0651-0046-JustStmt-final

SF-83 SUPPORTING STATEMENT
PAPERWORK REDUCTION ACT - OMB CONTROL NUMBER 0651-0046
LEGAL PROCESSES

A.

JUSTIFICATION

1.

Necessity of Information Collection

The purpose of this collection is to cover information requirements related to civil actions
and claims involving current and former employees of the United States Patent and
Trademark Office (USPTO). The rules for these legal processes may be found under 37
CFR Part 104, which outlines procedures for service of process, demands for employee
testimony and production of documents in legal proceedings, reports of unauthorized
testimony, employee indemnification, and filing claims against the USPTO under the
Federal Tort Claims Act (28 U.S.C. § 2672) and the corresponding Department of Justice
regulations (28 CFR Part 14). The Federal Tort Claims Act offers a limited waiver of the
sovereign immunity of the Federal Government in certain circumstances. The public may
also petition the USPTO Office of General Counsel under 37 CFR 104.3 to waive or
suspend these rules for legal processes in extraordinary cases.
The procedures under 37 CFR Part 104 ensure that service of process intended for
current and former employees of the USPTO is handled properly. The USPTO will only
accept service of process for an employee acting in an official capacity. When a
summons is served on a current or former USPTO employee, the employee should note
the time, place, and method of service on the summons. The employee should then
immediately notify and forward the summons to the Office of General Counsel at the
USPTO. The Office of General Counsel will determine to what extent an employee may
comply with a demand for testimony or documents. The USPTO will not authorize
employee testimony on the validity of a patent grant or registered trademark. The rules
governing production of documents do not affect any rights granted under the Freedom of
Information Act (5 U.S.C. ' 552), the Privacy Act (5 U.S.C. ' 552a), or the Trade Secrets
Act (18 U.S.C. ' 1905). In cases involving unauthorized testimony or requests for
indemnification, the employee must forward the relevant information or documentation to
the Office of General Counsel.
There are no forms provided by the USPTO for submitting the information in this
collection. For filing claims under the Federal Tort Claims Act, the public may use
Standard Form 95 “Claim for Damage, Injury, or Death,” which is provided by the
Department of Justice and approved by the Office of Management and Budget (OMB)
under OMB Control Number 1105-0008 (Attachment A). This form is not mandatory. The
public may submit claims using either this form or other formats, as long as all of the
necessary information is provided.

Table 1 provides the specific statutes and regulations authorizing the USPTO to collect
the information discussed above:
Table 1: Information Requirements for Legal Processes
Requirement

Statute

Rule

Petition to Waive Rules

35 U.S.C. '' 2(b)(2) and 3(a)(2)

37 CFR 104.3

Service of Process

35 U.S.C. ' 2(b)(2)

37 CFR 104.11 and 104.12

Forwarding Service and Demands

35 U.S.C. ' 2(b)(2)

37 CFR 104.12(b) and 104.22(a)

Employee Testimony and Production of
Documents in Legal Proceedings

35 U.S.C. ' 2(b)(2)

37 CFR 104.22 and 104.23

Report of Unauthorized Testimony

35 U.S.C. ' 2(b)(2)

37 CFR 104.23(c)

Possible Indemnification Cases

35 U.S.C. ' 2(b)(2)

37 CFR 104.31 and 104.32

Employee Indemnification

35 U.S.C. ' 2(b)(2)

37 CFR 104.31 and 104.32

Tort Claims

28 U.S.C. ' 2672, 35 U.S.C. ' 2(b)(2)

37 CFR 104.41 and 104.42

2.

Needs and Uses

The public uses this collection to submit information required by USPTO regulations
covering legal processes. This information collection is necessary so that respondents or
their representatives may serve a summons or complaint on the USPTO, demand
employee testimony or documents related to a legal proceeding, or file a claim under the
Federal Tort Claims Act. Respondents may petition the USPTO to waive or suspend these
rules for legal processes. This collection is also necessary so that current and former
USPTO employees may properly forward service and demands to the Office of General
Counsel, report unauthorized testimony, and request indemnification.
The USPTO covers current employees as respondents under this information collection,
even though their responses do not require approval under the Paperwork Reduction Act
(PRA). In those instances where both current and former employees respond to the
USPTO, the agency estimates that the number of responses received will be very small.
The Information Quality Guidelines from Section 515 of Public Law 106-554, Treasury and
General Government Appropriations Act for Fiscal Year 2001, apply to this information
collection and comply with all applicable information quality guidelines, i.e. OMB and
specific operating unit guidelines.
This proposed collection of information will result in information that will be collected,
maintained, and used in a way consistent with all applicable OMB and USPTO Information
Quality Guidelines. (See Attachment B, the USPTO Information Quality Guidelines.)
Table 2 outlines how this collection of information is used by the public and the USPTO:
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Table 2: Needs and Uses of Information Collected for Legal Processes
Function

Form Number

Needs and Uses

Petition to Waive Rules

No Form Associated

C

Used by the public to petition the USPTO to either waive
or suspend a rule.
Used by the USPTO to determine whether the
circumstances warrant the suspension of the rules.

