[Federal Register Volume 69, Number 49 (Friday, March 12, 2004)]
[Notices]
[Pages 11842-11844]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 04-5616]


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DEPARTMENT OF COMMERCE

Patent and Trademark Office


Patent Appeals and Interferences

ACTION: New collection; comment request.

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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 [email protected]; 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 [email protected] 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

[[Page 11843]]

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.

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

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                                                                Responses (yr)   Postage costs   Total cost (yr)
                             Item                                    (a)              (b)             (a x b)
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Requests for Oral Hearing Before the Board of Patent Appeals               750            $0.49          $368.00
 and Interferences...........................................
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
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    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

[[Page 11844]]

Interference do not have filing fees. The total filing fees associated 
with this information collection are $4,992,300.

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                                                                Responses (yr)    Filing Fees    Total Cost (yr)
                             Item                                    (a)              (b)             (a x b)
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Requests for Oral Hearing Before the Board of Patent Appeals               600          $290.00      $174,000.00
 and Interferences...........................................
Requests for Oral Hearing Before the Board of Patent Appeals               150           145.00        21,750.00
 and Interferences (small entity)............................
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
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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.
[FR Doc. 04-5616 Filed 3-11-04; 8:45 am]
BILLING CODE 3510-16-P