0651-0062 SupStmt Rule Jan 2012

SUPPORTING STATEMENT
United States Patent and Trademark Office
Proposed Modification to
Third-Party Submissions and Protests
OMB CONTROL NUMBER 0651-0062
(January 2012)

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.
Currently, the provisions of 35 U.S.C. 122(c) and 37 CFR 1.99 and 1.291 govern the
ability of a third party to have information entered and considered in, or to protest, a
patent application pending before the USPTO.
However, the Leahy-Smith America Invents Act was enacted into law on September 16,
2011. See Pub. L. 112-29, 125 Stat. 284 (2011). Section 8 of the Leahy-Smith America
Invents Act provides a new mechanism for third parties to submit to the USPTO, for
consideration and inclusion in the record of a patent application, patents, published
patent applications, or other printed publication of potential relevance to the examination
of the application. Specifically, Section 8 of the Leahy-Smith America Invents Act
amends 35 U.S.C. 122 by adding 35 U.S.C. 122(e), which enumerates certain
conditions that apply to a third-party preissuance submission to the USPTO. Section 8
of the Leahy-Smith America Invents Act takes effect on September 16, 2012, and
applies to any patent application filed before, on, or after the effective date.
The USPTO published a notice of proposed rulemaking titled “Changes to Implement
the Preissuance Submissions by Third Parties Provision of the Leahy-Smith America
Invents Act” (RIN 0651-AC67) in the Federal Register. In the notice, the USPTO
proposed changes to the rules of patent practice to implement Section 8 of the LeahySmith America Invents Act. For example, the USPTO proposed to implement 35 U.S.C.
122(e) in a new rule 37 CFR 1.290 and to eliminate 37 CFR 1.99. In support of the
proposed rulemaking, the USPTO is submitting this information collection to update the
information requirements impacted by the creation of new rule 37 CFR 1.290 and the
elimination of 37 CFR 1.99. Table 1 identifies the statutory and regulatory provisions
that will be associated with the information requirements impacted by the changes
proposed in the notice of proposed rulemaking:
Table 1: Impacted Information Requirements for Third-Party Submissions and Protests
Requirement

Statute

Rule

Third-Party Submissions in Nonissued
Applications (formerly Third-Party Submissions in
Published Applications)

35 U.S.C. §§ 122(c), 122(e) , 131 and 151

37 CFR 1.290

2.

Needs and Uses

This information collection will be necessary so that the public may submit patents,
published patent applications, and other printed publications to the USPTO for
consideration in a patent application. The USPTO will use this information, as
appropriate, during the patent examination process to assist in evaluating the patent
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
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 will be used by the public and by the USPTO:
Table 2: Needs and Uses for Third-Party Submissions and Protests
Form and Function
Third-Party Submissions in Nonissued
Applications

3.

Form #

Needs and Uses

PTO/SB/429

• Used by third parties to submit patents, published patent
applications, or other printed publications of potential relevance
to the examination of an application, together with a concise
description of the asserted relevance of each document
submitted, in accordance with 37 CFR 1.290.
• Used by third parties to submit prior art documents in
accordance with the peer review pilot program.
• Used by the USPTO to enter third party-submitted patents,
published patent applications, or other printed publications in the
application file, in accordance with 37 CFR 1.290.
• Used by the USPTO to enter third party-submitted prior art
documents in the application file, in accordance with the peer
review pilot program.

Use of Information Technology

The USPTO plans to permit third-party preissuance submissions to be filed via its
electronic filing system (EFS-Web); however, third party preissuance submissions
would not be automatically entered into the electronic image file wrapper (IFW) for an
application. Instead, preissuance submissions would be reviewed to determine
compliance with 35 U.S.C. 122(e) and new 37 CFR 1.290 before being entered into the
IFW. Third parties filing preissuance submissions electronically via EFS-Web will
receive immediate, electronic acknowledgement of the USPTO’s receipt of the
submission, instead of waiting for the USPTO to mail a return postcard.
The current EFS-Web Legal Framework prohibits third-party submissions under 37 CFR
1.99 in patent applications because electronically filed documents are instantly loaded
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into the IFW. See Legal Framework for Electronic Filing System – Web (EFS-Web), 74
FR 55200, 55202, 55206-7 (October 27, 2009). Because third-party preissuance
submissions would be permitted to be filed electronically, under the proposed rule, the
USPTO intends to protect applicants by establishing procedures to determine whether a
third-party preissuance submission is in compliance with the requirements of the new 37
CFR 1.290 before entering the submission into the EFW of an application or making the
submission available to an examiner for consideration. The USPTO intends to
complete such determination promptly following receipt of the submission so that
compliant preissuance submissions would be quickly entered into the IFW and made
available to the examiner for consideration. Non-compliant third-party preissuance
submissions would not be entered into the IFW of an application or considered and
would be discarded. Also, no refund of the required fees would be provided in the event
a preissuance submission is determined to be non-compliant. If an electronic mail
message address is provided with a third-party preissuance submission, the USPTO
may attempt to notify the third party submitter of such non-compliance; however, the
statutory time period for making a preissuance submission would not be tolled by the
initial non-compliant submission.
4.

