View Information Collection Request (ICR) Package
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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:
202410-0651-005
Status:
Historical Active
Previous ICR Reference No:
202202-0651-001
Agency/Subagency:
DOC/PTO
Agency Tracking No:
Title:
Patent Review and Derivation Proceedings
Type of Information Collection:
No material or nonsubstantive change to a currently approved collection
Common Form ICR:
No
Type of Review Request:
Regular
OIRA Conclusion Action:
Approved without change
Conclusion Date:
10/22/2024
Retrieve Notice of Action (NOA)
Date Received in OIRA:
10/21/2024
Terms of Clearance:
Inventory as of this Action
Requested
Previously Approved
Expiration Date
09/30/2025
09/30/2025
09/30/2025
Responses
12,338
0
12,338
Time Burden (Hours)
1,367,958
0
1,368,058
Cost Burden (Dollars)
69,513,370
0
69,638,370
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.
Authorizing Statute(s):
US Code:
35 USC 134
Name of Law: Leahy-Smith America Invents Act
US Code:
35 USC 6
Name of Law: American Inventor Protection Act
Citations for New Statutory Requirements:
None
Associated Rulemaking Information
RIN:
Stage of Rulemaking:
Federal Register Citation:
Date:
Not associated with rulemaking
Federal Register Notices & Comments
60-day Notice:
Federal Register Citation:
Citation Date:
86 FR 69228
12/07/2021
30-day Notice:
Federal Register Citation:
Citation Date:
87 FR 10343
02/24/2022
Did the Agency receive public comments on this ICR?
No
Number of Information Collection (IC) in this ICR:
33
IC Title
Form No.
Form Name
Arbitration Agreement and Award (Individuals or Households)
Arbitration Agreement and Award (Private Sector)
Motions, Replies and Oppositions After Institution in Inter Partes Review (Private Sector)
Motions, Replies and Oppositions After Institution in Post-Grant Review or Covered Business Method Review (Private Sector)
Motions, Replies and Oppositions in Derivation Proceeding (Private Sector)
Notice of Judicial Review of a Board Decision (e.g. Notice of Appeal Under 35 U.S.C. §142) (Individuals or Households)
Notice of Judicial Review of a Board Decision (e.g., Notice of Appeal Under 35 U.S.C. 142) (Private Sector)
Notice of intent to designate provisionally recognized PTAB attorney as counsel
Other Motions, Replies, Surreplies, and Oppositions in Derivation Proceedings (Individuals or Households)
Other Motions, Replies, Surreplies, and Oppositions n in Inter Partes Review (Individuals or Households)
Other Motions, Replies, Surreplies, and Oppositions n in Post-Grant Review or Covered Business Method Review (Individuals or Households)
Patent Owner Preliminary Response to Petition for Initial Inter Partes Review (Individuals or Households)
Patent Owner Preliminary Response to Petition for Initial Inter Partes Review (Private Sector)
Patent Owner Preliminary Response to Petition for Initial Post-Grant Review or Covered Business Method Patent Review (Individuals or Households)
Patent Owner Preliminary Response to Petition for Initial Post-Grant Review or Covered Business Method Patent Review (Private Sector)
Petition for Derivation (Individuals or Households)
Petition for Derivation (Private Sector)
Petition for Inter Partes Review (Private Sector)
Petition for Post-Grant Review or Covered Business Method Patent Review (Individuals or Households)
Petition for Post-Grant Review or Covered Business Method Patent Review (Private Sector)
Petitions for Inter Partes Review (Individuals or Households)
Pro Hac Vice Motion (Individuals or Households)
Pro Hac Vice Motion (Private Sector)
Request for Oral Hearing (Individuals or Households)
Request for Oral Hearing (Private Sector)
Request for Rehearing (Individuals or Households)
Request for Rehearing (Private Sector)
Request to Make a Settlement Agreement Available (Individuals or Households)
Request to Make a Settlement Agreement Available (Private Sector)
Request to Treat a Settlement as Business Confidential (Individuals or Households)
Request to Treat a Settlement as Business Confidential (Private Sector)
Settlement (Individuals or Households)
Settlement (Private Sector)
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
12,338
12,338
0
0
0
0
Annual Time Burden (Hours)
1,367,958
1,368,058
0
-100
0
0
Annual Cost Burden (Dollars)
69,513,370
69,638,370
0
-125,000
0
0
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:
Yes
Burden Reduction Due to:
Changing Regulations
Short Statement:
This final rule results in a decrease of 100 hours in hourly burden due to respondents use of the streamlined Pro Hac Vice option. This also results in a decrease of $125,000 in cost burdens; saving from individuals no longer having to fill out new Pro Hac Vice motions.
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
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:
10/21/2024
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