0651-0062 Supporting Statement 2024 final

SUPPORTING STATEMENT

United States Patent and Trademark Office

Third-Party Submissions and Protests

OMB CONTROL NUMBER 0651-0062

2024

A. JUSTIFICATION

1. Explain the circumstances that make the collection of information necessary. Identify any legal or administrative requirements that necessitate the collection. Attach a copy of the appropriate section of each statute and regulation mandating or authorizing the collection of information.

The United States Patent and Trademark Office (USPTO) is required by 35 U.S.C. 131 et seq. to examine an application for patent and, when appropriate, issue a patent. The provisions of 35 U.S.C. 122(c), 122(e), 131, and 151, as well as 37 CFR 1.290 and 1.291, limit the ability of a third-party to have information entered and considered in, or to protest, a patent application pending before the USPTO.

37 CFR 1.290 provides a mechanism for third parties to submit to the USPTO for consideration and inclusion in the record of a patent application, any patents, published patent applications, or other printed publications of potential relevance to the examination of the application.

A third-party submission under 37 CFR 1.290 may be made in any nonprovisional utility, design, and plant application, including any continuing application. A third-party submission under 37 CFR 1.290 must include a concise description of the asserted relevance of each document submitted, and must be submitted within a certain statutorily specified time period.

37 CFR 1.291 permits a member of the public to file a protest against a pending application. Protests pursuant to 37 CFR 1.291 are supported by a separate statutory provision from third-party submissions under 37 CFR 1.290. As a result, there are several differences between protests and third-party submissions, as explained in the table below.

Table 1: Comparison of Third-Party Submissions and Protests

Comparison	Third-party Submission	Protest
Statute/Regulation	35 U.S.C. 122(e), 37 CFR 1.290.	35 U.S.C. 122(c), 37 CFR 1.291.
Content	Printed publications.	Printed publications and any facts or information adverse to patentability.
Remarks	Concise description of relevance (limited to a concise description of each document’s relevance).	Concise explanation of the relevance (allows for arguments against patentability).
Timing	The earlier of— (A) the date of a notice of allowance; or (B) the later of— (i) 6 months after the date of Pre-Grant Publication, or (ii) the date of the first rejection of any claim during the examination of the application for patent.	(1) Prior to the date of Pre-Grant Publication or the date of a notice of allowance, whichever occurs first, or (2) accompanied by written consent of the applicant and prior to the date of a notice of allowance.

For example, 37 CFR 1.291 permits the submission of information that is not permitted in a third-party submission under 37 CFR 1.290. Specifically, 37 CFR 1.291 provides for the submission of information other than publications, including any facts or information adverse to patentability. Unlike the concise explanation of the relevance required for a preissuance submission under 37 CFR 1.290, which is limited to a description of a document’s relevance, the concise explanation for a protest under 37 CFR 1.291 allows for arguments against patentability. Additionally, the specified time period for submitting a protest differs from the time period for submitting third-party submissions and is impacted by whether the protest is accompanied by the written consent of the applicant.

Table 2 provides the specific statutes and regulations authorizing the USPTO to collect the information discussed above:

Table 2: Information Requirements

Item No.	Requirement	Statute	Regulation
1	Third-Party Submissions in Nonissued Applications	35 U.S.C. §§ 122(e), 131, and 151	37 CFR 1.290
2	Protests by the Public Against Pending Applications	35 U.S.C. §§ 122(c), 131, and 151	37 CFR 1.291

2. Indicate how, by whom, and for what purpose the information is to be used. Except for a new collection, indicate the actual use the agency has made of the information received from the current collection.

The USPTO uses this information collection during the patent examination process to assist in evaluating patent applications.

The information in this collection can be submitted in paper format or electronically through the Patent Center.

The information collected, maintained, and used in this collection is based on OMB and USPTO guidelines. This includes the basic information quality standards established in the Paperwork Reduction Act (44 U.S.C. Chapter 35), in OMB Circular A-130, and in the USPTO Information Quality Guidelines.

Table 3 outlines how this collection of information is used by the public and the USPTO:

Table 3: Needs and Uses

Item No.	Form/ Function	Form No.	Needs and Uses
1	Third-Party Submissions in Nonissued Applications	PTO/SB/429	Used by third-parties to submit patents, published patent applications, or other printed publications of potential relevance to the examination of an application, together with a concise description of the asserted relevance of each document submitted, in accordance with 37 CFR 1.290. Used by the USPTO to enter third-party submitted patents, published patent applications, or other printed publications in the application file, in accordance with 37 CFR 1.290.
2	Protests by the Public Against Pending Applications	No Form Associated	Used by the public to call attention to any facts or information within the protestor’s knowledge that, in the protestor’s opinion, would make the grant of a patent on an application pending in the USPTO improper. Used by the USPTO to better avoid the issuance of an invalid patent.

