0651-0016-JustStmt-2009-final

SUPPORTING STATEMENT
United States Patent and Trademark Office
Rules for Patent Maintenance Fees
OMB CONTROL NUMBER 0651-0016

A.

JUSTIFICATION

1.

Necessity of Information Collection

Under 35 U.S.C. § 41 and 37 CFR 1.20(e)-(i) and 1.362-1.378, the United States Patent
and Trademark Office (USPTO) charges fees for maintaining in force all utility patents
based on applications filed on or after December 12, 1980. 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. 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. Maintenance fees are not required for design or plant
patents, or for reissue patents if the patent being reissued did not require maintenance
fees.
The USPTO must maintain accurate payment records in order to provide the public with
information as to which patents have expired and which patents remain in force. The
USPTO may adjust patent maintenance fees annually. Fee schedules are published in the
Federal Register, the Official Gazette of the United States Patent and Trademark Office,
and on the USPTO Web site.
Payments of maintenance fees that are submitted during the six-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.
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.
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 unavoidable or unintentional. Petitions to accept unavoidably or unintentionally
delayed payment must also be accompanied by the required maintenance fee and
appropriate surcharge under 37 CFR 1.20(i). 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(e). This petition must
be accompanied by the fee indicated in 37 CFR 1.17(f), which may be refunded if it is
determined that the refusal to accept the maintenance fee was due to an error by the
USPTO.
The rules of practice (37 CFR 1.33(d) and 1.363) permit 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. A fee address must be an address that is associated with a USPTO
customer number. Customer numbers may be requested by using the Request for
Customer Number form (PTO/SB/125), which is covered under OMB Control Number
0651-0035 “Representative and Address Provisions.” Maintaining a correct and updated
address is necessary so that fee-related correspondence from the USPTO will be properly
received by the applicant, patentee, assignee, or authorized representative. If a separate
fee address is not specified for a patent or application, the USPTO will direct fee-related
correspondence to the correspondence address of record.
The USPTO offers forms to assist the public with providing the information covered by this
collection, including the information necessary to submit a patent maintenance fee payment
(PTO/SB/45), to file a petition to accept an unavoidably or unintentionally delayed
maintenance fee payment in an expired patent (PTO/SB/65 and PTO/SB/66), and to
designate or change a fee address (PTO/SB/47). No forms are provided for the petitions
under 37 CFR 1.377 and 1.378(e).
Customers may submit maintenance fee payments and surcharges incurred during the sixmonth grace period before patent expiration by using the Maintenance Fee Transmittal
Form or by paying online through the USPTO Web site. However, to pay a maintenance
fee after patent expiration, the maintenance fee payment and the appropriate surcharge
must be filed together with a petition to accept unavoidably or unintentionally delayed
payment. The USPTO accepts online maintenance fee payments by credit card, electronic
funds transfer (EFT), or deposit account through the USPTO Web site. Otherwise, nonelectronic payments may be made by check, credit card, or USPTO deposit account.
Customers may submit the other forms and petitions in this collection electronically through
EFS-Web, the USPTO’s online filing system. The USPTO also offers a special EFS-Web
version of Form PTO/SB/66, which is used for the automatic processing and immediate
rendering of a decision on a petition to accept an unintentionally delayed maintenance fee
payment.
Table 1 provides the statutes and regulations authorizing the USPTO to collect the
information discussed above:

2

Table 1: Information Requirements for Patent Maintenance Fees
Requirement

Statute

Rule

Maintenance Fee Payment

35 U.S.C. ' 41(b)

37 CFR 1.20(e)-(h), 1.362, and 1.366

Petition to Accept Unavoidably Delayed Payment of
Maintenance Fee in an Expired Patent (37 CFR 1.378(b))

35 U.S.C. ' 41(c)

37 CFR 1.20(e)-(g) and (i)(1), 1.362, 1.366,
1.378(a), (b) and (d)

Petition to Accept Unintentionally Delayed Payment of
Maintenance Fee in an Expired Patent (37 CFR 1.378(c))

35 U.S.C. ' 41(c)

37 CFR 1.20(e)-(g) and (i)(2), 1.362, 1.366,
1.378(a), (c) and (d)

Petition to Review Refusal to Accept Payment of
Maintenance Fee Prior to Expiration of Patent (37 CFR
1.377)

