SUPPORTING STATEMENT
United States Patent and Trademark Office
Patent Reexaminations, Supplemental Examinations, and Post Patent Submissions
OMB CONTROL NUMBER 0651-0064
2021
Note: This renewal request incorporates an item that was previously approved under OMB control number 0651-0067 (Post Patent Public Submissions); specifically ‘information disclosure citations’. The title of this information collection is being updated to reflect that change with the inclusion of “Post Patent Submissions”. As the information disclosure citations was the only item contained in 0651-0067, that information collection will be discontinued.
A. Justification
Explain the circumstances that make the collection of information necessary. Identify any legal or administrative requirements that necessitate the information collection. Attach a copy of the appropriate section of each statute and regulation mandating or authorizing the collection of information.
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.
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 1.903-1.959.
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.
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.
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.
Table 1 provides the specific statutes and regulations authorizing the USPTO to collect the information discussed above.
Table 1: Information Requirements
Item No. |
Requirement |
Statute |
Regulation |
1
|
Request for Supplemental Examination |
35 U.S.C. 257 |
37 CFR 1.601-1.625 |
2
|
Request for Ex Parte Reexamination |
35 U.S.C. 302 |
37 CFR 1.510-1.570 |
3
|
Petition in a Reexamination Proceeding (except for those specifically enumerated in 37 CFR 1.550(i) and 1.937(d)) |
35 U.S.C. 303, 312 |
37 CFR 1.181, 1.515(c), and 1.927 |
4
|
Patent Owner’s 37 CFR 1.530 Statement |
35 U.S.C. 304 |
37 CFR 1.530 |
5
|
Third Party Requester’s 37 CFR 1.535 Reply |
35 U.S.C. 304 |
37 CFR 1.535 |
6
|
Amendment in Ex Parte or Inter Partes Reexamination |
35 U.S.C. 132, 305, and 314 |
37 CFR 1.111, 1.530, 1.941, and 1.943 |
7
|
Third Party Requester’s 37 CFR 1.947 Comments in Inter Partes Reexamination |
35 U.S.C. 314 |
37 CFR 1.947 |
8
|
Response to Final Rejection in Ex Parte Reexamination |
35 U.S.C. 132 and 305 |
37 CFR 1.116 and 1.530 |
9
|
Patent Owner’s 37 CFR 1.951 Response in Inter Partes Reexamination |
35 U.S.C. 132 and 314 |
37 CFR 1.116 and 1.951 |
10
|
Third Party Requester’s 37 CFR 1.951 Comments in Inter Partes Reexamination |
35 U.S.C. 314 |
37 CFR 1.951 |
11
|
Petition to Request Extension of Time in Ex Parte or Inter Partes Reexamination |
35 U.S.C. 304-305 and 314 |
37 CFR 1.550(c) and 1.956 |
12
|
Information Disclosure Citation in a Patent |
35 U.S.C. § 301 |
37 CFR 1.501 |
Indicate how, by whom, and for what purpose the information is to be used. Except for a new information collection, indicate the actual use the agency has made of the information received from the current information collection.
The public uses this information collection to request supplemental examination and reexamination proceedings, 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.
The information collected, maintained, and used in this collection is based on OMB and USPTO guidelines. This includes the basic information quality standards established in the Paperwork Reduction Act (44 U.S.C. Chapter 35), in OMB Circular A-130, and in the USPTO information quality guidelines.
Table 2 outlines how this collection of information is used by the public and the USPTO.
