SUPPORTING STATEMENT
United States Patent and Trademark Office
Legal Processes
OMB CONTROL NUMBER 0651-0046
2025
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 purpose of this collection is to cover information requirements related to civil actions and claims involving current and former employees of the United States Patent and Trademark Office (USPTO). The rules for these legal processes may be found under 37 CFR Part 104, which outlines procedures for service of process, demands for employee testimony and production of documents in legal proceedings, reports of unauthorized testimony, employee indemnification, and filing claims against the USPTO under the Federal Tort Claims Act (28 U.S.C. 2672) and the corresponding Department of Justice regulations (28 CFR Part 14). The public may also petition the USPTO Office of General Counsel under 37 CFR § 104.3 to waive or suspend these rules in extraordinary cases.
The procedures under 37 CFR Part 104 ensure that service of process intended for current and former employees of the USPTO is handled properly. The USPTO will only accept service of process for an employee acting in an official capacity. When a summons is served on a current or former USPTO employee, the employee should note the time, place, and method of service on the summons. The employee should then immediately notify and forward the summons to the Office of General Counsel at the USPTO. The Office of General Counsel will determine to what extent an employee may comply with a demand for testimony or documents. The USPTO will not authorize employee testimony on the validity of a patent grant or registered trademark. The rules governing production of documents do not affect any rights granted under the Freedom of Information Act (5 U.S.C. 552), the Privacy Act (5 U.S.C. 552a), or the Trade Secrets Act (18 U.S.C. 1905). In cases involving unauthorized testimony or requests for indemnification, the employee must forward the relevant information or documentation to the Office of General Counsel.
For filing claims under the Federal Tort Claims Act, the public may use Standard Form 95 ‘Claim for Damage, Injury, or Death,” which is provided by the department of Justice.
Table 1 provides the specific statues and regulations authorizing the USPTO to collect the information discussed above.
Table 1: Information Requirements
Item No. |
Requirement |
Statute |
Regulation |
1 |
Petition to Waive Rules |
35 U.S.C. 2(b)(2) and 3(a)(2) |
37 CFR § 104.3 |
2 |
Service of Process |
35 U.S.C. 2(b)(2) |
37 CFR §§ 104.11 and 104.12 |
3 |
Forwarding Service |
35 U.S.C. 2(b)(2) |
37 CFR § 104.12(b) |
4 |
Employee Testimony and Production of Documents in Legal Proceedings |
35 U.S.C. 2(b)(2) |
37 CFR §§ 104.22 and 104.23 |
5 |
Forwarding Demands |
35 U.S.C. 2(b)(2) |
37 CFR § 104.22(a) |
6 |
Report of Unauthorized Testimony |
35 U.S.C. 2(b)(2) |
37 CFR § 104.23(c) |
7 |
Possible Indemnification Cases |
35 U.S.C. 2(b)(2) |
37 CFR §§ 104.31 and 104.32 |
8 |
Employee Indemnification |
35 U.S.C. 2(b)(2) |
37 CFR §§ 104.31 and 104.32 |
9 |
Tort Claims |
28 U.S.C. 2672, 35 U.S.C. 2(b)(2) |
37 CFR §§ 104.41 and 104.42 |
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 collection to submit information required by USPTO regulations covering legal processes. This information collection is necessary so that respondents or their representatives may serve a summons or complaint on the USPTO, demand employee testimony and documents related to a legal proceeding, or file a claim under the Federal Tort Claims Act. Respondents may also petition the USPTO to waive or suspend these rules for legal processes. This collection is also necessary so that current and former USPTO employees may properly forward service and demands to the Office of General Counsel, report unauthorized testimony, and request indemnification.
The USPTO covers current employees as respondents under this information collection, even though their responses do not require approval under the Paperwork Reduction Act. In those instances where both current and former employees may respond to the USPTO, the agency estimates that the number of respondents will be small.
The information collected, maintained, and used in this collection is based on OMB and USPTO guidelines. This includes the basic information quality standards established in the Paperwork Reduction Act (44 U.S.C. Chapter 35), in OMB Circular A-130, and in the USPTO information quality guidelines.
