Patent Petitions 37 CFR 1 17_f_ Supporting statement _2_

SF-83 SUPPORTING STATEMENT
UNITED STATES PATENT AND TRADEMARK OFFICE
Patent Petitions Corresponding to the Fee under 37 CFR 1.17(f)
OMB Control Number 0651-00xx

A.

JUSTIFICATION

1.

Necessity of Information Collection

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. Also, the USPTO is required to publish patent applications, with certain
exceptions, promptly after the expiration of a period of eighteen months from the earliest
filing date for which a benefit is sought under Title 35, United States Code (“eighteenmonth publication”). Certain situations may arise that require additional information to
be supplied in order for the USPTO to further process the patent or application. The
USPTO administers the statutes through various sections of the rules of practice in
37 CFR Part 1.
The USPTO is requesting the creation of a new collection which will transfer the two
existing items below from the 0651-0031 inventory into a collection of information unto
itself for Petitions Corresponding to the Fee under 37 CFR 1.17(f).
Table 1 identifies the statutory and regulatory provisions that require the USPTO to
collect this information:
Table 1: Information Requirements for Patent Petitions
Requirement

Statute

Rule

Petitions corresponding to the fee under 37 CFR 1.17(f)
include:
Petition to Accord a Filing Date under 1.57(a)
Petition to Accord a Filing Date under 1. 53(e)
Petition for Decision on a Question Not Specifically
Provided For
Petition to Suspend the Rules

35 U.S.C. §§ 131 and 132

37 CFR 1.17(f), 1.53(e),
1.57(a), 1.182 and 1.183

Petition Fee under 37 CFR 1.17(f), (g) and (h) Transmittal

35 U.S.C. § 2(b)(2)

37 CFR 1.17(f)

2.

Needs and Uses

The Information Quality Guidelines from Section 515 of Public Law 106-554, Treasury
and General Government Appropriations Act for Fiscal Year 2001, apply to this
information collection and comply with all applicable information quality guidelines, i.e.,
OMB and specific operating unit guidelines.

This proposed collection of information will result in information that will be collected,
maintained, and used in a way consistent with all applicable OMB and USPTO
Information Quality Guidelines.
Table 2 outlines how this information is used by the public and by the USPTO:
Table 2: Needs and Uses for Patent Petitions
Form and Function

Form #

Needs and Uses

Petitions (corresponding to the fee
under) 37 CFR 1.17(f) include:
Petition to Accord a Filing Date under
1.57(a)
Petition to Accord a Filing Date under
1.53(e)
Petition for Decision on a Question
Not Specifically Provided For
Petition to Suspend the Rules

No Form

• Used by the applicant to request agreement to a filing date.
• Used by the applicant to request a decision on a question not
specifically provided for.
• Used by the applicant to ask for suspension of the rules.
• Used by the USPTO to agree to a filing date.
• Used by the USPTO to grant a decision on a question not
specifically provided for.
• Used by the USPTO to agree to a suspension of the rules.

Petition Fee under 37 CFR 1.17(f), (g)
and (h) Transmittal
(Ref. A)

PTO/SB/17P

• Used by the applicant to identify the proper fee, and thus reduce
the potential for any additional work due to mistakes in payment.
• Used by the USPTO to process the appropriate fees.

3.

Use of Information Technology

Generally, the USPTO does not use automated, electronic, mechanical, or other
technologies to collect information for this collection. The USPTO allows applicants to
use an electronic signature, which is consistent with international standards for
electronic signatures, for patent application and reexamination proceeding documents
created with a word processor as well as the fillable forms that can be accessed through
the USPTO website.
The USPTO’s new web-based electronic filing system, EFS-Web, became available to
the public on March 17, 2006. EFS-Web allows customers to file applications and
associated documents through their standard web browser and does not require any
significant client-side components. EFS-Web permits most patent applications and
other patent-related documents to be submitted in portable document file (PDF) format.
Accordingly, EFS-Web enables users to streamline processing and filing of patent
correspondence, and to better integrate electronic filing into their current computer
systems. EFS-Web offers many potential benefits to filers, including form validation to
ensure that all required information has been included, immediate notification that a
submission has been received, automated processing of requests, and avoidance of
postage or other paper delivery costs.
Correspondence officially submitted via EFS-Web is accorded a “receipt date,” which is
the date the correspondence was received by the USPTO. After a successful
submission, an acknowledgement receipt contains the receipt date, the time the
correspondence was received at the USPTO, and a full listing of the correspondence
submitted.

