Agency Information Collection Activities; Submission to the Office of Management and Budget (OMB) for Review and Approval; Comment Request; Patent Reexaminations, Supplemental Examinations, and Post Patent Submissions, 55927-55930 [2024-14917]
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Federal Register / Vol. 89, No. 130 / Monday, July 8, 2024 / Notices
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new owner must submit an application
to reactivate the designation within six
months of the date of assignment. If the
recordal is based on a trademark
application or registration and the
registration is assigned to a new owner,
the recordal becomes ‘‘inactive’’ and
cannot be reassigned. Instead, the new
owner of the trademark application or
registration must apply for a new
recordal. Manufacturers who record
insignia must notify the USPTO of any
changes of address.
This information collection includes
one form, the Application for Recordal
of Insignia or Renewal/Reactivation of
Recordal Under the Fastener Quality
Act (PTO–1611), which provides
manufacturers with a convenient way to
submit a request for the recordal of a
fastener insignia or to renew or
reactivate an existing Certificate of
Renewal.
The public uses this information
collection to comply with the insignia
recordal provisions of the FQA. The
USPTO uses the information in this
collection to record or renew insignias
under the FQA and to maintain the
Fastener Insignia Register, which is
open for public inspection and is
updated quarterly. The public may
download the Fastener Insignia Register
from the USPTO website.2
Forms
• PTO–1611 (Application for Recordal
of Insignia or Renewal/Reactivation of
Recordal Under the Fastener Quality
Act)
Type of Review: Extension and
revision of a currently approved
information collection.
Affected Public: Private sector.
Respondent’s Obligation: Required to
obtain or retain benefits.
Frequency: On occasion.
Estimated Number of Annual
Respondents: 90 respondents.
Estimated Number of Annual
Responses: 90 responses.
Estimated Time per Response: The
USPTO estimates that the responses in
this information collection will take the
public approximately 30 minutes (0.50
hours) to complete. This includes the
time to gather the necessary
information, complete the form, and
submit the completed request to the
USPTO.
Estimated Total Annual Respondent
Burden Hours: 45 hours.
Estimated Total Annual Respondent
Non-Hourly Cost Burden: $2,413.
This information collection request
may be viewed at www.reginfo.gov.
2 https://www.uspto.gov/trademarks/laws/
fastener-quality-act-fqa/fastener-quality-act-fqa.
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16:22 Jul 05, 2024
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Follow the instructions to view
Department of Commerce, USPTO
information collections currently under
review by OMB.
Written comments and
recommendations for this information
collection should be submitted within
30 days of the publication of this notice
on the following website,
www.reginfo.gov/public/do/PRAMain.
Find this particular information
collection by selecting ‘‘Currently under
30-day Review—Open for Public
Comments’’ or by using the search
function and entering either the title of
the information collection or the OMB
Control Number, 0651–0028.
Further information can be obtained
by:
• Email: InformationCollection@
uspto.gov. Include ‘‘0651–0028
information request’’ in the subject line
of the message.
• Mail: Justin Isaac, Office of the
Chief Administrative Officer, United
States Patent and Trademark Office,
P.O. Box 1450, Alexandria, VA 22313–
1450.
Justin Isaac,
Information Collections Officer, Office of the
Chief Administrative Officer, United States
Patent and Trademark Office.
[FR Doc. 2024–14919 Filed 7–5–24; 8:45 am]
BILLING CODE 3510–16–P
55927
collection must be received on or before
September 6, 2024.
ADDRESSES: Interested persons are
invited to submit written comments by
any of the following methods. Do not
submit Confidential Business
Information or otherwise sensitive or
protected information.
• Email: InformationCollection@
uspto.gov. Include ‘‘0651–0064
comment’’ in the subject line of the
message.
• Federal eRulemaking Portal: https://
www.regulations.gov.
• Mail: Justin Isaac, Office of the
Chief Administrative Officer, United
States Patent and Trademark Office,
P.O. Box 1450, Alexandria, VA 22313–
1450.
