0651-0027 Supporting Statement 2018 April

SUPPORTING STATEMENT

United States Patent and Trademark Office

Recording Assignments

OMB CONTROL NUMBER 0651-0027

(April 2018)

A. JUSTIFICATION

1. Necessity of Information Collection

This collection of information is required by 35 U.S.C. §§ 261 and 262 for patents and 15 U.S.C. §§ 1057 and 1060 for trademarks. These statutes authorize the United States Patent and Trademark Office (USPTO) to record patent and trademark assignment documents, including transfers of properties (i.e. patents and trademarks), liens, licenses, assignments of interest, security interests, mergers, and explanations of transactions or other documents that record the transfer of ownership of a particular patent or trademark property from one party to another. Assignments are recorded for applications, patents, and trademark registrations.

The USPTO administers these statutes through 37 CFR 2.146, 2.171, and 37 CFR Part 3. These rules permit the public, corporations, other federal agencies, and Government-owned or Government-controlled corporations to submit patent and trademark assignment documents and other documents related to title transfers to the USPTO to be recorded. In accordance with 37 CFR 3.54, the recording of an assignment document by the USPTO is an administrative action and not a determination of the validity of the document or of the effect that the document has on the title to an application, patent, or trademark.

Once the assignment documents are recorded, they are available for public inspection. The only exceptions are those documents that are sealed under secrecy orders according to 37 CFR 3.58 or related to unpublished patent applications maintained in confidence under 35 U.S.C. § 122 and 37 CFR 1.14. The public uses these records to conduct ownership and chain-of-title searches. The public may view these records either at the USPTO Public Search Facilities or at the National Archives and Records Administration, depending on the date they were recorded. The public may also search patent and trademark assignment information online through the USPTO Web site.

In order to file a request to record an assignment, the respondent must submit an appropriate cover sheet along with copies of the assignment documents to be recorded. The USPTO provides two paper forms for this purpose, the Patent Recordation Form Cover Sheet (PTO-1595) and the Trademark Recordation Form Cover Sheet (PTO-1594), which capture all of the necessary data for accurately recording various assignment documents. These forms may be downloaded in PDF format from the USPTO Web site.

Customers may also submit assignments online by using the Electronic Patent Assignment System (EPAS) and the Electronic Trademark Assignment System (ETAS), which are available through the USPTO Web site. These systems allow customers to fill out the required cover sheet information online using Web-based forms and then attach the electronic assignment documents to be submitted for recordation.

Table 1 provides the specific statutes and regulations authorizing the USPTO to collect the information discussed above:

Table 1: Information Requirements

IC #	Requirement	Statute	Rule
1	Trademark Recordation Form Cover Sheet (PTO-1594)	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
2	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
3	Patent Recordation Form Cover Sheet (PTO-1595)	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
4	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

2. Needs and Uses

The public uses this information collection to submit patent and trademark assignment documents to be recorded by the USPTO. Except for those documents sealed under secrecy orders or related to unpublished patent applications, patent and trademark assignment records may be inspected by the public after they are recorded.

The information collected, maintained and used in this collection is based on OMB and USPTO guidelines. This includes the basic information quality standards established in the Paperwork Reduction Act (44 U.S.C. Chapter 35), in OMB Circular A-130, and in the OMB information quality guidelines.

Table 2 outlines how this collection of information is used by the public and the USPTO:

Table 2: Needs and Uses

IC #	Form and Function	Form #	Needs and Uses
1	Patent Recordation Form Cover Sheet (PTO-1595)	PTO-1595	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.
2	Trademark Recordation Form Cover Sheet (PTO- 1594)	PTO-1594	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.
3	Electronic Patent Assignment System (EPAS)	PTO-1595	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.
4	Electronic Trademark Assignment System (ETAS)	PTO-1594	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 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.

3. Use of Information Technology

The paper forms associated with this collection, the Patent Recordation Form Cover Sheet (PTO-1595) and the Trademark Recordation Form Cover Sheet (PTO-1594), may be downloaded from the USPTO Web site as PDF files, filled out on the computer, and then printed for mailing or faxing to the USPTO. Once received the cover sheets and associated assignment documents are scanned directly into the assignment document workflow system. Fax submission streamlines the processing of paper assignment documents by enabling the USPTO to skip the paper scanning stage and provide the customer with the resulting Notice of Recordation by return fax.

