80 FR 32539 - Matters Related to First Inventor To File

DEPARTMENT OF COMMERCE
United States Patent and Trademark Office

Federal Register Volume 80, Issue 110 (June 9, 2015)

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 comment on proposed and/or continuing information collections, as required by the Paperwork Reduction Act of 1995, Public Law 104-13 (44 U.S.C. 3506(c)(2)(A)).

[Federal Register Volume 80, Number 110 (Tuesday, June 9, 2015)]
[Notices]
[Pages 32539-32540]
From the Federal Register Online  [www.thefederalregister.org]
[FR Doc No: 2015-14093]


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DEPARTMENT OF COMMERCE

United States Patent and Trademark Office


Matters Related to First Inventor To File

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 comment on 
proposed and/or continuing information collections, 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 August 10, 2015.

ADDRESSES: Written comments may be submitted by any of the following 
methods:
     Email: [email protected]. Include ``0651-
0071 comment'' in the subject line of the message.
     Federal Rulemaking Portal: http://www.regulations.gov.
     Mail: Marcie Lovett, Records Management Division Director, 
Office of the Chief Information Officer, United States Patent and 
Trademark Office, P.O. Box 1450, Alexandria, VA 22313-1450.

FOR FURTHER INFORMATION CONTACT: Requests 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 to [email protected] with ``0651-0071 comment'' in the 
subject line. Additional information about this collection is also 
available at http://www.reginfo.gov under ``Information Collection 
Review.''

SUPPLEMENTARY INFORMATION:

I. Abstract

    The Leahy-Smith America Invents Act (AIA) was enacted into law on 
September 16, 2011. See Public Law 112-29, 125 Stat. 283 (2011). 
Section 3 of the AIA, inter alia, amended 35 U.S.C. 102 and 103 
consistent with the objectives of the AIA, including the conversion of 
the United States patent system from a ``first to invent'' system to a 
``first inventor to file'' system. The changes in section 3 of the AIA 
went into effect on March 16, 2013, but apply only to certain 
applications filed on or after March 16, 2013.
    37 CFR 1.55(j), 1.78(a)(6) and 1.78(d)(6) require information 
needed to assist the USPTO in determining whether an application is 
subject to 35 U.S.C. 102 and 103 as amended by the AIA or 35 U.S.C. 102 
and 103 in effect on March 15, 2013. 37 CFR 1.110 requires information 
needed to identify the inventor, and ownership on the effective filing 
date, of each claimed invention in an application or patent with more 
than one named inventor, when necessary for purposes of a USPTO 
proceeding. 37 CFR 1.130, 1.131, and 1.132 provide for the submission 
of affidavits or declarations needed (i) to show that a disclosure was 
by the inventor or joint inventor, or was by a party who obtained the 
subject matter from the inventor or a joint inventor (1.130), (ii) to 
show that there was a prior public disclosure by the inventor or a 
joint inventor, or by a party who obtained the subject matter from the 
inventor or a joint inventor (1.130), (iii) to establish prior 
invention or to disqualify a commonly owned patent or published 
application as prior art (1.131), or (iv) to submit evidence to 
traverse a rejection or objection on a basis not otherwise provided for 
(1.132).
    The USPTO accounts for both electronic and paper submissions in 
this collection.

II. Method of Collection

    Electronically when using the USPTO online filing system EFS-Web, 
or by mail, facsimile, or hand delivery.

