0651-00xx Patent Review and Derivation Proceedings-SupStmt-Jan 21 2012

SUPPORTING STATEMENT
United States Patent and Trademark Office
Patent Review and Derivation Proceedings
OMB CONTROL NUMBER 0651-00xx
(January 21, 2012)

A.

Justification

1.

Necessity of Information Collection

The Leahy-Smith America Invents Act, which was enacted into law on September 16, 2011,
provides for many changes to the current Board of Patent Appeals and Interference
procedures. See Pub. L. 112-29, 125 Stat. 284 (2011). One such change is to rename the
Board of Patent Appeals and Interferences to the Patent Trial and Appeal Board (Board)
effective September 16, 2012. Other changes include the introduction of inter partes
review, post-grant review, derivation proceedings, and the transitional program for covered
business method patents. In order to implement the provisions of the Leahy-Smith America
Invents Act that provide for trials to be conducted by the Board, the United States Patent
and Trademark Office (USPTO) published six notices of proposed rulemaking in the
Federal Register, as described in the following paragraphs.
The notice of proposed rulemaking titled “Rules of Practice for Trials Before the Patent Trial
and Appeal Board and Judicial Review of Patent Trial and Appeal Board Decisions” (RIN
0651-AC70) proposes new rules of practice that provide for a consolidated set of rules for
the newly proposed trial procedures and that provide for a consolidated set of rules for
seeking judicial review of Board decisions. These rules establish the procedures for judicial
review of the final decisions of the Board in inter partes reviews, post-grant reviews,
covered business method patent reviews and derivation proceedings, and revises the
provisions related to filing an appeal or commencing a civil action in an interference under
35 U.S.C. §§ 141 or 146. They also provide for other related filings for these proposed
procedures, such as fees, requests for oral hearings, requests to treat a settlement as
business confidential, requests for adverse judgments, default adverse judgments or
settlements, and petitions to make a settlement agreement available.
The notice of proposed rulemaking titled “Changes to Implement Inter Partes Review
Proceedings” (RIN 0651-AC71) proposes new rules of practice to implement the new inter
partes review proceedings provided for by the Leahy-Smith America Invents Act. The
proposed rules set forth the requirements for filing the new petition for inter partes review,
for filing responses to such petitions, and for filing motions, replies, and oppositions after
such a review has been instituted. These provisions of the Leahy-Smith America Invents
Act take effect on September 16, 2012 and apply to any patent issued before, on, or after
the effective date.
The notice of proposed rulemaking titled “Changes to Implement Post-Grant Review
Proceedings” (RIN 0651-AC72) proposes new rules of practice to implement the new post-

grant review proceedings provided for by the Leahy-Smith America Invents Act. The
proposed rules set forth the requirements for filing the new petition for post-grant review, for
filing responses to such petitions, and for filing motions, replies, and oppositions after such
a review has been instituted. These provisions of the Leahy-Smith America Invents Act
take effect on September 16, 2012 and generally apply to patents issuing from applications
subject to the first-inventor-to-file provisions of the Leahy-Smith America Invents Act.
The notice of proposed rulemaking titled “Changes to Implement Transitional Program for
Covered Business Method Patents” (RIN 0651-AC73) proposes new rules of practice to
implement the new transitional post-grant review proceedings for covered business method
patents provided for by the Leahy-Smith America Invents Act. The proposed rules set forth
the requirements for filing the new petition for covered business method patent review.
These provisions of the Leahy-Smith America Invents Act take effect on September 16,
2012 and will be repealed on September 16, 2020, with respect to any new petitions filed
under the transitional program.
The notice of proposed rulemaking titled “Changes to Implement Derivation Proceedings”
(RIN 0651-AC74) proposes new rules of practice to implement the new derivation
proceedings provided for by the Leahy-Smith America Invents Act. The proposed rules set
forth the requirements for filing the new petition for derivation, and for filing motions, replies,
and oppositions, as well as arbitration agreements and awards. These provisions of the
Leahy-Smith America Invents Act take effect on March 16, 2013 and generally apply to
applications for patent, and any patent issuing thereon, subject to first-inventor-to-file
provisions of the Leahy-Smith America Invents Act.
The notice of proposed rulemaking titled “Transitional Program for Covered Business
Method Patents – Definition of Technological Invention” (RIN 0651-AC75) proposes the
requirements for determining whether a patent is for a technological invention. Patents for
technological inventions cannot be reviewed under the new transitional post-grant review
proceedings for covered business method patents provided for by the Leahy-Smith America
Invents Act.
In support of these proposed rulemakings, the USPTO is submitting this information
collection request to OMB to obtain approval for the new information collection
requirements proposed by these rulemakings and to establish a new information collection
titled “Patent Review and Derivation Proceedings.” Requirements in common for the new
trial proceedings are proposed in RIN 0651-AC70, thus most of the information collection
requirements are based on requirements in that notice. RIN 0651-AC71-0651-AC75
provide details of certain proceeding specific aspects of those requirements. RIN 0651AC74 adds arbitration and related requirements to this information collection as the LSAIA’s
arbitration provisions were limited to derivation proceedings.
Table 1 provides the specific statutes and regulations requiring the USPTO to collect the
information discussed above:

