From the Federal Register Online via GPO Access [wais.access.gpo.gov]
DEPARTMENT OF COMMERCE
Patent and Trademark Office
ACTION: Proposed collection; comment request.
The complete comment request is available at http://frwebgate.access.gpo.gov/cgi-bin/getdoc.cgi?dbname=2009_register&docid=fr10au09-11
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 the 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 October 9, 2009.
ADDRESSES: You may submit comments by any of the following methods:
- E-mail: Susan.Fawcett@uspto.gov. Include A0651-00XX Patent Reexaminations comment@ in the subject line of the message.
- Fax: 571-273-0112, marked to the attention of Susan K. Fawcett.
- Mail: Susan K. Fawcett, Records Officer, Office of the Chief Information Officer, Administrative Management Group, 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 Robert A. Clarke, Director, Office of Patent Legal Administration, United States Patent and Trademark Office, P.O. Box 1450, Alexandria, VA 22313-1450; by telephone at 571-272-7735; or by e-mail at Robert.Clarke@uspto.gov.
The United States Patent and Trademark Office (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 patents or printed publications. Once initiated, the reexamination proceedings under Chapter 30 are substantially ex parte and do not permit input from third parties. Chapter 31 of Title 35 U.S.C. provides for inter partes reexamination allowing third parties to participate throughout the reexamination proceeding. If a request for ex parte or inter partes reexamination is denied, the requester may petition the Director to review the examiner's refusal of reexamination. The rules outlining ex parte and inter partes reexaminations are found at 37 CFR 1.510-1.570 and 1.902-1.997.
Information requirements related to patent reexaminations are currently covered under OMB Control Number 0651-0033, along with other requirements related to patent issue fees and reissue applications. The USPTO is proposing to move the following items that are under 0651-0033 into a new information collection for Patent Reexaminations: Request for Ex Parte Reexamination Transmittal Form; Request for Inter Partes Reexamination Transmittal Form; Petition to Review the Refusal to Grant
Ex Parte Reexamination; Petition to Review the Refusal to Grant Inter Partes Reexamination; and Petition to Request Extension of Time in Ex Parte or Inter Partes Reexamination.
The USPTO is also proposing to include additional items related to patent reexaminations in this new information collection: Request for Ex Parte Reexamination; Request for Inter Partes Reexamination; Patent Owner's 37 CFR 1.530 Statement; Third Party Requester's 37 CFR 1.535 Reply; Amendment in Ex Parte or Inter Partes Reexamination; Third Party Requester's 37 CFR 1.947 Comments in Inter Partes Reexamination; Response to Final Rejection in Ex Parte Reexamination; Patent Owner's 37 CFR 1.951 Response in Inter Partes Reexamination; and Third Party Requester's 37 CFR 1.951 Comments in Inter Partes Reexamination. These additional items are existing information requirements that previously were not fully covered by an information collection and are now being included in order to more accurately reflect the burden on the public for submitting requests related to patent reexaminations.
The Requests for Ex Parte and Inter Partes Reexamination are distinct collections from the Request for Ex Parte Reexamination Transmittal Form and the Request for Inter Partes Reexamination Transmittal Form, respectively. Whereas the transmittal forms are used by a requester (patent owner or third party) as a checklist to ensure compliance with the requirements of the statutes and rules for ex parte and inter partes reexaminations, the newly added collections represent the substantive analysis undertaken by a requester of reexamination. Thus, the Requests for Ex Parte and Inter Partes Reexamination are not new requirements. The other items being included in this new
collection cover additional information that may be submitted by patent owners and third party requesters in relation to a reexamination proceeding. Likewise, these items are existing requirements that previously were not fully covered by an information collection.
The public uses this information collection to request reexamination proceedings and to ensure that the associated fees and documentation are submitted to the USPTO.