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pdfSUPPORTING STATEMENT
United States Patent and Trademark Office
Patent Reexaminations and Supplemental Examinations
(formerly Patent Reexaminations)
OMB CONTROL NUMBER 0651-0064
(July 13, 2012)
A.
Justification
1.
Necessity of Information Collection
The United States Patent and Trademark Office (USPTO) is required by 35 U.S.C. §§
131 and 151 to examine applications and, when appropriate, allow applications and
issue them as patents. Chapter 30 of Title 35 U.S.C. provides that any person at any
time may file a request for reexamination by the USPTO of any claim of a patent on the
basis of prior art patents or printed publications. Once initiated, the reexamination
proceedings under Chapter 30 are substantially ex parte and do not permit input from
third parties. Chapter 31 of Title 35 U.S.C. provides for inter partes reexamination
allowing third parties to participate throughout the reexamination proceeding. If a
request for ex parte or inter partes reexamination is denied, the requester may petition
the Director to review the examiner’s refusal of reexamination. The rules outlining ex
parte and inter partes reexaminations are found at 37 CFR 1.510-1.570 and 1.9021.997.
The Requests for Ex Parte and Inter Partes Reexamination are distinct collections from
the Request for Ex Parte Reexamination Transmittal Form and the Request for Inter
Partes Reexamination Transmittal Form, respectively. Whereas the Transmittal Forms
are used by a requester (patent owner or third party) as a checklist to ensure
compliance with the requirements of the statutes and rules for ex parte and inter partes
reexaminations, the Requests themselves represent the substantive analysis
undertaken by a requester of reexamination. Other items included in this collection
cover additional information that may be submitted by patent owners and third-party
requesters in relation to a reexamination proceeding.
The Patent Owner’s 37 CFR 1.530 Statement allows patent owners to respond to an
order for ex parte reexamination with a statement pointing out why the patent claims are
believed to be patentable, considering the cited prior art patents or printed publications
alone or in any reasonable combination. The Statement also allows patent owners to
propose narrowing amendments to the patent claims in response to an order for ex
parte reexamination. The Third Party Requester’s 37 CFR 1.535 Reply allows thirdparty requesters to respond to the Patent Owner’s 37 CFR 1.530 Statement. The Reply
may include additional prior art patents and printed publications and may raise any
issue appropriate for ex parte reexamination.
Amendments in Ex Parte or Inter Partes Reexaminations allow patent owners to
respond to Office actions by pointing out why the patent claims are believed to be
patentable. Amendments also allow patent owners to propose narrowing amendments
to the patent claims. The Third Party Requester’s 37 CFR 1.947 Comments in Inter
Partes Reexamination allow third-party requesters during the examination stage of an
inter partes reexamination to file written comments on any patent owner response to an
Office action. The Comments must be directed to points and issues covered by the
Office action and/or the patent owner's response.
Responses to Final Rejections in Ex Parte Reexaminations allow patent owners to
respond to final rejections in ex parte reexaminations by pointing out why the patent
claims are believed to be patentable. Responses also allow patent owners to propose
narrowing amendments to the patent claims.
The Patent Owner’s 37 CFR 1.951 Response in Inter Partes Reexaminations allows
patent owners to respond to Actions Closing Prosecution in inter partes reexaminations
by pointing out why the patent claims are believed to be patentable. Responses also
allow patent owners to propose narrowing amendments to the patent claims. The Third
Party Requester’s 37 CFR 1.951 Comments in Inter Partes Reexamination allow thirdparty requesters in an inter partes reexaminations to file written comments on any
patent owner response to an Action Closing Prosecution. The Comments must be
directed to the patent owner's response to an Action Closing Prosecution and/or the
issues raised in the Action Closing Prosecution.
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:
2
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).)
Table 1 provides the specific statutes and regulations authorizing the USPTO to collect
the information discussed above:
Table 1: Information Requirements
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
Request for Inter Partes Reexamination
35 U.S.C. § 311
37 CFR 1.26(c)(2), 1.902-1.997
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
3
2.
