Patent Review and Derivation Proceedings

Forms and Documents

Document Name	Status
0651-0069 CWS Nov 2017.docx Justification for No Material/Nonsubstantive Change	2017-11-09
0651-USPTO-Information-Quality-Guidelines-Dec2009.pdf Supplementary Document	2015-09-25
0069 Supporting Statement Sept 2015.docx Supporting Statement A	2015-09-21

IC Document Collections

IC ID	Document Title	Status
200858	Notice of Judicial Review of a Board Decision (e.g., Notice of Appeal Under 35 U.S.C. 142)	Unchanged
200857	Request to Make a Settlement Agreement Available	Unchanged
200856	Arbitration Agreement and Award	Unchanged
200855	Settlement	Unchanged
200835	Request to Treat a Settlement as Business Confidential	Unchanged
200834	Request for Oral Hearing	Unchanged
200829	Motions, Replies and Oppositions in Derivation Proceeding	Unchanged
200828	Motions, Replies and Oppositions After Institution in Post-Grant Review or Covered Business Method Review	Unchanged
200827	Motions, Replies and Oppositions After Institution in Inter Partes Review	Unchanged
200824	Request for Rehearing	Unchanged
200823	Patent Owner Preliminary Response to Petition for Initial Post-Grant Review or Covered Business Method Patent Review	Unchanged
200822	Patent Owner Preliminary Response to Petition for Initial Inter Partes Review	Unchanged
200821	Petition for Derivation	Unchanged
200820	Petition for Post-Grant Review or Covered Business Method Patent Review	Modified
200815	Petition for Inter Partes Review	Modified

ICR Details

OMB Control No: 0651-0069	ICR Reference No: 201711-0651-007
Status: Historical Inactive	Previous ICR Reference No: 201508-0651-002
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: Improperly submitted and continue	Conclusion Date: 12/11/2017
	Date Received in OIRA: 11/14/2017
Terms of Clearance: To be resubmitted as a change request.

	Inventory as of this Action	Requested	Previously Approved
Expiration Date	11/30/2018	11/30/2018	11/30/2018
Responses	11,349	0	11,349
Time Burden (Hours)	1,459,183	0	1,459,183
Cost Burden (Dollars)	60,404,425	0	60,404,425

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Abstract: The USPTO is required by 35 U.S.C. §§ 131 and 151 to examine applications and, when appropriate, issue applications as patents. These statutes also provide for consideration of trial reviews of patents if requested. This collection of information covers the patent review process and related proceedings conducted by the Patent Trial and Appeal Board. The Leahy-Smith America Invents Act ("AIA"), 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 Interference). See Pub. L. 112-29, 125 Stat. 284 (2011). These changes included the introduction of inter partes review, post-grant review, derivation proceedings, and the transitional program for covered business method patents. 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 (i) an inventor named in an earlier application derived the claimed invention from an inventor named in the petitioner's application, and (ii) the earlier application claiming such invention was filed without authorization. The transitional program for covered business method patents (TPCBM) is a trial proceeding conducted at the Board to review the patentability of one or more claims in a covered business method patent. In 2012, six rulemaking actions were taken to propose and implement new rules of practice for the multiple reviews and proceedings impacted by the items contained within this information collection. This renewal seeks to enable the continuation of the review and proceeding processes outlined in the information collection.

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

Citations for New Statutory Requirements: None

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Associated Rulemaking Information
RIN:	Stage of Rulemaking:	Federal Register Citation:	Date:
0651-AD02	Final or interim final rulemaking	82 FR 52780	11/14/2017

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Federal Register Notices & Comments
60-day Notice:	Federal Register Citation:	Citation Date:
	80 FR 32541	06/09/2015
30-day Notice:	Federal Register Citation:	Citation Date:
	80 FR 57347	09/23/2015
Did the Agency receive public comments on this ICR? No

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Number of Information Collection (IC) in this ICR: 15

IC Title	Form No.	Form Name
Patent Owner Preliminary Response to Petition for Initial Inter Partes Review
Patent Owner Preliminary Response to Petition for Initial Post-Grant Review or Covered Business Method Patent Review
Request for Oral Hearing
Request for Rehearing
Motions, Replies and Oppositions After Institution in Post-Grant Review or Covered Business Method Review
Arbitration Agreement and Award
Motions, Replies and Oppositions After Institution in Inter Partes Review
Petition for Derivation
Notice of Judicial Review of a Board Decision (e.g., Notice of Appeal Under 35 U.S.C. 142)
Petition for Post-Grant Review or Covered Business Method Patent Review
Request to Treat a Settlement as Business Confidential
Request to Make a Settlement Agreement Available
Petition for Inter Partes Review
Motions, Replies and Oppositions in Derivation Proceeding
Settlement

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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: Due to an adjustment in the way that the Patent Trial Appeal Board tracks and collects settlements from parties involved in matters before or connected to the board, the "Settlement (Parties not in Litigation)" item has been removed from this collection while the "Settlement" IC item remains. As a result, the responses and annual time burden (hr) decreased accordingly.

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Annual Cost to Federal Government: $53,220,748

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.     Yes

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

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Common Form ICR:  No

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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: 11/14/2017

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