C

Service of Process

No Form Associated

C

Used by the public to serve process on current and
former USPTO employees.
Used by the USPTO to accept service for current and
former employees who are summoned in their official
capacities.

C

Forwarding Service of Process and
Demands

No Form Associated

C

Used by current or former USPTO employees to forward
service of process or demands for testimony or
documentation to the Office of General Counsel.
Used by the USPTO to accept service of process or
demands forwarded by employees.

C

Employee Testimony and
Production of Documents in Legal
Proceedings

No Form Associated

C

Used by the public to demand testimony or documents
from current or former USPTO employees as part of a
legal proceeding.
Used by the USPTO to determine whether to authorize
the testimony or release the documents.

C
Report of Unauthorized Testimony

No Form Associated

C

Used by current and former USPTO employees to report
testimony given in a legal proceeding that was not
reviewed by the Office of the General Counsel prior to
the proceeding.
Used by the USPTO Office of General Counsel to review
unauthorized testimony.

C
Possible Indemnification Cases

No Form Associated

C

Used by current and former USPTO employees to report
possible indemnification cases to the USPTO in order to
start indemnification proceedings.
Used by the USPTO Office of General Counsel to
determine whether indemnification proceedings are
needed.

C

Employee Indemnification

No Form Associated

C

Used by current and former USPTO employees to
request indemnification from the Office of General
Counsel in instances where a verdict, judgment, or award
has been entered against them in a civil action or
proceeding related to their official capacities at the
USPTO.
Used by the USPTO Office of General Counsel to
determine whether to grant employee indemnification and
to ensure that copies of the verdict, judgment, appeal
bond, award or settlement proposal, and the employees=
statements have been submitted regarding their actions
and whether they have insurance or other sources of
indemnification.

C

Tort Claims

No Form Associated

C

Used by the public to file claims against the USPTO
under the Federal Tort Claims Act.
Used by the USPTO Office of General Counsel to
determine whether to settle or deny a claim.

C

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3.

Use of Information Technology

Currently, the USPTO does not use automated, electronic, mechanical, or other
technologies to collect the information for this collection. The USPTO believes that it would
not be practical to collect all of the information associated with the various legal
proceedings electronically. It is unlikely that the documents associated with service of
process or subpoenas requesting testimony or documents will be delivered to USPTO
employees or the Office of General Counsel electronically, unless the servers themselves
start delivering them electronically. Although it is conceivable for current or former
employees to submit the actual request for indemnification to the Office of General Counsel
electronically, they must also submit any associated documentation with it. Since this
documentation can include the verdict, judgment, appeal bonds, awards, or settlement
proposals, it is unlikely that this information will be submitted electronically unless the
judicial system starts using this means of communication on a regular basis.
The USPTO believes that these circumstances also apply to the claims filed under the
Federal Tort Claims Act. The Department of Justice has created a standard form that can
be used to submit claims, although it is not mandatory for claimants to do so. In addition to
the form, there are also statements, reports, bills, and other information that must be
submitted with this form as appropriate. Since the USPTO rarely receives a claim under
the Federal Tort Claims Act (it is rare for more than two to be submitted each year), it would
not be practical to collect this information electronically.
At this time, the USPTO is not collecting the information covered under this collection
electronically. As the USPTO expands the use of electronic filing, it may determine that it is
feasible for the petitions and demands to be submitted to the USPTO electronically. If the
USPTO does determine that these or other documents related to legal processes can be
submitted electronically, the USPTO will develop and submit the associated electronic
forms or formats for these items to OMB for review and approval as necessary.
The USPTO does not disseminate the information in this collection to the general public,
electronically or otherwise.
4.

Efforts to Identify Duplication

This information is collected when the public submits petitions to the USPTO to waive legal
process rules, demands or subpoenas for testimony or documents, or claims under the
Federal Tort Claims Act. The information associated with service of process is collected
only when a summons is served on a current or former employee and the employee
forwards the necessary information to the Office of General Counsel. The information
associated with employee indemnification is collected only when a current or former
employee requests indemnification and forwards the necessary documentation to the Office
of General Counsel. When current or former USPTO employees report unauthorized
testimony or possible cases for indemnification, they provide only the information pertaining
4

to the testimony or indemnification to the Office of the General Counsel. This information is
not collected elsewhere and does not result in a duplication of effort.
5.

