Patent Reexaminations and Supplemental Examinations

Forms and Documents

Document Name	Status
Form PTO/SB/59 Request for Supplemental Examination Transmittal Form Form	Modified
Form PTO/SB/57 Request for Ex Parte Reexamination Transmittal Form Form	Modified
0651-0064 Supporting Statement September 2018 FINAL.docx Supporting Statement A	2018-09-26
0651-0064 Nov 2017 CWS.docx Justification for No Material/Nonsubstantive Change	2017-11-09
0651-0064 January 2016 Change Worksheet.docx Justification for No Material/Nonsubstantive Change	2016-01-29
0651-USPTO-InfoQuality-Guidelines-01_07_2013.pdf Supplementary Document	2013-10-17

IC Document Collections

IC ID	Document Title	Status
219758	Reexamination Petition	Removed
219757	Reexamination claims in excess of 20 and also in excess of the number of claims in the patent under reexamination	Removed
219756	Reexamination independent claims in excess of three and also in excess of the number of such claims in the patent under reexamination	Removed
219755	Supplemental Examination document size fees; each additional 50	Removed
219754	Supplemental Examination document size; 21-50	Removed
219753	Supplemental Examination Reexamination	Removed
219752	Supplemental Examination Request	Removed
219751	Request for ex parte reexamination - refused	Removed
219750	Request for ex parte reexamination - granted	Removed
200894	Petition in a Reexamination Proceeding (except for those specifically enumerated in 37 CFR 1.550(i) and 1.937(d))	Modified
200893	Request for Supplemental Examination	Modified
200892	Request for Supplemental Examination Transmittal Form Form	Modified
191641	Petition to Request Extension of Time in Ex Parte or Inter Partes Reexamination	Modified
191640	Third Party Requester's 37 CFR 1.951 Comments in Inter Partes Reexamination	Modified
191639	Patent Owner's 37 CFR 1.951 Response in Inter Partes Reexamination	Modified
191638	Response to Final Rejection in Ex Parte Reexamination	Modified
191637	Third Party Requester's 37 CFR 1.947 Comments in Inter Partes Reexamination	Modified
191636	Amendment in Ex Parte or Inter Partes Reexamination	Modified
191635	Third Party Requester's 37 CFR 1.535 Reply	Modified
191634	Patent Owner's 37 CFR 1.530 Statement	Modified
191629	Request for Ex Parte Reexamination	Modified
191628	Request for Ex Parte Reexamination Transmittal Form Form	Modified

ICR Details

OMB Control No: 0651-0064	ICR Reference No: 201809-0651-001
Status: Historical Active	Previous ICR Reference No: 201712-0651-009
Agency/Subagency: DOC/PTO	Agency Tracking No:
Title: Patent Reexaminations and Supplemental Examinations
Type of Information Collection: Revision of a currently approved collection	Common Form ICR:  No
Type of Review Request: Regular
OIRA Conclusion Action: Approved without change	Conclusion Date: 11/19/2018
	Date Received in OIRA: 09/28/2018
Terms of Clearance:

	Inventory as of this Action	Requested	Previously Approved
Expiration Date	11/30/2021	36 Months From Approved	11/30/2018
Responses	1,540	0	13,814
Time Burden (Hours)	32,963	0	196,099
Cost Burden (Dollars)	2,747,178	0	34,762,340

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Abstract: 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 (1) requests for ex parte reexamination, (2) requests for supplemental examination, and (3) 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.

