Supporting Statement - Appendix B

SUPPLEMENTAL APPENDIX B

For reference, the statutory and regulatory provisions that authorize the USPTO to collect the
information associated with fees in pending information collections that are impacted by this
proposed rulemaking but have not received final approval from OMB are outlined in this
supplemental document Appendix B. The information requirements themselves will remain in
their existing information collection requests pending their approval by OMB.

PATENTS 0651-0031
Patent Processing (Updating)
Filing a Submission After Final Rejection (see 37 CFR 1.129(a)) is a pending item that is
being added into the current renewal of this collection (expires 7/31/12). 60-Day FRN
published 3/22/12; public comment period ended 5/21/12. Supporting Statement in
Progress.

0031 – Pending Requirement

Statute

Filing a Submission After Final Rejection (see 37 CFR
1.129(a)) (paper and electronic)

0031 Pending - Form and Function
Filing a Submission After Final Rejection
(see 37 CFR 1.129(a))

Form #
No Form

35 U.S.C. §§ 120, 121, and
365(c)






No Form

37 CFR 1.116 and 1.129(a)

Needs and Uses



Electronic Filing a Submission After Final
Rejection (see 37 CFR 1.129(a))

Rule







Used by the applicant to have a first submission entered and
considered on the merits after final rejection under the conditions
set forth at 37 CFR 1.129(a).
Used by the applicant to have a second submission entered and
considered on the merits after a subsequent final rejection under
the conditions set forth at 37 CFR 1.129(a).
Used by the USPTO to automatically withdraw the finality of the
final rejection when the conditions of 37 CFR 1.129(a) have been
met.
Used by the USPTO to automatically withdraw the finality of the
subsequent final rejection when the conditions of 37 CFR
1.129(a) have been met.
Used by the applicant to electronically submit a first submission to
be entered and considered on the merits after final rejection
under the conditions set forth at 37 CFR 1.129(a).
Used by the applicant to electronically submit a second
submission to be entered and considered on the merits after a
subsequent final rejection under the conditions set forth at 37
CFR 1.129(a).
Used by the USPTO to automatically withdraw the finality of the
final rejection when the conditions of 37 CFR 1.129(a) have been
met.
Used by the USPTO to automatically withdraw the finality of the
subsequent final rejection when the conditions of 37 CFR
1.129(a) have been met.

Page 2 of 10

PATENTS 0651-0064
Patent Reexaminations and Supplemental Examination
AIA NPRM RIN 0651-AC69 Supporting Statement submitted to OMB for Review 1/25/12;
OMB Comment Filed 3/13/12
0064 - Requirement

Statute

Rule

Request for Supplemental Examination

35 U.S.C. § 257

37 CFR 1.20(k), 1.26(c)(3), 1.6011.625

Request for Ex Parte Reexamination

35 U.S.C. § 302

37 CFR 1.20(c)(1) and (7), 1.26(c)(1),
1.510-1.570

Petition in a Reexamination Proceeding
(except for those specifically enumerated in
37 CFR 1.550(i) and 1.937(d))

35 U.S.C. §§ 2, 303, and 312

37 CFR 1.20(c)(6), 1.181, 1.182,
1.183, 1.515(c), 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 1.17(g), 1.550(c) and 1.956

0064- Form and Function

Form #

Needs and Uses

Request for Supplemental
Examination Transmittal
Form

PTO/SB/59




Request for Supplemental
Examination

No Form





Used by the requester (patent owner) of a supplemental examination
as a checklist to ensure compliance with the requirements of the
statutes and rules for supplemental examinations.
Used by the USPTO to ensure compliance by the requester (patent
owner) with the requirements of the statutes and rules for supplemental
examinations.
Used by the requester (patent owner) to provide: an identification of
each aspect of the patent to be examined; an identification of each
issue raised by each item of information listed in the request; a
separate, detailed explanation for each identified issue; and an
explanation of how each item of information is relevant to each aspect
of the patent to be examined and of how each item of information
raises each identified issue.
Used by the USPTO to determine whether a substantial new question
of patentability affecting any claim of the patent is raised by the items of
information presented and identified in the request, and whether ex
parte reexamination of the patent should be ordered under 35 U.S.C. §
257.

