View Information Collection Request (ICR) Package

OMB Control No: 0651-0069	ICR Reference No: 201207-0651-007
Status: Historical Inactive	Previous ICR Reference No: 201201-0651-004
Agency/Subagency: DOC/PTO	Agency Tracking No:
Title: Patent Review and Derivation Proceedings
Type of Information Collection: New collection (Request for a new OMB Control Number)	Common Form ICR: No
Type of Review Request: Regular
OIRA Conclusion Action: Preapproved	Conclusion Date: 07/16/2012
Retrieve Notice of Action (NOA)	Date Received in OIRA: 07/13/2012
Terms of Clearance: Pre-approval contingent upon no substantive changes to this collection after adoption of the final rule. Otherwise this collection should be re-submitted to OMB for review.

	Inventory as of this Action	Requested	Previously Approved
Expiration Date	07/31/2015	36 Months From Approved
Responses	5,059	0	0
Time Burden (Hours)	528,947	0	0
Cost Burden (Dollars)	17,427,196	0	0

Abstract: The Leahy-Smith America Invents Act, which was enacted into law on September 16, 2011, provides for many changes to the current Board of Patent Appeals and Interference procedures (Pub. L. 112-29, 125 Stat. 284 (2011)). One such change is to rename the Board of Patent Appeals and Interferences to the Patent Trial and Appeal Board (Board)(effective September 16, 2012). Other changes include the introduction of inter partes review, post-grant review, derivation proceedings, and the transitional program for covered business method patents. The United States Patent and Trademark Office (USPTO) submitted this information collection to the Office of Management and Budget (OMB) for review in support of six notices of proposed rulemaking (RINS 0651-AC70, AC71, AC72, AC73, AC74, and AC75) on February 9, 2012. OMB filed a comment on the proposed rule on March 27, 2012. Based on comments from the public, the USPTO made various changes to the rules, including providing for agreements by the parties to alter certain default aspects of the proceedings without seeking authorization from the Board, clarifying the applicability of statutory fees when patent owners present excess claims, and including an information item, "Settlement (Parties not in Litigation)." The USPTO also estimates that, because many disputes may be resolved by the parties without submissions of motions to the Board, the overall estimated burden hours associated with the final rules is reduced which leads to a reduction in total respondent burden cost. Therefore, the USPTO is resubmitting this new information collection in support of three consolidated final rulemakings (RINs 0651-AC70, AC71, and AC75). Requirements in common for the new trial proceedings are adopted in RIN 0651-AC70, thus most of the information collection requirements are based on requirements in that notice. RINs 0651-AC71 and AC75 provide details of certain proceedings and specific aspects of the requirements in those proceedings.

Authorizing Statute(s): US Code: 35 USC 326, 326(a)(10), 326(a)(12)
   US Code: 35 USC 322 and 323
   US Code: 35 USC 327, 327(a), 327(b)
   PL: Pub.L. 112 - 29 125 Stat. 284 (2011) Name of Law: Leahy-Smith America Invents Act
   US Code: 35 USC 2(b)(2)
   US Code: 35 USC 135, 135(b), 135(e), 135(f)
   US Code: 35 USC 141 and 142
   US Code: 35 USC 145 and 146
   US Code: 35 USC 312 and 313
   US Code: 35 USC 316, 316(a)(10), 316(a)(13)
   US Code: 35 USC 317, 317(a), and 317(b)

Citations for New Statutory Requirements: PL: Pub.L. 112 - 29 125 Stat. 284 (2011) Name of Law: Leahy-Smith America Invents Act

Associated Rulemaking Information
RIN:	Stage of Rulemaking:	Federal Register Citation:	Date:
0651-AC70	Final or interim final rulemaking

Federal Register Notices & Comments
Did the Agency receive public comments on this ICR? Yes

ICR Summary of Burden

	Total Request	Change Due to New Statute
Annual Number of Responses	5,059	5,059
Annual Time Burden (Hours)	528,947	528,947
Annual Cost Burden (Dollars)	17,427,196	17,427,196

Burden increases because of Program Change due to Agency Discretion: No

Burden Increase Due to:

Burden decreases because of Program Change due to Agency Discretion: No

Burden Reduction Due to:

Short Statement: The USPTO is submitting this new information collection request in support of three final rulemakings (RINs 0651-AC70, AC71, and AC75) which outline changes in the rules of practice in proceedings before the Patent Trial and Appeal Board. These changes are provided for by the Leahy-Smith America Invents Act. The USPTO estimates that these final rulemakings will add 5,059 responses and 528,947 burden hours per year to the USPTO's information collection inventory. In addition, the USPTO also estimates that these final rulemakings will add a total of $17,427,196 in annualized (non-hour) costs per year for filing fees and postage to the USPTO's information collection inventory.

Annual Cost to Federal Government: $18,594,874

Does this IC contain surveys, censuses, or employ statistical methods? No

Is the Supporting Statement intended to be a Privacy Impact Assessment required by the E-Government Act of 2002? No

Is this ICR related to the Affordable Care Act [Pub. L. 111-148 & 111-152]? No

Is this ICR related to the Dodd-Frank Wall Street Reform and Consumer Protection Act, [Pub. L. 111-203]? No

Is this ICR related to the American Recovery and Reinvestment Act of 2009 (ARRA)? No

Is this ICR related to the Pandemic Response? Uncollected

Agency Contact: Robert Clarke 571 272-7735 robert.clarke@uspto.gov

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