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Authorizing Statute(s): US Code: 35 USC 132 Name of Law: null
   US Code: 35 USC 301-318 Name of Law: null
   PL: Pub.L. 112 - 29 12 Name of Law: Leahy-Smith America Invents Act
   US Code: 35 USC 257 Name of Law: null
  

Citations for New Statutory Requirements: None

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Associated Rulemaking Information
RIN:	Stage of Rulemaking:	Federal Register Citation:	Date:
	Not associated with rulemaking

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Federal Register Notices & Comments
60-day Notice:	Federal Register Citation:	Citation Date:
	83 FR 31379	07/05/2018
30-day Notice:	Federal Register Citation:	Citation Date:
	83 FR 49069	09/28/2018
Did the Agency receive public comments on this ICR? No

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Number of Information Collection (IC) in this ICR: 13

IC Title	Form No.	Form Name
Request for ex parte reexamination - granted
Supplemental Examination Request
Supplemental Examination document size; 21-50
Reexamination independent claims in excess of three and also in excess of the number of such claims in the patent under reexamination
Request for Ex Parte Reexamination Transmittal Form	PTO/SB/57	Request for Ex Parte Reexamination Transmittal Form
Request for Ex Parte Reexamination
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
Third Party Requester's 37 CFR 1.947 Comments in Inter Partes Reexamination
Response to Final Rejection in Ex Parte Reexamination
Patent Owner's 37 CFR 1.951 Response in Inter Partes Reexamination
Third Party Requester's 37 CFR 1.951 Comments in Inter Partes Reexamination
Petition to Request Extension of Time in Ex Parte or Inter Partes Reexamination
Petition in a Reexamination Proceeding (except for those specifically enumerated in 37 CFR 1.550(i) and 1.937(d))
Request for Supplemental Examination Transmittal Form	PTO/SB/59	Request for Supplemental Examination Transmittal Form
Supplemental Examination document size fees; each additional 50
Reexamination claims in excess of 20 and also in excess of the number of claims in the patent under reexamination
Request for Supplemental Examination
Supplemental Examination Reexamination
Reexamination Petition
Request for ex parte reexamination - refused

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ICR Summary of Burden

	Total Approved	Previously Approved	Change Due to New Statute	Change Due to Agency Discretion	Change Due to Adjustment in Estimate	Change Due to Potential Violation of the PRA
Annual Number of Responses	1,540	13,814	0	-9,644	-2,630	0
Annual Time Burden (Hours)	32,963	196,099	0	-101,009	-62,127	0
Annual Cost Burden (Dollars)	2,747,178	34,762,340	0	-33,181,910	1,166,748	0

Burden increases because of Program Change due to Agency Discretion: No

Burden Increase Due to:

Burden decreases because of Program Change due to Agency Discretion: Yes

Burden Reduction Due to: Miscellaneous Actions

Short Statement: The decrease stemmed from administrative clean-up of how the burden is accounted for in the collection.

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Annual Cost to Federal Government: $67,439

Does this IC contain surveys, censuses, or employ statistical methods? No

Does this ICR request any personally identifiable information (see OMB Circular No. A-130 for an explanation of this term)? Please consult with your agency's privacy program when making this determination.     Yes

Does this ICR include a form that requires a Privacy Act Statement (see 5 U.S.C. §552a(e)(3))? Please consult with your agency's privacy program when making this determination.     Yes

Is this ICR related to the Affordable Care Act [Pub. L. 111-148 & 111-152]? No

Is this ICR related to the Dodd-Frank Wall Street Reform and Consumer Protection Act, [Pub. L. 111-203]? No

Is this ICR related to the American Recovery and Reinvestment Act of 2009 (ARRA)? No

Is this ICR related to the Pandemic Response? Uncollected

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Common Form ICR:  No

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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:

(a) It is necessary for the proper performance of agency functions;

(b) It avoids unnecessary duplication;

(c) It reduces burden on small entities;

(d) It uses plain, coherent, and unambiguous language that is understandable to respondents;

(e) Its implementation will be consistent and compatible with current reporting and recordkeeping practices;

(f) It indicates the retention periods for recordkeeping requirements;

(g) It informs respondents of the information called for under 5 CFR 1320.8 (b)(3) about:

(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;

(h) It was developed by an office that has planned and allocated resources for the efficient and effective management and use of the information to be collected.

(i) It uses effective and efficient statistical survey methodology (if applicable); and

(j) It makes appropriate use of information technology.

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.

Certification Date: 09/28/2018

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