The Paperwork Reduction Act controls and absolutely limits the collection of information by all federal agencies. Section 3506(c)(3)(D) of the Act specifies that any form which collects information is to be “written using plain, coherent, and unambiguous terminology and is understandable to those who are to respond.” For example, the Internal Revenue Service is an excellent example of how information is to be collected. Despite the subject matter, they actually provide very lucid instructions on what information is to be supplied. And all of their information has been approved for collection.And then at the other end of spectrum, we’ve got the Patent Office… Just these two sentences comprise the entire Showing “requirement” for Form PTO/SB/65: “The enclosed statement will show that the delay in timely payment of the maintenance fee was unavoidable since reasonable care was taken to ensure that the maintenance fee would be paid timely and that this petition is being file promptly after the patentee was notified of, or otherwise became aware of, the expiration of the patent. The statement must enumerate the steps taken to ensure timely payment of the maintenance fee, the date and the manner in which the patentee became aware of the expiration of the patent, and the steps taken to file the petition promptly.” After Petition Form PTO/SB/65 is submitted, the Patent Office then comes back with a Decision and a list of “additional requirements.” If they were obeying the Paperwork Reduction Act, there would be no need to spell out “additional requirements” in the Decision. And actually, they may only collect the information specified on the Form, not in a Decision! For example, the two sentence requirement above, even though it is supposed to be written using plain, coherent, and unambiguous terminology, does not mention anything about collecting medical or financial information. Therefore, that information cannot be collected at all! Likewise, docket system information such as particular forms, verified statements, training agendas, a system explanation, how it works, its reliability, the personnel who administered it, etc. cannot be collected, because it is not authorized on the Petition Form PTO/SB/65. (This same concept of limitation applies to the Internal Revenue Service, too. For example, the I.R.S. cannot ask for your blood type – simply because their forms have not been approved to solicit that particular information.) I’ve collected a number of “requirements” from Decisions rendered in response to the filing of Petition Form PTO/SB/65. The patent number of the Decision is in quotes. As you read through them, keep in mind that the Patent Office may only collect the information specified in the two sentences cited above – absolutely nothing more! Any attempt by them to collect any additional information is an outright violation of the Paperwork Reduction Act. In addition, many of their demands for information violate the Privacy Act and Internal Revenue Code since all of the information submitted to them is then made public! |
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Examples of Medical “requirements” |
“Such statement must provide the dates, nature and degree of patentee’s incapacitation. … Any such statement or declaration should discuss the physical and mental issues … including treatment for alcohol dependence, hypertension and marital difficulties ….” (4,993,764) “Such statement [about patentee’s severe depression and attempted suicide] must provide the dates, nature and degree of petitioner’s depression, and must establish that, during this period, petitioner was unable to care for his business interests in the ordinary course of business.” (4,742,242) “Thus, any request for reconsideration must be accompanied by an adequate showing as to … Loveman’s medical condition between April of 1991 and his death, and especially how such medical condition actually caused or contributed to Loveman’s failure to ….” (4,444,321) “… petitioner must provide a verified statement from Osann’s doctor which states the dates, nature and degree of Osann’s incapacitation [due to Alzheimer’s Disease].” (4,953,794) “Should petitioner [70 year old with diabetes] obtain a statement from his physician attesting to his condition and memory loss, that statement would have to assert that petitioner’s condition limited his ability to read and comprehend the Notice, and prevented petitioner from remembering not only the due date, but also receipt of the Notice.” (RE32,736) “In any event, a showing of “unavoidable” delay based upon incapacitation must establish that petitioner’s incapacitation was of such nature and degree as to render petitioner unable to conduct business (e.g., correspond with the Office) during the period … Such a showing must be supported by a statement from petitioner’s treating physician, and such statement must provide the nature and degree of petitioner’s incapacitation during this above-mentioned period.” (4,723,886) “Likewise, since petitioner asserts medical problems on and after April 9, 1998, as causing or contributing to the delay, then petitioner must demonstrate, with appropriate documentation from licensed health care practitioners, how the nature and extent of petitioner’s medical problems cause the payment of the maintenance fee to be unavoidably delayed ….” (5,336,308) “Any assertion that the party responsible for paying the maintenance fee was unavoidably unable to pay the fee due to illness must be documented by medical evidence from licensed health care providers demonstrating that the nature and extent of that party’s incapacitation at the time the fee was due was such that ….” (4,748,872) “Furthermore, the record requires a documented showing of the nature, duration, and degree of incapacitation due to petitioner’s illness. The showing must include a statement(s) by a licensed health care practitioner, which demonstrates how petitioner’s illness caused or contributed to the delay.” (4,810,028) “Petitioner has asserted that due to Mr. Verbick’s hospitalization, surgery and lengthy stay in the hospital to recuperate, the inventor was unavoidably delayed in the paying of the maintenance fee. Petitioner should note that under the circumstances of this case, he will have to provide documents demonstrating the nature and extent of inventor’s