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pdfSUPPORTING STATEMENT
UNITED STATES PATENT AND TRADEMARK OFFICE
Board of Patent Appeals and Interferences (BPAI) Actions
OMB Control Number 0651-0063
Proposed Modification Supporting NPRM RIN 0651-AC37 (Rules of Practice Before
the Board of Patent Appeals and Interferences in Ex Parte Appeals)
November 4, 2010
A.
JUSTIFICATION
1.
Necessity of Information Collection
The United States Patent and Trademark Office (USPTO) is publishing a notice of
proposed rulemaking entitled “Rules of Practice Before the Board of Patent Appeals and
Interferences in Ex Parte Appeals” (RIN 0651-AC37) in the Federal Register. RIN 0651AC37 proposes changes to the current rule [37 CFR § 41.1 et seq.] that will impact the
currently approved inventory for this collection. Therefore, the USPTO is submitting this
modified information collection request outlining the proposed changes and requesting
approval for the modified collection.
Information collection 0651-0063 was previously approved by OMB on December 22, 2009
and was limited to the current rule.
One proposed change to the current rule may cause some appellants to file an
amendment to cancel claims that they do not wish to be appealed. Another proposed
change may cause some appellants to add subheading(s) to an appeal brief. Other
proposed changes will eliminate several of the current briefing requirements for an appeal
brief thereby reducing the amount of time that it takes to complete an appeal brief.
Based on these proposals, the USPTO is submitting this modified information collection
request to:
1. Add an additional information collection item: Amendments (41.33).
2. Update the burden estimates for the appeal briefs.
3. Update other burden hour and burden cost estimates for this collection not associated
with rulemaking:
a. U.S. postage rates have increased, which requires a readjustment of burden.
b. The estimated number of filings utilizing EFS-Web has increased and fewer
filings will be subject to postage costs, which requires a readjustment of burden.
c. The number of projected responses for the appeal briefs (not associated with the
proposed rulemaking) has increased, which requires a readjustment of filing fee
burden.
d. Filings have increased and are projected to remain higher, which requires an
update of the number of projected responses for the appeal briefs, reply briefs,
and requests for rehearing before the BPAI.
The Board of Patent Appeals and Interferences (BPAI or Board) was established by
35 U.S.C. § 6(b). 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.
Table 1 provides the specific statutes and regulations requiring the USPTO to collect the
information related to amendments and appeal briefs.
Table 1: Information Requirements for Amendments and Appeal Briefs
Requirement
Statute
Rule
Amendment (New)
35 U.S.C.§ 134
37 CFR § 41.33
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
The proposed changes to the current appeal rules will benefit both the public and the
USPTO by improving the quality and efficiency of the appeal process. Under the proposed
rules, the Board will presume that the appeal is taken from the rejection of all claims under
rejection unless claims are cancelled by an applicant’s amendment. By using the
presumption, the public would no longer need to expend resources or funding to
enumerate in the appeal briefs the rejected claims that they wish to appeal. The public will
need to expend resources to file amendments to cancel claims only in those instances in
which they choose to appeal fewer than all of the rejected claims. The proposed addition
of subheading(s) to the appeal briefs will provide clarity by ensuring that examiners and
the Board do not overlook arguments for separate patentability of certain claims. The
proposed elimination of certain requirements from the appeal briefs will reduce the overall
amount of time that appellants spend preparing their appeal briefs. These proposals will
also aid the USPTO by reducing confusion as to which claims are on appeal and avoiding
2
the unintended cancellation of claims due to oversight or mistake by the public in listing the
claims on appeal.
Table 2 explains how the amendments and the appeals are used by the public and by the
USPTO.
Table 2: Needs and Uses
Form and Function
Amendment (New)
Form #
No Form
Associated
Needs and Uses
•
•
Appeal Brief
No Form
Associated
•
•
Used by the applicant to cancel pending, rejected claims that
applicant does not wish to be considered on appeal by the BPAI
Used by the BPAI to determine which claims are on appeal
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
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. A, the USPTO Information Quality Guidelines.)
3.
Use of Information Technology
The USPTO does not, at this time, offer electronic forms for the items in this collection.