Table 2: Needs and Uses
Item No. |
Form and Function
|
Form No. |
Needs and Uses |
1 |
Request for Supplemental Examination |
PTO/SB/59 |
|
2 |
Request for Ex Parte Reexamination |
PTO/SB/57 |
|
3 |
Petition in a Reexamination Proceeding (except for those specifically enumerated in 37 CFR 1.550(i) and 1.937(d)) |
No Form |
|
4 |
Patent Owner’s 37 CFR 1.530 Statement |
No Form |
|
5 |
Third Party Requester’s 37 CFR 1.535 Reply |
No Form |
|
6 |
Amendment in Ex Parte or Inter Partes Reexamination |
No Form |
|
7 |
Third Party Requester’s 37 CFR 1.947 Comments in Inter Partes Reexamination |
No Form |
|
8 |
Response to Final Rejection in Ex Parte Reexamination |
No Form |
|
9 |
Patent Owner’s 37 CFR 1.951 Response in Inter Partes Reexamination |
No Form |
|
10 |
Third Party Requester’s 37 CFR 1.951 Comments in Inter Partes Reexamination |
No Form |
|
11 |
Petition to Request Extension of Time in Ex Parte or Inter Partes Reexamination |
No Form |
|
12 |
Information Disclosure Citation in a Patent |
PTO/SB/42 |
|
Describe whether, and to what extent, the collection of information involves the use of automated, electronic, mechanical, or other technological collection techniques or other forms of information technology, e.g., permitting electronic submission of responses, and the basis for the decision for adopting this means of collection. Also describe any consideration of using information technology to reduce burden.
The forms associated with this collection may be downloaded from the USPTO website in Portable Document Format (PDF) and filled out electronically. The items in this collection may be submitted online using the Patent Electronic System (EFS-Web and Patent Center), the USPTO’s Web-based electronic filing system. A submission made under 37 CFR 1.501 by a party other than the patent owner will not be entered into the patent’s Image File Wrapper (IFW) if it does not include proof of service compliant with 37 CFR 1.248(b). Where a 37 CFR 1.501 citation includes proof of service, all information included in the citation will be made of record in the IFW of the patent.
Patent Electronic System allows customers to file patent applications and associated documents electronically through their standard Web browser without downloading special software, changing their document preparation tools, or altering their workflow processes. Typically, the customer will prepare the forms or documents as standard PDF files and then upload them to the USPTO servers using the secure interface. Patent Electronic System offers many benefits to filers, including immediate notification that a submission has been received by the USPTO, automated processing of requests, and avoidance of postage or other paper delivery costs.
Describe efforts to identify duplication. Show specifically why any similar information already available cannot be used or modified for use for the purposes described in Item 2 above.
This information is collected only when a respondent files a request related to patent reexamination or supplemental examination, or during the enforceability of a patent. This information is not collected elsewhere and does not result in a duplication of effort.
If the collection of information impacts small businesses or other small entities, describe any methods used to minimize burden.
The information in this information collection is necessary in order to process requests related to patent reexaminations and supplemental examinations and to permit relevant post-patent prior art and claim scope information to be entered into a patent file. The same information is required from every requester or submitter and is not available from any other source.
This collection of information will not impose a significant economic impact on a substantial number of small entities. The burden imposed by the requirements of this information collection on all entities, including small entities, is minor.
Describe the consequence to Federal program or policy activities if the information collection is not conducted or is conducted less frequently, as well as any technical or legal obstacles to reducing burden.
This information is collected only when the public submits an item related to a request for reexamination or supplemental examination and is not found elsewhere, or when a member of the public submits an information disclosure citation in a patent. If the information were not collected, the USPTO would not be able to comply with the statues and regulations governing reexaminations and supplemental examinations, and the public would not be able to exercise its statutory right under 35 U.S.C. 301 to cite to the USPTO in writing (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 a particular patent, or (2) statements of the patent owner that were filed by the patent owner in a proceeding before a Federal court or the USPTO in which the patent owner took a position on the scope of any claim of a particular patent. This information could not be collected less frequently.
