Download:
pdf |
pdfSUPPORTING STATEMENT
United States Patent and Trademark Office
Matters Related to First Inventor to File
OMB CONTROL NUMBER 0651-00xx
June 28, 2012
A.
JUSTIFICATION
1.
Necessity of Information Collection
The Leahy-Smith America Invents Act was enacted into law on September 16, 2011.
See Pub. L. 112-29, 125 Stat. 283 (2011). Section 3 of the Leahy-Smith America
Invents Act, inter alia, amends the patent laws to: (1) convert the United States patent
system from a “first to invent” system to a “first inventor to file” system; (2) treat U.S.
patents and U.S. patent application publications as prior art as of their earliest effective
filing date, regardless of whether the earliest effective filing date is based upon an
application filed in the U.S. or in another country; (3) eliminate the requirement that a
prior public use or sale be “in this country” to be a prior art activity; and (4) treat
commonly owned or joint research agreement patents and patent application
publications as being by the same inventive entity for purposes of 35 U.S.C. § 102, as
well as 35 U.S.C. § 103. These changes in section 3 of the Leahy-Smith America
Invents Act are effective on March 16, 2013, but apply only to certain applications filed
on or after March 16, 2013.
The USPTO published a notice of proposed rulemaking titled “Changes to Implement
the First Inventor to File Provisions of the Leahy-Smith America Invents Act” (RIN 0651AC77) in the Federal Register. In the notice, the USPTO proposed changes to the rules
of practice in title 37, CFR, for consistency with, and to address the examination issues
raised by, the changes in section 3 of the Leahy-Smith America Invents Act.
In support of the proposed rulemaking, the USPTO is submitting this new information
collection, Matters Related to First Inventor to File. The information in this collection
can be submitted electronically through EFS-Web, the USPTO’s web-based electronic
filing system, as well as on paper. The USPTO is therefore accounting for both
electronic and paper submissions in this collection.
Table 1 provides the statutes and regulations authorizing the USPTO to collect the
information:
Table 1: Information Requirements for Matters Related to First Inventor to File
Requirement
Statute
Rule
Submissions Under 37 CFR 1.55(a)(4)
35 U.S.C. § 2(b)(2)
37 CFR 1.55(a)(4)
Submissions Under 37 CFR 1.78(a)(3)
35 U.S.C. § 2(b)(2)
37 CFR 1.78(a)(3)
Requirement
Statute
Rule
35 U.S.C. § 2(b)(2)
37 CFR 1.78(c)(2)
Identification of Inventorship and Ownership of the Subject Matter of
Individual Claims Under 37 CFR 1.110
35 U.S.C. §§ 2(b)(2),
102, and 103
37 CFR 1.110
Rule 1.130, 1.131, and 1.132 Affidavits or Declarations
35 U.S.C. §§ 2(b)(2),
102, and 103
37 CFR 1.130, 1.131, and
1.132
Submissions Under 37 CFR 1.78(c)(2)
2.
Needs and Uses
This information collection is necessary so that patent applicants and/or patentees may:
(1) provide a statement if a nonprovisional application filed on or after March 16, 2013,
claims the benefit of the filing date of a foreign, provisional, or nonprovisional application
filed prior to March 16, 2013, and also contains, or contained at any time, a claim to a
claimed invention that has an effective filing date on or after March 16, 2013: (2) provide
a statement if a nonprovisional application filed on or after March 16, 2013, claims the
benefit of the filing date of a foreign, provisional, or nonprovisional application filed prior
to March 16, 2013, does not contain a claim to a claimed invention that has an effective
filing date on or after March 16, 2013, but discloses subject matter not also disclosed in
the foreign, provisional, or nonprovisional application: (3) identify the inventor, and
ownership on the effective filing date, of each claimed invention in an application or
patent with more than one named inventor, when necessary for purposes of a USPTO
proceeding; and (4) show that a disclosure was by the inventor or joint inventor, or was
by a party who obtained the subject matter from the inventor or a joint inventor, or that
there was a prior public disclosure by the inventor or a joint inventor, or by a party who
obtained the subject matter from the inventor or a joint inventor.