Needs and Uses
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.
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 outlines how this collection of information will be used by the public and the
USPTO:
Table 2: Needs and Uses
Form and Function
Form #
Needs and Uses
Request for Supplemental
Examination Transmittal
Form
PTO/SB/59
Request for Supplemental
Examination
No Form
Request for Ex Parte
Reexamination Transmittal
Form
PTO/SB/57
Request for Ex Parte
Reexamination
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.
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.
4
Form and Function
Form #
Needs and Uses
Request for Inter Partes
Reexamination Transmittal
Form
PTO/SB/58
Request for Inter Partes
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 a third-party requester of an inter partes reexamination as a
checklist to ensure compliance with the requirements of the statutes
and rules for inter partes reexamination.
Used by the USPTO to ensure compliance by the third-party requester
with the requirements of the statutes and rules for inter partes
reexamination.
Used by the third-party requester to provide a statement identifying
each substantial new question of patentability.
Used by the third-party requester 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 third-party requester.
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.
5
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
3.
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.
Use of Information Technology
The forms associated with this collection may be downloaded from the USPTO Web site
in Portable Document Format (PDF) and filled out electronically. Requests for
Supplemental Examination and the other items in this collection may be submitted
online using EFS-Web, the USPTO’s Web-based electronic filing system.
EFS-Web allows customers to file patent applications and associated documents
electronically through their standard Web browser without downloading special
software, changing their document preparation tools, or altering their workflow
processes. Typically, the customer will prepare the forms or documents as standard
PDF files and then upload them to the USPTO servers using the secure EFS-Web
interface. EFS-Web offers many benefits to filers, including immediate notification that
a submission has been received by the USPTO, automated processing of requests, and
avoidance of postage or other paper delivery costs.
4.
Efforts to Identify Duplication
This information is collected only when a respondent files a request related to patent
reexamination or supplemental examination.
This information is not collected
elsewhere and does not result in a duplication of effort.
6
5.
Minimizing Burden to Small Entities
The information in this collection is necessary in order to process requests related to
patent reexaminations and supplemental examinations. The same information is
required from every requester and is not available from any other source.
6.
Consequences of Less Frequent Collection
This information is collected only when the public submits an item related to a request
for reexamination or supplemental examination and is not found elsewhere. If the
information were not collected, the USPTO would not be able to comply with the
statutes and regulations governing reexaminations and supplemental examinations.
This information could not be collected less frequently.
7.
Special Circumstances in the Conduct of Information Collection
There are no special circumstances associated with this collection of information.
8.
Consultations Outside the Agency
The USPTO published a notice of proposed rulemaking 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 on January
25, 2012 (77 Fed. Reg. 3666). The USPTO received comments from the public in
response to the proposed rulemaking and has 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.
The USPTO has long-standing relationships with groups from whom reexamination data
is collected, such as the American Intellectual Property Law Association (AIPLA), as
well as patent bar associations, independent 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 confidentiality of patent applications is governed by statute (35 U.S.C. § 122) and
regulation (37 CFR 1.11 and 1.14). The USPTO has a legal obligation to maintain the
confidentiality of the contents of unpublished patent applications and related
documents. Upon publication of an application or issuance of a patent, the patent
7
application file is made available to the public, subject to the provisions for providing
only a redacted copy of the file contents. The entire file of an ex parte or inter partes
reexamination proceeding is available to the public. Likewise, the entire file of a
supplemental examination proceeding will be made available to the public.
11.
Justification for Sensitive Questions
None of the required information in this collection is considered to be sensitive.
12.
Estimate of Hour and Cost Burden to Respondents
Table 3a calculates the 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 approximately 9,560 responses per
year for this collection. For this final rule, the USPTO considered approximately
36% of all supplemental examination responses and 100% of all responses for
requests for ex parte reexamination and petitions in a reexamination proceeding
(except for those specifically enumerated in 37 CFR 1.550(i) and 1.937(d)) to be
submitted by small entities. Approximately 85% of the responses for this
collection will be submitted electronically via EFS-Web.
