[Federal Register Volume 76, Number 173 (Wednesday, September 7, 2011)]
[Notices]
[Pages 55364-55367]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2011-22792]
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DEPARTMENT OF COMMERCE
United States 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 continuing information collection, as
required by the Paperwork Reduction Act of 1995, Public Law 104-13 (44
U.S.C. 3506(c)(2)(A)).
DATES: Written comments must be submitted on or before November 7,
2011.
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.
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Mail: Susan K. Fawcett, Records Officer, Office of the
Chief Information Officer, 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 Raul Tamayo, Legal Advisor, Office of Patent
Legal Administration, United States Patent and Trademark Office, P.O.
Box 1450, Alexandria, VA 22313-1450; by telephone at 571-272-7728; or
by e-mail to [email protected]. Additional information about this
collection is also available at http://www.reginfo.gov under
``Information Collection Review.''
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. 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 (PTO/SB/45) 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, deposit account, or
electronic funds transfer (EFT). Otherwise, non-electronic payments may
be made by check, credit card, or 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: 573,161 responses per year. The
USPTO estimates that approximately 21% of these responses will be from
small entities.
Estimated Time per Response: The USPTO estimates that it will take
the public approximately 20 seconds (0.006 hours) to 8 hours to submit
the information in this collection, including the time to gather the
necessary information, prepare the appropriate form or petition, and
submit the completed request to the USPTO.
Estimated Total Annual Respondent Burden Hours: 43,605 hours.
Estimated Total Annual Respondent Cost Burden: $6,658,984. The
USPTO expects that the petitions included in this collection will be
prepared by attorneys and that the other items in this collection will
be prepared by paraprofessionals. Using the professional rate of $340
per hour for attorneys in private firms, the USPTO estimates that the
respondent cost burden for submitting the petitions will be $2,088,620
per year. Using the paraprofessional rate of $122 per hour, the USPTO
estimates that the
[[Page 55366]]
respondent cost burden for submitting the other items in this
collection will be $4,570,364 per year, for a total annual respondent
cost burden of $6,658,984.
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Estimated Estimated
Item Estimated time annual annual burden
for response responses hours
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Maintenance Fee Transmittal Transactions (PTO/SB/45)........... 5 minutes 255,414 20,433
Electronic Maintenance Fee Transactions........................ 20 seconds 109,543 657
Petition to Accept Unavoidably Delayed Payment of Maintenance 8 hours 172 1,376
Fee in an Expired Patent (37 CFR 1.378(b)) (PTO/SB/65)........
Petition to Accept Unintentionally Delayed Payment of 1 hour 2,351 2,351
Maintenance Fee in an Expired Patent (37 CFR 1.378(c)) (PTO/SB/
66)...........................................................
Petition to Accept Unintentionally Delayed Payment of 1 hour 800 800
Maintenance Fee in an Expired Patent (37 CFR 1.378(c)) (PTO/SB/
66)--EFS-Web..................................................
Petition to Review Refusal to Accept Payment of Maintenance Fee 4 hours 54 216
Prior to Expiration of Patent (37 CFR 1.377)..................
Petition for Reconsideration of Decision on Petition Refusing 8 hours 175 1,400
to Accept Delayed Payment of Maintenance Fee in an Expired
Patent (37 CFR 1.378(e))......................................
``Fee Address'' Indication Form (PTO/SB/47)................... 5 minutes 204,652 16,372
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Totals..................................................... ............... 573,161 43,605
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Estimated Total Annual Non-hour Respondent Cost Burden:
$688,304,405. This information collection has annual (non-hour) cost
burden in the form of fees and postage costs.
This collection has 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 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 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 fees associated with this collection will be $688,155,520 per
year as calculated in the accompanying table.
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Estimated
Fee or surcharge annual Amount of fee Estimated annual
responses or surcharge filing costs
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Patent maintenance fee at 3 \1/2\ years................... 122,083 $980.00 $119,641,340.00
Patent maintenance fee at 3 \1/2\ years (small entity).... 30,959 490.00 15,169,910.00
Patent maintenance fee at 7 \1/2\ years................... 98,216 2,480.00 243,575,680.00
Patent maintenance fee at 7 \1/2\ years (small entity).... 22,220 1,240.00 27,552,800.00
Patent maintenance fee at 11 \1/2\ years.................. 60,820 4,110.00 249,970,200.00
Patent maintenance fee at 11 \1/2\ years (small entity)... 12,237 2,055.00 25,147,035.00
Surcharge for paying maintenance fee during the six-month 8,189 130.00 1,064,570.00
grace period.............................................
Surcharge for paying maintenance fee during the six-month 10,233 65.00 665,145.00
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))
(PTO/SB/65)..............................................
Petition to Accept Unintentionally Delayed Payment of 3,151 1,640.00 5,167,640.00
Maintenance Fee in an Expired Patent (37 CFR 1.378(c))
(PTO/SB/66)..............................................
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 (PTO/SB/47)............... 204,652 0.00 0.00
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Totals................................................ 573,161 .............. 688,155,520.00
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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 44 cents and that
approximately 338,376 submissions per year may be mailed to the USPTO,
for a total postage cost of $148,885 per year.
The total (non-hour) respondent cost burden for this collection in
the form of fees and postage costs is estimated to be $688,304,405 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
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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: September 1, 2011.
Susan K. Fawcett,
Records Officer, USPTO, Office of the Chief Information Officer.
[FR Doc. 2011-22792 Filed 9-6-11; 8:45 am]
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