0651-00xx BPAI modified PRA Justification 12-3-2009

MODIFIED SUPPORTING STATEMENT (December 2, 2009)
UNITED STATES PATENT AND TRADEMARK OFFICE
Board of Patent Appeals and Interferences (BPAI) Actions
OMB Control Number 0651-00xx
Introduction
The United States Patent and Trademark Office (USPTO) is requesting approval for a
collection of information entitled “Board of Patent Appeals and Interferences (BPAI)
Actions.”
The 60-Day Federal Register Notice published on June 9, 2008 (73 Fed Reg. 32559). The
public comment period ended on August 8, 2008. The USPTO received 12 public
comments in response to the Notice. The 30-Day Federal Register Notice published on
October 8, 2008 (73 Fed. Reg. 58943). The information collection request was submitted
to the OMB on November 19, 2008.
The request submitted on November 19, 2008 was associated with rulemaking RIN 0651AC12. Because the information collection process had not been completed by the original
effective and applicability date of the final rule (December 10, 2008), the Office published a
Federal Register Notice [73 FR 74972 (December 10, 2008)] notifying the public that the
effective and applicability date of the final rule was not December 10, 2008, and that the
effective and applicability dates would be identified in a subsequent notice.
The Office has considered the comments thus far submitted on the final rule and is
proposing to amend the final rule to eliminate any additional burden introduced by the final
rule RIN 0651-AC12. As such, the Office is modifying the pending information collection
request submission to limit it to the current rule [37 CFR 41.1 et seq. (2004)].
This collection is limited to three items:
•
•
•

Appeal Brief (41.37)
Reply Brief (41.41)
Request for Rehearing Before the BPAI (41.52)

A.

JUSTIFICATION

1.

Necessity of Information Collection

The Patent Statute, 35 U.S.C. § 6(b), established the Board of Patent Appeals and
Interferences (BPAI or Board). As such, the BPAI “shall, 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 and 306 to review ex parte appeals. 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. Each
appeal is heard by a merits panel of at least three members of the Board.
Under the statute, one of BPAI’s main responsibilities includes the review of ex parte
appeals from adverse decisions of examiners in those situations where a written appeal is
taken by a dissatisfied applicant. The current rules governing ex parte appeals can be
found in 37 CFR 41.1 through 41.54.
There are a limited number of items already considered under the PRA in relation to BPAI
activities. These are currently within the 0651-0031 collection. Specifically, these are:
•
•

Notice of Appeal (41.31)
Request for Oral Hearing Before the BPAI (41.47)

The USPTO is asking that a new collection of information, entitled “Board of Patent and
Appeals and Interferences (BPAI) Actions” be established. This will consist of the
following items:
•
•
•

Appeal Brief (41.37)
Reply Brief (41.41)
Request for Rehearing Before the BPAI (41.52)

Table 1 provides the specific statutes and regulations requiring the USPTO to collect the
information.
Table 1: Information Requirements for Patent Appeals and Interferences (BPAI) Actions
Requirement

Statute

Rule

Appeal Brief

35 U.S.C. § 134

37 CFR 41.37

Reply Brief

35 U.S.C. § 134

37 CFR 41.41

Request for Rehearing Before the BPAI

35 U.S.C. § 134

37 CFR 41.52

2.

Needs and Uses

Ex parte appeals from adverse decisions by patent examiners in applications for patents
and in reexamination proceedings filed pursuant to Chapter 30 of 35 U.S.C. are provided
for by 35 U.S.C. §§ 134 and 306. The rules governing ex parte appeals are found at 37
CFR 41.1 through 41.54. Chapter 1200 of The Manual of Patent Examining Procedure
sets forth the current procedures for appellants and patent examiners to follow in ex parte
appeals. Sections 2273 through 2279 of The Manual of Patent Examining Procedure
sets forth additional procedures for appellants and patent examiners to follow in ex parte
appeals in a reexamination proceeding.

