81 FR 70395 - Secrecy and License To Export

DEPARTMENT OF COMMERCE
Patent and Trademark Office

Federal Register Volume 81, Issue 197 (October 12, 2016)

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 extension of a continuing information collection, as required by the Paperwork Reduction Act of 1995, Public Law 104-13 (44 U.S.C. 3506(c)(2)(A)).

[Federal Register Volume 81, Number 197 (Wednesday, October 12, 2016)]
[Notices]
[Pages 70395-70397]
From the Federal Register Online  [www.thefederalregister.org]
[FR Doc No: 2016-24592]


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DEPARTMENT OF COMMERCE

Patent and Trademark Office


Secrecy and License To Export

ACTION: Proposed collection; comment request.

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SUMMARY: The United States Patent and Trademark Office (USPTO), as part 
of its

[[Page 70396]]

continuing effort to reduce paperwork and respondent burden, invites 
the general public and other Federal agencies to take this opportunity 
to comment on the extension of a 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 December 12, 
2016.

ADDRESSES: You may submit comments by any of the following methods:
     Email: [email protected]. Include ``0651-
0034 comment'' in the subject line of the message.
     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 ``Paperwork'' 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

    In the interest of national security, patent laws and rules place 
certain limitations on the disclosure of information contained in 
patents and patent applications and on the filing of applications for 
patents in foreign countries.
    In particular, whenever the publication or disclosure of an 
invention by the publication of an application or by the granting of a 
patent is, in the opinion of the head of an interested Government 
agency, determined to be detrimental to national security, the 
Commissioner for Patents at the USPTO must issue a secrecy order and 
withhold the publication of a patent application and the grant of a 
patent for such period as the national interest requires. A patent will 
not be issued on the application, nor will the application be 
published, as long as the secrecy order is in force. If a secrecy order 
is applied to an international application, the application will not be 
forwarded to the International Bureau as long as the secrecy order is 
in force.
    Three types of secrecy orders, each of a different scope, can be 
issued. The first type, Secrecy Order and Permit for Foreign Filing in 
Certain Countries, is intended to permit the widest utilization of the 
technical data in the patent application while still controlling any 
publication or disclosure that would result in an unlawful exportation. 
The second type, the Secrecy Order and Permit for Disclosing Classified 
Information, is to treat classified technical data presented in a 
patent application in the same manner as any other classified material. 
The third type of secrecy order is used where the other types of orders 
do not apply, including orders issued by direction of agencies other 
than the Department of Defense.
    Under the provision of 35 U.S.C. 181, a secrecy order remains in 
effect for a period of one year from its date of issuance. A secrecy 
order may be renewed for additional periods of not more than one year 
upon notice by a government agency that the national interest continues 
to so require. The applicant is notified of such renewal.
    When the USPTO places a secrecy order on a patent application, the 
rules authorize the applicant to petition the USPTO for permits to 
allow disclosure, modification, or rescission of the secrecy order, or 
to obtain a general or group permit. In each of these circumstances, 
the petition is forwarded to the appropriate defense agency for 
decision. Also, the Commissioner for Patents at the USPTO may rescind 
any order upon notification by the heads of the departments and the 
chief officers of the agencies who caused the order to be issued that 
the disclosure of the invention is no longer deemed detrimental to the 
national security.
    Unless expressly ordered otherwise, action on the application and 
prosecution by the applicant will proceed during the time the 
application is under secrecy order to a specific point as indicated 
under 37 CFR 5.3. Applications under secrecy order that come to a final 
rejection must be appealed or otherwise prosecuted to avoid 
abandonment. Appeals in such cases must be completed by the applicant, 
but unless specifically indicated by the Commissioner for Patents at 
the USPTO, will not be set for hearing until the secrecy order is 
removed.
    In addition to the issuance of secrecy orders, the USPTO is 
required to grant foreign filing licenses to applicants. The filing of 
a patent application is considered a request for a foreign filing 
license. However, in some instances an applicant may need a license for 
filing patent application in foreign countries prior to a filing in the 
USPTO or sooner than the anticipated licensing of a pending patent 
application.
    To file a patent application in a foreign country, the applicant 
can petition the USPTO for a foreign filing license either with or 
without a corresponding United States application. In addition, the 
applicant can petition to change the scope of a license and, when a 
patent application is filed through error in a foreign country without 
the appropriate filing license, an applicant can petition the USPTO for 
a retroactive license.
    This collection includes the information needed by the USPTO to 
review the various types of petitions regarding secrecy orders and 
foreign filing licenses. This collection of information is required by 
35 U.S.C. 181-188 and administered through 37 CFR 5.1-5.33.
    There are no forms associated with this collection of information.

II. Method of Collection

    By mail, facsimile or hand carried to the USPTO.

