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: 0651-0062 (Third-Party Submissions and Protests). 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 September 6, 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 “0651-0062 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 Jeffrey West, 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 571-272-2226; or by email at jeffrey.west@uspto.gov with “0651-0062 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
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 separated 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
| Comparison | Third-party submission | Protest |
|---|---|---|
| Statute/Regulation | 35 U.S.C. 122(e), 37 CFR 1.290 | 35 U.S.C. 122(c), 37 CFR 1.291. |
| Content | Printed publications | Printed publications and any facts or information adverse to patentability. |
| Remarks | Concise description of relevance (limited to a concise description of each document's relevance) | Concise explanation of the relevance (allows for arguments against patentability). |
| Timing | The earlier of—(A) the date of a notice of allowance; or (B) the later of—(i) 6 months after the date of Pre-Grant Publication, or (ii) the date of the first rejection of any claim during the examination of the application for patent | (1) Prior to the date of Pre-Grant Publication or the date of a notice of allowance, whichever occurs first, or (2) accompanied by written consent of the applicant and prior to the date of a notice of allowance. |
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.
II. Method of Collection
The items in this information collection may be submitted electronically, or on paper by either mail or hand delivery.
III. Data
OMB Control Number: 0651-0062.
Forms: (SB = Specimen Book)
- PTO/SB/429 (Third-Party Submission Under37 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.
Estimated Number of Annual Respondents: 1,033 respondents.
Estimated Number of Annual Responses: 1,033 responses.
Frequency: On occasion.
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 Hourly Cost Burden: $4,617,510.
Table 2—Total Burden Hours and Hourly Costs to Private Sector Respondents
| Item No. | Item | Estimated annual respondents | Responses per respondent | Estimated annual responses | Estimated time for response (hours) | Estimated burden (hour/year) | Rate ($/hour) | Estimated annual respondent cost burden |
|---|---|---|---|---|---|---|---|---|
| (a) | (b) | (a) × (b) = (c) | (d) | (c) × (d) = (e) | (f) | (e) × (f) = (g) | ||
| 1 | Third-Party Submissions in Nonissued Applications Under 37 CFR 1.290 | 1,017 | 1 | 1,017 | 10 | 10,170 | $447 | $4,545,990 |
| 2 | Protests by the Public Against Pending Applications Under 37 CFR 1.291 | 16 | 1 | 16 | 10 | 160 | 447 | 71,520 |
| Totals | 1,033 | 1,033 | 10,330 | 4,617,510 | ||||
| 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 ). |
Estimated Total Annual Respondent Non-hourly Cost Burden: $153,686. There are no capital start-up, maintenance costs, or recordkeeping costs associated with this information collection. However, the USPTO estimates that the total annual non-hour cost burden for this information collection, in the form of filing fees and postage, is $153,686.
Filing Fees
The filing fees associated with this information collection are listed in the table below.
Table 3—Filing Fees
| Item No. | Fee code | Item | Estimated annual responses | Filing fee ($) | Non-hourly cost burden ($) |
|---|---|---|---|---|---|
| (a) | (b) | (a) × (b) = (c) | |||
| 1 | 1818 | Third-Party Submissions in Nonprovisional Applications Under 37 CFR 1.290 (undiscounted) | 742 | $180 | $133,560 |
| 1 | 2818 | Third-Party Submissions in Nonprovisional Applications Under 37 CFR 1.290 (small and micro entities) | 275 | 72 | 19,800 |
| 2 | 1830 | Protest by the Public Against Pending Applications Under 37 CFR 1.291—second or subsequent protest by the same real party in interest (undiscounted) | 1 | 140 | 140 |
| 2 | 2830 | Protest by the Public Against Pending Applications Under 37 CFR 1.291—second or subsequent protest by the same real party in interest (small entity) | 1 | 56 | 56 |
| 2 | 3830 | Protest by the Public Against Pending Applications Under 37 CFR 1.291—second or subsequent protest by the same real party in interest (micro entity) | 1 | 28 | 28 |
| Totals | 1,020 | 153,584 |
Postage Costs
Although the USPTO prefers that the items in this information collection be submitted electronically, responses may be submitted by mail through the United States Postal Service (USPS). The USPTO estimates that 1% of the 1,033 items will be submitted in the mail resulting in 10 mailed items. The USPTO estimates that the average postage cost for a mailed submission, using a Priority Mail legal flat rate envelope, will be $10.15. Therefore, the USPTO estimates the total mailing costs for this information collection at $102.
IV. Request for Comments
The USPTO is soliciting public comments to:
(a) Evaluate whether the collection of information is necessary for the proper performance of the functions of the Agency, including whether the information will have practical utility;
(b) Evaluate the accuracy of the Agency's estimate of the burden of the collection of information, including the validity of the methodology and assumptions used;
(c) Enhance the quality, utility, and clarity of the information to be collected; and
(d) Minimize the burden of the collection of information on those who are to respond, including through the use of appropriate automated, electronic, mechanical, or other technological collection techniques or other forms of information technology, e.g., permitting electronic submission of responses.
All comments submitted in response to this notice are a matter of public record. The USPTO will include or summarize each comment in the request to OMB to approve this information collection. Before including an address, phone number, email address, or other personally identifiable information (PII) in a comment, be aware that the entire comment—including PII—may be made publicly available at any time. While you may ask in your comment to withhold PII from public view, the USPTO cannot guarantee that it will be able to do so.
Justin Isaac,
Information Collections Officer, Office of the Chief Administrative Officer, United States Patent and Trademark Office.
[FR Doc. 2024-14920 Filed 7-5-24; 8:45 am]
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