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The BPAI disseminates certain information that it collects through various publications and
databases. This information includes opinions, binding precedent, final decisions, and
judgments in interference cases.
Opinions authored by the BPAI have varying degrees of authority attached to them. There
are precedential opinions, which when published, are binding and provide the criteria and
authority that the BPAI will use to decide all other factually similar cases (until the opinion
is overruled or changed by statute). There are informative opinions which are nonprecedential, Informative opinions illustrate norms of BPAI decision-making for the public.
The final type of BPAI opinion is the routine opinion. A routine opinion is also nonprecedential. Routine opinions are all publicly available opinions which are not designated
as precedential or informative. Since public policy favors a widespread publication of
opinions, the BPAI publishes all publicly available opinions, even if the opinions are not
binding precedent upon the BPAI.
An opinion of the BPAI made precedential by the procedures contained in this or earlier
versions of the Standard Operating Procedure 2 is considered to be binding precedent.
Other BPAI opinions which are published or otherwise disseminated are not considered
binding precedent of the BPAI. (See Ref. A, Standard Operating Procedure 2.)
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 Ref. B, the USPTO Information Quality Guidelines.)
Table 2 lists the information identified in this collection and explains how this information is
used by the public and by the USPTO:
Table 2: Needs and Uses
Form and Function
Appeal Brief

Form #
No Form
Associated

Needs and Uses
•
•

Used by the applicant to set forth the claims, issues, and
arguments on appeal to the BPAI
Used by the BPAI to aid in rendering a decision on the claims,
issues, and arguments submitted by the applicant

Reply Brief

No Form
Associated

•
•

Used by the applicant to respond to the examiner’s answer
Used by the BPAI to aid in rendering a decision on the claims,
issues, and arguments submitted by the applicant

Request for Rehearing Before the
BPAI

No Form
Associated

•

Used by the applicant to request reconsideration of a BPAI
decision
Used by the BPAI to decide whether to grant or deny a request for
reconsideration of a decision

•

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3.

Use of Information Technology

The USPTO does not collect the information for the briefs and requests through automated
or mechanical means. At this time, the USPTO does not offer electronic forms for these
items that can be accessed, completed, and submitted through the USPTO’s web-based
electronic filing system, EFS-Web. Parties may, however, file this information as
attachments through EFS-Web.
EFS-Web allows customers to file applications and associated documents through their
standard web browser and does not require any significant client-side components.
Though there are no forms offered for the briefs and requests through EFS-Web, parties
may convert these documents into portable document file (PDF) format and submit them
through EFS-Web. EFS-Web provides immediate notification that the submission was
received, automated processing of requests, and avoidance of postage or other paper
delivery costs.
Correspondence officially submitted via EFS-Web is accorded a “receipt date,” which is the
date the correspondence was received by the USPTO. After a successful submission, an
acknowledgement receipt containing the receipt date, the time the correspondence was
received at the USPTO, and a full listing of the correspondence submitted, can be
obtained from EFS-Web.
As BPAI gains more experience with the number, types, and complexities of the appeal
papers filed as attachments through EFS-Web, BPAI will continue to review the results and
any feedback to determine whether full electronic filing, offering PDF forms that can be
completed and submitted online, will be beneficial. If it is found that full electronic filing is
beneficial and BPAI decides to deploy a production system, the electronic forms, with their
associated burdens, will be submitted to OMB for review and approval.
The BPAI uses the Appeals Case Tracking System (ACTS) to track the status of the patent
appeal cases. ACTS allows the BPAI to track the status of the patent appeal cases and
also provides relevant information pertaining to these cases. This is an internal system
that manages the workflow throughout BPAI. ACTS is not designed to disseminate
information or to provide status updates to the public.
The BPAI disseminates opinions and decisions to the public through the USPTO’s website.
Precedential opinions in ex parte appeals are published on BPAI’s home page through the
USPTO’s website. In late 1997, BPAI started disseminating opinions in support of BPAI’s
final decisions appearing in issued patents, reissue applications, and reexamination
proceedings through the USPTO’s electronic Freedom of Information Act (e-FOIA)
website. Beginning in 2001, with the implementation of eighteen-month publication of
applications under the American Inventors Protection Act of 1999, the BPAI also began
posting final decisions for published applications through the e-FOIA website.

4

4.

Efforts to Identify Duplication

This information is collected only when an applicant (or a patent owner) submits
information for an ex parte appeal before the BPAI. This collection does, in part, solicit
data already available at the USPTO, in that certain copies of evidence may have been
submitted earlier as part of the patent examination process. The duplication of effort is
limited, however, and the agency considers it necessary. In order to be clear as to the
evidence, copies of evidence relied on in the appeal need to be filed with the brief. While
the copies of evidence required by the appendix may be duplicates of evidence already in
the file, the necessity of absolute clarity as to the evidence relied on outweighs the burden
on the public.

