0064 Supporting Statement Jul 2015

SUPPORTING STATEMENT

United States Patent and Trademark Office

Patent Reexaminations and Supplemental Examinations

OMB CONTROL NUMBER 0651-0064

July 2015

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. The rules outlining ex parte reexaminations are found at 37 CFR 1.510-1.570.

35 U.S.C. 257 permits 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. The rules outlining supplemental examination are found at 37 CFR 1.601-1.625.

The Leahy-Smith America Invents Act terminated inter partes reexamination effective September 16, 2012. However, inter partes reexamination proceedings based on inter partes reexamination requests filed before September 16, 2012, continue to be prosecuted. Therefore, this collection continues to include items related to the prosecution of inter partes reexamination proceedings. The rules outlining inter partes reexaminations are found at 37 CFR 1.903-1.931.

Thus, the items included in this collection cover (i) requests for ex parte reexamination, (ii) requests for supplemental examination, and (iii) information that may be submitted by patent owners and third party requesters in relation to the prosecution of an ex parte or inter partes reexamination proceeding. It should be noted that the Requests for Ex Parte Reexamination and Supplemental Examination are distinct collections from the Request for Ex Parte Reexamination and Supplemental Examination Transmittal Forms, 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 reexaminations and supplemental examinations, the requests themselves represent the substantive analysis undertaken by requesters of ex parte reexamination and supplemental examination.

The public uses this information collection to request ex parte reexamination and supplemental examination, to prosecute reexamination proceedings, and to ensure that the associated documentation is submitted to the USPTO.

Table 1 provides the specific statutes and regulations requiring the USPTO to collect the information discussed above:

Table 1: Information Requirements for Patent Reexaminations

IC Number	Requirement	Statute	Rule
1	Request for Supplemental Examination Transmittal Form	35 U.S.C. 257	37 CFR 1.601-1.625
2	Request for Supplemental Examination	35 U.S.C. 257	37 CFR 1.601-1.625
3	Request for Ex Parte Reexamination Transmittal Form	35 U.S.C. 302	37 CFR 1.510-1.570
4	Request for Ex Parte Reexamination	35 U.S.C. 302	37 CFR 1.510-1.570

5	Petition in a Reexamination Proceeding (except for those specifically enumerated in 37 CFR 1.550(i) and 1.937(d))	35 U.S.C. 303, 312	37 CFR 1.181, 1.515(c), and 1.927
6	Patent Owner’s 37 CFR 1.530 Statement	35 U.S.C. 304	37 CFR 1.530
7	Third Party Requester’s 37 CFR 1.535 Reply	35 U.S.C. 304	37 CFR 1.535
8	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
9	Third Party Requester’s 37 CFR 1.947 Comments in Inter Partes Reexamination	35 U.S.C. 314	37 CFR 1.947
10	Response to Final Rejection in Ex Parte Reexamination	35 U.S.C. 132 and 305	37 CFR 1.116 and 1.530
11	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
12	Third Party Requester’s 37 CFR 1.951 Comments in Inter Partes Reexamination	35 U.S.C. 314	37 CFR 1.951
13	Petition to Request Extension of Time in Ex Parte or Inter Partes Reexamination	35 U.S.C. 304-305 and 314	37 CFR 1.550(c) and 1.956

2. Needs and Uses

The public uses this information collection to request supplemental examination and reexamination proceedings and to ensure that the associated documentation is submitted to the USPTO.

This proposed collection of information will result in information that will be collected, maintained, and used in a way consistent with all applicable OMB and USPTO Information Quality Guidelines.

Table 2 outlines how this collection of information is used by the public and the USPTO:

Table 2: Needs and Uses of Information Collected for Patent Reexaminations

IC Number	Form and Function	Form #	Needs and Uses
1	Request for Supplemental Examination Transmittal Form	PTO/SB/59	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.
2	Request for Supplemental Examination	No Form	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.
3	Request for Ex Parte Reexamination Transmittal Form	PTO/SB/57	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.
4	Request for Ex Parte Reexamination	No Form	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 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 third-party). Used by the USPTO to determine how and whether the patent claims are to be confirmed, amended, or canceled.
5	Petition in a Reexamination Proceeding (except for those specifically enumerated in 37 CFR 1.550(i) and 1.937(d))	No Form	Used by the requester (patent owner or third-party) to request review by the Director of a decision refusing ex parte 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 reexamination should be upheld. Used by the USPTO to consider other questions and suspend or waive the rule requirements if appropriate.
6	Patent Owner’s 37 CFR 1.530 Statement	No Form	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.
7	Third Party Requester’s 37 CFR 1.535 Reply	No Form	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.
8	Amendment in Ex Parte or Inter Partes Reexamination	No Form	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.
9	Third Party Requester’s 37 CFR 1.947 Comments in Inter Partes Reexamination	No Form	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.
10	Response to Final Rejection in Ex Parte Reexamination	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.
11	Patent Owner’s 37 CFR 1.951 Response in Inter Partes Reexamination	No Form	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.
12	Third Party Requester’s 37 CFR 1.951 Comments in Inter Partes Reexamination	No Form	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.
13	Petition to Request Extension of Time in Ex Parte or Inter Partes Reexamination	No Form	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.

3. Use of Information Technology

The forms associated with this collection may be downloaded from the USPTO website in Portable Document Format (PDF) and filled out electronically. The 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.

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 60-Day Notice was published in the Federal Register on March 20, 2015 (80 Fed. Reg. 14941). The comment period ended on May 19, 2015. No public comments were received.

The USPTO has long-standing relationships with groups from whom reexamination data is collected, such as the American Intellectual Property Law Association, 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 and during the renewal of an information collection. No views have been expressed impacting the present renewal.

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 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 reexamination proceeding is 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

This collection has an estimated annual hourly cost burden to respondents of $37,067,810. Table 3 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 4,170 responses per year for this collection. Approximately 95% of the responses for this collection will be submitted electronically.

• Burden Hour Calculation Factors

The USPTO estimates that it will take the public from 0.30 hours (18 minutes) to 55 hours to gather the necessary information, prepare the appropriate form or other documents, and submit the information to the USPTO.

• Cost Burden Calculation Factors

The USPTO uses a professional rate of $389 per hour for respondent cost burden calculations, which is the median rate for attorneys in private firms as shown in the 2013 Report of the Economic Survey published by the American Intellectual Property Law Association (AIPLA).

Table 3: Burden Hour/Burden Cost to Respondents for Patent Reexaminations

IC Number	Information Collection Instrument	Estimated time for response (a)	Estimated Annual Responses (b)	Estimated annual burden hours (a) x (b) = (c)	Rate ($/hr) (d)	Total Cost (c) x (d) = (e)
1	Request for Supplemental Examination Transmittal Form (PTO/SB/59)	18 minutes	50	15	$389.00	$5,835.00
2	Request for Supplemental Examination	25 hours	50	1,250	$389.00	$486,250.00
3	Request for Ex Parte Reexamination Transmittal Form (PTO/SB/57)	18 minutes	450	135	$389.00	$52,515.00
4	Request for Ex Parte Reexamination	55 hours	450	24,750	$389.00	$9,627,750.00
5	Petition in a Reexamination Proceeding (except for those specifically enumerated in 37 CFR 1.550(i) and 1.937(d))	23 hours	1,250	28,750	$389.00	$11,183,750.00
6	Patent Owner’s 37 CFR 1.530 Statement	8 hours	160	1,280	$389.00	$497,920.00
7	Third Party Requester’s 37 CFR 1.535 Reply	8 hours	50	400	$389.00	$155,600.00
8	Amendment in Ex Parte or Inter Partes Reexamination	33 hours	700	23,100	$389.00	$8,985,900.00
9	Third Party Requester’s 37 CFR 1.947 Comments in Inter Partes Reexamination	41 hours	10	410	$389.00	$159,490.00
10	Response to Final Rejection in Ex Parte Reexamination	17 hours	400	6,800	$389.00	$2,645,200.00
11	Patent Owner’s 37 CFR 1.951 Response in Inter Partes Reexamination	41 hours	100	4,100	$389.00	$1,594,900.00
12	Third Party Requester’s 37 CFR 1.951 Comments in Inter Partes Reexamination	41 hours	100	4,100	$389.00	$1,594,900.00
13	Petition to Request Extension of Time in Ex Parte or Inter Partes Reexamination	30 minutes	400	200	$389.00	$77,800.00
Total	…………………………………	………………………	4,170	95,290	…………	$37,067,810.00

13. Total Annualized (Non-hour) Cost Burden

There are no capital start-up, recordkeeping or maintenance costs associated with this information collection, and the associated filing fees are accounted for in collection 0651-0072. This collection does, however, have annual (non-hour) costs in the form of postage costs.

