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pdfSUPPORTING STATEMENT
United States Patent and Trademark Office
Patent Reexaminations
OMB CONTROL NUMBER 0651-00XX
(December 2009)
A.
Justification
1.
Necessity of Information Collection
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 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, and are now being covered
in an effort to more accurately gauge the burden on the public.
The Patent Owner’s 37 CFR 1.530 Statement allows patent owners to respond to an order
for ex parte reexamination with a statement pointing out why the patent claims are believed
to be patentable, considering the cited prior art patents or printed publications alone or in
any reasonable combination. The Statement also allows patent owners to propose
narrowing amendments to the patent claims in response to an order for ex parte
reexamination. The Third Party Requester’s 37 CFR 1.535 Reply allows third-party
requesters to respond to the Patent Owner’s 37 CFR 1.530 Statement. The Reply may
include additional prior art patents and printed publications and may raise any issue
appropriate for ex parte reexamination.
Amendments in Ex Parte or Inter Partes Reexaminations allow patent owners to respond to
Office actions by pointing out why the patent claims are believed to be patentable.
Amendments also allow patent owners to propose narrowing amendments to the patent
claims. The Third Party Requester’s 37 CFR 1.947 Comments in Inter Partes
Reexamination allow third-party requesters during the examination stage of an inter partes
reexamination to file written comments on any patent owner response to an Office action.
The Comments must be directed to points and issues covered by the Office action and/or
the patent owner's response.
Responses to Final Rejections in Ex Parte Reexaminations allow patent owners to respond
to final rejections in ex parte reexaminations by pointing out why the patent claims are
believed to be patentable. Responses also allow patent owners to propose narrowing
amendments to the patent claims.
The Patent Owner’s 37 CFR 1.951 Response in Inter Partes Reexaminations allows patent
owners to respond to Actions Closing Prosecution in inter partes reexaminations by
pointing out why the patent claims are believed to be patentable. Responses also allow
patent owners to propose narrowing amendments to the patent claims. The Third Party
Requester’s 37 CFR 1.951 Comments in Inter Partes Reexamination allow third-party
requesters in an inter partes reexaminations to file written comments on any patent owner
response to an Action Closing Prosecution. The Comments must be directed to the patent
owner's response to an Action Closing Prosecution and/or the issues raised in the Action
Closing Prosecution.
2
Table 1 provides the specific statutes and regulations requiring the USPTO to collect the
information discussed above:
Table 1: Information Requirements for Patent Reexaminations
Requirement
Statute
Rule
Request for Ex Parte Reexamination
35 U.S.C. 302
37 CFR 1.510-1.570
Request for Inter Partes Reexamination
35 U.S.C. 311
37 CFR 1.902-1.997
Petition to Review Refusal to Grant Ex Parte
Reexamination
35 U.S.C. 303
37 CFR 1.181 and 1.515(c)
Petition to Review Refusal to Grant Inter
Partes Reexamination
35 U.S.C. 312
37 CFR 1.181 and 1.927
Patent Owner’s 37 CFR 1.530 Statement
35 U.S.C. 304
37 CFR 1.530
Third Party Requester’s 37 CFR 1.535 Reply
35 U.S.C. 304
37 CFR 1.535
Amendment in Ex Parte or Inter Partes
Reexamination
35 U.S.C. 132, 305, and 314
37 CFR 1.111, 1.530, 1.941, and
1.943
Third Party Requester’s 37 CFR 1.947
Comments in Inter Partes Reexamination
35 U.S.C. 314
37 CFR 1.947
Response to Final Rejection in Ex Parte
Reexamination
35 U.S.C. 132 and 305
37 CFR 1.116 and 1.530
Patent Owner’s 37 CFR 1.951 Response in
Inter Partes Reexamination
35 U.S.C. 132 and 314
37 CFR 1.116 and 1.951
Third Party Requester’s 37 CFR 1.951
Comments in Inter Partes Reexamination
35 U.S.C. 314
37 CFR 1.951
Petition to Request Extension of Time in Ex
Parte or Inter Partes Reexamination
35 U.S.C. 304-305 and 314
37 CFR 1.550(c) and 1.956
2.
Needs and Uses
The public uses this information collection to request reexamination proceedings and to
ensure that the associated fees and documentation are submitted to the USPTO.
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.
