0651-0072 AC54 Supp Stmt 12-12-12

SUPPORTING STATEMENT
United States Patent and Trademark Office
America Invents Act Section 10 Patent Fee Adjustments
OMB CONTROL NUMBER 0651-0072
(December 2012)
A.

JUSTIFICATION

1.

Necessity of Information Collection

The United States Patent and Trademark Office (“USPTO” or “Office”) is submitting this
request in support of the Final Rule titled “Setting and Adjusting Patent Fees” (RIN
0651-AC54)
The USPTO is setting or adjusting patent fees as authorized by the Leahy-Smith
America Invents Act (“Act” or “AIA”) Pub.L.112-29. The revised fees will provide the
Office with a sufficient amount of aggregate revenue to recover its aggregate cost of
patent operations and will help the Office implement a sustainable funding model,
reduce the current patent application backlog, decrease patent pendency, improve
patent quality, and upgrade the Office’s patent business information technology (“IT”)
capability and infrastructure. The Office also introduced reduced fees for a new class of
patent applicants, “micro entities,” under section 10(g) of the Act and included multipart
and staged fees for requests for continued examination (“RCEs”), appeals, and some of
the newly created AIA administrative trial services. The revised fee schedule will foster
innovation and increase application processing options.
Section 10(a) of the Act authorizes the Director of the USPTO to set or adjust by rule
any patent fee established, authorized, or charged under Title 35, United States Code
(“U.S.C.”) for any services performed by, or materials furnished by, the Office.
When fees are set or adjusted, the aggregate revenue from the patent fees may only be
set to recover the aggregate estimated costs to the Office for processing, activities,
services, and materials relating to patents, including administrative costs to the Office
with respect to such patent operations.
Under section 10(b) of the AIA, eligible small entities shall receive a 50 percent fee
reduction from the large entity fees for filing, searching, examining, issuing, appealing,
and maintaining patent applications and patents. The Act further provides that micro
entities shall receive a 75 percent fee reduction for filing, searching, examining, issuing,
appealing, and maintaining patent applications and patents.
The Office is setting or adjusting 351 patent fees – 93 apply to large entities (herein the
reference to “large entity” includes all entities other than small or micro entities), 94
apply to small entities, 93 apply to micro entities, and 71 are not entity-specific fees. Of
the 93 large-entity fees, 71 are adjusted by this rulemaking package, 18 are set at
existing fee amounts, and 4 are new in this rulemaking. Of the 94 small-entity fees, 85

are adjusted by this rulemaking package, 5 are set at existing fee amounts, and 4 are
new in this rulemaking. The 94 small-entity fees are set at a 50 percent reduction from
the large-entity fee amounts. The 93 new micro-entity fees in this rule are set at a
reduction of 75 percent from the large-entity fee amounts. Of the 71 fees that are not
entity-specific, 9 are adjusted in this rulemaking package and 62 are set at existing fee
amounts.
This information collection request is submitted as a fee-based burden collection to best
provide data for the fee adjustment burden impact of the final rule. The USPTO will
maintain the information requirements and non-fee burden for the information collection
items within the separate collections in which these items were previously submitted to
OMB and approved. This new collection will be maintained for fee burden adjustments
only. The relevant fee burdens will be removed from their existing collections through
non-substantive change requests to discontinue counting those burdens twice and
overstating the total respondent burden in the USPTO inventory.
This information collection request includes:


“Correct Inventorship After First Office Action on the Merits.” This is an item
introduced in this rulemaking. The information collection requirements for this
item will eventually be moved into 0651-0031 Patent Processing (Updating), and
the fee will remain in this collection.



“Petitions to the Chief Administrative Patent Judge Under 37 CFR 41.3.” This is
an item that is not covered by an existing information collection request and is
added to this submission because the fee is affected by this rulemaking. The
information requirements for this item will eventually be moved into 0651-0063
Board of Patent Appeals and Interferences (BPAI) Actions, and the fee will
remain in this collection.