FOR FURTHER INFORMATION CONTACT:
Request for additional information
should be directed to Jeffrey West,
Senior Legal Advisor, Office of Patent
Legal Administration, United States
Patent and Trademark Office, P.O. Box
1450, Alexandria, VA 22313–1450; by
telephone at 571–272–2226; or by email
at jeffrey.west@uspto.gov with ‘‘0651–
0064 comment’’ in the subject line.
Additional information about this
information collection is also available
at https://www.reginfo.gov under
‘‘Information Collection Review.’’
SUPPLEMENTARY INFORMATION:
I. Abstract
DEPARTMENT OF COMMERCE
Patent and Trademark Office
Agency Information Collection
Activities; Submission to the Office of
Management and Budget (OMB) for
Review and Approval; Comment
Request; Patent Reexaminations,
Supplemental Examinations, and Post
Patent Submissions
United States Patent and
Trademark Office, Department of
Commerce.
ACTION: Notice of information collection;
request for comment.
AGENCY:
The United States Patent and
Trademark Office (USPTO), as required
by the Paperwork Reduction Act of
1995, invites comments on the
extension and revision of an existing
information collection: 0651–0064
(Patent Reexaminations, Supplemental
Examinations, and Post Patent
Submissions). The purpose of this
notice is to allow 60 days for public
comment preceding submission of the
information collection to OMB.
DATES: To ensure consideration,
comments regarding this information
SUMMARY:
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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 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. The purpose of this
information collection is to facilitate
requests for ex parte reexamination and
supplemental examination, to facilitate
prosecution of reexamination and to
ensure that the associated
documentation is submitted to the
USPTO, and to permit relevant postpatent prior art and claim scope
information to be entered into a patent
file.
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.
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Federal Register / Vol. 89, No. 130 / Monday, July 8, 2024 / Notices
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 collection continues to
include items related to the prosecution
of inter partes reexamination
proceedings. The regulations outlining
inter partes reexaminations are found at
37 CFR 1.902–1.959.
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.
Thus, the items included in this
collection cover (1) requests for ex parte
Forms: (SB = Specimen Book)
• PTO/SB/42 (37 CFR 1.501 Information
Disclosure Citation in a Patent)
• PTO/SB/57 (Request for Ex Parte
Reexamination Transmittal Form)
• PTO/SB/59 (Request for
Supplemental Examination
Transmittal Form)
Type of Review: Extension and
revision of a currently approved
information collection.
Affected Public: Private sector.
Respondent’s Obligation: Required to
obtain or retain benefits.
Estimated Number of Annual
Respondents: 874 respondents.
Estimated Number of Annual
Responses: 890 responses.
Frequency: On occasion.
Estimated Time per Response: The
USPTO estimates that the responses in
this information collection will take the
public approximately between 30
minutes (0.50 hours) and 55 hours to
complete. This includes the time to
gather the necessary information, create
the document, and submit the
completed request to the USPTO.
Estimated Total Annual Respondent
Burden Hours: 25,714 hours.
Estimated Total Annual Respondent
Hourly Cost Burden: $11,494,158.
reexamination, (2) requests for
supplemental examination, (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, (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.
II. Method of Collection
The items in this information
collection may be submitted
electronically, or on paper by either
mail or hand delivery.
III. Data
OMB Control Number: 0651–0064.
TABLE 1—TOTAL BURDEN HOURS AND HOURLY COSTS TO PRIVATE SECTOR RESPONDENTS
Item No.
1 .................
2 .................
3 .................
4 .................
5 .................
6 .................
7 .................
8 .................
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9 .................
10 ...............
11 ...............
VerDate Sep<11>2014
Item
Request for Supplemental
Examination PTO/SB/59.
Request for Ex Parte Reexamination PTO/SB/57.
Petition in a Reexamination
Proceeding (except for
those specifically enumerated in 37 CFR
1.550(i) and 1.937(d)).
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 Comments in Inter
Partes Reexamination.
Third Party Requester’s 37
CFR 1.951 Response in
Inter Partes Reexamination.
Petition to Request Extension of Time in Ex Parte
or Inter Partes Reexamination.
