Supporting Statement - Appendix A

0651-00xx AIA Sec10 Fee Setting App_A Jul2012.pdf

America Invents Act Section 10 Patent Fee Adjustments

Supporting Statement - Appendix A

OMB: 0651-0072

⚠️ Notice: This form may be outdated. More recent filings and information on OMB 0651-0072 can be found here:

Document [pdf]

Download: pdf | pdf

Supplemental Appendix A

For reference, the statutory and regulatory provisions that authorize the USPTO to collect the
information associated with existing fees impacted by this proposed rulemaking are outlined in
this supplemental document Appendix A. The information requirements themselves will remain
in their existing collections under their existing OMB control numbers.

LEGAL 0651-0012
Admittance to Practice and Roster of Registered Patent Attorneys and Agents Admitted to
Practice Before the United States Patent and Trademark Office (USPTO)
OMB Inventory as of Last Approval Action 9/28/2011

0012 - Requirement

Statute

Rule

Application for Registration to Practice Before the United
States Patent and Trademark Office

35 U.S.C. § 2(b)(2)(D)

37 CFR 11.6 and 11.7

Registration Examination to Become a Registered
Practitioner

35 U.S.C. § 2(b)(2)(D)

37 CFR 11.7(b)(1)(ii)

Petitions to the Director of the Office of Enrollment and
Discipline Under 37 CFR 11.12(c)

35 U.S.C. § 2(b)(2)(D)

37 CFR 10.170

Petition for Reinstatement After Disciplinary Removal Under
37 CFR 11.7(h)

35 U.S.C. § 2(b)(2)(D)

37 CFR 11.7(h)

Reinstatement to the Register

35 U.S.C. § 2(b)(2)(D)

37 CFR 11.11

Annual Practitioner Maintenance Fee

35 U.S.C. § 2(b)(2)(D)

37 CFR 1.21(a)(2)

Annual Fee, Limited Recognition

35 U.S.C. § 2(b)(2)(D)

37 CFR 11.9

Voluntary Inactive Status

35 U.S.C. § 2(b)(2)(D)

37 CFR 11.11

Request for Restoration to Active Status from Voluntary
Inactive Status

35 U.S.C. § 2(b)(2)(D)

37 CFR 11.11

Balance of Annual Fee Due on Restoration to Active Status
from Voluntary Inactive Status

35 U.S.C. § 2(b)(2)(D)

37 CFR 11.8

Delinquency Fee for Annual Fee

35 U.S.C. § 2(b)(2)(D)

37 CFR 11.8

Reinstatement Fee (fee required to be paid after the due date
of the required annual fee)

35 U.S.C. § 2(b)(2)(D)

37 CFR 11.11

0012 - Form and Function

Form #

Needs and Uses

Application for Registration to Practice
Before the United States Patent and
Trademark Office

Form PTO-158








Registration Examination to Become a
Registered Practitioner




No Form
Associated





Used by domestic applicants to apply for registration.
Used by practitioners to ensure that all of the
necessary information is provided to the USPTO.
Used by practitioners to show they have met all of the
necessary requirements.
Used by the USPTO to determine whether the
applicant meets all of the necessary requirements.
Used by the USPTO to determine whether the
applicant possesses good moral character.
Used by the USPTO to register applicants.
Used by domestic applicants to apply for registration.
Used by domestic applicants to ensure that all of the
necessary information is provided to the USPTO.
Used by the USPTO to determine whether the
applicant meets all of the necessary requirements.
Used by the USPTO to determine whether the
applicant possesses good moral character.
Used by the USPTO to register applicants.

0012 - Form and Function

Form #

Needs and Uses

Reinstatement to the Register

Form PTO-107A






Petitions to the Director of the Office of
Enrollment and Discipline Under 37
CFR 11.12(c)



No Form
Associated



Petition for Reinstatement After
Disciplinary Removal Under 37 CFR
11.7(h)



No Form
Associated



Annual Practitioner Maintenance Fee



Form PTO-2126







Used by registered practitioners to respond to periodic
surveys to verify current address and status.
Used by the USPTO to determine whether the
applicant can be included on the Register of Patent
Attorneys and Agents.
Used by the USPTO to determine whether the attorney
or agent may remain on the Register of Patent
Attorneys and Agents.
Used by the USPTO to update current address and/or
status of applicants and registered practitioners.
Used by the public to request in writing that a
requirement of the regulations, which is not a
requirement of the statutes, be suspended or waived
by the Director in an extraordinary situation, when
justice requires.
Used by the USPTO to determine whether a request
that a requirement of the regulations, which is not a
requirement of the statutes, be suspended or waived
by the Director in an extraordinary situation, when
justice requires, should be granted.
Used by practitioners or agents to apply for recognition
or registration after disbarment, suspension on ethical
grounds, or resignation pending disciplinary
proceedings in any other jurisdiction; for asserting
rehabilitation following denial of a previous application
on moral character grounds, or on application for
recognition of registration after conviction of a felony or
a crime involving moral turpitude or breach of fiduciary
duty; and on petition for reinstatement after exclusion
or suspension on ethical grounds, or exclusion on
consent from practice before the USPTO.
Used by the USPTO to process requests for
reinstatement after disciplinary removal.
Used by domestic applicants to request that they be
included on the Register of Patent Attorneys and
Agents.
Used by applicants and registered practitioners to
provide updated information such as addresses.
Used by registered practitioners to respond to periodic
surveys to verify current address and status.
Used by the USPTO to determine whether the
applicant can be included on the Register of Patent
Attorneys and Agents.
Used by the USPTO to determine whether the attorney
or agent may remain on the Register of Patent
Attorneys and Agents.
Used by the USPTO to update current address and/or
status of applicants and registered practitioners.

