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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:
201208-0651-008
Status:
Historical Active
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:
Approved without change
Conclusion Date:
09/12/2012
Retrieve Notice of Action (NOA)
Date Received in OIRA:
08/14/2012
Terms of Clearance:
Updated supporting statement.
Inventory as of this Action
Requested
Previously Approved
Expiration Date
09/30/2015
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 327, 327(a), 327(b)
US Code:
35 USC 326, 326(a)(10), 326(a)(12)
US Code:
35 USC 322 and 323
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 312 and 313
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 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
77 FR 48612
08/14/2012
Federal Register Notices & Comments
Did the Agency receive public comments on this ICR?
Yes
Number of Information Collection (IC) in this ICR:
16
IC Title
Form No.
Form Name
Arbitration Agreement and Award
Motions, Replies and Oppositions After Institution in Inter Partes Review
Motions, Replies and Oppositions After Institution in Post-Grant Review or Covered Business Method Review
Motions, Replies and Oppositions in Derivation Proceeding
Notice of Judicial Review of a Board Decision (e.g., Notice of Appeal Under 35 U.S.C. 142)
Petition for Derivation
Petition for Inter Partes Review
Petition for Post-Grant Review or Covered Business Method Patent Review
Reply to Petition for Initial Inter Partes Review
Reply to Petition for Initial Post-Grant Review or Covered Business Method Patent Review
Request for Adverse Judgment, Default Adverse Judgment or Settlement (parties in litigation over patent)
Request for Oral Hearing
Request for Reconsideration
Request to Make a Settlement Agreement Available
Request to Treat a Settlement as Business Confidential
Settlement (Parties not in Litigation)
ICR Summary of Burden
Total Approved
Previously Approved
Change Due to New Statute
Change Due to Agency Discretion
Change Due to Adjustment in Estimate
Change Due to Potential Violation of the PRA
Annual Number of Responses
5,059
0
5,059
0
0
0
Annual Time Burden (Hours)
528,947
0
528,947
0
0
0
Annual Cost Burden (Dollars)
17,427,196
0
17,427,196
0
0
0
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
Common Form ICR:
No
On behalf of this Federal agency, I certify that the collection of information encompassed by this request complies with 5 CFR 1320.9 and the related provisions of 5 CFR 1320.8(b)(3).
The following is a summary of the topics, regarding the proposed collection of information, that the certification covers:
(a) It is necessary for the proper performance of agency functions;
(b) It avoids unnecessary duplication;
(c) It reduces burden on small entities;
(d) It uses plain, coherent, and unambiguous language that is understandable to respondents;
(e) Its implementation will be consistent and compatible with current reporting and recordkeeping practices;
(f) It indicates the retention periods for recordkeeping requirements;
(g) It informs respondents of the information called for under 5 CFR 1320.8 (b)(3) about:
(i) Why the information is being collected;
(ii) Use of information;
(iii) Burden estimate;
(iv) Nature of response (voluntary, required for a benefit, or mandatory);
(v) Nature and extent of confidentiality; and
(vi) Need to display currently valid OMB control number;
(h) It was developed by an office that has planned and allocated resources for the efficient and effective management and use of the information to be collected.
(i) It uses effective and efficient statistical survey methodology (if applicable); and
(j) It makes appropriate use of information technology.
If you are unable to certify compliance with any of these provisions, identify the item by leaving the box unchecked and explain the reason in the Supporting Statement.
Certification Date:
08/14/2012