[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.
                                        ----------------------------------------------------------------------------------------------------------------
                       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.
                                        ----------------------------------------------------------------------------------------------------------------
                       Totals..........           7,632  ...............           7,632  ..............           3,817  ..............       1,660,395
--------------------------------------------------------------------------------------------------------------------------------------------------------
\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).
                                                                 -----------------------------------------------
                                         Totals.................         164,066  ..............      49,588,160
----------------------------------------------------------------------------------------------------------------

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