The United States Patent and Trademark Office (USPTO) is authorized by the Leahy-Smith America Invents Act P.L. 112-29 and 35 U.S.C. § 131 et seq., to examine an application for patent and, when appropriate, issue a patent. The provisions of 35 U.S.C. §§ 122(c), 122(e), 131, and 151, as well as 37 CFR 1.290 and 1.291, limit the ability of a third-party to have information entered and considered in a patent application or to protest a patent application pending before the Office.
37 CFR 1.290 provides a mechanism for third-parties to submit to the USPTO, for consideration and inclusion in the record of a patent application, any patents, published patent applications, or other patent publications of potential relevance to the examination of the application. A preissuance submission under 37 CFR 1.290 may be made in any nonprovisional utility, design, and plant application, as well as in any continuing application. A preissuance submission under 37 CFR 1.290 must include a concise description of the asserted relevance of each document submitted and must be submitted within a certain statutory specific time period.
37 CFR 1.291 permits a member of the public to file a protest against a pending application. Protests pursuant to 37 CFR 1.921 are supported by a separate statutory provision from third-party submissions under 37 CFR 1.290 (35 U.S.C. 122(c) v. 35 U.S.C. 122(e)).
The information collected via third-party submissions under 37 CFR 1.290 and via protests under 37 CFR 1.291 is necessary so that the public may contribute to the quality of issued patents. The USPTO will use this information, as appropriate, during the patent examination process to assist in evaluating the patent application.
Changes in Responses and Hourly Burden due to Adjustment in Agency Estimate
The total number of responses has increased by 153 due to estimated fluctuations in the number of respondents/submissions in this information collection. This increase in the number of respondents and responses results in an increase of 1,530 hours in the annual time burden estimates.
Changes in Annual Non-hour Costs due to Adjustment in Agency Estimate
For this renewal, the USPTO estimates that the total annual non-hour costs will increase by $75,053 from the previous approval. This increase is due to estimated fluctuations in submissions for items that require a fee.
On behalf of this Federal agency, I certify that the collection of information encompassed by this request complies with 5 CFR 1320.9 and the related provisions of 5 CFR 1320.8(b)(3).
The following is a summary of the topics, regarding the proposed collection of information, that the certification covers:
(i) Why the information is being collected;
(ii) Use of information;
(iii) Burden estimate;
(iv) Nature of response (voluntary, required for a benefit, or mandatory);
(v) Nature and extent of confidentiality; and
(vi) Need to display currently valid OMB control number;
If you are unable to certify compliance with any of these provisions, identify the item by leaving the box unchecked and explain the reason in the Supporting Statement.
Form PTO/SB/429 Third-Party Submission under 37 CFR 1.290
0651-0062 Supporting Statement 2024 final.docx
Leahy-Smith America Invents Act.pdf
Protests by the Public Against Pending Applications Under 37 CFR 1.291 (Individuals or Households)