Explain any special circumstances that would cause an information collection to be conducted in a manner:
requiring respondents to report information to the agency more often than quarterly;
requiring respondents to prepare a written response to a collection of information in fewer than 30 days after receipt of it;
requiring respondents to submit more than an original and two copies of any document;
requiring respondents to retain records, other than health, medical, government contract, grant-in-aid, or tax records, for more than three years;
in connection with a statistical survey, that is not designed to produce valid and reliable results that can be generalized to the universe of study;
requiring the use of a statistical data classification that has not been reviewed and approved by OMB;
that includes a pledge of confidentiality that is not supported by authority established in statute or regulation, that is not supported by disclosure and data security policies that are consistent with the pledge, or which unnecessarily impedes sharing of data with other agencies for compatible confidential use; or
requiring respondents to submit proprietary trade secrets, or other confidential information unless the agency can demonstrate that it has instituted procedures to protect the information's confidentiality to the extent permitted by law.
There are no special circumstances associated with this collection of information.
If applicable, provide a copy and identify the date and page number of publication in the Federal Register of the agency's notice, required by 5 CFR 1320.8(d), soliciting comments on the information collection prior to submission to OMB. Summarize public comments received in response to that notice and describe actions taken by the agency in response to these comments. Specifically address comments received on cost and hour burden.
Describe efforts to consult with persons outside the agency to obtain their views on the availability of data, frequency of information collection, the clarity of instructions and recordkeeping, disclosure, or reporting format (if any), and on the data elements to be recorded, disclosed, or reported.
Consultation with representatives of those from whom information is to be obtained or those who must compile records should occur at least once every 3 years - even if the collection of information activity is the same as in prior periods. There may be circumstances that may preclude consultation in a specific situation. These circumstances should be explained.
The 60-Day Notice was published in the Federal Register on July 26, 2021 (86 FR 40015). The comment period ended on September 24, 2021. No public comments were received.
The USPTO has long-standing relationships with groups from whom reexamination data is collected, such as the American Intellectual Property Law Association, as well as patent bar associations, independent inventor groups, and users of our public search facilities. Views expressed by these groups are considered in developing proposals for information collection requirements and during the renewal of an information collection. No comments or concerns have been expressed impacting the present renewal.
Explain any decision to provide any payment or gift to respondents, other than remuneration of contractors or grantees.
This information collection does not involve a payment or gift to any respondent.
Describe any assurance of confidentiality provided to respondents and the basis for the assurance in statute, regulation, or agency policy. If the information collection requires a systems of records notice (SORN) or privacy impact assessment (PIA), those should be cited and described here.
The confidentiality of patent applications is governed by statute (35 U.S.C. 122) and regulation (37 CFR 1.11 and 1.14). The USPTO has a legal obligation to maintain the confidentiality of the contents of unpublished patent applications and related documents. Upon publication of an application or issuance of a patent, the patent application file is made available to the public, subject to the provisions for providing only a redacted copy of the file contents. The entire file of an ex parte reexamination proceeding is available to the public.
This information collection contains information that can be collected from any person who elects to cite, in an issued parent, prior art consisting of patents or printed publications which the person making the submission believes to have a bearing on the patentability, or statements of the patent owner that were filed by the patent owner in a proceeding before a Federal court or the USPTO in which the patent owner in a proceeding before a Federal court or the USPTO in which the patent owner took a position in the scope of any claim of the patent. While information disclosure citations in a patent are necessarily available to the public, 37 CFR 1.501(d) states that “[i]f the person making the submission wishes his or her identity to be excluded from the patent file and kept confidential, the submission papers must be submitted anonymously without any identification of the person making the submission.”
The USPTO is required by 35 U.S.C. § 131, to maintain the patenting process. Information is collected on submissions related to patent products including information regarding reexaminations, supplemental examinations, and post patent submissions. These information collection activities are covered under the Statement of Records Notice (SORN COMMERCE/PAT-TM-7 Patent Application Files, available at Federal Register /Vol. 78, No. 61 / Friday, March 29, 2013 /Notices 19243. https://www.govinfo.gov/content/pkg/FR-2013-03-29/pdf/2013-07341.pdf ).
This SORN identifies the categories of individuals covered by the system containing applicants for patent, including inventors, legal representatives for inventors, and other persons authorized by law to make applications for patent.
