0651-0031 Supporting Statement final_2021

SUPPORTING STATEMENT

United States Patent and Trademark Office

Patent Processing

OMB CONTROL NUMBER 0651-0031

2021

A. JUSTIFICATION

1. Explain the circumstances that make the collection of information necessary. Identify any legal or administrative requirements that necessitate the information collection. Attach a copy of the appropriate section of each statute and regulation mandating or authorizing the collection of information.

The United States Patent and Trademark Office (USPTO) is required by 35 U.S.C. § 131 to examine an application for patent and, when appropriate, issue a patent. The USPTO is also required to publish patent applications, with certain exceptions, promptly after the expiration of a period of eighteen months from the earliest filing date for which a benefit is sought under Title 35, United States Code (“eighteen-month publication”). Certain situations may arise which require that additional information be supplied in order for the USPTO to further process the patent or application. The USPTO administers the statutes through various sections of the rules of practice in 37 CFR Part 1.

The information in this information collection can be used by the USPTO to continue the processing of the patent or application to ensure that applicants are complying with the patent regulations and to aid in the prosecution of the application.

Table 1 provides the specific statutes and rules requiring the USPTO to collect the information discussed above:

Table 1: Information Requirements for Patent Processing

IC No.	Item	Statute	Regulations
1	Information Disclosure Statements	35 U.S.C. § 2(b)(2)	37 CFR 1.56, 1.97 and 1.98
2	Transmittal Form	35 U.S.C. § 2(b)(2)	37 CFR 1.4, 1.5, 1.48, 1.111, 1.116, 1.121, 1.125, 1.133 and 1.291
3	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(a)
4	Express Abandonment under 37 CFR 1.138	35 U.S.C. § 2(b)(2), 131 and 132	37 CFR 1.138
5	Statutory Disclaimers	35 U.S.C. § 253	37 CFR 1.321
6	Request for Expedited Examination of a Design Application	35 U.S.C. § 2(b)(2)	37 CFR 1.155
7	Petition for Revival of an Application for Patent Abandoned Unintentionally	35 U.S.C. §§ 41(a)(7), 111, 133, 151 and 371(d)	37 CFR 1.137
8	Petition for Revival of an Application for Patent Abandoned for Failure to Notify the Office of a Foreign or International Filing	35 U.S.C. § 2(b)(2)	37 CFR 1.137 and 1.213
9	Requests to Access, Inspect, and Copy	35 U.S.C. § 122	37 CFR 1.14
10	Deposit Account Order Form	35 U.S.C. § 2(b)(2)	37 CFR 1.25
11	Certificates of Mailing or Transmission	35 U.S.C. §§ 2(b)(2) and 21(a)	37 CFR 1.8
12	Statement under 37 CFR 3.73(c)	35 U.S.C. § 2(b)(2)	37 CFR 3.73(c)
13	Non-publication Request	35 U.S.C. § 122(b)(2)(B)(i)	37 CFR 1.213(a)
14	Rescission of Previous Non-publication Request (35 U.S.C. § 122(b)(2)(B)(ii) and, if applicable, Notice of Foreign Filing (35 U.S.C. § 122(b)(2)(B)(iii)	35 U.S.C. §§ 122(b)(2)(B)(ii) and 122(b)(2)(B)(iii)	37 CFR 1.213(b)
15	Electronic Filing System (EFS) Copy of Application for Publication	35 U.S.C. §§ 122(b) and 122(b)(2)(B)(v)	37 CFR 1.215, 1.217, 1.219 and 1.221
16	Copy of File Content Showing Redactions	35 U.S.C. § 122(b)	37 CFR 1.217(d)
17	Copy of the Applicant or Patentee’s Record of the Application (including copies of the correspondence, list of the correspondence, and statements verifying whether the record is complete or not)	35 U.S.C. § 2(b)(2)	37 CFR 1.251
18	Request for Continued Examination (RCE) Transmittal	35 U.S.C. § 132(b)	37 CFR 1.114
19	Request for Suspension of Action or Deferral of Examination under 37 CFR 1.103(b), (c), or (d)	35 U.S.C. §§ 2(b)(2) and 131	37 CFR 1.103(b), (c) or (d)
20	Request for Voluntary Publication or Republication (includes publication fee for republication)	35 U.S.C. § 2(b)(2)	37 CFR 1.221
21	Applicant-Initiated Interview Request Form	35 U.S.C. § 2(b)(2)	37 CFR 1.133
22	Processing Fee under 37 CFR 1.17(i) Transmittal	35 U.S.C. § 2(b)(2)	37 CFR 1.17(i)
23	Request to Retrieve Electronic Priority Application(s) under 37 CFR 1.55(d)	35 U.S.C. § 2(b)(2)	37 CFR 1.55(d)
24	Authorization or Rescission of Authorization to Permit Access to Application-as-filed by Participating Offices under 37 CFR 1.14(h)	35 U.S.C. § 2(b)(2)	37 CFR 1.14(h)
25	Petition for Express Abandonment to Obtain a Refund	35 U.S.C. § 4(d)(1)(D)	37 CFR 1.138(d)
26	Pre-appeal Brief Request for Review	35 U.S.C. §§ 2(b)(2) and 134	37 CFR 41.32
27	Request for Corrected Filing Receipt	35 U.S.C. § 2(b)(2)	37 CFR 1.54, 1.76(a), 1.48(a) and (c)
28	Request for First-Action Interview (Pilot Program)	35 U.S.C. § 2(b)(2)	37 CFR 1.133
29	Petition to Make Special Based on Age for Advancement of Examination under 37 CFR 1.102(c)(1)	35 U.S.C. § 2(b)	37 CFR 1.102(c)(1)
30	Filing a Submission after Final Rejection (see 37 CFR 1.129(a))	35 U.S.C. §§ 2(b)(2), 102, 103, and 132	37 CFR 1.129
31	Correction of Inventorship after First Office Action on the Merits	35 U.S.C. § 111(b) and 116	37 CFR 1.48
32	Request for Correction in a Patent Application Relating to Inventorship or an Inventor Name, or Order of Names, Other than in a Reissue Application (37 CFR1.48)	35 U.S.C. § 111(b) and 116	37 CFR 1.48
33	Request to Correct or Update the Name of the Applicant Under 37 CFR 1.46(c)(1), or Change the Applicant under 37 CFR 1.46(c)(2).	35 U.S.C. § 111(b) and 116	37 CFR 1.46(c)(1), 37 CFR 1.46(c)(2)

2. Indicate how, by whom, and for what purpose the information is to be used. Except for a new information collection, indicate the actual use the agency has made of the information received from the current information collection.

The information collected, maintained, and used in this information 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 USPTO information quality guidelines.

Table 2 outlines how the information for Patent Processing is used by the public and by the USPTO:

