Recording Assignments

ACTION:

Proposed collection; comment request.

SUMMARY:

The United States Patent and Trademark Office (USPTO), as part of its continuing effort to reduce paperwork and respondent burden, invites the general public and other Federal agencies to take this opportunity to comment on the continuing information collection, as required by the Paperwork Reduction Act of 1995, Public Law 104-13 (44 U.S.C. 3506(c)(2)(A)).

DATES:

Written comments must be submitted on or before December 13, 2004.

ADDRESSES:

You may submit comments by any of the following methods:

• E-mail: Susan.Brown@uspto.gov. Include “0651-0027 comment” in the subject line of the message.
• Fax: 703-308-7407, marked to the attention of Susan Brown.
• Mail: Susan K. Brown, Records Officer, Office of the Chief Information Officer, Office of Data Architecture and Services, Data Administration Division, U.S. Patent and Trademark Office, P.O. Box 1450, Alexandria, VA 22313-1450.

FOR FURTHER INFORMATION CONTACT:

Requests for additional information should be directed to Joyce R. Johnson, Manager, Assignment Division, Mail Stop 1450, U.S. Patent and Trademark Office, P.O. Box 1450, Alexandria, VA 22313-1450; by telephone at (703) 308-9706; or by e-mail at Joyce.Johnson@uspto.gov.

SUPPLEMENTARY INFORMATION

I. Abstract

This collection of information is required by 35 U.S.C. 261 and 262 for patents and 15 U.S.C. 1057 and 1060 of the Trademark Act of 1946 for trademarks. These statutes permit 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 applications, patents, and trademark registrations.

The USPTO administers these statutes through 37 CFR part 3 (3.1-3.85) for patents and trademarks, and also 37 CFR 2.146 and 2.171 for trademarks. These rules 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. The public uses these records to conduct ownership and chain-of-title searches. The public may view these records either at the USPTO 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 Web site at http://www.uspto.gov.

In order to assist the public in submitting assignment documents for recording, the USPTO developed patent and trademark assignment cover sheets that capture all of the necessary data for accurately recording various assignment documents. To record an assignment, the respondent must submit an appropriate cover sheet along with the assignment documents to be recorded. The USPTO provides two paper forms for this purpose, the Patent Recordation Form Cover Sheet (PTO-1595) and the Trademark Recordation Form Cover Sheet (PTO-1594).

Customers may file patent assignment recordation requests electronically using the Electronic Filing System (EFS) software developed by the USPTO for secure transmission of patent applications and related documents over the internet. Customers who submit patent assignment recordation requests through EFS must complete the electronic transmittal forms provided within the electronic submission software. Patent assignment recordation requests that are prepared using the EFS software but are too large (over 100 megabytes) to be submitted over the internet may be copied onto a recordable compact disc (CD) and then mailed to the USPTO. The costs for submitting oversized electronic patent assignment recordation requests on CD were noted in the previous renewal of this collection, and these CD submissions are now being listed as a separate information requirement for the current renewal.

Customers may also submit assignments online by using the Electronic Patent Assignment System (EPAS) and the Electronic Trademark Assignment System (ETAS), which are available through the USPTO Web site. EPAS and ETAS are new systems developed by the USPTO that allow customers to fill out the required cover sheet information online using web-based forms and then attach the assignment documents to be submitted over the internet for recordation. These web-based forms for EPAS and ETAS submissions are being added to this collection.

This collection was previously approved by OMB in June 2002. In September 2002, OMB approved a change worksheet that reduced the burden estimates due to the USPTO receiving fewer assignment filings than expected. In September 2003, OMB approved another change worksheet that further reduced the burden estimates for this collection due to an overall decrease in assignment filings, although the percentage of electronic filings increased.

II. Method of Collection

By mail, facsimile, hand delivery, or electronically over the internet to the USPTO.

III. Data

OMB Number: 0651-0027.

Form Number(s): PTO-1594 and PTO-1595.

Type of Review: Revision of a currently approved collection.

Affected Public: Individuals or households; businesses or other for-profits; not-for-profit institutions; farms; the Federal Government; and state, local or tribal governments.

Estimated Number of Respondents: 331,294 responses per year.

Estimated Time Per Response: The USPTO estimates that it will take the public approximately 30 minutes (0.5 hours) to complete the Trademark Recordation Form Cover Sheet (PTO-1594) and the Patent Recordation Form Cover Sheet (PTO-1595), to file an electronic patent assignment recordation request using EFS, to submit a patent assignment recordation request on CD, or to submit a patent or trademark assignment recordation request online using EPAS or ETAS. These estimates include the time to gather the necessary information, prepare the form, and submit the completed request.

Estimated Total Annual Respondent Burden Hours: 165,648 hours per year.

