[Federal Register Volume 80, Number 49 (Friday, March 13, 2015)]
[Notices]
[Pages 13330-13332]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2015-05781]
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DEPARTMENT OF COMMERCE
Patent and Trademark Office
Proposed Collection; Comment Request; ``Third-Party Submissions
and Protests''
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Notice.
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SUMMARY: The United States Patent and Trademark Office (USPTO), as part
of its continuing effort to reduce paperwork and respondent burden,
invites the general public and other Federal agencies to comment on
proposed and/or continuing information collections, as required by the
Paperwork Reduction Act of 1995, Public Law 104-13 (44 U.S.C.
3506(c)(2)(A)).
DATES: Written comments must be submitted on or before May 12, 2015.
ADDRESSES: Written comments may be submitted by any of the following
methods:
Email: [email protected]. Include ``0651-
0062 Third-Party Submissions and Protests'' in the subject line of the
message.
Mail: Marcie Lovett, Records Management Division Director,
Office of the Chief Information Officer, United States Patent and
Trademark Office, P.O. Box 1450, Alexandria, VA 22313-1450.
Federal Rulemaking Portal: http://www.regulations.gov.
FOR FURTHER INFORMATION CONTACT: Requests for additional information
should be directed to Raul Tamayo, 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 571-272-7728;
or by email to [email protected] with ``Paperwork'' in the subject
line. Additional information about this 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 Office.
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 preissuance submission under 37 CFR 1.290 may be made in any non-
provisional utility, design, and plant application, as well as in any
continuing application. A preissuance 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 (35 U.S.C. 122(c) v. 35 U.S.C. 122(e)).
As a result, there are several differences between protests and third-
party submissions.
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, and arguments to that effect. Further, 37 CFR 1.291
requires a protest to include a concise explanation of the relevance of
each item of information submitted. Unlike the concise description of
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 (the information collected via third-
party submissions under 37 CFR 1.290 and protests under 37 CFR 1.291)
is necessary so that the public may contribute to the quality of issued
patents. The USPTO will use this information, as appropriate, during
the patent examination process to assist in evaluating the patent
application.
II. Method of Collection
Electronically when using the USPTO online filing system EFS-Web,
or by mail or hand delivery.
III. Data
OMB Number: 0651-0062.
IC Instruments: The individual instruments in this collection, as
well as their associated forms, are listed in the table below.
Table 1--Information Collection Instruments and Forms
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Information
IC No. collection Form number
instrument
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1............................... Third-Party No Form
Submissions in Associated.
Nonissued
Application;
electronic.
2............................... Third-Party PTO/SB/
Submissions in 429.
Nonissued
Application;
paper.
3............................... Protests by the No Form
Public Against Associated.
Pending
Applications
Under 37 CFR
1.291; paper.
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Type of Review: Revision of a currently approved collection.
Affected Public: Individuals or households; businesses or other
for-profits; and not-for-profit institutions.
Estimated Number of Respondents: 1,560 responses per year.
Estimated Time per Response: The USPTO estimates that it will take
the public approximately 10 hours to gather the necessary information,
prepare the appropriate form or other documents, and submit the
information to the USPTO.
Estimated Total Annual Hour Burden: 15,600 hours.
Estimated Total Annual Cost Burden (Hourly): $6,068,400. The USPTO
expects that attorneys will complete the instruments associated with
this information collection. The professional hourly rate for an
attorney is $389. Using this hourly rate, the USPTO
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estimates $6,068,400 per year for the total hourly costs associated
with respondents.
Table 2--Hourly Cost Burden
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Estimated time
IC Number Information collection for response Estimated annual Estimated annual Rate ($/hr) Total cost ($/
instrument (minutes) responses burden hours hr)
(a) (b) (a) x (b) = (c) (d) (c) x (d) = (e)
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1.............................. Third-Party Submissions in 10 hours 1,500 15,000 $389.00 $5,835,000.00
Nonissued Applications
(electronic).
2.............................. Third-Party Submissions in 10 hours 50 500 389.00 194,500.00
Nonissued Applications
(paper).