Fee adjustments to existing and pending items in the agency inventory.
Information requirements for those items will remain in their respective
collections and only the corresponding fees (as adjusted by the final rule) are
submitted for this collection.



Response adjustments to existing and pending items in the agency inventory
projected to be impacted by the fee adjustments because changes in some fees
are expected to change demand for those services, which changes the number
of responses. Information requirements for those items will remain in their
respective collections and only the corresponding fees are submitted for this
collection. The response adjustments are offered here solely for the purpose of
capturing the total impact on burden due to the final rule.

This information collection request includes this supporting statement as well as three
supplemental reference documents in the form of appendices:

2

Appendix A (Existing Information Collections):
Statutory and regulatory
provisions, and needs and uses for items in existing information collections with
fee adjustments requested in this new collection.
Appendix B (Pending Information Collections):
Statutory and regulatory
provisions, and needs and uses for items in pending information collections with
fee adjustments requested in this new collection.
Appendix C (Existing and Pending Collections and Fees Added in This Collection
Request): Fee burden calculations, broken out by item and fee category, and
response adjustments and effects on (hourly) cost burden.
Table 1 identifies the statutory and regulatory provisions that authorize the USPTO to
collect the information for the two requirements added in this information collection
request:
Table 1: Information Requirements Added in this Collection
Requirement

Statute

Rule

1

Correct Inventorship After First Office Action on the Merits

35 U.S.C. § 115

37 CFR 1.17(d)

2

Petitions to the Chief Administrative Patent Judge Under 37 CFR 41.3

35 U.S.C. § 134

37 CFR 41.3

2.

Needs and Uses

The public uses this information collection to pay their required fees and communicate
with the USPTO regarding their applications and patents procedures. The USPTO uses
these fees to process applicants’ patent applications and to process applicants’
requests for various procedures in application and post-grant patent processing and all
other associated services of the USPTO. See Table 2, Appendix A and Appendix B for
a listing of all Needs and Uses in the existing and pending collections.
Table 2 outlines how the two information requirements introduced in this submission are
used by the public and by the USPTO:
Table 2: Needs and Uses for Information Requirements Added in this Collection
Form and Function

Form #

Needs and Uses

1

Correct Inventorship After First
Office Action on the Merits

No Form

 Permits individuals to either add previously unnamed persons as
inventors or to delete previously named persons as inventors after
the first office action on the merits.
 Allows the USPTO to correct the inventorship in a patent
application.

2

Petitions to the Chief
Administrative Patent Judge Under
37 CFR 41.3

No Form

 Permits parties to petition the Chief Administrative Patent Judge on
matters pending before the Board of Patent Appeals and
Interferences.
 Used by the Board of Patent Appeals and Interferences to
determine whether the necessary information has been provided to
grant the petition.

3

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., OMB and specific
operating unit guidelines.
3.

Use of Information Technology

The USPTO uses an extensive catalog of automated information systems to both collect
fee payments from applicants and to ensure compliance with procedural and payment
requirements. The Department of the Treasury’s Financial Management Service
(“FMS”) also collects user fees on behalf of USPTO; maintenance fees may be paid via
deposit to an FMS lockbox. FMS incurs the administrative cost of lockbox payments
received from USPTO payers. The primary payment processing system at the USPTO
is the Revenue Accounting Management (“RAM”) System. Patent fee payments are
accepted through credit cards, Pay.gov-accepting credit cards or automated clearing
house (“ACH”) transfers, lockbox electronic check processing (“ECP”), and Treasury
General Account (“TGA”) deposits. USPTO also accepts replenishments to deposit
accounts through wire transfers, lockbox ECP, and TGA deposits. Payments for some
fees from foreign sources are sent through wire transfers. Payers for patent fees are
individuals, attorneys, law firms, small businesses, non-profits, and large corporations.
Patent fees are also paid by annuity companies.
Likewise, in many cases, forms associated with fee collection are available at the
USPTO website, www.uspto.gov, in ADOBE© portable document format (“PDF”) or
form-fillable ADOBE© PDF when possible. The Office also allows the public to set up
accounts online for fee payments.
4.

