[Federal Register Volume 83, Number 98 (Monday, May 21, 2018)]
[Notices]
[Pages 23430-23433]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2018-10690]
-----------------------------------------------------------------------
DEPARTMENT OF COMMERCE
Patent and Trademark Office
Proposed Collection; Comment Request; ``Rules for Patent
Maintenance Fees''
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Proposed extension of an existing information collection;
comment request.
-----------------------------------------------------------------------
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.
DATES: Written comments must be submitted on or before July 20, 2018.
ADDRESSES: Written comments may be submitted by any of the following
methods:
Email: InformationCollection@uspto.gov. Include ``0651-
0016 Rules for Patent Maintenance Fees'' in the subject line of the
message.
Mail: Marcie Lovett, Director, Records and Information
Governance Division, Office of the Chief Technology 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
(USPTO), P.O. Box 1450, Alexandria, VA 22313- 1450; by telephone at
571-272-7728; or by email at Raul.Tamayo@uspto.gov 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
Under 35 U.S.C. Sec. 41 and 37 CFR 1.20(e)-(h) and 1.362-1.378,
the United States Patent and Trademark Office (USPTO) charges fees for
maintaining in force all utility patents based on applications filed on
or after December 12, 1980. Payment of these maintenance fees is due at
3\1/2\, 7\1/2\, and 11\1/2\ years after the date the patent was
granted. If the USPTO does not receive payment of the appropriate
maintenance fee and any applicable surcharge within a grace period of
six months following each of the above due dates (at 4, 8, or 12 years
after the date of grant), the patent will expire at that time. After a
patent expires, it is no longer enforceable. Maintenance fees are not
required for design, plant, or reissue patents if the patent being
reissued did not require maintenance fees.
Payments of maintenance fees that are submitted during the six-
month grace period before patent expiration must include the
appropriate surcharge as indicated by 37 CFR 1.20(h). Submissions of
maintenance fee payments and surcharges must include the relevant
patent number and the corresponding United States application number in
order to identify the correct patent and ensure proper crediting of the
fee being paid.
If the USPTO refuses to accept and record a maintenance fee payment
that was submitted prior to the expiration of a patent, the patentee
may petition the Director to accept and record the maintenance fee
under 37 CFR 1.377. This petition must be accompanied by the fee
indicated in 37 CFR 1.17(g), which may be refunded if it is determined
that the refusal to accept the maintenance fee was due to an error by
the USPTO.
If a patent has expired due to nonpayment of a maintenance fee, the
patentee may petition the Director to accept a delayed payment of the
maintenance fee under 37 CFR 1.378. The Director may accept the payment
of
[[Page 23431]]
a maintenance fee after the expiration of the patent if the petitioner
shows to the satisfaction of the Director that the delay in payment was
unintentional. Petitions to accept unintentionally delayed payment must
also be accompanied by the required maintenance fee and the petition
fee as set forth in 37 CFR 1.17(m). If the Director accepts the
maintenance fee payment upon petition, then the patent is reinstated.
If the USPTO denies a petition to accept delayed payment of a
maintenance fee in an expired patent, the patentee may petition the
Director to reconsider that decision under 37 CFR 1.378(d).
The rules of practice (37 CFR 1.33(d) and 1.363) permit applicants,
patentees, assignees, or their representatives of record to specify a
``fee address'' for correspondence related to maintenance fees that is
separate from the correspondence address associated with a patent or
application. A fee address must be an address that is associated with a
USPTO customer number. Customer numbers may be requested by using the
Request for Customer Number Form (PTO/SB/125), which is covered under
OMB control number 0651-0035. Maintaining a correct and updated address
is necessary so that fee-related correspondence from the USPTO will be
properly received by the applicant, patentee, assignee, or authorized
representative. If a separate fee address is not specified for a patent
or application, the USPTO will direct fee-related correspondence to the
correspondence address of record.
The USPTO offers forms to assist the public with providing
information covered by this collection, including the information
necessary to submit a patent maintenance fee payment (PTO/SB/45) and to
designate or change a fee address (PTO/SB/47). The USPTO offers two
different versions of the petition to accept unintentionally delayed
payment of maintenance fee in an expired patent under 37 CFR 1.378(b).
In addition to the basic PDF that may be filled out electronically and
then printed and mailed (or submitted online) (Form PTO/SB/66), the
USPTO offers a Web-based ePetition, which the public can complete on a
computer using a Web browser and then click a submit button to send the
information to the USPTO over the internet (ePetition). No form is
associated with the petition to the Director to accept and record the
maintenance fee under 37 CFR 1.377, or the petition the Director to
reconsider a decision to refuse to accept a delayed payment in an
expired patent under 37 CFR 1.378(d). Both may be submitted in paper
and electronic format.
Customers may submit maintenance fee payments and surcharges
incurred during the six-month grace period before patent expiration by
using the Maintenance Fee Transmittal Form (PTO/SB/45) or by paying
online through the USPTO website. However, to pay a maintenance fee
after patent expiration, the maintenance fee payment and the petition
fee as set forth in 37 CFR 1.17(m) must be filed together with a
petition to accept unintentionally delayed payment. The USPTO accepts
online maintenance fee payments by credit card, deposit account, or
electronic funds transfer (EFT). Otherwise, non-electronic payments may
be made by check, credit card, or deposit account.
