Skip to Content

Notice

Patent Reexaminations

Document Details

Information about this document as published in the Federal Register.

Published Document

This document has been published in the Federal Register. Use the PDF linked in the document sidebar for the official electronic format.

Start Preamble

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 new 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 October 9, 2009.

ADDRESSES:

You may submit comments by any of the following methods:

  • E-mail: Susan.Fawcett@uspto.gov. Include A0651-00XX Patent Reexaminations comment@ in the subject line of the message.
  • Fax: 571-273-0112, marked to the attention of Susan K. Fawcett.
  • Mail: Susan K. Fawcett, Records Officer, Office of the Chief Information Officer, Administrative Management Group, United States Patent and Trademark Office, P.O. Box 1450, Alexandria, VA 22313-1450.
  • Federal Rulemaking Portal: http://www.regulations.gov.
Start Further Info

FOR FURTHER INFORMATION CONTACT:

Requests for additional information should be directed to Robert A. Clarke, Director, Office of Patent Legal Administration, United States Patent and Trademark Office, P.O. Box 1450, Alexandria, VA 22313-1450; by telephone at 571-272-7735; or by e-mail at Robert.Clarke@uspto.gov.

End Further Info End Preamble Start Supplemental Information

SUPPLEMENTARY INFORMATION:

I. Abstract

The United States Patent and Trademark Office (USPTO) is required by 35 U.S.C. 131 and 151 to examine applications and, when appropriate, allow applications and issue them as patents.

Chapter 30 of Title 35 U.S.C. provides that any person at any time may file a request for reexamination by the USPTO of any claim of a patent on the basis of prior art patents or printed publications. Once initiated, the reexamination proceedings under Chapter 30 are substantially ex parte and do not permit input from third parties. Chapter 31 of Title 35 U.S.C. provides for inter partes reexamination allowing third parties to participate throughout the reexamination proceeding. If a request for ex parte or inter partes reexamination is denied, the requester may petition the Director to review the examiner's refusal of reexamination. The rules outlining ex parte and inter partes reexaminations are found at 37 CFR 1.510-1.570 and 1.902-1.997.

Information requirements related to patent reexaminations are currently covered under OMB Control Number 0651-0033, along with other requirements related to patent issue fees and reissue applications. The USPTO is proposing to move the following items that are under 0651-0033 into a new information collection for Patent Reexaminations: Request for Ex Parte Reexamination Transmittal Form; Request for Inter Partes Reexamination Transmittal Form; Petition to Review the Refusal to Grant Ex Parte Reexamination; Petition to Review the Refusal to Grant Inter Partes Reexamination; and Petition to Request Extension of Time in Ex Parte or Inter Partes Reexamination.

The USPTO is also proposing to include additional items related to patent reexaminations in this new information collection: Request for Ex Parte Reexamination; Request for Inter Partes Reexamination; Patent Owner's 37 CFR 1.530 Statement; Third Party Requester's 37 CFR 1.535 Reply; Amendment in Ex Parte or Inter Partes Reexamination; Third Party Requester's 37 CFR 1.947 Comments in Inter Partes Reexamination; Response to Final Rejection in Ex Parte Reexamination; Patent Owner's 37 CFR 1.951 Response in Inter Partes Reexamination; and Third Party Requester's 37 CFR 1.951 Comments in Inter Partes Reexamination. These additional items are existing information requirements that previously were not fully covered by an information collection and are now being included in order to more accurately reflect the burden on the public for submitting requests related to patent reexaminations.

The Requests for Ex Parte and Inter Partes Reexamination are distinct collections from the Request for Ex Parte Reexamination Transmittal Form and the Request for Inter Partes Reexamination Transmittal Form, respectively. Whereas the transmittal forms are used by a requester (patent owner or third party) as a checklist to ensure compliance with the requirements of the statutes and rules for ex parte and inter partes reexaminations, the newly added collections represent the substantive analysis undertaken by a requester of reexamination. Thus, the Requests for Ex Parte and Inter Partes Reexamination are not new requirements. The other items being included in this new Start Printed Page 39917collection cover additional information that may be submitted by patent owners and third party requesters in relation to a reexamination proceeding. Likewise, these items are existing requirements that previously were not fully covered by an information collection.

The public uses this information collection to request reexamination proceedings and to ensure that the associated fees and documentation are submitted to the USPTO.

II. Method of Collection

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

III. Data

OMB Number: 0651-00XX.

Form Number(s): PTO/SB/57 and PTO/SB/58.

Type of Review: New collection.

Affected Public: Individuals or households; businesses or other for-profits; and not-for-profit institutions.

Estimated Number of Respondents: 5,124 responses per year.

Estimated Time per Response: The USPTO estimates that it will take the public from 18 minutes (0.30 hours) to 90 hours to gather the necessary information, prepare the appropriate form or other documents, and submit the information to the USPTO.

