Rules for Patent Maintenance Fees

OMB Control No: 0651-0016	ICR Reference No: 202107-0651-001
Status: Received in OIRA	Previous ICR Reference No: 201908-0651-008
Agency/Subagency: DOC/PTO	Agency Tracking No:
Title: Rules for Patent Maintenance Fees
Type of Information Collection: Revision of a currently approved collection	Common Form ICR:  No
Type of Review Request: Regular	Date Submitted to OIRA: 09/23/2021

	Requested	Previously Approved
Expiration Date	36 Months From Approved	10/31/2021
Responses	44,542	534,010
Time Burden (Hours)	6,864	13,024
Cost Burden (Dollars)	3,098,564	1,334,707,957

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Abstract: Under 35 U.S.C. § 41 and 37 CFR 1.20(e)-(h), 1.362, 1.366, 1.377, and 1.378, the United States Patent and Trademark Office (USPTO) charges fees for maintaining in force all utility patents based on applications filed on or after December 12, 1980. Payment of these maintenance fees is due at 3-1/2, 7-1/2, and 11-1/2 years after the date the patent was granted. If the USPTO does not receive payment of the appropriate maintenance fee and any applicable surcharge within a grace period of 6 months following each of the above due dates (at 4, 8, or 12 years after the date of grant), the patent will expire at that time. After a patent expires, it is no longer enforceable. Maintenance fees are not required for design or plant patents or for reissue patents if the patent being reissued did not require maintenance fees. The USPTO must maintain accurate payment records in order to provide the public with information as to which patents have expired and which patents remain in force.

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Authorizing Statute(s): PL: Pub.L. 112 - 29 8 Name of Law: Leahy-Smith America Invents Act

Citations for New Statutory Requirements: None

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Associated Rulemaking Information
RIN:	Stage of Rulemaking:	Federal Register Citation:	Date:
	Not associated with rulemaking

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Federal Register Notices & Comments
60-day Notice:	Federal Register Citation:	Citation Date:
	86 FR 22936	04/30/2021
30-day Notice:	Federal Register Citation:	Citation Date:
	86 FR 52446	09/21/2021
Did the Agency receive public comments on this ICR? No

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Number of Information Collection (IC) in this ICR: 8

IC Title Form No. Form Name Electronic Maintenance Fee Transactions Fee Address Indication Form (Individuals or Households) PTO/SB/47, PTO/AIA/47 Fee Address Indication Form ,   "Fee Address" Indication Form Fee Address Indication Form (Private Sector) PTO/AIA/47, PTO/SB/47 Fee Address Indication Form ,   "Fee Address" Indication Form Petition for Reconsideration of Decision on Petition Refusing to Accept Delayed Payment of Maintenance Fee in an Expired Patent (37 CFR 1.378(d)) (Individuals or Households) Petition for Reconsideration of Decision on Petition Refusing to Accept Delayed Payment of Maintenance Fee in an Expired Patent (37 CFR 1.378(d)) (Private Sector) Petition to Accept Unintentionally Delayed Payment of Maintenance Fee in an Expired Patent (37 CFR 1.378(b)) (Individuals and Households) PTO/SB/66 Petition to Accept Unintentionally Delayed Payment of Maintenance Fee in an Expired Patent (37 CFR 1.378(c)) EFS-Web Petition to Accept Unintentionally Delayed Payment of Maintenance Fee in an Expired Patent (37 CFR 1.378(b)) (Private Sector) PTO/SB/66 Petition to Accept Unintentionally Delayed Payment of Maintenance Fee in an Expired Patent (37 CFR 1.378(c)) EFS-Web Petition to Review Refusal to Accept Payment of Maintenance Fee Prior to Expiration of Patent (37 CFR 1.377) (Private Sector) Petition to Review Refusal to Accept Payment of Maintenance Fee Prior to Expiration of Patent (37 CFR 1.377) (Individuals or Households)

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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	44,542	534,010	0	-436,600	-52,868	0
Annual Time Burden (Hours)	6,864	13,024	0	-2,426	-3,734	0
Annual Cost Burden (Dollars)	3,098,564	1,334,707,957	0	-1,332,344,500	735,107	0

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

Burden Increase Due to:

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

Burden Reduction Due to: Miscellaneous Actions

Short Statement: Changes due to Agency Discretion The maintenance fees and transmittal forms that were previously a part of this information collection, and mentioned in the 60-Day Federal Register Notice, have now been removed. These items are considered exempt from the PRA under 5 CFR 1320.3(h)(10). This action results in the following changes to the information collection: • 436,600 responses removed • 2,426 burden hours removed • $1,332,344,500 cost burden removed Change in Respondents and Hourly Burden due to Adjustment in Agency Estimate The total number of respondents has decreased by 52,868 due to estimated fluctuations in the number of responses/submissions in this information collection. This decrease in the number of respondents and responses results in a decrease of 3,734 hours in the annual time burden estimates. Changes in Annual (Non-hour) Costs due to Adjustment in Agency Estimate For this renewal, the USPTO estimates that the total annual (non-hour) costs will increase by $735,107 from the previous approval. This increase is due to estimated fluctuations in submissions for items that require a fee. Even though the overall number of respondents is declining, those filing the Petition to Accept Unintentionally Delayed Payment of Maintenance Fee in an Expired Patent (37 CFR 1.378(b)) is expected to increase; resulting in this increased cost burden estimate.

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Annual Cost to Federal Government: $142,444

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

Does this ICR request any personally identifiable information (see OMB Circular No. A-130 for an explanation of this term)? Please consult with your agency's privacy program when making this determination.     Yes

Does this ICR include a form that requires a Privacy Act Statement (see 5 U.S.C. §552a(e)(3))? Please consult with your agency's privacy program when making this determination.     Yes

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? No

Agency Contact: Parikha Mehta 571 272-3248

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Common Form ICR:  No

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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: 09/23/2021

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