35 U.S.C. ' 41(b)

37 CFR 1.377, 37 CFR 1.17(g)

Petition for Reconsideration of Decision on Petition
Refusing to Accept Delayed Payment of Maintenance
Fee in an Expired Patent (37 CFR 1.378(e))

35 U.S.C. § 41(c)

37 CFR 1.378(e), 37 CFR 1.17(f)

“Fee Address” Indication

35 U.S.C. ' 41

37 CFR 1.33(d) and 1.363

2.

Needs and Uses

This information collection is necessary so that patent owners can maintain a utility patent
in force and to ensure that the USPTO can properly credit maintenance fee payments. The
USPTO offers forms to assist the public with providing the information covered by this
collection, including maintenance fee payments, petitions to accept delayed maintenance
fee payments, and fee address changes.
The public uses the Maintenance Fee Transmittal Form (PTO/SB/45) to determine and pay
the correct amount due for a maintenance fee transaction. PTO/SB/45 may be mailed or
faxed to the USPTO, but PTO/SB/45 may not be submitted electronically via EFS-Web.
Customers may submit maintenance fees and six-month grace period surcharges paid
before patent expiration electronically over the Internet using the USPTO’s Office of
Finance Online Shopping Page (hereinafter, the “Electronic Maintenance Fee Form”)
provided through the USPTO Web site. To pay a maintenance fee after patent expiration,
customers must submit the maintenance fee payment and the appropriate delayed
payment surcharge together with a Petition to Accept Unavoidably Delayed Payment or a
Petition to Accept Unintentionally Delayed Payment. A petition to accept delayed payment
of a maintenance fee under the unintentional standard may be filed online; a petition to
accept delayed payment of a maintenance fee under the unavoidable standard may not be
filed online.
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.

3

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 collection of information is used by the public and the USPTO:
Table 2: Needs and Uses of Information Collected for Patent Maintenance Fees
Form and Function

Form #

Needs and Uses

Maintenance Fee Transmittal Form

PTO/SB/45

C
C
C

Electronic Maintenance Fee Form

No Form
Number

C
C
C

Petition to Accept Unavoidably
Delayed Payment of Maintenance
Fee in an Expired Patent (37 CFR
1.378(b))

PTO/SB/65

C
C
C
C

Petition to Accept Unintentionally
Delayed Payment of Maintenance
Fee in an Expired Patent (37 CFR
1.378(c))

PTO/SB/66

C
C
C
C

Petition to Accept Unintentionally
Delayed Payment of Maintenance
Fee in an Expired Patent (37 CFR
1.378(c)) – EFS-Web

PTO/SB/66

C
C
C
C

Used by the public to pay the maintenance fee and the surcharge
in order to keep one or more patents in force.
Used by the USPTO to record the payment of the maintenance
fees in order to keep the patent(s) in force.
Used by the USPTO to determine whether a maintenance fee has
been paid in response to an inquiry from the public.
Used by the public to pay the maintenance fee and the surcharge
online in order to keep one or more patents in force.
Used by the USPTO to record the payment of the maintenance
fees in order to keep the patent(s) in force.
Used by the USPTO to determine whether a maintenance fee has
been paid in response to an inquiry from the public.
Used by the petitioner to request that the patent be reinstated and
to show that the delay in timely payment of the maintenance fee
was unavoidable.
Used by the petitioner to verify all of the identifying information,
such as the patent number, patent date, application number, and
filing date.
Used by the USPTO to determine whether the required elements
for the petition have been submitted.
Used by the USPTO to consider reinstatement of a patent that has
expired due to unavoidably delayed payment of a maintenance
fee.
Used by the petitioner to request that the patent be reinstated and
to show that the delay in timely payment of the maintenance fee
was unintentional.
Used by the petitioner to verify all of the identifying information,
such as the patent number, patent date, application number, and
filing date.
Used by the USPTO to determine whether the required elements
for the petition have been submitted.
Used by the USPTO to consider reinstatement of a patent that has
expired due to unintentionally delayed payment of a maintenance
fee.
Used by the petitioner to request that the patent be reinstated and
to show that the delay in timely payment of the maintenance fee
was unintentional.
Used by the petitioner to verify all of the identifying information,
such as the patent number, patent date, application number, and
filing date.
Used by the USPTO to determine whether the required elements
for the petition have been submitted.
Used by the USPTO to consider reinstatement of a patent that has
expired due to unintentionally delayed payment of a maintenance
fee.