0012 - Form and Function

Form #

Needs and Uses

Annual Fee, Limited Recognition

Form PTO-2126








Voluntary Inactive Status



Form PTO-2126





Request for Restoration to Active Status
from Voluntary Inactive Status



Form PTO-2126







Balance Due on Restoration to Active
Status from Voluntary Inactive Status



Form PTO-2126







Used by domestic applicants to request that they be
included on the Register of Patent Attorneys and
Agents.
Used by applicants and registered practitioners to
provide updated information such as addresses.
Used by registered practitioners to respond to periodic
surveys to verify current address and status.
Used by the USPTO to determine whether the
applicant can be included on the Register of Patent
Attorneys and Agents.
Used by the USPTO to determine whether the attorney
or agent may remain on the Register of Patent
Attorneys and Agents.
Used by the USPTO to update current address and/or
status of applicants and registered practitioners.
Used by domestic applicants to request that they be
included on the Register of Patent Attorneys and
Agents.
Used by applicants and registered practitioners to
provide updated information such as addresses.
Used by the USPTO to determine whether the
applicant can be included on the Register of Patent
Attorneys and Agents.
Used by the USPTO to determine whether the attorney
or agent may remain on the Register of Patent
Attorneys Used by the USPTO to update current
address and/or status of applicants and registered
practitioners.
Used by domestic applicants to request that they be
included on the Register of Patent Attorneys and
Agents.
Used by applicants and registered practitioners to
provide updated information such as addresses.
Used by registered practitioners to respond to periodic
surveys to verify current address and status.
Used by the USPTO to determine whether the
applicant can be included on the Register of Patent
Attorneys and Agents.
Used by the USPTO to determine whether the attorney
or agent may remain on the Register of Patent
Attorneys and Agents.
Used by the USPTO to update current address and/or
status of applicants and registered practitioners.
Used by domestic applicants to request that they be
included on the Register of Patent Attorneys and
Agents.
Used by applicants and registered practitioners to
provide updated information such as addresses.
Used by registered practitioners to respond to periodic
surveys to verify current address and status.
Used by the USPTO to determine whether the
applicant can be included on the Register of Patent
Attorneys and Agents.
Used by the USPTO to determine whether the attorney
or agent may remain on the Register of Patent
Attorneys and Agents.
Used by the USPTO to update current address and/or
status of applicants and registered practitioners.

0012 - Form and Function

Form #

Needs and Uses

Delinquency Fee for Annual Fee

Form PTO-2126








Reinstatement Fee (fee required to be
paid after the due date of the required
annual fee)



Form PTO-2126







PATENTS 0651-0016
Rules for Patent Maintenance Fees
OMB Inventory as of Last Approval Action 3/10/2009

0016 - 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)

0016 - Form and Function

Form #

Needs and Uses

Maintenance Fee Transmittal Form

PTO/SB/45





Electronic Maintenance Fee Form

No Form
Number





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




(PDF and EFS-Web versions)



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 patents in force.
Used by the USPTO to determine whether or not 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 patents in force.
Used by the USPTO to determine whether or not 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.

PATENTS 0651-0020
Patent Term Extension
OMB Inventory as of Last Approval Action 8/17/2010

0020 - Requirement

Statute

Rule

Application to Extend Patent Term Under 35 U.S.C. § 156

35 U.S.C. § 156(d)(1)-(4)

37 CFR 1.740-1.741

Request for Interim Extension Under 35 U.S.C. § 156(e)(2)

35 U.S.C. § 156(e)(2)

37 CFR 1.760

Initial Application for Interim Extension Under 35 U.S.C. § 156(d)(5)

35 U.S.C. § 156(d)(5)

37 CFR 1.790

Subsequent Application for Interim Extension Under
37 CFR 1.790

35 U.S.C. § 156(d)(5)

37 CFR 1.790

Petition for Reinstatement of Reduced Patent Term Adjustment

35 U.S.C. § 154(b)(3)(C)

37 CFR 1.705

0020 - Form and Function

Form #

Needs and Uses

Application to Extend Patent Term
Under 35 U.S.C. § 156

No Form
Associated




Used by the public to apply for a patent term extension.
Used by the USPTO and the Department of Health and Human
Services or the Department of Agriculture to determine eligibility
of a patent for extension and to determine the period of
extension.

Request for Interim Extension Under
35 U.S.C. § 156(e)(2)

No Form
Associated




Used by the public to request an interim extension.
Used by the USPTO to trigger an interim extension before
processing of the application has been completed.

