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, 74926 [2024-20807]

Agencies

• DEPARTMENT OF COMMERCE
• Patent and Trademark Office

[Federal Register Volume 89, Number 178 (Friday, September 13, 2024)]
[Notices]
[Page 74926]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2024-20807]


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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

    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 July 8, 2024 during a 60-day comment period (89 FR 
55927). This notice allows for an additional 30 days for public 
comment.
    Agency: United States Patent and Trademark Office, Department of 
Commerce.
    Title: Patent Reexaminations, Supplemental Examinations, and Post 
Patent Submissions.
    OMB Control Number: 0651-0064.
    Needs and Uses: 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. 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.
    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.
    Frequency: On occasion.
    Estimated Number of Annual Respondents: 874 respondents.
    Estimated Number of Annual Responses: 890 responses.
    Estimated Time per Response: The USPTO estimates that the responses 
in this information collection will take the public approximately 
between 30 minutes (0.5 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 Non-hourly Cost Burden: 
$3,680,879.
    This information collection request may be viewed at 
www.reginfo.gov. 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, 0651-0064.
    Further information can be obtained by:
     Email: [email protected]. Include ``0651-
0064 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. 2024-20807 Filed 9-12-24; 8:45 am]
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