Efforts to Identify Duplication

The information collected will be required to process third-party submissions in pending
applications that have yet to issue as patents. This information will not be collected
elsewhere and will not result in a duplication of effort.
5.

Minimizing the Burden to Small Entities

This collection of information will not impose a significant economic impact on a
substantial number of small entities. The burden to all entities, including small entities,
imposed by the information requirements associated with the rules proposed in the
notice of proposed rulemaking is a minor addition to that of the current regulations for
third-party submissions under § 1.99. Consistent with the current regulations, the
USPTO will continue to require third parties filing submissions to, for example, file a
listing of the documents submitted along with a copy of each document with minor
additional formatting requirements. Additional requirements proposed in the notice of
proposed rulemaking are requirements of statute (e.g. the concise explanation) and
thus the sole means of accomplishing the purpose of the statute. The same information
will be required from every member of the public and will not be available from any other
source.
6.

Consequences of Less Frequent Collection

This information will be collected only when the public submits a third-party submission.
If this information were not collected, the USPTO would not be able to balance the
mandate of 35 U.S.C. § 122(e) 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.

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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 USPTO published a notice of proposed rulemaking titled “Changes to Implement
the Preissuance Submissions by Third Parties Provision of the Leahy-Smith America
Invents Act” (RIN 0651-AC67) in the Federal Register.
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.
9.

Payment or Gifts to Respondents

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

Assurance of Confidentiality

The information will be collected from members of the public, who, as third parties, have
elected to submit for consideration and inclusion in the record of a patent application,
any patent, published patent application, or other printed publication of potential
relevance to the examination of the application.
The confidentiality of patent
applications is governed by statute (35 U.S.C. § 122) and regulation (37 CFR 1.11 and
1.14), and 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, including the consideration given to preissuance submissions by third
parties, is critical for determining the scope of the property right conferred by a patent
grant.
11.

Justification for Sensitive Questions

None of the required information in this collection is considered to be of a sensitive
nature.

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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 a total of 1,030 responses per year for
this collection, of which 250 will be filed by small entities. In particular, the
USPTO estimates that it will receive 730 responses per year under proposed
new rule 37 CFR 1.290, and 300 responses per year under the preexisting peer
review pilot program. The USPTO estimates that 950 of the 1,030 total
responses will be filed electronically.

•

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

•

Cost Burden Calculation Factors
The USPTO uses a professional rate of $340 per hour for respondent cost
burden calculations, which is the median rate for attorneys in private firms as
shown in the 2011 Report of the Economic Survey published by the American
Intellectual Property Law Association (AIPLA).

Table 3: Burden Hour/Burden Cost to Respondents 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)

EFS-Web Third-Party Submissions in Nonissued
Applications

10

950

9,500

$340.00

$3,230,000.00

Paper Third-Party Submissions in Nonissued
Applications

10

80

800

$340.00

$272,000.00

1,030

10,300

TOTAL

- - - - -

- - - - -

$3,502,000.00

The proposed addition to this information collection, plus the approved burden in the
current inventory, will result in the total burden estimates shown below for the third-party
submissions:
Current inventory responses = 1,225
Current inventory burden hours = 9,350
Current inventory burden hour costs = $3,038,750
Impact on responses due to the proposed addition = decrease of 130
Impact on burden hours due to the proposed addition = increase of 1,600
Impact on burden hour costs due to the proposed addition = increase of $674,500

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Total estimated responses after the proposed addition = 1,095
Total estimated burden hours after the proposed addition = 10,950
Total estimated burden hour costs after the proposed addition = $3,713,250
13.