Minimizing Burden to Small Entities

The USPTO does not believe that this collection will have a significant impact on a
substantial number of small businesses or other small entities. Historically, the USPTO has
received very few filings for these proceedings, and very few of the filings involve small
businesses or other small entities. The same information is required from every
respondent, and this information is not available from any other source.
6.

Consequences of Less Frequent Collection

This information is collected only at the initiation of the requestor and is not found
elsewhere. Therefore, this collection of information could not be conducted less frequently.
If the information were not collected, the USPTO would not be able to ensure compliance
with case law and protect its legal interests related to service of process, demands for
employee testimony and production of documents, unauthorized employee testimony,
employee indemnification, and claims submitted under the Federal Tort Claims Act. The
USPTO also would not be able to consider petitions to waive these rules in the interest of
justice in extraordinary situations.
7.

Special Circumstances in the Conduct of Information Collection

There are no special circumstances associated with this collection of information.
8.

Consultations Outside the Agency

The 60-Day Notice was published in the Federal Register on February 6, 2007 (72 Fed.
Reg. 5426) (Attachment C). The comment period ended on April 9, 2007. No public
comments were received.
The USPTO has long-standing relationships with groups from whom information concerning
the patent application and appeal process is collected, such as the American Intellectual
Property Law Association, as well as patent bar associations, independent inventor groups,
and users of our public facilities. Their views are expressed in regularly scheduled
meetings and considered in developing proposals for information collection requirements.
There have been no comments or concerns expressed by these or similar organizations
concerning the time required to provide the information under this program.
9.

Payment or Gifts to Respondents

This information collection does not involve a payment or gift to any respondent.

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10.

Assurance of Confidentiality

The confidentiality of patent applications is governed by statute (35 U.S.C. ' 122) and
regulation (37 CFR 1.11 and 1.14). The USPTO has a legal obligation to maintain the
confidentiality of the contents of unpublished patent applications and related documents.
Upon publication of an application or issuance of a patent, the patent application file is
made available to the public, subject to the provisions for providing only a redacted copy of
the file contents. The disclosure of the invention in the application is the quid pro quo for
the property right conferred by the patent grant, and the very means by which the patent
statute achieves its constitutional objective of "promot[ing] the progress of science and
useful arts.@ The prosecution history contained in the application file is critical to
determining the scope of the property right conferred by the patent grant.
When respondents submit demands in legal proceedings for the testimony of employees or
the production of documents regarding information protected by the confidentiality
provisions of the Patent Act (35 U.S.C. ' 122), the Privacy Act (5 U.S.C. ' 552a), the Trade
Secrets Act (18 U.S.C. ' 1905), or any other confidentiality statute, the demands must
satisfy the requirements for disclosure as stated in those statutes and associated rules
before the testimony may be given or the documents provided.
11.

Justification for Sensitive Questions

None of the required information in this collection is considered to be sensitive.
12.

Estimate of Hour and Cost Burden to Respondents

Table 3 calculates the burden hours and costs of this information collection to the
respondents, based on the following factors:
!

Respondent Calculation Factors
The USPTO estimates that it will receive approximately 176 responses per year for this
collection.

!

Burden Hour Calculation Factors
The USPTO estimates that it will take the public from 5 minutes (0.08 hours) to 1 hour to
gather the necessary information, prepare the appropriate documents, and submit the
information required for this collection.

!

Cost Burden Calculation Factors
In 2005 the Committee on Economics of Legal Practice of the American Intellectual
Property Law Association published a report that summarized the results of a survey with
data on hourly billing rates. The professional rate of $304 per hour is the median rate for
associate attorneys in private firms as published in that report. The USPTO expects that
the information in this collection will be prepared by attorneys and former employees, except
for the requests for employee indemnification, which generally come from professional and
supervisory staff. Since many of the former employees affected by this collection are

6

attorneys, the attorney rate will be used for former employees as well. Using the
professional rate of $304 per hour for associate attorneys in private firms, the USPTO
estimates that the respondent cost burden for attorneys and former employees submitting
the information in this collection will be $9,120 per year.
Employee requests for indemnification generally come from professional and supervisory
staff at the estimated hourly rate of $52.88 for a GS-15, step 1 employee. When 30% is
added to account for a fully-loaded hourly rate (benefits and overhead), the hourly rate for a
GS-15, step 1 is $52.88 + $15.86, for a rate of $68.74. Using the estimate of $68.74 per
hour for professional and supervisory staff, the USPTO expects that the respondent cost
burden for submitting requests for employee indemnification will be $69 per year. These
are fully-loaded hourly rates.
Table 3: Burden Hour/Burden Cost to Respondents for Legal Processes
Item