16:22 Jul 05, 2024
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Estimated
annual
respondents
Responses per
respondent
Estimated
annual
responses
Estimated
time for
response
(hours)
Estimated
burden
(hour/year)
Rate 1
($/hour)
Estimated
annual
respondent
cost burden
(a)
(b)
(a) × (b) = (c)
(d)
(c) × (d) = (e)
(f)
(e) × (f) = (g)
30
1
30
25
750
$447
$335,250
332
1
332
55
18,260
447
8,162,220
117
1
117
23
2,691
447
1,202,877
25
1
25
8
200
447
89,400
15
1
15
8
120
447
53,640
15
1
15
33
495
447
221,265
1
1
1
41
41
447
18,327
148
1
148
17
2,516
447
1,124,652
1
1
1
41
41
447
18,327
1
1
1
41
41
447
18,327
157
1
157
0.5
79
447
35,313
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Federal Register / Vol. 89, No. 130 / Monday, July 8, 2024 / Notices
TABLE 1—TOTAL BURDEN HOURS AND HOURLY COSTS TO PRIVATE SECTOR RESPONDENTS—Continued
Item No.
12 ...............
Totals ..
Item
Estimated
annual
respondents
Responses per
respondent
Estimated
annual
responses
Estimated
time for
response
(hours)
Estimated
burden
(hour/year)
Rate 1
($/hour)
Estimated
annual
respondent
cost burden
(a)
(b)
(a) × (b) = (c)
(d)
(c) × (d) = (e)
(f)
(e) × (f) = (g)
37 CFR 1.501 Information
Disclosure Citation in a
Patent PTO/SB/42.
.............................................
32
1.5
48
10
480
447
214,560
874
..........................
890
........................
25,714
........................
11,494,158
1 2023
Report of the Economic Survey, published by the Committee on Economics of Legal Practice of the American Intellectual Property Law Association (AIPLA);
pg. F–41. The USPTO uses the average billing rate for intellectual property work in all firms which is $447 per hour (https://www.aipla.org/home/news-publications/
economic-survey).
Estimated Total Annual Respondent
Non-hourly Cost Burden: $3,680,879.
There are no capital start-up,
maintenance costs, or recordkeeping
costs associated with this information
collection. However, the USPTO
estimates that the total annual non-hour
cost burden for this information
collection, in the form of filing fees and
postage, is $3,680,879.
Filing Fees
There are filing fees associated with
this information collection, which are
listed in the table below.
TABLE 2—FILING FEES
Item No.
khammond on DSKJM1Z7X2PROD with NOTICES
1
1
1
1
Fee
code(s)
...............
...............
...............
...............
1826
2826
3826
1827
1 ...............
2827
1 ...............
3827
1 ...............
1828
1 ...............
2828
1 ...............
3828
1 ...............
1829
1 ...............
2829
1 ...............
3829
2 ...............
1821
2 ...............
2821
2 ...............
3821
2 ...............
1822
2 ...............
2822
2 ...............
3822
2
2
2
2
2
2
1831
2831
3831
1812
2812
3812
...............
...............
...............
...............
...............
...............
VerDate Sep<11>2014
Item
Estimated
annual
responses
Filing fee
($)
Total non-hour
cost burden
(yr)
($)
(a)
(b)
(a) × (b) = (c)
Request for supplemental examination (undiscounted entity) ......................
Request for supplemental examination (small entity) ...................................
Request for supplemental examination (micro entity) ...................................
Reexamination ordered as a result of supplemental examination
(undiscounted entity).
Reexamination ordered as a result of supplemental examination (small entity).
Reexamination ordered as a result of supplemental examination (micro entity).
Supplemental examination document size fee—for nonpatent document
having between 21 and 50 sheets (undiscounted entity).
Supplemental examination document size fee—for nonpatent document
having between 21 and 50 sheets (small entity).
Supplemental examination document size fee—for nonpatent document
having between 21 and 50 sheets (micro entity).
Supplemental examination document size fee—for each additional 50
sheets or a fraction thereof in a nonpatent document (undiscounted entity).
