Agency Information Collection Activities; Proposals, Submissions, and Approvals: Matters Related to First Inventor to File

Agency Information Collection Activities; Submission to the Office of Management and Budget (OMB) for Review and Approval; Comment Request; Matters Related To First Inventor To File

Dates

To ensure consideration, comments regarding this information collection must be received on or before December 9, 2024.

Supplementary Information

I. Abstract

Section 3 of the Leahy-Smith America Invents Act (AIA), inter alia, amended 35 U.S.C. 102 and 103 consistent with the objectives of the AIA, including the conversion of the United States patent system from a "first to invent" system to a "first inventor to file" system. The changes to 35 U.S.C. 102 and 103 in section 3 of the AIA went into effect on March 16, 2013, but apply only to certain applications filed on or after March 16, 2013.

This information collection covers information required by 37 CFR 1.55(k), 1.78(a)(6), and 1.78(d)(6) to assist the USPTO in determining whether an application is subject to 35 U.S.C. 102 and 103 as amended by section 3 of the AIA, or 35 U.S.C. 102 and 103 as in effect on March 15, 2013. The information is only required in nonprovisional applications filed on or after March 16, 2013, that claim foreign priority to, or domestic benefit of, an application filed before March 16, 2013. Moreover, the information is not required if the nonprovisional application filed on or after March 16, 2013, claims the benefit of an earlier application in which a statement under 37 CFR 1.55(k), 1.78(a)(6), or 1.78(d)(6) has already been filed. Given the passage of time, it is increasingly rare for a newly filed nonprovisional application to claim foreign priority to, or domestic benefit of, an application filed before March 16, 2013, without also claiming benefit of an earlier application in which the statement has already been filed. Accordingly, the estimated responses for this collection continue to decrease.

II. Method of Collection

The items in this information collection may be submitted electronically, or by mail, facsimile, or hand delivery.

III. Data

OMB Control Number: 0651-0071.

Forms: None.

Type of Review: Extension and revision of a currently approved information collection.

Affected Public: Private sector.

Respondent's Obligation: Required to obtain or retain benefits.

Frequency: On occasion.

Estimated Number of Annual Respondents: 50 respondents.

Estimated Number of Annual Responses: 50 responses.

Estimated Time per Response: The USPTO estimates that the responses in this information collection will take the public approximately 2 hours to complete. This includes the time to gather the necessary information, create the document, and submit the completed request to the USPTO.

Estimated Total Annual Respondent Burden Hours: 100 hours.

Estimated Total Annual Respondent Hourly Cost Burden: $44,700.

Estimated Total Annual Respondent Non-hourly Cost Burden: $10. There are no capital start-up costs, maintenance costs, recordkeeping costs, or filing fees associated with this information collection. However, the USPTO estimates that the total annual non-hour cost burden for this information collection in the form of postage is $10.

Postage Costs

Although the USPTO prefers that the items in this information collection be submitted electronically, responses may be submitted by mail through the United States Postal Service (USPS). The USPTO estimates one item will be submitted in the 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. Therefore, the USPTO estimates the total mailing costs for this information collection at $10.

IV. Request for Comments

The USPTO is soliciting public comments to:

(a) Evaluate whether the collection of information is necessary for the proper performance of the functions of the Agency, including whether the information will have practical utility;

(b) Evaluate the accuracy of the Agency's estimate of the burden of the collection of information, including the validity of the methodology and assumptions used;

(c) Enhance the quality, utility, and clarity of the information to be collected; and

(d) Minimize the burden of the collection of information on those who are to respond, including through the use of appropriate automated, electronic, mechanical, or other technological collection techniques or other forms of information technology, e.g., permitting electronic submission of responses.

All comments submitted in response to this notice are a matter of public record. The USPTO will include or summarize each comment in the request to OMB to approve this information collection. Before including an address, phone number, email address, or other personally identifiable information (PII) in a comment, be aware that the entire comment-including PII-may be made publicly available at any time. While you may ask in your comment to withhold PII from public view, the USPTO cannot guarantee that it will be able to do so.

⁽¹⁾  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 ).