0651-0032 Supporting Statement 2024 Final_11_15

SUPPORTING STATEMENT

United States Patent and Trademark Office

Initial Patent Applications

OMB CONTROL NUMBER 0651-0032

2024

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 Title 35 of the United States Code, including 35 U.S.C. 131, to examine applications for patents. The USPTO administers the patent statutes relating to examination through various rules in Chapter 37 of the Code of Federal Regulations (CFR), such as, for example, 37 CFR 1.16 through 1.84. Each patent applicant must provide sufficient information to allow the USPTO to properly examine the application to determine whether it meets the criteria set forth in the patent statutes and regulations for issuance as a patent. The patent statutes and regulations require that an application for patent include the following information:

1. A specification containing a description of the invention and at least one claim defining the property right sought by the applicant;

2. A drawing(s) or photograph(s), where necessary for an understanding of the invention;

3. An oath or declaration signed by the applicant (under 35 U.S.C. 115(f), the time for filing the oath or declaration is no later than the date on which the issue fee for the patent is paid); and

4. A filing fee.

Various types of patent applications are covered under this information collection:

• Noncontinuing, nonprovisional utility, plant and design applications,

• Provisional applications,

• Continuation/divisional applications of international applications,

• Continued prosecution applications (design), and

• Continuation/divisional and continuation-in-part applications of utility, plant, and design applications.

In addition, this information collection covers certain other papers filed by applicants, such as, for example, petitions to accept an unintentionally delayed priority or benefit claim, petitions to accept a filing by other than all of the inventors or a person not the inventor, and petitions requesting that applications filed under 37 CFR 1.495(b) be accorded a receipt date.

Furthermore, this information collection incorporates the lone item in 0651-0073 (Patent Law Treaty): petitions to restore the right of priority to a foreign application under 37 CFR 1.55(c) or the benefit of a prior-filed provisional application under 37 CFR 1.78(b). The petitions are used to extend the 12-month periods set forth in 35 U.S.C. 119(a) and (e) by an additional 2 months where there is an unintentional delay in filing an application claiming priority to a foreign application or the benefit of a provisional application. Once this information collection is renewed, and the petitions are added, 0651-0073 will be discontinued.

A complete listing of the particular items covered under this information collection is provided in the tables below.

Table 1 provides the specific statues and regulations requiring the USPTO to collect the patent application and petition information covered by the information collection:

Table 1: Information Requirements

Item No.	Requirement	Statute	Regulation
1-11	Specification and claim	35 U.S.C. §§ 111 and 112	37 CFR 1.51 through 1.53, 1.57 and 1.58, and 1.71 through 1.78
1-11	Drawings	35 U.S.C. § 113	37 CFR 1.51 through 1.53, 1.58, and 1.81 through 1.84
1-11	Declaration	35 U.S.C. §§ 25, 115, 117, and 118	37 CFR 1.41 through 1.43, 1.45 through 1.48, 1.51 through 1.53, and 1.63 through 1.69
1-11	Filing Fee	35 U.S.C. §§ 41 and 111	37 CFR 1.16 and 1.53
8	Continued Prosecution Application – Design (Request Transmittal and Receipt)	35 U.S.C. §§ 111,120, and 121	37 CFR 1.53(d) and 1.78
12	Petition to Accept Unintentionally Delayed Priority or Benefit Claim	35 U.S.C. §§ 119, 120, 121, 365, and 386	37 CFR 1.55 and 1.78
13	Petition to be the applicant under 37 CFR 1.46(b) by a person who otherwise shows sufficient proprietary interest in the matter	35 U.S.C. §§ 116 through 118	37 CFR 1.46(b)
14	Petition under 37 CFR 1.6(g) to Accord National Stage Correspondence Required by 37 CFR 1.495(b) a Receipt Date	35 U.S.C. § 371	37 CFR 1.6(g) and 1.495(b)
14	Papers Filed Under 37 CFR 1.41(c) or 1.41(a)(2) (pre-AIA) to Supply the Name or Names of the Inventor or Inventors after the Filing Date Without a Cover Sheet as Prescribed by 37 CFR 1.51(c)(1) in a provisional application	35 U.S.C. §§ 111(b) and 116	37 CFR 1.41(c) or 1.41(a)(2) (pre-AIA)
14	Papers Filed Under 37 CFR 1.48(d) for Correction of Inventorship in a Provisional Application	35 U.S.C. §§ 111(b) and 116	37 CFR 1.48(d)
14	Papers Filed Under 37 CFR 1.53(c)(2) or 1.53(c)(2) (pre-PLT (AIA)) to Convert a Nonprovisional Application Filed Under 1.53(b) to a Provisional Application Filed Under 1.53(c)	35 U.S.C. § 111(a) and (b)	37 CFR 1.53(b) and 1.53(c)(2)
15	Petition to Restore the Right of Priority under 37 CFR 1.55(c) Or Petition to Restore the Benefit of a Prior-Filed Provisional Application under 37 CFR 1.78(b)	35 U.S.C. 119(a) 35 U.S.C. 119(e)	37 CFR 1.55(c) 37 CFR 1.78(b)

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 public uses this information collection to: submit noncontinuing, nonprovisional utility, plant, and design patent applications; provide patent application data; submit continuation, continuation-in-part, and divisional applications of international and nonprovisional patent applications; request continued prosecution of design patent applications; submit provisional patent applications; file certain petitions; supply the name or names of the inventor or inventors after the filing date without a cover sheet in a provisional application; identify and correct the inventorship of provisional patent applications; convert nonprovisional applications to provisional applications; and restore the right of priority to a foreign application or the benefit of a provisional application.

There are 71 forms in this information collection. This total includes versions of the inventor’s oath and declaration forms that were created to comply with the changes resulting from the Leahy-Smith America Invents Act, e.g., forms AIA/01, AIA/02, etc., as well as pre-America Invents Act versions of the oath and declaration forms, e.g., forms SB/01, SB/02, etc., and foreign language translations of the oath and declaration forms, e.g., forms AIA/01CN, AIA/01DE, etc. As detailed in Table 2 below, several items do not have forms associated with them.

The information collected, maintained, and used in this information collection is based on OMB and USPTO guidelines. These guidelines include 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 what instruments and forms are used to collect items in this information collection, and how the items are used by the public and by the USPTO.