Hours
(a)

Responses
(yr)
(b)

Burden
(hrs/yr)
(c)
(a x b)

Rate
($/hr)
(d)

Total Cost
($/yr)
(e)
8 x d)

Petition to Waive Rules

0.50

7

4

$304.00

$1,216.00

Service of Process

0.08

130

10

$304.00

$3,040.00

Forwarding Service

0.17

7

1

$304.00

$304.00

Employee Testimony and Production of
Documents in Legal Proceedings

0.50

18

9

$304.00

$2,736.00

Forwarding Demands

0.17

7

1

$304.00

$304.00

Report of Unauthorized Testimony

0.50

1

1

$304.00

$304.00

Report of Possible Indemnification
Cases

0.50

3

2

$304.00

$608.00

Employee Indemnification

0.50

1

1

$68.74

$69.00

Tort Claims

1.00

2

2

$304.00

$608.00

........

176

31

........

$9,189.00

Totals

13.

Total Annualized Cost Burden

There are no capital start-up, maintenance, or recordkeeping costs associated with this
information collection. However, this collection does have annual (non-hour) costs in the
form of filing fees and postage costs.
This collection has filing fees associated with the petition to waive or suspend the legal
process rules under 37 CFR 104.3. The filing fee for this petition is $130, and the USPTO
estimates that approximately seven petitions will be filed per year for a total filing cost of
$910. There are no other filing fees associated with this information collection.
Customers may incur postage costs when submitting the information in this collection to the
USPTO by mail. The USPTO estimates that the average first-class postage for a mailed
7

submission, other than a Service of Process, will be 52 cents and that up to 46 of these
submissions will be mailed to the USPTO per year, for a postage cost of $24. The USPTO
estimates that the average postage for a Service of Process will be $8.30 for certified mail
with return receipt and that up to 130 of these submissions will be mailed to the USPTO per
year, for a postage cost of $1,079. The total estimated postage cost for this collection is
$1,103 per year.
46 responses (not including Service of Process) @ $0.52 postage = $24
130 responses for Service of Process @ $8.30 postage = $1,079
Total postage costs are $18 + $980 = $1,103
The total annual (non-hour) respondent cost burden for this collection in the form of filing
fees ($910) and postage costs ($1,103) is $2,013 per year.
14.

Annual Cost to the Federal Government

The USPTO estimates that it takes a GS-15, step 1 employee 1.5 hours to process a
petition to waive the rules or a request for employee indemnification; 30 minutes (0.5 hours)
to process a demand for employee testimony and the production of documents, a report of
unauthorized testimony, or a report of a possible indemnification case; and 3.0 hours to
process a claim filed under the Federal Tort Claims Act. The rules impose no burden on
the USPTO with regard to receiving service of process or forwarding service and demands
for testimony or documents. The hourly rate for a GS-15, step 1 employee is currently
$52.88. When 30% is added to account for a fully-loaded hourly rate (benefits and
overhead), the hourly rate for a GS-15, step 1 is $52.88 + $15.86, for a rate of $68.74.
Table 4 calculates the burden hours and costs of this information collection to the Federal
Government:
Table 4: Burden Hour/Burden Cost to the Federal Government for Legal Processes
Item

Hours
(a)

Responses
(yr)
(b)

Burden
(hrs/yr)
(c)
(a x b)

Rate
($/hr)
(d)

Total Cost
($/yr)
(e)
8 x d)

Petition to Waive Rules

1.50

7

11

$68.74

$756.00

Service of Process

0.00

130

0

$0.00

$0.00

Forwarding Service

0.00

7

0

$0.00

$0.00

Employee Testimony and Production of
Documents in Legal Proceedings

0.50

18

9

$68.74

$619.00

Forwarding Demands

0.00

7

0

$0.00

$0.00

Report of Unauthorized Testimony

0.50

1

1

$68.74

$69.00

Report of Possible Indemnification
Cases

0.50

3

2

$68.74

$137.00

8

Employee Indemnification

1.50

1

2

$68.74

$137.00

Tort Claims

3.00

2

6

$68.74

$412.00

176

31

Totals

15.

........

.........