The USPTO also offers electronic filing options for both patent and trademark assignments. The Electronic Patent Assignment System (EPAS) and the Electronic Trademark Assignment System (ETAS) are both available to customers on the USPTO Web site. EPAS and ETAS allow customers to enter the required assignment data, attach the supporting documentation in electronic format, and submit the assignment recordation request online. Payment of filing fees can be made by credit card, USPTO deposit account, or electronic fund transfer (EFT). After the payment transaction is completed, an electronic confirmation receipt is displayed on the screen and emailed to the customer.

After being electronically processed and recorded, the assignment information is fed into the appropriate patent or trademark database system. Information about recorded patent and trademark assignments is disseminated to the public through the USPTO Web site, where customers may search for the assignment information associated with a specific application, patent, or trademark registration.

4. Efforts to Identify Duplication

The information collected is required for the USPTO to record an assignment transaction and is not collected elsewhere, with one exception. The information regarding the current owner(s) of the interest (address and type of entity) is already maintained by the USPTO. However, this information is submitted routinely and could be required to distinguish between entities of the same name. Customers who file electronically using EPAS or ETAS may save this data from an assignment request as a template to be reused in future submissions.

5. Minimizing Burden to Small Entities

The information collected is the minimum needed to execute the transaction and to ensure that the recording of the assignment is complete. This collection of information does not impose a significant economic impact or put an unnecessary burden on small entities or small businesses. The same information is required of every applicant and is not available from any other source.

6. Consequences of Less Frequent Collection

This information is collected only when an applicant submits a patent or trademark assignment document or other associated documents to the USPTO to be recorded. This information collection could not be conducted less frequently. If the collection of information were not conducted, the USPTO could not comply with the requirements of 35 U.S.C. §§ 261 and 262 and 15 U.S.C. §§ 1057 and 1060 of the Trademark Act.

7. Special Circumstances in the Conduct of Information Collection

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

8. Consultation Outside the Agency

The 60-Day Notice was published in the Federal Register on January 29, 2018 (83 Fed. Reg. 4039). The comment period ended on March 30, 2018. One comment was received from the public.

The comment supported the electronic forms made available by the USPTO. The comment also suggested the implementation of a mandatory registry of patent ownership to assist patent owners in determining ownership of a patent.  The suggestion made in this comment is outside the scope of the information collection, but may be considered in future regulatory revisions.  Additionally, the comment disagreed with the USPTO’s estimated time for filing out the forms under this collection, claiming that the time burden should be reduced to 15 minutes per response.  The estimated response time represents the average time calculated by the USPTO for respondents to complete the form, with some respondents taking 10 to 30 minutes and others taking 30 to 45 minutes or more.  The estimated 30 minutes per response represents an accurate average, thus, the USPTO does not plan to make any changes to the burden hour estimates at this time. Lastly, the comment suggested requiring notarization of the forms at places that require two forms of identification.  This suggestion would be overly burdensome on respondents and is not currently being adopted.

The USPTO has long-standing relationships with groups from whom patent application information is collected, such as the American Intellectual Property Law Association, as well as patent bar associations, independent inventor groups, and users of our public search facilities. Their views are expressed in regularly scheduled meetings and considered in developing proposals for information collection requirements. There have been no comments or concerns expressed by these or similar organizations concerning this collection request.

9. Payments or Gifts to Respondents

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

10. Assurance of Confidentiality

Assignment records related to unpublished patent applications are maintained in confidence in accordance with 35 U.S.C. § 122 and 37 CFR 1.11 and 1.14. Except for those documents that are related to unpublished patent applications maintained in confidence or sealed under secrecy orders, the records for patents and trademarks, assignments, and other associated documents can be inspected by the public under 37 CFR 1.11, 1.12, and 2.200. These records can be viewed either at the USPTO or at the National Archives and Records Administration (NARA), depending on the date that they were recorded, and via a searchable database on the USPTO Web site. Recorded serial numbers are not provided to the public until the patent is actually issued.

Anyone wishing to view documents recorded under secrecy orders or view recorded documents in which the federal government has an interest must submit authorization in writing before the USPTO will release the documents for inspection according to 37 CFR 3.58. Also, documents sealed under secrecy orders cannot be filed electronically due to national security concerns. In accordance with the Privacy Act of 1974 (P.L. 93-579), a Privacy Act Notice covering patent assignments (COMMERCE/PAT–TM–9 Patent Assignment Records) has been published in the Federal Register on March 29, 2013 (78 Fed. Reg. 19244).

