Justification for Nonsubstantive Change

JUSTIFICATION FOR NONMATERIAL/NONSUBSTANTIVE CHANGE
Patent Reexaminations and Supplemental Examinations
OMB Control Number 0651-0064
(October 2013)
Background
The United States Patent and Trademark Office (USPTO) is submitting this request to update
the current inventory estimates for information collection 0651-0064 Patent Reexaminations and
Supplemental Examinations. The USPTO proposes the following updates:
1. Remove two items and their associated costs from 0651-0064 because the information
is no longer being collected. These are items related to initial requests for inter partes
reexamination. Pursuant to section 6(c)(3) of the Leahy-Smith America Invents Act, the
authority to file inter partes reexamination requests terminated on September 16, 2012.
2. Remove the remaining fee cost burden from 0651-0064 to avoid double-counting the
costs in the annual (non-hour) cost burden. The fee cost burden associated with items
in 0651-0064 was moved into collection 0651-0072 effective January 2013.

Table 1 below details the two items in 0651-0064 related to initial requests for inter partes
reexamination that are being removed because the information is no longer being collected:
Table 1: Items No Longer Being Collected (To Be Removed from 0651-0064)
Estimated
annual
responses

Estimated
burden
hours

Request for Inter Partes Reexamination
Transmittal Form (PTO/SB/58)

380

114

$3,168,660.00

$294.00

$3,168,954.00

Request for Inter Partes Reexamination

380

51,300

$0.00

$0.00

$0.00

Totals

760

51,414

$3,168,660.00

$294.00

$3,168,954.00

Item

Estimated
annual
fee costs

Estimated
annual
postage
costs

Estimated
total annual
(non-hour)
costs

Table 2 below details the fees that have been moved to 0651-0072 and therefore are to be
removed from 0651-0064:

Table 2: Fees for Respondents (Moved to 0651-0072)
Fee
code

1827
2827
3827
1826
2826
3826
N/A
1812
2812

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

620

$17,750.00

$11,005,000.00

70

$4,320.00

$302,400.00

Request for Supplemental Examination
Request for Ex Parte Reexamination Transmittal Form
(PTO/SB/57) – Granted

3812
N/A

Request for Ex Parte Reexamination – Denied (net fee for a
refused request, after refund)

N/A

Request for Ex Parte Reexamination

690

$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

N/A

Patent Owner’s 37 CFR 1.530 Statement

105

$0.00

$0.00

N/A

Third Party Requester’s 37 CFR 1.535 Reply

60

$0.00

$0.00

N/A

Amendment in Ex Parte or Inter Partes Reexamination

1,750

$0.00

$0.00

N/A

Third Party Requester’s 37 CFR 1.947 Comments in Inter
Partes Reexamination

300

$0.00

$0.00

N/A

Response to Final Rejection in Ex Parte Reexamination

560

$0.00

$0.00

N/A

Patent Owner’s 37 CFR 1.951 Response in Inter Partes
Reexamination

120

$0.00

$0.00

N/A

Third Party Requester’s 37 CFR 1.951 Comments in Inter
Partes Reexamination

95

$0.00

$0.00

1463

Petition to Request Extension of Time in Ex Parte or Inter
Partes Reexamination

720

$200.00

$144,000.00

1,716

$263
(average)

$451,308.00

......

......

$32,419,208.00

1824
2824
3824

2463
3463
1828
2828
3828

Surcharges for oversized documents submitted with a Request
for Supplemental Examination that are 21-50 pages in length
(with extra charges for each additional 50 pages)

1829
2829
3829
Total fees

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Summary of Changes in Burden


Removal of two items related to inter partes reexamination requests, resulting in the
following changes:
o
o
o



Decrease of 760 annual responses
Decrease of 51,414 burden hours
Decrease of $3,168,954 in annual (non-hour) costs

Removal of $32,419,208 in fees from 0651-0064 that are currently accounted for in 06510072, resulting in a decrease of $32,419,208 in annual (non-hour) costs.

Burden Type

Currently Approved

Responses

Proposed Change

New Estimates

9,560

(760)

8,800

235,365

(51,414)

183,951

$4,957

($294)

$4,663

Fees

$35,587,868

($35,587,868)

$0

Total Annual (Non-hour) Costs

$35,592,825

($35,588,162)

$4,663

Hours
Postage

Consequently, this collection takes a burden reduction of 760 responses, 51,414 hours,
and $35,588,162 in annual (non-hour) costs as a program change.
The 0651-0064 revised total burden is as follows:




8,800 responses
183,951 burden hours
$4,663 in annual (non-hour) costs

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