Table 2 outlines how this collection of information is used by the public and the USPTO:
3
Table 2: Needs and Uses of Information Collected for Patent Reexaminations
Form and Function
Form #
Needs and Uses
Request for Ex Parte
Reexamination Transmittal
Form
PTO/SB/57
C
C
Request for Ex Parte
Reexamination
No form
C
C
C
C
Request for Inter Partes
Reexamination Transmittal
Form
PTO/SB/58
C
C
Request for Inter Partes
Reexamination
No form
C
C
C
C
Petition to Review Refusal to
Grant Ex Parte
Reexamination
No form
Petition to Review Refusal to
Grant Inter Partes
Reexamination
No form
Patent Owner’s 37 CFR
1.530 Statement
No form
C
C
C
C
C
C
C
C
Third Party Requester’s 37
CFR 1.535 Reply
No form
C
C
•
•
Used by the requester (patent owner or third-party) of an ex parte
reexamination as a checklist to ensure compliance with the
requirements of the statutes and rules for ex parte reexaminations.
Used by the USPTO to ensure compliance by the requester (patent
owner or third-party) with the requirements of the statutes and rules for
ex parte reexaminations.
Used by the requester (patent owner or third-party) to provide a
statement identifying each substantial new question of patentability.
Used by the requester (patent owner or third-party) to provide an
identification of every claim for which reexamination is requested, and
a detailed explanation of the pertinency and manner of applying the
cited art to every claim for which reexamination is requested.
Used by the USPTO to evaluate whether a substantial new question of
patentability has been raised by the requester (patent owner or thirdparty).
Used by the USPTO to determine how and whether the patent claims
are to be confirmed, amended, or canceled.
Used by a third-party requester of an inter partes reexamination as a
checklist to ensure compliance with the requirements of the statutes
and rules for inter partes reexamination.
Used by the USPTO to ensure compliance by the third-party requester
with the requirements of the statutes and rules for inter partes
reexamination.
Used by the third-party requester to provide a statement identifying
each substantial new question of patentability.
Used by the third-party requester to provide an identification of every
claim for which reexamination is requested, and a detailed explanation
of the pertinency and manner of applying the cited art to every claim
for which reexamination is requested.
Used by the USPTO to evaluate whether a substantial new question of
patentability has been raised by the third-party requester.
Used by the USPTO to determine how and whether the patent claims
are to be confirmed, amended, or canceled.
Used by the requester (patent owner or third-party) to request review
by the Director of a decision refusing ex parte reexamination.
Used by the USPTO to determine whether the decision to refuse ex
parte reexamination should be upheld.
Used by the third-party to request review by the Director of a decision
refusing inter partes reexamination.
Used by the USPTO to determine whether the decision to refuse inter
partes reexamination should be upheld.
Used by the patent owner in response to an order granting ex parte
reexamination to point out why the patent claims are believed to be
patentable.
Used by the patent owner in response to an order granting ex parte
reexamination to propose that specified changes be made to the
patent specification, including the claims, or to the drawings.
Used by the USPTO to determine whether the patent claims are
patentable.
Used by the USPTO to enter, if in compliance with the rules, the
specified changes for purposes of examination.
Used by the third-party requester to comment on Patent Owner’s 37
CFR 1.530 Statement.
Used by the third-party requester to raise any issue appropriate for
reexamination.
Used by the third-party requester to identify additional prior art patents
and printed publications.
Used by the USPTO to determine whether the patent claims are
patentable.
4
Amendment in Ex Parte or
Inter Partes Reexamination
No form
•
•
•
•
Third Party Requester’s 37
CFR 1.947 Comments in
Inter Partes Reexamination
No form
Response to Final Rejection
in Ex Parte Reexamination
No form
C
C
•
•
•
•
Patent Owner’s 37 CFR
1.951 Response in Inter
Partes Reexamination
No form
•
•
•
•
Third Party Requester’s 37
CFR 1.951 Comments in
Inter Partes Reexamination
No form
•
•
Petition to Request Extension
of Time in Ex Parte or Inter
Partes Reexamination
3.
No form
C
C
Used by the patent owner in response to an Office action to point out
why the patent claims are believed to be patentable.
Used by the patent owner in response to an Office action to propose
that specified changes be made to the patent specification, including
the claims, or to the drawings.
Used by the USPTO to determine whether the patent claims are
patentable.
Used by the USPTO to enter, if in compliance with the rules, the
specified changes for purposes of examination.
Used by the third-party requester to comment on issues raised by an
Office action or by patent owner’s response to the Office action.
