Agency Information Collection Activities; Submission to the Office of Management and Budget (OMB) for Review and Approval; Comment Request; Patent Reexaminations, Supplemental Examinations, and Post Patent Submissions

The United States Patent and Trademark Office (USPTO) will submit the following information collection request to the Office of Management and Budget (OMB) for review and clearance in accordance with the Paperwork Reduction Act of 1995, on or after the date of publication of this notice. The USPTO invites comment on this information collection renewal, which helps the USPTO assess the impact of its information collection requirements and minimize the public's reporting burden. Public comments were previously requested via the Federal Register on July 26, 2021 during a 60-day comment period. This notice allows for an additional 30 days for public comments.

Agency: United States Patent and Trademark Office, Department of Commerce.

Title: Patent Reexaminations, Supplemental Examinations, and Post Patent Submissions.

OMB Control Number: 0651-0064.

Form Number(s):

• PTO/SB/42 (Information Disclosure Citation in a Patent).
• PTO/SB/57 (Request for Ex Parte Reexamination Transmittal Form).
• PTO/SB/59 (Request for Supplemental Examination Transmittal Form).

Type of Review: Extension and revision of a currently approved information collection.

Number of Respondents: 864 respondents per year.

Number of Responses: 880 responses per year.

Estimated Time per Response: The USPTO estimates that it takes the public approximately between 30 minutes (0.5 hours) to 55 hours, depending on the complexity of the situation and item, to gather the necessary information, prepare the appropriate document(s), and submit the information to the USPTO.

Estimated Total Annual Respondent Burden Hours: 23,574 hours.

Estimated Total Annual Non-Hour Cost Burden: $2,439,335.

Needs and Uses: 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.

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 title of this information collection is being updated to reflect that change with the inclusion of “Post Patent Submissions”. As the information disclosure citation was the only item contained in 0651-0067, that information collection will be discontinued.

Affected Public: Private sector; individuals or households.

Frequency: On occasion.

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

This information collection request may be viewed at www.reginfo.gov. Follow the instructions to view Department of Commerce, USPTO information collections currently under review by OMB.

Written comments and recommendations for this information collection should be submitted within 30 days of the publication of this notice on the following website www.reginfo.gov/public/do/PRAMain. Find this particular information collection by selecting “Currently under 30-day Review—Open for Public Comments” or by using the search function and entering either the title of the information collection or the OMB Control Number 0651-0064.

Further information can be obtained by:

• Email: InformationCollection@uspto.gov. Include “0651-0064 information request” in the subject line of the message.

• Mail: Kimberly Hardy, Office of the Chief Administrative Officer, United States Patent and Trademark Office, P.O. Box 1450, Alexandria, VA 22313- 1450.