Supplemental examination document size fee—for each additional 50
sheets or a fraction thereof in a nonpatent document (small entity).
Supplemental examination document size fee—for each additional 50
sheets or a fraction thereof in a nonpatent document (micro entity).
Each reexamination independent claim in excess of three and also in excess of the number of such claims in the patent under reexamination
(undiscounted entity).
Each reexamination independent claim in excess of three and also in excess of the number of such claims in the patent under reexamination
(small entity).
Each reexamination independent claim in excess of three and also in excess of the number of such claims in the patent under reexamination
(micro entity).
Each reexamination claim in excess of 20 and also in excess of the number of claims in the patent under reexamination (undiscounted entity).
Each reexamination claim in excess of 20 and also in excess of the number of claims in the patent under reexamination (small entity).
Each reexamination claim in excess of 20 and also in excess of the number of claims in the patent under reexamination (micro entity).
Ex parte reexamination (§ 1.510(a)) streamlined (undiscounted entity) .......
Ex parte reexamination (§ 1.510(a)) streamlined (small entity) ....................
Ex parte reexamination (§ 1.510(a)) streamlined (micro entity) ....................
Ex parte reexamination (§ 1.510(a)) non-streamlined (undiscounted entity)
Ex parte reexamination (§ 1.510(a)) non-streamlined (small entity) .............
Ex parte reexamination (§ 1.510(a)) non-streamlined (micro entity) .............
16:22 Jul 05, 2024
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E:\FR\FM\08JYN1.SGM
17
12
1
10
$4,620
1,848
924
12,700
$78,540
22,176
924
127,000
1
5,080
5,080
1
2,540
2,540
19
180
3,420
12
72
864
1
36
36
1
300
300
3
120
360
1
60
60
112
480
53,760
49
192
9,408
1
96
96
1,626
100
162,600
298
40
11,920
1
20
20
23
67
2
195
45
1
6,300
2,520
1,260
12,600
5,040
2,520
144,900
168,840
2,520
2,457,000
226,800
2,520
08JYN1
55930
Federal Register / Vol. 89, No. 130 / Monday, July 8, 2024 / Notices
TABLE 2—FILING FEES—Continued
Item No.
Fee
code(s)
3 ...............
1824
3 ...............
2824
3 ...............
3824
Totals
............
Item
khammond on DSKJM1Z7X2PROD with NOTICES
Filing fee
($)
Total non-hour
cost burden
(yr)
($)
(a)
(b)
(a) × (b) = (c)
Petitions in a reexamination proceeding, except for those specifically enumerated in 37 CFR 1.550(i) and 1.937(d) (undiscounted entity).
Petitions in a reexamination proceeding, except for those specifically enumerated in 37 CFR 1.550(i) and 1.937(d) (small entity).
Petitions in a reexamination proceeding, except for those specifically enumerated in 37 CFR 1.550(i) and 1.937(d) (micro entity).
........................................................................................................................
Postage Costs
Although the USPTO prefers that the
items in this information collection be
submitted electronically, responses may
be submitted by mail through the
United States Postal Service (USPS).
The USPTO estimates that 1% of the
890 items will be submitted in the mail
resulting in 9 mailed items. The USPTO
estimates that the average postage cost
for a mailed submission, using a Priority
Mail legal flat rate envelope, will be
$10.15. Therefore, the USPTO estimates
the total mailing costs for this
information collection at $91.
IV. Request for Comments
The USPTO is soliciting public
comments to:
(a) Evaluate whether the collection of
information is necessary for the proper
performance of the functions of the
Agency, including whether the
information will have practical utility;
(b) Evaluate the accuracy of the
Agency’s estimate of the burden of the
collection of information, including the
validity of the methodology and
assumptions used;
(c) Enhance the quality, utility, and
clarity of the information to be
collected; and
(d) Minimize the burden of the
collection of information on those who
are to respond, including through the
use of appropriate automated,
electronic, mechanical, or other
technological collection techniques or
other forms of information technology,
e.g., permitting electronic submission of
responses.
