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pdfSUPPORTING STATEMENT
United States Patent and Trademark Office
Secrecy and License to Export
OMB CONTROL NUMBER 0651-0034
(September 2013)
A.
JUSTIFICATION
1.
Necessity of Information Collection
In the interest of national security, patent laws and rules place certain limitations on the
disclosure of information contained in patents and patent applications and on the filing
of applications for patents in foreign countries.
In particular, whenever the publication or disclosure of an invention by the publication of
an application or by the granting of a patent is, in the opinion of the head of an
interested government agency, determined to be detrimental to national security, the
Commissioner for Patents at the United States Patent and Trademark Office (USPTO)
must issue a secrecy order and withhold the publication of a patent application and the
grant of a patent for such period as the national interest requires. A patent will not be
issued on the application as long as the secrecy order is in force. If a secrecy order is
applied to an international application, the application will not be forwarded to the
International Bureau as long as the secrecy order is in effect.
Three types of secrecy orders, each of a different scope, can be issued. The first type,
Secrecy Order and Permit for Foreign Filing in Certain Countries, is intended to permit
the widest utilization of the technical data in the patent application while still controlling
any publication or disclosure that would result in an unlawful exportation. The second
type, the Secrecy Order and Permit for Disclosing Classified Information, is used to treat
classified technical data presented in a patent application in the same manner as any
other classified material. The third type of secrecy order is used where the other types
of orders do not apply, including orders issued by direction of agencies other than the
Department of Defense.
Under the provision of 35 U.S.C. § 181, a secrecy order remains in effect for a period of
one year from its date of issuance. A secrecy order may be renewed for additional
periods of not more than one year upon notice by a government agency that the
national interest continues to require it. The applicant is notified of such renewal.
When the USPTO places a secrecy order on a patent application, the rules authorize
the applicant to petition the USPTO for permits to allow disclosure, modification, or
rescission of the secrecy order, or to obtain a general or group permit. In each of these
circumstances, the petition is forwarded to the appropriate defense agency for decision.
Also, the Commissioner for Patents at the USPTO may rescind any order upon
notification by the heads of the departments and the chief officers of the agencies who
caused the order to be issued that the disclosure of the invention is no longer deemed
detrimental to the national security.
Unless expressly ordered otherwise, action on the application and prosecution by the
applicant will proceed during the time the application is under secrecy order to a specific
point as indicated under 37 CFR 5.3. Applications under secrecy order that come to a
final rejection must be appealed or otherwise prosecuted to avoid abandonment.
Appeals in such cases must be completed by the applicant, but unless specifically
indicated by the Commissioner of Patents at the USPTO, will not be set for hearing until
the secrecy order is removed.
In addition to the issuance of secrecy orders, the USPTO is required to grant foreign
filing licenses to applicants. The filing of a patent application is considered a request for
a foreign filing license. However, in some instances an applicant may need a license for
filing patent applications in foreign countries prior to a filing in the USPTO or sooner
than the anticipated licensing of a pending patent application.
To file a patent application in a foreign country, the applicant can petition the USPTO for
a foreign filing license either with or without a corresponding United States application.
In addition, the applicant can petition to change the scope of a license and, when a
patent application is filed through error in a foreign country without the appropriate filing
license, an applicant can petition the USPTO for a retroactive license.
2.
Needs and Uses
This collection includes the information needed by the USPTO to review and issue or
revoke the various types of petitions regarding secrecy orders and foreign filing
licenses. There are no forms associated with the petitions in this collection. Response
to this information collection is necessary to obtain a permit to disclose, modify or
rescind a secrecy order, to obtain general or group permits, to obtain foreign filing and
retroactive licenses, or to change the scope of a license.