Initial Application for Interim Extension
Under 35 U.S.C. § 156(d)(5)

No Form
Associated




Used by the public to apply for an interim extension.
Used by the USPTO to determine eligibility of a patent for interim
extension.

Subsequent Application for Interim
Extension Under 35 CFR 1.790

No Form
Associated




Used by the public to apply for a subsequent interim extension.
Used by the USPTO to determine eligibility of a patent for
subsequent interim extension.

Petition for Reinstatement of Reduced
Patent Term Adjustment

No Form
Associated



Used by the patentee to request reinstatement of reduced patent
term adjustment.
Used by the USPTO to determine whether the patentee is
entitled to reinstatement of reduced patent term adjustment.



PATENTS 0651-0021
Patent Cooperation Treaty
OMB Inventory as of Last Approval Action 4/8/2010

0021 - Requirement

Statute

Rule

Request and Fee Calculation

PCT Articles 3 and 4, 35 U.S.C.
§§ 361 and 376

PCT Rules 3, 4, 14-16, 37
CFR 1.431-1.434, 1.445

Transmittal Letter to the RO/US

35 U.S.C. §§ 184 and 361

37 CFR 1.10, 1.412

Transmittal Letter to the DO/EO/US

35 U.S.C. §§ 363 and 371

37 CFR 1.414, 1.491-1.492

Demand and Fee Calculation

PCT Article 31, 35 U.S.C. §§ 362
and 376

PCT Rules 53-61, 37 CFR
1.480-1.482

Acceptance of an Unintentionally Delayed Claim for
Priority (37 CFR 1.78(a)(3))

35 U.S.C. § 119(e) and 35 U.S.C.
§ 120

37 CFR 1.78

Request for the Restoration of the Right of Priority

PCT Article 8

PCT Rule 26 .3

0021 - Form and Function

Form #

Needs and Uses

Request and Fee Calculation Sheet
(Annex and Notes)

PCT/RO/101







Transmittal Letter to the United States
Receiving Office (RO/US)



PTO-1382



Transmittal Letter to the United States
Designated/Elected Office (DO/EO/US)
Concerning a Filing Under 35 U.S.C. §
371



PTO-1390



bis

Used by the public to supply the information required for
an international patent application.
The optional Fee Calculation Sheet may be used by the
public to indicate the amount of money being submitted
and how the money is to be applied.
The public uses the Fee Calculation Sheet or Annex as
an attachment to the PCT Request.
Used by the USPTO to process the international
application according to the PCT.
Used by the USPTO to verify the calculations and to
identify any errors in them.
Used by the public as a cover letter to supply a
certification if the application was submitted via Express
Mail and entitles an applicant to obtain a filing date as of
the date of deposit with the postal authorities.
Used by the public for security clearance purposes to
supply information concerning the similarity or differences
between the subject matter disclosed in the international
application and any national application filed earlier in the
USPTO.
Used by the public as a transmittal letter for extensions of
time, power of attorney, general power of attorney,
substitute sheets, priority documents, fee payments,
obvious error rectification, and other items.
Used by the USPTO to screen and certify the
accompanying international application for the purpose of
determining whether a license for foreign transmittal
should and could be granted and for other purposes.
Used by the public to submit the required materials and
fees for examination of an international application to the
USPTO as the U.S. Designated Office or Elected Office.
Used by the USPTO to fulfill its role as the U.S.
Designated Office or Elected Office to process and
examine international patent applications entering the
national stage.

0021 - Form and Function

Form #

Needs and Uses

Demand and Fee Calculation Sheet
(Annex and Notes)

PCT/IPEA/401






Acceptance of an Unintentionally
Delayed Claim for Priority (37 CFR
1.78(a)(3))

No Form Associated




Request for the Restoration of the Right
of Priority

No Form Associated




Used by the public to request examination of the
international application under Chapter II of the PCT.
The PCT Fee Calculation Sheet or Annex is used by the
public to calculate the fees that are due and being
submitted.
Used by the USPTO to conduct an international
preliminary examination of an international application
under Chapter II of the PCT.
The PCT Fee Calculation Sheet is used by the USPTO to
properly credit the fees that are due and submitted.
Used by the public to claim benefit of the filing date of a
prior filed application which has at least one common
inventor if filed outside the time period.
Used by the USPTO to grant relief if the conditions are
met.
Used by the public to allow a priority claim to an earlier
application even if the international application is filed
outside the priority period.
Used by the USPTO to grant relief if the conditions are
met.