2

Table 1: Information Requirements for Patent Review and Derivation Proceedings
Requirement

Statute

Rule

Petition for Inter Partes Review

35 U.S.C. § 312

37 CFR 42.5, 42.6, 42.8, 42.11, 42.13, 42.20,
42.21, 42.22, 42.24(a)(1), 42.63, 42.65, and
42.101 through 42.105

Petition for Post-Grant Review or Covered
Business Method Patent Review

35 U.S.C. § 322

37 CFR 42.5, 42.6, 42.8, 42.11, 42.13, 42.20,
42.21, 42.22, 42.24(a)(2), 42.24(a)(3), 42.63,
42.65, 42.201 through 42.205, and 42.302 through
42.304

Petition for Derivation

35 U.S.C. § 135

37 CFR 42.5, 42.6, 42.8, 42.11, 42.13, 42.20,
42.21, 42.22, 42.24(a)(4), 42.63, 42.65, 42.402
through 42.406

Reply to Petition for Inter Partes Review

35 U.S.C. § 313

37 CFR 42.6, 42.8, 42.11, 42.13, 42.21, 42.23,
42.24(c), 42.51, 42.52, 42.53, 42.54, 42.63 and
42.65

Reply to Petition for Post-Grant Review or
Covered Business Method Patent Review

35 U.S.C. § 323

37 CFR 42.6, 42.8, 42.11, 42.13, 42.21, 42.23,
42.24(c), 42.51, 42.52, 42.53, 42.54, 42.63 and
42.65

35 U.S.C. §§ 2(b)(2),
316(a)(13), and 326(a)(12)

37 CFR 42.71

Motions, Replies and Oppositions After
Institution in Inter Partes Review

35 U.S.C. § 316

37 CFR 42.6, 42.8, 42.11, 42.13, 42.21, 42.22,
42.23, 42.24(a)(5), 42.24(b), 42.24(c), 42.51,
42.52, 42.53, 42.54, 42.63, 42.64, 42.65, 42.107,
42.120, 42.121, and 42.123

Motions, Replies and Oppositions After
Institution in Post-Grant Review or Covered
Business Method Review

35 U.S.C. § 326

37 CFR 42.6, 42.8, 42.11, 42.13, 42.21, 42.22,
42.23, 42.24(a)(5), 42.24(b), 42.24(c), 42.51,
42.52, 42.53, 42.54, 42.63, 42.64, 42.65, 42.221,
42.207, 42.220 and 42.223

35 U.S.C. § 135(b)

37 CFR 42.6, 42.8, 42.11, 42.13, 42.21, 42.22,
42.23, 42.24(a)(5), 42.24(b), 42.24(c), 42.51,
42.52, 42.53, 42.54, 42.63, 42.64, 42.65

35 U.S.C. §§ 2(b)(2), 316
(a)(10), and 326(a)(10)

37 CFR 42.70

Request to Treat a Settlement as Business
Confidential

35 U.S.C. §§ 135(e),
317(a), and 327(a)

37 CFR 42.74(c) and 42.410

Request for Adverse Judgment, Default
Adverse Judgment or Settlement

35 U.S.C. §§ 2(b)(2),
135(e), 317, and 327

37 CFR 42.73(b) and 42.74(b)

35 U.S.C. § 135(f)

37 CFR 42.410

35 U.S.C. §§ 135(e),
317(b), and 327(b)

37 CFR 42.74(c)

35 U.S.C. §§ 141, 142,
145, and 146

37 CFR 90.1 through 90.3

Request for Reconsideration

Motions, Replies and Oppositions in
Derivation Proceeding

Request for Oral Hearing

Arbitration Agreement and Award
Request to Make a Settlement Agreement
Available
Notice of Judicial Review of a Board Decision
(e.g., Notice of Appeal Under 35 U.S.C. §
142)

3

2.

