OMB files this comment in accordance with 5 CFR 1320.11( c ). This OMB action is not an approval to conduct or sponsor an information collection under the Paperwork Reduction Act of 1995. This action has no effect on any current approvals. If OMB has assigned this ICR a new OMB Control Number, the OMB Control Number will not appear in the active inventory. For future submissions of this information collection, reference the OMB Control Number provided. Resubmit when proposed rule is finalized.
table that charts list comparision
Inventory as of this Action
Requested
Previously Approved
02/28/2013
02/28/2013
02/28/2013
5,124
0
5,124
161,128
0
161,128
5,577,265
0
5,577,265
The United States Patent and Trademark Office (USPTO) published a notice of proposed rulemaking in the Federal Register, Changes to Implement the Supplemental Examination Provisions of the Leahy-Smith America Invents Act and to Revise Reexamination Fees (RIN 0651-AC69). In the notice, the USPTO proposes to amend the rules of practice in patent cases to implement the supplemental examination provisions of section 12 of the Leahy-Smith America Invents Act, which was enacted into law on September 16, 2011. See Pub. L. 112-29, 125 Stat. 284 (2011). The supplemental examination provisions permit a patent owner to request supplemental examination of a patent by the USPTO to consider, reconsider, or correct information believed to be relevant to the patent. These provisions could assist the patent owner in addressing certain challenges to the enforceability of the patent during litigation. The USPTO is also proposing to set certain fees to implement supplemental examination, to adjust the fee for filing a Request for Ex Parte Reexamination, and to set a fee for petitions filed in reexamination proceedings to more accurately reflect the cost of these processes.
In support of the proposed rulemaking, the USPTO is submitting this information collection to add new information requirements and update existing information requirements that would be impacted by the proposed rulemaking. The public will use this information collection to request supplemental examination and reexamination proceedings and to ensure that the associated fees and documentation are submitted to the USPTO.
Program changes in responses and burden hours are primarily due to the addition of Requests for Supplemental Examination and its impact on Requests for Ex Parte Reexamination and related items, as well as the addition of Petitions Under 37 CFR 1.182 and 1.183 being included under the renamed information requirement of Petitions in a Reexamination Proceeding (except for those specifically enumerated in 37 CFR 1.550(i) and 1.937(d)). Administrative adjustments to responses and burden hours are primarily due to revised time estimates for submitting Requests for Ex Parte and Inter Partes Reexamination as discussed further in the published Notice of Proposed Rulemaking and supporting statement.
Program changes in annual (non-hour) cost burden are primarily due to the addition of fees for Requests for Supplemental Examination, increases in the fee amounts for Requests for Ex Parte Reexamination and Petitions in a Reexamination Proceeding (except for those specifically enumerated in 37 CFR 1.550(i) and 1.937(d)), and increases in responses and the associated total fees for Petitions to Request Extension of Time in Ex Parte or Inter Partes Reexaminations. Administrative adjustments to annual (non-hour) cost burden are due to decreases in total postage costs based on an expected increase in the percentage of responses that are submitted electronically.
On behalf of this Federal agency, I certify that the collection of information encompassed by this request complies with 5 CFR 1320.9 and the related provisions of 5 CFR 1320.8(b)(3).
The following is a summary of the topics, regarding the proposed collection of information, that the certification covers:
(i) Why the information is being collected;
(ii) Use of information;
(iii) Burden estimate;
(iv) Nature of response (voluntary, required for a benefit, or mandatory);
(v) Nature and extent of confidentiality; and
(vi) Need to display currently valid OMB control number;
If you are unable to certify compliance with any of these provisions, identify the item by leaving the box unchecked and explain the reason in the Supporting Statement.
Form PTO/SB/59 Request for Supplemental Examination Transmittal Form
0651-0064-SuppExam-SupStmt-NPRM-Jan2012.pdf
Petition in a Reexamination Proceeding (except for those specifically enumerated in 37 CFR 1.550(i) and 1.937(d))