Supporting Statement
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SF-83 SUPPORTING STATEMENT
PAPERWORK REDUCTION ACT
OMB CONTROL NUMBER 0651-0016
RULES FOR PATENT MAINTENANCE FEES

A.   JUSTIFICATION

1.   Necessity of Information Collection

Maintenance fees are required under Title 35 of the U.S. Code to maintain a patent, other than a design or plant patent, in force. Payment of maintenance fees is required at 3-1/2, 7-1/2 and 11-1/2 years from the date the patent is granted. The maintenance fee provisions appear in 35 U.S.C. 41 (b) and (c) (Attachment A). A patent number and application number of the patent for which a maintenance fee is paid are required in order to insure proper crediting of fee payments.

If the maintenance fee is not paid at 3-1/2, 7-1/2 and 11-1/2 years from the date the patent is granted, or within a six-month grace period thereafter, the patent will expire 4, 8 or 12 years after the date of the grant, respectively. After a patent has expired, the patentee may no longer enforce the patent. It is necessary that the Patent and Trademark Office (PTO) maintain correct records of payment in order to provide the public with accurate information as to which patents have expired and which patents remain in force.

If a patent has expired as a result of nonpayment of a maintenance fee, the patentee may petition the PTO to accept a delayed payment of the maintenance fee under 37 CFR 1.378 (Attachment B). Specifically, the Commissioner may accept the payment of a maintenance fee for a patent after the expiration of the patent if, upon petition, the delay in the payment of the maintenance fee is shown to the satisfaction of the Commissioner to have been unavoidable (37 CFR 1.378(b)) or unintentional (CFR 1.378(c)), and if the surcharge required by 37 CFR 1.20(i) (1) or (2) (Attachment C) is paid as a condition of accepting payment of the maintenance fee. The use of forms PTO/SB/65 and PTO/SB/66 provides the petitioner with a checklist ensuring that the required elements will be included in petitions under 37 CFR 1.378, such as the maintenance fee, the surcharge, the small entity status, and a showing or statement that the delay in payment of the maintenance fee was unavoidable or unintentional. The forms ask for all of the identifying information, such as the patent number, patent date, the application number, filing date, along with a certificate of mailing.

Since errors often occur in the presentation and recording of patent numbers, the PTO deems it necessary to require both the patent number and the application number to be given at the time of payment of the maintenance fee. If an error is made in one of the numbers, such as by transposing two digits, the error in the data can be found before actual input into computer storage. Both the patent number and the application number are unique and, if they correspond to similar data already in the computer system of the PTO, the accuracy of the submitted identification can be relied upon. The requirement is found in 37 CFR 1.366(c) and (d) (Attachment D).

Table 1 shows the statutes and regulations requiring the PTO to collect the information outlined above.

Table 1: Information Requirment for Rules for Patent Maintenance Fees

Requirement Statute Rule
Maintenance Fee Transmittal Form
PTO/SB/45
35 U.S.C. 41 37 CFR 1.20(e)-(h), 1.363, 1.366(c) and (d)
"Fee Address" Indication Form
PTO/SB/47
35 U.S.C. 41 37 CFR 1.363
Petition to Accept Unavoidably Delayed Payment of Maintenance Fee in an Expired Patent
PTO/SB/65
35 U.S.C. 41 37 CFR 1.20(e)-(g) and (i)(1), 1.366(c) and (d), 1.378(b) and (d)
Petition to Accept Unintentionally Delayed Payment of Maintenance Fee in an Expired Patent
PTO/SB/66
35 U.S.C. 41 37 CFR 1.20(e)-(g) and (i)(2), 1.366(c) and (d), 1.378(c) and (d)

2.   Needs and Uses

The identification of the application number and patent number, the maintenance fee amount and the surcharge amount on forms PTO/SB/45 and PTO/SB/47 will be used by the PTO to record the payment of maintenance fees on patents in order to keep the patents in force. The information will be used to prepare a receipt for the patentee and to determine whether or not a maintenance fee has been paid in response to any inquiry from the public. The optional information of the payment year and the small entity status are necessary to determine the amount of the maintenance fee due.

The use of forms PTO/SB/65 and PTO/SB/66 readily and conveniently indicates to the PTO that the required elements for the filing of petitions under 37 CFR 1.378(b) or (c) have or have not been submitted. For example, the above forms include the appropriate statements and check boxes (list) for indicating that the required items have been attached to the petition form, such as the maintenance fee, small entity status, reason for unintentional or unavoidable delay, and surcharge. The top of the form indicates a space for the patent number and issue date and the application number and corresponding filing date.

