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OMB Control No: 0651-0064	ICR Reference No: 201209-0651-010
Status: Historical Active	Previous ICR Reference No: 200912-0651-002
Agency/Subagency: DOC/PTO	Agency Tracking No:
Title: Patent Reexaminations and Supplemental Examinations
Type of Information Collection: Revision of a currently approved collection	Common Form ICR: No
Type of Review Request: Regular
OIRA Conclusion Action: Approved without change	Conclusion Date: 09/11/2012
Retrieve Notice of Action (NOA)	Date Received in OIRA: 09/11/2012
Terms of Clearance: Pre-approval contingent upon no substantive changes to this collection after adoption of the final rule. Otherwise this collection should be re-submitted to OMB for review.

	Inventory as of this Action	Requested	Previously Approved
Expiration Date	07/31/2015	36 Months From Approved	02/28/2013
Responses	9,560	0	5,124
Time Burden (Hours)	235,365	0	161,128
Cost Burden (Dollars)	35,592,825	0	5,577,265

Abstract: The USPTO published a final rule titled "Changes to Implement the Supplemental Examination Provisions of the Leahy-Smith America Invents Act and to Revise Reexamination Fees" (RIN 0651-AC69) in the Federal Register. In the final rule, the USPTO is revising the rules of practice in title 37 of the Code of Federal Regulations (CFR) to implement the supplemental examination provisions of section 12 of the Leahy-Smith America Invents Act, which was enacted into law on September 16, 2011. See Pub. L. 112-29, 125 Stat. 284 (2011). The supplemental examination provisions permit a patent owner to request supplemental examination of a patent by the USPTO to consider, reconsider, or correct information believed to be relevant to the patent. These provisions could assist the patent owner in addressing certain challenges to the enforceability of the patent during litigation. The USPTO is also setting certain fees to implement supplemental examination, adjusting the fee for filing a Request for Ex Parte Reexamination, and setting a fee for petitions filed in reexamination proceedings to more accurately reflect the estimated average cost to the Office for these processes. In support of the final rule, the USPTO is submitting this information collection to add new information requirements and update existing information requirements that would be impacted by the rulemaking. The modifications to this information collection include the following: + Addition of Requests for Supplemental Examination and associated fees. + Revision of estimated annual responses for existing items related to ex parte reexaminations that would be impacted by the addition of supplemental examinations. + Revision of fees for reexamination items as outlined in the final rule notice, including refunds for refused reexamination requests and updated fees for certain petitions in reexamination proceedings. + Adjustment of time estimates for Requests for Ex Parte and Inter Partes Reexamination based on recent data. + Minor revision to Form PTO/SB/57 to support the final rule, allowing the respondent to certify that the statutory estoppel provisions of 35 U.S.C. § 315 (e)(1) or 35 U.S.C. § 325 (e)(1) do not prohibit the respondent from filing the request for ex parte reexamination. (See 37 CFR 1.510 (b)(6).) The public will use this information collection to request supplemental examination and reexamination proceedings and to ensure that the associated fees and documentation are submitted to the USPTO.

Authorizing Statute(s): US Code: 35 USC 301-318
   US Code: 35 USC 257
   PL: Pub.L. 112 - 29 12 Name of Law: Leahy-Smith America Invents Act
   US Code: 35 USC 132

Citations for New Statutory Requirements: US Code: 35 USC 257
PL: Pub.L. 112 - 29 12 Name of Law: Leahy-Smith America Invents Act

Associated Rulemaking Information
RIN:	Stage of Rulemaking:	Federal Register Citation:	Date:
0651-AC69	Final or interim final rulemaking	77 FR 48828	08/14/2012

Federal Register Notices & Comments
Did the Agency receive public comments on this ICR? No

ICR Summary of Burden

	Total Approved	Previously Approved	Change Due to New Statute	Change Due to Agency Discretion	Change Due to Adjustment in Estimate
Annual Number of Responses	9,560	5,124	3,620	816	0
Annual Time Burden (Hours)	235,365	161,128	52,819	18,768	2,650
Annual Cost Burden (Dollars)	35,592,825	5,577,265	29,811,953	209,493	-5,886

Burden increases because of Program Change due to Agency Discretion: Yes

Burden Increase Due to: Miscellaneous Actions

Burden decreases because of Program Change due to Agency Discretion: Yes

Burden Reduction Due to: Miscellaneous Actions

Short Statement: Program changes to estimated responses and burden hours are due to the addition of Requests for Supplemental Examination, changes to estimated responses for requirements related to Requests for Ex Parte Reexamination, and the addition of petitions under 37 CFR 1.182 and 1.183 (included in the Petitions in a Reexamination Proceeding requirement) to this collection. Administrative adjustments to estimated burden hours are due to revised time estimates for preparing and submitting Requests for Ex Parte and Inter Partes Reexamination. Program changes to annual cost burden are primarily due to an increase in estimated fees from several factors: addition of fees for Requests for Supplemental Examination, increases in the fee amounts for Requests for Ex Parte Reexamination and Petitions in a Reexamination Proceeding, and increases in responses and the associated total fees for Petitions to Request Extension of Time in Ex Parte or Inter Partes Reexaminations. There are also program changes for a net increase in postage costs associated with submitting items related to supplemental examinations and ex parte reexaminations by mail and a decrease for removing recordkeeping costs related to submitting items in this collection electronically. Administrative adjustments to annual cost burden are due to decreases in postage costs from an overall decrease in the expected number of mailed submissions.

Annual Cost to Federal Government: $560,660

Does this IC contain surveys, censuses, or employ statistical methods? No

Is the Supporting Statement intended to be a Privacy Impact Assessment required by the E-Government Act of 2002? No

Is this ICR related to the Affordable Care Act [Pub. L. 111-148 & 111-152]? No

Is this ICR related to the Dodd-Frank Wall Street Reform and Consumer Protection Act, [Pub. L. 111-203]? No

Is this ICR related to the American Recovery and Reinvestment Act of 2009 (ARRA)? No

Is this ICR related to the Pandemic Response? Uncollected

Agency Contact: Raul Tamayo 5712727728 Raul.Tamayo@uspto.gov

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