Needs and Uses

The public will use this new information collection to petition the Board to initiate inter
partes reviews, post-grant reviews, covered business method patent reviews, and
derivation proceedings, as well as initiate other actions, that are set forth in the six notices
of proposed rulemaking and provided for by the Leahy-Smith America Invents Act.
In addition to the proposed rules, the USPTO has also developed a Trial Practice Guide
that provides different scenarios based on the proposals in the rulemakings. Once the final
rules are implemented, the USPTO will revise the Trial Practice Guide accordingly. A copy
of the Trial Practice Guide is available on the USPTO Internet Web site at www.uspto.gov.
The Board will use the information collected under these proposed rules in deciding the
various proceedings.
The Board disseminates certain information that it collects through various publications and
databases. This information includes opinions, binding precedent, and judgments in trials
and derivation proceedings.
Opinions authored by the Board have varying degrees of authority attached to them. There
are precedential opinions, which when published, are binding and provide the criteria and
authority that the Board will use to decide all other factually similar cases (until the opinion
is overruled or changed by statute). There are informative opinions which are nonprecedential and illustrate the norms of Board decision-making for the public. The final type
of Board opinion is the routine opinion. Routine opinions are also non-precedential and are
publicly available opinions that are not designated as precedential or informative. Since
public policy favors a widespread publication of opinions, the Board publishes all publicly
available opinions, even if the opinions are not binding precedent upon the Board.
An opinion of the Board made precedential by the procedures contained in the Board’s
Standard Operating Procedures, whether the current or earlier versions, is considered to be
binding precedent. Other Board opinions which are published or otherwise disseminated
are not considered binding precedent of the Board.
The Information Quality Guidelines from Section 515 of Public Law 106-554, Treasury and
General Government Appropriations Act for Fiscal Year 2001, apply to this information
collection and this information collection and its supporting statement comply with all
applicable information quality guidelines, i.e. OMB and specific operating unit guidelines.
This proposed collection of information will result in information that will be collected,
maintained, and used in a way consistent with all applicable OMB and USPTO Information
Quality Guidelines.
Table 2 outlines how this collection of information is used by the public and the USPTO:

4

Table 2: Needs and Uses of Information Collected for Patent Review and Derivation Proceedings
Form and Function
Petition for Inter Partes Review

Form #
No Form
Associated

Needs and Uses
•
•

•
•

Petition for Post-Grant Review or
Covered Business Method Patent
Review

No Form
Associated

•
•

•

•

•

Petition for Derivation

No Form
Associated

•
•

•

Reply to Petition for Inter Partes
Review

Reply to Petition for Post-Grant
Review or Covered Business
Method Patent Review

No Form
Associated

No Form
Associated

•
•

Used by parties who are not the owners of a patent to file a petition
to institute an inter partes review of a patent.
Used by parties to request to cancel as unpatentable one or more
claims of a patent only on a ground that could be raised under 35
U.S.C. § 102 or 103 and only on the basis of prior art consisting of
patents or printed publications.
Used by parties to demonstrate that they have standing to file the
petition (i.e., the patent is available for inter partes review and the
petitioner is not barred from requesting such review).
Used by the Board to determine whether to institute an inter partes
review including whether the petition identifies all real parties in
interest, identifies each claim challenged (including the grounds on
which the challenge to each claim is based, and the evidence that
supports the grounds), provides copies of the necessary
documents, and that the necessary fee is included.
Used by parties who are not owners of a patent to file a petition to
institute a post-grant review of a patent.
Used by parties to request to cancel as unpatentable one or more
claims of a patent on any ground that could be raised under 35
U.S.C. § 282(b)(2) or (3) (relating to invalidity of the patent or any
claim) as part of a post-grant review.
Used by parties to file a petition for a transitional proceeding with
respect to a covered business method patent when the person or
person’s real party in interest or privy has been sued for
infringement of the patent or has been charged with infringement
under that patent.
Used by the Board to determine whether to institute a post-grant
review including whether the petition identifies all real parties in
interest, identifies each claim challenged (including the grounds on
which the challenge to each claim is based and the evidence that
supports the grounds), provides copies of the necessary
documents, and that the necessary fee is included.
Used by the Board to determine whether to institute a transitional
proceeding for covered business method patents including whether
a claim is a method or corresponding apparatus for performing data
processing or other operations used in the practice, administration,
or management of a financial product or service and not a
technological invention.
Used by an applicant for patent to petition the Board to institute a
derivation proceeding.
Used by the applicant to demonstrate that they have standing to file
the petition for derivation (i.e., timely filing a petition that
demonstrates that the earlier filed application derived the claimed
invention and was filed by another inventor without authorization
and that the applicant has taken steps to obtain patent protection
for the invention).
Used by the Board to determine whether to institute a derivation
proceeding as long as the necessary requirements are met (i.e., the
petition identifies the precise relief requested, the petition is filed
within one year after the first publication of a claim to an invention,
the fee is submitted with the petition).
Used by patent owner to set forth reasons why no inter partes
review should be instituted.
Used by the Board together with the petition for inter partes review
to determine whether to institute an inter partes review.

•

Used by patent owner to set forth reasons why no post-grant review
or covered business method review should be instituted.

•

Used by the Board together with the petition for post-grant review or
covered business method review to determine whether to institute a

5

Form and Function

Form #

Needs and Uses
post-grant review or covered business method review.