DISSEMINATION 0651-0027
Recording Assignments
OMB Inventory as of Last Approval Action 3/25/2009

0027 - Requirement

Statute

Rule

Patent Recordation Form Cover Sheet

35 U.S.C. §§ 261 and 262

37 CFR 3.11, 3.21, 3.24, 3.26, 3.28,
3.31, 3.34, and 3.41

Trademark Recordation Form Cover Sheet

15 U.S.C. §§ 1057 and 1060

37 CFR 3.11, 3.16, 3.25, 3.26, 3.28,
3.31, 3.34, and 3.41; 37 CFR 2.146 and
2.171

Electronic Patent Assignment System (EPAS)

35 U.S.C. §§ 261 and 262

37 CFR 3.11, 3.21, 3.24, 3.26, 3.28,
3.31, 3.34, and 3.41

Electronic Trademark Assignment System (ETAS)

15 U.S.C. §§ 1057 and 1060

37 CFR 3.11, 3.16, 3.25, 3.26, 3.28,
3.31, and 3.34, 3.41; 37 CFR 2.146 and
2.171

0027 - Form and Function
Patent Recordation Form Cover Sheet

Form #
PTO-1595

Needs and Uses





Trademark Recordation Form Cover
Sheet

PTO-1594






Electronic Patent Assignment System
(EPAS)

PTO-1595






Electronic Trademark Assignment
System (ETAS)

PTO-1594






Used by the public to submit assignment documents indicating the
transfer of rights, title, and interest in a patent property from one
party to another for recording by the USPTO.
Used by the public to submit corrected cover sheets or documents
to the USPTO for recording.
Used by the USPTO to process and record patents, patent
assignments, or other associated documents.
Used by the USPTO to ensure that all relevant bibliographic data is
entered in the files and the searchable public database.
Used by the public to submit assignment documents indicating the
transfer of rights, title, and interest in a trademark property from one
party to another for recording by the USPTO.
Used by the public to submit corrected cover sheets or documents
to the USPTO for recording.
Used by the USPTO to process and record marks, assignments, or
other associated documents.
Used by the USPTO to ensure that all relevant bibliographic data is
entered in the files and the searchable public database.
Used by the public to submit patent assignment documents online
through the USPTO web site.
Used by the public to submit corrected cover sheets or documents
to the USPTO for recording.
Used by the USPTO to process and record patents, patent
assignments, or other associated documents.
Used by the USPTO to ensure that all relevant bibliographic data is
entered in the files and the searchable public database.
Used by the public to submit trademark assignment documents
online through the USPTO web site.
Used by the public to submit corrected cover sheets or documents
to the USPTO for recording.
Used by the USPTO to process and record patents, patent
assignments, or other associated documents.
Used by the USPTO to ensure that all relevant bibliographic data is
entered in the files and the searchable public database.

PATENTS 0651-0031
Patent Processing (Updating)
OMB Inventory as of Last Approval Action 12/6/2011

0031 - Requirement

Statute

Rule

Information Disclosure Statements and eIDS

35 U.S.C. § 2(b)(2)

37 CFR 1.56, 1.97 and 1.98

Petitions for Extension of Time Under 37 CFR 1.136(a)

35 U.S.C. §§ 2(b)(2), 41(a)(8),
131 and 132

37 CFR 1.136

Disclaimers

35 U.S.C. § 253

37 CFR 1.321

Request for Expedited Examination of a Design Application

35 U.S.C. § 2(b)(2)

37 CFR 1.155

Notice of Appeal

35 U.S.C. § 134

37 CFR 1.191

Petitions to Revive Unintentionally or Unavoidably
Abandoned Applications

35 U.S.C. §§ 41(a)(7), 111,
133, 151 and 371(d)

37 CFR 1.137

Request for Continued Examination (RCE) Transmittal

35 U.S.C. § 132(b)

37 CFR 1.114

Request for Continued Examination (RCE) Transmittal
EFS-Web

35 U.S.C. § 132(b)

37 CFR 1.114

Written Request for an Oral Appeal Hearing Before the
Board, filed in a separate paper from the appeal itself

35 U.S.C. § 134

37 CFR 1.194(b)

Request for Voluntary Publication or Republication

35 U.S.C. § 2(b)(2)

37 CFR 1.221

Processing Fee Under 37 CFR 1.17(i) Transmittal

35 U.S.C. § 2(b)(2)

37 CFR 1.17(i)

Pre-Appeal Brief Request for Review

35 U.S.C. §§ 2(b)(2) and 134

37 CFR 41.32

0031 - Form and Function

Form #

Needs and Uses

Information Disclosure Statements

PTO/SB/08a/
08b and EFSWeb



Petitions for Extension of Time

PTO/SB/22






Disclaimers

PTO/SB/25/26/
43/62/63





Used by the applicant to meet the applicant’s duty of
disclosure under 37 CFR 1.56.
Used by the USPTO when printing the patent document.
Used by the applicant to request an extension of time.
Used by the USPTO to determine whether the reason for
requesting an extension is sufficient for granting it.
Used by the USPTO to decide the correct fee, based upon the
number of months of extension requested, and whether or not
the applicant is entitled to small entity status.
Used by the applicant or assignee to disclaim the entire term
or part of a term of a patent or a patent to be granted.
Used by the USPTO to determine whether all owners have
provided the required terminal disclaimer and to determine the
length of the patent term to which the patentee is entitled.
Used by the Certificate of Corrections branch of the USPTO
for determining whether regulatory compliance has been met,
for recording the disclaimer, and for providing the disclaimer
data for printing.

0031 - Form and Function

Form #

Needs and Uses

Request for Expedited Examination of a
Design Application

PTO/SB/27




Used by the applicant to request expedited examination of a
design application.
Used by the USPTO to ensure that all of the required
information to expedite examination is provided and to
process the request.