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 from 18 minutes (0.30 hours) to
135 hours to gather the necessary information, prepare the appropriate form or
other documents, and submit the information to the USPTO.
These estimates are based on the Agency’s long-standing institutional
knowledge of and experience with the type of information collected and the
length of time necessary to complete responses containing similar or like
information.
Cost Burden Calculation Factors
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 American
Intellectual Property Law Association (AIPLA). Based on the Agency’s longstanding institutional knowledge of and experience with the type of information
collected, the Agency believes $371 is an accurate estimate of the cost per hour
to collect this information.
8
Table 3a: Burden Hour/Burden Cost to Respondents
Item
Hours
(a)
Responses
(yr)
(b)
Burden
(hrs/yr)
(c)
(a x b)
Rate
($/hr)
(d)
Total Cost
($/yr)
(e)
(c x d)
0.30
1,430
429
$371.00
$159,159.00
25.00
1,430
35,750
$371.00
$13,263,250.00
Request for Ex Parte Reexamination
Transmittal Form (PTO/SB/57)
0.30
690
207
$371.00
$76,797.00
Request for Ex Parte Reexamination
55.00
690
37,950
$371.00
$14,079,450.00
0.30
380
114
$371.00
$42,294.00
135.00
380
51,300
$371.00
$19,032,300.00
23.00
850
19,550
$371.00
$7,253,050.00
Patent Owner’s 37 CFR 1.530
Statement
8.00
105
840
$371.00
$311,640.00
Third Party Requester’s 37 CFR 1.535
Reply
8.00
60
480
$371.00
$178,080.00
Amendment in Ex Parte or Inter
Partes Reexamination
33.00
1,750
57,750
$371.00
$21,425,250.00
Third Party Requester’s 37 CFR 1.947
Comments in Inter Partes
Reexamination
41.00
300
12,300
$371.00
$4,563,300.00
Response to Final Rejection in Ex
Parte Reexamination
17.00
560
9,520
$371.00
$3,531,920.00
Patent Owner’s 37 CFR 1.951
Response in Inter Partes
Reexamination
41.00
120
4,920
$371.00
$1,825,320.00
Third Party Requester’s 37 CFR 1.951
Comments in Inter Partes
Reexamination
41.00
95
3,895
$371.00
$1,445,045.00
Petition to Request Extension of Time
in Ex Parte or Inter Partes
Reexamination
0.50
720
360
$371.00
$133,560.00
--------
9,560
235,365
---------
$87,320,415.00
Request for Supplemental
Examination Transmittal Form
(PTO/SB/59)
Request for Supplemental
Examination
Request for Inter Partes
Reexamination Transmittal Form
(PTO/SB/58)
Request for Inter Partes
Reexamination
Petition in a Reexamination
Proceeding (except for those
specifically enumerated in 37 CFR
1.550(i) and 1.937(d))
Totals
Table 3b shows the impact of the rulemaking and non-rulemaking changes to the
burden estimates for this information collection:
9
Table 3b: Burden Changes – Rulemaking/Non-Rulemaking Impact
Current
Inventory
Responses
Burden Hours
Respondent Cost
Burden
13.
Rulemaking Impact
Non-rule Impact
Total Change
New Proposed
Burden
Estimate
5,124
Increase of 3,620
Increase of 816
Increase of
4,436
9,560
161,128
Increase of 52,819
Increase of 21,418
Increase of
74,237
235,365
$52,366,600
Increase of
$18,830,409
Increase of
$16,123,406
Increase of
$34,953,815
$87,320,415
Total Annual (Non-hour) Cost Burden
The total annual (non-hour) respondent cost burden for this collection is estimated to be
approximately $35,592,825 per year, which includes $35,587,868 in fees and $4,957 in
postage.
Fees
The USPTO estimates that the total fees associated with this collection will be
approximately $35,587,868 per year, including $35,136,560 in filing fees (calculated in
Table 4a below) and $451,308 in surcharges for oversized documents.
(Note: In the final rule, the basic fee of $5,140 for filing a request for supplemental
examination has been reduced from the original fee of $5,180 set forth in the proposed
rulemaking.)
