0651-0067 Post Patent Public Sub AIA Final Rule-SupStmt-Jun2012

SUPPORTING STATEMENT
United States Patent and Trademark Office
Post Patent Public Submissions
OMB CONTROL NUMBER 0651-0067
(June 2012)

A.

JUSTIFICATION

1.

Necessity of Information Collection

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.

Table 1 identifies the statutory and regulatory provisions that will require the USPTO to
collect this information:
Table 1: Information Requirements for Post Patent Public Submissions
Requirement

Information Disclosure Citation in a Patent (paper and electronic)

2.

Statute

Rule

35 U.S.C. § 301

37 CFR 1.501

Needs and Uses

This information collection is necessary so that the public may submit, in a patent file,
prior art patents and printed publications that a person making the submission believes
to have a bearing on the patentability of any claim of the patent, and statements of the
patent owner that were filed by the patent owner 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. The public may use this information to aid in ascertaining the patentability
and/or scope of the claims of the patent. The USPTO may use the information during
subsequent reissue or reexamination proceedings, except that the USPTO’s use of
statements of the patent owner that were filed by the patent owner in a proceeding
before a Federal court or the USPTO will be limited to determining the meaning of a
patent claim in ex parte reexamination proceedings that have already been ordered and
in inter partes review and post grant review proceedings that have already been
instituted.
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 this information collection and its supporting statement
comply with all applicable information quality guidelines, i.e., OMB and specific
operating unit guidelines.
Table 2: Needs and Uses for Post Patent Public Submissions
Form and Function

Information Disclosure Citation in a
Patent (paper and electronic)

3.

Form #

Needs and Uses

PTO/SB/42

 Used by the public to submit, in a patent file, prior art patents
and printed publications that a person making the submission
believes to have a bearing on the patentability of any claim of
the patent, and statements of the patent owner that were filed by
the patent owner 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.
 Used by the USPTO, as appropriate, in subsequent reissue or
reexamination proceedings.

Use of Information Technology

The USPTO will permit information disclosure citations in a patent to be submitted via
its electronic filing system (EFS-Web). However, a submission made by a party other

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than the patent owner will not be entered into the patent’s Image File Wrapper (IFW) if it
does not include proof of service compliant with 37 CFR 1.248(b). Where a citation
complies with the rule, all information included in the citation will be made of record in
the IFW of the patent.
4.

Efforts to Identify Duplication

This information will be collected during the enforceability of a patent.
duplicate information or collection of data found elsewhere.
5.

It will not

Minimizing the Burden to Small Entities

This collection of information will not impose a significant economic impact on a
substantial number of small entities. The burden to all entities, including small entities,
imposed by the information requirements associated with the final rule is a minor
addition to that of the current regulations for information disclosure citations in a patent
under 37 CFR 1.501. Furthermore, there are no filing fees associated with this
information collection.
6.

Consequences of Less Frequent Collection

This information will be collected only when a member of the public submits an
information disclosure citation in a patent. If this information were not collected, the
public would not be able to exercise its statutory right under 35 U.S.C. 301 to cite to the
USPTO in writing (a) prior art patents or printed publications that a person making the
submission believes to have a bearing on the patentability of any claim of a particular
patent, or (b) statements of the patent owner that were filed by the patent owner 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. Therefore, this collection of
information could not be conducted less frequently.
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 published a notice of proposed rulemaking titled “Changes to Implement
Miscellaneous Post Patent Provisions of the Leahy-Smith America Invents Act” (RIN
0651-AC66) in the Federal Register and sought comments from the public on the notice
of proposed rulemaking and considered those comments in development of the final
rule.
The USPTO has consulted with the public about the AIA in general through the agency
microsite at http://www.uspto.gov/aia_implementation/index.jsp.

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The USPTO has long-standing relationships with groups from whom patent application
data is collected, such as the American Intellectual Property Law Association (AIPLA),
as well as patent bar associations, inventor groups, and users of our public facilities.
Views expressed by these groups are considered in developing proposals for
information collection requirements.
9.