The information is protected from disclosure to third parties in accordance with the Privacy Act. However, routine uses of this information may include disclosure to the following: to law enforcement and investigation in the event that the system of records indicates a violation or potential violation of law; to a Federal, state, local, or international agency, in response to its request; to an agency, organization, or individual for the purpose of performing audit or oversight operations as authorized by law; to non-federal personnel under contract to the agency; to a court for adjudication and litigation; to the Department of Justice for Freedom of Information Act (FOIA) assistance; to members of congress working on behalf of an individual; to the Office of Personnel Management (OPM) for personnel research purposes; to National Archives and Records Administration for inspection of records, and to the Office of Management and Budget (OMB) for legislative coordination and clearance.
Provide additional justification for any questions of a sensitive nature, such as sexual behavior and attitudes, religious beliefs, and other matters that are commonly considered private. This justification should include the reasons why the agency considers the questions necessary, the specific uses to be made of the information, the explanation to be given to persons from whom the information is requested, and any steps to be taken to obtain their consent.
None of the required information in this collection is considered to be sensitive.
Provide estimates of the hour burden of the collection of information. The statement should:
Indicate the number of respondents, frequency of response, annual hour burden, and an explanation of how the burden was estimated. Unless directed to do so, agencies should not conduct special surveys to obtain information on which to base hour burden estimates. Consultation with a sample (fewer than 10) of potential respondents is desirable. If the hour burden on respondents is expected to vary widely because of differences in activity, size, or complexity, show the range of estimated hour burden, and explain the reasons for the variance. Generally, estimates should not include burden hours for customary and usual business practices.
If this request for approval covers more than one form, provide separate hour burden estimates for each form and aggregate the hour burdens.
Provide estimates of annualized cost to respondents for the hour burdens for collections of information, identifying and using appropriate wage rate categories. The cost of contracting out or paying outside parties for information collection activities should not be included here. Instead, this cost should be included under ‘Annual Cost to Federal Government’.
Tables 3 and 4 calculate the burden hours and costs of this information collection to the public, based on the following factors:
Respondent Cost Burden
The USPTO estimates that it will receive approximately 880 responses per year from 864 respondents for this information collection, with approximately 40% of these responses submitted by small entities.
The USPTO estimates that approximately 98% of the annual responses for this collection will be submitted electronically via Patent Electronic System, which customers may access through the USPTO website.
Burden Hour Calculation Factors
The USPTO estimates that it takes the public approximately between 30 minutes (0.5 hours) to 55 hours, depending on the complexity of the situation and item, to gather the necessary information, prepare the appropriate document(s), and submit the information to the USPTO. Using these burden factors, USPTO estimates that the total respondent hourly burden for this information collection is 23,574 hours per year.
Cost Burden Calculation Factors
The USPTO uses a professional rate of $435 per hour for the respondent cost burden calculations, which is the average hourly billing rate for intellectual property attorneys in private firms as shown in the 2021 Report of the Economic Survey published by the American Intellectual Property Law Association (AIPLA). Using these hourly rates, the USPTO estimates that the total respondent cost burden for this information collection is $10,254,690 per year.