Efforts to Identify Duplication

The information associated with the items added through this submission is collected
during the pendency of a patent examination (correct inventorship item) or when parties
petition the Chief Administrative Patent Judge concerning matters pending before the
BPAI (petition to Chief APJ item). In most situations the information is not collected
elsewhere and does not result in a duplication of effort. In certain cases information
submitted with petitions may have been submitted earlier as part of the examination
process and may be resubmitted through these collections to correct or clarify an issue.
The information associated with all items in this submission is necessary to process and
record fee payments. This information is not collected elsewhere and does not result in
a duplication of effort by respondents. Although the USPTO will be reporting some of
the fee burdens twice (in this submission and in the existing and pending collections)
until the agency can delete these fees from their existing information collections, the
respondents themselves only pay the fees in question once and thus will not duplicate
their efforts by complying with this collection.

4

5.

Minimizing the Burden to Small Entities

The information collection involves the reduction of fee burden on small entities,
including provisions for an additional reduction of fee burden for a new class of small
entities, micro entities.
6.

Consequences of Less Frequent Collection

This information is collected only when the public submits a fee payment. If this
information were not collected, the USPTO would not be able to conduct business
associated with the particular fee. 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 Notice of Proposed Rulemaking for RIN 0651-AC54 was published in the Federal
Register on September 6, 2012 (77 Fed. Reg. 55028). The Office received 28
comments from the public regarding the rulemaking as a whole. Only one comment
specifically addressed the Paperwork Reduction Act. That comment stated that the
agency must comply with the Paperwork Reduction Act, 44 U.S.C. § 3501, et seq. in
setting Section 10 fees. The Agency responded that it agreed with the comment and
that, as evidenced by the Paperwork Reduction Act section of the Final Rule, the
Paperwork Reduction Act section of the Notice of Proposed Rulemaking, and the
Supporting Statement accompanying both notices, the Office has complied with the
requirements of the Act. A summary of the comments received regarding the full rule,
including all fee levels, and the Office’s response to those comments will be included in
the final rule notice published in the Federal Register and uploaded as a supplemental
document to this information collection request (available at www.reginfo.gov).
The USPTO has consulted with the public about the AIA in general through the agency
microsite at http://www.uspto.gov/aia_implementation/index.jsp.
As directed by the Act, the Director must provide the Patent Public Advisory Committee
(PPAC) with new proposed fees at least 45 days prior to publishing the proposed fees in
the Federal Register. The PPAC then has 30 days to deliberate, consider, and
comment on the proposal, as well as hold public hearing(s) on the proposed fees.
Consistent with this framework, on February 7, 2012, the Director notified the PPAC of
the Office’s intent to set or adjust patent fees and submitted a preliminary patent fee
proposal with supporting materials. The preliminary patent fee proposal and associated
materials are available at http://www.uspto.gov/about/advisory/ppac.
The PPAC
announced two public hearings in the Federal Register on January 30, 2012, (77 Fed.

5

Reg. 19). The first hearing was in Alexandria, Virginia, on February 15, 2012; the
second one was in Sunnyvale, California, on February 23, 2012. Transcripts of these
hearings and comments submitted to the PPAC in writing are available for review at
http://www.uspto.gov/about/advisory/ppac.
Consistent with the Act, the PPAC
considered public comments from these hearings and reviewed the Notice of Proposed
Rulemaking issued in the Federal Register on September 6, 2012 (77 Fed. Reg. 55028)
before issuing a written report to the public setting forth in detail the comments, advice,
and recommendations of the committee regarding the preliminary proposed fees. The
PPAC’s
report,
issued
on
September
24,
2012,
is
available
at
http://www.uspto.gov/aia_implementation/120924-ppac-fee-setting-report2.pdf.
Consistent with the AIA, the Office considered and analyzed the comments, advice, and
recommendations received from PPAC before publishing the final rule. Section 10(e) of
the Act requires the USPTO to publish the final fee rule in the Federal Register and the
Official Gazette of the Patent and Trademark Office 45 days before the final fees
become effective and to notify Congress of the proposed change. The Office will
publish the final fee rule in the Federal Register and notified Congress on the same day.
The Office will also publish a notice of the final fee rule in the Office Gazette of the
Patent and Trademark Office. Most of the final fees are expected to become effective in
April 2013. Some fees, as documented in the final rule, have a delayed effective date of
January 1, 2014.
9.

