[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
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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 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.
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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: $4,617,510.
Table 2--Total Burden Hours and Hourly Costs to Private Sector Respondents
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Estimated
Estimated Responses per Estimated Estimated time Estimated Rate \1\ ($/ 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................. 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.
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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).
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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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