0651-0062 SupStmtl Jan 2011 v2

SUPPORTING STATEMENT
United States Patent and Trademark Office
Third-Party Submissions and Protests
(formerly Green Technology Pilot Program)
OMB CONTROL NUMBER 0651-0062
(January 2011)

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.
The provisions of 35 U.S.C. § 122(c) and 37 CFR 1.99 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 Office.
With respect to third-party submissions, 37 CFR 1.99 permits a third party to submit
patents and publications (i.e., documents that are public information and that the Office
would discover on its own with an ideal prior art search) during a limited (two-month)
period after publication of an application. 37 CFR 1.99 prohibits a third party from
submitting any explanation of the patents or publications, or submitting any other
information.
In addition to third-party submissions under 37 CFR 1.99, the USPTO accepts thirdparty submissions via its pilot program for public submission of peer reviewed prior art.
Under the peer review pilot program, a limited number of volunteer applicants with
unexamined applications classified in specific areas have the opportunity to consent to
the placement of their published application(s) onto the Peer-To-Patent Website for the
purposes of collaborative review. Peer-to-Patent is a non-USPTO Web-site developed
by the New York Law School for the pilot program. Participating applications are
analyzed by members of the public who, in an organized manner using Internet Peer
Review techniques, determine the (up to) six (6) most pertinent prior art documents,
which are then submitted to the USPTO as a third-party submission under a waiver of
certain sections of both 37 CFR 1.99 and 1.291. The peer review pilot program does
not violate 35 U.S.C. § 122, given that applicants must provide a certification and
request to participate in the program that includes an express written consent to the
inclusion of the explanations submitted by Peer-to-Patent coordinators regarding how
the prior art documents relate to the disclosed invention as defined by the claims. The
Office of Management and Budget (OMB) has determined that, under 5 CFR 1320.3(h),
the certification and request to participate in the Peer Review Pilot Program does not
collect “information” within the meaning of the Paperwork Reduction Act of 1995 (44
U.S.C. § 3501 et seq.).

With respect to protests, 37 CFR 1.291 permits a party obtaining knowledge of an
application pending in the Office to file a protest against the application and to therein
call attention to any facts within the protestor’s knowledge which, in the protestor’s
opinion, would make the grant of a patent on the application improper. However, 35
U.S.C. $ 122(c) provides that the Office “shall establish appropriate procedures to
ensure that no protest . . . to the grant of a patent on an application may be initiated
after publication of the application without the express written consent of the applicant.”
Therefore, with the exception of a protest accompanied by a written consent of the
applicant, all protests must be submitted prior to the publication of the application or the
mailing of a notice allowance, whichever occurs first.
The USPTO is now requesting the renewal of:
•
•

Third-Party Submissions in Published Applications (previously titled Third-party
Submissions in Published Applications Under 37 CFR 1.99), and
Protests by the Public Against Pending Applications Under 37 CFR 1.291

The USPTO is revising the title of the third-party submissions itemization in this
collection to clarify that both third-party submissions under 37 CFR 1.99 and third-party
submissions under the agency pilot program associated with peer reviews are included.
This collection previously contained a third item: Request for Green Technology Pilot
Program (PTO/SB/420). OMB has determined that, under 5 CFR 1320.3(h), the
Requests for Green Technology Pilot Program do not collect “information” within the
meaning of the Paperwork Reduction Act of 1995 (44 U.S.C. § 3501 et seq.). The
USPTO is therefore requesting the removal of the Request for Green Technology Pilot
Program from this collection. The USPTO is also requesting an adjustment of the title
of this collection to reflect the removal.
Table 1 identifies the proposed statutory and regulatory provisions that require the
USPTO to collect this information:
Table 1: Information Requirements for Third-Party Submissions and Protests
Requirement

Statute

Rule

Third-Party Submissions in Published Applications

35 U.S.C. §§ 122(c), 131 and 151

37 CFR 1.99

Protests by the Public Against Pending Applications
Under 37 CFR 1.291

35 U.S.C. §§ 122(c), 131 and 151

37 CFR 1.291

2.

Needs and Uses

This information collection is necessary so that the public may (i) make a submission in
a published application, and (ii) protest a pending application.
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 this information collection and its supporting statement
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comply with all applicable information quality guidelines, i.e., the 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 Third-Party Submissions and Protests
Form and Function

Form #

Needs and Uses

Third-Party Submissions in Published
Applications

No Form
Associated

• Used by the public to submit, without further comment or
explanation, patents or publications as prior art documents
relevant to a pending published application in accordance with
37 CFR 1.99.
• Used by the public to submit prior art documents in accordance
with the peer review pilot program.
• Used by the USPTO to enter patents or publications as prior art
documents in the application file, in accordance with 37 CFR
1.99.
• Used by the USPTO to enter prior art documents in the
application file, in accordance with the peer review pilot program.

