[Federal Register Volume 63, Number 199 (Thursday, October 15, 1998)]
[Notices]
[Pages 55367-55368]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 98-27593]


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DEPARTMENT OF COMMERCE

Patent and Trademark Office


Supplemental Declaration for Reissue Patent Application (37 CFR 
1.175) (Proposed Addition to 0651-0033, Post Allowance)

ACTION: Proposed collection; comment request.

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SUMMARY: The Department of Commerce (DOC), as part of its continuing 
effort to reduce paperwork and respondent burden, invites the general 
public and other Federal agencies to comment on the continuing and 
proposed 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 December 14, 
1998.

ADDRESSES: Direct all written comments to Linda Engelmeier, 
Departmental Forms Clearance Officer, Department of Commerce, Room 
5327, 14th and Constitution Avenue, NW, Washington, DC 20230.

FOR FURTHER INFORMATION CONTACT: Requests for additional information 
should be directed to the attention of Robert J. Spar, Patent and 
Trademark Office, Crystal Park 1--Suite 520, 2011 Crystal Drive, 
Arlington, VA 22202, by telephone at (703) 308-5107 or by facsimile 
transmission to (703) 308-6916.

SUPPLEMENTARY INFORMATION:

I. Abstract

    The Patent and Trademark Office (PTO) has the authority, under 35 
USC Sec. 251, to reissue a patent to correct any errors in the original 
patent which occurred ``without any deceptive intention'' on the part 
of the patentee. To obtain a reissue patent, the patentee files a 
reissue application with the PTO. The PTO reviews the application, and 
if it meets the statutory and regulatory requirements for a reissue 
patent, the PTO will reissue the patent as long as the patentee 
surrenders the original patent. One of these requirements is that a 
reissue oath or declaration be included with the application. The PTO 
requires the patentee under 37 CFR 1.175 to include an explanation of 
why the errors being corrected by the reissue occurred without any 
deceptive intent. As a result of this requirement, if any additional 
changes are made during the reissue application examination process, 
the patentee has to submit a supplemental reissue oath or declaration 
stating that the additional errors also occurred without any deceptive 
intention. If the patentee does not submit a supplemental reissue oath 
or declaration, the examiner must reject the reissue application. See 
Changes to Patent Practice and Procedure; Final Rule Notice, 62 FR 
53131, 53165-66 (October 10, 1997), 1203 Off. Gaz. Pat. Office 63, 92 
(October 21, 1997).
    The PTO requires under 37 CFR 1.175 that the patentee submit a 
supplemental oath or declaration which asserts only that any error 
corrected during examination of the reissue application, which was not 
covered by the oath or declaration filed originally, arose without any 
deceptive intention on the part of the applicant. Under 37 CFR 1.175 as 
recently amended, the patentee no longer has to provide the details of 
how those errors occurred without any deceptive intention. 
Specifically, when changes are made during the reissue application 
examination process, the recently amended 37 CFR 1.175(b) requires only 
a supplemental oath or declaration by the applicant stating that, 
``every error in the patent which was corrected in the present reissue 
application, and which is not covered by the prior oath(s)/
declaration(s) submitted in this application, arose without any 
deceptive intention on the part of the applicant''.
    The PTO believes that the requirement for the supplemental oath or 
declaration is necessary because 35 U.S.C. Sec. 251 does not authorize 
the correction of any errors that occurred with deceptive intention. A 
supplemental oath or declaration would

[[Page 55368]]

prohibit patentees from trying to correct any errors that occurred with 
deceptive intent in a reissue patent application that was originally 
filed to correct, with an oath or declaration that covers only those 
errors which occurred without any deception. The PTO believes that the 
supplemental oath or declaration will prohibit the patentee from 
attempting to ``piggyback'' corrections of errors that occurred with 
deceptive intent in a reissue originally filed to correct an error that 
occurred without deceptive intent. Errors that occurred with deceptive 
intent cannot be corrected by a reissue patent.
    Originally, the PTO did not provide a form for a supplemental oath 
or declaration because 37 CFR 1.175 required application-specific 
facts. Now that 37 CFR 1.175(b) has been revised to require only a 
general statement, the PTO has designed Form PTO/SB/51S, Supplemental 
Declaration for Reissue Patent Application (37 CFR 1.175). This form 
does not replace Form PTO/SB/51, Reissue Application Declaration By The 
Inventor or Form PTO/SB/52, Reissue Application Declaration By The 
Assignee, which are used by the patentee or assignee in the originally 
filed reissue patent application. The additional form, PTO/SB/51S, is 
used to provide the required statement that ``every error in the patent 
which was corrected in the present reissue application, and which is 
not covered by the prior oath(s)/declaration(s) submitted in this 
application, arose without any deceptive intention on the part of the 
applicant''.

II. Method of Collection

    By mail, facsimile, and hand-carry when the patentee wishes to file 
a reissue patent application.

III. Data

    OMB Number: 0651-0033.
    Form Number: PTO/SB/51S.
    Type of Review: A proposed addition to a previously approved 
collection.
    Affected Public: Individuals or households, businesses or other 
for-profit, not-for-profit institutions, farms, state, local or tribal 
governments, and the Federal Government.
    Estimated Number of Respondents: 350 responses per year.
    Estimated Time Per Response: It is estimated to take approximately 
1.8 minutes to complete the supplemental declaration for a reissue 
patent application under 37 CFR 1.175.
    Estimated Total Annual Respondent Burden Hours: 10.5 hours per year 
for the entire application.
    Estimated Total Annual Respondent Cost Burden: $1,837.50 per year 
for the new requirement. It is estimated that the addition of the 
supplemental declaration to this information collection will increase 
the total burden cost to $6,129,912.50

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                                                                  Estimated time     Estimated       Estimated
            Title of form                      Form Nos.           for response    annual burden      annual
                                                                      (mins.)          hours         responses
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Supplemental Declaration For Reissue   PTO/SB/51S                            1.8            10.5             350
 Patent Application (37 CFR 1.175).
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    Totals...........................  .........................  ..............            10.5             350
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    Annual Burden Hours: 43,893 previous +10.5 additional = 43,903.50 
total annual burden hours.

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: October 8, 1998.
Linda Engelmeier,
Departmental Forms Clearance Officer, Office of the Chief Information 
Officer.
[FR Doc. 98-27593 Filed 10-14-98; 8:45 am]
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