Table 2: Needs and Uses of Information Collected for Patent Processing

IC No.	Item	Instrument/Form	Needs and Uses
1	Information Disclosure Statement	PTO/SB/08a/ 08b and EFS-Web	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.
2	Transmittal Form	PTO/SB/21	Used by the applicant to indicate what type of correspondence is being submitted. Used by the USPTO to determine the specific contents of the communication. Used by the USPTO to facilitate the routing of papers to the most appropriate USPTO locations.
3	Petition for Extension of Time under 37 CFR 1.136(a)	PTO/SB/22, PTO/AIA/22	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.
4	Express Abandonment under 37 CFR 1.138	PTO/SB/24, PTO/AIA/24	Used by the applicant to expressly abandon an application. Used by the USPTO to determine whether the application is expressly abandoned. Used by the USPTO to determine whether an application has been expressly abandoned in favor of a continuation or divisional application.
5	Disclaimer	PTO/SB/25/26/43/63	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.
6	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.
7	Petition for Revival of an International Application for Patent Abandoned Unintentionally	PTO/SB//64PCT	Used by the applicant to request that applications that were unintentionally abandoned be revived. Used by the USPTO to ensure that applicants have included all the proper documentation and fees necessary to revive an unintentionally-abandoned application.
8	Petition for Revival of an Application for Patent Abandoned for Failure to Notify the Office of a Foreign or International Filing	PTO/SB/64a	Used by the applicant to revive an application for patent abandoned for failure to timely notify the office of a foreign or international filing. Used by the USPTO to revive an application for patent abandoned for failure to timely notify the office of a foreign or international filing.
9	Request for Power to Access, Inspect, and Copy	PTO/SB/67/68	Used by the public to request permission to inspect and/or make copies in accordance with regulations. Ensures that applications are maintained in confidence in accordance with regulations. Used by the USPTO to determine that the persons requesting permission to inspect and/or make copies are authorized to do so. Used by the USPTO to verify that the application requested is abandoned and that it has been referred to in the referenced U.S. patent.
10	Deposit Account Order Form	PTO/SB/91	Used by the public to order goods or services using an established deposit account. Used by the USPTO to process orders for articles or services, and to identify the deposit account to which an order should be charged.
11	Certificate of Mailing or Transmission	PTO/SB/92	Used by the applicant as evidence of the date for replies to actions by the USPTO. Used by the USPTO to determine the timeliness of replies by an applicant to actions by the USPTO.
12	Statement under 37 CFR 3.73(c)	PTO/SB/96, PTO/AIA/96	Used by the applicant to show that this person has their authority to take actions on their behalf. Used by the USPTO to determine that the person signing has authority to take action on behalf of an assignee.
13	Non-publication Request under 35 U.S.C. 122(b)(2)(B)(i)	PTO/SB/35	Used by the applicant to request that the USPTO not publish the application under 37 U.S.C. § 122(b). Used by the USPTO to determine whether the application should be published under 37 U.S.C. § 122(b).
14	Rescission of Previous Non-publication Request (35 U.S.C. § 122(b)(2)(B)(ii) and, if applicable, Notice of Foreign Filing (35 U.S.C. § 122(b)(2)(B)(iii)	PTO/SB/36	Used by the applicant to rescind a previously filed request that the USPTO not publish the application under 35 U.S.C. § 122(b)(2)(B)(ii). Used by the applicant to provide notice of a foreign or international filing required by 35 U.S.C. § 122(b)(2)(B)(iii). Used by the USPTO to determine that the application is subject to eighteen-month publication.
15	Electronic Filing System (EFS) Copy of Application for Publication	No Form	Used by the applicant to obtain publication of a version of the application different from the application as initially submitted to the USPTO. Used by the applicant to request publication of an application earlier than as provided for by eighteen-month publication or of an application that is not subject to eighteen-month publication. Used by the USPTO to create a publication document as part of the USPTO’s publication of the application.
16	Copy of File Content Showing Redactions	No Form	Used by the applicant to show redactions to USPTO actions/notices and the applicant’s replies. Used by the USPTO to confirm what redactions are made to the copy of application file content that is provided to the public.
17	Copy of the Applicant or Patentee’s Record of the Application (including copies of the correspondence, list of the correspondence, and statements verifying whether the record is complete or not)	PTO-2053-A/B PTO-2054-A/B PTO-2055-A/B	Used by the applicant to assist the USPTO in reconstructing a current copy of a missing patent or application file. Used by the USPTO to notify the applicant that the application or patent file is unlocatable and to request a copy of the applicant’s or patentee’s record of the application or patent file (including copies of the correspondence, list of the correspondence, and statements verifying whether the record is complete or not) in order to reconstruct the file of an unlocatable application or patent.
18	Request for Continued Examination (RCE) Transmittal	EFS-Web and PTO/SB/30	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.
19	Request for Suspension of Action or Deferral of Examination under 37 CFR 1.103(b), (c), or (d)	PTO/SB/37	Used by the applicant to request deferred examination of a patent application for up to three years from the earliest filing date for which a benefit is claimed in applications filed on or before September 16, 2012. Used by the USPTO to process and consider this request for deferral of examination.
20	Request for Voluntary Publication or Republication (includes publication fee for republication)	EFS-Web	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.
21	Applicant-Initiated Interview Request Form	PTOL/413A	Used by the applicant to request an interview. Used by the applicant to assist in the preparation of a written record of the interview. Used by the USPTO to allow the examiner to prepare in advance for an applicant initiated interview. Used by the USPTO to allow the examiner to focus on the issue to be discussed in the applicant initiated interview. Used by the USPTO to identify whether agreement has been reached.
22	Processing Fee under 37 CFR 1.17(i) Transmittal	PTO/SB/17i	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.
23	Request to Retrieve Electronic Priority Application(s)	PTO/SB/38	Used by the applicant to request that the USPTO retrieve priority documents from the other participating intellectual property offices. Used by the USPTO to retrieve priority documents from the other participating intellectual property offices.
24	Authorization or Rescission of Authorization to Permit Access to Application-as-filed by Participating Offices	PTO/SB/39	Used by the applicant to authorize the USPTO to release confidential documents to other participating intellectual property offices that are important to the prosecution of the patent application. Used by the USPTO to properly release confidential documents to other participating intellectual offices that are important to the prosecution of the patent application.
25	Petition for Express Abandonment to Obtain a Refund	PTO/SB/24B, PTO/AIA/24B	Used by the applicant to expressly abandon the application for a refund of the search fee if recognized by an appropriate USPTO official prior to examination of the application. Used by the USPTO to expressly abandon the application and to refund the search fee to the applicant if recognized by an appropriate USPTO official prior to examination of the application.
26	Pre-appeal Brief Request for Review	PTO/SB/33, PTO/AIA/33	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.
27	Request for Corrected Filing Receipt	No Form	Used by the applicant to request a corrected filing receipt. Used by the USPTO to correct errors in application data.
28	Request for First-Action Interview (Pilot Program)	SB/413C EFS-Web only	Used by the applicant to request a first-action interview prior to the first Office action on the merits to advance prosecution of the application. Used by the USPTO to grant advancement of examination for the first Office action on the merits.
29	Petition to Make Special Based on Age for Advancement of Examination under 37 CFR 1.102(c)(1)	PTO/SB/130 EFS-Web only	Used by the applicant to petition that an application be made special for advancement of examination by showing that the applicant is 65 years of age, or more. Used by the USPTO to assist in the expeditious processing of the petition to make special based on age.
30	Filing a Submission after Final Rejection (see 37 CFR 1.129(a))	No Form	Used by the applicant to have a first or second submission entered and considered on the merits after final rejection under the circumstances identified in 37 CFR 1.129. Used by the USPTO to determine whether to maintain a rejection or objection of a claim of an application.
31	Correction of Inventorship after First Office Action on the Merits	No Form	Used by the applicant to request a correction of the inventorship of an application following the first office action. Used by the USPTO to determine whether the inventorship of an application should be corrected following the first office action.
32	Request for Correction in a Patent Application Relating to Inventorship or an Inventor Name, or Order of Names, Other than in a Reissue Application (37 CFR1.48)	No Form	Used by the applicant to request a correction of the inventorship of an application. Used by the USPTO to determine whether the inventorship of an application should be corrected.
33	Request to Correct or Update the Name of the Applicant Under 37 CFR 1.46(c)(1), or Change the Applicant under 37 CFR 1.46(c)(2).	No Form	Used by the applicant to request a correction or an update to the name of the applicant. Used by the applicant to request a change to the applicant. Used by the USPTO to determine whether the name of the applicant should be corrected or updated. Used by the USPOT to determine whether the applicant should be changed.

3. Describe whether, and to what extent, the collection of information involves the use of automated, electronic, mechanical, or other technological collection techniques or other forms of information technology, e.g., permitting electronic submission of responses, and the basis for the decision for adopting this means of activity. Also describe any consideration of using information technology to reduce burden

The forms associated with this information collection may be downloaded from the USPTO Web site in Portable Document Format (PDF), filled out electronically, and then either printed for mailing or submitted to the USPTO online through the Patent Electronic System (EFS-Web or Patent Center). The “EFS-Web only” items in this information collection must be submitted to the USPTO online through EFS-Web. In addition, the USPTO provides an electronic interface on its Web site that the public can use to submit the information associated with the Electronic Applicant Initiated Interview Request Form.

EFS-Web is the USPTO’s web-based patent application and document submission system that 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 forms or 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 submission has been received by the USPTO, automated processing of requests, and avoidance of postage or other paper delivery costs.

To protect the confidentiality, authenticity, and integrity of electronic submissions, the USPTO employs Public Key Infrastructure (PKI) technology for secure electronic communications with its customers. All electronic submissions are automatically encrypted prior to transmission to ensure confidentiality of the submission contents. After the electronic package has been received by the USPTO, the EFS server uses digital signature technology to verify that the package contents have not been altered and generates an electronic acknowledgment receipt that is immediately returned to the customer.

