Justification for Nonmaterial/Nonsubstantive Change November 30, 2011

JUSTIFICATION FOR NONMATERIAL/NONSUBSTANTIVE CHANGE
United States Patent and Trademark Office
Board of Patent Appeals and Interferences (BPAI) Actions
OMB Control Number 0651-0063
November 30, 2011
Overview
Information collection 0651-0063 was approved by OMB on December 22, 2009 and was limited to
the current rule. Since then the USPTO proposed rulemaking changes impacting that collection
through RIN 0651-AC37, “Rules of Practice Before the Board of Patent Appeals and Interferences in
Ex Parte Appeals.” The USPTO submitted an Information Collection Request (ICR) associated with
this proposed rule and on January 4, 2011 it was pre-approved. The Notice of Final Rulemaking for
RIN 0651-AC37 was published on November 22, 2011 and the pre-approval was activated.
There were three non-substantive changes to the collection made between the proposed rule stage
and the final rule stage. This request for an interim change is made to update the inventory with those
changes.
One change associated with the rulemaking:
• Update the burden estimates for appeal briefs
Two changes not associated with the rulemaking:
• Update the hourly rate of attorneys from $325 to $340
• Update Appeal Brief filing fees to reflect the new 15% surcharge imposed by the
Leahy-Smith America Invents Act (Public Law 112-29)

Details
Burden estimates for Appeal Briefs
Several changes have been made to the rule as proposed in the Notice of Proposed Rule Making
(NPRM). The NPRM proposed a change to the current rule that would cause some appellants to add
subheadings to their appeal briefs, but proposed other changes that eliminated several of the current
briefing requirments. Originally, the USPTO estimated that the changes proposed in the NPRM would
reduce an applicant’s paperwork burden for the appeal briefs from 34 to 31 hours. But based on
comments received in response to the NPRM, the USPTO reestimated this reduction from 34 to 32
hours for the Final Rule.
Based on this reestimate, the USPTO now estimates that the Final Rule will increase the burden for
this collection by 26,741 hours, from 828,871 to 855,712 hours per year as a program change.
Item

Appeal Brief Current
Inventory
Appeal Brief Proposed
(includes EFS-Web)

Hours
(a)

Responses
(yr)
(b)

Burden
(hrs/yr)
(c)
(a) x (b)

Rate
($/hr)
(d)

Total Cost
($/hr)
(e)
(c) x (d)

31

26,741

828,871

$325.00

$269,415,575.00

32

26,741

855,712

$340.00

$290,942,080.00

Impact of
Final
Rulemaking

NonRulemaking
Impact

Increase of
26,741 hours
per year.

Increase of
$21,526,505
per year.

Update of Hourly Rate for Attorneys
The USPTO is updating the professional hourly rate (which was previously calculated at $325) to
$340 per hour for respondent cost burden calculations. This is the median rate for attorneys in private
firms as shown in the 2011 Report of the Economic Survey, published by the Committee on
Economics of Legal Practice of the American Intellectual Property Law Association (AIPLA).
This was previously calculated at $282,647,625.00 during the proposed rulemaking, but is now being
adjusted to $304,784,840 per year to reflect the current estimate from the AIPLA Report, for an
increase of $22,137,215 per year.
Item

Hours
(a)

Responses
(yr)
(b)

Amendment

2 hours

19

38

$340.00

$12,920.00

Amendment (EFS-Web)

2 hours

248

496

$340.00

$168,640.00

Appeal Brief

32 hours

1,872

59,904

$340.00

$20,367,360.00

Appeal Brief (EFS-Web)

32 hours

24,869

795,808

$340.00

$270,574,720.00

Reply Brief

5 hours

536

2,680

$340.00

$911,200.00

Reply Brief (EFS-Web)

5 hours

7,122

35,610

$340.00

$12,107,400.00

Request for Rehearing Before the BPAI

5 hours

26

130

$340.00

$44,200.00

Request for Rehearing Before the BPAI (EFS-Web)

5 hours

352

1,760

$340.00

$598,400.00

- - - -

35,044

896,426

- - - -

$304,784,840.00

Total

Burden
(hrs/yr)
(c)
(a) x (b)

Rate
($/hr)
(d)

Total Cost
($/hr)
(e)
(c) x (d)

Update Appeal Brief Filing Fees

The Leahy-Smith America Invents Act (Public Law 112-29) imposes a 15% surcharge on the
appeal brief filing fees. This surcharge went into effect September 16, 2011, after the
submission of the NPRM ICR. The USPTO is taking this opportunity to adjust these fees and
estimates to account for this surcharge.
Based on this surcharge, the USPTO estimates that the filing fees for this collection will
increase by $1,925,360, from $12,996,180 to $14,921,540 per year due to a program
change.
Item

Responses
(yr)
(a)

Filing Fees
(b)

Total Cost
(yr)
(a x b)

Appeal Brief – Other Entity

1,498

$620.00

$928,760.00

Appeal Brief – Small Entity

374

$310.00

$115,940.00

Appeal Brief (EFS-Web) – Other Entity

19,895

$620.00

$12,334,900.00

Appeal Brief (EFS-Web) – Small Entity

4,974

$310.00

$1,541,940.00

26,741

-------------------------

$14,921,540.00

Totals

2