Request for Reconsideration

Motions, Replies and Oppositions
After Institution in Inter Partes
Review

No Form
Associated

No Form
Associated

•

Used by parties to request the Board to reconsider the decision not
to institute a trial or another decision.

•

Used by the Board to review the original decision to not institute a
trial or another decision.

•

Used by parties to seek relief in a proceeding including motions to
amend, motions to exclude evidence, motions to seal, motions for
joinder, motions to file supplemental information, motions for
judgment based on supplemental information, motions for
observations on cross-examination, and motions to correct clerical
or typographical mistakes in a petition for inter partes review.
Used by the opposing parties to set forth the reasons why the
Board should not grant the relief sought in a motion.
Used by the Board in issuing a final written decision with respect to
patentability of a challenged patent claim.

•
•

Motions, Replies and Oppositions
After Institution in Post-Grant
Review or Covered Business
Method Review

No Form
Associated

•

•
•

Motions, Replies and Oppositions
in Derivation Proceeding

No Form
Associated

•

•
•

Request for Oral Hearing

No Form
Associated

Request to Treat a Settlement as
Business Confidential

No Form
Associated

No Form
Associated

Arbitration Agreement Award

No Form
Associated

Request to Make a Settlement
Agreement Available

No Form
Associated

Used by parties to seek relief in a proceeding including motions to
amend, motions to exclude evidence, motions to seal, motions for
joinder, motions to file supplemental information, motions for
judgment based on supplemental information, motions for
observations on cross-examination, and motions to correct clerical
or typographical mistakes in a petition for a derivation proceeding.
Used by the opposing parties to set forth the reasons why the
Board should not grant the relief sought in a motion.
Used by the Board in issuing a final written decision with respect to
the alleged derivation.

•
•

Used by parties to request an oral hearing.
Used by the Board to schedule an oral hearing if appropriate.

•

Used by parties to request that the settlement agreement be kept
confidential and be filed separately from the patent or application
file.
Used by the Board to provide that the settlement agreement be
designated as business confidential and kept separately from the
publicly available patent or application files.

•

Request for Adverse Judgment,
Default Adverse Judgment or
Settlement

Used by parties to seek relief in a proceeding including motions to
amend, motions to exclude evidence, motions to seal, motions for
joinder, motions to file supplemental information, motions for
judgment based on supplemental information, motions for
observations on cross-examination, and motions to correct clerical
or typographical mistakes in a petition for post-grant review or
covered business method patent review.
Used by the opposing parties to set forth the reasons why the
Board should not grant the relief sought in a motion.
Used by the Board in issuing a final written decision with respect to
patentability of a challenged patent claim.

•
•

Used by a party to concede the contest.
Used by the Board to render judgment against the party conceding
the contest.

•

Used by parties to give notice to the Office of the result of an
arbitration between parties.
Used by the Board to update the records of an instituted derivation
proceeding.

•
•
•

Used by a requester to gain access to a settlement agreement.
Used by the Board to determine whether the requester may be
granted access to the settlement agreement.

6

Form and Function
Notice of Judicial Review of a
Board Decision (e.g., Notice of
Appeal Under 35 U.S.C. § 142)

3.

Form #
No Form
Associated

Needs and Uses
•

Used by parties to notify the USPTO that a party has filed a notice
of appeal or election.

•

Used by the Board to recognize that the final decision of the Board
has been appealed.

Use of Information Technology

Under the proposed rulemakings, the USPTO is proposing that all of the patent review and
derivation proceeding papers be filed electronically, unless otherwise authorized by the
Board. The Board did consider proposing a mandatory electronic filing system and a paper
filing system, but determined that there would be difficulties with both approaches. The
Board feels that a mandatory electronic filing system may result in unnecessary cost and
burdens, especially in cases where a party lacks the ability to file electronically. Based
upon the Board’s previous experience, a paper based filing system may increase delay in
processing the papers, a delay in public availability, and the possibility that a paper could
be misplaced and that confidential papers could accidentally be made available to the
wrong party or more widely to the public. With the proposal that all of the patent review and
derivation proceeding papers be filed electronically unless otherwise authorized, the Board
envisions that the entity’s size and sophistication would be considered in determining
whether alternative filing methods would be authorized.
As a result of the new proceedings proposed by the rulemakings, the USPTO is developing
a system called Patent Review Processing System (PRPS). This system will allow parties
to file the new proceedings electronically.
The BPAI disseminates opinions and decisions to the public through the USPTO’s website.
Precedential opinions in ex parte appeals are published on BPAI’s home page through the
USPTO’s website. In late 1997, BPAI started disseminating opinions in support of BPAI’s
final decisions appearing in issued patents, reissue applications, and reexamination
proceedings through the USPTO’s electronic Freedom of Information Act (e-FOIA) website.
Beginning in 2001, with the implementation of eighteen-month publication of applications
under the American Inventors Protection Act of 1999, the BPAI also began posting final
decisions in published applications through the USPTO e-FOIA website.
4.

