SUPPORTING STATEMENT
United States Patent and Trademark Office
Recording Assignments
OMB CONTROL NUMBER 0651-0027
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.
This collection of information is required by 35 U.S.C. 261 and 262 for patents and 15 U.S.C. 1057 and 1060 for trademarks. These statutes authorize the United States Patent and Trademark Office (USPTO) to record patent and trademark assignment documents, including transfers of properties (i.e., patents and trademarks), liens, licenses, assignments of interest, security interests, mergers, and explanations of transactions or other documents that record the transfer of ownership of a particular patent or trademark property from one party to another. Assignments are recorded for patent applications, patents, and trademark registrations.
The USPTO administers these statutes through 37 CFR 2.146, 2.171, and 37 CFR Part 3. These regulations permit the public, corporations, other federal agencies, and government-owned or government-controlled corporations to submit patent and trademark assignment documents and other documents related to title transfers to the USPTO to be recorded. In accordance with 37 CFR 3.54, the recording of an assignment document by the USPTO is an administrative action and not a determination of the validity of the document or of the effect that the document has on the title to an application, patent, or trademark.
Once the assignment documents are recorded, they are available for public inspection. The only exceptions are those documents that are sealed under secrecy orders according to 37 CFR 3.58, or related to unpublished patent applications maintained in confidence under 35 U.S.C. 122 and 37 CFR 1.14. The public uses these records to conduct ownership and chain-of-title searches. The public may view these records either at the USPTO Public Search Facility or at the National Archives and Records Administration, depending on the date they were recorded. The public may also search patent and trademark assignment information online through the USPTO website.
This information collection covers the recordation of patent and trademark assignments. In order to record an assignment, the respondent must submit an assignment document along with the appropriate cover sheet. The USPTO provides two forms for this purpose, the Recordation Form Cover Sheet – Trademarks Only (PTO-1594), and the Recordation Form Cover Sheet – Patents Only (PTO-1595), which capture all of the necessary data for accurately recording various assignments. Customers may submit assignments electronically by using Assignment Center, which is available on the USPTO website1. This system allows customers to fill out the required cover sheet information online using web-based forms and then attach the assignment documents to be submitted for recordation. The USPTO also provides paper forms that may be used to record an assignment. These forms may be downloaded in PDF format from the USPTO website.2
Table 1 provides the specific statutes and regulations authorizing the USPTO to collect the information discussed above.
Table 1: Information Requirements
Item No. |
Requirement |
Statute |
Regulation |
1 |
Patent Assignments |
35 U.S.C. 261 and 262 |
37 CFR 3.11, 3.21, 3.24, 3.26, 3.28, 3.31, 3.34, and 3.41 |
2 |
Trademark Assignments |
15 U.S.C. 1057 and 1060 |
37 CFR 3.11, 3.16, 3.25, 3.26, 3.28, 3.31, 3.34, and 3.41; 37 CFR 2.146 and 2.171 |
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 public uses this information collection to submit patent and trademark assignment documents recorded by the USPTO. Except for those documents sealed under secrecy orders or related to unpublished patent applications, patent and trademark assignment records may be inspected by the public after they are recorded.
The information collected, maintained and used in this information 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 OMB information quality guidelines.
Table 2 outlines how this collection of information is used by the public and the USPTO:
Table 2: Needs and Uses
Item No. |
Form/Function |
Form No. |
Needs and Uses |
1 |
Patent Assignments
|
PTO-1595 |
|
2 |
Trademark Assignments
|
PTO-1594
|
|
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 information collection. Also describe any consideration of using information technology to reduce burden.
The forms associated with this information collection, the Recordation Form Cover Sheet – Trademarks Only (PTO-1594), and the Recordation Form Cover Sheet – Patents Only (PTO-1595), may be downloaded from the USPTO website as PDF files. These PDFs can be completed electronically and then printed for mailing or faxing to the USPTO. Once received the cover sheets and associated assignment documents are scanned directly into the assignment document workflow system. Fax submission streamlines the processing of paper assignment documents by enabling the USPTO to skip the paper scanning stage and provide the customer with the resulting Notice of Recordation by return fax.
