Matters Related to First Inventor to File

OMB Control No: 0651-0071	ICR Reference No: 202108-0651-004
Status: Received in OIRA	Previous ICR Reference No: 201811-0651-002
Agency/Subagency: DOC/PTO	Agency Tracking No:
Title: Matters Related to First Inventor to File
Type of Information Collection: Revision of a currently approved collection	Common Form ICR:  No
Type of Review Request: Regular	Date Submitted to OIRA: 01/20/2022

	Requested	Previously Approved
Expiration Date	36 Months From Approved	02/28/2022
Responses	144	23,681
Time Burden (Hours)	288	207,362
Cost Burden (Dollars)	8	82

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Abstract: The United States Patent System uses a ‘first to file’ system, as introduced by the Leahy-Smith America Invents Act (AIA) which was enacted into law on September 16, 2011. To determine the first inventor to file, information is needed in order to identify the inventorship and ownership, or obligation to assign ownership, of each claimed invention on its effective filing date. Section 3 of the AIA, inter alia, amended 35 U.S.C. 102 and 103 consistent with the objectives of the AIA, including the conversion of the United States patent system from a “first to invent” system to a “first inventor to file” system. The changes in section 3 of the AIA went into effect on March 16, 2013, but apply only to certain applications filed on or after March 16, 2013. This information collection covers information required by 37 CFR 1.55(k), 1.78(a)(6), and 1.78(d)(6) to assist the USPTO in determining whether an application is subject to 35 U.S.C. 102 and 103 as amended by Section 3 of the Leahy-Smith America Invents Act (AIA), or 35 U.S.C. 102 and 103, in effect on March 15, 2013.

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Authorizing Statute(s): PL: Pub.L. 112 - 29 125 Stat. 283 (2011) 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 54946	10/05/2021
30-day Notice:	Federal Register Citation:	Citation Date:
	87 FR 3089	01/20/2022
Did the Agency receive public comments on this ICR? No

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Number of Information Collection (IC) in this ICR: 6

IC Title Form No. Form Name Electronic Rule 1.130, 1.131, and 1.132 Affidavits or Declarations Rule 1.130, 1.131, and 1.132 Affidavits or Declarations Submissions Under 37 CFR 1.55(k) Submissions Under 37 CFR 1.55(k) (Individuals or Households) Submissions Under 37 CFR 1.55(k) (Private Sector) Submissions Under 37 CFR 1.78(a)(6) Submissions Under 37 CFR 1.78(a)(6) (Individuals or Households) Submissions Under 37 CFR 1.78(a)(6) (Private Sector) Submissions Under 37 CFR 1.78(d)(6) (Individuals or Households) Submissions Under 37 CFR 1.78(d)(6) (Private Sector)

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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	144	23,681	0	-20,179	-3,358	0
Annual Time Burden (Hours)	288	207,362	0	-200,358	-6,716	0
Annual Cost Burden (Dollars)	8	82	0	-61	-13	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 in Annual Responses, Time Burden, and Cost Burdens due to Agency Discretion USPTO removed two items from this information collection due to Paperwork Reduction Act exemptions. This removal results in a decrease of 20,179 responses, 200,358 burden hours, and 61 dollars. The USPTO finds that the ‘Identification of Inventorship under 37 CFR 1.110’, previously reported as item 4, is not reportable information per 5 CFR 1320.3(h)(6) and 5 CFR 1320.3(h)(9). Relevant information collected for establishment and correction of inventorship is reported to OMB within other items in collections 0651-0031 and 0651-0032. The USPTO also finds that the Rule 1.130, 1.131, and 1.132 Affidavits or Declarations, as they relate to AIA inventorship matters and as previously reported as item 5, are not reportable information per 5 CFR 1320.3(h)(1), (6), and (9). Accordingly, items previously listed as 4 and 5 have been removed from the information collection. Estimated Annual Responses and Hourly Burdens due to Adjustment in Agency Estimate Decreases in the number of responses (-3,358) and burden hours (-6,716) are due to the estimated normal fluctuation in the number of responses for the items remaining in this information collection. Change 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 decrease by $13 from the previous approval. This decrease is due to the respondents filing more electronic submissions and fewer mailed submissions.

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Annual Cost to Federal Government: $1,102

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.     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? 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: 01/20/2022

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