[Federal Register Volume 89, Number 130 (Monday, July 8, 2024)]
[Notices]
[Pages 55924-55926]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2024-14920]


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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; Third-Party Submissions and Protests

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 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 September 6, 2024.

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 eRulemaking Portal: http://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: Request for additional information 
should be directed to Jeffrey West, 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 571-272-2226; 
or by email at [email protected] with ``0651-0062 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

    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, including 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 Submissions 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  Printed 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).

[[Page 55925]]

 
Timing......................  The earlier of--(A)   (1) Prior to the
                               the date of a         date of Pre-Grant
                               notice of             Publication or the
                               allowance; or (B)     date of a notice of
                               the later of--(i) 6   allowance,
                               months after the      whichever occurs
                               date of Pre-Grant     first, or (2)
                               Publication, or       accompanied by
                               (ii) the date of      written consent of
                               the first rejection   the applicant and
                               of any claim during   prior to the date
                               the examination of    of a notice of
                               the application for   allowance.
                               patent.
------------------------------------------------------------------------

    For example, 37 CFR 1.291 permits the submission of information 
that is not permitted in a third-party submission under 37 CFR 1.290. 
Specifically, 37 CFR 1.291 provides for the submission of information 
other than publications, including any facts or information adverse to 
patentability. Unlike the concise explanation of the relevance required 
for a preissuance submission under 37 CFR 1.290, which is limited to a 
description of a document's relevance, the concise explanation for a 
protest under 37 CFR 1.291 allows for arguments against patentability. 
Additionally, the specified time period for submitting a protest 
differs from the time period for submitting third-party submissions and 
is impacted by whether the protest is accompanied by the written 
consent of the applicant.
    This information collection covers the items used by the public to 
submit information and protests regarding patent applications to the 
USPTO. This information collection is necessary so that the public can 
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

    The items in this information collection may be submitted 
electronically, or on paper by either mail or hand delivery.

III. Data

    OMB Control Number: 0651-0062.
    Forms: (SB = Specimen Book)

 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.
    Respondent's Obligation: Required to obtain or retain benefits.
    Estimated Number of Annual Respondents: 1,033 respondents.
    Estimated Number of Annual Responses: 1,033 responses.
    Frequency: On occasion.
    Estimated Time per Response: The USPTO estimates that the responses 
in this information collection will take the public approximately 10 
hours to complete. This includes the time to gather the necessary 
information, create the document, and submit the completed item to the 
USPTO.
    Estimated Total Annual Respondent Burden Hours: 10,330 hours.
    Estimated Total Annual Respondent Hourly Cost Burden: $4,617,510.

                                       Table 2--Total Burden Hours and Hourly Costs to Private Sector Respondents
--------------------------------------------------------------------------------------------------------------------------------------------------------
                                                                                                                                             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.................  Third-Party                   1,017                1           1,017              10          10,170            $447      $4,545,990
                     Submissions in
                     Nonissued
                     Applications Under
                     37 CFR 1.290.
2.................  Protests by the                  16                1              16              10             160             447          71,520
                     Public Against
                     Pending
                     Applications Under
                     37 CFR 1.291.
                                        ----------------------------------------------------------------------------------------------------------------
    Totals........  ...................           1,033  ...............           1,033  ..............          10,330  ..............       4,617,510
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\1\ 2023 Report of the Economic Survey, published by the Committee on Economics of Legal Practice of the American Intellectual Property Law Association
  (AIPLA); pg. F-41. The USPTO uses the average billing rate for intellectual property work in all firms which is $447 per hour (https://www.aipla.org/home/news-publications/economic-survey).

    Estimated Total Annual Respondent Non-hourly Cost Burden: $153,686. 
There are no capital start-up, maintenance costs, or recordkeeping 
costs 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 and postage, is 
$153,686.

Filing Fees

    The filing fees associated with this information collection are 
listed in the table below.

                                              Table 3--Filing Fees
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                                                                         Estimated                  Non-hourly
           Item No.              Fee                 Item                  annual     Filing fee    cost burden
                                 code                                    responses       ($)            ($)
                               .......  ..............................          (a)          (b)     (a) x (b) =
                                                                                                             (c)
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1............................     1818  Third-Party Submissions in              742         $180        $133,560
                                         Nonprovisional Applications
                                         Under 37 CFR 1.290
                                         (undiscounted).

[[Page 55926]]

 
1............................     2818  Third-Party Submissions in              275           72          19,800
                                         Nonprovisional Applications
                                         Under 37 CFR 1.290 (small and
                                         micro entities).
2............................     1830  Protest by the Public Against             1          140             140
                                         Pending Applications Under 37
                                         CFR 1.291--second or
                                         subsequent protest by the
                                         same real party in interest
                                         (undiscounted).
2............................     2830  Protest by the Public Against             1           56              56
                                         Pending Applications Under 37
                                         CFR 1.291--second or
                                         subsequent protest by the
                                         same real party in interest
                                         (small entity).
2............................     3830  Protest by the Public Against             1           28              28
                                         Pending Applications Under 37
                                         CFR 1.291--second or
                                         subsequent protest by the
                                         same real party in interest
                                         (micro entity).
                              ----------------------------------------------------------------------------------
    Totals...................  .......  ..............................        1,020  ...........         153,584
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Postage Costs

    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 1% of the 1,033 items will be submitted in the mail 
resulting in 10 mailed items. The USPTO estimates that the average 
postage cost for a mailed submission, using a Priority Mail legal flat 
rate envelope, will be $10.15. Therefore, the USPTO estimates the total 
mailing costs for this information collection at $102.

IV. Request for Comments

    The USPTO is soliciting public comments to:
    (a) Evaluate whether the 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 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. The 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, the 
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. 2024-14920 Filed 7-5-24; 8:45 am]
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