Customers must have a Customer Number that is associated with the correspondence address for a patent application in order to access private information about the application using the Patent Application Information Retrieval (PAIR) system, which is available through the USPTO Web site. PAIR allows authorized individuals secure and immediate online access to up-to-date patent application status and history information, but only for patent applications that are linked to a Customer Number. PAIR also offers public access to non-private information about issued patents and published applications.

4. Describe efforts to identify duplication. Show specifically why any similar information already available cannot be used or modified for use for the purposes described in Item 2 above.

This information is collected during the pendency of a patent application. It does not duplicate information or collection of data found elsewhere.

5. If the collection of information impacts small businesses or other small entities, describe any methods used to minimize burden.

No significant impact is placed on small entities. Small entities simply need to identify themselves as such to obtain the benefits of small entity status.

Pursuant to 35 U.S.C. § 41(h)(1), the USPTO provides a fifty percent (50%) reduction in the fees charged under 35 U.S.C. § 41(a) and (b) for small entities. The USPTO also provides a fifty percent (50%) reduction of the already-reduced small-entity fees for those entities asserting micro entity status. The USPTO’s regulations concerning the payment of reduced patent fees by small entities and micro entities are at 37 CFR 1.27 and 1.28, and reduced patent fees for applicants with either small-entity or micro-entity status are shown in 37 CFR 1.16, 1.17, 1.18 and 1.20.

6. Describe the consequence to Federal program or policy activities if the information collection is not conducted or is conducted less frequently, as well as any technical or legal obstacles to reducing burden

This information is collected only as required to process a patent application or enforceable patent, and is not collected elsewhere. Therefore, this collection of information could not be conducted less frequently. If the information were not collected, the USPTO would not be able to comply with 35 U.S.C. § 131.

7. Explain any special circumstances that would cause an information collection to be conducted in a manner:

• requiring respondents to report information to the agency more often than quarterly;

• requiring respondents to prepare a written response to a collection of information in fewer than 30 days after receipt of it;

• requiring respondents to submit more than an original and two copies of any document;

• requiring respondents to retain records, other than health, medical, government contract, grant-in-aid, or tax records, for more than three years;

• in connection with a statistical survey, that is not designed to produce valid and reliable results that can be generalized to the universe of study;

• requiring the use of a statistical data classification that has not been reviewed and approved by OMB;

• that includes a pledge of confidentiality that is not supported by authority established in statute or regulation, that is not supported by disclosure and data security policies that are consistent with the pledge, or which unnecessarily impedes sharing of data with other agencies for compatible confidential use; or

• requiring respondents to submit proprietary trade secrets, or other confidential information unless the agency can demonstrate that it has instituted procedures to protect the information's confidentiality to the extent permitted by law.

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

8. If applicable, provide a copy and identify the date and page number of publication in the Federal Register of the agency's notice, required by 5 CFR 1320.8(d), soliciting comments on the information collection prior to submission to OMB. Summarize public comments received in response to that notice and describe actions taken by the agency in response to these comments. Specifically address comments received on cost and hour burden. Describe efforts to consult with persons outside the agency to obtain their views on the availability of data, frequency of co activity, the clarity of instructions and recordkeeping, disclosure, or reporting format (if any), and on the data elements to be recorded, disclosed, or reported. Consultation with representatives of those from whom information is to be obtained or those who must compile records should occur at least once every 3 years - even if the collection of information activity is the same as in prior periods. There may be circumstances that may preclude consultation in a specific situation. These circumstances should be explained

The 60-Day Notice was published in the Federal Register on September 29, 2020 (85 Fed. Reg. 60975). Two public comments were received during the 60 day comment period. The 30-Day notice was subsequently published in the Federal Register on November 30, 2020 (85 Fed. Reg. 76541). Six public comments were submitted during the 30 day comment period. Between the two public comment periods, the USPTO received 8 comments on 0651-0031.

Some of the comments addressed both this information collection and a separate but related information collection 0651-0032, which received 56 comments. Because similar comments were received for both information collections, all combined 64 comments are being responded to below. Comments are grouped by subject matter, followed by the USPTO's responses.

Form AIA-14

The USPTO received one public comment which discussed technical aspects of submitting PDF forms.  The commenter also suggested that the Application Data Sheet (ADS), form AIA-14, should allow priority claims to be inserted in any order.   

The USPTO’s Patent Electronic System, including EFS-Web and Patent Center, both accept PDF documents having any legally licensed and embeddable fonts. Neither EFS-Web nor Patent Center require embedding of standard, base-14 fonts in PDF submissions. For non-base-14 fonts, applicants must embed the fonts to ensure that non-standard fonts, such as math and chemical symbols, will render faithfully. In the rare situation that an applicant encounters difficulty submitting a USPTO-generated PDF form due to font discrepancies, the Electronic Business Center is available to provide further assistance.

Regarding the comment on priority claim order in the ADS, the USPTO assumes the commenter intended to reference the chronological order requirement for domestic benefit claims, as there is no such requirement for foreign priority claims. The USPTO’s Web ADS, the recommended format for completing an ADS, easily permits benefit claims to be moved to any position within an existing list during data entry. The USPTO’s website clarifies that the Web ADS is the recommended format, and further explains its enhanced functionality. The Web ADS is compatible with both EFS-Web and Patent Center.  While the USPTO is always considering improvements to the Patent Electronic System, the commenter’s concerns can be addressed within the existing options provided by the system.

DOCX

Many of the comments addressed the recent rule changes related to document format requirements, particularly the planned surcharge for applicants submitting documents in non-DOCX file formats.

In response to the statement that “[t]he DOCX rule should be removed from the ICR request”, the USPTO respectfully notes that neither 0031 nor 0032 currently include “[t]he DOCX rule”, nor do they include any fee or collection of information pertaining specifically to non-DOCX submissions. As stated in the Final Rule – Setting and Adjusting Patent Fees during Fiscal Year 2020 (85 FR 46932), the non-DOCX surcharge of 37 CFR 1.16(u) is not scheduled to take effect until January 2022, until which time the Office will continue outreach efforts to address public concerns and allow applicants an opportunity to transition to the new requirements. Many of the comments submitted here were also submitted during the public comment period for the Fee Setting and Adjusting Patent Fees during Fiscal Year 2020. The USPTO responded to these comments in the Final Rule (which can be found https://www.uspto.gov/about-us/performance-and-planning/fee-setting-and-adjusting).

The USPTO presently estimates that, upon implementation of 37 CFR 1.16(u), approximately 10% of initial submissions made by the public will incur the additional non-DOCX filing surcharge, with the number incurring the surcharge going down over time. This estimate is derived from publicly available aggregate revenue data. Based on a survey conducted by the USPTO in 2012, it is also estimated that at least 80% of applicants already author their applications in DOCX and should not be substantially impacted by the new rule. Speculating further on any potential impact of the forthcoming non-DOCX filing surcharge on the 0031 and 0032 renewal applications at hand would be premature and not meaningful to the cause of estimating public burden currently created by those collections. 37 CFR 1.16(u) will require applicants to pay a $400 surcharge if they opt to submit documents in non-DOCX format, but the rule will not create any additional paperwork or time burden for the public. Upon actual implementation of 37 CFR 1.16(u), the USPTO will notify OMB accordingly of any subsequent changes to the estimated public burden associated with collections 0031 and 0032.

Standardizing all public submissions to DOCX format enables the USPTO to modernize our filing and viewing systems. This streamlines application and publication processes, which benefits both applicants and examiners. Pending rule 1.16(u) incentivizes applicants to supply their files in DOCX format at the time of submission, so that the files do not need to undergo the additional step of being converted by the USPTO before they can be processed and entered.

Patent Center

Some commenters passed on feedback regarding the Patent Center testing program. Patent Center is a new online system that helps with processing and filing patents. The commenters voiced concern about program features, and about how the USPTO was gathering feedback on the Patent Center beta release. These topics are outside the scope of the current information collections, as Patent Center is still in production. External feedback on Patent Center beta was collected via Ideascale, a dedicated email box, and user testing. The USPTO is not actively soliciting Patent Center feedback at this time, but the public may still submit comments to [email protected].