Table 2: Needs and Uses

Item No.	Form/Function	Form Number	Needs and Uses
1-11	Specification (includes at least one claim) and Drawing(s)	No Form Associated	Used by the applicant to provide a description of the invention and of the property right sought by the applicant (the claim(s)). Used by the USPTO to examine an application for patent, and when appropriate, issue the application as a patent.
1-10	Patent Application Fee Determination Record Multiple Dependent Claim Fee Calculation Sheet	PTO/SB/06 PTO/SB/07	Used by the USPTO to determine the appropriate fees due for a patent application filing, including fees required when an application contains multiple dependent claims. NOTE: Applicants are not required to use these forms. However, their use reduces fee calculation errors by applicants, especially in applications containing multiple dependent claims.
1-14	Fee Transmittal Form	PTO/SB/17	Used by applicants to indicate fees paid and payment method. Used by the USPTO to verify applicant fee determination and to process the fees indicated.
1-14	Utility Patent Application Transmittal Design Patent Application Transmittal Plant Patent Application Transmittal	PTO/AIA/15 PTO/AIA/18 PTO/AIA/19	Used by the applicant to identify the papers being filed in the application. Used by the applicant to indicate their correspondence address. Used by the USPTO to determine whether the submitted papers constitute an application for patent, and whether it is a utility, plant, or design application.
1-14	Declaration (37 CFR 1.63) for Utility or Design Application using an Application Data Sheet (37 CFR 1.76) Declaration (37 CFR 1.63) for Plant Application Using an Application Data Sheet (37 CFR 1.76) Declaration (37 CFR 1.63) for Utility or Design Application Using an Application Data Sheet (37 CFR 1.76) [foreign translations]	PTO/SB/01A PTO/AIA/01 PTO/SB/03A PTO/AIA/03 PTO/AIA/01CN, DE, ES, FR, IT, JP, KR, NL, RU, SE	Enables applicant to conveniently provide streamlined declaration information if the application also includes an application data sheet. Used by the USPTO to determine whether the required information has been set forth in the declaration. Foreign translations assist applicants for whom English is not their native language, including Chinese, Dutch, German, Italian, French, Japanese, Russian, Swedish, Spanish, and Korean language declarations.
1-14	Declaration for Utility or Design Patent Application (37 CFR 1.63) Declaration for Utility or Design Patent Application (37 CFR 1.63) [foreign translations] Plant Patent Application (35 U.S.C. 161) Declaration (37 CFR 1.162) Plant Patent Application (35 U.S. C. 161) Declaration (37 CFR 1.63) Supplemental Declaration for Utility or Design Patent Application (37 CFR 1.67) Supplemental Sheet for Declaration Declaration (Additional Inventors) and Supplemental Priority Data Sheet Declaration (Additional Inventors) and Supplemental Priority Data Sheet [foreign translations]	PTO/SB/01 PTOAIA/08 PTO/SB/101-110 PTO/AIA/09 PTO/SB/03 PTO/SB/04 PTO/AIA/10 PTO/SB/02 PTO/SB/02CN, DE, ES, FR, IT, JP, KR, NL, RU, SE	Used by applicants to ensure that all of the inventor oath or declaration requirements of 37 CFR 1.63 have been met by providing the prerequisite language. Supplemental sheets are used by applicants to identify additional inventors and/or foreign priority applications The PTO/SB versions are also used by applicants to easily claim foreign priority benefits under 35 U.S.C. §§ 119 or 365. Used by the USPTO to determine whether the required information has been set forth in the declaration. The PTO/SB versions are also used by the USPTO to capture foreign priority claims. Foreign translations assist applicants for whom English is not their native language, including Chinese, Dutch, German, Italian, French, Japanese, Russian, Swedish, Spanish, and Korean language declarations.
1-14	Substitute Statement in Lieu of an Oath or Declaration for Utility or Design Patent Application (35 U.S.C. 115(d) and 37 CFR 1.64) Substitute Statement in Lieu of an Oath or Declaration for Utility or Design Patent Application (35 U.S.C. 115(d) and 37 CFR 1.64) [foreign translations] Substitute Statement in Lieu of an Oath or Declaration for Plant Patent Application (35 U.S.C. 115(d) and 37 CFR 1.64)) Substitute Statement Supplemental Sheet Declaration Supplemental Sheet for Legal Representatives	PTO/AIA/02 PTO/AIA/02CN, DE, ES, FR, IT, JP, KR, NL, RU, SE PTO/AIA/04 PTO/AIA/11 PTO/SB/02LR	Used by applicants to ensure that all of the substitute statement requirements of 37 CFR 1.64 have been met by providing the prerequisite language. Enables the legal representative of a legally incapacitated or deceased inventor, or an assignee, a person to whom the inventor is under an obligation to assign, person who otherwise shows a sufficient proprietary interest pursuant to 37 CFR 1.46, or a joint inventor to file a patent application on behalf of the inventor to whom the substitute statement applies. Used by the USPTO to determine whether the required information has been set forth in the declaration.
1-6	Application Data Sheet Form Application Data Sheet 37 CFR 1.76 Web-based Application Data Sheet Form	PTO/SB/14 PTO/AIA/14 eADS	Provides applicant with a convenient manner to provide bibliographic information concerning the applicant and application that the applicant is either required under 37 CFR 1.76, or desires, to provide to the USPTO. Used by the USPTO to auto load data directly into USPTO databases, which reduce information capture errors caused by hand keying. Used by the USPTO to provide a quick acknowledgment of the application and the information in USPTO records concerning the applicant and application.
1	Electronic Utility Patent Application	No Form Associated	Used by filers to electronically file a utility application with the USPTO and to include the necessary filing fees. Used by the USPTO to examine an application for patent, and when appropriate, issue the application as a patent.
3	Electronic Design Application	No Form Associated	Used by filers to electronically file a design application with the USPTO and to include the necessary filing fees. Used by the USPTO to examine an application for patent, and when appropriate, issue the application as a patent.
10	For Design Applications Only: Continued Prosecution Application (CPA) Request Transmittal For Design Applications Only: Receipt for Facsimile Transmitted CPA	PTO/SB/29 PTO/SB/29A	Used by the applicant to request additional examination of a previously submitted design application. Used by the USPTO to process and initiate an additional examination of a previously submitted design application.
11	Provisional Application for Patent Cover Sheet – Paper and Electronic Filing	PTO/SB/16	Used by the applicant to file a provisional application with the USPTO. Used by the applicant to include filing fees. Used by the USPTO to identify provisional applications in order to promptly and properly process them. Used by the USPTO to prepare the filing receipt. Used by the USPTO to identify provisional applications that may require foreign filing licenses.
12	Petition to Accept Unintentionally Delayed Priority or Benefit Claim	PTO/SB/445 PTO/SB/458	Used by the applicant to submit an unintentionally delayed foreign priority or domestic benefit claim to the USPTO. Used by the USPTO to determine whether the applicant has included the documentation and fees necessary for the USPTO to accept an unintentionally delayed foreign priority or domestic benefit claim under 35 U.S.C.§§ 119, 120, 121, 365, or 386.
13	Petition to be the applicant under 37 CFR 1.46(b) by a person who otherwise shows sufficient proprietary interest in the matter	No Form Associated	Used by a person who otherwise shows sufficient proprietary interest in the matter to file and prosecute an application for patent as the applicant on behalf of the inventor. Used by the USPTO to ensure that the necessary information has been provided by the person to file the application on behalf of an inventor.
14	Papers Filed under 37 CFR 1.41(c) or 1.41(a)(2) (pre-AIA) to Supply the Name or Names of the Inventor or Inventors After the Filing Date Without a Cover Sheet as Prescribed by 37 CFR 1.51(c)(1) in a Provisional Application	No Form Associated	Used by filers to supply or change the name or names of the inventor or inventors of a provisional application filed without a cover sheet after the provisional application filing date. Used by the USPTO to change the name or names of the inventor or inventors of a provisional applications filed without a cover sheet after the provisional application filing date.
14	Petition under 37 CFR 1.6(g) to Accord the Application under 37 CFR 1.495(b) a Receipt Date	No Form Associated	Used by applicants to request a receipt date for applications filed under 37 CFR 1.495(b). Used by the USPTO to assign applications filed under 37 CFR 1.495(b) a receipt date.
14	Papers Filed Under 37 CFR 1.48(d) for Correction of Inventorship in a Provisional Application	No Form Associated	Used by filers to request a correction of the inventorship of a provisional application. Used by the USPTO to determine whether the inventorship of a provisional application should be corrected.
14	Papers Filed Under 37 CFR 1.53(c)(2) or 1.53(c)(2) (pre-PLT (AIA)) to Convert a Nonprovisional Application Filed Under 1.53(b) to a Provisional Application Filed Under 1.53(c)	No Form Associated	Used by filers to request that a nonprovisional application filed under 37 CFR1.53(b) be converted to a provisional application filed under 37 CFR 1.53(c). Used by the USPTO to determine whether to convert a nonprovisional application filed under 1.53(b) to a provisional application filed under 37 CFR 1.53(c).
15	Petition to Restore the Right of Priority to a Foreign Application under 37 CFR 1.55(c) Or Petition to Restore the Benefit of a Provisional Application under 37 CFR 1.78(b)	PTO/SB/459	Used by patent applicants and/or patentees to petition under 37 CFR 1.55(c) to restore the right of priority to a prior-filed foreign application in a subsequent application. Used by the USPTO to determine whether the applicant and/or patentee has satisfied the conditions of the applicable statute (35 U.S.C. 119) and regulation (37 CFR 1.55(c)). Or Used by patent applicants and/or patentees to petition under 37 CFR 1.78(b) to restore the benefit of a prior-filed provisional application in a subsequent application. Used by the USPTO to determine whether the applicant and/or patentee has satisfied the conditions of the applicable statute (35 U.S.C. 119) and regulation (37 CFR 1.78(b)).

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 USPTO typically collects the information in this information collection electronically through the USPTO patent electronic filing system (Patent Center), the USPTO’s online filing and viewing system for patent applications and related documents. For those respondents who choose to not file information in this collection electronically, the patent applications themselves may alternatively be submitted by mail or hand delivery. Information in this collection other than patent applications may alternatively be submitted by mail, hand delivery, or facsimile. In particular, facsimile submission of the information in this collection is limited to certain items in accordance with 37 CFR 1.6(d). Aside from Patent Center, the USPTO does not use automated, electronic, mechanical, or other technological collection techniques to collect the information in this information collection.

Patent Center allows customers to electronically file patent applications and associated documents through their standard Web browser without downloading special software, changing their documentation preparation tools, or altering their workflow processes.