The USPTO will use the statement that a nonprovisional application filed on or after
March 16, 2013, that claims the benefit of the filing date of a foreign, provisional, or
nonprovisional application filed prior to March 16, 2013, contains, or contained at any
time, a claim to a claimed invention that has an effective filing date on or after March 16,
2013, or that such application does not contain a claim to a claimed invention that has
an effective filing date on or after March 16, 2013, but discloses subject matter not also
disclosed in the foreign, provisional, or nonprovisional application (or lack of such a
statement) to readily determine whether the nonprovisional application is subject to the
changes to 35 U.S.C. §§ 102 and 103 in the AIA. The USPTO will use the identification
of the inventor, and ownership on the effective filing date, when it is necessary to
determine whether a U.S. patent or U.S. patent application publication resulting from
another nonprovisional application qualifies as prior art under 35 U.S.C. § 102(a)(2).
The USPTO will use information concerning whether a disclosure was by the inventor or
joint inventor, or was by a party who obtained the subject matter from the inventor or a
joint inventor, or that there was a prior public disclosure by the inventor or a joint
inventor, or by a party who obtained the subject matter from the inventor or a joint
inventor, to determine whether the disclosure qualifies as prior art under 35 U.S.C. §
102(a)(1) or (a)(2).
2
The Information Quality Guidelines from Section 515 of Public Law 106-554, Treasury
and General Government Appropriations Act for Fiscal Year 2001, apply to this
information collection and this information collection and its supporting statement
comply with all applicable information quality guidelines, i.e., OMB and specific
operating unit guidelines.
Table 2 outlines how this collection of information is used by the public and the USPTO:
Table 2: Needs and Uses for Matters Related to First Inventor to File
Form and Function
Form #
Needs and Uses
Submissions Under 37 CFR 1.55(a)(4)
No Form
Used by patent applicants to provide a statement if a
nonprovisional application filed on or after March 16, 2013,
claims the benefit of the filing date of a foreign application filed
prior to March 16, 2013, and also contains, or contained at any
time, a claim to a claimed invention that as an effective filing
date on or after March 16, 2013.
Used by patent applicants to provide a statement if a
nonprovisional application filed on or after March 16, 2013,
claims the benefit of the filing date of a foreign application filed
prior to March 16, 2013, does not contain a claim to a claimed
invention that has an effective filing date on or after March 16,
2013, but discloses subject matter not also disclosed in the
foreign application.
Used by the USPTO to readily determine whether the
nonprovisional application is subject to the changes to 35 U.S.C.
§§ 102 and 103 in the Leahy-Smith America Invents Act.
Submissions Under 37 CFR 1.78(a)(3)
No Form
Used by patent applicants to provide a statement if a
nonprovisional application filed on or after March 16, 2013,
claims the benefit of the filing date of a provisional application
filed prior to March 16, 2013, and also contains, or contained at
any time, a claim to a claimed invention that has an effective
filing date on or after March 16, 2013.
Used by patent applicants to provide a statement if a
nonprovisional application filed on or after March 16, 2013,
claims the benefit of the filing date of a provisional application
filed prior to March 16, 2013, does not contain a claim to a
claimed invention that has an effective filing date on or after
March 16, 2013, but discloses subject matter not also disclosed
in the provisional application.
Used by the USPTO to readily determine whether the
nonprovisional application is subject to the changes to 35 U.S.C.
§§ 102 and 103 in the Leahy-Smith America Invents Act.
Submissions Under 37 CFR 1.78(c)(2)
No Form
Used by patent applicants to provide a statement if a
nonprovisional application filed on or after March 16, 2013,
claims the benefit of the filing date of a nonprovisional
application filed prior to March 16, 2013, and also contains, or
contained at any time, a claim to a claimed invention that has an
effective filing date on or after March 16, 2013.
Used by patent applicants to provide a statement if a
nonprovisional application filed on or after March 16, 2013,
claims the benefit of the filing date of a nonprovisional
application filed prior to March 16, 2013, does not contain a
claim to a claimed invention that has an effective filing date on or
after March 16, 2013, but discloses subject matter not also
disclosed in the nonprovisional application filed prior to March
16, 2013.
