Download:
pdf |
pdfSUPPORTING STATEMENT
United States Patent and Trademark Office
Legal Processes
OMB CONTROL NUMBER 0651-0046
(May 2010)
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 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 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.
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 and documents related to a legal proceeding, or file a claim under the
Federal Tort Claims Act. Respondents may also 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.
In those instances where both current and former employees may respond to the USPTO,
the agency estimates that the number of respondents will be 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.
Table 2 outlines how this collection of information is used by the public and the USPTO:
2
Table 2: Needs and Uses of Information Collected for Legal Processes
Function
Form Number
Needs and Uses
Petition to Waive Rules
No Form Associated
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.
Service of Process
No Form Associated
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.
Forwarding Service of Process and
Demands
No Form Associated
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.
Employee Testimony and
Production of Documents in Legal
Proceedings
No Form Associated
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.
Report of Unauthorized Testimony
No Form Associated
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.
Possible Indemnification Cases
No Form Associated
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.
Employee Indemnification
No Form Associated
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.
Tort Claims
No Form Associated
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.
3
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 January 25, 2010 (75 Fed.
Reg. 3893). The comment period ended on March 26, 2010. 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.
5
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.
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 291 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 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 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 and
former employees, except for the requests for employee indemnification. Since
many of the former employees affected by this collection are attorneys, the attorney
rate will be used for former employees as well. Using the professional rate of $325
per hour for attorneys in private firms, the USPTO estimates that the respondent
6
cost burden for attorneys and former employees submitting the information in this
collection will be $16,575 per year.
Requests for employee indemnification generally come from professional and
supervisory staff at the estimated hourly rate of $59.30 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 $77.09 ($59.30 + $17.79).
Using the estimate of $77.09 per hour for professional and supervisory staff, the
USPTO expects that the respondent cost burden for submitting requests for
employee indemnification will be approximately $77 per year.
Table 3: Burden Hour/Burden Cost to Respondents for Legal Processes
Item
Hours
(a)
Responses
(yr)
(b)
Burden
(hrs/yr)
(c)
(a x b)
Rate
($/hr)
(d)
Total Cost
($/yr)
(e)
(c x d)
Petition to Waive Rules
0.50
5
3
$325.00
$975.00
Service of Process
0.08
243
19
$325.00
$6,175.00
Forwarding Service
0.17
7
1
$325.00
$325.00
Employee Testimony and Production of
Documents in Legal Proceedings
1.00
22
22
$325.00
$7,150.00
Forwarding Demands
0.17
7
1
$325.00
$325.00
Report of Unauthorized Testimony
0.50
1
1
$325.00
$325.00
Report of Possible Indemnification
Cases
0.50
3
2
$325.00
$650.00
Employee Indemnification
0.50
1
1
$77.09
$77.00
Tort Claims
1.00
2
2
$325.00
$650.00
........
291
52
........
$16,652.00
Totals
13.
Total Annualized (Non-hour) 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 USPTO estimates that approximately 5 petitions
will be filed per year with a fee of $130, for a total filing cost of $650. 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 88 cents and that up to 48 of these
submissions will be mailed to the USPTO per year, for a postage cost of $42. The USPTO
estimates that the average postage for a Service of Process will be $10.00 (Priority Mail
flat-rate envelope with Certified Mail service and Return Receipt) and that up to 243 of
these submissions will be mailed to the USPTO per year, for a postage cost of $2,430. The
total estimated postage cost for this collection is approximately $2,472 per year.
48 responses (not including Service of Process) @ $0.88 postage = $42
243 responses for Service of Process @ $10.00 postage = $2,430
Total postage costs are $42 + $2,430 = $2,472
The total annual (non-hour) respondent cost burden for this collection in the form of filing
fees ($650) and postage costs ($2,472) is approximately $3,122 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
$59.30. 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 $77.09 ($59.30 + $17.79).