Efforts to Identify Duplication

This information is collected only when parties file petitions and other associated papers for
inter partes reviews, post-grant reviews, covered business method patent review, and
derivations. This collection does, in part, solicit data already available at the USPTO, in
that certain copies of evidence may have been submitted earlier as part of the patent
examination process of the application that resulted in the patent under review. The
duplication of effort is limited, however, and the agency considers it necessary. In order to
be clear as to the evidence, copies of evidence relied on in the inter partes review, the
post-grant review, the covered business method patent review, and the derivation
proceeding need to be filed with the petition or in the proceeding. While the copies of
7

evidence required by the petitions may be duplicates of evidence already in the file of the
application that resulted in the patent under review, the necessity of absolute clarity as to
the evidence relied on outweighs the burden on the public.
5.

Minimizing Burden to Small Entities

The same information is required from every applicant, and this information is not available
from any other source.
6.

Consequences of Less Frequent Collection

This information is collected only when a member of the public files petitions for inter partes
review, post-grant review, covered business method patent review, or an applicant files a
petition seeking a derivation proceeding or files any of the replies, requests, motions,
oppositions, or other papers associated with these proceedings. This information is not
collected elsewhere. Therefore, this collection of information could not be conducted less
frequently. If this information was not collected, the Board could not ensure that the
petitioner has submitted all of the necessary information (and applicable fees) necessary to
initiate these new proceedings, nor could the Board determine whether the proceeding
should be instituted. If this information was not collected, the Office could not comply with
the requirements of 35 U.S.C. §§ 135, 141 and 142, 145 and 146, 312 and 313, 316 and
317, 322 and 323, 326 and 327 and proposed 37 CFR Part 42 and 90.
7.

Special Circumstances in the Conduct of Information Collection

There are no special circumstances associated with this collection of information.
8.

Consultations Outside the Agency

The USPTO published six notices of proposed rulemaking outlining changes in the rules of
practice in proceedings before the Patent Trial and Appeal Board and proposing new
appeal procedures in the Federal Register. The changes and new proceedings proposed
in the rulemakings are provided for by the Leahy-Smith America Invents Act. These six
proposed rulemakings are titled as follows:
•

“Rules of Practice for Trials Before the Patent Trial and Appeal Board and Judicial
Review of Patent Trial and Appeal Board Decisions” (RIN 0651-AC70)

•

“Changes to Implement Inter Partes Review Proceedings” (RIN 0651-AC71)

•

“Changes to Implement Post-Grant Review Proceedings” (RIN 0651-AC72)

•

“Changes to Implement Transitional Program for Covered Business Method Patents”
(RIN 0651-AC73)

•

“Changes to Implement Derivation Proceedings” (RIN 0651-AC74)
8

•

“Transitional Program for Covered Business Method Patents – Definition of
Technological Invention” (RIN 0651-AC75)

In addition, the USPTO consults with the Public Advisory Committees, which were created
by statute in the American Inventors Protection Act of 1999 to advise the Under Secretary
of Commerce for Intellectual Property and Director of the USPTO on the management of
the patent and trademark operations. The Advisory Committees consist of United States
citizens chosen to represent the interests of the diverse users of the USPTO. The Advisory
Committees review the policies, goals, performance, budget, and user fees of the patent
and trademark operations, respectively, and advise the Director on these matters.
The USPTO has long-standing relationships with patent bar associations, inventor groups,
and users of our public facilities. Their views are expressed in regularly scheduled
meetings and considered in developing proposals for information collection requirements.
The USPTO also meets regularly with groups from whom patent application data is
collected, such as the American Intellectual Property Law Association.
9.

Payment or Gifts to Respondents

This information collection does not involve a payment or gift to any respondent.
10.

Assurance of Confidentiality

Generally, the file of any inter partes review, post-grant review, covered business method
patent review, and derivation would be available to the public. See 35 U.S.C. §§ 122,
316(a)(1), and 326(a)(1). In the notice of proposed rulemaking titled “Rules of Practice for
Trials Before the Patent Trial and Appeal Board and Judicial Review of Patent Trial and
Appeal Board Decisions,” the Board proposes rules that provide for protective orders
governing the exchange and submission of confidential information in Board proceedings.
In proposed 37 CFR 42.55, petitioners filing confidential information can file, concurrently
with the filing of the petition, a motion for a protective order as to the confidential
information. Under these proposals, the petitioner must serve the patent owner the
confidential information and can do so under seal. The patent owner may then access the
confidential information prior to the institution of a trial by agreeing to the terms of the
motion for protective order. With this proposed rule, the Board seeks to streamline the
process of seeking protective orders prior to the institution of the review while balancing the
need to protect confidential information against an opponent’s need to access the
information used to challenge the opponent’s claims.
In proposed 37 CFR 42.56, the Board outlines when the confidential information that is
subject to a protective order would become public. Under these proposals, the Board
envisions that confidential information submitted under a protective order would ordinarily
become public 45 days after denial of a petition to institute a trial or 45 days after final
judgment in a trial. Under 37 CFR 42.56, the Board proposes allowing a party to file a
motion to expunge from the record confidential information prior to the information
becoming public. The Board envisions that this proposal would balance the needs of the
9

