Patent Reexaminations and Supplemental Examinations
Revision of a currently approved collection
No
Regular
Approved without change
09/11/2012
09/11/2012
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.
table that charts list comparision
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))