[Federal Register Volume 73, Number 211 (Thursday, October 30, 2008)]
[Notices]
[Pages 64601-64604]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: E8-25886]
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DEPARTMENT OF COMMERCE
Patent and Trademark Office
Rules for Patent Maintenance Fees
ACTION: Proposed collection; comment request.
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SUMMARY: The United States Patent and Trademark Office (USPTO), as part
of its continuing effort to reduce paperwork and respondent burden,
invites the general public and other Federal agencies to take this
opportunity to comment on the revision of a continuing information
collection, as required by the Paperwork Reduction Act of 1995,
[[Page 64602]]
Public Law 104-13 (44 U.S.C. 3506(c)(2)(A)).
DATES: Written comments must be submitted on or before December 29,
2008.
ADDRESSES: You may submit comments by any of the following methods:
E-mail: [email protected]. Include ``0651-0016
comment'' in the subject line of the message.
Fax: 571-273-0112, marked to the attention of Susan
Fawcett.
Mail: Susan K. Fawcett, Records Officer, Office of the
Chief Information Officer, Customer Information Services Group, Public
Information Services Division, United States Patent and Trademark
Office, P.O. Box 1450, Alexandria, VA 22313-1450.
Federal Rulemaking Portal: http://www.regulations.gov.
FOR FURTHER INFORMATION CONTACT: Requests for additional information
should be directed to Robert A. Clarke, Director, Office of Patent
Legal Administration, United States Patent and Trademark Office, P.O.
Box 1450, Alexandria, VA 22313-1450; by telephone at 571-272-7735; or
by e-mail to [email protected].
SUPPLEMENTARY INFORMATION:
I. Abstract
Under 35 U.S.C. 41 and 37 CFR 1.20(e)-(i) and 1.362-1.378, the
United States Patent and Trademark Office (USPTO) charges fees for
maintaining in force all utility patents based on applications filed on
or after December 12, 1980. Payment of these maintenance fees is due at
3\1/2\, 7\1/2\, and 11\1/2\ years after the date the patent was
granted. If the USPTO does not receive payment of the appropriate
maintenance fee and any applicable surcharge within a grace period of
six months following each of the above due dates (at 4, 8, or 12 years
after the date of grant), the patent will expire at that time. After a
patent expires, it is no longer enforceable. Maintenance fees are not
required for design or plant patents, or for reissue patents if the
patent being reissued did not require maintenance fees.
Payments of maintenance fees that are submitted during the six-
month grace period before patent expiration must include the
appropriate surcharge as indicated by 37 CFR 1.20(h). Submissions of
maintenance fee payments and surcharges must include the relevant
patent number and the corresponding United States application number in
order to identify the correct patent and ensure proper crediting of the
fee being paid.
If the USPTO refuses to accept and record a maintenance fee payment
that was submitted prior to the expiration of a patent, the patentee
may petition the Director to accept and record the maintenance fee
under 37 CFR 1.377. This petition must be accompanied by the fee
indicated in 37 CFR 1.17(g), which may be refunded if it is determined
that the refusal to accept the maintenance fee was due to an error by
the USPTO.
If a patent has expired due to nonpayment of a maintenance fee, the
patentee may petition the Director to accept a delayed payment of the
maintenance fee under 37 CFR 1.378. The Director may accept the payment
of a maintenance fee after the expiration of the patent if the
petitioner shows to the satisfaction of the Director that the delay in
payment was unavoidable or unintentional. Petitions to accept
unavoidably or unintentionally delayed payment must also be accompanied
by the required maintenance fee and appropriate surcharge under 37 CFR
1.20(i). If the Director accepts the maintenance fee payment upon
petition, then the patent is reinstated. If the USPTO denies a petition
to accept delayed payment of a maintenance fee in an expired patent,
the patentee may petition the Director to reconsider that decision
under 37 CFR 1.378(e). This petition must be accompanied by the fee
indicated in 37 CFR 1.17(f), which may be refunded if it is determined
that the refusal to accept the maintenance fee was due to an error by
the USPTO.
The rules of practice (37 CFR 1.33(d) and 1.363) permit applicants,
patentees, assignees, or their representatives of record to specify a
``fee address'' for correspondence related to maintenance fees that is
separate from the correspondence address associated with a patent or
application. A fee address must be an address that is associated with a
USPTO customer number. Customer numbers may be requested by using the
Request for Customer Number form (PTO/SB/125), which is covered under
OMB Control Number 0651-0035 ``Representative and Address Provisions.''
Maintaining a correct and updated address is necessary so that fee-
related correspondence from the USPTO will be properly received by the
applicant, patentee, assignee, or authorized representative. If a
separate fee address is not specified for a patent or application, the
USPTO will direct fee-related correspondence to the correspondence
address of record.