Notice of Appeal

PTO/SB/31




Used by the applicant to file a Notice of Appeal.
Used by the USPTO to ensure that applicants comply with
regulations when filing a Notice of Appeal.

Petitions to Revive Unintentionally or
Unavoidably Abandoned Applications

PTO/SB/61/64



Used by the applicant to request that applications that were
unintentionally or unavoidably abandoned be revived.
Used by the USPTO to ensure that applicants have included
all the proper documentation and fees necessary to revive an
unintentionally or unavoidably abandoned application.



Request for Continued Examination
(RCE)

PTO/SB/30




Request for Continued Examination
(RCE) EFS-Web

PTO/SB/30EFS




Request for Oral Hearing Before the
Board of Patent Appeals and
Interferences

PTO/SB/32

Request for Voluntary Publication or
Republication

EFS-Web Only








Processing Fee Under 37 CFR 1.17(i)
Transmittal

PTO/SB/17i




Pre-Appeal Brief Request for Review

PTO/SB/33




Used by the applicant to request continued examination of a
previously submitted application.
Used by the USPTO to process and initiate continued
examination of a previously submitted application.
Used by the applicant to request continued examination of a
previously submitted application.
Used by the USPTO to process and initiate continued
examination of a previously submitted application.
Used by the applicant to file a written request in a separate
paper for an oral hearing before the Board.
Used by the USPTO to process and consider the request for
an oral appeal hearing.
Voluntary Publication: Used by the applicant to request
publication of an application filed prior to November 29, 2000.
Republication: Used by the applicant to correct prior
application publications containing material errors caused by
the USPTO, or to correct other data, such as claims that
previously published as part of an application publication.
Used by the USPTO to publish an application filed prior to
November 29, 2000, or to correct prior application publication
errors.
Used by the applicant to identify the proper fee, and thus
reduce the potential for any additional work due to mistakes in
payment.
Used by the USPTO to process the appropriate fees.
Used by the applicant to request that a panel of examiners
formally review the basis of the rejections in their application
prior to filing an appeal brief.
Used by the USPTO to determine whether an appeal should
be maintained.

PATENTS 0651-0032
Initial Patent Applications
OMB Inventory as of Last Approval Action 1/18/2011

0032 - Requirement

Statute

Rule

Specification and Claim

35 U.S.C. §§ 111 and 112

37 CFR 1.51-1.53, 1.57-1.58, and
1.71-1.78

Drawing(s)

35 U.S.C. § 113

37 CFR 1.51-1.53, 1.58, and 1.811.84

Declaration

35 U.S.C. §§ 25, 115, 117,
and 118

37 CFR 1.41-1.43, 1.45-1.48,
1.51-1.53, and 1.63-1.69

Filing Fee

35 U.S.C. §§ 41 and 111

37 CFR 1.16 and 1.53

Continued Prosecution Application – Design (Request
Transmittal and Receipt)

35 U.S.C. §§ 111,120, and
121

37 CFR 1.53(d) and 1.78

Papers Filed Under 37 CFR 1.41 to Supply the Name or
Names of the Inventor or Inventors After the Filing Date
Without a Cover Sheet as Prescribed by 37 CFR
1.51(c)(1) in a Provisional Application

35 U.S.C. §§ 111(b) and 116

37 CFR 1.41(a)(2)

Papers Filed Under 37 CFR 1.48 for Correction of
Inventorship in a Provisional Application

35 U.S.C. § 111(b) and 116

37 CFR 1.48

Papers Filed Under 37 CFR 1.53(c)(2) to Convert a
Nonprovisional Application Filed Under 1.53(b) to a
Provisional Application Filed Under 1.53(c)

35 U.S.C. § 111(a) and (b)

37 CFR 1.53(b) and 1.53(c)(2)

0032 - Form and Function

Form #

Needs and Uses

Specification (includes at least one
claim) and Drawing(s)

No Form
Associated




Patent Application Fee Determination
Record (Substitute for Form PTO-875)
Multiple Dependent Claim Fee
Calculation Sheet (Substitute for Form
PTO-1360; For Use with Form
PTO/SB/06)

PTO/SB/06

Used by the applicant to provide a description of the invention
and of the property right sought by the applicant (the claim(s)).
Used by the USPTO to examine an application for patent, and
when appropriate, issue the application as a patent.



Used by the USPTO to determine the appropriate fees for
small and non-small entities and for applications containing
multiple dependent claims. NOTE: These forms are seldom
used by applicants, but in the event that an applicant obtained
these forms, their use would reduce fee calculation errors,
especially in those applications containing multiple dependent
claims.

PTO/SB/07

Fee Transmittal Form

PTO/SB/17




Used by applicants to determine fees.
Used by the USPTO to verify applicant fee determination and
to process the fee.

Utility Patent Application Transmittal

PTO/SB/05



Design Patent Application Transmittal

PTO/SB/18



Plant Patent Application Transmittal

PTO/SB/19

Used by the applicant as a checklist to highlight information
which may otherwise have been overlooked at the time of
filing.
Used by the applicant to provide identifying information about
the submitted papers and himself/herself.
Used by the USPTO to determine whether the submitted
papers constitute an application for patent, whether it is a
utility, plant, or design application.



