Patent Reexaminations,
Supplemental Examinations, and Post Patent Submissions
Revision of a currently approved collection
No
Regular
09/13/2024
Requested
Previously Approved
36 Months From Approved
11/30/2024
890
880
25,714
23,574
3,680,879
2,304,512
The 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 cited under the provisions of 35 U.S.C. 301. Once
initiated, the reexamination proceedings under Chapter 30 are
substantially ex parte and do not permit input from third parties.
The regulations outlining ex parte reexaminations are found at 37
CFR 1.510-1.570. In addition, 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 regulations 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 information
collection continues to include items related to the prosecution of
inter partes reexamination proceedings. The regulations outlining
inter partes reexamination are found at 37 CFR 1.903-1.959. The
provisions of 35 U.S.C. 301 and 37 CFR 1.501 govern the ability of
a person to submit into the file of an issued patent (1) prior art
consisting of patents or printed publications which the person
making the submission believes to have a bearing on the
patentability of any claim of the issued patent and (2) statements
of the owner of the issued patent filed in a proceeding before a
Federal court or the USPTO in which the owner of the issued patent
took a position on the scope of any claim of the issued patent.
This information collection covers information contained in: (1)
requests for ex parte reexamination, (2) requests for supplemental
examination, (3) submissions made by patent owners and third-party
requesters related to the prosecution of an ex parte or inter
partes reexamination proceeding, (4) information submitted by the
public to aid in ascertaining the patentability and/or scope of the
claims of the issued patent, and (5) information submitted by
patent owners regarding a position taken before the USPTO or a
Federal court regarding the scope of any claim in their issued
patent. The USPTO’s use of the statements of the patent owners ((5)
above) will be limited to determining the meaning of a patent claim
in ex parte reexamination proceedings that already have been
ordered and in inter partes review and post grant review
proceedings that already have been instituted. The purpose of this
information collection is to facilitate requests for ex parte
reexamination and supplemental examination, to facilitate
prosecution of reexamination and reissue proceedings, and to ensure
that the associated documentation is submitted to the USPTO, and to
permit relevant post-patent prior art and claim scope information
to be entered into a patent file.
Changes in Responses and Hourly
Burden due to Adjustment in Agency Estimate The total number of
responses has increased by 10 due to estimated fluctuations in the
number of respondents/submissions in this information collection.
This results in an increase of 2,140 hours in the annual time
burden estimates. Changes in Annual Non-hour Costs due to
Adjustment in Agency Estimate For this renewal, the USPTO estimates
that the total annual non-hour costs will increase by $1,376,367
from the previous approval. This is due to estimated increase in
submissions for items that require a fee.
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/42 Information Disclosure Citation in a Patent - Individuals or Households
0651-0064 Supporting Statement 2024 final.docx
Leahy-Smith America Invents Act.pdf
Response to Final Rejection in Ex Parte Reexamination - Individuals or Households