Table 2 outlines how this collection of information is used by the public and the USPTO.
Table 2: Needs and Uses
Item No. |
Form/Function |
Form No. |
Needs and Uses |
1 |
Petition to Waive Rules |
No Form Associated |
|
2 |
Service of Process |
No Form Associated |
|
3 |
Forwarding Service |
No Form Associated |
|
4 |
Employee Testimony and Production of Documents in Legal Proceedings |
No Form Associated |
|
5 |
Forwarding Demands |
No Form Associated |
|
6 |
Report of Unauthorized Testimony |
No Form Associated |
|
7 |
Possible Indemnification Cases |
No Form Associated |
|
8 |
Employee Indemnification |
No Form Associated |
|
9 |
Tort Claims |
Standard Form 95 |
|
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 information collection. Also describe any consideration of using information technology to reduce burden.
Currently, the USPTO does not use automated, electronic, mechanical, or other technologies to collect the information for this collection. The USPTO believes that it would not be practical to collect all of the information associated with the various legal proceedings electronically. Submitted items can require extensive supporting documentation that generally cannot be supplied electronically (for example, estimates for property damage, medical records/bills, employment/wage certification, death certificates and tax returns). Allowing part of the submission to take place electronically, with hard copy, supporting documentation to follow, would result in a fragmented process. In addition, some individuals may never send the follow-up information which would leave USPTO with open claims that could not be reconciled. At this time, the USPTO is not collecting the information covered under this collection electronically. As the USPTO expands the use of electronic filing, it may determine that it is feasible for the petitions and demands to be submitted to the USPTO electronically. If the USPTO does determine that these or other documents related to legal processes can be submitted electronically, the USPTO will develop and submit the associated electronic forms or formats for these items to OMB for review and approval as necessary. The USPTO does not disseminate the information in this collection to the general public, electronically or otherwise.
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 when the public submits petitions to the USPTO to waive legal process rules, demands or subpoenas for testimony or documents, or claims under the Federal Tort Claims Act. The information associated with service of process is collected only when a summons is served on a current or former employee, and the employee forwards the necessary information to the Office of General Counsel. The information associated with employee indemnification is collected only when a current or former employee requests indemnification and forwards the necessary documentation to the Office of General Counsel. When current or former USPTO employees report unauthorized testimony or possible cases for indemnification, they provide only the information pertaining to the testimony or indemnification to the Office of the General Counsel. This information is not collected elsewhere and does not result in a duplication of effort.
5. If the collection of information impacts small businesses or other small entities, describe any methods used to minimize burden.
The USPTO does not believe that this collection of information will impose a significant economic impact or put an unnecessary burden on small entities or small businesses. Historically, the USPTO has received very few filings for these proceedings, and very few of the filings involve small businesses or other small entities. The same information is required from every respondent, and this information is not available from any other source.
6. Describe the consequence to federal program or policy activities if the information collection is not conducted or is conducted less frequently, as well as any technical or legal obstacles to reducing burden.
This information is collected only at the initiation of the requestor and is not collected elsewhere. If the information were not collected, the USPTO would not be able to ensure compliance with case law and protect its legal interests related to service of process, demands for employee testimony and production of documents, unauthorized employee testimony, employee indemnification, and claims submitted under the Federal Tort Claims Act. The USPTO also would not be able to consider petitions to waive these rules in the interest of justice in extraordinary situations. Therefore, this collection of information could not be conducted less frequently.
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 information collection, 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 July 08, 2025 (90 FR 30053).1 The comment period ended on September 8, 2025. The USPTO received no public comments in response to the notice.
The USPTO published a 30-day notice in the Federal Register on November 21, 2025 (90 FR 52621).2 The comment period will close on Decemember 22, 2025.
Additionally, the USPTO has long-standing relationships with groups from whom patent application information is collected, such as the American Intellectual Property Law Association, as well as patent bar associations, independent inventor groups, and users of our public search facilities. Their views are expressed in regularly scheduled meetings and are considered when developing proposals for information collection requirements. There have been no comments or concerns expressed by these or similar organizations concerning the time to provide the information required under this program.