5.

Minimizing the Burden to Small Entities

The same information is required from every applicant, and this information is not available
from any other source. Pursuant to 35 U.S.C. § 41(h)(1), the USPTO provides a fifty
percent reduction in the fees charged under 35 U.S.C. §§ 41 (a) and (b) for small entity
applicants, such as independent inventors, small businesses, and nonprofit organizations.
The USPTO’s regulations concerning the payment of reduced patent fees by small entities
are at 37 CFR 1.27 and 1.28, and reduced patent fees for small entity applicants are
shown in 37 CFR 1.16, 1.17, 1.18, and 1.20. No significant burden is placed on small
entities, in that small entities must only identify themselves as such in order to obtain these
benefits. No formal statement is required. An assertion of small entity status only needs
to be filed once in an application or patent.

6.

Consequences of Less Frequent Collection

This information is collected only when an applicant (or patent owner) files an appeal brief,
reply brief, or a request for rehearing before the BPAI. This information is not collected
elsewhere. Therefore, this collection of information could not be conducted less
frequently. If this information was not collected, the BPAI could not ensure that an
applicant (or patent owner) has submitted all of the information (and the applicable fees)
necessary to initiate an appeal or to determine whether a request should be granted. If
this information was not collected, the USPTO could not comply with the requirements of
35 U.S.C. §134 and 37 CFR Part 41.

5

7.

Special Circumstances in the Conduct of Information Collection

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

8.

Consultation Outside the Agency

The 60-Day Federal Register Notice was published on June 9, 2008 (73 Fed Reg. 32559).
The public comment period ended on August 8, 2008. The USPTO received 12 public
comments in response to the Notice. The 30-Day Federal Register Notice published on
October 8, 2008 (73 Fed. Reg 58943). The information collection request was submitted
to the OMB on November 19, 2008.
The request submitted on November 19, 2008 was associated with rulemaking RIN 0651AC12. Because the information collection process had not been completed by the original
effective and applicability date of the final rule, the Office published a Federal Register
Notice (73 FR 74972 (December 10, 2008)) notifying the public that the effective and
applicability date of the final rule was not December 10, 2008, and that the effective and
applicability dates would be identified in a subsequent notice.
The Office has considered the comments thus far submitted on the final rule and is
proposing to amend the final rule to eliminate any additional burden introduced by the final
rule. As such, the Office is modifying the pending information collection request
submission (OMB Control No. 0651-00xx) to limit it to the current rule (37 CFR 41.1 et seq.
(2004)).
Comments received for the 60-Day Federal Register Notice which are considered to be
relevant to the existing 37 CFR 41.1 et seq (2004), and thus relevant to this modified
information request, are discussed below.
Comments were invited on (73 Fed. Reg. at 32561, col. 1):
(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.
(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.
Many comments received by the USPTO fell outside the scope of the requested subject
matter (information collection under the Paperwork Reduction Act). For example, many
comments were directed toward the BPAI proposed and/or final rules, the rule making
process related to the proposed and/or final rules, other BPAI rules and the rule making
6

procedures relating to their promulgation, and other patent-related issues. The following
analysis addresses only those comments related to information collection under the
Paperwork Reduction Act. 1
This section addresses, first, observations for 0651-AC12 and information required under
the rules, and second, comments and responses on a, b, c, and d listed above.
Information Required Under the Rules:
The Patent Act contemplates that an applicant taking an appeal to the Board will file a
notice of appeal (35 U.S.C. § 41(a)(6)(A)) and thereafter a brief on appeal (35 U.S.C.
§ 41(a)(6)(B)). The Patent Act further contemplates that an applicant may request oral
argument before the Board (35 U.S.C. § 41(a)(6)(B)). The Patent Act still further
contemplates that an applicant dissatisfied with final decision by the Board may request
rehearing (35 U.S.C. § 6(b)).
The statutes and rules have long required that an applicant taking an appeal file a notice of
appeal and a brief. Likewise, the statutes and rules have long required that if oral
argument is desired, the applicant must file a request for oral argument. The same is true
for a request for rehearing.
Responses to the Paperwork Reduction Act, New Collection Comment Request (73 Fed.
Reg. at 32561, col. 1)
Comments were received 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.
Comment 1: Comments were received which suggest that the rules violate the
Paperwork Reduction Act because the rules require an appeal brief to include information
(documents) which is found in other USPTO records (Intellectual Ventures at pages 5 and
17 and Boundy at pages 8-9). Specifically, the comments assert that Rule 41.37 requires
appellants to provide unnecessarily duplicative information, including affidavits,
declarations, and other evidence, as well as copies of orders and opinions that are
reasonably accessible to the USPTO.
Answer 1: The PRA requires agencies to certify that a collection of information “is
not unnecessarily duplicative of information otherwise reasonably accessible to the
1

