Patent Review and Derivation Proceedings

OMB Control No: 0651-0069	ICR Reference No: 201811-0651-001
Status: Historical Active	Previous ICR Reference No: 201712-0651-006
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: Approved with change	Conclusion Date: 02/06/2019
Retrieve Notice of Action (NOA)	Date Received in OIRA: 11/29/2018
Terms of Clearance: Supporting statement corrected during review.

	Inventory as of this Action	Requested	Previously Approved
Expiration Date	02/28/2022	36 Months From Approved	02/28/2019
Responses	11,994	0	11,349
Time Burden (Hours)	1,474,449	0	1,459,183
Cost Burden (Dollars)	54,306,775	0	106,742,700

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Abstract: The United States Patent and Trademark Office (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 (“PTAB” or “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 PTAB. See Pub. L. 112-29, 125 Stat. 284 (2011). These changes include 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 (1) an inventor named in an earlier application derived the claimed invention from an inventor named in petitioner’s application, and (2) 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 for review the patentability of one or more claims in a covered business method patent.

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Authorizing Statute(s): 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    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

Citations for New Statutory Requirements: None

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Associated Rulemaking Information
RIN:	Stage of Rulemaking:	Federal Register Citation:	Date:
	Not associated with rulemaking

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Federal Register Notices & Comments
60-day Notice:	Federal Register Citation:	Citation Date:
	83 FR 45104	09/05/2018
30-day Notice:	Federal Register Citation:	Citation Date:
	83 FR 58761	11/21/2018
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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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	11,994	11,349	0	0	645	0
Annual Time Burden (Hours)	1,474,449	1,459,183	0	0	15,266	0
Annual Cost Burden (Dollars)	54,306,775	106,742,700	0	1,482	-52,437,407	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:

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Annual Cost to Federal Government: $46,655,035

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

Agency Contact: Susan Mitchell 571 272-8715 [email protected]

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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: 11/29/2018

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