E5-8018. Submission for OMB Review; Comment Request

The United States Patent and Trademark Office (USPTO) has submitted 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 Processing (Updating).

Form Number(s): PTO/SB/08, PTO/SB/17i, PTO/SB/17P, PTO/SB/21-27, PTO/SB/24B, PTO/SB/30-32, PTO/SB/35-39, PTO/SB/42-43, PTO/SB/61-64, PTO/SB/64a, PTO/SB/67-68, PTO/SB/91-92, PTO/SB/96-97, PTO-2053-A/B, PTO-2054-A/B, PTO-2055-A/B, PTOL/413A.

Agency Approval Number: 0651-0031.

Type of Request: Revision of a currently approved collection.

Burden: 2,807,641 hours.

Number of Respondents: 2,317,539 responses.

Avg. Hours per Response: 1 minute 48 seconds to 12 hours. The USPTO estimates that it will take 12 hours to complete the examination support document covering the independent claims and the designated dependent claims; 2 hours to complete the petition (filed in a continuation or continuation-in-part application) containing a showing as to why the amendment, argument, or evidence could not have been submitted prior to the close of prosecution in the prior-filed application; 2 hours to complete the petition (filed with a request for continued examination) with a showing as to why the amendment, argument, or evidence could not have been submitted prior to the close of prosecution in the application; and 1 hour to complete the explanation (filed in a nonprovisional application) of either how the claims are patentably distinct or why there are patentably indistinct claims filed in multiple applications. This includes time to gather the necessary information, create the documents, and submit the completed request.

Needs and Uses: The proposed examination support document covering the independent claims and designated dependent claims will assist the applicant in preparing a schedule of claims that are patentable (i.e., novel and non-obvious) over the prior art, and will assist the USPTO in the examination process in determining whether the claims are patentable over the prior art. The proposed petition for a continuation or continuation-in-part application showing why the amendment, argument, or evidence could not have been submitted prior to the close of prosecution in the application will assist the USPTO in determining whether the continuation or continuation-in-part application or request for continued examination is a bona fide attempt to advance the application to final agency action or is simply being filed to delay examination. The proposed explanation in nonprovisional applications, when multiple applications having a common inventor and a common assignee have been filed on the same day, of either how the claims are patentably distinct or why there are patentably indistinct claims filed in multiple applications, will assist the USPTO in determining whether double patenting exists and whether the USPTO should merge the applications. The USPTO is submitting this collection in support of a notice of proposed rulemaking entitled “Changes to Practice for the Examination of Claims in Patent Applications” (RIN 0651-AB94); and a notice of proposed rulemaking entitled “Changes to Practice for Continuing Applications, Requests for Continued Examination Practice, and Applications Containing Patentably Indistinct Claims” (RIN 0651-AB93). There are no forms associated with this final rulemaking.

Affected Public: Individuals or households; business or other for-profit; not-for-profit institutions; farms, the Federal Government, and State, Local or Tribal Governments.

Frequency: On occasion.

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

OMB Desk Officer: David Rostker, [phone].

Copies of the above information collection proposal can be obtained by any of the following methods:

• E-mail: [e-mail]. Include “0651-0031 copy request” in the subject line of the message.
• Fax: [phone], marked to the attention of Susan Brown.
• Mail: Susan K. Brown, Records Officer, Office of the Chief Information Officer, Office of Data Architecture and Services, Data Administration Division, U.S. 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 30, 2006, to David Rostker, OMB Desk Officer, Room 10202, New Executive Office Building, 725 17th Street, NW., Washington, DC 20503.

Dated: December 22, 2005.

Susan K. Brown,

Records Officer, USPTO, Office of Data Architecture and Services, Data Administration Division.