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SUPPLEMENTARY INFORMATION:

I. Abstract

This collection of information is required by the Patent Cooperation Treaty (PCT), which became operational in June 1978 and is administered by the International Bureau (IB) of the World Intellectual Property Organization (WIPO) in Geneva, Switzerland. The provisions of the PCT have been implemented by the United States in part IV of title 35 of the U.S. Code (chapters 35-37) and subpart C of title 37 of the Code of Federal Regulations (37 CFR 1.401-1.499). The purpose of the PCT is to provide a standardized filing format and procedure that allows an applicant to seek protection for an invention in several countries by filing one international application in one location, in one language, and paying one initial set of fees. The information in this collection is used by the public to submit a patent application under the PCT and by the USPTO, to fulfill its obligation to process, search, and examine the application as directed by the treaty.

The USPTO acts as the Receiving Office (RO/US) for international applications filed by residents and nationals of the United States. These applicants send most of their correspondence directly to the USPTO, but they may also file certain documents directly with the IB. The USPTO serves as an International Search Authority (ISA) to perform searches and issue international search reports (ISR) and the written opinions of international applications. The USPTO also issues international preliminary reports on patentability (IPRP Chapter II) when acting as an International Preliminary Examining Authority (IPEA).

The RO reviews the application and, if it contains all of the necessary information, assigns a filing date to the application. The RO maintains the home copy of the international application and forwards the record copy of the application to the IB and the search copy to the ISA. The IB maintains the record copy of all international applications and publishes them 18 months after the earliest priority date, which is the earliest date for which a benefit is claimed. The ISA performs a search to determine whether there is any prior art relevant to the claims of the international application. Subsequently, the ISA issues an international search report and written opinion as to whether each claim is novel, involves an inventive step, and is industrially applicable. The ISA then forwards the international search report and written opinion to the applicant and the IB. The IB will normally publish the application and search report 18 months after the priority date, unless early publication is requested by the applicant. Until international publication, no third person or national or regional office is allowed access to the international patent application unless so requested or authorized by the applicant. If the applicant wishes to withdraw the application (and does so before international publication), international publication does not take place.

Under optional Chapter II of the Treaty, an applicant who has filed an international application in a RO must file a Demand for an international preliminary examination of the application by an IPEA, such as the USPTO. A Demand, including the form and required fees, must be filed within a prescribed time period. Usually, a Demand is filed with amendments and/or arguments under PCT Article 34 addressing objections raised in the Written Opinion of the International Search Authority (WOISA). The International preliminary examination is a second evaluation of the potential patentability of the claimed invention, including its amendments filed pursuant to article 34, using the same standards on which the written opinion of the ISA is based. A copy of the examination report is sent to both the applicant and to the IB. The IB then forwards a copy of the examination report to each Office elected by the applicant.

II. Method of Collection

The items in this information collection may be submitted electronically or in paper form by mail.

III. Data

OMB Control Number: 0651-0021.

Forms: (IB = International Bureau; IPEA = International Preliminary Examination Authority; RO = Receiving Office; SB = Specimen Book).

• PCT/RO/101 (Request and Fee Calculation Sheet)
• PCT/RO/134 (Indications Relating to Deposited Microorganism or Other Biological Material)
• PCT/IB/372 (Notice of Withdrawal)
• PCT/IPEA/401 (Demand and Fee Calculation Sheet)
• PTO/SB/64PCT (Petition for Revival of an International (PCT) Application for Patent Designating the U.S. Abandoned Unintentionally Under37 CFR 1.137(a))
• PTO-1382 (Transmittal Letter to the United States Receiving Office (RO/US))
• PTO-1390 (Transmittal Letter to the United States Designated/Elected Office (DO/E.O./US) Concerning a Filing Under35 U.S.C. 371)

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.

Frequency: On occasion.

Estimated Number of Annual Respondents: 412,493 respondents.

Estimated Number of Annual Responses: 412,493 responses.

Estimated Time per Response: The USPTO estimates that the responses in this information collection will take the public approximately 15 minutes (0.25 hours) to 4 hours to complete. This includes the time to gather the necessary information, create the document, and submit the completed item(s) to the USPTO.

Estimated Total Annual Respondent Burden Hours: 343,739 hours.

Estimated Total Annual Respondent Hourly Cost Burden: $153,651,333.

Estimated Total Annual Respondent Non-hourly Cost Burden: $452,878,858. There are no capital start-up costs, 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, translations, drawings, and postage, is $452,878,858.

Filing Fees

There are fees associated with submitting the information in this collection, for a total of $285,961,858 per year, as outlined in Table 2 below.

Translations

If the international application was filed in another language and was not published under PCT Article 21(2) in English, applicants entering the national stage in the United States are required to file an English translation of the international application.^[2]

A processing fee is required for accepting an English translation after 30 months from the priority date. This requirement may carry additional costs for the applicant to contract for a translation of the documents in questions. The USPTO believes that the average length of the document to be translated is 10 pages and that it will cost approximately $140 per page for the translation for an average translation cost of $1,400 per document.

The USPTO estimates that it will receive approximately 3,238 English translations after 30 months from the priority date annually, for a total of $4,533,200 per year for English translations of non-English language documents for PCT applications.

Drawings

Applicants may also incur costs for drawings that are submitted as part of PCT applications. Some applicants may produce their own drawings, while others may contract out the work to various patent illustration firms. For the purpose of estimating burden for this collection, the USPTO considers that all applicants will have their drawings prepared by these firms. According to WIPO information, the average cost to produce a drawing is $1,150.

The USPTO expects that it will receive 141,166 sets of drawings for a total of $162,340,900 per year for drawing costs for PCT applications.

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. The USPTO estimates that 1% of the 412,493 items will be submitted in the mail, resulting in 4,125 mailed items. The USPTO estimates that the average postage cost for a mailed submission, using a Priority Mail legal flat rate envelope, is $10.40. Therefore, the USPTO estimates the total annual mailing costs for this information collection are $42,900.

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, ( printed page 26560) 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.

90 FR 26555