Some comments argued that the USPTO should have included the information collection in the notice of proposed
rule making (Katznelson at page 2 and Boundy at pages 12-15). After publishing the notice of proposed rulemaking,
which, in fact, did solicit comments on the paperwork burden contained in the notice of proposed rulemaking, the
Agency received comments suggesting the benefit of further PRA analysis. 72 Fed. Reg. 41472, 41484 (Jul. 30, 2007).
In response to these comments, and due to the narrowed the scope of the final rules (which also significantly reduced
the PRA burden imposed by the rule), the USPTO again solicited comments on the PRA burden to the public. 73 Fed.
Reg. 32559 (Jun. 9, 2008). The USPTO has fully complied with its obligations under the PRA by liberally construing
its obligations under the PRA in an effort to ensure that the public has ample opportunity to comment on the burden
impact of the rule making and to maintain an inventory of the burden.

7

agency”. See 44 U.S.C. 3506(c)(3)(B). The current rules require that appeal briefs include
an evidence appendix (Rule 41.37(c)(1)(ix)) containing declarations relied on by
applicants, other evidence entered by the examiner, and a related proceedings appendix
(Rule 41.37(c)(1)(x)) containing copies of opinions/decisions in cases related to the
application on appeal. The appendix requirements of Rule 41.37 mean that in some
instances the applicant will submit duplicate information that is reasonably accessible to
the agency. The collection of the information, however, is not “unnecessarily duplicative”
for the following reasons. First, the requirement for appendices saves agency resources in
many areas. The appendices ensure that the examiner and the appeal conferees review
and respond to the proper copies of the evidence supporting applicants’ arguments on
appeal. The appendices also ensure that the Board’s administrative intake staff reviews
proper copies of the evidence supporting the arguments on appeal. For example, the
evidence appendix ensures that the Board has copies of declarations filed in earlier
applications that have not been re-filed but are relied on in the application on appeal.
Searching for and retrieving this information from earlier applications delays BPAI action
on the appeal. The evidence appendix also prevents the panel of judges from reviewing
earlier versions of declarations that were rejected for deficiencies. Secondly, the appendix
promotes judicial economy. Prior to Rule 41.37(c)(1)(ix) (2004) requiring an appendix with
the evidence, the Board received many appeals wherein the evidence relied on by the
applicant and the examiner did not correspond. In such cases, remands were necessary
to clarify the evidence supporting the arguments on appeal. In order to be clear as to the
evidence, copies of evidence relied on in the appeal need to be filed with the brief. Thus,
while the copies of evidence required by the evidence appendix may be duplicates of
evidence already in the file, the needs to save agency resources and promote judicial
economy demonstrate that the appendix is not “unnecessarily duplicative.”
Comments were received on b) the accuracy of the agency’s estimate of the burden
(including hours and cost) of the proposed collection of information.
Comment 2: Several comments were received which question the accuracy of and
the factual basis on which agency estimates were made. For example, some comments
suggest that there was no accurate factual basis, and therefore a lack of a proper of
analysis, for the estimated time for preparing an appeal brief (Schar, Ceres at pages 2-3,
Katznelson at paragraph 6, and Boundy at pages 16-25, 42-45).
Answer 2: The agency believes that it has objective factual support for its
estimates. Moreover, some of the comments support USPTO’s estimates.
Hourly Rate
Several comments suggest that the agency has no cogent basis for its estimate of a
billing rate of $310 per hour as a cost for professionals preparing the items of the
collection. Rather, the comments state hourly rates of $300 (Katznelson), $380 (Moore)
and $413 to $530 (Intellectual Ventures).
The agency used an hourly rate of $310 based on survey data reported in Report of
the Economic Survey 2007, Law Practice Management Committee, American Intellectual
Property Law Association, 241 18th Street South, Suite 700, Arlington, Virginia 22202
(“Report”). This is the hourly rate used by the agency across any information collection