incapacitation was such that the inventor was, until the filing of the petition on November 5, 1999, “unavoidably” prevented from taking any earlier action with respect to the payment. Further in this regard, if inventor was so incapacitated to that extent for the period in question, petitioner should provide the names and supporting documentation of any court appointed guardian or steward. How did the steward become aware of inventor’s short and long term obligations, and schedule timely discharge of those duties and obligations.” (5,441,255) “Thus, petitioner, in any forthcoming request for reconsideration, would have to make a documented showing, with statements from the associated, licensed health care professionals, that the nature and extent of petitioner’s incapacitation from his illnesses, … was such as to excuse any more timely intervention on his part. Further in this regard, why was or was not a guardian appointed during the time in question?” (4,685,254) “The supporting documents of petitioner’s doctor indicate no heavy lifting could be done and hand cramping. Clearly, a steward or guardian must have had to tend to petitioner’s obligations. A response to this dismissal should include the above information with a detail explanation of how this affected the payment of the fee. Also, exact dates should be included when possible.” (5,303,524) “Thus, any request for reconsideration must be accompanied by an adequate documented showing as to … Gallagher’s medical condition between May 3, 1993 and May 2, 1994, and especially how such medical condition actually caused or contributed to Gallagher’s failure to ….” (5,026,343) |
Examples of Financial “requirements” |
“Specifically, petitioner should supply a full and complete copy of all information (including tax returns for 1996, 1997, 1998, 1999) supplied to the Internal Revenue Service pertaining to this time period. Petitioner must establish that the maintenance fee for this patent was treated as petitioner’s most important business. In other words, petitioner must fully and completely discuss every dollar the business spent during 1997, 1998, and 1999, and why those funds were not instead spent on paying the maintenance fee ….” (4,770,655, 4,790,307, 4,804,370, 4,813,426, 4,813,935, 4,834,717, 4,846,808, 5,217,480, 5,336,186) “However, Mr. Yale fails to provide a complete statement identifying all of their financial holdings including but not limited to savings accounts, checking accounts, stocks, bonds, and property during the period of time … Copies of the complete financial records of petitioner’s company during the period … should be provided ….” (5,271,638) “Petitioner must provide verified copies of any available documents or records (e.g. copies of all bank statements and income tax returns) covering the entire period ….” (5,327,887) “Any renewed petition must include documents showing conclusively that at no time … could petitioner pay the maintenance. These documents would include bank account statements, pay stubs, yearly tax filings and any other documents which establish petitioner’s financial status. Also, the showing should include all debts and monies owed (i.e. rent or mortgage, or other bills) so as to establish ….” (5,031,251) “Any renewed petition must include copies of relevant financial statements (e.g. bank account summaries, pay stubs, etc.) which clearly show … Also, petitioner should show the extent of all obligations (i.e. bills) which concur that petitioner …” (4,852,476) “Specifically, the instant petition lacks: (1) any information concerning petitioner’s assets or credit (or any attempts to obtain credit) during the period … ; (2) any detailed information concerning income or available moneys received between … (or a statement that petitioner had no other income or moneys available during the period); (3) any information concerning petitioner’s expenses between … (to determine whether petitioner could have saved enough to pay the second maintenance fee for the above-identified patent); and (4) copies of petitioner’s bank statements for the period … (or a statement that petitioner had no bank account during this period).” (4,810,028, 5,085,327) “Petitioner [who had a mild stroke that left him partially blinded and without income] should provide verified copies of any documents or records that would confirm the financial difficulty. … petitioner should submit all such documents or records, including bank statements, tax returns, et cetera.” (5,123,258) “In order to prove that financial difficulty prevented petitioner from making the payment earlier, petitioner would have to completely discuss his financial situation from … to ….” (5,129,565) “… petitioner must provide proof that during the period in question applicant was unable to pay the maintenance fee either from funds available or by borrowing the money. As evidence of petitioner’s financial situation, copies of all financial records must be supplied.” (4,847,994) “… a complete showing is required of patentee’s financial condition from … through … including all income (not just taxable), expenses, assets, credit, and obligations, which made the delay in payment of the maintenance fee unavoidable. A monthly breakdown is preferred.” (4,815,438) “Petitioner should provide verified copies of any documents or records that would confirm the financial difficulty of petitioner. The showing should be for the entire time period between when ….” (4,925,423, 4,993,764) “Rather, the decision of March 30, 1998 required that petitioner provide a documented showing as to records of any assets, credit, and obligations, which made the entire delay unavoidable.” (5,012,148) “Petitioner has indicated that funds for the maintenance fee were acquired through the generosity of her son. Therefore, petitioner should provide a showing as to why the son was not earlier contacted for his financial aid and explain the circumstances under which the son agreed to pay the maintenance fee.” (5,031,251) |
Examples of Docket System “requirements” |