Page 3 of 10

0064- Form and Function

Form #

Needs and Uses

Request for Ex Parte
Reexamination Transmittal
Form

PTO/SB/57




Request for Ex Parte
Reexamination

No Form






Petition in a Reexamination
Proceeding (except for those
specifically enumerated in 37
CFR 1.550(i) and 1.937(d))

No Form






Patent Owner’s 37 CFR
1.530 Statement

No Form






Third Party Requester’s 37
CFR 1.535 Reply

No Form






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




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 the requester (patent owner or third-party) to request review
by the Director of a decision refusing ex parte or inter partes
reexamination.
Used by the requester to raise a question not specifically provided for in
the rules or to request the suspension of the rules.
Used by the USPTO to determine whether the decision to refuse ex
parte or inter partes reexamination should be upheld.
Used by the USPTO to consider other questions and suspend or waive
the rule requirements if appropriate.
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.
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.

Page 4 of 10

0064- Form and Function

Form #

Needs and Uses

Response to Final Rejection
in Ex Parte Reexamination

No Form






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

No Form




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.

Page 5 of 10

PATENTS 0651-0069
Patent Review and Derivation Proceedings
AIA NPRM RINs 0651-AC70, AC71, AC72, AC73, AC74, and AC75 Supporting Statement
submitted to OMB for Review 2/9/12; OMB Comment Filed 3/27/12
0069 - Requirement

Statute

Rule

Petition for Inter Partes Review

35 U.S.C. § 312

37 CFR 42.5, 42.6, 42.8, 42.11, 42.13, 42.20,
42.21, 42.22, 42.24(a)(1), 42.63, 42.65, and
42.101 through 42.105

Petition for Post-Grant Review or Covered
Business Method Patent Review

35 U.S.C. § 322

37 CFR 42.5, 42.6, 42.8, 42.11, 42.13, 42.20,
42.21, 42.22, 42.24(a)(2), 42.24(a)(3), 42.63,
42.65, 42.201 through 42.205, and 42.302
through 42.304

Petition for Derivation

35 U.S.C. § 135

37 CFR 42.5, 42.6, 42.8, 42.11, 42.13, 42.20,
42.21, 42.22, 42.24(a)(4), 42.63, 42.65, 42.402
through 42.406

Reply to Petition for Inter Partes Review

35 U.S.C. § 313

37 CFR 42.6, 42.8, 42.11, 42.13, 42.21, 42.23,
42.24(c), 42.51, 42.52, 42.53, 42.54, 42.63 and
42.65

Reply to Petition for Post-Grant Review or
Covered Business Method Patent Review

35 U.S.C. § 323

37 CFR 42.6, 42.8, 42.11, 42.13, 42.21, 42.23,
42.24(c), 42.51, 42.52, 42.53, 42.54, 42.63 and
42.65

35 U.S.C. §§ 2(b)(2),
316(a)(13), and
326(a)(12)

37 CFR 42.71

Motions, Replies and Oppositions After
Institution in Inter Partes Review

35 U.S.C. § 316

37 CFR 42.6, 42.8, 42.11, 42.13, 42.21, 42.22,
42.23, 42.24(a)(5), 42.24(b), 42.24(c), 42.51,
42.52, 42.53, 42.54, 42.63, 42.64, 42.65, 42.107,
42.120, 42.121, and 42.123

Motions, Replies and Oppositions After
Institution in Post-Grant Review or Covered
Business Method Review

35 U.S.C. § 326

37 CFR 42.6, 42.8, 42.11, 42.13, 42.21, 42.22,
42.23, 42.24(a)(5), 42.24(b), 42.24(c), 42.51,
42.52, 42.53, 42.54, 42.63, 42.64, 42.65, 42.221,
42.207, 42.220 and 42.223

35 U.S.C. § 135(b)

37 CFR 42.6, 42.8, 42.11, 42.13, 42.21, 42.22,
42.23, 42.24(a)(5), 42.24(b), 42.24(c), 42.51,
42.52, 42.53, 42.54, 42.63, 42.64, 42.65

35 U.S.C. §§ 2(b)(2), 316
(a)(10), and 326(a)(10)

37 CFR 42.70

Request to Treat a Settlement as Business
Confidential

35 U.S.C. §§ 135(e),
317(a), and 327(a)

37 CFR 42.74(c) and 42.410

Request for Adverse Judgment, Default
Adverse Judgment or Settlement

35 U.S.C. §§ 2(b)(2),
135(e), 317, and 327

37 CFR 42.73(b) and 42.74(b)

35 U.S.C. § 135(f)

37 CFR 42.410

Request for Reconsideration

Motions, Replies and Oppositions in
Derivation Proceeding

Request for Oral Hearing

Arbitration Agreement and Award

Page 6 of 10

Request to Make a Settlement Agreement
Available
Notice of Judicial Review of a Board Decision
(e.g., Notice of Appeal Under 35 U.S.C. §
142)