Used by the USPTO to determine whether the patent claims are
patentable.
Used by the patent owner in response to a final Office action to point
out why the patent claims are believed to be patentable.
Used by the patent owner in response to a final Office action to
propose that specified changes be made to the patent specification,
including the claims, or to the drawings.
Used by the USPTO to determine whether the patent claims are
patentable.
Used by the USPTO to determine whether the specified changes will
be entered for purposes of examination.
Used by the patent owner in response to an Action Closing
Prosecution to point out why the patent claims are believed to be
patentable.
Used by the patent owner in response to an Action Closing
Prosecution to propose that specified changes be made to the patent
specification, including the claims, or to the drawings.
Used by the USPTO to determine whether the patent claims are
patentable.
Used by the USPTO to determine whether the specified changes will
be entered for purposes of examination.
Used by the third-party requester to comment on issues raised by an
Action Closing Prosecution or by patent owner’s response to the
Action Closing Prosecution.
Used by the USPTO to determine whether the patent claims are
patentable.
Used by the public to request additional time to take action in a
reexamination proceeding.
Used by the USPTO to determine whether the cause is sufficient to
grant additional time to act in a reexamination proceeding.
Use of Information Technology
EFS-Web is a web-based document submission system that allows customers to file
requests for reexamination and associated documents through their standard web browser
without downloading special software, changing their documentation preparation tools, or
altering their workflow processes. Customers may create their requests for reexamination
requests and associated documents using the tools and processes that they already use
and then convert those documents into standard PDF files that are submitted through EFSWeb to the USPTO. The fillable PDF forms that can be submitted through EFS-Web may
be downloaded from the USPTO Web site and do not require special PDF creation
software.
Registered and unregistered users can file documents securely through EFS-Web, which is
hosted on secure servers. The documents of registered users are protected using a Public
Key Infrastructure (PKI) system and digital certificates which provide authentication and
5
encryption security. For filers who are not registered, the documents are submitted to EFSWeb using Transport Layer Security (TLS) or Secure Socket Layer (SSL) protocol.
EFS-Web offers many benefits to filers, including immediate notification that a submission
has been received by the USPTO, automated processing of requests, and avoidance of
postage and other paper delivery costs. After the document has been successfully
submitted through EFS-Web, customers will receive an acknowledgement receipt that lists
the time and date stamp stating when the document was submitted to the USPTO, an
application number, a confirmation number, and other critical information, such as the EFS
ID, a listing of the files and documents associated with the submission, and page counts for
the files and documents. This receipt is the legal equivalent of a postcard in the postcard
receipt practice used for patent application documents that are filed in paper. The USPTO
recommends that customers print the electronic acknowledgement receipt to keep with
their records.
There are many additional benefits to filing through EFS-Web that were not available
previously. Users can access EFS-Web from any computer with an Internet connection.
Since EFS-Web is hosted on the USPTO’s secure servers and not on the individual’s
personal computer, USPTO staff can update EFS-Web without requiring any action from
the user. Customers can submit fee payments and other requests in real time. The PDF
forms can be passed around to multiple users for collaboration.
EFS-Web integrates with the Patent Application Information Retrieval (PAIR) system, the
USPTO’s online database that provides trusted filers with controlled access to nonpublished patent application information. PAIR uses digital certificates to permit only
authorized individuals to access information about pending patent applications and to
maintain the confidentiality and integrity of the information as it is transmitted over the
Internet. Information for granted patents, published applications, and reexamination
proceedings is available to the general public. PAIR is available through the USPTO Web
site.
4.
Efforts to Identify Duplication
This information is collected only when a respondent files a request related to patent
reexamination. This information is not collected elsewhere and does not result in a
duplication of effort.
5.
Minimizing Burden to Small Entities
The information in this collection is necessary in order to process requests related to patent
reexaminations. The same information is required from every requester and is not
available from any other source.
6
6.
Consequences of Less Frequent Collection
This information is collected only when the public submits an item related to a request for
reexamination and is not found elsewhere. If the information were not collected, the
USPTO would not be able to comply with the statutes and regulations governing
reexaminations. This information could not be collected less frequently.
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 August 10, 2009 (74 Fed.
Reg. 39916). The comment period ended on October 9, 2009. One commenter responded
to the August 10, 2009 60-Day Notice. The USPTO’s response to the commenter follows:
Comment: The commenter indicated that the USPTO has underestimated both the time
required to prepare the forms for requesting ex parte and inter partes reexamination (forms
PTO/SB/57 and PTO/SB/58, respectively), as well as the time required to prepare the
actual requests for ex parte and inter partes reexamination.