Forms PTO/SB/65 and PTO/SB/66 are also used by the PTO to reinstate a patent that has expired due to unavoidably delayed or unintentionally delayed payment of a maintenance fee. This identifying information assists the PTO in matching the fee with the appropriate patent.

Table 2 outlines how these collections of information are used by the public and by the PTO:

Table 2: Needs and Uses

Form and Function Form # Needs and Uses
Maintenance Fee Transmittal Form
(Attachment F)
PTO/SB/45
  • Used by the patentee to pay the maintenance fee amount and the surcharge amount in order to keep the patent(s) in force.
  • Used by the PTO to record the payment of the maintenance fee(s) on patent(s) in order to keep the patent(s) in force.
  • Used by the PTO to determine whether or not a maintenance fee has been paid in response to any inquiry from the public.
"Fee Address" Indication Form
(Attachment G)
PTO/SB/47
  • Used by the patentee as the identification customer number and the patent number to indicate the "Fee Address."
  • Used by the PTO to recognize and verify the identification number and patent number of patent(s) in force.
  • Used by the PTO to determine whether or not a maintenance fee has been paid in response to any inquiry from the public.
Petition to Accept Unavoidably Delayed Payment of Maintenance Fee in an Expired Patent
(Attachment H)
PTO/SB/65
  • Used by the petitioner to request that the unavoidably delayed payment of the maintenance fee be accepted and the patent reinstated.
  • Used by the petitioner to verify all of the identifying information, such as the patent number and patent date and the application number and filing date.
  • Used by the PTO to indicate whether or not the required elements for the filing of petitions have or have not been submitted.
  • Used by the PTO to reinstate a patent that has expired due to unavoidably delayed payment of a maintenance fee.
Petition to Accept Unintentiaonally Delayed Payment of Maintenance Fee in an Expired Patent
(Attachment I)
PTO/SB/66
  • Used by the petitioner to request that the unintentionally delayed payment of the maintenance fee be accepted and the patent reinstated.
  • Used by the petitioner to verify all of the identifying information, such as the patent number and patent date and the application number and filing date.
  • Used by the PTO to indicate whether or not the required elements for the filing of petitions have or have not been submitted.
  • Used by the PTO to reinstate a patent that has expired due to unintentionally delayed payment of a maintenance fee.

3.   Use of Information Technology

In order to provide the public with accurate information as to which patents have expired, it is necessary that the PTO maintain correct records of payment. The PTO maintains these records electronically.

The patentee will have the option of paying the patent maintenance fees electronically through the use of the Revenue Accounting and Management (RAM) System Web pages. Initial input into RAM for payment of maintenance fees will be made by entering the patent number and serial number. If the selection "Retrieve Payments" is made, then the remainder of the window must be completed. The selection "Pay Using Credit Card" will then submit the payment of the balance owed to the Secure Payment Server window. The payment window will also display completed information showing the opening, surcharge and closing dates for payments on a particular patent. The patentee will also have the option to download the form in PDF format to complete and manually submit by mail.

As electronic filing is further developed, additional reporting capability enhancements associated with maintenance fee payments will be made available to the patentee. Examples of this include fee collection for Patent Cooperation Treaty (PCT) applications, assignment applications via credit card payments, and fee collection via Automatic Clearinghouse (ACH). These enhancements are tentatively scheduled to begin being phased into RAM in September of 2000.

4.   Efforts to Identify Duplication

Since payment of the required maintenance fees is done only before the PTO, no duplication of effort or collection of data is seen.

5.   Minimizing the Burden to Small Entities

The information collection does involve payment of maintenance fees by patentees who are small businesses and small entities. For forms PTO/SB/45 and PTO/SB/47, the data required, which consists of the patent number and application number, is considered minimal and cannot be further reduced without loss of the ability to check the correctness of the entered data. The additional information required by petition forms PTO/SB/65 and PTO/SB/66, such as the reason statement, provide the PTO with documented evidence regarding the unintentional or unavoidable delay in payment of the maintenance fees.

