America Invents Act Section 10 Patent Fee Adjustments

OMB Control No: 0651-0072	ICR Reference No: 201205-0651-001
Status: Historical Inactive	Previous ICR Reference No:
Agency/Subagency: DOC/PTO	Agency Tracking No:
Title: America Invents Act Section 10 Patent Fee Adjustments
Type of Information Collection: New collection (Request for a new OMB Control Number)	Common Form ICR:  No
Type of Review Request: Regular
OIRA Conclusion Action: Preapproved	Conclusion Date: 10/25/2012
Retrieve Notice of Action (NOA)	Date Received in OIRA: 09/06/2012
Terms of Clearance: Pre-approval contingent upon no substantive changes to this collection after adoption of the final rule. Otherwise this collection should be re-submitted to OMB for review.

	Inventory as of this Action	Requested	Previously Approved
Expiration Date	10/31/2015	36 Months From Approved
Responses	5,832,472	0	0
Time Burden (Hours)	1,660	0	0
Cost Burden (Dollars)	2,594,521,312	0	0

---

Abstract: The USPTO is submitting this request in support of the Notice of Proposed Rulemaking titled "Setting and Adjusting Patent Fees" (RIN 0651-AC54). The USPTO proposes to set or adjust patent fees as authorized by the Leahy-Smith America Invents Act ("Act" or "AIA") Pub.L.112-29. The proposed fees will provide the Office with a sufficient amount of aggregate revenue to recover its aggregate cost of patent operations and will help the Office implement a sustainable funding model, reduce the current patent application backlog, decrease patent pendency, improve patent quality, and upgrade the Office's patent business information technology ("IT") capability and infrastructure. The Office also proposes to reduce fees for a new class of patent applicants, "micro entities," under section 10(g) of the Act and proposes to include multipart and staged fees for requests for continued examination ("RCEs") and appeals. These proposals will foster innovation and increase application processing options. When fees are set or adjusted, the aggregate revenue from the patent fees may only be set to recover the aggregate estimated costs to the Office for processing, activities, services, and materials relating to patents, including administrative costs to the Office with respect to such patent operations. Under section 10(b) of the AIA, eligible small entities shall receive a 50 percent fee reduction from the large entity fees for filing, searching, examining, issuing, appealing, and maintaining patent applications and patents. The Act further provides that the micro entities shall receive a 75 percent fee reduction for filing, searching, examining, issuing, appealing, and maintaining patent applications and patents. This information collection request is submitted as a fee-based burden collection to best provide for comment and review of the fee adjustment burden impact of the proposed rulemaking. The USPTO will maintain the information requirements and non-fee burden for the information collection items within separate collections. This new collection will be maintained for fee burden adjustments only. The relevant fee burdens will be removed from their existing collections through non-substantive change requests to discontinue counting those burdens twice and overstating the total respondent burden in the USPTO inventory. This information collection request ("ICR") includes: + "Correct inventorship after first office action on the merits," an item introduced in this proposed rulemaking. The information collection requirements for this item will eventually be moved into 0651-0031 Patent Processing (Updating), and the fee will remain in this collection. + "Petitions to the Chief Administrative Patent Judge under 37 CFR 41.3," an item that is not covered by an existing information collection request and is added to this submission because the fee is affected by the proposed rulemaking. The information requirements for this item will eventually be moved into 0651-0063 Board of Patent Appeals and Interferences (BPAI) Actions, and the fee will remain in this collection. + Fee adjustments to existing and pending items in the agency inventory. Information requirements for those items will remain in their respective collections and only the corresponding fees (as adjusted by the proposed rulemaking) are submitted for this collection. + Response adjustments to existing and pending items in the agency inventory projected to be impacted by the fee adjustments because changes in some fees are expected to change demand for those services, which changes the number of responses. Information requirements for those items will remain in their respective collections and only the corresponding fees are submitted for this collection. The response adjustments are offered here solely for the purpose of capturing the total impact on burden due to the proposed rulemaking.

---

Authorizing Statute(s): PL: Pub.L. 112 - 29 10 Name of Law: Leahy-Smith America Invents Act

Citations for New Statutory Requirements: PL: Pub.L. 112 - 29 10 Name of Law: Leahy-Smith America Invents Act

---

Associated Rulemaking Information
RIN:	Stage of Rulemaking:	Federal Register Citation:	Date:
0651-AC54	Proposed rulemaking	77 FR 55028	09/06/2012