The USPTO also offers an electronic filing option (Assignment Center) for both patent and trademark assignments via the USPTO website. Assignment Center allows customers to enter the required assignment data, attach the supporting documentation in electronic format, and submit the assignment recordation request online. Payment of filing fees can be made by credit card, USPTO deposit account, or electronic fund transfer (EFT). After the payment transaction is completed, an electronic confirmation receipt is displayed on the screen and emailed to the customer.
After being electronically processed and recorded, the assignment information is fed into the appropriate patent or trademark database system. Information about recorded patent and trademark assignments is disseminated to the public through the USPTO website, where customers may search for the assignment information associated with a specific application, patent, or trademark registration.
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 for the USPTO to record an assignment transaction and is not collected elsewhere. However, the information regarding the current owner(s) of the interest (address and type of entity) may already be maintained by the USPTO. This information is submitted routinely and could be required to distinguish between entities of the same name. Customers who file electronically using Assignment Center may save this data from an assignment request as a template to be reused in future submissions.
5. If the collection of information impacts small businesses or other small entities, describe any methods used to minimize burden.
The information collected is the minimum needed to execute the transaction and to ensure that the recording of the assignment is complete. This collection of information does not impose a significant economic impact or put an unnecessary burden on small entities or small businesses. The same information is required of every applicant and is not available from any other source.
6. Describe the consequence to federal program or policy activities if the information collection is not conducted or is conducted less frequently, as well as any technical or legal obstacles to reducing burden.
This information is collected only when an applicant submits a patent or trademark assignment document or other associated documents to the USPTO to be recorded. This information collection could not be conducted less frequently. If the collection of information were not conducted, the USPTO could not comply with the requirements of 35 U.S.C. 261 and 262 and 15 U.S.C. 1057 and 1060.
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 information 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.
A notice soliciting public comments on collection 0651-0027 was published in the Federal Register on June 17, 2024 (89 FR 51313).3 The USPTO received three comments, which are summarized and responded to below.
Lack of functionality in Assignment Center
Comment: One commenter stated Assignment Center lacks the functionality of the legacy EPAS system. In EPAS, a paralegal could complete the necessary forms in the system, upload a copy of the assignment, and then forward a link to the file to an attorney for review, signature and submission. The commenter states that, “In the new system, the person who starts the submission must be the one who submits it. Thus, either an attorney has to do the tedious tasks of filling out forms, or the attorney has to walk over to the paralegal's desk and look over their shoulder and use their computer to type their signature.” The commenter suggests that this leads to increased costs and burden for filers when recording assignments.
Response: The USPTO is aware of this issue and is working to soon implement a solution that will allow attorneys the ability to review an assignment started by a paralegal, and then sign and submit it. The USPTO is adding in an additional 10 minutes to the hourly burden estimate to account for those respondents experiencing this issue.
Automatic updates of assignee in Trademark Status and Document Retrieval (TSDR) system
Comment: Another commenter expressed concerns that the TSDR database does not automatically update to reflect changes in the assignee as the owner of the assigned registration or application. The commenter is concerned that one would not know whether the assignment or registration has been changed unless it is reviewed.
Response: The TDSR database does automatically update the assignee in certain cases. As written in the Trademark Manual of Examining Procedure (TMEP) Section 503.01(a), “Recording a document with the Assignment Recordation Branch does not necessarily change or update the ownership of record shown in the Trademark database. There are circumstances in which the Trademark database will be updated automatically upon the recordation of an assignment, change of name, or other document transferring title. In all other cases, the new owner must separately notify the Trademark Operation in writing of the recordation of a document, and request that the Trademark database be updated manually.” For more information related to updating the Trademark Database, please reference TMEP, Section 504.4
Home address
Comment: One commenter asked that the USPTO make it clearer that a personal home address is not required when filing a patent, and that a work address is sufficient.