0069 - Form and Function
Petition for Inter Partes Review

Form #
No Form
Associated

35 U.S.C. §§ 135(e),
317(b), and 327(b)

37 CFR 42.74(c)

35 U.S.C. §§ 141, 142,
145, and 146

37 CFR 90.1 through 90.3

Needs and Uses






Petition for Post-Grant Review or
Covered Business Method Patent
Review

No Form
Associated










Petition for Derivation

No Form
Associated






Used by parties who are not the owners of a patent to file a petition
to institute an inter partes review of a patent.
Used by parties to request to cancel as unpatentable one or more
claims of a patent only on a ground that could be raised under 35
U.S.C. § 102 or 103 and only on the basis of prior art consisting of
patents or printed publications.
Used by parties to demonstrate that they have standing to file the
petition (i.e., the patent is available for inter partes review and the
petitioner is not barred from requesting such review).
Used by the Board to determine whether to institute an inter partes
review including whether the petition identifies all real parties in
interest, identifies each claim challenged (including the grounds on
which the challenge to each claim is based, and the evidence that
supports the grounds), provides copies of the necessary
documents, and that the necessary fee is included.
Used by parties who are not owners of a patent to file a petition to
institute a post-grant review of a patent.
Used by parties to request to cancel as unpatentable one or more
claims of a patent on any ground that could be raised under 35
U.S.C. § 282(b)(2) or (3) (relating to invalidity of the patent or any
claim) as part of a post-grant review.
Used by parties to file a petition for a transitional proceeding with
respect to a covered business method patent when the person or
person’s real party in interest or privy has been sued for
infringement of the patent or has been charged with infringement
under that patent.
Used by the Board to determine whether to institute a post-grant
review including whether the petition identifies all real parties in
interest, identifies each claim challenged (including the grounds on
which the challenge to each claim is based and the evidence that
supports the grounds), provides copies of the necessary
documents, and that the necessary fee is included.
Used by the Board to determine whether to institute a transitional
proceeding for covered business method patents including whether
a claim is a method or corresponding apparatus for performing data
processing or other operations used in the practice, administration,
or management of a financial product or service and not a
technological invention.
Used by an applicant for patent to petition the Board to institute a
derivation proceeding.
Used by the applicant to demonstrate that they have standing to file
the petition for derivation (i.e., timely filing a petition that
demonstrates that the earlier filed application derived the claimed
invention and was filed by another inventor without authorization
and that the applicant has taken steps to obtain patent protection
for the invention).
Used by the Board to determine whether to institute a derivation
proceeding as long as the necessary requirements are met (i.e., the
petition identifies the precise relief requested, the petition is filed
within one year after the first publication of a claim to an invention,
the fee is submitted with the petition).

Page 7 of 10

0069 - Form and Function
Reply to Petition for Inter Partes
Review

Form #
No Form
Associated

Needs and Uses



Reply to Petition for Post-Grant
Review or Covered Business
Method Patent Review

No Form
Associated

Request for Reconsideration

No Form
Associated

Motions, Replies and Oppositions
After Institution in Inter Partes
Review

No Form
Associated



Used by patent owner to set forth reasons why no post-grant review
or covered business method review should be instituted.



Used by the Board together with the petition for post-grant review
or covered business method review to determine whether to
institute a post-grant review or covered business method review.



Used by parties to request the Board to reconsider the decision not
to institute a trial or another decision.



Used by the Board to review the original decision to not institute a
trial or another decision.



Used by parties to seek relief in a proceeding including motions to
amend, motions to exclude evidence, motions to seal, motions for
joinder, motions to file supplemental information, motions for
judgment based on supplemental information, motions for
observations on cross-examination, and motions to correct clerical
or typographical mistakes in a petition for inter partes review.
Used by the opposing parties to set forth the reasons why the
Board should not grant the relief sought in a motion.
Used by the Board in issuing a final written decision with respect to
patentability of a challenged patent claim.