4

Petition to Review Refusal to Accept
Payment of Maintenance Fee Prior
to Expiration of Patent (37 CFR
1.377)

No Form
Associated

C

C

Petition for Reconsideration of
Decision on Petition Refusing to
Accept Delayed Payment of
Maintenance Fee in an Expired
Patent (37 CFR 1.378(e))

No Form
Associated

C

C

“Fee Address” Indication Form

PTO/SB/47

C
C

3.

Used by the petitioner to request that the Director accept and
record a maintenance fee that was filed prior to the expiration of
the patent but was refused by the USPTO and to request a refund
of the petition fee if the refusal was due to an error by the USPTO.
Used by the USPTO to consider a request to review a decision
refusing to accept and record payment of a maintenance fee prior
to the expiration of the patent and to refund the petition fee if the
refusal is determined to be an error by the USPTO.
Used by the petitioner to request that the Director reconsider a
decision to refuse a petition to accept and record an unavoidably
or unintentionally delayed maintenance fee payment after
expiration of the patent so that the expired patent can be
reinstated.
Used by the USPTO to consider a request to review a decision
refusing to accept and record an unavoidably or unintentionally
delayed payment of a maintenance fee after patent expiration and
to refund the petition fee if the refusal is determined to be an error
by the USPTO.
Used by the applicant, patentee, assignee, or representative to
establish an address other than the correspondence address as
the maintenance fee address for a list of applications or patents.
Used by the USPTO to ensure that fee-related correspondence for
a patent or allowed application is sent to the correct address.

Use of Information Technology

Maintenance fee payments and surcharges for payments made during the six-month grace
period before patent expiration may be submitted using the Electronic Maintenance Fee
Form available online through the USPTO’s Office of Finance Online Shopping Page. The
online payment system uses Secure Sockets Layer (SSL) technology in order to encrypt
the payment data and transmit it securely over the Internet. The customer may choose to
view a confirmation screen after the transaction is completed, which the customer may then
print out as evidence of timely payment. In order to provide the public with accurate
information as to which patents have expired, the USPTO maintains payment records in an
electronic database. Customers may also use a voice response system to monitor the
status of their maintenance fees.
Online payment of maintenance fees benefits the customer by eliminating potential mailing
delays and offering fast and reliable payment confirmation. The USPTO accepts electronic
payments by credit card, electronic funds transfer (EFT), or USPTO deposit account. Nonelectronic payments may be made by check, credit card, or USPTO deposit account. The
USPTO believes that the use of the electronic payment option for maintenance fee
transactions will continue to increase as the public becomes more comfortable with making
payments online.
The forms associated with this collection may be downloaded from the USPTO Web site in
Portable Document Format (PDF), filled out electronically, and then either printed for
mailing or submitted online. Other than PTO/SB/45, the forms and petitions in this
collection may be submitted to the USPTO online through EFS-Web, the USPTO’s webbased patent application and document submission system that allows customers to file
5

patent applications and associated documents electronically through their standard web
browser. Typically, the customer will prepare the forms or documents as standard PDF
files and then upload them to the USPTO servers using the secure EFS-Web interface.
The USPTO has also developed specific EFS-Web versions of some forms, such as
PTO/SB/66, that allow for more efficient processing of submissions. 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.
4.

Efforts to Identify Duplication

The information collected is required to process and record patent maintenance fee
payments and surcharges, to consider petitions related to maintenance fee payments, and
to establish a separate address for fee-related correspondence. This information is not
collected elsewhere and does not result in a duplication of effort. For maintenance fee
transactions, the USPTO requires the customer to supply both the patent number and the
corresponding application number in order to ensure the patent is accurately identified.
5.

