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AGENCY:
United States Patent and Trademark Office, Department of Commerce.
ACTION:
Notice of information collection; request for comment.
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: 0651-0071 (Matters Related to First Inventor to File). 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 December 9, 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: InformationCollection@uspto.gov. Include “0651-0071 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 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 at raul.tamayo@uspto.gov with “0651-0071 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
Section 3 of the Leahy-Smith America Invents Act (AIA), inter alia, amended 35 U.S.C. 102 and 103 consistent with the objectives of the AIA, including the conversion of the United States patent system from a “first to invent” system to a “first inventor to file” system. The changes to 35 U.S.C. 102 and 103 in section 3 of the AIA went into effect on March 16, 2013, but apply only to certain applications filed on or after March 16, 2013.
This information collection covers information required by 37 CFR 1.55(k), 1.78(a)(6), and 1.78(d)(6) to assist the USPTO in determining whether an application is subject to 35 U.S.C. 102 and 103 as amended by section 3 of the AIA, or 35 U.S.C. 102 and 103 as in effect on March 15, 2013. The information is only required in nonprovisional applications filed on or after March 16, 2013, that claim foreign priority to, or domestic benefit of, an application filed before March 16, 2013. Moreover, the information is not required if the nonprovisional application filed on or after March 16, 2013, claims the benefit of an earlier application in which a statement under 37 CFR 1.55(k), 1.78(a)(6), or 1.78(d)(6) has already been filed. Given the passage of time, it is increasingly rare for a newly filed nonprovisional application to claim foreign priority to, or domestic benefit of, an application filed before March 16, 2013, without also claiming benefit of an earlier application in which the statement has already been filed. Accordingly, the estimated responses for this collection continue to decrease.
II. Method of Collection
The items in this information collection may be submitted electronically, or by mail, facsimile, or hand delivery.
III. Data
OMB Control Number: 0651-0071.
Forms: None.
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: 50 respondents.
Estimated Number of Annual Responses: 50 responses.
Estimated Time per Response: The USPTO estimates that the responses in this information collection will take the public approximately 2 hours to complete. This includes the time to gather the necessary information, create the document, and submit the completed request to the USPTO.
Estimated Total Annual Respondent Burden Hours: 100 hours.
Estimated Total Annual Respondent Hourly Cost Burden: $44,700.
Table 1—Total Burden Hours and Hourly Costs to Private Sector Respondents
| Item No. | Item | Estimated annual respondents | Responses per respondent | Estimated annual responses | Estimated time for response (hours) | Estimated burden (hour/year) | Rate ($/hour) | Estimated annual respondent cost burden |
|---|---|---|---|---|---|---|---|---|
| (a) | (b) | (a) × (b) = (c) | (d) | (c) × (d) = (e) | (f) | (e) × (f) = (g) | ||
| 1 | Submissions Under 37 CFR 1.55(k) | 25 | 1 | 25 | 2 | 50 | $447 | $22,350 |
| 2 | Submissions Under 37 CFR 1.78(a)(6) | 20 | 1 | 20 | 2 | 40 | 447 | 17,880 |
| 3 | Submissions Under 37 CFR 1.78(d)(6) | 5 | 1 | 5 | 2 | 10 | 447 | 4,470 |
| Totals | 50 | 50 | 100 | 44,700 |
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 ).