Agency Information Collection Activities; Submission to the Office of Management and Budget (OMB) for Review and Approval; Comment Request; Rules for Patent Maintenance Fees, 58138-58140 [2024-15704]

Agencies

• DEPARTMENT OF COMMERCE
• Patent and Trademark Office

[Federal Register Volume 89, Number 137 (Wednesday, July 17, 2024)]
[Notices]
[Pages 58138-58140]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2024-15704]


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DEPARTMENT OF COMMERCE

Patent and Trademark Office


Agency Information Collection Activities; Submission to the 
Office of Management and Budget (OMB) for Review and Approval; Comment 
Request; Rules for Patent Maintenance Fees

AGENCY: United States Patent and Trademark Office, Department of 
Commerce.

ACTION: Notice of information collection; request for comment.

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SUMMARY: The United States Patent and Trademark Office (USPTO), as 
required by the Paperwork Reduction Act of 1995, invites comments on 
the extension and revision of an existing information collection: 0651-
0016 (Rules for Patent Maintenance Fees). The purpose of this notice is 
to allow 60 days for public comment preceding submission of the 
information collection to OMB.

DATES: To ensure consideration, comments regarding this information 
collection must be received on or before September 16, 2024.

ADDRESSES: Interested persons are invited to submit written comments by 
any of the following methods. Do not submit Confidential Business 
Information or otherwise sensitive or protected information.
     Email: [email protected]. Include ``0651-
0016 comment'' in the subject line of the message.
     Federal eRulemaking Portal: https://www.regulations.gov.
     Mail: Justin Isaac, Office of the Chief Administrative 
Officer, United States Patent and Trademark Office, P.O. Box 1450, 
Alexandria, VA 22313-1450.

FOR FURTHER INFORMATION CONTACT: Request for additional information 
should be directed to Raul Tamayo, Senior 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 email at [email protected] with ``0651-0016 comment'' in the 
subject line. Additional information about this information collection 
is also available at https://www.reginfo.gov under ``Information 
Collection Review.''

SUPPLEMENTARY INFORMATION: 

I. Abstract

    Under 35 U.S.C. 41 and 37 CFR 1.20(e)-(h), 1.362, 1.363, 1.366, 
1.377, and 1.378, the USPTO charges fees for

[[Page 58139]]

maintaining in force all patents based on applications filed on or 
after December 12, 1980, except for plant and design patents. 
Furthermore, maintenance fees are required for a reissue patent unless 
the patent being reissued did not require maintenance fees. 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. See section 2504 of the Manual 
of Patent Examining Procedure (MPEP) (9th Edition, Rev. 07.2022, 
February 2023) for more information.
    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. Payments of maintenance 
fees that are submitted during the 6-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. See MPEP 2506, 2510, and 
2515 for more information.
    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(b). 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 unintentional. Petitions to accept unintentionally delayed 
payment must also be accompanied by the required maintenance fee and 
the petition fee as set forth in 37 CFR 1.17(m). 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(d).
    This information collection covers maintenance fee petition 
information, including the electronic interface and forms provided by 
the USPTO to assist the public with maintenance fee petitions. To pay a 
maintenance fee after patent expiration, the maintenance fee payment 
and the petition fee, as set forth in 37 CFR 1.17(m), must be filed 
together with a petition to accept an unintentionally delayed payment 
of the maintenance fee in an expired patent under 37 CFR 1.378(b). The 
USPTO offers two different versions of the form for petitions to accept 
unintentionally delayed payments of maintenance fees: a web-based 
ePetition and form PTO/SB/66 (a fillable PDF). The USPTO recommends the 
use of the web-based ePetition. The USPTO does not offer forms for the 
petitions to review the refusal to accept the payment of a maintenance 
fee prior to the expiration of the patent under 37 CFR 1.377 or the 
petitions for the reconsideration of decisions on petitions refusing to 
accept the delayed payment of a maintenance fee in an expired patent 
under 37 CFR 1.378(d).
    A fee address indication form (PTO/SB/47) was previously associated 
with this information collection. This item permits 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. This item is considered by OMB to be exempt from the PRA 
and therefore this item is no longer included in this information 
collection.

II. Method of Collection

    The USPTO prefers for the items in this information collection to 
be submitted via online electronic submissions. Submission by mail, 
fax, or hand delivery is available. See MPEP 2510 for more information.

III. Data

    OMB Control Number: 0651-0016.
    Forms: (AIA = America Invents Act; SB = Specimen Book)

 PTO/SB/66 (Petition to Accept Unintentionally Delayed Payment 
of Maintenance Fee in an Expired Patent (37 CFR 1.378(b))

    Type of Review: Extension and revision of a currently approved 
information collection.
    Affected Public: Private sector.
    Respondent's Obligation: Required to obtain or retain benefits.
    Estimated Number of Annual Respondents: 2,616 respondents.
    Estimated Number of Annual Responses: 2,616 responses.
    Frequency: On occasion.
    Estimated Time per Response: The USPTO estimates that the responses 
in this information collection will take the public approximately 
between 5 minutes (0.08 hours) and 8 hours to complete. This includes 
the time to gather the necessary information, create the document, and 
submit the completed request to the USPTO.
    Estimated Total Annual Respondent Burden Hours: 3,424 hours.
    Estimated Total Annual Respondent Hourly Cost Burden: $1,530,528.