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 1 lists the specific statutes and regulations authorizing the USPTO to collect this
information and outlines how this information is used by the public and the USPTO:
2
Table 1: Information Requirements and Needs and Uses of Information Collected
Item
#
1
Requirement
Petition for Rescission of
Secrecy Order
Statute
Rule
Form #
35 U.S.C. § 181188
37 CFR 5.1–
5.33
No Form
Needs and Uses
2
Petition to Disclose or
Modification of Secrecy
Order
35 U.S.C. § 181182
37 CFR 5.4
No Form
3
Petition for General and
Group Permits
35 U.S.C. § 181
37 CFR 5.5,
37 CFR
5.5(e)
No Form
4
5
6
7
Petitions for Foreign Filing
Licenses:
Petition for Expedited
Handling of License
(no corresponding
application)
Petition for Expedited
Handling of License
(corresponding U.S.
application)
Petition for Changing
Scope of License
Petition for Retroactive
License
35 U.S.C. §§
184-186
37 CFR
5.11–5.33
37 CFR 5.12,
5.13; 37 CFR
1.17(g)
No
Forms
37 CFR 5.12,
5.14; 37 CFR
1.17(g)
37 CFR 5.15;
37 CFR
1.17(g)
37 CFR 5.25;
37 CFR
1.17(g)
3
Used by the public to present
evidence to the USPTO that the
patent application no longer
requires a secrecy order.
Used by the USPTO to determine
whether an invention remains
subject to a secrecy order.
Used by the public to petition the
USPTO for a permit to disclose a
patent application currently under
a secrecy order.
Used by the public to petition the
USPTO to modify a secrecy order.
Used by the USPTO to query a
defense agency to determine
whether a permit can be issued to
allow disclosure of a patent
application currently under a
secrecy order.
Used by the USPTO to query a
defense agency to determine
whether a patent application
currently under secrecy order can
be modified.
Used by organizations or
individuals inside an organization
to petition the USPTO for a permit
allowing use of patent applications
under secrecy orders.
Used by the USPTO to query a
defense agency to determine
whether an organization or
individuals inside an organization
qualify for permission to handle
patent applications under secrecy
orders.
Used by the public to petition the
USPTO for various licenses to file
and/or export patent applications,
technical data, and other
information in a foreign country.
Used by the public to request a
change in the scope of a license.
Used by the public to appeal the
USPTO’s denial of a retroactive
license.
Used by the public to ensure that
the appropriate fees have been
submitted.
Used by the USPTO to examine
and issue or revoke, as
appropriate, various types of
foreign filing licenses.
Used by the USPTO to determine
whether an unlicensed filing
violated any export regulations.
Used by the USPTO to ensure that
the appropriate fees have been
submitted.
3.
Use of Information Technology
The USPTO currently accepts the electronic filing of most patent applications and
related documents through its Web-based patent application and document submission
solution, EFS-Web. The USPTO’s Legal Framework for EFS-Web, available at
www.uspto.gov, provides more information about the types of patent applications and
documents permitted to be filed via EFS-Web. With respect to the information
associated with this collection, the USPTO at this time only accepts through EFS-Web
petitions for foreign filing licenses for applications on file with the USPTO. The USPTO
is not currently collecting through EFS-Web petitions for foreign filing licenses where
there is not a U.S. patent application on file or any of the petitions under the secrecy
order program. However, a separate database is being used to collect petition
information related to expedited foreign filing license petitions, and the petition itself is
being scanned and retained in electronic form on Image File Wrapper (IFW).
Due to its extremely sensitive nature (national security interests) and low volume,
information associated with this collection pertaining to applications under a secrecy
order cannot be electronically collected in a feasible manner. In particular, information
associated with this collection pertaining to applications under a secrecy order cannot
be collected using the same electronic system that is used for the filing of papers
pertaining to applications not under a secrecy order. An entirely separate electronic
system would have to be designed and implemented, including separate, secure
servers. On balance, the cost factor of designing and putting into operation such a
system against the low volume of filings makes this alternative cost prohibitive and not a
feasible option.
New features and capabilities are being added to EFS-Web as it undergoes further
development, and customers will eventually be able to file all applications and related
documents electronically through EFS-Web. As the USPTO expands the use of
electronic filing, the USPTO will reevaluate whether it is feasible for the secrecy order
program petitions to be filed electronically as well. If the security issues are resolved
and the electronic collection of these items becomes feasible, the USPTO will submit
the associated electronic forms to OMB for review, as necessary.
4.
Efforts to Identify Duplication
This information is collected to issue permits to disclose, modify or rescind secrecy
orders, to grant general or group permits, to obtain foreign filing and retroactive
licenses, or to change the scope of a license. This information is not collected
elsewhere and does not result in a duplication of effort.