III. Data

    OMB Number: 0651-0071.
    IC Instruments and Forms: The individual instruments in this 
collection, as well as any associated forms, are listed in the hourly 
cost burden table below.
    Type of Review: Revision of a Previously Existing Information 
Collection.
    Affected Public: Individuals or households; businesses or other 
for-profits; and not-for-profit institutions.
    Estimated Number of Respondents: The USPTO estimates that it will 
receive a total of approximately 50,150 responses per year for this 
collection, of which approximately 12,538 will be filed by small 
entities. The USPTO estimates that approximately 48,646 of the 
responses for this collection will be submitted electronically via EFS-
Web.
    These estimates are based on the Agency's long-standing 
institutional knowledge of and experience with the type of information 
collected by these items.
    Estimated Time per Response: The USPTO estimates that the responses 
in this collection will take the public from 2 to 10 hours to complete. 
This includes the time to gather the necessary information, create the 
document, and submit the completed request to the USPTO. Specifically, 
the USPTO estimates that: (1) Preparing an affidavit or declaration 
under 37 CFR 1.130, 1.131, or 1.132 will require, on average, 10 hours; 
(2) identifying under 37 CFR 1.55(j), 1.78(a)(6), or 1.78(d)(6) whether 
there is any claim or subject matter not disclosed in the prior 
foreign, provisional, or non-provisional application will require, on 
average, 2 hours; and (3) identifying under 37 CFR 1.110 inventorship 
and ownership of the subject matter of claims will require, on average, 
2 hours. The USPTO calculates that, on balance, it takes the same 
amount of time to gather the necessary information, create the 
document, and submit it to the USPTO, whether the applicant submits the 
information in paper form or electronically.
    These estimates are based on the Agency's long-standing 
institutional knowledge of and experience with the type of information 
collected and the length of time necessary to complete responses 
containing similar or like information.
    Estimated Total Annual Respondent Burden Hours: 340,300 hours.
    Estimated Total Annual Respondent (Hourly) Cost Burden: 
$132,376,700. The USPTO expects that attorneys will complete the 
instruments associated with this information collection. The 
professional hourly rate for attorneys is $389. Using this hourly rate, 
the USPTO estimates $132,376,700 per year for the total hourly costs 
associated with respondents.

[[Page 32540]]



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                                                  Estimated
                             Information          time for        Estimated     Estimated annual
        IC No.          collection instrument     response         annual         burden hours     Rate  ($/hr)
                                                  (minutes)       responses
                                                          (a)             (b)     (a) x (b)/60 =
                                                                                             (c)
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1.....................  Electronic                        120           9,700             19,400         $389.00
                         Submissions Under 37
                         CFR 1.55(j).
1.....................  Submissions Under 37              120             300                600          389.00
                         CFR 1.55(j).
2.....................  Electronic                        120           7,760             15,520          389.00
                         Submissions Under 37
                         CFR 1.78(a)(6).
2.....................  Submissions Under 37              120             240                480          389.00
                         CFR 1.78(a)(6).
3.....................  Electronic                        120           1,940              3,880          389.00
                         Submissions Under 37
                         CFR 1.78(d)(6).
3.....................  Submissions Under 37              120              60                120          389.00
                         CFR 1.78(d)(6).
4.....................  Electronic                        120             146                292          389.00
                         Identification of
                         Inventorship and
                         Ownership of the
                         Subject Matter of
                         Individual Claims
                         under 37 CFR 1.110.
4.....................  Identification of                 120               4                  8          389.00
                         Inventorship and
                         Ownership of the
                         Subject Matter of
                         Individual Claims
                         under 37 CFR 1.110.
5.....................  Electronic Rule                   600          29,100            291,000          389.00
                         1.130, 1.131, and
                         1.132 Affidavits or
                         Declarations.
5.....................  Rule 1.130, 1.131,                600             900              9,000          389.00
                         and 1.132 Affidavits
                         or Declarations.
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    Total.............  .....................  ..............          50,150            340,300  ..............
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    Estimated Total Annual (Non-hour) Cost Burden: $8,475.50. The USPTO 
estimates that the total annualized (non-hour) cost burden for this 
collection is due to postage costs of $8,475.50 per year. Customers may 
incur postage costs when submitting some of the items covered by this 
collection to the USPTO by mail. The USPTO expects that approximately 
97 percent of the responses in this collection will be submitted 
electronically. Of the remaining 3 percent, the vast majority--98 
percent--will be submitted by mail, for a total of 1,474 mailed 
submissions. The average first class USPS postage cost for these items 
is estimated at $5.75; the cost of a one pound mailed submission in a 
flat rate envelope. Therefore, the USPTO estimates that the postage 
costs for the mailed submissions in this collection will total 
$8,475.50.

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, including 
the validity of the methodology and assumptions used;
    (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, including through the use of automated collection 
techniques or other forms of information technology, e.g., permitting 
electronic submission of responses.
    Comments submitted in response to this notice will be summarized or 
included in the request for OMB approval of this information 
collection; they will also become a matter of public record.

    Dated: June 1, 2015.
Marcie Lovett,
Records Management Division Director, USPTO, Office of the Chief 
Information Officer.
[FR Doc. 2015-14093 Filed 6-8-15; 8:45 am]
 BILLING CODE 3510-16-P