Response: The USPTO refers the commenter to the Manual of Patent Examination Procedure, Section 602.08(a)(III), “The inventor’s mailing address means that address at which he or she customarily receives his or her mail, even if it is not the main mailing address of the inventor. Either the inventor’s home or business address is acceptable as the mailing address. A post office box is also acceptable. The mailing address should include the ZIP Code designation. The object of requiring each inventor’s mailing address is to enable the Office to communicate directly with the inventor if desired; hence, the address of the attorney with instruction to send communications to the inventor in care of the attorney is not sufficient.”5
The USPTO has long-standing relationships with groups from whom patent application information is collected, such as the American Intellectual Property Law Association, as well as patent bar associations, independent inventor groups, and users of our public search facilities. Their views are expressed in regularly scheduled meetings and considered in developing proposals for information collection requirements. There have been no comments or concerns expressed by these or similar organizations concerning this collection request.
A notice soliciting public comments on collection 0651-0027 for an additional 30 days was published in the Federal Register on September 3, 2024 (89 FR 71259).6 The USPTO received three comments, which are summarized and responded to below.
Assignment Search Issues
Comment: One commenter expressed concern about the USPTO’s software transition from EPAS/ETAS to Assignment Center. The commenter stated that they were no longer able to share assignments with assistants. They also felt that the requirement to provide an email address was burdensome and liable to a data breach or misuse, whereas a customer number would suffice. Additionally, the commenter stated that the lookup function is not working properly.
Response: During the initial release of Assignment Center, sharing assignments was not possible due to security concerns. This ensured that the USPTO was protecting the privacy of intellectual property. However, the USPTO has listened to its customers and subsequently is introducing the ability to share documents in Assignment Center. The USPTO is developing this capability and plans to release this function to the public in November 2024.
Regarding contact information requirements, the customer's contact information must be confirmed when processing an assignment. To avoid entering the customer's contact information, the Assignment Center has an FAQ that explains how a customer can store/save this information. This information can be auto-filled, saving the customer from having to fill in the information manually. A customer should review the “What is a Stored Contact” FAQ in Assignment Center.7
Regarding the lookup function, a user can perform an assignment search using the Assignment Center homepage. The user should locate the menu bar at the top, select Patents, and then select Assignment Search. The USPTO plans to include a search function capability embedded into the Assignment Search system in a future release in November 2025.
Verification of Assignee and SB/469 Form
Comment: Another commenter expressed concern that the information available through Assignment Center is incomplete and that the USPTO’s guidance to file an SB/469 form is unhelpful. The commenter lamented that the current workarounds to verify an assignee now take much longer than what was once a short and simple process.
Response: Due to the USPTO’s continued work on the assignments page of Patent Center from the data exposure incident8 discovered on August 1, 2024, registered users are temporarily unable to view assignment records for their patent applications via Patent Center. For applicants wishing to have certain assignment information added to their non-public patent application(s) viewable in Patent Center Private View, a new form, SB/469, is now available on our website.9 The form should not be submitted in applications that have been patented, published under 35 U.S.C. 122(b), or are otherwise open to the public. Assignment records for patent applications that are open to the public continue to be available to all users via Patent Assignment Search.10 The form will be available for use until electronic access to such assignment records via the Patent Center is fully restored. The FAQs provide more information.11 The USPTO appreciates users’ patience as it works hard to strengthen their customer experience.
PTO/SB/469 Form Lacks OMB Clearance
Comment: A commenter claimed that the USPTO introduced the PTO/SB/469 Form without first receiving OMB approval to collect the information.
Response: This form is exempt from the Paperwork Reduction Act under 5 CFR 1320.3(h)(1) and (h)(10). Additionally, this form is designed as a temporary measure until the updates to Assignment Center take effect in 2025. After that point form SB/469 is unlikely to be needed by users and may be retired.