8

request that includes legal professional rates. The Report gathered data from 2,733
respondents. Report, page 4. The Report defines mean (average) as "[t]he sum of all
values divided by the number of values.” Report, page 2. The Report defines "median" as
"[t]he median identifies the point in the distribution of reported values that is equal to or
larger than one-half of reported values and equal to or smaller than one-half—that is, the
mid-point." Report, page 2. The median billing rate for all attorneys was $310 per hour.
Report, page 7. The agency recognizes that the $310 per hour figure is a median. The
agency believes the median figure is an appropriate figure upon which to base estimates
given that attorneys charging above the median and below the median would be expected
to participate in the appeal process. Accordingly, the billing rate of $310 per hour (73 Fed.
Reg. 32560, col. 3) is believed to be supported by objective survey data. In the notice, the
agency said the hourly rate for associate attorneys was $310 (id.). However, as the
Report reveals, the median billing rate for associate attorneys is $245 per hour, while the
median billing rate for private firm partners is $380 per hour. The reference to associate
attorneys will continue to be used as the estimate, as it is based on the median $310 per
hour rate revealed in the survey. The agency will no longer reference this as an associate
rate, to avoid any confusion.
Modification Note: the agency has recently updated the hourly rate used across
agency information collections for attorney rates from $310 to $325 to reflect the most
recent survey data reported in Report of the Economic Survey 2009, Law Practice
Management Committee, American Intellectual Property Law Association (AIPLA 2009
Report page 8). The tables and estimates in this request reflect the $15 increase. The
reasoning behind the use of the rate remains as it did at the time of the original response
to comments concerning the rate determination.
Preparation Time
Oral Hearing
A comment was received that questioned the lack of burden estimation regarding
the time to prepare for an oral hearing. The agency does not consider the time for
preparation of the oral hearing to be a burden under the PRA in that there would be no
collection of new information at the oral hearing. Since the oral hearing is limited to
information already submitted and collected, it is essentially an opportunity for clarification
of the information already collected or received. The agency has included in the total
burden the request for the oral hearing but not the time to prepare for an oral hearing.
Appeal Briefs
Several comments were received which question the accuracy of the agency's
estimate of time to prepare an appeal brief. For example, comments suggested time
estimates for the preparation of the appeal brief of 15 hours (Hayden), 30 and 110.5 hours
associate time and 4.5 hours and 23.9 hours partner time (Intellectual Ventures at page
41), 30 hours (Boundy at page 85 of Belzer exhibit), 45 hours (Moore), and 71 hours
(Heimlich).
The agency estimate is consistent with data in the Report of the Economic Survey
2007. According to the Report, the median (midpoint) billing for an appeal to the Board
without oral argument was $4,000 and the mean (average) without oral argument was

9

$4,899. Report, pages 21 and I-81. Further according to the Report, the median
(midpoint) billing for an appeal to the Board with oral argument was $6,500 and the mean
(average) was $8,382.
An appeal brief must be prepared whether or not oral argument is requested or
takes place. Using the higher cost (mean) and the median billing rate (and making a
conservative assumption that all time is spent on preparing an appeal brief), the time for
preparing an appeal brief would be 15.8 hours ($4,899 divided by $310/hr). Because
some appeals briefs are more complicated than others and because billing rates differ
throughout the United States, the agency determined that a conservative estimate could
be as high as about double the 15.8 hours value calculated from data in the Report, and
therefore determined to use an estimate of 30 hours per appeal brief.
One commenter suggests 15 hours, which is close to the calculated 15.8 hours
based on data in the Report. Other commenters have suggested a higher number of
hours. While the experience of the other commenters has not been ignored, what is
unknown to the agency is whether the estimates of the other commenters are based on
"complicated" subject matter or unusual appeal difficulty compared to a typical appeal.
Several comments stated that 30 hours for the preparation of an appeal brief under
the proposed rules was too low but did not proffer an estimate (Hinnen, Suiter Swantz at
page 2, Ceres at last page). While 30 hours may be low in some cases, data in the Report
suggest that 30 hours will be more than sufficient in most cases.
Modification Note: the agency has recently updated the rates to reflect the most
recent survey data reported in Report of the Economic Survey 2009, Law Practice
Management Committee, American Intellectual Property Law Association. The tables and
estimates in this request reflect this increase. The reasoning behind the use of the rate
remains as it did at the time of the original response to comments concerning the rate
determination.
According to the AIPLA 2009 Report, the median (midpoint) billing for an appeal to
the Board without oral argument is now $4,500 and the mean (average) without oral
argument is now $5,547. (AIPLA 2009 Report, pages 8 and I-119). Further, according to
the Report, the median (midpoint) billing for an appeal to the Board with oral argument is
now $8,000 and the mean (average) is now $9,802.
Using the higher cost (mean) and the median billing rate from the AIPLA 2009
Report (and making a conservative assumption that all time is spent on preparing an
appeal brief), the time for preparing an appeal brief is now estimated to be 17.1 hours
($5,547 divided by $325/hr). Because some appeals briefs are more complicated than
others and because billing rates differ throughout the United States, the agency
determined that a conservative estimate could be as high as about double the 17.1 hours
value calculated from data in the Report, and therefore determined to use an estimate of
34 hours per appeal brief.