3. Describe whether, and to what extent, the collection of information involves the use of automated, electronic, mechanical, or other technological collection techniques or other forms of information technology, e.g., permitting electronic submission of responses, and the basis for the decision for adopting this means of collection. Also describe any consideration of using information technology to reduce burden.

The USPTO has a dedicated interface that permits third-party preissuance submissions to be filed via Patent Center. Third-party preissuance submissions are not automatically entered into the electronic image file wrapper (IFW) for an application. Instead, preissuance submissions are reviewed to determine compliance with 35 U.S.C. 122(e) and 37 CFR 1.290 before being entered into the IFW. Third-parties filing preissuance submissions electronically via Patent Center receive immediate, electronic acknowledgement of the USPTO’s receipt of the submission, instead of waiting for the USPTO to mail a return postcard.

Because third-party preissuance submissions may be filed electronically, the USPTO protects applicants via established procedures that determine whether a third-party preissuance submission is in compliance with the requirements of 35 U.S.C. 122(e) and 37 CFR 1.290 before entering the submission into the IFW of an application or making the submission available to an examiner for consideration. The USPTO always strives to complete such determinations promptly following receipt of the submissions so that compliant preissuance submissions are quickly entered into the IFW and made available to the examiner for consideration. Non-compliant third-party preissuance submissions are not entered into the IFW of an application, nor are they considered; they are discarded. In addition, no refund of the required fees is provided in the event that a preissuance submission is determined to be non-compliant. If an electronic mail message address is provided with a third-party preissuance submission, the USPTO strives to notify the third-party submitter of such non-compliance; however, the statutory time period for making a preissuance submission is not tolled by the initial non-compliant submission.

Alternatively, third-party preissuance submissions may be paper-filed using form PTO/SB/429. The safeguards noted above with respect to preissuance submissions that are filed via the dedicated Patents Center interface are also in place for paper-filed submissions.

Protests made by the public against applications submitted under 37 CFR 1.291 must be paper-filed.

4. Describe efforts to identify duplication. Show specifically why any similar information already available cannot be used or modified for use for the purposes described in Item 2 above.

The information collected is required to process (1) third-party submissions in nonissued applications, and (2) protests by the public against pending applications. The information is not collected elsewhere and does not result in a duplication of effort.

5. If the collection of information impacts small businesses or other small entities, describe any methods used to minimize burden.

This collection of information does not impose a significant economic impact on small entities or small businesses. The information required by this information collection provides the USPTO with the necessary materials for (1) entering prior art documents obtained from a third-party in the application file, and (2) bringing information to the attention of the USPTO and voiding the issuance of an invalid patent. The same information is required from every member of the public and is not available from any other source.

6. Describe the consequence to federal program or policy activities if the collection is not conducted or is conducted less frequently, as well as any technical or legal obstacles to reducing burden.

The information is collected only when the public submits (1) a third-party submission and/or (2) a 37 CFR 1.291 protest. If this information were not collected, the USPTO would not be able to balance the mandate of 35 U.S.C. § 122(c) and (e) and the USPTO’s authority and responsibility under 35 U.S.C. §§ 131 and 151 to issue a patent only if it appears that the applicant is entitled to a patent under the law. This information could not be collected less frequently.

7. Explain any special circumstances that would cause an information collection to be conducted in a manner:

 requiring respondents to report information to the agency more often than quarterly;

 requiring respondents to prepare a written response to a collection of information in fewer than 30 days after receipt of it;

 requiring respondents to submit more than an original and two copies of any document;

 requiring respondents to retain records, other than health, medical, government contract, grant-in-aid, or tax records, for more than three years;

 in connection with a statistical survey, that is not designed to produce valid and reliable results that can be generalized to the universe of study;

 requiring the use of a statistical data classification that has not been reviewed and approved by OMB;

 that includes a pledge of confidentiality that is not supported by authority established in statute or regulation, that is not supported by disclosure and data security policies that are consistent with the pledge, or which unnecessarily impedes sharing of data with other agencies for compatible confidential use; or

 requiring respondents to submit proprietary trade secrets, or other confidential information unless the agency can demonstrate that it has instituted procedures to protect the information's confidentiality to the extent permitted by law.