Estimated Total Annual Respondent Burden Hours: 111,336 hours per year.

Estimated Total Annual Respondent Cost Burden: $34,514,160 per year. The USPTO expects that the information in this collection will be prepared by attorneys. Using the professional rate of $310 per hour for attorneys in private firms, the USPTO estimates that the respondent cost burden for this collection will be approximately $34,514,160 per year.

ItemEstimated time for responseEstimated annual responsesEstimated annual burden hours
Request for Ex Parte Reexamination Transmittal Form (PTO/SB/57)18 minutes845254
Request for Ex Parte Reexamination40 hours84533,800
Request for Inter Partes Reexamination Transmittal Form (PTO/SB/58)18 minutes380114
Request for Inter Partes Reexamination90 hours38034,200
Petition to Review Refusal to Gr ant Ex Parte Reexamination15 hours25375
Petition to Review Refusal to Grant Inter Partes Reexamination25 hours9225
Patent Owner's 37 CFR 1.530 Statement7 hours105735
Third Party Requester's 37 CFR 1.535 Reply7 hours60420
Amendment in Ex Parte or Inter Partes Reexamination20 hours1,16523,300
Third Party Requester's 37 CFR 1.947 Comments in Inter Partes Reexamination25 hours3007,500
Response to Final Rejection in Ex Parte Reexamination15 hours3204,800
Patent Owner's 37 CFR 1.951 Response in Inter Partes Reexamination25 hours1203,000
Third Party Requester's 37 CFR 1.951 Comments in Inter Partes Reexamination25 hours952,375
Petition to Request Extension of Time in Ex Parte or Inter Partes Reexamination30 minutes475238
Totals5,124111,336

Estimated Total Annual Non-hour Respondent Cost Burden: $5,577,265 per year. There are no capital start-up or maintenance costs associated with this information collection. However, this collection does have annual (non-hour) costs in the form of filing fees, postage costs, and recordkeeping costs.

There are filing fees associated with requests for reexamination and for the petition to request an extension of time in a reexamination. The total fees for this collection are calculated in the accompanying table. The USPTO estimates that the total fees associated with this collection will be approximately $5,568,400 per year.

ItemEstimated annual responsesFee AmountEstimated annual filing costs
Request for Ex Parte Reexamination Transmittal Form (PTO/SB/57)845$2,520.00$2,129,400.00
Request for Ex Parte Reexamination8450.000.00
Request for Inter Partes Reexamination Transmittal Form (PTO/SB/58)3808,800.003,344,000.00
Request for Inter Partes Reexamination3800.000.00
Petition to Review Refusal to Grant Ex Parte Reexamination250.000.00
Petition to Review Refusal to Grant Inter Partes Reexamination90.000.00
Patent Owner's 37 CFR 1.530 Statement1050.000.00
Third Party Requester's 37 CFR 1.535 Reply600.000.00
Amendment in Ex Parte or Inter Partes Reexamination1,1650.000.00
Third Party Requester's 37 CFR 1.947 Comments in Inter Partes Reexamination3000.000.00
Response to Final Rejection in Ex Parte Reexamination3200.000.00
Patent Owner's 37 CFR 1.951 Response in Inter Partes Reexamination1200.000.00
Third Party Requester's 37 CFR 1.951 Comments in Inter Partes Reexamination950.000.00
Petition to Request Extension of Time in Ex Parte or Inter Partes Reexamination475200.0095,000.00
Totals5,124$5,568,400.00
Start Printed Page 39918

There may also be postage costs and recordkeeping costs associated with this collection. The USPTO expects that approximately 50 percent of the responses for this collection will be submitted by mail and 50 percent will be submitted electronically. The USPTO estimates that the postage cost for a mailed submission will be from 44 cents to $4.95, depending on the size of the submission, and that approximately 2,558 mailed submissions will be received per year, for a total postage cost of approximately $8,565 per year.

When submitting the information in this collection to the USPTO electronically, the applicant is strongly urged to retain a copy of the acknowledgment receipt as evidence that the submission was received by the USPTO on the date noted. The USPTO estimates that it will take 5 seconds (0.001 hours) to print and retain a copy of the acknowledgment receipt and that approximately 2,566 responses per year will be submitted electronically, for a total of approximately 3 hours per year for printing this receipt. Using the paraprofessional rate of $100 per hour, the USPTO estimates that the recordkeeping cost associated with this collection will be approximately $300 per year.

The total non-hour respondent cost burden for this collection in the form of filing fees, postage costs, and recordkeeping costs is approximately $5,577,265 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.

Start Signature

Dated: August 4, 2009.

Susan K. Fawcett,

Records Officer, USPTO, Office of the Chief Information Officer, Administrative Management Group.

End Signature End Supplemental Information

[FR Doc. E9-19027 Filed 8-7-09; 8:45 am]

BILLING CODE 3510-16-P