04-5616. Patent Appeals and Interferences

ACTION:

New 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 this new 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 May 11, 2004.

ADDRESSES:

Direct all written comments to Susan K. Brown, Records Officer, Office of the Chief Information Officer, Office of Data Architecture and Services, Data Administration Division, 703-308-7400, U.S. Patent and Trademark Office, P.O. Box 1450, Alexandria, VA 22313, Attn: CPK 3 Suite 310; by e-mail at [e-mail]; or by facsimile at 703-308-7407.

FOR FURTHER INFORMATION CONTACT:

Requests for additional information should be directed to the attention of Richard Torczon, 703-308-9797; or by e-mail at [e-mail] with “Paperwork” in the subject line.

SUPPLEMENTARY INFORMATION:

I. Abstract

The United States Patent and Trademark Office (USPTO) established the Board of Patent Appeals and Interferences (BPAI or Board) under 35 U.S.C. 6(b). This statute directs BPAI to “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.” BPAI has the authority under 35 U.S.C. 134, 135, 306, and 315 to review ex parte and inter partes appeals and interferences. In addition, 35 U.S.C. 6 establishes the membership of BPAI as the Director, the Deputy Director, the Commissioner for Patents, the Commissioner for Trademarks, and the Administrative Patent Judges, one of which serves as the Chief Judge and another as the Vice Chief Judge. Each appeal and interference is heard by a merits panel of at least three members of the Board.

Under the statute, the Board's two main responsibilities include the review of ex parte appeals from adverse decisions of examiners in those situations where a written appeal is taken by a dissatisfied applicant, and the administration of interferences to “determine priority” (or decide who is the first inventor) whenever an applicant claims the same patentable invention that is already claimed by another applicant or patentee. In inter partes reexamination appeals, BPAI reviews decisions adverse to a patent owner or a third-party requestor.

BPAI does not currently collect appeal and interference information electronically, but is working on a pilot program that would provide electronic filing in contested cases. Once the pilot program is completed, the results of this program will be analyzed to determine whether electronic filing will be beneficial enough to deploy a production system. BPAI disseminates opinions and decisions to the public through the USPTO's Web site, as well as disseminating them through various publications and databases.

Publication of opinions and binding precedent is governed by BPAI's Standard Operating Procedure 2 (Revision 4) for the “Publication of Opinions and Binding Precedent,” effective March 29, 2000. Opinions are categorized as either precedential opinions, which when published provide the criteria and authority that BPAI uses to determine all related cases (unless overruled or changed by statute), or as non-precedential opinions that the authoring judge or panel determines may be published. These opinions are not binding on BPAI, and the authoring judge or panel can also decide that they should not be published. Since public policy favors a widespread publication of opinions, BPAI publishes many of its opinions, even those that are not binding precedent.

Certain opinions and decisions in decided appeals and interference cases are published. Public availability to records involved in terminated and pending cases varies, depending upon statute and regulation. The public can inspect terminated interference files and application and patent files involved in terminated interferences subject to statutory and regulatory limitations on their availability. Pending interference files are not available to the public (although pending application files may be available, subject to eighteen-month publication requirements).

The USPTO has determined that the forms for the Requests for Oral Hearing Before the Board of Patent Appeals and Interferences (PTO/SB/32) and the Notices of Appeal (PTO/SB/31), which are currently approved by OMB under 0651-0031 Patent Processing (Updating), should be moved into this new collection since these forms are used for requesting appeals and interferences. Therefore, the USPTO requests that these forms be moved into this new collection. In addition, this new collection contains two requirements, Extensions of Time on a Showing of Good Cause and Requests for Interferences, which have not previously been submitted separately to OMB for review and approval.

There are no forms associated with the Extensions of Time on a Showing of Good Cause or the Requests for Interference. However, both are governed by rules, specifically 37 CFR 1.136(b), 1.604, and 1.607. Failure to comply with the appropriate rule may result in dismissal or denial of the paper.