II. Method of Collection
By mail, facsimile, hand delivery, or electronically to the USPTO.
III. Data
OMB Number: 0651-0016.
IC Instruments: The individual instruments in this collection, as
well as their associated forms, are listed in the table below.
------------------------------------------------------------------------
IC # Form and function Form #
------------------------------------------------------------------------
1............................. Maintenance Fee PTO/SB/45.
Transmittal Form,
electronic and paper.
2............................. Electronic Maintenance No Form
Fee Form, electronic. Associated.
3............................. Petition to Accept PTO/SB/66.
Unintentionally
Delayed Payment of
Maintenance Fee in an
Expired Patent (37
CFR 1.378(b)),
electronic and paper.
4............................. Petition to Accept ePetition.
Unintentionally
Delayed Payment of
Maintenance Fee in an
Expired Patent (37
CFR 1.378(b))--
ePetition, electronic.
5............................. Petition to Review No Form
Refusal to Accept Associated.
Payment of
Maintenance Fee Prior
to Expiration of
Patent (37 CFR
1.377), electronic
and paper.
6............................. Petition for No Form
Reconsideration of Associated.
Decision on Petition
Refusing to Accept
Delayed Payment of
Maintenance Fee in an
Expired Patent (37
CFR 1.378(d)),
electronic and paper.
7............................. ``Fee Address'' PTO/SB/47.
Indication Form,
electronic and paper.
------------------------------------------------------------------------
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: 533,910 responses per year. The
USPTO estimates that approximately 25% of these responses will be from
small entities.
Estimated Time per Response: The USPTO estimates that it will take
the public approximately 20 seconds (0.006 hours) to 8 hours to submit
the information in this collection, including the time to gather the
necessary information, prepare the appropriate form or petition, and
submit the completed request to the USPTO. The time per response,
estimated annual responses, and estimated annual hour burden associated
with each instrument in this information collection is shown in the
table below.
Estimated Total Annual Hour Burden: 13,878.89 hours.
Estimated Total Annual Cost Burden (Hourly): $5,117,750.56. The
USPTO expects that the information in this collection will be prepared
by both attorneys and paralegals. The professional hourly rate for
attorneys is $438 and the professional hourly rate for
paraprofessionals is $145. These rates are established by estimates in
the 2017 Report on the Economic Survey, published by the Committee on
Economics of Legal Practice of the American Intellectual Property Law
Association and the 2017 National Utilization and Compensation Survey
published by the National Association of Legal Assistants (NALA).
Therefore, the estimated total respondent cost burden for this
collection will be approximately $5,117,750.56 per year.
[[Page 23432]]
--------------------------------------------------------------------------------------------------------------------------------------------------------
Responses Burden (hrs/ Total cost ($/
IC # Item Minutes (yr) yr) Rate ($/hr) yr)
(a) (b) (c)(a x b)/ (d) (e)(c x d)
60
--------------------------------------------------------------------------------------------------------------------------------------------------------
1............................................ Maintenance Fee Transmittal 5 11,000 916.67 $145.00 $132,916.67
Transactions (PTO/SB/45).
2............................................ Electronic Maintenance Fee 0.33 425,500 2,363.89 145.00 342,763.89
Transactions.
3............................................ Petition to Accept Unintentionally 60 300 300 438.00 131,400.00
Delayed Payment of Maintenance Fee
in an Expired Patent (37 CFR
1.378(b)) (PTO/SB/66).
4............................................ Petition to Accept Unintentionally 60 1,500 1,500 438.00 657,000.00
Delayed Payment of Maintenance Fee
in an Expired Patent (37 CFR
1.378(b)) (PTO/SB/66)--ePetition.
5............................................ Petition to Review Refusal to Accept 240 10 40 438.00 17,520.00
Payment of Maintenance Fee Prior to
Expiration of Patent (37 CFR 1.377).
6............................................ Petition for Reconsideration of 480 100 800 438.00 350,400.00
Decision on Petition Refusing to
Accept Delayed Payment of
Maintenance Fee in an Expired Patent
(37 CFR 1.378(d)).
7............................................ ``Fee Address'' Indication Form (PTO/ 5 95,500 9,137.5 145.00 3,485,750.00
SB/47).
-------------------------------------------------------------------
Totals................................... ..................................... ........... 533,910 13,878.89 ........... 5,117,750.56
--------------------------------------------------------------------------------------------------------------------------------------------------------
Estimated Total Annual Cost Burden (Non-Hourly): $1,209,457,959.50.
This information collection has annual (non-hour) cost burden in the
form of filing fees and postage costs.
In this collection there are filing fees associated with the
maintenance of patents, which are listed in the table below.