Minimizing the Burden to Small Entities

The information in this collection is necessary in order to complete a maintenance fee
transaction, to consider an appropriate petition, or to process a fee address request. The
information required by petitions to accept delayed payments, such as the showing or
statement that the delayed payment was unavoidable or unintentional, provides the USPTO
with documented evidence regarding the reason for the delay in payment of the required
maintenance fees so that the Director may consider the request to reinstate the patent.
The same information is required from every customer and is not available from any other
source.
The information collection involves payment of maintenance fees by customers who may
qualify as small entities. To reduce this cost burden for small entities, the USPTO offers
reduced maintenance fees (by 50 per cent) and a reduced six-month grace period
surcharge pursuant to 35 U.S.C. § 41(h) for persons, small business concerns, or nonprofit
organizations that qualify as small entities under 37 CFR 1.27. No significant burden is
placed on small entities, in that small entities are simply required to identify themselves as
such in order to obtain these benefits. An assertion of small entity status only needs to be
filed once in an application or patent.
6.

Consequences of Less Frequent Collection

This information is collected only when the public submits a payment, petition, or other
request related to patent maintenance fees. If this information were not collected, the
USPTO would not be able to: (1) identify the patent for which a maintenance fee is being
paid and properly record the payment; (2) determine whether a patentee is entitled to
reinstatement of a patent after a delayed payment; (3) determine whether a maintenance
6

fee payment that was refused should have been accepted; or (4) send fee-related
correspondence to the proper address. This information could not be collected less
frequently.
7.

Special Circumstances in the Conduct of Information Collection

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

Consultations Outside the Agency

The 60-Day Notice was published in the Federal Register on October 30, 2008 (73 Fed.
Reg. 64601). The comment period ended on December 29, 2008. 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
regulation (37 CFR 1.11 and 1.14). Upon publication of an application or issuance of a
patent, the entire patent application file is made available to the public, subject to provisions
for providing only a redacted copy of the file 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 for determining the scope of the property right conferred by a
patent grant.
In order to protect the confidentiality of credit card account information when making fee
payments, customers should submit credit card payments on a separate credit card
payment form provided by the USPTO for this purpose, which is covered under OMB
Control Number 0651-0043. The USPTO will not include the credit card information
submitted using the provided credit card payment forms among the patent records open to
public inspection. If a customer supplies credit card information on a form or document
7

(e.g., in correspondence related to a patent) other than a credit card payment form
provided by the USPTO, the USPTO will not be liable if the credit card information becomes
public knowledge.
11.

Justification of 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 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 approximately 470,397 total responses per year for
this collection, as shown in Table 3 below.

!

Burden Hour Calculation Factors
The USPTO estimates that it will take the public approximately 20 seconds (0.006 hours) to
8 hours to complete this information, depending on the form or petition and the individual
case. This includes time to gather the necessary information, prepare the form or petition,
and submit the completed request.

!

Cost Burden Calculation Factors
In 2007, the Committee on Economics of Legal Practice of the American Intellectual
Property Law Association published a report that summarized the results of a survey with
data on hourly billing rates. The professional rate of $310 per hour is the median rate for
attorneys in private firms as published in that report. The USPTO expects that the petitions
included in this collection will be prepared by attorneys, while the other items in this
collection will be prepared by paraprofessionals at an estimated rate of $100 per hour.
These are fully-loaded hourly rates.

Table 3: Burden Hours/Burden Costs to Respondents for Patent Maintenance Fees
Item/Form No.

Hours
(a)

Responses
(yr)
(b)

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

Rate
($/hr)
(d)

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

Maintenance Fee Transmittal
Transactions (PTO/SB/45)

0.08

204,005

16,320

$100.00

$1,632,000.00

Electronic Maintenance Fee
Transactions

0.006

136,003

816

$100.00

$81,600.00

8.0

172

1,376

$310.00

$426,560.00

Petition to Accept Unavoidably Delayed
Payment of Maintenance Fee in an
Expired Patent (37 CFR 1.378(b))
(PTO/SB/65)

8

Petition to Accept Unintentionally
Delayed Payment of Maintenance Fee in
an Expired Patent (37 CFR 1.378(c))
(PTO/SB/66)