Used by the USPTO to readily determine whether the
nonprovisional application filed on or after March 16, 2013, is
subject to the changes to 35 U.S.C. §§ 102 and 103 in the
Leahy-Smith America Invents Act.
3
Form and Function
Form #
Needs and Uses
Identification of Inventorship and
Ownership of the Subject Matter of
Individual Claims Under 37 CFR 1.110
No Form
Used by patent applicants and patent owners to identify the
inventor, and ownership on the effective filing date, of each
claimed invention in an application or patent with more than one
named inventor, when necessary for purposes of a USPTO
proceeding.
Used by the USPTO when it is necessary to determine whether
a U.S. patent or U.S. patent application publication resulting
from another nonprovisional application qualifies as prior art
under 35 U.S.C. § 102(a)(2)
Rule 1.130, 1.131, and 1.132 Affidavits
or Declarations
No Form
Used by patent applicants and patent owners to show that a
disclosure was by the inventor or joint inventor, or was by a party
who obtained the subject matter from the inventor or a joint
inventor, or that there was a prior public disclosure by the
inventor or a joint inventor, or by a party who obtained the
subject matter from the inventor or a joint inventor.
Used by patent applicants and patent owners to submit evidence
by way of an oath or declaration to traverse a rejection or
objection on a basis not otherwise provided for, when any claim
of an application or a patent under reexamination is rejected or
objected to.
Used by the USPTO to determine whether the disclosure
qualifies as prior art under 35 U.S.C. § 102(a)(1) or (a)(2).
Used by the USPTO to determine whether to maintain a
rejection or objection of a claim of an application or a patent
under reexamination.
3.
Use of Information Technology
The items in this collection may be submitted online using EFS-Web, the USPTO’s
Web-based electronic filing system.
EFS-Web allows customers to file patent applications and associated documents
electronically through their standard Web browser without downloading special
software, changing their document preparation tools, or altering their workflow
processes. Typically, the customer will prepare the documents as standard PDF files
and then upload them to the USPTO servers using the secure EFS-Web interface.
EFS-Web offers many benefits to filers, including immediate notification that a
submission has been received by the USPTO, automated processing of requests, and
avoidance of postage or other paper delivery costs.
4.
Efforts to Identify Duplication
The information collected is required in order to readily determine whether:
nonprovisional applications are subject to the changes to 35 U.S.C. §§ 102 and 103 in
the AIA; a U.S. patent or U.S. patent application publication resulting from another
nonprovisional application qualifies as prior art under 35 U.S.C. § 102(a)(2); a
disclosure qualifies as prior art under 35 U.S.C. § 102(a)(1) or (a)(2); and a rejection or
objection of a claim of an application or a patent under reexamination should be
maintained. This information is not collected elsewhere and does not result in a
duplication of effort.
4
5.
Minimizing the Burden to Small Entities
This collection of information will not impose a significant economic impact on a
substantial number of small entities. The same information will be required from every
member of the public in the applicable situation and will not be available from any other
source. In addition, there are no filing fees associated with this information collection.
6.
Consequences of Less Frequent Collection
The information in this collection is collected only when: certain nonprovisional
applications filed on or after March 16, 2013, claim the benefit of the filing date of a
foreign, provisional, or nonprovisional application filed prior to March 16, 2013
(submissions under 37 CFR 1.55(a)(4), 1.78(a)(3), and 1.78(c)(2)); necessary for
purposes of a USPTO proceeding (identification of inventorship and ownership of the
subject matter of individual claims under 37 CFR 1.110); needed to determine whether
the disclosure qualifies as prior art under 35 U.S.C. § 102(a)(1) or (a)(2) (1.130, 1.131,
and 1.132 affidavits or declarations); and needed to submit evidence by way of an oath
or declaration to traverse a rejection or objection on a basis not otherwise provided for,
when any claim of an application or a patent under reexamination is rejected or objected
to (1.130, 1.131, and 1.132 affidavits or declarations). Less frequent collection of
submissions under 37 CFR 1.55(a)(4), 1.78(a)(3), and 1.78(c)(2) would cause
examination costs to significantly increase. Less frequent collection of identifications of
inventorship and ownership of the subject matter of individual claims under 37 CFR
1.110 and 37 CFR 1.130, 1.131, and 1.132 affidavits or declarations would impact the
USPTO’s duty under 35 U.S.C. §§ 131 and 151 to issue a patent where “it appears that
the applicant is entitled to a patent under the law.” Thus, the information in this
collection could not be collected less frequently.