Beta Testing for Assignment Center
Comment: A commenter asserted that Assignment Center was rolled out without public engagement and that there was no time overlap between replacing EPAS/ETAS with Assignment Center. The commenter claimed that the introduction of the new system has increased public burdens since users are unfamiliar with it and that this increase in burden is unaccounted for in the renewal of the information collection. The commenter asserted that the rollout of Assignment Center demonstrates the USPTO’s lack of understanding about how users operate outside of the USPTO.
Response: Before the launch of Assignment Center, the USPTO notified the public of its launch in November and December 2023. In January 2024, the USPTO released another public notification along with FAQs, training guides, and training videos.12 Finally, when Assignment Center went live in February 2024, users had access to guides, videos, and instructions on how to provide feedback to USPTO’s offices.
Burden of Generating the Form
Comment: One commenter alleged that the USPTO neglected to account for the “total time, effort, or financial resources expended by persons to generate … the information.” The commenter states that activities, such as “when inventions are the product of cooperation among inventors in multiple countries, or among inventors working for different companies, identifying the right signatories, preparing the document, chasing down the right people and reminding them (sometimes multiple times) to sign the document, etc., add[ ], on average, an hour of burden.”
Response: The USPTO has already accounted for the time necessary to prepare the document and obtain signatures in the approved estimated burden. The other actions cited by the commenter, such as identifying the correct signatories, are not within the scope of the PRA and, thus, do not constitute a burden.
Poor Software Design and Software Bugs
Comment: One commenter claimed that the new system (1) does not include time savers present in EPAS, which enhanced the creation and review of assignments, and (2) has an inadequate search function. The commenter requested that an additional 15 minutes and 20 minutes, respectively, be added to the collection to account for these.
Response: This information collection's burden estimate already accounts for creating and reviewing a document prior to submission. (The USPTO further addresses this point below under Issue 19.) The USPTO has reviewed these items and determined that the reminder does not fall within the scope of the PRA and, therefore, does not impact burdens under this collection.
Examples of Assignment Center Errors
One commenter provided an alleged list of bugs and confusing features found within Assignment Center. The USPTO has reviewed the list and determined that the items do not specifically impact burdens under this collection. Nonetheless, to be responsive to the comment and increase transparency, the USPTO has addressed these individually below.
Issue 1: Inconsistent data entry format of patent application serial numbers.
Response: The USPTO is looking into this functionality to make potential changes.
Issue 2: The drag-and-drop feature on the ‘Upload documents’ interface is confusing.
Response: The USPTO is looking into this functionality to make potential changes.
Issue 3: Patent Center and Assignment Center contain non-idiomatic use of language.
Response: The USPTO maintains that the naming and flow of information is accurate and acceptable.
Issue 4: Assignment Center has a poor user interface layout.
Response: The USPTO maintains that the menu bar to select actions is the USPTO UX standard and follows USPTO guidelines.
Issue 5: Drop-down lists with elements appear in apparently random order.
Response: The rationale for the order is based on the most commonly used choices selected by customers.
Issue 6: No confirmation data for naked numbers.
Response: The confirmation for this data happens within the USPTO system. If a non-valid property number is entered, Assignment Center informs the user and does not let the customer proceed.
Issue 7: Burden created by poorly designed management of login sessions. The timeout period is too short. Additionally, logins for Patent Center and Assignment Center should be coordinated and the “keep me logged in for 24 hours” option should be fixed so that it works reliably.
Response: The USPTO will determine if the login time can be raised to 45 minutes. However, the “keep me logged in for 24 hours” option is not a feature of Assignment Center.
Issue 8: Poor display for columns of tables.
Response: The feature of the design is based on the frequency of items used by Assignment Center users.
Issue 9: A feature should be made in order to see recent transactions and recordations.
Response: All recent activities are displayed on the user’s home page.
Issue 10: Assignment Center’s search function isn’t useful.
Response: The USPTO will release the new search enhancement in November 2024.
Issue 11: There is no way to enter a company name for correspondence.
Response: The USPTO is looking into this functionality to make potential changes.
Issue 12: The ‘contact information’ feature collects personal names rather than business names.