Searching Systems

One commenter questioned recent changes to Private PAIR and their effect on searching and filing patents. The commenter suggested that the USPTO should adopt the system used by WIPO for ePCT.

USPTO notes that this comment is outside of the scope of the Paperwork Reduction Act. The changes to Private PAIR were made to improve the security of the system to better protect applicant’s information. The USPTO did remove the ability of Private PAIR users to mine data belonging to others in Private PAIR—that is, to run automated scripts (bots) that query data not associated with that individual user account and its associated customer number(s). This security change is one of several steps we are taking in our increased effort to secure and improve USPTO online performance for all members of the IP community. Publicly available data is still searchable through Public PAIR and other systems. The information which should be legally available to users is still accessible to them, even if they find the new options unfamiliar.

ADS

Many comments also expressed concerns about the Application Data Sheet.

Regarding the remarks pertaining to specific guidance documents and particular sub-sections of the MPEP, the Office first notes that those comments do not actually correlate the assertions of additional burden to any specific item(s) in collection 0031 or 0032. Nevertheless, we have carefully considered this input, and we maintain that the cited documents and guidance do not impact the burden estimates previously provided to OMB.

In response to the comment that the ADS guidance sheets create additional unreported burden for “requiring benefit/priority claims [be listed] in reverse chronological order”, the Office respectfully notes that listing benefit claims in such order is a long-standing practice that pre-dates the Application Data Sheet; the form introduces no new burden to the public with these renewal applications. Additionally, the USPTO provides an enhanced Web ADS option which conveniently permits applicants to re-order benefit claims within the interface, making it easier and less burdensome for the public to achieve reverse chronological order for this item.

With regard to the assertion that the June 2020 revisions to MPEP 706.07(b) create additional, unreported burden, those revisions are not new regulations; rather, they are simply a reiteration of the Office’s existing policy, as illustrated in the petition decision of October 13, 2017 in application 13/353,841, which decision was based on long-standing Office policy.

As to the allegedly unreported burden created by MPEP 1207.04, attention is respectfully directed to Hyatt v. USPTO, 904 F.3d 1361 (Fed. Cir. 2018), in which the Federal Circuit affirmed the USPTO’s current policy.

With respect to the argument that the traversal guidance of MPEP 2144.03(c) conflicts with 37 CFR 1.104(d)(2), the USPTO respectfully notes that this comment does not relate to any particular item in the collection at hand, and as such has no bearing on the burden reported herein. Nevertheless, we submit that the assertion of conflict is unfounded. The cited subparagraph of 37 CFR 1.104 specifies that the examiner will provide references to support statements based on personal knowledge “when called for by the applicant.” MPEP 2144.03(c) similarly explains that, when the applicant traverses (“calls for evidence”) a factual assertion (“personal knowledge”) according to the requirements of 37 CFR 1.111(b), the examiner shall provide documentary evidence in the next Office action if the rejection is to be maintained. There is clearly no conflict between the manual and the rule on this matter.

Administrative Law

Some comments also asserted generally that the Office willfully fails to follow administrative law. However, the Office asserts that it complies with all its administrative law responsibilities.

PTOL 303

One commenter expressed concern regarding the PTOL-303. The commenter believes that the internal handling of PTOL-303 results in issues and burden on the public.

The USPTO respectfully notes that the information sent from the agency to applicants via this form is not part of either collection. Specifically, the USPTO does not collect any information from the public via PTOL-303. To the contrary, the form is used by USPTO employees to respond to applicants’ submissions (e.g. claim amendments and/or arguments) submitted after the close of prosecution; in other words, it is used to convey information to the public, not to collect information from the public.

SB-08 Form

One commenter expressed concern regarding the SB-08 form (Information Disclosure Statement) claiming that the form seeks redundant information and poses burden with little demonstrable value added to the patent prosecution.

Regarding the multiple identifiers required for each item on an SB-08, please note that all of these items are required by 37 CFR 1.98(a)(1). Having multiple identifiers in the record is helpful in the event that one item contains a typographical error; based on the other identifiers, the intended reference may still be locatable by the Office while applicant prepares a corrected statement.

Regarding the asserted burden of supplying copies of foreign patents and non-patent literature that are within the possession of or readily available to the USPTO, the Office has begun implementing the Access to Relevant Prior Art Initiative. This initiative automatically provides examiners with prior art from a continuing application’s parent application as early as possible to increase patent examination quality and efficiency, and may be expanded to additional sources and types of information in the future. In the meantime, applicant is in the best position to provide this information. Even if this information is publicly available, there is no guarantee that the examiner will find the information. Further, requiring the examiner to locate this information when the applicant already has access unnecessarily expends government resources, increases search time, and could reduce examination quality.

With respect to providing applicants the ability to submit a proposed class or Boolean-defined search to the examiner for consideration, the Office appreciates that applicant’s query may be helpful to the examiner, but the query does not represent a static set of information. The information contained in USPTO-accessible databases are continually changing and the algorithms by which the query is searched against those databases may also change. Therefore, a concern is that applicant’s query would not accurately represent the information the applicant wants considered or the information actually considered by the examiner.

With respect to amending the rules of practice regarding relevance of information to “current issues” and submitting such information within 3 months of knowledge of relevance, 37 CFR 1.56 and 1.97 are designed to ensure that all material information is provided to the USPTO at an early stage of prosecution, thereby improving examination quality and reducing prosecution costs. In addition, the duty of disclosure under 37 CFR 1.56 pertains to all claims while they are pending, and does not extend to cancelled claims or potential future amendments.

The USPTO is continually striving to improve our customer experience and is considering further efforts to automate the submission of information. The Office appreciates the further suggestions for enhancements to the IDS forms (e.g., the use of HTML webforms) and will consider them in its ongoing efforts to improve its patent systems.

Other outside groups

In addition to the request for public comments, the USPTO has long-standing relationships with groups from whom patent application information is collected, such as the Patent Public Advisory Council and the American Intellectual Property Law Association, as well as patent bar associations, independent inventors groups, and users of our public search facilities. Views expressed by these groups are considered when evaluating information collection burdens and when developing proposals for information collection requirements.

9. Explain any decision to provide any payment or gift to respondents, other than remuneration of contractors or grantees.

This information collection does not involve a payment or gift to any respondent. Response to this information collection is necessary to obtain a patent.

10. Describe any assurance of confidentiality provided to respondents and the basis for the assurance in statute, regulation, or agency policy. If the information collection requires a systems of records notice (SORN) or privacy impact assessment (PIA), those should be cited and described here.

The USPTO has a legal obligation to maintain the confidentiality of the contents of unpublished patent applications and related documents under 35 U.S.C. § 122, 37 CFR 1.11, and 37 CFR 1.14. The information covered under this information collection will not be released to the public unless it is part of an issued patent or application publication.

Patent applications are published eighteen months after the filing date, unless the applicant requests non-publication under 35 U.S.C. 122(b)(2)(B)(i). Upon publication of an application or issuance of a patent, the patent application file is made available to the public, subject to the provisions for providing only a redacted copy of the file contents. The entire file of a reexamination proceeding is available to the public. The USPTO posts issued patent and application publications on its Web site.

The confidentiality, security, integrity, authenticity, and non-repudiation of patent applications submitted electronically through EFS-Web are maintained using PKI technology and digital certificates for registered users. Applications electronically filed by non-registered users are protected using TLS or SSL protocols.

Patent applicants and/or their designated representatives can view the current status of their patent application through the Patent Application Information Retrieval (PAIR) system. Access to patent applications that are maintained in confidence under 35 U.S.C. §122(a) is restricted to the patent applicant and/or their designated representatives by the use of digital certificates, which maintain the confidentiality and integrity of the information transmitted over the Internet. The public can view the status and history information for published applications and granted patents via PAIR. For secure electronic access to PAIR, the USPTO employs digital certificates and PKI technology to permit only authorized individuals to access private patent application information and to maintain the confidentiality and integrity of the information as it is transmitted over the Internet.

Under 37 CFR 1.14, the public can obtain status information about an application, such as whether the application is pending, abandoned, or patented, whether the application has been published under 35 U.S.C.122(b), and the application “numerical identifier”, under certain conditions. The public can also receive copies of an application-as-filed and the file wrapper, as long as it meets certain criteria.

