0651-0073_Patent_Law_Treaty_Sept_2013

SUPPORTING STATEMENT
United States Patent and Trademark Office
Patent Law Treaty
OMB CONTROL NUMBER 0651-0073
(September 2013)

A.

JUSTIFICATION

1.

Necessity of Information Collection

The Patent Law Treaties Implementation Act of 2012 (PLTIA) amends the patent laws
to implement the provisions of the Hague Agreement Concerning International
Registration of Industrial Designs (Hague Agreement) in title 1, and the Patent Law
Treaty (PLT) in title II. The PLT harmonizes and streamlines formal procedures
pertaining to the filing and processing of patent applications.
The USPTO published a notice of proposed rulemaking titled “Changes to Implement
the Patent Law Treaty” (RIN 0651-AC85) in the Federal Register. In the notice, the
USPTO proposed changes to the rules of practice for consistency with the changes in
the PLT and title II of the PLTIA. One notable change pertains to the restoration of the
right of priority to a foreign application or the benefit of a provisional application via the
permitting of a claim to priority to a foreign application or the benefit of a provisional
application in a subsequent application filed within two months of the expiration of the
twelve-month period (six-month period for design applications) for filing such a
subsequent application.
OMB filed a comment on the proposed collection in a Notice of Action dated June 27,
2013. The USPTO is re-submitting this information collection per that Notice of Action.
The information in this collection can be submitted electronically through EFS-Web, the
USPTO’s Web-based electronic filing system, as well as on paper. The USPTO is
therefore accounting for both electronic and paper submissions in this collection.
Table 1 provides the specific statute and regulations authorizing the USPTO to collect
the information discussed above:
Table 1: Information Requirements
Requirement

Statute

Rule

1

Petition to Restore the Right of Priority under
37 CFR 1.55(b)(2)

35 U.S.C § 119

37 CFR 1.55(b)(2)

2

Petition to Restore the Benefit of a Prior-Filed
Provisional Application under 37 CFR 1.78(a)(1)(ii)

35 U.S.C § 119

37 CFR 1.78(a)(1)(ii)

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2.

Needs and Uses

This information collection is necessary so that patent applicants and/or patentees may
seek restoration of the right of priority to a prior-filed foreign application or of the right to
benefit of a prior-filed provisional application. The USPTO will use the petition to
restore the right of priority to a prior-filed foreign application or the right to benefit of a
prior-filed provisional application to determine whether the applicant has satisfied the
conditions of the applicable statute (35 U.S.C. § 119) and regulation (proposed 37 CFR
1.55(b)(2) and 1.178(a)(1)(ii)).
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.
Table 2 outlines how this collection of information is used by the public and the USPTO:
Table 2: Needs and Uses

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Form and Function

Form #

Needs and Uses

Petition to Restore the Right of Priority under
37 CFR 1.55(b)(2)

No Form




2

Petition to Restore the Benefit of a PriorFiled Provisional Application under
37 CFR 1.78(a)(1)(ii)



No Form



Used by patent applicants and/or patentees to petition
to restore the right of priority under 37 CFR 1.55(b)(2)
to a foreign application in an application.
Used by the USPTO to determine whether the applicant
and/or patentee has satisfied the conditions of the
applicable statute (35 U.S.C. § 119 and regulation
37 CFR 1.55(b)(2)).
Used by patent applicants and/or patentees to petition
to restore the benefit of a prior-filed provisional
application under 37 CFR 1.78(a)(1)(ii) in an
application.
Used by the USPTO to determine whether the applicant
and/or patentee has satisfied the conditions of the
applicable statute (35 U.S.C. § 119 and regulation
37 CFR 1.78(a)(1)(ii)).