“It is required, that petitioner supply copies of documents bearing on (1) any docketing records showing that this patent had been entered in a docketing system, (2) an explanation of that system, how it works, and the reliability of the system and the personnel who administered it.” (4,815,438) “Petitioner must supply a thorough explanation of the docketing and call-up system in use and must identify the type of records kept and the person responsible for the maintenance of the system. This showing must include copies of mail ledger, docket sheets, filewrappers and such other records as may exist which would substantiate an error in docketing, and include an indication as to why the system failed in this instance to provide adequate notice that a reply was due. Petitioner must also supply information regarding the training provided to the personnel responsible for the docketing error, degree of supervision of their work, examples of other work functions carried out, and checks on the described work which were used to assure proper execution of assigned tasks.” (5,175,242) “Petitioner asserts that a newly assigned individual was responsible for all maintenance fee reminder notices. Who is this individual? What experience does this individual have regarding the handling of maintenance fee notices? How long has this individual been employed? Petitioner must supply information regarding the training provided this personnel, degree of supervision of their work, examples of other work functions carried out, and checks on the described work which were used to assure proper execution of assigned tasks.” (5,225,464) “Likewise, petitioner must supply information regarding the training provided to Mr. Alvarez and other personnel responsible for management of the tracking system and payment of maintenance fees to the USPTO, the degree of supervision of their work, examples of other work functions carried out, and checks on the described work which were used to assure proper execution of assigned tasks. Statements by all persons having firsthand knowledge of the failure to submit payment of this maintenance fee to the USPTO and the recording as paid in petitioners’ maintenance fee tracking system of the maintenance fee for this patent, and ensure that such entry had occurred, are required.” (5,528,907) “Petitioner must supply information regarding the training provided to Rom, degree of supervision of her work, examples of other similar work functions satisfactorily carried out, and checks on the described work which were used to assure proper and timely execution of assigned tasks.” (4,395,241) “This showing should include, but is not limited to, docket records, tickler reports, and file jacket entries for this application, and documents regarding the alleged cause of the delay and copies of any documents referred to in petitioner’s statement as to the cause of the unavoidable delay are required.” “A showing must be made (with supporting documents) outlining the efforts made to ensure timely payment of the maintenance fee–including scheduling and calendaring information, appointment of an individual …. Petitioner must provide any direct evidence proving exactly what records and systems were in place ….” (5,043,356, 5,237,724) “This showing should include, but is not limited to, docket records, tickler reports, and file jacket entries for this application, and documents regarding the alleged cause of the delay and copies of any documents referred to in petitioner’s statement as to the cause of the unavoidable delay are required.” (4,676,083, 5,271,638) “This showing must include copies of mail ledger, docket sheets, filewrappers and such other records….” (5,096,008, 5,225,464) “If not, why not?” questions. (4,838,794) “Statements from all persons responsible for the entire delay from the time of the maintenance fee could first have been paid to the filing of the petition, are required.” (5,183,253) “All statements must be verified and be from all persons who contributed to the delay.” (4,678,218) “Statements from all persons who contributed to the delay are also required. Further, petitioner should identify the party responsible for making the payment. … Consequently, petitioner is required, for any renewed petition, to provide a documented showing of who was responsible for the maintenance fee payment ….” (4,815,438) “The answers to the above questions must be supplied in verified statements from those personally involved with first hand knowledge of the events related. Verified copies of all records that would substantiate the steps taken to ensure timely payment of the maintenance fee and the cause of the delay must be submitted.” (4,678,218) “An adequate showing requires a verified statement by all persons with direct knowledge of the cause of the delay, setting forth the facts as they know them.” (4,629,607, 4,791,993, 4,838,794, 4,899,727, 5,271,638) “Furthermore, an adequate showing requires a statement by all persons with direct knowledge of the cause of the delay, setting forth the facts as they know them. Such a statement must be verified if made by a person not registered to practice before the Patent and Trademark Office. Copies of all documentary evidence referred to in a statement should be furnished as exhibits to the statement.” (4,729,385, 5,143,023) “Petitioners have failed to include declarations from all persons having a first hand knowledge of the delay.” (4,857,910) |
Examples of Miscellaneous “requirements” |
“Any petition for reconsideration accordingly should include an exhaustive attempt to provide any omitted items noted.” (4,815,438) |
“A statement is required with … copies of the complaint from the litigation commencing October 15, 1988, and the “release” Griggs signed December 22, 1988….” (4,513,865) “In particular, Petitioner should submit the contract requiring Contractor to input data from the simple system to the sophisticated system.” (4,977,718) “… petitioner is required to provide documentary evidence that an agreement existed between ….” (5,117,574) “In view of the death of patentee’s attorney two years ago, an explanation must be provided as to when patentee learned of Mr. Lackey’s death ….” (4,838,549) “Any renewed petition must present a showing of how the patent came into possession of petitioner after the inventor’s death, and how it was thereafter unavoidably obscured from petitioner until early this year.” (5,240,143) Extensive footnotes on pages 3 & 4 cite extensive “requirements”. (5,129,565) One-and-a-half paragraphs about requirements of who’s responsible. (4,776,013) |
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