Board of Patent Appeals and Interferences Actions

ACTION:

New collection; comment request.

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 August 8, 2008.

ADDRESSES:

You may submit comments by any of the following methods:

E-mail: Susan.Fawcett@uspto.gov. Include “0651-00xx Board of Patent Appeals and Interferences Actions 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, Customer Information Services Group, Public Information Services Division, U.S. Patent and Trademark Office, P.O. Box 1450, Alexandria, VA 22313-1450. Federal e-Rulemaking Portal: http://www.regulations.gov.

FOR FURTHER INFORMATION CONTACT:

Requests for additional information should be directed to the attention of Kimberly Jordan, Chief Trial Administrator, Board of Patent Appeals and Interferences, United States Patent and Trademark Office, P.O. Box 1450, Alexandria, VA 22313-1450; by telephone at 571-272-9797; or by e-mail at BPAI.Rules@uspto.gov with “Paperwork” in the subject line.

SUPPLEMENTARY INFORMATION:

I. Abstract

The United States Patent and Trademark Office (USPTO) established the Board of Patent Appeals and Interferences (BPAI or Board) under 35 U.S.C. 6(b). This statute directs BPAI to “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.” BPAI has the authority under 35 U.S.C. 134, 135, 306, and 315 to review ex parte and inter partes appeals and interferences. In addition, 35 U.S.C. 6 establishes the membership of BPAI as the Director, the Deputy Director, the Commissioner for Patents, the Commissioner for Trademarks, and the Administrative Patent Judges, one of which serves as the Chief Judge and another as the Vice Chief Judge. Each appeal and interference is decided by a merits panel of at least three members of the Board.

The Board's two main 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, BPAI reviews decisions adverse to a patent owner or a third-party requestor.

The USPTO published a notice of proposed rule making, “Rules of Practice Before the Board of Patent Appeals and Interferences in Ex Parte Appeals (RIN 0651-AC12)” in the Federal Register on July 30, 2007. The public comment period ended on September 28, 2007. In this proposed rule making, the USPTO proposed changes to information submitted to the agency by practitioners in order to process ex parte appeals before the BPAI.

The agency received comments from the public concerning the burden of these rules on the public, in particular the new requirements that allow the agency to structure the information being received. In order to ensure that the public has opportunity to comment on the burden impact of the proposed rule making, the USPTO is submitting a new information collection request to the OMB to review these changes as subject to the PRA and to incorporate the new information collection into the agency's information collection inventory.

The USPTO is asking that a new collection of information, entitled “Board of Patent Appeals and Interferences Actions” be established. This collection will contain the following items:

• Appeal Brief (41.37).
• Petition for Extension of Time for Filing Paper After Appeal Brief (41.3 and 41.20).
• Petition to Increase Page Limit (41.3 and 41.20).
• Reply Brief (41.41).
• Request for Rehearing Before the BPAI (41.52).

Additionally, there are two items related to BPAI activities that are currently covered in 0651-0031 Patent Processing (Updating). This collection is currently under review at OMB. It is the USPTO's intention to move these items out of 0651-0031 into this new collection once this collection is established and OMB's review of 0651-0031 is concluded. The following items will be moved out of 0651-0031:

• Notice of Appeal (41.31).
• Request for Oral Hearing Before the BPAI (41.47).

BPAI'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 paper.

II. Method of Collection

By mail, hand delivery, or fax when applicant files the briefs, petitions, and requests. These papers can also be filed as attachments through EFS-Web.

III. Data

OMB Number: 0651-00xx.

Form Number(s): No forms.

Type of Review: New information collection.

Affected Public: Primarily business or other for-profit organizations.

Estimated Number of Respondents: 31,828 responses per year. In the future, once this proposed collection and 0651-0031 are approved by OMB, the USPTO expects to move the notices of appeal and requests for oral hearing before the BPAI into this collection. The USPTO estimates that this will add a minimum of 28,595 responses to this collection.

Estimated Time Per Response: The USPTO estimates that it takes the public approximately 5 to 30 hours to complete this information, depending on the brief, petition, or request. This includes the time to gather the necessary information, prepare the briefs, petitions, and requests, and submit them to the USPTO. The USPTO estimates that it takes the public approximately 12 minutes (0.20 hours) to complete the notices of appeal and requests for oral hearing before the BPAI.

Estimated Total Annual Respondent Burden Hours: 773,895 hours. The USPTO estimates that once the notices of appeal and requests for oral hearing before the BPAI are moved into this collection, a minimum of 5,719 hours per year will be added to the burden.

Estimated Total Annual Respondent Cost Burden: $239,907,450. The USPTO believes that associate attorneys will complete these briefs, petitions, and requests. The professional hourly rate for associate attorneys in private firms is $310. Using this hourly rate, the USPTO estimates that the total respondent cost burden for this collection is $239,907,450 per year. Once the notices of appeal and requests for oral hearing before the BPAI are moved into this collection, the USPTO estimates that the annual respondent cost burden will increase by a minimum of $1,772,890. The USPTO believes that these items are also completed by associate attorneys.

The table below show the estimated annual responses and burden hours that the USPTO expects will be added to this collection once the notice of appeal and requests for oral hearing before the BPAI are transferred out of 0651-0031 into this collection. These estimates are based on current projections and are an increase over the estimates currently in 0651-0031 (17,250 responses, 3,450 burden hours, and $1,048,800 in respondent costs). The estimates below are not being reported in the burden for this proposed collection at this time. The USPTO has included the estimates to show the public what the minimum expected burden will be for this collection.

Estimated Total Annual Non-hour Respondent Cost Burden: $12,286,831. There are postage costs and filing fees associated with this information collection. This collection does not have any capital start-up, operation, maintenance, or recordkeeping costs.

Parties incur postage costs when submitting the various papers to the USPTO by mail through the United States Postal Service. The USPTO believes that these items will be mailed by Express Mail, using the Postal Service's flat rate envelope, which can accommodate varying submission weights. The cost of the flat rate envelope is $16.50. The USPTO believes that roughly half of the submissions will be filed in paper, with the rest filed as attachments through EFS-Web. Out of the total estimated 31,828 submissions, the USPTO estimates that the number of papers submitted to the USPTO by Express Mail is 15,983.

Therefore, the USPTO estimates that the total postage costs for this collection will be $263,721.

There is also annual non-hour cost burden in the way of filing fees for the appeal briefs and the petitions. The reply briefs and the request for rehearing before the BPAI do not have filing fees associated with them. The USPTO estimates that the total non-hour cost burden associated with the filing fees for this collection will be $12,023,110.

The USPTO estimates that the total non-hour respondent cost burden for this collection, in the form of postage costs and filing fees is $12,286,831 per year.

The tables below show the estimated non-hour costs related to postage and filing fees that the USPTO expects will be added to this collection once the notices of appeal and requests for oral hearing before the BPAI are transferred out of 0651-0031 into this collection. These estimates are based on current projections and are an increase over the total non-hour cost estimates for postage and filing fees ($7,952,505) currently in 0651-0031 for these two items. The estimates shown below are not being reported in the burden for this proposed collection at this time. The USPTO has included the estimates to show the public what the minimum expected burden will be for this collection. The USPTO estimates that a minimum of $13,177,835 per year will be added to the total non-hour respondent cost burden.

IV. Request for Comments

Comments are invited on: (a) 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) 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, including through 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.