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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 17, 2024 during a 60-day comment period (89 FR 58138). This notice allows for an additional 30 days for public comment.
Agency: United States Patent and Trademark Office, Department of Commerce.
Title: Rules for Patent Maintenance Fees.
OMB Control Number: 0651-0016.
Needs and Uses: Under 35 U.S.C. 41 and 37 CFR 1.20(e)-(h), 1.362, 1.363, 1.366, 1.377, and 1.378, the USPTO charges fees for maintaining in force all patents based on applications filed on or after December 12, 1980, except for plant and design patents. Furthermore, maintenance fees are required for a reissue patent unless the patent being reissued did not require maintenance fees. 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. See section 2504 of the Manual of Patent Examining Procedure (MPEP) (9th Edition, Rev. 07.2022, February 2023) for more information.
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. Payments of maintenance fees that are submitted during the 6-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. See MPEP 2506, 2510, and 2515 for more information.
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(b). The Director may accept the payment of 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).
This information collection covers maintenance fee petition information, including the electronic interface and form provided by the USPTO to assist the public with maintenance fee petitions. 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 an unintentionally delayed payment of the maintenance fee in an expired patent under 37 CFR 1.378(b). The USPTO offers two different versions of the form for petitions to accept unintentionally delayed payments of maintenance fees: a web-based ePetition and form PTO/SB/66 (a fillable PDF). The USPTO recommends the use of the web-based ePetition. The USPTO does not offer forms for the petitions to review the refusal to accept the payment of a maintenance fee prior to the expiration of the patent under 37 CFR 1.377 or the petitions for the reconsideration of decisions on petitions refusing to accept the delayed payment of a maintenance fee in an expired patent under 37 CFR 1.378(d).
The fee address indication form (PTO/AIA/47 and PTO/SB/47) available at www.uspto.gov/patents/apply/forms was previously associated with this information collection. This form permits 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. This item is considered by OMB to be exempt from the PRA and therefore, though this item remains available, it is no longer included in this information collection.
Forms: (SB = Specimen Book).
- PTO/SB/66 (Petition to Accept Unintentionally Delayed Payment of Maintenance Fee in an Expired Patent (37 CFR 1.378(b))
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: 2,616 respondents.
Estimated Number of Annual Responses: 2,616 responses.
Estimated Time per Response: The USPTO estimates that the responses in this information collection will take the public approximately between 1 hour and 8 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: 3,424 hours.
Estimated Total Annual Respondent Non-Hourly Cost Burden: $2,577,316.
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, 0651-0016.
Further information can be obtained by:
- Email: InformationCollection@uspto.gov. Include “0651-0016 information request” in the subject line of the message.
- Mail: Justin Isaac, Office of the Chief Administrative Officer, United 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. 2024-21931 Filed 9-24-24; 8:45 am]
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