In order to protect the confidentiality of credit card account information when making fee payments to the USPTO or through the USPTO as an office of indirect filing, customers should submit credit card payments on a separate credit card payment form provided by the USPTO for this purposes, 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 their 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.

The United States Patent and Trademark Office (USPTO) is required by Title 35 of the United States Code, including 35 U.S.C. § 131, to examine applications for patents. This information is collected on petitions and applications for patent products.

Patent Application information collection activities are covered under the Statement of Records Notice (SORN COMMERCE/PAT-TM-7 Patent Application Files, available at Federal Register /Vol. 78, No. 61 / Friday, March 29, 2013 /Notices 19243. https://www.govinfo.gov/content/pkg/FR-2013-03-29/pdf/2013-07341.pdf.

This SORN identifies the categories of individuals covered by the system containing applicants for patent, including inventors, legal representatives for deceased or incapacitated inventors, and other persons authorized by law to make applications for patent. Categories of records in the system comprises the following: Oath or declaration of applicant including name, citizenship, residence, post office address and other information pertaining to the applicant's activities in connection with the invention for which a patent is sought. Statements containing various kinds of information with respect to inventors who are deceased or incapacitated, or who are unavailable or unwilling to make application for patent.

The information obtain is protected from disclosure to third parties in accordance with the Privacy Act. However, routine uses of this information may include disclosure to the following: to law enforcement and investigation in the event that the system of records indicates a violation or potential violation of law; to a Federal, state, local, or international agency, in response to its request; to an agency, organization, or individual for the purpose of performing audit or oversight operations as authorized by law; to non-federal personnel under contract to the agency; to a court for adjudication and litigation; to the Department of Justice for Freedom of Information Act (FOIA) assistance; to members of congress working on behalf of an individual; to the Office of Personnel Management (OPM) for personnel research purposes; to National Archives and Records Administration for inspection of records, and to the Office of Management and Budget (OMB)for legislative coordination and clearance. Failure to provide any part of the requested information may result in an inability to process requests for access and information.

11. Provide additional justification for any questions of a sensitive nature, such as sexual behavior and attitudes, religious beliefs, and other matters that are commonly considered private. This justification should include the reasons why the agency considers the questions necessary, the specific uses to be made of the information, the explanation to be given to persons from whom the information is requested, and any steps to be taken to obtain their consent.

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

12. Provide estimates of the hour burden of the collection of information. The statement should:

• Indicate the number of respondents, frequency of response, annual hour burden, and an explanation of how the burden was estimated. Unless directed to do so, agencies should not conduct special surveys to obtain information on which to base hour burden estimates. Consultation with a sample (fewer than 10) of potential respondents is desirable. If the hour burden on respondents is expected to vary widely because of differences in activity, size, or complexity, show the range of estimated hour burden, and explain the reasons for the variance. Generally, estimates should not include burden hours for customary and usual business practices.

• If this request for approval covers more than one form, provide separate hour burden estimates for each form and aggregate the hour burdens.

• Provide estimates of annualized cost to respondents for the hour burdens for collections of information, identifying and using appropriate wage rate categories. The cost of contracting out or paying outside parties for information collection activities should not be included here. Instead, this cost should be included under ‘Annual Cost to Federal Government’.

• Provide an estimate for the total annual cost burden to respondents or record keepers resulting from the collection of information.

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

• Respondent Calculation Factors

The USPTO estimates that it will receive approximately 3,669,397 responses per year for this information collection, with approximately 25% of these responses submitted by small entities.

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 between 2 minutes (.03 hours) and 8 hours to submit a single item in this information collection depending on the instrument used, including the time to gather the necessary information, prepare the appropriate form or petition, and submit the completed request to the USPTO. The time per response, estimated annual responses, and estimated annual hour burden associated with each instrument in this information collection are shown in the table below.

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. Using these burden factors, USPTO estimates that the total respondent hourly burden for this information collection is 3,187,341 hours per year.

• Cost Burden Calculation Factors

The USPTO expects that patent attorneys and paraprofessionals will complete and submit this information.

The professional hourly rates for attorneys and paralegals, based on the 2019 Report of the Economic Survey published by the Committee on Economics of Legal Practice of the American Intellectual Property Law Association (AIPLA), are $400 and $145 respectively. Using these hourly rates, the USPTO estimates that the total respondent cost burden for this information collection is $842,416,575 per year.

Table 3: Total Hourly Burden For Private Sector Respondents

Item No.	Item	Estimated Annual Respondents	Estimated Annual Responses (year) (a)	Estimated Time for Response (hours) (b)	Estimated Annual Burden (hour/year) (a) x (b) = c	Rate1 ($/hour) (d)	Estimated Annual Burden (c) x (d) = e
1	Information Disclosure Statements that require the fee set forth in 37 CFR 1.17(p)	624,824	624,824	2	1,249,648	$400	$499,859,200
2	Transmittal Form	663,023	663,023	2	1,326,046	$145	$192,276,670
3	Petition for Extension of Time under 37 CFR 1.136(a)	252,184	252,184	.3 (18 minutes)	75,655	$145	$10,969,975
4	Express Abandonment under 37 CFR 1.138	1,838	1,838	.25 (15 minutes)	460	$145	$66,700
5	Statutory Disclaimers (including terminal disclaimers)	57,891	57,891	.25 (15 minutes)	14,473	$400	$5,789,200
6	Request for Expedited Examination of a Design Application	1,034	1,034	.25 (15 minutes)	259	$400	$103,600
7	Petition for Revival of an Application for Patent Abandoned Unintentionally	7,666	7,666	1	7,666	$400	$3,066,400
8	Petition for Revival of an Application for Patent Abandoned for Failure to Notify the Office of a Foreign or International Filing	140	140	1	140	$400	$56,000
9	Requests to Access, Inspect and Copy	824,500	824,500	.25 (15 minutes)	206,125	$145	$29,888,125
10	Deposit Account Order Form	64,460	64,460	.25 (15 minutes)	16,115	$145	$2,336,675
11	Certificates of Mailing or Transmission	582,000	582,000	.03 (2 minutes)	17,460	$145	$2,531,700
12	Statement Under 37 CFR 3.73(c)	172,469	172,469	.25 (15 minutes)	43,117	$400	$17,246,900
13	Non-publication Request	21,340	21,340	.25 (15 minutes)	5,335	$400	$2,134,000
14	Rescission of Previous Non-publication Request (35 U.S.C. § 122(b)(2)(B)(ii) and, if applicable, Notice of Foreign Filing (35 U.S.C. § 122(b)(2)(B)(iii)	2,134	2,134	.25 (15 minutes)	534	$400	$213,600
15	Electronic Filing System (EFS) Copy of Application for Publication	1	1	2.5	3	$145	$435
16	Copy of File Content Showing Redactions	1	1	4	4	$400	$1,600
17	Copy of the Applicant or Patentee’s Record of the Application (including copies of the correspondence, list of the correspondence, and statements verifying whether the record is complete or not)	6	6	2	12	$145	$1,740
18	Request for Continued Examination (RCE) Transmittal	154,766	154,766	.3 (18 minutes)	46,430	$400	$18,572,000
19	Request for Suspension of Action or Deferral of Examination Under 37 CFR 1.103(b), (c), or (d)	832	832	.2 (12 minutes)	166	$400	$66,400
20	Request for Voluntary Publication or Republication (includes publication fee for republication)	134	134	.2 (12 minutes)	27	$145	$3,915
21	Applicant Initiated Interview Request Form	30,557	30,557	.4 (24 minutes)	12,223	$400	$4,889,200
22	Processing Fee Under 37 CFR 1.17(i) Transmittal	119	119	.08 (5 minutes)	10	$400	$4,000
23	Request to Retrieve Electronic Priority Application (s) Under 37 CFR 1.55(h)	5,858	5,858	.25 (15 minutes)	1,465	$400	$585,600
24	Authorization or Rescission of Authorization to Permit Access to Application-as-filed by Participating Offices Under 37 CFR 1.14(h)	7,747	7,747	.25 (15 minutes)	1,937	$400	$774,800
25	Petition for Express Abandonment to Obtain a Refund	1,827	1,827	.2 (12 minutes)	365	$400	$146,000
26	Pre-Appeal Brief Request for Review	7,760	7,760	5	38,800	$400	$15,520,000
27	Request for Corrected Filing Receipt	42,089	42,089	.08 (5 minutes)	3,367	$145	$488,215
28	Request for First Action Interview (Pilot Program) (Electronic only)	2,026	2,026	2.5	5,065	$400	$2,026,000
29	Petition to Make Special Based on Age for Advancement of Examination under 37 CFR 1.102(c)(1) (EFS-Web only)	1,471	1,471	2	2,942	$400	$1,176,800
30	Filing a submission after final rejection (see 37 CFR 1.129(a))	93	93	8	744	$400	$297,600
31	Correction of inventorship after first office action on the merits	2,910	2,910	.75 (45 minutes)	2,183	$400	$873,200
32	Request for correction in a patent application relating to inventorship or an inventor name, or order of names, other than in a reissue application (37 CFR 1.48)	14,216	14,216	.75 (45 minutes)	10,662	$400	$4,264,800
33	Request to correct or update the name of the applicant under 37 CFR 1.46(c)(1), or change the applicant under 37 CFR 1.46(c)(2)	11,398	11,398	.2 (12 minutes)	2,280	$400	$912,000
	Total	3,559,314	3,559,314	- - - -	3,091,718	- - - -	$817,143,050