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The USPTO provides restricted Internet access to patent application status for
applicants and their designated representatives through the Patent Application
Information Retrieval (PAIR) system, which is available at the USPTO website. PAIR
provides USPTO customers with secure and immediate access to up-to-date application
status and history information by the use of digital certificates, which maintain the
confidentiality of the information transmitted electronically over the Internet. In addition
to being sent to the customer, acknowledgement receipts for EFS-Web submissions will
also be available in PAIR. The USPTO does not intend to disseminate any confidential
application information to the general public electronically through PAIR or any other
means. However, the general public may use PAIR to access non-private information
regarding published applications and granted patents.
4.

Efforts to Identify Duplication

This information is collected during the pendency of a patent application. It does not
duplicate information or collection of data found elsewhere.
5.

Minimizing the Burden to Small Entities

No significant impact is placed on small entities. Small entities simply need to identify
themselves as such to obtain the benefits of small entity status.
Pursuant to 35 U.S.C. § 41(h)(1), the USPTO provides a fifty percent (50%) reduction in
the fees charged under 35 U.S.C. § 41(a) and (b) for small entities. The USPTO’s
regulations concerning the payment of reduced patent fees by small entities are at
37 CFR 1.27 and 1.28, and reduced patent fees for small entity applicants are shown in
37 CFR 1.16, 1.17, 1.18 and 1.20.
6.

Consequences of Less Frequent Collection

This information is collected only as required to process a patent application or
enforceable patent, and is not collected elsewhere. Therefore, this collection of
information could not be conducted less frequently. If this information were not
collected, the USPTO would not be able to comply with the patent statute 35 U.S.C. §
131.
7.

Special Circumstances in the Conduct of Information Collection

There are no special circumstances associated with this collection of information.
8.

Consultation Outside the Agency

The 60-Day Federal Register Notice was published on May 30, 2006 (71 Fed Reg.
103). The comment period ended on July 31, 2006. No public comments were
received.

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The USPTO has long-standing relationships with groups from whom patent application
data is collected, such as the American Intellectual Property Law Association (AIPLA),
as well as patent bar associations, inventor groups, and users of our public facilities.
Their views are expressed in regularly scheduled meetings and considered in
developing proposals for information collection requirements. There have been no
comments or concerns expressed by these or similar organizations concerning the time
required to provide the information required under this program.
9.

Payment or Gifts to Respondents

This information collection does not involve a payment or gift to any respondent.
10.

Assurance of Confidentiality

Confidentiality of patent applications is governed by 35 U.S.C. § 122 and 37 CFR 1.14.
Upon publication of an application or issuance of an application as a patent, the entire
file contents of the application are available to the public (subject to the provisions for
providing only a redacted copy of the filed contents). The disclosure of the invention in
the application is the quid pro quo for the property right conferred by the patent grant,
and the very means by which the patent statute achieves its constitutional objective of
“promot[ing] the progress of science and useful arts.” The prosecution history contained
in the application file is critical to determining the scope of the property right conferred
by a patent grant.
To further define the boundaries of the confidentiality of patent applications in light of
the eighteen-month publication of patent applications introduced under the American
Inventors Protection Act of 1999, the USPTO amended 37 CFR 1.14 to maintain the
confidentiality only of applications that have not been published as a U.S. patent
application publication. 37 CFR 1.14 now provides that the public can obtain status
information about the application, such as whether the application is pending,
abandoned, or patented, whether the application has been published under 35 U.S.C. §
122(b), and the application “numerical identifier.” This information can be supplied to
the public under certain conditions. The public can also receive copies of an
application-as-filed and the file wrapper, as long as it meets certain criteria.
The confidentiality, security, integrity, authenticity, and non-repudiation of patent
applications submitted electronically through EFS-Web is maintained using PKI
technology and digital certificates for registered users. Applications electronically filed
by non-registered users are protected using TLS or SSL protocols.
The ePAVE
submission software encrypts the electronic patent application package.
The
authorized filer electronically signs the application and then it is “digitally” signed using
the digital certificates. Because ePAVE is also cryptographic software, it is subject to
export and import restrictions of the United States. The license agreement informs
those installing and using this software that they cannot export or import this software,
nor can they be located in, under the control of, or a national or resident of countries
that are under export or import restrictions.