Table 4a: Filing Fees for Respondents
Item
Estimated
annual
responses
Fee Amount
Estimated
annual
filing costs
Request for Supplemental Examination Transmittal Form
(PTO/SB/59) – Granted (total fee of $5,140 for the request plus
$16,120 for the ensuing reexamination)
715
$21,260.00
$15,200,900.00
Request for Supplemental Examination Transmittal Form
(PTO/SB/59) – Denied (net fee for a refused request, after refund)
715
$5,140.00
$3,675,100.00
1,430
$0.00
$0.00
Request for Ex Parte Reexamination Transmittal Form (PTO/SB/57)
– Granted
620
$17,750.00
$11,005,000.00
Request for Ex Parte Reexamination – Denied (net fee for a refused
request, after refund)
70
$4,320.00
$302,400.00
Request for Ex Parte Reexamination
690
$0.00
$0.00
Request for Inter Partes Reexamination Transmittal Form
(PTO/SB/58) – Granted
358
$8,800.00
$3,150,400.00
22
$830.00
$18,260.00
Request for Supplemental Examination
Request for Inter Partes Reexamination – Denied (net fee for a
refused request, after refund)
10
Item
Estimated
annual
responses
Fee Amount
Estimated
annual
filing costs
Request for Inter Partes Reexamination
380
$0.00
$0.00
Petition in a Reexamination Proceeding (except for those specifically
enumerated in 37 CFR 1.550(i) and 1.937(d))
850
$1,930.00
$1,640,500.00
Patent Owner’s 37 CFR 1.530 Statement
105
$0.00
$0.00
60
$0.00
$0.00
1,750
$0.00
$0.00
Third Party Requester’s 37 CFR 1.947 Comments in Inter Partes
Reexamination
300
$0.00
$0.00
Response to Final Rejection in Ex Parte Reexamination
560
$0.00
$0.00
Patent Owner’s 37 CFR 1.951 Response in Inter Partes
Reexamination
120
$0.00
$0.00
Third Party Requester’s 37 CFR 1.951 Comments in Inter Partes
Reexamination
95
$0.00
$0.00
Petition to Request Extension of Time in Ex Parte or Inter Partes
Reexamination
720
$200.00
$144,000.00
Third Party Requester’s 37 CFR 1.535 Reply
Amendment in Ex Parte or Inter Partes Reexamination
Totals
9,560
......
$35,136,560.00
There are additional surcharges for oversized documents submitted with a Request for
Supplemental Examination as specified in 37 CFR 1.20(k)(3). Each of the 1,430
responses may have up to 10 associated documents, and the USPTO estimates that
approximately 12% (1,716) of these 14,300 documents may be oversized. The USPTO
also estimates that, on average, approximately 2/3 of the oversized documents will incur
the $170 surcharge for being 21 to 50 pages in length and 1/3 will incur a $450
surcharge for being 51 to 100 pages in length, for an average surcharge of $263 per
oversized document.
Therefore, the total estimated surcharges for oversized
documents in Requests for Supplemental Examination will be $451,308 (1,716
oversized documents at $263 each).
Postage
The USPTO expects that approximately 85 percent of the responses in this collection
will be submitted electronically and 15 percent will be submitted by mail. The USPTO
estimates that the average postage cost for a mailed submission will be 45 cents for
Petitions to Request Extension of Time and $5.15 for all other mailed submissions.
(The documentation for requests for supplemental examination and requests for ex
parte or inter partes reexamination will typically be mailed to the USPTO with the
appropriate transmittal form.) The USPTO estimates that the total postage cost
associated with this collection will be approximately $4,957 per year, as calculated in
Table 4b below.
