[Federal Register: November 24, 1999 (Volume 64, Number 226)]
[Page 66170-66171]
From the Federal Register Online via GPO Access [wais.access.gpo.gov]



Patent and Trademark Office

Statutory Invention Registration

ACTION: Proposed collection; Comment request.


SUMMARY: The Department of Commerce (DOC), as part of its continuing 
effort to reduce paperwork and respondent burden, invites the general 
public and other Federal agencies to comment on the continuing and 
proposed 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 January 24, 2000.

ADDRESSES: Direct all written comments to Linda Engelmeier, 
Departmental Forms Clearance Officer, Department of Commerce, Room 
5027, 14th and Constitution Avenue, NW, Washington, DC 20230 or via the 
Internet at LEngelme@doc.gov.

FOR FURTHER INFORMATION CONTACT: Requests for additional information 
should be directed to the attention of Robert J. Spar, Patent and 
Trademark Office (PTO), Washington, DC 20231, by telephone at (703) 


I. Abstract

    A statutory invention registration is not a patent. It has the 
defensive attributes of a patent but does not have the enforceable 
attributes of a patent. In other words, a person occasionally invents 
something solely for personal use (not for production or sale) and does 
not want to go through the effort and expense of obtaining a patent on 
the invention. At the same time, the inventor wants to prevent someone 
else from later obtaining a patent on a like invention. In that 
situation, the inventor can register a statutory invention and have it 
published. Once published, it cannot be claimed by another person. 37 
USC 157 authorizes the Patent and Trademark Office (PTO) to publish a 
statutory invention registration containing the specifications and 
drawings of a regularly filed application for a patent without 
examination, providing the patentee meets all the requirements for 
printing, waives the right to receive a patent on the invention within 
a certain period of time prescribed by the PTO, and pays all 
application, publication and other processing fees.
    The PTO administers 35 USC 157 through 37 CFR 1.293-1.297. Under 37 
CFR 1.293, an applicant for an original patent may request, at any time 
during the pendency of the applicant's pending complete application, 
that the specifications and drawings be published as a statutory 
invention registration. Any such request must be signed by (1) the 
applicant and any assignee of record or (2) an attorney or agent of 
record in the application. The request for publication must also 
include a waiver of the applicant's right to receive a patent on the 
invention claimed effective upon the date of publication of the 
statutory invention registration.
    37 CFR 1.294 permits any request for a Statutory Invention 
Registration to be examined to determine if the requirements of 
Sec. 1.293 have been met. The examination will also determine if the 
subject matter of the application is appropriate for publication, and 
if the requirements for publication are met.
    The public may petition the PTO to review rejection decisions 
within one month or such other time as is set forth in the decision 
refusing publication under 37 CFR 1.295. The petition may include a 
request for refund of the petition fee.
    Under 37 CFR 1.296, the public may petition the PTO to withdraw a 
request to publish a statutory invention registration prior to the date 
of the notice of the intent to publish. The request to withdraw may 
also include a request for a refund.
    If the request for a statutory invention registration is approved, 
a notice to that

[[Page 66171]]

effect will be published in the PTO's Official Gazette, in accordance 
with 37 CFR 1.297. Each statutory invention registration published will 
include a statement relating to the attributes of a statutory invention 
    The public uses form number PTO/SB/94, Request for Statutory 
Invention Registration, to request and authorize publication of a 
regularly-filed patent application as a Statutory Invention 
Registration, to waive the right to receive a United States patent on 
the same invention claimed in the identified patent application, and to 
agree that the waiver will be effective upon publication of the 
Statutory Invention Registration. No forms are associated with the 
petition for a review of the refusal to publish a statutory invention 
registration or the petition to withdraw the request for publication of 
a statutory invention registration.

II. Method of Collection

    By mail, facsimile, or hand carry when the applicant or agent files 
a statutory invention registration with the PTO.

III. Data

    OMB Number: 0651-0036.
    Form Number: PTO/SB/94.
    Type of Review: Renewal without change.
    Affected Public: Individuals or households; businesses or other 
for-profit; not-for-profit institutions; farms; Federal, state, local 
or tribal government.
    Estimated Number of Respondents: 83 responses per year.
    Estimated Time Per Response: It is estimated to take approximately 
24 minutes each to complete the request for statutory invention 
registration, the petition to review the rejection decision, and the 
petition to withdraw the publication request.
    Estimated Total Annual Respondent Burden Hours: 33.2 hours per 
    Estimated Total Annual Respondent Cost Burden: $0 (no capital 
start-up or maintenance expenditures are required). Using the 
professional hourly rate of $175.00 for associate attorneys in private 
firms, the PTO estimates $5,810 for salary costs associated with 

                                                                                     Estimated       Estimated
            Title of form                   PTO Form No.(s)       Estimated time   annual burden      annual
                                                                   for response        hours         responses
Statutory Invention Registration.....  PTO/SB/94                             0.4            32.0              80
Petition to Review Rejection Decision  N/A                                   0.4             0.4               1
Petition to Withdraw Publication       N/A                                   0.4             0.8               2
    Totals...........................  .........................  ..............            33.2              83

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 will 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, 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 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 will also become a matter of public record.

    Dated: November 19, 1999.
Linda Engelmeier,
Departmental Forms Clearance Officer, Office of the Chief Information 
[FR Doc. 99-30598, Filed 11-23-99; 8:45 am]