Table 4: Total Hourly Burden For Individuals And Households Respondents

Item No.	Item	Estimated Annual Respondents	Estimated Annual Responses (year) (a)	Estimated Time for Response (hours) (b)	Estimated Annual Burden (hour/year) (a) x (b) = c	Rate2 ($/hour) (d)	Estimated Annual Burden (c) x (d) = e
1	Information Disclosure Statements that require the fee set forth in 37 CFR 1.17(p)	19,324	19,324	2	38,648	$400	$15,459,200
2	Transmittal Form	20,506	20,506	2	41,012	$145	$5,946,740
3	Petition for Extension of Time under 37 CFR 1.136(a)	7,800	7,800	.3 (18 minutes)	2,340	$145	$339,300
4	Express Abandonment under 37 CFR 1.138	57	57	.25 (15 minutes)	14	$145	$2,030
5	Statutory Disclaimers (including terminal disclaimers)	1,790	1,790	.25 (15 minutes)	448	$400	$179,200
6	Request for Expedited Examination of a Design Application	32	32	.25 (15 minutes)	8	$400	$3,200
7	Petition for Revival of an Application for Patent Abandoned Unintentionally	237	237	1	237	$400	$94,800
8	Petition for Revival of an Application for Patent Abandoned for Failure to Notify the Office of a Foreign or International Filing	4	4	1	4	$400	$1,600
9	Requests to Access, Inspect and Copy	25,500	25,500	.25 (15 minutes)	6,375	$145	$924,375
10	Deposit Account Order Form	1,994	1,994	.25 (15 minutes)	499	$145	$72,355
11	Certificates of Mailing or Transmission	18,000	18,000	.03 (2 minutes)	540	$145	$78,300
12	Statement Under 37 CFR 3.73(c)	5,334	5,334	.25 (15 minutes)	1,334	$400	$533,600
13	Non-publication Request	660	660	.25 (15 minutes)	165	$400	$66,000
14	Rescission of Previous Non-publication Request (35 U.S.C. § 122(b)(2)(B)(ii) and, if applicable, Notice of Foreign Filing (35 U.S.C. § 122(b)(2)(B)(iii)	66	66	.25 (15 minutes)	17	$400	$6,800
18	Request for Continued Examination (RCE) Transmittal	4,787	4,787	.3 (18 minutes)	1,436	$400	$574,400
19	Request for Suspension of Action or Deferral of Examination Under 37 CFR 1.103(b), (c), or (d)	26	26	.2 (12 minutes)	5	$400	$2,000
20	Request for Voluntary Publication or Republication (includes publication fee for republication)	4	4	.2 (12 minutes)	1	$145	$145
21	Applicant Initiated Interview Request Form	945	945	.4 (24 minutes)	378	$400	$151,200
22	Processing Fee Under 37 CFR 1.17(i) Transmittal	4	4	.08 (5 minutes)	1	$400	$400
23	Request to Retrieve Electronic Priority Application (s) Under 37 CFR 1.55(h)	181	181	.25 (15 minutes)	45	$400	$18,000
24	Authorization or Rescission of Authorization to Permit Access to Application-as-filed by Participating Offices Under 37 CFR 1.14(h)	240	240	.25 (15 minutes)	60	$400	$24,000
25	Petition for Express Abandonment to Obtain a Refund	56	56	.2 (12 minutes)	11	$400	$4,400
26	Pre-Appeal Brief Request for Review	240	240	5	1,200	$400	$480,000
27	Request for Corrected Filing Receipt	1,302	1,302	.08 (5 minutes)	104	$145	$15,080
28	Request for First Action Interview (Pilot Program) (Electronic only)	63	63	2.5	158	$400	$63,200
29	Petition to Make Special Based on Age for Advancement of Examination under 37 CFR 1.102(c)(1) (EFS-Web only)	45	45	2	90	$400	$36,000
30	Filing a submission after final rejection (see 37 CFR 1.129(a))	3	3	8	24	$400	$9,600
31	Correction of inventorship after first office action on the merits	90	90	.75 (45 minutes)	68	$400	$27,200
32	Request for correction in a patent application relating to inventorship or an inventor name, or order of names, other than in a reissue application (37 CFR 1.48)	440	440	.75 (45 minutes)	330	$400	$132,000
33	Request to correct or update the name of the applicant under 37 CFR 1.46(c)(1), or change the applicant under 37 CFR 1.46(c)(2)	353	353	.2 (12 minutes)	71	$400	$28,400
	Total	110,083	110,083	- - - -	95,623	- - - -	$25,273,525

13. Provide an estimate for the total annual cost burden to respondents or record keepers resulting from the collection of information. (Do not include the cost of any hour burden already reflected on the burden worksheet).

• The cost estimate should be split into two components: (a) a total capital and start-up cost component (annualized over its expected useful life) and (b) a total operation and maintenance and purchase of services component. The estimates should take into account costs associated with generating, maintaining, and disclosing or providing the information. Include descriptions of methods used to estimate major cost factors including system and technology acquisition, expected useful life of capital equipment, the discount rate(s), and the time period over which costs will be incurred. Capital and start-up costs include, among other items, preparations for collecting information such as purchasing computers and software; monitoring, sampling, drilling and testing equipment; and record storage facilities.

• If cost estimates are expected to vary widely, agencies should present ranges of cost burdens and explain the reasons for the variance. The cost of purchasing or contracting out information collections services should be a part of this cost burden estimate. In developing cost burden estimates, agencies may consult with a sample of respondents (fewer than 10), utilize the 60-day pre-OMB submission public comment process and use existing economic or regulatory impact analysis associated with the rulemaking containing the information collection, as appropriate.

The total annual (non-hour) respondent cost burden for this information collection is estimated to be $408,845,999, with $1,377,194 in postage costs and $407,468,805 in filing fees. Tables 4 and 5, below, calculate the anticipated non-hourly cost burden of this information collection to the public.