Reply Briefs
Several comments were received on the accuracy of the estimate for the time to
prepare a reply brief. Comments suggested time estimates for the preparation of a reply
brief of 15 hours (Hayden), 30 hours (Moore), and 55 hours (Heimlich). The comment

10

suggesting 55 hours for a reply brief stated that examiner’s answers almost always include
a new ground of rejection or new arguments or both.
A reply brief is not a document wherein an applicant reiterates all of the arguments
from the appeal brief. Rather, a reply brief is optional and is for the purpose of specifically
addressing statements made by the examiner in the Answer with which the applicant
disagrees and which have not already been addressed in the applicant’s appeal brief.
There is no need to comment on statements made by the examiner with which the
applicant agrees. Rather, comments are limited to those statements made by the examiner
with which the applicant disagrees. Using the higher cost (mean) and the median billing
rate from the Report, the combined time for preparing both an appeal brief and a reply brief
would be 15.8 hours ($4,899 divided by $310/hr). Assuming that roughly twice as much
time is spent by an applicant on the initial appeal brief than on the reply brief, the Report
suggests that 5 hours for preparation of a reply brief will be more than sufficient in most
cases.
Modification Note: the agency has recently updated the rates to reflect the most
recent survey data reported in Report of the Economic Survey 2009, Law Practice
Management Committee, American Intellectual Property Law Association. The tables and
estimates in this request reflect this increase. The reasoning behind the use of the rate
remains as it did at the time of the original response to comments concerning the rate
determination.
Using the higher cost (mean) and the median billing rate from the 2009 Report, the
combined time for preparing both an appeal brief and a reply brief would now be 17.1
hours ($5,547, divided by $325/hr). Accordingly, the estimate for preparing an appeal brief
is now 34 hours. Despite this increase and based on the assumption above, the Office still
maintains that 5 hours for the preparation of a reply brief will be more than sufficient in
most cases.

Requests for Rehearing
A few comments were received questioning the accuracy of the estimate for the
time to prepare a request for rehearing. Comments suggested time estimates for the
preparation of a request for rehearing of 5 hours (Heimlich) and 15 hours (Hayden). The
comment which suggested 15 hours stated that the commenter did not have experience
with requests for rehearing but estimated that it would be on par with the time to prepare a
brief (about 15 hours). A request for rehearing is not a document wherein an applicant
reargues the appeal. Rather, a request for rehearing should be a document which has (1)
as its principal focus pointing out precisely what points were overlooked or
misapprehended by the Board and (2) applicant’s response to those points. Thus, the
focus of a request for rehearing is very narrow. As a result, the agency agrees with the
Heimlich comment that the estimated time of 5 hours to prepare a request for rehearing is
accurate.

No comments received provided direct input on c) Ways to enhance the quality,
utility, and clarity of the information to be collected.

11

Comments (Boundy, Katznelson) were received concerning the agency information quality
guidelines and the quality of information associated with the agency burden estimates;
however these did not provide specific ways to enhance the information to be collected.
Comments were received on 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 (Boundy at pages 32-34) were received questioning why the agency did not
adopt suggestions to minimize the burden of the collection of information which were
received in public comments on the notice of proposed rule making (72 Fed. Reg. 41,472
(Jul. 30, 2007)). Since this modified submission is limited to the current rules, these
comments are no longer relevant. Further, the suggestions referred to in these comments
did not minimize or reduce the burden of the collection of information on respondents.

9.

Payment or Gifts to Respondents

This information collection does not involve a payment or gift to any respondent.
Response to this information collection is necessary to initiate appeal proceedings and to
request a rehearing before the BPAI.