11. Justification for 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 596,527 total responses per year for this collection.

The USPTO estimates that approximately 99% of the annual responses for this collection will be submitted electronically via EPAS or ETAS, which customers may access through the USPTO Web site.

• Burden Hour Calculation Factors

The USPTO estimates that it will take the public approximately 30 minutes (0.5 hours) to prepare and submit a patent or trademark recordation request.

• Cost Burden Calculation Factors

The USPTO uses a professional rate of $438 per hour for respondent cost burden calculations, which is the median rate for attorneys in private firms as shown in the 2017 Report of the Economic Survey published by the American Intellectual Property Law Association (AIPLA).

The USPTO uses a paraprofessional rate of $145 per hour for respondent cost burden calculations, which is the average rate for paralegals as shown in the 2016 National Utilization and Compensation Survey published by the National Association of Legal Assistants (NALA).

The USPTO expects that the information in this collection will be prepared 50% each by attorneys and paraprofessionals. The rate for attorneys is $438 and the rate for paraprofessionals is $145, combining equally to an average of approximately $291.50 per hour.

Table 3: Burden Hour/Burden Cost to Respondents

IC #	Item	Hours (a)	Responses (yr) (b)	Burden (hrs/yr) (c) (a) x (b)	Rate ($/hr) (d)	Total Cost ($/yr) (e) (c) x (d)
1	Patent Recordation Form Cover Sheet (PTO-1595)	0.50	2,498	1,249	$291.50	$364,083.50
2	Trademark Recordation Form Cover Sheet (PTO-1594)	0.50	816	408	$291.50	$118,932.00
3	Electronic Patent Assignment System (EPAS)	0.50	546,884	273,442	$291.50	$79,708,343.00
4	Electronic Trademark Assignment System (ETAS)	0.50	46,329	23,164.50	$291.50	$6,752,451.75
	Totals	- - -	596,527	298,263.50	- - -	$86,943,810.25

13. Total Annual (Non-hour) Cost Burden

The total (non-hour) respondent cost burden for this collection is estimated to be $3,192,373.88 per year, which includes $3,189,325.00 in fees and $3,048.88 in postage.

Fees

There are fees associated with submitting patent and trademark assignment documents to be recorded, for a total of $3,189,325.00 per year as outlined in Table 4 below.

The filing fee for submitting a patent assignment as indicated by 37 CFR 1.21(h) is $50 per property for recording each document, while the filing fee for submitting a trademark assignment as indicated by 37 CFR 2.6(b)(6) is $40 for recording the first property in a

document and $25 for each additional property in the same document. The USPTO estimates that the average fee for a patent assignment recordation request is approximately $50 and that the average fee for a trademark assignment recordation request is approximately $65.

Table 4: Filing Fees/Non-hour Cost Burden to Respondents

IC #	Item	Responses (a)	Filing Fees ($) (b)	Total Non-hour Cost Burden (c) (a) x (b)
1	Patent Recordation Form Cover Sheet (PTO-1595)	2,498	$50.00	$124,900.00
2	Trademark Recordation Form Cover Sheet (PTO-1594)	816	$65.00	$53,040.00
4	Electronic Trademark Assignment System (ETAS)	46,329	$65.00	$3,011,385.00
	Totals	524,298	- - -	$3,189,325.00

Postage Costs

The non-electronic items in this collection have associated first-class postage costs when submitted by mail, for a total of $3,048.88

• 2,498 Patent Recordation Form Cover Sheets (PTO-1595) are submitted by mail, at $0.92 postage for a three-ounce envelope: $2,298.16

• 816 Trademark Recordation Form Cover Sheet (PTO-1594) are submitted by mail, at $0.92 postage for a three-ounce envelope: $750.72

14. Annual Cost to the Federal Government

The USPTO employs both GS-7 Legal Instrument Examiners and GS-9 Legal Administrative Specialist to process submissions for this information collection. The USPTO estimates that approximately 80% of the employees processing these submissions are GS-7, step 10 and 20% are GS-9, step 9.