5.
Minimizing Burden to Small Entities
No significant economic impact is imposed on small entities or small businesses as a
result of this information collection. The same information is required of every applicant
and is not available from any other source.
4
Pursuant to section 10(b) of the Leahy-Smith America Invents Act (AIA), the USPTO
provides a 50% reduction in the fees for certain patent filings by small entity applicants,
such as independent inventors, small businesses, and nonprofit organizations who meet
the definition of a small entity provided at 37 CFR 1.27. Also pursuant to section 10(b)
of the AIA, the USPTO provides a 75% reduction in the fees set or adjusted under
section 10(a) of the Act for certain patent filings by applicants who meet the definition of
a micro entity provided at 35 U.S.C. § 123 and 37 CFR 1.29.
No significant burden is placed on small or micro entities, in that small entities must only
identify themselves as such in order to obtain these benefits, and micro entities must
only provide a certification of micro entity status. An assertion or certification of small or
micro entity status, respectively, only needs to be filed once in an application or patent
(although a fee may be paid in the micro entity amount only if the applicant or patentee
is still entitled to micro entity status on the date the fee is paid).
6.
Consequences of Less Frequent Collection
This information is collected only when the respondent petitions the USPTO for permits
to disclose, modify or rescind secrecy orders, to grant general or group permits, to
obtain foreign filing and retroactive licenses, and to change the scope of a license. It
could not be conducted less frequently. If the collection of information were not
collected, the USPTO could not comply with the requirements of 35 U.S.C. §§ 181-188
and 37 CFR 5.1–5.33.
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 23, 2013 (78 Fed.
Reg. 23916). The comment period ended on June 24, 2013. No public comments were
received.
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
facilities. Views expressed by these groups are considered both in developing
proposals for information collection requirements and when reviewing an existing
information collection.
9.
Payment or Gifts to Respondents
This information collection does not involve a payment or gift to any respondent.
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10.
Assurance of Confidentiality
Confidentiality is governed by statute (35 U.S.C. §§ 122 and 181) and regulation (37
CFR 1.11, 1.14 and 5.1-5.3). This collection contains confidential information that is
subject to the Privacy Act. Systems of Records Notices for Patent Application Secrecy
Order Files (Commerce/PAT-TM-8) were published in the Federal Register on March
29, 2013 (78 FR 19246) and for Petitioners for License to File for Foreign Patents
(Commerce/PAT-TM-13) on April 1, 2013 (78 FR 19463). Records are maintained for
referral to authorized government agencies under 35 U.S.C. § 184 for determination of
the requirement for a secrecy order, notification of the applicant or his duly appointed
representative of such secrecy order, to prevent disclosure of information that might be
detrimental to national security, and in accordance with agency rules.
Anyone wishing to view documents recorded under secrecy orders or view recorded
documents in which the Federal government has an interest must submit authorization
in writing before the USPTO will release the documents for inspection, according to 37
CFR 102 subpart B. Records are stored in paper in file folders in a locked vault and
maintained in areas accessible only to authorized personnel who are properly screened,
cleared, and trained. Documents under secrecy orders cannot be filed electronically
due to national security concerns.
Administrative controls are used to safeguard this information as appropriate. The
petitions are stored in paper copy and electronic storage media in a searchable
database. Records are maintained in areas accessible only to authorized personnel
who are properly screened, cleared and trained. Where information is retrievable by
computer, all safeguards appropriate to secure the system (hardware and software) are
utilized.
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 2 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 approximately 2,294 responses annually, with
approximately 25% (574) of these responses from small entities. None of the responses
for this collection will be submitted electronically.
These estimates are based on the Agency’s long-standing institutional knowledge of and
experience with the type of information collected by these items.
6
Burden Hour Calculation Factors
The USPTO estimates that it will take the public between 30 minutes (0.5 hours) to 4
hours to gather the necessary information, prepare the appropriate petition, and submit
the petition to the USPTO, depending on the complexity of the situation.
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 $371 per hour for respondent cost burden
calculations, which is the mean rate for attorneys in private firms as shown in the 2011
Report of the Economic Survey, published by the Committee on Economics of Legal
Practice of the American Intellectual Property Law Association (AIPLA).
