View Information Collection Request (ICR) Package

OMB Control No: 0651-0064	ICR Reference No: 202109-0651-005
Status: Historical Active	Previous ICR Reference No: 201909-0651-013
Agency/Subagency: DOC/PTO	Agency Tracking No:
Title: Patent Reexaminations, Supplemental Examinations, and Post Patent Submissions
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: 11/30/2021
Retrieve Notice of Action (NOA)	Date Received in OIRA: 10/19/2021
Terms of Clearance:

	Inventory as of this Action	Requested	Previously Approved
Expiration Date	11/30/2024	36 Months From Approved	11/30/2021
Responses	880	0	1,745
Time Burden (Hours)	23,574	0	38,086
Cost Burden (Dollars)	2,439,335	0	2,884,393

Abstract: The USPTO is required by 35 U.S.C. 131 and 151 to examine applications and, when appropriate, allow applications and issue them as patents. Chapter 30 of Title 35 U.S.C. provides that any person at any time may file a request for reexamination by the USPTO of any claim of a patent on the basis of prior art cited under the provisions of 35 U.S.C. 301. Once initiated, the reexamination proceedings under Chapter 30 are substantially ex parte and do not permit input from third parties. The regulations outlining ex parte reexaminations are found at 37 CFR 1.510-1.570. In addition, 35 U.S.C. 257 permits 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. The regulations outlining supplemental examination are found at 37 CFR 1.601-1.625. The Leahy-Smith America Invents Act terminated inter partes reexamination effective September 16, 2012. However, inter partes reexamination proceedings based on inter partes reexamination requests filed before September 16, 2012, continue to be prosecuted. Therefore, this information collection continues to include items related to the prosecution of inter partes reexamination proceedings. The regulations outlining inter partes reexamination are found at 37 CFR 1.903-1.959. The provisions of 35 U.S.C. 301 and 37 CFR 1.501 govern the ability of a person to submit into the file of an issued patent (1) prior art consisting of patents or printed publications which the person making the submission believes to have a bearing on the patentability of any claim of the issued patent and (2) statements of the owner of the issued patent filed in a proceeding before a Federal court or the USPTO in which the owner of the issued patent took a position on the scope of any claim of the issued patent. This information collection covers information contained in: (1) requests for ex parte reexamination, (2) requests for supplemental examination, (3) submissions made by patent owners and third-party requesters related to the prosecution of an ex parte or inter partes reexamination proceeding, (4) information submitted by the public to aid in ascertaining the patentability and/or scope of the claims of the issued patent, and (5) information submitted by patent owners regarding a position taken before the USPTO or a Federal court regarding the scope of any claim in their issued patent. The USPTO’s use of the statements of the patent owners ((5) above) will be limited to determining the meaning of a patent claim in ex parte reexamination proceedings that already have been ordered and in inter partes review and post grant review proceedings that already have been instituted. The purpose of this information collection is to facilitate requests for ex parte reexamination and supplemental examination, to facilitate prosecution of reexamination and reissue proceedings, and to ensure that the associated documentation is submitted to the USPTO, and to permit relevant post-patent prior art and claim scope information to be entered into a patent file.

Authorizing Statute(s): PL: Pub.L. 112 - 29 12 Name of Law: Leahy-Smith America Invents Act

Citations for New Statutory Requirements: None

Associated Rulemaking Information
RIN:	Stage of Rulemaking:	Federal Register Citation:	Date:
	Not associated with rulemaking

Federal Register Notices & Comments
60-day Notice:	Federal Register Citation:	Citation Date:
	86 FR 40015	07/26/2021
30-day Notice:	Federal Register Citation:	Citation Date:
	86 FR 57812	10/19/2021
Did the Agency receive public comments on this ICR? No

ICR Summary of Burden

	Total Approved	Previously Approved	Change Due to Agency Discretion	Change Due to Adjustment in Estimate
Annual Number of Responses	880	1,745	49	-914
Annual Time Burden (Hours)	23,574	38,086	490	-15,002
Annual Cost Burden (Dollars)	2,439,335	2,884,393	0	-445,058

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: No

Burden Reduction Due to:

Short Statement: Change in Respondents and Hourly Burden due to Adjustment in Agency Estimate The total number of respondents has decreased by 914 due to estimated fluctuations in the number of responses/submissions in this information collection. This decrease in the number of respondents and responses results in a decrease of 15,002 hours in the annual time burden estimates. Changes in Annual (Non-hour) Costs due to Adjustment in Agency Estimate For this renewal, the USPTO estimates that the total annual (non-hour) costs will decrease by $445,058 from the previous approval. This decrease is due to estimated fluctuations in submissions for items that require a fee. Change in Respondents and Hourly Burden due to Program Change due to Agency Discretion This renewal request incorporates an item that was previously approved under OMB control number 0651-0067 (Post Patent Public Submissions); specifically ‘information disclosure citations’. The merger of this item in this information collection results in response and burden increases due to this change. The estimated number of responses increases by 49 and the estimated number of burden hours increases by 490.

Annual Cost to Federal Government: $57,391

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

Does this ICR request any personally identifiable information (see OMB Circular No. A-130 for an explanation of this term)? Please consult with your agency's privacy program when making this determination. Yes

Does this ICR include a form that requires a Privacy Act Statement (see 5 U.S.C. §552a(e)(3))? Please consult with your agency's privacy program when making this determination. Yes

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? No

Agency Contact: Parikha Mehta 571 272-3248

View ICR - OIRA Conclusion