Filing Fees

Table 5: Filing Fees (Non-hour) Cost Burden for Patent Processing

Item No.	Item	Estimated Annual Responses (a)	Estimated Cost (b)	Estimated Non-Hour Cost Burden (a) x (b)
1	Information Disclosure Statements (IDS) that require the fee set forth in 37 CFR 1.17(p) (large entity)	108,938	$260	$28,323,880
1	IDS that require the fee set forth in 37 CFR 1.17(p) (small entity)	27,198	$130	$3,535,740
1	IDS that require the fee set forth in 37 CFR 1.17(p) (micro entity)	770	$65	$50,050
3	One-month Extension of Time under 37 CFR 1.136(a) (large entity)	84,428	$220	$18,574,160
3	One-month Extension of Time under 37 CFR 1.136(a) (small entity)	34,564	$110	$3,802,040
3	One-month Extension of Time under 37 CFR 1.136(a) (micro entity)	4,035	$55	$221,925
3	Two-month Extension of Time under 37 CFR 1.136(a) (large entity)	36,165	$640	$23,145,600
3	32Two-month Extension of Time under 37 CFR 1.136(a) (small entity)	19,728	$320	$6,312,960
3	32Two-month Extension of Time under 37 CFR 1.136(a) (micro entity)	2,346	$160	$375,360
3	Three-month Extension of Time under 37 CFR 1.136(a) (large entity)	30,668	$1480	$45,388,640
3	Three-month Extension of Time under 37 CFR 1.136(a) (small entity)	30,442	$740	$22,527,080
3	Three-month Extension of Time under 37 CFR 1.136(a) (micro entity)	3,227	$370	$1,193,990
3	Four-month Extension of Time under 37 CFR 1.136(a) (large entity)	1,860	$2320	$4,315,200
3	Four-month Extension of Time under 37 CFR 1.136(a) (small entity)	2,366	$1160	$2,744,560
3	Four-month Extension of Time under 37 CFR 1.136(a) (micro entity)	294	$580	$170,520
3	Five-month Extension of Time under 37 CFR 1.136(a) (large entity)	2,038	$3160	$6,440,080
3	Five-month Extension of Time under 37 CFR 1.136(a) (small entity)	2,257	$1580	$3,566,060
3	Five-month Extension of Time under 37 CFR 1.136(a) (micro entity)	182	$790	$143,780
5	Statutory Disclaimer (including terminal disclaimer) (large entity)	44,625	$170	$7,586,250
5	Statutory Disclaimer (including terminal disclaimer) (small entity)	14,365	$170	$2,442,050
5	Statutory Disclaimer (including terminal disclaimer) (micro entity)	691	$170.00	$117,470
6	Request for Expedited Examination of a Design Application (large entity)	381	$1600	$609,600
6	Request for Expedited Examination of a Design Application (small entity)	468	$800	$374,400
6	Request for Expedited Examination of a Design Application (micro entity)	218	$400	$87,200
7	Petition for Revival of an Application for Patent Abandoned Unintentionally (large entity)	3,006	$2100	$6,312,600
7	Petition for Revival of an Application for Patent Abandoned Unintentionally (small entity)	3,730	$1050	$3,916,500
7	Petition for Revival of an Application for Patent Abandoned Unintentionally (micro entity)	1,167	$525.00	$612,675
8	Petition for revival of an application for patent abandoned for failure to notify the office of a foreign or international filing (large entity)	108	$2100	$226,800
8	Petition for revival of an application for patent abandoned for failure to notify the office of a foreign or international filing (small entity)	22	$1050	$23,100
8	Petition for revival of an application for patent abandoned for failure to notify the office of a foreign or international filing (micro entity)	14	$525.00	$7,350
16	Copy of File Content Showing Redactions	1	$140	$140
18	Request for Continued Examination (RCE) Transmittal (First Request) (large entity)	74,458	$1360	$101,262,880
18	Request for Continued Examination (RCE) Transmittal (First Request) (small entity)	26,592	$680	$18,082,560
18	Request for Continued Examination (RCE) Transmittal (First Request) (micro entity)	5,318	$340	$1,808,120
18	Request for Continued Examination (RCE) Transmittal (Second and Subsequent Requests) (large entity)	37,076	$2000	$74,152,000
18	Request for Continued Examination (RCE) Transmittal (Second and Subsequent Requests) (small entity)	13,241	$1000	$13,241,000
18	Request for Continued Examination (RCE) Transmittal (Second and Subsequent Requests) (micro entity)	2,648	$500	$1,324,000
19	Request for Suspension of Action or Deferral of Examination Under 37 CFR 1.103(b), (c), or (d) (large entity)	601	$220	$132,220
19	Request for Suspension of Action or Deferral of Examination Under 37 CFR 1.103(b), (c), or (d) (small entity)	215	$110	$23,650
19	Request for Suspension of Action or Deferral of Examination Under 37 CFR 1.103(b), (c), or (d) (micro entity)	42	$55	$2,310
20	Request for Voluntary Publication or Republication (includes publication fee for republication)	138	$140	$19,320
22	Processing Fee Under 37 CFR 1.17(i) Transmittal	123	$140	$17,220
30	Filing a submission after final rejection (see 37 CFR 1.129(a)) (large entity)	46	$880	$40,480
30	Filing a submission after final rejection (see 37 CFR 1.129(a)) (small entity)	44	$440	$19,360
30	Filing a submission after final rejection (see 37 CFR 1.129(a)) (micro entity)	5	$220	$1,100
31	Correction of inventorship after first office action on the merits (large entity)	1156	$640	$739,840
31	Correction of inventorship after first office action on the merits (small entity)	793	$320	$253,760
31	Correction of inventorship after first office action on the merits (micro entity)	62	$160	$9,920
32	Request for correction in a patent application relating to inventorship or an inventor name, or order of names, other than in a reissue application (37 CFR 1.48) (large entity)	10,259	$260	$2,667,340
32	Request for correction in a patent application relating to inventorship or an inventor name, or order of names, other than in a reissue application (37 CFR 1.48) (small entity)	3,664	$130	$476,320
32	Request for correction in a patent application relating to inventorship or an inventor name, or order of names, other than in a reissue application (37 CFR 1.48) (micro entity)	733	$65	$47,645
	Total	- - - -	- - - -	$407,468,805

Postage

The public may submit the paper forms and petitions in this information collection to the USPTO by mail through the United States Postal Service. The public may also include a signed certification of the date of mailing in order to receive credit for timely filing. Therefore, the USPTO estimates that the average Priority Mail rate for a standard 3 ounce manila envelope is $8.05.

Table 6: Postage Costs (Non-hour) Cost Burden for Patent Processing

IC No.	Item	Estimated Mailed Responses (a)	Postage Cost (b)	Total Annual Postage Costs (a) x (b) = (c)
1	Information Disclosure Statements	25,000	$8.05	$201,250
2	Transmittal Form	50,000	$8.05	$402,500
3	Petitions for Extension of Time under 37 CFR 1.136(a)	10,000	$8.05	$80,500
4	Express Abandonment under 37 CFR 1.138	200	$8.05	$1,610
5	Statutory Disclaimers	2,000	$8.05	$16,100
6	Request for Expedited Examination of a Design Application	10	$8.05	$80.50
7	Petition for Revival of an Application for Patent Abandoned Unintentionally	500	$8.05	$4,025
8	Petition for Revival of an Application for Patent Abandoned for Failure to Notify the Office of a Foreign or International Filing	10	$8.05	$80.50
9	Requests to Access, Inspect, and Copy	5,000	$8.05	$40,250
10	Deposit Account Order Form	100	$8.05	$805
11	Certificate of Mailing or Transmission	50,000	$8.05	$402,500
13	Statement under 37 CFR 3.73(c)	10,000	$8.05	$80,500
13	Non-publication Request	1,000	$8.05	$8,050
14	Rescission of Previous Non-publication Request (35 U.S.C. § 122(b)(2)(B)(ii) and, if applicable, Notice of Foreign Filing (35 U.S.C. § 122(b)(2)(B)(iii)	50	$8.05	$402
16	Copy of File Content Showing Redactions	1	$8.05	$8
17	Copy of the Applicant or Patentee’s Record of the Application (including copies of the correspondence, list of the correspondence, and statements verifying whether the record is complete or not)	10	$8.05	$80.50
18	Request for Continued Examination (RCE) Transmittal	5,000	$8.05	$40,250
19	Request for Suspension of Action or Deferral of Examination under 37 CFR 1.103(b), (c), or (d)	50	$8.05	$402.50
20	Request for Voluntary Publication or Republication (includes publication fee for republication)	10	$8.05	$80.50
21	Applicant-Initiated Interview Request Form	3,500	$8.05	$28,175
22	Processing Fee under 37 CFR 1.17(i) Transmittal	10	$8.05	$80.50
23	Request to Retrieve Electronic Priority Application(s) under 37 CFR 1.55(d)	500	$8.05	$4,025
24	Authorization or Rescission of Authorization to Permit Access to Application-as-filed by Participating Offices under 37 CFR 1.14(h)	500	$8.05	$4,025
25	Petition for Express Abandonment to Obtain a Refund	50	$8.05	$402.50
26	Pre-appeal Brief Request for Review	500	$8.05	$4,025
27	Request for Corrected Filing Receipt	1,000	$8.05	$8,050
30	Filing a Submission after Final Rejection (see 37 CFR 1.129(a))	10	$8.05	$80.50
31	Correction of Inventorship after First Office Action on the Merits	100	$8.05	$805
32	Request for Correction in a Patent Application Relating to Inventorship or an Inventor Name, or Order of Names, Other than in a Reissue Application (37 CFR1.48)	500	$8.05	$4,025
33	Request to Correct or Update the Name of the Applicant Under 37 CFR 1.46(c)(1), or Change the Applicant under 37 CFR 1.46(c)(2).	500	$8.05	$4,025
	Total	166,111	- - - -	$1,337,194

14. Provide estimates of annualized costs to the Federal government. Also, provide a description of the method used to estimate cost, which should include quantification of hours, operational expenses (such as equipment, overhead, printing, and support staff), and any other expense that would not have been incurred without this collection of information. Agencies may also aggregate cost estimates from Items 12, 13, and 14 in a single table.