10.

Assurance of Confidentiality

Confidentiality of records involved in appeal proceedings is governed by statute (35 U.S.C.
§ 122) and regulation (37 CFR 1.11 and 1.14). The BPAI publishes certain opinions and
decisions concerning decided cases. Public availability to records involved in terminated
and pending cases varies, depending upon statute and regulation.
To further define the boundaries of the confidentiality of patent applications in light of the
eighteen-month publication of patent applications introduced under the American Inventors
Protection Act of 1999, the USPTO amended 37 CFR 1.14 to only maintain the
confidentiality of applications that have not been published as a U.S. patent application. In
the amended 37 CFR 1.14, the public can obtain status information about the application,
such as the application “numerical identifier” and whether the application is pending,
abandoned, or patented or whether the application has been published under 35 U.S.C. §
122(b). The information can be supplied to the public under certain conditions. The public
can also receive copies of an application-as-filed and the file wrapper, as long as it meets
certain criteria. BPAI decisions relating to such applications can be published.

11.

Justification for Sensitive Questions

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

12

12.

Estimate of Hour and Cost Burden to Respondents

Table 5 calculates the anticipated burden hours and costs of this information collection to
the public, based on the following factors:
•

Respondent Calculation Factors
The USPTO estimates that it will receive approximately 28,215 responses per year for this
collection.

•

Burden Hour Calculation Factors
The USPTO estimates that it takes the public approximately 5 to 34 hours to complete this
information, depending on the situation. This includes the time to gather the necessary
information, prepare the brief or request, and submit them to the USPTO.

•

Cost Burden Calculation Factors
The professional rate of $325 per hour used in this modified submission to calculate
respondent cost burden is the median rate for attorneys in private firms as published in the
2009 report of the Committee on Economics of Legal Practice of the American Intellectual
Property Law Association (AIPLA). This report summarized the results of a survey with
data on hourly billing rates. This is a fully-loaded rate.

Table 3: Burden Hour/Burden Cost to Respondents
Item

Hours
(a)

Responses
(yr)
(b)

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

Rate
($/hr)
(d)

Total Cost
($/hr)
(e)
(c) x (d)

Appeal Brief

34 hours

23,145

786,930

$325.00

$255,752,250.00

Reply Brief

5 hours

4,947

24,735

$325.00

$8,038,875 .00

Request for Rehearing Before the BPAI

5 hours

123

615

$325.00

$199,875 .00

- - - -

28,215

812,280

- - - -

$263,991,000.00

Total

13.

Total Annualized Cost Burden

There are postage costs and filing fees associated with this information collection. This
collection does not, however, have any capital start-up, operating, maintenance, or
recordkeeping costs.
Parties incur postage costs when submitting the various papers to the USPTO by mail.
The USPTO expects these items to be mailed by Express Mail using the U.S. Postal
Service’s flat rate envelope, which can accommodate varying submission weights. The
cost of the flat rate envelope is $17.50. The USPTO estimates 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 28,215 submissions, the USPTO estimates that the number of
papers submitted to the USPTO by Express Mail is 14,148.

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Table 4 shows the annual postage/non-hour cost burden to respondents.
Table 4: Postage Costs – Non-hour Cost Burden
Item

Responses
(yr)
(a)

Postage Costs
(b)

Total Cost
(yr)
(a) x (b)

Appeal Brief

11,573

$17.50

$ 202,528.00

Reply Brief

2,513

$17.50

$43,978 .00

62

$17.50

$1,085 .00

14,148

- - - - -

$247,591.00

Request for Rehearing Before the BPAI
Total

Therefore, the USPTO estimates that the total postage costs for this collection will
be $247,591.
There is also annual non-hour cost burden in the way of filing fees for the briefs. The reply
brief 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
fees for this collection will be $11,200,140.
The minimum total annual filing fee/non-hour cost burden to respondents is outlined in
Table 5 below:
Table 5: Filing Fees – Non-hour Cost Burden
Item

Responses
(yr)
(a)

Appeal Brief

Filing Fees
(b)

Total Cost
(yr)
(a x b)

18,337

$540.00

$9,901,980.00

Appeal Brief (small entity)

4,808

$270.00

$1,298,160.00

Reply Brief

4,947

$0.00

$0.00

123

$0.00

$0.00

28,215

-----------------------------

$11,200,140

Request for Rehearing Before the BPAI
Totals

The USPTO estimates that the total annual (non-hour) cost burden for this
collection, in the form of postage costs and filing fees is $11,447,731 per year.