6.   Consequences of Less Frequent Collection

If the collection of information were not made, the PTO would not be able to: (1) identify the patent tor which a maintenance fee is being paid (PTO/SB/45); (2) the address to which the patentee desires that correspondence concerning maintenance fees be submitted (PTO/SB/47); or (3) ascertain whether a patentee is entitled to reinstatement of a patent under 37 CFR 1.378(b) (PTO/SB/65) or 37 CFR 1.378(c) (PTO/SB/66).

7.   Special Circumstances in the Conduct of Information Collection

There are no special circumstances associated with this collection of information

8.   Consultations Outside the Agency

The 60-Day Notice was published in the Federal Register on April 14, 1999 (Volume 64, Number 71) (Attachment I). No public comments were received. The PTO meets regularly with groups from whom patent application data is collected, such as the American Intellectual Property Law Association. There have been no comments or concerns expressed by the public or organizations concerning the time required to provide the required information under this program.

9.   Payment or Gifts to Respondents

This information collection does not involve a payment or gift to any respondent. Response to this information collection is necessary in order to maintain a patent in force, except for design or plant patents, and to insure proper crediting of maintenance fee payments.

10.   Assurance of Confidentiality

There is no confidentiality consideration associated with this collection of information.

11.   Justification of Sensitive Questions

None of the required information is considered to be of a sensitive nature.

12.   Estimate of Hour and Cost Burden to Respondents

Table 3 calculates the burden hours and costs of this information collection to the public, based on the following factors:

  • Respondent Calculation Factors

Based on statistical tracking by the PTO, the agency estimates to receive the following number of responses to these forms per year:

    • 130,059 total maintenance fee transmittal forms
      (11,700 of this total estimated to be submitted electronically)
    • 195,089 "fee address" indication forms
    • 179 unavoidably delayed payment fee petitions
    • 774 unintentionally delayed payment fee petitions

  • Burden Hour Calculation Factors

Based on estimates and knowledge of the forms, the agency estimates that the burden hours required by the public to gather, prepare and submit Maintenance Fee Transmittal Form PTO/SB/45 and "Fee Address" Indication Form PTO/SB/47 to be five minutes each. In the electronic version, it is estimated that it will take 10 seconds to enter the Patent Number and Serial Number to retrieve payment information and 10 seconds to select the fee codes to be paid if the patentee wishes to pay for the maintenance fee, for a total of 20 seconds. Petition to Accept Unavoidably Delayed Payment of Maintenance Fee in an Expired Patent Form PTO/SB/65 and Petition to Accept Unintentionally Delayed Payment of Maintenance Fee in an Expired Patent Form PTO/SB/66 are estimated to take one hour each to complete.

  • Cost Burden Calculation Factors

The 1995 Committee on Economics of Legal Practice of the American Intellectual Property Law Association published a report which summarized the results of a survey which included data on professional billing rates. The professional hourly rate used in this submission ($175/hour) is the median rate for associate attorneys in private firms, as published in that report. The $30/hour rate is an average for paraprofessional and clerical salary rates.

Table 3: Burden Hours/Burden Costs to Respondents

Item/Form No. Hours

(a)
Responses
(yr)
(b)
Burden
(hrs/yr)
(c)
(a x b)
Rate
($/hr)
(d)
Total Cost
($/yr)
(e)
(c x d)
Maintenance Fee Transmittal Form 0.08 118,359 9,469 $30.00 $284,070
Electronic Maintenance Fee Form 0.006 11,700 70 $30.00 $2,100
"Fee Address" Indication Form 0.08 195,809 15,607 $30.00 $468,210
Petition to Accept Unavoidably Delayed Payment of Maintenance Fee in an Expired Patent 1.0 179 179 $175.00 $31,325
Petition to Accept Unintentionally Delayed Payment of Maintenance Fee in an Expired Patent 1.0 774 774 $175.00 $135,450
Totals ------- 326,101 26,099 ------- $921,155

We estimate that the electronic form of payment will comprise approximately 3.6% of the total submissions for maintenance fees.

13.   Total Annualized Cost Burden

There are no capital start up or maintenance costs associated with completing and submitting these forms.

14.   Annual Cost to the Federal Government

Table 4 provides calculated hours and costs to the Federal Government.