Response: Subsequent to publication of the 60-Day Notice on August 10, 2009, the
USPTO was able to analyze survey data reported in Report of the Economic Survey 2009,
Law Practice Management Committee, American Intellectual Property Law Association,
241 18th Street South, Suite 700, Arlington, Virginia 22202 (“the 2009 Report”). Based on
the 2009 Report, the USPTO revised its estimates for the amount of time required to
complete many of the information requirements covered by the present information
collection, including the time required to prepare the actual requests for ex parte and inter
partes reexamination, as shown in greater detail at Table 3 below.
In contrast to the requests for ex parte and inter partes reexamination, which contain the
reexamination requester’s substantive analysis, forms PTO/SB/57 and PTO/SB/58 play the
role of a checklist for the requester to ensure compliance with the requirements of the
statutes and rules for ex parte and inter partes reexaminations. Accordingly, the USPTO
believes that its original estimate of 0.3 hours fairly represents the time required to
complete either form PTO/SB/57 or PTO/SB/58.
The USPTO has long-standing relationships with groups from whom reexamination data 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 meetings and considered in developing proposals for information
collection requirements.
7
9.
Payment or Gifts to Respondents
This information collection does not involve a payment or gift to any respondent.
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 entire file of an ex parte or inter partes reexamination proceeding is
available to the public.
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 public,
based on the following factors:
!
Respondent Calculation Factors
The USPTO estimates that it will receive approximately 5,124 responses per year as
outlined in the table below.
!
Burden Hour Calculation Factors
The USPTO estimates that it will take the public from 18 minutes (0.30 hours) to 148
hours to gather the necessary information, prepare the appropriate form or other
documents, and submit the information to the USPTO.
!
Cost Burden Calculation Factors
In 2009 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 $325 per hour used in this
submission is the median rate for attorneys in private firms as published in that
report. The USPTO expects that the information in this collection will be prepared
by attorneys. This is a fully-loaded hourly rate.
8
Table 3: Burden Hour/Burden Cost to Respondents for Patent Reexaminations
Item
Hours
(a)
Responses
(yr)
(b)
Burden
(hrs/yr)
(c)
(a x b)
Rate
($/hr)
(d)
Total Cost
($/yr)
(e)
(c x d)
Request for Ex Parte Reexamination
Transmittal Form (PTO/SB/57)
0.30
845
254
$325.00
$82,550.00
Request for Ex Parte Reexamination
44.00
845
37,180
$325.00
$12,083,500.00
0.30
380
114
$325.00
$37,050.00
148.00
380
56,240
$325.00
$18,278,000.00
Petition to Review Refusal to Grant Ex
Parte Reexamination
16.50
25
413
$325.00
$134,225.00
Petition to Review Refusal to Grant
Inter Partes Reexamination
41.00
9
369
$325.00
$119,925.00
Patent Owner’s 37 CFR 1.530
Statement
8.00
105
840
$325.00
$273,000.00
Third Party Requester’s 37 CFR 1.535
Reply
8.00
60
480
$325.00
$156,000.00
Amendment in Ex Parte or Inter
Partes Reexamination
33.00
1,165
38,445
$325.00
$12,494,625.00
Third Party Requester’s 37 CFR 1.947
Comments in Inter Partes
Reexamination
41.00
300
12,300
$325.00
$3,997,500.00
Response to Final Rejection in Ex
Parte Reexamination
17.00
320
5,440
$325.00
$1,768,000.00
Patent Owner’s 37 CFR 1.951
Response in Inter Partes
Reexamination
41.00
120
4,920
$325.00
$1,599,000.00
Third Party Requester’s 37 CFR 1.951
Comments in Inter Partes
Reexamination
41.00
95
3,895
$325.00
$1,265,875.00
Petition to Request Extension of Time
in Ex Parte or Inter Partes
Reexamination
0.50
475
238
$325.00
$77,350.00
--------
5,124
161,128
---------
$52,366,600.00
Request for Inter Partes
Reexamination Transmittal Form
(PTO/SB/58)
Request for Inter Partes
Reexamination
Totals
The USPTO estimates that approximately 50% of the total responses for this collection will
be submitted electronically via EFS-Web.
13.
Total Annualized (Non-hour) Cost Burden
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.
