Please note that the OMB number and expiration date may not have been determined when this Information Collection Request and associated Information Collection forms were submitted to OMB. The approved OMB number and expiration date may be found by clicking on the Notice of Action link below.

View ICR - OIRA Conclusion

OMB Control No: 0651-0069	ICR Reference No: 202202-0651-001
Status: Active	Previous ICR Reference No: 201909-0651-002
Agency/Subagency: DOC/PTO	Agency Tracking No:
Title: Patent Review and Derivation Proceedings
Type of Information Collection: Revision of a currently approved collection	Common Form ICR: No
Type of Review Request: Regular
OIRA Conclusion Action: Approved with change	Conclusion Date: 09/16/2022
Retrieve Notice of Action (NOA)	Date Received in OIRA: 02/24/2022
Terms of Clearance: Supporting statement updated during review.

	Inventory as of this Action	Requested	Previously Approved
Expiration Date	09/30/2025	36 Months From Approved	09/30/2022
Responses	12,338	0	11,994
Time Burden (Hours)	1,368,058	0	1,474,449
Cost Burden (Dollars)	69,638,370	0	68,095,848

Abstract: The Leahy-Smith America Invents Act, which was enacted into law on September 16, 2011, provided for many changes to the procedures of the Patent Trial and Appeal Board (“PTAB” or “Board,” formerly the Board of Patent Appeals and Interferences) procedures. These changes included the introduction of inter partes review, post-grant review, derivation proceedings, and the transitional program for covered business method patents. Under these administrative trial proceedings, third parties may file a petition with the PTAB challenging the validity of issued patents, with each proceeding having different requirements regarding timing restrictions, grounds for challenging validity, and who may request review. Inter partes review is a trial proceeding conducted at the Board to review the patentability of one or more claims in a patent only on a ground that could be raised under §§ 102 or 103, and only on the basis of prior art consisting of patents or printed publications. Post grant review is a trial proceeding conducted at the Board to review the patentability of one or more claims in a patent on any ground that could be raised under § 282(b)(2) or (3). A derivation proceeding is a trial proceeding conducted at the Board to determine whether (1) an inventor named in an earlier application derived the claimed invention from an inventor named in the petitioner’s application, and (2) the earlier application claiming such invention was filed without authorization. The transitional program for covered business method patents is a trial proceeding conducted at the Board to review the patentability of one or more claims in a covered business method patent. The covered business method program expired on September 16, 2020 and the Board no longer accepts new petitions related to this program, but continues to accept papers in previously-instituted proceedings. This information collection covers information submitted by the public to petition the Board to initiate an inter partes review, post-grant review, derivation proceeding, and the transitional program for covered business method patents, as well as any responses to such petitions, and the filing of any motions, replies, oppositions, and other actions, after a review/proceeding has been instituted.

ICR Summary of Burden

	Total Approved	Previously Approved	Change Due to Agency Discretion	Change Due to Adjustment in Estimate
Annual Number of Responses	12,338	11,994	951	-607
Annual Time Burden (Hours)	1,368,058	1,474,449	476	-106,867
Annual Cost Burden (Dollars)	69,638,370	68,095,848	237,500	1,305,022

Burden increases because of Program Change due to Agency Discretion: Yes

Burden Increase Due to: Miscellaneous Actions

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

Burden Reduction Due to:

Short Statement: Program Change Due to Agency Discretion in Annual Number of Responses, Annual Time Burden, and Annual Cost Burden With this renewal, USPTO is adding in a new item (Pro Hac Vice Motion) which adds +951 responses and +476 burden hours to this information collection. This item also has a related fee which adds +$237,500 annual cost burden to this information collection. Change Due to Adjustment in Agency Estimate in Annual Number of Responses, Annual Time Burden, and Annual Cost Burden For this renewal, the USPTO estimates that the items in this information collection will naturally fluctuate based on respondent need. Overall USPTO is estimating that these adjustments result in fewer responses (-607) and fewer associated time burden (-106,867). At the same time, USPTO is estimating that total annual (non-hour) costs will increase due to respondents filling more items that have associated fees (+$1,305,022).

Annual Cost to Federal Government: $32,683,269

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

Does this ICR request any personally identifiable information (see OMB Circular No. A-130 for an explanation of this term)? Please consult with your agency's privacy program when making this determination. Yes

Does this ICR include a form that requires a Privacy Act Statement (see 5 U.S.C. §552a(e)(3))? Please consult with your agency's privacy program when making this determination. 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? No

Agency Contact: James Worth 571 272-7174