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 only when an applicant (or representative) submits:

• a patent application;

• a petition to accept an unintentionally delayed priority or benefit claim;

• a petition to be the applicant under 37 CFR 1.46(b) by a person who otherwise shows a sufficient proprietary interest in the matter;

• a petition under 37 CFR 1.6(g) to accord the application under 37 CFR 1.495(b) a receipt date;

• the papers filed under 37 CFR 1.41(c), 1.41(a)(2) (pre-AIA), 1.48(d), 1.53(c)(2), and 1.53(c)(2) (pre-PLT (AIA));

• a petition to restore the benefit of a provisional application under 37 CFR 1.78(b); or

• a petition to restore the right of priority to a foreign application under 37 CFR 1.55(c).

This information is not collected elsewhere. Therefore, this information collection does not create a duplication of effort or collection of data.

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

Items in this collection of information involving the payment of fees will be submitted by small businesses or other small entities, including micro entities. Pursuant to section 10(b) of the Leahy-Smith America Invents Act (AIA), Pub. L. 112-29, as amended by the Unleashing American Innovators Act of 2022 (UAIA), Pub. L. 117-103, the USPTO provides a 60% reduction in the fees for certain patent filings by small entity applicants, such as persons, small businesses, and nonprofit organizations who meet the definition of a small entity provided at 37 CFR 1.27(a). Also pursuant to section 10(b) of the AIA, the USPTO provides an 80% reduction in the fees set or adjusted under section 10(a) of the Act for certain patent filings by applicants who meet the definition of a micro entity provided at 35 U.S.C. § 123 and 37 CFR 1.29.

No significant burden is placed on small or micro entities to establish their status and pay the discounted fee. Small entities must only make an assertion of entitlement to small entity status in the manner set forth in 37 CFR 1.27(c)(1) or (c)(3). Micro entities must only provide a certification of micro entity status complying with the requirements of either 37 CFR 1.29(a) or (d).

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

If this information collection is not conducted, or if it is conducted less frequently, the USPTO cannot examine, or cannot as efficiently examine, an application or issue a patent as required by the patent statutes.

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 January 10, 2024 (89 FR 1557).¹ The public comment period ended on March 11, 2024.

One public comment was received. It stated that the information collection should continue. USPTO agrees with this assessment, as examining patent applications is vital to the Agency’s mission.

Additionally, the USPTO published a 30-day notice in the Federal Register on March 28, 2024 (89 FR 21495).² The USPTO received two comments on collection 0651-0032 during its 30-day comment period. The points made by the comments, both of which were authored by the same individuals, are summarized and responded to below.

Transition to Patent Center

Comment: The commenter claims that USPTO’s transition to Patent Center has cost the public $150 – 450 million in paperwork burden due to its software bugs. The comment also claims that USPTO did not seek OMB approval for the rollout of Patent Center.

Paperwork burden is created from:

• Applicants having to do workarounds to avoid software bugs, such as starting over and submitting a paper filing or editing their existing application to filing successfully. He estimates that 5-10% of applicants could need an extra hour to file because of this. Commenters total list of bugs totals around 100 (page 46).

• Patent Center lacks the functionality of Private Pair/EFS-Web. In 2023 commenters listed 11 features that Patent Center lacks from the legacy software.

Response: Patent Center is the USPTO’s web-based tool that incorporates filing, retrieving, and managing patent applications within a single, unified interface. The USPTO debuted alpha and beta versions of Patent Center in March 2018 and April 2019, respectively. The USPTO made Patent Center generally available to the public in April 2020, as an alternative option to Private PAIR and EFS-Web. In November 2023, the USPTO retired Private PAIR and EFS-Web.

The USPTO has implemented many of the suggestions for improvement it received during Patent Center’s extended rollout. For example, user feedback has resulted in improvements, such as:

• facilitated document description selection with type ahead search of keywords;

• saved submission storage for 14 days;

• increased the number of documents that can be filed in one submission to 100;

• ability to switch between attorneys without having to re-authenticate; and

• searching by attorney docket number from the Patent Center sign-in page.

The USPTO continues to add functionality to Patent Center based on user feedback. For example, the following additional functionalities will be available soon:

• displaying the attorney document number on the fee payment page;

• filing an assignment through Patent Center;

• inventor name filter in the Workbench;

• ability to remove a registration number from multiple customer numbers; and

• download documents indicator for correspondence.

Overall, Patent Center provides many enhancements to the patent application process, including:

• incorporation of filing and application management within a single user interface for enhanced user experience;

• utilization of the same USPTO.gov accounts and sponsorships that are used to log in to EFS-Web and PAIR;

• submission of the specification, claims, abstract and drawings in a single DOCX document without the need to manually separate sections;

• a ‘drag-and-drop’ interface that allows filers to upload multiple files at once;

• separate submission and payment receipts that clearly confirm the status of submitted documents and successful payments; and

• a training mode which acts as an interactive simulation where applicants can safely practice filing their documents.

Currently, the USPTO does not have actionable data to support an increase or decrease in the burden estimate for any particular item in this information collection. For example, the substantive requirements for the items in this information collection have not changed. Nor has the introduction of Patent Center to facilitate the patent application process changed the information being collected by the items in the collection.

The commenters express a general concern that Patent Center is “buggy” and, for support, points to information previously provided to the USPTO. Of the information relied on by the commenter, nearly all of it is from prior to the November 2023 retirement of Private PAIR and EFS-Web. The only document relied on by the commenter that contains information subsequent to the November 2023 retirement of Private PAIR and EFS-Web is the list of bugs at patentcenter-tickets.oppedahl.com. But none of the “open issues” identified by the webpage could reasonably lead to a general change in USPTO burden estimates, let alone a specific change in burden to any of the items in the present collection. For example, as of the date of the drafting of this response, the final “open issue” on the webpage dates from March and May 2024. The March issue relates to the spelling of “incurred” in the text “Additional charges may be incurred.” Two issues from May 2024 relate to correspondence searching.

Added burden estimate for Patent Center

Comment: The commenter suggests that Patent Center is less efficient than the systems it is replacing (Private PAIR and EFS-Web) that the USPTO should account for additional burdens in the time estimates for this information collection. There are several separate numbers suggested in the comment ranging from $70 million to $400 million. In the conclusion of the comment, it is suggested that the USPTO should account for $70 million in burdens for the first year and decline that estimate to zero by year three.

Response: The commenter’s generic estimation of an annual public burden increase cannot be applied wholesale to the information collection. The USPTO associates burden estimates with specific item lines, or actions, within an information collection. The commenter does not identify any particular item within the present collection that has been impacted by the USPTO’s replacement of Private PAIR and EFS-Web with Patent Center, or specify how the items burden estimate should be revised. The USPTO provides a time burden estimate (a reflection of the time needed to complete items) and a cost burden estimate (a reflection of the actual dollars paid to the USPTO). The commenter is confusing these two categories. Any additional time needed by the public would be accounted for under the time burdens not the cost burdens. The amount of fees paid to the USPTO is not related to the time it takes to submit an item. Applying the commenter’s suggestion to this information collection is not possible because the commenter does not identify which particular burden estimate should be revised.

Concerns with the DOCX file format

Comment: The commenters state that DOCX is Microsoft’s proprietary format and not as stable as the PDF file format. The commenters note that in deciding to collect information in the DOCX format, the USPTO ignored a previous USPTO study that investigated the use of PDFs and their application to USPTO processes. The commenters assert that the study shows the benefits of the PDF standard.

Response: DOCX is a word processing file format based on open standards, including Extensible Markup Language (XML). It is supported by many popular word processing applications, such as Microsoft Word 2007 or higher, Google Docs, Office Online, LibreOffice, and Pages for Mac. Microsoft developed DOCX as an XML-based format to replace the proprietary binary format that used the .doc file extension. Microsoft is committed to an open standard (OOXML) for DOCX, which is covered by Microsoft’s Open Specification Promise.

DOCX is a stable software standard. Whereas the PDF standard had new versions as recently as 2020, the latest version of the ECMA and ISO/IEC standards for DOCX were issued in 2016. And while it is true that editions of ISO 29500 were published in 2008, 2011, and 2016, the specification in the standard has had very few changes, other than clarifications and corrections to match actual usage in documents, since Word processing XML was first standardized in ECMA-376, Part 1, in 2006.

Major international IP offices are moving towards a DOCX standard, which will provide consistency between the USPTO and the other offices. The European Patent Office, Korean Intellectual Property Office, China National Intellectual Property Administration, the National Institute of Industrial Property (France), IP Australia, and World Intellectual Property Organization accept DOCX filings.

As for the previous USPTO study, the USPTO did not ignore it. The USPTO made the decision to encourage submissions of applicant files in the DOCX format in order to leverage its structured text capabilities and not rely upon the OCR process of PDF conversion. The results from the study showed that searchable text data is available in some PDFs, but the order and accuracy of the content could not be preserved. With DOCX, the USPTO is able to use the text directly and pass it to our downstream systems, which results in increased data accuracy and a more streamlined patent process.