Response: As discussed above, the USPTO is looking into the functionality of entering company names in its contact information feature. Meanwhile, users can view how to enter contact information by going to the Assignment Center homepage and selecting the appropriate guide under ‘Tutorial.’
Issue 13: The ‘address book’ feature should allow names, addresses, and other relevant information.
Response: Users can visit the FAQs to learn how to add contact information. The FAQs are located in the following areas: Assignment Center Homepage.13 On the dashboard, FAQs are located at the bottom of the screen. They can also be accessed by going to the top right of the screen, clicking on the word ‘Help,’ and selecting ‘FAQs.’
Issue 14: When a patent has multiple inventors, users enter them one at a time. When all inventors are entered, Assignment Center lists them on a ‘conveying parties’ summary screen. The names are reordered into no discernible order, making proofreading more difficult than necessary.
Response: The USPTO is looking into this functionality to make potential changes.
Issue 15: Assignment Center subdivides data entry into a small amount of data on separate screens instead of a single interface where the information can be entered on one screen. The absence of context makes proofreading difficult.
Response: The design layout allows users to review entered information before moving to the next section. The summary screen lists all the information entered on one screen. Users can also see all data entry on one screen when user is accesses the ‘Review Screen.’ If errors are made, this screen also gives the user the capability to edit any information by using the ‘Edit’ button. Users can also make edits to previous data entries by clicking on the tab of the area users would like to update. Additionally, users can also identify where in the process they stopped by viewing the navigation panel of the different steps in the process. Green checks indicate that all the necessary information has been entered. A blue arrow indicates the last screen the user was on. Grey tabs indicate sections where users have not entered any data.
Issue 16: The data presented for final confirmation before the ‘submit’ click differs from
the data actually submitted.
Response: The USPTO is working to fix this issue. A solution is expected in this quarter (October-December) as a part of the next system update.
Issue 17: Assignment Center changes the input of phone numbers, requiring users to enter the information twice.
Response: During the initial rollout, Assignment Center prevented some users from proceeding to the next step due to incorrect phone numbers. However, this issue has been fixed. Assignment Center only asks for the correspondence phone number once.
Issue 18: The electronic signature in Assignment Center does not conform to the USPTO’s own requirements. The USPTO requires an S-signature on appropriate documents, but Assignment Center does not show this.
Response: The USPTO will implement the correct form of e-signature in November 2024.
Issue 19: In order to account for all of the bugs and defects of the new interface, the burden estimate should be increased by 40 minutes.
Response: The current estimate for submitting assignments is 40 minutes (see Table 3 below). Checking a document for any errors prior to submission is a normal part of submitting information to the USPTO and is already accounted for in this burden estimate. The USPTO’s burden estimates account for the average customer experience, and only a small percentage of customers experience significant errors. The USPTO appreciates all error reports that are submitted. These items allow the USPTO to learn from our customers and focus resources on solving problems.
Patent Term Adjustments
Comment: A commenter asserts that the coding error in the patent term adjustment software creates a burden on applicants, who must identify which patents are affected, seek correction, and pay the necessary fees. They claim that the USPTO, by statute, must extend the term day to day for the delay and is obligated to correct its own error.
Response: This comment is not within the scope of this information collection, as it pertains to the 0651-0021 Patent Term Extension information collection.
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 information collection requires a system of records notice (SORN) or privacy impact assessment (PIA), those should be cited and described here.
The USPTO collects this information under authority of 35 U.S.C. 1, 6, and 261 and E.O. 9424 for patents and 15 U.S.C. 1057 and 1060 for trademarks.
This information collection contains information which is subject to the Privacy Act. This information is collected on patent and trademark assignment recordations. Privacy Act Statements are included on these forms. The following System of Records Notices (SORNs) provide privacy disclosures and information about USPTO’s handling of personally identifiable information (PII) that is part of this information collection.
Patents Assignments
COMMERCE/PAT-TM-9 Patent Assignment Records published on March 29, 2013 (78 FR 19244)14 provides information about USPTO’s handling of personally identifiable information that is collected regarding patents assignments.