parties to submit confidential information with the public interest in maintaining a complete
and understandable file history for public notice purposes, especially since there is an
expectation that information be made public where the existence of the information is
referred to in a decision to grant or deny a request to institute a review identified in a final
written decision. The Board believes that the proposed rule would encourage parties to
redact sensitive information when possible rather than sealing the entire document.
In the notice of proposed rulemaking titled “Changes to Implement Inter Partes Review
Proceedings,” as part of the requirements for a petition for inter partes review, the rule
states that under 35 U.S.C. § 312(b) and 35 U.S.C. § 311, the USPTO will make the
petition for inter partes review available to the public as soon as practicable after the receipt
of the petition.
In the notice of proposed rulemaking titled “Changes to Implement Derivation Proceedings,”
one of the new provisions added by the Leahy-Smith America Invents Act deals with the
confidentiality of written settlement agreements. Under 35 U.S.C. § 135(e), as amended, a
written settlement or understanding of the parties must be filed with the Director. At the
request of a party, the written settlement can be treated as business confidential
information. Upon such designation, this information will be kept separate from the file of
the involved patents or applications, will only be made available to Government agencies
on written request, and will only be made available to other persons upon showing of good
cause.
11.

Justification for Sensitive Questions

None of the required information in this collection is considered to be sensitive.
12.

Estimate of Hour and Cost Burden to Respondents

Table 3 calculates the anticipated burden hours and costs of this information collection to
the public, based on the following factors:
•

Respondent Calculation Factors
The USPTO estimates that it will receive approximately 4,967 responses per year for this
collection, with approximately 562 of these responses submitted by small entities. Out of
these 4,967 responses, the USPTO estimates that only 4 responses will be submitted in
paper, while the rest will be submitted electronically.

•

Burden Hour Calculation Factors
The USPTO estimates that it will take the public approximately 6 minutes to 180 hours and
24 minutes (0.10 to 180.4 hours) to complete this information, depending on the situation.
This includes the time to gather the necessary information, prepare the petitions, replies,
requests, motions, oppositions, or other documents, and submit them to the USPTO. The
USPTO estimates that it will take the same amount of time to complete the petition for inter
partes review and the motions/replies/oppositions filed in inter partes review that are filed in
paper as it to does to complete those filed electronically.

10

•

Cost Burden Calculation Factors
The USPTO uses a professional rate of $340 per hour for respondent cost burden
calculations, which 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).

Table 3: Burden Hour/Burden Cost to Respondents for Patent Review and Derivation Proceedings
Item

Hours
(a)

Responses
(yr)
(b)

Petition for Inter Partes Review

135.3

460

62,238

$340.00

$21,160,920.00

Petition for Post-Grant Review or Covered
Business Method Patent Review

180.4

50

9,020

$340.00

$3,066,800.00

Petition for Derivation

180.4

50

9,020

$340.00

$3,066,800.00

Reply to Petition for Inter Partes Review

100.0

406

40,600

$340.00

$13,804,000.00

Reply to Petition for Post-Grant Review or
Covered Business Method Patent Review

100.0

45

4,500

$340.00

$1,530,000.00

Request for Reconsideration

80.0

146

11,680

$340.00

$3,971,200.00

Motions, Replies and Oppositions After Institution
in Inter Partes Review

140.0

2,453

343,420

$340.00

$116,762,800.00

Motions, Replies and Oppositions After Institution
in Post-Grant Review or Covered Business
Method Review

130.0

342

44,460

$340.00

$15,116,400.00

Motions, Replies and Oppositions in Derivation
Proceeding

120.0

210

25,200

$340.00

$8,568,000.00

Request for Oral Hearing

20.0

466

9,320

$340.00

$3,168,800.00

Request to Treat a Settlement as Business
Confidential

2.0

20

40

$340.00

$13,600.00

Request for Adverse Judgment, Default Adverse
Judgment or Settlement

1.0

103

103

$340.00

$35,020.00

Arbitration Agreement and Award

4.0

2

8

$340.00

$2,720.00

Request to Make a Settlement Agreement
Available

1.0

20

20

$340.00

$6,800.00

Notice of Judicial Review of a Board Decision
(e.g., Notice of Appeal Under 35 U.S.C. §142)

0.1

194

19

$340.00

$6,460.00

4,967

559,648

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

$190,280,320.00

Totals

-----------

Rate
($/hr)
(d)

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

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

* Note: Where applicable, burden hour sums have been rounded to the nearest whole number

13.