The USPTO estimates that the cost of a GS-7, step 10 employee is $37.23 per hour (GS hourly rate of $28.64 with 30% ($8.59) added for benefits and overhead). The USPTO estimates that the cost of a GS-9, step 9 employees is $44.37 per hour (GS hourly rate of $34.13 with 30% ($10.24) added for benefits and overhead).

Based on the percentages of the employees processing these submissions, the average hourly rate for the USPTO staff processing these submissions is $38.65 (80% of the GS-7, step 10 hourly cost of $37.23 is $29.78; and 20% of the GS-9, step 9 hourly cost of $44.37 is $8.87; for a total of $38.65).

The USPTO estimates that it takes an employee 30 minutes (0.5 hours) to process a request to record a patent or trademark assignment submitted with a paper cover sheet and 15 minutes (0.25 hours) to process an online submission via EPAS or ETAS.

Table 5 calculates the burden hours and costs to the Federal Government for processing this information collection:

Table 5: Burden Hour/Cost to the Federal Government

IC #	Item	Hours (a)	Responses (yr) (b)	Burden (hrs/yr) (c) (a) x (b)	Rate ($/hr) (d)	Total Cost ($/yr) (e) (c) x (d)
1	Patent Recordation Form Cover Sheet (PTO-1595)	0.50	2,498	1,249	$38.65	$48,273.85
2	Trademark Recordation Form Cover Sheet (PTO-1594)	0.50	816	408	$38.65	$15,769.20
3	Electronic Patent Assignment System (EPAS)	0.25	546,884	136,721	$38.65	$5,284,266.65
4	Electronic Trademark Assignment System (ETAS)	0.25	46,329	11,582.25	$38.65	$447,653.96
	Totals	- - -	596,527	149,960.25	- - -	$5,795,963.66

15. Reason for Change in Burden

1. Changes in Collection since previous OMB approval in 2017

OMB previously approved a change worksheet of this information collection in December 2017. The current collection contains:

• 524,298 responses

• 262,150 burden hours

• $67,372,550.00 in respondent hourly cost burden

• $3,441,336.12 in annual (non-hour) costs

2. Changes proposed in this request to OMB.

The proposed collection, as outlined in the tables above, seeks to modify the existing collection. The proposed collection contains an estimated:

• 596,527 responses

• 298,263.50 burden hours

• $86,943,810.25 in respondent hourly cost burden

• $3,192,373.88 in annual (non-hour) costs

Change since the publication of the 60-day notice

Since the publication of the 60-day notice in the Federal Register on January 29, 2018, the following changes have been made to this collection:

• An increase of 36,113.50 burden hours (listed incorrectly as 262,150 hours in the FRN, which was the burden for the previous renewal).

• A decrease of $74,807.44 in annual (non-hour) costs. The fee for submitting a patent assignment has been corrected to $50, down from $80. This change also incorporates the $10 increase to that fee effective late 2017, as well as an increase in postage from $0.88 to $0.92.

Change in Respondent Cost Burden

The total respondent cost burden for this collection has increased by $19,571,260.25 (from $67,372,550.00 to $86,943,810.25) from the previous renewal of this collection in April 2015:

• Increase in estimated burden hours. The total estimated burden hours has increased from 262,150 in the 2015 renewal to 298,263.50 for the current renewal.

• Increase in the hourly rate. The 2015 renewal used an estimated rate of $257.00 per hour. For the current renewal, the USPTO is using an updated hourly rate of $291.50.

Changes in Responses and Burden Hours

For this renewal, the USPTO estimates that the annual responses will increase by 72,229 (from 524,298 to 596,527) and the total burden hours will increase by 36,113.50 (from 262,150 to 298,263.50) from the currently approved burden for this collection. These changes are due to increases in agency estimates.

Changes in Annual (Non-hour) Costs

For this renewal, the USPTO estimates that the total annual (non-hour) costs will decrease by $248,962.24 (from $3,441,336.12 to $3,192,373.88), due to the removal of the fee collected for the Electronic Patent Assignment System (EPAS) and the decrease in the fee for submitting a patent assignment from $80 to $50.

16. Project Schedule

The USPTO does not plan to publish this information for statistical use. However, patent and trademark assignment records are available to the public at the USPTO Public Search Facilities and on the USPTO Web site.

17. Display of Expiration Date of OMB Approval

The forms in this information collection will display the OMB Control Number and the 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.

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