3. Use of Information Technology
The items in this collection may be submitted online using EFS-Web, the USPTO’s
Web-based electronic filing system.
EFS-Web allows customers to file patent applications and associated documents
electronically through their standard Web browser without downloading special
software, changing their document preparation tools, or altering their workflow
processes. Typically, the customer will prepare the documents as standard PDF files
and then upload them to the USPTO servers using the secure EFS-Web interface.
EFS-Web offers many benefits to filers, including immediate notification that a

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submission has been received by the USPTO, automated processing of requests, and
avoidance of postage or other paper delivery costs.
4.

Efforts to Identify Duplication

The information collected is required in order to restore the right of priority to a prior-filed
foreign application, or the right to benefit of a prior-filed provisional application. This
information is not collected elsewhere and does not result in a duplication of effort.
5.

Minimizing the Burden to Small Entities

This collection of information will not impose a significant economic impact on a
substantial number of small entities. The same information will be required from every
member of the public in the applicable situation and will not be available from any other
source. Furthermore, there are no filing fees associated with this information collection.
6.

Consequences of Less Frequent Collection

The information in this collection is collected only when a patent applicant and/or
patentee seeks restoration of the right of priority to a prior-filed foreign application or of
the right to benefit of a prior-filed provisional application. Less frequent collection of this
information would deny patent applicants and/or patentees their right under the statute
to have the right of priority to a prior-filed foreign application or the right to benefit of a
prior-filed provisional application restored. Thus, this information could not be collected
less frequently.
7.

Special Circumstances in the Conduct of Information Collection

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

Consultations Outside the Agency

On April 11, 2013 the USPTO published a notice of proposed rulemaking titled
“Changes to Implement the Patent Law Treaty” (RIN 0651-AC85) in the Federal
Register. Public comments from the public on the notice of proposed rulemaking have
been considered in development of the final rule.
In addition, the USPTO has long-standing relationships with groups from whom patent
application data is collected, such as the American Intellectual Property Law
Association (AIPLA), as well as patent bar associations, independent inventor groups,
and users of our public facilities. Views expressed by these groups are considered in
developing proposals for information collection requirements.

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9.

Payment or Gifts to Respondents

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

Assurance of Confidentiality

Confidentiality of patent applications is governed by statute (35 U.S.C. § 122) and
regulation (37 CFR 1.11 and 1.14). Upon publication of an application or issuance of a
patent, the entire patent application file is made available to the public (subject to
provisions for providing only a redacted copy of the file contents). Therefore, the
information collected by this collection will necessarily be available to the public when it
is filed in a published application or issued patent, or, if it is filed in an application that
has yet to publish or issue as a patent, when the application publishes or issues as a
patent.
11.

Justification of Sensitive Questions

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

Estimate of Hour and Cost Burden to Respondents

Table 3 calculates the burden hours and costs of this information collection to the
public, based on the following factors:


Respondent Calculation Factors
The USPTO estimates that it will receive approximately 500 responses per year
for this collection, with approximately 25% of these responses submitted by small
entities. Approximately 93% of the total responses for this collection will be
submitted 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 the responses in this collection will take the public
approximately 1 hour to complete. This includes the 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 public submits the information on paper
form or electronically.

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These estimates are based on the Agency’s long-standing institutional
knowledge of and experience with the type of information collected and the
length of time necessary to complete responses containing similar or like
information.


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).
Based on the Agency’s long-standing institutional
knowledge of and experience with the type of information collected, the Agency
expects $371 is an accurate estimate of the cost per hour to collect this
information.

Table 3: Burden Hours/Burden Costs to Respondents
Item/Form No.

Hours
(a)

Respons
es
(yr)
(b)

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

Rate
($/hr)
(d)

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

1

Petition to Restore the Right of Priority
under 37 CFR 1.55(b)(2)

1.00

250

250

$371.00

$92,750.00

2

Petition to Restore the Benefit of a PriorFiled Provisional Application under
37 CFR 1.78(a)(1)(ii)

1.00

250

250

$371.00

$92,750.00

------

500

500

------

$185,500.00

Totals

13.

