0036 Just 08

SF-83 SUPPORTING STATEMENT
United States Patent and Trademark Office
Statutory Invention Registration
OMB CONTROL NUMBER 0651-0036

A.

JUSTIFICATION

1.

Necessity of Information Collection

A statutory invention registration is not a patent. It has the defensive attributes of a
patent but does not have the enforceable attributes of a patent. In other words, a
person occasionally invents something solely for personal use, not for production or
sale, and does not want to go through the effort and expense of obtaining a patent on
the invention. At the same time, the inventor wants to prevent someone else from later
obtaining a patent on a like invention. In that situation, the inventor can register a
statutory invention and have it published. Once published, it cannot be claimed or
patented by another person.
35 U.S.C. § 157 authorizes the United States Patent and Trademark Office (USPTO) to
publish a statutory invention registration containing the specifications and drawings of a
regularly filed application for a patent without examination, providing the applicant
meets all the requirements for printing, waives the right to receive a patent on the
claimed invention within a certain period of time prescribed by the USPTO, and pays all
application, publication and other processing fees.
The USPTO administers 35 U.S.C. § 157 through 37 CFR 1.293-1.297. Under these
rules, an applicant for an original patent may request, at any time during the pendency
of the applicant’s complete application, that the specifications and drawings be
published as a statutory invention registration. Any request for a statutory invention
registration may be examined to determine if the requirements have been met, if the
subject matter of the application is appropriate for publication, and if the requirements
for publication are met. Any request also must be signed by (1) the applicant and any
assignee of record, or (2) an attorney or agent of record in the application. The request
for publication must also include a waiver of the applicant’s right to receive a patent on
the invention claimed effective upon the date of publication of the statutory invention
registration.
The requester may petition the USPTO to review a final refusal to publish a statutory
invention registration within one month or such other time as is set forth in the decision
refusing publication. The petition may include a request for refund of the petition fee.
The requester may also request the USPTO to withdraw the request to publish a
statutory invention registration prior to the date of the notice of the intent to publish. The
request to withdraw may also include a request for a refund.

If the request for a statutory invention registration is approved, a notice to that effect will
be published in the Official Gazette of the USPTO. Each statutory invention registration
published will include a statement relating to the attributes of a statutory invention
registration.
Table 1 provides the specific statute and rules requiring the USPTO to collect the
information discussed above:
Table 1: Information Requirements for Statutory Invention Registration
Requirement

Statute

Rule

Request for Statutory Invention Registration

35 U.S.C. § 157

37 CFR 1.293 - 1.294 and 1.297

Petition to Review Final Refusal to Publish

35 U.S.C. § 157

37 CFR 1.295

Request to Withdraw SIR Publication Request

35 U.S.C. § 157

37 CFR 1.296

2.

Needs and Uses

The applicant uses Form PTO/SB/94, Request for Statutory Invention Registration, to
request and authorize publication of a regularly filed patent application as a statutory
invention registration, to waive the right to receive a United States patent on the same
invention claimed in the identified patent application, to agree that the waiver will be
effective upon publication of the statutory invention registration, and to state that the
identified patent application complies with the requirements for printing.
No forms are associated with the petition for a review of the final refusal to publish a
statutory invention registration or with the request to withdraw the request for publication
of a statutory invention registration.
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 would 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 the information for the Statutory Invention Registration is used by
the public and by the USPTO:

2

Table 2: Needs and Uses of Information Collected for the Request for Statutory Invention
Registration
Form and Function
Request for Statutory Invention
Registration
(Ref. A)

Form #

Needs and Uses
•

PTO/SB/94

•
•

Petition to Review Final Refusal to Publish

•

No Form
Associated

•

Request to Withdraw SIR Publication
Request

•

No Form
Associated

•
•

3.

Used by a patent applicant to request publication of a
patent application as a statutory invention registration and
to submit associated fees.
Used by a patent applicant to waive the right to a patent on
the invention claimed in a patent application.
Used by the USPTO to review, grant or deny requests for
publication of a statutory invention registration.
Used by a requester to obtain review of a final refusal to
publish a statutory invention registration.
Used by the USPTO to review a final refusal to publish a
statutory invention registration.
Used by a requester to request withdrawal of a request to
publish a statutory invention registration.
Used by a requester and the USPTO to ensure that the
appropriate fees are submitted.
Used by the USPTO to review a request to withdraw a
request for publication of a statutory invention registration.