0032 - Form and Function

Form #

Needs and Uses

Declaration for Utility or Design Patent
Application (37 CFR 1.63)

PTO/SB/01







Declaration – Additional Inventors –
Supplemental Sheet

PTO/SB/02A







Assures that an applicant meets all of the requirements of 37
CFR 1.63 by providing the prerequisite language.
Used by applicants to easily claim the benefit of an earlier
application under 35 U.S.C. § 119 or § 365.
Enables the legal representative of a deceased inventor to file
a patent application by signing the declaration on the behalf of
a deceased or incapacitated inventor.
Assures that an applicant will provide necessary information
(most often overlooked).
Used by the USPTO to determine whether the required
information has been set forth in the declaration.
Assures that an applicant meets all of the requirements of 37
CFR 1.63 by providing the prerequisite language.
Used by applicants to easily claim the benefit of an earlier
application under 35 U.S.C. § 119 or § 365.
Enables the legal representative of a deceased inventor to file
a patent application by signing the declaration on the behalf of
a deceased or incapacitated inventor.
Assures that an applicant will provide necessary information
(most often overlooked).
Used by the USPTO to determine whether the required
information has been set forth in the declaration.

0032 - Form and Function

Form #

Needs and Uses

Declaration – Supplemental Priority Data
Sheet

PTO/SB/02B



Declaration (Additional Inventors) and
Supplemental Priority Data Sheets [2
pages] (Chinese Language Declaration
for Additional Inventors)

PTO/SB/02CN

Declaration (Additional Inventors) and
Supplemental Priority Data Sheets [2
pages] (German Language Declaration
for Additional Inventors)

PTO/SB/02DE

Declaration (Additional Inventors) and
Supplemental Priority Data Sheet [2
pages] (Spanish Language Declaration
for Additional Inventors)

PTO/SB/02ES

Declaration (Additional Inventors) and
Supplemental Priority Data Sheet [2
pages] (French Language Declaration for
Additional Inventors)

PTO/SB/02FR

Declaration (Additional Inventors) and
Supplemental Priority Data Sheet [2
pages] (Italian Language Declaration for
Additional Inventors)

PTO/SB/02IT

Declaration (Additional Inventors) and
Supplemental Priority Data Sheet [2
pages] (Japanese Language Declaration
for Additional Inventors)

PTO/SB/02JP

Declaration (Additional Inventors) and
Supplemental Priority Data Sheet [2
pages] (Korean Language Declaration
for Additional Inventors)

PTO/SB/02KR

Declaration (Additional Inventors) and
Supplemental Priority Data Sheet [2
pages] (Dutch Language Declaration for
Additional Inventors)

PTO/SB/02NL

Declaration (Additional Inventors) and
Supplemental Priority Data Sheet [2
pages] (Russian Language Declaration
for Additional Inventors)

PTO/SB/02RU

Declaration (Additional Inventors) and
Supplemental Priority Data Sheet [2
pages] (Swedish Language Declaration
for Additional Inventors)

PTO/SB/02SE

Declaration Supplemental Sheet for
Legal Representatives (35 U.S.C. § 117)
on Behalf of a Deceased or
Incapacitated Inventor

PTO/SB/02LR

Plant Patent Application (35 U.S.C. §
161) Declaration (37 CFR 1.63)

PTO/SB/03

Supplemental Declaration for Utility or
Design Patent Application (37 CFR 1.67)

PTO/SB/04












0032 - Form and Function

Form #

Needs and Uses

Declaration and Power of Attorney for
Patent Application (in various foreign
languages)

PTO/SB/101
through 110




Perform the same functions as SB/01, 03, and 04.
Provide the applicant with a native (to the applicant) language
version with English translation of the required declaration.
Chinese, Dutch, German, Italian, French, Japanese, Russian,
Swedish, Spanish, and Korean language declarations are
available.

Application Data Sheet Form

PTO/SB/14
and EFS-Web



Provides applicant with a convenient manner to provide
bibliographic information concerning the applicant and
application that the applicant is either required, or desires, to
provide to the USPTO.
Used by the USPTO to autoload data directly into USPTO
databases, which reduces information capture errors caused
by hand keying.
Used by the USPTO to provide a quick acknowledgment of the
application and the information in USPTO records concerning
the applicant and application.




Declaration (37 CFR 1.63) for Utility or
Design Application Using an Application
Data Sheet (37 CFR 1.76)

PTO/SB/01A

Declaration (37 CFR 1.63) for Plant
Application Using an Application Data
Sheet (37 CFR 1.76)

PTO/SB/03A

Request for Filing a Continuation or
Division of an International Application

PTO/SB/13/
PCT






For Design Applications Only: Continued
Prosecution Application (CPA) Request
Transmittal

PTO/SB/29

For Design Applications Only: Receipt
for Facsimile Transmitted CPA

PTO/SB/29A

Provisional Application for Patent Cover
Sheet – Paper and Electronic Filing

PTO/SB/16
and EFS-Web










Electronic New Utility Patent Application

EFS-Web




Electronic New Design Application

EFS-Web




Provides applicant with a convenient manner to provide a
declaration containing the minimal information that must be in
the oath or declaration if the application also contains an
application data sheet.
Used by the USPTO to process the declaration.