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 amendments, briefs, and requests through EFSWeb, 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
3
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, with 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 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 USPTO e-FOIA website.
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. The proposed changes to the current
rule will eliminate the requirement for an applicant (or a patent owner) to submit certain
appendices with the brief containing information already available at the USPTO (in that
certain copies of evidence may have been submitted earlier as part of the patent
examination process).
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.
4
6.
Consequences of Less Frequent Collection
This information is collected only when an applicant (or patent owner) files an amendment,
brief, or request. 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.
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 USPTO has published a 60-Day Federal Register Notice of Proposed Rulemaking
seeking public comment on the proposed changes to the current rule and seeking public
comment on these burden estimates.
In addition, the USPTO consults with the Public Advisory Committees, which were created
by statute in the American Inventors Protection Act of 1999 to advise the Under Secretary
of Commerce for Intellectual Property and Director of the USPTO on the management of
the patent and trademark operations. The Advisory Committees consist of United States
citizens chosen to represent the interests of the diverse users of the USPTO. The
Advisory Committees review the policies, goals, performance, budget, and user fees of the
patent and trademark operations, respectively, and advise the Director on these matters.
The USPTO has long-standing relationships with patent bar associations, 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.
The USPTO also meets regularly with groups from whom patent application data is
collected, such as the American Intellectual Property Law Association.
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 process the amendments and to
initiate appeal proceedings.
10.
Assurance of Confidentiality
Confidentiality of records involved in appeal proceedings is governed by statute
5
(35 U.S.C. § 122) and regulation (37 CFR §§ 1.11 and 1.14). The Board 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. Board 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.
Estimate of Hour and Cost Burden to Respondents
Table 3 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 267 amendments per year due to
the proposed rule. In addition, the USPTO expects the number of appeal briefs, reply
briefs, and requests for rehearing before the BPAI filed to increase to 26,741; 7,658; 378
responses, respectively, per year. This will increase the total responses for this collection
to 35,044 per year. Out of these 35,044 responses, the USPTO estimates that 32,591 will
be submitted through EFS-Web.
•
Burden Hour Calculation Factors
The USPTO estimates that it takes the public approximately 2 to 31 hours to complete this
information, depending on the situation. This includes the time to gather the necessary
information, prepare the amendment, brief or request, and submit them to the USPTO. The
USPTO estimates that it will take the same amount of time to complete these items whether
they are submitted on paper or electronically through EFS-Web.
•
Cost Burden Calculation Factors
The professional rate of $325 per hour used in this modified submission to calculate
respondent cost burden is the median rate for attorneys in private firms as published in the
2009 report of the Committee on Economics of Legal Practice of the American Intellectual
Property Law Association (AIPLA). This report summarized the results of a survey with
data on hourly billing rates. This is a fully-loaded rate.
6
Table 3: Burden Hour/Burden Cost to Respondents
Item
Amendment
Hours
(a)
Responses
(yr)
(b)
2 hours
19
Burden
(hrs/yr)
(c)
(a) x (b)
Total Cost
($/hr)
(e)
(c) x (d)
Rate
($/hr)
(d)
38
$325.00
$12,350.00
Amendment (EFS-Web)
2 hours
248
496
$325.00
$161,200.00
Appeal Brief
31 hours
1,872
58,032
$325.00
$18,860,400.00
Appeal Brief (EFS-Web)
31 hours
24,869
770,939
$325.00
$250,555,175.00
Reply Brief
5 hours
536
2,680
$325.00
$871,000.00
Reply Brief (EFS-Web)
5 hours
7,122
35,610
$325.00
$11,573,250.00
Request for Rehearing Before the BPAI
5 hours
26
130
$325.00
$42,250.00
Request for Rehearing Before the BPAI (EFS-Web)
5 hours
352
1,760
$325.00
$572,000.00
Total
- - - -
- - - 35,044
869,685
$282,647,625.00
Preparation Time/Burden Hour Impact
Summary of Preparation Time and Burden Hour Impact
Table 3a indicates impact based upon rulemaking and non-rulemaking adjustments:
Table 3a: Burden Hour/Burden Cost to Respondents – Rulemaking and Non-Rulemaking Impact
Item
Amendment Proposed
(includes EFS-Web)
(NEW)
Amendment Current
Inventory
Appeal Brief Proposed
(includes EFS-Web)
Appeal Brief Current
Inventory
Hours
(a)
Responses
(yr)
(b)
Burden
(hrs/yr)
(c)
(a) x (b)
Rate
($/hr)
(d)
Total Cost
($/hr)
(e)
(c) x (d)
2
267
534
$325.00
$173,550.00
0
0
0
0
0
31
26,741
828,971
$325.00
$269,415,575.00
34
23,145
786,930
$325.00
$255,752,250.00
7
Impact of
Proposed
Rulemaking
NonRulemaking
Impact
Increase of
$173,550 or
534 hours
per year.
