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.
Filing fees have been added to
collection 0651-0064 from collection 0651-0072, following the
discontinuation 0651-0072. This is to provide accurate accounting
of the fees. The program change results in an increase of
responses, time burden, and cost burden.
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 January 2016 Change Worksheet.docx
0651-USPTO-InfoQuality-Guidelines-01_07_2013.pdf
Reexamination Petition