View Information Collection Request (ICR) Package

OMB Control No: 0651-0062	ICR Reference No: 201807-0651-004
Status: Historical Active	Previous ICR Reference No: 201505-0651-003
Agency/Subagency: DOC/PTO	Agency Tracking No:
Title: Third-Party Submissions and Protests
Type of Information Collection: Revision of a currently approved collection	Common Form ICR: No
Type of Review Request: Regular
OIRA Conclusion Action: Approved without change	Conclusion Date: 09/19/2018
	Date Received in OIRA: 07/27/2018
Terms of Clearance:

	Inventory as of this Action	Requested	Previously Approved
Expiration Date	09/30/2021	36 Months From Approved	09/30/2018
Responses	1,450	0	1,560
Time Burden (Hours)	14,500	0	15,600
Cost Burden (Dollars)	89,498	0	237,619

Abstract: 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 a patent application or to protest a patent application pending before the Office. 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 patens, published patent applications, or other patent publications of potential relevance to the examination of the application. A preissuance submission under 37 CFR 1.290 may be made in any non-provisional utility, design, and plant application, as well as in any continuing application. A preissuance 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 statutory specific time period. 37 CFR 1.291 permits a member of the public to file a protest against a pending application. Protest pursuant to 37 CFR 1.921 are supported by a separate statutory provision from third party submissions under 37 CFR 1.290 (35 U.S.C. 122(c) v. 35 U.S.C. 122(e)). As a result, there are several differences between protests and third-party submissions. 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 submitted. 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 submitted 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 application. The information collected via third party submissions under 37 CFR 1.290 and via the protests under 37 CFR 1.291 is necessary so that the public may contribute to the quality of issued patents. The USPTO will use this information, as appropriate, during the patent examination process to assist in evaluating the patent application.

Authorizing Statute(s): US Code: 35 USC 131
   US Code: 35 USC 122(c)
   US Code: 35 USC 122(e)
   PL: Pub.L. 112 - 29 Section 8 Name of Law: Leahy-Smith America Invents Act
   US Code: 35 USC 151

Citations for New Statutory Requirements: PL: Pub.L. 112 - 29 125 Stat. 284 Name of Law: Leahy-Smith America Invents Act

Associated Rulemaking Information
RIN:	Stage of Rulemaking:	Federal Register Citation:	Date:
	Not associated with rulemaking

Federal Register Notices & Comments
60-day Notice:	Federal Register Citation:	Citation Date:
	83 FR 16836	04/17/2018
30-day Notice:	Federal Register Citation:	Citation Date:
	83 FR 34833	07/23/2018
Did the Agency receive public comments on this ICR? No

ICR Summary of Burden

	Total Approved	Previously Approved	Change Due to Adjustment in Estimate
Annual Number of Responses	1,450	1,560	-110
Annual Time Burden (Hours)	14,500	15,600	-1,100
Annual Cost Burden (Dollars)	89,498	237,619	-148,121

Burden increases because of Program Change due to Agency Discretion: No

Burden Increase Due to:

Burden decreases because of Program Change due to Agency Discretion: No

Burden Reduction Due to:

Short Statement:

Annual Cost to Federal Government: $20,764

Does this IC contain surveys, censuses, or employ statistical methods? No

Does this ICR request any personally identifiable information (see OMB Circular No. A-130 for an explanation of this term)? Please consult with your agency's privacy program when making this determination. No

Does this ICR include a form that requires a Privacy Act Statement (see 5 U.S.C. §552a(e)(3))? Please consult with your agency's privacy program when making this determination. No

Is this ICR related to the Affordable Care Act [Pub. L. 111-148 & 111-152]? No

Is this ICR related to the Dodd-Frank Wall Street Reform and Consumer Protection Act, [Pub. L. 111-203]? No

Is this ICR related to the American Recovery and Reinvestment Act of 2009 (ARRA)? No

Is this ICR related to the Pandemic Response? Uncollected

Agency Contact: Raul Tamayo 571 272-7728 raul.tamayo@uspto.gov

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