Postage

The USPTO expects that approximately 95 percent of the responses in this collection will be submitted electronically. Of the remaining 5 percent, the vast majority—98 percent—will be submitted by mail. The documentation for requests for supplemental examination and requests for ex parte reexamination will typically be mailed to the USPTO with the appropriate transmittal form, reducing the number of unique mailings to 180. The USPTO estimates that the average postage cost for a mailed submission will be $0.49 for Petitions to Request Extension of Time and $5.75 for all other mailed submissions. The USPTO estimates that the total postage cost associated with this collection will be approximately $929.80 per year, as calculated in Table 5 below.

Table 5: Postage Costs for Respondents for Patent Reexaminations

IC Number	Item	Estimated annual mailed responses (a)	Estimated postage amount (b)	Estimated annual postage costs (a) x (b) = (c)
1	Request for Supplemental Examination Transmittal Form (PTO/SB/59)	2	$5.75	$11.50
2	Request for Supplemental Examination (submitted with transmittal form above)	2	$0.00	$0.00
3	Request for Ex Parte Reexamination Transmittal Form (PTO/SB/57)	22	$5.75	$126.50
4	Request for Ex Parte Reexamination (submitted with transmittal form above)	22	$0.00	$0.00
5	Petition in a Reexamination Proceeding (except for those specifically enumerated in 37 CFR 1.550(i) and 1.937(d))	61	$5.75	$350.75
6	Patent Owner’s 37 CFR 1.530 Statement	8	$5.75	$46.00
7	Third Party Requester’s 37 CFR 1.535 Reply	2	$5.75	$11.50
8	Amendment in Ex Parte or Inter Partes Reexamination	34	$5.75	$195.50
9	Third Party Requester’s 37 CFR 1.947 Comments in Inter Partes Reexamination	1	$5.75	$5.75
10	Response to Final Rejection in Ex Parte Reexamination	20	$5.75	$115.00
11	Patent Owner’s 37 CFR 1.951 Response in Inter Partes Reexamination	5	$5.75	$28.75
12	Third Party Requester’s 37 CFR 1.951 Comments in Inter Partes Reexamination	5	$5.75	$28.75
13	Petition to Request Extension of Time in Ex Parte or Inter Partes Reexamination	20	$0.49	$9.80
	Totals	204	. . . . . .	$929.80

The total annual (non-hour) respondent cost burden for this collection, which occurs in the form of postage costs, is approximately $929.80 per year.

14. Annual Cost to Federal Government

The total annual cost of this collection to the Federal Government is $133,505.33. The USPTO estimates that it takes USPTO staff approximately 15 minutes (0.25 hours) to 4 hours to process the information in this collection, depending on the type and amount of information submitted. The information in this collection is processed by GS-7, step 1 and GS-11, step 1 employees at the hourly rates of $20.63 and $30.53, respectively. When 30% is added to account for a fully-loaded hourly rate (benefits and overhead), the hourly rate for information processed by GS-7 employees is $26.82 ($20.63 + $6.19) and by GS-11 employees is $39.69 ($30.53 + $9.16).

Table 6 calculates the burden hours and costs to the Federal Government for processing this information collection:

Table 6: Burden Hour/Burden Cost to the Federal Government for Patent Reexaminations

IC Number	Item	Hours (a)	Responses (yr) (b)	Burden (hrs/yr) (c) (a x b)	Rate ($/hr) (d)	Total Cost ($/yr) (e) (c x d)
1	Request for Supplemental Examination Transmittal Form (PTO/SB/59)	1.20	50	60.00	$26.82	$1,609.20
2	Request for Supplemental Examination	4.80	50	240.00	$39.69	$9,525.60
3	Request for Ex Parte Reexamination Transmittal Form (PTO/SB/57)	1.00	450	450.00	$26.82	$12,069.00
4	Request for Ex Parte Reexamination	4.00	450	1,800.00	$39.69	$71,442.00
5	Petition in a Reexamination Proceeding (except for those specifically enumerated in 37 CFR 1.550(i) and 1.937(d))	0.50	1,250	625.00	$26.82	$16,762.50
6	Patent Owner’s 37 CFR 1.530 Statement	0.25	160	40.00	$39.69	$1,587.60
7	Third Party Requester’s 37 CFR 1.535 Reply	0.25	50	12.50	$39.69	$496.13
8	Amendment in Ex Parte or Inter Partes Reexamination	0.33	700	233.33	$39.69	$9,261.00
9	Third Party Requester’s 37 CFR 1.947 Comments in Inter Partes Reexamination	0.33	10	3.33	$39.69	$132.30
10	Response to Final Rejection in Ex Parte Reexamination	0.33	400	133.33	$39.69	$5,292.00
11	Patent Owner’s 37 CFR 1.951 Response in Inter Partes Reexamination	0.33	100	33.33	$39.69	$1,323.00
12	Third Party Requester’s 37 CFR 1.951 Comments in Inter Partes Reexamination	0.33	100	33.33	$39.69	$1,323.00
13	Petition to Request Extension of Time in Ex Parte or Inter Partes Reexamination	0.25	400	100	$26.82	$2,682.00
	Totals	----------	4,170	3,764.17	----------	$133,505.33

