FR Doc E8-12820

[Federal Register: June 9, 2008 (Volume 73, Number 111)]
[Notices]
[Page 32559-32561]
From the Federal Register Online via GPO Access [wais.access.gpo.gov]
[DOCID:fr09jn08-30]

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DEPARTMENT OF COMMERCE

Patent and Trademark Office

Board of Patent Appeals and Interferences Actions

ACTION: New collection; comment request.

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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 this 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 August 8, 2008.

ADDRESSES: You may submit comments by any of the following methods:
E-mail: Susan.Fawcett@uspto.gov. Include ``0651-00xx Board of
Patent Appeals and Interferences Actions 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, Customer Information Services Group, Public
Information Services Division, U.S. Patent and Trademark Office, P.O.
Box 1450, Alexandria, VA 22313-1450. Federal e-Rulemaking Portal:
http://www.regulations.gov.

FOR FURTHER INFORMATION CONTACT: Requests for additional information
should be directed to the attention of Kimberly Jordan, Chief Trial
Administrator, Board of Patent Appeals and Interferences, United States
Patent and Trademark Office, P.O. Box 1450, Alexandria, VA 22313-1450;
by telephone at 571-272-9797; or by e-mail at BPAI.Rules@uspto.gov with
``Paperwork'' in the subject line.

SUPPLEMENTARY INFORMATION:

I. Abstract

The United States Patent and Trademark Office (USPTO) established
the Board of Patent Appeals and Interferences (BPAI or Board) under 35
U.S.C. 6(b). This statute directs BPAI to ``on written appeal of an
applicant, review adverse decisions of examiners upon applications for
patent and shall determine priority and patentability of invention in
interferences.'' BPAI has the authority under 35 U.S.C. 134, 135, 306,
and 315 to review ex parte and inter partes appeals and interferences.
In addition, 35 U.S.C. 6 establishes the membership of BPAI as the
Director, the Deputy Director, the Commissioner for Patents, the
Commissioner for Trademarks, and the Administrative Patent Judges, one
of which serves as the Chief Judge and another as the Vice Chief Judge.
Each appeal and interference is decided by a merits panel of at least
three members of the Board.
The Board's two main responsibilities under the statute include the
review of ex parte appeals from adverse decisions of examiners in those
situations where a written appeal is taken by a dissatisfied applicant,
and the administration of interferences to ``determine priority'' (or
decide who is the first inventor) whenever an applicant claims the same
patentable invention that is already claimed by another applicant or
patentee. In inter partes reexamination appeals, BPAI reviews decisions
adverse to a patent owner or a third-party requestor.
The USPTO published a notice of proposed rule making, ``Rules of
Practice Before the Board of Patent Appeals and Interferences in Ex
Parte Appeals (RIN 0651-AC12)'' in the Federal Register on July 30,
2007. The public comment period ended on September 28, 2007. In this
proposed rule making, the USPTO proposed changes to information
submitted to the agency by practitioners in order to process ex parte
appeals before the BPAI.
The agency received comments from the public concerning the burden
of these rules on the public, in particular the new requirements that
allow the agency to structure the information being received. In order
to ensure that the public has opportunity to comment on the burden
impact of the proposed rule making, the USPTO is submitting a new
information collection request to the OMB to review these changes as
subject to the PRA and to incorporate the new information collection
into the agency's information collection inventory.
The USPTO is asking that a new collection of information, entitled
``Board of Patent Appeals and Interferences Actions'' be established.
This collection will contain the following items:
Appeal Brief (41.37).
Petition for Extension of Time for Filing Paper After
Appeal Brief (41.3 and 41.20).
Petition to Increase Page Limit (41.3 and 41.20).
Reply Brief (41.41).
Request for Rehearing Before the BPAI (41.52).
Additionally, there are two items related to BPAI activities that
are currently covered in 0651-0031 Patent Processing (Updating). This
collection is currently under review at OMB. It is the USPTO's
intention to move these items out of 0651-0031 into this new collection
once this collection is established and OMB's review of 0651-0031 is
concluded. The following items will be moved out of 0651-0031:
Notice of Appeal (41.31).
Request for Oral Hearing Before the BPAI (41.47).
BPAI's opinions and decisions for publicly available files are
published on the USPTO Web site.
There are no forms associated with these items. However, they are
governed by rules in Part 41. Failure to comply with the appropriate
rule may result in dismissal of the appeal or denial of entry of the
paper.

II. Method of Collection

By mail, hand delivery, or fax when applicant files the briefs,
petitions, and requests. These papers can also be filed as attachments
through EFS-Web.

III. Data

OMB Number: 0651-00xx.
Form Number(s): No forms.
Type of Review: New information collection.
Affected Public: Primarily business or other for-profit
organizations.
Estimated Number of Respondents: 31,828 responses per year. In the
future, once this proposed collection and 0651-0031 are approved by
OMB, the USPTO expects to move the notices of appeal and requests for
oral hearing before the BPAI into this collection. The USPTO estimates
that this will add a minimum of 28,595 responses to this collection.
Estimated Time Per Response: The USPTO estimates that it takes the
public

[[Page 32560]]

approximately 5 to 30 hours to complete this information, depending on
the brief, petition, or request. This includes the time to gather the
necessary information, prepare the briefs, petitions, and requests, and
submit them to the USPTO. The USPTO estimates that it takes the public
approximately 12 minutes (0.20 hours) to complete the notices of appeal
and requests for oral hearing before the BPAI.
Estimated Total Annual Respondent Burden Hours: 773,895 hours. The
USPTO estimates that once the notices of appeal and requests for oral
hearing before the BPAI are moved into this collection, a minimum of
5,719 hours per year will be added to the burden.
Estimated Total Annual Respondent Cost Burden: $239,907,450. The
USPTO believes that associate attorneys will complete these briefs,
petitions, and requests. The professional hourly rate for associate
attorneys in private firms is $310. Using this hourly rate, the USPTO
estimates that the total respondent cost burden for this collection is
$239,907,450 per year. Once the notices of appeal and requests for oral
hearing before the BPAI are moved into this collection, the USPTO
estimates that the annual respondent cost burden will increase by a
minimum of $1,772,890. The USPTO believes that these items are also
completed by associate attorneys.

