[Federal Register Volume 89, Number 178 (Friday, September 13, 2024)]
[Notices]
[Pages 74927-74928]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2024-20813]



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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

    The United States Patent and Trademark Office (USPTO) will submit 
the following information collection request to the Office of 
Management and Budget (OMB) for review and clearance in accordance with 
the Paperwork Reduction Act of 1995, on or after the date of 
publication of this notice. The USPTO invites comments on this 
information collection renewal, which helps the USPTO assess the impact 
of its information collection requirements and minimize the public's 
reporting burden. Public comments were previously requested via the 
Federal Register on July 8, 2024 during a 60-day comment period (89 FR 
55924). This notice allows for an additional 30 days for public 
comment.
    Agency: United States Patent and Trademark Office, Department of 
Commerce.
    Title: Third-Party Submissions and Protests.
    OMB Control Number: 0651-0062.
    Needs and Uses: 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 separate 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).
Timing....................  The earlier of--       (1) Prior to the date
                            (A) the date of a       of Pre-Grant
                             notice of allowance;   Publication or the
                             or (B) the later of--  date of a notice of
                             .                      allowance, whichever
                            (i) 6 months after      occurs first, or (2)
                             the date of Pre-       accompanied by
                             Grant Publication,     written consent of
                             or.                    the applicant and
                            (ii) the date of the    prior to the date of
                             first rejection of     a notice of
                             any claim during the   allowance.
                             examination of the
                             application for
                             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.
    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.
    Frequency: On occasion.
    Estimated Number of Annual Respondents: 1,033 respondents.
    Estimated Number of Annual Responses: 1,033 responses.
    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 Non-hourly Cost Burden: $153,686.
    This information collection request may be viewed at 
www.reginfo.gov. Follow the instructions to view Department of 
Commerce, USPTO information collections currently under review by OMB.
    Written comments and recommendations for this information 
collection should be submitted within 30 days of the publication of 
this notice on the following website, www.reginfo.gov/public/do/PRAMain. Find this particular information collection by selecting 
``Currently under 30-day Review-Open for Public Comments'' or by using 
the search function and entering either the title of the information 
collection or the OMB Control Number, 0651-0062.
    Further information can be obtained by:
     Email: [email protected]. Include ``0651-
0062 information request'' in the subject line of the message.
     Mail: Justin Isaac, Office of the Chief Administrative 
Officer, United

[[Page 74928]]

States Patent and Trademark Office, P.O. Box 1450, Alexandria, VA 
22313-1450.

Justin Isaac,
Information Collections Officer, Office of the Chief Administrative 
Officer, United States Patent and Trademark Office.
[FR Doc. 2024-20813 Filed 9-12-24; 8:45 am]
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