All comments submitted in response
to this notice are a matter of public
record. The USPTO will include or
summarize each comment in the request
to OMB to approve this information
collection. Before including an address,
phone number, email address, or other
personally identifiable information (PII)
in a comment, be aware that the entire
comment—including PII—may be made
VerDate Sep<11>2014
Estimated
annual
responses
16:22 Jul 05, 2024
Jkt 262001
publicly available at any time. While
you may ask in your comment to
withhold PII from public view, the
USPTO cannot guarantee that it will be
able to do so.
Justin Isaac,
Information Collections Officer, Office of the
Chief Administrative Officer, United States
Patent and Trademark Office.
[FR Doc. 2024–14917 Filed 7–5–24; 8:45 am]
BILLING CODE 3510–16–P
DEPARTMENT OF COMMERCE
Patent and Trademark Office
Agency Information Collection
Activities; Submission to the Office of
Management and Budget (OMB) for
Review and Approval; Comment
Request; Trademark Submissions
Regarding Correspondence and
Regarding Attorney Representation
The United States Patent and
Trademark Office (USPTO) will submit
the following information collection
request to the Office of Management and
Budget (OMB) for review and clearance
in accordance with the Paperwork
Reduction Act of 1995, on or after the
date of publication of this notice. The
USPTO invites comments on this
information collection renewal, which
helps the USPTO assess the impact of
its information collection requirements
and minimize the public’s reporting
burden. Public comments were
previously requested via the Federal
Register on April 17, 2024 during a 60day comment period (89 FR 27420).
This notice allows for an additional 30
days for public comment.
Agency: United States Patent and
Trademark Office, Department of
Commerce.
Title: Trademark Submissions
Regarding Correspondence and
Regarding Attorney Representation.
OMB Control Number: 0651–0056.
PO 00000
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87
2,040
177,480
25
816
20,400
3
408
1,224
2,614
....................
3,680,788
Needs and Uses: The United States
Patent and Trademark Office (USPTO)
administers the Trademark Act (Act), 15
U.S.C. 1051 et seq., which provides for
the federal registration of trademarks,
service marks, collective trademarks and
service marks, collective membership
marks, and certification marks.
Individuals and businesses that use or
intend to use such marks in commerce
may file an application to register their
marks with the USPTO.
Such individuals and businesses may
also submit various communications to
the USPTO regarding their pending
applications or registered trademarks,
including providing additional
information needed to process a
pending application, filing amendments
to the application, or filing the papers
necessary to keep a trademark in force.
In the majority of circumstances,
individuals and businesses retain
attorneys to handle these matters. As
such, these parties may also submit
communications to the USPTO
regarding the appointment of attorneys
to represent applicants or registrants in
the application or post-registration
processes or, in the case of applicants or
registrants who are not domiciled in the
United States, the appointment of
domestic representatives on whom may
be served notices of process in
proceedings affecting the mark, the
revocation of an attorney’s or domestic
representative’s appointment, and
requests for permission to withdraw
from representation.
The regulations implementing the Act
are set forth in 37 CFR part 2.
Regulations regarding representation of
others before the USPTO are also set
forth in 37 CFR part 11. In addition to
governing the registration of trademarks,
the Act and regulations govern the
appointment and revocation of attorneys
and domestic representatives and
provide the specifics for filing requests
for permission to withdraw as the
attorney of record. The information in
E:\FR\FM\08JYN1.SGM
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]]>Agencies
[Federal Register Volume 89, Number 130 (Monday, July 8, 2024)]
[Notices]
[Pages 55927-55930]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2024-14917]
-----------------------------------------------------------------------
DEPARTMENT OF COMMERCE
Patent and Trademark Office
Agency Information Collection Activities; Submission to the
Office of Management and Budget (OMB) for Review and Approval; Comment
Request; Patent Reexaminations, Supplemental Examinations, and Post
Patent Submissions
AGENCY: United States Patent and Trademark Office, Department of
Commerce.
ACTION: Notice of information collection; request for comment.