1.0

2,351

2,351

$310.00

$728,810.00

Petition to Accept Unintentionally
Delayed Payment of Maintenance Fee in
an Expired Patent (37 CFR 1.378(c))
(PTO/SB/66) – EFS-Web

1.0

800

800

$310.00

$248,000.00

Petition to Review Refusal to Accept
Payment of Maintenance Fee Prior to
Expiration of Patent (37 CFR 1.377)

4.0

54

216

$310.00

$66,960.00

Petition for Reconsideration of Decision
on Petition Refusing to Accept Delayed
Payment of Maintenance Fee in an
Expired Patent (37 CFR 1.378(e))

8.0

175

1,400

$310.00

$434,000.00

0.08

126,837

10,147

$100.00

$1,014,700.00

------------

470,397

33,426

------------

$4,632,630.00

“Fee Address” Indication Form
(PTO/SB/47)
Totals

The USPTO estimates that approximately 46% of the total responses for this collection will
be submitted electronically.
13.

Total Annualized Cost Burden

There are no capital start-up costs or maintenance costs associated with this information
collection. However, this collection does have annual (non-hour) costs in the form of fees,
postage costs, and recordkeeping costs.
This collection has fees in the form of patent maintenance fees, surcharges for late
payment of maintenance fees, and petition fees. Under 37 CFR 1.20(e)-(g), the patent
maintenance fees due at 3 1/2 years, 7 1/2 years, and 11 1/2 years after the date of grant
are $980, $2,480, and $4,110, respectively (discounted to $490, $1,240, and $2,055 for
small entities). The surcharge under 37 CFR 1.20(h) for paying a maintenance fee during
the six-month grace period following the above intervals is $130 ($65 for small entities).
The surcharge under 37 CFR 1.20(i) for a petition to accept a maintenance fee after the
six-month grace period for these intervals has expired is $700 where the delayed payment
is shown to be unavoidable and $1,640 where the delayed payment is shown to be
unintentional. The fee listed in 37 CFR 1.17(g) for a petition to review the refusal to accept
the payment of a maintenance fee filed prior to the expiration of a patent is $200. The fee
listed in 37 CFR 1.17(f) for a petition for reconsideration of the decision on a petition
refusing to accept the delayed payment of a maintenance fee in an expired patent is $400.
The USPTO estimates that the total fees associated with this collection will be
$614,442,370 per year as calculated in Table 4 below:

9

Table 4: Filing Costs to Respondents for Patent Maintenance Fees
Item

Responses
(a)

Fee or
Surcharge
($)
(b)

Patent maintenance fee at 3 1/2 years

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

114,683

$980.00

$112,389,340.00

Patent maintenance fee at 3 1/2 years (small entity)

31,479

$490.00

$15,424,710.00

Patent maintenance fee at 7 1/2 years

95,973

$2,480.00

$238,013,040.00

Patent maintenance fee at 7 1/2 years (small entity)

23,940

$1,240.00

$29,685,600.00

Patent maintenance fee at 11 1/2 years

46,752

$4,110.00

$192,150,720.00

Patent maintenance fee at 11 1/2 years (small entity)

9,611

$2,055.00

$19,750,605.00

Surcharge for paying maintenance fee during the six-month
grace period

7,961

$130.00

$1,034,930.00

Surcharge for paying maintenance fee during the six-month
grace period (small entity)

9,609

$65.00

$624,585.00

172

$700.00

$120,400.00

3,151

$1,640.00

$5,167,640.00

Petition to Review Refusal to Accept Payment of Maintenance
Fee Prior to Expiration of Patent (37 CFR 1.377)

54

$200.00

$10,800.00

Petition for Reconsideration of Decision on Petition Refusing to
Accept Delayed Payment of Maintenance Fee in an Expired
Patent (37 CFR 1.378(e))

175

$400.00

$70,000.00

“Fee Address” Indication Form

126,837

$0.00

$0.00

Totals

470,397

......

