Document headings vary by document type but may contain
                    the following: the agency or agencies that issued and signed a document
the number of the CFR title and the number of each part
                      the document amends, proposes to amend, or is directly
                      related to
the agency docket number / agency internal file number
the RIN which identifies each regulatory action listed in
                      the Unified Agenda of Federal Regulatory and Deregulatory
                      Actions See the
                    Document Drafting Handbook
                    for more details.
 Department of Commerce Patent and Trademark Office
 ACTION: Notice of information collection; request for comment.
 SUMMARY: The United States Patent and Trademark Office (USPTO), as required by the Paperwork Reduction Act of 1995, invites comments on the extension and revision of an existing information collection: 0651-0064 (Patent Reexaminations, Supplemental Examinations, and Post Patent Submissions). The purpose of this notice is to allow 60 days for public comment preceding submission of the information collection to OMB.
 DATES: To ensure consideration, comments regarding this information collection must be received on or before September 24, 2021.
 ADDRESSES: Interested persons are invited to submit written comments by any of the following methods. Do not submit Confidential Business Information or otherwise sensitive or protected information. *Email: InformationCollection@uspto.gov.*
                         Include “0651-0064 comment” in the subject line of the message.
                    *Federal Rulemaking Portal: http://www.regulations.gov.*
                    *Mail:*
                         Kimberly Hardy, Office of the Chief Administrative Officer, United States Patent and Trademark Office, P.O. Box 1450, Alexandria, VA 22313-1450.
 FOR FURTHER INFORMATION CONTACT: Requests for additional information should be directed to Parikha Mehta, Legal Advisor, Office of Patent Legal Administration, United States Patent and Trademark Office, P.O. Box 1450, Alexandria, VA 22313-1450; by telephone at 571-272-3248; or by email to 
                        *Parikha.Mehta@uspto.gov*
                         with “0651-0064 comment” in the subject line. Additional information about this information collection is also available at 
                        *http://www.reginfo.gov*
                         under “Information Collection Review.”


SUPPLEMENTARY INFORMATION: I. Abstract 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 USPTO's 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. This renewal request incorporates an item that was previously approved under OMB control number 0651-0067 (Post Patent Public Submissions), specifically `information disclosure citations'. The title of this information collection is being updated to reflect that change with the inclusion of “Post Patent Submissions”. As the information disclosure citation was the only item contained in 0651-0067, that information collection will be discontinued. II. Method of Collection The items in this information collection may be submitted online using the Patent Electronic Systems (EFS-Web or Patent Center), or on paper by either mail or hand delivery. III. Data *OMB Control Number:*
                     0651-0064. *Form Numbers:*
                     (SB = Specimen Book). PTO/SB/42 (Information Disclosure Citation in a Patent).
                PTO/SB/57 (Request for Ex Parte Reexamination Transmittal Form).
                PTO/SB/59 (Request for Supplemental Examination Transmittal Form). *Type of Review:*
                     Extension and revision of a currently approved information collection. *Affected Public:*
                     Private sector; individuals or households. *Estimated Number of Respondents:*
                     864 respondents per year. *Estimated Number of Responses:*
                     880 responses per year. *Estimated Time per Response:*
                     The USPTO estimates that it takes the public approximately between 30 minutes (0.5 
                    ( print page 40016)
                    hours) to 55 hours, depending on the complexity of the situation and item, to gather the necessary information, prepare the appropriate document(s), and submit the information to the USPTO. *Estimated Total Annual Respondent Burden Hours:*
                     23,574 hours. *Estimated Total Annual Respondent (Hourly) Cost Burden:*
                     $9,429,600. Table 1—Total Hourly Burden for Private Sector Respondents
Item No.
Item
Estimated 
                             annual  
                             respondents
Estimated 
                             annual  
                             responses  
                             (year)
Estimated 
                             time for  
                             response  
                             (hour)
Estimated 
                             annual  
                             burden  
                             (hour/year)
Rate 1
                             ($/hour)
Estimated 
                             annual  
                             respondent  
                             cost burden(a)
(b)
(a) × (b) = (c)
(d)
(c) × (d) = (e)1
Request for Supplemental Examination—PTO/SB/59
31
31
25
775
400
$310,0002
Request for 
                            *Ex Parte*
                             Reexamination—PTO/SB/57
177
177
55
9,735
400
3,894,0003
Petition in a Reexamination Proceeding (except for those specifically enumerated in 37 CFR 1.550(i) and 1.937(d))
68
68
23
1,564
400
625,6004
Patent Owner's 37 CFR 1.530 Statement
53
53
8
424
400
169,6005
Third Party Requester's 37 CFR 1.535 Reply
9
9
8
72
400
28,8006
Amendment in 
                            *Ex Parte*
                             or 
                            *Inter Partes*
                             Reexamination
230
230
33
7,590
400
3,036,0007
Third Party Requester's 37 CFR 1.947 Comments in 
                            *Inter Partes*
                             Reexamination
1
1
41
41
400
16,4008
Response to Final Rejection in 
                            *Ex Parte*
                             Reexamination
118
118
17
2,006
400
802,4009
Patent Owner's 37 CFR 1.951 Response in 
                            *Inter Partes*
                             Reexamination
2
2
41
82
400
32,80010
Third Party Requester's 37 CFR 1.951 Comments in 
                            *Inter Partes*
                             Reexamination
2
2
41
82
400
32,80011
Petition to Request Extension of Time in 
                            *Ex Parte*
                             or 
                            *Inter Partes*
                             Reexamination
116
116
0.5
58
400
23,20012
Information Disclosure Citation in a Patent—PTO/SB/42
32
48
10
480
400
192,000Total