-----------------------------------------------------------------------
SUMMARY: The United States Patent and Trademark Office (USPTO), as
required by the Paperwork Reduction Act of 1995, invites comments on
the extension and revision of an existing information collection: 0651-
0064 (Patent Reexaminations, Supplemental Examinations, and Post Patent
Submissions). The purpose of this notice is to allow 60 days for public
comment preceding submission of the information collection to OMB.
DATES: To ensure consideration, comments regarding this information
collection must be received on or before September 6, 2024.
ADDRESSES: Interested persons are invited to submit written comments by
any of the following methods. Do not submit Confidential Business
Information or otherwise sensitive or protected information.
Email: [email protected]. Include ``0651-
0064 comment'' in the subject line of the message.
Federal eRulemaking Portal: https://www.regulations.gov.
Mail: Justin Isaac, Office of the Chief Administrative
Officer, United States Patent and Trademark Office, P.O. Box 1450,
Alexandria, VA 22313-1450.
FOR FURTHER INFORMATION CONTACT: Request for additional information
should be directed to Jeffrey West, Senior Legal Advisor, Office of
Patent Legal Administration, United States Patent and Trademark Office,
P.O. Box 1450, Alexandria, VA 22313-1450; by telephone at 571-272-2226;
or by email at [email protected] with ``0651-0064 comment'' in the
subject line. Additional information about this information collection
is also available at https://www.reginfo.gov under ``Information
Collection Review.''
SUPPLEMENTARY INFORMATION:
I. 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 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. The
purpose of this information collection is to facilitate requests for ex
parte reexamination and supplemental examination, to facilitate
prosecution of reexamination 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.
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.
[[Page 55928]]
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 collection continues to include items related to the prosecution
of inter partes reexamination proceedings. The regulations outlining
inter partes reexaminations are found at 37 CFR 1.902-1.959.
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.
Thus, the items included in this collection cover (1) requests for
ex parte reexamination, (2) requests for supplemental examination, (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, (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.
II. Method of Collection
The items in this information collection may be submitted
electronically, or on paper by either mail or hand delivery.
III. Data
OMB Control Number: 0651-0064.
Forms: (SB = Specimen Book)
PTO/SB/42 (37 CFR 1.501 Information Disclosure Citation in a
Patent)
PTO/SB/57 (Request for Ex Parte Reexamination Transmittal
Form)
PTO/SB/59 (Request for Supplemental Examination Transmittal
Form)
Type of Review: Extension and revision of a currently approved
information collection.
Affected Public: Private sector.
Respondent's Obligation: Required to obtain or retain benefits.
Estimated Number of Annual Respondents: 874 respondents.
Estimated Number of Annual Responses: 890 responses.
Frequency: On occasion.
Estimated Time per Response: The USPTO estimates that the responses
in this information collection will take the public approximately
between 30 minutes (0.50 hours) and 55 hours to complete. This includes
the time to gather the necessary information, create the document, and
submit the completed request to the USPTO.
Estimated Total Annual Respondent Burden Hours: 25,714 hours.
Estimated Total Annual Respondent Hourly Cost Burden: $11,494,158.
Table 1--Total Burden Hours and Hourly Costs to Private Sector Respondents
--------------------------------------------------------------------------------------------------------------------------------------------------------
Estimated
Estimated Responses per Estimated Estimated time Estimated Rate \1\ ($/ annual
Item No. Item annual respondent annual for response burden (hour/ hour) respondent
respondents responses (hours) year) cost burden
(a) (b) (a) x (b) = (d) (c) x (d) = (f) (e) x (f) =
(c) (e) (g)
--------------------------------------------------------------------------------------------------------------------------------------------------------
1................. Request for 30 1 30 25 750 $447 $335,250
Supplemental
Examination PTO/SB/
59.
2................. Request for Ex 332 1 332 55 18,260 447 8,162,220
Parte
Reexamination PTO/
SB/57.
3................. Petition in a 117 1 117 23 2,691 447 1,202,877
Reexamination
Proceeding (except
for those
specifically
enumerated in 37
CFR 1.550(i) and
1.937(d)).
4................. Patent Owner's 37 25 1 25 8 200 447 89,400
CFR 1.530
Statement.
