0651-0069 2024 Patent Fee Rule CWS

0651-0069 2024 Patent Fee Rule CWS.docx

Patent Review and Derivation Proceedings

0651-0069 2024 Patent Fee Rule CWS

OMB: 0651-0069

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JUSTIFICATION FOR NONMATERIAL/NONSUBSTANTIVE CHANGE

Patent Review and Derivation Proceedings

OMB Control Number 0651-0069


Background


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.


In support of RIN 0651-AD64 (Setting and Adjusting Patent Fees During Fiscal Year 2025, 89 FRN 91898), the USPTO is changing eleven fees and adding one fee to this information collection.


Table 1: Changes in Fee Amount


Item No.


Fee Code

Item

Current Fee

New Fee

Changes in Fee Amount

1

1406

Inter Partes Review Request Fee – Up to 20 Claims

$19,000

$23,750

+$4,750

1

1414

Inter Partes Post-Institution Fee – Up to 20 Claims

$22,500

$28,125

+$5,625

1

1407

Inter Partes Review Request of Each Claim in Excess of 20

$375

$470

+$95

1

1415

Inter Partes Post-Institution Request of Each Claim in Excess of 20

$750

$940

+$190

2

1408

Post-Grant or Covered Business Method Review Request Fee – Up to 20 Claims

$20,000

$25,000

+$5,000

2

1416

Post-Grant or Covered Business Method Review Post-Institution Fee – Up to 20 Claims

$27,500

$34,375

+$6,875

2

1409

Post-Grant or Covered Business Method Review Request of Each Claim in Excess of 20

$475

$595

+$120

2

1417

Post-Grant or Covered Business Method Review Post-Institution Fee of Each Claim in Excess of 20

$1,050

$1,315

+$265

3

1412

Petition for Derivation

$420

$452

+$32

10

1418

Pro Hac Vice Admission Fee

$250

$269

+$19

15

1411

Request to Make a Settlement Agreement Available

$420

$452

+$32

16

14DR

Request for review of a PTAB decision by the Director

Not previously included in 0651-0069

$452

+$452


Table 2: Proposed Burden


Item No.


Fee Code

Item

Reponses

(a)

New Fee

(b)

New Non-hour Cost Burden

(a) x (b) = (c)

1

1406

Inter Partes Review Request Fee – Up to 20 Claims

1,450

$23,750

$34,437,500

1

1414

Inter Partes Post-Institution Fee – Up to 20 Claims

1,450

$28,125

$40,781,250

1

1407

Inter Partes Review Request of Each Claim in Excess of 20

3,500

$470

$1,645,000

1

1415

Inter Partes Post-Institution Request of Each Claim in Excess of 20

3,500

$940

$3,290,000

2

1408

Post-Grant or Covered Business Method Review Request Fee – Up to 20 Claims

100

$25,000

$2,500,000

2

1416

Post-Grant or Covered Business Method Review Post-Institution Fee – Up to 20 Claims

100

$34,375

$3,437,500

2

1409

Post-Grant or Covered Business Method Review Request of Each Claim in Excess of 20

350

$595

$208,250

2

1417

Post-Grant or Covered Business Method Review Post-Institution Fee of Each Claim in Excess of 20

350

$1,315

$460,250

3

1412

Petition for Derivation

10

$452

$4,520

10

1418

Pro Hac Vice Admission Fee

450

$269

$121,050

15

1411

Request to Make a Settlement Agreement Available

1

$452

$452

16

14DR

Request for review of a PTAB decision by the Director

150

$452

$67,800



Totals

11,411

- - -

$86,953,572


Table 3: Changes in Cost


Item No.


Fee Code

Items

Current Cost

(a)

New Cost

(b)

Change in Non-hour Cost Burden

(b) – (a) = (c)

1

1406

Inter Partes Review Request Fee – Up to 20 Claims

$27,550,000

$34,437,500

+$6,887,500

1

1414

Inter Partes Post-Institution Fee – Up to 20 Claims

$32,625,000

$40,781,250

+$8,156,250

1

1407

Inter Partes Review Request of Each Claim in Excess of 20

$1,312,500

$1,645,000

+$332,500

1

1415

Inter Partes Post-Institution Request of Each Claim in Excess of 20

$2,625,000

$3,290,000

+$665,000

2

1408

Post-Grant or Covered Business Method Review Request Fee – Up to 20 Claims

$2,000,000

$2,500,000

+$500,000

2

1416

Post-Grant or Covered Business Method Review Post-Institution Fee – Up to 20 Claims

$2,750,000

$3,437,500

+$687,500

2

1409

Post-Grant or Covered Business Method Review Request of Each Claim in Excess of 20

$166,250

$208,250

+$42,000

2

1417

Post-Grant or Covered Business Method Review Post-Institution Fee of Each Claim in Excess of 20

$367,500

$460,250

+$92,750

3

1412

Petition for Derivation

$4,200

$4,520

+$320

10

1418

Pro Hac Vice Admission Fee

$112,500

$121,050

+$8,550

15

1411

Request to Make a Settlement Agreement Available

$420

$452

+$32

16

14DR

Request for review of a PTAB decision by the Director

Not previously included in 0651-0069

$67,800

+$67,800



Totals

$69,513,370

$86,953,572

+$17,440,202


Summary of Changes


The aforementioned rulemaking results in the revision of 11 fees and the addition of one new fee, with an increase of $17,440,202 in annual non-hourly costs to collection 0651-0069.


Changes in Burden


Burden Type

Currently Approved

Proposed Change

New Estimate

Non-hourly Cost Burden

$69,513,370

+$17,440,202

$86,953,572


0651-0069’s revised burden is as follows:


  • 12,338 annual responses (unchanged)

  • 1,367,958 annual hourly burden (unchanged)

  • $86,953,572 annual non-hourly burden costs



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