Payment or Gifts to Respondents

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

Assurance of Confidentiality

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 (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.
Confidentiality of patent applications is governed by 35 U.S.C. § 122 and 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 prosecution history contained in the application
file is critical for determining the scope of the property right conferred by a patent grant.
Under 37 CFR 1.22(b), “All fees paid to the United States Patent and Trademark Office
must be itemized in each individual application, patent, or other proceeding in such a
manner that it is clear for which purpose the fees are paid.”

6

11.

Justification for Sensitive Questions

None of the required information is considered to be sensitive.
12.

Total Annual (Hourly) Cost Burden to Respondents

This collection contains fees associated with existing and pending information
collections as well as two fees associated with the information requirements added by
this request. The USPTO estimates that the total annual responses for all fees in this
information collection will be 5,470,718. Because this information collection only
includes the information requirements of the two items added to this collection and does
not include the information requirements of any item in any existing or pending
collection, the USPTO estimates that the total burden hours for this collection will be
1,148 (for the two added items), and estimates the number of annual responses for
those two items will be 412.
Estimates for the two information requirements added in this information collection are
as follows:


Respondent Calculation Factors
The USPTO estimates that it will receive a total of 412 responses per year for the
two information requirements added by this collection, of which 84 will be filed by
small entities (43 small entity responses for correct inventorship and 41 small
entity responses for petitions to the Chief APJ) and 19 will be filed by micro
entities (only applicable to fees for correct inventorship). The USPTO estimates
that 93% of the responses for correct inventorship and 90% of the petitions to the
Chief APJ will be filed electronically.
These estimates are based on the Agency’s long-standing institutional
knowledge of and experience with the type of information collected by these
items.



Burden Hour Calculation Factors
The USPTO estimates that it will take the public 2 hours to complete the
information for the correct inventorship after first office action on the merits and 4
hours to complete the petitions to the chief administrative patent judge under 37
CFR 41.3. This includes time to gather the necessary information, create the
document, and submit the completed request to the USPTO. The USPTO
calculates that, on balance, it takes the same amount of time to gather the
necessary information, create the document, and submit it to the USPTO,
whether the applicant submits the information in paper form or electronically.
These estimates are based on the Agency’s long-standing institutional
knowledge of and experience with the type of information collected and the

7

length of time necessary to complete responses containing similar or like
information.


Respondent (Hourly) Cost Burden Calculation Factors
The USPTO uses a professional rate of $371 per hour for respondent cost
burden calculations, which is the mean rate for attorneys in private firms as
shown in the 2011 Report of the Economic Survey, published by the Committee
on Economics of Legal Practice of the American Intellectual Property Law
Association (AIPLA).

Table 3 calculates the anticipated burden hours and costs to the public of the
information requirements being added in this collection, based on the following factors:
Table 3: Burden Hour/Burden Cost to Respondents for Information Requirements Added by this
Collection
Item

1

2

Hours
(a)

Responses
(yr)
(b)

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

Rate
($/hr)
(d)

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

Correct Inventorship After First Office Action on
the Merits (electronic)

2.0

232

464

$371.00

$172,144.00

Correct Inventorship After First Office Action on
the Merits (paper)

2.0

18

36

$371.00

$13,356.00

Petitions to the Chief Administrative Patent
Judge Under 37 CFR 41.3 (electronic)

4.0

146

584

$371.00

$216,664.00

Petitions to the Chief Administrative Patent
Judge Under 37 CFR 41.3 (paper)

4.0

16

64

$371.00

$23,744.00

412

1,148

Total

- - - - -

- - - - -

$425,908.00

Impact on Existing and Pending Collections
The adjustments that this rulemaking makes to fees in the existing and pending
information collections will have an impact on the estimated number of responses for
the information requirements that are associated with those fees. The fee adjustment
for a particular service may cause a change in demand for that service, which in turn will
have an impact on the estimated burden hours and respondent cost burden for those
requirements. Although the affected information requirements will remain in their
respective collections, the impact on the total respondent cost burden for these items
caused by the change in responses is summarized in Table 4 below and is provided in
detail in Appendix C.