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Estimated time Estimated Estimated
Item for response annual annual burden
(hours) responses hours
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Appeal Briefs............................................. 30 23,145 694,350
Petition for Extension of Time for Filing Paper After 15 2,298 34,470
Brief....................................................
Petition to Increase Page Limit........................... 15 1,315 19,725
Reply Briefs.............................................. 5 4,947 24,735
Requests for Rehearing Before the BPAI.................... 5 123 615
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Total................................................. ................ 31,828 773,895
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The table below show the estimated annual responses and burden
hours that the USPTO expects will be added to this collection once the
notice of appeal and requests for oral hearing before the BPAI are
transferred out of 0651-0031 into this collection. These estimates are
based on current projections and are an increase over the estimates
currently in 0651-0031 (17,250 responses, 3,450 burden hours, and
$1,048,800 in respondent costs). The estimates below are not being
reported in the burden for this proposed collection at this time. The
USPTO has included the estimates to show the public what the minimum
expected burden will be for this collection.

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Estimated time Estimated
Item for response annual Estimated annual
(minutes) responses burden hours
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Notice of Appeal.......................................... 12 27,630 5,526
Request for Oral Hearing Before the BPAI.................. 12 965 193

sTotal............................................... ................ 28,595 5,719
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Estimated Total Annual Non-hour Respondent Cost Burden:
$12,286,831. There are postage costs and filing fees associated with
this information collection. This collection does not have any capital
start-up, operation, maintenance, or recordkeeping costs.
Parties incur postage costs when submitting the various papers to
the USPTO by mail through the United States Postal Service. The USPTO
believes that these items will be mailed by Express Mail, using the
Postal Service's flat rate envelope, which can accommodate varying
submission weights. The cost of the flat rate envelope is $16.50. The
USPTO believes that roughly half of the submissions will be filed in
paper, with the rest filed as attachments through EFS-Web. Out of the
total estimated 31,828 submissions, the USPTO estimates that the number
of papers submitted to the USPTO by Express Mail is 15,983.

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Item Responses (yr) Postage costs Total cost (yr)
(a) (b) (a)x(b)
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Appeal Briefs............................................. 11,573 $16.50 $190,955.00
Petitions for Extensions of Time for Filing Paper After 1,167 16.50 19,256.00
Brief....................................................
Petitions to Increase Page Limit.......................... 668 16.50 11,022.00
Reply Briefs.............................................. 2,513 16.50 41,465.00
Requests for Rehearing Before the BPAI.................... 62 16.50 1,023.00
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Total................................................. 15,983 ................ 263,721.00
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Therefore, the USPTO estimates that the total postage costs for
this collection will be $263,721.
There is also annual non-hour cost burden in the way of filing fees
for the appeal briefs and the petitions. The reply briefs and the
request for rehearing before the BPAI do not have filing fees
associated with them. The USPTO estimates that the total non-hour cost
burden associated with the filing

[[Page 32561]]

fees for this collection will be $12,023,110.

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Total non-hour
Item Responses (yr) Filing fees cost burden (yr)
(a) (b) (a) x (b)
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Appeal Briefs............................................. 18,337 $510.00 $9,351,870.00
Appeal Briefs (small entity).............................. 4,808 255.00 1,226,040.00
Petitions for Extension of Time for Filing Paper After 2,298 400.00 919,200.00
Brief....................................................
Petitions to Increase Page Limit.......................... 1,315 400.00 526,000.00
Reply Briefs.............................................. 4,947 0.00 0.00
Requests for Rehearing Before the BPAI.................... 123 0.00 0.00
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Totals............................................ 31,828 ................ 12,023,110.00
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The USPTO estimates that the total non-hour respondent cost burden
for this collection, in the form of postage costs and filing fees is
$12,286,831 per year.
The tables below show the estimated non-hour costs related to
postage and filing fees that the USPTO expects will be added to this
collection once the notices of appeal and requests for oral hearing
before the BPAI are transferred out of 0651-0031 into this collection.
These estimates are based on current projections and are an increase
over the total non-hour cost estimates for postage and filing fees
($7,952,505) currently in 0651-0031 for these two items. The estimates
shown below are not being reported in the burden for this proposed
collection at this time. The USPTO has included the estimates to show
the public what the minimum expected burden will be for this
collection. The USPTO estimates that a minimum of $13,177,835 per year
will be added to the total non-hour respondent cost burden.

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Total non-hour
Item Responses (yr) Filing fees cost burden
(yr) (yr)
(a) (b) (a) x (b)
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Notices of Appeal......................................... 21,635 $500.00 $10,817,500.00
Notices of Appeal (small entity).......................... 5,977 250.00 1,494,250.00
Requests for Oral Hearing Before the BPAI................. 734 1,000.00 734,000.00
Requests for Oral Hearing Before the BPAI (small entity).. 231 500.00 115,500.00
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Total............................................. 28,577 ................ 13,161,250.00
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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, including through 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.
Dated: June 3, 2008.

Susan K. Fawcett,
Records Officer, USPTO, Office of the Chief Information Officer,
Customer Information Services Group, Public Information Services
Division.
[FR Doc. E8-12820 Filed 6-6-08; 8:45 am]

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