DOCX Concerns and OMB approval

Comment: The commenters claim this ICR fails to inform OMB about the introduction of DOCX, which creates $200-600 million on annual burden on the public caused by proofreading errors. The comment also claims USPTO fails to seek clearance for DOCX in this ICR, and failed to do so during the NPRM.

The comment claims that USPTO has dismissed his provided evidence of software bugs, and that USPTO conceals the truth from OMB by saying that it “has not experienced the issue raised by commenters.”

The commenters assert that UPSTO’s DOCX filing system changes the document that the applicant uploads. These rendering errors cause hundreds of millions of dollars in burden due to the need for extra proofreading.

Response: The USPTO has provided consistent communication about the changes to Patent Center and the use of DOCX to both the public and to OMB. Several NPRMs have included discussion of DOCX and its use by the USPTO. In 2023, the USPTO submitted an information collection request dedicated to the DOCX processing. This information collection (0651-0089 DOCX submission requirements) was approved by OMB in 2023. This information collection addressed the commenters concerns about extra proofreading and included a burden estimate to account for the average user’s possible additional review of DOCX formatted documents. Commenters claim that the USPTO did not request clearance for the day-to-day burden of submitting this item to Patent Center by a DOCX file. Our supporting documentation made it clear that those items were covered not under 0089 but rather under the current information collection request (0032). Additionally, the USPTO did not change its burden estimate for the time to submit items, and neither the USPTO nor the commenters suggested clear reasons for adjusting these estimates. The USPTO hopes that Patent Center will result in slightly faster completion times for applicants submitting items, but currently does not have enough data to support changing estimates.

The USPTO debuted alpha and beta versions of Patent Center in March 2018 and October 2019, respectively, to a limited number of external users. The USPTO then held focus sessions with those users for feedback and refinement before making Patent Center generally available to the public in April 2020, as an alternative option to Private PAIR and EFS-Web. In November 2023, the USPTO retired Private PAIR and EFS-Web. Since 2020, the USPTO has held over 240 training sessions with approximately 35,000 attendees. The sessions include live demonstrations and question-and-answer periods, which allows the USPTO to continue to gather feedback and add and improve functionality.

The USPTO has been clear that we welcome feedback from the public about the use of Patent Center and the DOCX formatting. Any examples of errors that are received from the public are examined to help improve the system and correct any known problems. Many of the examples that the commenters cite are old issues that have been addressed, or are not forwarded to the USPTO for us to consider and response to. In the section below we address the issues that were included in this comment.

The USPTO continues to invite public feedback on Patent Center via IdeaScale® at uspto-emod.ideascale.com by highlighting its availability at the end of DOCX training sessions and on the Patent Center webpage at www.uspto.gov/patents/apply/patent-center. The USPTO has weekly meetings where it reviews the IdeaScale® posts and considers whether to move forward with the suggestions. Consideration on whether to move forward on a suggestion typically includes a discussion with the relevant team and developers to determine whether the suggestion is feasible. When the USPTO decides to act on a suggestion, it creates a user story and adds it to the backlog for implementation. The USPTO similarly considers the user feedback it receives through the question-and-answer periods during the training sessions. Moreover, the USPTO meets quarterly with the Intellectual Property Organization (IPO) and American Intellectual Property Association (AIPLA), and as needed with the Patent Public Advisory Committee (PPAC), to answer questions, receive feedback, and provide demonstrations as needed.

Examples of Patent Center errors

Comment: The commenters presentation included several examples of errors that they feel are the resulting from Patent Center’s functions especially its reliance on the DOCX format. Below are the examples that are described in the comment and the response. As seen in the response, the majority of these examples have been previously communicated (many of these months ago) and addressed by the USPTO; users in 2024 should no longer be experiencing these issues.

Response:

Issue 1: Boundy presented the example of a PDF that rendered an error in a math equation: (changed from (0.2u) to (10.2u). The “1” was added to the equation, corrupting it.

Response: This issue has previously been communicated and addressed by the USPTO and is now fixed. Current patent applications no longer have this rendering issue.

Issue 2: Psuedocode uploaded into DOCX was presenting completely misaligned and formatted.

Response: This issue has previously been communicated by a patent filer and addressed by the USPTO. Subsequent filers no longer are seeing this rendering error.

Issue 3: Equation rendered certain symbols as squares.

Response: This issue has previously been communicated by a patent filer and addressed by the USPTO. The new font has been added to system. Patent applicants can send fonts to the USPTO and obtain feedback about their performance in the system and request the USPTO to add them into the system profile.

Issue 4: Another equations rendered some symbols as squares.

Response: Like other issues with font rendering, this item has previously been communicated by a patent filer and addressed by the USPTO. The new font has been added to system.

Issue 5: Pages of text are missing, resulting in blank pages.

Response: This issue has previously been communicated by a patent filer early in the Patent Center and DOCX processing and was useful in helping the system learn. This has been addressed by the USPTO. Subsequent filers should no longer encounter this issue.

Issue 6: Another example of symbols being displayed as squares.

Response: This issue has previously been communicated by a patent filer and addressed by the USPTO. This example is unique to the filers actions in the system, but the USPTO adjusted system performance to avoid this problem for subsequent filers.

Issue 7: Applicant was prevented from uploading a document due to an undetected “automation field.”

Response: The patent filer did not follow filing instructions, but the USPTO provided a solution. The USPTO offers guidance for patent applicates that helps them avoid these errors.

Issue 8: Applicant’s claims were misnumbered after submission. There should have been 15 claims, and the document produced 31 claims.

Response: This issue was previously communicated to the USPTO and the DOCX processing software has been adjusted to resolve these issues. In this instance, the user did not follow standard guidance after finding this error. This resulted in a significantly more complicated set of problems than otherwise would have existed. The USPTO worked with this applicant to resolve the situation.

PDF Flattening

Comment: Applicant experienced a flattening of characters in their document. PDF was rendered perfectly but the DOCX version became flat and pixelated.

Response: This issue has previously been communicated and addressed by the USPTO and is now fixed.

The validation process included within Patent Center results in fewer errors in the patent application process overall. As a part of the DOCX intake process, preliminary validation is performed on DOCX documents at the time of upload. The system immediately detects and supplies the applicant with useful error and warning messages, allowing for adjustments to patent applications earlier in the process. This saves time, reduces potential costs to applicants and the USPTO, and prevents delays in processing by minimizing notices of missing parts or incomplete applications from the Office of Patent Application Processing (OPAP). An advantage of submitting in DOCX format directly is that submitted files from all applicants are validated and converted to PDF by USPTO systems in a consistent manner. The USPTO continuously performs rigorous testing to ensure that document integrity is preserved.

The validation features are new to the submission process and made available due to the structured data in DOCX files; this is not a feature that is available for PDF submissions. The validation step helps applicants identify issues with their application prior to submission. Currently less than 2% of all help desk tickets involve a DOCX submission, indicating that applicants may be benefiting from these system improvements.

The USPTO is continuing to modernize and streamline its patent application systems to support robust and reliable patent rights, speed the issuance of patents, and reduce the costs and barriers of global patent protection. The submission of patent applications in DOCX format facilitates the USPTO’s ongoing efforts. For example, filing in DOCX format:

• Improves patent application quality by providing content-based validations prior to submission;

• Provides automated document indexing;

• Improves downstream reuse of content by applicants and the USPTO;

• Improves searches for patent applications; and

• Eliminates the need for patent applicants to convert structured text to PDF format.

Moreover, since April 2022, the USPTO provides patent applicants with the option to submit a back-up, applicant-generated PDF version of the application along with the validated DOCX file(s) when filing an application in Patent Center. See “Filing Patent Applications in DOCX Format”, 87 FR 25226 (April 28, 2022).³ The USPTO has extended this option indefinitely and will keep copies of the applicant-generated PDF as part of the permanent record. See “Extension of the Option for Submission of a PDF With a Patent Application Filed in DOCX Format”, 88 FR 37036 (June 6, 2023).⁴ For example, for granted patents, the USPTO will keep copies of the applicant-generated PDF for at least 25 years after the patent grant before transferring it to the National Archives and Records Administration. Applicants choosing to submit an applicant-generated PDF do not incur the $400 surcharge and have an ongoing safeguard should any unexpected conversion discrepancies occur during the filing process.