Total Annual (Non-hour) Cost Burden

Of the six notices of proposed rulemakings related to this information collection, the USPTO
estimates that five of them contain proposals that will add annual (non-hour) costs to this
collection in the form of filing fees and postage costs. These NPRMs are “Rules of Practice
for Trials Before the Patent Trial and Appeal Board and Judicial Review of Patent Trial and
11

Appeal Board Decisions” (RIN 0651-AC70), “Changes to Implement Inter Partes Review
Proceedings” (RIN 0651-AC71), “Rules of Practice for Changes to Implement Post-Grant
Review Proceedings” (RIN 0651-AC72), “Changes to Implement Transitional Program for
Covered Business Method Patents” (RIN 0651-AC73), and “Changes to Implement
Derivation Proceedings” (RIN 0651-AC74).
There are filing fees associated with the petitions for inter partes review, petitions for postgrant review or covered business method patent review, petitions for derivation, and
requests to make a settlement agreement available. The USPTO estimates that the total
filing fees associated with this collection will be approximately $18,851,000 per year, as
calculated in Table 4 below.
Table 4: Filing Fees – Non-Hour Cost Burden for Patent Review and Derivation Proceedings
Item

Responses
(yr)
(a)

Petition for Inter Partes Review

Filing Fees
(b)

Total Cost
(yr)
(a x b)

460

$35,800.00

$16,468,000.00

Petition for Post-Grant Review or Covered Business Method Patent
Review

50

$47,100.00

$2,355,000.00

Petition for Derivation

50

$400.00

$20,000.00

406

$0.00

$0.00

45

$0.00

$0.00

146

$0.00

$0.00

Motions, Replies and Oppositions After Initiation in Inter Partes
Review

2,453

$0.00

$0.00

Motions, Replies and Oppositions After Initiation in Post-Grant
Review or Covered Business Method Review

342

$0.00

$0.00

Motions, Replies and Oppositions in Derivation Proceeding

210

$0.00

$0.00

Request for Oral Hearing

466

$0.00

$0.00

20

$0.00

$0.00

103

$0.00

$0.00

2

$0.00

$0.00

20

$400.00

$8,000.00

194

$0.00

$0.00

4,967

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

$18,851,000.00

Reply to Petition for Inter Partes Review
Reply to Petition for Post-Grant Review or Covered Business
Method Patent Review
Request for Reconsideration

Request to Treat a Settlement as Business Confidential
Request for Adverse Judgment, Default Adverse Judgment or
Settlement
Arbitration Agreement and Awards
Request to Make a Settlement Agreement Available
Notice of Judicial Review of a Board Decision (e.g., Notice of
Appeal Under 35 U.S.C. §142)
Totals

There are also postage costs associated with these rulemakings. The Board will require
that these papers are filed electronically, unless the Board specifically authorizes paper
filings. While the Board expects that paper filings will rarely be authorized, the Board does

12

estimate that possibly one petition for inter partes review and three motions, replies and
oppositions after institution in inter partes review could be filed in paper.
The USPTO estimates that these items will be mailed to the USPTO by Express Mail using
the U.S. Postal Service’s flat rate envelope, which can accommodate varying submission
weights, estimated in this case to be 16 ounces for the petitions and two ounces for the
other papers. The cost of the flat rate envelope is $18.30. The USPTO estimates that the
total postage cost associated with this collection will be approximately $73 per year, as
calculated in Table 5 below.
Table 5: Postage Costs for Respondents for Patent Review and Derivation Proceedings
Item

Estimated
annual mailed
responses

Estimated
postage
amount

Estimated
annual postage
costs

Petition for Inter Partes Review

1

$18.30

$18.00

Motions, Replies and Oppositions After Institution in Inter Partes
Review

3

$18.30

$55.00

Totals

4

......

$73.00

The total annual (non-hour) respondent cost burden for this collection in the form of
filing fees ($18,851,000) and postage costs ($73) is approximately $18,851,073 per
year.
14.