The USPTO offers forms to assist the public with providing the
information covered by this collection, including the information
necessary to submit a patent maintenance fee payment (PTO/SB/45), to
file a petition to accept an unavoidably or unintentionally delayed
maintenance fee payment in an expired patent (PTO/SB/65 and PTO/SB/66),
and to designate or change a fee address (PTO/SB/47). No forms are
provided for the petitions under 37 CFR 1.377 and 1.378(e).
Customers may submit maintenance fee payments and surcharges
incurred during the six-month grace period before patent expiration by
using the Maintenance Fee Transmittal Form or by paying online through
the USPTO Web site. However, to pay a maintenance fee after patent
expiration, the maintenance fee payment and the appropriate surcharge
must be filed together with a petition to accept unavoidably or
unintentionally delayed payment. The USPTO accepts online maintenance
fee payments by credit card, electronic funds transfer (EFT), or
deposit account through the USPTO Web site. Otherwise, non-electronic
payments may be made by check, credit card, or USPTO deposit account.
Customers may submit the other forms and petitions in this
collection electronically through EFS-Web, the USPTO's online filing
system. The USPTO also offers a special EFS-Web version of Form PTO/SB/
66, which is used for the automatic processing and immediate rendering
of a decision on a petition to accept an unintentionally delayed
maintenance fee payment.
II. Method of Collection
By mail, facsimile, hand delivery, or electronically to the USPTO.
III. Data
OMB Number: 0651-0016.
Form Number(s): PTO/SB/45/47/65/66.
Type of Review: Revision of a currently approved collection.
Affected Public: Individuals or households; businesses or other
for-profits; and not-for-profit institutions.
Estimated Number of Respondents: 470,397 responses per year.
Estimated Time per Response: The USPTO estimates that it will take
the public approximately 20 seconds (0.006 hours) to 8 hours to
complete this information, depending on the form or petition. This
includes time to gather the necessary information, prepare the form or
petition, and submit the completed request.
Estimated Total Annual Respondent Burden Hours: 33,426 hours per
year.
Estimated Total Annual Respondent Cost Burden: $4,632,630 per year.
The USPTO expects that the petitions included in this collection will
be prepared by attorneys. Using the professional rate of $310 per hour
for
[[Page 64603]]
associate attorneys in private firms, the USPTO estimates that the
respondent cost burden for submitting these petitions will be
approximately $1,904,330 per year. The USPTO expects that the other
items in this collection will be prepared by paraprofessionals. Using
the paraprofessional rate of $100 per hour, the USPTO estimates that
the respondent cost burden for submitting the other items in this
collection will be approximately $2,728,300 per year, for a total
annual respondent cost burden of approximately $4,632,630.
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Estimated Estimated
Item Estimated time for response annual annual burden
responses hours
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Maintenance Fee Transmittal Transactions 5 minutes............................ 204,005 16,320
(PTO/SB/45).
Electronic Maintenance Fee Transactions.. 20 seconds........................... 136,003 816
Petition to Accept Unavoidably Delayed 8 hours.............................. 172 1,376
Payment of Maintenance Fee in an Expired
Patent (37 CFR 1.378(b)) (PTO/SB/65).
Petition to Accept Unintentionally 1 hour............................... 2,351 2,351
Delayed Payment of Maintenance Fee in an
Expired Patent (37 CFR 1.378(c)) (PTO/SB/
66).
Petition to Accept Unintentionally 1 hour.............................. 800 800
Delayed Payment of Maintenance Fee in an
Expired Patent (37 CFR 1.378(c)) (PTO/SB/
66)--EFS-Web.
Petition to Review Refusal to Accept 4 hours.............................. 54 216
Payment of Maintenance Fee Prior to
Expiration of Patent (37 CFR 1.377).
Petition for Reconsideration of Decision 8 hours.............................. 175 1,400
on Petition Refusing to Accept Delayed
Payment of Maintenance Fee in an Expired
Patent (37 CFR 1.378(e)).
``Fee Address'' Indication Form (PTO/SB/ 5 minutes............................ 126,837 10,147
47).
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Total................................ ..................................... 470,397 33,426
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Estimated Total Annual Non-hour Respondent Cost Burden:
$614,571,323. There are no capital start-up costs or maintenance costs
associated with this information collection. However, this collection
does have annual (non-hour) costs in the form of filing fees, postage
costs, and recordkeeping costs.