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11.

Justification for Sensitive Questions

None of the required information is considered to be of a sensitive nature.
12.

Estimate of Hour and Cost Burden to Respondents

Table 3 calculates the anticipated burden hours and costs of this information collection
to the public, based on the following factors:
•

Respondent Calculation Factors
The USPTO estimates that it will receive 20,600 responses to this information collection
annually.

•

Burden Hour Calculation Factors
The USPTO estimates that it will take the public an average of 5 minutes to complete the
petition fee transmittal and 4 hours to complete the petitions (corresponding to the fee)
under 37 CFR 1.17(f), depending on the nature of the information. This includes time to
gather the necessary information, create the documents, and mail the completed
request.

•

Cost Burden Calculation Factors
The USPTO believes that attorneys will supply the information requested for this
information collection. The professional rate of $304 per hour used in this submission to
calculate the respondent cost burden is the median rate for associate attorneys in
private firms as published in the 2005 report of the Committee on Economics of Legal
Practice of the American Intellectual Property Law Association. This report summarized
the results of a survey with data on hourly billing rates. These are fully loaded hourly
rates.

Table 3: Burden Hour/Burden Cost to Respondents for Patent Petitions
Item

Hours
(a)

Response
s
(yr)
(b)

Burden
(hrs/yr)
(a) x (b)
(c)

Rate
($/hr)
(d)

Total Cost
($/hr)
(c) x (d)
(e)

Petitions (corresponding to the fee) under 37 CFR
1.17(f) include:
Petition to Accord a Filing Date under 1.57(a)
Petition to Accord a Filing Date under
1.53(e)
Petition for Decision on a Question Not
Specifically Provided For
Petition to Suspend the Rules

4.00

3,300

13,200

$304.00

$4,012,800.00

Petition Fee Under 37 CFR 1.17(f), (g) and (h)
Transmittal

0.08

17,300

1,384

$304.00

$420,736.00

- - - - -

20,600

14,584

Total

13.

Total Annualized Cost Burden

5

- - - - -

$4,433,536.00

There are no maintenance or capital start-up costs associated with this submission.
There are, however, non-hour costs due to filing fees and mailing costs associated with
this collection.
The minimum total annual filing fee/non-hour cost burden to respondents is outlined in
Table 4 below:
Table 4: Filing Fees – Non-hour cost burden for Patent Petitions
Item

Responses
(a)

Petitions (corresponding to the fee) under 37 CFR 1.17(f) include:
Petition to Accord a Filing Date under 1.57(a)
Petition to Accord a Filing Date under 1.53(e)
Petition for Decision on a Question Not Specifically Provided For
Petition to Suspend the Rules

Filing Fees
(b)

Total Cost
(a) x (b)
(c)