11
Table 4b: Postage Costs for Respondents
Item
Estimated
annual mailed
responses
Estimated
postage
amount
Estimated
annual postage
costs
Request for Supplemental Examination Transmittal Form
(PTO/SB/59)
215
$5.15
$1,107.00
Request for Supplemental Examination (submitted with transmittal
form above)
215
$0.00
$0.00
Request for Ex Parte Reexamination Transmittal Form (PTO/SB/57)
104
$5.15
$536.00
Request for Ex Parte Reexamination (submitted with transmittal form
above)
104
$0.00
$0.00
Request for Inter Partes Reexamination Transmittal Form
(PTO/SB/58)
57
$5.15
$294.00
Request for Inter Partes Reexamination (submitted with transmittal
form above)
57
$0.00
$0.00
128
$5.15
$659.00
16
$5.15
$82.00
9
$5.15
$46.00
263
$5.15
$1,354.00
Third Party Requester’s 37 CFR 1.947 Comments in Inter Partes
Reexamination
45
$5.15
$232.00
Response to Final Rejection in Ex Parte Reexamination
84
$5.15
$433.00
Patent Owner’s 37 CFR 1.951 Response in Inter Partes
Reexamination
18
$5.15
$93.00
Third Party Requester’s 37 CFR 1.951 Comments in Inter Partes
Reexamination
14
$5.15
$72.00
Petition to Request Extension of Time in Ex Parte or Inter Partes
Reexamination
108
$0.45
$49.00
Petition in a Reexamination Proceeding (except for those specifically
enumerated in 37 CFR 1.550(i) and 1.937(d))
Patent Owner’s 37 CFR 1.530 Statement
Third Party Requester’s 37 CFR 1.535 Reply
Amendment in Ex Parte or Inter Partes Reexamination
Totals
1,437
......
$4,957.00
Table 4c shows the impact of the rulemaking and non-rulemaking changes to the
annual (non-hour) cost burden estimates for this information collection:
12
Table 4c: Annual (Non-hour) Cost Burden Changes – Rulemaking/Non-Rulemaking Impact
Current
Inventory
Fees
Total Change
New Proposed
Burden
Estimate
Increase of
$29,810,308
Increase of
$209,160
Increase of
$30,019,468
$35,587,868
$8,565
Increase of $1,645
Decrease of
$5,253
Decrease of
$3,608
$4,957
$300
None
Decrease of $300
Decrease of
$300
$0
$5,577,265
Increase of
$29,811,953
Increase of
$203,607
Increase of
$30,015,560
$35,592,825
Recordkeeping
14.
Non-rule Impact
$5,568,400
Postage
Total Annual (Nonhour) Cost Burden
Rulemaking Impact
Annual Cost to Federal Government
The USPTO estimates that it takes USPTO staff (GS-7, step 1 and GS-11, step 1
employees) approximately 15 minutes (0.25 hours) to 4 hours and 48 minutes (4.80
hours) to process the information in this collection, depending on the type and amount
of information submitted. The USPTO estimates that the cost of a GS-7, step 1
employee is $26.29 per hour (GS hourly rate of $20.22 with 30% ($6.07) added for
benefits and overhead) and the cost of a GS-11, step 1 employee is $38.91 per hour
(GS hourly rate of $29.93 with 30% ($8.98) added for benefits and overhead).
Estimates are based upon agency long-standing institutional knowledge of and
experience with processing the type of information collected and the length of time
necessary to process similar or like information.