9
There are filing fees associated with requests for reexamination and for the petition to
request an extension of time in a reexamination. The USPTO estimates that the total fees
associated with this collection will be approximately $5,568,400 per year, as calculated in
Table 4 below.
Table 4: Filing Fees for Respondents for Patent Reexaminations
Item
Estimated
annual
responses
Fee Amount
Estimated
annual
filing costs
Request for Ex Parte Reexamination Transmittal Form (PTO/SB/57)
845
$2,520.00
$2,129,400.00
Request for Ex Parte Reexamination
845
$0.00
$0.00
Request for Inter Partes Reexamination Transmittal Form
(PTO/SB/58)
380
$8,800.00
$3,344,000.00
Request for Inter Partes Reexamination
380
$0.00
$0.00
25
$0.00
$0.00
9
$0.00
$0.00
105
$0.00
$0.00
60
$0.00
$0.00
1,165
$0.00
$0.00
Third Party Requester’s 37 CFR 1.947 Comments in Inter Partes
Reexamination
300
$0.00
$0.00
Response to Final Rejection in Ex Parte Reexamination
320
$0.00
$0.00
Patent Owner’s 37 CFR 1.951 Response in Inter Partes
Reexamination
120
$0.00
$0.00
Third Party Requester’s 37 CFR 1.951 Comments in Inter Partes
Reexamination
95
$0.00
$0.00
Petition to Request Extension of Time in Ex Parte or Inter Partes
Reexamination
475
$200.00
$95,000.00
Petition to Review Refusal to Grant Ex Parte Reexamination
Petition to Review Refusal to Grant 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
Totals
5,124
......
$5,568,400.00
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 average postage cost for a mailed submission will be 44 cents for
Petitions to Request Extension of Time and $4.95 for all other mailed submissions. (The
documentation for requests for ex parte or inter partes reexamination will typically be
mailed to the USPTO with the appropriate transmittal form.) The USPTO estimates that the
total postage cost associated with this collection will be approximately $8,565 per year, as
calculated in Table 5 below.
10
Table 5: Postage Costs for Respondents for Patent Reexaminations
Item
Estimated
annual mailed
responses
Estimated
postage
amount
Estimated
annual postage
costs
Request for Ex Parte Reexamination Transmittal Form (PTO/SB/57)
422
$4.95
$2,089.00
Request for Ex Parte Reexamination (submitted with transmittal form
above)
422
$0.00
$0.00
Request for Inter Partes Reexamination Transmittal Form
(PTO/SB/58)
190
$4.95
$941.00
Request for Inter Partes Reexamination (submitted with transmittal
form above)
190
$0.00
$0.00
12
$4.95
$59.00
4
$4.95
$20.00
Patent Owner’s 37 CFR 1.530 Statement
52
$4.95
$257.00
Third Party Requester’s 37 CFR 1.535 Reply
30
$4.95
$149.00
Amendment in Ex Parte or Inter Partes Reexamination
582
$4.95
$2,881.00
Third Party Requester’s 37 CFR 1.947 Comments in Inter Partes
Reexamination
150
$4.95
$743.00
Response to Final Rejection in Ex Parte Reexamination
160
$4.95
$792.00
Patent Owner’s 37 CFR 1.951 Response in Inter Partes
Reexamination
60
$4.95
$297.00
Third Party Requester’s 37 CFR 1.951 Comments in Inter Partes
Reexamination
47
$4.95
$233.00
Petition to Request Extension of Time in Ex Parte or Inter Partes
Reexamination
237
$0.44
$104.00
Petition to Review Refusal to Grant Ex Parte Reexamination
Petition to Review Refusal to Grant Inter Partes Reexamination
Totals
2,558
......
$8,565.00
When submitting the information in this collection to the USPTO electronically, the
customer 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 annual (non-hour) respondent cost burden for this collection in the form of
filing fees ($5,568,400), postage costs ($8,565), and recordkeeping costs ($300) is
approximately $5,577,265 per year.
11
14.
Annual Cost to Federal Government
The USPTO estimates that it takes USPTO staff approximately 15 minutes (0.25 hours) to
4 hours to process the information in this collection, depending on the type and amount of
information submitted. The information in this collection is processed by GS-7, step 1 and
GS-11, step 1 employees at the hourly rates of $19.75 and $29.22. When 30% is added to
account for a fully-loaded hourly rate (benefits and overhead), the hourly rate for
information processed by GS-7 employees is $25.68 ($19.75 + $5.93) and by GS-11
employees is $37.99 ($29.22 + $8.77).