Total Annual (Non-hour) Cost Burden

The total annual (non-hour) respondent cost burden for this collection is calculated in
Table 4 below. This collection has no capital start-up, maintenance, or record keeping
costs.
Fees
For both petitions in this collection, a grantable petition requires the petition fee as set
forth in 37 CFR 1.17(m). The notice of proposed rulemaking states that for small
entities, the 37 CFR 1.17(m) fee will be $850, and the undiscounted 37 CFR 1.17(m)
fee will be $1,700. The notice of proposed rulemaking does not provide for a micro
entity discount for the 37 CFR 1.17(m) fee.

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Postage
The USPTO estimates that the average postage cost for a paper submission will be
$5.60 (USPS Priority Mail, flat rate envelope) and that 35 submissions will be mailed to
the USPTO per year.
Table 4: Annual (Non-Hour) Cost Burden
Type of Cost

Estimated
Annual
Responses

Amount

Totals

Grantable Petition to Restore the Right of Priority under
37 CFR 1.55(b)(2)

187

$1,700.00

$317,900.00

Grantable Petition to Restore the Right of Priority under
37 CFR 1.55(b)(2)
(small entity)

63

$850.00

$53,550.00

Grantable Petition to Restore the Benefit of a Prior-Filed
Provisional Application under
37 CFR 1.78(a)(1)(ii)

187

$1,700.00

$317,900.00

Grantable Petition to Restore the Benefit of a Prior-Filed
Provisional Application under
37 CFR 1.78(a)(1)(ii)
(small entity)

63

$850.00

$53,550.00

------

------

$742,900.00

35

$5.60

$196.00

Total Postage

------

------

$196.00

Total Annual (Non-hour) Cost Burden

------

------

$743,096.00

Total Fees

Postage

14.

Annual Cost to the Federal Government

The USPTO estimates that it takes a GS-7, step 1, employee approximately 18 minutes
(0.3 hours) on average to process the items in this collection.
The hourly rate for a GS-7, step 1, employee is currently $20.22 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 account for a fully loaded hourly rate
(benefits and overhead), the rate per hour for a GS-7, step 1, employee is $26.29
($20.22 with $6.07 added for benefits and overhead).
Table 5 calculates the burden hours and costs to the Federal Government for
processing this information collection:

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Table 5: Burden Hours/Burden Costs to the Federal Government
Item/Form No.

Hours

Responses
(yr)
(b)

(a)

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

Rate
($/hr)
(d)

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

1

Petition to Restore the Right of Priority
under 37 CFR 1.55(b)(2)

0.3

250

75

$26.29

$1,972.00

2

Petition to Restore the Benefit of a PriorFiled Provisional Application under
37 CFR 1.78(a)(1)(ii)

0.3

250

75

$26.29

$1,972.00

------

500

150

------

$3,944.00

Totals

15.

Reason for Changes in Annual Burden

The USPTO is submitting this information collection request in support of a rulemaking
titled “Changes to Implement the Patent Law Treaty” (RIN 0651-AC85). The USPTO
proposes changes to the rules of practice for consistency with the changes in the PLT
and title II of the PLTIA. The information to be collected is a direct result of the new
statute.
The USPTO estimates that it will receive 500 responses for this collection annually and
that the associated burden will be 500 hours per year. Therefore, an additional 500
burden hours per year will be added to the USPTO’s current information
collection inventory as a program change.
There is non-hour cost burden in the form of postage costs associated with this
information collection, which amounts to $743,096 per year. Therefore, an additional
$743,096 per year in the way of non-hour cost burden will be added to the
USPTO’s current information collection inventory as a program change.
16.

Project Schedule

The USPTO does not plan to publish this information for statistical use or any other
purpose.
17.

Display of Expiration Date of OMB Approval

There are no forms in this information collection. Therefore, the display of the OMB
Control Number and the expiration date is not applicable.
18.

Exceptions to the Certificate Statement

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

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B.

COLLECTION OF INFORMATION EMPLOYING STATISTICAL METHODS

This collection of information does not employ statistical methods.

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