7.
Special Circumstances in the Conduct of Information Collection
There are no special circumstances associated with this collection of information.
8.
Consultation Outside the Agency
The USPTO published a notice of proposed rulemaking titled “Changes to Implement
the First Inventor to File Provisions of the Leahy-Smith America Invents Act” (RIN 0651AC77) in the Federal Register and is seeking comments from the public on the notice of
proposed rulemaking and will consider any comments received in development of the
final rule.
The USPTO has consulted with the public about the AIA in general through the agency
microsite at http://www.uspto.gov/aia_implementation/index.jsp.
The USPTO has long-standing relationships with groups from whom patent application
data is collected, such as the American Intellectual Property Law Association (AIPLA),
as well as patent bar associations, independent inventor groups, and users of our public
5
facilities. Views expressed by these groups are considered in developing proposals for
information collection requirements.
9.
Payment or Gifts to Respondents
This information collection does not involve a payment or gift to any respondent.
10.
Assurance of Confidentiality
Confidentiality of patent applications is governed by statute (35 U.S.C. § 122) and
regulation (37 CFR 1.11 and 1.14). Upon publication of an application or issuance of a
patent, the entire patent application file is made available to the public (subject to
provisions for providing only a redacted copy of the file contents). Therefore, the
information collected by this collection will necessarily be available to the public when it
is filed in a published application or issued patent, or, if it is filed in an application that
has yet to publish or issue as a patent, when the application publishes or issues as a
patent.
11.
Justification for Sensitive Questions
None of the required information is considered to be sensitive.
12.
Estimate of Hour and Cost Burden to Respondents
Table 3a calculates the burden hours and costs of this information collection to the
public, based on the following factors:
Respondent Calculation Factors
The USPTO estimates that it will receive a total of approximately 189,150 responses per
year for this collection, of which approximately 47,000 will be filed by small entities. The
USPTO estimates that approximately 175,910 of the responses for this collection will be
submitted electronically via EFS-Web.
These estimates are based on the Agency’s long-standing institutional knowledge of and
experience with the type of information collected by these items.
Burden Hour Calculation Factors
The USPTO estimates that the responses in this collection will take the public from 2 to
10 hours to complete. This includes the time to gather the necessary information, create
the document, and submit the completed request to the USPTO. Specifically, the
USPTO estimates that: (1) preparing an affidavit or declaration under 37 CFR 1.130,
1.131, or 1.132 will require, on average, 10 hours; (2) identifying under 37 CFR
1.55(a)(4), 1.78(a)(3), or 1.78(c)(2) whether there is any claim or subject matter not
disclosed in the prior foreign, provisional, or nonprovisional application will require, on
average, 2 hours; and (3) identifying under 37 CFR 1.110 inventorship and ownership of
the subject matter of claims will require, on average, 2 hours. The USPTO calculates
that, on balance, it takes the same amount of time to gather the necessary information,
6
create the document, and submit it to the USPTO, whether the applicant submits the
information in paper form or electronically.
These estimates are based on the Agency’s long-standing institutional knowledge of and
experience with the type of information collected and the length of time necessary to
complete responses containing similar or like information.
Cost Burden Calculation Factors
The USPTO uses a professional rate of $371 per hour for respondent cost burden
calculations, which is the mean rate for attorneys in private firms as shown in the 2011
Report of the Economic Survey, published by the Committee on Economics of Legal
Practice of the American Intellectual Property Law Association (AIPLA). Based on the
Agency’s long-standing institutional knowledge of and experience with the type of
information collected, the Agency believes $371 is an accurate estimate of the cost per
hour to collect this information.