There are no special circumstances associated with this collection of information.

8. If applicable, provide a copy and identify the date and page number of publication in the Federal Register of the agency's notice, required by 5 CFR 1320.8(d), soliciting comments on the information collection prior to submission to OMB. Summarize public comments received in response to that notice and describe actions taken by the agency in response to these comments. Specifically address comments received on cost and hour burden. Describe efforts to consult with persons outside the agency to obtain their views on the availability of data, frequency of collection, the clarity of instructions and recordkeeping, disclosure, or reporting format (if any), and on the data elements to be recorded, disclosed, or reported. Consultation with representatives of those from whom information is to be obtained or those who must compile records should occur at least once every 3 years - even if the collection of information activity is the same as in prior periods. There may be circumstances that may preclude consultation in a specific situation. These circumstances should be explained.

The 60-Day Notice was published in the Federal Register on July 8, 2024 (89 FR 55924.¹ The comment period ended on September 6, 2024. No comments were received.

9. Explain any decision to provide any payment or gift to respondents, other than remuneration of contractors or grantees.

This information collection does not involve a payment or gift to any respondent.

10. Describe any assurance of confidentiality provided to respondents and the basis for the assurance in statute, regulation, or agency policy. If the collection requires a system of records notice (SORN) or privacy impact assessment (PIA), those should be cited and described here.

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 content. The disclosure of the invention in the application is the quid pro quo for the property right conferred by the patent grant and the very means by which the patent statute right conferred by the patent grant, and the very means by which the patent statute achieves its constitutional objective to “promote the progress of science and useful arts.” The prosecution history contained in the application file is critical for determining the scope of the property right conferred by a property grant.

The Privacy Act of 1974 (P.L. 93-579) requires that individuals submitting these items to USPTO be given certain information in connection with that submission. The USPTO collects this information under authority of 37 CFR 1.290 and 1.291. The purpose of the system is to carry out the duties of the USPTO to grant and issue patents.

Categories of individuals covered by the system include applicants for patent, including inventors, legal representatives, and other persons authorized by law to make applications for patent. The information in this system of records is used to manage all applicant records including name, citizenship, residence, post office address, and other information pertaining to the applicant's activities in connection with the invention for which a patent is sought.

The information is protected from disclosure to third-parties in accordance with the Privacy Act. However, routine uses of this information may include disclosure to the following: to law enforcement and investigation in the event that the system of records indicates a violation or potential violation of law; to a Federal, state, local, or international agency, in response to its request; to an agency, organization, or individual for the purpose of performing audit or oversight operations as authorized by law; to non-federal personnel under contract to the agency; to a court for adjudication and litigation; to the Department of Justice for Freedom of Information Act (FOIA) assistance; to members of congress working on behalf of an individual; to the Office of Personnel Management (OPM) for personnel research purposes; to National Archives and Records Administration for inspection of records; and to OMB for legislative coordination and clearance. Failure to provide any part of the requested information may result in an inability to process submissions.

This collection contains information which is subject to the Privacy Act. This information is collected on petitions filed for patent maintenance. Privacy Act Statements are included on all of these forms. The following SORN provides privacy disclosures and information about USPTO’s handling of personally identifiable information (PII) that is part of this collection: PAT/TM-7 Patent Application Files; published March 29, 2013 (78 FRN 19243).²

This SORN identifies the categories of individuals covered by the system containing applicants for patent, including inventors, legal representatives for deceased or incapacitated inventors, and other persons authorized by law to make applications for patent. Categories of records in the system comprises the following: Oath or declaration of applicant including name, citizenship, residence, post office address and other information pertaining to the applicant's activities in connection with the invention for which a patent is sought. Statements containing various kinds of information with respect to inventors who are deceased or incapacitated, or who are unavailable or unwilling to make application for patent.

11. Provide additional justification for any questions of a sensitive nature, such as sexual behavior and attitudes, religious beliefs, and other matters that are commonly considered private. This justification should include the reasons why the agency considers the questions necessary, the specific uses to be made of the information, the explanation to be given to persons from whom the information is requested, and any steps to be taken to obtain their consent.

None of the required information in this information collection is considered to be sensitive.