III. Data

    OMB Number: 0651-0034.
    Form Number(s): None.
    Type of Review: Revision of a currently approved collection.
    Affected Public: Businesses or other for-profits; not-for-profit 
institutions.
    Estimated Number of Respondents: 2,559 responses per year. The 
USPTO estimates that approximately 20% (507) of these responses will be 
from small entities.
    Estimated Time per Response: The USPTO estimates that it will take 
the public from 30 minutes (0.5 hours) to 4 hours to gather the 
necessary information, prepare the appropriate documents, and submit 
the information required for this collection.
    Estimated Total Annual Respondent Burden Hours: 1,607.5 hours.
    Estimated Total Annual Respondent Cost Burden: $659,075.00. The 
USPTO expects that the information in this collection will be prepared 
by attorneys at an estimated rate of $410 per hour. Therefore, the 
USPTO estimates that the respondent cost burden for this collection 
will be approximately $659,075.00 per year.

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                                               Estimated time     Estimated
                     Item                       for response       annual       Estimated annual    Rate ($/hr)
                                                   (hours)        responses       burden hours
                                                          (a)             (b)     (a) x (b)/60 =
                                                                                             (c)
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1. Petition for Rescission of Secrecy Order..             3.0              10               30.0             410
2. Petition to Disclose or Modification of                2.0              15               30.0             410
 Secrecy Order...............................
3. Petition for General and Group Permits....             1.0               1                1.0             410
4. Petition for Expedited Handling of License             0.5           2,200            1,100.0             410
 (no corresponding application)..............
5. Petition for Expedited Handling of License             0.5             250              125.0             410
 (corresponding U.S. application)............
6. Petition for Changing Scope of License....             0.5               3                1.5             410
7. Petition for Retroactive License..........             4.0              80                320             410
                                              ------------------------------------------------------------------
    Totals...................................  ..............           2,559            1,607.5  ..............
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    Estimated Total Annual (Non-hour) Respondent Cost Burden: 
$448,267.70.
    There are no capital start-up, maintenance, or record keeping costs 
associated with this information collection. However, this collection 
does have annual (non-hour) costs in the form of filing fees for the 
foreign filing petitions and postage costs. No fees are associated with 
the secrecy order petitions.
    The license petitions all charge the 37 CFR 1.17(g) fee, for which 
small and micro entity discounts recently have been introduced. The 
USPTO estimates that 20% of the responses in this collection will come 
from small entities and approximately 10% of the small entity 
respondents will qualify as micro entities.

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                                                                                                  Total non-hour
                              Item                                   Responses    Filing fee ($)    cost burden
                                                                                                        ($)
                                                                             (a)             (b)     (a) x (b) =
                                                                                                             (c)
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1. Petition for Rescission of Secrecy Order.....................              10            0.00            0.00
2. Petition to Disclose or Modification of Secrecy Order........              15            0.00            0.00
3. Petition for General and Group Permits.......................               1            0.00            0.00
4. Petition for Expedited Handling of License (no corresponding            1,716          200.00      343,200.00
 application)...................................................
4. Petition for Expedited Handling of License (no corresponding              440          100.00       44,000.00
 application) (small entity)....................................
4. Petition for Expedited Handling of License (no corresponding               44           50.00        2,200.00
 application) (micro entity)....................................
5. Petition for Expedited Handling of License (corresponding                 195          200.00       39,000.00
 U.S. application)..............................................
5. Petition for Expedited Handling of License (corresponding                  50          100.00        5,000.00
 U.S. application) (small entity)...............................
5. Petition for Expedited Handling of License (corresponding                   5           50.00          250.00
 U.S. application) (micro entity)...............................
6. Petition for Changing Scope of License.......................               1          200.00          200.00
6. Petition for Changing Scope of License (small entity)........               1          100.00          100.00
6. Petition for Changing Scope of License (micro entity)........               1           50.00           50.00
7. Petition for Retroactive License.............................              62          200.00       12,400.00
7. Petition for Retroactive License (small entity)..............              16          100.00        1,600.00
7. Petition for Retroactive License (micro entity)..............               2           50.00          100.00
                                                                 -----------------------------------------------
    Totals......................................................           2,559  ..............      448,100.00
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    The USPTO estimates that 99% of the petitions in this collection 
are submitted by facsimile or hand carried because of the quick 
turnaround required. For the 1% of the public that chooses to submit 
the petitions to the USPTO by mail through the United States Postal 
Service, the USPTO estimates that the average postage cost for a USPS 
Priority Mail, flat-rate envelope submission is $6.45, and that 26 
submissions will be mailed to the USPTO per year for a total estimated 
postage cost of $167.70.
    Therefore, the USPTO estimates that the total (non-hour) cost 
burden for this collection in the form of filing fees and postage costs 
is estimated to be approximately $448,267.70.

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 3, 2016.
Rhonda Foltz,
Director, Office of Information Management Services, OCIO, United 
States Patent and Trademark Office.
[FR Doc. 2016-24592 Filed 10-11-16; 8:45 am]
 BILLING CODE 3510-16-P