Table 3a: Burden Hour/Burden Cost to Respondents for Matters Related to First Inventor to File
Item
Hours
(a)
Rate
($/hr)
(d)
Total Cost
($/hr)
(c) x (d)
(e)
Electronic Submissions Under 37 CFR 1.55(a)(4)
2.0
65,100
130,200
$371.00
$48,304,200.00
Submissions Under 37 CFR 1.55(a)(4)
2.0
4,900
9,800
$371.00
$3,635,800.00
Electronic Submissions Under 37 CFR 1.78(a)(3)
2.0
53,010
106,020
$371.00
$39,333,420.00
Submissions Under 37 CFR 1.78(a)(3)
2.0
3,990
7,980
$371.00
$2,960,580.00
Electronic Submissions Under 37 CFR 1.78(c)(2)
2.0
11,160
22,320
$371.00
$8,280,720.00
Submissions Under 37 CFR 1.78(c)(2)
2.0
840
1,680
$371.00
$623,280.00
Electronic Identification of Inventorship and
Ownership of the Subject Matter of Individual
Claims under 37 CFR 1.110
2.0
140
280
$371.00
$103,880.00
Identification of Inventorship and Ownership of the
Subject Matter of Individual Claims under 37 CFR
1.110
2.0
10
20
$371.00
$7,420.00
Electronic Rule 1.130, 1.131, and 1.132 Affidavits
or Declarations
10.0
46,500
465,000
$371.00
$172,515,000.00
Rule 1.130, 1.131, and 1.132 Affidavits or
Declarations
10.0
3,500
35,000
$371.00
$12,985,000.00
189,150
778,300
- - - - -
$288,749,300.00
Total
Responses
(yr)
(b)
- - - - -
Burden
(hrs/yr)
(a) x (b)
(c)
Table 3b shows the impact of the rulemaking and non-rulemaking changes to the
burden estimates for this information collection:
Table 3b: Burden Changes – Rulemaking/Non-Rulemaking Impact
Current Inventory
Responses
0
Rulemaking Impact
Increase of 189,150
7
Non-rule Impact
0
New Proposed
Burden Estimate
189,150
Burden Hours
0
Increase of 778,300
0
778,300
Respondent Cost Burden
0
Increase of $288,749,300
0
$288,749,300
13.
Total Annualized Cost Burden
There are postage costs associated with the items in this collection. Specifically,
customers may incur postage costs when submitting the information in this collection to
the USPTO by mail through the United States Postal Service. The USPTO estimates
that these submissions will be sent by priority mail and that they will weigh no more than
one pound. The USPTO estimates that the average priority postage cost for a onepound submission will be $4.95 and that approximately 13,240 will be mailed to the
USPTO.
The USPTO estimates that the total annualized (non-hour) cost burden for this
collection is due to postage costs of $65,539 per year.
Table 4a shows the postage costs for this collection.
Table 4a: Postage Costs for Respondents for Matters Related to First Inventor to File
Item
Estimated Annual
Mailed Responses
Estimated Postage
Amount
Estimated Annual
Postage Costs
Submissions Under 37 CFR 1.55(a)(4)
4,900
$4.95
$24,255.00
Submissions Under 37 CFR 1.78(a)(3)
3,990
$4.95
$19,751.00
Submissions Under 37 CFR 1.78(c)(2)
840
$4.95
$4,158.00
10
$4.95
$50.00
3,500
$4.95
$17,325.00
13,240
---------------------------
$65,539.00
Identification of Inventorship and Ownership of the Subject
Matter of Individual Claims Under 37 CFR 1.110
Rule 1.130, 1.131, and 1.132 Affidavits or Declarations
Totals
Table 4b shows the impact of the rulemaking and non-rulemaking changes to the
annual (non-hour) cost burden estimates for this information collection:
Table 4b: Annual (Non-Hour) Cost Burden Changes – Rulemaking/Non-Rulemaking Impact
Current
Inventory
Rulemaking Impact
Non-rule Impact
New Proposed
Burden Estimate
Fees
0
Increase of $0
0
$0
Postage
0
Increase of $65,539
0
$65,539
Total Annual (Non-hour) Cost
Burden
0
Increase of $65,539
0
$65,539
14.
Annual Cost to the Federal Government
The USPTO estimates that it takes a GS-7, step 1 employee approximately 15 minutes
(0.25 hours) on average to process the submissions under 37 CFR 1.55(a)(4),
8
1.78(a)(3), and 1.78(c)(2), and the identification of inventorship and ownership of the
subject matter of individual claims under 37 CFR 1.110. The USPTO estimates that it
will take approximately 30 minutes (.50 hours) on average to process the rule 1.130,
1.131, and 1.132 affidavits or declarations.
