[Federal Register Volume 89, Number 137 (Wednesday, July 17, 2024)]
[Notices]
[Pages 58138-58140]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2024-15704]
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DEPARTMENT OF COMMERCE
Patent and Trademark Office
Agency Information Collection Activities; Submission to the
Office of Management and Budget (OMB) for Review and Approval; Comment
Request; Rules for Patent Maintenance Fees
AGENCY: United States Patent and Trademark Office, Department of
Commerce.
ACTION: Notice of information collection; request for comment.
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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-
0016 (Rules for Patent Maintenance Fees). 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 16, 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: [email protected]. Include ``0651-
0016 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 [email protected] with ``0651-0016 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
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
[[Page 58139]]
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 forms 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).
A fee address indication form (PTO/SB/47) was previously associated
with this information collection. This item 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 this item is no longer included in this information
collection.
II. Method of Collection
The USPTO prefers for the items in this information collection to
be submitted via online electronic submissions. Submission by mail,
fax, or hand delivery is available. See MPEP 2510 for more information.
III. Data
OMB Control Number: 0651-0016.
Forms: (AIA = America Invents Act; 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.
Estimated Number of Annual Respondents: 2,616 respondents.
Estimated Number of Annual Responses: 2,616 responses.
Frequency: On occasion.
Estimated Time per Response: The USPTO estimates that the responses
in this information collection will take the public approximately
between 5 minutes (0.08 hours) and 8 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: 3,424 hours.
Estimated Total Annual Respondent Hourly Cost Burden: $1,530,528.
Table 1--Total Burden Hours and Hourly Costs to Private Sector Respondents
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Estimated Estimated
Estimated Responses per Estimated time for Estimated Rate \1\ ($/ annual
Item No. Item annual respondent annual response hourly burden hour) respondent cost
respondents responses (hours) (hour/year) burden
(a) (b) (a) x (b) = (c) (d) (c) x (d) = (e) (f) (e) x (f) = (g)
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1................. Petition to Accept 2,500 1 2,500 1 2,500 $447 $1,117,500
Unintentionally
Delayed Payment of
Maintenance Fee in an
Expired Patent (37
CFR 1.378(b)) (Web-
based ePetition and
PTO/SB/66).
2................. Petition to Review 1 1 1 4 4 447 1,788
Refusal to Accept
Payment of
Maintenance Fee Prior
to Expiration of
Patent (37 CFR 1.377).
[[Page 58140]]
3................. Petition for 115 1 115 8 920 447 411,240
Reconsideration of
Decision on Petition
Refusing to Accept
Delayed Payment of
Maintenance Fee in an
Expired Patent (37
CFR 1.378(d)).
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Totals............. 2,616 ............... 2,616 ........... 3,424 ........... 1,530,528
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\1\ 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:
$2,577,316. 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 $2,577,316.
Filing Fees
Two petitions (IC lines 1 and 2) in this information collection
have associated filing fees resulting in $2,577,052 in filing fees.
Table 2--Filing Fees
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Estimated
Item No. Fee Item annual Filing fee Non-hourly cost
code(s) responses ($) burden
(a) (b) (a) x (b) = (c)
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1....................... 1558 Petition to Accept 530 $2,100 $1,113,000
Unintentionally Delayed Payment
of Maintenance Fee in an Expired
Patent (37 CFR 1.378(b))
(undiscounted entity).
1....................... 2558 Petition to Accept 1,515 840 1,272,600
Unintentionally Delayed Payment
of Maintenance Fee in an Expired
Patent (37 CFR 1.378(b)) (small
entity).
1....................... 3558 Petition to Accept 455 420 191,100
Unintentionally Delayed Payment
of Maintenance Fee in an Expired
Patent (37 CFR 1.378(b)) (micro
entity).
2....................... 1463 Petition to Review Refusal to 1 220 220
Accept Payment of Maintenance
Fee Prior to Expiration of
Patent (37 CFR 1.377)
(undiscounted entity).
2....................... 2463 Petition to Review Refusal to 1 88 88
Accept Payment of Maintenance
Fee Prior to Expiration of
Patent (37 CFR 1.377) (small
entity).
2....................... 3463 Petition to Review Refusal to 1 44 44
Accept Payment of Maintenance
Fee Prior to Expiration of
Patent (37 CFR 1.377) (micro
entity).
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Totals........................ 2,503 ........... $2,577,052
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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 2,616 items will be submitted in the mail
resulting in 26 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 $264.
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.
Lisa Lawn,
Director, Records and Information Compliance Program Office, Office of
the Chief Administrative Officer, United States Patent and Trademark
Office.
[FR Doc. 2024-15704 Filed 7-16-24; 8:45 am]
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