This collection has filing fees in the form of patent maintenance
fees, surcharges for late payment of maintenance fees, and petition
fees. Under 37 CFR 1.20(e)-(g), the patent maintenance fees due at 3\1/
2\ years, 7\1/2\ years, and 11\1/2\ years after the date of grant are
$980, $2,480, and $4,110 respectively (discounted to $490, $1,240, and
$2,055 for small entities). The surcharge under 37 CFR 1.20(h) for
paying a maintenance fee during the six-month grace period following
the above intervals is $130 ($65 for small entities). The surcharge
under 37 CFR 1.20(i) for a petition to accept a maintenance fee after
the six-month grace period for these intervals has expired is $700
where the delayed payment is shown to be unavoidable and $1,640 where
the delayed payment is shown to be unintentional. The filing fee listed
in 37 CFR 1.17(g) for a petition to review the refusal to accept the
payment of a maintenance fee filed prior to the expiration of a patent
is $200. The filing fee listed in 37 CFR 1.17(f) for a petition for
reconsideration of the decision on a petition refusing to accept the
delayed payment of a maintenance fee in an expired patent is $400. The
USPTO estimates that the total filing costs associated with this
collection will be $614,442,370 per year as calculated in the
accompanying table.
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Estimated annual Amount of fee or Estimated annual
Fee or surcharge responses surcharge filing costs
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Patent maintenance fee at 3\1/2\ years.............. 114,683 $980.00 $112,389,340.00
Patent maintenance fee at 3\1/2\ years (small 31,479 490.00 15,424,710.00
entity)............................................
Patent maintenance fee at 7\1/2\ years.............. 95,973 2,480.00 238,013,040.00
Patent maintenance fee at 7\1/2\ years (small 23,940 1,240.00 29,685,600.00
entity)............................................
Patent maintenance fee at 11\1/2\ years............. 46,752 4,110.00 192,150,720.00
Patent maintenance fee at 11\1/2\ years (small 9,611 2,055.00 19,750,605.00
entity)............................................
Surcharge for paying maintenance fee during the six- 7,961 130.00 1,034,930.00
month grace period.................................
Surcharge for paying maintenance fee during the six- 9,609 65.00 624,585.00
month grace period (small entity)..................
Petition to Accept Unavoidably Delayed Payment of 172 700.00 120,400.00
Maintenance Fee in an Expired Patent (37 CFR
1.378(b))..........................................
Petition to Accept Unintentionally Delayed Payment 3,151 1,640.00 5,167,640.00
of Maintenance Fee in an Expired Patent (37 CFR
1.378(c))..........................................
Petition to Review Refusal to Accept Payment of 54 200.00 10,800.00
Maintenance Fee Prior to Expiration of Patent (37
CFR 1.377).........................................
Petition for Reconsideration of Decision on Petition 175 400.00 70,000.00
Refusing to Accept Delayed Payment of Maintenance
Fee in an Expired Patent (37 CFR 1.378(e)).........
``Fee Address'' Indication Form..................... 126,837 0.00 0.00
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Total........................................... 470,397 .................. 614,442,370.00
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The public may submit the forms and petitions in this collection to
the USPTO by mail through the United States Postal Service. If the
submission is sent by first-class mail, the public may also include a
signed certification of the date of mailing in order to receive credit
for timely filing. The USPTO estimates that the average first-class
postage cost for a mailed submission will be 42 cents, and that
approximately 255,841 submissions per year may be
[[Page 64604]]
mailed to the USPTO, for a total postage cost of approximately $107,453
per year.
The recordkeeping costs for this collection are associated with
submitting maintenance fee payments, forms, and petitions online
through the USPTO Web site. It is recommended that customers who submit
fee payments and documents online print and retain a copy of the
acknowledgment receipt as evidence of the successful transaction. The
USPTO estimates that it will take 5 seconds (0.001 hours) to print a
copy of the acknowledgment receipt and that approximately 214,556
maintenance fee payments, forms, and petitions will be submitted
online, for a total of 215 hours per year for printing this receipt.
Using the paraprofessional rate of $100 per hour, the USPTO estimates
that the recordkeeping cost associated with this collection will be
approximately $21,500 per year.
The total non-hour respondent cost burden for this collection in
the form of filing fees, postage costs, and recordkeeping costs is
estimated to be $614,571,323 per year.
IV. Request for Comments
Comments are invited on: (a) Whether the proposed collection of
information is necessary for the proper performance of the functions of
the agency, including whether the information shall have practical
utility; (b) the accuracy of the agency's estimate of the burden
(including hours and cost) of the proposed collection of information;
(c) ways to enhance the quality, utility, and clarity of the
information to be collected; and (d) ways to minimize the burden of the
collection of information on respondents, e.g., the use of automated
collection techniques or other forms of information technology.
Comments submitted in response to this notice will be summarized or
included in the request for OMB approval of this information
collection; they also will become a matter of public record.
Dated: October 24, 2008.
Susan K. Fawcett,
Records Officer, USPTO, Office of the Chief Information Officer,
Customer Information Services Group, Public Information Services
Division.
[FR Doc. E8-25886 Filed 10-29-08; 8:45 am]
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