No Change
Decrease of
$22,566,375
or 69,435
hours per
year.
Increase of
$36,229,700
or 111,476
hours per
year.
Item
Reply Brief Proposed
(includes EFS-Web)
Reply Brief Current
Inventory
Request for Rehearing
Before the BPAI
Proposed (includes EFSWeb)
Request for Rehearing
Before the BPAI Current
Inventory
Total Proposed
Total Current Inventory
Hours
(a)
Responses
(yr)
(b)
Burden
(hrs/yr)
(c)
(a) x (b)
Rate
($/hr)
(d)
Total Cost
($/hr)
(e)
(c) x (d)
5
7,658
38,290
$325.00
$12,444,250.00
5
4,947
24,735
$325.00
$8,038,875.00
5
378
1,890
$325.00
$614,250.00
5
123
615
$325.00
$199,875.00
35,044
869,685
28,215
812,280
_____
____
_____
$282,647,625.00
_____
$263,991,000.00
Impact of
Proposed
Rulemaking
No Change
No Change
NonRulemaking
Impact
Increase of
$4,405,375
or 13,555
hours per
year.
Increase of
$414,375 or
1,275 hours
per year.
Increase of
$173,550 or
534 hours
per year
offset by
decrease of
$22,566,375
or 69,435
hours per
year.
Increase of
$41,049,450
or 126,306
hours per
year.
_____
_____
Proposed rulemaking impact on responses = increase of 267
Proposed rulemaking impact on burden hours = reduction of 68,901
Proposed rulemaking impact on burden hour costs = reduction of $22,392,825
Non-rule impact on responses = increase of 6,562
Non-rule impact on burden hours = increase of 126,306
Non-rule impact on respondent burden hour costs = increase of $41,049,450
Current inventory responses = 28,215
Current inventory burden hours = 812,280
Current inventory respondent burden hour costs = $263,991,000
Estimated responses after proposed rulemaking = 35,044
Estimated burden hours after proposed rulemaking = 869,685
Estimated burden hour costs after proposed rulemaking = $282,647,625
A detailed explanation of the hourly rate and preparation time estimates for those items
(amendments and appeal briefs) impacted by the proposed rulemaking follows:
8
Amendments
The agency estimates that an amendment to cancel unappealed claims from an
application may take as much as 2 hours of attorney time to prepare.
The AIPLA 2009 Report notes that the median cost for the preparation and filing of a
patent application amendment/argument of minimal complexity is $1,850. Using the
median billing rate of $325 per hour, this cost equates to approximately 5.7 hours of
attorney time. The Office’s estimate of 2 hours of attorney time for an amendment merely
canceling claims is based on the fact that such an amendment will not contain an
argument section, unlike a regular patent application amendment/argument. As such, the
Office estimates that the amendment to cancel claims will be significantly less time
consuming than a regular patent application amendment/argument.