Total Annualized (Non-hour) Cost Burden

There will be filing fees associated with this information collection. The current rules of
practice (37 CFR 1.99) provide for a third-party submission of up to ten documents for
the fee set forth in 37 CFR 1.17(p) (currently $180.00). The USPTO expects the
processing costs to the USPTO for third-party preissuance submissions under new 37
CFR 1.290 to be equivalent to the processing costs to the USPTO for submissions
under 37 CFR 1.99. Accordingly, the USPTO has determined that the fee set forth in 37
CFR 1.17(p) would also be applicable to third-party preissuance submissions under 37
CFR 1.290 and proposes in the notice of proposed rulemaking to require the fee set
forth in 37 CFR 1.17(p) for every ten documents, or fraction thereof, listed in each thirdparty preissuance submission. The USPTO proposes in the notice of proposed
rulemaking to provide an exemption from this fee requirement where a preissuance
submission listing three or fewer total documents is the first preissuance submission
submitted in an application by a third party, or a party in privity with the third party.
Taking the proposed fee and exemption into account, the USPTO estimates that the
average fee for the 730 third-party submissions estimated to be received under
proposed new rule 37 CFR 1.290 will be $180, for a cost of $131,400 in filing fees.
There will continue to be no fee for filing a third-party submission under the peer review
pilot program.
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
$4.95 and approximately 80 submissions will be submitted to the USPTO requiring
postage. Therefore, the estimated postage cost for this collection will be $396.
However, the USPTO is removing $5,172 in postage costs from this collection attributed
to the third party submissions. Under the notice of proposed rulemaking, third-party
preissuance submissions would be permitted to be filed through EFS-Web, and the
USPTO estimates that most third-party submissions will be submitted through EFSWeb. Specifically, the USPTO estimates that only seven percent of third-party
submissions will be subject to postage.
Currently approved annual (non-hour) costs = $35,590
Impact due to the proposed addition = increase of $97,428
Total estimated annual (non-hour) costs after the proposed addition = $133,018

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14.

Annual Cost to the Federal Government

The USPTO estimates that it will take a GS-7, step 1 employee approximately 30
minutes (0.5 hours) to process a third-party submission. The USPTO estimates that the
cost of a GS-7, step 1 employee is currently $26.29 (GS hourly rate of $20.22 with 30%
($6.07) added for benefits and overhead).
Table 6 calculates the burden hours and cost to the Federal Government for processing
this information collection:
Table 4: Burden Hour/Burden Cost to the Federal Government for Third-Party Submissions and
Protests
Item

Third-Party Submissions in Nonissued Applications
TOTAL

Hours
(a)

Responses
(yr)
(b)

0.5
- - - - -

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

Rate
($/hr)
(d)

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

1,030

515

$26.29

$13,539.00

1,030

515

- - - - -

$13,539.00

Current government cost burden = $16,116
Impact due to the proposed addition = decrease of $1,709
Total estimated government cost burden after the proposed addition = $14,407
15.

Summary of Changes in Burden Since Previous Renewal

OMB previously approved the renewal of this collection in March of 2011 with a total of
1,225 responses, 9,350 burden hours, and $35,590 in annualized (non-hour) costs.
There have been no interim approvals.
For this notice of proposed rulemaking, the USPTO estimates that the total annual
responses will be 1,030 and the total annual burden hours will be 10,300, which is a
decrease of 130 responses and an increase of 1,600 burden hours from the currently
approved burden for this collection. This decrease in responses and increase in burden
hours is due to a program change.
The total annual (non-hour) cost burden for this renewal of $133,018 is an increase of
$97,428 from the currently approved total of $35,590. This increase is due to a program
change. As a result of the notice of proposed rulemaking, the USPTO estimates that it
will receive 730 third-party submissions under proposed new rule 1.290, and the 730
third-party submissions will be subject to an average fee of $180. The notice of
proposed rulemaking will also result in the elimination of $5,172 in postage costs for this
item as 93% of the third party submissions will now be submitted through EFS-Web.
Changes in Respondent Cost Burden
As noted in Section 12 above, the USPTO estimates the hourly rate for respondents at
rates published in the American Intellectual Property Law Association (AIPLA) Report of
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the Economic Survey, which is published every two years. At the time of the renewal
the USPTO estimated the hourly respondent cost burden based on a rate of $325 per
hour from the 2009 Report. For this proposed modification, the estimated rate has
increased to $340 per hour, based on the 2011 Report.
The rate updates have resulted in the following changes in annual respondent cost
burden:
•

Increase of $674,500 overall from $3,038,750 to $3,713,250

Changes in Annual (Non-hour) Costs
For this renewal, the USPTO estimates a net increase in total (non-hour) costs of
$151,388 (from $35,590 to $186,978) as a program change, as follows:
Program Change:
•

16.

Increase of $97,428. This collection is currently approved with $28,800 in filing
fees for third-party submissions. For this submission, the USPTO estimates that
the filing fees will increase to $131,400 because the 730 third-party submissions
estimated to be received under proposed new rule 37 CFR 1.290 will be subject
to an average filing fee of $180.00 under 37 CFR 1.17(p), for an increase of
$102,600. This increase is offset by a decrease in postage costs of $5,172 due
to the expectation that a majority of third-party submissions will be filed
electronically (93%), for a total net increase of $97,428.
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, PTO/SB/429, 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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