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 system of records notice (SORN) or privacy impact assessment (PIA), those should be cited and described here.
When respondents submit demands in legal proceedings for the testimony of employees or the production of documents regarding information protected by the confidentiality provisions of the Patent Act (35 U.S.C. 122), the Privacy Act (5 U.S.C. 552a), the Trade Secrets Act (18 U.S.C. 1905), or any other confidentiality statute, the demands must satisfy the requirements for disclosure as stated in those statutes and associated rules before the testimony may be given or the documents provided.
This information collection contains information that is subject to the Privacy Act.
SORN COMMERCE/DEPT-14 Litigation, Claims, and Administrative Proceeding Records, published on April 20, 2000 (65 FR 21168) covers various items in this information collection.3 This SORN covers all records relating to the declaration, conduct, and termination of interference proceedings, including, but not limited to preliminary statements, motions, testimony, and settlement agreements. The data contained in the records may include information relating to an applicant’s, a patentee’s, or a witness’s name, age, citizenship, residence, educational and work background, physical and mental health, activities relating to conception of the contested subject matter, and other matters which may arise during the conduct of the interference proceeding or in connection with any agreements made by the parties relative to the interference proceeding.
The information is protected from disclosure to third parties in accordance with the Privacy Act. However, routine uses of this information may include disclosure to the following: to law enforcement for investigation in the event that the system of records indicates a violation or potential violation of law; to a federal, state, local, or international agency in response to its request; to an agency, organization, or individual for the purpose of performing audit or oversight operations as authorized by law; to non-federal personnel under contract to the Agency; to a court for adjudication and litigation; to the Department of Justice for Freedom of Information Act assistance; to members of Congress working on behalf of an individual; to the Office of Personnel Management for personnel research purposes; to National Archives and Records Administration for records management; and to OMB for legislative coordination and clearance. Failure to provide any part of the requested information may result in an inability to process submissions.
Patent application files may be involved in PTAB decisions and procedures. The SORN COMMERCE/PAT-TM-7 Patent Application Files, published on March 29, 2013 (78 FR 19243), covers these patent application files.4
This SORN identifies the categories of individuals covered by the system containing applicants for patent, including inventors, legal representatives for deceased or incapacitated inventors, and other persons authorized by law to make applications for patent. Categories of records in the system comprises the following: oath or declaration of applicant including name, citizenship, residence, post office address, and other information pertaining to the applicant’s activities in connection with the invention for which a patent is sought.
11.Provide additional justification for any questions of a sensitive nature, such as sexual behavior and attitudes, religious beliefs, and other matters that are commonly considered private. This justification should include the reasons why the agency considers the questions necessary, the specific uses to be made of the information, the explanation to be given to persons from whom the information is requested, and any steps to be taken to obtain their consent.
None of the required information in this information collection is considered to be sensitive.
12.Provide estimates of the hour burden of the collection of information. The statement should:
Indicate the number of respondents, frequency of response, annual hour burden, and an explanation of how the burden was estimated. Unless directed to do so, agencies should not conduct special surveys to obtain information on which to base hour burden estimates. Consultation with a sample (fewer than 10) of potential respondents is desirable. If the hour burden on respondents is expected to vary widely because of differences in activity, size, or complexity, show the range of estimated hour burden, and explain the reasons for the variance. Generally, estimates should not include burden hours for customary and usual business practices.
If this request for approval covers more than one form, provide separate hour burden estimates for each form and aggregate the hour burdens.
Provide estimates of annualized cost to respondents for the hour burdens for collections of information, identifying and using appropriate wage rate categories. The cost of contracting out or paying outside parties for information collection activities should not be included here. Instead, this cost should be included under ‘Annual Cost to Federal Government’.
Table 3 calculates the burden hours and costs of this information collection to the public, based on the following factors:
Respondent Calculation Factors
The USPTO estimates that it will receive approximately 309 responses per year from respondents for this information collection, with approximately 10% of these responses submitted by small entities.
None of the responses for this collection will be submitted electronically.