Table 3: Total Hourly Burden for Private Sector Respondents
Item No. |
Item |
Estimated Annual Respondents
(a) |
Responses per Respondent
(b) |
Estimated Annual Responses
(a) x (b) = (c) |
Estimated Time For Response (hours)
(d) |
Estimated Burden (hour/year)
(c) x (d) = (e) |
Rate1 ($/hour)
(f) |
Estimated Annual Respondent Cost Burden
(e) x (f) = (g) |
1 |
Request for Supplemental Examination
PTO/SB/59 |
31 |
1 |
31 |
25 |
775 |
$435 |
$337,125 |
2 |
Request for Ex Parte Reexamination
PTO/SB/57 |
177 |
1 |
177 |
55 |
9,735 |
$435 |
$4,234,725 |
3 |
Petition in a Reexamination Proceeding (except for those specifically enumerated in 37 CFR 1.550(i) and 1.937(d)) |
68 |
1 |
68 |
23 |
1,564 |
$435 |
$680,340 |
4 |
Patent Owner’s 37 CFR 1.530 Statement |
53 |
1 |
53 |
8 |
424 |
$435 |
$184,440 |
5 |
Third Party Requester’s 37 CFR 1.535 Reply |
9 |
1 |
9 |
8 |
72 |
$435 |
$31,320 |
6 |
Amendment in Ex Parte or Inter Partes Reexamination |
230 |
1 |
230 |
33 |
7,590 |
$435 |
$3,301,650 |
7 |
Third Party Requester’s 37 CFR 1.947 Comments in Inter Partes Reexamination |
1 |
1 |
1 |
41 |
41 |
$435 |
$17,835 |
8 |
Response to Final Rejection in Ex Parte Reexamination |
118 |
1 |
118 |
17 |
2,006 |
$435 |
$872,610 |
9 |
Patent Owner’s 37 CFR 1.951 Response in Inter Partes Reexamination |
2 |
1 |
2 |
41 |
82 |
$435 |
$35,670 |
10 |
Third Party Requester’s 37 CFR 1.951 Comments in Inter Partes Reexamination |
2 |
1 |
2 |
41 |
82 |
$435 |
$35,670 |
11 |
Petition to Request Extension of Time in Ex Parte or Inter Partes Reexamination |
116 |
1 |
116 |
0.5 |
58 |
$435 |
$25,230 |
12 |
Information Disclosure Citation in a Patent
PTO/SB/42 |
32 |
1.5 |
48 |
10 |
480 |
$435 |
$208,800 |
|
Total |
838 |
|
855 |
|
22,909 |
|
$9,965,415 |
Table 4: Total Hourly Burden For Individuals or Households Respondents
Item No. |
Item |
Estimated Annual Respondents
(a) |
Responses per Respondent
(b) |
Estimated Annual Responses
(a) x (b) = (c) |
Estimated Time For Response (hours)
(d) |
Estimated Burden (hour/year)
(c) x (d) = (e) |
Rate2 ($/hour)
(f) |
Estimated Annual Respondent Cost Burden
(e) x (f) = (g) |
1 |
Request for Supplemental Examination
PTO/SB/59 |
1 |
1 |
1 |
25 |
25 |
$435 |
$10,875 |
2 |
Request for Ex Parte Reexamination
PTO/SB/57 |
5 |
1 |
5 |
55 |
275 |
$435 |
$119,625 |
3 |
Petition in a Reexamination Proceeding (except for those specifically enumerated in 37 CFR 1.550(i) and 1.937(d)) |
2 |
1 |
2 |
23 |
46 |
$435 |
$20,010 |
4 |
Patent Owner’s 37 CFR 1.530 Statement |
1 |
1 |
1 |
8 |
8 |
$435 |
$3,480 |
6 |
Amendment in Ex Parte or Inter Partes Reexamination |
7 |
1 |
7 |
33 |
231 |
$435 |
$100,485 |
8 |
Response to Final Rejection in Ex Parte Reexamination |
4 |
1 |
4 |
17 |
68 |
$435 |
$29,580 |
11 |
Petition to Request Extension of Time in Ex Parte or Inter Partes Reexamination |
4 |
1 |
4 |
0.5 |
2 |
$435 |
$870 |
12 |
Information Disclosure Citation in a Patent
PTO/SB/42 |
1 |
1 |
1 |
10 |
10 |
$435 |
$4,350 |
|
Total |
25 |
|
25 |
|
665 |
|
$28,9275
|
Provide an estimate for the total annual cost burden to respondents or record keepers resulting from the collection of information. (Do not include the cost of any hour burden already reflected on the burden worksheet).
The cost estimate should be split into two components: (a) a total capital and start-up cost component (annualized over its expected useful life) and (b) a total operation and maintenance and purchase of services component. The estimates should take into account costs associated with generating, maintaining, and disclosing or providing the information. Include descriptions of methods used to estimate major cost factors including system and technology acquisition, expected useful life of capital equipment, the discount rate(s), and the time period over which costs will be incurred. Capital and start-up costs include, among other items, preparations for collecting information such as purchasing computers and software; monitoring, sampling, drilling and testing equipment; and record storage facilities.