Information in this system of records is derived from persons who have submitted written instruments to the USPTO for recording. Patents applications are maintained in confidence as required by 35 U.S.C. 122(a) until the application is published or issued as a patent.
The purposes of the system are to maintain records related to assignments of property rights for patent applications and patents, including the documents submitted to the USPTO for recordation. Categories of individuals covered by the system include: persons who have given or received property rights under an application for patent or a patent by means of a written instrument recorded in the USPTO, intellectual property owners (deceased or incapacitated), and their legal representatives. Categories of records in the system includes assignments, grants, mortgages, liens, encumbrances, licenses, and other instruments affecting title, letters testamentary, other court certificates and orders. Records may be retrieved by inventor's name, application serial number, assignee's name, assignor's name, and patent number.
Trademark Assignments
COMMERCE/USPTO-26 Trademark Applications and Registration Record published on February 18, 2020 (85 FR 8847)15 provides information about USPTO’s handling of personally identifiable information that is collected regarding trademark assignments.
Information in this system of records is derived from records developed during the prosecution of a trademark application or the maintenance of a trademark registration. Trademark applications and assignments are open to public inspection. Confidentiality is not required in the processing of these items.
The purpose of the system is to carry out the duties of the USPTO to issue federal trademark registrations and maintain a register of trademarks. Categories of individuals covered by the system include: applicants for trademark registration, registrants, and legal and other authorized representatives for such applicants and registrants. The categories of records in the system includes the name, citizenship, domicile, email address, postal address, and telephone number of the trademark applicant, registrant, and applicant’s or registrant’s legal or other authorized representative(s), an attorney’s law firm or company affiliation and professional licensing information, and other information pertaining to an applicant’s or registrant’s activities in connection with the applied-for or registered mark. Records in this system include trademark applications, applicant and registrant declarations, office actions, registration certificates, and correspondence generated in the course of the prosecution of a trademark application or maintenance of a trademark registration. Records may be retrieved by mark, application serial number, filing date, registration number, registration date, name of the owner, name of the attorney of record, and other identifiers in the system.
Privacy Impact Assessment
The applicable Privacy Impact Assessment (PIA) for patent and trademark assignments is the Intellectual Property Assignment System (IPAS) (March 22, 2024)16.
IPAS, known to the public as Assignment Center, allows for electronic assignment of a patent or trademark via the USPTO website. Users are able to create an assignment document, fill in all required data, and attach supporting legal documents. This is a document management workflow system that supports the processing of assignment documents through various steps including; electronic submission, image capture, Optical Character Recognition (OCR) text capture, automated workflow processing, and management and inventory reporting.
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 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’.
Table 3 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 724,442 total responses per year for this information collection. The USPTO estimates that approximately 99% of the annual responses for this information collection will be submitted electronically via Assignment Center, which customers may access through the USPTO website.
Burden Hour Calculation Factors
The USPTO estimates that it will take the public approximately 40 minutes (0.67 hours) to prepare and submit a patent or trademark recordation request. Using these burden factors, USPTO estimates that the total respondent hourly burden for this information collection is 485,376 hours per year.
Cost Burden Calculation Factors
The USPTO expects that the information in this information collection will be prepared 50% each by attorneys and paraprofessionals. The rate for attorneys is $447 and the rate for paraprofessionals is $122, combining equally to an average of approximately $285 per hour. Using this hourly rate, the USPTO estimates that the total respondent cost burden for this information collection is $138,332,160 per year.
Table 3: Total Burden Hours and Hourly Costs to Private Sector Respondents
Item No. |
Item |
Estimated Annual Respondents
(a) |
Responses per Respondent
(b) |
Estimated Annual Responses
(a) x (b) = (c) |
Estimated Time for Response (hours)
(d) |
Estimated Annual Burden (hours/year)
(c) x (d)= (e) |
Rate17 ($/hour)
(f) |
Estimated Annual Burden
(e) x (f)= (g) |
1 |
Patent Assignments |
637,311 |
1 |
637,311 |
0.67 (40 minutes) |
426,998 |
$285 |
$121,694,430 |
2 |
Trademark Assignments
|
87,131 |
1 |
87,131 |
0.67 (40 minutes) |
58,378 |
$285 |
$16,637,730 |
|
Totals |
724,442 |
- - - |
724,442 |
- - - |
485,376 |
- - - |
138,332,160 |
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.
