0651-0062 2024 Patent Fee Rule CWS

JUSTIFICATION FOR NONMATERIAL/NONSUBSTANTIVE CHANGE 

Third-Party Submissions and Protests 

OMB Control Number 0651-0062 

 

Background 

 

The United States Patent and Trademark Office (USPTO) is required by 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, or to protest, a patent application pending before the USPTO. 

 

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 printed publications of potential relevance to the examination of the application.  

 

A third-party submission under 37 CFR 1.290 may be made in any nonprovisional utility, design, and plant application, including any continuing application. A third-party 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 statutorily specified 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 1.291 are supported by a separate statutory provision from third-party submissions under 37 CFR 1.290. As a result, there are several differences between protests and third-party submissions. For more information, compare chapter 1900 and section 1134 of the Manual of Patent Examining Procedure (9th Edition, Rev. 01.2024). 

  

In support of RIN 0651-AD64 (Setting and Adjusting Patent Fees During Fiscal Year 2025; 89 FRN 91898)¹, the USPTO is changing five fees in this information collection. 

Table 1: Changes in Fee Amount 

Item No.	Fee Code	Item	Current Fee	New Fee	Changes in Fee Amount
1	1818	Third-Party Submissions in Non-Issued Applications (undiscounted entity)	$180	$195	+$15
1	2818	Third-Party Submissions in Non-Issued Applications (small and micro entities)	$72	$78	+$6
2	1830	Protests by the Public Against Pending Applications Under 37 CFR 1.291—second or subsequent protest by the same real party in interest (undiscounted entity)	$140	$150	+$10
2	2830	Protests by the Public Against Pending Applications Under 37 CFR 1.291—second or subsequent protest by the same real party in interest (small entity)	$56	$60	+$4
2	3830	Protests by the Public Against Pending Applications Under 37 CFR 1.291—second or subsequent protest by the same real party in interest (micro entity)	$28	$30	+$2

 

Table 2: Proposed Burden 

Item No.	Fee Code	Item	Reponses  (a)	New Fee  (b)	New Non-hour Cost Burden   (a) x (b) = (c)
1	1818	Third-Party Submissions in Non-Issued Applications (undiscounted entity)	742	$195	$144,690
1	2818	Third-Party Submissions in Non-Issued Applications (small and micro entities)	275	$78	$21,450
2	1830	Protests by the Public Against Pending Applications Under 37 CFR 1.291—second or subsequent protest by the same real party in interest (undiscounted entity)	1	$160	$160
2	2830	Protests by the Public Against Pending Applications Under 37 CFR 1.291—second or subsequent protest by the same real party in interest (small entity)	1	$60	$60
2	3830	Protests by the Public Against Pending Applications Under 37 CFR 1.291—second or subsequent protest by the same real party in interest (micro entity)	1	$30	$30
		Totals	1,018	- - -	$166,390

 

Table 3: Changes in Cost 

Item No.	Fee Code	Items	Current Cost  (a)	New Cost  (b)	Change in Non-hour Cost Burden  (b) – (a) = (c)
1	1818	Third-Party Submissions in Non-Issued Applications (undiscounted entity)	$133,560	$144,690	$11,130
1	2818	Third-Party Submissions in Non-Issued Applications (small and micro entities)	$19,800	$21,450	$1,650
2	1830	Protests by the Public Against Pending Applications Under 37 CFR 1.291—second or subsequent protest by the same real party in interest (undiscounted entity)	$140	$160	$20
2	2830	Protests by the Public Against Pending Applications Under 37 CFR 1.291—second or subsequent protest by the same real party in interest (small entity)	$56	$60	$4
2	3830	Protests by the Public Against Pending Applications Under 37 CFR 1.291—second or subsequent protest by the same real party in interest (micro entity)	$28	$30	$2
		Totals	$153,584	$166,390	$12,806

 

Summary of Changes 

 

The aforementioned rulemaking results in the revision of five fees, with an increase of $12,806 in annual non-hourly costs to collection 0651-0062. 

 

Changes in Burden 

 

Burden Type	Currently Approved	Proposed Change	New Estimate
Non-hourly Cost Burden	$153,686	+$12,806	$166,492

 

0651-0062’s revised burden is as follows: 

 

• 1,033 annual responses (unchanged) 

• 10,330 annual hourly burden (unchanged) 

• $166,492 in annual non-hourly burden costs 

1 https://www.govinfo.gov/content/pkg/FR-2024-11-20/pdf/2024-26821.pdf