Use of Information Technology

The USPTO currently accepts the electronic filing of some patent applications and
certain related documents through the Electronic Filing System (EFS-Web). While there
is not a specific EFS-Web form for statutory invention registrations, form PTO/SB/94
(and all of the other SIR-related submissions) may be submitted over EFS-Web. New
features and capabilities are being added to EFS as it undergoes further development,
and customers will eventually be able to file all applications and related documents
electronically through EFS-Web. As the USPTO expands the use of electronic filing,
the USPTO will reevaluate whether it is feasible for the request for statutory invention
registration to be filed electronically as well. If the security issues are resolved and the
electronic collection of this item does become feasible, the USPTO will submit the
associated electronic form to the Office of Management and Budget (OMB) for review,
as necessary.
4.

Efforts to Identify Duplication

This information is collected only when the applicant submits a request for a statutory
invention registration, petitions the USPTO to review a final refusal to publish, or
requests withdrawal of a request to publish a statutory invention registration.
5.

Minimizing the Burden to Small Entities

This collection of information does not impose a significant economic impact on small
entities or small businesses. The same information is required of every applicant and is
not available from any other source.

3

6.

Consequences of Less Frequent Collection

This information is collected only when the respondent submits a request for a statutory
invention registration, petitions the USPTO to review a final refusal to publish, or
requests withdrawal of a request to publish a statutory invention registration. Therefore,
this collection of information could not be conducted less frequently. If the information
were not collected, the USPTO could not publish statutory invention registrations as
provided for in 35 U.S.C. § 157 and 37 CFR 1.293-1.297.
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 Notice was published in the Federal Register on October 7, 2008 [73 Fed.
Reg. 58572]. No public comments were received.
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, independent 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 statute (35 U.S.C. § 122) and by
regulation (37 CFR 1.11 and 1.14). The USPTO has a legal obligation to maintain the
confidentiality of the contents of unpublished patent applications and related
documents.
11.

Justification for Sensitive Questions

None of the required information in this collection 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:

4

•

Respondent Calculation Factors
The USPTO estimates that it will receive approximately 5 requests to publish a patent
application as a statutory invention registration, 1 petition to review a final refusal, and 2
requests to withdraw publication requests annually.

•

Burden Hour Calculation Factors
The USPTO estimates that it will take the public approximately 24 minutes (0.4 hours),
depending on the complexity of the situation, to gather the necessary information,
prepare, and submit a request for a statutory invention registration, a petition to review
final refusal to publish, and a request to withdraw a publication request.

•

Cost Burden Calculation Factors
In 2007, the Committee on Economics of Legal Practice of the American Intellectual
Property Law Association (AIPLA) published a report that summarized the results of a
survey with data on hourly billing rates. The professional rate of $310 per hour used in
this submission to calculate the respondent cost burden is the median rate for associate
attorneys in private forms as published in that report. The USPTO expects that the
information in this collection will be prepared by associate attorneys. This is a fullyloaded hourly rate.

Table 3: Burden Hour/Burden Cost to Respondents for the Request for Statutory Invention
Registration
Item

Hours
(a)

Responses
(yr)
(b)

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

Rate
($/hr)
(d)

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

Request for Statutory Invention Registration

0.4

5

2

$310.00

$620.00

Petition to Review Final Refusal to Publish

0.4

1

1

$310.00

$310.00

Request to Withdraw SIR Publication Request

0.4

2

1

$310.00

$310.00

- - - - -

8

4

Total

13.

- - - -

$1,240.00

Total Annualized (Non-hour) Cost Burden

There are no capital start-up, maintenance, or record keeping costs associated with this
information collection. There is, however, non-hour burden due to filing fees and
postage costs.
There is annual (non-hour cost) burden in the way of filing fees for the items in this
collection. The total annual filing fee/non-hour cost burden to respondents is outlined in
Table 4 below:

5

Table 4: Filing Fees/Non-hour Cost Burden to Respondents for the Request for Statutory
Invention Registration
Item

Responses
(a)

Filing fee
($)
(b)

Total Non-Hour
Cost Burden
(a) x (b)
(c)

Statutory Invention Registration
(requested prior to mailing of first office action (37 CFR 1.17(n))

2

$920.00

$1,840.00

Statutory Invention Registration
(requested after mailing of first office action (37 CFR 1.17(o))