839
855

22,909

9,163,6001
                         2019 Report of the Economic Survey, published by the Committee on Economics of Legal Practice of the American Intellectual Property Law Association (AIPLA); 
                        *https://www.aipla.org/​detail/​journal-issue/​2019-report-of-the-economic-survey.*
                         The USPTO uses the mean rate for attorneys in private firms which is $400 per hour. The hourly rate for paraprofessional/paralegals is estimated at $145 from data published in the 2018 Utilization and Compensation Survey by the National Association of Legal Assistants (NALA).
 Table 2—Total Hourly Burden For Individuals or Households Respondents
Item No.
Item
Estimated 
                             annual  
                             respondents
Estimated 
                             annual  
                             responses  
                             (year)
Estimated 
                             time for  
                             response  
                             (hour)
Estimated 
                             annual  
                             burden  
                             (hour/year)
Rate 2
                             ($/hour)
Estimated 
                             annual  
                             respondent  
                             cost burden(a)
(b)
(a) × (b) = (c)
(d)
(c) × (d) = (e)1
Request for Supplemental Examination—PTO/SB/59
1
1
25
25
400
$10,0002
Request for 
                            *Ex Parte*
                             Reexamination—PTO/SB/57
5
5
55
275
400
110,0003
Petition in a Reexamination Proceeding (except for those specifically enumerated in 37 CFR 1.550(i) and 1.937(d))
2
2
23
46
400
18,4004
Patent Owner's 37 CFR 1.530 Statement
1
1
8
8
400
3,2006
Amendment in 
                            *Ex Parte*
                             or 
                            *Inter Partes*
                             Reexamination
7
7
33
231
400
92,4008
Response to Final Rejection in 
                            *Ex Parte*
                             Reexamination
4
4
17
68
400
27,20011
Petition to Request Extension of Time in 
                            *Ex Parte*
                             or 
                            *Inter Partes*
                             Reexamination
4
4
0.5
2
400
80012
Information Disclosure Citation in a Patent—PTO/SB/42
1
1
10
10
400
4,000Total