---

Federal Register Notices & Comments

Did the Agency receive public comments on this ICR? No

---

Number of Information Collection (IC) in this ICR: 127

IC Title Form No. Form Name 00XX Correct inventorship after first office action on the merits 00XX Petitions to the Chief Administrative Patent Judge under 37 CFR 41.3 0059 Petitions requiring the petition fee set forth in 37 CFR 1.17(h) (Group III) 0064 Request for ex parte reexamination - granted 0064 Supplemental examination document size fees; each additional 50 0064 Reexamination independent claims in excess of three and also in excess of the number of such claims in the patent under reexamination 0016 Surcharge - 3.5 year - Late payment within 6 months 0020 Filing an application for patent term adjustment 0020 Request for reinstatement of term reduced 0020 Extension of term of patent 0020 Initial application for interim extension (see 37 CFR 1.790) 0020 Subsequent application for interim extension (see 37 CFR 1.790) 0021 National Stage Search Fee - U.S. was the ISA or IPEA and all claims satisfy PCT Article 33(1)-(4) 0021 National Stage Search Fee - U.S. was the ISA 0021 National Stage Search Fee - search report prepared and provided to USPTO 0021 National Stage Examination Fee - U.S. was the ISA or IPEA and all claims satisfy PCT Article 33(1)-(4) 0021 Transmitting application to Intl. Bureau to act as receiving office 0021 National Stage Search Fee - all other situations 0021 Search fee - regardless of whether there is a corresponding application (see 35 U.S.C. 361(d) and PCT Rule 16) 0021 Supplemental search fee when required, per additional invention 0021 Preliminary examination fee - U.S. was the ISA 0021 Preliminary examination fee - U.S. was not the ISA 0021 [PCT National Stage] Claims - extra independent (over three) 0021 [PCT National Stage] Claims - extra total (over 20) 0021 [PCT National Stage] Claims - multiple dependent 0016 Maintenance fee due at 3.5 years 0016 Maintenance fee due at 7.5 years 0021 Acceptance of an unintentionally delayed claim for priority, or for filling a request for the restoration of the right of priority 0021 Basic National Stage Fee 0021 National Stage Examination Fee - all other situations 0021 Search fee, examination fee or oath or declaration after thirty months from priority date 0027 Recording each patent assignment, agreement or other paper, per property if not submitted electronically 0027 Recording each patent assignment, agreement or other paper, per property - submitted electronically 0036 Request for publication of SIR - Prior to examiner's action 0012 Reinstatement to practice 0012 For test administration by commercial entity 0012 Registration to practice for change of practitioner type 0059 Petitions requiring the petition fee set forth in 37 CFR 1.17(f) (Group I) 0059 Petitions requiring the petition fee set forth in 37 CFR 1.17(g) (Group II) 0063 Filing a Brief in Support of an Appeal 0063 Filing a brief in support of an appeal in an inter partes reexamination proceeding 0063 Forwarding an Appeal in an Application or Ex Parte Reexamination Proceeding to the Board 0064 Reexamination claims in excess of 20 and also in excess of the number of claims in the patent under reexamination 0064 Reexamination Petition 0021 Supplemental examination fee per additional invention 0021 National Stage Application Size Fee - for each additional 50 sheets that exceeds 100 sheets 0031 Request for continued examination (RCE) (1st Request) (see 37 CFR 1.114) 0031 Extension for response within first month 0031 Extension for response within second month 0031 Extension for response within third month 0031 Extension for response within fourth month 0032 Basic filing fee - Design 0032 Utility Search Fee 0032 Design Search Fee 0032 Multiple dependent claim 0032 Utility Application Size Fee - for each additional 50 sheets that exceeds 100 sheets 0032 Design Application Size Fee - for each additional 50 sheets that exceeds 100 sheets 0032 Plant Application Size Fee - for each additional 50 sheets that exceeds 100 sheets 0032 Provisional Application Size Fee - for each additional 50 sheets that exceeds 100 sheets 0064 Request for ex parte reexamination - refused 0064 Supplemental Examination Request 0064 Supplemental Examination Reexamination 0064 Supplemental Examination document size fees; 21-50 0069 Inter Partes Post-Institution Request of Each Claim in Excess of 15 0069 Post Grant of Covered Business Method Patent Review Request 0069 Post Grant of Covered Business Method Patent Review Post_Institution 0069 Post Grant or Covered Business Method Patent Review Request of Each Claim in Excess of 20 0031 Extension for response within fifth month 0031 Petition to revive unavoidably abandoned application 0031 Petition to revive unintentionally abandoned application 0016 Maintenance fee due at 11.5 years 0016 Surcharge - 7.5 year - Late payment within 6 months 0016 Surcharge - 11.5 year - Late payment within 6 months 0016 Surcharge after expiration - Late payment is unavoidable 0016 Surcharge after expiration - Late payment is unintentional 0021 English translation after thirty months from priority date 0021 Transmittal fee 0069 Derivation proceeding 0069 Inter Partes Review Request Fee 0069 Inter Partes Review Post-Institution Fee 0069 Post Grant or Covered Business Method Patent Review Post-Institution Request of Each Claim in Excess of 15 0012 Application fee (non-refundable) 0012 Registration to practice or grant of limited recognition under §11.9(b) or (c) 0031 Request for expedited examination of a design application 0031 Submission of an Information Disclosure Statement 0031 Statutory disclaimer, including terminal disclaimer 0031 Publication fee for republication 0031 Filing a submission after final rejection (see 37 CFR 1.129(a)) 0031 Request for continued examination (RCE) (2nd and subsequent) 0032 Provisional application filing fee 0032 Surcharge - Late provisional filing fee or cover sheet 0032 Non-English specification 0032 Plant Search Fee 0032 Utility Examination Fee 0032 Design Examination Fee 0032 Plant Examination Fee 0032 Independent claims in excess of three 0032 Claims in excess of 20 0032 Processing fee for provisional applications 0036 Request for publication of SIR - After examiner's action 0031 Processing fee, except in provisional applications 0031 Request for voluntary publication or republication 0032 Basic filing fee - Utility 0032 Basic filing fee - Utility (electronic filing for small entities) 0032 Surcharge - Late filing fee, search fee, examination fee or oath or declaration 0032 Basic filing fee - Design (CPA) 0032 Basic filing fee - Plant 0069 Inter Partes Review Request of Each Claim in Excess of 20 0069 Request to make settlement agreement available 00XX For each additional invention to be examined (see 37 CFR 1.129(b)) 00XX Notice of appeal 00XX Request for oral hearing 0033 Basic filing fee - Reissue 0033 Reissue Search Fee 0033 Reissue independent claims in excess of three 0033 Reissue claims in excess of 20 0033 Reissue Application Size Fee - for each additional 50 sheets that exceeds 100 sheets 0033 Reissue Examination Fee 0033 Publication fee for early, voluntary, or normal publication 0033 Utility issue fee 0033 Design issue fee 0033 Plant issue fee 0033 Reissue issue fee 0033 Certificate of correction 0012 Review of decision by the Director of Enrollment and Discipline under §11.2(c) 0012 Review of decision of the Director of Enrollment and Discipline under §11.2(d) 0012 Application fee for person disciplined, convicted of a felony or certain misdemeanors under §11.7(h)