Based on the Office’s experience, it estimates that such an amendment canceling claims
will only be filed in approximately 1% of appeals. Under current practice, if an appellant
incorrectly lists the claims on appeal, or is silent in the brief as to some of the claims under
rejection, then the Office assumes that such claims are not on appeal, and notes that
those non-appealed claims should be cancelled by the examiner. Ex parte Ghuman, 88
USPQ2d 1478, 2008 WL 2109842 (BPAI 2008). (precedential) (holding that when
appellant does not appeal some of the claims under rejection and does not challenge the
Examiner’s rejection of these claims, then the Board will treat these claims as withdrawn
from the appeal, which operates as an authorization for the Examiner to cancel those
claims from the application). The Board decided Ghuman in May 2008. Of the
approximately 2,056 reported Board decisions and orders issued in the remainder of FY
2008, only ten such decisions and orders cited Ghuman in noting that an appellant had
withdrawn claims from appeal. In FY 2009 (October 2008 – September 2009), of the
approximately 5,612 reported Board decisions and orders, only twenty cited Ghuman in
noting that an appellant had withdrawn claims from appeal. In FY 2010 (October 2009 –
September 2010), of the approximately 5,990 reported Board decisions and orders, only
26 cited Ghuman in noting that an appellant had withdrawn claims from appeal.
While these numbers may not represent a precise indication of the numbers of appeals
where appellants chose not to appeal all of the rejected claims, these figures are provided
as an indication of the relatively small number of appeals in which appellants choose to
appeal fewer than all of the rejected claims without canceling such unappealed claims prior
to appeal. Based on this data, the Office found that approximately 0.41% of all appeals
had Ghuman issues, i.e., where fewer than all of the claims were appealed. For purposes
of calculating added burden to appellant from this proposed rule change, the Office
rounded up to 1% and used this as a conservative (high) estimate for the number of
amendments expected.
Appeal Briefs
The agency estimates that the proposed changes to the current rule will result in a
decrease of 3 hours per appeal brief from the prior estimate.
9
The agency’s estimate in the currently approved information collection [OMB Control
Number 0651-0063] was based on the cost for an appeal to the Board as reported in the
AIPLA 2009 Report, which resulted in an estimate of 17.1 hours. The agency determined
that a conservative estimate could be as high as about double the 17.1 hours value
calculated from data in the AIPLA 2009 Report, and therefore determined to use an
estimate of 34 hours per appeal brief.
In light of the proposed changes to the current rule for briefing requirements for filing
appeal briefs, and taking into account proposed changes that will lessen the burden and
the one proposed change (i.e., addition of subheadings) that will add a burden, the agency
estimates that the proposed changes to the current rule will result in a net average
decrease of approximately 3 hours per appeal brief from the prior estimate, thereby
lowering the previous average estimate of approximately 34 hours to 31 hours to prepare
an appeal brief. This estimate is based on the net impact of the proposed changes and
time saved in preparation of an appeal brief based on agency expertise in patent
prosecution practice. Using the median billing rate of $325 per hour, as published in the
AIPLA 2009 Report, the Office estimates that these proposed rule changes will result in an
average savings of $975 per appeal brief.
13.
Total Annualized Cost Burden
The USPTO expects the proposed rule to impact the postage costs currently in the
collection, but does not expect the proposed rule to impact the filing fees. However, the
USPTO is also taking this opportunity to update the postage costs based on current
postage rates and update the filing fees based on filing projections for the appeal briefs.
These changes are not directly associated with the rule. This collection still does not have
any capital start-up, operating, maintenance, or recordkeeping costs.
Postage Costs
The USPTO expects that the new proposed amendments will be mailed to the USPTO by
Express Mail, as with the current items in this collection, thus increasing the current
inventory estimates for postage costs. The U.S. Postal Service has increased the mailing
rates for the Express Mail flat rate envelope since the last approval, from $17.50 to $18.30.
The USPTO is taking this opportunity to update the postage costs for all collection items
accordingly. The USPTO estimates that 2,453 of the submissions will be filed in paper,
with the rest filed as attachments through EFS-Web.
Table 4 shows the annual postage/non-hour cost burden to respondents.
Table 4: Postage Costs – Non-hour Cost Burden
Item
Responses
(yr)
(a)
Amendment
Postage Costs
(b)
19
10
$18.30
Total Cost
(yr)
(a) x (b)
$348.00
Item
Responses
(yr)
(a)
Appeal Brief
Reply Brief
Request for Rehearing Before the BPAI
Postage Costs
(b)
Total Cost
(yr)
(a) x (b)
1,872
$18.30
$34,258.00
536
$18.30
$9,809.00
26
$18.30
$476.00
Total
- - - - 2,453
$44,891.00
Therefore, the USPTO estimates that the total postage costs for this collection will
be $44,891, of which $348 is due to the proposed rulemaking (addition of
amendments to the collection). The remaining postage costs have decreased due to
expected increases in the EFS-Web filings.