                                       Table 1--Total Burden Hours and Hourly Costs to Private Sector Respondents
--------------------------------------------------------------------------------------------------------------------------------------------------------
                                                                                               Estimated                                    Estimated
                                               Estimated     Responses per      Estimated       time for      Estimated     Rate \1\ ($/      annual
     Item No.                Item               annual         respondent         annual        response    hourly burden      hour)     respondent cost
                                              respondents                       responses       (hours)      (hour/year)                      burden
                                                       (a)              (b)  (a) x (b) = (c)          (d)  (c) x (d) = (e)          (f)  (e) x (f) = (g)
--------------------------------------------------------------------------------------------------------------------------------------------------------
1.................  Petition to Accept               2,500                1            2,500            1            2,500         $447       $1,117,500
                     Unintentionally
                     Delayed Payment of
                     Maintenance Fee in an
                     Expired Patent (37
                     CFR 1.378(b)) (Web-
                     based ePetition and
                     PTO/SB/66).
2.................  Petition to Review                   1                1                1            4                4          447            1,788
                     Refusal to Accept
                     Payment of
                     Maintenance Fee Prior
                     to Expiration of
                     Patent (37 CFR 1.377).

[[Page 58140]]

 
3.................  Petition for                       115                1              115            8              920          447          411,240
                     Reconsideration of
                     Decision on Petition
                     Refusing to Accept
                     Delayed Payment of
                     Maintenance Fee in an
                     Expired Patent (37
                     CFR 1.378(d)).
                                           -------------------------------------------------------------------------------------------------------------
                       Totals.............           2,616  ...............            2,616  ...........            3,424  ...........        1,530,528
--------------------------------------------------------------------------------------------------------------------------------------------------------
\1\ 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).

    Estimated Total Annual Respondent Non-hourly Cost Burden: 
$2,577,316. There are no capital start-up, 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 and 
postage, is $2,577,316.

Filing Fees

    Two petitions (IC lines 1 and 2) in this information collection 
have associated filing fees resulting in $2,577,052 in filing fees.

                                              Table 2--Filing Fees
----------------------------------------------------------------------------------------------------------------
                                                                        Estimated
        Item No.             Fee                   Item                   annual     Filing fee  Non-hourly cost
                           code(s)                                      responses       ($)           burden
                                                                               (a)          (b)  (a) x (b) = (c)
----------------------------------------------------------------------------------------------------------------
1.......................      1558  Petition to Accept                         530       $2,100       $1,113,000
                                     Unintentionally Delayed Payment
                                     of Maintenance Fee in an Expired
                                     Patent (37 CFR 1.378(b))
                                     (undiscounted entity).
1.......................      2558  Petition to Accept                       1,515          840        1,272,600
                                     Unintentionally Delayed Payment
                                     of Maintenance Fee in an Expired
                                     Patent (37 CFR 1.378(b)) (small
                                     entity).
1.......................      3558  Petition to Accept                         455          420          191,100
                                     Unintentionally Delayed Payment
                                     of Maintenance Fee in an Expired
                                     Patent (37 CFR 1.378(b)) (micro
                                     entity).
2.......................      1463  Petition to Review Refusal to                1          220              220
                                     Accept Payment of Maintenance
                                     Fee Prior to Expiration of
                                     Patent (37 CFR 1.377)
                                     (undiscounted entity).
2.......................      2463  Petition to Review Refusal to                1           88               88
                                     Accept Payment of Maintenance
                                     Fee Prior to Expiration of
                                     Patent (37 CFR 1.377) (small
                                     entity).
2.......................      3463  Petition to Review Refusal to                1           44               44
                                     Accept Payment of Maintenance
                                     Fee Prior to Expiration of
                                     Patent (37 CFR 1.377) (micro
                                     entity).
                                                                      ------------------------------------------
                                       Totals........................        2,503  ...........       $2,577,052
----------------------------------------------------------------------------------------------------------------

Postage Costs

    Although the USPTO prefers that the items in this information 
collection be submitted electronically, responses may be submitted by 
mail through the United States Postal Service (USPS). The USPTO 
estimates that 1% of the 2,616 items will be submitted in the mail 
resulting in 26 mailed items. The USPTO estimates that the average 
postage cost for a mailed submission, using a Priority Mail legal flat 
rate envelope, will be $10.15. Therefore, the USPTO estimates the total 
mailing costs for this information collection at $264.

IV. Request for Comments

    The USPTO is soliciting public comments to:
    (a) Evaluate whether the collection of information is necessary for 
the proper performance of the functions of the Agency, including 
whether the information will have practical utility;
    (b) Evaluate the accuracy of the Agency's estimate of the burden of 
the collection of information, including the validity of the 
methodology and assumptions used;
    (c) Enhance the quality, utility, and clarity of the information to 
be collected; and
    (d) Minimize the burden of the collection of information on those 
who are to respond, including through the use of appropriate automated, 
electronic, mechanical, or other technological collection techniques or 
other forms of information technology, e.g., permitting electronic 
submission of responses.
    All comments submitted in response to this notice are a matter of 
public record. The USPTO will include or summarize each comment in the 
request to OMB to approve this information collection. Before including 
an address, phone number, email address, or other personally 
identifiable information (PII) in a comment, be aware that the entire 
comment--including PII--may be made publicly available at any time. 
While you may ask in your comment to withhold PII from public view, the 
USPTO cannot guarantee that it will be able to do so.

Lisa Lawn,
Director, Records and Information Compliance Program Office, Office of 
the Chief Administrative Officer, United States Patent and Trademark 
Office.
[FR Doc. 2024-15704 Filed 7-16-24; 8:45 am]
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