In particular, if a discrepancy or error is discovered during the pendency of the application, and the discrepancy or error is not supported by the validated DOCX file(s), but is instead only supported by the applicant-generated PDF, the applicant may file a petition under 37 CFR 1.182 that identifies how the applicant- generated PDF supports the requested correction to the record. The USPTO will waive the fee under 37 CFR 1.17(f) for this petition when an applicant is relying on an applicant-generated PDF. See the April 2022 notice. If the discrepancy or error is discovered after issuance of a patent, at least two mechanisms (certificate of correction (35 U.S.C. 255; 37 CFR 1.322) and reissue (35 U.S.C. 251; 37 CFR 1.171-1.178)) are available to a patent owner wishing to make a correction by reference to the applicant-generated PDF. Although both a certificate of correction and a reissue are available even to a patent owner wishing to correct a DOCX discrepancy or error that opted not to file an applicant-generated PDF, the presence of the PDF may serve as additional support. For example, under 37 CFR 1.322, the mistake to be corrected by certificate of correction must, among other things, be “clearly disclosed in the records of the Office.” The presence of the applicant-generated PDF may help support such a determination.

Time Estimate for error reports

Comment: The commenters felt that the time needed to submit to the USPTO any error reports identifying application issues, font errors, and rendering and display concerns, and the time needed to resolve those issues, should be accounted for in this information collection, pursuant to the PRA.

Response:

The USPTO appreciates all error reports that are submitted. These items allow the USPTO to learn from our customers and focus resources on solving problems. Applicants are encouraged to reach out to the Electronic Business Center or any of the USPTO help desks as needed to support their submissions. However, the submission of error reports to the Electronic Business Center or the USPTO help desks is not generally included in the time burden estimates as those submissions are outside of the scope of the PRA.

Revised MPEP guidance on restriction practice

Comment: The commenters state that, in March 2023, the USPTO changed its guidance regarding restriction practice in the Manual of Patent Examiner Procedure (MPEP). The commenters claim that, as a result of the change, “excess burden arises … under 0651-0032 for additional new applications filed[,]” meaning that applicants will be forced to file more divisional applications.

Response: Restriction is the practice of requiring an applicant to elect a single claimed invention (e.g., a combination or sub combination invention, a product or process invention, a species within a genus) for examination when two or more independent inventions and/or two or more distinct inventions are claimed in a single patent application. One option available to an applicant for addressing a restriction requirement is to file a divisional application(s) for the other invention(s). The basis for restriction practice is found in the patent statute and USPTO rules, i.e., 35 U.S.C. 121 and 37 CFR 1.141-1.142.

The USPTO publishes the MPEP to provide patent examiners, applicants, attorneys, agents, and representatives of applicants with a reference work on the practices and procedures relative to the prosecution of patent applications and other proceedings before the USPTO. Notably, the MPEP does not have the force of law; all requirements governing restriction practice are found in Title 37 of the Code of Federal Regulations. Examiners are governed by the applicable statutes, rules, decisions, and orders and instructions issued by the USPTO Director and other officials authorized by the Director. Any restriction requirement issued by an examiner is based on the substantive law, petitionable within the USPTO and, if necessary, subsequently appealable to federal court.

Neither the statute nor the USPTO regulations on which restriction practice is based have changed. Additionally, the July 2022 MPEP changes announced in March 2023 did not impose new restriction requirements or otherwise change restriction practice. The discussion of restriction practice in MPEP 800 was revised in the July 2022 revision to harmonize existing guidance between different sections of the MPEP and the form paragraphs. Specifically, certain sections of the October 2019 revision of the 9th Edition of the MPEP (i.e., the prior version of the MPEP) referred to a “serious burden,” while other sections, including the form paragraphs (e.g., FP 8.01, 8.02, and 8.21), referred to a “search and/or examination burden.” Notably, the prior version of MPEP 803, which is titled “Restriction – When Proper” and is a threshold section for restriction practice guidance in chapter 800, referenced both search and examination in the context of a serious burden. As a result of the July 2022 revision, the MPEP’s guidance on restriction practice consistently references a serious search and/or examination burden.

The commenters claim that, as a result of the USPTO’s March 2023 restriction practice guidance change, applicants will be forced to file more divisional applications. The USPTO’s data does not support the claim of an irregular increase in the number of divisional application filings. In its 2021 renewal of 0651-0032, the USPTO forecast that respondents would file 97,833 Utility Continuation/Divisional Applications. The estimate represented a 30% increase over the 75,000 Utility Continuation/Divisional Applications that the USPTO forecasted respondents would file in its 2017 renewal of 0651-0032. In the current renewal of 0651-0032, the USPTO is forecasting that respondents will file 114,000 Utility Continuation/Divisional Applications, which represents a 16.5% increase from the 2020 renewal.

Filename Case Sensitivity

Comment: The commenters note that, as a result of changes the USPTO made to its systems, uppercase file name extensions, such as .PDF, are no longer acceptable. The commenters state that the change offers no benefit to the USPTO and only creates cost for the public.

Response: The USPTO transitioned to a protocol that requires uploaded files to have lowercase file name extensions to better align the uploaded files with the USPTO’s downstream systems. The improved alignment leads to fewer errors and thus represents a net benefit that outweighs any burden incurred.

USPTO Data and Third Party Software

Comment: The commenters state that Patent Center dropped several important data columns from the USPTO’s data feed format. The commenters claim that, consequently, the third-party software used by some respondents, such as the AppColl system, can no longer track certain deadlines, and deadline reports generated by the software have added noise. According to the commenters, this “will create extra burden for the public that could extend well into the tens of millions of dollars per year.” The commenters conclude that the USPTO is therefore violating its obligations to minimize the burden imposed on the public and maintain consistent reporting and recordkeeping practices.

Response: The USPTO is committed to continuously improving the customer experience, including the data resources it makes available to the public, and appreciates that some respondents use third party software to process USPTO data. As part of its commitment, the USPTO may occasionally need to make changes to its data resources. The USPTO communicates these changes to the public, but it is not responsible for troubleshooting the third-party software that processes the data. More importantly, the data resources the USPTO makes publicly available are not a collection of information that is subject to the Paperwork Reduction Act.

Nevertheless, when a Patent Center stakeholder informed the USPTO in November 2023 of issues regarding AppColl integration, the USPTO resolved the issues by December 2023. The USPTO has not received any communications or Electronic Business Center escalations regarding XML data downloads from filers or third-party vendors since the issues were resolved in December 2023.

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.

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 confidentiality of patent applications is governed by statute (35 U.S.C 122) and regulation (37 CFR 1.11 and 1.14). The USPTO has a legal obligation to maintain the confidentiality of the contents of unpublished patent applications and related documents. 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 (37 CFR 1.11(a) and 1.217).

Applications filed through Patent Center are maintained in confidence as required by 35 U.S.C. 122(a) until the application is published or issued as a patent. The confidentiality, security, integrity, authenticity, and non-repudiation of patent applications submitted electronically through Patent Center are maintained using TLS or SSL protocols. The USPTO posts the file contents of issued patents and application publications on its website. 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, or unless one or more specific conditions for power to inspect or access are met pursuant to 37 CFR 1.14(c)-(j). Patent applicants and/or their designated representatives can view the current status of their patent application through Patent Center.

The Privacy Act of 1974 (Pub. L. 93-579) requires that an applicant be given certain information in connection with the items covered under this information collection. The applicable Privacy Act System of Records Notice for this information collection is COMMERCE/PAT-TM-7 Patent Application Files (SORN 7), available at 78 FR 19243 (March 29, 2013).⁵ The purpose of SORN 7 is to disclose how the USPTO intends to use, maintain, and protect the information that it has collected to carry out the duties of the USPTO to examine patent applications and issue patents. SORN 7 manages all applicant records 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 or has been granted.

The information in SORN 7 is protected from disclosure to third parties in accordance with the Privacy Act until the application is published under 35 U.S.C. 122(b) or issued as a patent under 35 U.S.C. 153. Prior to application publication or patent issuance, the information in SORN 7 is protected from disclosure to third parties in accordance with the Privacy Act, except that disclosure is permitted for the following routine uses including, but not limited to: law enforcement in the event that the system of records indicates a violation or potential violation of law; a federal, state, local, or international agency, in response to its request; an agency, organization, or individual for the purpose of performing audit or oversight operations as authorized by law; non-federal personnel under contract to the agency; the Department of Justice for Freedom of Information Act (FOIA) assistance; a member of Congress working on behalf of an individual to whom the record pertains, when the individual has requested the member’s assistance with respect to the subject matter of the record; the Office of Personnel Management (OPM) for personnel research purposes; and the Office of Management and Budget (OMB) for legislative coordination and clearance.