Filing Fees
The proposed rule will not impact the filing fee costs currently approved for this collection.
The USPTO does expect that estimated increases in the number of appeal briefs filed will
increase the annual cost associated with filing fees for this collection. The USPTO is
taking this opportunity to adjust these estimates.
The estimated annual filing fee/non-hour cost burden to respondents is outlined in Table 5:
Table 5: Filing Fees – Non-Hour Cost Burden
Item
Responses
(yr)
(a)
Amendment
Filing Fees
(b)
Total Cost
(yr)
(a x b)
19
$0.00
$0.00
248
$0.00
$0.00
Appeal Brief – Other Entity
1,498
$540.00
$808,920.00
Appeal Brief – Small Entity
374
$270.00
$100,980.00
Appeal Brief (EFS-Web) – Other Entity
19,895
$540.00
$10,743,300.00
Appeal Brief (EFS-Web) – Small Entity
4,974
$270.00
$1,342,980.00
536
$0.00
$0.00
7,122
$0.00
$0.00
26
$0.00
$0.00
352
$0.00
$0.00
35,044
-------------------------
$12,996,180.00
Amendment (EFS-Web)
Reply Brief
Reply Brief (EFS-Web)
Request for Rehearing Before the BPAI
Request for Rehearing Before the BPAI (EFS-Web)
Totals
The USPTO estimates that the total filing fees for this collection will be $12,996,180.
11
Overall Burden Impact
Table 6 shows the impact of the rulemaking and non-rulemaking changes on the current
annual non-hour cost burden for this collection.
Table 6: Burden Changes – Rulemaking/Non-Rulemaking Impact
Burden
Postage
Filing Fees
Current Inventory
Rulemaking Impact
Non Rule Impact
Total After Rule and
Non Rule
$247,591
Increase of $348
Reduction of $203,048
$44,891
$11,200,140
No change
Increase of $1,796,040
$12,996,180
Therefore, the total estimated non-hour cost burden with the proposed rulemaking and
non-rulemaking changes is.$13,041,071.
14.
Annual Cost to the Federal Government
The USPTO expects that the proposed amendments will be processed by a paralegal
specialist in the GS-11, step 5 range and that it will take approximately 6 minutes to
process them.
The USPTO still expects the appeal briefs to be processed by patent appeal specialists
and a paralegal specialist in the GS-9, step 5 and GS-11, step 5 grades, respectively and
that the reply briefs and requests for rehearing before the BPAI will be processed by a GS11, step 5 staff member. The 2009 hourly rates in the current collection have been
adjusted to reflect current 2010 rates. The current hourly rates for a GS-9, step 5 and a
GS-11, step 5 are $28.04 and $33.92, respectively, according to the U.S. Office of
Personnel’s Management’s (OPM’s) 2010 wage chart, including locality pay for the
Washington, DC area.
Using the current hourly rates, 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. 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 $36.45
($28.04 + $8.41). The cost per hour for a GS-11, step 5 is $44.10 ($33.92 + $10.18).
Using the current hourly rates, the USPTO estimates that it takes approximately 6 minutes
(0.1 hours) for a GS-11, step 5 to process the amendments, reply briefs, and requests for
rehearing before the BPAI. The fully loaded hourly rate for the GS-11, step 5 is $44.10.