$614,442,370.00

Petition to Accept Unavoidably Delayed Payment of Maintenance
Fee in an Expired Patent (37 CFR 1.378(b))
Petition to Accept Unintentionally Delayed Payment of
Maintenance Fee in an Expired Patent (37 CFR 1.378(c))

The recordkeeping costs for this collection are associated with submitting maintenance fee
payments, forms, and petitions online through the USPTO Web site. It is recommended
that customers who submit fee payments and documents online print and retain a copy of
the acknowledgment receipt as evidence of the successful transaction. The USPTO
estimates that it will take 5 seconds (0.001 hours) to print a copy of the acknowledgment
receipt and that approximately 214,556 maintenance fee payments, forms, and petitions will
be submitted online, for a total of 215 hours per year for printing this receipt. Using the
paraprofessional rate of $100 per hour, the USPTO estimates that the recordkeeping cost
associated with this collection will be approximately $21,500 per year.
The public may submit the forms and petitions in this collection to the USPTO by mail
through the United States Postal Service. If the submission is sent by first-class mail, the
public may also include a signed certification of the date of mailing in order to receive credit
for timely filing. The USPTO estimates that the average first-class postage cost for a

10

mailed submission will be 42 cents, and that approximately 255,841 submissions per year
may be mailed to the USPTO, for a total postage cost of approximately $107,453 per year.
The total annual (non-hour) cost burden for this collection in the form of fees
($614,442,370), recordkeeping costs ($21,500), and postage costs ($107,453) is
estimated to be $614,571,323 per year.
14.

Annual Cost to the Federal Government

The USPTO estimates that it takes a GS-7, step 1 employee approximately 5 minutes (0.08
hours) on average to process a Maintenance Fee Transmittal or Fee Address Indication
Form and approximately 30 minutes (0.5 hours) on average to process the petitions
included in this collection. The hourly rate for a GS-7, step 1 is currently $18.85. When
30% is added to account for a fully-loaded hourly rate (benefits and overhead), the hourly
rate for processing these items is $24.51 ($18.85 + $5.66). When a customer makes a
submission online using the Electronic Maintenance Fee Form or the EFS-Web version of
Form PTO/SB/66, the transaction is processed and recorded automatically with no staff
time required.
Table 5 calculates the burden hours and costs to the Federal Government for processing
this information collection:
Table 5: Burden Hours/Burden Costs to the Federal Government for Patent Maintenance Fees
Item/Form No.

Hours

Responses
(yr)
(b)

(a)

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

Rate
($/hr)
(d)

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

Maintenance Fee Transmittal
Transactions (PTO/SB/45)

0.08

204,005

16,320

$24.51

$400,003.00

Electronic Maintenance Fee
Transactions

0.0

136,003

0

N/A

$0.00

Petition to Accept Unavoidably
Delayed Payment of Maintenance
Fee in an Expired Patent (37 CFR
1.378(b)) (PTO/SB/65)

0.5

172

86

$24.51

$2,108.00

Petition to Accept Unintentionally
Delayed Payment of Maintenance
Fee in an Expired Patent (37 CFR
1.378(c)) (PTO/SB/66)

0.5

2,351

1,176

$24.51

$28,824.00

Petition to Accept Unintentionally
Delayed Payment of Maintenance
Fee in an Expired Patent (37 CFR
1.378(c)) (PTO/SB/66) – EFSWeb

0.0

800

0

N/A

$0.00

Petition to Review Refusal to
Accept Payment of Maintenance
Fee Prior to Expiration of Patent
(37 CFR 1.377)

0.5

54

27

$24.51

$662.00

11

Petition for Reconsideration of
Decision on Petition Refusing to
Accept Delayed Payment of
Maintenance Fee in an Expired
Patent (37 CFR 1.378(e))
“Fee Address” Indication Form
(PTO/SB/47)
Totals

15.

0.5

175

88

$24.51

$2,157.00

0.08

126,837

10,147

$24.51

$248,703.00

------------

470,397

$27,844.00

------------

$682,457.00

Reason for Changes in Annual Burden

Summary of Changes Since the Previous Renewal
•

April 2006: Renewal approved by OMB with a total of 374,706 responses and 30,362
burden hours per year.

•

October 2006: OMB approved a change worksheet to add the EFS-Web version of
Form PTO/SB/66 into this collection. The new form did not change the total responses
or burden hours for the collection.