15. Reason for Changes in the Annual Burden

Summary of Changes in Annual Burden

For this renewal, the USPTO estimates that the total annual responses will be 4,170 and that the total annual burden hours will be 95,290. These numbers correspond to a decrease of 4,630 responses and 88,661 burden hours from the previously approved burden.

The currently-approved (non-hour) cost burden for this collection is $4,663. This renewal estimates that burden will decrease by $3,733.20, dropping the non-hour cost burden to $929.80.

The cost to the Federal Government for this renewal is estimated to decline to $133,505.33 due to the decrease in the number of responses, despite the increased GS rates used for 2015.

Changes in Responses and Respondent Burden Hours

With this renewal, a total of 88,661 burden hours have been removed from this collection. This decreases the total number of burden hours associated with this collection from 183,951 to 95,290. This decrease is the result of an administrative adjustment, as follows:

• Decrease of 4,630 Responses. The USPTO estimates that the total number of responses received for the items in this information collection will decrease by 4,630, from 8,800 to 4,170. This decrease in responses also led to the corresponding decrease in burden hours described above.

Changes in Respondent Cost Burden

For this renewal, the USPTO estimates that the total respondent cost burden will decrease by $25,475,530, from $62,543,340 to $37,067,810. This overall decrease is due to the following:

• Decrease of 4,630 Responses: The decrease of 4,630 responses to this collection—which in turn led to a decrease in the number of respondent burden hours from which respondent cost burden is derived—contributed to the decrease in the respondent cost burden.

• Increase in Professional Salaries: For this collection, the USPTO is using the recently-updated professional hourly salary for attorneys as $389, rather than the $340 used in the previous submission.

Changes in Annual (non-hour) Cost Burden

For this renewal, the USPTO estimates that the total annual (non-hour) costs will decrease by $3,733.20, from $4,663 to $929.80. This overall decrease is due to the following:

• Decrease of 1,233 Responses Requiring Postage: The currently approved version of this collection lists 1,437 responses as requiring postage. For this proposed renewal, the number of responses requiring postage is estimated to decrease by 1,233, from 1,437 to 204.

• Increase in Postage Costs: For this collection, the USPTO is using the more recent postage rates of $0.49 and $5.75 for mailed submissions, in place of the rates—$0.45 and $5.15—that were used in the previous authorization for the comparable mailed submissions.

Changes in Federal Government Burden

For this renewal, the USPTO estimate that the annual burden to the Federal Government will decrease to $133,505.33. This overall decrease is due to the following:

• Decrease of 4,630 Responses: As with the respondent cost burden, the decrease of 4,630 responses to this collection—responses that would have been handled and processed by members of the Federal Government—contributed to the decrease in the Federal Government cost burden.

• Increase in GS Rates: For this collection, the USPTO is using the 2015 GS Rate table (with locality pay for the Washington, D.C. area) to calculate the work done by Federal employees. The 2012 submission valued an hour of work from a GS-7, step 1, and a GS-11, step 1, at $26.29 ($20.22 base hourly with an additional 30 percent added for benefits/overtime compensation) and $38.91 ($29.93 base hourly with an additional 30 percent added for benefits/overtime compensation), respectively. This submission, however, values those same positions at $26.82 ($20.63 base hourly with the 30 percent benefits/overtime compensation) and $39.69 (30.53 base hourly with the 30 percent benefits/overtime compensation, respectively. Despite these increases, the total federal cost burden declined to $133,505.33, primarily due to a decrease in the number of responses described above.

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.