Table 7 calculates the processing hours and burden costs of this information collection to
the Federal Government due to the proposed rule and the rate increases:
12
Table 7: Burden Hour/Burden Cost to the Federal Government
Item
Hours
(a)
Responses
(yr)
(b)
Burden
(hrs/yr)
(c)
(a) x (b)
Rate
($/hr)
(d)
Total Cost
($/hr)
(e)
(c) x (d)
Amendment
0.10
19
2
$44.10
$88.00
Amendment (EFS-Web)
0.10
248
25
$44.10
$1,103.00
Appeal Brief
Patent Appeal Specialist
Paralegal Specialist
0.30
0.30
1,872
562
562
$36.45
$44.10
$20,485.00
$24,784.00
Appeal Brief (EFS-Web)
Patent Appeal Specialist
Paralegal Specialist
0.30
0.30
24,869
7,461
7,461
$36.45
$44.10
$271,953.00
$329,030.00
Reply Brief
0.10
536
54
$44.10
$2,381.00
Reply Brief (EFS-Web)
0.10
7,122
712
$44.10
$31,399.00
Request for Rehearing Before the BPAI
0.10
26
3
$44.10
$132.00
Request for Rehearing Before the BPAI (EFS-Web)
0.10
352
35
$44.10
$1,544.00
35,044
16,877
Total
15.
- - - - -
- - - - $682,899.00
Reason for Change in Burden
Summary of Changes Since the Previous Renewal
This information collection was approved by OMB on December 22, 2009 with 28,215
responses, 812,280 burden hours, $11,447,731 in annualized (non-hour) costs, and
$263,991,000 in respondent cost burden.
Due to the proposed rulemaking and other changes outlined in this submission, the
USPTO estimates that the total burden and annualized (non-hour) costs for this collection
will be 35,044 responses, 869,685 burden hours, and $13,041,071 in annualized costs.
This is an increase of 6,829 responses, 57,405 hours, and $1,593,340 in annualized costs
over the currently approved burden for this collection. These changes are due to both
program changes and administrative adjustments.
Changes in Respondent Cost Burden
This collection was previously approved with an estimated respondent cost burden of
$263,991,000 per year. The changes from the proposed rule will add $173,550 in
respondent cost burden to the collection, which is offset by a reduction of $22,566,375, for
a total reduction of $22,392,825 in respondent cost burden due to the proposed rule.
Non-rulemaking changes will add an additional $41,049,450 in respondent cost burden to
the collection.
13
Changes from the proposed rule, in addition to non-rulemaking changes, will increase the
respondent cost burden by $18,656,625, bringing the total estimated respondent cost
burden to $282,647,625 per year.
Changes in Responses and Burden Hours
Based on changes in the Notice of Proposed Rule Making entitled “Rules of Practice
Before the Board of Patent Appeals and Interferences in Ex Parte Appeals” (RIN 0651AC37) and estimated increases in the number of responses for the briefs and the requests
for rehearing, the USPTO estimates that the responses for this collection will increase by
6,829 responses, to 35,044 responses per year. The USPTO estimates that the increased
submissions will increase the burden hours by 57,405, to 869,685 hours per year. The
increase in burden hours is due to the following program changes and administrative
adjustments:
•
New Item:
Based on the proposed rulemaking, the USPTO wishes to add a new item,
amendments, into this collection. The USPTO estimates that it will take 2 hours to
complete the amendments and 267 amendments (paper and electronic) will be
submitted per year, for an estimated 534 hours per year. Therefore, the USPTO
estimates that the collection would have a burden increase of 534 hours due to
the proposed addition of amendments into the collection. This estimated
increase is due to a program change.
•
Elimination of Several Requirements:
Based on the proposed rulemaking, the USPTO wishes to eliminate several
requirements and add one small requirement of subheading(s) for the appeal brief.
The USPTO expects that the elimination of these requirements will offset the addition
of the small requirement and result in an overall reduction of the completion time for the
briefs from 34 to 31 hours. The USPTO estimates that the proposed rule will reduce
the burden hours by 69,435 hours per year. The USPTO expects, however, that this
reduction will be offset by an estimated increase in the number of appeal briefs filed per
year. The USPTO estimates that the number of appeal briefs will increase by 3,596
responses, from 23,145 to 26,741 responses per year. The USPTO estimates that this
will increase the burden hours by 111,476. Taking into account the changes from the
proposed rulemaking and the estimated increases in the number of submissions, the
USPTO estimates that the burden hours will increase by a total of 42,041 hours, from
786,930 to 828,971 burden hours per year. Therefore, the USPTO estimates that
the collection will have an increase of 42,041 hours per year, with a reduction of
69,435 hours due to a program change offset by an increase of 111,476 hours
due to an administrative adjustment.