If cost estimates are expected to vary widely, agencies should present ranges of cost burdens and explain the reasons for the variance. The cost of purchasing or contracting out information collections services should be a part of this cost burden estimate. In developing cost burden estimates, agencies may consult with a sample of respondents (fewer than 10), utilize the 60-day pre-OMB submission public comment process and use existing economic or regulatory impact analysis associated with the rulemaking containing the information collection, as appropriate.
Generally, estimates should not include purchases of equipment or services, or portions thereof, made: (1) prior to October 1, 1995, (2) to achieve regulatory compliance with requirements not associated with the information collection, (3) for reasons other than to provide information or keep records for the government, or (4) as part of customary and usual business or private practices.
This information collection contains non-hour cost burdens in both fees paid by the public and associated postage costs for mailing items to the USPTO. The USPTO estimates that the total annual (non-hour) cost burden for this information collection, in the form of filing fees ($2,439,195) and postage ($140) is $2,439,335 per year.
Filing Fees
There are nine filing fees associated with this information collection, which are broken down by undiscounted entity, small entity, and micro entity. These fees are listed in the table below.
Table 5: Filing Fees (Non-hour) Cost Burden
Item No. |
Item |
Estimated Annual Responses
(a) |
Filing Fee ($)
(b) |
Total Non-hour Cost Burden (yr)
(a) x (b) = (c) |
1 |
Supplemental Examination Request (undiscounted entity) |
22 |
$4,620 |
$101,640 |
1 |
Supplemental Examination Request (small entity) |
14 |
$2,310 |
$32,340 |
1 |
Supplemental Examination Request (micro entity) |
1 |
$1,155 |
$1,155 |
1 |
Supplemental Examination Reexamination (undiscounted entity) |
28 |
$12,700 |
$355,600 |
1 |
Supplemental Examination Reexamination (small entity) |
15 |
$6,350 |
$95,250 |
1 |
Supplemental Examination Reexamination (micro entity) |
1 |
$3,175 |
$3,175 |
1 |
Supplemental Examination document size fees, 21-50 documents (undiscounted entity) |
3 |
$180 |
$540 |
1 |
Supplemental Examination document size fees, 21-50 documents (small entity) |
3 |
$90 |
$270 |
1 |
Supplemental Examination document size fees, 21-50 documents (micro entity) |
1 |
$45 |
$45 |
1 |
Supplemental examination document size fees, each additional 50 documents (undiscounted entity) |
3 |
$300 |
$900 |
1 |
Supplemental examination document size fees, each additional 50 documents (small entity) |
1 |
$150 |
$150 |
1 |
Supplemental examination document size fees, each additional 50 documents (micro entity) |
1 |
$75 |
$75 |
2 |
Reexamination independent claims in excess of three and also in excess of the number of such claims in the patent under reexamination (undiscounted entity) |
23 |
$480 |
$11,040 |
2 |
Reexamination independent claims in excess of three and also in excess of the number of such claims in the patent under reexamination (small entity) |
12 |
$240 |
$2,880 |
2 |
Reexamination independent claims in excess of three and also in excess of the number of such claims in the patent under reexamination (micro entity) |
1 |
$120 |
$120 |
2 |
Reexamination claims in excess of 20 and also in excess of the number of claims in the patent under reexamination (undiscounted entity) |
38 |
$100 |
$3,800 |
2 |
Reexamination claims in excess of 20 and also in excess of the number of claims in the patent under reexamination (small entity) |
17 |
$50 |
$850 |
2 |
Reexamination claims in excess of 20 and also in excess of the number of claims in the patent under reexamination (micro entity) |
1 |
$25 |
$25 |
2 |
Ex Parte Reexamination (§1.510(a)) Streamlined (undiscounted entity) |
22 |
$6,300 |
$138,600 |
2 |
Ex Parte Reexamination (§1.510(a)) Streamlined (small entity) |
40 |
$3,150 |
$126,000 |
2 |
Ex Parte Reexamination (§1.510(a)) Streamlined (micro entity) |