$2,130.00

Reason for Change in Burden

Summary of Changes Since the Previous Renewal
This information collection was previously approved by OMB in May 2004 with a total of
157 responses and 29 burden hours per year.
For this renewal, the USPTO estimates that the total annual responses will be 176 and the
total annual burden hours will be 31, which is an increase of 19 responses and 2 burden
hours from the currently approved burden for this collection. This increase in burden hours
is due to administrative adjustments.
The total annual (non-hour) cost burden for this renewal of $2,013 is an increase of $365
over the currently approved total of $1,648 in annual costs for this collection. This increase
in annual costs is due to administrative adjustments.
Change in Respondent Cost Burden
When this collection was previously approved in May 2004, the estimated hourly rate for
attorneys preparing the information in this collection was $286, and the rate for professional
and supervisory staff preparing requests for employee indemnification was based on the
GS-15, step 1 fully-loaded hourly rate of $61.06. In the current renewal, the estimated
hourly rate for attorneys has been updated to $304, and the fully-loaded rate for
professional and supervisory staff has been updated to $68.74 as noted above. These
increased hourly rates, along with the increase of 2 burden hours for this collection, yield a
respondent cost burden of $9,189, which is an increase of $1,120 over the previously
approved respondent cost burden of $8,069.
Changes in Responses and Burden Hours
For this renewal, the USPTO estimates that the total annual responses for this collection
will increase by 19, from 157 to 176 responses per year. Accordingly, the USPTO
estimates that the total burden hours for this collection will increase by 2, from 29 to 31
burden hours per year. These changes are due to administrative adjustments, as follows:
$

The USPTO estimates that the annual responses for the Petition to Waive Rules will
increase by 2, from 5 to 7 per year, due to expected increases in filings. Therefore,
this collection takes a burden increase of 1 hour as an administrative
adjustment.

9

$

The USPTO estimates that the annual responses received for Service of Process
will increase by 10, from 120 to 130 per year, due to expected increases in filings.
However, due to the estimated time required per response (0.08 hours), this
increase in responses is not significant enough to increase the number of burden
hours for this collection.

$

The USPTO estimates that the annual responses received for Forwarding Service
will increase by 2, from 5 to 7 per year, due to expected increases in filings.
However, due to the estimated time required per response (0.17 hours), this
increase in responses is not significant enough to increase the number of burden
hours for this collection.

$

The USPTO estimates that the annual responses for Employee Testimony and
Production of Documents in Legal Proceedings will increase by 3, from 15 to 18 per
year, due to expected increases in filings. Therefore, this collection takes a
burden increase of 1 hour as an administrative adjustment.

$

The USPTO estimates that the annual responses received for Forwarding Demands
will increase by 2, from 5 to 7 per year, due to expected increases in filings.
However, due to the estimated time required per response (0.17 hours), this
increase in responses is not significant enough to increase the number of burden
hours for this collection.

$

The USPTO does not expect any changes in the estimated annual responses or
burden hours for the remaining items in the collection.

In sum, this information collection has a total burden increase of 2 hours due to
administrative adjustments.
Changes in Annual (Non-hour) Costs
For this renewal, the USPTO estimates that the total annual (non-hour) cost burden will
increase by $365, from $1,648 to $2,013 per year. This increase in annual costs is due to
administrative adjustments, as follows:
$

This collection is currently approved with a total of $650 in filing fees. For this
renewal, the USPTO estimates that the total filing fees will increase to $910 due to
an increase in expected filings for the Petition to Waive Rules. Therefore, this
collection has a burden increase of $260 in filing fees as an administrative
adjustment.

$

This collection is currently approved with a total of $998 in postage costs for
submitting the information in this collection to the USPTO by mail. For this renewal,
the USPTO estimates that the total postage costs will increase to $1,103 due to

10

increases in rates for the U.S. Postal Service. Therefore, this collection has a
burden increase of $105 in postage costs as an administrative adjustment.
In sum, this collection has an annual (non-hour) cost burden of $2,013, with $910 in filing
fees and $1,103 in postage costs. Therefore, this collection has an increase in annual
(non-hour) cost burden of $365 due to administrative adjustments.
16.

Project Schedule

The USPTO does not plan to publish this information for statistical use or for any special
purpose.
17.

Display of Expiration Date of OMB Approval

There are no forms associated with this collection. Therefore, the display of the expiration
date is not applicable.
18.

Exceptions to the Certificate Statement

This collection of information does not include any exceptions to the certificate statement.

B.

COLLECTION OF INFORMATION EMPLOYING STATISTICAL METHODS

This collection of information does not employ statistical methods.

LIST OF ATTACHMENTS
A.
B.
C.

Standard Form 95 AClaim for Damage, Injury, or Death@ (OMB Control Number 1105-0008)
The USPTO Information Quality Guidelines
60-Day Notice published in the Federal Register on February 6, 2007 (72 Fed. Reg. 5426)

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