•

Currently: Approved with a total of 374,706 responses and 30,362 burden hours per
year.

For this renewal, the USPTO estimates that the total annual responses will be 470,397 and
the total burden hours will be 33,426, which is an increase of 95,691 responses and 3,064
hours from the currently approved burden for this collection. This increase in burden hours
is due to administrative adjustments.
The total annual (non-hour) cost burden for this renewal of $614,571,323 is an increase of
$178,083,799 from the currently approved total of $436,487,524 in annual costs for this
collection. This increase in annual costs is due to both program changes and
administrative adjustments.
Changes in Respondent Cost Burden
This collection was approved by OMB in April 2006 with an estimated total respondent cost
burden of $3,369,522 per year. That submission used an estimated rate of $286 per hour
for attorneys preparing the petitions in this collection and an estimated rate of $81 per hour
for paraprofessionals preparing the remaining items. For this renewal, the USPTO has
updated the estimated rates for respondents to $310 for attorneys and $100 for
paraprofessionals. At these revised rates, the 33,426 burden hours for this renewal yield a
respondent cost burden of $4,632,630, which is an increase of $1,263,108 from the total
respondent cost burden reported in the April 2006 submission. This increase is due to the
increase in the estimated hourly rates for respondents as well as the increased total burden
hours for this collection.
12

Changes in Responses and Burden Hours
For this renewal, the USPTO estimates that the annual responses for this collection will
increase by 95,691, from 374,706 to 470,397 responses per year, and that the total burden
hours for this collection will increase by 3,064, from 30,362 to 33,426 hours per year. This
increase in burden hours is due to administrative adjustments, as follows:
!

The USPTO is adjusting the estimated annual responses for Maintenance Fee
Transmittal Transactions (PTO/SB/45) to 204,005, a decrease of 24,482 from the
previous estimate of 228,487. Therefore, this collection takes a burden
decrease of 1,959 hours due to an administrative adjustment.

!

The USPTO is adjusting the estimated annual responses for Electronic Maintenance
Fee Transactions to 136,003, an increase of 83,564 from the previous estimate of
52,439. Therefore, this collection takes a burden increase of 501 hours due to
an administrative adjustment.

!

The USPTO is adjusting the estimated annual responses for the Petition to Accept
Unavoidably Delayed Payment of Maintenance Fee in an Expired Patent (37 CFR
1.378(b)) (PTO/SB/65) to 172, a decrease of 78 from the previous estimate of 250.
Therefore, this collection takes a burden decrease of 624 hours due to an
administrative adjustment.

!

The USPTO is adjusting the estimated annual responses for the Petition to Accept
Unintentionally Delayed Payment of Maintenance Fee in an Expired Patent (37 CFR
1.378(c)) (PTO/SB/66) to 2,351, an increase of 2,051 from the previous estimate of
300. Therefore, this collection takes a burden increase of 2,051 hours due to
an administrative adjustment.

!

The USPTO is adjusting the estimated annual responses for the EFS-Web version
of the Petition to Accept Unintentionally Delayed Payment of Maintenance Fee in an
Expired Patent (37 CFR 1.378(c)) (PTO/SB/66) to 800, a decrease of 700 from the
previous estimate of 1,500. Therefore, this collection takes a burden decrease
of 700 hours due to an administrative adjustment.

!

The USPTO is adjusting the estimated annual responses for the Petition to Review
Refusal to Accept Payment of Maintenance Fee Prior to Expiration of Patent (37
CFR 1.377) to 54, a decrease of 46 from the previous estimate of 100. Therefore,
this collection takes a burden decrease of 184 hours due to an administrative
adjustment.

!

The USPTO is adjusting the estimated annual responses for the Petition for
Reconsideration of Decision on Petition Refusing to Accept Delayed Payment of
13

Maintenance Fee in an Expired Patent (37 CFR 1.378(e)) to 175, an increase of 145
from the previous estimate of 30. Therefore, this collection takes a burden
increase of 1,160 hours due to an administrative adjustment.
!

The USPTO is adjusting the estimated annual responses for “Fee Address”
Indication Forms (PTO/SB/47) to 126,837, an increase of 35,237 from the previous
estimate of 91,600. Therefore, this collection takes a burden increase of 2,819
hours due to an administrative adjustment.

