Patent Reexaminations, Supplemental Examinations, and Post Patent Submissions
Revision of a currently approved collection
No
Regular
09/13/2024
Requested
Previously Approved
36 Months From Approved
11/30/2024
890
880
25,714
23,574
3,680,879
2,304,512
The USPTO is required by 35 U.S.C. 131 and 151 to examine applications and, when appropriate, allow applications and issue them as patents. Chapter 30 of Title 35 U.S.C. provides that any person at any time may file a request for reexamination by the USPTO of any claim of a patent on the basis of prior art cited under the provisions of 35 U.S.C. 301. Once initiated, the reexamination proceedings under Chapter 30 are substantially ex parte and do not permit input from third parties. The regulations outlining ex parte reexaminations are found at 37 CFR 1.510-1.570.
In addition, 35 U.S.C. 257 permits a patent owner to request supplemental examination of a patent by the USPTO to consider, reconsider, or correct information believed to be relevant to the patent. The regulations outlining supplemental examination are found at 37 CFR 1.601-1.625.
The Leahy-Smith America Invents Act terminated inter partes reexamination effective September 16, 2012. However, inter partes reexamination proceedings based on inter partes reexamination requests filed before September 16, 2012, continue to be prosecuted. Therefore, this information collection continues to include items related to the prosecution of inter partes reexamination proceedings. The regulations outlining inter partes reexamination are found at 37 CFR 1.903-1.959.
The provisions of 35 U.S.C. 301 and 37 CFR 1.501 govern the ability of a person to submit into the file of an issued patent (1) prior art consisting of patents or printed publications which the person making the submission believes to have a bearing on the patentability of any claim of the issued patent and (2) statements of the owner of the issued patent filed in a proceeding before a Federal court or the USPTO in which the owner of the issued patent took a position on the scope of any claim of the issued patent.
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 USPTOâs 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.
Changes in Responses and Hourly Burden due to Adjustment in Agency Estimate
The total number of responses has increased by 10 due to estimated fluctuations in the number of respondents/submissions in this information collection. This results in an increase of 2,140 hours in the annual time burden estimates.
Changes in Annual Non-hour Costs due to Adjustment in Agency Estimate
For this renewal, the USPTO estimates that the total annual non-hour costs will increase by $1,376,367 from the previous approval. This is due to estimated increase in submissions for items that require a fee.
On behalf of this Federal agency, I certify that the collection of information encompassed by this request complies with 5 CFR 1320.9 and the related provisions of 5 CFR 1320.8(b)(3).
The following is a summary of the topics, regarding the proposed collection of information, that the certification covers:
(i) Why the information is being collected;
(ii) Use of information;
(iii) Burden estimate;
(iv) Nature of response (voluntary, required for a benefit, or mandatory);
(v) Nature and extent of confidentiality; and
(vi) Need to display currently valid OMB control number;
If you are unable to certify compliance with any of these provisions, identify the item by leaving the box unchecked and explain the reason in the Supporting Statement.
Form PTO/SB/42 Information Disclosure Citation in a Patent - Individuals or Households
0651-0064 Supporting Statement 2024 final.docx
Leahy-Smith America Invents Act.pdf
Response to Final Rejection in Ex Parte Reexamination - Individuals or Households