Annual Cost to Federal Government

With the exception of the notices of judicial review of a Board decision (e.g., notice of
appeal under 35 U.S.C. §142), all of the items in this collection are processed by
administrative patent judges. The notices of judicial review of a Board decision are
processed by USPTO staff at a GS-15, step 5 level. The USPTO estimates that it will take
GS-15, step 5 staff 6 minutes (0.10 hours) to process the notices of judicial review of a
Board decision and that it will take the administrative patent judges between 15 minutes
(0.25 hours) and 53 hours to process the remaining items. The USPTO estimates that the
fully-loaded hourly rate for an administrative patent judge is $258.32, based upon the
administratively determined pay scale. The current hourly rate for a GS-15, step 5 is
$67.21, according to the U.S. Office of Personnel Management’s (OPM’s) 2011 wage chart,
including locality pay for the Washington, DC area. When 30% is added to account for a
fully loaded hourly rate (benefits and overhead), the hourly rate for a GS-15, step 5 to
process the notices of judicial review of a Board decision is $87.37 ($67.21 + $20.16).
Table 6 calculates the burden hours and costs to the Federal Government for processing
this information collection:

13

Table 6: Burden Hour/Burden Cost to the Federal Government for Patent Review and Derivation
Proceedings
Item

Hours
(a)

Responses
(yr)
(b)

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

Rate
($/hr)
(d)

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

Petition for Inter Partes Review

40.0

460

18,400

$258.32

$4,753,088.00

Petition for Post-Grant Review or Covered Business
Method Patent Review

53.0

50

2,650

$258.32

$684,548.00

Petition for Derivation

53.0

50

2,650

$258.32

$684,548.00

Reply to Petition for Inter Partes Review

12.0

406

4,872

$258.32

$1,258,535.00

Reply to Petition for Post-Grant Review or Covered
Business Method Patent Review

14.0

45

630

$258.32

$162,742.00

Request for Reconsideration

16.0

146

2,336

$258.32

$603,436.00

Motions, Replies and Oppositions After Institution in
Inter Partes Review

13.0

2,453

31,889

$258.32

$8,237,566.00

Motions, Replies and Oppositions After Institution in
Post-Grant Review or Covered Business Method
Review

14.0

342

4,788

$258.32

$1,236,836.00

Motions, Replies and Oppositions in Derivation
Proceeding

14.0

210

2,940

$258.32

$759,461.00

Request for Oral Hearing

3.75

466

1,748

$258.32

$451,543.00

1.0

20

20

$258.32

$5,166.00

Request for Adverse Judgment, Default Adverse
Judgment or Settlement

0.25

103

26

$258.32

$6,716.00

Arbitration Agreement and Award

0.50

2

1

$258.32

$258.00

Request to Make a Settlement Agreement Available

1.0

20

20

$258.32

$5,166.00

Notice of Judicial Review of a Board Decision (e.g.,
Notice of Appeal Under 35 U.S.C. § 142)

0.10

194

19

$87.37

$1,660.00

----------

4,967

72,989

----------

$18,851,269.00

Request to Treat a Settlement as Business
Confidential

Totals

* Note: Where applicable, burden hour sums have been rounded to the nearest whole number

15.

Reason for Changes in the Annual Burden

The USPTO is submitting this new information collection request in support of six notices of
proposed rulemaking outlining changes in the rules of practice in proceedings before the
Patent Trial and Appeal Board and proposing new procedures. The changes and new

14

proceedings proposed in these rulemakings are provided for by the Leahy-Smith America
Invents Act. These six proposed rulemakings are titled as follows:
•

“Rules of Practice for Trials Before the Patent Trial and Appeal Board and
Judicial Review of Patent Trial and Appeal Board Decisions” (RIN 0651-AC70)

•

“Changes to Implement Inter Partes Review Proceedings” (RIN 0651-AC71)

•

“Changes to Implement Post-Grant Review Proceedings” (RIN 0651-AC72)

•

“Changes to Implement Transitional Program for Covered Business Method
Patent” (RIN 0651-AC73)

•

“Changes to Implement Derivation Proceedings” (RIN 0651-AC74)

•

“Transitional Program for Covered Business Method Patents – Definition of
Technological Invention” (RIN 0651-AC75)

The USPTO is requesting that OMB approve this new information collection and add it to
the agency’s information collection inventory.
The USPTO estimates that this collection will have a total of 4,967 responses, 559,648
burden hours, and $190,280,320 in respondent costs associated with it. Therefore, the
USPTO estimates that a total of 4,967 responses and 559,648 burden hours will be
added to the USPTO’s current information collection inventory per year as a program
change.
This new information collection also has annualized costs (filing fees and postage)
associated with it. The USPTO estimates that this collection will have a total of
$18,851,000 in filing fees and $73 in postage costs. Therefore, the USPTO estimates
that a total of $18,851,073 in annual (non-hour) costs will be added to the USPTO’s
current information collection inventory as a program change.
16.

Published Collections of Information

No special publication of the items in this collection is planned.
17.

Display of Expiration Date of OMB Approval

There are no forms associated with this information collection. Therefore, the display of the
expiration date is not applicable.
18.

Exceptions to the Certificate Statement

This collection of information does not include any exceptions to the certificate statement.

15

B.

COLLECTION OF INFORMATION EMPLOYING STATISTICAL METHODS

This collection of information does not employ statistical methods.

16