Agency Information Collection Activities; Proposals, Submissions, and Approvals: Rules for Patent Maintenance Fees

Agency Information Collection Activities; Submission to the Office of Management and Budget (OMB) for Review and Approval; Comment Request; Rules for Patent Maintenance Fees

Dates

To ensure consideration, comments regarding this information collection must be received on or before September 16, 2024.

Supplementary Information

I. Abstract

Under 35 U.S.C. 41 and 37 CFR 1.20(e)-(h), 1.362, 1.363, 1.366, 1.377, and 1.378, the USPTO charges fees for maintaining in force all patents based on applications filed on or after December 12, 1980, except for plant and design patents. Furthermore, maintenance fees are required for a reissue patent unless the patent being reissued did not require maintenance fees. Payment of these maintenance fees is due at 3 1/2 , 7 1/2 , and 11 1/2 years after the date the patent was granted. See section 2504 of the Manual of Patent Examining Procedure (MPEP) (9th Edition, Rev. 07.2022, February 2023) for more information.

If the USPTO does not receive payment of the appropriate maintenance fee and any applicable surcharge within a grace period of six months following each of the above due dates (at 4, 8, or 12 years after the date of grant), the patent will expire at that time. After a patent expires, it is no longer enforceable. Payments of maintenance fees that are submitted during the 6-month grace period before patent expiration must include the appropriate surcharge as indicated by 37 CFR 1.20(h). Submissions of maintenance fee payments and surcharges must include the relevant patent number and the corresponding United States application number in order to identify the correct patent and ensure proper crediting of the fee being paid. See MPEP 2506, 2510, and 2515 for more information.

If the USPTO refuses to accept and record a maintenance fee payment that was submitted prior to the expiration of a patent, the patentee may petition the Director to accept and record the maintenance fee under 37 CFR 1.377. This petition must be accompanied by the fee indicated in 37 CFR 1.17(g), which may be refunded if it is determined that the refusal to accept the maintenance fee was due to an error by the USPTO.

If a patent has expired due to nonpayment of a maintenance fee, the patentee may petition the Director to accept a delayed payment of the maintenance fee under 37 CFR 1.378(b). The Director may accept the payment of a maintenance fee after the expiration of the patent if the petitioner shows to the satisfaction of the Director that the delay in payment was unintentional. Petitions to accept unintentionally delayed payment must also be accompanied by the required maintenance fee and the petition fee as set forth in 37 CFR 1.17(m). If the Director accepts the maintenance fee payment upon petition, then the patent is reinstated. If the USPTO denies a petition to accept delayed payment of a maintenance fee in an expired patent, the patentee may petition the Director to reconsider that decision under 37 CFR 1.378(d).

This information collection covers maintenance fee petition information, including the electronic interface and forms provided by the USPTO to assist the public with maintenance fee petitions. To pay a maintenance fee after patent expiration, the maintenance fee payment and the petition fee, as set forth in 37 CFR 1.17(m), must be filed together with a petition to accept an unintentionally delayed payment of the maintenance fee in an expired patent under 37 CFR 1.378(b). The USPTO offers two different versions of the form for petitions to accept unintentionally delayed payments of maintenance fees: a web-based ePetition and form PTO/SB/66 (a fillable PDF). The USPTO recommends the use of the web-based ePetition. The USPTO does not offer forms for the petitions to review the refusal to accept the payment of a maintenance fee prior to the expiration of the patent under 37 CFR 1.377 or the petitions for the reconsideration of decisions on petitions refusing to accept the delayed payment of a maintenance fee in an expired patent under 37 CFR 1.378(d).

A fee address indication form (PTO/SB/47) was previously associated with this information collection. This item permits applicants, patentees, assignees, or their representatives of record to specify a "fee address" for correspondence related to maintenance fees that is separate from the correspondence address associated with a patent or application. This item is considered by OMB to be exempt from the PRA and therefore this item is no longer included in this information collection.

II. Method of Collection

The USPTO prefers for the items in this information collection to be submitted via online electronic submissions. Submission by mail, fax, or hand delivery is available. See MPEP 2510 for more information.

III. Data

OMB Control Number: 0651-0016.

Forms: (AIA = America Invents Act; SB = Specimen Book)

• PTO/SB/66 (Petition to Accept Unintentionally Delayed Payment of Maintenance Fee in an Expired Patent (37 CFR 1.378(b))

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.

Estimated Number of Annual Respondents: 2,616 respondents.

Estimated Number of Annual Responses: 2,616 responses.

Frequency: On occasion.

Estimated Time per Response: The USPTO estimates that the responses in this information collection will take the public approximately between 5 minutes (0.08 hours) and 8 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: 3,424 hours.

Estimated Total Annual Respondent Hourly Cost Burden: $1,530,528.

Estimated Total Annual Respondent Non-hourly Cost Burden: $2,577,316. There are no capital start-up, maintenance costs, or recordkeeping costs 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 filing fees and postage, is $2,577,316.

Filing Fees

Two petitions (IC lines 1 and 2) in this information collection have associated filing fees resulting in $2,577,052 in filing fees.

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 that 1% of the 2,616 items will be submitted in the mail resulting in 26 mailed items. 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 $264.

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.