8

Table 4: Burden Impact due to Rulemaking and Non-Rulemaking Factors
Item

Current burden for information requirements in
existing and pending collections associated
with the fees in the rulemaking

Responses

Burden Hours

Respondent (Hourly) Cost
Burden

5,556,757

37,664,172

$12,228,124,551.00

(48,251)

1,215,761

$392,721,456.00

Rulemaking impact from adding the Correct
Inventorship After First Office Action on the
Merits to this collection

250

500

$185,500.00

Non-rulemaking impact from adding the
Petitions to the Chief Administrative Patent
Judge Under 37 CFR 41.3 to this collection

162

648

$240,408.00

(38,200)

(6,494)

($2,110,550.00)

5,470,718

38,874,587

$12,619,161,365.00

Rulemaking impact from the change in
estimated responses caused by fee
adjustments in the rulemaking

Non-rulemaking impact from stayed fees
Totals

Responses: The total responses for all affected fee items in this submission is
5,470,718, which includes changes in estimated responses in existing and pending
collections due to the fee adjustments in the final rule, as well as the additional
respondents for the two requirements added in this collection. This total also includes a
decrease in responses of 38,200 due to stayed fees related to the enrollment of
registered
patent
attorneys
and
agents.
(See
www.uspto.gov/ip/boards/oed/practitioner/agents/forregisteredpractitioners.jsp). Those
fees have been included in this collection, but remain stayed, so the number of
responses for the fees is estimated to be 0. The Office published a Notice of Proposed
Rulemaking in the Federal Register on October 18, 2012, Changes to Representation of
Others Before the United States Patent and Trademark Office (77 Fed. Reg. 64190),
proposing to remove this fee entirely. Although that rulemaking may remove this fee,
the substance of this information collection will not be affected since, under this
information collection request, the Office does not plan to collect these fees. The
number of total responses reported here reflects the USPTO’s revised and decreased
projections of demand for various services compared with the responses reported in the
Notice of Proposed Rulemaking. The Paperwork Reduction Act section of the Notice of
Proposed Rulemaking and its accompanying Supporting Statement misstated both the
specific number of responses for the Utility Issue Fee and the total number of responses
such that responses for those items were underreported (5,832,472 total responses
were reported instead of 6,061,412).
Burden Hours: The change in estimated responses results in a change in burden hours
for the affected items as detailed in Table 4 above. However, except for 1,148 hours for
the two information requirements included in this submission (see Table 3 above), these
burden hours will remain in the existing and pending collections for the other information
requirements affected by this rulemaking because only the fees associated with these
items are included in this submission, not the information requirements themselves.
Because the total responses were underreported in the Paperwork Reduction Act

9

section of the Notice of Proposed Rulemaking as explained above, the total burden
hours were also underreported (39,343,181 was reported instead of 39,457,650).
Respondent (Hourly) Cost Burden: The change in burden hours (due to the change in
the number of responses) results in a change in respondent (hourly) cost burden for the
affected items, as detailed in Table 4 above. Again, except for the $425,908 for the two
information requirements added in this submission (see Table 3 above), this respondent
(hourly) cost burden will remain in the existing and pending collections for the items
affected by this rulemaking because only the fees associated with these items are
included in this submission, not the information requirements themselves. Because the
total responses were underreported in the Paperwork Reduction Act section of the
Notice of Proposed Rulemaking as explained above, the total hourly cost burden was
also underreported ($12,756,110,511 was reported instead of $12,767,557,411).
The respondent cost burden calculations presented in Table 4 (and in more detail in
Appendix C) use the hourly rates as submitted in the previous information collection
requests for the associated requirements. These hourly rates are not updated for these
calculations at this time because this rulemaking affects neither the length of time to
respond to the information collection nor the cost per hour of such a response.
Information on the total respondent cost burden across all fees is included solely to
demonstrate that this rulemaking may change the total number of responses.
The responses, burden hours, and respondent (hourly) cost burden for the affected
information requirements in the existing and pending collections remain in their
respective collections and will be updated in separate submissions using nonsubstantive change requests.
13.