Table 5 calculates the burden hours and costs to the Federal Government for
processing this information collection:
Table 5: Burden Hour/Burden Cost to the Federal Government
Item
Hours
(a)
Responses
(yr)
(b)
Burden
(hrs/yr)
(c)
(a x b)
Rate
($/hr)
(d)
Total Cost
($/yr)
(e)
(c x d)
Request for Supplemental
Examination Transmittal Form
(PTO/SB/59)
1.20
1,430
1,716
$26.29
$45,114.00
Request for Supplemental
Examination
4.80
1,430
6,864
$38.91
$267,078.00
Request for Ex Parte Reexamination
Transmittal Form (PTO/SB/57)
1.00
690
690
$26.29
$18,140.00
Request for Ex Parte Reexamination
4.00
690
2,760
$38.91
$107,392.00
Request for Inter Partes
Reexamination Transmittal Form
(PTO/SB/58)
1.00
380
380
$26.29
$9,990.00
13
Item
Hours
(a)
Responses
(yr)
(b)
Burden
(hrs/yr)
(c)
(a x b)
Rate
($/hr)
(d)
Total Cost
($/yr)
(e)
(c x d)
Request for Inter Partes
Reexamination
4.00
380
1,520
$38.91
$59,143.00
Petition in a Reexamination
Proceeding (except for those
specifically enumerated in 37 CFR
1.550(i) and 1.937(d))
0.50
850
425
$26.29
$11,173.00
Patent Owner’s 37 CFR 1.530
Statement
0.25
105
26
$38.91
$1,012.00
Third Party Requester’s 37 CFR
1.535 Reply
0.25
60
15
$38.91
$584.00
Amendment in Ex Parte or Inter
Partes Reexamination
0.33
1,750
578
$38.91
$22,490.00
Third Party Requester’s 37 CFR
1.947 Comments in Inter Partes
Reexamination
0.33
300
99
$38.91
$3,852.00
Response to Final Rejection in Ex
Parte Reexamination
0.33
560
185
$38.91
$7,198.00
Patent Owner’s 37 CFR 1.951
Response in Inter Partes
Reexamination
0.33
120
40
$38.91
$1,556.00
Third Party Requester’s 37 CFR
1.951 Comments in Inter Partes
Reexamination
0.33
95
31
$38.91
$1,206.00
Petition to Request Extension of
Time in Ex Parte or Inter Partes
Reexamination
0.25
720
180
$26.29
$4,732.00
----------
9,560
15,509
----------
$560,660.00
Totals
15.
Summary of Changes in Burden
OMB previously approved this information collection in February 2010 with a total of
5,124 responses, 161,128 burden hours, and $5,577,265 in annual (non-hour) costs.
There have been no interim approvals.
For this final rule submission, the USPTO estimates that the total annual responses will
be 9,560 and the total annual burden hours will be 235,365, which is an increase of
4,436 responses and 74,237 burden hours from the currently approved burden for this
collection. This increase in responses and burden hours is due to program changes
and administrative adjustments.
The total annual (non-hour) cost burden for this submission of $35,592,825 is an
increase of $30,015,560 from the currently approved total of $5,577,265. This increase
is due to program changes and administrative adjustments.
14
Change in Respondent Cost Burden
The total respondent cost burden has increased by $34,953,815, from $52,366,600 to
$87,320,415, from the submission of this collection that was approved in February
2010, due to:
Increases in estimated hourly rates. The submission approved in February
2010 used an estimated median rate of $325 per hour for attorneys to prepare
the items in this collection. For the current submission, the USPTO is using an
updated mean rate of $371 per hour for attorneys.
Increases in estimated burden hours. The total estimated burden hours have
increased from 161,128 in the February 2010 submission to 235,365 for the
current submission due to increases in the estimated total annual responses for
this collection and changes in the estimated time per response for some
information requirements.
Changes in Responses and Burden Hours
For this submission, the USPTO estimates that the total annual responses will increase
by 4,436 (from 5,124 to 9,560) and the total burden hours will increase by 74,237 (from
161,128 to 235,365) from the currently approved burden for this collection due to
program changes and administrative adjustments, as follows:
Program Changes (net increase of 71,587 hours):
Increase of 1,430 estimated annual responses for adding the Request for
Supplemental Examination Transmittal Form (PTO/SB/59) due to the final rule; a
burden increase of 429 hours.
Increase of 1,430 estimated annual responses for adding Requests for
Supplemental Examination due to the final rule; a burden increase of 35,750
hours.
Decrease of 155 estimated annual responses for the Request for Ex Parte
Reexamination Transmittal Form (PTO/SB/57) due to the final rule; a burden
decrease of 47 hours.
Decrease of 155 estimated annual responses for Requests for Ex Parte
Reexamination due to the final rule; a burden decrease of 6,820 hours. (This
item also has administrative adjustments below.)