Categories of individuals covered by SORN 7 include applicants for patent, including inventors, legal representatives for deceased or incapacitated inventors, and other persons authorized by law to make applications for patent.

The applicable PIA for this information collection is the Privacy Impact Assessment for the Patent End to End (PE2E) System (March 14, 2022), which is available at https://osec.doc.gov/opog/privacy/pto%20pias/PE2E-PIA_SAOP_Approval_Delegation.pdf. PE2E is a Master system portfolio consisting of next generation Patents Automated Information Systems (AIS). The goal of PE2E is to make the interaction of USPTO’s users as simple and efficient as possible in order to accomplish user goals. PE2E will be a single web-based examination tool providing users with a unified and robust set of tools. PE2E will overhaul the current patents examination baseline through the development of a new system that replaces the existing tools used in the examination process. The project stakeholders desire a simple, unified interface that does not require launching of separate applications in separate windows, and that supports new and improved IT advances. There are 14 sub-systems under PE2E, including Patent Center.

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 is considered to be of a sensitive nature.

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

• Respondent Calculation Factors

The USPTO projects that it will receive 588,255 responses per year. The USPTO estimates that approximately 155,569 of these responses will be from small entities (this estimate reflects an approximately 25% small entity response rate for all items in the information collection except for design-related items in the information collection, for which an approximately 35% small entity response rate is estimated), and continuation-in-part related items in the information collection, for which an approximately 55% small entity response rate is estimated).

The USPTO estimates that approximately 99% of the annual responses for this collection will be filed electronically.

• Burden Hour Calculation Factors

The USPTO estimates that it takes the public approximately from 45 minutes (0.75 hours) to 40 hours to complete the applications, petitions, and additional papers in this information collection, depending on the complexity of the request. This includes the time to gather the necessary information, prepare the application, petition, or other papers, and submit the completed request to the USPTO. The USPTO assumes that, on average, it takes the same amount of time to gather the necessary information, prepare the application, petition, or other paper, and submit it to the USPTO, whether the applicant submits it in paper form or electronically. Using these factors, USPTO estimates that the total respondent hourly burden for this information collection is 12,543,215 hours per year.

• Cost Burden Calculation Factors

The USPTO uses a professional rate of $447 per hour for the respondent cost burden calculations, which is the mean rate of intellectual property attorneys in private firms as shown in the 2023 Report of the Economic Survey published by the Committee on Economics of Legal Practice of the American Intellectual Property Law Association (AIPLA). Using this hourly rate, the USPTO estimates that the total respondent cost burden for this information collection is $5,606,817,105 per year.

Table 3: Total Hourly Burden for Private Sector Respondents

Item No.	Item	Estimated Annual Respondents (a)	Responses per Respondent (b)	Estimated Annual Responses (year) (a) x (b) = (c)	Estimated Time for Response (hours) (d)	Estimated Annual Burden (hour/year) (c) x (d) = (e)	Rate6 ($/hour) (f)	Estimated Annual Burden (e) x (f) = (g)
1	Noncontinuing, Nonprovisional Utility Applications	214,000	1	214,000	40	8,560,000	$447	$3,826,320,000
2	Noncontinuing, Nonprovisional Plant Applications	1,000	1	1,000	9	9,000	$447	$4,023,000
3	Noncontinuing, Nonprovisional Design Applications	42,000	1	42,000	7	294,000	$447	$131,418,000
4	Continuation/Divisional of an International Application	26,000	1	26,000	4	104,000	$447	$46,488,000
5	Utility Continuation/Divisional Applications	114,000	1	114,000	4	456,000	$447	$203,832,000
6	Plant Continuation/Divisional Application	5	1	5	3	15	$447	$6,705
7	Design Continuation/Divisional Application	6,000	1	6,000	1	6,000	$447	$2,682,000
8	Continued Prosecution Applications – Design (Request Transmittal and Receipt)	1,500	1	1,500	1	1,500	$447	$670,500
9	Utility Continuation-in-Part Applications	11,000	1	11,000	20	220,000	$447	$98,340,000
10	Design Continuation-in-Part Applications	850	1	850	3	2,550	$447	$1,139,850
11	Provisional Application for Patent Cover Sheet	160,000	1	160,000	18	2,880,000	$447	$1,287,360,000
12	Petition to Accept Unintentionally Delayed Priority or Benefit Claim	1,100	1	1,100	1	1,100	$447	$491,700
13	Petition to be the applicant under 37 CFR 1.46(b) by a person who otherwise shows a sufficient proprietary interest in the matter	3,000	1	3,000	1	3,000	$447	$1,341,000
14	Papers filed under the following: 1.41(c) or 1.41(a)(2) (pre-AIA) – to supply the name or names of the inventor or inventors after the filing date without a cover sheet as prescribed by 37 CFR 1.51(c)(1) in a provisional application. 1.48(d) – for correction of inventorship in a provisional application. 1.53 (c)(2) or 1.53(c)(2) (pre-PLT (AIA)) – to convert a nonprovisional application filed under 1.53(b) to a provisional application filed under 1.53(c)	7,000	1	7,000	.75	5,250	$447	$2,346,750
15	Petition to Restore the Right of Priority under 37 CFR 1.55(c) Or Petition to Restore the Benefit of a Prior-Filed Provisional Application under 37 CFR 1.78(b)	800	1	800	1	800	$447	$357,600
	Totals	588,255	- - -	588,255	- - -	12,543,215	- - -	$5,606,817,105

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.

There are no capital start-up, maintenance, or record-keeping costs. There is, however, non-hour cost burden in the way of drawing costs, filing fees, and postage costs.

The total (non-hour) respondent cost burden for this collection is estimated to be $1,156,505,487 per year per year, which includes $672,189,140 in filing fees, $484,123,750 in drawing costs, and $192,597 in postage.

Drawing Costs

Patent applicants can submit drawings with their utility, plant, design, and provisional applications. Applicants can prepare these drawings on their own or they can hire patent illustration services firms to create them. As a basis for estimating the drawing costs, the USPTO expects that all applicants will have their drawings prepared by a patent illustration firm.

Estimates for the patent drawing can vary greatly, depending on the number of figures to be produced, the total number of pages for the drawings, and the complexity of the drawings. Because there are many variables involved, the USPTO is using the average of the cost ranges found for the application drawings to derive the estimated cost per sheet that is then used to calculate the total drawing costs.

The utility, plant, and design continuation and divisional applications use the same drawings as the initial filings, so they are not included in these totals. New drawings may be submitted in the continuation-in-part applications, so those numbers are included in these estimates. The drawings for the continued prosecution applications also are included in the drawing cost totals for designs. There are no continuation, divisional, or continuation-in-part provisional applications.

• Utility Application Drawings – The USPTO estimates that the costs to produce these drawings can range from $50 to $200 per sheet. Taking the average of this range, the USPTO estimates that it can cost $125 per sheet to produce the drawings and that, on average, 10 sheets of drawings are submitted for an average cost of $1,250 to produce the utility drawings. Out of 339,000 utility applications submitted, the USPTO estimates that 68% (or 230,520) of these applications will be submitted with drawings.

• Plant Application Drawings – In general, photographs are submitted for the plant applications, although drawings can also be submitted. The USPTO estimates that the cost to produce the photographs or drawings for the plant applications can range from $50 to $100. Taking the average of this range, the USPTO estimates that it can cost $75 per sheet to produce the photographs or drawings for the plant applications. On average, 10 sheets of drawings are submitted for an average cost of $750 to produce the photographs/drawings for the plant applications. Out of 1,005 plant applications submitted per year, the USPTO estimates that all of them will be submitted with drawings.

• Design Application Drawings – The USPTO estimates that the costs to produce design drawings can range from $50 to $350 per sheet. Taking the average of this range, the USPTO estimates that it can cost $200 per sheet to produce design drawings. On average, 10 sheets of drawings are submitted for an average cost of $2,000 to produce the design drawings. Out of 48,850 design applicants submitted per year, the USPTO estimates that all of them will be submitted with drawings.

• Provisional Application Drawings – The USPTO estimates that the cost to produce the provisional drawings can range from $30 to $200 per sheet. Taking the average of this range, the USPTO estimates that it can cost $115 per sheet to produce the provisional drawings. On average, 10 sheets of drawings are submitted for an average cost of $1,150 to produce the provisional drawings. Out of 160,000 provisional applications submitted per year, the USPTO estimates that 53% (or 84,800) of these applications will be submitted with drawings.