Burden Hour Calculation Factors
The USPTO estimates that it will take the public approximately 5 minutes hours (12 minutes) to 1.5 hours (90 minutes) to complete this information collection. This includes the time to gather the necessary information, create the documents, and submit the completed item(s) to the USPTO. Using these burden factors, the USPTO estimates that the total respondent hourly burden for this information collection is 131 hours per year.
Cost Burden Calculation Factors
The USPTO estimates that the information in this collection will be prepared by attorneys and former employees at an hourly rate of $447, except for the requests for employee indemnification. The attorney rates are found in the 2023 Report of the Economic Survey of the American Intellectual Property Law Association (AIPLA). Since some portion of the former employees affected by this collection are attorneys, the estimated attorney hourly rate will be used for former employees as well. Requests for employee indemnification generally come from professional and supervisory staff at an estimated cost of $109.42 per hour (GS-15, step 1 hourly rate of $80.31 plus 36.25% ($29.11) for benefits and overhead).
Using these hourly rates, the USPTO estimates that the total respondent cost burden for this information collection is $58,219 per year.
Table 3: Total Burden Hours and Hourly Costs to Private Sector Respondents
Item No. |
Item |
Estimated Annual Respondents
(a) |
Responses per Respondent
(b) |
Estimated Annual Responses (year)
(a) x (b) = (c) |
Estimated Time for Response (hours)
(d)
|
Estimated Burden (hour/year)
(c) x (d) = (e) |
Rate5 ($/hour)
(f) |
Estimated Annual Respondent Cost Burden
(e) x (f) = (g) |
1
|
Petition to Waive Rules |
5 |
1 |
5 |
0.50 (30 minutes) |
3 |
$447 |
$1,341 |
2
|
Service of Process |
243 |
1 |
243 |
0.08 (5 minutes) |
19 |
$447 |
$8,493 |
3 |
Forwarding Service |
7 |
1 |
7 |
0.17 (10 minutes) |
1 |
$447 |
$447 |
4 |
Employee Testimony and Production of Documents in Legal Proceedings |
33 |
1 |
33 |
2 |
66 |
$447 |
$29,502 |
5 |
Forward Demands |
10 |
1 |
10 |
0.17 (10 minutes) |
2 |
$447 |
$894 |
6 |
Report of Unauthorized Testimony |
1 |
1 |
1 |
0.50 (30 minutes) |
1 |
$447 |
$447 |
7 |
Report of Possible Indemnification Cases |
3 |
1 |
3 |
0.50 (30 minutes) |
2 |
$447 |
$894 |
8 |
Employee Indemnification |
1 |
1 |
1 |
0.50 (30 minutes) |
1 |
$109.42 |
$109 |
9 |
Tort Claims |
6 |
1 |
6 |
6 |
36 |
$447 |
$16,092 |
|
Totals |
309 |
- - - |
309 |
- - - |
131 |
- - - |
$58,219 |
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.
Generally, estimates should not include purchases of equipment or services, or portions thereof, made: (1) prior to October 1, 1995, (2) to achieve regulatory compliance with requirements not associated with the information collection, (3) for reasons other than to provide information or keep records for the government, or (4) as part of customary and usual business or private practices.
There are no capital start-up costs, maintenance costs, or recordkeeping costs associated with this information collection. However, the USPTO estimates that the total annual non-hour cost burden for this information collection, in the form of filing fees ($650) and postage ($5,352), is $6,002.
Fees
This collection has a filing fee associated with the petition to waive or suspend the legal process rules under 37 CFR § 104.3. The fee is listed in Table 4 below.