Motions, Replies and Oppositions
After Institution in Post-Grant
Review or Covered Business
Method Review

No Form
Associated






Motions, Replies and Oppositions
in Derivation Proceeding

No Form
Associated






Request for Oral Hearing

No Form
Associated

Request to Treat a Settlement as
Business Confidential

No Form
Associated

No Form
Associated

Used by parties to seek relief in a proceeding including motions to
amend, motions to exclude evidence, motions to seal, motions for
joinder, motions to file supplemental information, motions for
judgment based on supplemental information, motions for
observations on cross-examination, and motions to correct clerical
or typographical mistakes in a petition for post-grant review or
covered business method patent review.
Used by the opposing parties to set forth the reasons why the
Board should not grant the relief sought in a motion.
Used by the Board in issuing a final written decision with respect to
patentability of a challenged patent claim.
Used by parties to seek relief in a proceeding including motions to
amend, motions to exclude evidence, motions to seal, motions for
joinder, motions to file supplemental information, motions for
judgment based on supplemental information, motions for
observations on cross-examination, and motions to correct clerical
or typographical mistakes in a petition for a derivation proceeding.
Used by the opposing parties to set forth the reasons why the
Board should not grant the relief sought in a motion.
Used by the Board in issuing a final written decision with respect to
the alleged derivation.




Used by parties to request an oral hearing.
Used by the Board to schedule an oral hearing if appropriate.



Used by parties to request that the settlement agreement be kept
confidential and be filed separately from the patent or application
file.
Used by the Board to provide that the settlement agreement be
designated as business confidential and kept separately from the
publicly available patent or application files.



Request for Adverse Judgment,
Default Adverse Judgment or
Settlement

Used by patent owner to set forth reasons why no inter partes
review should be instituted.
Used by the Board together with the petition for inter partes review
to determine whether to institute an inter partes review.




Used by a party to concede the contest.
Used by the Board to render judgment against the party conceding
the contest.

Page 8 of 10

0069 - Form and Function
Arbitration Agreement Award

Form #
No Form
Associated

Request to Make a Settlement
Agreement Available

No Form
Associated

Notice of Judicial Review of a
Board Decision (e.g., Notice of
Appeal Under 35 U.S.C. § 142)

No Form
Associated

Needs and Uses



Used by parties to give notice to the Office of the result of an
arbitration between parties.
Used by the Board to update the records of an instituted derivation
proceeding.




Used by a requester to gain access to a settlement agreement.
Used by the Board to determine whether the requester may be
granted access to the settlement agreement.



Used by parties to notify the USPTO that a party has filed a notice
of appeal or election.



Used by the Board to recognize that the final decision of the Board
has been appealed.

Page 9 of 10

PATENTS 0651-00xx
Matters Related to Patent Appeals
60-Day FRN published 1/4/12; public comment period ended 3/5/12.
Supporting
Statement in Progress (Items are currently covered under 0651-0031 and will be
transferred into this collection once it is established).
Matters Related to Patent Appeals - Requirement

Statute

Rule

Notice of Appeal (paper and electronic)

35 U.S.C. §134

37 CFR 1.191

Request for Oral Hearing Before the Board of Patent
Appeals and Interferences (paper and electronic)

35 U.S.C. §134

37 CFR 1.194(b)

Pre-Appeal Brief Request for Review (paper and
electronic)

35 U.S.C. §§2(b)(2) and 134

37 CFR 41.32

Matters Related to Patent Appeals Form and Function

Needs and Uses

Form #

Notice of Appeal

PTO/SB/31




Used by the applicant to file a Notice of Appeal.
Used by the USPTO to ensure that applicants comply with
regulations when filing a Notice of Appeal.

Electronic Notice of Appeal

PTO/SB/31




Used by the applicant to file a Notice of Appeal electronically.
Used by the USPTO to ensure that applicants comply with
regulations when filing a Notice of Appeal.

Request for Oral Hearing Before the
Board of Patent Appeals and
Interferences

PTO/SB/32



Used by the applicant to file a written request in a separate paper
for an oral hearing before the Board.
Used by the USPTO to process and consider the request for an
oral appeal hearing.

Electronic Request for Oral Hearing
Before the Board of Patent Appeals and
Interferences

PTO/SB/32

Pre-Appeal Brief Request for Review

PTO/SB/33







Electronic Pre-Appeal Brief Request for
Review

PTO/SB/33




Used by the applicant to electronically file a written request in a
separate paper for an oral hearing before the Board.
Used by the USPTO to process and consider the request for an
oral appeal hearing.
Used by the applicant to request that a panel of examiners
formally review the basis of the rejections in their application prior
to filing an appeal brief.
Used by the USPTO to determine whether an appeal should be
maintained.
Used by the applicant to electronically request that a panel of
examiners formally review the basis of the rejections in their
application prior to filing an appeal brief.
Used by the USPTO to determine whether an appeal should be
maintained.

Page 10 of 10