II. Method of Collection

By mail or hand delivery when parties file Notices of Appeal, Requests for Oral Hearings Before the Board of Patent Appeals and Interferences, Requests for Extensions of Time on a Showing of Good Cause, or Requests for an Interference.

III. Data

OMB Number: 0651-00XX.

Form Number(s): PTO/SB/31 and PTO/SB/32.

Type of Review: New information collection.

Affected Public: Individuals or households; business or other for profit; not-for-profit institutions; Federal Government; and State, local or tribal Government.

Estimated Number of Respondents: 17,410 total responses per year. Of this total, it is estimated that 750 Requests for Oral Hearings Before the Board of Patent Appeals and Interferences, 16,500 Notices of Appeal, 10 Extensions of Time on a Showing of Good Cause, and 150 Requests for an Interference will be submitted per year.

Estimated Time Per Response: The USPTO estimates that it will take approximately 12 minutes (0.20 hours) each to complete the Requests for Oral Hearings Before the Board of Patent Appeals and Interferences, and Notices of Appeal, 4 hours to complete the Extensions of Time on a Showing of Good Cause, and 16 hours to complete Requests for an Interference.

Estimated Total Annual Respondent Burden Hours: 5,890 hours per year.

Estimated Total Annual Respondent Cost Burden: $1,838,140. The USPTO believes that the Requests for Oral Hearings Before the Board of Patent Appeals and Interferences, the Notices of Appeal, the Extensions of Time on a Showing of Good Cause, and the Requests for an Interference will be completed by associate attorneys. The USPTO estimates that the typical professional hourly rate for the associate attorneys completing the Requests for Oral Hearings Before the Board of Patent Appeals and Interferences, the Notices of Appeal, and the Extensions of Time on a Showing of Good Cause will be $286, and that the professional hourly rate for the associate attorneys completing the Request for an Interference will be $350. Therefore, the USPTO estimates that the salary costs for the attorneys completing these requirements will be $1,838,140 per year.

Item	Estimated time for response	Estimated annual responses	Estimated annual burden hours
Requests for Oral Hearing Before the Board of Patent Appeals and Interferences	12 minutes	750	150
Notices of Appeal	12 minutes	16,500	3,300
Extensions of Time on a Showing of Good Cause	4 hours	10	40
Requests for an Interference	16 hours	150	2,400
Totals		17,410	5,890

Estimated Total Annual Non-Hour Respondent Cost Burden: $5,000,847. There are postage costs and filing fees associated with this information collection. This collection has no capital start-up, operation or maintenance costs.

There are postage costs of $8,547 for mailing the requirements in this collection to the USPTO.

Item	Responses (yr) (a)	Postage costs (b)	Total cost (yr) (a × b)
Requests for Oral Hearing Before the Board of Patent Appeals and Interferences	750	$0.49	$368.00
Notices of Appeal	16,500	$0.49	8,085.00
Extensions of Time on a Showing of Good Cause	10	$0.37	4.00
Requests for an Interference	150	$0.60	90.00
Totals	17,410		8,547.00

There are filing fees associated with the Requests for an Oral Hearing Before the Board of Patent Appeals and Interferences and the Notices of Appeal; the Extensions of Time on a Showing of Good Cause and the Requests for an Interference do not have filing fees. The total filing fees associated with this information collection are $4,992,300.

Item	Responses (yr) (a)	Filing Fees (b)	Total Cost (yr) (a × b)
Requests for Oral Hearing Before the Board of Patent Appeals and Interferences	600	$290.00	$174,000.00
Requests for Oral Hearing Before the Board of Patent Appeals and Interferences (small entity)	150	145.00	21,750.00
Notices of Appeal	12,570	330.00	4,148,100.00
Notices of Appeal (small entity)	3,930	165.00	648,450.00
Extensions of Time on a Showing of Good Cause	10	0.00	0.00
Requests for an Interference	150	0.00	0.00
Totals	17,410		4,992,300.00

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 will also become a matter of public record.

Dated: March 5, 2004.

Susan K. Brown,

Records Officer, Patent and Trademark Office, Office of the Chief Information Officer, Office of Data Architecture and Services, Data Administration Division.