Total Annual (Non-hour) Cost Burden to Respondents

The USPTO estimates that the total annual (non-hour) cost burden for this collection will
be approximately $2,727,479,226, with $2,727,479,150 in fees and $76 in postage.
These totals include the annual (non-hour) cost burden of $193,426 ($193,350 in fees
and $76 in postage) for the information requirements added by this collection, as
outlined below, as well as the total non-hour cost burden across all fees affected by this
rulemaking for which a PRA burden exists (some fees affected by the rulemaking have
no PRA burden, e.g., self-service copying fees, and have not been included in this
collection). The total non-hour burden reported here includes the USPTO’s estimates of
the total responses to this collection, which reflect the USPTO’s revised projections for
demand for various services compared with the responses reported in the Notice of
Proposed Rulemaking. The Paperwork Reduction Act section of the Notice of Proposed
Rulemaking and its accompanying Supporting Statement misstated both the specific
number of responses for the Utility Issue Fee and the total number of responses such
that responses for those items, and correspondingly, the non-hour burden, were
underreported. Because of this typographical error, the total non-hour burden appears
to have increased from the Notice of Proposed Rule to the Final Rule (from

10

$2,594,521,312 in the Notice of Proposed Rule to $2,727,479,226 in the Final Rule), but
in reality, the burden has decreased (from $2,789,786,912 to $2,727,479,226).
Fees
The total fees for this collection are $2,727,479,150 as shown in the Supplemental
Appendix C spreadsheet. These total fees include the following:


the new and the amended fees for the existing and pending information
collections outlined in the final rule notice;



fees for information requirements that have no proposed responses because the
fees
for
those
items
currently
are
stayed
(see
www.uspto.gov/ip/boards/oed/practitioner/agents/forregisteredpractitioners.jsp
and Supporting Statement for renewal of information collection 0651-0012, IC
Reference 201004-0651-001 at www.regulations.gov) and therefore no
responses for the fee-cost component are collected (see fee codes 9015-9020 in
Appendix C); the information requirements for these items remain in the existing
collection, and, as explained above, may be removed entirely pursuant to the
rulemaking proposed in Changes to Representation of Others Before the United
States Patent and Trademark Office (77 Fed. Reg. 64190); and



the filing fee amount of $193,350 for the two items added in this collection, as
outlined in Table 5 below.

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Table 5: Filing Fees – Non-hour Cost Burden for Information Requirements Added by this
Collection
Item

Responses
(a)

Correct Inventorship After First Office Action on the Merits

Filing Fees
(b)

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

188

$600.00

$112,800.00

Correct Inventorship After First Office Action on the Merits (small
entity)

43

$300.00

$12,900.00

Correct Inventorship After First Office Action on the Merits (micro
entity)

19

$150.00

$2,850.00

Petitions to the Chief Administrative Patent Judge Under 37 CFR
41.3

121

$400.00

$48,400.00

Petitions to the Chief Administrative Patent Judge Under 37 CFR
41.3 (small entity)

41

$400.00

$16,400.00

412

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

$193,350.00

1

2

Total

Postage
The public may submit the forms in this collection to the USPTO in paper format by mail
through the U. S. Postal Service.
The total (non-hour) cost burden for postage for the information requirements added by
this collection is estimated to be $76 per year, as follows:
Table 6: Postage Costs – Non-hour Cost Burden for Information Requirements Added by this
Collection
Item

Responses by
Mail
(a)

Postage Cost
(b)

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

1

Correct Inventorship After First Office Action on the Merits

18

$1.30

$23.00

2

Petitions to the Chief Administrative Patent Judge Under 37 CFR
41.3

16

$3.30

$53.00

Total

34

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

$76.00

14.