Generally, estimates should not include purchases of equipment or services, or portions thereof, made: (1) prior to October 1, 1995, (2) to achieve regulatory compliance with requirements not associated with the information collection, (3) for reasons other than to provide information or keep records for the government, or (4) as part of customary and usual business or private practices.
This collection has non-hourly cost burdens from fees paid by the public and associated postage costs for mailing items to USPTO.
The total non-hour respondent cost burden for this information collection is estimated to be $9,148,330 per year, which includes $9,147,965 in fees and $365 in postage.
Fees
There are fees associated with submitting patent and trademark assignment documents to be recorded, for a total of $9,147,965 per year as outlined in Table 4 below.
The filing fee for submitting a patent assignment as indicated by 37 CFR 1.21(h) is $50 per property for recording each document, while the filing fee for submitting a trademark assignment as indicated by 37 CFR 2.6(b)(6) is $40 for recording the first property in a
document and $25 for each additional property in the same document. The USPTO estimates that the average fee for a patent assignment recordation request is approximately $50 and that the average fee for a trademark assignment recordation request is approximately $65.
Table 4: Filing Fees
Item No. |
Fee Code |
Item |
Estimated Annual Responses (a) |
Estimated Cost
(b) |
Estimated Non-Hour Cost Burden (a) x (b) = (c) |
1
|
8021 |
Recording each patent assignment, agreement or other paper, per property – if not submitted electronically |
214 |
$50 |
$10,700 |
2 |
8521
|
Recording trademark assignment, agreement or other ownership document, first mark per document |
87,131
|
$40 |
$3,485,240 |
2 |
8522 |
Recording trademark assignment, agreement or other ownership document, second and subsequent marks in the same document |
226,081
|
$25 |
$5,652,025 |
|
|
Totals |
313,426 |
- - - |
$9,147,965 |
Postage Costs
Customers may incur postage costs when submitting a patent or trademark assignment request to the USPTO by mail. The USPTO estimates that 243 items will be submitted in the mail. The USPTO estimates that the average postage cost for a mailed submission, using a one-ounce large flat envelope mailed First Class, will be $1.50. Therefore, the USPTO estimates the total mailing costs for this information collection at $365.
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 both Legal Instrument Examiners and Legal Administrative Specialists to process submissions for this information collection. The USPTO estimates that approximately 80% of the employees processing these submissions are GS-7, step 10 and 20% are GS-9, step 9.
The USPTO estimates that the cost of a GS-7, step 10 employee is $45.29 per hour (GS hourly rate of $34.84 with 30% ($10.45) added for benefits and overhead). The USPTO estimates that the cost of a GS-9, step 9 employees is $53.98 per hour (GS hourly rate of $41.52 with 30% ($12.46) added for benefits and overhead).
Based on the percentages of the employees processing these submissions, the weighted average hourly rate for the USPTO staff processing these submissions is $47.03 (80% of the GS-7, step 10 hourly cost of $45.29 is $36.23; 20% of the GS-9, step 9 hourly cost of $53.98 is $10.80).
The USPTO estimates that it takes an employee 30 minutes (0.5 hours) to process a request to record a patent or trademark assignment submitted with a paper cover sheet and 15 minutes (0.25 hours) to process an online submission via Assignment Center.
