Pre-approval
contingent upon no substantive changes to this collection after
adoption of the final rule. Otherwise this collection should be
re-submitted to OMB for review.
Inventory as of this Action
Requested
Previously Approved
07/31/2015
36 Months From Approved
1,000
0
0
10,000
0
0
347
0
0
The United States Patent and Trademark
Office (USPTO) is required by 35 U.S.C. 131 et seq. to examine an
application for patent and, when appropriate, issue a patent.
Currently, the provisions of 35 U.S.C. 301 and 37 CFR 1.501 govern
the ability of a person to cite to the USPTO in writing prior art
consisting of patents or printed publications which that person
believes to have a bearing on the patentability of any claim of a
patent. The Leahy-Smith America Invents Act was enacted into law on
September 16, 2011. See Pub. L. 112-29, 125 Stat. 284 (2011).
Section 6(g) of the Leahy-Smith America Invents Act amends 35
U.S.C. 301 to expand the information that may be submitted in the
file of an issued patent to include written statements of a patent
owner filed in a proceeding before a Federal court or the USPTO in
which the patent owner took a position on the scope of any claim of
the patent. Section 6(g) of the Leahy-Smith America Invents Act is
effective on September 16, 2012. The USPTO published a final rule
titled "Changes to Implement Miscellaneous Post Patent Provisions
of the Leahy-Smith America Invents Act" (RIN 0651-AC66) in the
Federal Register. In the notice, the USPTO rewrites 37 CFR 1.501 to
implement the amendment to 35 U.S.C. 301 by section 6(g)(1) of the
Leahy-Smith America Invents Act. For example, new 35 U.S.C.
301(a)(2) provides for any person to submit in the patent file
written "statements of the patent owner filed in a proceeding
before a Federal court or the [USPTO] in which the patent owner
took a position on the scope of any claim of a particular patent."
Section 1.501, implementing 35 U.S.C. 301(a)(2), provides that a
submission may include prior art and written patent owner claim
scope statements. In light of the final rule, the USPTO is
submitting this new information collection, Post Patent Public
Submissions. The item associated with this collection, "Information
Disclosure Citation in a Patent" (PTO/SB/42), is currently in the
0651-0031 Patent Processing (Updating) approved inventory and will
be deleted from that collection when this one is approved. The
information in this collection can be submitted electronically
through EFS-Web, the USPTO's web-based electronic filing system, as
well as on paper. The USPTO is therefore accounting for both
electronic and paper submissions in this collection.
The Information Disclosure
Citation in a Patent (PTO/SB/42) is currently in the 0651-0031
approved inventory and is being moved into this new collection.
This item is currently approved with 1,830 estimated responses and
3,660 burden hours, with an estimated time per response of 2 hours
and associated annual (non-hour) cost burden of $1,061 from postage
costs. This current burden is being moved into this collection as a
program change due to agency discretion. Based on the most recent
available data, the USPTO estimates that it receives approximately
600 Information Disclosure Citations per year with a revised
estimated time per response of 10 hours, for a total of 6,000
burden hours. These administrative adjustments are due to non-rule
factors. For this final rule submission, the USPTO estimates that
it will receive 1,000 responses per year, which is an increase of
400 responses and 4,000 burden hours per year as a program change
due to statute as implemented by this final rule. For this final
rule submission, the USPTO estimates that the total postage cost
for this collection will be $347. Although the estimated responses
are increasing by 400 from the rule impact, the USPTO expects a
large decrease in the number of submissions by mail due to
increased electronic filing, resulting in a net decrease of $714 in
annual (non-hour) cost burden from postage costs for this
collection as an administrative adjustment due to non-rule
factors.
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.
Information Disclosure Citation in a Patent