Table 6 calculates the burden hours and costs to the Federal Government for processing
this information collection:
Table 6: Burden Hour/Burden Cost to the Federal Government for Patent Reexaminations
Item
Hours
(a)
Responses
(yr)
(b)
Burden
(hrs/yr)
(c)
(a x b)
Rate
($/hr)
(d)
Total Cost
($/yr)
(e)
(c x d)
Request for Ex Parte Reexamination
Transmittal Form (PTO/SB/57)
1.00
845
845
$25.68
$21,700.00
Request for Ex Parte Reexamination
4.00
845
3,380
$37.99
$128,406.00
Request for Inter Partes
Reexamination Transmittal Form
(PTO/SB/58)
1.00
380
380
$25.68
$9,758.00
Request for Inter Partes
Reexamination
4.00
380
1,520
$37.99
$57,745.00
Petition to Review Refusal to Grant
Ex Parte Reexamination
0.50
25
13
$25.68
$334.00
Petition to Review Refusal to Grant
Inter Partes Reexamination
0.50
9
5
$25.68
$128.00
Patent Owner’s 37 CFR 1.530
Statement
0.25
105
26
$37.99
$988.00
Third Party Requester’s 37 CFR
1.535 Reply
0.25
60
15
$37.99
$570.00
Amendment in Ex Parte or Inter
Partes Reexamination
0.33
1,165
384
$37.99
$14,588.00
Third Party Requester’s 37 CFR
1.947 Comments in Inter Partes
Reexamination
0.33
300
99
$37.99
$3,761.00
Response to Final Rejection in Ex
Parte Reexamination
0.33
320
106
$37.99
$4,027.00
Patent Owner’s 37 CFR 1.951
Response in Inter Partes
Reexamination
0.33
120
40
$37.99
$1,520.00
Third Party Requester’s 37 CFR
1.951 Comments in Inter Partes
Reexamination
0.33
95
31
$37.99
$1,178.00
12
Petition to Request Extension of
Time in Ex Parte or Inter Partes
Reexamination
Totals
15.
0.25
475
119
$25.68
$3,056.00
----------
5,124
6,963
----------
$247,759.00
Reason for Changes in the Annual Burden
Summary of the New Collection
The USPTO is proposing to move the following items that are under OMB Control Number
0651-0033 into this 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. 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.
Changes from the 60-Day Notice
Since the 60-Day Notice was published, the USPTO has decided to revise the time
estimates for several items in this collection. The estimated time per response has been
increased for all items except for the reexamination transmittal forms (PTO/SB/57 and
PTO/SB/58) and the petition to request extension of time. These revised time estimates
have increased the total burden hours for this collection from the 111,336 hours reported in
the 60-Day Notice to the 161,128 hours set forth in this Supporting Statement.
The USPTO has also updated the estimated hourly rate for attorneys preparing the
information in this collection from $310 to $325. As a result of the increase in total burden
hours and the updated hourly rate for attorneys, the total respondent cost burden for this
collection has increased from $34,514,160 as reported in the 60-Day Notice to $52,366,600
as set forth in this Supporting Statement.
Changes in Burden
For this new collection, the USPTO estimates that the total annual responses will be 5,124
and the total annual burden hours will be 161,128. Therefore, this collection has a total
burden of 161,128 hours as a program change.
The USPTO estimates that this new information collection will also have an annual (nonhour) cost burden of $5,577,265 in the form of filing fees, postage costs, and recordkeeping
costs. Therefore, this collection has $5,577,265 in annual (non-hour) cost burden as
a program change.
13
16.
Published Collections of Information
No special publication of the items in this collection is planned. However, information
regarding requests for reexamination filed is published weekly in the Official Gazette of the
United States Patent and Trademark Office. The Official Gazette is published in electronic
format on the USPTO Web site.
17.
Display of Expiration Date of OMB Approval
The forms in this information collection will display the OMB Control Number and the
expiration date of OMB approval.
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.
14
REFERENCES
A.
B.
C.
The USPTO Information Quality Guidelines
Form PTO/SB/57 Request for Ex Parte Reexamination Transmittal Form
Form PTO/SB/58 Request for Inter Partes Reexamination Transmittal Form
15
| File Type | application/pdf |
| File Modified | 2009-12-22 |
| File Created | 2009-12-22 |