Submission for OMB Review; Comment Request; “Matters Related to First Inventor to File”

The Department of Commerce will submit to the Office of Management and Budget (OMB) for clearance the following proposal for collection of information under the provisions of the Paperwork Reduction Act.

Agency: United States Patent and Trademark Office, Commerce.

Title: Matters Related to First Inventor to File.

OMB Control Number: 0651-0071.

Form Number(s): None.

Type of Request: Regular.

Number of Respondents: 23,681 responses per year.

Average Time per Response: The USPTO expects that it will take between 2 and 10 hours to respond to the items in this collection, depending upon the instrument used. This includes the time to gather the necessary information, create the document, and submit the completed request to the USPTO.

Burden Hours: 207,362 hours per year.

Cost Burden: $80.40 per year.

Needs and Uses: This information collection is necessary so that patent applicants and/or patentees may: (1) Provide a statement if a nonprovisional application filed on or after March 16, 2013, other than a nonprovisional international design application, claims the benefit of, or priority to, the filing date of a foreign, provisional, or nonprovisional application filed prior to March 16, 2013, and also contains, or contained at any time, a claim to a claimed invention that has an effective filing date (as defined in 37 CFR 1.109) on or after March 16, 2013; (2) identify the inventorship and ownership or obligation to assign ownership of each claimed invention on its effective filing date (as defined in 37 CFR 1.109) or on its date of invention, as applicable, in an application or patent naming one or more joint inventors, when necessary for purposes of a USPTO proceeding; and (3) show that a disclosure was by the inventor or joint inventor, or was by a party who obtained the subject matter from the inventor or a joint inventor, or that there was a prior public disclosure by the inventor or a joint inventor, or by a party who obtained the subject matter from the inventor or a joint inventor.

The USPTO will use the statement that a nonprovisional application filed on or after March 16, 2013, other than a nonprovisional international design application, that claims the benefit of, or priority to, the filing date of a foreign, provisional, or nonprovisional application filed prior to March 16, 2013, and contains, or contained at any time, a claim to a claimed invention that has an effective filing date (as defined in 37 CFR 1.109) on or after March 16, 2013, (or lack of such a statement) to readily determine whether the nonprovisional application is subject to the changes to 35 U.S.C. 102 and 103 in the AIA. The USPTO will use the identification of the inventorship and ownership or obligation to assign ownership when it is necessary to determine whether a U.S. patent or U.S. patent application publication resulting from another nonprovisional application qualifies as prior art under 35 U.S.C. 102(a)(2) or pre-AIA 35 U.S.C. 102(e). The USPTO will use information concerning whether a disclosure was by the inventor or joint inventor, or was by a party who obtained the subject matter from the inventor or a joint inventor, or that there was a prior public disclosure by the inventor or a joint inventor, or by a party who obtained the subject matter from the inventor or a joint inventor, to determine whether the disclosure qualifies as prior art under 35 U.S.C. 102(a)(1) or (a)(2).

Affected Public: Businesses or other for-profits; not-for-profit institutions.

Frequency: On occasion.

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

OMB Desk Officer: Nicholas A. Fraser, email: Nicholas_A._Fraser@omb.eop.gov.

Once submitted, the request will be publicly available in electronic format through reginfo.gov. Follow the instructions to view Department of Commerce collections currently under review by OMB.

Further information can be obtained by:

• Email: InformationCollection@uspto.gov. Include “0651-0071 copy request” in the subject line of the message.
• Mail: Marcie Lovett, Director, Records and Information Goverance Division, Office of the Chief Administrative Officer, United States Patent and Trademark Office, P.O. Box 1450, Alexandria, VA 22313-1450.

Written comments and recommendations for the proposed information collection should be sent on or before December 21, 2018 to Nicholas A. Fraser, OMB Desk Officer, via email to Nicholas_A._Fraser@omb.eop.gov, or by fax to 202 395-5167, marked to the attention of Nicholas A. Fraser.