Payment or Gifts to Respondents

This information collection does not involve a payment or gift to any respondent.
10.

Assurance of Confidentiality

The information will be collected from any person who elects to cite, in an issued patent,
prior art patents or printed publications, or statements of the patent owner that were
filed by the patent owner 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. Confidentiality
of patent applications is governed by 35 U.S.C. § 122 and 37 CFR 1.14, and upon
issuance of an application as a patent, the entire file contents of the application are
available to the public (subject to the provisions for providing only a redacted copy of
the filed contents). Therefore, information disclosure citations in a patent are
necessarily available to the public as well.
However, 37 CFR 1.501(d) states that “[i]f the person making the submission wishes his
or her identity to be excluded from the patent file and kept confidential, the submission
papers must be submitted anonymously without any identification of the person making
the submission.”
11.

Justification for Sensitive Questions

None of the required information 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 a total of 1,000 responses to this information
collection annually, of which 250 will be filed by small entities. The USPTO estimates
that 930 of the 1,000 responses will be filed electronically.
These estimates are based on the Agency’s long-standing institutional knowledge of and
experience with the type of information collected by these items.



Burden Hour Calculation Factors
The USPTO estimates that it will take the public 10 hours to complete the collection of
information. This includes time to gather the necessary information, create the
document, and submit the completed request to the USPTO. The USPTO calculates
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that, on balance, it takes the same amount of time to gather the necessary information,
create the document, and submit it to the USPTO, whether the applicant submits the
information in paper form or electronically.
These estimates are based on the Agency’s long-standing institutional knowledge of and
experience with the type of information collected by these items.


Cost Burden Calculation Factors
The USPTO estimates a rate of $371 per hour. The USPTO uses a professional rate of
$371 per hour for respondent cost burden calculations, which is the mean rate for
attorneys in private firms as shown in the 2011 Report of the Economic Survey,
published by the Committee on Economics of Legal Practice of the American Intellectual
Property Law Association (AIPLA).
Based on the Agency’s long-standing

institutional knowledge of and experience with the type of information collected,
the Agency believes $371 is an accurate estimate of the cost per hour to collect
this information.
Table 3: Burden Hour/Burden Cost to Respondents for Post Patent Public Submissions
Item

Hours
(a)

Responses
(yr)
(b)

Burden
(hrs/yr)
(a) x (b)
(c)

Rate
($/hr)
(d)

Total Cost
($/hr)
(c) x (d)
(e)

Electronic Information Disclosure Citation in a
Patent

10.0

930

9,300

$371.00

$3,450,300.00

Information Disclosure Citation in a Patent

10.0

70

700

$371.00

$259,700.00

1,000

10,000

Total

13.

- - - - -

- - - - -

$3,710,000.00

Total Annualized Cost Burden

There are postage costs associated with information disclosure citations in a patent.
Customers may incur postage costs when submitting the information in this collection to
the USPTO by mail through the United States Postal Service. The USPTO estimates
that the average first-class postage cost for a mailed one-pound submission will be
$4.95 and approximately 70 submissions will be submitted to the USPTO requiring
postage. Therefore, the estimated postage cost for this collection will be $347.
Therefore, the USPTO estimates that that the total annualized (non-hour) cost burden
for this collection due to the postage costs is $347 per year.
14.

Annual Cost to the Federal Government

The USPTO estimates that it takes a GS-7, step 1 approximately 30 minutes (0.50
hours) to process the items in this collection. The hourly rate for a GS-7, step 1, is
currently $20.22 according to the U.S. Office of Personnel Management’s (OPM’s)
wage chart, including locality pay for the Washington, DC area. When 30% is added to

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account for a fully loaded hourly rate (benefits and overhead), the rate per hour for a
GS-7, step 1, is $26.29 ($20.22 + $6.07).
Estimates are based on the Agency’s long-standing institutional knowledge of and
experience with processing the type of information collected and the length of time
necessary to process similar or like information.
Table 4 calculates the processing hours and costs of this information collection to the
Federal Government:
Table 4:
Burden Hour/Burden Cost to the Federal Government for Post Patent Public
Submissions
Item

Hours
(a)

Responses
(yr)
(b)

Burden
(hrs/yr)
(a) x (b)
(c)

Rate
($/hr)
(d)

Total Cost
($/hr)
(c) x (d)
(e)

Electronic Information Disclosure Citation in a
Patent

0.50

930

465

$26.29

$12,225.00

Information Disclosure Citation in a Patent

0.50

70

35

$26.29

$920.00

1,000

500

- - - - -

$13,145.00

Total

15.