Protests by the Public Against Pending
Applications Under 37 CFR 1.291

No Form
Associated

• Used by the public to call attention to any facts within the
protestor’s knowledge that, in the protestor’s opinion, would
make the grant of a patent on an application pending in the
USPTO improper.
• Used by the USPTO to bring information to the attention of the
USPTO and to avoid the issuance of an invalid patent.

3.

Use of Information Technology

Both third-party submissions under 37 CFR 1.99 and protests are prohibited from being
filed via EFS-Web by the EFS-Web Legal Framework. Third-party submissions under
the peer review pilot program will also not be received via EFS-Web. The agency
continues to work towards electronic filing options, and will inform the public and the
OMB if changes to the EFS-Web Legal Framework allow for such submissions in the
future.
4.

Efforts to Identify Duplication

The information collected is required to process (i) third-party submissions in published
applications, and (ii) protests by the public against pending applications. This
information is not collected elsewhere and does not result in a duplication of effort.
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 information required by this collection provides the
USPTO with the necessary materials for (i) entering prior art documents obtained from a
third party in the application file, and (ii) bringing information to the attention of the

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USPTO and avoiding the issuance of an invalid patent. The same information is
required from every member of the public and is not available from any other source.
6.

Consequences of Less Frequent Collection

This information is collected only when the public submits (i) a third-party submission,
and (ii) a 37 CFR 1.291 protest. If this information were not collected, the USPTO
would not be able to balance the mandate of 35 U.S.C. § 122(c) and the USPTO’s
authority and responsibility under 35 U.S.C. §§ 131 and 151 to issue a patent only if “it
appears that the applicant is entitled to a patent under the law.” 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.

Consultation Outside the Agency

The 60-Day Notice was published in the Federal Register on October 20, 2010 (75 Fed.
Reg. 64692). The public comment period ended on December 20, 2010. No public
comments were received.
The USPTO has long-standing relationships with groups from who 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
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.

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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:
•

Respondent Calculation Factors
The USPTO estimates that it will receive 1,225 responses per year for this
collection.

•

Burden Hour Calculation Factors
The USPTO estimates that it will take the public between 7.5 hours and 10 hours
to gather the necessary information, prepare the appropriate form or documents,
and submit the information to the USPTO.

•

Cost Burden Calculation Factors
In 2009 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 $325 per hour used in this submission is the median rate for
attorneys in private firms as published in that report. The USPTO expects that
the information in this collection will be prepared by attorneys. These are fullyloaded hourly rates.

Table 3: Burden Hour/Burden Cost to Respondents for Third-Party Submissions and Protests
Item

Third-Party Submissions in Published
Applications
Protests by the Public Against Pending
Applications Under 37 CFR 1.291
TOTAL

13.

Hours
(a)

Responses
(yr)
(b)

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

Rate
($/hr)
(d)

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

7.5

1,160

8,700

$325.00

$2,827,500.00

10 0

65

650

$325.00

$211,250.00

1,225

9,350

- - - - -

- - - - -

$3,038,750.00

Total Annualized (Non-hour) Cost Burden

There are no capital start-up, maintenance or record keeping costs associated with this
information collection. However, this collection does have filing fees and postage costs.
Although the applicant is strongly urged to retain a copy of the file submitted to the
USPTO as evidence of authenticity in addition to keeping the acknowledgement receipt

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as clear evidence of the date the file was received by the USPTO, this is not required
and, as such, the USPTO is not considering this to be a record keeping cost imposed
upon the applicant (5 CFR 1320.3(m)).
There is no fee for filing a third-party submission under the peer review pilot program.
In addition, the peer review pilot program is currently scheduled to accept requests for
participation from October 25, 1010 until September 30, 2011, or until one thousand
(1,000) participating applications have been accepted into the pilot, whichever occurs
first. Therefore, the USPTO estimates that 1,000 of the 1,160 third-party submissions
will fall under the no-fee category. The remaining 160 third-party submissions are
subject to the 37 CFR 1.17(p) fee of $180 for a cost of $28,800. There is no fee for
filing protests under 37 CFR 1.291 unless the filed protest is the second or subsequent
protest by the same real party in interest, in which case the 37 CFR 1.17(I) fee of $130
must be included. The USPTO estimates 7 of the 65 protests filed per year will trigger
this fee for a cost of $910. Therefore, the USPTO estimates that the total filing fees
associated with this collection will be approximately $29,710 per year.
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 one-pound submission will be
$4.80 and approximately 1,225 submissions will be submitted to the USPTO.
Therefore, the estimated postage cost for this collection is $5,880.
The total annualized (non-hour) respondent cost burden for this collection in the
form of filing fees ($29,710) and postage costs ($5,880) is estimated to be $35,590
per year.
14.