12. Provide estimates of the hour burden of the collection of information. The statement should:

• Indicate the number of respondents, frequency of response, annual hour burden, and an explanation of how the burden was estimated. Unless directed to do so, agencies should not conduct special surveys to obtain information on which to base hour burden estimates. Consultation with a sample (fewer than 10) of potential respondents is desirable. If the hour burden on respondents is expected to vary widely because of differences in activity, size, or complexity, show the range of estimated hour burden, and explain the reasons for the variance. Generally, estimates should not include burden hours for customary and usual business practices.

• If this request for approval covers more than one form, provide separate hour burden estimates for each form and aggregate the hour burdens.

• Provide estimates of annualized cost to respondents for the hour burdens for collections of information, identifying and using appropriate wage rate categories. The cost of contracting out or paying outside parties for information collection activities should not be included here. Instead, this cost should be included under ‘Annual Cost to Federal Government’.

• Provide an estimate for the total annual cost burden to respondents or record keepers resulting from the collection of information.

Table 4 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 1,033 responses per year from 1,033 respondents for this information collection, with approximately 25% of these responses submitted by small entities.

The USPTO estimates that approximately 99% of the annual responses for this collection will be submitted electronically.

• Burden Hour Calculation Factors

The USPTO estimates that it takes the public approximately 10 hours, depending on the complexity of the situation and item, to gather the necessary information, prepare the appropriate document(s), and submit the information to the USPTO. Using these burden factors, USPTO estimates that the total respondent hourly burden for this information collection is 10,330 hours per year.

• Cost Burden Calculation Factors

The USPTO uses a professional rate of $447 per hour for respondent cost burden calculations, which is the median rate for intellectual property attorneys in private firms as shown in the 2023 Report of the Economic Survey published by the American Intellectual Property Law Association (AIPLA).

Using these hourly rates, the USPTO estimates that the total respondent cost burden for this information collection is $4,617,510 per year.

Table 4: Total Burden Hours and Hourly Costs

Item No.	Item	Estimated Annual Respondents (a)	Responses per Respondent (b)	Estimated Annual Responses (a) x (b) = (c)	Estimated Time for Response (hours) (d)	Estimated Burden (hour/year) (c) x (d) = (e)	Rate3 ($/hour) (f)	Estimated Annual Respondent Cost Burden (e) x (f) = (g)
1	Third-Party Submissions in Non-issued Applications	1,017	1	1,017	10	10,170	$447	$4,545,990
2	Protest by the Public Against Pending Applications	16	1	16	10	160	$447	$71,520
	Totals	1,033	- - -	1,033	- - -	10,330	- - -	$4,617,510

13. Provide an estimate for the total annual cost burden to respondents or record keepers resulting from the collection of information. (Do not include the cost of any hour burden already reflected on the burden worksheet).

• The cost estimate should be split into two components: (a) a total capital and start-up cost component (annualized over its expected useful life) and (b) a total operation and maintenance and purchase of services component. The estimates should take into account costs associated with generating, maintaining, and disclosing or providing the information. Include descriptions of methods used to estimate major cost factors including system and technology acquisition, expected useful life of capital equipment, the discount rate(s), and the time period over which costs will be incurred. Capital and start-up costs include, among other items, preparations for collecting information such as purchasing computers and software; monitoring, sampling, drilling and testing equipment; and record storage facilities.

• If cost estimates are expected to vary widely, agencies should present ranges of cost burdens and explain the reasons for the variance. The cost of purchasing or contracting out information collections services should be a part of this cost burden estimate. In developing cost burden estimates, agencies may consult with a sample of respondents (fewer than 10), utilize the 60-day pre-OMB submission public comment process and use existing economic or regulatory impact analysis associated with the rulemaking containing the information collection, as appropriate.

This collection has non-hourly cost burdens in both fees paid by the public and associated postage costs for mailing items to USPTO.

The total non-hour respondent cost burden for this collection is estimated to be $153,686 per year, which includes $153,584 in fees and $102 in postage.

Filing Fees

The filing fees associated with this information collection are listed in the table below.

