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
File Type | application/vnd.openxmlformats-officedocument.wordprocessingml.document |
Author | Gunther, Sarah |
File Modified | 0000-00-00 |
File Created | 2024-11-21 |