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
02/28/2013
9,560
0
5,124
235,365
0
161,128
35,592,825
0
5,577,265
The USPTO published a final rule
titled "Changes to Implement the Supplemental Examination
Provisions of the Leahy-Smith America Invents Act and to Revise
Reexamination Fees" (RIN 0651-AC69) in the Federal Register. In the
final rule, the USPTO is revising the rules of practice in title 37
of the Code of Federal Regulations (CFR) 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 setting certain fees to
implement supplemental examination, adjusting the fee for filing a
Request for Ex Parte Reexamination, and setting a fee for petitions
filed in reexamination proceedings to more accurately reflect the
estimated average cost to the Office for these processes. In
support of the final rule, the USPTO is submitting this information
collection to add new information requirements and update existing
information requirements that would be impacted by the rulemaking.
The modifications to this information collection include the
following: + Addition of Requests for Supplemental Examination and
associated fees. + Revision of estimated annual responses for
existing items related to ex parte reexaminations that would be
impacted by the addition of supplemental examinations. + Revision
of fees for reexamination items as outlined in the final rule
notice, including refunds for refused reexamination requests and
updated fees for certain petitions in reexamination proceedings. +
Adjustment of time estimates for Requests for Ex Parte and Inter
Partes Reexamination based on recent data. + Minor revision to Form
PTO/SB/57 to support the final rule, allowing the respondent to
certify that the statutory estoppel provisions of 35 U.S.C. § 315
(e)(1) or 35 U.S.C. § 325 (e)(1) do not prohibit the respondent
from filing the request for ex parte reexamination. (See 37 CFR
1.510 (b)(6).) 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 to estimated
responses and burden hours are due to the addition of Requests for
Supplemental Examination, changes to estimated responses for
requirements related to Requests for Ex Parte Reexamination, and
the addition of petitions under 37 CFR 1.182 and 1.183 (included in
the Petitions in a Reexamination Proceeding requirement) to this
collection. Administrative adjustments to estimated burden hours
are due to revised time estimates for preparing and submitting
Requests for Ex Parte and Inter Partes Reexamination. Program
changes to annual cost burden are primarily due to an increase in
estimated fees from several factors: 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, and increases in responses and the
associated total fees for Petitions to Request Extension of Time in
Ex Parte or Inter Partes Reexaminations. There are also program
changes for a net increase in postage costs associated with
submitting items related to supplemental examinations and ex parte
reexaminations by mail and a decrease for removing recordkeeping
costs related to submitting items in this collection
electronically. Administrative adjustments to annual cost burden
are due to decreases in postage costs from an overall decrease in
the expected number of mailed submissions.
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-NFR-Jul2012.pdf
Petition in a Reexamination Proceeding (except for those specifically enumerated in 37 CFR 1.550(i) and 1.937(d))