Table 5: Filing Fees

Item No.	Fee Code(s)	Item	Estimated Annual Responses (a)	Filing fee ($) (b)	Total non-hour cost burden (yr) (a) x (b) = (c)
1	1818	Third-Party Submissions in Non-Issued Applications (undiscounted)	742	$180	$133,560
1	2818	Third-Party Submissions in Non-Issued Applications (small and micro entities)	275	$72	$19,800
2	1830	Protests by the Public Against Pending Applications Under 37 CFR 1.291 – second or subsequent protest by the same real party in interest (undiscounted)	1	$140	$140
2	2830	Protests by the Public Against Pending Applications Under 37 CFR 1.291 – second or subsequent protest by the same real party in interest (small entity)	1	$56	$56
2	3830	Protests by the Public Against Pending Applications Under 37 CFR 1.291 – second or subsequent protest by the same real party in interest (micro entity)	1	$28	$28
		Totals	1,020	- - -	$153,584

Postage Costs

The USPTO expects that at most 1% of the responses in this collection will be submitted by mail. The USPTO estimates that the average postage cost for a mailed submission, using a Priority Mail legal flat rate envelope, will be $10.15. The USPTO estimates approximately 10 submissions per year may be mailed to the USPTO, for an estimated total postage cost of $102 per year.

14. Provide estimates of annualized costs to the federal government. Also, provide a description of the method used to estimate cost, which should include quantification of hours, operational expenses (such as equipment, overhead, printing, and support staff), and any other expense that would not have been incurred without this collection of information. Agencies may also aggregate cost estimates from Items 12, 13, and 14 in a single table.

The USPTO employs GS-7 employees to process submissions for this information collection.

The USPTO estimates that the cost of a GS-7, step 1 employee is $34.84 per hour (GS hourly rate of $26.80 with 30% ($8.04) added for benefits and overhead).

The USPTO estimates that it takes an employee 30 minutes (0.50 hours) to process the protests under 37 CFR 1.291 and the third-party submissions.

Table 6 calculates the burden hours and costs to the federal government for processing this information collection:

Table 6: Burden Hour/Cost to the Federal Government

Item No.	Item	Estimated Annual Responses (a)	Estimated Burden Hours (b)	Estimated Hourly Burden (a) x (b) = (c)	Rate4 ($/hr) (d)	Total Federal Government Cost (c) x (d) = (e)
1	Third-Party Submissions in Non-issued Applications	1,017	0.50 (30 minutes)	509	$34.84	$17,734
2	Protest by the Public Against Pending Applications	16	0.50 (30 minutes)	8	$34.84	$279
	Totals	1,033	- - -	517	- - -	$18,013

15. Explain the reasons for any program changes or adjustments reported on the burden worksheet.

Table 7: ICR Summary of Burden

	Requested	Program Change Due to New Statute	Program Change Due to Agency Discretion	Change Due to Adjustment in Agency Estimate	Change Due to Potential Violation of the PRA	Previously Approved
Annual Number of Responses	1,033	0	0	153	0	880
Annual Time Burden (Hr)	10,330	0	0	1,530	0	8,800
Annual Cost Burden ($)	153,686	0	0	75,053	0	78,633

Changes in Responses and Hourly Burden due to Adjustment in Agency Estimate

The total number of responses has increased by 153 due to estimated fluctuations in the number of respondents/submissions in this information collection. This increase in the number of respondents and responses results in an increase of 1,530 hours in the annual time burden estimates.

Changes 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 increase by $75,053 from the previous approval. This increase is due to estimated fluctuations in submissions for items that require a fee.

15. For collections of information whose results will be published, outline plans for tabulation and publication. Address any complex analytical techniques that will be used. Provide the time schedule for the entire project, including beginning and ending dates of the collection of information, completion of report, publication dates, and other actions.

The USPTO does not plan to publish this information for statistical use. However, patent and trademark assignment records are available to the public at the USPTO Public Search Facilities and on the USPTO website.

15. If seeking approval to not display the expiration date for OMB approval of the information collection, explain the reasons that display would be inappropriate.

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

15. Explain each exception to the topics of the certification statement identified in “Certification for Paperwork Reduction Act Submissions.”

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.

1 https://www.govinfo.gov/content/pkg/FR-2024-07-08/pdf/2024-14920.pdf.

2 https://www.govinfo.gov/content/pkg/FR-2013-03-29/pdf/2013-07341.pdf.

3 2023 Report of the Economic Survey, published by the Committee on Economics of Legal Practice of the American Intellectual Property Law Association (AIPLA); pg. F–41. The USPTO uses the average billing rate for intellectual property work in all firms which is $447 per hour (https://www.aipla.org/home/news-publications/economic-survey).

4 https://www.opm.gov/policy-data-oversight/pay-leave/salaries-wages/salary-tables/pdf/2024/DCB_h.pdf.

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