15
Increase of 816 estimated annual responses for Petitions in a Reexamination
Proceeding (except for those specifically enumerated in 37 CFR 1.550(i) and
1.937(d)), which includes the previously approved Petitions to Review Refusal to
Grant Ex Parte or Inter Partes Reexamination but also includes Petitions Under
37 CFR 1.182 and 1.183 that are being added to this collection; a burden
increase of 18,768 hours.
Increase of 585 estimated annual responses for Amendments in Ex Parte or
Inter Partes Reexaminations due to the final rule; a burden increase of 19,305
hours.
Increase of 240 estimated annual responses for Responses to Final Rejection
in Ex Parte Reexaminations due to the final rule; a burden increase of 4,080
hours.
Increase of 245 estimated annual responses for Petitions to Request
Extension of Time in Ex Parte or Inter Partes Reexaminations due to the final
rule; a burden increase of 122 hours.
Administrative Adjustments (net increase of 2,650 hours):
Revised the time estimate per response from 44 hours to 55 hours for Requests
for Ex Parte Reexamination; a burden increase of 7,590 hours. (This item also
has program changes above.)
Revised the time estimate per response from 148 hours to 135 hours for
Requests for Inter Partes Reexamination; a burden decrease of 4,940 hours.
Changes in Annual (Non-hour) Costs
For this submission, the USPTO estimates that the total annual (non-hour) costs will
increase by $30,015,560 (from $5,577,265 to $35,592,825) due to program changes
and administrative adjustments, as follows:
Program Changes (net increase of $30,021,446):
Increase of $30,019,468. This collection is currently approved with a total of
$5,568,400 in fees associated with submitting requests for reexamination and
petitions. For this submission, the USPTO estimates that total fees will increase
to $35,587,868 due to 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 (except for
those specifically enumerated in 37 CFR 1.550(i) and 1.937(d)), and increases in
responses and the associated total fees for Petitions to Request Extension of
Time in Ex Parte or Inter Partes Reexaminations.
16
Increase of $2,278. This collection is currently approved with a total of $8,565 in
postage costs associated with mailing responses to the USPTO. For this
submission, the USPTO estimates that the postage costs for mailed items will
include a net increase of $2,278 attributed to submitting items related to
supplemental examinations and ex parte reexaminations as well as the addition
of Petitions Under 37 CFR 1.182 and 1.183 (included in Petitions in a
Reexamination Proceeding (except for those specifically enumerated in 37 CFR
1.550(i) and 1.937(d))).
Decrease of $300. This collection was previously approved with a total of $300
in recordkeeping costs associated with printing and retaining a copy of the
acknowledgment receipt after submitting information electronically. The USPTO
is removing these recordkeeping costs from this collection because keeping a
copy of the acknowledgment receipt is a suggestion and not a requirement.
Administrative Adjustments (net decrease of $5,886):
Decrease of $5,886. This collection is currently approved with a total of $8,565
in postage costs associated with mailing responses to the USPTO. For this
submission, the USPTO estimates that the postage costs for mailed items will
include a net decrease of $5,886 attributed to an overall decrease in the
expected number of mailed submissions from 2,558 to 1,437 per year. This
decrease is partially offset by a small increase in first-class and priority mail
postage rates since the previous submission in 2010.
16.
Published Collections of Information
No special publication of the items in this collection is planned. However, information
regarding requests for reexamination filed is published weekly in the Official Gazette of
the United States Patent and Trademark Office. The Official Gazette is published in
electronic format on the USPTO Web site.
17.
Display of Expiration Date of OMB Approval
The forms in this information collection will display the OMB Control Number and the
expiration date of OMB approval.
18.
Exceptions to the Certificate Statement
This collection of information does not include any exceptions to the certificate
statement.
B.
COLLECTION OF INFORMATION EMPLOYING STATISTICAL METHODS
This collection of information does not employ statistical methods.
17
| File Type | application/pdf |
| File Title | Microsoft Word - 0651-0064-SuppExam-SupStmt-NFR-Jul2012 (Rev 07-13-2012).docx |
| File Modified | 2012-07-13 |
| File Created | 2012-07-13 |