In sum, this information collection has a total net burden increase of 3,064 hours due
to administrative adjustments.
Changes in Annual (Non-hour) Costs
For this renewal, the USPTO estimates that the total annual (non-hour) costs for this
collection will increase by $178,083,799, from $436,487,524 to $614,571,323 per year.
The increase in total annual (non-hour) costs is due to program changes and administrative
adjustments, as follows:
!

This collection is currently approved with a total of approximately $4,860 in
recordkeeping costs associated with the Electronic Maintenance Fee Form and the
EFS-Web version of Form PTO/SB/66. For this renewal, the USPTO estimates that
the recordkeeping costs for printing confirmations for online transactions will
increase to $21,500 due to increases in the estimated number of online transactions
as well as the increase in the estimated hourly rate for paraprofessionals printing the
receipts. Therefore, this collection takes a burden increase of $16,640 in
recordkeeping costs as an administrative adjustment.

!

This collection is currently approved with a total of approximately $126,969 in
postage costs associated with submitting the forms and petitions in this collection to
the USPTO by mail. For this renewal, the USPTO estimates that the total postage
costs will decrease to $107,453 per year due primarily to a decrease in the number
of mailed submissions to the USPTO. This decrease is mitigated by an increase in
the estimated postage per item from 39 cents to 42 cents. Therefore, this
collection takes a burden decrease of $19,516 in postage costs as an
administrative adjustment.

!

This collection is currently approved with a total of $436,355,695 in fees in the form
of patent maintenance fees, surcharges, and petition fees. For this renewal, the
USPTO estimates that the total fees will increase to $614,442,370 due to increases
in the maintenance fee amount for each interval as well as adjustments in the
number of expected responses. The USPTO estimates that the increases in
maintenance fee amounts account for approximately $45,846,365 of the increase in
total fees, while approximately $132,240,310 of the increase in total fees is due to
14

adjustments in the expected number of filings. Therefore, this collection takes a
burden increase of $178,086,675 in fees, including an increase of $45,846,365
as a program change and an increase of $132,240,310 as an administrative
adjustment.
In sum, this collection has an annual (non-hour) cost burden of $614,571,323, with $21,500
in the form of recordkeeping costs, $107,453 in the form of postage costs, and
$614,442,370 in the form of fees. Therefore, this collection has a total increase in
annual (non-hour) cost burden of $178,083,799, with $45,846,365 due to program
changes and $132,237,434 due to administrative adjustments.
16.

Project Schedule

The USPTO does not plan any special publication of patent numbers in which maintenance
fees have been paid. However, the patent numbers, serial numbers, and issue dates of
expired patents are published in the weekly Official Gazette of the United States Patent and
Trademark Office and annually in a consolidated listing. The weekly Official Gazette also
includes a listing of patent numbers, serial numbers, filing dates, issue dates, and grant
dates for patents that have been reinstated due to the acceptance of a late maintenance
fee. The Official Gazette is published in electronic format on the USPTO Web site.
17.

Display of Expiration Date of OMB Approval

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

Exceptions to the Certificate Statement

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

B.

COLLECTION OF INFORMATION EMPLOYING STATISTICAL METHODS

This collection of information does not employ statistical methods.

15

REFERENCES

A.
B.
C.
D.
E.
F.
G.
H.

The USPTO Information Quality Guidelines
Maintenance Fee Transmittal Form (PTO/SB/45)
Electronic Maintenance Fee Form
Petition to Accept Unavoidably Delayed Payment of Maintenance Fee in an
Expired Patent (37 CFR 1.378(b)) (PTO/SB/65)
Petition to Accept Unintentionally Delayed Payment of Maintenance Fee in an
Expired Patent (37 CFR 1.378(c)) (PTO/SB/66)
Petition to Accept Unintentionally Delayed Payment of Maintenance Fee in an
Expired Patent (37 CFR 1.378(c)) (PTO/SB/66) – EFS-Web
“Fee Address” Indication Form (PTO/SB/47)
60-Day Notice published in the Federal Register on October 30, 2008 (73 Fed.
Reg. 64601)

16