5................. Third Party 15 1 15 8 120 447 53,640
Requester's 37 CFR
1.535 Reply.
6................. Amendment in Ex 15 1 15 33 495 447 221,265
Parte or Inter
Partes
Reexamination.
7................. Third Party 1 1 1 41 41 447 18,327
Requester's 37 CFR
1.947 Comments in
Inter Partes
Reexamination.
8................. Response to Final 148 1 148 17 2,516 447 1,124,652
Rejection in Ex
Parte
Reexamination.
9................. Patent Owner's 37 1 1 1 41 41 447 18,327
CFR 1.951 Comments
in Inter Partes
Reexamination.
10................ Third Party 1 1 1 41 41 447 18,327
Requester's 37 CFR
1.951 Response in
Inter Partes
Reexamination.
11................ Petition to Request 157 1 157 0.5 79 447 35,313
Extension of Time
in Ex Parte or
Inter Partes
Reexamination.
[[Page 55929]]
12................ 37 CFR 1.501 32 1.5 48 10 480 447 214,560
Information
Disclosure
Citation in a
Patent PTO/SB/42.
----------------------------------------------------------------------------------------------------------------
Totals........ ................... 874 ............... 890 .............. 25,714 .............. 11,494,158
--------------------------------------------------------------------------------------------------------------------------------------------------------
\1\ 2023 Report of the Economic Survey, published by the Committee on Economics of Legal Practice of the American Intellectual Property Law Association
(AIPLA); pg. F-41. The USPTO uses the average billing rate for intellectual property work in all firms which is $447 per hour (https://www.aipla.org/home/news-publications/economic-survey).
Estimated Total Annual Respondent Non-hourly Cost Burden:
$3,680,879. There are no capital start-up, maintenance costs, or
recordkeeping costs associated with this information collection.
However, the USPTO estimates that the total annual non-hour cost burden
for this information collection, in the form of filing fees and
postage, is $3,680,879.
Filing Fees
There are filing fees associated with this information collection,
which are listed in the table below.
Table 2--Filing Fees
----------------------------------------------------------------------------------------------------------------
Estimated Total non-hour
Item No. Fee Item annual Filing fee cost burden
code(s) responses ($) (yr) ($)
.............................. (a) (b) (a) x (b) =
(c)
----------------------------------------------------------------------------------------------------------------
1............................ 1826 Request for supplemental 17 $4,620 $78,540
examination (undiscounted
entity).
1............................ 2826 Request for supplemental 12 1,848 22,176
examination (small entity).
1............................ 3826 Request for supplemental 1 924 924
examination (micro entity).
1............................ 1827 Reexamination ordered as a 10 12,700 127,000
result of supplemental
examination (undiscounted
entity).
1............................ 2827 Reexamination ordered as a 1 5,080 5,080
result of supplemental
examination (small entity).
1............................ 3827 Reexamination ordered as a 1 2,540 2,540
result of supplemental
examination (micro entity).
1............................ 1828 Supplemental examination 19 180 3,420
document size fee--for
nonpatent document having
between 21 and 50 sheets
(undiscounted entity).
1............................ 2828 Supplemental examination 12 72 864
document size fee--for
nonpatent document having
between 21 and 50 sheets
(small entity).
1............................ 3828 Supplemental examination 1 36 36
document size fee--for
nonpatent document having
between 21 and 50 sheets
(micro entity).
1............................ 1829 Supplemental examination 1 300 300
document size fee--for each
additional 50 sheets or a
fraction thereof in a
nonpatent document
(undiscounted entity).
1............................ 2829 Supplemental examination 3 120 360
document size fee--for each
additional 50 sheets or a
fraction thereof in a
nonpatent document (small
entity).
1............................ 3829 Supplemental examination 1 60 60
document size fee--for each
additional 50 sheets or a
fraction thereof in a
nonpatent document (micro
entity).
2............................ 1821 Each reexamination independent 112 480 53,760
claim in excess of three and
also in excess of the number
of such claims in the patent
under reexamination
(undiscounted entity).