Table 2: Burden Hour/Burden Cost to Respondents
Item
#
Item
Hours
(a)
Responses
(yr)
(b)
Burden
(hrs/yr)
(c)
(a) x (b)
Rate
($/hr)
(d)
Total Cost
($/hr)
(e)
(c) x (d)
1
Petition for Rescission of Secrecy Order
3.0
8
24
$371.00
$8,904.00
2
Petition to Disclose or Modification of
Secrecy Order
2.0
12
24
$371.00
$8,904.00
3
Petition for General and Group Permits
1.0
1
1
$371.00
$371.00
4
Petition for Expedited Handling of License
(no corresponding application)
0.5
1,900
950
$371.00
$352,450.00
Petition for Expedited Handling of License
(corresponding U.S. application)
0.5
300
150
$371.00
$55,650.00
6
Petition for Changing Scope of License
0.5
3
2
$371.00
$742.00
7
Petition for Retroactive License
4.0
70
280
$371.00
$103,880.00
2,294
1,431
5
TOTAL
13.
- - - - -
- - - -
$530,901.00
Total Annualized (Non-hour) Cost Burden
The total annual (non-hour) cost burden for this collection is calculated in Table 3 below.
Postage fees are included in this ICR; filing fees for the petitions are covered under
0651-0072. There are no filing fees for the secrecy orders. This collection has no
capital start-up, maintenance, or record keeping costs.
Postage
The USPTO estimates that 99% of the petitions in this collection are submitted by
facsimile or hand carried because of the quick turnaround required. For the 1% of the
public that chooses to submit the petitions to the USPTO by mail through the United
States Postal Service, the USPTO estimates that the average postage cost for a paper
7
submission will be $5.60 (rounded to $6) (USPS Priority Mail, flat rate envelope) and
that 23 submissions will be mailed to the USPTO per year.
Table 3: Annual (Non-hour) Postage Costs to Respondents
Item
#
Item
Estimated
Annual
Responses
Amount
Totals
1
Petition for Rescission of Secrecy Order
1
$5.60
$6.00
2
Petition to Disclose or Modification of Secrecy Order
1
$5.60
$6.00
3
Petition for General and Group Permits
0
$5.60
$0.00
4
Petition for Expedited Handling of License
(no corresponding application)
16
$5.60
$90.00
5
Petition for Expedited Handling of License
(corresponding U.S. application)
3
$5.60
$17.00
6
Petition for Changing Scope of License
1
$5.60
$6.00
7
Petition for Retroactive License
1
$5.60
$6.00
Total postage for mailed submissions
23
- - - - - - -
$131.00
Total Annual (Non-hour) Cost Burden
- - - - - - -
- - - - - - -
$131.00
Fees
There are fees associated with the license petitions in this collection (no fees are
associated with the secrecy order petitions) but they are not included in this information
collection request. Instead, the filing fees are covered under OMB control number
0651-0072 America Invents Act Section 10 Patent Fee Adjustments, which was
approved by OMB in January 2013. Filing fees are now being removed from the burden
calculations in this collection (0651-0034) to avoid double-counting.
14.
Annual Cost to the Federal Government
The USPTO estimates that it takes USPTO staff approximately 30 minutes (0.5 hours)
to 4 hours to process the information in this collection, depending on the type and
amount of information submitted. The secrecy order petitions in this collection are
processed by GS-7, step 5 employees at an estimated cost of $29.80 per hour (GS-7/5
hourly rate of $22.92 with 30% ($6.88) added for benefits and overhead). The license
petitions in this collection are processed by GS-13, step 2 employees at an estimated
cost of $57.30 per hour (GS-13/2 hourly rate of $44.08 with 30% ($13.08) added for
benefits and overhead).
Table 4 calculates the burden hours and costs to the Federal Government for
processing this information collection:
8
Table 4: Burden Hour/Cost to the Federal Government
Item
#
Item
Hours
(a)
1
Petition for Rescission of Secrecy Order
1.0
8
8
$29.80
$238.00
2
Petition to Disclose or Modification of
Secrecy Order
1.0
12
12
$29.80
$358.00
3
Petition for General and Group Permits
1.0
1
1
$29.80
$30.00
4
Petition for Expedited Handling of
License
(no corresponding application)
0.5
1,900
950
$57.30
$54,435.00
Petition for Expedited Handling of
License
(corresponding U.S. application)
0.5
300
150
$57.30
$8,595.00
6
Petition for Changing Scope of License
1.0
3
3
$57.30
$172.00
7
Petition for Retroactive License
4.0
70
280
$57.30
$16,044.00
2,294
1,404
- - - - -
$79,872.00
5
TOTAL
15.