The USPTO estimates that it takes a GS-7, step 1 employee between 2 minutes (0.03 hours) and 4 hours to process the items in this information collection. The USPTO estimates that the cost of a GS-7, step 1 employee is currently $30.32 (GS hourly rate of $23.32 with 30% [$7.00] added for benefits and overhead).

Table 6 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 Patent Processing

IC No.	Item	Estimated Response Time (Hours) (a)	Estimated Annual Responses (b)	Estimated Annual Burden (Hours) (a) x (b) = (c)	Rate ($/hr) (d)	Total Annual Government Cost (c) x (d) = (e)
1	Information Disclosure Statements and eIDS	0.30 (18 minutes)	775,000	232,500	$30.32	7,049,400
2	Transmittal Form	0.10 (6 minutes)	900,000	90,000	$30.32	2,728,800
3	Petition for Extension of Time under 37 CFR 1.136(a)	0.10 (6 minutes)	300,000	30,000	$30.32	909,600
4	Express Abandonment under 37 CFR 1.138	0.10 (6 minutes)	5,000	500	$30.32	15,160
5	Statutory Disclaimers	0.20 (12 minutes)	60,000	12,000	$30.32	363,840
6	Request for Expedited Examination of a Design Application	0.10 (6 minutes)	400	40	$30.32	1,213
7	Petition for Revival of an Application for Patent Abandoned Unavoidably or Unintentionally	0.30 (18 minutes)	8,000	2,400	$30.32	72,768
8	Petition for Revival of an Application for Patent Abandoned for Failure to Notify the Office of a Foreign or International Filing	0.30 (18 minutes)	200	60	$30.32	1,819
9	Requests to Access, Inspect and Copy	0.10 (6 minutes)	100,000	10,000	$30.32	303,200
10	Deposit Account Order Form	0.20 (12 minutes)	1,700	340	$30.32	10,309
11	Certificates of Mailing/Transmission	0.10 (6 minutes)	800,000	80,000	$30.32	2,425,600
12	Statement under 37 CFR 3.37(b)	0.10 (6 minutes)	250,000	25,000	$30.32	758,000
13	Non-publication Request	0.50 (30 minutes)	24,000	12,000	$30.32	363,840
14	Rescission of Previous Non-publication Request (35 U.S.C. § 122(b)(2)(B)(ii)) and, if applicable, Notice of Foreign Filing (35 U.S.C. § 122(b)(2)(B)(iii))	0.50 (30 minutes)	950	475	$30.32	14,402
15	Electronic Filing System (EFS) Copy of Application for Publication	0.25 (15 minutes)	1	0	$30.32	8
16	Copy of File Content Showing Redactions	4 (240 minutes)	1	4	$30.32	121
17	Copy of the Applicant or Patentee’s Record of the Application (including copies of the correspondence, list of the correspondence, and statements verifying whether the record is complete or not)	1	10	10	$30.32	303
18	Request for Continued Examination (RCE) Transmittal	0.60 (36 minutes)	170,000	102,000	$30.32	3,092,640
19	Request for Suspension of Action or Deferral of Examination under 37 CFR 1.103(b), (c) or (d)	0.30 (18 minutes)	750	225	$30.32	6,822
20	Request for Voluntary Publication or Republication (includes publication fee for republication)	0.03 (2 minutes)	300	9	$30.32	273
21	Applicant Initiated Interview Request Form	0.10 (6 minutes)	14,500	1,450	$30.32	43,964
22	Processing Fee under 37 CFR 1.17(i) Transmittal	0.08 (5 minutes)	350	28	$30.32	849
23	Request to Retrieve Electronic Priority Application(s) under 37 CFR 1.55(d)	0.06 (4 minutes)	12,000	720	$30.32	21,830
24	Authorization to Permit Access to Application-as-filed by Participating Offices under 37 CFR 1.14(h)	0.06 (4 minutes)	15,000	900	$30.32	27,288
25	Petition for Express Abandonment to Obtain a Refund	0.10 (6 minutes)	1,600	160	$30.32	4,851
26	Pre-Appeal Brief Request for Review	0.10 (6 minutes)	11,000	1,100	$30.32	33,352
27	Request for Corrected Filing Receipt	0.08 (5 minutes)	30,000	2,400	$30.32	72,768
28	Request for First Action Interview (Pilot Program)	0.30 (18 minutes)	1,200	360	$30.32	10,915
29	Petition to Make Special Based on Age for Advancement of Examination under 37 CFR 1.102(c)(1)	0.10 (6 minutes)	2,000	200	$30.32	6,064
30	Filing a submission after final rejection (see 37 CFR 1.129(a))	0.50 (30 minutes)	120	60	$30.32	1,819
31	Correction of Inventorship after First Office Action on the Merits	0.30 (18 minutes)	3,000	900	$30.32	27,288
32	Request for Correction in a Patent Application Relating to Inventorship or an Inventor Name, or Order of Names, Other than in a Reissue Application (37 CFR1.48)	0.30 (18 minutes)	15,000	4,500	$30.32	136,440
33	Request to Correct or Update the Name of the Applicant Under 37 CFR 1.46(c)(1), or Change the Applicant under 37 CFR 1.46(c)(2).	0.30 (18 minutes)	10,000	3,000	$30.32	90,960
	Total	- - - - -	3,512,082	 	- - - -	18,596,507

15. Explain the reasons for any program changes or adjustments reported on the burden worksheet.

OMB Previously approved the renewal of this information collection in 2017. The current collection contains:

Burdens reductions due to two removed items in information collection

This renewal subtracts two items currently approved in another information collection (0651– 0063: Patent Trial and Appeal Board (PTAB) Appeals). These two items are: Notice of Appeal and Request for Oral Hearing. With this move all items pertaining to PTAB trial appeals are in a single information collection (0651-0063).

Changes in responses and burden hours

For this renewal, the USPTO estimates that the annual responses will increase by 57,856 (from 3,611,541 to 3,669,397) and the total burden hours will decrease by 646,414 (from 3,833,755 to 3,187,341) from the currently approved burden for this collection. These changes are due to agency estimates.

Changes in annual (non-hour) costs

For this renewal, the USPTO estimates that the total annual (non-hour) costs will decrease by $88,960 (from $486,820,972 to $408,845,999).

16. For collections of information whose results will be published, outline plans for tabulation and publication. Address any complex analytical techniques that will be used. Provide the time schedule for the entire project, including beginning and ending dates of the collection of information, completion of report, publication dates, and other actions.

There is no plan to publish this information for statistical use.

17. If seeking approval to not display the expiration date for OMB approval of the information collection, explain the reasons that display would be inappropriate.

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

18. Explain each exception to the topics of the certification statement identified in “Certification for Paperwork Reduction Act Submissions.”

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.

1 2019 Report of the Economic Survey, published by the Committee on Economics of Legal Practice of the American Intellectual Property Law Association (AIPLA); https://www.aipla.org/detail/ journal-issue/2019-report-of-the-economic-survey. The USPTO uses the mean rate for attorneys in private firms which is $400 per hour. The hourly rate for paraprofessional/paralegals is estimated at $145 from data published in the 2018 Utilization and Compensation Survey by the National Association of Legal Assistants (NALA)

2 2019 Report of the Economic Survey, published by the Committee on Economics of Legal Practice of the American Intellectual Property Law Association (AIPLA); https://www.aipla.org/detail/ journal-issue/2019-report-of-the-economic-survey. The USPTO uses the mean rate for attorneys in private firms which is $400 per hour. The hourly rate for paraprofessional/paralegals is estimated at $145 from data published in the 2018 Utilization and Compensation Survey by the National Association of Legal Assistants (NALA)