2............................ 2821 Each reexamination independent 49 192 9,408
claim in excess of three and
also in excess of the number
of such claims in the patent
under reexamination (small
entity).
2............................ 3821 Each reexamination independent 1 96 96
claim in excess of three and
also in excess of the number
of such claims in the patent
under reexamination (micro
entity).
2............................ 1822 Each reexamination claim in 1,626 100 162,600
excess of 20 and also in
excess of the number of
claims in the patent under
reexamination (undiscounted
entity).
2............................ 2822 Each reexamination claim in 298 40 11,920
excess of 20 and also in
excess of the number of
claims in the patent under
reexamination (small entity).
2............................ 3822 Each reexamination claim in 1 20 20
excess of 20 and also in
excess of the number of
claims in the patent under
reexamination (micro entity).
2............................ 1831 Ex parte reexamination (Sec. 23 6,300 144,900
1.510(a)) streamlined
(undiscounted entity).
2............................ 2831 Ex parte reexamination (Sec. 67 2,520 168,840
1.510(a)) streamlined (small
entity).
2............................ 3831 Ex parte reexamination (Sec. 2 1,260 2,520
1.510(a)) streamlined (micro
entity).
2............................ 1812 Ex parte reexamination (Sec. 195 12,600 2,457,000
1.510(a)) non-streamlined
(undiscounted entity).
2............................ 2812 Ex parte reexamination (Sec. 45 5,040 226,800
1.510(a)) non-streamlined
(small entity).
2............................ 3812 Ex parte reexamination (Sec. 1 2,520 2,520
1.510(a)) non-streamlined
(micro entity).
[[Page 55930]]
3............................ 1824 Petitions in a reexamination 87 2,040 177,480
proceeding, except for those
specifically enumerated in 37
CFR 1.550(i) and 1.937(d)
(undiscounted entity).
3............................ 2824 Petitions in a reexamination 25 816 20,400
proceeding, except for those
specifically enumerated in 37
CFR 1.550(i) and 1.937(d)
(small entity).
3............................ 3824 Petitions in a reexamination 3 408 1,224
proceeding, except for those
specifically enumerated in 37
CFR 1.550(i) and 1.937(d)
(micro entity).
----------------------------------------------------------------------------------
Totals................... ....... .............................. 2,614 ........... 3,680,788
----------------------------------------------------------------------------------------------------------------
Postage Costs
Although the USPTO prefers that the items in this information
collection be submitted electronically, responses may be submitted by
mail through the United States Postal Service (USPS). The USPTO
estimates that 1% of the 890 items will be submitted in the mail
resulting in 9 mailed items. The USPTO estimates that the average
postage cost for a mailed submission, using a Priority Mail legal flat
rate envelope, will be $10.15. Therefore, the USPTO estimates the total
mailing costs for this information collection at $91.
IV. Request for Comments
The USPTO is soliciting public comments to:
(a) Evaluate whether the collection of information is necessary for
the proper performance of the functions of the Agency, including
whether the information will have practical utility;
(b) Evaluate the accuracy of the Agency's estimate of the burden of
the collection of information, including the validity of the
methodology and assumptions used;
(c) Enhance the quality, utility, and clarity of the information to
be collected; and
(d) Minimize the burden of the collection of information on those
who are to respond, including through the use of appropriate automated,
electronic, mechanical, or other technological collection techniques or
other forms of information technology, e.g., permitting electronic
submission of responses.
All comments submitted in response to this notice are a matter of
public record. The USPTO will include or summarize each comment in the
request to OMB to approve this information collection. Before including
an address, phone number, email address, or other personally
identifiable information (PII) in a comment, be aware that the entire
comment--including PII--may be made publicly available at any time.
While you may ask in your comment to withhold PII from public view, the
USPTO cannot guarantee that it will be able to do so.
Justin Isaac,
Information Collections Officer, Office of the Chief Administrative
Officer, United States Patent and Trademark Office.
[FR Doc. 2024-14917 Filed 7-5-24; 8:45 am]
BILLING CODE 3510-16-P