Table 4 calculates the burden hours and costs to the Federal Government for processing
this information collection:
Table 4: Burden Hour/Burden Cost to the Federal Government for Legal Processes
Item
Hours
(a)
Responses
(yr)
(b)
Burden
(hrs/yr)
(c)
(a x b)
Rate
($/hr)
(d)
Total Cost
($/yr)
(e)
(c x d)
Petition to Waive Rules
1.50
5
8
$77.09
$617.00
Service of Process
0.00
243
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
22
11
$77.09
$848.00
Forwarding Demands
0.00
7
0
$0.00
$0.00
Report of Unauthorized Testimony
0.50
1
1
$77.09
$77.00
Report of Possible Indemnification
Cases
0.50
3
2
$77.09
$154.00
8
Employee Indemnification
1.50
1
2
$77.09
$154.00
Tort Claims
3.00
2
6
$77.09
$463.00
291
30
Totals
15.
........
.........
$2,313.00
Reason for Change in Burden
Summary of Changes Since the Previous Renewal
This information collection was previously approved by OMB in August 2007 with a total of
176 responses and 31 burden hours per year.
For this renewal, the USPTO estimates that the total annual responses will be 291 and the
total annual burden hours will be 52, which is an increase of 115 responses and 21 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 $3,122 is an increase of $1,109
over the currently approved total of $2,013 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 August 2007, the estimated hourly rate for
attorneys preparing the information in this collection was $304, 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 $68.74. In the current renewal, the estimated
hourly rate for attorneys has been updated to $325, and the fully-loaded rate for
professional and supervisory staff has been updated to $77.09 as noted above in Section
12. These increased hourly rates, along with the increase of 21 burden hours for this
collection, yield a respondent cost burden of $16,652, which is an increase of $7,463 over
the previously approved respondent cost burden of $9,189.
Changes in Responses and Burden Hours
For this renewal, the USPTO estimates that the total annual responses for this collection
will increase by 115 and that the total burden hours for this collection will increase by 21.
These increases are due to administrative adjustments, as follows:
The USPTO is adjusting the estimated annual responses for the Petition to Waive
Rules to 5, which is a decrease of 2 from the previous estimate of 7. Therefore,
this collection takes a burden decrease of 1 hour as an administrative
adjustment.
9
The USPTO is adjusting the estimated annual responses for Service of Process to
243, which is an increase of 113 from the previous estimate of 130. Therefore, this
collection takes a burden increase of 9 hours as an administrative adjustment.
The USPTO is adjusting the estimated annual responses for Employee Testimony
and Production of Documents in Legal Proceedings to 22, which is an increase of 4
from the previous estimate of 18. The USPTO is also adjusting the estimated time
per response for this item from 30 minutes (0.5 hours) to 1 hour. Therefore, this
collection takes a burden increase of 13 hours as an administrative
adjustment.
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 net burden increase of 21 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 $1,109. This increase in annual costs is due to administrative adjustments, as
follows:
This collection is currently approved with a total of $910 in filing fees. For this
renewal, the USPTO estimates that the total filing fees will decrease to $650 due to
a decrease in the estimated responses for the Petition to Waive Rules. Therefore,
this collection has a burden decrease of $260 in filing fees as an
administrative adjustment.
This collection is currently approved with a total of $1,103 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 $2,472 due to
increases in the estimated number of responses as well as increases in rates for the
U.S. Postal Service. Therefore, this collection has a burden increase of $1,369
in postage costs as an administrative adjustment.
In sum, this information collection has a total net increase in annual (non-hour) cost
burden of $1,109 due to administrative adjustments.
16.
Project Schedule
The USPTO does not plan to publish this information for statistical use or for any special
purpose.
10
17.
Display of Expiration Date of OMB Approval
There are no USPTO 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.
11
REFERENCES
A.
B.
Standard Form 95 “Claim for Damage, Injury, or Death” (OMB Control Number
1105-0008)
The USPTO Information Quality Guidelines
12
| File Type | application/pdf |
| File Title | Microsoft Word - 0651-0046-JustStmt-May2010-final.doc |
| File Modified | 2010-05-24 |
| File Created | 2010-05-24 |