----------------------------------------------------------------------------------------------------------------
IC # Item Respondents Filing fee Burden
...................... (a) (b) (a) x (b) = (c)
($)
----------------------------------------------------------------------------------------------------------------
1.............................. For Maintaining an 188,800 $1,600.00 *$302,080,000.00
Original or Any
Reissue Patent, Due
at 3.5 Years (large
entity).
1.............................. For Maintaining an 40,800 800.00 32,640,000.00
Original or Any
Reissue Patent, Due
at 3.5 Years (small
entity).
1.............................. For Maintaining an 2,600 400.00 1,040,000.00
Original or Any
Reissue Patent, Due
at 3.5 Years (micro
entity).
1.............................. For Maintaining an 96,000 3,600.00 345,600,000.00
Original or Any
Reissue Patent, Due
at 7.5 Years (large
entity).
1.............................. For Maintaining an 16,200 1,800.00 29,160,000.00
Original or Any
Reissue Patent, Due
at 7.5 Years (small
entity).
1.............................. For Maintaining an 900 900.00 810,000.00
Original or Any
Reissue Patent, Due
at 7.5 Years (micro
entity).
1.............................. For Maintaining an 61,700 7,400.00 456,580,000.00
Original or Any
Reissue Patent, Due
at 11.5 Years (large
entity).
1.............................. For Maintaining an 9,800 3,700.00 36,260,000.00
Original or Any
Reissue Patent, Due
at 11.5 Years (small
entity).
1.............................. For Maintaining an 500 1,850.00 925,000.00
Original or Any
Reissue Patent, Due
at 11.5 Years (micro
entity).
1.............................. Surcharge--3.5 year-- 3,500 160.00 560,000.00
Late Payment Within 6
Months (large entity).
1.............................. Surcharge--3.5 year-- 6,200 80.00 496,000.00
Late Payment Within 6
Months (small entity).
1.............................. Surcharge--3.5 year-- 700 40.00 28,000.00
Late Payment Within 6
Months (micro entity).
1.............................. Surcharge--7.5 year-- 2,000 160.00 320,000.00
Late Payment Within 6
Months (large entity).
1.............................. Surcharge--7.5 year-- 2,500 80.00 200,000.00
Late Payment Within 6
Months (small entity).
1.............................. Surcharge--7.5 year-- 300 40.00 12,000.00
Late Payment Within 6
Months (micro entity).
1.............................. Surcharge--11.5 year-- 2,200 160.00 352,000.00
Late Payment Within 6
Months (large entity).
1.............................. Surcharge--11.5 year-- 1,700 80.00 136,000.00
Late Payment Within 6
Months (small entity).
1.............................. Surcharge--11.5 year-- 200 40.00 8,000.00
Late Payment Within 6
Months (micro entity).
3.............................. Petition for the 500 2,000.00 1,000,000.00
Delayed Payment of
the Fee for
Maintaining a Patent
in Force (large
entity).
[[Page 23433]]
3.............................. Petition for the 1,200 1,000.00 1,200,000.00
Delayed Payment of
the Fee for
Maintaining a Patent
in Force (small
entity).
3.............................. Petition for the 100 500.00 50,000.00
Delayed Payment of
the Fee for
Maintaining a Patent
in Force (micro
entity).
--------------------------------------------------------
Totals..................... ...................... 438,400 .............. 1,209,457,000.00
----------------------------------------------------------------------------------------------------------------
The public may submit the forms and petitions in this collection to
the USPTO by mail through the United States Postal Service. If the
submission is sent by first-class mail, the public may also include a
signed certification of the date of mailing in order to receive credit
for timely filing. The USPTO estimates that the average first-class
postage cost for a mailed submission will be 50 cents and that
approximately 1,919 submissions per year may be mailed to the USPTO,
for a total postage cost of $959.50 per year.
----------------------------------------------------------------------------------------------------------------
Total non-hour cost
IC # Item Responses Postage cost burden (postage)
----------------------------------------------------------------------------------------------------------------
...................... (a) (b) (c)(a) x (b)
----------------------------------------------------------------------------------------------------------------
3.............................. Petition to Accept 6 $0.50 $3.00
Unintentionally
Delayed Payment of
Maintenance Fee in an
Expired Patent (37
CFR 1.378(b)).
5.............................. Petition to Review 1 0.50 0.50
Refusal to Accept
Payment of
Maintenance Fee Prior
to Expiration of
Patent (37 CFR 1.377).
6.............................. Petition for 2 0.50 1.00
Reconsideration of
Decision on Petition
Refusing to Accept
Delayed Payment of
Maintenance Fee in an
Expired Patent (37
CFR 1.378(d)).
7.............................. ``Fee Address'' 1,910 0.50 955.00
Indication Form.
--------------------------------------------------------
Totals..................... ...................... 1,919 .............. 959.50
----------------------------------------------------------------------------------------------------------------
The total (non-hour) respondent cost burden for this collection in
the form of filing fees and postage costs is estimated to be
$1,209,457,959.50 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 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.
Marcie Lovett,
Director, Records and Information Governance Division, Office of the
Chief Technology Officer, USPTO.
[FR Doc. 2018-10690 Filed 5-18-18; 8:45 am]
BILLING CODE 3510-16-P