2 |
$1,575 |
$3,150 |
2 |
Ex Parte Reexamination (§1.510(a)) Non-Streamlined (undiscounted entity) |
86 |
$12,600 |
$1,083,600 |
2 |
Ex Parte Reexamination (§1.510(a)) Non-Streamlined (small entity) |
56 |
$6,300 |
$352,800 |
2 |
Ex Parte Reexamination (§1.510(a)) Non-Streamlined (micro entity) |
14 |
$3,150 |
$44,100 |
3 |
Petitions in a reexamination proceeding, except for those specifically enumerated in 37 CFR 1.550(i) and 1.937(d) (undiscounted entity) |
34 |
$2,040 |
$69,360 |
3 |
Petitions in a reexamination proceeding, except for those specifically enumerated in 37 CFR 1.550(i) and 1.937(d) (small entity) |
11 |
$1,020 |
$11,220 |
3 |
Petitions in a reexamination proceeding, except for those specifically enumerated in 37 CFR 1.550(i) and 1.937(d) (micro entity) |
1 |
$510 |
$510 |
|
Total |
|
|
$2,439,195 |
Postage Costs
The USPTO expects that at most 2% of the responses in this collection will be submitted by mail. The USPTO estimates that the average postage cost for a mailed submission, using a Priority Mail 2-day flat rate legal envelope, will be $8.25. The USPTO estimates approximately 17 submissions per year may be mailed to the USPTO, for an estimated total postage cost of $140 per year.
Provide estimates of annualized costs to the Federal government. Also, provide a description of the method used to estimate cost, which should include quantification of hours, operational expenses (such as equipment, overhead, printing, and support staff), and any other expense that would not have been incurred without this collection of information. Agencies may also aggregate cost estimates from Items 12, 13, and 14 in a single table.
The USPTO employs a GS-7 employee and a GS-11 employee to process submissions for this information collection.
The USPTO estimates that the cost of a GS-7, step 1 employee is $30.62 per hour (GS hourly rate of $23.55 with 30% ($7.07) added for benefits and overhead). The USPTO estimates that the cost of a GS-11, step 1 employee is $45.32 per hour (GS hourly rate of $34.86 with 30% ($10.46) added for benefits and overhead).
The USPTO estimates that it takes an employee approximately between 15 minutes (0.25 hours) and 5 hours to process the information in this information collection, depending on the type and amount of information being submitted.
Table 7 calculates the burden hours and costs to the Federal Government to processing this information collection.
Table 6: Burden Hour/Cost to the Federal Government
Item No. |
Item |
Estimated Annual Responses
(a) |
Estimated Time For Response (hours)
(d) |
Estimated Burden (hour/year)
(a) x (b) = (c) |
Rate ($/hour)
(d) |
Estimated Annual Respondent Cost Burden
(c) x (d) = (e) |
1
|
Request for Supplemental Examination |
32 |
5 |
160 |
$45.32 |
$7,251 |
2
|
Request for Ex Parte Reexamination |
182 |
5 |
910 |
$45.32 |
$41,241 |
3
|
Petition in a Reexamination Proceeding (except for those specifically enumerated in 37 CFR 1.550(i) and 1.937(d)) |
70 |
0.5 |
35 |
$30.62 |
$1,072 |
4
|
Patent Owner’s 37 CFR 1.530 Statement |
54 |
0.25 |
13.5 |
$45.32 |
$612 |
5
|
Third Party Requester’s 37 CFR 1.535 Reply |
9 |
0.25 |
2.25 |
$45.32 |
$102 |
6
|
Amendment in Ex Parte or Inter Partes Reexamination |
237 |
0.33 |
78.21 |
$45.32 |
$3,545 |
7
|
Third Party Requester’s 37 CFR 1.947 Comments in Inter Partes Reexamination |
1 |
0.33 |
0.33 |
$45.32 |
$15 |
8
|
Response to Final Rejection in Ex Parte Reexamination |
122 |
0.33 |
40.26 |
$45.32 |
$1,825 |
9
|
Patent Owner’s 37 CFR 1.951 Response in Inter Partes Reexamination |
2 |
0.33 |
0.66 |
$45.32 |
$30 |
10
|
Third Party Requester’s 37 CFR 1.951 Comments in Inter Partes Reexamination |
2 |
0.33 |
0.66 |
$45.32 |
$30 |
11
|
Petition to Request Extension of Time in Ex Parte or Inter Partes Reexamination |
120 |
0.25 |
30 |
$30.62 |
$919 |
12
|
Information Disclosure Citation in a Patent |
49 |
0.5 |
25 |
$30.62 |
$750 |
|
Total |
880 |
|
1,296 |
|
$57,391 |
Explain the reasons for any program changes or adjustments reported on the burden worksheet.