Table 5 calculates the burden hours and costs to the federal government for processing this information collection:
Table 5: Total Hourly Burden for the Federal Government
Item No. |
Item |
Estimated Annual Responses (year)
(a) |
Estimated Time for Response (hour)
(b) |
Estimated Annual Burden (hours/year)
(a) x (b)= (c) |
Rate18 ($/hour)
(d) |
Estimated Annual Costs
(c) x (d)= (e) |
1 |
Patent Assignment System (paper) |
214 |
0.5 (30 minutes) |
107 |
$47.03 |
$5,032 |
1 |
Patent Assignment System (Assignment Center) |
637,097 |
0.25 (15 minutes) |
159,274 |
$47.03 |
$7,490,656 |
2 |
Trademark Assignment System (paper) |
29 |
0.5 (30 minutes) |
15 |
$47.03 |
$705 |
2 |
Trademark Assignment System (Assignment Center) |
87,102 |
0.25 (15 minutes) |
21,776 |
$47.03 |
$1,024,125 |
|
Totals |
724,442 |
- - - |
181,172 |
- - - |
$8,520,518 |
15. Explain the reasons for any program changes or adjustments reported on the burden worksheet.
Table 6: ICR Summary of Burden
|
Requested |
Program Change Due to New Statute |
Program Change Due to Agency Discretion |
Change Due to Adjustment in Agency Estimate |
Change Due to Potential Violation of the PRA |
Previously Approved |
Annual Number of Responses |
724,442 |
0 |
0 |
74,562 |
0 |
649,880 |
Annual Time Burden (Hr) |
485,376 |
0 |
0 |
160,435 |
0 |
324,941 |
Annual Cost Burden ($) |
$9,148,330 |
0 |
0 |
5,180,255 |
0 |
3,968,075 |
Changes since the Publication of the 60-Day Notice
Since the publication of the 60-Day Notice in the Federal Register on June 17, 2024, the USPTO has revised the estimated annual non-hourly burden. In the 60-Day Notice, the USPTO listed the hourly burden as 362,222 and annual respondent cost burden as $103,233,270. In response to a public comment, the USPTO has increased the time per response by 10 minutes. This results in updated burdens of 485,376 hours of annual burden and $138,332,160 in annual hourly cost burden.
Additionally, the UPSTO listed the total mailed costs as $338. The USPTO updates this estimate to $365 in reflect a recent increase in postage rates.
Change in Responses and Hourly Burden due to Adjustment in Agency Estimate
The total number of responses has increased by 74,562 due to estimated fluctuations in the number of respondents/submissions in this information collection. This results in an increase of 37,281 hours in the annual time burden estimates. The USPTO also has adjusted the estimated time burden in response to public feedback. This burden adjustment adds 123,154 annual burden hours to the information collection. Overall, from both sources, the increase in hourly burden is 160,435.
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 $5,180,255 from the previous approval. This is due to an increase in the number of filers.
16. 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, NARA, and on the USPTO website.
17. 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.
18. 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.
2 https://www.uspto.gov/forms/pto1595.pdf and https://www.uspto.gov/sites/default/files/pto1594.pdf, respectively.
6 https://www.govinfo.gov/content/pkg/FR-2024-09-03/pdf/2024-19669.pdf
8 https://www.uspto.gov/subscription-center/2024/notice-potential-exposure-protected-patent-application-information-through.
12 See https://www.uspto.gov/learning-and-resources/assignment-center-tutorial-videos, https://assignmentcenter.uspto.gov/ipasResources, and https://assignmentcenter.uspto.gov/assets/documents/trademark_training_final.pdf.
17
In
this information collection the USPTO uses an average of the rates
for intellectual property attorneys and
paralegals/paraprofessionals. 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.
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 paralegals/paraprofessionals, which is $122
per hour (https://nala.org/paralegal-info/). 2022 National
Utilization and Compensation Survey Report published by the National
Association of Legal Assistants (NALA); pg. 38.
18 https://www.opm.gov/policy-data-oversight/pay-leave/salaries-wages/salary-tables/pdf/2024/DCB_h.pdf.
| File Type | application/vnd.openxmlformats-officedocument.wordprocessingml.document |
| File Title | SF-83 SUPPORTING STATEMENT |
| Author | Rob Flax |
| File Modified | 0000-00-00 |
| File Created | 2024-11-22 |