Annual Cost to the Federal Government

The USPTO estimates that it takes a GS-7, step 1 employee 30 minutes (0.5 hours) to
process the protests under 37 CFR 1.291 and the third-party submissions. The hourly
rate for a GS-7, step 1, is currently $20.22. When 30% is added to account for a fullyloaded hourly rate (benefits and overhead), the rate per hour for a GS-7, step 1
employee, is $26.29 ($20.22 + $6.07).
Table 4 calculates the processing hours and costs of this information collection to the
Federal Government:

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Table 4: Burden Hour/Burden Cost to the Federal Government for Third-Party Submissions and
Protests
Item

Hours
(a)

Responses
(yr)
(b)

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

Rate
($/hr)
(d)

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

Third-Party Submissions in Published
Applications

0.5

1,160

580

$26.29

$15,248.00

Protests by the Public Against Pending
Applications Under 37 CFR 1.291

0.5

65

33

$26.29

$868.00

1,225

613

- - - - -

$16,116.00

TOTAL

15.

- - - - -

Reason for Change in Burden

Summary of Changes Since the Previous Renewal
This information collection was previously approved in June of 2010 with a total of 5,225
responses and 6,850 burden hours per year.
For this renewal, the USPTO estimates that the total annual responses will be 1,225
and the total annual burden hours will be 9,350, which is a decrease of 4,000 responses
and an increase of 2,500 burden hours from the currently approved burden for this
collection. This decrease in responses and increase in burden hours is due to program
changes and an administrative adjustment.
The total annual (non-hour) cost burden for this renewal of $35,590 is a decrease of
$9,820 from the currently approved total of $45,410. The decrease is due to a program
change for the removal from this collection of the Request for Green Technology Pilot
Program and the record keeping costs, offset by the addition of postage costs as an
administrative adjustment.
Change in Burden Estimates Since the 60-Day Federal Register Notice
The 60-Day Federal Register Notice published in October 2010 reported that the
USPTO estimated it would receive 2,225 responses resulting in 3,850 burden hours per
year. Since that publication there have been adjustments in the number of responses
due to the elimination from this collection of the Green Technology Pilot Program as
well as an increase in estimated responses for the third-party submissions. These
changes decreased the responses by 1,000 and increased the burden hours by 5,500,
resulting in the present 1,225 responses and 9,350 burden hours being reported for this
submission.
The 60-Day Federal Register Notice reported total (non-hour) cost burden in the amount
of $36,410. This (non-hour) cost burden is being decreased in this submission to
$35,590 due to the elimination of the record keeping costs but is partially offset by the
addition of postage costs.

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Change in Respondent Cost Burden
The 9,350 burden hours for this renewal yield a respondent cost burden of $3,038,750,
which is an increase of $812,500 over the currently approved respondent cost burden of
$2,226,250. This increase in respondent cost burden is due to an increase in burden
for one of the requirements but is partially offset by the elimination from this collection of
the Green Technology Pilot Program.
Changes in Responses and Burden Hours
With this renewal, a total of 2,500 burden hours have been added to this collection.
This increases the total number of burden hours from 6,850 to 9,350 per year as a
result of both a program change and an administrative adjustment, as follows:
•

The USPTO is eliminating the requirement Request for Green Technology Pilot
Program from the collection. The USPTO estimates that this will remove 5,000
responses per year. Therefore, this submission takes a total burden
decrease of 5,000 hours as a program change.

•

The USPTO expects that the number of Third-Party Submissions in Published
Applications submitted per year will increase by 1,000, from 160 to 1,160
responses per year. The name of the requirement has been changed to
eliminate the words “Under 37 CFR 1.99.” Therefore, this submission takes a
total burden increase of 7,500 hours as an administrative adjustment.

A net total of 4,000 responses have been removed from this collection as a result
of a program change and an administrative adjustment. The decrease in burden
responses is due to a combination of the elimination of 5,000 responses as the
result of the elimination from this collection of one requirement and an increase
in responses of 1,000 for one requirement. This results in a total net burden hour
decrease of 5,000 hours as a program change offset by an increase of 7,500
hours as an administrative adjustment.
Changes in Annualized (Non-hour) Cost Burden
For this renewal, the USPTO estimates that the total annual (non-hour) costs will
decrease by $9,820, from $45,410 currently on the OMB inventory to the present
$35,590. Even though this collection has a decrease in costs due to the elimination of
the record keeping requirement in the amount of $15,700, postage costs in the amount
of $5,880 are being added to the collection. Therefore, the cost burden decrease of
$15,700 due to a program change and an increase of $5,880 due to an
administrative adjustment yield a total decrease in annual (non-hour) cost burden
of $9,820.

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16.

Project Schedule

The USPTO does not plan to publish this information for statistical use or any other
purpose.
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.

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