ICR Summary of Burden: |
|
Requested |
Program Change Due to New Statute |
Program Change Due to Agency Discretion |
Change Due to Adjustment in Agency Estimate |
Change Due to Potential Violation of the PRA |
Previously Approved |
Annual Number of Responses |
880 |
0 |
49 |
-914 |
0 |
1,745 |
Annual Time Burden (Hr) |
23,574 |
0 |
490 |
-15,002 |
0 |
38,086 |
Annual Cost Burden ($) |
2,439,335 |
0 |
0 |
-445,058 |
0 |
2,884,393 |
Change in Respondents and Hourly Burden due to Adjustment in Agency Estimate
The total number of respondents has decreased by 914 due to estimated fluctuations in the number of responses/submissions in this information collection. This decrease in the number of respondents and responses results in a decrease of 15,002 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 decrease by $445,058 from the previous approval. This decrease is due to estimated fluctuations in submissions for items that require a fee.
Change in Respondents and Hourly Burden due to Program Change due to Agency Discretion
This renewal request incorporates an item that was previously approved under OMB control number 0651-0067 (Post Patent Public Submissions); specifically ‘information disclosure citations’. The merger of this item in this information collection results in response and burden increases due to this change. The estimated number of responses increases by 49 and the estimated number of burden hours increases by 490.
For collections of information whose results will be published, outline plans for tabulation and publication. Address any complex analytical techniques that will be used. Provide the time schedule for the entire project, including beginning and ending dates of the collection of information, completion of report, publication dates, and other actions.
The USPTO does not plan to publish this information for statistical use.
If seeking approval to not display the expiration date for OMB approval of the information collection, explain the reasons that display would be inappropriate.
The forms in this information collection will display the OMB Control Number and the expiration date of OMB approval.
Explain each exception to the topics of the certification statement identified in “Certification for Paperwork Reduction Act Submissions.”
This collection of information does not include any exceptions to the certificate statement.
B. COLLECTION OF INFORMATION EMPLOYING STATISTICAL METHODS
This collection of information does not employ statistical methods.
1 2021 Report of the Economic Survey, published by the Committee on Economics of Legal Practice of the American Intellectual Property Law Association (AIPLA); y. The USPTO uses the mean IP billing rate for attorneys in private firmswhich is $435 per hour. (https://www.aipla.org/home/news-publications/economic-survey; pg F-27)
2 2019 Report of the Economic Survey, published by the Committee on Economics of Legal Practice of the American Intellectual Property Law Association (AIPLA); https://www.aipla.org/detail/ journal-issue/2019-report-of-the-economic-survey. The USPTO uses the mean rate for attorneys in private firms which is $400 per hour.
| File Type | application/vnd.openxmlformats-officedocument.wordprocessingml.document |
| Author | Sarah Gunther |
| File Modified | 0000-00-00 |
| File Created | 2023-08-18 |