[Federal Register Volume 78, Number 220 (Thursday, November 14, 2013)]
[Pages 68422-68424]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2013-27215]



Patent and Trademark Office

Patent Trial and Appeal Board (PTAB) Actions (Formerly Board of 
Patent Appeals and Interferences (BPAI) Actions)

ACTION: Proposed collection; comment request.


SUMMARY: The United States Patent and Trademark Office (USPTO), as part 
of its continuing efforts to reduce paperwork and respondent burden, 
invites the general public and other Federal agencies to take this 
opportunity to comment on this revision of a continuing information 
collection, as required by the Paperwork Reduction Act of 1995, Public 
Law 104-13 (44 U.S.C. 3506(c)(2)(A)).

[[Page 68423]]

DATES: Written comments must be submitted on or before January 13, 

ADDRESSES: You may submit comments by any of the following methods:
     Email: [email protected]. Include ``0651-
0063 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 the attention of Linda Horner, Acting Vice Chief 
Judge, Patent Trial and Appeal Board, United States Patent and 
Trademark Office, P.O. Box 1450, Alexandria, VA 22313-1450; by 
telephone at 571-272-9797; or by email to [email protected]. 
Additional information about this collection is also available at 
http://www.reginfo.gov under ``Information Collection Review.''


I. Abstract

    The Patent Trial and Appeal Board (PTAB or Board) is established by 
statute under 35 U.S.C. 6. This statute directs that PTAB ``shall 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.'' PTAB has the authority, 
under pre-AIA sections of the Patent Act, i.e., 35 U.S.C. 134, 135, 
306, and 315, to decide ex parte and inter partes appeals and 
interferences. In addition, 35 U.S.C. 6 establishes the membership of 
PTAB as the Director, the Deputy Director, the Commissioner for 
Patents, the Commissioner for Trademarks, and the Administrative Patent 
Judges. Each appeal and interference is decided by a merits panel of at 
least three members of the Board.
    Two of the Board's responsibilities under the statute 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, PTAB reviews 
examiner's decisions adverse to a patent owner or a third-party 
    PTAB's opinions and decisions for publicly available files are 
published on the USPTO Web site.
    There are no forms associated with these items. However, they are 
governed by rules in Part 41. Failure to comply with the appropriate 
rule may result in dismissal of the appeal or denial of entry of the 
    The USPTO is adding an existing information requirement, the 
Petitions to the Chief Administrative Patent Judge, into this 
information collection. This requirement is currently covered under 
information collection 0651-0072 America Invents Act Section 10 Patent 
Fee Adjustments. At the time of the publication of the USPTO 
rulemaking, ``Setting and Adjusting Patent Fees'' (RIN 0651-AC54), the 
petitions to the Chief Administrative Patent Judge were not covered by 
any existing information collection request, so it was included in the 
0651-0072 submission because the fee associated with this petition was 
affected by the rulemaking. As part of this renewal, the USPTO is 
moving this information requirement into this collection because it is 
associated with the activities covered by this collection. However, 
only the information requirement and the non-fee burden for the 
petitions will be moved into 0651-0063. The fee will remain in 0651-

II. Method of Collection

    By mail, hand delivery, or facsimile when an applicant files a 
brief, petition, amendment, or request. These papers can also be filed 
as attachments through EFS-Web.

III. Data

    OMB Number: 0651-0063.
    Form Number(s): None.
    Type of Review: Revision of a currently approved collection.
    Affected Public: Individuals or households, businesses or other for 
profits, non-profit institutions, and the Federal Government.
    Estimated Number of Respondents: 34,537 responses per year. The 
USPTO estimates that approximately 25% (8,634) of these responses will 
be from small entities. The USPTO also estimates that approximately 93% 
(32,119) of the briefs, requests, petitions, and amendments will be 
filed electronically.
    Estimated Time per Response: The USPTO estimates that it takes the 
public approximately 2 to 32 hours to complete this information, 
depending on the complexity of the request. This includes the time to 
gather the necessary information, prepare the brief, petition, and 
other papers, and submit the completed request to the USPTO. The USPTO 
calculates that, on balance, it takes the same amount of time to gather 
the necessary information, prepare the brief, petition, and other 
papers, and submit it to the USPTO, whether the applicant submits it in 
paper form or electronically.
    Estimated Total Annual Respondent Burden Hours: 858,683 hours per 
    Estimated Total Annual Respondent Cost Burden: $334,027,687 per 
year. The USPTO expects that all of the information in this collection 
will be prepared by an attorney. Using the professional hourly rate of 
$389 for attorneys in private firms, the USPTO estimates that the total 
respondent cost burden for this collection is $334,027,687 per year.