Table 4: Filing Fees
Item No. |
Fee Code |
Item |
Estimated Annual Responses
(a) |
Filing Fee ($)
(b) |
Estimated Non-hourly Cost Burden
(a) x (b) = (c) |
1 |
1470 |
Petition to waive or suspend the legal process rules under 37 CFR § 104.3 |
5 |
$130 |
$650 |
|
|
Totals |
5 |
- - - |
$650 |
Postage Costs
The USPTO estimates that all submissions in this collection will be submitted by mail. The USPTO estimates that 66 items will be submitted by mail in a large envelope. The average first-class postage for a four-ounce mailed submission in a large envelope is $2.31, resulting in a total of $152 for submissions other than a Service of Process. The USPTO estimates that 243 Service of Process items will be submitted by certified mail in a Priority Mail flat-rate legal envelope with a return receipt. The USPTO estimates that the average cost for a certified Priority mail flat-rate legal envelope with a return receipt is $21.40, resulting in $5,200 for Service of Process submissions. Therefore, the USPTO estimates the total combined postage cost for this collection is $5,352. This number is corrected from the 60-day notice better reflects the correct postage usage and also includes updated postage rates.
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 employs GS-15, step 1 to process submissions for this information collection. The USPTO estimates that the cost of a GS-15, step 1 employee is $109.42 per hour (GS-15, step 1 hourly rate of $80.31 plus 36.25% ($29.11) for benefits and overhead). Table 5 calculates the burden hours and costs to the federal government for processing this information collection.
Table 5: Burden Hour/Cost to the Federal Government
Item No. |
Item |
Estimated Annual Responses
(a) |
Estimated Burden Hours
(b) |
Estimated Hourly Burden
(a) x (b) = (c) |
Rate6 ($/hr)
(d) |
Total Federal Government Cost
(c) x (d) = (e) |
1 |
Petition to Waive Rules |
5 |
1.50 |
8 |
$109.42 |
$875 |
2 |
Service of Process |
243 |
0.08 |
19 |
$109.42 |
$2,079 |
3 |
Forwarding Service |
7 |
0.08 |
1 |
$109.42 |
$109 |
4 |
Employee Testimony and Production of Documents in Legal Proceedings |
33 |
0.50 |
17 |
$109.42 |
$1,860 |
5 |
Forwarding Demands |
10 |
0.08 |
1 |
$109.42 |
$109 |
6 |
Report of Unauthorized Testimony |
1 |
0.50 |
1 |
$109.42 |
$109 |
7 |
Report of Possible Indemnification Cases |
3 |
0.50 |
2 |
$109.42 |
$219 |
8 |
Employee Indemnification |
1 |
1.50 |
2 |
$109.42 |
$219 |
9 |
Tort Claims |
6 |
3 |
18 |
$109.42 |
$1,970 |
|
Totals |
309 |
- - - |
69 |
- - - |
$7,549 |
15. Explain the reasons for any program changes or adjustments reported on the burden worksheet.
Table 6: ICR Summary of Burden
|
Requested |
Program Change Due to New Statute |
Program Change Due to Agency Discretion |
Change Due to Adjustment in Agency Estimate |
Change Due to Potential Violation of the PRA |
Previously Approved |
Annual Number of Responses |
309 |
0 |
0 |
0 |
0 |
309 |
Annual Time Burden (Hr) |
131 |
0 |
0 |
-2 |
0 |
133 |
Annual Cost Burden ($) |
6,002 |
0 |
0 |
1,433 |
0 |
Change in Responses and Hourly Burden due to Adjustment in Agency Estimate
There is no change in the total number of responses in this information collection. However, there is a slight decrease of two hours in the annual time burden estimates.
Change in Annual Non-hour Costs due to Adjustment in Agency Estimate
For this renewal, the USPTO estimates that the total annual non-hour costs will increase by $1,433 from the previous approval. This increase is due to fluctuations in postage cost estimates.
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 expiration date of OMB approval.
18. Explain each exception to the topics of the certification statement identified in “Certification for Paperwork Reduction Act Submissions.”
This collection of information does not include any exceptions to the certificate statement.
B. COLLECTIONS OF INFORMATION EMPLOYING STATISTICAL METHODS
This collection of information does not employ statistical methods.
5 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).
6 https://www.opm.gov/policy-data-oversight/pay-leave/salaries-wages/salary-tables/pdf/2025/DCB_h.pdf.
| File Type | application/vnd.openxmlformats-officedocument.wordprocessingml.document |
| Author | Gunther, Sarah (AMBIT) |
| File Modified | 0000-00-00 |
| File Created | 2025-11-22 |