Table 4: Burden Hours/Burden Costs to the Federal Government

Item.Form No. Hours

(a)
Responses
(yr)
(b)
Burden
(hrs/yr)
(c)
(a x b)
Rate
($/hr)
(d)
Total Cost
($/yr)
(e)
(c x d)
Maintenance Fee Transmittal Form 0.08 118,359 9,469 $10.64 $100,750
Electronic Maintenance Fee Form 0.08 11,700 936 $10.64 $9,959
"Fee Address" Indication Form 0.08 195,089 15,665 $10.64 $166,058
Petition to Accept Unavoidably Delayed Payment of Maintenance Fee in an Expired Patent 0.5 179 90 $13.18 $1,186
Petition to Accept Unintentionally Delayed Payment of Maintenance Fee in an Expired Patent 0.5 774 387 $13.18 $5,101
Totals ------- 326,821 26,547 ------- $283,054

The PTO estimates that it takes a GS-5, step 1, an average of five minutes to process the maintenance fee form, the electronic maintenance fee form and the "fee address" form. The hourly rate for a GS-5, step 1, is currently $10.64 per hour. The PTO estimates that it takes a GS- 7, step 1, an average of 30 minutes to process the petition to accept a delayed maintenance fee payment (either unavoidable or unintentional). The rate for a GS-7, step 1, is currently $13.18 per hour.

15.   Reason for Changes in Annual Burden

A total of 3,459 burden hours have been added to this information collection since this package was approved in 1996. The increase is due in part to administrative adjustment changes and a program change. The administrative adjustment increases are due to estimated increases in the number of submissions, from 273,800 submissions in 1996 to the current 326,101 responses, for an increase of 52,301 response submissions. This causes a burden increase adjustment of 3,389. The program change takes into account an estimated 11,700 patent maintenance fee responses filed electronically, or 3.6%, which are calculated at 20 seconds per response. These 70 burden hours are added to the 3,389 burden increase figure, which brings the total burden increase for this submission to 3,459. The following factors figure into this change in annual burden:

  • Adjustments in the existing collection are due in part to the increase in the number of submissions per year to this collection of information. Therefore, the PTO believes that this information collection will take into account an additional 52,301 responses due to this increase in responses.

  • A portion of the change in burden hours is due to a program change whereby the patentee will have the option of paying the patent maintenance fees electronically through the use of the Revenue Accounting and Management (RAM) System Web pages. This program change accounts for an estimated 11,700 responses, or 3.6%, being submitted electronically. In the electronic version, it is calculated that it will take a total of 20 seconds to fill out form PTO/SB/45 as opposed to the five minutes required to fill out the form manually. The reduction in time it takes to complete an electronic submission accounts for 70 burden hours. If these 11,700 responses were calculated at the manual rate of 0.08 or five minutes, there would be an estimated 866 additional burden hours (936 minus 70) added to this collection. This decrease is offset by the increase in total submissions.

  • Form PTO/SB/46 Request for Payor Number has been eliminated from this information collection and replaced with a more comprehensive "customer number" practice. In the previous collection, there were no submissions of form PTO/SB/46, and thus no annual burden to report. This resulted in form PTO/SB/46 being eliminated in favor of PTO/SB/125. The hours formerly associated with PTO/SB/46 are now associated with form PTO/SB/125, which is already taken into account in information collection package 0651-0035. Therefore, the elimination of form PTO/SB/46 from this submission did not affect the burden hours for this collection of information.

16.   Project Schedule

No special publication of patent numbers in which maintenance fees have been paid is planned. However, the patent numbers of those patents which have expired are published as they expire in the weekly Official Gazette of the United States Patent and Trademark Office and annually in a consolidated listing.

17.   Display of Expiration Date of OMB Approval

The forms in this information collection will display the OMB Control Number and the expiration date.

18.   Exceptions to the Certificate Statement

This collection of information does not include any exceptions to the certificate statement.

B.    COLLECTION OF INFORMATION EMPLOYING STATISTICAL METHODS

This collection of information does not employ statistical methods.

LIST OF ATTACHMENTS
  1. 35 U.S.C. 41, and Public Law 105-358, which recently amended 35 U.S.C. 41
  2. 37 CFR 1.378
  3. 37 CFR 1.20
  4. 37 CFR 1.366
  5. PTO/SB/45 Maintenance Fee Transmittal Form
  6. PTO/SB/47 "Fee Address" Indication Form
  7. PTO/SB/65 Petition to Accept Unavoidably Delayed Payment of Maintenance Fee in an Expired Patent
  8. PTO/SB/66 Petition to Accept Unintentionally Delayed Payment of Maintenance Fee in an Expired Patent
  9. 60-Day Notice published in Federal Register on April 14, 1999 (Volume 64, Number 7)
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