Annual Cost to the Federal Government

For the two information requirements included in this collection, the estimates are as
follows:
The USPTO estimates that it takes a GS-5, step 1, approximately 5 minutes (0.08
hours) to process the correct inventorship after first office action on the merits and
approximately 30 minutes (0.50 hours) to process the petitions to the chief
administrative patent judge under 37 CFR 41.3. The hourly rate for a GS-5, step 1, is
currently $16.33 according to the U.S. Office of Personnel Management’s (OPM’s)
wage chart, including locality pay for the Washington, DC area. When 30% is added to
12

account for a fully loaded hourly rate (benefits and overhead), the rate per hour for a
GS-5, step 1, is $21.23 ($16.33 + $4.90).
Estimates are based upon agency long-standing institutional knowledge of and
experience with processing the type of information collected and the length of time
necessary to process similar or like information.
Table 7 calculates the processing hours and costs of this information collection to the
Federal Government:
Table 7: Burden Hour/Burden Cost to the Federal Government for Information Requirements
Added by this Collection
Item

1

2

Responses
(yr)
(b)

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

Rate
($/hr)
(d)

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

Correct Inventorship After First Office Action
on the Merits (electronic)

0.08

232

19

$21.23

$403.00

Correct Inventorship After First Office Action
on the Merits (paper)

0.08

18

1

$21.23

$21.00

Petitions to the Chief Administrative Patent
Judge Under 37 CFR 41.3 (electronic)

0.50

146

73

$21.23

$1,550.00

Petitions to the Chief Administrative Patent
Judge Under 37 CFR 41.3 (paper)

0.50

16

8

$21.23

$170.00

412

101

- - - - -

$2,144.00

Total

15.

Hours
(a)

- - - - -

Reason for Changes in Annual Burden

Program changes and/or adjustments are made in support of the final rule titled “Setting
and Adjusting Patent Fees” (RIN 0651-AC54). The rulemaking supports the enactment
of the Section 10 provisions of the Leahy-Smith America Invents Act (Pub.L.112-29).
Changes in Responses and Burden Hours
The USPTO estimates that the total responses for this information collection will be
5,470,718 and the total annual burden hours will be 1,148. The total responses
includes the responses currently in the USPTO inventory for the fees as changed by
this rulemaking as well as the responses for the two information requirements added by
this submission. The total annual burden hours only reflects the burden hours for the
two information requirements added by this submission because no information
requirements were changed for any items in existing or pending collections with fees
affected by this rulemaking.
Tables 8 and 9 show the impact of the rulemaking and non-rulemaking changes to the
response and burden hour estimates for this information collection:

13

Table 8: Response Changes – Rulemaking/Non-Rulemaking Impact
Current
Inventory

Rulemaking Impact

Non-rule Impact

Total Change

New
Response
Estimates

5,518,557

Decrease of 48,251

0

Decrease of 48,251

5,470,306

Correct
Inventorship After
First Office Action
on the Merits

0

Increase of 250

0

Increase of 250

250

Petitions to the
Chief
Administrative
Patent Judge

0

0

Increase of 162

Increase of 162

162

38,200

0

Decrease of 38,200

Decrease of 38,200

0

5,556,757

(48,001)

(38,038)

(86,039)

5,470,718

Fees in
Existing/Pending
Collections

Stayed Fees
Totals

Table 9: Burden Hour Changes – Rulemaking/Non-Rulemaking Impact
Current
Inventory

Rulemaking Impact

Non-rule Impact

Total Change

New Burden
Hour
Estimates

Correct
Inventorship After
First Office Action
on the Merits

0

Increase of 500

0

Increase of 500

500

Petitions to the
Chief
Administrative
Patent Judge

0

0

Increase of 648

Increase of 648

648

Totals

0

500

648

1,148

1,148

For additional explanation of the impact that the change in responses will have on the
burden hours in the information collections that contain the information requirements for
the affected fees, please see Section 12 (Table 4) above and Appendix C.
Change in Respondent (Hourly) Cost Burden
This information collection will have a total respondent (hourly) cost burden of $425,908
for the information requirements added by this collection, as outlined in Section 12
(Table 3) above.
The fee adjustments to the current inventory of fees in the rulemaking may cause a
change in demand for some services, which would impact the estimated number of
responses for the information requirements that are associated with those fees. This
change in the number of responses would impact the estimated burden hours and
respondent cost burden for those items. Although the affected information requirements
will remain in their respective collections, the impact on the total respondent (hourly)