Estimated Total Annual Respondent Cost Burden: $30,479,232 per year.

The USPTO expects that the information in this collection will be prepared by both attorneys and paralegals. The estimated rate of $184 per hour used in this collection is an average of the paraprofessional rate of $81 per hour and the professional rate of $286 per hour for associate attorneys in private firms. Using the average rate of $184 per hour, the USPTO estimates that the respondent cost burden for submitting the information in this collection will be $30,479,232 per year.

Estimated Total Annual Non-hour Respondent Cost Burden:$23,165,071 per year. There are no maintenance costs associated with this information collection. However, this collection does have annual (non-hour) costs in the form of capital start-up costs, recordkeeping costs, filing fees, and postage costs.

This collection has capital start-up and recordkeeping costs associated with submitting patent assignment recordation requests on CD. Electronic patent assignment requests that exceed 100 megabytes cannot be transmitted to the USPTO over the internet and instead may be transferred onto a CD for submission. This process requires additional supplies, including blank recordable CD media, CD labels, and padded envelopes for shipping. The USPTO estimates that the cost of these supplies will be approximately $5 per CD submission. The USPTO estimates that it will receive approximately 10 CD submissions per year, for a total of $50 in capital start-up costs for this collection.

The USPTO advises customers who submit oversized patent assignment requests on CD to retain a back-up copy of the CD and transmittal documentation for their records. The USPTO estimates that it will take an additional 5 minutes for the customer to produce a back-up CD copy and 2 minutes to print the transmittal documentation, for a total of 7 minutes (0.12 hours) for each CD submission. The USPTO estimates that it will receive 10 CD submissions per year, for a total of approximately 1 hour per year for producing the back-up CD copies and documentation. The USPTO expects that these back-up copies will be prepared by paraprofessionals with an estimated rate of $81 per hour, for a recordkeeping cost of $81 per year for the CD submissions.

There are also recordkeeping costs associated with submitting assignment documents electronically over the internet using EFS, EPAS, and ETAS. The USPTO recommends that customers print and retain a copy of the acknowledgment receipt that appears on the screen after a successful submission. Customers will also receive an electronic copy of this receipt. The USPTO estimates that it will take 5 seconds (0.001 hours) to print a copy of the acknowledgment receipt and that approximately 35,278 submissions per year will be completed via EFS, EPAS, and ETAS, for a total of approximately 35 hours per year for printing this receipt. The USPTO expects that these receipts will be printed by paraprofessionals at an estimated rate of $81 per hour, for a recordkeeping cost of $2,835 per year for printing the acknowledgment receipts. Therefore, this collection has a total recordkeeping cost of $2,916.

This collection has filing fees associated with submitting patent and trademark assignment documents to be recorded. The filing fees for recording patent and trademark assignments are the same for both paper and electronic submissions. However, the filing cost for recording patent or trademark assignments varies according to the number of properties involved in each submission. 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 trademark assignment filing has one property plus five additional properties, for an average filing cost of $165 for a trademark assignment submission.

The filing fee for submitting a patent assignment as indicated by 37 CFR 1.21(h) is $40 for recording each property in a document. The USPTO estimates that paper and electronic patent assignment filings contain an average of 1.5 properties per submission, for an average filing cost of $60. The USPTO also estimates that oversized patent assignment requests on CD contain an average of 100 properties per submission, for an average filing cost of $4,000. The total estimated filing cost for this collection is $23,056,435 per year.

Customers may incur postage costs when submitting a patent or trademark assignment request to the USPTO by mail. The USPTO expects that some assignment requests will be submitted by fax but that approximately 215,622 of the 296,006 paper assignment requests per year will be submitted by mail. The USPTO estimates that the average first-class postage cost for a mailed Patent or Trademark Recordation Form Cover Sheet submission is 49 cents. The USPTO further estimates that 10 patent assignment requests on CD will be mailed to the USPTO per year and that the average first-class postage cost for a mailed CD submission is $1.52. The total postage cost for this collection is $105,670 per year.

The total non-hour respondent cost burden for this collection in the form of capital start-up costs, recordkeeping costs, filing fees, and postage costs is estimated to be $23,165,071 per year.

IV. Request for Comments

Comments are invited on: (a) Whether the proposed collection of information is necessary for the proper performance of the functions of the agency, including whether the information shall have practical utility; (b) the accuracy of the agency's estimate of the burden (including hours and cost) of the proposed collection of information; (c) ways to enhance the quality, utility, and clarity of the information to be collected; and (d) ways to minimize the burden of the collection of information on respondents, e.g., the use of automated collection techniques or other forms of information technology.

Comments submitted in response to this notice will be summarized or included in the request for OMB approval of this information collection; they also will become a matter of public record.