14.

Annual Cost to the Federal Government

The USPTO expects that the items in this collection will be processed by USPTO staff in
the GS-9 and GS-11 grades. The appeal briefs are processed by a patent appeals
specialist and a paralegal specialist. The time that it takes to process the appeal brief is
broken down into the time that it takes each staff member to complete his or her part of the
process. Each of these items is then multiplied by the number of responses to obtain the

14

burden hours for each staff position. The burden hours in turn are multiplied by the hourly
rate for each staff position to obtain the total processing burden for that particular item.
The USPTO estimates that it takes approximately 18 minutes (0.3 hours) for a patent
appeal specialist (GS-9, step 5) and a paralegal specialist (GS-11, step 5) to process the
appeal brief. The current hourly rates for the GS-9, step 5 and the GS-11, step 5 are
$27.37 and $33.12 respectively, according to the U.S. Office of Personnel’s Management’s
(OPM’s) wage chart, including locality pay for the Washington, DC area. When 30% is
added to account for a fully loaded hourly rate (benefits and overhead), the cost per hour
for a GS-9, step 5 is $35.58 ($27.37 + $8.21). The cost per hour for a GS-11, step 5 is
$43.06 ($33.12 + $9.94)
The USPTO expects the reply brief and the request for rehearing before the BPAI to be
processed by a GS-11, step 5 and that it takes approximately 6 minutes each (0.1 hours)
to process them. The current hourly rate for a GS-11, step 5 is $33.12 and the fully loaded
hourly rate is $43.06.
Table 6 calculates the processing hours and burden costs of this information collection to
the Federal Government:
Table 6: Burden Hour/Burden Cost to the Federal Government
Item

Hours
(a)

Responses
(yr)
(b)

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

Rate
($/hr)
(d)

Total Cost
($/hr)
(e)
(c) x (d)

Appeal Brief
Patent Appeal Specialist
Paralegal Specialist

0.30
0.30

23,145

6,944
6,944

$35.58
$43.06

$247,068.00
$299,009.00

Reply Brief

0.10

4,947

495

$43.06

$21,315.00

Request for Rehearing Before the BPAI

0.10

123

12

$43.06

$517.00

28,215

14,395

- - - - -

$567,909.00

Total

15.

- - - - -

Reason for Change in Burden

The USPTO is requesting that OMB add this information collection to the agency’s
information collection inventory.
The USPTO estimates that this collection will have a total of 28,215 responses, 812,280
burden hours, and $263,991,000, in respondent costs associated with it. Therefore, the
USPTO estimates that a total of 28,215 responses and 812,280 burden hours will be
added to the USPTO’s current information collection inventory per year as a
program change.
This new information collection also has annualized costs (postage and filing fees)
associated with it. The USPTO estimates that this collection will have a total of $247,591

15

in postage costs and $11,200,140 in filing fees. Therefore, the USPTO estimates that a
total of $11,447,731 will be added to the USPTO’s current information collection
inventory per year as a program change.
In Summary:
• Program change:
• Program change:
• Program change:
• Program change:
• Program change:
16.

addition of 28,215 responses
addition of 812,280 burden hours
addition of $263,991,000 in respondent costs
addition of $247,591 in postage costs
addition of $11,200,140 in filing fees

Project Schedule

The USPTO does not intend to publish this information for statistical use.
17.

Display of Expiration Date of OMB Approval

There are no forms associated with the briefs and requests in this submission. There are,
however, forms associated with the notice of appeal and request for oral hearing before
the BPAI. These items are currently in OMB Control Number 0651-0031 and will be
transferred out of that collection into this new one once both collections have been
reviewed and approved. These forms will display both the OMB Control Number and the
expiration date of the collection.
18.

Exception to the Certificate Statement

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

COLLECTIONS OF INFORMATION EMPLOYING STATISTICAL METHODS

This collection of information does not employ statistical methods.

LIST OF REFERENCES
A.
B.

BPAI Standard Operating Procedure 2 (Revision 7) for the “Publication of Opinions and
Binding Precedent,” effective March 23, 2008
Information Quality Guidelines from Section 515 of Public Law 106-554, Treasury and
General Government Appropriations Act for Fiscal Year 2001

16