•
Estimated Increase in Responses:
Based on current projections, the USPTO estimates that the number of reply briefs
(paper and electronic) will increase by 2,711 responses, from 4,947 to 7,658 responses
per year. The USPTO estimates that this will increase the burden hours by 13,555
14
hours, from 24,735 to 38,290 hours per year. Therefore, the USPTO estimates that
the collection will have an increase of 13,555 hours per year due to an
administrative adjustment.
•
Estimated Increase in Responses:
Based on current projections, the USPTO estimates that the number of requests for
rehearing before the BPAI (paper and electronic) will increase by 255 responses, from
123 to 378 responses per year. The USPTO estimates that the burden hours will
increase by 1,275 hours, from 615 to 1,890 hours per year. Therefore, the USPTO
estimates that the collection would have an increase of 1,275 hours per year due
to an administrative adjustment.
In sum, the USPTO estimates that this proposal will reduce the burden, but it will be offset
by estimated increases in the submissions. The proposal to add amendments into this
collection will add 534 hours to the collection. However, this increase will be offset by the
proposal to eliminate several requirements from the appeal brief, which the USPTO
estimates will reduce the burden hours by 69,435 hours per year, even with the addition of
one small requirement of subheading(s) to the appeal brief. The USPTO expects that a
total of 68,901 hours per year will be reduced due to the proposed rule. In addition to the
changes from the proposed rule, the USPTO expects more briefs and requests (paper and
electronic) to be filed. The USPTO estimates that the number of briefs and requests filed
will increase by 6,562 responses, which in turn increases the burden hours for this
collection by 126,306 hour per year. Therefore, the USPTO estimates that this
collection will have an overall increase of 57,405 hours, with a reduction of 68,901
hours due to a program change offset by an increase of 126,306 hours due to an
administrative adjustment.
Changes in Annual (Non-Hour) Costs
Based on changes in the Notice of Proposed Rule Making entitled “Rules of Practice
Before the Board of Patent Appeals and Interferences in Ex Parte Appeals” (RIN 0651AC37) and other changes not directly associated with the rule, the USPTO estimates that
the annual (non-hour) costs for the collection will increase by $1,593,340, from
$11,447,731 to $13,041,071 per year. The increase in the annualized (non-hour) costs is
due to program and administrative adjustments as outlined below:
•
Based on the proposed rulemaking, the USPTO wishes to add amendments into the
collection. This will add additional postage costs to the collection. The USPTO
estimates that $348 in postage costs will be added to the collection. Therefore, the
USPTO estimates that a total of $348 in annual (non-hour) costs will be added to
the collection due to program changes resulting from the proposed rulemaking.
•
In the currently approved collection, the cost of a flat rate Express Mail envelope is
$17.50. At this time, the cost of the same envelope has increased to $18.30.
However, the USPTO expects that the increased costs due to the postal rate change
will be offset by the fact that the number of briefs and requests filed through EFS-Web
15
has been steadily increasing from roughly 50% to 93% of the total submissions. The
USPTO estimates that the total postage costs associated with the briefs and requests
will be reduced by $203,048 per year. Therefore, the USPTO estimates that
$203,048 in postage costs will be reduced from the collection as an
administrative adjustment.
•
In the currently approved collection, the filing fees for the appeal briefs are estimated at
$11,200,140 per year. Based on current projections, the USPTO estimates that the
number of appeal briefs filed will increase by 3,596 responses, from 23,145 to 26,741
responses per year. Based on these projections, the USPTO estimates the filing fees
to increase by $1,796,040, from $11,200,140 to $12,996,180 per year. Therefore, the
USPTO estimates that a total of $1,796,040 in filing fees will be added to the
collection due to an administrative adjustment.