Table 4: Drawing Costs to Respondents

Item No.	Item	Estimated Annual Responses (a)	Estimated Drawing Costs Amount ($) (b)	Drawing Cost Totals (a) x (b) = (c)
1	Utility Application Drawings	230,520	$1,250	$288,150,000
2	Plant Application Drawings (Photographs)	1,005	$750	$753,750
3	Design Applications Drawings	48,850	$2,000	$97,700,000
11	Provisional Application Drawings	84,800	$1,150	$97,520,000
	Totals	365,175	- - -	$484,123,750

Fees

This information collection also has filing fees associated with various submissions. The amounts of these fees are listed in Table 5 below.

Table 5: Filing Fee Costs to Respondents

Item No.	Fee Code	Item	Estimated Annual Responses (a)	Amount (b)	Totals (a) x (b) = (c)
1, 4	1011	Basic Filing fee – Utility (Paper Filing – Also Requires Non-Electronic Filing Fee Under 1.16(t)) (undiscounted entity)	250,450	$320	$80,144,000
1, 4	2011	Basic Filing fee – Utility (Paper Filing – Also Requires Non-Electronic Filing Fee Under 1.16(t)) (small entity)	260	$128	$33,280
1, 4	3011	Basic Filing fee – Utility (Paper Filing – Also Requires Non-Electronic Filing Fee Under 1.16(t)) (micro entity)	14,520	$64	$929,280
1, 4	4011	Basic filing fee – Utility (electronic filing for small entities)	84,760	$64	$5,424,640
1, 4	1081	Utility Application Size Fee – for Each Additional 50 Sheets That Exceeds 100 Sheets (undiscounted entity)	20,640	$420	$8,668,800
1, 4	2081	Utility Application Size Fee – for Each Additional 50 Sheets That Exceeds 100 Sheets (small entity)	11,630	$168	$1,953,840
1, 4	3081	Utility Application Size Fee – for Each Additional 50 Sheets That Exceeds 100 Sheets (micro entity)	220	$84	$18,480
1, 4	1111	Utility Search Fee (undiscounted entity)	248,740	$700	$174,118,000
1, 4	2111	Utility Search Fee (small entity)	83,900	$280	$23,492,000
1, 4	3111	Utility Search Fee (micro entity)	14,330	$140	$2,006,200
1, 4	1311	Utility Examination Fee (undiscounted entity)	249,600	$800	$199,680,000
1, 4	2311	Utility Examination Fee (small entity)	84,100	$320	$26,912,000
1, 4	3311	Utility Examination Fee (micro entity)	14,360	$160	$2,297,600
1,2 4-6, and 9	1201	Each Independent Claim in Excess of Three (undiscounted entity)	42,020	$480	$20,169,600
1,2 4-6, and 9	2201	Each Independent Claim in Excess of Three (small entity)	14,500	$192	$2,784,000
1,2 4-6, and 9	3201	Each Independent Claim in Excess of Three (micro entity)	1,400	$96	$134,400
1,2 4-6, and 9	1202	Each Claim in Excess of 20 (undiscounted entity)	304,230	$100	$30,423,000
1,2 4-6, and 9	2202	Each Claim in Excess of 20 (small entity)	158,280	$40	$6,331,200
1,2 4-6, and 9	3202	Each Claim in Excess of 20 (micro entity)	7,790	$20	$155,800
1,2 4-6, and 9	1203	Multiple Dependent Claim (undiscounted entity)	730	$860	$627,800
1,2 4-6, and 9	2203	Multiple Dependent Claim (small entity)	470	$344	$161,680
1,2 4-6, and 9	3203	Multiple Dependent Claim (micro entity)	70	$172	$12,040
2, 5	1313	Plant Examination Fee (undiscounted entity)	490	$660	$323,400
2, 5	2313	Plant Examination Fee (small entity)	480	$264	$126,720
2, 5	3313	Plant Examination Fee (micro entity)	10	$132	$1,320
2, 5	1013	Basic filing fee – Plant (undiscounted entity)	490	$220	$107,800
2, 5	2013	Basic filing fee – Plant (small entity)	480	$88	$42,240
2, 5	3013	Basic filing fee – Plant (micro entity)	10	$44	$440
2, 5	1113	Plant Search fee (undiscounted entity)	490	$440	$215,600
2, 5	2113	Plant Search fee (small entity)	480	$176	$84,480
2, 5	3113	Plant Search fee (micro entity)	10	$88	$880
2, 5	1083	Plant Application Size Fee - for each additional 50 sheets that exceeds 100 sheets (undiscounted entity)	1	$420	$420
2, 5	2083	Plant Application Size Fee - for each additional 50 sheets that exceeds 100 sheets (small entity)	1	$168	$168
2, 5	3083	Plant Application Size Fee - for each additional 50 sheets that exceeds 100 sheets (micro entity)	1	$84	$84
3, 6	1012	Basic Filing Fee – Design (undiscounted entity)	20,020	$220	$4,404,400
3, 6	2012	Basic Filing Fee – Design (small entity)	19,480	$88	$1,714,240
3, 6	3012	Basic Filing Fee – Design (micro entity)	15,890	$44	$699,160
3, 6	1017	Basic Filing Fee – Design (CPA) (undiscounted entity)	920	$220	$202,400
3, 6	2017	Basic Filing Fee – Design (CPA) (small entity)	500	$88	$44,000
3, 6	3017	Basic Filing Fee – Design (CPA) (micro entity)	85	$44	$3,740
3, 6	1082	Design Application Size Fee – for Each Additional 50 Sheets That Exceeds 100 Sheets (undiscounted entity)	170	$420	$71,400
3, 6	2082	Design Application Size Fee – for Each Additional 50 Sheets That Exceeds 100 Sheets (small entity)	90	$168	$15,120
3, 6	3082	Design Application Size Fee – for Each Additional 50 Sheets That Exceeds 100 Sheets (micro entity)	30	$84	$2,520
3, 6	1112	Design Search Fee (undiscounted entity)	20,660	$160	$3,305,600
3, 6	2112	Design Search Fee (small entity)	19,690	$64	$1,260,160
3, 6	3112	Design Search Fee (micro entity)	15,880	$32	$508,160
3, 6	1312	Design Examination Fee (undiscounted entity)	20,670	$640	$13,228,800
3, 6	2312	Design Examination Fee (small entity)	19,710	$256	$5,045,760
3, 6	3312	Design Examination Fee (micro entity)	15,880	$128	$2,032,640
11	1085	Provisional Application Size Fee – for Each Additional 50 Sheets That Exceeds 100 Sheets (undiscounted entity)	11,180	$420	$4,695,600
11	2085	Provisional Application Size Fee – for Each Additional 50 Sheets That Exceeds 100 Sheets (small entity)	11,360	$168	$1,908,480
11	3085	Provisional Application Size Fee – for Each Additional 50 Sheets That Exceeds 100 Sheets (micro entity)	110	$84	$9,240
11	1005	Provisional Application Filing Fee (undiscounted entity)	63,710	$300	$19,113,000
11	2005	Provisional Application Filing Fee (small entity)	69,250	$120	$8,310,000
11	3005	Provisional Application Filing Fee (micro entity)	23,150	$60	$1,389,000
1-11	1051	Surcharge – Late Filing Fee, Search Fee, Examination Fee, Inventor's Oath or Declaration, or Application Filed Without at least One Claim or by Reference (undiscounted entity)	78,200	$160	$12,512,000
1-11	2051	Surcharge – Late Filing Fee, Search Fee, Examination Fee, Inventor's Oath or Declaration, or Application Filed Without at least One Claim or by Reference (small entity)	33,010	$64	$2,112,640
1-11	3051	Surcharge – Late Filing Fee, Search Fee, Examination Fee, Inventor's Oath or Declaration, or Application Filed Without at least One Claim or by Reference (micro entity)	3,370	$32	$107,840
1-11	1052	Surcharge – Late Provisional Filing Fee or Cover Sheet (undiscounted entity)	1,700	$60	$102,000
1-11	2052	Surcharge – Late Provisional Filing Fee or Cover Sheet (small entity)	2,440	$24	$58,560
1-11	3052	Surcharge – Late Provisional Filing Fee or Cover Sheet (micro entity)	2,574	$12	$30,888
13	1463	Electronic Petition to be the applicant under 37 CFR 1.46 by a person who otherwise shows sufficient proprietary interest in the matter (undiscounted entity)	1,800	$220	$396,000
13	2463	Electronic Petition to be the applicant under 37 CFR 1.46 by a person who otherwise shows sufficient proprietary interest in the matter (small entity)	900	$88	$79,200
13	3463	Electronic Petition to be the applicant under 37 CFR 1.46 by a person who otherwise shows sufficient proprietary interest in the matter (micro entity)	300	$44	$13,200
15	1454	Grantable Petition to Restore the Right of Priority under 37 CFR 1.55(c) (undiscounted entity)	310	$2,100	$651,000
15	2454	Grantable Petition to Restore the Right of Priority under 37 CFR 1.55(c) (small entity)	65	$840	$54,600
15	3454	Grantable Petition to Restore the Right of Priority under 37 CFR 1.55(c) (micro entity)	25	$420	$10,500
15	1454	Grantable Petition to Restore the Benefit of a Prior-Filed Provisional Application under 37 CFR 1.78(b) (undiscounted entity)	310	$2,100	$651,000
15	2454	Grantable Petition to Restore the Benefit of a Prior-Filed Provisional Application under 37 CFR 1.78(b) (small entity)	65	$840	$54,600
15	3454	Grantable Petition to Restore the Benefit of a Prior-Filed Provisional Application under 37 CFR 1.78(b) (micro entity)	25	$420	$10,500
		Totals	2,083,472	- - -	$672,189,140

