Patent Review and Derivation Proceedings

OMB Control No: 0651-0069	ICR Reference No: 202510-0651-001
Status: Historical Inactive	Previous ICR Reference No: 202507-0651-007
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: Comment filed on proposed rule and continue	Conclusion Date: 02/05/2026
Retrieve Notice of Action (NOA)	Date Received in OIRA: 10/17/2025
Terms of Clearance: OMB files this comment in accordance with 5 CFR 1320.11(c). This OMB action is not an approval to conduct or sponsor an information collection under the Paperwork Reduction Act of 1995. This action has no effect on any current approvals. If OMB has assigned this ICR a new OMB Control Number, the OMB Control Number will not appear in the active inventory. For future submissions of this information collection, reference the OMB Control Number provided. Resubmit when proposed rule is finalized.

	Inventory as of this Action	Requested	Previously Approved
Expiration Date	09/30/2028	36 Months From Approved	09/30/2028
Responses	11,947	0	11,947
Time Burden (Hours)	590,630	0	590,630
Cost Burden (Dollars)	76,099,956	0	76,099,956

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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.

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Authorizing Statute(s): US Code: 35 USC 6 Name of Law: American Inventor Protection Act    US Code: 35 USC 134 Name of Law: Leahy-Smith America Invents Act

Citations for New Statutory Requirements: None

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Associated Rulemaking Information
RIN:	Stage of Rulemaking:	Federal Register Citation:	Date:
0651-AD89	Proposed rulemaking	90 FR 48335	10/17/2025

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Federal Register Notices & Comments
60-day Notice:	Federal Register Citation:	Citation Date:
	90 FR 21757	05/21/2025
30-day Notice:	Federal Register Citation:	Citation Date:
	90 FR 38958	08/13/2025
Did the Agency receive public comments on this ICR? No

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Number of Information Collection (IC) in this ICR: 19

IC Title Form No. Form Name Arbitration Agreement and Award Notice of Judicial Review of a Board Decision (e.g., Notice of Appeal Under 35 U.S.C. 142) Notice of intent to designate provisionally recognized PTAB attorney as counsel Other Motions, Replies, Surreplies, and Oppositions in Derivation Proceedings Other Motions, Replies, Surreplies, and Oppositions in Inter Partes Review Other Motions, Replies, Surreplies, and Oppositions in Post-Grant Review or Covered Business Method Review 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 Petition for Derivation Petition for Post-Grant Review or Covered Business Method Patent Review Petitions for Inter Partes Review Pro Hac Vice Motion Request for Director Review Request for Oral Hearing Request for Rehearing Request to Make a Settlement Agreement Available Request to Treat a Settlement as Business Confidential Response to Request for Director Review Settlement

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Burden increases because of Program Change due to Agency Discretion: Yes

Burden Increase Due to: Changing Regulations

Burden decreases because of Program Change due to Agency Discretion: No

Burden Reduction Due to:

Short Statement: The Office is proposing new rules of practice before the PTAB to focus inter partes review proceedings on patent claims that have not previously been challenged in litigation or where prior litigation was resolved at an early stage. This proposed rule is intended to promote fairness, efficiency, and predictability in patent disputes.

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Annual Cost to Federal Government: $34,800,714

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: Sharon Israel 571 272-9797 [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: 10/17/2025

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