Used by applicant to file a continuation or divisional of an
international application.
Used by the USPTO to process a continuation or divisional of
an international application.

Used by the applicant to request additional examination of a
previously submitted design application.
Used by the USPTO to process and initiate an additional
examination of a previously submitted design application.

Used by the applicant to file a provisional application with the
USPTO.
Used by the applicant to include filing fees.
Used by the USPTO to identify provisional applications in order
to promptly and properly process them.
Used by the USPTO to prepare the filing receipt.
Used by the USPTO to identify provisional applications that
may require foreign filing licenses.
Used by filers to electronically file a new original utility
application with the USPTO and to include the necessary filing
fees.
Used by the USPTO to examine an application for patent, and
when appropriate, issue the application as a patent.
Used by filers to electronically file a new original design
application with the USPTO and to include the necessary filing
fees.
Used by the USPTO to examine an application for patent, and
when appropriate, issue the application as a patent.

0032 - Form and Function

Form #

Needs and Uses

Papers Filed Under 37 CFR 1.41 to
Supply the Name or Names of the
Inventor or Inventors After the Filing Date
Without a Cover Sheet as Prescribed by
37 CFR 1.51(c)(1) in a Provisional
Application

No Form
Associated



Papers Filed Under 37 CFR 1.48 for
Correction of Inventorship in a
Provisional Application

No Form
Associated

Papers Filed Under 37 CFR 1.53(c)(2) to
Convert a Nonprovisional Application
Filed Under 1.53(b) to a Provisional
Application Filed Under 1.53(c)

No Form
Associated








Used by filers to supply or change the name or names of the
inventor or inventors of a provisional application filed without a
cover sheet after the provisional application filing date.
Used by the USPTO to change the name or names of the
inventor or inventors of a provisional applications filed without
a cover sheet after the provisional application filing date.
Used by filers to request a correction of the inventorship of a
provisional application.
Used by the USPTO to determine whether the inventorship of
a provisional application should be corrected.
Used by filers to request that a nonprovisional application filed
under 1.53(b) be converted to a provisional application filed
under 1.53(c).
Used by the USPTO to determine whether to convert a
nonprovisional application filed under 1.53(b) to a provisional
application filed under 1.53(c).

PATENTS 0651-0033
Post Allowance and Refiling
OMB Inventory as of Last Approval Action 1/30/2012

0033 - Requirement

Statute

Rule

Certificate of Correction

35 U.S.C. §§ 254 and 255

37 CFR 1.322-1.325

Reissue Application Documentation

35 U.S.C. §§ 251 and 252

37 CFR 1.171-1.179

Issue Fee Transmittal

35 U.S.C. §§ 41(a) and 151

37 CFR 1.18 and 1.311-1.317

0033 - Form and Function

Form #

Needs and Uses

Certificate of Correction

PTO/SB/44





Reissue Application Fee
Transmittal Form

PTO/SB/56




Used by the patentee to list the number of the patent to be corrected and
the corrections to be made.
Facilitates matching the patent or patent file with other identifying
information in order to make the appropriate corrections.
Used by the USPTO to determine whether the indicated corrections
should be approved.
Used by the applicant or the applicant’s representatives to calculate the
reissue application fee.
Used by the USPTO to determine the appropriate reissue application
fee.

Issue Fee Transmittal

PTOL-85B




Used by the public to submit an issue fee payment to the USPTO.
Used by the USPTO to determine whether all of the appropriate
information is included at the time of payment of the issue fee, such as
assignments, small entity status, method of payment, and certificate of
mailing.

Issue Fee Transmittal (EFSWeb)

PTOL-85B



Used by the public to submit an issue fee payment to the USPTO
electronically.
Used by the USPTO to determine whether all of the appropriate
information is included at the time of payment of the issue fee, such as
assignments, small entity status, and method of payment.



PATENTS 0651-0036
Statutory Invention Registration
OMB Inventory as of Last Approval Action 1/30/2012

0036 - Requirement

Statute

Rule

Request for Statutory Invention Registration

35 U.S.C. § 157

37 CFR 1.293 - 1.294 and 1.297

Petition to Withdraw SIR Publication Request

35 U.S.C. § 157

37 CFR 1.296

0036 - Form and Function

Form #

Needs and Uses

Request for Statutory Invention
Registration

PTO/SB/94





Petition to Withdraw SIR Publication
Request

No Form
Associated




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 the public to request withdrawal of a request to
publish a statutory invention registration.
Used by the USPTO to review a petition to withdraw a
request for publication of a statutory invention registration.