The USPTO estimates that the addition of amendments to the collection will add a total of
$348 in postage costs to the collection as a result of the proposed rulemaking. The
USPTO estimates that the total program change for the collection will be an increase of
$348. With fewer briefs and requests filed in paper, the USPTO estimates that the
postage costs for this collection will be reduced by $203,048 per year. However, the
USPTO expects that this reduction will be offset by an increase of $1,796,040 in filing fees
due to expected increases in the number of appeal briefs. Combining these costs, the
USPTO estimates that the total administrative adjustment change for the collection will be
an increase of $1,592,992. Therefore, the USPTO estimates that the total overall
annual (non-hour) costs for this collection will increase by $1,593,340 per year, with
an increase of $348 due to program changes and an increase of $1,592,992 due to
administrative adjustments.
Summary Impact of Rule and Non-Rule Changes
The USPTO estimates that the total burden and annualized (non-hour) costs for this
collection will increase by 6,829 responses, 57,405 burden hours, and $1,593,340 in
annualized costs as a result of program changes (rule) and administrative adjustments
(non-rule).
Table 8 highlights the burden hour/annual (non-hour) costs changes discussed in greater
detail in the above bullets. The burden changes shown in the table illustrate how the rule
and non-rule changes impact the currently approved burden for this collection. These
changes are calculated in Section 12 Estimate of Hour and Cost Burden to Respondents
and Section 13 Total Annualized Cost Burden. Please note that these changes are not
calculated in Table 8. This table merely illustrates the final impact of the rule/non-rule
changes.
Table 8 lists the rule and non-rule changes separately by the type of impact, with the
exception of appeal briefs, where the burden hour impact from the rule and estimated
changes in the number of submissions are listed together. To better clarify the impact to
16
hourly burden for the appeal briefs and the overall burden for the collection, the rule and
non-rule changes for the appeal briefs have been combined into one entry.
Table 8: Summary Impact of Burden Hour and Annual Non-Hour Cost Changes Due to Program
Changes and Administrative Adjustments Calculated in Sections 12 and 13.
Impact
Type
Reason
Current
After Approval
Estimated Change
(delta)
Burden Hours
Program Change
Addition of
Amendments,
response of 2 hours
0 hours
534 hours
Increase of 534
hours
Postage
Program Change
Addition of
Amendments
$0
$348
Increase of $348
RULE
NON RULE
Burden Hours
Administrative
Adjustment
Estimated increased
in reply brief filings
24,735 hours
38,290 hours
Increase of 13,555
hours
Burden Hours
Administrative
Adjustment
Estimated increases
in requests for
rehearing before the
BPAI filings
615 hours
1,890 hours
Increase of 1,275
hours
Postage Cost
Administrative
Adjustment
Increased filings
through EFS-Web
offsets change in
postal rates
$247,591
$44,543
Filing Fees
Administrative
Adjustment
Estimated increases
in appeal brief filings
$11,200,140
$12,996,180
Rule
Burden Hours
Program Change
Decrease in
response estimate of
appeal brief
preparation (from 34
to 31 hours per
appeal brief) due to
elimination of
various requirements
786,930 hours
828,971 hours
Non-Rule
Burden Hours
Administrative
Adjustment
Estimated increases
in appeal brief filings
Reduction of
$203,048
Increase of
$1,796,040
RULE/NON RULE
1
Overall increase of
42,041 hours. This
figure reflects an
increase of 111,476
hours (based on the
expected increase
in the number of
appeal brief filings
as a result of nonrule related
adjustments) 1 and a
decrease of 69,435
hours (based on the
reduction in burden
as a result of the
proposed rule
changes). 2
The increase of 111,476 hours reflects the difference between the current number of appeals approved under the collection (23,145)
and the new estimate (26,741) multiplied by the new estimate of 31 hours (3,596 x 31 hrs) required to prepare an appeal brief.
2
The decrease of 69,435 hours reflects the current number of appeals approved under the collection (23,145) multiplied by the 3 hour
estimated savings per appeal brief as a result of the proposed rule changes.
17
16.
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 items in this 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.
Information Quality Guidelines from Section 515 of Public Law 106-554, Treasury and
General Government Appropriations Act for Fiscal Year 2001
18
| File Type | application/pdf |
| File Title | SF-12 SUPPORTING STATEMENT |
| Author | United States Patent and Trademark Office |
| File Modified | 2010-11-09 |
| File Created | 2010-11-09 |