01-4698. Patent Processing (Updating) (Proposed Addition of Form PTO/SB/32 “Request for Oral Hearing Before the Board of Patent Appeals and Interferences” and Form PTO/SB/37 “Request for Deferral of Examination 37 CFR 1.103(d)”)

ACTION:

Proposed collection; comment request.

SUMMARY:

The United States Patent and Trademark Office (USPTO), as part of its continuing effort to reduce paperwork and respondent burden, invites the general public and other Federal agencies to take this opportunity to comment on the revision of a continuing information collection, as required by the Paperwork Reduction Act of 1995, Public Law 104-13 (44 U.S.C. 3506(c)(2)(A)).

DATES:

Written comments must be submitted on or before April 30, 2001.

ADDRESSES:

Direct all written comments to Susan K. Brown, Records Officer, Data Administration Division, Office of Data Management, United States Patent and Trademark Office, Crystal Park 3, Suite 310, Washington, DC 20231; by telephone at [phone]; or by electronic mail at [e-mail].

FOR FURTHER INFORMATION CONTACT:

Requests for additional information should be directed to Robert J. Spar, Director, Office of Patent Legal Administration, United States Patent and Trademark Office, Washington, DC 20231; by telephone at [phone]; or by electronic mail at [e-mail].

SUPPLEMENTARY INFORMATION:

I. Abstract

Patent applicants or owners of patents under reexamination may appeal the decision of a patent examiner by filing a notice of appeal to the Board of Patent Appeals and Interferences (the Board). Additionally, the appellant may also make a written request for an oral hearing before the Board if the appellant believes such a hearing is necessary for the proper presentation of the appeal. Effective December 1, 1997, 37 CFR 1.194(b) was amended to require this written request for an oral hearing before the Board to be filed “in a separate paper” from the appeal itself. See Changes to Patent Practice and Procedure, Final Rule, 62 FR 53132, 53170, 53197 (Oct. 10, 1997). In accordance with this rule change and in response to requests from the public, the USPTO has created Form PTO/SB/32, “Request for Oral Hearing Before the Board of Patent Appeals and Interferences.” This form will allow the public to comply quickly and easily with the requirements set forth in 37 CFR 1.194(b) to request an oral hearing before the Board on a separate piece of paper.

In order to implement the Patent Business Goals, and in accordance with the eighteen-month publication provisions of the American Inventors Protection Act of 1999, the USPTO has amended 37 CFR 1.103 to permit applicants to request deferred examination for up to three years from the earliest filing date for which a benefit is claimed under title 35 of the United States Code. See Changes to Implement Eighteen-Month Publication of Patent Applications, Final Rule, 65 FR 57024, 57033, 57056 (Sept. 20, 2000). Section 1.103(d) now allows applicants to request deferred examination under the following conditions: (1) The application is filed on or after November 29, 2000 (or is an application for which the applicant requests voluntary publication), and is an original utility or plant application filed under § 1.53(b) or an application resulting from entry of an international application into the national stage after compliance with § 1.494 or § 1.495; (2) the applicant has not filed a nonpublication request under § 1.213(a), or has filed a request under § 1.213(b) to rescind a previously filed nonpublication request; (3) the application is in condition for publication as provided in § 1.211(c); and (4) the USPTO has not issued either an Office action under 35 U.S.C. § 132 or a notice of allowance under 35 U.S.C. § 151. To assist applicants in making a request for deferred examination under § 1.103(d), the USPTO has developed a new form for submitting the required information, Form PTO/SB/37 “Request for Deferral of Examination 37 CFR 1.103(d).”

The USPTO proposes to add these two forms, PTO/SB/32 and PTO/SB/37, to the information collection previously approved under OMB control number 0651-0031, Patent Processing (Updating).

II. Method of Collection

By mail, facsimile, or hand delivery when the applicant wishes to request an oral hearing under 37 CFR 1.194(b) or a deferral of examination under 37 CFR 1.103(d).

III. Data

OMB Number: 0651-0031.

Form Number(s): PTO/SB/32 and PTO/SB/37.

Type of Review: Addition to an existing information collection.

Affected Public: Individuals or households; businesses or other for-profits; not-for-profit institutions; farms; the Federal Government; and state, local or tribal governments.

Estimated Number of Respondents: The USPTO estimates receiving 1,224 responses per year using Form PTO/SB/32 and 50 responses per year using Form PTO/SB/37, for a total of 1,274 responses per year. These 1,274 responses are in addition to the previously approved 2,231,365 responses, increasing the total number of responses for this collection to 2,232,639 per year.

Estimated Time Per Response: The USPTO estimates that it will take the public 12 minutes (.2 hours) to complete the request for an oral hearing and 12 minutes (.2 hours) to complete the request for deferred examination. These estimates include the time to gather the necessary information and submit the completed form.

Estimated Total Annual Respondent Burden Hours: The USPTO estimates that the total annual burden hours will be 245 hours per year for Form PTO/SB/32 and 10 hours per year for Form PTO/SB/37, for a total of 255 hours per year. These 255 hours are in addition to the previously approved annual burden of 1,018,736 hours, increasing the total annual burden for this collection to 1,018,991 hours.

Estimated Total Annual Respondent Cost Burden: Of the 1,224 estimated annual responses for Form PTO/SB/32, the USPTO expects to receive 275 responses from small entities (§ 1.9(f)) and 949 responses from others. Under 37 CFR 1.17(d), the processing fee for filing a request for an oral hearing before the Board of Patent Appeals and Interferences is $135 for small entities and $270 for others. Therefore, the total annual nonhour cost burden associated with this form is $293,355.

When filing a request for deferral of examination, the applicant must pay the processing fee of $130 indicated by 37 CFR 1.17(i) and the publication fee of $300 indicated by 37 CFR 1.18(d). The combined filing cost of $430 for each request results in a total annual nonhour cost burden of $21,500 associated with this form.

Using the professional hourly rate of $175 per hour for associate attorneys in private firms, the USPTO estimates $42,840 per year for salary costs associated with respondents using Form PTO/SB/32, and $1,750 per year for salary costs associated with respondents using Form PTO/SB/37.

Item	Form number	Estimated time for response (minutes)	Estimated annual responses	Estimated annual burden hours
Request for Oral Hearing Before the Board of Patent Appeals and Interferences	POT/SB/32	12	1,224	245
Request for Deferral of Examination 37 CFR 1.103(d)	PTO/SB/37	12	50	10
Total			1,274	255

IV. Request for Comments

Comments are invited on: (a) Whether the proposed collection of information is necessary for the proper performance of the functions of the agency, including whether the information shall have practical utility; (b) the accuracy of the agency's estimate of the burden (including hours and cost) of the proposed collection of information; (c) ways to enhance the quality, utility, and clarity of the information to be collected; and (d) ways to minimize the burden of the collection of information on respondents, e.g., the use of automated collection techniques or other forms of information technology.

Comments submitted in response to this notice will be summarized or included in the request for OMB approval of this information collection; they also will become a matter of public record.

Dated: February 20, 2001.

Susan K. Brown,

Records Officer, USPTO, Office of Data Management, Data Administration Division.