Justification for Nonmaterial/Nonsubstantive Change to 0651-0031

JUSTIFICATION FOR NONMATERIAL/NONSUBSTANTIVE CHANGE
United States Patent and Trademark Office
Patent Processing (Updating)
OMB CONTROL NUMBER 0651-0031
(November 2010)

Background
The United States Patent and Trademark Office (USPTO) is requesting an update to
information collection 0651-0031, “Patent Processing (Updating).” The USPTO is
proposing to add a form for an item that is currently approved: Petition to Withdraw an
Application from Issue.
The new form, Petition to Withdraw an Application from Issue After Payment of the
Issue Fee Under 37 CFR 1.313(c) (PTO/SB/140), will be prepared and submitted
electronically. Automation of this item will allow the public to complete the form on a
computer and then use an interactive button on the form itself to submit the information
to the USPTO over the Internet. The electronic form will allow the USPTO to process
the petition more efficiently and will not impose any additional burden on the public.
The agency will continue to accept Petitions to Withdraw an Application from Issue that
do not make use of the new form.
The USPTO is required by 35 U.S.C. § 131 et seq. to examine an application for patent
and, when appropriate, issue a patent. Many actions taken by the USPTO during its
examination of an application for patent or for reissue of a patent, or during its
reexamination of a patent, are subject to review by an appeal to the Board of Patent
Appeals and Interferences. For other USPTO actions, however, review is in the form of
administrative review obtained via submission of a petition to the USPTO. The USPTO
petitions practice also provides an opportunity for a patent applicant or owner to supply
additional information that may be required in order for the USPTO to further process an
application or reexamination proceeding.
The public uses the Petition to Withdraw an Application from Issue to request the
withdrawal of an application from issue after the issue fee has been paid. The public
may request such a withdrawal for one of the following reasons: (1) unpatentability of
one or more claims, which requires a statement that one or more claims are
unpatentable, an amendment to such claim or claims, and an explanation of how the
amendment causes the claim or claims to be patentable; (2) consideration of a request
for continued examination under 37 CFR 1.114, for a utility or plant application only; or
(3) express abandonment of the application. The petition also requires a $130 fee
under 37 CFR 1.17(h).

JUSTIFICATION FOR NONMATERIAL/NONSUBSTANTIVE CHANGE TO 0651-0031
(continued)

Summary of Changes
The USPTO is proposing to add one form to this collection, Petition to Withdraw an
Application from Issue After Payment of the Issue Fee Under 37 CFR 1.313(c)
(PTO/SB/140). This form is for an item that is already approved under 0651-0031. No
new information is being collected.

Changes in Burden
The proposed new form covers an existing requirement that is currently approved under
0651-0031 and will not result in a substantive change in burden to the public.

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