---

ICR Summary of Burden

	Total Request	Previously Approved	Change Due to New Statute	Change Due to Agency Discretion	Change Due to Adjustment in Estimate	Change Due to Potential Violation of the PRA
Annual Number of Responses	5,832,472	0	315,377	5,517,095	0	0
Annual Time Burden (Hours)	1,660	0	1,000	660	0	0
Annual Cost Burden (Dollars)	2,594,521,312	0	349,621,871	2,244,899,441	0	0

Burden increases because of Program Change due to Agency Discretion: Yes

Burden Increase Due to: Miscellaneous Actions

Burden decreases because of Program Change due to Agency Discretion: No

Burden Reduction Due to:

Short Statement: This information collection request (ICR) includes program changes that are part of the impact of the proposed rulemaking (new statute). In addition to the new information requirement introduced by this proposed rulemaking--Correct Inventorship After First Office Action on the Merits--these changes include revised fee amounts and fee structures that will have an impact on annual cost burden as well as on the estimated responses for the associated information requirements whose fees are affected by this ICR. This ICR also includes program changes that are not part of the impact of the proposed rulemaking. These changes are primarily from the movement of the affected fees and their associated responses (as estimated and approved in previous ICRs) into this new information collection, as well as the addition of an existing information requirement, Petition to the Chief Administrative Patent Judge Under 37 CFR 41.3, that is not covered by a current information collection. Please consult sections 1, 12, 13, and 15 of the Supporting Statement for further explanation of these changes.

---

Annual Cost to Federal Government: $2,612

Does this IC contain surveys, censuses, or employ statistical methods? No

Is the Supporting Statement intended to be a Privacy Impact Assessment required by the E-Government Act of 2002? No

Is this ICR related to the Affordable Care Act [Pub. L. 111-148 & 111-152]? No

Is this ICR related to the Dodd-Frank Wall Street Reform and Consumer Protection Act, [Pub. L. 111-203]? No

Is this ICR related to the American Recovery and Reinvestment Act of 2009 (ARRA)? No

Is this ICR related to the Pandemic Response? Uncollected

Agency Contact: Jennifer McDowell 571 272-7013 [email protected]

---

Common Form ICR:  No

---

On behalf of this Federal agency, I certify that the collection of information encompassed by this request complies with 5 CFR 1320.9 and the related provisions of 5 CFR 1320.8(b)(3).
The following is a summary of the topics, regarding the proposed collection of information, that the certification covers:
		(a) It is necessary for the proper performance of agency functions;
		(b) It avoids unnecessary duplication;
		(c) It reduces burden on small entities;
		(d) It uses plain, coherent, and unambiguous language that is understandable to respondents;
		(e) Its implementation will be consistent and compatible with current reporting and recordkeeping practices;
		(f) It indicates the retention periods for recordkeeping requirements;
		(g) It informs respondents of the information called for under 5 CFR 1320.8 (b)(3) about:
			(i) Why the information is being collected;
			(ii) Use of information;
			(iii) Burden estimate;
			(iv) Nature of response (voluntary, required for a benefit, or mandatory);
			(v) Nature and extent of confidentiality; and
			(vi) Need to display currently valid OMB control number;
		(h) It was developed by an office that has planned and allocated resources for the efficient and effective management and use of the information to be collected.
		(i) It uses effective and efficient statistical survey methodology (if applicable); and
		(j) It makes appropriate use of information technology.
If you are unable to certify compliance with any of these provisions, identify the item by leaving the box unchecked and explain the reason in the Supporting Statement.
Certification Date: 09/06/2012

---