3.............................. Protests by the Public 10 hours 10 100 389.00 38,900.00
Against Pending Applications
Under 37 CFR 1.291 (paper).
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Totals..................... ............................. ................ 1,560 15,600 ................ 6,068,400.00
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Estimated Total Annual Cost Burden (Non-Hourly): $237,619.25 per
year. There are no capital start-up, recordkeeping or maintenance costs
associated with this information collection. There are, however, annual
(non-hour) costs associated with this information collection in the
form of filing fees and postage costs.
When submitting the information in this collection to the USPTO
electronically, the applicant is strongly urged to retain a copy of the
file submitted to the USPTO as evidence of authenticity in addition to
keeping the acknowledgment receipt as clear evidence of the date the
file was received by the USPTO. The USPTO does not, however, require
this recordkeeping, and thus does not consider this action to be a
recordkeeping cost imposed on the applicant.
This collection has a non-hourly annual cost burden in the form of
filing fees. 37 CFR 1.290 requires the payment of the fee set forth in
37 CFR 1.17(o) for every ten documents, or fraction thereof, listed in
each third-party preissuance submission. The USPTO provides an
exemption from this fee requirement where a preissuance submission
listing three or fewer total documents is the first preissuance
submission submitted in an application by a third party, or a party in
privity with the third party. Taking the fee and exemption into
account, the USPTO estimates that the average fee per submission for
the third-party submissions is $180, with the average fee for small
entities totaling $90.
There is no fee for filing protests under 37 CFR 1.291 unless the
filed protest is the second or subsequent protest by the same real
party in interest, in which case the 37 CFR 1.17(i) fee of $130 must be
included (the USPTO estimates 1 of the 10 protests filed per year will
trigger this fee). The table below illustrates the total amount of and
distribution of filing fees associated with this collection.
Table 3--Non-Hourly Cost Burden--Filing Fees
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Information collection Total non-hour
IC Number instrument Responses (yr) Filing fee ($) cost burden (yr)
(a) (b) (a) x (b) = (c)
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1-2.......................... Third-Party Submissions in 1,085 $180 $195,300.00
Nonissued Applications.
1-2.......................... Third-Party Submissions in 465 90 41,850.00
Nonissued Applications
(small entity).
3............................ Protests by the public 1 130 130.00
against pending
applications under 37 CFR
1.291.
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Total.................... ........................... 1,551 ................ 237,280.00
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This collection also has a non-hourly annual cost burden in the
form of postage costs. Customers may incur postage costs when
submitting the Information Collection instruments contained within this
collection to the USPTO by mail through the United States Postal
Service. The USPTO estimates that the average first class postage cost
for a one-pound submission mailed in a flat-rate envelope to be $5.75.
The USPTO further estimates that the vast majority--roughly 98
percent--of all paper submissions will be delivered by mail, with the
remainder delivered by hand delivery, for an estimate that
approximately 59 submissions will require postage. Therefore, the
estimated postage cost for this collection will be $339.25.
The total non-hour respondent cost burden for this collection in
the form of filing fees ($237,280) and postage costs ($339.25) is
approximately $237,619.25 per year.
IV. Request for Comments
Comments are invited on: (a) Whether the proposed collection of
information is necessary for the proper performance of the functions of
the agency, including whether the information shall have practical
utility; (b) the accuracy of the agency's estimate of the burden
(including hours and cost) of the proposed collection of information,
including the validity of the methodology and assumptions used; (c)
ways to enhance the quality, utility, and
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clarity of the information to be collected; and (d) ways to minimize
the burden of the collection of information on respondents, including
through the use of automated collection techniques or other forms of
information technology, e.g., permitting electronic submission of
responses.
Comments submitted in response to this notice will be summarized or
included in the request for OMB approval of this information
collection; they will also become a matter of public record.
Dated: March 9, 2015.
Marcie Lovett,
Records Management Division Director, USPTO, Office of the Chief
Information Officer.
[FR Doc. 2015-05781 Filed 3-12-15; 8:45 am]
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