SUPPLEMENTARY INFORMATION:

I. Abstract

Title I of The Patent Law Treaties Implementation Act of 2012 ^[1] (PLTIA) amended the patent laws to implement the provisions of the Geneva Act of the Hague Agreement Concerning International Registration of Industrial Designs (hereafter “Hague Agreement”). The Hague Agreement is an international registration system which offers the possibility of obtaining protection for up to 100 industrial designs in designated member countries and intergovernmental organizations (referred to as “Contracting Parties”) by filing a single international design application either directly with the International Bureau of the World Intellectual Property Organization (WIPO) or indirectly through the office of an applicant's Contracting Party. The United States is a Contracting Party to ( printed page 70867) the Hague Agreement, which took effect with respect to the United States on May 13, 2015. The Hague Agreement is administrated by the International Bureau (IB) of WIPO located in Geneva, Switzerland.

Under the Hague Agreement, a U.S. applicant can file an international design application indirectly through the United States Patent and Trademark Office (USPTO), which will forward the application to the IB upon satisfaction of certain requirements, or directly with the IB. All international design applications are subject to the following fees: (1) a basic fee, (2) a publication fee, and (3) in respect of each Contracting Party designated for protection, either a standard or individual designation fee. An international design application is also subject to an additional per word fee where the description exceeds 100 words. A transmittal fee is also required for international design applications filed indirectly through the USPTO. The fees required by the IB may be paid either directly to the IB in Swiss currency or through the USPTO as an office of indirect filing in U.S. dollars. If applicants want to pay the required fees through the USPTO as an office of indirect filing, the fees must be paid no later than the date of payment of the transmittal fee. The fees will then be forwarded to the IB after conversion to Swiss currency.

Where the U.S. is designated, the applicant will be required to pay a first part U.S. designation fee to the IB. The first part U.S. designation fee, established in Swiss currency, is based on the combined amounts of the basic filing fee (37 CFR 1.16(b)), search fee (§ 1.16(l)), and examination fee (§ 1.16(p)) for a design application. See § 1.1031(f)(1). Upon issuance of a notice of allowance by the USPTO, payment of a second part U.S. designation fee ( i.e., the issue fee) will be required. See § 1.1031(f)(2). The second part U.S. designation fee may be paid either directly to the USPTO in U.S. dollars or through the IB in Swiss currency.

The IB examines international design application for compliance with the applicable formal requirements under the Hague Agreement. If the applicable requirements are satisfied, the IB registers the international design to the International Register. Thereafter, the IB will publish the international registration in the International Designs Bulletin based on the publication timing selected by the applicant. The IB will provide a copy of the publication of the international registration to each Contracting Party designated by the application.

A designated Contracting Party may or may not perform a substantive examination of the international design registration. The USPTO will perform a substantive examination for patentability of the international design application, as in the case of regular U.S. design applications.

This information collection covers all the necessary information required for an international design application that is filed either through the USPTO as an office of indirect filing or directly with the IB. The information in this collection is used to register industrial designs under the provisions of the Hague Agreement. The USPTO manages two forms in this information collection, and the rest are forms managed by the IB.

II. Method of Collection

Items in this information collection may be submitted as electronic submissions. Applicants may also submit the information in paper form by mail, fax, or hand delivery.

III. Data

OMB Control Number: 0651-0075.

Forms: (PTOL = Patent Trademark Official Legal Forms; WIPO = World Intellectual Property Organization).

• PTO-1595 (Recordation Form Cover Sheet—Patents). PTO-1595 is also approved for use under USPTO information collection 0651-0027.
• PTOL-85 Part B (Fee(s) Transmittal). PTOL-85 Part B is also approved for use under USPTO information collection 0651-0033.
• WIPO DM/1 (Application for International Registration)
• WIPO DM/1/I (Annex I: Oath or Declaration of the Creator under Rule 8(1)(a)(ii) of the Regulations)
• WIPO DM/1/II (Annex II: Supporting Document(s) Concerning a Declaration to the Exception to Lack of Novelty under Section 408(c)(ii) of the Administrative Instructions)
• WIPO DM/1/III (Annex III: Information On Eligibility For Protection under Rule 7(5)(g) and Section 408(d) of the Administrative Instructions)
• WIPO DM/1/IV (Annex IV: Reduction of United States Individual Designation Fee under Section 408(b) of the Administrative Instructions)
• WIPO DM/1/V (Annex V: Supporting Document(s) Concerning Priority Claim under Article 4 of the Paris Convention)
• WIPO DM/7 (Appointment of a Representative (Power of Attorney))

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: 5,633 respondents.

Estimated Number of Annual Responses: 5,633 responses.

Estimated Time per Response: The USPTO estimates that the responses for this information collection will take the public approximately 15 minutes (0.25 hours) to 6 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: 25,393 hours.

Estimated Total Annual Respondent Hourly Cost Burden: $13,966,150. ( printed page 70868)

Estimated Total Annual Respondent Non-hourly Cost Burden: $13,607,168. 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-hourly cost burden for this information collection, in the form of filing fees, drawing costs, and postage, is $13,607,168.

Filing Fees

The filing fees associated with this information collection that are paid to the USPTO are listed in the table below. ( printed page 70869)

The USPTO also collects one fee associated with applications for international registrations that are indirectly filed to WIPO through the USPTO. The USPTO does not intake any of the money associated with this fee. Instead, the USPTO transfers the fee amounts to WIPO on behalf of the applicant filing indirectly. That fee amount is indicated here as part of this information collection but is not directly counted as part of the collection's final non-hourly cost burden total.

( printed page 70870)

Drawing Costs

The USPTO estimates that the costs to produce design drawings can range from $50 to $350 per sheet. Taking the average of this range, the USPTO estimates that it can cost $200 per sheet to produce design drawings. On average, 10 sheets of drawings are submitted for an application resulting in an average cost of $2,000 to produce the design drawings. The USPTO estimates that 140 respondents will file international design applications indirectly through the USPTO for transmission to the IB. The USPTO further estimates that it will receive approximately 3,870 international design applications from the IB where applicants have designated the U.S., accompanied by payment of the first part of the designated fee for substantive examination by the USPTO. The USPTO estimates that all of the 4,010 design applications will be submitted with drawings. Overall, the costs associated with submitting these drawings are estimated to be $8,020,000.

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 5,633 items in this information collection will be submitted in the mail, resulting in 56 mailed items. The USPTO estimates that the average postage cost for a mailed submission, using a Priority Mail legal flat-rate envelope, will be $13.25. Therefore, the USPTO estimates the total mailing costs for this information collection is $742.

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 intend 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 advised that the entire comment—including PII—may be made publicly available at any time. While one may request in a comment to withhold PII from public view, the USPTO cannot guarantee that it will be able to do so.

91 FR 70866