The hourly rate for a GS-7, step 1, employee is currently $20.22 according to the U.S.
Office of Personnel Management’s (OPM’s) wage chart, including locality pay for the
Washington, DC area. When 30% is added to account for a fully loaded hourly rate
(benefits and overhead), the rate per hour for a GS-7, step 1, is $26.29 ($20.22 +
$6.07).
Estimates are based upon agency long-standing institutional knowledge of and
experience with processing the type of information collected and the length of time
necessary to process similar or like information.
Table 5 calculates the burden hours and costs to the Federal Government for
processing the items in this information collection:
Table 6:
Burden Hour/Burden Cost to the Federal Government for Post Patent Public
Submissions
Item
Hours
(a)
Responses
(yr)
(b)
Burden
(hrs/yr)
(a) x (b)
(c)
Rate
($/hr)
(d)
Total Cost
($/hr)
(c) x (d)
(e)
Electronic Submissions Under 37 CFR 1.55(a)(4)
0.25
65,100
16,275
$26.29
$427,870.00
Submissions Under 37 CFR 1.55(a)(4)
0.25
4,900
1,225
$26.29
$32,205.00
Electronic Submissions Under 37 CFR 1.78(a)(3)
0.25
53,010
13,253
$26.29
$348,421.00
Submissions Under 37 CFR 1.78(a)(3)
0.25
3,990
998
$26.29
$26,237.00
Electronic Submissions Under 37 CFR 1.78(c)(2)
0.25
11,160
2,790
$26.29
$73,349.00
Submissions Under 37 CFR 1.78(c)(2)
0.25
840
210
$26.29
$5,521.00
Electronic Identification of Inventorship and
Ownership of the Subject Matter of Individual
Claims under 37 CFR 1.110
0.25
140
35
$26.29
$920.00
Identification of Inventorship and Ownership of the
Subject Matter of Individual Claims under 37 CFR
1.110
0.25
10
3
$26.29
$79.00
Electronic Rule 1.130, 1.131, and 1.132 Affidavits
or Declarations
0.50
46,500
23,250
$26.29
$611,243.00
Rule 1.130, Rule 1.131, and 1.132 Affidavits or
Declarations
0.50
3,500
1,750
$26.29
$46,008.00
189,150
59,789
- - - - -
$1,571,853.00
Total
- - - - -
9
15.
Reason for Change in Burden
The USPTO is submitting this new information collection request in support of a notice
of proposed rulemaking titled “Changes to Implement the First Inventor to File
Provisions of the Leahy-Smith America Invents Act” (RIN 0651-AC77). In the notice,
the USPTO proposed changes to the rules of practice in title 37, CFR, for consistency
with, and to address the examination issues raised by, the changes in section 3 of the
Leahy-Smith America Invents Act.
The USPTO estimates that it will receive 189,150 responses for this collection annually,
with an associated burden of 778,300 hours per year and estimated respondent costs of
$288,749,300. Therefore, the USPTO estimates that 778,300 burden hours per
year will be added to the USPTO’s current information collection inventory as a
program change.
There is annual (non-hour) cost burden in the form of postage costs associated with this
information collection, which amounts to $65,539 per year. Therefore, the USPTO
estimates that $65,539 in non-hour costs per year will be added to the USPTO’s
current information collection inventory as a program change.
16.
Project Schedule
There is no plan to publish this information for statistical use. No special publication of
the items discussed in this justification statement is planned.
17.
Display of Expiration Date of OMB Approval
There are no forms in this information collection. Therefore, the display of the OMB
Control Number and the expiration date is not applicable.
18.
Exception to the Certificate Statement
This collection of information does not include any exceptions to the certificate
statement.
B.
COLLECTIONS OF INFORMATION EMPLOYING STATISTICAL METHODS
This collection of information does not employ statistical methods.
10
| File Type | application/pdf |
| File Title | SF-12 SUPPORTING STATEMENT |
| Author | Galaxy Scientific Corporation |
| File Modified | 2012-07-23 |
| File Created | 2012-07-23 |