[Federal Register Volume 74, Number 152 (Monday, August 10, 2009)]
[Notices]
[Pages 39916-39918]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: E9-19027]
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DEPARTMENT OF COMMERCE
Patent and Trademark Office
Patent Reexaminations
ACTION: Proposed 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 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: [email protected]. 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.
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 [email protected].
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
[[Page 39917]]
collection 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.
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Estimated Estimated
Item Estimated time for response annual annual burden
responses hours
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Request for Ex Parte Reexamination 18 minutes..................... 845 254
Transmittal Form (PTO/SB/57).
Request for Ex Parte Reexamination........... 40 hours....................... 845 33,800
Request for Inter Partes Reexamination 18 minutes..................... 380 114
Transmittal Form (PTO/SB/58).
Request for Inter Partes Reexamination....... 90 hours....................... 380 34,200
Petition to Review Refusal to Grant Ex Parte 15 hours....................... 25 375
Reexamination.
Petition to Review Refusal to Grant Inter 25 hours....................... 9 225
Partes Reexamination.
Patent Owner's 37 CFR 1.530 Statement........ 7 hours........................ 105 735
Third Party Requester's 37 CFR 1.535 Reply... 7 hours........................ 60 420
Amendment in Ex Parte or Inter Partes 20 hours....................... 1,165 23,300
Reexamination.
Third Party Requester's 37 CFR 1.947 Comments 25 hours....................... 300 7,500
in Inter Partes Reexamination.
Response to Final Rejection in Ex Parte 15 hours....................... 320 4,800
Reexamination.
Patent Owner's 37 CFR 1.951 Response in Inter 25 hours....................... 120 3,000
Partes Reexamination.
Third Party Requester's 37 CFR 1.951 Comments 25 hours....................... 95 2,375
in Inter Partes Reexamination.
Petition to Request Extension of Time in Ex 30 minutes..................... 475 238
Parte or Inter Partes Reexamination.
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Totals....................................... ............................... 5,124 111,336
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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.
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Estimated
Item annual Fee Amount Estimated annual
responses filing costs
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Request for Ex Parte Reexamination Transmittal Form (PTO/SB/ 845 $2,520.00 $2,129,400.00
57).........................................................
Request for Ex Parte Reexamination........................... 845 0.00 0.00
Request for Inter Partes Reexamination Transmittal Form (PTO/ 380 8,800.00 3,344,000.00
SB/58)......................................................
Request for Inter Partes Reexamination....................... 380 0.00 0.00
Petition to Review Refusal to Grant Ex Parte Reexamination... 25 0.00 0.00
Petition to Review Refusal to Grant Inter Partes 9 0.00 0.00
Reexamination...............................................
Patent Owner's 37 CFR 1.530 Statement........................ 105 0.00 0.00
Third Party Requester's 37 CFR 1.535 Reply................... 60 0.00 0.00
Amendment in Ex Parte or Inter Partes Reexamination.......... 1,165 0.00 0.00
Third Party Requester's 37 CFR 1.947 Comments in Inter Partes 300 0.00 0.00
Reexamination...............................................
Response to Final Rejection in Ex Parte Reexamination........ 320 0.00 0.00
Patent Owner's 37 CFR 1.951 Response in Inter Partes 120 0.00 0.00
Reexamination...............................................
Third Party Requester's 37 CFR 1.951 Comments in Inter Partes 95 0.00 0.00
Reexamination...............................................
Petition to Request Extension of Time in Ex Parte or Inter 475 200.00 95,000.00
Partes Reexamination........................................
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Totals....................................................... 5,124 .............. $5,568,400.00
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[[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.
Dated: August 4, 2009.
Susan K. Fawcett,
Records Officer, USPTO, Office of the Chief Information Officer,
Administrative Management Group.
[FR Doc. E9-19027 Filed 8-7-09; 8:45 am]
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