14

cost burden for these items from the rulemaking is summarized below in Table 10 and
provided in more detail in Appendix C.
Table 10: Respondent (Hourly) Cost Burden Changes – Rulemaking/Non-Rulemaking Impact
Current
Inventory

Rulemaking
Impact

Non-rule Impact

Total Change

New
Respondent
Cost Burden
Estimate

Correct
Inventorship After
First Office Action
on the Merits

$0

Increase of
$185,500

$0

Increase of
$185,500

$185,500

Petitions to the
Chief
Administrative
Patent Judge

$0

$0

Increase of
$240,408

Increase of
$240,408

$240,408

Totals for Items
Added to this
Collection

$0

Increase of
$185,500

Increase of
$240,408

Increase of
$425,908

$425,908

Fees in
Existing/Pending
Collections

$12,226,014,001

Increase of
$392,721,456

$0

Increase of
$392,721,456

$12,618,735,457

$2,110,550

$0

Decrease of
$2,110,550

Decrease of
$2,110,550

$0

$12,228,124,551

$392,906,956

($1,870,142)

$391,036,814

$12,619,161,365

Stayed Fees

Totals Across All
Fees

For additional explanation of the impact that the change in responses will have on the
respondent (hourly) cost burden in the information collections that contain the
information requirements for the affected fees, please see Section 12 (Table 4) above
and Appendix C.
Change in Annual (Non-hour) Costs
The USPTO estimates that the total annual (non-hour) cost burden for this submission
will be $2,727,479,226. The total annual (non-hour) cost burden includes the fee
burden as changed by this rulemaking as well as changes due to factors other than the
rulemaking. These non-rule factors include the annual (non-hour) cost burden for the
existing requirement of petitions to the chief administrative patent judge under 37 CFR
41.3, as well as updates to the USPTO fee schedule pre-dating this rulemaking that
have not yet been reflected in the USPTO inventory.
Table 11 shows the impact of the rulemaking and non-rulemaking changes to the
annual (non-hour) cost burden estimates for this information collection. The nonrulemaking impact to the fees in existing and pending collections is the result of the
increase in the Consumer Price Index (CPI).

15

Table 11: Annual (Non-hour) Cost Burden Changes – Rulemaking/Non-Rulemaking Impact
Current
Inventory

Fees in
Existing/Pending
Collections

Rulemaking
Impact

Non-rule Impact

Total Change

New Annual
(Non-hour)
Cost Burden
Estimate

$2,230,581,563

Increase of
$409,134,608

Increase of
$87,569,629

Increase of
$496,704,237

$2,727,285,800

Correct
Inventorship After
First Office Action
on the Merits

$0

Increase of
$128,550

$0

Increase of
$128,550

$128,550

Petitions to the
Chief
Administrative
Patent Judge

$0

$0

Increase of
$64,800

Increase of
$64,800

$64,800

$4,113,700

$0

Decrease of
$4,113,700

Decrease of
$4,113,700

$0

$2,234,695,263

$409,263,158

$83,520,729

$492,783,887

$2,727,479,150

$0

Increase of $23

Increase of $53

Increase of $76

$76

$2,234,695,263

$409,263,181

$83,520,782

$492,783,963

$2,727,479,226

Stayed Fees

Total Fees
Postage
Totals

16.

Project Schedule

There is no plan to publish this information for statistical use. No special publication of
the items discussed in this justification statement is planned.
17.

Display of Expiration Date of OMB Approval

The forms in this information collection will display the OMB control number and
expiration date of OMB approval.
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.

16