Responses
(yr)
(b)
- - - - -
Burden
(hrs/yr)
(c)
(a) x (b)
Rate
($/hr)
(d)
Total Cost
($/hr)
(e)
(c) x (d)
Reason for Changes in Burden from the Current Inventory
The USPTO is submitting the following changes for this renewal:
Adjusting the estimated annual responses and burden hours.
Removing the fees associated with the information requirements in this collection
because these fees have been moved into information collection 0651-0072
America Invents Act Section 10 Patent Fee Adjustments, which was approved by
OMB in January 2013 in conjunction with the USPTO rulemaking “Setting and
Adjusting Patent Fees” (RIN 0651-AC54). The corresponding fees are now
being deleted from 0651-0034 to avoid double-counting those annual (non-hour)
costs in the USPTO’s inventory.
Adjusting the estimated number of mailed submissions and the estimated
postage rate.
This information collection is currently approved with a total of 1,794 responses, 1,538
burden hours, and $356,879 in annual (non-hour) costs. There have been no interim
approvals.
Changes in Responses and Burden Hours from the Current Inventory
The USPTO estimates total annual responses of 2,294 and total annual burden hours of
1,431, which is an increase of 500 responses and a decrease of 107 burden hours from
the currently approved burden for this collection.
9
These changes are due to administrative adjustments from updated annual response
estimates.
Table 5a: Changes in Responses and Burden Hours from the Current Inventory
Item
#
Item
Currently
approved
responses
Updated
responses
Change in
responses
(admin.)
Currently
approved
burden
hours
1
Petition for Rescission of Secrecy
Order
6
8
2
18
24
6
2
Petition to Disclose or
Modification of Secrecy Order
3
12
9
6
24
18
3
Petition for General and Group
Permits
1
1
0
1
1
0
4
Petition for Expedited Handling of
License
(no corresponding application)
1,347
1,900
553
674
950
276
5
Petition for Expedited Handling of
License
(corresponding U.S. application)
259
300
41
130
150
20
6
Petition for Changing Scope of
License
1
3
2
1
2
1
7
Petition for Retroactive License
177
70
(107)
708
280
(428)
1,794
2,294
500
1,538
1,431
(107)
Totals
Updated
burden
hours
Change in
burden
hours
(admin.)
Changes in Annual (Non-hour) Costs from the Current Inventory
The total annual (non-hour) cost burden for this renewal submission of $131 is a
decrease of $356,748 from the currently approved total of $356,879. This decrease is
due to both program changes and administrative adjustments.
Program Changes
Fees: The fees in this collection are being removed because they have been
moved into collection 0651-0072.
Administrative Adjustments
Postage: Increase due to a decrease in the estimated number of mailed
submissions offset by an adjustment in USPS postage method and rates (from
first class to priority mail, flat rate envelope) since the previous renewal.
10
Table 5b: Changes in Annual (Non-hour) Costs from the Current Inventory
Cost
Filing Fees
Postage
Totals
16.
Currently
approved annual
cost burden
Program
changes
Administrative
adjustments
Total change
in costs
Updated
annual cost
burden
$356,800.00
($356,800.00)
$0.00
($356,800.00)
$0.00
$79.00
$18.00
$34.00
$52.00
$131.00
$356,879.00
($356,782.00)
$34.00
($356,748.00)
$131.00
Project Schedule
There is no plan to publish this information for statistical use.
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
No exceptions to the certificate statement are included in this collection of information.
B.
COLLECTIONS OF INFORMATION EMPLOYING STATISTICAL METHODS
This collection of information does not employ statistical methods.
11
| File Type | application/pdf |
| File Title | SF-12 SUPPORTING STATEMENT |
| Author | Galaxy Scientific Corporation |
| File Modified | 2013-09-25 |
| File Created | 2013-09-25 |