3

$1,840.00

$5,520.00

Petition to Review Final Refusal to Publish (37 CFR 1.295)

1

$200.00

$200.00

Request to Withdraw SIR Publication Request (37 CFR 1.296)

1

$200.00

$200.00

Petition to Withdraw Publication Request on or after date of
Notice of Intent to Publish (37 CFR 1.296)

1

$400.00

$400.00

Total

8

- - - - - - -

$8,160.00

Customers may incur postage costs when submitting the information in this collection to
the USPTO by mail through the United States Postal Service. The USPTO estimates
that the average first class postage cost for a mailed submission will be 75 cents and
approximately 8 submissions will be submitted to the USPTO by mail. Therefore, the
estimated postage cost for this collection of $6.
The total annualized (non-hour) respondent cost burden for this collection in the
form of filing fees ($8,160) and postage costs ($6) is estimated to be $8,166 per
year.
14.

Annual Cost to the Federal Government

The USPTO estimates that it takes a GS-5, step 1, 6 minutes (0.1 hours) to process a
statutory invention registration or a petition under 37 CFR 1.295 or 1.296. The hourly
rate for a GS-5, step 1, is currently $14.18 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 account for a fully loaded hourly rate (benefits plus overhead),
the rate per hour for a GS-5, step 1, is $18.43 ($14.18+ $4.25).
Table 5 calculates the processing hours and costs for a disclosure document deposit
request to the Federal Government:
Table 5: Burden Hour/Burden Cost to the Federal Government for the Request for Statutory
Invention Registration
Item

Hours
(a)

Responses
(yr)
(b)

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

Rate
($/hr)
(d)

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

Request for Statutory Invention Registration

0.1

5

1

$18.43

$18.00

Petition to Review Final Refusal to Publish

0.1

1

1

$18.43

$18.00

6

Request to Withdraw SIR Publication Request
Total

15.

0.1

2

1

$18.43

$18.00

- - - - -

8

3

- - - - -

$54.00

Reason for Change in Burden

Summary of Changes Since the Previous Renewal
OMB previously approved the renewal of this collection in April of 2006 with a total of 8
responses and 4 burden hours. For this renewal, the USPTO estimates that the
responses and burden hours will remain the same
The total annual (non-hour) cost burden for this renewal of $8,166 is an increase of $1
over the currently approved total of $8,165. The increase is due to an administrative
adjustment for postage costs.
Change in Burden Estimates Since the 60-Day Notice
There has been no change to the estimated responses and burden hours since the
publication of the 60-Day Notice.
The 60-Day Notice reported total (non-hour) cost burden in the amount of $7,760.
(Non-hour) cost burden is being increased in this submission to $8,166 due to a petition
fee being added back into the collection.
Change in Respondent Cost Burden
When this collection was previously approved in April 2006, the estimated hourly rate
for respondents was $286 for the reported 4 burden hours, yielding a respondent cost
burden of $1,144.
For this renewal, the USPTO is using the current professional hourly rate of $310. At
this rate, the 4 burden hours yield a respondent cost burden of $1,240, which is an
increase of $96 over the currently approved burden at the previous hourly rate. This
increase in respondent cost burden is due to the increase in the estimated hourly rate.
Changes in Annualized (Non-hour) Costs
For this renewal, the USPTO estimates that the total annual (non-hour) costs will
increase by $1, from $8,165 currently reported on the OMB inventory to the present
$8,166 per year. Therefore, this collection has an increase in annual non-hour
cost burden of $1 due to an administrative adjustment.
[Note: The previously approved estimate of $8,165 in annual (non-hour) costs for this
collection is listed as $8,000 in the current inventory system. The $165 difference is due
to rounding the estimate to the nearest thousand dollars in order to accommodate the
7

legacy inventory system. This rounded figure was carried over when the legacy data
was migrated to the current inventory system. Consequently, the annual cost burden
increase of $1 for this collection that is due to an administrative adjustment is displayed
as an increase of $166 in the current inventory system in order to compensate for the
previously rounded figure and to result in the new annual cost burden of $8,166 for this
collection as described above.]
16.

Project Schedule

There is no plan to publish this information for statistical use.
17.

Display of Expiration Date of OMB Approval

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

8

Reference

A.
B.

Information Quality Guidelines
Form PTO/SB/94, Request for Statutory Invention Registration

9