DOCX Submission Requirements

OMB Control No:	ICR Reference No: 202309-0651-002
Status: Received in OIRA	Previous ICR Reference No:
Agency/Subagency: DOC/PTO	Agency Tracking No:
Title: DOCX Submission Requirements
Type of Information Collection: New collection (Request for a new OMB Control Number)	Common Form ICR:  No
Type of Review Request: Regular	Date Submitted to OIRA: 09/27/2023

	Requested	Previously Approved
Expiration Date	36 Months From Approved
Responses	411,817	0
Time Burden (Hours)	123,877	0
Cost Burden (Dollars)	49,588,160	0

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Abstract: As specified in §1.16(u), the fee is due for any application filed under 35 U.S.C. 111 for an original patent—except design, plant, or provisional applications—where the specification, claims, and/or abstract do not conform to the USPTO requirements for submission in the DOCX format. Therefore, the fee is due for nonprovisional utility applications filed under 35 U.S.C. 111, including continuing applications, that are not filed in the DOCX format. The items in this new information collection relate solely to the impacts of the §â€¯1.16(u) non-DOCX filing surcharge fee on the filing of nonprovisional utility applications under 35 U.S.C. 111, including continuing applications. In particular, this new information collection accounts for the §â€¯1.16(u) non-DOCX filing surcharge fee itself, as well as an additional 30 minutes of time to accommodate (i) the extra review that some respondents may undertake as they start to become more familiar with the DOCX format and (ii) submission of the back-up applicant-generated PDF that some respondents will opt to submit. The estimated volumes for the items in this new information collection are based on the estimates for the corresponding nonprovisional utility applications filed under 35 U.S.C. 111, including continuing applications, that are covered under an existing OMB clearance (0651-0032; Initial Patent Applications). Respondents for the items in the new information collection will either take an extra 30 minutes to file their applications in DOCX format or they will pay the non-DOCX surcharge, they will not do both.

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Authorizing Statute(s): PL: Pub.L. 112 - 119 1 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:
	88 FR 37039	06/06/2023
30-day Notice:	Federal Register Citation:	Citation Date:
	88 FR 66414	09/27/2023
Did the Agency receive public comments on this ICR? Yes

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Number of Information Collection (IC) in this ICR: 11

IC Title Form No. Form Name DOCX submission of Original New Utility Applications (Individuals or Households) DOCX submission of Original New Utility Applications (Private Sector) DOCX submission of Utility Continuation-in-Part Applications (Individuals or Households) DOCX submission of Utility Continuation-in-Part Applications (Private Sector) DOCX submission of Utility Continuation/Divisional Applications (Individuals or Households) DOCX submission of Utility Continuation/Divisional Applications (Private Sector) DOCX submission of Utility Continuation/Divisional of an International Application (Individuals or Households) DOCX submission of Utility Continuation/Divisional of an International Application (Private Sector) Non-DOCX Filing Surcharge Fee (micro entity) Non-DOCX Filing Surcharge Fee (small entity) Non-DOCX Filing Surcharge Fee (undiscounted entity)

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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	411,817	0	0	411,817	0	0
Annual Time Burden (Hours)	123,877	0	0	123,877	0	0
Annual Cost Burden (Dollars)	49,588,160	0	0	49,588,160	0	0

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

Burden Increase Due to: Changing Regulations

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

Burden Reduction Due to:

Short Statement: This is a new information collection to support the submission to the USPTO of applications in the DOCX format. The USPTO is adopting the DOCX format because it aligns with the USPTO’s plans to expand automation of the patent application process, which will increase efficiencies and reduce costs for applicants and the USPTO.

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Annual Cost to Federal Government: $0

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: Raul Tamayo 571 272-7728 [email protected]

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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: 09/27/2023

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