[Federal Register Volume 77, Number 2 (Wednesday, January 4, 2012)]
[Notices]
[Pages 269-271]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2011-33726]


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DEPARTMENT OF COMMERCE

United States Patent and Trademark Office


Matters Related to Patent Appeals

ACTION: Proposed 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 March 5, 2012.

ADDRESSES: You may submit comments by any of the following methods:
     Email: [email protected]. Include ``0651-
00xx Matters Related to Patent Appeals comment'' in the subject line of 
the message.
     Mail: Susan K. Fawcett, Records Officer, Office of the 
Chief Information Officer, United States Patent and Trademark Office, 
P.O. Box 1450, Alexandria, VA 22313-1450.
     Federal Rulemaking Portal: http://www.regulations.gov.

FOR FURTHER INFORMATION CONTACT: Requests for additional information 
should be directed to Raul Tamayo, Legal Advisor, Office of Patent 
Legal Administration, United States Patent and Trademark Office, P.O. 
Box 1450, Alexandria, VA 22313-1450; by telephone at (571) 272-7728; or 
by email to [email protected].
    Additional information about this collection is also available at 
http://www.reginfo.gov under ``Information Collection Review.''

SUPPLEMENTARY INFORMATION:

I. Abstract

    During its examination of an application for patent or for reissue 
of a patent, or during its reexamination of a patent, the United States 
Patent and Trademark Office (USPTO) makes many decisions of a 
substantive nature which the applicant or patent owner may feel deny 
him or her the patent protection to which he or she is entitled. Where 
the differences of opinion on such matters concern the denial of patent 
claims because of prior art or other patentability issues, the 
questions thereby raised are said to relate to the merits, and a 
procedure for appealing to the Board of Patent Appeals and 
Interferences has long been provided by statute (35 U.S.C. 134).
    Applicants and patent owners initiate the appeal procedure by 
filing a Notice of Appeal. At the time of filing a Notice of Appeal, 
applicants and patent owners may request that a panel of examiners 
formally review the legal and factual basis of the rejections in their 
application prior to the filing of an Appeal Brief, by filing a Pre-
Appeal Brief Request for Review. In addition, applicants and patent 
owners who desire an oral hearing before the Board may request the 
hearing by filing a Request for Oral Hearing Before the Board of Patent 
Appeals and Interferences.
    Currently, Notices of Appeal, Requests for Oral Hearing, and Pre-
appeal Brief Requests for Review are covered under 0651-0031 Patent 
Processing (Updating). The USPTO has determined that it would be 
beneficial to transfer these items out of 0651-0031 and into their own 
collection. Therefore, the USPTO is requesting the creation of a new 
collection which will transfer the three existing notices and requests 
out of the 0651-0031 inventory into a new collection of information 
titled ``Matters Related to Patent Appeals.'' For a complete listing of 
the items covered by this collection, please see the table in Section 
III of this notice.
    The information in this collection can be submitted electronically 
through EFS-Web, the USPTO's Web-based electronic filing system, as 
well as on paper. The USPTO is taking this opportunity to account for 
the electronic submissions in this collection.
    There are forms associated with the Notices of Appeal (PTO/SB/31), 
the Requests for Oral Hearing Before the Board of Patent Appeals and 
Interferences (PTO/SB/32), and the Pre-appeal Brief Requests for Review 
(PTO/SB/33). Therefore, after approval, this collection will have three 
forms.

II. Method of Collection

    By mail, facsimile, or hand delivery to the USPTO when an applicant 
files the various notices or requests. The remaining papers can also be 
filed as attachments through EFS-Web.

III. Data

    OMB Number: 0651-00xx.
    Form Number(s): PTO/SB/31/32/33.
    Type of Review: New information collection.
    Affected Public: Businesses or other for-profits; and not-for-
profit institutions.
    Estimated Number of Respondents: 54,500 responses per year, with an 
estimated 10,940 submitted by small entities. Of the total responses, 
the USPTO expects that 50,700 will be submitted through EFS-Web.
    Estimated Time per Response: The USPTO estimates that it will take 
the public approximately 12 minutes (0.20 hours) to complete the 
information in this collection, with the exception of the Pre-appeal 
Brief Requests for Review, which the USPTO estimates will take 
approximately 5 hours to complete. These estimated times include 
gathering the necessary information, creating the documents, and 
submitting the completed request to the USPTO. The USPTO calculates 
that, on balance, it takes the same amount of time to gather the 
necessary information, create the

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document, and submit it to the USPTO, whether the applicant submits the 
information in paper form or electronically.
    Estimated Total Annual Respondent Burden Hours: 86,740 hours.
    Estimated Total Annual Respondent Cost Burden: $29,491,600. The 
USPTO estimates that attorneys will complete the items in this 
collection. Using the professional hourly rate of $340 for attorneys in 
private firms, the USPTO estimates $29,491,600 per year for the 
respondent cost burden for this collection.

