2014-04038. 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 Trial and Appeal Board (PTAB) Actions.

Form Number(s): None.

Agency Approval Number: 0651-0063.

Type of Request: Revision of a currently approved collection.

Burden: 858,683 hours annually.

Number of Respondents: 34,537 responses per year. The USPTO estimates that approximately 8,634 of these responses will be from small entities. The USPTO also estimates that 32,119 responses will be filed electronically.

Avg. Hours per Response: The USPTO estimates that it will take the public approximately 2 to 32 hours to complete the briefs, amendments, requests, and petitions in this collection, depending on the complexity of the request. This includes the time to gather the necessary information, prepare the brief, petition, and other papers, and submit the completed request to the USPTO. The USPTO assumes that, on balance, it takes the same amount of time to gather the necessary information, prepare the brief, petition, and other papers, and submit the completed request to the USPTO, whether the applicant submits it in paper form or electronically.

Needs and Uses: The Patent Trial and Appeal Board (PTAB or Board) is established by statute under 35 U.S.C. § 6. This statute directs that PTAB “shall on written appeal of an applicant, review adverse decisions of examiners upon applications for patent and shall determine priority and patentability of invention in interferences.” PTAB has the authority, under pre-AIA sections of the Patent Act, i.e., 35 U.S.C. §§ 134, 135, 306, and 315, to decide ex parte and inter partes appeals and interferences. The membership of the Board is established under 35 U.S.C. § 6. This collection permits applicants to prepare appeal and reply briefs which set forth the claims, issues, and arguments on appeal to the PTAB and permits applicants to file amendments to cancel pending, rejected claims that they do not wish to be considered on appeal by the Board. Applicants may request that the PTAB reconsider its decision by filing a request for rehearing before the PTAB. Parties may also petition the Chief Administrative Patent Judge on matters pending before the Board. The PTAB uses the information to aid in rendering a decision on the claims, issues, and arguments submitted by the applicant, to determine which claims are on appeal, to decide whether to grant or deny a request for reconsideration of a decision, and to determine whether the necessary information has been provided to grant the petition. There are no forms associated with the items in this collection; however, they are governed by the rules in Part 41 and failure to comply with the appropriate rule may result in the dismissal of the appeal or denial of entry of the paper.

Affected Public: Individuals or households; businesses or other for-profits; non-profit institutions; and the Federal Government.

Frequency: On occasion.

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

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

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

Paper copies can be obtained by:

• Email: [e-mail]. Include “0651-0063 copy request” in the subject line of the message.
• 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 March 28, 2014 to Nicholas A. Fraser, OMB Desk Officer, via email to [e-mail], or by fax to 202-395-5167, marked to the attention of Nicholas A. Fraser.

Dated: February 20, 2014.

Susan K. Fawcett,

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