3,300

$400.00

$1,320,000.00

Processing Fee under 37 CFR 1.17(f), (g) and (h) Transmittal

17,300

None

$0.00

Totals

20,600

- - - - - - -

$1,320,000.00

There are mailing costs in the way of postage fees that will be transferred from the
0651-0031 collection into this new collection.
The public may submit the petitions in this collection to the USPTO by mail through the
United States Postal Service. All correspondence may include a certificate of mailing
for each piece of correspondence enclosed, stating the date of deposit or transmission
to the USPTO in order to receive credit for timely filing.
The USPTO estimates that the average first-class postage for a mailed submission may
amount to 58 cents. Postage for the certificates of mailing themselves are not
calculated into this estimate as they are included with the individual pieces of
correspondence that are being deposited with the United States Postal Service. The
USPTO estimates that it will receive 20,600 responses per year subject to mailing costs,
for a cost of $11,948 annually in postage fees.
Therefore, the USPTO estimates that that the total annualized non-hour cost burden for
this collection from filing fees ($1,320,000), and mailing costs ($11,948) amounts to
$1,331,948.
14.

Annual Cost to the Federal Government

The USPTO estimates that it takes a GS-5, step 1, 5 minutes (0.08 hours) to process
the petition fee transmittals and 18 minutes (0.30 hours) to process the petitions
(corresponding to the fee) under 37 CFR 1.17(f). The hourly rate for a GS-5, step 1, is
currently $14.56 according to the U.S. Office of Personnel Management’s (OPM’s)
wage chart, including locality pay for the Washington, DC area. When 30% is added to

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account for a fully loaded hourly rate (benefits and overhead), the rate per hour for a
GS-5, step 1, is $18.43 ($14.56 + $4.37).
Table 6 calculates the processing hours and costs of this information collection to the
Federal Government:

Table 6: Burden Hour/Burden Cost to the Federal Government for Patent Petitions
Item

Hours
(a)

Petitions (corresponding to the fee under) 37 CFR
1.17(f) include:
Petition to Accord a Filing Date under 1.57(a)
Petition to Accord a Filing Date under
1.53(e)
Petition for Decision on a Question Not
Specifically Provided For
Petition to Suspend the Rules

0.30

3,300

990

$18.43

$18,246.00

Petition Fee under 37 CFR 1.17(f), (g) and (h)
Transmittal

0.08

17,300

1,384

$18.43

$25,507.00

- - - - -

20,600

2,374

- - - - -

$43,753.00

Total

15.

Responses
(yr)
(b)

Burden
(hrs/yr)
(a) x (b)
(c)

Rate
($/hr)
(d)

Total Cost
($/hr)
(c) x (d)
(e)

Reason for Change in Burden

This request does not increase or decrease the estimates of the current inventory, since
it is a request simply to move two items from 0651-0031 into a new collection.
The creation of this new collection will reduce the estimates in 0651-0031 by
transferring them into 0651-00xx Patent Petitions Corresponding to the Fee under 37
CFR 1.17(f).
Table 7 shows the burden changes associated with this action:
Table 7: Burden Changes Associated with Patent Petitions
Collection

Type of Burden

Change to Collection

Change to Overall 0651
Inventory

0651-0031

Annual Responses

Decrease of 20,600 responses

0

0651-00xx

Annual Responses

20,600 responses transferred

0

0651-0031

Annual Burden Hours

Decrease of 14,584 hours

0

0651-00xx

Annual Burden Hours

14,584 hours transferred

0

0651-0031

Annual Non-Hour Cost Burden

Decrease of $1,331,948

0

0651-00xx

Annual Non-Hour Cost Burden

$1,331,948 transferred

0

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16.

Project Schedule

There is no plan to publish this information for statistical use. No special publication of
the items discussed in this justification statement is planned. However, plant and utility
patents granted are published weekly in the Official Gazette of the United States Patent
and Trademark Office.
17.

Display of Expiration Date of OMB Approval

The form in this information collection will display the OMB Control Number and
expiration date.
18.

Exception to the Certificate Statement

This collection of information does not include any exceptions to the certificate
statement.
B.

COLLECTIONS OF INFORMATION EMPLOYING STATISTICAL METHODS

This collection of information does not employ statistical methods.

References
A.

PTO/SB/17P Petition Fee under 37 CFR 1.17(f), (g) and (h) Transmittal

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