25
25

665

266,0002
                         2019 Report of the Economic Survey, published by the Committee on Economics of Legal Practice of the American Intellectual Property Law Association (AIPLA); 
                        *https://www.aipla.org/​detail/​journal-issue/​2019-report-of-the-economic-survey.*
                         The USPTO uses the mean rate for attorneys in private firms which is $400 per hour. The hourly rate for paraprofessional/paralegals is estimated at $145 from data published in the 2018 Utilization and Compensation Survey by the National Association of Legal Assistants (NALA).
 *Estimated Total Annual Respondent (Non-hourly) Cost Burden:*
                     $2,439,335. There are no capital start-up, recordkeeping, or maintenance costs associated with this information collection. However, this information collection does have annual (non-hour) costs in the form of postage costs and filing fees. Therefore, the USPTO 
                    ( print page 40017)
                    estimates that the total annual (non-hour) cost burden for this information collection, in the form of filing fees ($2,439,195) and postage costs ($140) is approximately $2,439,335. Filing Fees There are nine filing fees associated with this information collection, which are broken down by undiscounted entity, small entity, and micro entity. These fees are listed in the table below. Table 3—Filing Fees (Non-Hour) Cost Burden
Item No.
Item
Estimated 
                             annual  
                             responses
Filing fee
                             ($)
Total 
                             non-hour  
                             cost burden  
                             (yr)(a)
(b)
(a) × (b) = (c)1
Supplemental Examination Request (undiscounted entity)
22
4,620
$101,6401
Supplemental Examination Request (small entity)
14
2,310
32,3401
Supplemental Examination Request (micro entity)
1
1,155
1,1551
Supplemental Examination Reexamination (undiscounted entity)
28
12,700
355,6001
Supplemental Examination Reexamination (small entity)
15
6,350
95,2501
Supplemental Examination Reexamination (micro entity)
1
3,175
3,1751
Supplemental Examination document size fees, 21-50 documents (undiscounted entity)
3
180
5401
Supplemental Examination document size fees, 21-50 documents (small entity)
3
90
2701
Supplemental Examination document size fees, 21-50 documents (micro entity)
1
45
451
Supplemental examination document size fees, each additional 50 documents (undiscounted entity)
3
300
9001
Supplemental examination document size fees, each additional 50 documents (small entity)
1
150
1501
Supplemental examination document size fees, each additional 50 documents (micro entity)
1
75
752
Reexamination independent claims in excess of three and also in excess of the number of such claims in the patent under reexamination (undiscounted entity)
23
480
11,0402
Reexamination independent claims in excess of three and also in excess of the number of such claims in the patent under reexamination (small entity)
12
240
2,8802
Reexamination independent claims in excess of three and also in excess of the number of such claims in the patent under reexamination (micro entity)
1
120
1202
Reexamination claims in excess of 20 and also in excess of the number of claims in the patent under reexamination (undiscounted entity)
38
100
3,8002
Reexamination claims in excess of 20 and also in excess of the number of claims in the patent under reexamination (small entity)
17
50
8502
Reexamination claims in excess of 20 and also in excess of the number of claims in the patent under reexamination (micro entity)
1
25
252
*Ex Parte*
                             Reexamination (§ 1.510(a)) Streamlined (undiscounted entity)
22
6,300
138,6002
*Ex Parte*
                             Reexamination (§ 1.510(a)) Streamlined (small entity)
40
3,150
126,0002
*Ex Parte*
                             Reexamination (§ 1.510(a)) Streamlined (micro entity)
2
1,575
3,1502
*Ex Parte*
                             Reexamination (§ 1.510(a)) Non-Streamlined (undiscounted entity)
86
12,600
1,083,6002
*Ex Parte*
                             Reexamination (§ 1.510(a)) Non-Streamlined (small entity)
56
6,300
352,8002
*Ex Parte*
                             Reexamination (§ 1.510(a)) Non-Streamlined (micro entity)
14
3,150
44,1003
Petitions in a reexamination proceeding, except for those specifically enumerated in 37 CFR 1.550(i) and 1.937(d) (undiscounted entity)
34
2,040
69,3603
Petitions in a reexamination proceeding, except for those specifically enumerated in 37 CFR 1.550(i) and 1.937(d) (small entity)
11
1,020
11,2203
Petitions in a reexamination proceeding, except for those specifically enumerated in 37 CFR 1.550(i) and 1.937(d) (micro entity)
1
510
510Total



2,439,195
 Postage Costs The USPTO expects that at most 2% of the responses in this information collection will be submitted by mail. The USPTO estimates that the average postage cost for a mailed submission, using a Priority Mail 2-day flat rate legal envelope, will be $8.25. The USPTO estimates approximately 17 submissions per year may be mailed to the USPTO, for a total postage cost of $140 per year. *Respondent's Obligation:*
                     Required to obtain or retain benefits. IV. Request for Comments 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 shall have practical utility; (b) Evaluate the accuracy of the Agency's estimate of the burden of the proposed collection of information, 
                    ( print page 40018)
                    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 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. All comments submitted in response to this notice are a matter of public record. The USPTO will include or summarize each comment in the request to OMB to approve this information collection. Before including an address, phone number, email address, or other personal identifying information (PII) in a comment, be aware that the entire comment—including PII—may be made publicly available at any time. While you may ask in your comment to withhold PII from public view, the USPTO cannot guarantee that it will be able to do so. Kimberly Hardy, Information Collections Officer, Office of the Chief Administrative Officer, United States Patent and Trademark Office.


[FR Doc. 2021-15875 Filed 7-23-21; 8:45 am] BILLING CODE 3510-16-P