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                                                                                     Estimated       Estimated
                    Item                         Estimated time for response          annual       annual burden
                                                                                     responses         hours
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Notice of Appeal...........................  12 minutes.........................           2,600             520
Electronic Notice of Appeal................  12 minutes.........................          34,900           6,980
Request for Oral Hearing Before the Board    12 minutes.........................             100              20
 of Patent Appeals and Interferences.
Electronic Request for Oral Hearing Before   12 minutes.........................           1,100             220
 the Board of Patent Appeals and
 Interferences.
Pre-Appeal Brief Request for Review........  5 hours............................           1,100           5,500
Electronic Pre-Appeal Brief Request for      5 hours............................          14,700          73,500
 Review.
                                            --------------------------------------------------------------------
    Totals.................................  ...................................          54,500          86,740
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    Estimated Total Annual Non-hour Respondent Cost Burden: 
$22,266,670. This collection has annual (non-hour) costs in the form of 
filing fees and postage costs.
    The USPTO estimates that this collection will have a total annual 
cost of $22,264,200 in filing fees.

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                          Item                               Responses         Filing fees         Total cost
                                                                       (a)                (b)          (a) x (b)
                                                                                                             (c)
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Notice of Appeal.......................................              2,100            $620.00      $1,302,000.00
Notice of Appeal (small entity)........................                500             310.00         155,000.00
Electronic Notice of Appeal............................             27,900             620.00      17,298,000.00
Electronic Notice of Appeal (small entity).............              7,000             310.00       2,170,000.00
Request for an Oral Hearing............................                 60           1,240.00          74,400.00
Request for an Oral Hearing (small entity).............                 40             620.00          24,800.00
Electronic Request for an Oral Hearing.................                900           1,240.00       1,116,000.00
Electronic Request for an Oral Hearing (small entity)..                200             620.00         124,000.00
Pre-Appeal Brief Request for Review....................                900               None               0.00
Pre-Appeal Brief Request for Review (small entity).....                200               None               0.00
Electronic Pre-Appeal Brief Request for Review.........             11,700               None               0.00
Electronic Pre-Appeal Brief Request for Review (small                3,000               None               0.00
 entity)...............................................
                                                        --------------------------------------------------------
    Totals.............................................             54,500  .................      22,264,200.00
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    The public may submit the notices and requests in this collection 
to the USPTO by mail through the United States Postal Service. All 
correspondence may include a certificate of mailing for each piece of 
correspondence enclosed, stating the date of deposit or transmission to 
the USPTO in order to receive credit for timely filing. The USPTO has 
estimated that the vast majority of these submissions will weigh no 
more than two ounces. Therefore, the USPTO is conservatively estimating 
that these submissions will be mailed by first-class postage at 65 
cents. Postage for the certificates of mailing themselves are not 
calculated into this estimate as they are included with the individual 
pieces of correspondence that are being deposited with the United 
States Postal Service.
    The USPTO estimates that 3,800 responses will be mailed by first-
class postage, for a total annual cost of $2,470 in postage costs.

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                          Item                               Responses        Postage costs        Total cost
                                                                       (a)                (b)          (a) x (b)
                                                                                                             (c)
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Notice of Appeal.......................................              2,600               0.65          $1,690.00
Request for Oral Hearing Before the Board of Patent                    100               0.65              65.00
 Appeals and Interferences.............................
Pre-Appeal Brief Request for Review....................              1,100               0.65             715.00
                                                        --------------------------------------------------------
    Totals.............................................              3,800  .................           2,470.00
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    The total annual (non-hour) respondent cost burden for this 
collection in the form of filing fees and postage costs is estimated to 
be $22,266,670 per year.

IV. Request for Comments

    Comments are invited on: (a) Whether the proposed collection of 
information is necessary for the proper performance

[[Page 271]]

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 also will become a matter of public record.

    Dated: December 29, 2011.
Susan K. Fawcett,
Records Officer, USPTO, Office of the Chief Information Officer.
[FR Doc. 2011-33726 Filed 1-3-12; 8:45 am]
BILLING CODE 3510-16-P