PATENTS 0651-0059
Certain Patent Petitions Requiring a Fee
OMB Inventory as of Last Approval Action 7/15/2011

0059 - Requirement

Statute

Rule

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

35 U.S.C. §§ 131 and 132

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

Petitions (requiring the fee) Under 37 CFR 1.17(g):
 Petition to Access an Assignment Record
 Petition for Access to an Application
 Petition for Expungement and Return of Information
 Petition to Suspend Action in an Application

35 U.S.C. §§ 131 and 132

37 CFR 1.12, 1.14, 1.17(g),
1.59, and 1.102

Petitions (requiring the fee) Under 37 CFR 1.17(h):
 Petition for Accepting Color Drawings or Photographs
 Petition for Entry of a Model or Exhibit
 Petition to Withdraw an Application from Issue
 Petition to Defer Issuance of a Patent

35 U.S.C. §§ 131 and 132

37 CFR 1.17(h), 1.84, 1.91,
1.103(d), 1.313, and 1.314

0059 - Form and Function

Form #

Needs and Uses

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

No Form
Associated




EFS-Web Petitions (requiring the fee)
Under 37 CFR 1.17(f)

No Form
Associated












Petitions (requiring the fee) Under 37 CFR
1.17(g) include:
 Petition to Access an Assignment
Record
 Petition for Access to an Application
 Petition for Expungement and Return
of Information
 Petition to Suspend Action in an
Application

No Form
Associated










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

Used by the applicant to request agreement to a filing date.
Used by the public to request a decision on a question not
specifically provided for.
Used by the applicant to ask for suspension of the rules.
Used by the USPTO to agree to a filing date.
Used by the USPTO to grant a decision on a question not
specifically provided for.
Used by the USPTO to agree to a suspension of the rules.
Used by the applicant to request access to an assignment
record.
Used by the applicant to request access to an application.
Used by the applicant to request expungement and return of
information.
Used by the applicant to request to suspend action in an
application.
Used by the USPTO to grant access to an assignment record.
Used by the USPTO to grant access to an application.
Used b the USPTO to expunge and return information.
Used by the USPTO to suspend action on an application.

0059 - Form and Function

Form #

Needs and Uses

EFS-Web Petitions (requiring the fee)
Under 37 CFR 1.17(g)

No Form
Associated










Petitions (requiring the fee) Under 37 CFR
1.17(h) include:
 Petition for Accepting Color Drawings
or Photographs
 Petition for Entry of a Model or
Exhibit
 Petition to Withdraw an Application
from Issue
 Petition to Defer Issuance of a Patent

No Form
Associated












EFS-Web Petitions (requiring the fee)
Under 37 CFR 1.17(h)
 Petition to Withdraw an Application
from Issue (PTO/SB/140)

No Form
Associated,
except for
PTO/SB/140
for Petitions to
Withdraw an
Application
from Issue












Used by the applicant to request access to an assignment
record.
Used by the applicant to request access to an application.
Used by the applicant to request expungement and return of
information.
Used by the applicant to request to suspend action in an
application.
Used by the USPTO to grant access to an assignment record.
Used by the USPTO to grant access to an application.
Used by the USPTO to expunge and return information.
Used by the USPTO to suspend action on an application.
Used by an applicant to submit color drawings or
photographs.
Used by an applicant to submit a model or exhibit.
Used by an applicant to request withdrawal of an application
from issue before paying the issue fee.
Used by an applicant to request withdrawal of an application
from issue after paying the issue fee.
Used by an applicant to request permission to defer issuance
of a patent.
Used by the USPTO to accept color drawings or photographs
from an applicant.
Used by the USPTO to accept a model or exhibit.
Used by the USPTO to ensure that all of the necessary
information has been supplied to withdraw an application from
issue before the issue fee has been paid by the applicant.
Used by the USPTO to ensure that all of the necessary
information has been supplied to withdraw an application from
issue after the issue fee has been paid by the applicant.
Used by the USPTO to defer issuance of a patent.
Used by an applicant to submit color drawings or
photographs.
Used by an applicant to submit a model or exhibit.
Used by an applicant to request withdrawal of an application
from issue before paying the issue fee.
Used by an applicant to request withdrawal of an application
from issue after paying the issue fee.
Used by an applicant to request permission to defer issuance
of a patent.
Used by the USPTO to accept color drawings or photographs
from an applicant.
Used by the USPTO to accept a model or exhibit.
Used by the USPTO to ensure that all of the necessary
information has been supplied to withdraw an application from
issue before the issue has been paid by the applicant.
Used by the USPTO to ensure that all of the necessary
information has been supplied to withdraw an application from
issue after the issue fee has been paid by the applicant.
Used by the USPTO to defer issuance of a patent.

LEGAL 0651-0063
Board of Patent Appeals and Interferences (BPAI) Actions
OMB Inventory as of Last Approval Action 12/6/2011

0063 - Requirement

Statute

Rule

Appeal Brief

35 U.S.C. § 134

37 CFR 41.37

0063 - Form and Function

Form #

Needs and Uses

Appeal Brief

No Form
Associated




Used by the applicant to set forth the claims, issues, and
arguments on appeal to the BPAI.
Used by the BPAI to aid in rendering a decision on the claims,
issues, and arguments submitted by the applicant.

File Type	application/pdf
File Modified	2012-07-19
File Created	2012-07-19