- - - - -

Reason for Change in Burden

The USPTO is submitting this new information collection request in support of a final
rule titled “Changes to Implement Miscellaneous Post Patent Provisions of the LeahySmith America Invents Act” (RIN 0651-AC66). In the final rule, 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. The new requirement proposed in the final rule is a
requirement of statute (i.e., the submission of patent owner statements) and thus the
sole means of accomplishing the purpose of the statute.
Changes in Responses, Burden Hours, and Respondent Cost Burden
The Information Disclosure Citation in a Patent (PTO/SB/42) is currently in the 06510031 Patent Processing (Updating) approved inventory and is being moved into this
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 a total respondent
cost burden of $1,112,640 based on a previous estimated attorney rate of $304 per
hour.
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 adjustments
are due to non-rule factors. As noted in Section 12 above, the USPTO estimates the
current hourly rate for respondents to be $371. This is the mean attorney rate published
in the American Intellectual Property Law Association (AIPLA) Report of the Economic
Survey, which is published every two years. Based on the USPTO’s institutional
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knowledge of and experience with the type of information in this collection, the USPTO
estimates $371 to be an accurate benchmark. Using the updated estimated attorney
rate of $371 per hour, the total respondent cost burden for the adjusted estimate of
6,000 burden hours is $2,226,000.
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 due
to the rule impact. Using the updated estimated attorney rate of $371 per hour, this
increase of 4,000 burden hours results in a corresponding increase of $1,484,000 in
respondent cost burden due to the rule impact, for a revised total estimate of 10,000
burden hours and $3,710,000 in respondent cost burden for this collection. These
changes are summarized in Table 5 below.
Changes in Annual (Non-hour) Cost Burden
The Information Disclosure Citation in a Patent (PTO/SB/42) is currently in the 06510031 Patent Processing (Updating) approved inventory with associated annual (nonhour) cost burden of $1,061 from postage costs. Based on the adjusted estimate of 600
responses per year and a revised estimated postage cost of $4.95 per submission, the
total postage cost would be $2,970, an increase of $1,909 due to non-rule factors.
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 from the rule
impact, the USPTO expects a large decrease in the number of submissions by mail due
to increased electronic filing (non-rule impact), resulting in a net decrease of $2,623 in
total postage costs for this collection. These changes are summarized in Table 5
below.
Rulemaking/Non-Rulemaking Impact
Table 5: Changes – Rulemaking/Non-Rulemaking Impact
Current
Inventory
Moved from
0651-0031
(Non-rule
Impact)

Administrative
Adjustments
to Burden
Estimates
(Non-rule
Impact)

Net
Estimated
Burden
Before Rule

Rulemaking
Impact

Additional
Non-rule
Impact

New
Proposed
Burden
Estimates

Responses

1,830

Decrease of
1,230

600

Increase of
400

0

1,000

Hours

3,660

Increase of
2,340

6,000

Increase of
4,000

0

10,000

$1,112,640

Increase of
$1,113,360

$2,226,000

Increase of
$1,484,000

0

$3,710,000

$1,061

Increase of
$1,909

$2,970

$0

Decrease of
$2,623

$347

Respondent Cost Burden

(Non-Hour) Cost Burden
(Postage)

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16.

Project Schedule

There is no plan to publish this information for statistical use. No special publication of
the items discussed in this justification statement is planned.
17.

Display of Expiration Date of OMB Approval

The form in this information collection (PTO/SB/42) will display the OMB Control
Number and expiration date.
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.

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