself, as well as an additional 30 minutes of time to
accommodate the (i) extra review that some respondents may undertake as
they start to become more familiar with the DOCX format and (ii)
submission of the back-up applicant-generated PDF that some respondents
will opt to submit.
The estimated volumes for the items in this proposed new
information collection are based from the estimates for the
corresponding nonprovisional utility applications filed under 35 U.S.C.
111, including continuing applications, that are covered under an
existing OMB clearance (0651-0032; Initial Patent Applications).
Respondents for the items in the proposed new information collection
will either take an extra 0.5 hours to file their applications in DOCX
format or they will pay the non-DOCX surcharge, they will not do both.
II. Method of Collection
Patent Applications can be submitted electronically via the USPTO's
patent electronic filing system, by mail, or by hand delivery to the
USPTO. Patent applications submitted in the DOCX format will be
submitted electronically.
III. Data
OMB Control Number: 0651-New.
Forms: None.
Type of Review: New.
Affected Public: Private sector, individuals and households.
Respondent's Obligation: Required to obtain or retain benefits.
Estimated Number of Annual Respondents: 411,817 (including 164,066
respondents from filing fees).
Estimated Number of Annual Responses: 411,817 (including 164,066
responses from filing fees).
Estimated Time per Response: The USPTO estimates that the responses
in this information collection will take the public approximately 30
minutes (0.5 hours) to complete. This includes the time to create the
document and submit the completed item to the USPTO. The USPTO provides
the 30-minute estimate out of an abundance of caution for the initial
period after the effective date of the non-DOCX filing surcharge fee.
The USPTO expects to decrease the 30-minute estimate by the first
renewal of this collection as the public more fully comprehends the
nature of, and how to comply with, the DOCX format.
Estimated Number of Annual Respondent Burden Hours: 123,877 hours.
Estimated Number of Annual Respondent Hourly Cost Burden:
$53,886,495.
Table 1--Total Burden Hours and Hourly Costs to Private Sector Respondents
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Estimated
Estimated Responses per Estimated Estimated time Estimated Rate \1\ ($/ annual
Item No. Item annual respondent annual for response burden (hour/ hour) respondent
respondents responses (hours) year) cost burden
(a) (b) (a) x (b) = (d) (c) x (d) = (f) (e) x (f) =
(c) (e) (g)
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1................. DOCX submission of 170,510 1 170,510 0.5 85,255 $435 $37,085,925
Original New
Utility
Applications.
2................. DOCX submission of 6,049 1 6,049 0.5 3,025 435 1,315,875
Utility
Continuation/
Divisional of an
International
Application.
3................. DOCX submission of 57,044 1 57,044 0.5 28,522 435 12,407,070
Utility
Continuation/
Divisional
Applications.
4................. DOCX submission of 6,516 1 6,516 0.5 3,258 435 1,417,230
Utility
Continuation-in-
Part Applications.
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Totals.......... 240,119 ............... 240,119 .............. 120,060 .............. 52,226,100
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\1\ 2021 Report of the Economic Survey published by the Committee on Economics of Legal Practice of the American Intellectual Property Law Association
(AIPLA); the USPTO uses the mean IP billing rate for attorneys in private firms which is $435 per hour. (https://www.aipla.org/home/news-publications/economic-survey; pg F-27).
[[Page 37041]]
Table 2--Total Hourly Burden for Individual and Household Respondents
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Estimated
Estimated Responses per Estimated Estimated time Estimated Rate \2\ ($/ annual
Item No. Item annual respondent annual for response burden (hour/ hour) respondent
respondents responses (hours) year) cost burden
(a) (b) (a) x (b) = (d) (c) x (d) = (f) (e) x (f) =
(c) (e) (g)
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1................. DOCX submission of 5,420 1 5,420 0.5 2,710 $435 $1,178,850
Original New
Utility
Applications.
2................. DOCX submission of 192 1 192 0.5 96 435 41,760
Utility
Continuation/
Divisional of an
International
Application.
3................. DOCX submission of 1,813 1 1,813 0.5 907 435 394,545
Utility
Continuation/
Divisional
Applications.
4................. DOCX submission of 207 1 207 0.5 104 435 45,240
Utility
Continuation-in-
Part Applications.
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Totals.......... 7,632 ............... 7,632 .............. 3,817 .............. 1,660,395
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\2\ Ibid.
Estimated Total Annual Respondent Non-hourly Cost Burden:
$49,588,160.
There are no maintenance costs, capital start-up costs,
recordkeeping costs, or postage associated with this information
collection. However, the USPTO estimates that the total annual (non-
hour) cost burden for this information collection, in the form of
filing fees) is $49,588,160. The USPTO expects the DOCX format adoption
rate to steadily increase as the public more fully comprehends the
nature of, and how to comply with, the format. Thus, the USPTO expects
the number of respondents that will pay the non-DOCX filing surcharge
fee to decrease by the first renewal of this collection. Additionally,
the USPTO expects the frequency and amount of any extra review time to
decrease as respondents become more comfortable with the DOCX filing
process.
Filing Fees
The items with filing fees are listed in the table below.
Table 3--Filing Fee Costs to Respondents
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Estimated
Item No. Fee code Item annual Amount Totals
responses
(a) (b) (a) x (b) =
(c)
----------------------------------------------------------------------------------------------------------------
1-4................. 1054 Non-DOCX Filing Surcharge 102,095 $400 $40,838,000
Fee (undiscounted entity).
1-4................. 2054 Non-DOCX Filing Surcharge 47,406 160 7,584,960
Fee (small entity).
1-4................. 3054 Non-DOCX Filing Surcharge 14,565 80 1,165,200
Fee (micro entity).
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Totals................. 164,066 .............. 49,588,160
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Postage
There are no postage costs associated with items in this
information collection. The actual submission of patent applications,
and any postage cost burden, is covered by OMB control number 0651-0032
(Initial Patent Applications).
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 collection. Before including
an address, phone number, email address, or other personally
identifiable 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.
Justin Isaac,
Information Collections Officer, Office of the Chief Administrative
Officer, United States Patent and Trademark Office.
[FR Doc. 2023-11913 Filed 6-5-23; 8:45 am]
BILLING CODE 3510-16-P