Postage

Although the USPTO prefers that the items in this information collection be submitted electronically, the items may be submitted by mail through the United States Postal Service (USPS). The USPTO estimates the following:

• If an applicant decides to file a patent application covered under this information collection by mail, the USPTO recommends that the patent application be filed by Priority Mail Express® in accordance with 37 CFR 1.10 to establish the date of deposit with the USPS as the filing date (otherwise the filing date of the application will be the date that it is received at the USPTO). The USPTO estimates that about 1.5% of patent applicants (lines 1-10) will be filed by mail resulting in 6,245 mailed applications. Using the Priority Mail Express® flat rate cost for mailing envelopes, the USPTO estimates that the average cost for sending a patent application by Priority Mail Express® in a legal flat rate envelope will be $30.65; resulting in a cost of $191,409.

• If an applicant decides to file a petition or a paper filed under 37 CFR 1.41(c), 1.41(a)(2) (pre-AIA), 1.48(d), 1.53(c)(2), 1.53(c)(2) (pre-PLT (AIA)), 1.55(c), or 1.78(b) by mail, the USPTO estimates that the petition or paper will be sent by Priority Mail. The USPTO estimates that about 1.5% of these petitions (lines 14 and 15) will be filed by mail resulting in 117 mailed items. USPTO further estimates that the average cost for a Priority Mail legal flat rate envelope shipped via USPS is $10.15; resulting in an cost of $1,188.

Therefore, the total estimated postage cost for this collection is $192,597.

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-5, step 1 employee between 18 minutes (0.3 hours) and 1 hour to process the applications, petitions, and additional papers in this information collection. The hourly rate for a GS-5, step 1 employee is currently $21.63, according to the U.S. Office of Personnel Management’s (OPM’s) wage table, including locality pay for the Washington, DC area. When 30% ($6.49) is added to account for benefits and overhead, the full rate per hour for a GS-5, step 1, employee is $28.12.

The USPTO estimates that it takes a GS-7, step 1, employee approximately 18 minutes (0.30 hours) on average to process the Petition to Restore the Right of Priority under 37 CFR 1.55(c) and Petition to Restore the Benefit of a Prior-Filed Provisional Application under 37 CFR 1.78(b). The hourly rate for a GS-7, step 1 employee is currently $26.80, according to the U.S. Office of Personnel Management’s (OPM’s) wage table, including locality pay for the Washington, DC area. When 30% ($9.65) is added to account for benefits and overhead, the full rate per hour for a GS-7, step 1, employee is $36.45.

Table 6 calculates the burden hours and costs to the Federal Government for processing this information collection.

Table 6: Burden Hour/Cost to the Federal Government

Item No.	Item	Estimated Annual Responses (year) (a)	Estimated Time for Response (hours) (b)	Estimated Annual Burden (hour/year) (a) x (b) = (c)	Rate7 ($/hour) (d)	Estimated Annual Government Cost (c) x (d) = (e)
1	Noncontinuing, Nonprovisional Utility Application – No Application Data Sheet	214,000	1	214,000	$28.12	$6,017,680
2	Noncontinuing, Nonprovisional Plant Applications – No Application Data Sheet	1,000	1	1,000	$28.12	$28,120
3	Noncontinuing, Nonprovisional Design Applications – No Application Data Sheet	42,000	1	42,000	$28.12	$1,181,040
4	Noncontinuing, Nonprovisional Utility Applications – Application Data Sheet	26,000	1	26,000	$28.12	$731,120
5	Utility Continuation/Divisional Applications	114,000	1	114,000	$28.12	$3,205,680
6	Plant Continuation/Divisional Application	5	1	5	$28.12	$141
7	Design Continuation/Divisional Application	6,000	1	6,000	$28.12	$168,720
8	Continued Prosecution Applications – Design (Request Transmittal and Receipt)	1,500	0.6	900	$28.12	$25,308
9	Utility Continuation-in-Part Applications	11,000	1	11,000	$28.12	$309,320
10	Design Continuation-in-Part Applications	850	1	850	$28.12	$23,902
11	Provisional Application for Patent Cover Sheet	160,000	1	160,000	$28.12	$4,499,200
12	Petition to Accept Unintentionally Delayed Priority or Benefit Claim	1,100	0.3	330	$28.12	$9,280
13	Petition to be the applicant under 37 CFR 1.46 by a person who otherwise shows sufficient proprietary interest in the matter	3,000	0.3	900	$28.12	$25,308
14	Papers filed under the following: 1.41(c) or 1.41(a)(2) (pre-AIA) – to supply the name or names of the inventor or inventors after the filing date without a cover sheet as prescribed by 37 CFR 1.51(c)(1) in a provisional application. 1.48(d) – for correction of inventorship in a provisional application. 1.53 (c)(2) or 1.53(c)(2) (pre-PLT (AIA)) – to convert a nonprovisional application filed under 1.53(b) to a provisional application filed under 1.53(c)	7,000	0.5	3,500	$28.12	$98,420
15	Petition to Restore the Right of Priority under 37 CFR 1.55(c) Or Petition to Restore the Benefit of a Prior-Filed Provisional Application under 37 CFR 1.78(b)	800	0.3	240	$36.45	$8,748
	Totals	588,255	- - -	580,725	- - -	$16,331,987

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

	Requested	Program Change Due to New Statute	Program Change Due to Agency Discretion	Change Due to Adjustment in Agency Estimate	Change Due to Potential Violation of the PRA	Previously Approved
Annual Number of Responses	588,255	0	0	-44,954	0	633,209
Annual Time Burden (Hr)	12,543,215	0	0	-3,055,598	0	15,598,813
Annual Cost Burden ($)	1,156,505,487	0	0	-30,040,311	0	1,186,545,798

Changes since publication of the 60-day notice

Since the publication of the 60-day notice in the Federal Register on January 10, 2024, the USPS postage rates have increased. This change results in an increase of $10,640 to the total annual (non-hour) costs in this information collection.

Change in Annual Responses and Hourly Burden due to Adjustment in Agency Estimate

The decrease in the number of responses (-44,954) and hourly time burden (-3,055,598) is due to the estimated normal fluctuation in the number of responses for the items in this information collection.

Change in Annual (Non-hour) Costs due to Adjustment in Agency Estimate

The USPTO estimates a decrease (-$30,040,311) for the total annual (non-hour) costs, due to decreases in the number of respondents paying filing fees, drawing fees, and postage costs.

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.

The USPTO does not 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 OMB expiration date.

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 statements.

B. COLLECTIONS OF INFORMATION EMPLOYING STATISTICAL METHODS

This collection of information does not employ statistical methods.

1 https://www.govinfo.gov/content/pkg/FR-2024-01-10/pdf/2024-00268.pdf.

2 https://www.govinfo.gov/content/pkg/FR-2024-03-28/pdf/2024-06592.pdf

3 https://www.govinfo.gov/content/pkg/FR-2022-04-28/pdf/2022-09027.pdf.

4 https://www.govinfo.gov/content/pkg/FR-2023-06-06/pdf/2023-11910.pdf.

5 https://www.govinfo.gov/content/pkg/FR-2013-03-29/pdf/2013-07341.pdf.

6 2023 Report of the Economic Survey, published by the Committee on Economics of Legal Practice of the American Intellectual Property Law Association (AIPLA); pg. F–41. The USPTO uses the average billing rate for intellectual property work in all firms which is $447 per hour (https://www.aipla.org/home/news-publications/economic-survey).

7https://www.opm.gov/policy-data-oversight/pay-leave/salaries-wages/salary-tables/24Tables/html/DCB_h.aspx.

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