                                                                                     Estimated       Estimated
                     Item                          Estimated time for response        annual       annual burden
                                                             (hours)                 responses         hours
Amendment.....................................  2                                             19              38
Electronic Amendment..........................  2                                            248             496
Appeal Brief..................................  32                                         1,781          56,992
Electronic Appeal Brief.......................  32                                        23,662         757,184
Reply Brief...................................  5                                            578           2,890
Electronic Reply Brief........................  5                                          7,672          38,360
Request for Rehearing Before the PTAB.........  5                                             29             145
Electronic Request for Rehearing Before the     5                                            386           1,930
Petitions to the Chief Administrative Patent    4                                             11              44
 Judge Under 37 CFR 41.3.

[[Page 68424]]

Electronic Petitions to the Chief               4                                            151             604
 Administrative Patent Judge Under 37 CFR 41.3.
    Total.....................................  ................................          34,537         858,683

    Estimated Total Annual Non-hour Respondent Cost Burden: $48,239 per 
year. There are no maintenance, operation, capital start-up, or 
recordkeeping costs associated with this information collection. 
However, this collection does have annual (non-hour) costs in the form 
of postage costs. There are also filing fees for the appeal briefs and 
the petitions to the chief administrative patent judge, but these fees 
are not included in the annual (non-hour) cost burden for this 
collection. These fees are covered instead under 0651-0072 America 
Invents Act Section 10 Patent Fee Adjustments.
    The briefs, petitions, and other papers may be submitted by mail 
through the United States Postal Service. The USPTO expects the items 
in this collection to be mailed by Express Mail using the flat rate 
envelope, which can accommodate both the varying submission weights of 
these submissions and the various postal zones. Using the Express Mail 
flat rate cost for mailing envelopes, the USPTO estimates that the 
average cost for sending these submissions by Express Mail will be 
$19.95 and that approximately 2,418 may be mailed to the USPTO.
    The USPTO estimates that the total postage cost for this collection 
will be $48,239 per year.

               Item                 Responses     Postage      postage
                                                    cost         cost
Express Mailing Costs
Amendment........................           19       $19.95      $379.00
Appeal Brief.....................        1,781        19.95    35,531.00
Reply Brief......................          578        19.95    11,531.00
Request for Rehearing Before the            29        19.95       579.00
Petitions to the Chief                      11        19.95       219.00
 Administrative Patent Judge
 Under 37 CFR 41.3...............
    Total Postage Costs..........        2,418  ...........    48,239.00

IV. Request for Comments

    Comments submitted in response to this notice will be summarized 
and/or included in the request for OMB approval. All comments will 
become a matter of public record.
    The USPTO is soliciting public comments to: (a) Evaluate whether 
the proposed collection of information is necessary for the proper 
performance of the functions of the agency, including whether the 
information will have practical utility; (b) Evaluate the accuracy of 
the agency's estimate of the burden of the proposed collection of 
information, including the validity of the methodology and assumptions 
used; (c) Enhance the quality, utility, and clarity of the information 
to be collected; and (d) Minimize the burden of the collection of 
information on those who are to respond, including through the use of 
appropriate automated, electronic, mechanical, or other technological 
collection techniques or other forms of information technology, e.g., 
permitting electronic submission of responses.

    Dated: November 8, 2013.
Susan K. Fawcett,
Records Officer, USPTO, Office of the Chief Information Officer.
[FR Doc. 2013-27215 Filed 11-13-13; 8:45 am]