E9-30626. Submission for OMB Review; Comment Request

The United States Patent and Trademark Office (USPTO) will submit to the Office of Management and Budget (OMB) for clearance the following proposal for collection of information under the provisions of the Paperwork Reduction Act (44 U.S.C. Chapter 35).

Agency: United States Patent and Trademark Office (USPTO).

Title: Patent Reexaminations.

Form Number(s): PTO/SB/57 and PTO/SB/58.

Agency Approval Number: 0651-00XX.

Type of Request: New collection.

Burden: 161,128 hours annually.

Number of Respondents: 5,124 responses per year.

Average Hours per Response: The USPTO estimates that it will take the public approximately 18 minutes (0.30 hours) to 148 hours to gather the necessary information, prepare the appropriate form or other documents, and submit the information to the USPTO.

Needs and Uses: 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 patents or printed publications. Once initiated, the reexamination proceedings under Chapter 30 are substantially ex parte and do not permit input from third parties. Chapter 31 of Title 35 U.S.C. provides for inter partes reexamination allowing third parties to participate throughout the reexamination proceeding. The rules outlining ex parte and inter partes reexaminations are found at 37 CFR 1.510-1.570 and 1.902-1.997.

Information requirements related to patent reexaminations are currently covered under OMB Control Number 0651-0033, along with other requirements related to patent issue fees and reissue applications. The USPTO is proposing to move the following items that are under 0651-0033 into a new information collection for Patent Reexaminations: Request for Ex Parte Reexamination Transmittal Form; Request for Inter Partes Reexamination Transmittal Form; Petition to Review the Refusal to Grant Ex Parte Reexamination; Petition to Review the Refusal to Grant Inter Partes Reexamination; and Petition to Request Extension of Time in Ex Parte or Inter Partes Reexamination.

The USPTO is also proposing to include additional items related to patent reexaminations in this new information collection: Request for Ex Parte Reexamination; Request for Inter Partes 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; and Third Party Requester's 37 CFR 1.951 Comments in Inter Partes Reexamination. These additional items are existing information requirements that previously were not fully covered by an information collection and are now being included in order to more accurately reflect the burden on the public for submitting requests related to patent reexaminations.

The public uses this information collection to request reexamination proceedings and to ensure that the associated fees and documentation are submitted to the USPTO.

Affected Public: Individuals or households; businesses or other for-profits; and not-for-profit institutions.

Frequency: On occasion.

Respondent's Obligation: Required to obtain or retain benefits.

OMB Desk Officer: Nicholas A. Fraser, e-mail: [e-mail].

Once submitted, the request will be publicly available in electronic format through the Information Collection Review page at http://www.reginfo.gov.

Paper copies can be obtained by:

• E-mail: [e-mail]. Include “0651-00XX Patent Reexaminations copy request” in the subject line of the message.
• Fax: [phone], marked to the attention of Susan K. Fawcett.
• Mail: Susan K. Fawcett, Records Officer, Office of the Chief Information Officer, United States Patent and Trademark Office, P.O. Box 1450, Alexandria, VA 22313-1450.

Written comments and recommendations for the proposed information collection should be sent on or before January 27, 2010 to Nicholas A. Fraser, OMB Desk Officer, via e-mail at [e-mail], or by fax to 202-395-5167, marked to the attention of Nicholas A. Fraser.

Dated: December 17, 2009.

Susan K. Fawcett,

Records Officer, USPTO, Office of the Chief Information Officer.